Mycogen Plant Science & Agrigenetics Inc. v. Monsanto Co. & Dekalb Genetics Corp.

• Citation: 243 F.3d 1316,58 USPQ2d 1030
• Parties: (Fed. Cir. 2001) MYCOGEN PLANT SCIENCE, INC. and AGRIGENETICS, INC., Plaintiffs-Appellants, v. MONSANTO COMPANY and DEKALB GENETICS CORPORATION, Defendants-Cross Appellants, and DELTA AND PINE LAND COMPANY, Defendant-Cross Appellant. 00-1001, -1051 DECIDED:
• Decision Date: 12 March 2001
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1316

243 F.3d 1316 (Fed. Cir. 2001)

MYCOGEN PLANT SCIENCE, INC. and AGRIGENETICS, INC., Plaintiffs-Appellants, v. MONSANTO COMPANY and DEKALB GENETICS CORPORATION, Defendants-Cross Appellants, and DELTA AND PINE LAND COMPANY, Defendant-Cross Appellant.

00-1001, -1051

United States Court of Appeals for the Federal Circuit

DECIDED: March 12, 2001

Appealed from: United States District Court for the District of Delaware

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Richard W. Mark, Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for plaintiffs-appellants. With him on the brief were Daniel J. Thomasch; and Craig R. Kaufman, of Menlo Park, California. Of counsel were Lauren J. Elliott, Geoffrey W. Millsom, and Marc P. Berger, Orrick, Herrington & Sutcliffe LLP, of New York, New York.

John F. Lynch, Howrey Simon Arnold & White, L.L.P., of Houston, Texas, argued for defendants-cross appellants. With him on the brief were Susan K. Knoll, Michael E. Lee, and Steven G. Spears. Of counsel was Richard L. Stanley.

E. Anthony Figg, Rothwell, Figg, Ernst & Kurz, of Washington, DC, for defendant-cross appellant, Delta and Pine Land Company.

Before CLEVENGER, BRYSON, and LINN, Circuit Judges.

Judge Roderick R. McKelvie

CLEVENGER, Circuit Judge.

Mycogen Plant Science, Inc. and Agrigenetics, Inc. (collectively, "Mycogen") appeal the decision of the United States District Court for the District of Delaware upholding a jury verdict of patent invalidity pursuant to 35 U.S.C. 102(g) in favor of Monsanto Company, DeKalb Genetics Corporation, and Delta and Pine Land Company (collectively, "Monsanto"). The patents at issue in this trial are U.S. Patent No. 5,567,600 ("the '600 patent") and U.S. Patent No. 5,567,862 ("the '862 patent"). Mycogen also appeals the denial of its motion for a new trial, portions of the district court's claim construction, portions of the jury instructions relating to simultaneous conception and reduction to practice, and the district court's grant of judgment as a matter of law ("JMOL") of patent invalidity due to lack of enablement pursuant to 35 U.S.C. 112.

On cross-appeal, Monsanto challenges the district court's grant of JMOL holding that Mycogen did not commit inequitable conduct. Monsanto also cross-appeals the district court's ruling that Monsanto is liable for inducement of infringement by Monsanto's licensee Pioneer Hi-Bred International ("Pioneer").

We affirm the verdict of noninfringement based upon patent invalidity due to prior invention pursuant to 35 U.S.C. 102(g). This ruling makes it unnecessary to address the finding of lack of enablement pursuant to 35 U.S.C. 112. We also affirm the district court's denial of Mycogen's motion for a new trial, the district court's claim construction, and the jury instructions relating to simultaneous conception and reduction to practice.

Our ruling affirming patent invalidity moots the cross-appeals of inequitable conduct and liability for inducement of infringement by Pioneer.

I Procedural History

Mycogen sued Monsanto for infringement of two of Mycogen's patents, the '600 patent and the '862 patent, both of which are entitled "Synthetic Insecticidal Crystal Protein Gene," and both of which issued on October 22, 1996. Both patents involve genetically engineering plant genes for the purpose of protecting plants from insect pests. The claims of the patents-in-suit are similar, and their specifications are virtually identical. The '600 and '862 patents are children patents of Mycogen's U.S. Patent No. 5,380,831 ("the '831 parent patent"), also entitled "Synthetic Insecticidal Crystal Protein Gene," which issued on January 10, 1995. The '831 parent patent was the subject of additional litigation between Mycogen and Monsanto in the District Court for the Southern District of California. Mycogen Plant Science, Inc. v. Monsanto Co., No. 95-CV-653 (S.D. Cal. Nov. 10, 1999).

In the present case, the district court held an initial claim construction hearing regarding certain terms in the claim limitations of the '600 and '862 patents. Mycogen Plant Science, Inc. v. Monsanto Co., No. 96-505 (D. Del. Dec. 29, 1997) [hereinafter Mycogen claim construction]. The case was then tried before a jury in a ten-day trial from January 20 to February 3, 1998. All 24 claims of the '600 patent and all 24 claims of the '862 patent were at issue in the trial. A variety of different Monsanto products were accused of infringement, including Bt genes adapted for expression in potato, corn, and cotton plants. At the close of the trial, the jury was given a special verdict form with 17 different questions covering the issues of infringement, validity and damages. On February 3, 1998, the jury returned a verdict finding that the defendants' products did not literally infringe the contested claims of either the '600 patent or the '862 patent. The jury also found that all of the contested claims of both the '600 and '862 patents were anticipated and therefore invalid because Monsanto invented the subject matter before the priority date of Mycogen's patents.

The jury did not enter a decision on the verdict questions regarding whether Monsanto actively induced others to make, use, sell, or offer to sell infringing products, or whether Monsanto actively induced farmers to infringe by using infringing products. In addition, the jury did not reach a decision but noted "N/A" to the following questions: (1) whether any of the contested claims of the '600 and '862 patents are invalid because the specification of the patents would not have enabled a person of ordinary skill in the art as of September 9, 1988, to make use of the claimed invention without undue experimentation; (2) whether the '600 and '862 patents are invalid because the inventors failed to adequately disclose in the patent specification what they believed, as of September 9, 1988, to be the best mode for practicing their invention; and (3) whether the '600 and '862 patents are invalid because they do not clearly and distinctly claim the subject matter of the invention. Exactly what "N/A" stands for on the jury verdict and interrogatory form is unclear and was the subject of post-trial dispute by the parties. On February 5, 1998, the district court entered judgment in favor of defendants. Mycogen Plant Science, Inc. v. Monsanto Co., No. 96-505 (D. Del. Feb. 5, 1998).

Both parties then made a variety of post-trial motions. In particular, Mycogen made a motion for a new trial on a theory of inconsistent jury verdicts. Mycogen argued that the jury's finding of noninfringement was inconsistent with the jury's finding of anticipation due to prior invention by Monsanto, because the gene products that formed the basis of the anticipatory prior invention research were also the foundation for the various allegedly infringing Monsanto products.

The district court issued a post-trial opinion on August 18, 1999, and issued a revised opinion on September 8, 1999, ruling on the post-trial motions. Mycogen Plant Science, Inc. v. Monsanto Co., 61 F. Supp. 2d 199 (D. Del. 1999). The district court first granted Mycogen's motion for JMOL that Monsanto's processes and resulting products infringed and that Monsanto also induced infringement of the '600 and '862 patents. Reasoning that this JMOL resolved the issue of inconsistent verdicts, the district court then denied Mycogen's motion for a new trial. The district court also denied Mycogen's motion for JMOL requesting the court to set aside the jury's finding of anticipation due to prior invention by Monsanto.

The district court granted Monsanto's motion for JMOL holding that the claims of the '600 and '862 patents were invalid for lack of enablement pursuant to 35 U.S.C. 112. The district court denied Monsanto's motion for attorneys' fees based upon alleged inequitable conduct by Mycogen.

II Scientific Background

The district court's opinion provides an excellent, detailed explanation of the relevant science pertaining to the patents at issue. An understanding of the relevant technology is important for a full understanding of the legal questions addressed herein. Therefore, we substantially reproduce the scientific background information portion of the district court's opinion:

Two scientific topics are central to this case: (1) Bacillus thuringiensis ("Bt"), a naturally occurring bacterium; and (2) genetic engineering.

A. Background information on Bacillus thuringiensis

Bacillus thuringiensis is a naturally occurring bacterium found in soil. Bt possesses an unusual property - it produces a protein that kills certain crop-destroying insects. This protein is known as a "pesticidal protein toxin," "pesticidal protein," or "toxic crystal protein." When eaten by certain insects, the protein dissolves the insects' stomach linings, causing the insects to die. While the Bt protein is a natural pesticide, it is not harmful to humans, animals, or beneficial insects like bees and ladybugs.

The Bt protein is particularly deadly for insects like the European corn borer. This worm-like insect feeds on corn plants, eating its way into stalks and ears. The European corn borer can kill a plant outright or dramatically reduce the size and number of kernels that grow on an ear. This pest costs American farmers as much as an estimated $1 billion a year in lost crops.

For years, farmers have been spraying their crops with pesticides like the Bt protein as well as other chemicals. Spraying, however, is not always effective because some insects, including the European corn borer, tunnel into plants soon after the insects hatch or stay on the underside of leaves, where the spray does not reach them. In addition to being ineffective, spraying adds to farmers' costs and the spraying of some pesticides raises environmental and health concerns.

Scientists have long considered the idea of introducing genes from different...