Basf Plant Science, Lp v. Commonwealth Scientific ( 2022 )

Case: 20-1415 Document: 62 Page: 1 Filed: 03/15/2022
United States Court of Appeals
for the Federal Circuit
______________________
BASF PLANT SCIENCE, LP,
Plaintiff-Appellant
v.
COMMONWEALTH SCIENTIFIC AND INDUSTRIAL
RESEARCH ORGANISATION,
Defendant-Cross-Appellant
-------------------------------------------------
COMMONWEALTH SCIENTIFIC AND INDUSTRIAL
RESEARCH ORGANISATION, GRAINS RESEARCH
AND DEVELOPMENT CORPORATION, NUSEED
PTY LTD.,
Plaintiffs-Counterclaimants-Cross-Appellants
v.
BASF PLANT SCIENCE, LP, CARGILL, INC.,
Defendants-Counterdefendants-Appellants
BASF PLANT SCIENCE GMBH,
Counter-Counterclaimant-Appellant
______________________
2020-1415, 2020-1416, 2020-1919, 2020-1920
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 2:17-cv-00503-HCM-
LRL, Senior Judge Henry C. Morgan Jr.
Case: 20-1415 Document: 62 Page: 2 Filed: 03/15/2022
2 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
______________________
Decided: March 15, 2022
______________________
CATHERINE EMILY STETSON, Hogan Lovells US LLP,
Washington, DC, argued for BASF Plant Science, LP,
BASF Plant Science GmbH. Also represented by ANNA
KURIAN SHAW; NITYA ANAND, JASON ALBERT LEONARD, New
York, NY; N. THOMAS CONNALLY, III, Tysons, VA.
WILLIAM M. JAY, Goodwin Procter LLP, Washington,
DC, argued for Commonwealth Scientific and Industrial
Research Organisation, Grains Research and Development
Corporation, Nuseed Pty Ltd. Also represented by JORDAN
BOCK, ALEXANDRA LU, ANDREW S. MCDONOUGH, DAVID
ZIMMER, Boston, MA; ALEXANDRA D. VALENTI, New York,
NY. Commonwealth Scientific and Industrial Research
Organisation also represented by MICHAEL NG, DANIEL
AMON ZAHEER, Kobre & Kim LLP, San Francisco, CA.
AHMED JAMAL DAVIS, Fish & Richardson PC, Washing-
ton, DC, argued for Cargill, Inc. Also represented by
DANIEL GOPENKO; CHRISTOPHER ROBERT DILLON, Boston,
MA; ELIZABETH M. FLANAGAN, Minneapolis, MN.
______________________
Before NEWMAN, TARANTO, and CHEN, Circuit Judges.
Opinion for the Court filed by Circuit Judge TARANTO.
Opinion dissenting in part filed by Circuit Judge
NEWMAN.
TARANTO, Circuit Judge.
Commonwealth Scientific and Industrial Research Or-
ganisation (CSIRO), a research arm of the Australian gov-
ernment, owns six U.S. patents that are at issue before us.
The parties treat four patents under the name “Group A”:
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 3
Nos. 9,926,579; 9,951,357; 9,970,033; and 9,994,880. They
treat separately the two other patents at issue,
Nos. 9,994,792 and 9,932,541 (once part of “Group B” and
“Group D,” respectively). The claims concern the engineer-
ing of plants, particularly canola, to produce specified oils
not native to the plants. CSIRO has worked with Nuseed
Pty Ltd. and Grains Research and Development Corpora-
tion to commercialize its inventions.
In 2017, BASF Plant Science, LP (BASF) sued CSIRO,
Nuseed, and Grains Research in the Eastern District of
Virginia, seeking a declaratory judgment limited to certain
CSIRO patents other than the six now at issue. In 2018,
after BASF amended its complaint to name only CSIRO,
CSIRO filed an answer (for itself) along with counterclaims
(for itself, Nuseed, and Grains Research) asserting in-
fringement of the six patents now at issue and adding Car-
gill, Inc. (BASF’s commercialization partner) as a
counterclaim defendant. In 2019, BASF Plant Science
GmbH entered as a party (hereinafter included within
“BASF”), and BASF asserted, as an infringement defense,
that it co-owned the asserted patents by virtue of a 2008
contract between it and CSIRO. Cargill soon sought dis-
missal of the counterclaims against it for lack of personal
jurisdiction and improper venue in the Eastern District of
Virginia, but the district court denied its motions. BASF
Plant Science, LP v. Commonwealth Scientific & Industrial
Research Organisation [hereinafter BASF v. CSIRO],
No. 2:17-cv-503, 2019 WL 2017541, at *2–5 (E.D. Va. May
7, 2019) (Venue Opinion).
With the array of parties set, the case proceeded to trial
on eight claims of the six patents at issue now, with the
trial bifurcated into liability and remedy phases. Putting
aside the co-ownership defense, the parties stipulated to
infringement of the asserted claims of five of the patents,
and the jury found infringement of the asserted claim of
the sixth (the ’541 patent). J.A. 24. The jury also rejected
the invalidity challenges, including the challenge that the
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4 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
six asserted Group A patent claims lacked adequate writ-
ten-description support. J.A. 25–26. As to the co-owner-
ship defense to infringement, the jury found that BASF co-
owned the ’792 patent (precluding infringement of that pa-
tent) but not the other patents. J.A. 27. Willfulness was
not decided by the jury, the district court having ruled that
the evidence would not support a finding of willfulness.
BASF v. CSIRO, No. 2:17-cv-503, 2020 WL 973751, at *10–
11 (E.D. Va. Feb. 7, 2020) (Pre-Verdict Motions Opinion).
For the remedy phase, a jury was convened to assess past
damages, but it was discharged following an evidentiary
ruling concerning a proffer by CSIRO. J.A. 10568–89. Af-
ter a bench trial concerning remedies, the district court de-
nied a conduct-stopping injunction but granted an ongoing
royalty on all five patents found infringed. BASF v.
CSIRO, No. 2:17-cv-503, 2019 WL 8108116, at *16, *21,
*27 (E.D. Va. Dec. 23, 2019) (Remedies Opinion).
BASF and Cargill (for simplicity, “Appellants”), on one
side, and CSIRO and its commercialization partners
(“Cross-Appellants”), on the other, now appeal. Appellants
together appeal the jury’s verdicts of (1) adequate written
description of the asserted Group A patent claims and
(2) no BASF co-ownership of the five patents other than the
’792 patent. Cargill appeals the district court’s determina-
tion that venue was proper for Cargill. On the other side,
Cross-Appellants appeal the jury’s verdict that BASF co-
owned the ’792 patent. They also appeal several rulings by
the district court that limited the remedy granted: (1) the
refusal to submit willfulness to the jury; (2) a ruling on an
issue about Cross-Appellants’ past-damages evidence that
led the court to give no damages issue to the jury; (3) the
denial of an infringement-stopping injunction, with the
prospective remedy limited to an ongoing royalty; and
(4) the calculation of that royalty.
We hold as follows. First, we affirm the district court’s
determination that venue as to Cargill was proper in the
Eastern District of Virginia. Second, regarding the jury’s
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 5
verdict rejecting the written-description challenge to the
asserted Group A patent claims, we affirm as to the claims
that are limited to canola plants (the only ones either side
meaningfully discusses), but we reverse as to the broader
genus claims. Third, we affirm the jury’s verdict that five
patents were not co-owned by BASF but reverse the con-
trary verdict as to the sixth, with the result that infringe-
ment of all valid claims of the six patents at issue is now
settled. Finally, on the remedy issues, we affirm the dis-
trict court’s refusal to submit willfulness to the jury and its
decision on the evidentiary issue concerning past damages.
But we remand for reconsideration of the remedy, while
leaving the current remedy in place pending such reconsid-
eration.
I
A
Certain facts that we accept in the current posture of
the case supply background to the legal disputes before us.
Omega-3 long-chain polyunsaturated fatty acids (LC-
PUFAs)—specifically, eicosapentaenoic acid (EPA) and do-
cosahexaenoic acid (DHA)—can be beneficial to human
health. See, e.g., ’579 patent, col. 1, lines 59–61, col. 2, lines
5–25. The main source of LC-PUFAs in the human diet
has traditionally been certain fish, such as salmon and
mackerel, that in the wild ingest LC-PUFAs in their natu-
ral diet. Id., col. 2, lines 5–10; J.A. 8467–70. When farm-
raised, however, those fish must be fed supplements to ac-
quire LC-PUFAs. J.A. 8477. Other oily fish caught in the
wild can provide the LC-PUFA-rich oil for the supple-
ments, but the supply of such fish was seen as undesirably
low and volatile. J.A. 8477–81. The aquafeed industry
therefore began exploring genetic modification of familiar
oilseed crop plants, such as canola (also known as Brassica
napus or rapeseed), to get them to produce LC-PUFA-rich
oil that could be fed to farm-raised fish. J.A. 8481–83; ’579
patent, col. 2, lines 32–35; Remedies Opinion, 2019 WL
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6 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
8108116, at *1 n.2. Around 2000, both CSIRO and BASF
were pursuing that goal.
CSIRO was working toward getting land plants to use
a Δ6-desaturase pathway for that purpose, which required
inserting a series of genes drawn from other organisms
(like microalgae or yeast) to encode enzymes (certain elon-
gases and desaturases) not native to land plants. J.A.
8568–75; J.A. 8595. The theory was that introducing Δ6-
desaturase pathway enzymes would allow the plants to
transform a short-chain fatty acid they already could make
(alpha-linolenic acid or ALA) into the desired long-chain
PUFAs: EPA and DHA. See J.A. 8593–94. CSIRO
achieved the production of LC-PUFAs in a laboratory
oilseed plant called Arabidopsis, J.A. 8602–08; J.A. 8963–
82, and in 2004 it began filing provisional patent applica-
tions on the so-called “blueprint,” i.e., the series of genes
that encode enzymes for each step in the Δ6-desaturase
pathway, see J.A. 11107–337; J.A. 11608–92. CSIRO did
not immediately implement the blueprint in canola plants;
instead, according to its trial evidence, CSIRO kept work-
ing with the laboratory-friendly plants to explore imple-
mentation choices relevant to producing the oil in
quantities needed for ultimate commercialization. See,
e.g., J.A. 9830–40; J.A. 9979–81.
BASF was also researching the Δ6-desaturase pathway
in land plants. By 2002, BASF produced EPA in Arabidop-
sis, tobacco, and linseed (a crop plant also known as flax),
and it did the same for DHA in Brassica juncea (another
crop plant, closely related to canola) by 2004. J.A. 9283–
85. By 2006, BASF had decided to pursue producing LC-
PUFAs in canola. J.A. 9504–05. Before 2007, BASF had
made public several of the genes it was using. See, e.g., J.A.
12687–92; J.A. 12607–14.
By 2007, CSIRO and BASF were discussing a focused
collaboration, which they began the next year. Although
both CSIRO and BASF were working on a Δ6-desaturase
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 7
pathway in canola, they were using (and had commercial
rights to) different genes. For example, CSIRO was using
a gene from Pavlova salina to code for the Δ5-desaturase
enzyme of the pathway, while BASF was using one from
Thraustochytrium ssp. J.A. 12675; J.A. 12678. Hoping
that a combination of their genes would “further enhanc[e]
the levels of LC-PUFAs . . . EPA and DHA in canola,” J.A.
12665, BASF and CSIRO entered into a two-year Materials
Transfer and Evaluation Agreement (MTEA), J.A. 12664–
86, with work to commence March 1, 2008, to “evaluate lev-
els of EPA and DHA accumulated in T2 seed of canola
plants expressing a combination of both CSIRO and
[BASF] genes,” J.A. 12665; J.A. 12681 (emphasis added).
The MTEA’s Schedule B lists 13 specific combination con-
structs for study, each construct containing six to eight
genes, at least one an identified CSIRO gene and at least
one an identified BASF gene. J.A. 12681–84.
The CSIRO and BASF collaboration under the MTEA
ended in 2010. J.A. 12665–67; J.A. 9134–39; J.A. 11841.
In December 2010, CSIRO partnered with another Austral-
ian government entity, Grains Research, and the private
company Nuseed, granting Nuseed an exclusive license to
CSIRO’s LC-PUFA technology and patents. J.A. 8460; J.A.
8489–96; J.A. 10034–35; J.A. 11346–47. Together, CSIRO
and its partners worked toward marketing products called
Aquaterra® (fish feed for farm-raised fish) and Nutriterra®
(a dietary supplement for human consumption). J.A. 8506–
13. BASF, on the other hand, entered into an agreement
with the private company Cargill in April 2011, with each
party assigned certain responsibilities. J.A. 12763. BASF
developed a LC-PUFA-producing canola seed line called
LFK and used it to apply for required regulatory approvals,
and Cargill used that line in cross-breeding work to even-
tually develop a commercial seed oil product called Lati-
tude. See Remedies Opinion, 2019 WL 8108116, at *7–10;
J.A. 12763. As part of the joint project, in November 2014
and July 2015, BASF deposited seeds with the American
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8 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
Type Culture Collection (ATCC) in Manassas, Virginia, to
support BASF’s patent applications. J.A. 13208–13; see
also J.A. 2758–59.
B
1
After the MTEA ended, and after acquiring their own
separate commercialization collaborators, as described
above, BASF and CSIRO negotiated for BASF to take a li-
cense to CSIRO’s LC-PUFA technology, but the negotia-
tions broke down in 2016. In October of that year, CSIRO’s
collaborator Nuseed sent Cargill a letter listing a number
of CSIRO’s patents (not including the patents now at issue)
and inviting Cargill “to a broad discussion of the patents in
the omega-3 area and an exploration of potential future
paths in this space for Cargill and Nuseed.” J.A. 14366–
67. In April 2017, BASF sued Nuseed in the District of
Delaware, seeking a declaratory judgment that BASF did
not infringe certain CSIRO patents listed in the October
2016 letter. But the District of Delaware dismissed that
case for lack of jurisdiction.
The present case began on September 19, 2017, when
BASF filed a declaratory-judgment action in the Eastern
District of Virginia against CSIRO, Nuseed, and Grains
Research (hereinafter referred to collectively as “CSIRO”
unless the context indicates otherwise). BASF filed an
amended complaint in this case on April 20, 2018. On Au-
gust 31, 2018, CSIRO filed an answer along with infringe-
ment counterclaims against both BASF and Cargill
(hereinafter referred to collectively as “BASF” unless the
context indicates otherwise). J.A. 2837–978. That filing
introduced into this case the six patents now at issue (plus
two others). J.A. 2944–77. In response to CSIRO’s coun-
terclaims asserting these new patents, in September 2018,
BASF filed an answer and its own (counter-)counterclaims
against CSIRO addressing these patents. Subsequently, in
January 2019, CSIRO amended its counterclaims against
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 9
BASF and Cargill; and when BASF answered the amended
counterclaims, it (now including BASF Plant Science,
GmbH) asserted for the first time that it co-owned the rel-
evant patents under the terms of the MTEA.
2
At issue on appeal are eight claims from six patents—
the four Group A patents, the ’792 patent, and the ’541 pa-
tent. Other claims from other patents were once at issue,
including one at trial, but no longer are.
The four Group A patents, which share a specification,
issued between March and June of 2018 (after this litiga-
tion began) on applications filed in 2016–2017 that traced
priority back to CSIRO’s 2004 Provisional Application Nos.
60/564,627 and 60/613,861. ’579 patent, title page, col. 1,
lines 5–31; ’357 patent, title page, col. 1, lines 5–29; ’033
patent, title page, col. 1, lines 5–31; ’880 patent, title page,
col. 1, lines 5–31. The asserted claims of these patents ad-
dress the blueprint—the genes that encode enzymes to
carry out the steps of the Δ6-desaturase pathway—as well
as implementations of that blueprint in plant seeds gener-
ally, and in canola specifically. See, e.g., ’579 patent, col.
215, lines 48–51; ’357 patent, col. 215, lines 15–28.
Claim 1 of the ’357 patent recites the following, not lim-
ited to canola:
1. A recombinant plant cell which synthesises
eicosapentaenoic acid (EPA), comprising more than
one heterologous polynucleotide, wherein said pol-
ynucleotides encode:
a) a Δ6 desaturase, a Δ6 elongase and a Δ5
desaturase; or
b) a Δ5/Δ6 bifunctional desaturase and a
Δ5/Δ6 bifunctional elongase;
wherein the more than one polynucleotides
are operably linked to one or more
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10 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
promoters that are capable of directing ex-
pression of said polynucleotides in the cell,
wherein the enzymes encoded by said poly-
nucleotides comprise at least one desatu-
rase which is able to act on an acyl-CoA
substrate, and wherein the synthesis of
EPA requires the sequential action of said
enzymes.
’357 patent, col. 215, lines 15–28. Also asserted from the
same patent is claim 33, which depends on claims 1, 31,
and 32. The relevant claims read:
31. The plant cell of claim 1 which is a Brassica
napus cell or Arabidopsis thaliana cell, wherein the
heterologous polynucleotides encode a Δ6 desatu-
rase, Δ6 elongase and a Δ5 desaturase.
32. The cell of claim 31, comprising a heterolo-
gous polynucleotide encoding a Δ5 elongase which
catalyses the conversion of EPA to DPA [docosa-
pentaenoic acid] in the cell.
33. The plant cell of claim 32, wherein said cell
is capable of synthesising DHA.
Id., col. 217, lines 17–25; J.A. 1405 (certificate of correc-
tion). Claim 33, through claim 31, requires either the
named Arabidopsis plant or “canola.” See Remedies Opin-
ion, 2019 WL 8108116, at *1 n.2 (“‘Canola’ refers to certain
plants (and oil derived therefrom), principally Brassica na-
pus more commonly known as rapeseed.”); ’579 patent, col.
11, line 7; id., col. 39, line 67.
Group A also includes asserted claim 5 of the ’579 pa-
tent and claim 5 of the ’033 patent, each limited to canola.
Claim 5 of the ’579—which depends on a chain of claims
reaching back to independent claim 1, which recites a Bras-
sica plant cell for producing DPA and DHA that includes
polynucleotides encoding a Δ5 elongase and an identified
Δ4 desaturase, along with an exogenous desaturase—
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 11
claims a “process for producing DPA and DHA” by obtain-
ing a specified “Brassica napus seed” and “extracting tri-
acylglycerols from the seed.” ’579 patent, col. 215, lines 29–
51. In a similar vein, claim 5 of the ’033 patent—which
depends on a chain reaching back to independent claim 1,
which recites a plant cell for producing DPA and DHA that
includes polynucleotides encoding a Δ4 desaturase, an
identified Δ5 desaturase, a Δ6 desaturase, and a Δ5/Δ6 bi-
functional elongase—claims a “Brassica napus plant seed”
that includes an exogenous desaturase. ’033 patent, col.
213, line 57, through col. 215, line 6.
Finally, Group A includes asserted claims 2 and 10 of
the ’880 patent, which, like the ’357 patent’s claim 1, are
not limited to canola. ’880 patent, col. 217, lines 26–28, 51–
52. Both claims depend (directly or indirectly) on claim 1,
which recites a “recombinant nucleic acid molecule” that
includes polynucleotides encoding a Δ5/Δ6 bifunctional de-
saturase and a Δ6 elongase, both polynucleotides operably
connected to a promoter that directs their expression in “a
plant seed.” Id., col. 217, lines 15–25. Claim 2 claims the
nucleic acid molecule of claim 1 “wherein the Δ5/Δ6 bifunc-
tional desaturase catalyses desaturation of an acyl-CoA
substrate.” Id., col. 217, lines 26–28. Claim 10 claims a
plant cell comprising the nucleic acid molecule of claim 1
and exogenous polynucleotides encoding a Δ5 elongase and
a Pavlova Δ4 desaturase. Id., col. 217, lines 34–52. 1
Two patents outside Group A are at issue. One is the
’792 patent, which issued in June 2018 from a 2017
1 For the Group A claims, we refer to claim 33 of the
’357 patent, claim 5 of the ’579 patent, and claim 5 of the
’033 patent as the “canola claims” and to claim 1 of the ’357
patent and claims 2 and 10 of the ’880 patent as the
“broader genus claims.” In these shorthand labels, we omit
mention of certain claims’ coverage of Arabidopsis, as to
which no written-description challenge is presented.
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12 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
application tracing priority back to 2008. ’792 patent, title
page, col. 1, lines 4–13. Independent claim 1 (not asserted
here) is specific to canola, claiming a “Brassica napus cell”
comprising exogenous polynucleotides that encode an iden-
tified Δ6 desaturase, a Δ6 elongase, an identified Δ5 desatu-
rase, an identified Δ5 elongase, and an identified Δ4
desaturase.
1. A Brassica napus cell, comprising exogenous
polynucleotides encoding
a Δ6 desaturase whose amino acid sequence is
set forth as SEQ ID NO: 30,
a Δ6 elongase,
a Δ5 desaturase whose amino acid sequence is
identical to the amino acid sequence encoded by the
nucleotide sequence set forth as SEQ ID NO: 131,
a Δ5 elongase whose amino acid sequence is at
least 99% identical to the amino acid sequence set
forth as SEQ ID NO: 130, and
a Δ4 desaturase whose amino acid sequence is
identical to the amino acid sequence encoded by the
nucleotide sequence set forth as SEQ ID NO: 132,
wherein each exogenous polynucleotide is oper-
ably linked to a promoter that directs expression of
said polynucleotide in the cell.
Id., col. 241, lines 38–54. Dependent claim 4, the sole as-
serted claim of the ’792 patent, claims a seed including a
seed cell of claim 1. Id., col. 241, lines 61–62.
The final patent at issue is the ’541 patent, which is-
sued in April 2018 from a 2017 application tracing priority
back to 2012. ’541 patent, title page, col. 1, lines 8–18. It
is specific to canola and Arabidopsis. Independent claim
15 (not asserted here) claims “[o]il extracted from seeds
which are Brassica napus or Arabidopsis thaliana seeds,”
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 13
where the oil comprises fatty acid content meeting a long
list of specifications, including some involving the presence
of EPA and DHA. Id., col. 373, line 38, through col. 374,
line 22. Dependent claim 20, the sole asserted claim of the
’541 patent, claims the oil of claim 15 with further specifi-
cation of a DHA requirement. Id., col. 374, lines 35–37.
It is not disputed that the asserted claim of the ’541
patent reads on BASF’s LFK (regulatory) seed line and all
other asserted claims read on BASF’s LFK (regulatory) and
Latitude (commercial) seed lines. Remedies Opinion, 2019
WL 8108116, at *8–10; Appellants’ Opening Br. 16–17.
C
On October 31, 2018, Cargill moved to dismiss CSIRO’s
counterclaims for lack of personal jurisdiction and im-
proper venue pursuant to Federal Rules of Civil Procedure
12(b)(2) and 12(b)(3). J.A. 3598–99. On May 7, 2019, the
district court denied both of Cargill’s motions to dismiss.
Venue Opinion, 2019 WL 2017541, at *2–5.
In finding personal jurisdiction, which is not at issue
here, the district court found several facts relevant to the
venue question, which is at issue here. In particular, it
found that the agreement between BASF and Cargill
“amounts to a partnership” and “when BASF deposited the
seeds with the ATCC in this District and filed suit in this
District, it brought matters central to that partnership into
this Court’s jurisdiction.” Id. at *3 & n.2 (citing Va. Code.
Ann. § 50-73.88(A); 59A Am. Jur. 2D Partnership § 131). It
added that CSIRO’s counterclaims related to activities in
which BASF “act[ed] on behalf of itself and Cargill.” Id. at
*4.
In finding venue proper, the district court determined
that Cargill both “committed acts of infringement and
ha[d] a regular and established place of business” in the
Eastern District of Virginia, with only the infringing-acts
element of § 1400(b) disputed by Cargill. Id. at *4–5
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14 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
(quoting 28 U.S.C. § 1400(b)). On that element, the court
found that BASF’s deposit of seeds with the ATCC in Ma-
nassas, Virginia, was a “use” under 35 U.S.C. § 271(a) that
was “attributable to Cargill given the partnership and close
connection of the entities.” Id. at *5 (citing Minnesota Min-
ing & Manufacturing Co. v. Eco Chem, Inc., 757 F.2d 1256,
1265 (Fed. Cir. 1985); Master Tech Products, Inc. v. Smith,
181 F. Supp. 2d 910, 914 (N.D. Ill. 2002)). On that basis,
the court denied Cargill’s motion to dismiss for improper
venue. Id.D
The case proceeded to a trial in October and November
2019, bifurcated into liability and remedy phases. Before
the liability issues were submitted to the jury, the district
court ruled on motions for judgment as a matter of law un-
der Federal Rule of Civil Procedure 50(a), elaborating on
its reasoning in a post-trial opinion. The court found tria-
ble issues regarding co-ownership of the six patents now at
issue and regarding the adequacy of written-description
support for the seven claims challenged on that ground (all
but the ’541 patent’s claim 20). Pre-Verdict Motions Opin-
ion, 2020 WL 973751, at *7–10. On willfulness, however,
the district court determined that there was no triable is-
sue. Id. at *10–11. The court noted that (1) the parties had
engaged in licensing negotiations and, when the negotia-
tions failed, BASF brought suit to determine if its conduct
was infringing; (2) BASF and Cargill were never presented
with a cease-and-desist letter on the patents at issue
(which Nuseed’s October 2016 letter did not mention), and
none of the six patents now in dispute even issued to
CSIRO until after BASF filed its first declaratory judgment
action in Delaware; 2 (3) the first and only
2 The district court stated that seven of the eight pa-
tents at issue at trial post-dated that filing. Pre-Verdict
Motions Opinion, 2020 WL 973751, at *11. In addition to
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 15
commercialization was Cargill’s 2018 seed crop; and
(4) BASF had presented several good-faith validity and en-
forceability defenses and had a good-faith belief that it co-
owned the patents under the MTEA. Id. As a result, the
district court refused to submit willfulness to the jury, add-
ing that, in any event, it would not enhance damages even
if the jury were given the issue and found for CSIRO. Id.
at *11.
On November 1, 2019, the jury returned its verdict on
liability. It found infringement of claim 20 of the ’541 pa-
tent, the only claim for which infringement was disputed.
J.A. 24. BASF had stipulated to infringement of the other
asserted claims. J.A. 24. As relevant here, the jury re-
jected BASF’s obviousness challenge and its written-de-
scription challenge (asserted for all claims except claim 20
of the ’541 patent). J.A. 25–26. And the jury found that
BASF did co-own the ’792 patent (defeating infringement
as to that patent) but not any of the others. J.A. 27.
E
The next step was the remedy trial for the seven claims
(of five patents) found to be infringed and not invalid. Alt-
hough a jury was originally supposed to address relief for
pre-verdict infringement—specifically, damages for
the six patents still at issue now, two additional patents
were part of the trial. One of those, U.S. Patent
No. 7,642,346, issued in 2010, well before the BASF-CSIRO
litigation began, but that patent did not go to the jury be-
cause the district court held the only asserted claim of that
patent not to be infringed as a matter of law. Id. at *2–3.
The other patent not at issue here but part of the trial was
U.S. Patent No. 10,125,084, which issued in November
2018, after BASF filed its Delaware action in April 2017.
The jury found the sole asserted claim of the ’084 patent
invalid for lack of an adequate written description. J.A. 26.
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16 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
Cargill’s one instance of infringement in 2018—the court
dismissed the jury when CSIRO withdrew its past-dam-
ages request after the district court ruled on a dispute con-
cerning the admissibility of CSIRO’s proffered evidence of
projected sales and profits to establish a reasonable royalty
rate for past infringement. Remedies Opinion, 2019 WL
8108116, at *6; J.A. 10568–89. The court added that a jury
determination based on CSIRO’s evidence “would not be of
value to the Court in fixing an ongoing royalty finding for
future damages.” Remedies Opinion, 2019 WL 8108116, at
*6. With the jury discharged, the district court conducted
a bench trial on remedies for post-verdict infringement.
Concerning permanent injunctive relief to stop the in-
fringing conduct, the district court concluded that CSIRO
failed to meet its burden on any of the four requirements
described in eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 391 (2006). First, the court found no irreparable
harm, determining that CSIRO did not prove that allowing
BASF and Cargill to go to market with Latitude within the
life of the Group A patents would cause CSIRO to lose a
first-mover advantage, research and development opportu-
nities, or customer relationships, or would cause profit ero-
sion. Remedies Opinion, 2019 WL 8108116, at *17–18.
Indeed, the court found that CSIRO “ha[d] no formal or
even informal plans for going to market.” Id. at *10–11,
*17. Second, the court found the inadequacy of legal rem-
edies unproven, determining that “there [was] insufficient
evidence that [CSIRO has] lost, or will lose, market share,
customers, market advantages, or favorable pricing.” Id.at *18–19. Additionally, the court found that CSIRO had
been open, at least as of late 2017, to license its technology
to BASF and Cargill and that CSIRO’s remedies expert ad-
mitted that negotiations would likely continue if an injunc-
tion were issued. Id. Third, the court found that the harm
to BASF and Cargill of an injunction curtailing infringing
conduct outweighed the harm to CSIRO of not granting
such an injunction, pointing to the investment BASF and
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 17
Cargill had already made and noting that it was “not per-
suaded that Cargill’s presence in the underserved fish food
market should deter Nuseed from going to market when
and if it is prepared to do so.” Id. at *19–20. Finally, the
district court decided that “an injunction would clearly
harm the public.” Id. at *20–21. More specifically, the
court found that, even if both Nuseed and Cargill entered
the market as projected, “at most 45% of the market de-
mand shortfall for all fish food products could be met,” so
to keep Cargill off the market would “disserve[] the public
interest, because to do so would needlessly cause its contri-
bution to market demand [to go] unmet.” Id. at *20 (also
noting that “[i]f, as predicted, there are continuing inter-
ruptions of the supply of oily fishes for salmon food the pub-
lic will benefit from the presence of multiple sources of LC-
PUFAs from canola or other potential plants”). Accord-
ingly, the court denied CSIRO’s motion for a permanent in-
junction to stop the infringing conduct. Id. at *21.
The district court determined it should instead impose
on BASF and Cargill an obligation to pay an ongoing roy-
alty for future infringement—rejecting CSIRO’s suggestion
that, if no infringement-stopping injunction was issued, the
court should grant no relief for future infringement, leav-
ing CSIRO to seek backward-looking compensation for that
infringement after it occurred. Id. In determining the
proper ongoing royalty, the district court first found three
licensing agreements offered by BASF and Cargill’s reme-
dies expert to be “sufficiently comparable to establish a
starting point for hypothetical negotiations dealing with
the substance of the inventions in this case,” while reject-
ing the use of two other licenses asserted to be comparable
by CSIRO’s remedies expert. Id. at *14–16, *24. The court
then adjusted the adopted starting point—a lump-sum
payment of $1,235,000 with a 1.4% royalty rate—based on
the so-called Georgia-Pacific factors that we and other
courts have often found pertinent to royalty determina-
tions. Id. at *24–27; see, e.g., Whitserve, LLC v. Computer
Case: 20-1415 Document: 62 Page: 18 Filed: 03/15/2022
18 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
Packages, Inc., 694 F.3d 10, 27 & n.11 (Fed. Cir. 2012). The
court ordered BASF and Cargill (1) to make a lump-sum
payment of $3,705,000, (2) to pay a running royalty at a
rate of 3.5% on the gross sales of Latitude for infringement
of the Group A patents, and (3) to pay a running royalty at
a rate of 3.5% of the gross sales (if any) of LFK for infringe-
ment of the ’541 patent. Remedies Opinion, 2019 WL
8108116, at *27. The court entered its Remedies Opinion
and accompanying judgment on December 23, 2019. J.A.
83.
F
Three weeks earlier, CSIRO had filed motions for judg-
ment as a matter of law and a new trial under Federal
Rules of Civil Procedure 50(b) and 59(a), and additional
such motions from both sides were filed in January 2020.
On May 5, 2020, the district court denied all motions for
reasons read on the record on that day, J.A. 137, and elab-
orated in written opinions on September 3, 2020, and Oc-
tober 7, 2020, BASF v. CSIRO, No. 2:17-cv-503, 2020 WL
5250575 (E.D. Va. Sept. 3, 2020) (Post-Trial Motions Opin-
ion); J.A. 156–63.
Both sides timely appealed. We have jurisdiction pur-
suant to 28 U.S.C. § 1295(a)(1).
II
Cargill, not joined by BASF, appeals the district court’s
rejection of its venue objection. Cargill relies on 28 U.S.C.
§ 1400(b), which provides: “Any civil action for patent in-
fringement may be brought in the judicial district where the
defendant resides, or where the defendant has committed
acts of infringement and has a regular and established
place of business” (emphasis added). Cargill’s argument is
that the statute bars venue over it because, besides (undis-
putedly now) not residing in the district, it did not commit
acts of infringement in the Eastern District of Virginia.
The district court rejected that argument, and we see no
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 19
persuasive basis for disturbing that ruling. We have re-
cently held that venue is a matter of Federal Circuit law
and generally is decided de novo, Valeant Pharms. North
America LLC v. Mylan Pharms. Inc., 978 F.3d 1374, 1381
(Fed. Cir. 2020), without stating the standard of review of
a district court’s findings on underlying material issues of
fact.
A
As a threshold matter, CSIRO contends that 28 U.S.C.
§ 1400(b) does not provide venue protection to a third-party
counterclaim defendant—which is Cargill’s role here.
CSIRO relies on the Supreme Court’s decision in Home De-
pot U.S.A., Inc. v. Jackson, 139 S. Ct. 1743 (2019), invoking
the textual similarity of § 1400(b) to the removal provision
at issue there. We are persuaded by CSIRO’s Home Depot
argument, to which Cargill has offered no meaningful re-
sponse.
In Home Depot, the Supreme Court interpreted the
general removal statute, 28 U.S.C. § 1441(a), which states:
“Except as otherwise expressly provided by Act of Con-
gress, any civil action brought in a State court of which the
district courts of the United States have original jurisdic-
tion, may be removed by the defendant or the defendants, to
the district court of the United States for the district and
division embracing the place where such action is pending”
(emphasis added). The Court was asked to interpret the
term “defendant” in the “civil action brought” setting and
whether the provision gave removal rights to third-party
counterclaim defendants. Home Depot, 139 S. Ct. at 1747–
48. The Court “conclude[d] that § 1441(a) does not permit
removal by any counterclaim defendant, including parties
brought into the lawsuit for the first time by the counter-
claim,” explaining that, although a third-party counter-
claim defendant may be considered a “defendant” with
regard to the counterclaim, “the statute refers to ‘civil ac-
tion[s],’ not ‘claims.’” Id. at 1748. The Court added that
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20 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
“[t]he use of the term ‘defendant’ in related contexts bol-
ster[ed] [its] determination,” citing the Federal Rules of
Civil Procedure’s differentiation between third-party de-
fendants, counterclaim defendants, and defendants—as
well as other statutes’ divergent word choices. Id. at 1749. 3
“[W]hen one statute ‘tracks the wording of’ another,
this is a ‘strong indication that the two statutes should be
interpreted pari passu,’ particularly if the two provisions
share a common purpose.” See Uniloc 2017 LLC v. Face-
book Inc., 989 F.3d 1018, 1027 (Fed. Cir. 2021) (quoting
Northcross v. Bd. of Educ. of Memphis City Schools, 412
U.S. 427, 428 (1973)). That principle fits this case, because
both § 1400(b) and § 1441(a) set forth procedural protec-
tions for “defendants” who have “civil actions” “brought”
against them. For that reason, Home Depot suggests that
third-party counterclaim defendants are not “defendants”
subject to the patent venue protections of § 1400(b). More-
over, in this case, as in Home Depot, the narrowness of the
statutory language used is underscored by the contrast
with broader language in related statutes. The patent re-
moval statute, 28 U.S.C. § 1454(a)–(b), allows for removal
“by any party” in “[a] civil action in which any party asserts
a claim for relief arising under any Act of Congress relating
to patents” (emphasis added); and the patent joinder provi-
sion, 35 U.S.C. § 299, provides limitations on when “parties
that are accused infringers may be joined in one action as
defendants or counterclaim defendants” (emphasis added).
Section 1400(b), in contrast, is specific to the “defendant.”
Cargill has not provided a sufficient justification for de-
parting from the ordinary meaning of “defendant,” con-
firmed by Home Depot. Cargill relies exclusively on TC
Heartland LLC v. Kraft Foods Group Brands LLC., 137 S.
3 See also Bowling v. U.S. Bank Nat’l Ass’n, 963 F.3d
1030, 1036–40 (11th Cir. 2020) (summarizing Home Depot
and extending its analysis to § 1441(c)).
Case: 20-1415 Document: 62 Page: 21 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 21
Ct. 1514 (2017), see Appellants’ Reply Br. 32–33 (citing only
TC Heartland and Valeant’s characterizations of TC Heart-
land), but TC Heartland does not get Cargill far. There,
the Supreme Court held that § 1400(b)’s allowance of venue
“where the defendant resides” (emphasis added) was lim-
ited, for a corporation, to the place of incorporation, not ex-
tending to any judicial district in which the corporation is
subject to personal jurisdiction, as is allowable under 28
U.S.C. § 1391, the general venue provision. TC Heartland,
137 S. Ct. at 1520–21. The TC Heartland Court relied on
strong textual and historical reasons to support that inter-
pretation of “resides” in § 1400(b)—notably, (1) the Court’s
rulings in Stonite Products Co. v. Melvin Lloyd Co., 315
U.S. 561 (1942), and Fourco Glass Co. v. Transmirra Prod-
ucts Corp., 353 U.S. 222 (1957), that § 1400(b) was the ex-
clusive provision governing venue for those within its
terms, and (2) Congress’s subsequent action to amend the
general venue statute while “expressly stating that [the
general venue statute] does not apply when ‘otherwise pro-
vided by law.’” TC Heartland, 137 S. Ct. at 1518–21. Car-
gill points to no comparable reasons to give “defendant” a
meaning in the patent venue statute different from its
meaning in the very similarly worded removal statute at
issue in Home Depot.
The Court has explained that “the patent venue statute
‘was adopted to define the exact jurisdiction of the federal
courts in actions to enforce patent rights,’ a purpose that
would be undermined by interpreting it ‘to dovetail with
the general provisions relating to the venue of civil suits.’”
Id. at 1518 (quoting Stonite, 315 U.S. at 565–66); see also
In re ZTE (USA) Inc., 890 F.3d 1008, 1014 (Fed. Cir. 2014)
(“Section 1400(b), like its predecessor statutes, is intended
to be restrictive of venue in patent cases compared with the
broad general venue provision.”). Therefore, we “narrowly
construe[] the requirements of venue in patent cases” ac-
cording to the words of § 1400(b). Valeant, 978 F.3d at
1379. Following that approach here, even if we accept that
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22 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
this BASF declaratory-judgment action is a “civil action for
patent infringement” at all, we must determine the mean-
ing of “defendant” in the context of the “civil action . . .
brought” language—language also used in the general
venue statute, 28 U.S.C. § 1391(b). Home Depot supplies
that meaning in the absence of something persuasive to the
contrary. And Cargill has provided no persuasive reason
to read § 1400(b) other than in accordance with Home De-
pot. In particular, it has not shown that following Home
Depot here would undermine a distinction with the general
venue statute supported by text or history.
We are also not persuaded that General Electric Co. v.
Marvel Rare Metals Co., 287 U.S. 430 (1932), provides a
sufficient reason to extend the patent venue statute’s text
to reach third-party counterclaim defendants. General
Electric dealt with a predecessor of the patent venue stat-
ute, which similarly provided venue protection to “the de-
fendant” in “suits brought for the infringement of letters
patent [in] the district courts.” Id. at 433 (quoting 28
U.S.C. § 109 (1932)). The Supreme Court held that the
statute did not provide venue rights to plaintiffs who be-
came counterclaim defendants because “[the venue stat-
ute], taken according to the meaning ordinarily given to the
words used, applies only to” defendants, i.e., those haled
into a court by a plaintiff, whereas the Court found “no war-
rant for a construction that would make it include” the orig-
inal plaintiff who was “already in a court of his own
choosing” and had effectively “waived” the venue statute’s
“privilege in respect of the places in which suits may be
maintained against [him].” Id. at 434–35. This analysis is
not directly applicable here. General Electric did not in-
volve third-party practice at all: no new party brought in
after filing was at issue. Indeed, third-party practice in
federal court was very limited before the Federal Rules of
Civil Procedure were adopted a few years after General
Electric was decided. See, e.g., Alexander Holtzoff, Some
Problems Under Federal Third-Party Practice, 3 La. L. Rev.
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 23
408, 408–10 (1941); see also generally Lesnik v. Pub. Indus.
Corp., 144 F.2d 968, 973–74 (2d Cir. 1944), superseded by
statute on other grounds as stated in Jones v. Ford Motor
Credit Co., 358 F.3d 205 (2d Cir. 2004).
In short, to hold that § 1400(b) covers third-party coun-
terclaim defendants would require us to determine that, for
patent suits only, two civil actions can exist in one lawsuit,
with the counterclaim qualifying as a “civil action for pa-
tent infringement” that triggers the protections of
§ 1400(b) for counterclaim defendants—except for the orig-
inal plaintiffs who under General Electric would be held to
have forfeited venue protection. Based on the arguments
presented to us, we are not persuaded to adopt such a con-
clusion in the face of Home Depot.
B
Even if § 1400(b) reaches a third-party counterclaim
defendant such as Cargill, we see no sound basis for dis-
turbing the district court’s determination that venue was
proper here as to Cargill. It is uncontested that Cargill
does not reside in Virginia but does have a regular and es-
tablished place of business there, so the § 1400(b) standard
(now assumed to be applicable) is met here if Cargill com-
mitted an act of infringement in Virginia (or another’s act
of infringement in Virginia can be properly imputed to it).
Cross-Appellants’ Opening Br. 68–71; Appellants’ Opening
Br. 56–59. The district court determined that BASF’s de-
posit of seeds at the ATCC (in the district) was an infring-
ing act properly imputed to Cargill. Venue Opinion, 2019
WL 2017541, at *4–5. Cargill has not made any developed
argument that justifies rejecting that ruling. See
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1320 (Fed. Cir. 2006) (holding arguments insufficiently de-
veloped are forfeited).
Cargill does not meaningfully contend in this court
that BASF’s deposit of seeds at the ATCC for patenting was
outside the scope of infringing “uses” under 35 U.S.C.
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24 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
§ 271(a). See Oral Arg. at 18:54–19:25 (Cargill conceding
lack of developed argument on this point); Appellants’ Re-
ply Br. 30 n.8 (alluding to this argument for the first time
in reply and in a footnote). For that reason, and without
ourselves considering the merits of that characterization,
we accept that the deposit was an infringing act of BASF
in the district. As important, Cargill also provides no
meaningful argument to undermine the district court’s
characterization of Cargill and BASF as engaged in a part-
nership to carry out a project advanced by obtaining patent
protection, with the ATCC seed deposit an act in further-
ance of that goal. Instead, Cargill asserts that the deposit
was “done in furtherance of BASF’s patent applications”
and “Cargill received no benefit,” Appellants’ Opening Br.
58, but the critical latter assertion is unsupported, and it
runs counter to the Cargill-BASF agreement’s contempla-
tion of BASF’s filing of patents, Response to Court, Ex. B
at 75, BASF v. CSIRO, No. 20-1415 (Fed. Cir. Nov. 17,
2021), ECF No. 60-2.
As to the bottom-line determination of imputation
based on these premises, Cargill has presented no remotely
persuasive argument why imputation of an act done in fur-
therance of a partnership cannot support venue. We rest
here on the absence of any substantial argument against
application of general imputation standards that on their
face offer support for imputation in circumstances like
those here. Cf. Akamai Techs., Inc. v. Limelight Networks,
Inc., 797 F.3d 1020, 1022–23 (Fed. Cir. 2015) (en banc)
(drawing from the general principles of vicarious liability);
BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373,
1379–81 (Fed. Cir. 2007) (holding that an actor is liable for
infringement under § 271(a) if it acts through an agent or
contracts with another to perform one or more steps of a
claimed method); Master Tech, 181 F. Supp. 2d at 913–14
(“Moore’s and Mitchell’s contacts with Master Tech in Illi-
nois, in their capacity as Smith’s agents, are attributable
to Smith for venue purposes.”). We will not speculate about
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 25
what a more developed argument against imputation in
circumstances like those here might demonstrate.
Cargill does argue that it is not itself an indirect in-
fringer because it did not induce BASF to deposit the seeds
at the ATCC, but that argument does not address imputa-
tion for purposes of liability for direct infringement or for
purposes of meeting the § 1400(b) standard. Cargill also
argues that Minnesota Mining & Manufacturing, 757 F.2d
1256 (3M), is not a sound basis for imputation, but impu-
tation here need not rest on that case. We accept that 3M
is limited to corporate veil piercing that justifies legally
treating the two corporations as one for purposes of imput-
ing one’s place of business to the other. See Celgene Corp.
v. Mylan Pharms. Inc., 17 F.4th 1111, 1126–27 (Fed. Cir.
2021); see also Andra Grp., LP v. Victoria’s Secret Stores,
L.L.C., 6 F.4th 1283, 1289 (Fed. Cir. 2021). But the present
matter, besides involving imputation of infringing acts (not
places of business), involves a different basis for imputa-
tion—actions taken in furtherance of a partnership of two
entities whose separateness as corporations is undisputed.
3M does not purport to declare its veil-piercing situation to
be the only basis for imputation, particularly when consid-
ering imputation of infringing acts and not place of busi-
ness, and Cargill has not offered a substantial argument
against the soundness of the partnership basis that is pre-
sent here.
For these reasons, we affirm the district court’s refusal
to grant Cargill’s motion to dismiss for lack of venue.
III
On the merits, we begin with the appeal by BASF (in-
cluding Cargill) of the jury’s verdict that the asserted
Group A patent claims are supported by an adequate writ-
ten description. “Written description is a question of fact,
judged from the perspective of one of ordinary skill in the
art as of the relevant filing date.” Immunex Corp. v.
Sandoz Inc., 964 F.3d 1049, 1063 (Fed. Cir. 2020). We
Case: 20-1415 Document: 62 Page: 26 Filed: 03/15/2022
26 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
review a jury determination of such a fact issue for sub-
stantial evidence. Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1355 (Fed. Cir. 2010) (en banc).
Under our written-description case law, the “critical in-
quiry” is whether the relevant artisan reading the specifi-
cation “would understand that the inventor was in
possession of [the claimed invention] at the time of filing.”
Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180,
1190–91 (Fed. Cir. 2014). “[T]he specification must de-
scribe an invention understandable to that skilled artisan
and show that the inventor actually invented the invention
claimed.” Ariad, 598 F.3d at 1351. Actual reduction to
practice is not a requirement. Id. at 1352; Centocor Ortho
Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1353 (Fed. Cir.
2011); Univ. of Rochester v. G.D. Searle & Co., Inc., 358
F.3d 916, 926 (Fed. Cir. 2004). Ascertaining the required
possession starts with an accurate understanding of the
claimed invention, Amgen Inc. v. Sanofi, 872 F.3d 1367,
1373 (Fed. Cir. 2017), and proceeds to an “objective inquiry
into the four corners of the specification,” Ariad, 598 F.3d
at 1351. “[A] patentee may rely on information that is well-
known in the art” to the extent it informs how a relevant
artisan would reasonably understand what is actually de-
scribed in the specification. Ajinomoto Co., Inc. v. ITC, 932
F.3d 1342, 1359 (Fed. Cir. 2019) (quoting Boston Scientific
Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir.
2011)) (internal quotation marks omitted); see also Cen-
trak, Inc. v. Sonitor Technologies, Inc., 915 F.3d 1360, 1369
(Fed. Cir. 2019).
The six Group A claims at issue here concern LC-PUFA
production, but none of them requires commercially desir-
able or other specific levels of such production. As dis-
cussed supra, three of the six claims cover only the
“species” of canola, while the other three more broadly
cover the “genus” of plant cells. We discuss the canola
claims first, as the parties’ arguments focus overwhelm-
ingly, if not exclusively, on canola. We affirm the jury’s
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 27
verdict as to those claims. But we reverse as to the broader
genus claims, even though the parties devote almost no
separate attention to those broader claims. 4
A
The common specification of the Group A patents—
which both parties rely on for this issue, not identifying any
material differences between that specification and the
2004 provisional applications—includes numerous pas-
sages that expressly identify canola (by that name or oth-
ers) as a preferred embodiment of the invention. In one
section, the specification states that “[p]referably, the seed
is derived from an oilseed plant” and that “[m]ore prefera-
bly, the oilseed plant is oilseed rape (Brassica napus),”
meaning canola, before proceeding to list 14 other plants.
’579 patent, col. 11, lines 6–15. Two additional passages
similarly highlight canola. 5 And the prominence of the
4 BASF does not appeal the jury’s rejection of the ob-
viousness challenge to the asserted Group A claims and the
asserted ’792 patent claim, but it does suggest that the re-
jection of the obviousness challenge means that there can-
not be an adequate written description of the same claims.
Appellants’ Opening Br. 43–47. That suggestion is merit-
less. What the specification at issue describes to a relevant
artisan as the inventions possessed by the inventors pre-
sents a distinct question from what a relevant artisan
would have found obvious from the prior art without the
specification. Notably, none of the three prior-art refer-
ences at issue involves working examples of the unique
components of the invention in Arabidopsis, and BASF
does not claim otherwise. See id. at 45–46; J.A. 12615–26;
J.A 13068–199; J.A. 13055–67.
5 ’579 patent, col. 39, line 66, through col. 40, line 16
(stating “[t]he plants of the invention may be corn (Zea
mays), canola (Brassica napus, Brassica rapa ssp.)” before
listing a number of other plants); id., col. 40, lines 17–22
Case: 20-1415 Document: 62 Page: 28 Filed: 03/15/2022
28 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
canola identification is underscored by the testimony of
both sides’ experts that a relevant artisan, when interested
in developing an oilseed crop plant that could produce LC-
PUFAs, would have focused on canola and soy (and maybe
flax). J.A. 9728–29; J.A. 10077; cf. Novozymes A/S v.
DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1346–
48 (Fed. Cir. 2013) (discussing “blaze mark” strain of writ-
ten-description doctrine); Purdue Pharma L.P. v. Faulding
Inc., 230 F.3d 1320, 1326–27 (Fed. Cir. 2000) (same).
Moreover, as to canola, the specification and trial evi-
dence support a finding that the inventors had more than
“a ‘mere wish or plan’ for obtaining the claimed invention.”
Centocor, 636 F.3d at 1348 (quoting Regents of the Univ. of
Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997)). In particular, the specification includes multiple
working examples of Arabidopsis. E.g., ’579 patent, col. 68,
line 20, through col. 70, line 67 (Examples 8–9); id., col. 73,
line 22, through col. 76, line 11 (Example 11); id., col. 84,
line 37, though col. 86, line 39 (Example 17). And CSIRO
presented substantial evidence that “Arabidopsis is a very
reliable model for Brassica napus,” J.A. 10070, and that
relevant artisans in 2004 (the year to which the Group A
patents claim priority) would have understood that LC-
PUFA production in Arabidopsis was highly predictive of
positive results in canola.
For example, when CSIRO’s expert was asked “what is
your opinion about whether the invention disclosed in the
2004 Group A patents would actually work in canola,” she
(“In one embodiment, the plant is an oilseed plant, prefer-
ably an oilseed crop plant. As used herein, an ‘oilseed
plant’ is a plant species used for the commercial production
of oils from the seeds of the plant. The oilseed plant may
be oil-seed rape (such as canola), maize, sunflower, soy-
bean, sorghum, flax (linseed) or sugar beet.” (italics in orig-
inal)).
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 29
responded that “[d]efinitely, it is my opinion that it would
work in canola.” J.A. 10084. Similarly, when asked on
cross-examination whether it was her position that “a per-
son of ordinary skill in the art in 2004 would have known
that if you had [the invention] in Arabidopsis, then you had
it in canola,” she answered that “[t]hat is one of my posi-
tions.” J.A. 10186. 6 And the evidence explained why show-
ing LC-PUFA production in Arabidopsis was predictive of
success in canola—including that both plants “have the
same genetic ability to make ALA,” the compound that is
the starting point for the Δ6-desaturase pathway. J.A.
10070–72; see also J.A. 8612–13.
Accordingly, this case is materially different from Nuvo
Pharmaceuticals (Ireland) Designated Activity Co. v. Dr.
Reddy’s Laboratories Inc., 923 F.3d 1368 (Fed. Cir. 2019).
6 Additional testimony from the same expert, as well
as testimony from another scientist at CSIRO, further con-
veyed this point. J.A. 8611–12 (“Of course, Arabidopsis is
not the crop but you have a very good idea of what you can
expect when you do the same thing in canola.”); J.A. 8613
(“And so when you are testing in Arabidopsis, when you see
DHA made in Arabidopsis, to me, that’s a very, very high
indication that as a scientist that you will get the same re-
sult. So not the same levels but that you will get DHA. . . .
[T]he experimentation in Arabidopsis would be highly pre-
dictive of what one could expect in canola . . . .”); J.A. 10072
(“So I think that if you obtained DHA in Arabidopsis, I
would have a very high confidence that the same thing
would happen in canola.”); see also J.A. 9980–81 (testimony
of inventor, Dr. Surinder Singh) (“So relying on my, you
know, quite prolonged experience in biotechnology and
plant engineering, what I knew is that what we had shown
in 2004–[0]5 in Arabidopsis seed, that that pathway, essen-
tially, would work in canola, and so I was very confident
that it will work.”).
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30 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
There, we held that, “[i]n light of the fact that the specifi-
cation provides nothing more than the mere claim that un-
coated [acid inhibitors] might work, even though persons of
ordinary skill in the art would not have thought it would
work, the specification is fatally flawed.” Id. at 1381. Here,
substantial evidence (the Arabidopsis working examples
and the evidence of what they meant for canola to the rel-
evant artisan, together with the prominence of canola in
the specification) allowed the jury to find that relevant ar-
tisans reading the specification would have expected that
the invention as claimed would work in canola and that the
inventors were in possession of the claimed inventions
when the specification was filed in 2004.
The evidence BASF cites in arguing for a contrary con-
clusion is not sufficient to overturn the jury’s verdict. First,
while BASF offered expert testimony explaining why Ara-
bidopsis was not a predictive model of canola, see, e.g., J.A.
9650–57, BASF provides no sound reason that the jury was
unreasonable in crediting CSIRO’s opposing expert testi-
mony. Second, certain inventor testimony characterized by
BASF as conceding unpredictability of the art, J.A. 8891–
92, could reasonably be deemed of little relevance, since the
inventor was discussing skepticism within CSIRO before
the breakthrough in Arabidopsis, and the jury heard ample
evidence that, once that breakthrough was achieved, suc-
cess in canola was predictable. Third, and finally, the jury
could reasonably give little weight to evidence that CSIRO
did not produce LC-PUFA in canola until after the 2004
priority date and continued working for years thereafter on
such production. 7 Because actual reduction to practice is
7 See, e.g., J.A. 9029–30 (Dr. Singh testifying that
the earliest that CSIRO made LC-PUFAs in canola was at
the end of 2009); J.A. 9091–93 (similar); J.A. 10022–24
(similar); J.A. 8807 (CSIRO’s expert testifying to similar);
J.A. 13614–15 (a 2009 investor analysis stating that a
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 31
not a requirement of possession, delay in actual production
here does not negate constructive possession at the time of
filing. And there was extensive testimony that CSIRO af-
firmatively chose to wait to achieve LC-PUFA production
in canola because it was working on how to optimize LC-
PUFA production to meet commercialization goals (a mat-
ter of prime interest to investors). J.A. 9830–33; J.A. 9979–
81. The claims do not require commercially significant or
any specific levels of LC-PUFA production, so CSIRO’s
post-2004 work does not negate a finding, supported by the
evidence already recited, that the specification describes to
a relevant artisan that the inventors possessed the claimed
invention in 2004. 8
BASF has cited no case indicating that CSIRO’s evi-
dence is not enough to support a jury verdict of adequate
written description for the canola claims. In Centocor,
which BASF stressed at oral argument, the claim at issue
was directed to a fully human antibody with certain thera-
peutic properties (i.e., high affinity, neutralizing activity,
and ability to bind at a specific place on a human TNF-α
protein), but the specification (1) disclosed only a chimeric
project “weakness[]” was that “[p]roof of concept [had] not
[been] achieved in target crop”); J.A. 13459, 13479 (2007
investment document identifying as a “Key Risk” that, as
of yet, “[t]echnology does not work in appropriate oil seed,
only works in Arabidopsis”); J.A. 13483–84 (a 2010–2011
investor plan stating “[i]t is expected that proof-of concept
for the production of omega-3 LC-PUFAs in canola will be
achieved by project end at 30 June 2010”).
8 BASF also points to a CSIRO 2009 progress report
stating that CSIRO’s “first generation” construct did not
produce any LC-PUFA. J.A. 12308. The jury could reason-
ably credit CSIRO’s explanation of this evidence as refer-
ring to a different project. J.A. 9972–73; J.A. 10056; J.A.
10464–65.
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32 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
(human/mouse) antibody that met the critical therapeutic
claim limitations and (2) had only “a few sentences sprin-
kled throughout . . . that mention[ed] human antibodies.”
636 F.3d at 1348–50. Undisputed expert testimony, more-
over, showed that a chimeric antibody did not “serve as a
stepping stone to identifying” the claimed fully human an-
tibody, which was “very different” from the chimeric anti-
body disclosed in the specification. Id. On those facts, we
overturned the jury’s verdict of adequate written descrip-
tion. Id. at 1350–51. But we have a materially different
case here. CSIRO presented expert testimony explaining
that achieving LC-PUFA production in Arabidopsis was
more than just a steppingstone to—and was, in fact, highly
predictive of—achieving such production in canola. Alt-
hough that testimony was disputed, we must defer to the
jury’s decision to credit it.
Other relied-on cases are no more helpful to BASF. In
Ariad, we nowhere ruled that specifying the claimed em-
bodiment in the specification and providing a working ex-
ample in a highly predictive model would fail to meet the
legal standard for adequate description, which contains no
requirement of actual reduction to practice. 598 F.3d at
1352–54; id. at 1357–58 (noting that the specification “dis-
close[d] no working or even prophetic examples”); see also
Rochester, 358 F.3d at 927–29 (invalidating a patent that
functionally claimed compounds that selectively inhibited
an enzyme, but identified no compound capable of that
function). 9 In Eli Lilly, we held that a specification disclos-
ing a rat cDNA sequence that produced insulin did not
9 In noting that the Arabidopsis working example
supports CSIRO in this case, we do not imply that working
examples are always necessary for written description.
Our case law makes clear that they are not. E.g., Falko-
Gunter Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir.
2006).
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 33
provide written-description support for claims directed to a
human cDNA sequence that produced insulin, but there,
no information in the specification provided the relevant
artisan with “information . . . pertaining to [the human]
cDNA’s relevant structural or physical characteristics.”
119 F.3d at 1566–67. No case cited by BASF addresses the
circumstances the jury could have reasonably found pre-
sent here and deems them legally insufficient. Accord-
ingly, we affirm the jury’s verdict of written description as
to the canola claims.
B
What remains for consideration is the trio of broader
genus claims that reach any plant cell, not just canola, with
the specified properties. The parties have not given us
much to work with regarding these claims. They have fo-
cused nearly all their attention on canola. And BASF, as it
noted at oral argument, has made almost no argument for
invalidity of these claims if it is wrong about the canola
claims. See Oral Arg. at 8:16–9:36.
But we conclude that is not the right way to view
BASF’s argument in this case. BASF has argued for the
inadequacy of the written description as to all the asserted
Group A claims on a common ground—that the magnitude
of the leap from success in producing LC-PUFA in Ara-
bidopsis to success in any other plant is too great for the
written description to support claims to any other plant.
See Appellants’ Opening Br. 26–43 (“Arabidopsis is not an
adequate stand-in for all plants. And it is not an adequate
stand-in for canola.”). And at trial, BASF introduced evi-
dence—hardly any, but some—that the deficiency as to
canola was a mere example of the general deficiency as to
the broader genus of covered plants. See J.A. 9649–50; J.A.
9658–59; J.A. 9662–64.
CSIRO’s response to BASF’s argument beyond the can-
ola context is insufficient. CSIRO relies mainly on Amgen
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1332
Case: 20-1415 Document: 62 Page: 34 Filed: 03/15/2022
34 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
(Fed. Cir. 2003), to posit that there is an adequate written
description because “the ‘plant cell’ term identifies a recog-
nizable genus of ‘host cell’ for the inventive genetic con-
struct.” Cross-Appellants’ Opening Br. 26–28. Crucially,
however, CSIRO has not meaningfully disputed BASF’s
general point (or expert testimony) that success in Ara-
bidopsis did not automatically mean success (or possession
of the invention) in all plant cells—unlike in Amgen, where
the district court was presented with expert testimony
from which it could find that the specification adequately
described “the use of the broad class of available mamma-
lian and vertebrate cells to produce the claimed high levels
of human EPO in culture.” 314 F.3d at 1331. Nor has
CSIRO pointed to or argued for the sufficiency of evidence,
e.g., evidence of a representative number of species, of the
sort our precedents have flagged as important to determin-
ing adequate written-description support for broad genus
claims with functional properties (as the claims here have
been understood before us). BASF v. CSIRO, No. 2:17-cv-
503, 2019 WL 1922521, at *8 (E.D. Va. Apr. 30, 2019); see,
e.g., Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th
1330, 1335 (Fed. Cir. 2021) (citing Ariad, 598 F.3d at 1349–
52); cf. GlaxoSmithKline LLC v. Banner Pharmacaps, Inc.,
744 F.3d 725, 731 (Fed. Cir. 2014) (noting functional-struc-
tural distinction).
In these circumstances, we conclude, the evidence to
which we have been pointed sufficed to provide a reasona-
ble basis for the jury to reject BASF’s challenge as to canola
but not as to the broader genus claims. As to the latter, the
jury had no reasonable basis to reject BASF’s evidence,
thin as it was, of inadequate written-description support.
We therefore reverse as to the broad genus claims.
IV
Both sides challenge the jury’s verdict relating to
BASF’s assertion of co-ownership of the six patents at is-
sue—that BASF co-owns the ’792 patent but not the other
Case: 20-1415 Document: 62 Page: 35 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 35
five. CSIRO appeals as to the ’792 patent, BASF as to the
others. The parties accept that BASF does not infringe a
patent that it co-owns. BASF does not argue on appeal for
co-ownership based on any claim of co-inventorship or sole
inventorship of any claim of the patents. Rather, BASF ar-
gues for co-ownership here based entirely on the MTEA,
and its argument is for co-ownership, not sole ownership.
The interpretation of the MTEA is a question of law
decided de novo on appeal. See Parkway 1046, LLC v. U.S.
Home Corp., 961 F.3d 301, 312–13 (4th Cir. 2020);
Thatcher v. Kohl’s Dep’t Stores, Inc., 397 F.3d 1370, 1373–
74 (Fed. Cir. 2005). 10 Neither party has expressly sug-
gested that the choice of governing law (between Virginia
and the Australian Capital Territory) matters here, and
there is no apparent material dispute about governing
principles of contract law. Cf. Fraunhofer-Gesellschaft zur
Förderung der Angewandten Forschung E.V. v. Sirius XM
Radio Inc., 940 F.3d 1372, 1378 (Fed. Cir. 2019) (choosing
to apply U.S. law where choice-of-law question was for-
feited and there was no material difference in law of juris-
dictions at issue). We ask whether, under a proper contract
interpretation, substantial evidence allowed the jury, if
reasonable, to reach its verdict on each patent. Carolina
Trucks & Equip., Inc. v. Volvo Trucks of North America,
Inc., 492 F.3d 484, 488 (4th Cir. 2007). Under those stand-
ards, we affirm the verdict of no BASF co-ownership of five
patents but reverse the verdict of BASF co-ownership of the
’792 patent.
10 BASF does not rely on the agreed-on jury instruc-
tion (J.A. 8321–22) concerning the MTEA to support its ar-
gument. CSIRO mentions the instruction, Cross-
Appellants’ Opening Br. 42–43, but offers nothing from the
instruction that adds meaningfully to its arguments based
on the MTEA itself.
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36 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
A
BASF has relied on the Ownership provision of the
MTEA but only insofar as it confers joint ownership, dis-
claiming any argument for sole ownership. See Appellants’
Reply Br. 28. The Ownership provision, § 6.2, addresses
“New Materials, Transformed Lines and Results and any
Intellectual Property subsisting in them,” J.A. 12669, but
the transformed lines are not in dispute here. “Joint New
Materials” and “Joint Results,” the provision says, “will be
owned jointly by CSIRO and [BASF].” J.A. 12669–70. And
the parties agree that joint ownership extends to “Intellec-
tual Property subsisting in” such “Joint New Materials”
and “Joint Results.”
The MTEA’s definitional provision, § 1.1, defines “Joint
New Materials” and “Joint Results” after defining terms
building up to those. The starting point is the definition of
“Evaluation” to mean “the programme of work to be carried
out under this Agreement and described in Schedule B,”
which lists the 13 specific constructs—all of which contain
BASF-CSIRO combinations—that were tested as part of
the project. J.A. 12666; J.A. 12681–84. Then, identifying
“Materials” as certain preexisting, specified “genes, pro-
moters and constructs of a Party identified in Schedule A”
brought to the project, the definitional provision defines
“New Materials” as “constructs developed under the Evalu-
ation incorporating Materials,” including “CSIRO New Ma-
terials” (“constructs containing only CSIRO genes”),
“[BASF] New Materials” (“constructs containing only
[BASF] genes”), and—at issue here—“Joint New Materi-
als” (“constructs contain[ing] both CSIRO and [BASF]
genes”). J.A. 12666 (emphasis added). The provision then
uses a similar structure to define “Results” as “all results,
data or information derived from the Evaluation” (but not
New Materials and Transformed Lines), including “CSIRO
Results” (“Results with respect to CSIRO Transformed
Lines and CSIRO New Materials”), “[BASF] Results” (“Re-
sults with respect to [BASF] Transformed Lines and
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 37
[BASF] New Materials”), and—at issue here—“Joint Re-
sults” (“Results with respect to Joint Transformed Lines
and Joint New Materials.”). J.A. 12666 (also providing
similar definitions for “Transformed Lines”).
As relevant here, these provisions, read together, cre-
ate joint ownership of three categories: (1) constructs that
were developed under the Evaluation if they contained
both CSIRO and BASF genes; (2) results, data, or infor-
mation derived from the Evaluation respecting the CSIRO-
BASF-gene-combination constructs developed under the
Evaluation; and (3) Intellectual Property subsisting in the
first two categories. BASF has not argued to us that any
of the patents at issue here fall into the first category. As
to the second category, BASF, in response to CSIRO’s brief,
effectively accepted—correctly, we think—“that Joint Re-
sults are the data and information related to” the BASF-
CSIRO-gene-combination “constructs created during the
MTEA collaboration using BASF and CSIRO genes,” Ap-
pellants’ Reply Br. 25, and on that basis BASF made no
further argument that this case falls into the second cate-
gory. Instead, BASF ultimately has rested its argument on
the third category, specifically as applied to the second
(Joint Results) category, contending that a reasonable jury
had to find that all six patents claim intellectual property
subsisting in results, data, or information derived from the
Evaluation of the BASF-CSIRO-gene-combination con-
structs. Id. at 24–31.
We reject this contention, concluding instead that for
all six patents a reasonable jury could only find no co-own-
ership. For BASF to prevail, the phrase “intellectual prop-
erty subsisting in . . . Joint Results” must refer to the
intellectual property whose ownership BASF is asserting,
here consisting of patent rights—which are defined by
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38 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
patent claims. 11 And the direction of the “subsisting in”
relation is not, as BASF suggested at least once, id. at 25–
26, that the Joint Results subsist in the intellectual prop-
erty to be owned. To the contrary, the intellectual property
to be owned must subsist in the Joint Results. Accordingly,
under the MTEA provisions BASF has invoked, what
BASF had to show was that intellectual property defined
by claims of the patents “inhere[d]” in or “form[ed] an ele-
ment of” the Joint Results. Id. at 25–26 (quoting Subsist,
v., Oxford English Dictionary (3d ed. 2012); Inhere, v., Ox-
ford English Dictionary (2d ed. 1989)).
BASF stakes its co-ownership position on an unreason-
able view of what can satisfy that requirement. It as-
serts—and declares that “Appellants’ argument is”—that,
even though none of the six patents claim the BASF-
CSIRO-gene-combination constructs or properties of them
or uses of them, it is enough “that CSIRO obtained its pa-
tents by drawing on the lessons it learned from the experi-
ments involving both BASF and CSIRO’s materials.” Id. at
28; see also Opponents’ Reply Brief in Further Support of
Their Renewed Motion for Judgment as a Matter of Law
Under Fed. R. Civ. P. 50(b) or, in the Alternative, for a New
Trial Pursuant to Rule 59(a) at 14, BASF v. CSIRO,
No. 2:17-cv-503 (E.D. Va. Feb. 10, 2020), ECF No. 875
(BASF reply supporting post-trial motions, resting on alle-
gation that “CSIRO used what they learned”). But it can-
not reasonably be said that merely “drawing on the
lessons” of the Evaluation work to come up with new and
nonobvious inventions—of which BASF was not even a co-
inventor—makes those inventions inherent in or an ele-
ment of the results, data, or information derived from the
11 BASF has made no claim of trade-secret status of
any relevant information, much less connected any such
status to the asserted co-ownership of the patents.
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 39
Evaluation work. 12 The law has long recognized separate
patentability and inventorship for advances that, as is rou-
tine, draw on lessons learned from earlier work of others.
Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19
(2007) (“[I]nventions in most, if not all, instances rely upon
building blocks long since uncovered, and claimed discov-
eries almost of necessity will be combinations of what, in
some sense, is already known.”). Such advances are not
properly deemed inherent in or elements of the earlier
work.
Besides being linguistically unreasonable in the rele-
vant legal context, BASF’s interpretation makes no “com-
mercial sense”—a consideration that both sides recognize
as important in construing the MTEA. Cross-Appellants’
Opening Br. 40; Appellants’ Reply Br. 26. The MTEA had
a two-year term, and the parties knew that each would
learn lessons from the joint work and would continue work
in the field when the agreement ended. Under BASF’s in-
terpretation, the MTEA would create an ever-threatening
cloud over independent post-MTEA work and the invest-
ments in such work. As CSIRO observes, under that inter-
pretation, “it is hard to see how either party could ever
obtain a patent in this field without its being subject to a
co-ownership challenge.” Cross-Appellants’ Reply Br. 8. It
cannot reasonably be inferred, from language not so requir-
ing, that the parties agreed to a provision with that likely
consequence.
B
BASF must rely for its co-ownership position on its un-
justifiable interpretation of the MTEA provision because it
12 All claims of the issued patents are presumed valid,
35 U.S.C. § 282(a), and that presumption has not been
overcome in this case as to any claims at issue (besides the
genus claims).
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40 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
has presented no more concrete, specific basis for a reason-
able finding that the intellectual property claimed in the
patents at issue subsisted in the data, results, or infor-
mation derived from the Evaluation work on the BASF-
CSIRO-gene-combination constructs. The jury could
properly reject such a finding, as it did, for five of the pa-
tents. And the evidence required the jury to reject such a
finding, we conclude, for the ’792 patent.
As to two of the Group A patents (the ’880 and ’357 pa-
tents), BASF points to nothing in any specific claim (or
even in the specification) that matches any Schedule B con-
struct or result, data, or information about such a con-
struct. Appellants’ Opening Br. 51–52. It argues only that
CSIRO obtained information pertaining to how to get con-
structs working in canola, with no details identified or
shown to be significant to any claim. Id. (citing J.A 9530;
J.A. 9540). At least in light of CSIRO’s inventors’ pre-
MTEA awareness of how to succeed in canola (as discussed
in the written-description section of this opinion supra),
this is not enough to show intellectual property in the pa-
tents that subsists in results, data, or information deriving
from the Evaluation work (as opposed to, e.g., from pre-
MTEA work). Certainly, the jury could so find.
For the two other Group A patents (the ’579 and ’033
patents), BASF does cite to at least one claim in each pa-
tent that requires at least one BASF gene that was tested
as part of the joint evaluation. 13 Those genes, however,
were not themselves constructs that constituted Joint New
13 Unasserted claim 7 of the ’579 patent recites two
BASF genes. ’579 patent, col. 215, line 54, through col. 216
line 42; id., col. 16, lines 62–63, col. 17, lines 22–23; J.A.
12678, 12683. Unasserted claims 1, 6, and 15 of the ’033
patent each recite one BASF gene. ’033 patent, col. 213,
line 58, through col. 215, line 57; id., col. 16, lines 60–61,
col. 17, lines 20–21; J.A. 12678, 12683.
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BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 41
Materials, and they also were publicly known before the
MTEA: in fact, they had been listed in the 2004 provisional
applications to which CSIRO traces priority for these pa-
tents. J.A. 11628; J.A. 11128; see also J.A. 11986, 12011–
12 (published U.S. application based on 2005 Paris Coop-
eration Treaty application). The genes are just components
(identified as known in the prior art) of the inventions
claimed in the patents, not the inventions themselves.
BASF has not identified any results, data, or information
from the Evaluation work regarding the Schedule B con-
structs that even made their way into these patents, let
alone in which the intellectual property defined by the
claims of these patents subsists. Again, the jury could re-
ject co-ownership for these patents.
We come to the same conclusion about the ’541 patent.
BASF identifies a passage in the specification that high-
lights using a specific combination of two genes—a fungal
Pichia pastoris ω3-desaturase (which is also a Δ15-desatu-
rase, if it is operating on certain substates and one counts
from the other end of the molecule) and a Δ6-desaturase.
’541 patent, col. 66, 19–26; id., col. 41, lines 52–55; J.A.
9941–42; see also id., col. 42, lines 46–50 (discussing the
same fungal ω3-desaturase). BASF argues that this pas-
sage must be drawn from the results of the MTEA, which
ran an experiment testing the use of selected “[ω]3-specific”
Δ6-desaturases and fungal Δ15-desaturases. J.A. 12682.
But there is no evidence establishing even that assertion,
let alone the required connection of the intellectual prop-
erty of the ’541 patent, based on its claims, to the MTEA
work. The MTEA experiment undisputedly did not test the
particular combination noted in the ’541 patent specifica-
tion, which, moreover, is not claimed in the patent: the
claims more generally call for certain oils, without refer-
ence to specific desaturases; and BASF has not shown that
the jury had to find that CSIRO used any of the MTEA
Schedule B constructs in its production of the claimed oils.
Further, the evidence permits the finding that a 2004
Case: 20-1415 Document: 62 Page: 42 Filed: 03/15/2022
42 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
CSIRO application, years before the MTEA project, dis-
closed a combination of a Δ6-desaturase and a ω3-desatu-
rase (Δ15-desaturase). See J.A. 11689 (CSIRO 2004
application); J.A. 9941–42 (testimony explaining CSIRO
2004 application). Additional evidence allowed the jury to
find that post-MTEA CSIRO research independent of the
MTEA led to use of the Pichia pastoris fungal Δ15-desatu-
rase. J.A. 13231. Thus, again, substantial evidence sup-
ports the jury verdict of no co-ownership for the ’541
patent.
Finally, for the ’792 patent, we conclude that BASF has
not identified substantial evidence that supports the jury’s
verdict of co-ownership. This patent’s claims do not require
any Schedule B construct or other Joint New Material un-
der the MTEA. In responding to CSIRO’s argument, BASF
has pointed to “three BASF-owned enzymes” called for by
various claims of this patent—represented by SEQ ID NO:
30 (an amino acid sequence) and SEQ ID NO: 131 (a nucle-
otide sequence) in claim 1 (and hence all claims) and SEQ
ID NO: 133 (a nucleotide sequence) in claim 2 alone—
where the enzymes correspond to genes that were listed in
MTEA Schedule A and used as parts of Schedule B con-
structs. Appellants’ Reply Br. 26; see ’792 patent, col. 28,
line 16, col. 29, lines 12, 14; id., col. 241, line 37, through
col. 242, line 62; J.A. 12678; J.A. 12682–84; J.A. 9842–43. 14
Some, perhaps all, of these enzymes and genes may well
have been publicly available before the MTEA, J.A. 12647;
J.A. 11133–35; J.A. 9841–45; BASF does not assert or point
to evidence showing otherwise, Appellants’ Reply Br. 26–
28. Regardless, there is no dispute that the ’792 patent’s
claims are to patentable inventions of which these enzymes
14 BASF’s citations encompass a few other ’792 patent
references to amino acid or nucleotide sequences, e.g., SEQ
ID NO: 130 for an Ostreococcus tauri Δ5-elongase, which
BASF has not tied to the MTEA. Appellants’ Reply Br. 26.
Case: 20-1415 Document: 62 Page: 43 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 43
or genes are mere parts. The claimed inventions are not
inherent in or elements of the MTEA Schedule B con-
structs. BASF also has not identified any concrete, specific
data, results, or information about the constructs, derived
from the Evaluation, in which the ’792 patent claims can
reasonably be said to inhere.
Instead, BASF cites a 2009 email from one of the
named inventors, Dr. Singh, stating that the “amount of
data sent over by BASF was substantial and we feel it has
been extremely good value to have done the joint evalua-
tion with them.” J.A. 13586. But no evidence reasonably
ties that good-value generalization to the ’792 patent
claims. The same is true of the fact that an August 2009
summary of Evaluation results was found tucked into Dr.
Singh’s lab notebook from 2017—around the time when
CSIRO applied for the asserted patents (based on pre-
MTEA provisional applications). J.A. 9037–40; J.A.
13244–45. BASF has not identified any passages within
the August 2009 summary and shown how such passages
are tied to the ’792 patent claims. BASF also notes evi-
dence that the ’792 patent includes research results gener-
ated in 2008 and 2009—around the same time interim
results of the MTEA were being reported to CSIRO. J.A.
8995–96; J.A. 9038; J.A. 9526–32. That observation too
says nothing specific about Evaluation results, speaking
only to some amount of temporal overlap. BASF’s inability
to identify any specific results, data, or information from
the Evaluation work as properly tied to the ’792 patent
claims leaves the record lacking in any basis that can sup-
port the jury’s verdict without an impermissible level of
speculation. 15
15 The dissent cites certain testimony, not cited by
BASF in its briefing to us, to support at most two proposi-
tions: first, that Ostreococcus tauri Δ6 desaturase (recited
in the ’792 patent by reference to SEQ ID NO: 30) and
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44 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
Accordingly, we affirm the jury’s verdict of no co-own-
ership of the Group A patents and the ’541 patent but re-
verse the verdict of co-ownership of the ’792 patent.
V
The foregoing rulings require removal of the asserted
genus claims (both asserted claims of the ’880 patent and
claim 1 of the ’357 patent) from the remedy and addition of
the asserted claim of the ’792 patent to the remedy. We
leave it to the district court to decide what specific changes
those two steps entail.
The scope of liability aside, CSIRO appeals the district
court’s remedy determinations in various respects, con-
tending that the district court erred in its (1) refusal to sub-
mit willfulness to the jury; (2) refusal to submit to the jury
the issue of a royalty for past infringement; (3) denial of an
infringement-stopping injunction; and (4) calculation of
the ongoing reasonable royalty. We reject the first two
challenges. As to the fourth, we find error in the district
court’s starting point for its calculation of an ongoing roy-
alty, which should be reconsidered on remand. As to the
third, we see no basis for finding an abuse of discretion in
Thraustochytrium sp. Δ5 desaturase (recited in the ’792 pa-
tent by reference to SEQ ID NO: 131) “were BASF materi-
als that were provided under the Agreement,” as the MTEA
explicitly says; and second, that in July 2017, CSIRO was
focused on Ostreococcus tauri Δ6 desaturase and/or
Thraustochytrium sp. Δ5 desaturase. Dissent at 6–8 (citing
Transcript of Proceedings (Jury Trial–Day 4) at 712:6–24,
722:8–17, 723:23–724:9, 771:24–773:6, BASF v. CSIRO,
No. 2:17-cv-503 (E.D. Va. Nov. 15, 2019), ECF 804). Nei-
ther proposition meets the MTEA standard for co-owner-
ship explained above, and BASF, not citing the testimony,
makes no argument for how that testimony meets that
standard.
Case: 20-1415 Document: 62 Page: 45 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 45
the denial of an infringement-stopping injunction under
the circumstances present at the time of district court’s de-
cision; but in the remand we are ordering, the district court
should reconsider its denial of an infringement-stopping in-
junction under the law governing alteration of a denial
when a case remains alive and circumstances change. We
do not explore those standards or whether alteration of the
denial is warranted.
A
The district court concluded that CSIRO had presented
insufficient evidence of willfulness, which is a question of
fact, Polara Engineering Inc. v. Campbell Co., 894 F.3d
1339, 1353 (Fed. Cir. 2018), for a reasonable jury to find in
CSIRO’s favor, and the court accordingly granted BASF’s
Rule 50(a) motion for judgment of no willfulness. We af-
firm that ruling, without needing to consider whether the
district court’s statement that it would not enhance dam-
ages regardless of any willfulness verdict makes it unnec-
essary to review the Rule 50(a) willfulness ruling.
To establish willfulness, a patentee must show that the
accused infringer had a specific intent to infringe at the
time of the challenged conduct. Bayer Healthcare LLC v.
Baxalta Inc., 989 F.3d 964, 987 (Fed. Cir. 2021) (citing Halo
Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923,
1933 (2016)). In this court, CSIRO identifies only two facts
as creating a triable issue of willfulness: that certain BASF
witnesses were aware and kept track of CSIRO patents and
that BASF did not assert its co-ownership defense until af-
ter infringement and litigation had begun. Cross-Appel-
lants’ Opening Br. 65–66 (citing J.A. 9364–69; J.A. 9792);
Cross-Appellants’ Reply Br. 29. But the second fact cannot
be significant given that the patents now at issue did not
even issue to CSIRO until after BASF initiated litigation
by bringing its declaratory-judgment action in Delaware.
And the first fact, even if joined to the second, without ad-
ditional facts could not establish more than “[k]nowledge of
Case: 20-1415 Document: 62 Page: 46 Filed: 03/15/2022
46 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
the asserted patent and evidence of infringement”—which
“is necessary, but not sufficient, for a finding of willful-
ness.” Bayer Healthcare, 989 F.3d at 987–88; see also Arc-
tic Cat Inc. v. Bombardier Recreational Prods. Inc., 876
F.3d 1350, 1371 (Fed. Cir. 2017) (relying on facts beyond
knowledge of infringement to support a willfulness find-
ing). CSIRO has not shown reversible error in the district
court’s willfulness ruling.
B
CSIRO challenges the district court’s decision to pre-
clude jury determination of a royalty for past infringement.
“[W]here a district court rules, as a matter of patent law,
that a party is precluded from introducing evidence,” this
court applies its own law and reviews de novo. Sulzer Tex-
til A.G. v. Picanol N.V., 358 F.3d 1356, 1363 (Fed. Cir.
2004). But evidentiary rulings such as the one at issue in
this matter, concerning a lack of foundation, are reviewed
under regional circuit law, which here is reviewed for abuse
of discretion. Id.; United States v. Caldwell, 7 F.4th 191,
202, 204 (4th Cir. 2021). With these standards in mind, we
affirm the district court’s action, taken after it made an ev-
identiary ruling about the lack of adequate foundation for
CSIRO’s proffered evidence and CSIRO, rather than seek-
ing to solidify the foundation, withdrew its request for past-
infringement damages.
CSIRO contends that the district court, as a matter of
patent law, precluded CSIRO from presenting any evidence
of a reasonable royalty for past damages on the mistaken
premise that projections of future costs, sales, and profits
are per se irrelevant to what the patentee could have in-
sisted on as compensation for licensing its patents before
sales began. Cross-Appellants’ Opening Br. 58–61 (citing
Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d
1371, 1385 (Fed. Cir. 2001); Snellman v. Ricoh Co., Ltd.,
862 F.2d 283, 289 (Fed. Cir. 1988); and Panduit Corp. v.
Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1163 (6th
Case: 20-1415 Document: 62 Page: 47 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 47
Cir. 1978)). Such a ruling might well be error, as CSIRO
suggests. See Aqua Shield v. Inter Pool Cover Team, 774
F.3d 766, 771–72 (Fed. Cir. 2014) (stressing centrality of
expectations of profits in past-damages calculation using
hypothetical-negotiation framework). But the district
court here ultimately did not so rule, see J.A. 10568–89, de-
spite making some statements suggesting the irrelevance
of future projections to past damages, see, e.g., J.A. 10581,
as BASF itself urged, see, e.g., J.A. 10568–69; J.A. 10574.
The district court never had to so rule because it ruled
only on a threshold evidentiary question of whether CSIRO
laid the proper foundation for the royalty rate grounded in
future projections before CSIRO withdrew its past-dam-
ages claim. The court made the following statement to
CSIRO concerning the testimony in question:
How much does their alleged infringement affect
your research costs? When did the infringement
start? Nobody said when the infringement started.
Did it start when they first planted the product
which produced allegedly infringing oil? I don’t
know. Did it start when you first notified them
that you were claiming they were infringing? I
don’t know. But you have to lay your foundation
before you hit the jury with any percentage royalty
that you’re requesting. So I don’t know how you do
that. I just named some examples of what I think
is missing, but I don’t know if I’ve thought of all the
examples of what’s missing or not. It’s just that
everything is missing at this point. . . . You have to
decide what evidence you want to present or at-
tempt to present, but I’ve told you that I don’t see
how you can support these numbers without some
foundation, and I’ve given you some ideas of what
I meant by foundation . . . .
J.A. 10581–82 (formatting altered); see also J.A. 10570–78;
cf. Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d
Case: 20-1415 Document: 62 Page: 48 Filed: 03/15/2022
48 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
1299, 1314–15 (Fed Cir. 2020). The court concluded that
“there are problems with attempting to base a reasonable
royalty rate based on projected future sales, and at this
point, as the evidence stands, I don’t believe the Court can
do that.” J.A. 10584 (emphasis added). CSIRO, on appeal,
has not established that the district court abused its dis-
cretion in its foundation ruling. We therefore reject this
challenge by CSIRO.
C
On the forward-looking remedy question, CSIRO ap-
peals the district court’s denial of an infringement-stopping
injunction and its calculation of the ongoing royalty it or-
dered in lieu of such an injunction. These rulings are re-
viewed for abuse of discretion. See eBay, 547 U.S. at 391;
XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1290
(Fed. Cir. 2018).
We see no reversible error in the denial of an infringe-
ment-stopping injunction in the circumstances presented
to the district court, including the absence of the ’792 pa-
tent (with its longer term than that of the Group A patents)
from the remedy, the fact that CSIRO and its partners had
not yet entered the commercial market and had not estab-
lished that entry was coming soon, and the potential harm
done to the public by not allowing both Cargill and CSIRO
to enter the underserved fish-food market. Remedies Opin-
ion, 2019 WL 8108116, at *17–18, *20–21. We have re-
viewed the district court’s extensive analysis. Id. at *16–
21. To set aside the district court decision, we would have
to find a legal error or clearly erroneous factual finding or
clear error of judgment, or a combination of such errors,
that justified reconsideration of the bottom-line ruling.
See, e.g., ActiveVideo Networks, Inc. v. Verizon Commc’ns,
Inc., 694 F.3d 1312, 1337 (Fed. Cir. 2012); PGBA, LLC v.
United States, 389 F.3d 1219, 1223–24, 1228–32 (Fed. Cir.
2004). The court may have given insufficient weight to the
distinctive circumstances of CSIRO’s willingness to license,
Case: 20-1415 Document: 62 Page: 49 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 49
see Apple Inc. v. Samsung Electronics Co., Ltd., 735 F.3d
1352, 1370–71 (Fed. Cir. 2013), but we do not see a suffi-
cient ground for setting aside the denial of the infringe-
ment-stopping injunction, given the court’s overall analysis
based on the facts at the time of the ruling.
As to the ongoing royalty, we see one, and only one, er-
ror in the district court’s analysis that warrants a remand
for reconsideration. The evidence included five licenses as
candidates for use to set a baseline for a reasonable royalty
hypothetical negotiation: (1) the CSIRO/GRDC-Nuseed
agreement; (2) the BASF-Cargill agreement; (3) the BASF-
University of Hamburg agreement; (4) the BASF-
Amaethon Limited agreement; and (5) the Bioriginal
agreement (which was a part of the BASF-Cargill agree-
ment as an attachment). Remedies Opinion, 2019 WL
8108116, at *14–16. Although the first two licenses cov-
ered what appears to be the closest technology at issue, see
LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d
51, 79–81 (Fed. Cir. 2012); Commonwealth Sci. & Indus.
Rsch. Organisation v. Cisco Sys., Inc., 809 F.3d 1295, 1306–
07 (Fed. Cir. 2015), the district court determined that those
licenses were not sufficiently comparable to merit use for
the royalty baseline because they were profit-sharing ar-
rangements for research and development—not agree-
ments between competitors. See Remedies Opinion, 2019
WL 8108116, at *15, *24 (also mentioning that the agree-
ments were not comparable because they “confer[red] nu-
merous exclusive rights which would not be the subject of
the instant hypothetical negotiation”).
But that reasoning creates a problem of internal incon-
sistency because the agreements that the court instead
used for its baseline (i.e., the Hamburg, Amatheon, and Bi-
original agreements) were also not competitor agreements.
Id. at *15–16, *24. The district court did not adequately
explain why not being a competitor licensing agreement
was an outright bar for consideration of two licensing
agreements but only a surmountable obstacle for the other
Case: 20-1415 Document: 62 Page: 50 Filed: 03/15/2022
50 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
three. In other words, if despite their non-competitive na-
ture, the Hamburg, Amaethon, and Bioriginal agreements
were relevant to form a baseline because they were “suffi-
ciently economically and technologically comparable,” it is
not evident why the same is not true of the CSIRO/GRDC-
Nuseed and BASF-Cargill agreements. The seeming in-
consistency at a key starting point of the royalty analysis
warrants a remand for reconsideration. See Presidio Com-
ponents, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351,
1362–64 (Fed. Cir. 2012); see also In re Sentinel Mgmt.
Grp., Inc., 728 F.3d 660, 670 (7th Cir. 2013); Thompson v.
Wal-Mart Stores, Inc., 472 F.3d 515, 516–17 (8th Cir.
2006); Valjean Mfg. Inc. v. Michael Werdiger, Inc., 164 F.
App’x 7, 11 (2d Cir. 2005).
On the remand, the ’792 patent, which has a longer
term than the Group A patents, will be part of an altered
record for the prospective remedy (while the broader genus
claims will not)—both for the ongoing royalty and for the
infringement-stopping injunction. Besides noting the need
to include the ’792 patent in the remedy and exclude the
genus claims, we do not prejudge whether the altered basis
of liability requires other changes in the remedy. See, e.g.,
Remedies Opinion, 2019 WL 8108116, at *17, *19, *21
(mentioning the life of the patents in irreparable harm, ad-
equacy of legal remedy, and public interest injunction
prongs); id. at *25 (applying a downward influence on Geor-
gia-Pacific factor 7 due to the “relatively short” life of the
Group A patents); id. at *26 (considering “designing
around” time in accepting that the royalty should be as-
sessed on gross sales).
We also are told that new facts will exist, namely that
CSIRO and its partners have entered the commercial mar-
ket, changing a fact on which the district court relied in
denying an infringement-stopping injunction. On remand,
the district court should therefore consider whether there
are such new facts, whether governing law permits them to
be considered as a basis for now granting an infringement-
Case: 20-1415 Document: 62 Page: 51 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 51
stopping injunction, and whether, if so, they warrant
changes in the remedy. See Edwards Lifesciences AG v.
CoreValve, Inc., 699 F.3d 1305, 1315–16 (Fed. Cir. 2012);
Presidio Components, Inc. v. Am. Technical Ceramics
Corp., 875 F.3d 1369, 1383–84 (Fed. Cir. 2017); Cross-Ap-
pellants’ Opening Br. 11–12 & n.4.
VI
For the foregoing reasons, we affirm the district court’s
determination that venue as to Cargill was proper. We af-
firm the jury’s verdict of adequate written description as to
the asserted canola claims of the Group A patents but re-
verse as to the asserted broader genus claims of those pa-
tents. We affirm the jury’s verdict of no BASF co-
ownership of five of the six patents at issue but reverse the
verdict of BASF co-ownership of the sixth, the ’792 patent.
We affirm the district court’s refusal to submit willfulness
and past damages to the jury. We remand for further pro-
ceedings on remedy, consistent with this opinion.
The parties shall bear their own costs.
AFFIRMED IN PART, REVERSED IN PART,
VACATED IN PART, AND REMANDED
Case: 20-1415 Document: 62 Page: 52 Filed: 03/15/2022
United States Court of Appeals
for the Federal Circuit
______________________
BASF PLANT SCIENCE, LP,
Plaintiff-Appellant
v.
COMMONWEALTH SCIENTIFIC AND INDUSTRIAL
RESEARCH ORGANISATION,
Defendant-Cross-Appellant
-----------------------------------------------
COMMONWEALTH SCIENTIFIC AND INDUSTRIAL
RESEARCH ORGANISATION, GRAINS RESEARCH
AND DEVELOPMENT CORPORATION, NUSEED
PTY LTD.,
Plaintiffs-Counterclaimants-Cross-Appellants
v.
BASF PLANT SCIENCE, LP, CARGILL, INC.,
Defendants-Counterdefendants-Appellants
BASF PLANT SCIENCE GMBH,
Counter-Counterclaimant-Appellant
______________________
2020-1415, 2020-1416, 2020-1919, 2020-1920
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 2:17-cv-00503-HCM-
LRL, Senior Judge Henry C. Morgan Jr.
Case: 20-1415 Document: 62 Page: 53 Filed: 03/15/2022
2 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
NEWMAN, Circuit Judge, dissenting in part.
I respectfully dissent. The district court conducted a
thorough trial, with some questions decided by the court
and some by the jury, as appropriate to their nature of fact
or law. I focus here on my colleagues’ reversal of the jury’s
verdict that BASF and CSIRO are joint owners of one of the
six patents in this suit.
Commonwealth Scientific and Industrial Research Or-
ganisation (“CSIRO”) and BASF each had been studying
the field of plant genetic technologies, and in 2008 they en-
tered into a research collaboration to share information
and materials concerning the production in plants of cer-
tain omega-3 polyunsaturated fatty acids, products com-
monly known as “fish oil.” Trial Tr. vol. 4, 783:5–7, BASF
v. CSIRO, No. 2:17-cv-503, (E.D. Va. Nov. 15, 2019), ECF
No. 804. The premises for this collaboration are contained
in a Materials Transfer and Evaluation Agreement (“the
Agreement” or “MTEA”), whose statement of purpose intro-
duces the Agreement as follows:
CSIRO and BPS [BASF Plant Science] wish to col-
laborate to jointly evaluate each party’s genes, pro-
moters and constructs to see if there are options for
further enhancing the levels of LC-PUFAs (Long
chain polyunsaturated fatty acids) EPA and DHA
in canola.
MTEA at 1, Recital B.
After extensive trial proceedings, the jury found that
CSIRO is the sole owner of five of the six patents at issue
in this case, and CSIRO and BASF are co-owners of U.S.
Patent No. 9,994,792 (“the ’792 patent”). The district court
sustained the verdicts. The panel majority now affirms the
verdicts as to the five patents found to be solely owned by
CSIRO, but reverses the verdict as to the ’792 patent. The
majority errs, for there was substantial evidence
Case: 20-1415 Document: 62 Page: 54 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 3
supporting the verdict with respect to the ’792 patent, as I
shall discuss.
The Agreement provides for co-ownership of intellec-
tual property “subsisting in Joint New Materials
and Joint Results”
The Agreement states its purpose to “jointly evaluate
each party’s genes, promoters and constructs.” MTEA at 1,
Recital B. The Agreement specifies the genetic materials
and methods contemplated for study. For example:
1. Combination BPS-CSIRO: Exploiting the CoA-
pathway by coupling the d12-desaturase (CoA sub-
strate) with the d6-desaturase from Ostreococcus
tauri and a d5-desaturase (CoA-substrate).
MTEA at 18.
The Agreement defines “Materials” as “any genes, pro-
moters and constructs of a Party identified in Schedule A
and includes copies, replicates, progeny or unmodified de-
rivatives of the original Material.” MTEA at 2.
“New Materials means constructs developed under the
Evaluation Incorporating Materials.” Id. “Joint New Ma-
terials” are defined as “constructs [that] contain both
CSIRO and BPS genes.” Id.“Results” are defined as “all results, data or infor-
mation derived from the Evaluation.” Id. “Joint Results”
are “Results with respect to Joint Transformed Lines and
Joint New Materials.” Id.“Evaluation means the programme of work to be car-
ried out under this Agreement and described in Schedule
B with the purpose of enhancing the levels of LCPUFAs
EPA and DHA in canola.” Id.The Agreement provides for joint ownership of the
products of the collaboration, including intellectual
Case: 20-1415 Document: 62 Page: 55 Filed: 03/15/2022
4 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
property subsisting in joint new materials, transformed
lines, and results:
6.2. Ownership
New Materials, Transformed Lines and Results
and any Intellectual Property subsisting in them
will be owned, immediately upon creation, in the
following way: . . .
(a) (iii) Joint New Materials will be owned jointly
by CSIRO and BPS . . . .
(b) (iii) Joint Transformed Lines will be owned
jointly by CSIRO and BPS . . . .
(c) (iii) Joint Results will be owned jointly by
CSIRO and BPS
MTEA at 5–6.
The Agreement provides that the joint ownership pro-
visions remain in effect after expiration of the collabora-
tion:
11.4 Survival
(a) Clauses 1, 6, 8, 9, 10, 11.3 and 12 survive ter-
mination or expiry of this Agreement.
MTEA at 9. Joint ownership is conferred by clause 6.2 of
the Agreement, see supra.
The jury verdicts concerning ownership
The jury received evidence of the subject matter of each
of the six patents, and the district court instructed the jury
on the application of the Agreement to each patent. The
following jury instruction was agreed:
If you find from a preponderance of the evidence
that any such genetic material, genetic lines or re-
search results were incorporated into any of the as-
serted patents then BASF is a co-owner of such
Case: 20-1415 Document: 62 Page: 56 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 5
patent and you must find that the Opponents do
not infringe upon any such patent.
Trial Tr. vol. 11, 2042:18–22, BASF v. CSIRO, No. 2:17-cv-
503, (E.D. Va. Nov. 15, 2019), ECF No. 811.
This jury instruction conforms to the Agreement’s pro-
visions of co-ownership of joint results and joint new mate-
rials. The jury received evidence that CSIRO incorporated
BASF genetic materials and research results from the col-
laboration, and that the patented materials “contain both
CSIRO and BPS genes.” MTEA at 2, ante.
The jury was instructed as to the differences among the
patents, and the usages of BASF genetic material. I focus
on the ’792 patent, for the panel majority reverses the
jury’s verdict that the ’792 patent is jointly owned. My col-
leagues’ finding is contrary to the record and contrary to
the Agreement.
The ’792 patent includes BASF gene-encoded en-
zymes, as shown by undisputed evidence
Patent claims 1 and 2 follow with added boldface to the
genetic materials provided by BASF to CSIRO under the
collaboration Agreement:
1. A Brassica napus cell comprising exogenous
polynucleotides encoding
a Δ6 desaturase whose amino acid sequence is set
forth as SEQ ID NO: 30,
a Δ6 elongase,
a Δ5 desaturase whose amino acid sequence is
identical to the amino acid sequence encoded by the
nucleotide sequence set forth as SEQ ID NO: 131,
a Δ5 elongase whose amino acid sequence is at least
99% identical to the amino acid sequence set forth
as SEQ ID NO: 130, and
Case: 20-1415 Document: 62 Page: 57 Filed: 03/15/2022
6 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
a Δ4 desaturase whose amino acid sequence is iden-
tical to the amino acid sequence encoded by the nu-
cleotide sequence set forth as SEQ ID NO: 132,
wherein each exogenous polynucleotide is operably
linked to a promoter that directs expression of said
polynucleotide in the cell.
2. The Brassica napus cell of claim 1, wherein the
Δ6 elongase has the amino acid sequence which is
identical to the amino acid sequence encoded by the
nucleotide sequence set forth as SEQ ID NO: 133.
’792 patent, col. 241, ll. 36–58.
The genetic sequences provided by BASF and included
in the ’792 specification are the amino acid sequence SEQ
ID NO: 30, the nucleotide sequence SEQ ID NO: 131, and
the nucleotide sequence SEQ ID NO: 133. These DNA se-
quences correspond to BASF genes listed in Schedule A and
recited in the claims. CSIRO does not dispute these facts.
The ’792 patent claims a Brassica cell containing a Δ6
desaturase with the sequence set forth as SEQ ID NO: 30,
which the specification identifies as the BASF gene Ostre-
ococcus tauri Δ6 desaturase. ’792 patent, col. 28, l. 16. The
Δ6 desaturase from Ostreococcus tauri is identified in
Schedule B as an object of study; see MTEA at 18 (“Exploit-
ing the CoA-pathway by coupling the d12-desaturase (CoA
substrate) with the d6-desaturase from Ostreococcus tauri
and a d5-desaturase (CoA-substrate)”); MTEA at 19 (“Ex-
ploiting the transfer from omega6- to omega3-pathways by
increasing the amounts of omega3-precursors using
omega3-specific Δ6-desatureses and fungal Δ15-desatu-
rases.”); MTEA at 20 (“Exploiting DHA synthesis. The
pathway steps from EPA to DHA will be analysed using
four different constructs with different Δ5-elongases and
Δ4-desaturases.”).
The jury received evidence that Ostreococcus tauri Δ6
desaturase was studied in five of the thirteen constructs in
Case: 20-1415 Document: 62 Page: 58 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 7
Schedule B. Dr. Singh, scientist at CSIRO listed as an in-
ventor for the ’792 patent, testified concerning the prepa-
ration of constructs containing, Ostreococcus tauri Δ6
desaturase. See Trial Tr. vol. 4, 771:24–773:6, BASF v.
CSIRO, No. 2:17-cv-503, (E.D. Va. Nov. 15, 2019), ECF No.
804. (“I say positive control will be the tauri, which is Os-
treococcus tauri delta-6 desaturase, which is codon opti-
mized and non-codon optimized.”).
Another CSIRO witness explained to the jury that both
the Ostreococcus tauri Δ6 desaturase and the Thruasto-
chytrium sp. Δ5 desaturase are BASF materials that were
provided under the Agreement. Trial Tr. vol. 8, 1508:13–
1509:2, BASF v. CSIRO, No. 2:17-cv-503, (E.D. Va. Nov.
15, 2019), ECF No. 808. (Dr. Petrie of CSIRO); see also
MTEA at 14, Schedule A (listing “D5Des(Tc)” and
“D6Des(Ot)” as BASF materials).
The Agreement’s criteria for joint ownership of the ’792
patent are met by evidence that was not disputed, that
genes that were provided by BASF for the collaboration
were explicitly described in the ’792 patent claims. 1 There
1 The panel majority criticizes this dissent for refer-
ring to CSIRO’s trial testimony that the Δ6 desaturase of
Ostreococcus tauri and the Δ5 desaturase of Thrauso-
chytrium sp. “were BASF materials provided under the
agreement.” Maj. Op. at 43–44 n.15. This testimony was
not disputed before the jury, and these facts are not chal-
lenged on this appeal. The majority’s reversal of the jury
verdict on the ’792 patent is contrary to undisputed facts
and contrary to the agreed jury instruction applying the
MTEA. The majority’s ruling does not meet the require-
ments for appellate reversal of jury verdicts. Lust v. Clark
Equip. Co., 792 F.2d 436, 437–38 (4th Cir. 1986) (“‘[O]ur
power of review continues to be limited by the Seventh
Amendment, which provides that ‘no fact tried by a jury,
shall be otherwise reexamined in any Court of the United
Case: 20-1415 Document: 62 Page: 59 Filed: 03/15/2022
8 BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC
was no evidence, no argument, that the BASF materials
recited in the ’792 claims are other than BASF materials
provided under the Agreement. See, e.g., Trial Tr. vol. 4,
712:6–24; 722:8–17; 723:23–724:9, BASF v. CSIRO,
No. 2:17-cv-503, (E.D. Va. Nov. 15, 2019), ECF No. 804.
(discussing the Thrauschytrium sp. Δ5 desaturase). There
was substantial evidence that the ’792 patent incorporates
information and results for which the Agreement provides
joint ownership.
A reasonable jury could have found that the ’792 sub-
ject matter was developed using genetic material and in-
formation provided by BASF for the collaboration. It is not
disputed that the ’792 patent describes, and the claims re-
cite, both the Ostreococcus tauri Δ6 desaturase and the
Thraustochytrium sp. Δ5 desaturase genes that BASF pro-
vided. The jury could reasonably find joint ownership, ap-
plying the law set forth in the agreed jury instructions. See
Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 424 (2015)
(“[T]he jury’s constitutional responsibility is not merely to
determine the facts, but to apply the law to those facts and
draw the ultimate conclusion. . .” (quoting United States v.
Gaudin, 515 U.S. 506, 514 (1995)); Beriont v. GTE Labs.,
Inc., 535 F. App’x 919, 926 n.2 (Fed. Cir. 2013) (“[P]atent
ownership is a mixed question of law and fact”).
The district court appropriately sustained the verdict
of co-ownership of the ’792 patent. See Price v. City of
States, than according to the rules of the common law. . . .
We may not, therefore, weigh the evidence, pass on the
credibility of witnesses, or substitute our judgment of the
facts for that of the jury. . . . Instead, we must view the ev-
idence in the light most favorable to the party against
whom the motion is made, giving him the benefit of all rea-
sonable inferences from the evidence.’” (quoting Tights,
Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1055–56 (4th
Cir. 1976) (alterations and ellipses original))).
Case: 20-1415 Document: 62 Page: 60 Filed: 03/15/2022
BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC 9
Charlotte, 93 F.3d 1241, 1249 (4th Cir. 1996) (the jury ver-
dict must be sustained if it is supported by substantial ev-
idence). This court errs in ruling otherwise.
The verdict as to the five other patents appears to be
sustainable
Although the questions are close as to at least two of
the other five patents, substantial evidence may support
the jury verdicts that the five patents awarded to CSIRO
are not jointly owned. “[I]f reasonable minds could differ,
we must affirm.” Baynard v. Malone, 268 F.3d 228, 235
(4th Cir. 2001).
Conclusion
My colleagues misapply the Agreement and errone-
ously overturn the jury’s verdict that the ’792 patent is
jointly owned by BASF and CSIRO. I respectfully dissent.