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Monsanto Technology LLC v. E.L Dupont De Nemours & Co.

United States Court of Appeals, Federal Circuit

January 5, 2018

MONSANTO TECHNOLOGY LLC, Appellant
v.
E.L DUPONT DE NEMOURS & COMPANY, Appellee

         Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/002, 028.

          Matthew James Hilmert, Winston & Strawn LLP, Chicago, IL, argued for appellant.

          Michael J. Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for appellee. Also represented by Cora Renae Holt, Maureen Donovan Queler.

          Before Dyk, Reyna, and Wallach, Circuit Judges.

          Wallach, Circuit Judge.

         Appellee E.I. DuPont de Nemours & Co. ("DuPont") sought inter partes reexamination of various claims of Appellant Monsanto Technology LLC's ("Monsanto") U.S. Patent No. 7, 790, 953 ("the '953 patent"). The U.S. Patent and Trademark Office's ("USPTO") Patent Trial and Appeal Board ("PTAB") issued a final decision that affirmed an examiner's rejection of claims 1, 7, 12-22, 24, and 27-30 ("the Asserted Claims") as anticipated by U.S. Patent No. 6, 426, 448 ("Booth"), and of, inter alia, claim 2 as obvious over Booth. See E.I. DuPont de Nemours & Co. v. Monsanto Tech. LLC, No. 2015-007692, 2016 WL 4255131, at *3 (P.T.A.B. Aug. 10, 2016).

         Monsanto appeals. We have subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.

         Background

         I. The Patented Technology

         Entitled "Soybean Seed and Oil Compositions and Methods of Making Same, " 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. See '953 patent col. 111 ll. 34-67; id. col. 1 ll. 31- 37. The '953 patent describes "the combination of transgenes that provide both moderate oleic acid levels and low saturated fat levels with soybean germplasm that contains mutations in soybean genes that confer low linolenic acid phenotypes." Id., Abstract. Claim 1, which was amended during the reexamination, is the sole independent claim and is illustrative.[1] It recites:

A method of obtaining a soybean plant with an altered seed oil fatty acid composition comprising the steps of:
(a) crossing a first soybean parent line having a seed oil fatty acid composition comprising a linolenic acid content of about 3% or less[2] of total seed fatty acids by weight with a second soybean parent line having a seed oil fatty acid composition wherein the i) level of oleic acid is greater than about 55% of total seed fatty acids by weight, or ii) wherein both the level of saturated fatty acid is about 8% or less of total seed fatty acids by weight and the level of oleic acid is greater than about 55% of total seed fatty acids by weight, said second soybean parent line comprising either a transgene that decreases the expression of an endogenous soybean FAD2-1 gene to provide the level of oleic acid greater than about 55% of total seed fatty acids by weight of said second parent soybean line of (i); or both a transgene that decreases the expression of an endogenous soybean FATB gene and a trans gene that decreases the expression of an endogenous soybean FAD2-1 gene to provide the level of saturated fatty acid of about 8% or less by weight and the level of oleic acid greater than about 55% of total seed fatty acids by weight of said second parent soybean line of (ii); and
(b) obtaining a progeny[3] plant exhibiting a seed oil fatty acid composition comprising a linolenic acid content of about 3% or less of total fatty acids by weight and also comprising either i) an oleic acid level in the range of [about] 55% to [about] 80% of total seed fatty acids by weight, or ii) both a saturated fatty acid level of about 8% or less of total seed fatty acids by weight and an oleic acid level of [about] 55% to [about] 80% of total seed fatty acids by weight, thereby obtaining a soybean plant with an altered seed oil fatty acid composition.

         J.A. 329-30 (footnotes and emphases added) (alterations in original).[4]

         II. Booth

         Booth is directed toward a number of soybean crosses aimed at obtaining progeny with desired fatty acid compositions. See Booth col. 38 l. 53-col. 45 l. 43 (exs. 5-8), col. 47 l. 53-col. 48 l. 40 (ex. 11). Similar to the '953 patent, Booth discloses a "variety of novel soybean genes that alter oil quality." Id. col. 6 ll. 40-41. Specifically, Booth Example 8 describes a method of crossing two soybean lines, one with a "fan allele" or D3A gene for low linolenic acid content and the other with a D2T gene for high oleic acid content. See id. col. 25 l. 45-col. 26 l. 38 (Example 8: "Soybeans with High Oleic Acid and Low Linolenic Acid Content"); see also id. tbl. 12 (showing the fatty acid makeup of the selected progeny plants).

         During the inter partes reexamination, DuPont submitted two declarations from one of Booth's named inventors, Dr. Anthony John Kinney (together, "the Kinney Declarations"). J.A. 133-275 (First Kinney Declaration), 359-71 (Second Kinney Declaration). DuPont produced the Kinney Declarations to show data from additional progeny produced by following the disclosed method of Example 8, "including plants not selected for inclusion in Table 12 of the Booth patent." J.A. 360 (footnote omitted). Relevant here, the PTAB relied upon the Kinney Declarations to interpret the fatty acid properties of the F2:3 generation because it found the "F2:3 generation results provided in Exhibit A of the Second Kinney Declaration represent[ed] the lines of all resulting progeny" from a cross prepared according to Booth Example 8 and related Table 12 that were not included in Booth Table 12. E.I. DuPont, 2016 WL 4255131, at *4 n.9; see J.A. 360 n.1.

         DISCUSSION

         Monsanto contends that the PTAB erred by: (1) misconstruing the "about 3% or less" limitation in the '953 patent to include progeny with a linolenic acid content of 4%, Appellant's Br. 45-50; (2) "rejecting [the Asserted C]laims for anticipation" based on "an unlawful composite" of Booth and the Kinney Declarations, the latter of which Monsanto alleges are non-prior art references, id. at 33-34 (capitalization and alterations omitted); see id. at 33-50; and (3) employing a legally erroneous "accidental obviousness theory for claim 2, " id. at 51 (capitalization and alterations omitted); see id. at 50-60. After articulating the applicable standard of review, we address these arguments in turn.

         I. Standard of Review

         "We review the PTAB's factual findings for substantial evidence and its legal conclusions de novo." Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. Cir. 2015) (citation omitted). "Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence, " meaning that "[i]t is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." In re NuVasive, Inc., 842 F.3d 1376, 1379, 1380 (Fed. Cir. 2016) (internal quotation marks and citations omitted). If two "inconsistent conclusions may reasonably be drawn from the evidence in record, [the PTAB]'s decision to favor one conclusion over the other is the epitome of a decision ...


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