Mycogen Plant Science v. Monsanto Co

• Decision Date: 30 May 2001
• Citation: 58 USPQ2d 1891,252 F.3d 1306
• Parties: (Fed. Cir. 2001) MYCOGEN PLANT SCIENCE, INC., and AGRIGENETICS, INC., Plaintiffs-Appellants, v. MONSANTO COMPANY, Defendant- Appellees. 00-1127 DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1306

252 F.3d 1306 (Fed. Cir. 2001)

MYCOGEN PLANT SCIENCE, INC., and AGRIGENETICS, INC., Plaintiffs-Appellants, v. MONSANTO COMPANY, Defendant- Appellees.

00-1127

United States Court of Appeals for the Federal Circuit

DECIDED: May 30, 2001

Appealed from: United States District Court for the Southern District of California, Judge Napoleon A. Jones, Jr. [Copyrighted Material Omitted] Daniel J. Thomasch, Orrick, Herrington & Sutcliffe LLP, of New York, New York, argued for plaintiffs-appellants. With him on the brief were Richard W. Mark, and Robert M. Isackson; and Craig R. Kaufman, of Menlo Park, California.

John F. Lynch, Howrey Simon Arnold & White, LLP, of Houston, Texas, argued for defendant-appellee. With him on the brief were Susan K. Knoll, Melinda L. Patterson, Michael E. Lee, and Steven G. Spears.

Before CLEVENGER, BRYSON, and LINN, Circuit Judges.

BRYSON, Circuit Judge.

Mycogen Plant Science, Inc., and its licensee, Agrigenetics, Inc., (collectively "Mycogen") filed suit against the Monsanto Company in the United States District Court for the Southern District of California, charging Monsanto with infringing Mycogen's U.S. Patent No. 5,380,831 (the '831 patent). On Monsanto's motions for summary judgment, the district court ruled, inter alia, that the process claims of the '831 patent are invalid under 35 U.S.C. § 102(g); that Monsanto could not have infringed Mycogen's process claims under 35 U.S.C. § 271(g) based on any process Monsanto performed before the '831 patent issued; and that prosecution history estoppel barred application of the doctrine of equivalents to the product claims of the '831 patent. On appeal, Mycogen argues that each of those rulings is wrong. For its part, Monsanto argues that the judgment of invalidity can be affirmed on the alternative ground of lack of enablement under 35 U.S.C. § 112, paragraph 1.

We conclude that the district court improperly resolved disputed questions of material fact pertaining to the issue of prior invention, and we therefore reverse the court's ruling on summary judgment that the '831 patent is invalid under 35 U.S.C. § 102(g). We decline to affirm the summary judgment of invalidity on the alternative ground of non-enablement, as urged by Monsanto, but leave to the district court the task of determining in the first instance whether there is a genuine issue of material fact as to enablement based on its assessment of the evidence presented to it in the summary judgment proceeding. We affirm the district court's ruling on the interpretation of 35 U.S.C. § 271(g) and its ruling that Monsanto is not liable for infringement under the doctrine of equivalents.

I

This case is closely related to another infringement suit, the first of two related actions involving Mycogen and Monsanto in the District of Delaware. Mycogen Plant Science, Inc. v. Monsanto Co., 243 F.3d 1316, 58 USPQ2d 1030 (Fed. Cir. 2001) ("Delaware I"). The patents at issue in Delaware I were U.S. Patent No. 5,567,600 (the '600 patent) and U.S. Patent No. 5,567,862 (the '862 patent), both of which are owned by Mycogen. Those two patents are child patents of the '831 patent, which is at issue in this case. All three patents are entitled "Synthetic Insecticidal Crystal Protein Gene." The three patents have virtually identical specifications, and they contain similar claims. This court's recent decision in Delaware I affirmed both the district court's claim construction and the jury's verdict finding the claims of the '600 patent and the '862 patent invalid due to prior invention under 35 U.S.C. § 102(g). 243 F.3d at 1320, 58 USPQ2d at 1033.

The '831 patent, like the '600 and '862 patents, involves the technology of genetically engineering plant genes to protect plants from insect pests. The court's opinion in Delaware I describes the scientific background relating to the insecticidal characteristics of Bacillus thuringiensis ("Bt"), a naturally occurring bacterium that served as the starting point for research into the inventions and the genetic engineering techniques involved. The Delaware I opinion also describes most of the background facts that are material to this decision, particularly with respect to the research activities that culminated in the Mycogen patents and the competing research activities by scientists at Monsanto.

II

Mycogen appeals the district court's grant of summary judgment holding claims 1, 3, 4, 8, and 11 of the '831 patent invalid as anticipated by prior invention and holding the remaining process claims of the '831 patent, claims 2, 5, 6, 7, 9, 10, and 12, invalid as obvious in light of the same prior work. The prior invention on which the court relied consisted of work done by scientists at Monsanto. As the grant of summary judgment was based on the court's ruling on prior invention, the validity of all 12 claims can be considered together on appeal.

Under 35 U.S.C. § 102(g)(2), an applicant is not entitled to a patent if "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376-79, 231 USPQ 81, 87-90 (Fed. Cir. 1986). An inventor can establish that he was the first to invent under section 102(g) by showing either that he was first to reduce the invention to practice or that he was first to conceive the invention and then exercised reasonable diligence in attempting to reduce the invention to practice from a date just prior to the other party's conception to the date of his reduction to practice. 35 U.S.C. § 102(g) ("In determining priority of invention . . . there shall be considered . . . the reasonable diligence of one who was the first to conceive and last to reduce to practice, from a time prior to conception by the other."); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578, 38 USPQ2d 1288, 1291 (Fed. Cir. 1996). Accordingly, for Monsanto to succeed in challenging the validity of Mycogen's '831 patent based on Monsanto's claim to prior inventorship, Monsanto must show by clear and convincing evidence both (1) that it reduced the invention to practice before Mycogen, and (2) that Mycogen did not conceive the invention first and then exercise diligence in reducing it to practice from before the date of Monsanto's conception.

The district court ruled that collateral estoppel from Delaware I required it to conclude that Monsanto had reduced the invention of the '831 patent to practice before Mycogen. The court further ruled, however, that collateral estoppel did not apply to the issue of whether Mycogen had been the first to conceive the invention and then had been diligent in reducing the invention to practice during the critical period, which the court properly defined as beginning just before Monsanto's conception and ending with Mycogen's constructive reduction to practice on September 9, 1988. Addressing the merits of that issue, the court concluded that Monsanto had established that Mycogen had not been diligent during the critical period. The court therefore granted summary judgment of invalidity based on Monsanto's prior invention.

We agree with the district court that collateral estoppel requires the court to conclude that Monsanto reduced the invention to practice before Mycogen, and that collateral estoppel does not resolve the question whether Mycogen was the first to conceive and then was diligent during the critical period. On the merits of the summary judgment question, however, we do not agree that Monsanto has met its burden of showing that there are no issues of material fact regarding whether Mycogen was the first to conceive the invention and then diligently reduce it to practice.

A

The district court concluded that collateral estoppel required it to adopt findings from the Delaware suit on two issues: claim construction and Monsanto's reduction to practice prior to Mycogen. In Delaware I, this court affirmed the Delaware district court on both of those issues. 243 F.3d at 1330, 1337, 58 USPQ2d at 1041, 1047.

It is undisputed that as a result of collateral estoppel, a judgment of invalidity in one patent action renders the patent invalid in any later actions based on the same patent. Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 349-50, 169 USPQ 513, 527-28 (1971). Collateral estoppel also applies to common issues in actions involving different but related patents. See, e.g., Amgen, Inc. v. Genetics Inst., Inc., 98 F.3d 1328, 1329-32, 40 USPQ2d 1524, 1524-27 (Fed. Cir. 1996) (collateral estoppel renders claims invalid when a narrower claim in a parent patent with the same specification had been held invalid as not enabled in an earlier action); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1136, 227 USPQ 543, 546 (Fed. Cir. 1985) (collateral estoppel can preclude relitigation of the same issue even in connection with different claims). Thus, the question presented here, with respect to the application of collateral estoppel, is whether any of the issues resolved in the Delaware action are the same as any of the issues presented in this case.

The independent process claim of the '831 patent recites:

1.A method of designing a synthetic Bacillus thuringiensis gene to be more highly expressed in plants, comprising the steps of:

analyzing the coding sequence of a gene derived from a Bacillus thuringiensis which encodes an insecticidal protein toxin, and

modifying a portion of said coding sequence to yield a modified sequence which contains a greater number of codons preferred by the intended plant host than did said coding sequence.

'831 patent, col. 38, ll. 25-34.

In comparison, a representative claim of the '600 patent, which was found invalid in the Delaware suit, recites:

1. A method of designing a synthetic Bacillus thuringiensis gene to be more highly expressed in plants, comprising the steps of:

(a) analyzing the coding sequence of...