Monsanto Technology LLC v. E.I. Dupont De Nemours & Co.
878 F.3d 1336
| Fed. Cir. | 2018Background
- Monsanto owns U.S. Patent No. 7,790,953, claiming a two-step method of crossing soybean parent lines to obtain progeny with specified low linolenic and high oleic seed-oil fatty acid profiles. Claim 1 is the representative independent claim; claim 2 adds narrower fatty-acid ranges.
- DuPont initiated an inter partes reexamination challenging various claims as anticipated/obvious over prior art U.S. Patent No. 6,426,448 (Booth). The PTAB affirmed Examiner rejections of multiple claims as anticipated by Booth and ruled claim 2 obvious over Booth.
- Booth Example 8 discloses crossing a low-linolenic parent (fan allele / D3A) and a high-oleic parent (D2T). Booth Table 12 reports selected progeny results but not the full set of progeny from the crosses.
- DuPont submitted two declarations by Booth inventor Dr. Kinney showing additional progeny data (including F2:3 results) to demonstrate that Booth’s crosses would necessarily produce progeny within the ’953 claim ranges.
- Monsanto argued (1) the PTAB misconstrued the ”about 3% or less” linolenic limitation to include 4%; (2) the PTAB unlawfully relied on non‑prior‑art/secret Kinney data to create a composite anticipating reference; and (3) the PTAB applied an erroneous obviousness theory to claim 2. The Federal Circuit affirmed the PTAB on all issues.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction of “about 3% or less” linolenic acid | "About 3%" cannot reasonably include 4%; specification supports a narrow decimal variance | PTAB/ DuPont: specification and cited Wilcox data support treating 4% within a reasonable "about 3%" range | Court: affirmative — PTAB’s construction reasonable; 4% falls within "about 3%" given specification/Wilcox; Monsanto waived a narrower construction not raised below |
| Use of Kinney Declarations (extrinsic data) to support anticipation | Kinney data are non‑prior, secret extrinsic evidence that improperly expand Booth | DuPont: Kinney declarations merely show what Booth necessarily disclosed (inherency); extrinsic evidence is proper to interpret prior art | Court: affirmed PTAB’s reliance; extrinsic evidence may be used to show inherency and need not antedate the critical date; Monsanto presented no rebuttal data |
| Anticipation / inherency of Booth for claim 1 (steps a and b) | Booth Table 12 does not expressly show progeny with claimed fatty‑acid ranges; selected reporting forecloses inherency | DuPont: Booth describes the cross and many progeny generations; Kinney data show the unstated progeny characteristics necessarily result | Court: substantial evidence supports that Booth (with Kinney evidence) inherently anticipates claim 1; Booth expressly teaches step (a) and necessarily includes progeny satisfying step (b) |
| Obviousness of claim 2 (dependent ranges) | PTAB used an improper “accidental obviousness” or relied on inherency alone; no motivation to modify Booth to claimed narrower ranges | DuPont/PTAB: PHOSITA would have been motivated to consider broader progeny variability implicit in Booth; Kinney data provide reasonable expectation of success | Court: affirmed PTAB — substantial evidence shows motivation and reasonable expectation; claim 2 obvious over Booth |
Key Cases Cited
- In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (standard on waiver of arguments not raised before the PTAB)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard for review of factual findings in claim construction)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (specification is primary guide for claim construction)
- Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364 (Fed. Cir. 2002) (inherent anticipation requires the unstated limitation be necessarily present)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016) (anticipation reviewed for substantial evidence)
- Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351 (Fed. Cir. 2008) (distinguishing inherent anticipation from obviousness)
- Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (single‑reference obviousness via predictable modification)