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To Be Dependent, Claim Must Incorporate Process, Not Product, of Referent Claim

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Dependent claims necessarily refer back to an earlier, separate claim. But what happens when one claim describes a one-step process that is in turn obtained by the process of another claim? According to the Federal Circuit, the reference to the earlier claim’s process ensures a finding of dependency.

In affirming a claim construction decision (among others) of Delaware District Judge Sue L. Robinson, the Federal Circuit began with the language of the process claim in issue: “A process comprising obtaining progeny from a [certain plant] obtained by the process of claim 1 . . . .”

Finding this language sufficient to warrant dependent status, the Court rejected the contention that the claim was independent because it is “by itself” a single-step process. By doing so, the Court relied on the claim’s explicit reference to the independent claim’s process:

“[C]laim 4 clearly references another claim, not simply a starting material. The claim might have used express language to clarify that it only invoked the product of the process in claim 1 as a starting material, but did not do so. Instead, the claim language reads claim 1 into claim 4.”

Thus, the recitation of another claim’s process, rather than its product, confers dependent status on the reciting claim.

Monsanto Co. v. Syngenta Seeds, Inc., No. 2006-1472 (Fed. Cir. Oct. 4, 2007) (Rader, J.).

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