Interference 103,781
1306, 1309-1310, 58 USPQ2d 1891, 1892-1893 (Fed. Cir. 2001).
The Federal Circuit concluded at 1309, 58 USPQ2d at 1893, that:
. . . the district court improperly resolved disputed
questions of material fact pertaining to the issue of
prior invention, and we therefore reverse the court’s
ruling on summary judgment that the ‘831 patent is
invalid under 35 U.S.C. § 102(g). We decline to affirm
the summary judgment of invalidity on the alternative
ground of non-enablement, as urged by Monsanto, but
leave to the district court the task of determining in
the first instance whether there is a genuine issue of
material fact as to enablement based on its assessment
of the evidence presented to it in the summary judgment
proceeding.
Id. at 1310, 58 USPQ2d at 1894, the Federal Circuit explained:
We agree with the district court that collateral
estoppel requires the court to conclude that Monsanto
reduced the invention [claimed in the Mycogen’s ‘831
patent] to practice before Mycogen, and that collateral
estoppel does not resolve the question whether Mycogen
was the first to conceive and then was diligent during
the critical period. On the merits of the summary
judgment question, however, we do not agree that
Monsanto has met its burden of showing that there
are no issues of material fact regarding whether
Mycogen was the first to conceive the invention
and then diligently reduce it to practice.
August 16, 2001 - On appeal from the decision of the U.S.
District Court for the District of Delaware in Monsanto Co. v.
Mycogen Plant Science, Inc., No. 96-133-RMN (D. Del. Sept. 8,
1999), the U.S. Court of Appeals for the Federal Circuit
affirmed. Monsanto Co. v. Mycogen Plant Science, Inc., 261 F.3d
1356, 1359, 59 USPQ2d 1930, 1931 (Fed. Cir. 2001). At 1360,
59 USPQ2d at 1932, the Federal Circuit said, “Claims 7-9 and 12
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