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A finding of patent invalidity due to prior invention by another party does not require the second party to have framed its reduction to practice in the exact language given in the claims but instead requires only a contemporaneous appreciation that the limitations of those claims had been achieved, the Federal Circuit ruled March 12. See Mycogen Plant Science Inc., et al. v. Monsanto Co., et al., Nos. 00-1001-1051, Fed. Cir. (Mar. 12, 2001). In what the court termed an unusual case involving a dispute over prior reduction to practice, a Federal Circuit panel affirmed a finding of no infringement in favor of Monsanto Co. and associated parties, based on invalidity of patent due to the existence of a prior invention. PLANT GENE ENGINEERING At issue in the appeal from the U.S. District Court for the District of Delaware were two patents owned by Mycogen Plant Science Inc. for the engineering of plant genes to make the plants more resistant to insect pests. After a jury found all of the contested claims of both patents were invalid because Monsanto invented the subject matter before the priority date of Mycogen’s patents, the lower court granted Mycogen’s motion for judgment as a matter of law (JMOL) that Monsanto’s processes and resulting products infringed on Mycogen’s patents, and granted Monsanto’s motion for JMOL that the claims were invalid for lack of enablement. Cross-appeals followed. Preliminarily, the Federal Circuit upheld the lower court’s interpretation of the claims, which are directed to raising the plant’s level of Bacillus thuringiensis, a naturally occurring bacterium more commonly known as Bt that produces a protein that kills certain crop-destroying insects. PRIORITY OF INVENTION Regarding the priority of invention dispute, the Federal Circuit noted that Mycogen was creditable with a constructive reduction of the invention to practice as of its Sept. 9, 1988, filing date, requiring Monsanto to prove either that it reduced its invention to practice before that date or that it was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to practice. The court noted that reduction to practice disputes typically arise in the context of interference proceedings in which the Patent and Trademark Office determines priority of invention between two or more parties claiming the same patentable invention, or when an interference between already issued patents is initiated in district court. However, in this case, the comparison was between Mycogen’s issued patent and work performed by Monsanto scientists “without the benefit of written claims for the Monsanto efforts,” the court said. CLAIM CONSTRUCTION The court said that in such a case, it is appropriate to construe the claims of the Mycogen patents as representing the invention at issue. It agreed with the lower court’s determination that there were three key limitations, since other limitations present in the claims were not in dispute. Mycogen did not dispute that the genes and resulting plants created and successfully tested by Monsanto’s scientists before Mycogen’s date of constructive reduction to practice met all of the limitations of the product claims of the patents, the court said. It added, however, that there must be contemporaneous recognition and appreciation of the invention represented by the counts for Monsanto to be credited with a prior reduction in practice. REDUCTION TO PRACTICE Mycogen argued on appeal that the Monsanto inventors did not have an appreciation of the claimed methods or a contemporaneous understanding that they had synthesized their gene using any of the processes claimed in the patents. But the opinion found that the record shows that Monsanto appreciated that the invention worked for the desired purpose. While an accidental, unappreciated reduction in practice is not creditable for purposes of determining priority of invention, “there is no evidence that the reduction to practice performed by Monsanto was in any way accidental,” the court said. It noted that Monsanto was seeking to address the specific issue of improved Bt expression and that it had started that project several years earlier. Mycogen also contended that the Monsanto scientists should not be given priority of invention because they did not express their work in the same language as the claim limitations, arguing that they did not conceive of or use the same process. “Monsanto is not required to have framed its prior documentation about its reduction to practice in the exact language given in the claims,” said the court. “The reduction to practice test does not require in haec verba appreciation of each of the limitations of the count.” CONTEMPORANEOUS APPRECIATION Monsanto inventors also testified that they did contemporaneously appreciate the key limitations of the invention, which together with other testimony “constitutes a legally sufficient evidentiary basis for a reasonable jury to find that Monsanto’s scientists appreciated the limitations of the claims of the patents. Although the amount of evidence regarding appreciation of each specific claim limitation is not extensive, we find that it is legally satisfactory, particularly in light of the extensive evidence establishing that Monsanto performed a process that met all of the limitations of the claims, and that the resulting product was successfully tested and appreciated to work for its intended purpose,” said the panel. Mycogen also appealed the instructions given to the jury on the doctrine of simultaneous conception and reduction to practice, arguing that the doctrine may only be applied to inventions embodied in product claims and not the process and product-by-process claims at issue in the patents. But the Federal Circuit said the doctrine may apply to either method or product claims, and said the jury instruction was appropriate. “It seems plausible to find that the type of invention embodied in these claims might not have been conceived until it was determined that the process claimed actually did cause Bt to be more highly expressed to produce a pesticidal protein toxin. This would at least suggest the use of the doctrine of simultaneous conception and reduction to practice, and therefore it was proper to instruct the jury on this doctrine,” the opinion said. INCONSISTENT JURY VERDICTS? Mycogen further appealed the District Court’s denial of its motion for a new trial based on the theory of inconsistent jury verdicts — the jury’s findings that Monsanto’s products did not literally infringe but that the research on which those products were based anticipated the patents in suit. Instead, the District Court granted Mycogen’s motion for JMOL that Monsanto’s products did literally infringe. The Federal Circuit said that while it would be inappropriate to grant JMOL solely to rationalize inconsistent verdicts, JMOL in this case — while achieving that end — was not granted solely to resolve that problem but instead to correct an irrational portion of the jury’s verdict. The law does not require a new trial if a jury returns a verdict containing parts that may be inconsistent, the opinion said, adding that the trial court must first review the verdict for a means to reconcile the differing portions. The Federal Circuit did not address the appeal of the enablement issue because of its other findings holding the patents invalid and added that its opinion renders moot the cross-appeals filed by Monsanto. Mycogen is represented by Richard W. Mark of Orrick, Herrington & Sutcliffe in New York. Monsanto is represented by John F. Lynch of Howrey Simon Arnold & White in Houston. �; Copyright 2001 Mealey Publications, Inc.

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