EI DuPont De Nemours and Company

The big news yesterday was the Circuit&rsquo;s en banc decision in Wi-Fi&nbsp; One v. Broadcom in which a majority of the court holds that, given the strong presumption in favor of judicial review, the Circuit should hear appeals of the issue of whether an IPR request has been filed within the one year limitation. Readers will recall that 35 U.S.C. &sect; 315(b) provides that an IPR request must be served within one year of the time the real party in interest is served with a complaint for patent infringement. This decision will be reported in full in this week&rsquo;s report that will be issued at the end of the week but is appended here. There was only one precedential Circuit opinion last week. In Monsanto v. DuPont, the Circuit affirms a Board determination of invalidity of a Monsanto patent directed to soybeans having improved resistance to Round-Up. Thanks to my newest colleague Cristin Wagner for her help with this week&rsquo;s report. Cristin comes to us with a wealth of patent litigation experience focused primarily on regulatory and business issues facing the pharmaceutical industry. Pete Heuser Monsanto Technology LLC v. E.I. Dupont De Nemours &amp; Company, Fed. Cir. Case 2017-1032 (January 5, 2018) The panel affirms an inter partes reexamination determination of invalidity of various claims of a Monsanto patent based on anticipation and obviousness. Monsanto&rsquo;s &lrm;&rsquo;&lrm;953 patent is directed to soybeans having greater resistance to Monsanto&rsquo;s Round-Up weed-killing herbicide. Monsanto contends that the Board erred by: (1) misconstruing the &ldquo;about 3% or less&rdquo; limitation in the &rsquo;953 patent to include prior products having a linolenic acid content of&nbsp; 4%; (2) &ldquo;rejecting the Asserted Claims for anticipation&rdquo; based on &ldquo;an unlawful composite&rdquo; of Booth and the Kinney Declarations, the latter of which Monsanto alleges are non-prior art references; and (3) employing a legally erroneous &ldquo;accidental obviousness theory for claim 2.&rdquo; The panel holds that the Board reasonably interpreted Booth&rsquo;s prior art seed line as containing 4% linolenic acid &ldquo;to be within the scope of &lrm;&lsquo;&lrm;about 3%&lrm;,&rsquo;&rdquo; &lrm; as recited in claim 1. Here, the specification provides an example with &ldquo;a linolenic acid content of about 3%.&rdquo; The specification further identifies a paper by Wilcox as stating that the linolenic acid example has a range of from 2.3% to 4.1%. Monsanto maintains that even if it had been appropriate to construe &lrm;&ldquo;&lrm;about 3% or less&lrm;&rdquo;&lrm; based on Wilcox, the Board erred in defining the claims based on the highest, most outlying data point for linolenic acid in Wilcox&rsquo;s sample rather than its mean and standard deviation values.&nbsp; However, Monsanto fails to identify what qualifies as an &ldquo;outlier&rdquo; or cite anything in the intrinsic record contradicting the &ldquo;about 3%&rdquo; claim interpretation before the panel.&nbsp; The panel then turns to anticipation, ruling that there is substantial evidence to support the Board&rsquo;s finding that Booth expressly discloses step (a) of claim 1 with the &ldquo;about 3% or less&rdquo; limitation. Substantial evidence also supports the Board&rsquo;s finding that Booth &ldquo;necessarily includes&rdquo; step (b) of claim 1, which requires &ldquo;obtaining a progeny plant&rdquo; having a seed oil fatty acid composition with low levels of linolenic acid (about 3% or less) and oleic acid levels from 55% to 80%. Monsanto argues that Booth does not anticipate step (b) because Table 12 does not explicitly identify a progeny with the fatty acid by weight characteristics of claim 1 step (b), but rather identifies progeny with seed oil oleic acid contents above the &rsquo;953 patent&rsquo;s claimed ranges, which &ldquo;forecloses any claim of inherency.&rdquo; But the panel agrees with the Board that Booth &ldquo;clearly informs a PHOSITA that Table 12 does not represent the full scope of the progeny lines resulting from the cross. Indeed, Booth expressly states that multiple generations of plants, including the &#39;F2:3 families&#39; generations not shown in Table 12, were obtained from the cross. Because Booth describes obtaining many progeny from the cross families of Example 8 but only reports a &#39;select&#39; subset of results in Table 12, inherent&nbsp; anticipation&nbsp; applies&nbsp; here because&nbsp; the Booth disclosures must necessarily include the unstated limitation.&rdquo; Monsanto argued that the Board impermissibly looked to &ldquo;non-prior art data&rdquo; and &ldquo;secret data&rdquo; by using the Kinney Declarations to support its anticipation finding.&nbsp; But the panel rules that Monsanto confuses prior art with extrinsic evidence used to support what is &ldquo;necessarily present&rdquo; in a prior art&rsquo;s teaching.&nbsp; Extrinsic evidence may be used to interpret the allegedly anticipating reference and to shed light on what it would have meant to a PHOSITA.&nbsp; The panel also concludes that substantial evidence supports the Board&rsquo;s finding of obviousness as to dependent claim 2, basing its factual findings in large part upon its prior anticipation findings for similar claim 29. The Board reasoned that a PHOSITA would have a reasonable expectation of success in performing the D2T or fan allele cross. Read the full opinion Written by Peter E. Heuser, Schwabe, Williamson &amp; Wyatt, P.C. This article was originally published on Schwabe, Williamson &amp; Wyatt&#39;s Ideas Fuel Industries Section.

The big news yesterday was the Circuit&rsquo;s en banc decision in Wi-Fi&nbsp; One v. Broadcom in which a majority of the court holds that, given the strong presumption in favor of judicial review, the Circuit should hear appeals of the issue of whether an IPR request has been filed within the one year limitation. Readers will recall that 35 U.S.C. &sect; 315(b) provides that an IPR request must be served within one year of the time the real party in interest is served with a complaint for patent infringement. This decision will be reported in full in this week&rsquo;s report that will be issued at the end of the week but is appended <a href="http://bit.ly/2mgccxJ" text="here">here</a>.

	There was only one precedential Circuit opinion last week. In Monsanto v. DuPont, the Circuit affirms a Board determination of invalidity of a Monsanto patent directed to soybeans having improved resistance to Round-Up.

	Thanks to my newest colleague <a href="https://www.schwabe.com/attorneys-cristin-wagner">Cristin Wagner</a> for her help with this week&rsquo;s report. Cristin comes to us with a wealth of patent litigation experience focused primarily on regulatory and business issues facing the pharmaceutical industry.

	Pete Heuser

	Monsanto Technology LLC v. E.I. Dupont De Nemours &amp; Company, Fed. Cir. Case 2017-1032 (January 5, 2018)

	The panel affirms an inter partes reexamination determination of invalidity of various claims of a Monsanto patent based on anticipation and obviousness.

	Monsanto&rsquo;s &lrm;&rsquo;&lrm;953 patent is directed to soybeans having greater resistance to Monsanto&rsquo;s Round-Up weed-killing herbicide. Monsanto contends that the Board erred by: (1) misconstruing the &ldquo;about 3% or less&rdquo; limitation in the &rsquo;953 patent to include prior products having a linolenic acid content of&nbsp; 4%; (2) &ldquo;rejecting the Asserted Claims for anticipation&rdquo; based on &ldquo;an unlawful composite&rdquo; of Booth and the Kinney Declarations, the latter of which Monsanto alleges are non-prior art references; and (3) employing a legally erroneous &ldquo;accidental obviousness theory for claim 2.&rdquo;

	The panel holds that the Board reasonably interpreted Booth&rsquo;s prior art seed line as containing 4% linolenic acid &ldquo;to be within the scope of &lrm;&lsquo;&lrm;about 3%&lrm;,&rsquo;&rdquo; &lrm; as recited in claim 1. Here, the specification provides an example with &ldquo;a linolenic acid content of about 3%.&rdquo; The specification further identifies a paper by Wilcox as stating that the linolenic acid example has a range of from 2.3% to 4.1%. Monsanto maintains that even if it had been appropriate to construe &lrm;&ldquo;&lrm;about 3% or less&lrm;&rdquo;&lrm; based on Wilcox, the Board erred in defining the claims based on the highest, most outlying data point for linolenic acid in Wilcox&rsquo;s sample rather than its mean and standard deviation values.&nbsp; However, Monsanto fails to identify what qualifies as an &ldquo;outlier&rdquo; or cite anything in the intrinsic record contradicting the &ldquo;about 3%&rdquo; claim interpretation before the panel.&nbsp;

	The panel then turns to anticipation, ruling that there is substantial evidence to support the Board&rsquo;s finding that Booth expressly discloses step (a) of claim 1 with the &ldquo;about 3% or less&rdquo; limitation. Substantial evidence also supports the Board&rsquo;s finding that Booth &ldquo;necessarily includes&rdquo; step (b) of claim 1, which requires &ldquo;obtaining a progeny plant&rdquo; having a seed oil fatty acid composition with low levels of linolenic acid (about 3% or less) and oleic acid levels from 55% to 80%.

	Monsanto argues that Booth does not anticipate step (b) because Table 12 does not explicitly identify a progeny with the fatty acid by weight characteristics of claim 1 step (b), but rather identifies progeny with seed oil oleic acid contents above the &rsquo;953 patent&rsquo;s claimed ranges, which &ldquo;forecloses any claim of inherency.&rdquo; But the panel agrees with the Board that Booth &ldquo;clearly informs a PHOSITA that Table 12 does not represent the full scope of the progeny lines resulting from the cross. Indeed, Booth expressly states that multiple generations of plants, including the &#39;F2:3 families&#39; generations not shown in Table 12, were obtained from the cross. Because Booth describes obtaining many progeny from the cross families of Example 8 but only reports a &#39;select&#39; subset of results in Table 12, inherent&nbsp; anticipation&nbsp; applies&nbsp; here because&nbsp; the Booth disclosures must necessarily include the unstated limitation.&rdquo;

	Monsanto argued that the Board impermissibly looked to &ldquo;non-prior art data&rdquo; and &ldquo;secret data&rdquo; by using the Kinney Declarations to support its anticipation finding.&nbsp; But the panel rules that Monsanto confuses prior art with extrinsic evidence used to support what is &ldquo;necessarily present&rdquo; in a prior art&rsquo;s teaching.&nbsp; Extrinsic evidence may be used to interpret the allegedly anticipating reference and to shed light on what it would have meant to a PHOSITA.&nbsp;

	The panel also concludes that substantial evidence supports the Board&rsquo;s finding of obviousness as to dependent claim 2, basing its factual findings in large part upon its prior anticipation findings for similar claim 29. The Board reasoned that a PHOSITA would have a reasonable expectation of success in performing the D2T or fan allele cross.

	<a href="http://bit.ly/2Fj5obo" text="Read the full opinion">Read the full opinion</a>

	Written by <a href="http://bit.ly/2nJPqlJ" text="http://bit.ly/2nJPqlJ">Peter E. Heuser</a>, Schwabe, Williamson &amp; Wyatt, P.C.

	This article was originally published on Schwabe, Williamson &amp; Wyatt&#39;s <a href="http://bit.ly/2Bj3fOd" text="http://bit.ly/2Bj3fOd">Ideas Fuel Industries Section</a>.

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Federal Circuit Summary Before Dyk, Reyna, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: Extrinsic evidence can be used to find that an allegedly anticipating reference necessarily includes relevant claim limitations. E.I. DuPont de Nemours &amp; Co. (&ldquo;DuPont&rdquo;) sought inter partes reexamination of a patent owned by Monsanto Technology LLC (&ldquo;Monsanto&rdquo;). During the inter partes reexamination, DuPont submitted two declarations from a named inventor of an allegedly anticipating prior art reference. Relying on the declarations, the PTAB found that the prior art reference &ldquo;necessarily includes&rdquo; certain claim limitations of Monsanto&rsquo;s patent. Accordingly, the PTAB found that certain claims of Monsanto&rsquo;s patent were anticipated. Appealing to the Federal Circuit, Monsanto argued that the PTAB erred by relying on the declarations to reject the asserted claims for anticipation, which Monsanto argued contained secret and non-prior art data. The Federal Circuit affirmed the PTAB&rsquo;s decision. Relying on the declarations, the Federal Circuit held that substantial evidence demonstrates that the prior art reference inherently anticipates the asserted claims. In response to Monsanto&rsquo;s argument that the declarations did not qualify as prior art, the Federal Circuit explained that &ldquo;[e]xtrinsic evidence may be used to interpret the allegedly anticipating reference.&rdquo; Next, in response to Monsanto&rsquo;s argument that the declarations were &ldquo;secret data&rdquo; because they were not published, the Federal Circuit explained that the declarations were offered in support of the prior art already of record and that such reliance on extrinsic evidence is proper in an inherency analysis. This case is:&nbsp;MONSANTO TECHNOLOGY LLC v. E.I. DUPONT DE NEMOURS Written By: Andrea Cheek and Thomas Woodland Edited By: Paul Stewart

Federal Circuit Summary

	Before Dyk, Reyna, and Wallach. Appeal from the Patent Trial and Appeal Board.

	Summary: Extrinsic evidence can be used to find that an allegedly anticipating reference necessarily includes relevant claim limitations.

	E.I. DuPont de Nemours &amp; Co. (&ldquo;DuPont&rdquo;) sought inter partes reexamination of a patent owned by Monsanto Technology LLC (&ldquo;Monsanto&rdquo;). During the inter partes reexamination, DuPont submitted two declarations from a named inventor of an allegedly anticipating prior art reference. Relying on the declarations, the PTAB found that the prior art reference &ldquo;necessarily includes&rdquo; certain claim limitations of Monsanto&rsquo;s patent. Accordingly, the PTAB found that certain claims of Monsanto&rsquo;s patent were anticipated.

	Appealing to the Federal Circuit, Monsanto argued that the PTAB erred by relying on the declarations to reject the asserted claims for anticipation, which Monsanto argued contained secret and non-prior art data.

	The Federal Circuit affirmed the PTAB&rsquo;s decision. Relying on the declarations, the Federal Circuit held that substantial evidence demonstrates that the prior art reference inherently anticipates the asserted claims. In response to Monsanto&rsquo;s argument that the declarations did not qualify as prior art, the Federal Circuit explained that &ldquo;[e]xtrinsic evidence may be used to interpret the allegedly anticipating reference.&rdquo; Next, in response to Monsanto&rsquo;s argument that the declarations were &ldquo;secret data&rdquo; because they were not published, the Federal Circuit explained that the declarations were offered in support of the prior art already of record and that such reliance on extrinsic evidence is proper in an inherency analysis.

	This case is:&nbsp;<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1032.Opinion.1-4-2018.1.PDF">MONSANTO TECHNOLOGY LLC v. E.I. DUPONT DE NEMOURS</a>

	Written By: <a href="http://bit.ly/2pf1yLL" text="http://bit.ly/2pf1yLL">Andrea Cheek</a> and <a href="http://bit.ly/2qtv7dP" text="http://bit.ly/2qtv7dP">Thomas Woodland</a>

	Edited By: <a href="http://bit.ly/2CZATGU" text="http://bit.ly/2CZATGU">Paul Stewart</a>