Orrick Helps Dow AgroSciences Protect Key Product With Patent Suit Victory

Orrick won a critical motion for summary judgment on behalf of Dow AgroSciences in a heated battle with Bayer CropScience AG over a Bayer genetically modified plant patent.
 
This case was critical to Dow, as the company had already invested tens of millions of dollars to develop and promote herbicide-resistant corn, soybean and cotton plants and seeds.
 
Finding that Dow had not infringed a Bayer patent for a genetic process that makes plants resistant to herbicides, the 28-page decision followed an atypical four-day claim construction hearing conducted at the end of June 2012. Claim construction hearings traditionally take place over the course of a day and are limited to argument by attorneys; however, the hearing before Judge Renée Marie Bumb required the testimony of five experts and was, in effect, a mini-trial.
 
Bayer alleged that Dow infringed U.S. Patent No. 6,153,401 (the '401 patent), which discloses a single gene—the tfdA gene—that can be inserted in a plant's DNA to make the plant tolerant to the herbicide 2,4-D. When the patent was filed, scientists believed that the herbicide-resistant enzyme made by the tfdA gene was a "monooxygenase." It was later discovered—by Bayer's expert—to be a "dioxygenase" enzyme. The patent claims require that an infringing plant have the "biological activity of 2,4-D monooxygenase," and Bayer argued that this claim term should be construed broadly to include any enzyme that degrades 2,4-D, which would include monooxygenases, dioxygenases and any other enzymes with this function. Dow took the position that the claim term should be construed to include only a monooxygenase enzyme that can break down 2,4-D.
 
Judge Bumb found that there were two reasons Bayer's suit was without merit. First, Judge Bumb found that Dow does not infringe Bayer's patent because Bayer's patent only covers those genes that have the "biological activity of 2,4-D monooxygenase," while Dow's Enlist line of seed and plant products contain a "dioxygenase" gene. The court rejected Bayer's arguments in support of its contention that the company's patent, despite its clear language, covers any gene that degrades 2,4-D, citing Bayer's own expert, who ended up testifying against Bayer's position at the hearing, holding, "[b]oth the expert testimony and dictionary definitions support Dow's construction."
 
"Although it turned out that the TfdA enzyme specified in the '401 patent was a dioxygenase, this court may not redraft [the claim] to cure a drafting error made by Bayer," Judge Bumb said.
 
The court also recognized a second, independent ground for dismissing Bayer's case. The Patent Act requires that a patentee demonstrate that it is in possession of the claimed invention by sufficiently describing it in the patent. That is, if a patent claims a class of genes, it must provide a written description sufficient to show the patentee was in possession of the entire class. Bayer's patent discloses one gene only—a gene which Dow does not use in its products. The court held that even if it had adopted Bayer's incorrect interpretation of its patent, the patent would be invalid under this "written description" requirement. "Indeed, even Bayer's own witnesses testified that Bayer's proposed interpretation would render the '401 patent overly broad," said Judge Bumb.
 
The team was led by New York litigation partner Peter Bicks, New York intellectual property partner Alex Chachkes, New York litigation partner Jim Stengel, Silicon Valley intellectual property partner Elizabeth Howard and Washington, D.C., appellate partner Mark Davies.