IP Law Daily PTAB’s anticipation and obvious determinations of Monsanto’s soybean seed patent affirmed
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Friday, January 5, 2018

PTAB’s anticipation and obvious determinations of Monsanto’s soybean seed patent affirmed

By Peter Reap, J.D., LL.M.

The PTAB’s final decision affirming an examiner’s rejection of claims 1, 7, 12–22, 24, and 27–30 ("the Asserted Claims") of Monsanto’s soybean seed patent as anticipated by U.S. Patent No. 6,426,448 ("Booth"), and of, inter alia, claim 2 as obvious over Booth was affirmed because it was supported by substantial evidence, according to the U.S. Court of Appeals for the Federal Circuit. Further, the Board did not err in construing the patent’s claims (Monsanto Technology LLC v. E.I. DuPont de Nemours & Co., January 5, 2018, Wallach, E.).

Entitled "Soybean Seed and Oil Compositions and Methods of Making Same," Monsanto’s U.S. Patent No. 7,790,953 ("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. Claim 1, which was amended during the reexamination, is the sole independent claim and is illustrative—all Asserted Claims rise and fall with claim 1, the court noted.

Booth is directed toward a number of soybean crosses aimed at obtaining progeny with desired fatty acid compositions. Similar to the ’953 patent, Booth discloses a "variety of novel soybean genes that alter oil quality."

Claim construction. 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). Monsanto maintained that the PTAB’s construction is inconsistent with the specification. The appellate court was not persuaded.

The specification provides examples, which are "included to demonstrate preferred embodiments of the invention." Example 9 describes a parent line designated as the "C1640 line" with "a linolenic acid content of about 3%." 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, and Wilcox states that the C1640 line has a range of linolenic acid contents from 2.3% to 4.1%. In light of this intrinsic evidence, the PTAB’s finding that a person having ordinary skill in the art ("PHOSITA") would reasonably consider "about 3%" to encompass a range that includes 4%, the appellate court decided.

Anticipation. Substantial evidence supported the PTAB’s finding that Booth anticipates the Asserted Claims, the Federal Circuit reasoned. The PTAB found that Booth anticipates the Asserted Claims, relying in part on the Kinney Declarations, which analyze Booth. The PTAB concluded that Booth discloses step (a) of claim 1 and "the Second Kinney Declaration shows that . . . the progeny of plants obtained" from step (a) "as taught by Example 8 of Booth necessarily includes" plants disclosed in step (b).

Substantial evidence supported the PTAB’s finding that Booth expressly discloses step (a) of claim 1. Step (a) discloses crossing soybean lines having known genetic features—a first parent line having "about 3% or less" seed oil linolenic acid content with a second parent line having a transgene that decreases the expression of the FAD2-1 gene—and, thus, having a seed oil oleic acid content greater than about 55%.

Booth Example 8 describes crossing a first parent line containing "either a fan allele or the D3A gene" with a second line containing "the D2T gene." Table 2 of Booth identifies the fatty acid characteristics of the first parent lines that were used. Booth also states that the fan allele line in Table 2 has 4% linolenic acid by weight and that the D2T line has a fatty acid content of 85%. Thus, given the claim construction above that 4% is within the "about 3%" limitation, a fan allele cross of the parent line from Booth anticipates step (a) of claim 1 of the ’953 patent. The appellate court further found substantial evidence that Booth teaches that the D2T line contains a transgene that decreases the expression of the FAD2-1 gene, providing 85% seed oil oleic acid levels—thus meeting both the transgene and the "greater than about 55%" seed oil oleic acid requirement for the second parent line of the ’953 patent claim 1 step (a).

Substantial evidence also supported the PTAB’s finding that Booth "necessarily includes" step (b) of the Asserted Claims. Step (b) requires "obtaining a progeny plant" 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%. Table 12 of Booth reports seed oil fatty acid profiles of some of those progeny generation plants.

Monsanto argued that Booth does not anticipate step (b) of claim 1 because Table 12 does not explicitly identify a progeny with the fatty acid by weight characteristics of claim 1 step (b). However, As the PTAB found, Booth "clearly [informs a PHOSITA] that Table 12 does not represent the full scope of the progeny lines resulting from the cross. Because Booth describes obtaining many progeny from the cross families of Example 8 but only reports a "select" subset of results in Table 12, the "select" subset of Table 12 does not foreclose inherent anticipation, the Federal Circuit opined.

Monsanto maintained that the PTAB impermissibly looked to "non-prior art data" and "secret data" by using the Kinney Declarations to support its anticipation finding. However, Monsanto confused prior art with extrinsic evidence used to support what is "necessarily present" in a prior art’s teaching. The Board properly relied on the Kinney Declarations because they did not expand the meaning of Booth or serve as prior art and they showed only what was inherent in Booth. They were not improper "secret data," the court observed.

Obviousness. Dependent claim 2 limits the claim 1 step (b) progeny plant to specific percentage ranges of linolenic, oleic, and seed oil fatty acid levels, requiring that a step (b) progeny plant have a seed oil linolenic acid content "of about 1% to about 3%" by weight, an "oleic acid content of . . . 65% to . . . 80%" by weight, and a seed oil saturated fatty acid level of "about 1.5% to about 8%" by weight. The PTAB affirmed the examiner’s rejection of claim 2 on grounds that "claim 2 would have been obvious" while basing its factual findings in large part upon its prior anticipation findings for similar claim 29.

The Second Kinney Declaration’s disclosure of a progeny (7OLTIP36102-20) with a saturated acid content of about 8% by weight, an oleic acid content of 80% by weight, and a linolenic acid content of 3.4% by weight was substantial evidence to support the finding of obviousness. Therefore, the sole remaining issue concerned whether a PHOSITA would have been motivated to modify Booth to arrive at the patented invention. Despite Monsanto’s contentions to the contrary, substantial evidence supported the PTAB’s determination that a PHOSITA would have been motivated to combine elements of Booth, the court ruled.

The case is No. 2017-1032.

Attorneys: Matthew James Hilmert (Winston & Strawn LLP) for Monsanto Technology LLC. Michael J. Flibbert (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) for E.I. du Pont de Nemours and Co.

Companies: Monsanto Technology LLC; E.I. du Pont de Nemours and Co.

MainStory: TopStory Patent FedCirNews

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