monsanto-istock-537100804-asafaric-
ASafaric / iStockphoto.com
11 January 2018Americas

Federal Circuit rejects Monsanto’s soybean appeal

The US Court of Appeals for the Federal Circuit has confirmed that claims within a patent relating to genetically modified soybeans are invalid due to anticipation and obviousness.

Agricultural biotech company Monsanto Technology had appealed against the result of an inter partes reexamination at the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). The matter was heard by the Federal Circuit on Friday, January 5.

Monsanto’s patent, “Soybean seed and oil compositions and methods of making same,” was filed in 2007 under US number 7,790,953. It entails a two-stage process for mating two parent soybean lines to produce soybean seeds with an altered fatty acid profile.

Chemical company DuPont is the owner of similar patented technology, “Booth”, which was filed in 1999 under US number 6,426,448. Booth also involves soybean crosses, with the aim of obtaining seeds with fatty acid compositions.

In the inter partes reexamination DuPont submitted two declarations from one of Booth’s named inventors to demonstrate that Monsanto’s technology was unoriginal, based on prior art. The PTAB affirmed an examiner’s rejection of several claims as anticipated, and one as obvious over prior art.

Monsanto’s appeal first claimed that the PTAB misconstrued the ‘about 3% or less’ limitation in its patent to include seeds with an acid content of 4%. The Federal Circuit declared that the PTAB reasonably determined that the “Booth” patent, containing 4% acid, is within the scope of ‘about 3%’.

The biotech company’s second ground for appeal alleged that the PTAB had relied on an unlawful combination of Booth and the two DuPont declarations in order to form its decision. Monsanto asserted that although Booth may be classed as prior art, the declarations could not.

The Federal Circuit said: “Monsanto confuses prior art with extrinsic evidence used to support what is ‘necessarily present’ in a prior art’s teaching”. Concurring with the PTAB’s finding, the court reiterated that Booth “necessarily includes progeny plants that have an oleic acid concentration and a linolenic acid concentration” and therefore inherently anticipates the inventor’s claims.

Monsanto’s final claim in the appeal was that the PTAB wrongly applied an “accidental obviousness theory for claim”. The Federal Circuit again concurred with the PTAB, finding that a person who has ordinary skill in the art would have been motivated to modify Booth to produce more plants with more suitable characteristics, as is noted under Monsanto’s ‘953 patent.

In March 2017 Monsanto lost a patent and trademark dispute against Indian agribusiness Nuziveedu Seeds which centred on cotton seeds, LSIPR reported.

Meanwhile, in October 2017, LSIPR reported that DuPont signed a patent licensing deal with Harvard and MIT to provide genome editing technology to agricultural researchers and producers.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.


More on this story

Americas
24 January 2018   The Brazilian Patent and Trademark Office has called for a Monsanto patent protecting the Intacta RR2 PRO soybeans to be voided.
Americas
10 January 2022   A former Monsanto employee has pled guilty to conspiring to steal trade secrets from the biotech company in order to share the information with the Chinese government.

More on this story

Americas
24 January 2018   The Brazilian Patent and Trademark Office has called for a Monsanto patent protecting the Intacta RR2 PRO soybeans to be voided.
Americas
10 January 2022   A former Monsanto employee has pled guilty to conspiring to steal trade secrets from the biotech company in order to share the information with the Chinese government.