United States District Court, E.D. Virginia, Norfolk Division
SUPPLEMENTAL CLAIM CONSTRUCTION OPINION AND ORDER
COKE MORGAN, JR. SENIOR UNITED STATES DISTRICT JUDGE
matter comes to the Court on the construction of a disputed
patent claim term, referred to herein as "term
(9)." The Court advised the parties of its construction
before trial of this matter, and hereby issues this Opinion
and Order to explain its construction.
FACTUAL BACKGROUND & PROCEDURAL HISTORY
facts and procedural posture of this case have been
summarized in this Court's previous Opinions, including
its Claim Construction Opinion & Order, doc. 274, and the
Court's recent Findings of Fact and Conclusions of Law,
doc. 821. Accordingly, this Court will not repeat its
recitation of the background of this case; the Court will
only briefly summarize the posture of this case as it relates
to the instant construction.
THE PATENTS AND TECHNOLOGY
patents asserted in this case are directed at plant cells
that are genetically modified to have the capability to
produce certain long-chain polyunsaturated omega-3 fatty
acids ("LC-PUFAs"). Australia's national,
government science research agency, the Commonwealth
Scientific and Industrial Research Organisation
("CSIRO") is the owner of several United States
patents directed at such plants. CSIRO has partnered with two
other Australian entities, Nuseed Pty Ltd.
("Nuseed") and the Grains Research and Development
Corporation ("GRDC") to commercialize their LC-PUFA
product. While CSIRO was researching methods to achieve the
recombinant plants, BASF Plant Science L.P. and BASF Plant
Science GmbH (collectively, "BASF") was conducting
similar research. BASF has partnered with Cargill, Inc.
("Cargill") to market their LC-PUFA product.
land plants, such as Brassica napus (the primary
target plant by the parties, which is popularly known as
rapeseed or canola), lack the capability of producing
LC-PUFAs. The parties to this case have taken several steps
to modify canola in a way that it can produce LC-PUFAs.
the aspects of the invention at issue is incorporating into
land plants a desaturase that is capable of acting on an
acyl-CoA substrate. Usually, desaturation in land plants
occurs in an enzymatic pool known as the "acyl-PC
pool" and elongation occurs in the "acyl-CoA
pool." To achieve LC-PUFAs, both elongation and
desaturation must occur multiple times at different points on
a fatty acid. This results in a cell passing a
soon-to-be-LC-PUFA back and forth between the acyl-PC pool
and the acyl-CoA pool. The invention at issue incorporates
desaturases which are capable of acting on a acyl-CoA
substrate to avoid this shifting. Such "acyl-CoA
desaturases" can be found in vertebrate organisms, such
as a fish, and select invertebrate organisms, such as a
issue here is whether the invention asserted by Proponents
only claims the use of acyl-CoA desaturases from vertebrate
CLAIM CONSTRUCTION IN THIS CASE
April 10, 2019, the Court held a Markman 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 - terms (9) and (10) -
under advisement. Doc. 274. On May 15, 2019, the Court
entered an Opinion and Order explaining its construction of
term (10). Doc. 289.
remaining term, "term (9)," was taken under
advisement. The Court decided that it declines to construe
term (9) and will give the term its PLAIN AND
ORDINARY MEANING, WITH NO "VERTEBRATE
LIMITATION." At a motions hearing held on
September 24, 2019, the Court advised parties that the Court
would not construe term (9).
LEGAL PRINCIPLES OF ...