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Bayer Bioscience Nicked for Inequitable Conduct
Four Bayer patents (5,545,565, 5,767,372, 6,017,546, and 5,254,799) directed to the construction and use of vectors capable of expressing fragments of Bacillus Thuringiensis (Bt) proteins toxic to crop destroying insects are unenforceable according to the federal circuit. See Monanto Co. v. Bayer Bioscience N.V., 2007-1109 (January 25, 2008).
The case is a cautionary tale in the use of poster (or other) abstracts to satisfy the duty of candor. It also produces a rule of law establishing the power of a district court under 35 U.S.C. § 285 (attorney fees) to declare patents unenforceable even where a patentee has covenanted not to assert a claim for infringement.
Poster abstracts are normally general descriptions of the contents of a poster. When abstracts are asserted by the Office in a 102 or 103 context it may be tempting (and sometimes appropriate) to respond with the argument that they are not enabling. As Bayer learned here, however, that strategy can backfire when the applicant possesses other material information concerning the detailed substantive content of the poster.
In the course of prosecuting the ‘565 patent, Bayer disclosed to the Office a poster abstract reporting an expression vector containing a plant promoter, and sequences encoding a fusion of an amino terminal fragment of a Bt toxin and an antibiotic resistance activity. Responding to an obviousness rejection based on the abstract, Bayer traversed, apparently based on the text of the abstract, arguing that the reference did not show specifically which Bt toxin fragment should be used and did not show whether the fusion gene would produce insecticidal activity in plants. Unfortunately for Bayer, one of its employees attending the meeting had taken extensive notes concerning the content of the poster which revealed that the poster itself did contain structural information about the Bt toxin fragment used and showed that when it was expressed it retained insecticidal activity—contrary the position Bayer took in opposing the Examiner’s arguments for unpatentability. Worse still for Bayer, the notes, according to the trial court were widely circulated in the relevant research department at Bayer, and seen and discussed by employees of the intellectual property department in connection with the prosecution of the ‘565 patent.
The district court found incredible Bayer’s explanations for not appreciating the significance of the information, and the federal circuit, striking a tone of deferential review throughout its review of the judgment concerning the ‘565 patent found no reversible error in the factual conclusions concerning materiality and intent and no abuse of discretion on the equitable determination of unenforceability.
But the district court went farther. Although the ‘372, ‘546, and ‘799 patents were voluntarily dismissed with prejudice, and Bayer covenanted not to sue Monsanto concerning the patents, the trial court nonetheless determined that these related patents were unenforceable for inequitable conduct. The federal circuit affirmed concluding that a district court has jurisdiction under 35 U.S.C. § 285 to determine whether there was inequitable conduct in the prosecution of patents that are otherwise no longer in suit and to hold such patents unenforceable for inequitable conduct.
Posted by at January 29, 2008 8:41 PM in News & Commentary, Recent Cases | Permalink
