BASF Plant Science, the plant biotech-focused subsidiary of BASF, has asked the US Court of Appeals for the Federal Circuit to overturn a finding that certain claims of a transgenic plant technology patent were invalid.
On Monday, June 10, BASF requested that the Federal Circuit review a final written decision from the Patent Trial and Appeal Board (PTAB) which found that certain claims of US patent number 7,777,098 were invalid.
Seed company Nuseed Americas filed the initial petition, challenging claims 20 to 22 of the ‘098 patent and, in April 2018, the PTAB initiated an inter partes review (IPR).
The patent, called “Method for producing unsaturated ω-3 fatty acids in transgenic organisms”, was filed under the Patent Cooperation Treaty in February 2005.
Both Nuseed and BASF are involved in the development and/or commercialisation of transgenic plants that produce omega-3 fatty acids and the petition formed part of a series of litigation and validity challenges focused on transgenic plant technology.
According to BASF, in its response to the petition, the parties had engaged in negotiations regarding cross-licensing of their respective technologies for more than six months, but these reached an impasse in the spring of 2017.
Shortly after the institution of the IPR, BASF proposed substitute claims, which Nuseed opposed.
In April this year, the PTAB concluded that claims 20 to 22 were unpatentable and denied BASF’s motion to amend with respect to the proposed substitute claims.
According to the board, one of the examples that Nuseed cited as prior art, US patent application 2003/0196217 A1 (known as Mukerji), disclosed every limitation of claims 20 to 22.
Mukerji is directed to the identification and isolation of genes that encode enzymes involved in the synthesis of polyunsaturated fatty acids (fatty acids with two or more double bonds).
In finding that claim 20 of the ‘098 patent was anticipated, the PTAB noted that the claim recites “[a] process for production of compounds comprising one or more C18-, C20-, and/or C22- polyunsaturated fatty acids (PUFAs) in a transgenic organism”.
“Mukerji discloses methods for producing PUFAs, and example 5 of Mukerji, titled ‘Expression of the Omega-3 desaturase gene (“sdd17”) from saprolegnia diclina in bakers’ yeast’, discloses the production of C-18, C-20, and C-22 PUFAs,” said the board.
The PTAB also found that BASF’s substitute claims were unpatentable in light of a paper called “Characterization of the regiochemistry and cryptoregiochemistry of a Caenorhabditis elegans fatty acid desaturase (FAT-1) expressed in Saccharomyces cerevisiae.”