Monday, January 08, 2018

DuPont prevails over Monsanto at CAFC in matter involving US 7,790,953

Inherent anticipation arises in Monsanto v. DuPont :

It is well established that such reliance on extrinsic evidence
is proper in an inherency analysis. See Telemac, 247 F.3d
at 1328 (“[R]ecourse to extrinsic evidence is proper to
determine whether a feature, while not explicitly discussed,
is necessarily present in a reference.” (citation
omitted)). Moreover, extrinsic evidence need not antedate
the critical date of the patent at issue, Schering Corp. v.
Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)
(“[T]his court rejects the contention that inherent anticipation
requires recognition in the prior art.”), nor have
contemporaneous recognition by a PHOSITA, id.
(“[R]ecognition by a [PHOSITA] before the critical
date . . . is not required to show anticipation by inherency.”).

Of the distinction between obviousness and anticipation:

“[A]lthough anticipation can be proven inherently,
proof of inherent anticipation is not the same as proof of
obviousness.” Cohesive Techs., Inc. v. Waters Corp., 543
F.3d 1351, 1364 (Fed. Cir. 2008). “Though less common,
in appropriate circumstances, a patent can be obvious in
light of a single prior art reference if it would have been
obvious to modify that reference to arrive at the patented
invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
1361 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v.
Arendi S.A.R.L., 137 S. Ct. 1329 (2017). This court has
“repeatedly held that the motivation to modify a prior art
reference to arrive at the claimed invention need not be
the same motivation that the patentee had.” Alcon Research,
Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir.


The PTAB did not base its obviousness finding solely on its inherent
anticipation analysis.17 The PTAB explained that a
PHOSITA would have been motivated to modify Booth to
produce plants having more variable seed oil fatty acid
characteristics, as found in claim 2 of the ’953 patent,
because Booth “only represents the ‘[s]ingle plants and
family means that were both lowest in linolenic acid
content and highest in oleic acid content.’” E.I. DuPont,
2016 WL 4255131, at *9 (quoting Booth col. 25 ll. 61–65)).
The PTAB then “f[ou]nd this evidence sufficiently teaches
[a PHOSITA] that the progeny results also include[]
plants that have higher linolenic acid content and/or
lower oleic acid content.” Id. Monsanto points to no
statement or suggestion in Booth that it would be undesirable
to produce progeny having low seed oil levels of
linolenic acid and 65% to 80% oleic acid (i.e., the composition
recited in claim 2). See generally Appellant’s Br.
Accordingly, we uphold the PTAB’s conclusion that claim
2 would have been obvious over Booth.

Footnote 17:

Given the Examiner did not reject claim 2 on
grounds of anticipation, the PTAB could not independently
adopt this ground of rejection without following the
procedures required for a new ground of rejection. See
Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de
C.V., 865 F.3d 1348, 1357 (Fed. Cir. 2017) (explaining
that the PTAB’s “ability to rely on different grounds [of
rejection] than the examiner” is limited (internal quotation
marks and citation omitted)).


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