Judges: Rader (author), Gajarsa, O’Malley (District Judge sitting by designation)

[Appealed from D. Del., Chief Judge Robinson]

In Monsanto Co. v. Syngenta Seeds, Inc., No. 06-1472 (Fed. Cir. Oct. 4, 2007), the Federal Circuit affirmed the district court’s grant of SJ of noninfringement in favor of Syngenta Seeds, Inc., Syngenta Biotechnology, Inc., Garst Seed Company, Golden Harvest Seeds, Inc., Garwood Seed Co., Golden Seed Co., LLC, Sommer Bros. Seed Company, Thorp Seed Co., and JC Robinson Seeds, Inc. (collectively “Syngenta”) with respect to U.S. Patent Nos. 5,538,880 (“the ’880 patent”) and 6,013,863 (“the ’863 patent”), and its grant of SJ that claims 1, 5, and 6 of U.S. Patent No. 4,940,835 (“the ’835 patent”) were invalid under 35 U.S.C. § 112 for lack of enablement.

Monsanto Company owns the ’835 patent, whereas Dekalb Genetics Corporation (“Dekalb”), Monsanto’s wholly owned subsidiary, owns the ’880 and ’863 patents (“the Lundquist patents”). All three patents are directed to technologies for producing transgenic corn (“GA21”). Monsanto and Dekalb (collectively “Monsanto”) alleged that Syngenta used GA21 seed acquired from Monsanto’s licensees to produce further progeny containing the GA21 trait, thereby infringing the claims of the ’835 patent, claims 4-9 of the ’880 patent, and claims 5 and 6 of the ’863 patent. Noting that Dekalb itself performed the three steps of the independent claims of the Lundquist patents, Syngenta argued that it had not infringed those patents because it did not carry out all the steps of the asserted claimed processes. Syngenta also argued that the ’835 patent application did not enable the asserted claims of the ’835 patent. After claim construction, the district court granted Syngenta’s motions for SJ, finding the Lundquist patents not infringed because the patent holder performed the initial steps of the claimed processes, and finding claims 1, 5, and 6 of the ’835 patent invalid for lack of enablement. Monsanto appealed.

On appeal, Monsanto argued that claim 4 of the ’880 patent, which recites “[a] process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1,” is an independent claim, thus not requiring an alleged infringer to perform the steps of claim 1. Rejecting this argument, the Federal Circuit noted that the district court construed claims 4-9 of the ’880 patent and claims 5 and 6 of the ’863 patent as dependent from claim 1 of their respective patents. It observed that claims 5-9 of the ’880 patent and claims 5 and 6 of the ’863 patent, which used the form “[t]he process of claim . . . ,” fit the traditional dependent format. In addition, the Court noted that claim 4 of the ’880 patent featured a format closely following the traditional dependent format and that although the format of claim 4 suggested the correctness of the district court’s construction, it did not answer the entire question.

The Federal Circuit noted that to determine whether a claim is dependent upon another, the claim must be examined to determine if it “both refers to an earlier claim and further limits that referent.” Slip op. at 7 (citing 35 U.S.C. § 112, ¶ 4). It added that a claim’s status as dependent or independent depends on the substance of the claim in light of § 112, ¶ 4, and not the form alone. Applying these principles, the Court noted that claim 4 expressly recited the process of claim 1 and specifically required a fertile transgenic plant obtained by the performance of the steps in claim 1. It noted that claim 4 further included the additional step of obtaining progeny and, thus, incorporated the format specified by the statute for dependent claims. The Court added that although in a somewhat unusual format, claim 4 was dependent from claim 1 because it only stood if all three steps recited in claim 1 had been performed.

The Federal Circuit also looked to the prosecution history of the ’880 patent to ascertain the scope of claim 4. It noted that originally filed claim 30, which corresponds to patent claim 4, was incontestably a dependent claim and that both Monsanto and the examiner indicated subsequent amendments to original claim 30 did not introduce new matter and were directed to matters of form. Therefore, the Federal Circuit concluded that the district court properly found claims 4-9 of the ’880 patent and claims 5 and 6 of the ’863 patent as dependent.

The Federal Circuit also rejected Monsanto’s argument that, even if the asserted claims of the Lundquist patents were dependent claims, Syngenta was still liable for infringement under 35 U.S.C. § 271(a) or (g) because each limitation of the independent claims of the Lundquist patents had been performed, albeit by Dekalb, not Syngenta. The Court noted that this argument could not prevail in light of its decision in Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989), which explained that “[o]ne may infringe an independent claim and not infringe a claim dependent on that claim,” but that “[t]he reverse is not true.” Slip op. at 11. In addition, observed the Court, Monsanto’s argument was also inconsistent with the basic rule for infringement, which states that “[f]or infringement of a process invention, all of the steps of the process must be performed, either as claimed or by an equivalent step.” Id. (alteration in original) (citation omitted). Because Monsanto itself performed some of the claimed steps, the Court found no error in the district court’s ruling as to infringement under § 271(a).

The Federal Circuit reached the same result with respect to Monsanto’s claim of infringement under § 271(g), finding that infringement was not possible under § 271(g) when Monsanto itself performed the first three steps of the claimed process before the issuance of the patent. It observed that “infringement of a multi-step method claim cannot lie by the performance of a single step after issuance of the patent when the initial steps were performed prior to issuance.” Id. at 12-13. Accordingly, the Court affirmed the district court’s judgment that Syngenta had not infringed claims 4-9 of the ’880 patent and claims 5 and 6 of the ’863 patent.

The Federal Circuit also affirmed the district court’s holding of invalidity that claims 1, 5, and 6 of the ’835 patent were invalid under § 112 for lack of enablement. The Court observed that these claims recited “plant cells” and that flowering plants can be broadly categorized as monocotyledons (“monocots”) and dicotyledons (“dicots”). It found that the district court correctly construed claim 1 of the ’835 patent to require the claimed gene to function in any plant cell, including both dicots and monocots. In agreeing with the district court’s construction, the Federal Circuit relied on its decision in In re Vaeck, 947 F.2d 488, 490 (Fed. Cir. 1991), where claim language referring to a gene capable of being expressed in cyanobacteria cells was construed to require the claimed gene to function in all cyanobacteria. In addition, the Court found that the ’835 patent was filed before transformation of monocot cells was possible and that, therefore, those skilled in the art could not transform a monocot plant cell as of the filing date of the patent application. Accordingly, it concluded that the district court correctly granted SJ that claims 1, 5, and 6 were invalid for lack of enablement. Finally, the Federal Circuit addressed Monsanto’s request that it vacate certain claim constructions proposed by Syngenta and that were adopted by the district court in a footnote. The Court noted that because none of the terms covered by the footnote were on appeal, it need not reach that issue