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Monsanto v. Bayer Bioscience

By Lawrence B. Ebert, Esq.

The Federal Circuit affirmed a decision by Judge Webber in ED Missouri that Bayer's US 5,545,565 is unenforceable for inequitable conduct. The CAFC also notes that Judge Webber had the jurisdiction to declare three (3) other Bayer patents unenforceable.

The patents concerned the insertion of a gene for Bt toxin into plants through transformation. For background, the CAFC cited itself: 243 F.3d 1316.

There had been earlier a summary judgment of unenforceability because of inequitable conduct. This is a RARE event, and that judgment was vacated by the CAFC. After the facts were developed, however, the SAME result ensued.

For background on inequitable conduct in this case, the CAFC cited Kingsdown and Bruno v. Acorn, 394 F.3d 1348.

The inequitable conduct in the case revolved around material prepared by Dr. Wayne Barnes. There was an initial abstract and there was a poster prepared by Dr. Barnes for a scientific meeting. Bayer disclosed the abstract as prior art, but Bayer did not disclose notes taken by one of its employees, which notes were based on observation of the poster itself. Because the information in the notes was in sharp contradiction to arguments made by Bayer before the patent examiner, the district court found, and the CAFC affirmed, inequitable conduct. All claims of the '565 patent were rendered unenforceable. Further, the CAFC let stand the impact on the other three patents, which were no longer at issue in the infringement case as it developed.

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US 5,545,565 has the following continuity chain:

This application is a continuation of U.S. Ser. No. 08/133,965, filed Oct. 8, 1993, now abandoned, which is a divisional of U.S. Ser. No. 08/014,148, filed Feb. 5, 1993, now U.S. Pat. No. 5,317,096, which is a divisional of U.S. Ser. No. 07/555,828, filed Jul. 23, 1990, now U.S. Pat. No. 5,254,799, which is a continuation of U.S. Ser. No. 06/821,582, filed Jan. 22, 1986, now abandoned, which is a continuation-in-part of U.S. Ser. No. 06/692,759, filed Jan. 18, 1985, now abandoned.

The Barnes abstract is mentioned in the following way:

Barnes (Oct. 1985) Abstracts of the 1st International Congress on Plant Mol. Biology; Savannah, GA, USA, Abstract No. OR-21-10.

One can determine that the "1st International Congress" was held from Oct. 27 to Nov. 2, 1985. That date would make material at the conference prior art to anything ADDED to the '759 application in the '582 application. 35 USC 102(a) negates patentability if a proposed invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,

Of Wayne M. Barnes, see portions of the Washington University website.

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PatentBaristas has
http://www.patentbaristas.com/archives/2008/01/26/bayer-learns-that-note-taking-can-come-back-to-bite-your-patent/#comments

Full post as published by IPBiz on January 26, 2008 (boomark / email).