The U.S. Court of Appeals for the Federal Circuit affirmed a district court judgment holding several patents unenforceable due to inequitable conduct. Monsanto Co. v. Bayer Bioscience N.V., Case No. 07-1109, (Fed. Cir., Jan 25, 2008) (Gajarsa, J.).
Monsanto brought a declaratory judgment action against Bayer Bioscience challenging the validity and enforceability of four Bayer patents, U.S. Patent Nos. 5,545,565 (the '565 patent), 5,767,372 (the '372 patent), 6,107,546 (the '546 patent) and 5,254,799 (the '799 patent), which related to Monsanto's transgenic corn products involving chimeric Bacillus thuringiensis (Bt) genes. The court granted summary judgment finding unenforceability due to inequitable conduct. The Federal Circuit vacated and, on remand, Bayer dismissed all claims with respect to the '799, '372 and '546 patents leaving only the '575 patent in suit. Following a bench trial, the court ultimately held all four patents unenforceable for inequitable conduct.
The district court's inequitable conduct finding was based on the actions of Dr. Meulemanns, the Bayer representative who prosecuted the patents at issue. During prosecution of the '565 patent, an obviousness rejection was issued based on an abstract submitted by Bayer. Dr. Meulemanns overcame the rejection, arguing that the abstract failed to teach the claimed genes. The abstract was obtained during a poster session attended by Dr. Mariani, a Bayer scientist who had taken detailed notes pertaining to the substance of the poster. Dr. Mariani recalled detailed information regarding the substance of her notes and testified that the notes in effect, taught the genes of the '565 patent. She further testified that the notes had been disseminated to Dr. Meulemanns and his group. Dr. Meulemanns testified that he spoke with Dr. Mariani about the poster, but asserted that she did not remember "anything" about the presentation. The district court found this explanation to lack credibility, particularly in light of Mariani's ability to testify with clarity and detail about the contents of the notes during her deposition. The district court found the notes to be material to patentability, both under the "reasonable examiner" test and because they would have established a "prima facie case of unpatentability." Skeptical regarding Dr. Meulemanns' testimony, the district court found the requisite intent to deceive the U.S. Patent and Trademark Office (USPTO).
On appeal, Bayer argued that the district court erred in finding the '565 patent unenforceable and that it lacked jurisdiction to rule on the '799, '372, and '546 patents. The Court affirmed the materiality of the Mariani notes because they in fact, taught the genes of the '565 patent. Moreover, the Court held that absent a credible reason for Meulemanns to have not understood the content of Mariani's notes after having discussed them with Mariani, the district court did not clearly err in inferring the requisite intent. On the issue of jurisdiction, the Court reiterated its position in Nilssen and held that since the court maintained jurisdiction in the case under rule 285, it was likewise sanctioned to rule on the issue of inequitable conduct for the patents no longer in suit.
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