Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.”  The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an earlier DuPont patent. The Patent Office reached this conclusion because DuPont presented during the reexamination its unpublished data regarding experiments described in its earlier patent. The Federal Circuit affirmed.
Soybean plants produce an oil that contains a composition of five fatty acids. Depending on the proportions in which those acids are present, the oil may be used in foods or for industrial purpose. Oil containing a “Goldilocks balance of the fatty acids” is broadly useful in food and industrial applications. Monsanto Red. Br. at 11. Monsanto’s patent describes methods for producing soybean plants with that balance and claims a method for genetically modifying soybean seeds to produce such plants. As relevant here, Monsanto’s patented method includes crossing (mating) a first soybean (plant) line containing “about 3% or less” linolenic acid by weight with a second soybean line containing high levels of oleic acid to obtain a progeny also having about 3% or less linolenic acid. Decision at 3–4.
Several years before Monsanto filed its patent application, DuPont obtained a patent, the Booth patent, that described a similar method. The method in the Booth patent crossed a first soybean line containing 4% linolenic acid with a second soybean line having high levels of oleic acid. The Booth patent did not describe the amount of linolenic acid in the progeny. Decision at 5–6. DuPont nevertheless successfully persuaded the Patent Office to reexamine and cancel the Monsanto patent on the theory that its Booth patent inherently anticipated what Monsanto claimed.
Monsanto’s claim recites a first soybean line containing “about 3% or less” linolenic acid. But what does that mean? In explaining the first of the two soybean plant lines to cross and the source of that plant line, Monsanto’s patent specification refers to a publication. That publication describes a soybean plant line having a range of linolenic acid contents from 2.3% to 4.1%. The Patent Office concluded that a person having ordinary skill in the art would have interpreted the claimed limitation “about 3% or less” linolenic acid to encompass this range, and the Federal Circuit upheld that conclusion. Decision at 8–10. That interpretation encompasses the soybean line the Booth patent described as containing 4% linolenic acid.
Monsanto’s claim also recites obtaining progeny having about 3% or less linolenic acid. Monsanto’s patent specification explains that when a single cross of two soybean plant lines results in multiple generations of plants, each generation is referred to as a progeny. Decision at 4 n.3. The Booth patent states that its method led to multiple generations of plants, and while the Booth patent reported only a select subset of results, that limited report did not foreclose the potential that some progeny satisfied this claimed feature. Decision at 14. DuPont presented evidence and sworn testimony from one of the Booth patent inventors that some progeny indeed had this low linolenic acid content. The skilled person following the teachings in the Booth patent would, according to DuPont, obtain progeny of the type Monsanto’s claim specified. The Patent Office and court agreed and thus concluded that Monsanto’s claim was invalid as inherently anticipated by DuPont’s Booth patent.
The court long ago explained that inherent anticipation exists when “the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA, Inc., v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Monsanto emphasized this point in a petition to the Federal Circuit to rehear its appeal. Monsanto asked “[f]or purposes of anticipation or obviousness, does the law require a showing that a [person having ordinary skill in the art] would be capable of recognizing an allegedly inherent feature from the teachings of the prior art?” DuPont did not respond, despite the court’s invitation to do so. On March 30, 2018, in a short per curiam order, the en banc court denied Monsanto’s petition.
A learned jurist coined the phrase “the name of the game is the claim.”  DuPont seems to have played the claim well. First, DuPont demonstrated the broad breadth of a seemingly narrow claim limitation encompassed its own prior art method. Second, DuPont demonstrated how (unpublished results of) its own prior art method necessarily satisfied features that Monsanto’s claim encompassed. Monsanto complained that the unpublished data may not be used in reexamining its claim. After all, neither Monsanto’s patent attorney nor Monsanto’s inventors could have known that progeny obtained by DuPont’s Booth patent had about 3% or less linolenic acid unless they replicated DuPont’s method. But the court did not accept Monsanto’s complaint, noting that the Booth inventor’s testimony simply demonstrated what the skilled person understood was inherent in the Booth progeny. Decision at 15–18.
 In re Ruschig, 379 F.2d 990, 993 (C.C.P.A. 1967) (Rich, J.).
 Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990).