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BASF Plant Science, LP v. Commonwealth Scientific and Industrial Research Organisation

United States District Court, E.D. Virginia, Norfolk Division

April 29, 2019

BASF PLANT SCIENCE, LP, AND CARGILL, INC., Defendants-Counterdefendants



         On April 10, 2019, the Court held a hearing for the purpose of construing ten (10) disputed terms in the patents at issue and resolving two (2) motions to dismiss and a motion to compel discovery. At the hearing, the Court resolved the meanings for eight (8) of these terms and took the construction of two (2) terms under advisement. The Court hereby issues this Opinion and Order further detailing the Court's claim construction. The terms currently under advisement will be addressed in a forthcoming Opinion and Order.

         I. Factual Background & Procedural History

         This case is about United States patents on plant seeds which can formulate certain "long chain" polyunsaturated fatty acids.

         BASF Plant Science, LP (collectively with counterclaim-defendant, BASF Plant Science GMBH, "BASF") is a self-described "pioneer" in developing plant-based biotechnology. Am. Compl.¶ 15. Since 1998, BASF has attempted to create a plant which can make long chain omega-3 polyunsaturated fatty acids ("LC-PUFA"), docosahexaenoic acid ("DHA") and eicosapentaenoic acid ("EPA").[1] Id. In 2011, BASF and Cargill entered into an agreement to commercialize a canola oil product that would contain such fatty acids. Id. ¶¶ 16-18. BASF agreed to develop the seeds and obtain regulatory approval, and Cargill agreed to cultivate, process, extract, and commercialize the oil product. Id. ¶ 17. In November of 2017, BASF petitioned the United States Department of Agriculture for deregulation of canola seeds rich in the fatty acids. Id. ¶ 21. Approval is expected this year. Id.

         The instant case began on September 19, 2017, when BASF Plant Science, LP filed a complaint for declaratory judgment against CSIRO, Grains Research and Development Corporation ("GRDC"), and Nuseed (collectively, "CSIRO"). Doc. 1. at 1.

         CSIRO filed a motion to dismiss under rules 12(b)(1), (2), and (7) on December 26, 2017. Doc. 15. CSIRO argued that this Court lacked declaratory judgment jurisdiction, CSIRO had sovereign immunity, and without CSIRO this suit could not proceed as it is a necessary party. Doc. 16. This Court held a hearing on April 11, 2018. Doc. 41. On April 11, 2018, this Court GRANTED the motion in part, holding that there were insufficient facts to show a case or controversy. Doc. 40. The Court further GRANTED BASF leave to file a new complaint. Id. The Court took the sovereign immunity issues UNDER ADVISEMENT. Id. CSIRO later withdrew its sovereign immunity argument. Doc. 46.

         On April 20, 2018, BASF filed its Amended Complaint, which remains effective today. Doc. 43. In the Amended Complaint, BASF seeks invalidity of the '849 patent, the '226 patent, the'572 patent, the'377 patent, the'432 patent, and the'410 patent. Am. Comp. ¶¶ 183-274. On April 30, 2018, CSIRO filed a motion to dismiss similar to its earlier motion. Doc. 45. In its second motion to dismiss, CSIRO argued that Cargill should be joined, there was no justiciable case or controversy, and withdrew its sovereign immunities claim. Doc. 46. While that motion was pending, CSIRO withdrew it on August 30, 2018. Doc. 54.

         CSIRO answered the Amended Complaint on August 31, 2018. Doc. 56. In its Answer, CSIRO filed sixteen (16) counterclaims for patent infringement against BASF and joined Cargill as a counterclaim-defendant. Id. ¶¶ 31-279. CSIRO also asserted five (5) affirmative defenses, including lack of subject matter jurisdiction and standing. Id. ¶¶ 275-279.

         BASF answered the counterclaims on September 21, 2018. Doc. 73. BASF also raised its own counterclaims. BASF counterclaimed for declaratory judgment that the patents on which CSIRO sues are invalid. CSIRO answered those counterclaims on October 12, 2018. Doc. 86.

         The parties agreed that a Markman hearing was necessary. Doc. 239 at 6. On January 2, 2019, this Court scheduled the Markman hearing for April 10, 2019, and set the briefing schedule. Docs. 152, 153.

         This case concerns the following United States Patents: 7, 642, 346; 7, 807, 849; 7, 834, 250; 8, 106, 226; 8, 288, 572; 8, 575, 377; 8, 853, 432; 9, 458, 410; 9, 963, 723; 9, 926, 579; 9, 951, 357; 9, 970, 033; 9, 994, 880; 9, 994, 792; 9, 969, 954; 9, 932, 541; and 10, 125, 084.

         II. Claim Construction

         The purpose of a Markman hearing is to assist the Court in construing the meaning of the patent(s) at issue. Markman v. Westview Instruments. Inc., 517 U.S. 370, 371 (1996); Markman v. Westview Instruments. Inc., 52 F.3d 967 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). Patents consist of "claims," and the construction of those claims "is a question of law, to be determined by the court." Markman, 517 U.S. at 371: Markman, 52 F.3d at 970-71.


         i. General Principles

         A court need only construe claims "that are in controversy, and only to the extent necessary to resolve the controversy." Vivid Techs.. Inc. v. Am. Science Eng'g. Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (citations omitted). To be clear, "[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy." NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1311 (Fed. Cir. 2005) (citing U.S. Surgical Corp. v. Ethicon. Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)).

         Claim construction begins with the words of the claims. Vitronics Corp. v. Conceptromc, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("First, we look to the words of the claims themselves . . . ."). Words in a claim are generally given their ordinary meaning as understood by a person of ordinary skill in the art (a "POSITA"). Id. This "person of ordinary skill in the art is deemed to read the claim term not only in the particular claim in which the disputed term appears but also in the context of the entire patent, including the specification." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). "In some cases, ... the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than application of the widely accepted meaning of commonly understood words." Id. at 1314. Often, however, "determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art. Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claims language to mean." Id.

         Further, the claims themselves can provide substantial guidance as to the meaning of particular claim terms. Id. First, "the context in which a term is used within a claim can be highly instructive." Id. In addition, other claims of the patent in question, both asserted and unasserted, can also be useful because claim terms are "normally used consistently throughout the patent" and therefore "can often illuminate the meaning of the same term in other claims." Id.

         The claims should not be read alone, however, but rather should be considered within the context of the specification of which they are a part. Markman, 52 F.3d at 978. As the Federal Circuit stated in Vitronics and restated in Phillips, "the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315. The Court, however, must not read in limitations from the specification without clear intent to do so. Thorner v. Sony Comp. Entmt. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Furthermore, a patentee is free to be his or her own lexicographer, and thus if the patentee defines a term in the specification differently than its ordinary meaning, the patentee's definition controls. Phillips, 415 F.3d at 1316.

         In addition to consulting the specification, a court may also consider the patent's prosecution history, if in evidence, because it provides information regarding how the United States Patent and Trademark Office and the inventor understood the patent. See Id. at 1317. It also enables the Court to determine if the inventor limited the invention during the course of prosecution. Id. "[W]here an applicant whose claim is rejected on reference to a prior patent... voluntarily restricts himself by an amendment of his claim to a specific structure, having thus narrowed his claim in order to obtain a patent, he may not by construction ... give the claim the larger scope which it might have had without the amendments." I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 444 (1926). Thus, consulting prior art reference in the prosecution history is permissible. Vitronics, 90 F.3d at 1583.

         These elements of the patent itself-the claims, the specification, and its prosecution history-constitute intrinsic evidence of claim construction. In addition to such intrinsic evidence, a court may consider extrinsic evidence to determine the meaning of disputed claims. Phillips, 415 F.3d at 1317. Such extrinsic evidence "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317 (citing Markman, 52 F.3d at 980). However, the Court should not rely on extrinsic evidence when the intrinsic evidence removes all ambiguity. Vitronics, 90 F.3d at 1583.

         Such extrinsic evidence generally is held as less reliable than the intrinsic evidence and "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of intrinsic evidence." Id. at 1317-18. With respect to expert evidence, for example, "[c]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.. . [and] a court should discount any expert testimony that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent." Id. at 1318.

         With respect to general usage dictionaries, the Federal Circuit noted that "[dictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words and have been used ... in claim construction," and further noted that "a dictionary definition has the value of being an unbiased source 'accessible to the public in advance of litigation.'" Id. at 1322 (citing Vitronics, 90 F.3d at 1585). However, the Federal Circuit cautions that (1) "'a general-usage dictionary cannot overcome art-specific evidence of the meaning' of a claim term;" that (2) "the use of the dictionary may extend patent protection beyond what should properly be afforded by the inventor's patent;" and that (3) "[t]here is no guarantee that a term is used in the same way in a treatise as it would be by the patentee." Phillips, 415 F.3d 1322 (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n, 366 F.3d 1311, 1321 (Fed. Cir. 2004)).[2]Indeed, "different dictionary definitions may contain somewhat different sets of definitions for the same words. A claim should not rise or fall based upon the preferences of a particular dictionary editor, ... uninformed by the specification, to rely on one dictionary rather than another." Id.

         ii. Indefiniteness

         Whether a patent is invalid is a legal question. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1331 (Fed. Cir. 2010). "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus. Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). '"Because a patent is presumed to be valid, the evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence.'" Enzo Biochem, 599 F.3d at 1331 (quoting Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007)).

         It is not the Court's "function to rewrite claims to preserve their validity." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed Cir. 2002) (citing Rhine v. Casio, Inc.,183 F.3d 1342, 1345 (Fed. Cir. 1999)). Courts have found claims indefinite and thus invalid if they cannot discern the scope of a truncated limitation, for example. See Id. at 1348-49. Additionally, a court may not adopt "a completely subjective construction of a claim term in order to find it valid. See Datamize, LLC v. Plumtree Software. Inc.,417 F.3d 1342, 1350-51 (Fed. Cir. 2005) (abrogated ...

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