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June, 2008
Information
Systems for Biotechnology (ISB) News Report - June 2008
by Phill Jones,
Biotech-Writer.com
If a tree falls in the forest and
nobody hears it, does it make a sound? Sure. If a document is
placed on an Internet-accessible site, is that document prior
art? Well, maybe.
SRI International, Inc. sued Internet Security Systems, Inc. and
Symantec Corporation for infringement of four patents that
relate to the monitoring and surveillance of computer networks
for intrusion detection. The district court granted the
defendants’ motion for summary judgment that the patent claims
lacked novelty in light of a document called “Live Traffic
Analysis of TCP/IP Gateways.”
SRI appealed the decision, contending that the Live Traffic
paper did not qualify as prior art. The Live Paper controversy
began when the Internet Society posted a call for papers on its
website. All submissions were to be made via electronic mail
with a backup submission sent by postal mail. One of SRI’s
inventors, Phillip Porras, attached a copy of the Live Traffic
paper to an email sent to Dr. Bishop, the Program Chair. As a
backup, Porras said that SRI would make a copy of the Live
Traffic paper available on a SRI website for about one week, and
he included the FTP address for the document. Over a year later,
SRI filed its patent application on the invention
described in the Live Traffic paper.
Under US law, a claimed invention must not have been described
in a printed publication more than one year prior to the date of
filing the patent application. Courts have decided that a
publication has been “printed” if it is accessible to a person
who exercises reasonable diligence to locate it. The district
court judge decided that the Live Traffic paper had been
publicly accessible via the FTP site, which destroyed the
novelty of SRI’s patent claims.
The Federal Circuit disagreed. A 1978 case, Application of
Bayer, concerned alleged
prior art in the form of a graduate thesis stored in a
university library. Although three faculty members knew about
the thesis, the document had not been catalogued or placed on a
publically available shelf.
The thesis was not a “printed” publication, because a normal
search would not have rendered the work reasonably accessible
even to a person who knew about its existence.
The Federal Circuit viewed the uncatalogued thesis stored in a
library to be similar to the Live Traffic paper stored on the
FTP server. The server lacked an index or catalogue for
meaningful research, and the directory structure did not
identify the location of papers or explain the mnemonic
structure for files. Moreover, the record indicates that,
outside of SRI, only Dr. Bishop knew about the availability of
the Live Traffic paper.
“The Live Traffic paper, like posters at a vacant and
unpublicized conference,” wrote the Federal Circuit, “was
available by being ‘posted,’ but available only to a person who
may have wandered into the conference by happenstance or knew
about the conference via unpublicized means.” The Federal
Circuit sent the case back to the district court to reexamine
the public accessibility of the Live Traffic paper.
In its decision, the Federal Circuit cited a 2004 case, In re
Klopfenstein, which concerned posters displayed during two
professional conferences. The posters were printed publications,
because their entire purpose was public communication. Now, take
a step back. Suppose that somebody took notes about a poster and
did not make the notes available to the general public. The
notes would not be prior art. Yet they could acquire a life of
their own to destroy a patent, or even four patents, as Bayer
discovered.
Time Bomb in a Notepad
Over 20 years ago, Plant Genetic Systems, a predecessor of Bayer
Bioscience, used the Agrobacterium tumefaciens technique to
transform plant cells with a fragment of a Bacillus
thuringiensis toxin gene. The genetically engineered plants
synthesized a truncated version of a Bt toxin. The company
submitted a patent application on Bt toxin-producing,
genetically engineered plants, which matured into a family of
patents including US Patent Nos. 5,545,565, 5,767,372, 6,107,546
and 5,254,799. The patents claim chimeric genes comprising a
truncated Bt toxin gene; plant cells and plants that synthesize
insecticidal protein; and methods of transforming plants with
chimeric Bt toxin genes.
In December 2000, Monsanto filed a declaratory judgment action
in the Eastern District of Missouri seeking an
assertion that MON 810 YieldGard® products did not infringe the
’565, ’372, ’546, and ’799 patents, and that these patents were
invalid and unenforceable. The defendant counterclaimed,
alleging infringement of claims in each patent.
The district court granted summary judgment to Monsanto, and
held that all four patents were unenforceable due to inequitable
conduct, that certain patent claims were invalid, and that the
’565 patent was not infringed. On appeal, the Federal Circuit
reversed the decision and returned the case to the district
court.
Back in Missouri, the defendant (now, Bayer) dismissed all
claims that MON810 infringed the ’799, ’372, and ’546 patents.
The case proceeded to trial on the ’565 patent. Judge E. Richard
Webber held a four-day hearing on the inequitable conduct
allegation. In August 2006, the judge released a 99-page opinion
in which he concluded that inequitable conduct rendered the ’565
patent unenforceable. Judge Webber also found inequitable
conduct in the prosecution of the ’799, ’372, and ’546 patents,
and held those patents unenforceable. Bayer appealed.
The Federal Circuit examined the basis for the inequitable
conduct allegation. During the prosecution of the ’565
patent, the patent applicant had disclosed as prior art an
abstract by Dr. Wayne Barnes entitled “A Bifunctional Gene for
Insecticide and Kanamycin Resistance,” which had been prepared
for a poster to be presented at the First International Congress
of Plant Molecular Biology in Savanna, Georgia, in 1985. The
abstract described a chimeric gene comprising the “first half”
of a Bt toxin gene combined with a kanamycin resistance gene.
The chimeric gene could be inserted into Agrobacterium T-DNA.
Barnes speculated that, “This plant gene should express the
insecticide and kanamycin resistance from the same promoter.”
In 1994, a patent examiner rejected all patent claims as obvious
over various prior art references including the Barnes abstract.
According to the examiner, the abstract provided motivation to
genetically engineer plant cells with a truncated Bt toxin gene.
The patent applicant argued, among other things, that the
abstract failed to show that the chimeric gene would work in
plants. “Moreover, the Barnes et al. reference is not enabled
since it is stated therein that the fused gene ‘may’ be inserted
into T-DNA and that the plant gene ‘should’ express the
insecticide and kanamycin resistance from the same promoter,”
the applicant argued. “But no concrete evidence is provided.”
However, one of the patent applicant’s employees had attended
the 1985 conference and had taken notes about Barnes’ poster. In
addition to details on the construction of a Bt toxin chimeric
gene and expression vector, the notes revealed that the Bt toxin
fusion protein functioned as an insecticide, and indicated that
Barnes had transformed a plant with a chimeric gene construct.
The notes had been circulated among officials and employees of
the company, including at least one member of the intellectual
property department. The company had not submitted the notes to
the patent examiner.
To declare a patent unenforceable for inequitable conduct, a
district court must find by clear and convincing evidence (1)
that a patent applicant breached the duty of candor and good
faith to the US Patent and Trademark Office by failing to
disclose material information, or by submitting false material
information, and (2) that the patent applicant acted with an
intent to deceive the patent office. Judge Webber had decided
that the notes, if they had been disclosed to the patent
examiner, would have contradicted that patent applicant’s
arguments about the Barnes abstract. Concluding that the patent
applicant had made “a deliberate decision to withhold the known
highly material reference with the specific intent to deceive or
mislead the PTO examiner,” the judge declared Bayer’s four
patents unenforceable due to inequitable conduct.
The Federal Circuit agreed that failure to submit the notes
renders the ‘565 patent—the only patent asserted by
Bayer—unenforceable. What about the other three patents that
Bayer no longer asserted against Monsanto? Bayer argued that the
district court lacked jurisdiction to make a decision about
these patents. But Monsanto had filed a request for attorney
fees at a time when Bayer accused the company of infringing all
four patents. That request was still pending a decision, the
Federal Circuit noted. The district court, therefore, had
jurisdiction to determine whether inequitable conduct rendered
the three unasserted patents unenforceable.
Selected Sources
Monsanto Company v. Bayer Bioscience, N.V., 2006 U.S. Dist.
LEXIS 97254 (August, 28. 2006).
Monsanto Company v. Bayer Bioscience, N.V., Docket No. 2007-1109
(January 25, 2008). Available at:
http://fedcir.gov.
SRI International, Inc. v. Internet Security Systems, Inc.,
Docket No. 2007-1065 (January 8, 2008).
Original:
http://www.isb.vt.edu/news/2008/Jun08.pdf (pages 10 & 11) |
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