Monsanto Tech. LLC v. E.I. Dupont De Nemours & Co.

• Citation: 878 F.3d 1336
• Decision Date: 05 January 2018
• Docket Number: 2017-1032
• Parties: MONSANTO TECHNOLOGY LLC, Appellant v. E.I. DUPONT DE NEMOURS & COMPANY, Appellee
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

878 F.3d 1336

MONSANTO TECHNOLOGY LLC, Appellant

v.E.I. DUPONT DE NEMOURS & COMPANY, Appellee

2017-1032

United States Court of Appeals, Federal Circuit.

Decided: January 5, 2018

Matthew James Hilmert, Winston & Strawn LLP, Chicago, IL, argued for appellant.

Michael J. Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for appellee. Also represented by Cora Renae Holt, Maureen Donovan Queler.

Before Dyk, Reyna, and Wallach, Circuit Judges.

Wallach, Circuit Judge.

Appellee E.I. DuPont de Nemours & Co. ("DuPont") sought inter partes reexamination of various claims of Appellant Monsanto Technology LLC's ("Monsanto") U.S. Patent No. 7,790,953 ("the '953 patent"). The U.S. Patent and Trademark Office's ("USPTO") Patent Trial and Appeal Board ("PTAB") issued a final decision that affirmed an examiner's rejection of claims 1, 7, 12–22, 24, and 27–30 ("the Asserted Claims") as anticipated by U.S. Patent No. 6,426,448 ("Booth"), and of, inter alia, claim 2 as obvious over Booth. See E.I. DuPont de Nemours & Co. v. Monsanto Tech. LLC , No. 2015-007692, 2016 WL 4255131, at *3 (P.T.A.B. Aug. 10, 2016).

Monsanto appeals. We have subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.

BACKGROUND

I. The Patented Technology

Entitled "Soybean Seed and Oil Compositions and Methods of Making Same," the '953 patent claims a two-step process for crossing (mating) two parent soybean lines to produce soybean seeds with a modified fatty acid profile. See '953 patent col. 111 ll. 34–67; id . col. 1 ll. 31–37. The '953 patent describes "the combination of transgenes that provide both moderate oleic acid levels and low saturated fat levels with soybean germplasm that contains mutations in soybean genes that confer low linolenic acid phenotypes." Id. , Abstract. Claim 1, which was amended during the reexamination, is the sole independent claim and is illustrative.¹ It recites:

A method of obtaining a soybean plant with an altered seed oil fatty acid composition comprising the steps of:

(a) crossing a first soybean parent line having a seed oil fatty acid composition comprising a linolenic acid content of about 3% or less² of total seed fatty acids by weight with a second soybean parent line having a seed oil fatty acid composition wherein the i) level of oleic acid is greater than about 55% of total seed fatty acids by weight, or ii) wherein both the level of saturated fatty acid is about 8% or less of total seed fatty acids by weight and the level of oleic acid is greater than about 55% of total seed fatty acids by weight, said second soybean parent line comprising either a transgene that decreases the expression of an endogenous soybean FAD2–1 gene to provide the level of oleic acid greater than about 55% of total seed fatty acids by weight of said second parent soybean line of (i); or both a transgene that decreases the expression of an endogenous soybean FATB gene and a trans gene that decreases the expression of an endogenous soybean FAD2–1 gene to provide the level of saturated fatty acid of about 8% or less by weight and the level of oleic acid greater than about 55% of total seed fatty acids by weight of said second parent soybean line of (ii); and

(b) obtaining a progeny^[3] plant exhibiting a seed oil fatty acid composition comprising a linolenic acid content of about 3% or less of total fatty acids by weight and also comprising either i) an oleic acid level in the range of [about] 55% to [about] 80% of total seed fatty acids by weight, or ii) both a saturated fatty acid level of about 8% or less of total seed fatty acids by weight and an oleic acid level of [about] 55% to [about] 80% of total seed fatty acids by weight, thereby obtaining a soybean plant with an altered seed oil fatty acid composition.

J.A. 329–30 (footnotes and emphases added) (alterations in original).⁴

II. Booth

Booth is directed toward a number of soybean crosses aimed at obtaining progeny with desired fatty acid compositions. See Booth col. 38 l. 53–col. 45 l. 43 (exs. 5–8), col. 47 l. 53–col. 48 l. 40 (ex. 11). Similar to the '953 patent, Booth discloses a "variety of novel soybean genes that alter oil quality." Id. col. 6 ll. 40–41. Specifically, Booth Example 8 describes a method of crossing two soybean lines, one with a "fan allele" or D3A gene for low linolenic acid content and the other with a D2T gene for high oleic acid content. See id. col. 25 l. 45–col. 26 l. 38 (Example 8: "Soybeans with High Oleic Acid and Low Linolenic Acid Content"); see also id . tbl. 12 (showing the fatty acid makeup of the selected progeny plants).

During the inter partes reexamination, DuPont submitted two declarations from one of Booth's named inventors, Dr. Anthony John Kinney (together, "the Kinney Declarations"). J.A. 133–275 (First Kinney Declaration), 359–71 (Second Kinney Declaration). DuPont produced the Kinney Declarations to show data from additional progeny produced by following the disclosed method of Example 8, "including plants not selected for inclusion in Table 12 of the Booth patent." J.A. 360 (footnote omitted). Relevant here, the PTAB relied upon the Kinney Declarations to interpret the fatty acid properties of the F2:3 generation because it found the "F2:3 generation results provided in Exhibit A of the Second Kinney Declaration represent[ed] the lines of all resulting progeny" from a cross prepared according to Booth Example 8 and related Table 12 that were not included in Booth Table 12. E.I. DuPont , 2016 WL 4255131, at *4 n.9 ; see J.A. 360 n.1.

DISCUSSION

Monsanto contends that the PTAB erred by: (1) misconstruing the "about 3% or less" limitation in the '953 patent to include progeny with a linolenic acid content of 4%, Appellant's Br. 45–50; (2) "rejecting [the Asserted C]laims for anticipation" based on "an unlawful composite" of Booth and the Kinney Declarations, the latter of which Monsanto alleges are non-prior art references, id. at 33–34 (capitalization and alterations omitted); see id. at 33–50; and (3) employing a legally erroneous "accidental obviousness theory for claim 2," id. at 51 (capitalization and alterations omitted); see id. at 50–60. After articulating the applicable standard of review, we address these arguments in turn.

I. Standard of Review

"We review the PTAB's factual findings for substantial evidence and its legal conclusions de novo." Redline Detection, LLC v. Star Envirotech, Inc. , 811 F.3d 435, 449 (Fed. Cir. 2015) (citation omitted). "Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence," meaning that "[i]t is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." In re NuVasive, Inc. , 842 F.3d 1376, 1379, 1380 (Fed. Cir. 2016) (internal quotation marks and citations omitted). If two "inconsistent conclusions may reasonably be drawn from the evidence in record, [the PTAB]'s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence." In re Cree, Inc. , 818 F.3d 694, 701 (Fed. Cir. 2016) (internal quotation marks and citation omitted).

II. Claim Construction

A. Legal Standard

We review the PTAB's ultimate claim construction de novo and its underlying factual findings for substantial evidence. In re CSB–Sys. Int'l, Inc. , 832 F.3d 1335, 1340 (Fed. Cir. 2016) (citing, inter alia, Teva Pharm. USA, Inc. v. Sandoz, Inc. , ––– U.S. ––––, 135 S.Ct. 831, 840–41, ––– L.Ed.2d –––– (2015) ). "During reexamination proceedings of unexpired patents, ... the [PTAB] uses the broadest reasonable interpretation consistent with the specification standard, or BRI." Id. , 832 F.3d at 1340 (internal quotation marks and citations omitted). A specification "includes both the written description and the claims" of the patent. In re Packard , 751 F.3d 1307, 1320 n.11 (Fed. Cir. 2014). A patent's specification, together with its prosecution history,⁵ constitutes intrinsic evidence to which the PTAB gives priority when it construes claims. See Microsoft Corp. v. Proxyconn, Inc. , 789 F.3d 1292, 1297–98 (Fed. Cir. 2015). When the PTAB reviews only evidence intrinsic to the patent, the PTAB's determination will amount solely to a determination of law, which we review de novo. See In re CSB–Sys. , 832 F.3d at 1340.

B. The PTAB Properly Construed the "About 3% or Less" Limitation in Step (a)

The PTAB "reasonably interpreted" Booth's parent line containing 4% linolenic acid "to be within the scope of ‘about 3%,’ " as recited in claim 1 step (a).⁶ E.I. DuPont , 2016 WL 4255131, at *6.⁷ Monsanto maintains that the PTAB's construction is inconsistent with the specification. Appellant's Br. 45–50; see J.A. 5006 (arguing before the PTAB that a "4% linolenic acid content is outside the scope of a 3% linolenic acid content" (capitalization omitted)).⁸ We disagree.

The claim language is not instructive, so we turn to the remainder of the specification. See Marine Polymer Techs., Inc. v. HemCon, Inc. , 672 F.3d 1350, 1358 (Fed. Cir. 2012). Indeed, in Phillips , we held that the specification "is the single best guide to the meaning of a disputed term." 415 F.3d at 1315 (internal quotation marks and citation omitted). Here, the specification provides examples, which are "included to demonstrate preferred embodiments of the invention." '953 patent col. 29 ll. 64–65. Example 9 describes a parent line designated as the "C1640 line" with "a linolenic acid content of about 3%." Id. col. 45 l. 65; see id. col. 45 ll. 64–66. The specification further identifies Wilcox, J.R. et al., Inheritance of Low Linolenic Acid Content of the Seed Oil of a mutant In Glycine

Max , Theoretical & Applied Genetics (1985) ("Wilcox") as the source of this C1640 line, see id. col. 46 ll. 2–5, and Wilcox states that the C1640 line has a range of linolenic acid contents from 2.3% to 4.1%, J.A. 5098. In light of this intrinsic evidence,⁹ we agree with the...