Syngenta Seeds, Inc v. Monsanto Co. (Fed. Cir. 2007)

    By Kevin E. Noonan --

Although the contours of the Federal Circuit's response to the Supreme Court's obviousness decision in KSR Int'l Co. v. Teleflex, Inc. are yet to be established, the Court has developed a penchant recently (see Patent Docs previous report) for using an uncharacteristic deference to jury determinations of fact for affirming invalidity findings based on obviousness.

This trend continues in Syngenta Seeds.  The patentee asserted three patents (U.S. Patent Nos. 6,403,865; 6,075,185; and 6,320,100) relating to genetically-engineered corn against Monsanto, DeKalb Genetics Dow Agrosciences, Mycogen Plant Science, and Agrigenetics.  The technology involved altering the native coding sequence of Bacillus thuringiensis (see below) insecticidal protein by increasing the percentage of G+C residues from 38% to "at least 60%" (Syngenta's modified gene had a GC content of 65%).  Since corn is known to have a preference for "GC-rich" codons, the change was directed at increasing the efficiency of the insecticidal Bt protein production in the genetically-engineered corn plants.

Two of the patents (the '185 and '100 patents) were deemed not invalid, but not infringed, and Syngenta's challenge of this determination was defeated by the Federal Circuit's determination that Syngenta waived its purported basis for overturning the verdict below by not raising its objections to the underlying claim construction issue.  The third patent (the '865 patent) was held infringed, but invalid for obviousness, and this is where the Court's reasoning is interesting.

The District Court's obviousness determination was based on a prior art reference, the Barton reference, that taught increased Bt gene production in plant cells (specifically, tobacco) by changing the coding sequence to use plant-preferred coding (specifically, by increasing the GC content of the coding sequence).  The significance of these teachings was the subject of conflicting expert testimony at trial.  The Federal Circuit explained that, since obviousness was a question of law based on underlying facts, its de novo review of the District Court's obviousness determination was based on the jury's determination of the underlying facts.  The Federal Circuit performed this review using the substantial evidence standard, giving deference to the jury's assessment of the persuasiveness of the factual and opinion evidence below, particularly the expert testimony.  This analysis was applied both to the question of whether the Barton reference, taken as a whole, provided a suggestion towards the claimed Syngenta invention, and whether the skilled worker would have had a reasonable expectation of success.

In doing so, the Federal Circuit distinguished its precedent in Adang v. Fischhoff, that teachings relating to one plant species are not necessarily applicable to other plant species.  Syngenta argued that the Barton reference teachings about the effects of codon substitution in tobacco would not have provided a reasonable expectation of success for similar substitutions in corn.  Here, the absence of evidence that transformation of alternate species was not predictable (which had been asserted by one of the parties in Adang) was enough for the Federal Circuit to find that there was substantial evidence supporting the jury's factual determination that the Barton reference provided a reasonable expectation that the success Barton reported for tobacco could be achieved in corn.

Finally, the plaintiff's evidence of unexpected results was also held to be a question of fact, and the Federal Circuit found there was substantial (or at least sufficient) evidence to support the jury's decision that this evidence was not enough to render the claims non-obvious.

The Federal Circuit's readiness to abdicate (or at least attribute) its review of invalidity determinations to substantial evidence for the factual determinations made below is in stark contrast to other situations, like claim construction, that are legal questions based on underlying facts in which the Federal Circuit has jealously protected its de novo review prerogatives.  It continues a trend noticed in the Pfizer case, and suggests that the  Federal Circuit may be adopting jurisprudence less capable of being successfully challenged by certiorari petitions from unhappy litigants.  It would be understandable if the Federal Circuit has become a little gun-shy from the constant drumbeat of Supreme Court reversals it has experienced over the past ten years.  However, this approach does not appear to be consistent with its Congressional mandate to provide consistency and harmonization to patent law, and increases the likelihood of uncertain outcomes regarding obviousness that can be anticipated in the aftermath of the Supreme Court's less rigorous obviousness standards enunciated in KSR.

Syngenta Seeds, Inc v. Monsanto Co. (Fed. Cir. 2007)
Nonprecedential disposition
Panel: Circuit Judges Mayer, Schall, and Bryson
Opinion by Circuit Judge Bryson

Comments

[Joe]

Interesting post