DCT
4:23-cv-00084
Bayer CropScience LP v. Hodel
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bayer CropScience LP (Delaware) and Monsanto Technology LLC (Delaware)
- Defendant: Michael J. Hodel d/b/a Mike Hodel (Missouri)
- Plaintiff’s Counsel: Thompson Coburn LLP
- Case Identification: 4:23-cv-00084, E.D. Mo., 01/25/2023
- Venue Allegations: Venue is alleged to be proper as the Defendant resides and operates his farming business in Pemiscot County, within the Eastern District of Missouri, where the alleged infringing acts occurred. The complaint also asserts that a 2012 licensing agreement executed by the Defendant designated this district as the exclusive forum for disputes.
- Core Dispute: Plaintiff alleges that Defendant’s planting of saved soybean seeds from a prior harvest infringes patents related to herbicide-tolerant genetic traits, in violation of both patent law and single-use license agreements.
- Technical Context: The technology involves genetically engineered soybean seeds that confer tolerance to specific herbicides (glyphosate and dicamba), enabling farmers to control weeds without damaging crops.
- Key Procedural History: The complaint provides extensive background on the regulatory history of dicamba-based herbicides, including initial and continued EPA registrations for the XtendiMax® product, subsequent label restrictions, and legal challenges brought by non-governmental organizations.
Case Timeline
| Date | Event |
|---|---|
| 2005-05-27 | ’945 Patent Priority Date |
| 2007-02-26 | ’729 Patent Priority Date |
| 2010-11-23 | ’729 Patent Issue Date |
| 2012-01-01 | Defendant signs Technology Stewardship Agreement (TSA) |
| 2018-04-17 | ’945 Patent Issue Date |
| 2020-01-01 | Start of first alleged infringing soybean season |
| 2022-06-30 | Missouri "cut-off" date for dicamba application on soybeans |
| 2023-01-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,944,945 - "Soybean event MON89788 and methods for detection thereof" (Issued: April 17, 2018)
The Invention Explained
- Problem Addressed: The patent addresses the need for a precise and reliable method to identify the presence of a specific, patented genetic modification—soybean event MON89788—in a plant or seed sample (ʼ945 Patent, col. 2:25-34). This is critical for regulatory compliance, breeding programs, and protecting intellectual property rights.
- The Patented Solution: The invention is the specific transgenic soybean event MON89788 itself, and crucially, the unique DNA sequences that form the junction between the inserted foreign gene cassette and the native soybean genome (’945 Patent, Abstract). These junction sequences act as a molecular fingerprint, allowing for definitive identification of the MON89788 event using techniques like the polymerase chain reaction (PCR) (’945 Patent, col. 4:45-51). Figure 1 of the patent visually depicts the inserted DNA and the flanking genomic regions where these unique junction sequences are located.
- Technical Importance: The invention provides the foundational molecular tool for identifying and tracking a commercially significant glyphosate-tolerant soybean line, enabling quality control for seed producers and enforcement of patent rights against unauthorized propagation.
Key Claims at a Glance
- The complaint asserts infringement of at least claims 1, 3, 5, and 7 (Compl. ¶92).
- Independent Claim 1:
- A transgenic soybean plant, seed, or plant part
- comprising a DNA molecule comprising SEQ ID NO: 3
- flanking a glyphosate tolerant 5-enolpyruvyl-3-physphoshikimate synthase (EPSPS) coding sequence.
U.S. Patent No. 7,838,729 - "Chloroplast transit peptides for efficient targeting of DMO and uses thereof" (Issued: November 23, 2010)
The Invention Explained
- Problem Addressed: Developing dicamba-tolerant plants requires introducing the dicamba monooxygenase (DMO) enzyme. For this enzyme to function effectively, it must be localized within a specific cellular compartment: the chloroplast (’729 Patent, col. 5:29-34). The patent notes that merely introducing the gene is insufficient; inefficient transport or improper processing of the DMO enzyme within the plant cell can lead to inadequate herbicide tolerance and complicate regulatory approval (’729 Patent, col. 6:6-14).
- The Patented Solution: The patent discloses specific amino acid sequences, known as chloroplast transit peptides (CTPs), that act as molecular "address labels." When genetically fused to the DMO enzyme, these CTPs guide the enzyme to the chloroplast (’729 Patent, Abstract). The invention identifies particular CTPs that not only ensure correct localization but also allow for the CTP to be cleanly cleaved off after delivery, resulting in a correctly sized, fully functional DMO enzyme and, consequently, robust dicamba tolerance (’729 Patent, col. 6:49-54).
- Technical Importance: This technology provided a key component for creating highly effective dicamba-tolerant crops by solving the critical subcellular engineering problem of localizing the DMO enzyme for maximum efficacy.
Key Claims at a Glance
- The complaint asserts infringement of at least claims 1, 5, 16, 29, and 30 in Count II (Saved Seed) and claim 23 in Count III (Herbicide Application) (Compl. ¶101, ¶108).
- Independent Claim 1:
- A recombinant DNA molecule
- comprising a DNA sequence encoding a chloroplast transit peptide operably linked to a DNA sequence encoding dicamba monooxygenase,
- wherein the DNA sequence encoding the chloroplast transit peptide encodes SEQ ID NO:1.
- Independent Claim 23:
- A method for controlling weed growth in a crop growing environment
- comprising a plant of claim 16 [a plant transformed with a DMO construct] or a seed thereof,
- comprising applying to the crop growing environment an amount of dicamba herbicide effective to control weed growth.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are soybean seeds containing Plaintiff's patented Roundup Ready 2 Xtend® or XtendFlex® technologies that were saved by the Defendant from a prior harvest and replanted in subsequent seasons (Compl. ¶1, ¶82). A second accused instrumentality is the method of applying dicamba herbicides to soybean crops grown from these seeds (Compl. ¶2, ¶108).
Functionality and Market Context
The seeds contain patented genetic traits that confer tolerance to glyphosate and dicamba herbicides, allowing for "over-the-top" application of these herbicides to control weeds without harming the soybean crop (Compl. ¶15-18). Plaintiff licenses this technology to farmers for a single commercial crop planting season only, expressly prohibiting the saving of harvested seed for replanting (Compl. ¶19, ¶71). The complaint alleges Defendant circumvented this single-use license by saving, cleaning, and replanting patented seeds for at least the 2020, 2021, and 2022 soybean seasons (Compl. ¶1, ¶80).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’945 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A transgenic soybean plant, seed, or plant part... | Defendant made and used saved soybean seeds and grew soybean plants from those seeds. | ¶92 | col. 3:62-63 |
| ...comprising a DNA molecule comprising SEQ ID NO: 3 flanking a glyphosate tolerant...EPSPS coding sequence. | The saved seeds contained the Roundup Ready 2 Yield®, Roundup Ready 2 Xtend®, or XtendFlex® technology, which embodies the patented MON89788 event defined by SEQ ID NO:3. | ¶92 | col. 4:35-40 |
’729 Patent Infringement Allegations
| Claim Element (from Independent Claim 23) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for controlling weed growth in a crop growing environment comprising a plant of claim 16 or a seed thereof... | Defendant planted and grew soybeans containing the Roundup Ready 2 Xtend® and/or XtendFlex® technology, which embodies the patented DMO invention. | ¶108 | col. 10:45-48 |
| ...comprising applying to the crop growing environment an amount of dicamba herbicide effective to control weed growth. | Defendant applied unapproved and unlabeled dicamba herbicides to his soybean crop, including after the state-mandated "cut-off" date of June 30, 2022. | ¶108-109 | col. 10:48-51 |
Identified Points of Contention
- Factual Questions: The primary factual dispute will likely concern evidence. The case may turn on Plaintiff’s ability to prove that the Defendant planted seeds saved from a prior harvest and that those specific seeds contained the patented genetic traits as alleged.
- Scope Questions: The complaint’s assertion of direct infringement of the ’729 patent’s method claim 23 raises a nuanced legal question. A potential issue is whether the authorized sale of the seed exhausts the patent holder's right to control the use of that seed in a manner described by a method claim (i.e., planting it and applying herbicide). While the Supreme Court’s decision in Bowman v. Monsanto affirmed that replanting saved seed constitutes unauthorized "making" of a new patented article, the infringement theory based on the act of spraying the resulting crop may raise distinct questions regarding the scope of patent exhaustion.
V. Key Claim Terms for Construction
- The Term: "A transgenic soybean...seed" ('945 Patent, claim 1)
- Context and Importance: This term defines the patented article. The infringement analysis for the "saved seed" counts hinges on the legal status of the second-generation seeds planted by the Defendant. Practitioners may focus on whether the act of planting harvested seed creates a new, infringing "transgenic soybean...seed" that falls outside the scope of the license granted upon the initial sale. The Supreme Court addressed this directly in Bowman v. Monsanto, holding that a farmer who reproduces patented seeds "makes" a new article, thereby infringing the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims broadly cover the "seed" itself, without limitation as to its generation. Claim 1 covers any seed "comprising" the specified DNA molecule. The patent’s summary of the invention states it provides for "soybean plant and seeds of the soybean event MON89788" without qualification (’945 Patent, col. 4:1-2).
- Evidence for a Narrower Interpretation: The complaint does not suggest a dispute over the technical definition of "seed." A defense would likely not focus on narrowing the term's construction, but rather on arguing that the patent rights were exhausted upon the first sale of the seed, an argument that was largely foreclosed by the Bowman decision in the context of self-replicating technologies.
VI. Other Allegations
- Indirect Infringement: The prayer for relief includes a request for judgment that Defendant has "directly and indirectly infringed" the patents (Compl. p. 32, ¶A). However, the specific counts for patent infringement (Counts I, II, and III) allege direct infringement by the Defendant's own actions of making, using, and selling the seeds and applying the herbicide.
- Willful Infringement: The complaint alleges willful infringement based on Defendant’s alleged pre-suit knowledge of the patents and licensing restrictions (Compl. ¶93, ¶102, ¶111). This knowledge is allegedly established by the Defendant's execution of a Technology Stewardship Agreement (TSA) in 2012, his receipt of annual updates to the TSA, and statutory patent notices placed on the labeling of seed bags (Compl. ¶74, ¶79).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidence: Can the Plaintiff produce sufficient evidence to establish, as a factual matter, that the Defendant engaged in the practice of saving and replanting harvested seeds containing the specific patented technologies of the ’945 and ’729 patents?
- A central legal question will be the application of patent exhaustion doctrine: While the act of replanting saved seed appears to be controlled by the Supreme Court’s precedent in Bowman v. Monsanto, the separate infringement allegation for applying herbicide to the resulting crop (infringing method claim 23 of the ’729 patent) may prompt the court to analyze the precise boundaries of patent exhaustion as it applies to method-of-use claims after an authorized sale of an article that embodies the patent.