Fitch Even IP Alert: Don't Get "Ahead of the Science" When Drafting Patent Claims, Says the Federal Circuit

Fitch Even IP Alert: Don't Get "Ahead of the Science" When Drafting Patent Claims, Says the Federal Circuit

 by Michael E. Dukes

Last week, in Bayer Cropscience AG v. Dow Agrosciences LLC [an enhanced version of this opinion is available to lexis.com subscribers], the Federal Circuit held that the patentee "got ahead of the science" when it drafted its patent. Because the patent used an inaccurate term to describe what the inventors had actually devised, the court upheld summary judgment of noninfringement where the defendant admittedly was not practicing under the words of the patent. As in an earlier decision, Chef America, Inc. v. Lamb-Weston, Inc., the court held that the patentee was restricted to the words of its patent claim, notwithstanding that the claim as written was nonsensical.

The inventors identified a gene that produced an enzyme that makes plants resistant to herbicides, and filed a patent application on this gene. At the time the patent application was filed, the applicant, a predecessor in interest to Bayer, believed that the enzyme was a "monooxygenase" enzyme. Based on this belief, which at the time was unverified by scientific testing, the applicants used the term "monooxygenase" throughout the specification to describe the enzyme. They claimed the gene as one that coded for “biological activity of 2,4-D monooxygenase." 

Four years later, while the application was still pending, the patentee learned that resistance in herbicide was, in fact, due to a dioxygenase enzyme and not a monooxygenase enzyme. Nonetheless, the patentee did not attempt to amend the patent claims to reflect this discovery before the patent issued.

Dow produces a line of genetically modified seeds that are also resistant to herbicides. In 2010, Bayer sued Dow, alleging that the patent at issue covered Dow’s product. It was undisputed that Dow’s products include dioxygenase enzymes and did not include any monooxygenase enzymes. The district court granted Dow’s motion for summary judgment of noninfringement, and Bayer appealed.

On appeal, Bayer argued that the claim term in question—"biological activity of 2,4-D monooxygenase"—should be construed to cover any enzyme that has the biological activity of a 2,4-D monooxygenase even if the enzyme was not itself a monooxygenase. The Federal Circuit disagreed, holding that Bayer’s proposed claim construction was not consistent with the "familiar aspects of textual analysis" and "would read independent claim 1 so broadly as to raise serious doubts about validity." According to the court, Bayer’s proposed interpretation "strips" the plain and ordinary meaning of the term "monooxygenase" by ignoring the "mono" part. The court construed the phrase "biological activity of 2,4-D monooxygenase" to "work[] as an integrated unit in a way that fits its structure and the ordinary meaning of its words." The specification and file history supported this construction because Bayer used this term in accordance with its accepted scientific meaning. The court concluded that "there is no clear message that the patent gives Bayer’s broad meaning to ‘2,4-D monooxygenase’ in place of the term’s accepted scientific meaning. . . ."

The court observed that the patentee "decided to claim a broad category based on the function of the particular enzyme, defining the category by using a term with an established scientific meaning. In doing so," held the court, "Bayer got ahead of the science: experiments had not confirmed that the term even applied to the particular enzyme whose gene Bayer’s inventors had sequenced." 

The court also noted that Bayer’s approach, one that might be termed a "functional claiming" approach, would raise an issue of sufficient written description in the specification. Under Bayer’s interpretation, the claim would cover an entire class of enzymes, but the specification described only one species capable of the claimed enzymatic function. The court rejected this approach in favor of a more literal approach.

The Bayer decision is the latest in a line of decisions under which the Federal Circuit has expressed a willingness to restrict a patentee to the claims as written, notwithstanding that the claims do not reflect technical reality.

For more information, please contact any of the partners of Fitch, Even, Tabin & Flannery LLP.

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