DCT
4:10-cv-00075
Monsanto Co v. Slusser
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Monsanto Company and Monsanto Technology LLC (Delaware)
- Defendant: Kevin Slusser (Arkansas)
- Plaintiff’s Counsel: Thompson Coburn LLP
- Case Identification: 4:10-cv-00075, E.D. Mo., 01/14/2010
- Venue Allegations: Venue is based on a forum selection clause within a 2000 licensing agreement allegedly executed by the Defendant, which designated the Eastern District of Missouri as the exclusive forum for disputes.
- Core Dispute: Plaintiff alleges that Defendant’s unauthorized saving of harvested Roundup Ready® soybean seeds for replanting in subsequent seasons constitutes infringement of patents covering the genetically modified seeds and the method of using them with glyphosate-based herbicides.
- Technical Context: The technology involves the genetic engineering of agricultural crops to be resistant to specific herbicides, allowing farmers to spray herbicides to eliminate weeds without damaging the crops.
- Key Procedural History: The complaint alleges the Defendant executed a licensing agreement in 2000 which, among other things, prohibited the practice of saving seed for replanting. This agreement is central to the allegations of knowing and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1983-01-17 | ’605 Patent - Earliest Priority Date |
| 1990-08-31 | ’247 Patent - Earliest Priority Date |
| 1994-10-04 | ’605 Patent - Issue Date |
| 1997-05-27 | ’247 Patent - Original Patent (5,633,435) Issue Date |
| 2000 | Defendant executes technology licensing agreement |
| 2006-08-22 | ’247 Patent - Reissue Date |
| 2008 | Alleged planting of purchased seed, crop from which was allegedly saved |
| 2009 | Alleged infringing planting of saved seed |
| 2010-01-14 | 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 (’605 Patent).
The Invention Explained
- Problem Addressed: The patent describes the challenge of getting foreign genes to function ("express") correctly when inserted into plant cells. The patent notes that prior to the invention, researchers had not succeeded in creating a functional "chimeric gene" by combining a plant virus promoter with a foreign structural gene and demonstrating its expression in a plant cell (’605 Patent, col. 2:60-65).
- The Patented Solution: The invention provides a method for creating such chimeric genes. It involves taking a strong promoter sequence from a plant virus, specifically the Cauliflower Mosaic Virus (CaMV), and fusing it to a "heterologous" structural gene—a gene from a different organism that codes for a desired trait. This genetic construct can then be inserted into a plant cell, where the viral promoter drives the expression of the foreign gene, causing the plant to exhibit the new trait (’605 Patent, Abstract; col. 4:55-65). Figure 10 of the patent provides a schematic for assembling plasmids containing these chimeric gene constructs (’605 Patent, Fig. 10).
- Technical Importance: This invention provided a reliable toolkit for expressing foreign genes in plants, a foundational step that enabled the development of a wide range of commercially significant transgenic crops, including those with herbicide or pest resistance (’605 Patent, col. 1:13-16).
Key Claims at a Glance
- The complaint does not identify specific claims of the ’605 Patent, but alleges infringement by the making and using of seed embodying the invention (Compl. ¶26). Claim 17 is a representative independent claim covering a core aspect of the invention.
- Independent Claim 17:
- A plant cell which comprises a chimeric gene
- where said chimeric gene comprises a promoter from cauliflower mosaic virus...
- wherein said promoter is free of CaMV protein-encoding DNA sequences,
- and a DNA sequence which is heterologous with respect to the promoter,
- and a 3' non-translated polyadenylation signal sequence.
- The complaint reserves the right to assert additional claims.
U.S. Reissued Patent No. RE 39,247 E - "Glyphosate-Tolerant 5-Enolpyruvylshikimate-3-Phosphate Synthases"
- Patent Identification: U.S. Reissued Patent No. RE 39,247 E, "Glyphosate-Tolerant 5-Enolpyruvylshikimate-3-Phosphate Synthases," reissued August 22, 2006 (’247 Patent).
The Invention Explained
- Problem Addressed: The patent explains that glyphosate, the active ingredient in Roundup® herbicide, is a highly effective, non-selective herbicide. It works by inhibiting the EPSPS enzyme, which is critical for plant survival. Its non-selective nature means it kills both weeds and conventional crop plants, limiting its utility (’247 Patent, col. 1:24-34).
- The Patented Solution: The invention is a method for producing plants that are tolerant to glyphosate. This is achieved by inserting a gene from a bacterium (Agrobacterium sp. strain CP4) that produces a version of the EPSPS enzyme that is not inhibited by glyphosate (’247 Patent, Abstract). Plants engineered with this gene can continue to function and grow normally even after being sprayed with glyphosate, while surrounding weeds are killed (’247 Patent, col. 2:1-12).
- Technical Importance: This technology created the "Roundup Ready" crop system, which allows for "over-the-top" application of glyphosate herbicide, providing a highly effective and efficient method of weed control in modern agriculture (’247 Patent, col. 1:15-23).
Key Claims at a Glance
- The complaint asserts infringement of claim 130 (Compl. ¶36).
- Independent Claim 130:
- A method for selectively controlling weeds in a field containing a crop having planted crop seeds or plants which are glyphosate-tolerant,
- said method comprising applying to said crop and weeds in the field a sufficient amount of a glyphosate herbicide to control the weeds without significantly affecting the crop.
- The complaint reserves the right to assert additional claims.
III. The Accused Instrumentality
Product Identification
- Roundup Ready® soybean seed, specifically seed that the Defendant allegedly saved from his 2008 or earlier harvest for replanting in 2009 (Compl. ¶¶ 18, 20).
Functionality and Market Context
- The accused seeds are alleged to contain the patented genetic technologies conferring glyphosate resistance (Compl. ¶¶ 2-3). The complaint alleges the Defendant planted these saved seeds, grew a crop of glyphosate-tolerant soybeans, and then applied a glyphosate-based herbicide to the fields to control weeds (Compl. ¶¶ 18-19). This conduct is alleged to be a violation of both Monsanto's patent rights and the terms of a licensing agreement that prohibits seed saving and requires farmers to purchase new seed each year (Compl. ¶17).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 5,352,605 Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plant cell which comprises a chimeric gene... | Defendant made and used Roundup Ready® soybean seed, which is composed of plant cells containing the patented chimeric gene. | ¶26 | col. 18:2-11 |
| ...where said chimeric gene comprises a promoter from cauliflower mosaic virus... and a DNA sequence which is heterologous with respect to the promoter... | The Roundup Ready® soybean seed is alleged to embody the patented invention, which combines a viral promoter with a gene for glyphosate tolerance. | ¶¶2, 26 | col. 4:55-65 |
| ...and a 3' non-translated polyadenylation signal sequence. | The genetic construct in the accused seed is alleged to contain the elements required for expression in plant cells, including a polyadenylation signal. | ¶26 | col. 4:13-18 |
U.S. Reissued Patent No. RE 39,247 E Infringement Allegations
| Claim Element (from Independent Claim 130) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for selectively controlling weeds in a field containing a crop having planted crop seeds or plants which are glyphosate-tolerant, | Defendant planted Roundup Ready® soybean seeds, which grew into a crop of glyphosate-tolerant soybean plants. | ¶¶18, 20 | col. 5:35-42 |
| said method comprising applying to said crop and weeds in the field a sufficient amount of a glyphosate herbicide to control the weeds without significantly affecting the crop. | Defendant applied an "over the top" glyphosate-based herbicide to the planted fields, which experienced no soybean crop injury. | ¶19 | col. 36:35-45 |
- Identified Points of Contention:
- Legal Question (Patent Exhaustion): The complaint alleges infringement by making and using seeds grown from a prior crop. A central legal question for the court will be whether the doctrine of patent exhaustion applies. This raises the question of whether the initial authorized sale of a patented, self-replicating item (a seed) "exhausts" the patentee's right to control the creation and use of subsequent generations of that item made by the purchaser.
- Factual Question: While the complaint alleges that the Defendant admitted to planting 100% Roundup Ready® seeds (Compl. ¶20), a potential point of contention could be the factual evidence proving that the specific seeds planted were in fact saved seeds embodying the patented technology and not newly purchased seeds.
V. Key Claim Terms for Construction
The Term: "chimeric gene" (’605 Patent, Claim 17)
Context and Importance: The definition of "chimeric gene" is foundational to the ’605 Patent. While the accused technology is a well-known embodiment, the scope of this term defines the boundaries of the invention itself.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a functional definition, describing the invention as a plant virus promoter coupled to a "heterologous structural sequence" (’605 Patent, col. 2:60-65). This language may support a construction covering a wide range of promoter-gene combinations.
- Evidence for a Narrower Interpretation: The patent's detailed examples focus on specific constructs, such as the CaMV promoter linked to the NPTII gene (’605 Patent, col. 4:55-65). A party could argue the term should be understood in light of these specific embodiments.
The Term: "significantly affecting the crop" (’247 Patent, Claim 130)
Context and Importance: This term defines the required level of glyphosate tolerance for the patented method. Its interpretation is critical to determining whether the method was practiced, as it sets the threshold for what constitutes acceptable versus unacceptable crop damage after herbicide application.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's objective is to enable weed control without destroying the crop, suggesting that any level of tolerance that achieves this commercial goal would meet the limitation. The complaint alleges "no soybean crop injury" (Compl. ¶19), which would fall squarely within any interpretation.
- Evidence for a Narrower Interpretation: The patent provides detailed experimental data and tables showing specific levels of enzyme activity and plant health under various conditions (’247 Patent, Tables VI-IXC). A party could argue that "significantly affecting" must be interpreted quantitatively, requiring a specific, high degree of tolerance as demonstrated in those examples.
VI. Other Allegations
- Willful Infringement: The complaint alleges that the Defendant’s infringement was "knowingly, intentionally, and willfully" done (Compl. ¶18). This allegation is supported by claims that the Defendant had "full knowledge and with notice" of Monsanto's patent rights (Compl. ¶27). The alleged bases for this knowledge are the 2000 licensing agreement, which expressly prohibited seed saving, and the patent numbers marked on the bags of purchased seed (Compl. ¶¶ 16-17).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of patent exhaustion: can a farmer who purchases a patented, self-replicating product (a seed) "make" a new version of the product by planting it and harvesting the progeny without infringing the patent, or does the patentee’s right to control the "making" of the invention survive the initial sale?
- A second key question will be one of contractual versus patent rights: how does the alleged breach of the technology licensing agreement, which contractually forbade seed saving, influence the determination of willful patent infringement and the calculation of potential damages?
- Finally, the case will present an evidentiary question of use: what factual proof will be required to demonstrate that the defendant's actions—saving seed, replanting it, and spraying the resulting crop—meet each limitation of the asserted patent claims?