United States: Claim Construed According To Accepted Scientific Meaning Where Specification And Prosecution History Did Not Justify Alternative Construction

In Bayer CropScience AG v. Dow AgroSciences, LLC, No. 13-1002 (Fed. Cir. Sept. 3, 2013), the Federal Circuit affirmed the district court's SJ of noninfringement because it did not accept the patent owner's proposed claim construction.

U.S. Patent No. 6,153,401 ("the '401 patent"), owned by Bayer CropScience AG ("Bayer"), relates to genetically modifying plants to render them resistant to the commonly used herbicide, 2,4-dichlorophenoxyacetic acid ("2,4-D"). The method involves inserting into plant cells a gene encoding an enzyme that can break down the 2,4-D herbicide into harmless products by converting it to 2,4-dichlorophenol ("2,4-DCP"). The '401 patent discloses the first identified gene encoding such an enzyme and describes a "growth test" for isolating it.

The enzymatic reaction requires the presence of an oxygen molecule (O2), and the inventors understood at the time of filing that one of the oxygen atoms combined with 2,4-D to form 2,4-DCP and glyoxylate by "bringing about the cleavage of the side chain of 2,4-D." Slip op. at 4 (citation omitted). The inventors did not know what happened to the second oxygen atom, but relied on an unverified belief that it ended up in water (H2O) and thus characterized the enzyme as a monooxygenase. While the application was pending, Bayer learned that the second oxygen atom did not actually end up in water such that the enzyme was not correctly characterized as a monooxygenase. Bayer did not change the language of its pending claim 1, which recited "[a] recombinant gene, comprising a DNA sequence encoding a polypeptide having the biological activity of 2,4-D monooxygenase . . . ." Id. at 5-6 (citation omitted).

Bayer sued Dow AgroSciences, LLC ("Dow") for infringement based on Dow's genetically modified seeds that are resistant to 2,4-D and other herbicides. Dow's accused seeds use resistance genes that are different from the gene identified in the '401 patent, but which also code for dioxygenases that catalyze the conversion of 2,4-D to 2,4-DCP. Bayer asserted that claim 1 encompasses any enzyme with "the biological activity of 2,4-D monooxygenase," meaning any enzyme that triggers cleaving of the side chain of 2,4-D to produce 2,4-DCP. After a Markman hearing and cross-motions for SJ, the district court rejected Bayer's proposed claim construction and granted SJ of noninfringement for Dow. Bayer appealed.

On appeal, the Federal Circuit noted that the case turned on whether Bayer's proposed construction of the term "the biological activity of 2,4-monooxygenase" as "bringing about the cleavage of the side chain of 2,4-D" was correct. The Court disagreed with Bayer's proposed construction for two reasons: (1) familiar aspects of textual analysis pointed strongly the other way; and (2) it would read independent claim 1 so broadly as to raise serious doubts about validity.

"In short, as the district court explained, the claim language has a strong accepted scientific meaning. Bayer's alternative construction strips the monooxygenase half of the claim phrase of its accepted descriptive meaning and then asserts a specification 'definition' of the biological-activity half. We do not find enough in the specification or prosecution history to justify those steps." Slip op. at 12.

First, the Federal Circuit concluded that Bayer's "efforts fight a facially straight-forward textual analysis." Id. at 8. The Court noted that the meaning of "monooxygenase" as an enzyme catalyzing a reaction in which one oxygen atom is incorporated into water and the other is incorporated into something other than water was undisputed. The Court concluded that putting "2,4-D" in front of "monooxygenase" appeared to be a standard way of conveying that the enzyme acts on 2,4-D, and that "the biological activity of" was naturally understood to refer to the activity that makes the identified enzyme a monooxygenase that acts on 2,4-D, namely, the attachment of one oxygen atom to the 2,4-D molecule to trigger cleaving with the other oxygen atom going to water. The Court found no indication that the '401 patent used the term "monooxygenase" differently from its accepted scientific meaning, which would be required for Bayer's position. The Court stated, "Familiar claim-construction policies regarding public notice and patentee drafting duties make it appropriate to demand such clarity here: Bayer chose the language based on an unverified belief that it accurately described its enzyme, learned that the belief was false while the application was pending, had seven years before its patent issued to alter the language, but never did." Id. at 9. The Court also disagreed with Bayer's position that the specification defined "biological activity" as "bringing about the cleavage of the side chain of 2,4-D." Id. at 11. The Court concluded that "the claim language has a strong accepted scientific meaning," and that "Bayer's alternative construction strips the monooxygenase half of the claim phrase of its accepted descriptive meaning and then asserts a specification 'definition' of the biological-activity half." Id. at 12. The Court held that these steps were not justified by the specification or prosecution history.

Second, the Federal Circuit concluded that Bayer's proposed construction would call into serious doubt the claim's validity under 35 U.S.C. § 112(a). According to the Court, Bayer's proposed construction went far beyond the identified enzyme and monooxygenases "to capture the broad functionally defined genus of enzymes that cause cleaving of the 2,4-D side chain." Id. The Court noted that the '401 patent disclosed a single embodiment, and that "neither the patent nor the knowledge in the art showed that what Bayer offered in place of a description of the shared structure—the growth test—correlated closely with an enzyme's structure." Id. at 14. According to the Court, the '401 patent provided at best a "roadmap" of how to complete the unfinished invention, and even with this "roadmap," not all members of the genus could be reliably discovered. The Court stated that "the significant invalidity troubles that accompany Bayer's construction substantiate our rejection of it." Id.

The Court noted that neither party presented a reason to go beyond rejecting Bayer's proposed claim construction, stating, "All we need and do say is that, because we do not accept the only claim construction under which Bayer has alleged infringement, we affirm the summary judgment of non-infringement." Id. at 16.

Judges: Prost, Bryson, Taranto (author)

[Appealed from D. Del., Judge Bumb]

This article previously appeared in Last Month at the Federal Circuit, October 2013.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
23 Jan 2018, Conference, Bangalore, India

Finnegan is a Bronze sponsor of the 10th annual Global Intellectual Property Convention, hosted by ITAG Business Solutions.

24 Jan 2018, Conference, California, United States

Finnegan is a Crystal sponsor of the American Intellectual Property Law Association Mid-Winter Institute, supporting the IP Practice in Japan Pre-Meeting.

30 Jan 2018, Webinar, Washington, DC, United States

As part of the Intellectual Property Institute of Canada’s webinar series, Finnegan partners Andrew Holtman and Jason Stach will share their insights on how the PTAB trial process is changing and how patent owners and petitioners alike can best position themselves for success.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions