DCT
4:23-cv-00086
Bayer CropScience LP v. Duffy
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bayer CropScience LP and Monsanto Technology LLC (Delaware)
- Defendant: Greg Duffy d/b/a Duffy Farms (Missouri)
- Plaintiff’s Counsel: Thompson Coburn LLP
- Case Identification: 4:23-cv-00086, E.D. Mo., 01/25/2023
- Venue Allegations: Venue is alleged to be proper as Defendant resides and operates his farming business within the district, the infringing acts occurred within the district, and the parties previously agreed to jurisdiction and venue in the district through a licensing agreement.
- Core Dispute: Plaintiff alleges that Defendant’s planting of saved soybean seeds from a prior harvest constitutes infringement of patents covering genetically modified soybean technology, and that Defendant’s subsequent application of unapproved herbicides to those crops constitutes further infringement.
- Technical Context: The dispute involves genetically engineered soybean seeds that confer tolerance to specific herbicides (glyphosate and dicamba), a foundational technology in modern large-scale agriculture for weed management.
- Key Procedural History: The complaint alleges that Defendant executed a Technology Stewardship Agreement (TSA) in 2017, which serves as a limited-use license for the patented seed technology and expressly prohibits the saving of harvested seed for replanting. The complaint also provides extensive background on the U.S. Environmental Protection Agency's regulatory history concerning dicamba-based herbicides.
Case Timeline
| Date | Event |
|---|---|
| 2005-05-27 | U.S. Patent 9,944,945 Priority Date |
| 2007-02-26 | U.S. Patent 7,838,729 Priority Date |
| 2010-11-23 | U.S. Patent 7,838,729 Issued |
| 2017-XX-XX | Defendant allegedly signs Technology Stewardship Agreement (TSA) |
| 2018-04-17 | U.S. Patent 9,944,945 Issued |
| 2020-XX-XX | First alleged infringing soybean season |
| 2021-XX-XX | Second alleged infringing soybean season |
| 2022-XX-XX | Third alleged infringing soybean season |
| 2022-06-30 | Missouri cut-off date for applying dicamba herbicides to 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: When a new gene is inserted into a plant's genome, it is critical to have a reliable method to detect the presence of that specific "transgenic event" for purposes of regulatory compliance, quality control, and intellectual property protection (’945 Patent, col. 2:27-44).
- The Patented Solution: The invention is a specific, unique DNA sequence that comprises the junction between the inserted foreign gene cassette and the native soybean genome for the MON89788 event ('945 Patent, Fig. 1). This junction sequence acts as a stable, heritable "fingerprint" that can be precisely identified using molecular biology techniques like the Polymerase Chain Reaction (PCR), allowing one to confirm the presence of the MON89788 event in a plant or seed sample ('945 Patent, Abstract).
- Technical Importance: This technology provides an essential tool for identifying specific lines of genetically modified crops, which is critical for developers to protect their intellectual property and for the agricultural industry to track traits through the supply chain (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3, 5, and 7 (Compl. ¶92).
- Independent Claim 1 requires:
- 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: To confer tolerance to the herbicide dicamba, a bacterial enzyme called dicamba monooxygenase (DMO) must be introduced into a plant. For this enzyme to function effectively, it must be transported to the chloroplasts within the plant cells, where key metabolic processes occur. Without an efficient delivery mechanism, the enzyme may not reach its destination, resulting in poor herbicide tolerance (’729 Patent, col. 5:29-42).
- The Patented Solution: The invention provides specific amino acid sequences, known as chloroplast transit peptides (CTPs), that function as molecular "shipping labels." When a DNA sequence encoding one of these CTPs is fused to the DNA sequence for the DMO enzyme, the resulting protein is efficiently targeted and transported into the chloroplasts. Once inside, the CTP is cleaved off, leaving a functional DMO enzyme in the correct subcellular location ('729 Patent, Abstract; col. 6:7-22).
- Technical Importance: This invention enables the creation of crops with robust tolerance to dicamba, providing farmers an alternative weed control system to manage weeds that have developed resistance to other herbicides, such as glyphosate (Compl. ¶18).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 23, as well as dependent claims 5, 16, 29, and 30 (Compl. ¶¶101, 108).
- Independent Claim 1 requires:
- A recombinant DNA molecule
- comprising a DNA sequence encoding a chloroplast transit peptide (encoding SEQ ID NO:1)
- operably linked to a DNA sequence encoding dicamba monooxygenase.
- Independent Claim 23 requires:
- A method for controlling weed growth in a crop growing environment
- comprising a plant (as defined in claim 16, which depends from claim 1) 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 "Roundup Ready 2 Xtend®" and/or "XtendFlex®" technology that Defendant allegedly saved from a prior harvest and replanted (Compl. ¶1). Also accused is the method of applying unapproved dicamba-based herbicides to the crops grown from these seeds (Compl. ¶2).
- Functionality and Market Context: The seeds are genetically engineered to produce soybean plants that tolerate over-the-top application of glyphosate and/or dicamba herbicides, which simplifies weed control for farmers (Compl. ¶15-16). The complaint alleges that Plaintiff licenses this technology for single-season use and that Defendant’s alleged practice of saving seeds for replanting circumvents this single-use license, constituting patent infringement (Compl. ¶¶ 1, 71, 80). The complaint further alleges that the application of unapproved, higher-volatility dicamba formulations to these crops threatens the continued regulatory approval of the technology for all users (Compl. ¶28).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’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 comprising a DNA molecule comprising SEQ ID NO: 3... | Defendant made and used seeds having the Roundup Ready 2 Yield® and Roundup Ready 2 Xtend® technology by saving seed from a prior harvest and planting it in subsequent seasons. These seeds allegedly embody the patented invention. | ¶92 | col. 4:30-41 |
- Identified Points of Contention:
- Factual Question: A central question will be whether Plaintiff can produce sufficient evidence to prove that the soybeans Defendant planted in the 2020, 2021, and 2022 seasons were grown from seeds saved from a prior harvest, rather than from newly purchased, licensed seed.
- Legal Question: The analysis raises the question of whether the act of planting a harvested seed that contains a patented genetic trait constitutes an infringing act of "making" a new, unlicensed version of the patented article, thereby falling outside the scope of patent exhaustion.
’729 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A recombinant DNA molecule comprising a DNA sequence encoding a chloroplast transit peptide...operably linked to a DNA sequence encoding dicamba monooxygenase. | Defendant made and used seeds having the Roundup Ready 2 Xtend® and/or XtendFlex® technology, which confers dicamba tolerance and allegedly embodies the patented invention combining a DMO enzyme with a CTP. | ¶101 | col. 5:10-17 |
| Claim Element (from Independent Claim 23) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
| A method for controlling weed growth...comprising...applying...dicamba herbicide... | Defendant applied unapproved and unlabeled dicamba herbicides to soybeans grown from seeds containing the patented Roundup Ready 2 Xtend® technology. Defendant also allegedly applied dicamba herbicides after the legal cut-off date of June 30, 2022. | ¶108, ¶109 | col. 3:8-16 |
- Identified Points of Contention:
- Factual Question: Beyond proving the use of saved seed, what evidence does the complaint provide that Defendant specifically applied "unapproved and unlabeled dicamba herbicides" or applied any dicamba formulation after the legal "cut-off" date, as required to infringe the asserted method claim? This will likely depend on evidence gathered during discovery, such as purchase records and application logs.
V. Key Claim Terms for Construction
- The Term: "making"
- Context and Importance: The infringement allegations for both patents hinge on the assertion that by planting saved seeds, Defendant engaged in an unauthorized "making" of the patented seeds and plants (Compl. ¶¶ 92, 101). The construction of this statutory term in the context of self-replicating technologies is central to the dispute. Practitioners may focus on this term because it determines whether the doctrine of patent exhaustion, which normally permits a buyer to "use" a patented article, is overcome by the creation of a new, unlicensed generation of the article.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents' claims cover the "seed" and "plant" itself as the invention ('945 Patent, cl. 1; '729 Patent, cl. 16). The act of planting a seed and cultivating a mature plant that produces thousands of new seeds could be construed as "making" new copies of the claimed article, a right reserved to the patent holder.
- Evidence for a Narrower Interpretation: A defendant could argue that the right to "use" a purchased seed inherently includes the right to plant it and harvest the resulting crop. This argument, however, has been largely foreclosed by the U.S. Supreme Court's decision in Bowman v. Monsanto, which held that patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.
VI. Other Allegations
- Indirect Infringement: The prayer for relief includes a request for a finding of indirect infringement, but the substantive counts of the complaint focus exclusively on allegations of direct infringement by Defendant (Compl. ¶¶ 92, 101, 108; Prayer for Relief ¶A). The complaint does not allege facts to support inducement or contributory infringement, such as Defendant selling saved seed to others.
- Willful Infringement: The complaint alleges that Defendant's infringement was willful, knowing, and intentional (Compl. ¶¶ 80, 93, 102). The alleged basis for this knowledge is the Technology Stewardship Agreement (TSA) Defendant signed in 2017 and the annual updates he subsequently received, which allegedly provided express notice of Plaintiff's patent rights and the prohibition on saving seed (Compl. ¶79).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can Plaintiff produce sufficient factual evidence, such as genetic tests, purchase records, or field inspections, to demonstrate that Defendant (1) planted seeds saved from a prior harvest rather than newly purchased seed, and (2) applied unapproved dicamba herbicides to the resulting crops after the legal cut-off date?
- A second issue will be one of licensed scope: Assuming the factual allegations are proven, the case will turn on whether Defendant's actions constitute unauthorized "making" of the patented inventions, placing his conduct outside the scope of the limited-use license granted by the Technology Stewardship Agreement and U.S. patent law precedents regarding self-replicating technologies.