Pioneer Hi-Bred International, Inc. v. Monsanto Technology LLC

United States Court of Appeals
for the Federal Circuit
__________________________

(Interference No. 105,728)
PIONEER HI-BRED INTERNATIONAL, INC.,
Appellant,
v.
MONSANTO TECHNOLOGY LLC,
Appellee.
__________________________

2011-1285
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Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________

Decided: February 28, 2012
__________________________

JOSEPH LUCCI, Woodcock Washburn, LLP, of Phila-
delphia, Pennsylvania, argued for appellant. With him on
the brief were JOHN P. DONOHUE, JR., S. MAURICE VALLA
and JOHN F. MURPHY.

ROBERT E. HANSON, SNR Denton US LLP, of Dallas,
Texas, argued for appellee. With him on the brief were
STEVEN G. SPEARS, McDermott Will & Emery LLP, of
Houston, Texas, and LAWRENCE M. LAVIN, JR., Monsanto
Technology LLC, of St. Louis, Missouri.
PIONEER HI-BRED v. MONSANTO TECH 2

__________________________

Before PROST, CLEVENGER, and REYNA, Circuit Judges.
CLEVENGER, Circuit Judge.
In November 2009 the Board of Patent Appeals and
Interferences (“the Board”) declared an interference
between the claims of a patent belonging to appellant
Pioneer Hi-Bred International, Inc. (“Pioneer”) and those
of a pending application owned by appellee Monsanto
Technology LLC (“Monsanto”). After the Board concluded
that Monsanto was not time-barred under 35 U.S.C.
§ 135(b)(1) and that Monsanto’s claims were entitled to
seniority, Pioneer stipulated to judgment against it and
the Board canceled Pioneer’s claims. Pioneer Hi-Bred
Int’l, Inc. v. Monsanto Tech. LLC, Patent Interf. No.
105,728, 2010 WL 5127421 (B.P.A.I. Dec. 13, 2010).
Because the Board’s conclusions were correct, we affirm
its rulings.
I
A
The claims at issue concern transgenic corn, specifi-
cally the Zea mays plant. Pioneer’s claims are in U.S.
Patent No. 6,258,999 (issued July 10, 2001) (“the Pioneer
’999 patent”). Independent claim 1 reads:
1. A fertile transgenic Zea mays plant comprised
of stably incorporated foreign DNA, wherein said
foreign DNA consists of DNA that is not from a
corn plant and that is not comprised of a T-DNA
border.
Pioneer ’999 patent cl.1. On its face the Pioneer ’999
patent claims a date of invention of no later than June 10,
1988, which is the filing date of U.S. Patent Application
No. 07/205,155, J.A. 155 (“the Pioneer ’155 application”).
3 PIONEER HI-BRED v. MONSANTO TECH

Monsanto’s interfering claims are in U.S. Patent Ap-
plication No. 11/151,700 (filed June 13, 2005) (“the Mon-
santo ’700 application”). Independent claim 1, as
amended during prosecution, reads:
1. A fertile transgenic Zea mays plant containing
heterologous DNA which is heritable, wherein
said heterologous DNA confers a beneficial trait to
the plant, wherein said beneficial trait is selected
from the group consisting of pest resistance, stress
tolerance, drought resistance, disease resistance,
and the ability to produce a chemical, wherein the
plant expresses a selectable marker gene, and
wherein the plant is from a subsequent generation
of a plant that is re-generated from a selected
transformed cell.
’700 App. Claims, Monsanto Tech. LLC v. Pioneer Hi-Bred
Int’l, Inc., Patent Interf. No. 105,728 [hereinafter Mon-
santo] (B.P.A.I. Dec. 3, 2009), Dkt. #12; see also Monsanto
’700 App., U.S. Patent Pub. No. 2006-0010520 (claims as
originally filed). The Monsanto ’700 application claims
invention no later than January 22, 1990, which is the
filing date of U.S. Patent Application No. 07/467,983, J.A.
251 (“the Monsanto ’983 application”).
B
As already stated, the Board declared this interfer-
ence in November 2009. It listed all claims of the Pioneer
’999 patent and twelve claims of the Monsanto ’700 appli-
cation as involved. And it initially assigned seniority
according to the priority assertions in the parties’ applica-
tions. Thus, the Board designated Pioneer as the senior
party. DeKalb Genetics Corp. v. Pioneer Hi-Bred Int’l,
PIONEER HI-BRED v. MONSANTO TECH 4

Patent Interf. No. 105,728 (B.P.A.I. Nov. 18, 2009), Dkt.
#1. 1
A few months later, Pioneer moved for judgment. Cit-
ing section 135(b) of the Patent Act, Pioneer argued that
the claims in the Monsanto ’700 application were time-
barred. Section 135(b) precludes any applicant from
presenting a claim already made in an issued patent at
any time after the “critical date,” which is the date one
year after the patent in question issued. Pioneer pointed
out that the Monsanto ’700 application was filed after the
critical date and sought judgment on that basis. The
Board disagreed. Denying the motion, it held claim 1 of
the Monsanto ’700 application (along with its dependents)
permissible as relating back to claims in the pre-critical
date Monsanto ’983 application. Monsanto, slip op.
(B.P.A.I. Apr. 22, 2010), Dkt. #67 [hereinafter Section 135
Opinion].
Shortly thereafter, Monsanto filed a motion of its own.
It asked the Board to deny the Pioneer ’999 patent the
benefit of the Pioneer ’155 application’s filing date, argu-
ing that the earlier application did not contain sufficient
disclosure to support interference priority for the later
claims. The Board agreed, and denied Pioneer its early
priority date. Monsanto, slip op. (B.P.A.I. Sept. 29, 2010),
Dkt. #122 [hereinafter Interference Priority Opinion].
This had the effect of making Monsanto the senior party,
after which, as mentioned, Pioneer stipulated to judgment
in Monsanto’s favor.
Following the entry of judgment and cancelation of its
claims, Pioneer filed this appeal. This court has jurisdic-

1 At the time the Board declared the interference,
PTO records indicated that the Monsanto ’700 application
was owned by DeKalb Genetics Corporation.
5 PIONEER HI-BRED v. MONSANTO TECH

tion over appeals from final decisions of the Board in
patent interferences. 28 U.S.C. § 1295(a)(4)(A) (2010).
II
This court applies the standards of the Administrative
Procedure Act in reviewing decisions of the Board. Dick-
inson v. Zurko, 527 U.S. 150, 152 (1999). As such, a
Board action will be set aside if arbitrary, capricious, an
abuse of discretion, or otherwise not in accordance with
law, and factual findings unsupported by substantial
evidence will be set aside. Id.; Falkner v. Inglis, 448 F.3d
1357, 1363 (Fed. Cir. 2006).
III
Pioneer argues that both the Section 135 Opinion and
the Interference Priority Opinion were wrong. We address
these arguments in order.
A
Patent Act section 135 governs interferences. Subsec-
tion (b)(1) sets forth a timeliness requirement:
A claim which is the same as, or for the same or
substantially the same subject matter as, a claim
of an issued patent may not be made in any appli-
cation unless such a claim is made prior to one
year from the date on which the patent was
granted.
35 U.S.C. § 135(b)(1) (2010).
The Monsanto ’700 application was filed more than a
year after the Pioneer ’999 patent issued. Nevertheless,
the Board permitted the Monsanto claims, holding them
permissible under the “such a claim” provision of the
statute. Sec. 135 Op. 7–9.
PIONEER HI-BRED v. MONSANTO TECH 6

The Board acknowledged that the Monsanto ’983 ap-
plication had no single claim containing all limitations
later appearing in the Monsanto ’700 claim 1. It held,
however, that this was no obstacle to Monsanto’s case.
The Board reasoned that section 135(b)(1) permits multi-
ple claims in the pre-critical date application, operating
together, to provide a basis for showing that the later
claim was actually made before the one-year bar in sec-
tion 135(b)(1). It concluded that, if the pre-critical date
aggregated claims were “sufficiently congruent” with the
later claims to demonstrate an intent by Monsanto to
claim the subject matter in question before the critical
date, then the time bar of section 135(b)(1) would be
lifted. Id. at 9–10. As authority, the Board cited two
opinions of the Court of Claims and Patent Appeals,
Thompson v. Hamilton, 152 F.2d 994 (CCPA 1946), and
Corbett v. Chisholm, 568 F.2d 759 (CCPA 1977).
The Board analyzed Monsanto’s claims as follows:
 7 PIONEER HI-BRED v. MONSANTO TECH

Monsanto ’700 Claim 1 Claims from Prior Monsanto ’983 Application
1. A fertile transgenic Zea mays plant 1. A fertile transgenic Zea mays plant containing
containing heterologous DNA which heterologous DNA which is heritable.
is heritable, ...
wherein said heterologous DNA 7. The plant of Claim 1 wherein said heterologous
confers a beneficial trait to the plant, DNA encodes a beneficial trait to the plant.
wherein said beneficial trait is 8. The plant of Claim 7 wherein said beneficial trait is
selected from the group consisting of selected from the group consisting essentially of
pest resistance, stress tolerance, promoting increased crop food value, higher yield,
drought resistance, disease resis- reduced production cost, pest resistance, stress
tance, and the ability to produce a tolerance, drought resistance, disease resistance,
chemical, and the ability to produce a chemical.
wherein the plant expresses a 9. The plant of Claim 1 which expresses a selectable
selectable marker gene, marker gene.
and wherein the plant is from a ...
subsequent generation of a plant that
is regenerated from a selected 13. The seed produced by the plant of Claim 1 which
transformed cell. inherit the heterologous DNA.
...
16. The R2 and higher generations of the plant of
Claim 1.
...
18. The plant of Claim 1 which is produced from
transgenic seed produced from a fertile transgenic
plant using cross-breeding techniques.
...

See Sec. 135 Op. 7–8. The Board held that, viewing
claims 1, 7–9, 13, 16, and 18 of the pre-critical date appli-
cation together, they were “sufficiently congruent” with
the claims later presented in Monsanto’s ’700 application
to lift section 135(b)(1)’s time bar.
1
Pioneer argues that the Board erred in relying on
multiple pre-critical date claims to support Monsanto’s
later claim.
We disagree that there was any error in this case and
affirm the Board’s interpretation of section 135(b)(1).
PIONEER HI-BRED v. MONSANTO TECH 8

Thompson and Corbett demonstrate that that section’s
prior claim requirement can be satisfied by multiple prior
claims. Indeed, Thompson expressly contemplated that
circumstance:
[T]he contention of counsel for appellant [Mr.
Thompson], as we understand it, is, in effect, that
the indefinite article “a” embraced in the rule
[precursor to section 135(b)(1)] should be inter-
preted as meaning “one.”
It is obvious that the construction for which
appellant contends would create an anomalous
situation in cases such as that under considera-
tion.
152 F.2d at 996. The Thompson opinion does not ex-
pressly reproduce the claims that were at issue in that
appeal, so it is not possible to reconstruct every detail of
the CCPA’s claim interpretation. But its main holding is
clear: multiple pre-critical date claims, considered to-
gether, can provide the foundation necessary for post-
critical date claims to be held timely. The CCPA wrote:
An examination of these five claims [pre-
critical date claims by Mr. Hamilton] shows that
each feature of the counts [of the subsequent in-
terference] had been covered by claim. Claims 1
and 2 are more specific than count 1 in that they
include the bulged feature above mentioned.
Claim 3 was sufficiently broad to read on the
Thompson structure and it embodied the essential
features in issue. Claim 4, except possibly for the
stated method of assembly of the parts, was also
sufficiently broad to read on the Thompson disclo-
sure.
9 PIONEER HI-BRED v. MONSANTO TECH

Id. at 996–97 (quoting the Board of Interference Examin-
ers).
We read this as follows: Hamilton claims 1 and 2 were
narrower than the post-critical date claim, and so did not
claim its full scope but recited all required limitations. 2
Claim 3 was broader than the later claim and addressed
its “essential” features, although perhaps did not recite
every required limitation. And claim 4 was styled differ-
ently but addressed largely the same subject matter as
the other claims. Thompson therefore stands for the
proposition that, for purposes of section 135(b)(1), the
Board may in some cases find the required pre-critical
date claiming by analyzing multiple claims together.
2
Having confirmed that there is no general prohibition
against analyzing multiple pre-critical date claims to-
gether, we next must determine whether the Board erred
in holding that Monsanto’s pre-critical date claims are
sufficient to permit the later claim to overcome its lack of
timeliness. Citing Corbett, Pioneer contends that the
various claims of the Monsanto ’983 application are too
disparate, addressing inventions so different that the
Board committed legal error in holding them “sufficiently
congruent.”
In analyzing Monsanto’s claims, the Board applied a
test gleaned from Thompson and Corbett. For each pre-
critical date claim, the Board checked to see if the claim
was directed to the “same invention” as the others, or
whether it was addressing a “related” invention. Sec. 135

2 In Thompson, Mr. Hamilton provoked the inter-
ference by adding to his pending application claim lan-
guage identical to the issued Thompson patent. As a
result the language of the count was identical to that of
Mr. Hamilton’s post-critical date claim. 152 F.2d at 995.
PIONEER HI-BRED v. MONSANTO TECH 10

Op. 8–9. The Board concluded that each of the pre-critical
date claims analyzed was directed to the same essential
invention, and that collectively the pre-critical date claims
did not differ materially from the post-critical date claim
1 in the Monsanto ’700 application. Id. at 9–10; see also
Adair v. Carter, No. 2011-1212, 2012 WL 372115, at *5
(Fed. Cir. Feb. 7, 2012) (confirming that for purposes of
overcoming a § 135(b)(1) bar the proper test is whether
there are material differences between the pre- and post-
critical date claims).
Pioneer appeals two of the Board’s conclusions. First,
the Board concluded that pre-critical date claim 9 of the
Monsanto ’983 application was directed to the same
invention as claims 7 and 8 of that application. Pioneer
claims this was error because while claim 8 inherits all
limitations of both claims 1 and 7, claim 9 inherits only
the limitations of claim 1. From this, Pioneer contends
that claim 9 is not directed to the “same invention” as 7
and 8.
The Board’s interpretation and comparison of the
claims here was a legal inquiry, reviewed without defer-
ence. See In re Roemer, 258 F.3d 1303, 1307 (Fed. Cir.
2001) (holding interference claim construction a legal
matter); cf. Sun Pharm. Indus., Ltd. v. Eli Lilly & Co.,
611 F.3d 1381, 1384–85 (Fed. Cir. 2010) (holding, in the
double-patenting context, claim comparison a legal mat-
ter). We see no error in the Board’s analysis of claim 9.
As already discussed, there is no error per se in consider-
ing multiple claims of a pre-critical date application
together for section 135 purposes. To hold, as Pioneer
proposes, that such consideration is limited to claims in a
dependency relationship would undermine our precedent.
A dependent claim inherits all limitations of the parent,
so considering a parent and its dependent together is not
practically different from considering the dependent only.
11 PIONEER HI-BRED v. MONSANTO TECH

The rule Pioneer proposes would boil down to a restriction
against exactly the kind of multiple-claim analysis that
Thompson approved. In order for Thompson to stand for
anything, it must permit the Board to analyze together
two non-dependent claims.
Nor do we see any error in the Board’s conclusion that
pre-critical date claim 9 is directed to the same invention
as claims 7 and 8. As the Board noted, all three of these
depend from claim 1. Claims 7 and 8 add limitations
concerning the beneficial traits coded for by the incorpo-
rated heterologous DNA; claim 9 adds a limitation that
the claimed plant “expresses a selectable marker gene.”
As the Board noted, “nothing in claim 9 indicates a choice
away from the limitations of claim 7 or claim 8.” Sec. 135
Op. 8. Like the Board, we conclude that the pre-critical
date claims here demonstrate intent to claim an invention
reflecting both the limitations of claims 7 and 8 and of
claim 9. Corbett expressly stated that if the pre-critical
date claims failed to “manifest a unitary scheme or at-
tempt to secure a property right in the subject matter” of
the later claim, they could not provide the foundation
required by section 135(b)(1). 568 F.2d at 766–67. Like
the Board, we embrace the positive corollary: pre-critical
date claims provide the support necessary under this
section where the early claims, taken together, demon-
strate that the pre-critical date claims do not differ mate-
rially from the post-critical date claims.
Pioneer also appeals the Board’s analysis of pre-
critical date claims 13, 16, and 18. As the Board recog-
nized, claims 13 and 16 of the Monsanto ’983 application
do not depend from claim 1. They are, however, related to
that claim. Claim 13 claims, “The seed produced by the
plant of Claim 1 which inherit the heterologous DNA.”
And claim 16 claims, “The R2 and higher generations of
the plant of claim 1.” Claim 18 does depend from claim 1,
PIONEER HI-BRED v. MONSANTO TECH 12

and claims, “The plant of claim 1 which is produced from
transgenic seed produced from a fertile transgenic plant
using cross-breeding techniques.”
Pioneer argued that these claims, separately or collec-
tively, could not support the final limitation of Monsanto
’700 claim 1: “and wherein the plant is from a subsequent
generation of a plant that is regenerated from a selected
transformed cell.” The Board disagreed, and so do we.
This final limitation restricts the post-critical date
claim to all generations of the subject plant beyond the
initial progenitor. In technical parlance (undisputed by
the parties), it claims the “R1” and higher generations.
The claim does not cover “R0,” the initial plant. The
Board held that Monsanto ’983 claims 13, 16, and 18
demonstrate a similar scope of coverage. Claim 16 spe-
cifically reaches the “R2 and higher generations.” And
while there is no claim expressly reciting an “R1” genera-
tion, Monsanto ’983 claim 13 addresses the seed necessary
to give rise to that generation and claim 18 limits the
plant of Monsanto ’983 claim 1 so that it is itself an “R1”
plant. We disagree with Pioneer’s contention that pre-
critical date claims 13, 16, and 18 are directed to inven-
tions outside of what was later claimed by Monsanto ’700
claim 1. Together they include all limitations of the later
claim’s final limitation. And although claims 13 and 18
differ slightly in formation from pre-critical date claim 1,
the change is not material for purposes of section
135(b)(1). To the contrary, viewed together claims 13, 16,
and 18 demonstrate the intent to cover the later-claimed
subject matter required by Corbett. The linguistic differ-
ences between the early claims and the later one are in
this case immaterial.
For these reasons we agree with the Board that the
Monsanto ’983 claims provided a sufficient basis to over-
13 PIONEER HI-BRED v. MONSANTO TECH

come the time bar of section 135(b)(1). The Section 135
Opinion is thus affirmed.
B
Pioneer next argues that the Board erred in denying
its interference priority claim. On Monsanto’s motion, the
Board held that the Pioneer ’999 patent could not benefit
from the filing date of the Pioneer ’155 application. This
was because the Board was unable to find in that applica-
tion any enabled disclosure of an embodiment satisfying
Pioneer ’999 claim 1’s requirement of “foreign DNA . . .
that is not comprised of a T-DNA border.” Interf. Priority
Op. at 7.
On appeal, Pioneer argues that the Board improperly
analyzed its priority claim. Pioneer argues, and Mon-
santo does not dispute, that to deprive Pioneer of its
priority claim, Monsanto had the burden to show that
Pioneer’s earlier application could not serve as a construc-
tive reduction to practice of the later claim, i.e., it did not
disclose any enabled embodiment of the later claim. See
Frazer v. Schlegel, 498 F.3d 1283, 1287 (Fed. Cir. 2007).
Pioneer claims that the Board improperly reversed this
burden, granting Monsanto’s motion when Monsanto had
not made the required proof. Appellant Br. 45. Pioneer
further claims that the Board improperly held it to the
full enablement requirement of section 112, rather than
the constructive reduction to practice standard of Frazer.
Id. at 47.
We see no flaw in the Board’s approach. On the mat-
ter of burdens, it is correct that Monsanto as movant had
the initial burden to show why Pioneer should be deprived
of its interference priority. See 37 C.F.R. § 41.121(b)
(2010) (Board Rule 121(b)). And although the Board did
not explicitly discuss burden placement, we see no error
in its implicit conclusion that Monsanto had satisfied the
PIONEER HI-BRED v. MONSANTO TECH 14

requirement of Board Rule 121(b). In its motion, Mon-
santo highlighted the Pioneer ’155 application’s lack of
any express reference to an embodiment in which the
foreign DNA did not comprise a T-DNA border. Monsanto
Subst. Mot. I, Monsanto, at 12–13 (B.P.A.I. Apr. 26, 2010),
Dkt. #72. The Board was entitled to treat this as a prima
facie justification for relief, which Pioneer was required to
rebut.
As for Pioneer’s argument that the Board applied the
wrong legal standard, we see no evidence of that. The
Board cited Frazer and stated expressly that, “For a
constructive reduction to practice, . . . a single embodi-
ment is sufficient,” which correctly recites the rule. Interf.
Priority Op. 4. As for the Board’s subsequent statement
that it saw “little difference” between the enabled em-
bodiment test at issue here and the test of section 112,
paragraph 1, nothing about that statement or the rest of
the opinion suggests that the Board applied anything
other than the correct test.
Nor do we see any error in the Board’s conclusion that
Pioneer failed to overcome Monsanto’s showing and
demonstrate the required enabled embodiment. Review-
ing the Pioneer ’155 application, we agree with the Board
that it includes no express discussion of T-DNA borders at
all. In its briefs and argument on appeal Pioneer pre-
sented no serious contention that the foreign DNA de-
scribed in that application would inherently not comprise
a T-DNA border, which is the only other way the required
embodiment could be found. We therefore find the
Board’s opinion to be without reversible error, and so
affirm the Interference Priority Opinion.
IV
For the above stated reasons, the judgment of the
Board stands
15 PIONEER HI-BRED v. MONSANTO TECH

AFFIRMED
COSTS
No costs.