Suggestion that "Might Still Be Expected to Increase Efficiency" Sufficient to Suport Jury Finding on Obviousness

In Syngenta Seeds, Inc. v. Monsanto Co. (May 3, 2007; Bryson, J.), the Federal Circuit cited the Supreme Court decision in KSR v. Teleflex for the first time and affirmed an obviousness holding for several patents:

While "the ultimate judgment of obviousness is a legal determination," KSR Int'l
Co. v. Teleflex Inc., No. 04-1350, slip op. at 23 (U.S. Apr. 30, 2007), that determination is necessarily based on underlying factual inquiries, see Winner
Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000). When reviewing a jury verdict of obviousness, "[w]e first presume that the jury resolved the underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if they are supported by substantial evidence. Then we examine the legal conclusion de novo to see whether it is correct in light of the presumed jury fact findings." Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) (citation omitted).

The pertinent claims of the '865 patent describe a transgenic corn plant that produces a certain protein "wherein the foreign DNA nucleic acid coding sequence has a G+C content of at least about 60%." Syngenta argued that while the general notion of substituting codons (sequences of three adjacent nucleotides that control protein synthesis) rich in G+C may have been obvious, the idea to modify the coding sequence of the Bacillus thuringiensis ("Bt") bacterium gene (that produces a protein toxic to certain insects) to increase the G+C content to more than 60 percent would not have been obvious. Although a portion of the prior art application suggested that positive results could be achieved without modifying the entire DNA sequence:

Since the [positive] results did not seem to vary greatly based on the length of
the substituted codons, it is possible that the increased expressional
efficiency is due principally to the substitutions at the amino-terminal, or 5',
end of the coding sequence, perhaps those in the first 25 codons. . . . If true,
this would suggest that entire coding regions need not be altered to gain a
relatively significant increase in efficiency of expression, merely the
amino-terminal end of the coding region, for perhaps about 25 codons. Performing
such a codon substitution for the remaining portion of the coding region might
still be expected to increase efficiency of expression, although perhaps less
dramatically.

according to the court,

. . . including the conclusion that a complete codon substitution "might still be
expected to increase efficiency of expression," plainly constitutes a suggestion
that some increased efficiency of expression could be achieved by producing a
synthetic Bt gene with a coding region consisting entirely of plant-preferred
codons.

Syngenta also argued that even if a gene modification resulting in a G+C content of more than 60 percent was obvious to try, there was no reasonable basis to expect that such a modification would lead to a significantly improved level of expression of the Bt protein, and thus no basis for the jury’s finding of obviousness. However, according to the Federal Circuit,

The jury was properly instructed, and it concluded, with ample basis in the
record, that the prior art gave rise to a reasonable expectation of success from
the formulation found in the asserted claims. . . . The jury was entitled to
rely on that portion of the Barton application in concluding that there was a
reasonable expectation of success from such an increase in the G+C content of the codons in the genetic sequence. . . . [O]ther prior art references that fail to suggest a G+C content of greater than 60 percent . . . do little to offset the clear suggestion in the Barton application that complete codon substitution would rease in the G+C content of the codons in the genetic sequence. . . . Although [one] reference cuts against a finding of obviousness, the jury was entitled to weigh Fischhoff against the other evidence and conclude, as a factual matter, that there was a reasonable expectation of success from substituting plant-preferred codons in place of the codons found in the native Bt gene.

The court also reiterated that the doctrine of waiver precludes a party from advocating a new theory of claim constriction on appeal:

Because Syngenta never raised its present proposed construction before the
district court, its proposed construction is waived. As Syngenta has not
challenged the construction of the '100 and '185 patent claims on any other
ground, we affirm the judgment of noninfringement.