Broad Scope of Claim to "Any Plant Cell" Not Enabled Where Technology Did Not Work with Any Plant Cell

Monsanto Co. v. Syngenta Seeds, Inc., [2006-1472](October 4, 2007)[RADER, Gajarsa, O'Mally] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patents Nos. 5,538,880 and 6,013,863, and held that claims 1, 5 and 6 of U.S. Patent No. 4,940,835 invalid under 35 U.S.C. § 112 for lack of enablement.
SIGNIFICANCE: 1 All steps of method must be performed during patent term for infringement. 2. Broad claim to any plant cell not enabled where technology did not apply to all plant cells.
BRIEF: The District Court granted Syngenta’s motions for summary judgment finding the Lundquist patents not infringed because the patent holder (Monsanto through Dekalb) performed the initial steps of the claimed processes. The court also found claims 1, 5 and 6 of the '835 patent invalid for lack of enablement. The Federal Circuit rejected Monsanto's argument that Syngenta infringed the dependent claims, even if if did not infringe the independent claims, citing its decision in Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989), where is said "One may infringe an independent claim and not infringe a claim dependent on that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim." The Federal Circuit said there was no infringement because the steps of the method were performed by the patentee, not the defendant, and were performed before the issuance of the patent. The Federal Circuit said 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.
LOF: As to enablement, this court reviews determinations of enablement under 35 U.S.C. § 112, first paragraph, without deference. Factual issues underlying enablement are reviewed for clear error. The Federal Circuit said 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. The Federal Circuit observed that the '835 patent was filed before transformation of monocot cells was possible. Therefore, those skilled in the art could not transform a monocot plant cell as of the filing date of the patent application. Without the ability to transform a monocot cell, one skilled in the art could not determine whether the plant gene could carry out the claimed functions and thus fall within the scope of the claim.