DCT
4:04-cv-00064
Monsanto Co v. Ford
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Monsanto Company (Delaware)
- Defendant: Dean Ford, Debbie Ford, Melvin Ford, Ford Lumber & Building Supply, Inc., and Jason Wehner d/b/a Taylor-Wehner Farm (Indiana)
- Plaintiff’s Counsel: Frost Brown Todd LLC
- Case Identification: 4:04-cv-00064, S.D. Ind., 03/05/2004
- Venue Allegations: Venue is asserted based on the defendants' residence within the judicial district and the occurrence of a substantial part of the alleged infringing acts in the district.
- Core Dispute: Plaintiff alleges that Defendants, who are farmers and a related entity, infringed a patent covering genetically modified soybean technology by saving harvested soybeans from one crop year and replanting them as seed in a subsequent year without authorization.
- Technical Context: The technology involves the genetic engineering of crop plants to exhibit resistance to specific herbicides, a foundational innovation in agricultural biotechnology that allows for more effective weed control.
- Key Procedural History: The complaint alleges that all bags of the licensed seed are marked with the patent number, providing statutory notice. It also references the terms of a limited use license that prohibits licensees from saving harvested seed for replanting.
Case Timeline
| Date | Event |
|---|---|
| 1983-01-17 | ’605 Patent Priority Date |
| 1994-10-04 | ’605 Patent Issue Date |
| 2002-01-01 | Alleged saving of Roundup Ready® soybeans from 2002 crop year |
| 2003-01-01 | Alleged planting of saved soybeans during 2003 crop year |
| 2004-03-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,352,605 - "Chimeric Genes for Transforming Plant Cells Using Viral Promoters"
- Patent Identification: U.S. Patent No. 5,352,605, "Chimeric Genes for Transforming Plant Cells Using Viral Promoters," issued October 4, 1994.
The Invention Explained
- Problem Addressed: The patent addresses the technical challenge of achieving reliable expression of foreign genes in plant cells (Compl., Ex. A, '605 Patent, col. 2:55-64). Prior to the invention, researchers had theorized about creating such "chimeric genes," but had not successfully demonstrated the expression of a gene comprising a plant virus promoter coupled to a heterologous structural sequence in a plant cell (col. 2:59-64).
- The Patented Solution: The invention is a method for creating a "chimeric gene" that can be reliably expressed in plant cells. It accomplishes this by joining a powerful genetic "on switch," called a promoter, from a plant virus (specifically, Cauliflower Mosaic Virus or CaMV) to a "heterologous" structural gene—a gene that codes for a desired protein not native to the plant (Abstract; col. 3:20-33). The CaMV promoter effectively drives the expression of the foreign gene within the plant's cellular machinery (col. 3:25-33).
- Technical Importance: This technology was a foundational development in genetic engineering, providing a reliable toolkit for introducing novel, commercially valuable traits, such as herbicide resistance, into crop plants (col. 2:55-64).
Key Claims at a Glance
- The complaint alleges infringement of the patent generally, without specifying claims, but reserves the right to identify claims later. Independent Claim 1 is representative of the core invention.
- Independent Claim 1:
- A chimeric gene which is expressed in plant cells
- comprising a promoter from a cauliflower mosaic virus,
- said promoter selected from the group consisting of a CaMV (35S) promoter isolated from CaMV protein-encoding DNA sequences and a CaMV (19S) promoter isolated from CaMV protein-encoding DNA sequences,
- and a structural sequence which is heterologous with respect to the promoter.
III. The Accused Instrumentality
Product Identification
- The accused infringing articles are "Roundup Ready® soybean seed" that were allegedly planted by the defendants (Compl. ¶¶9, 16, 18).
Functionality and Market Context
- The complaint alleges that Roundup Ready® soybean seed contains a "man-made gene" that causes the resulting crop to be resistant to glyphosate, the active ingredient in Monsanto's Roundup® brand herbicides (Compl. ¶9). This patented trait allows farmers to apply the herbicide to their fields, killing weeds without harming the soybean crop. The infringing act is not the use of a purchased product, but the alleged "making" of new, unlicensed seed by saving harvested seed from one season and replanting it in the next, in violation of a limited use license (Compl. ¶14).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint provides a narrative infringement theory rather than a detailed element-by-element analysis. The following table summarizes the allegations as they map to a representative independent claim.
- ’605 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A chimeric gene which is expressed in plant cells... | The accused soybean seed allegedly contains a "man-made gene" that causes the crop to be resistant to glyphosate, which requires expression of the gene in the plant's cells. | ¶9 | col. 3:25-30 |
| ...comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter... and a CaMV (19S) promoter... | The seed contains "Monsanto's patented Roundup Ready® biotechnology," which embodies the invention of the ’605 patent. The patent itself identifies CaMV promoters as the key component. | ¶¶9, 18, 23 | col. 3:5-15 |
| ...and a structural sequence which is heterologous with respect to the promoter. | The "man-made gene" that confers glyphosate resistance is the heterologous structural sequence, as it is not native to the soybean plant and is functionally linked to the viral promoter. | ¶9 | col. 3:29-30 |
- Identified Points of Contention:
- Legal Question (Patent Exhaustion): The central legal dispute raised by the allegations is whether the doctrine of patent exhaustion applies. The complaint alleges that the licensed sale of Roundup Ready® seed is subject to a limited use agreement prohibiting the saving of seed for replanting (Compl. ¶14). The case will turn on whether saving harvested seed and replanting it constitutes an infringing act of "making" a new patented article, or whether Monsanto's patent rights were exhausted by the initial authorized sale of the first generation of seed.
- Factual Question (Proof of Infringement): A primary factual dispute will be whether Plaintiff can prove that the seeds planted by the defendants were in fact progeny of previously harvested Roundup Ready® soybeans. The complaint makes these allegations "upon information and belief" (Compl. ¶¶16, 17, 32), suggesting that evidence establishing the source of the planted seed will be critical.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail to identify specific claim construction disputes. However, based on the patent's technology, the following terms are foundational to the scope of the claims.
The Term: "chimeric gene"
Context and Importance: This term defines the fundamental composition of the invention. Its construction determines what combination of genetic elements falls within the scope of the claims. Practitioners may focus on this term to determine if the specific genetic construct in the accused soybeans meets the definition as understood in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides a general definition, stating the invention relates to "chimeric genes which are capable of being expressed in plant cells, which utilize promoter regions derived from viruses" (col. 3:22-25).
- Evidence for a Narrower Interpretation: The specification describes specific embodiments and methods for creating particular chimeric genes, such as the creation of plasmid pMON156 (col. 4:42-45; Fig. 2). A party could argue the term should be limited by these specific examples.
The Term: "expressed in plant cells"
Context and Importance: This functional language requires not just the presence of the chimeric gene, but its actual activity within the plant cell to produce a polypeptide. The dispute may hinge on the level or type of expression required to meet this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent generally states that the chimeric genes "have been proven to be expressed in plant cells" and that co-cultivated petunia cells "survived and produced colonies" on media that would otherwise be toxic, indicating expression (col. 3:30-31; col. 6:13-16).
- Evidence for a Narrower Interpretation: The patent provides detailed descriptions of assays used to confirm expression, such as Southern blot analysis and measurements of resistance to kanamycin (col. 6:18-20; col. 4:46-51). A party might argue that "expressed" requires a specific, measurable level of protein production or functional outcome as demonstrated in the patent's examples.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant Dean Ford induced infringement by the other defendants (Compl. ¶35). The alleged factual basis includes Dean Ford obtaining Roundup Ready® soybeans from another defendant, saving seed from a prior crop, and directing employees to plant the saved seed on fields owned by the other defendants (Compl. ¶¶31-34).
- Willful Infringement: The complaint alleges that the infringement was "knowing, willful, deliberate and conscious" (Compl. ¶27). The factual basis for this allegation includes pre-suit knowledge of the patent from statutory notice marked on all bags of Roundup Ready® seed (Compl. ¶¶13, 22) and knowledge of the use restrictions from the accompanying license agreement (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents foundational questions at the intersection of patent law, contract law, and agricultural practice. The key issues for the court appear to be:
- A core issue will be one of patent exhaustion: Does the authorized sale of a patented, self-replicating article (a seed) exhaust the patent holder's right to control the progeny of that article, or does the act of planting harvested seed to create a new generation constitute an infringing "making" of the patented invention?
- A key evidentiary question will be one of factual proof: What evidence can Monsanto, the plaintiff, adduce to demonstrate that the specific soybeans planted by the defendants were the direct progeny of saved seed covered by the ’605 patent, as opposed to originating from an authorized purchase or another source?