Claiming a Dependent Claim as an Independent Claim: Monsanto v. Syngenta

Monsanto Co. v. Syngenta Seeds (2006-1472) October 4, 2007

Syngenta makes and sells genetically engineered crops. Syngenta obtained a specific type of transgenic corn seeds (GA21 seeds) when it acquired two seed companies that were licensed by Monsanto to sell the seeds to farmers.

Monsanto sued Syngenta, alleging infringement of three of its' patents related to the GA21 seeds. During litigation, Syngenta argued that Monsanto itself performed three steps of the independent claims of two of the patents, thus making it impossible for Syngenta to infringe. The district court agreed, granting Summary Judgment in favor of Syngenta.

Interestingly, Monsanto also alleged infringement of one dependent claim, arguing that the claim should be interpreted as an independent claim, thus vitiating the need to perform the steps recited in the independent claim. Further, Monsanto argued that, even if the claim is dependent, Syngenta nevertheless infringes because Syngenta's performance of the last step of the process resulted in performance of all of the claimed steps, albeit with the first three steps performed by Monsanto.

Monsanto argued that the claim at issue was not "simply" a dependent claim because it entails significantly more than the process of the dependent claim. According to Monsanto, the dependent claim is by itself a single-step process (process of obtaining progeny). Accordingly, the dependent language refers instead to the novel starting material (a fertile transgenic plant previously obtained using the process of the independent claim) of the new process in described in the dependent claim.

To bolster its point, Monsanto draws attention to the form of the dependent claim, which recited "the process of claim 1 further comprising . . .".

The CAFC didn't bite:

Claim 4 expressly recites the process of claim 1 and specifically requires a fertile transgenic plant obtained by the performance of the steps in claim 1. Further, it includes the additional step of obtaining progeny. Claim 4 thus incorporates the format specified by the statute for dependent claims. Contrary to Monsanto’s argument, claim 4 clearly references another claim, not simply a starting material.

The rub here is that the CAFC didn't say it was impossible for a dependent claim to be interpreted as an independent claim are argued, but only that Monsanto didn't claim it that way in the patent:

The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4.

With regard to the "partial infringement" theory put forth by Monsanto, the CAFC shot this down as well:

Although in a somewhat unusual format, claim 4 is dependent from claim 1 because it only stands if all three steps recited in claim 1 have been performed. In other words, the additional fourth step of obtaining progeny depends on the performance of the process comprising the three steps recited in claim 1 for obtaining a fertile transgenic plant. Claim 4 contains each element of a dependent claim.

AFFIRMED