Pre-Issuance Performance of Method Claim Step Avoids Infringement
a multi-step method claim cannot be infringed by the performance of a single step after issuance of the patent when the initial steps were performed prior to issuance.
The claims recited subject matter such as "A process comprising obtaining progeny from a fertile transgenic plant obtained by the process of claim 1 which comprise said DNA." It was undiputed that all of the steps recited in claim 1 were performed in making the original transgenic GA21 corn. However, that original transgenic corn was produced in 1992-93, before issuance of either of the patents.
According to the opinion by Circuit Judge Rader,
As this court has stated many times, "[f]or infringement of a process invention, all of the steps of the process must be performed, either as claimed or by an equivalent step." EMI Group N. Am., Inc. v. Intel Corp., 157 F.3d 887, 896 (Fed. Cir. 1998). As a result of this rule, the performance of the three steps (of independent claim 1) is a prerequisite for the infringement of the four-step process claims of the Lundquist patents. Furthermore, infringement under § 271(a) requires use "without authority . . . during the patent term."
This case lacks any basis for infringement under claim 1 because those steps occurred before patent issuance. Monsanto itself performed those three steps before issuance of the Lundquist patents. Thus, Monsanto itself authorized the first three steps of the claimed four-step process. Thus, this court finds no error in the district court ruling as to the claim of infringement under § 271(a). Further, this court reaches the same result with respect to Monsanto’s claim of infringement under § 271(g). Infringement is not possible under § 271(g) when the three first steps of the claimed process are performed before the issuance of the patent. In Mycogen Plant Science, Inc. v. Monsanto Co., this court held that § 271(g) "requires that the patent be issued and in force at the time that the process is practiced and the product is made." 252 F.3d 1306, 1318 (Fed. Cir. 2001) (finding no § 271(g) infringement where all process steps were practiced and product was made before patent issued), vacated on other grounds, 535 U.S. 1109 (2002). This court explained "[b]ecause domestic entities do not infringe a process patent if they practice the process before the beginning of the patent term, even if they sell the products of the process during the term of the patent, parallel treatment of overseas entities indicates that the statute does not reach pre-issuance use of the later-patented process." Id.(citation omitted). Further, in Joy Technologies, Inc. v. Flakt, Inc., this court explained that a method or process claim is directly infringed only when the process is performed. 6 F.3d 770, 774 (Fed. Cir. 1993). Thus, infringement of a multi-step method claim cannot lie by the performance of a single step after issuance of the patent when the initial steps were performed prior to issuance. Therefore, this court affirms the district court’s judgment that Syngenta’s products do not infringe claims 4-9 of the '880 patent and claims 5-6
of the '863 patent. Syngenta cannot be liable under § 271(a) or (g).