DCT

4:09-cv-00686

Monsanto Co v. E.I. DuPont De Nemours Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:09-cv-00686, E.D. Mo., 05/04/2009
  • Venue Allegations: Venue is asserted based on Monsanto's principal place of business being located in St. Louis, Missouri, within the district.
  • Core Dispute: Plaintiff alleges that Defendants are infringing a patent on glyphosate-resistant plant technology by developing and preparing to commercialize corn and soybean seeds that combine ("stack") Plaintiff's licensed "Roundup Ready" genetic trait with Defendants' own proprietary glyphosate-tolerance trait.
  • Technical Context: The lawsuit concerns foundational technology in the agricultural biotechnology sector for creating genetically modified crops that are resistant to broad-spectrum herbicides, a multi-billion dollar global market.
  • Key Procedural History: The complaint notes that the parties entered into royalty-bearing license agreements in 2002, granting Defendant Pioneer limited rights to use Monsanto's patented Roundup Ready® soybean and corn technology. The current dispute centers on allegations that Defendants' development of "stacked" seed products exceeds the scope of these licenses, constituting both patent infringement and breach of contract.

Case Timeline

Date Event
1990-08-31 Earliest Priority Date for ’247 Patent
1997-05-27 Original U.S. Patent No. 5,633,435 Issued
2002-04-01 Monsanto and Pioneer Enter Soybean and Corn License Agreements
2006-01-01 DuPont and Pioneer Announce Development of Optimum® GAT® Trait (approximate date)
2006-08-22 ’247 Reissue Patent Issued
2009-01-28 Defendants Announce Field Tests of Stacked Soybean Product
2009-02-06 GreenLeaf Genetics (a DuPont/Pioneer JV) Issues E-Update on Stacked Products
2009-05-04 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Reissue Patent No. 39,247 E - GLYPHOSATE-TOLERANT 5-ENOLPYRUVYLSHIKIMATE-3-PHOSPHATE SYNTHASES

Issued August 22, 2006

The Invention Explained

  • Problem Addressed: The patent addresses the challenge that glyphosate, a highly effective broad-spectrum herbicide, kills both weeds and crop plants indiscriminately by inhibiting the essential plant enzyme 5-enolpyruvylshikimate-3-phosphate synthase (EPSPS) (RE39,247 E, col. 1:29-38).
  • The Patented Solution: The invention provides isolated DNA molecules that code for a glyphosate-resistant version of the EPSPS enzyme, derived from bacteria (specifically, Class II EPSPS enzymes). By inserting this foreign gene into a plant’s genome, the plant is engineered to produce the resistant enzyme, allowing it to survive the application of glyphosate while surrounding weeds are eliminated (’247 Patent, Abstract; col. 2:1-11). The detailed description outlines methods for isolating these genes and transforming various plant species (’247 Patent, col. 3:29-40; col. 30:51-31:18).
  • Technical Importance: This technology was foundational for developing commercially successful herbicide-tolerant crops, which allows for more efficient weed control and facilitates the adoption of soil-preserving no-till farming practices (Compl. ¶6).

Key Claims at a Glance

  • The complaint alleges infringement of "one or more claims" of the patent but does not specify which claims will be asserted (Compl. ¶¶64, 65).
  • An illustrative independent claim, Claim 86, which covers a key commercial embodiment, contains the following essential elements:
    • A transgenic soybean plant
    • which contains a heterologous gene
    • which encodes an EPSPS enzyme
    • having a K.sub.i/K.sub.m (glyphosate/PEP) ratio between about 1 and 500
    • said plant exhibiting tolerance to glyphosate herbicide at a level that is not phytotoxic
  • The complaint does not explicitly reserve the right to assert dependent claims, but this is standard practice.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are soybean and corn seeds, and the plants grown from them, that contain both Monsanto's patented Roundup Ready® trait (specifically, the "40-3-2 Soybean Event" or the "NK603 Corn Event") and Defendants' proprietary "Optimum® GAT®" glyphosate-tolerant trait (Compl. ¶¶12, 13). These are referred to as "stacked" products.

Functionality and Market Context

  • The complaint alleges that Defendants developed the stacked products after concluding their own Optimum® GAT® trait did not provide "commercially acceptable glyphosate tolerance by itself" (Compl. ¶58). By combining the two traits, the resulting plants allegedly achieve the required level of herbicide resistance (Compl. ¶¶59-60).
  • Defendants are alleged to have conducted field tests on these stacked products and announced intentions to commercialize them, positioning them to "capture some of the Roundup Ready market" (Compl. ¶¶11, 45-46).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The following table summarizes the infringement theory for a representative claim based on the narrative allegations.

’247 Patent Infringement Allegations

Claim Element (from Independent Claim 86) Alleged Infringing Functionality Complaint Citation Patent Citation
A transgenic soybean plant Defendants are making and using transgenic soybean seeds and plants by combining Monsanto's technology with their own. ¶¶12, 30 col. 43:15-44:59
which contains a heterologous gene which encodes an EPSPS enzyme The accused plants contain the patented CP4 gene from Monsanto's 40-3-2 Soybean Event, which encodes a glyphosate-tolerant EPSPS enzyme. ¶¶7, 12 col. 4:5-13; col. 55:54-56:6
said plant exhibiting tolerance to glyphosate herbicide The resulting stacked plants are designed to be glyphosate tolerant, a fact confirmed by Defendants' alleged field tests and commercialization plans. ¶¶45, 59-60 col. 44:1-12

Identified Points of Contention

  • Scope Questions: The core of the dispute does not appear to be a technical mismatch between the claims and the accused products. Rather, it raises a question of legal scope: does the conduct of "stacking" a licensed trait (Monsanto's) with a third-party trait (DuPont's own) fall outside the rights granted by the 2002 license agreements? The complaint alleges that such activities are not licensed and therefore constitute infringement (Compl. ¶14).
  • Technical Questions: While the complaint focuses on the contract, a technical question may arise regarding the nature of the "use." What evidence shows that the "making and/or using" of the stacked products for research and development, as detailed in Defendants' patent application, constitutes an act of infringement prior to commercial sales? (Compl. ¶30). The complaint's heavy redactions prevent a full analysis of the license terms that would define permissible R&D use versus infringing use.
  • No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The complaint, with its focus on the license agreement, does not provide sufficient detail for a robust analysis of claim construction. The primary dispute is framed around the scope of licensed activities rather than the meaning of specific claim terms. Practitioners may eventually focus on terms defining the boundaries of the claimed invention, but the provided document does not offer a basis for identifying specific terms of contention.

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement to infringe (Count II). The factual basis includes allegations that at a January 2009 industry conference, a representative for the Defendants encouraged other Monsanto licensees to create the same stacked product, stating "he thought so" when asked if the combination was permissible and that "he knew of no reason why it would not be allowed" (Compl. ¶47). Further, the complaint alleges Defendants provided "communication materials to its field sales employees and reps" promoting the combination of traits (Compl. ¶49).

Willful Infringement

Willfulness is alleged based on Defendants' direct and long-standing knowledge of the ’247 Patent and its subject matter through the 2002 license agreements (Compl. ¶¶9, 10, 66). The allegation suggests Defendants made a deliberate choice to engage in activities they knew or should have known were outside the scope of their license and thus infringing.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of contractual interpretation versus patent law: Does this case primarily turn on whether Defendants' "stacking" activities breached the terms of the 2002 license agreements, or will it be decided on a pure patent infringement analysis? The resolution will likely depend on the specific, currently redacted, language of the licenses defining the scope of permitted use.
  • A key question of infringing "use" will be: Does the act of creating and testing a product that combines a licensed patented technology with a proprietary, competing technology for the purpose of development and regulatory approval constitute an infringing "use" under 35 U.S.C. § 271(a), or is it a permissible experimental or licensed activity?
  • An evidentiary question for the inducement claim will be: Do Defendants' alleged public statements and internal communications demonstrate the specific intent required to persuade third parties to infringe the ’247 Patent, or were these communications merely commercial announcements about a future product?