Prior Invention Renders Monsanto Patent Invalid
August 16, 2001
Last Month at the Federal Circuit - September 2001
Judges: Linn (author), Clevenger, and Bryson
In Monsanto Co. v. Mycogen Plant Science, Inc., No. 00-1002 (Fed. Cir. Aug. 16, 2001), the Federal Circuit affirmed a final judgment based on a jury verdict of invalidity and noninfringement of U.S. Patent No. 5,500,365 (“the ‘365 patent”).
The ‘365 patent concerns techniques for genetically altering plants to make them more resistant to insects. This is done by modifying the plants so that they express the Bacillus thuringiensis (“Bt”) protein, which is toxic to various insects. Prior to the invention claimed in the ‘365 patent, scientists had successfully introduced into plants the gene that codes for the Bt protein (the “Bt gene”). However, the level of expression of the Bt protein by those plants was too low to be practicable. The ‘365 patent purports to solve that problem.
At issue at trial was whether the subject matter of the contested claims was invented by scientists at Agracetus, Inc. (“Agracetus”) before it was invented by Monsanto Company (“Monsanto”). The jury had found that the scientists at Agracetus were prior inventors, but the jury made no specific findings regarding conception, diligence, or reduction to practice. In response to JMOL motions, the district court had worked through the possible scenarios and had determined that although no reasonable jury could have found that Agracetus had the earlier reduction to practice, a reasonable jury could have found that Agracetus conceived the claimed invention before Monsanto and was diligent during the required time period up to reduction to practice.
On appeal, Monsanto argued that the Defendants had failed to explicitly argue to the jury that they should prevail on a diligence theory and had, therefore, waived and precluded the diligence theory from being before the jury. The Federal Circuit observed that certain deposition testimony did allude to a diligence theory. Moreover, although the Defendants did not proffer an argument under a diligence theory, Monsanto did. This, coupled with a thorough analysis of relevant case law holding that the critical issue is whether the jury was properly instructed on the law, the Federal Circuit held that the Defendants’ failure to explicitly argue the diligence theory did not result in that theory not being before the jury.
Having determined that the diligence issue was properly before the jury, the Federal Circuit identified the critical period for which diligence must have been found. The Court identified almost a one-year critical period between September 1987 and August 1988. The Defendants had pointed to evidence showing activity in every month during the critical period, including lab notebooks, testimony, and discovery responses. Although Monsanto points to certain gaps in between those dates and asserts that they are explained, the notebooks and discovery responses suggested that the plant transformation work was ongoing without interruption, despite a lack of daily notebook entries.
Accordingly, the Court found that substantial evidence supported the jury’s finding that Agracetus was diligent during the critical period. Any gaps in the recorded activities were reasonably explained by the evidence itself that suggests that the work involved in the experiment was continuous in nature.