DCT
4:23-cv-00087
Bayer CropScience LP v. Glass
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bayer CropScience LP (Delaware) and Monsanto Technology LLC (Delaware)
- Defendant: Danny Glass d/b/a Glass Farms (Missouri)
- Plaintiff’s Counsel: Thompson Coburn LLP
- Case Identification: 4:23-cv-00087, E.D. Mo., 03/25/2024
- Venue Allegations: Venue is alleged to be proper as the Defendant resides and operates his farming business in Pemiscot County, Missouri, within the Eastern District of Missouri, and because the parties allegedly agreed to this district as the exclusive forum in licensing agreements.
- Core Dispute: Plaintiff alleges that Defendant’s agricultural practices, specifically the saving of harvested, patented soybean seeds for replanting and the subsequent application of unapproved dicamba herbicides to those crops, infringe patents related to genetically modified, herbicide-tolerant seed technologies.
- Technical Context: The technology at issue involves genetically engineering soybean plants to tolerate specific herbicides, namely glyphosate and dicamba, which simplifies weed management for farmers and is a cornerstone of modern industrial agriculture.
- Key Procedural History: The complaint alleges that the Defendant entered into a Technology Stewardship Agreement (TSA) in 2012, which serves as a limited-use license for the patented seed technology. The complaint also provides extensive background on the regulatory history of dicamba-based herbicides, including challenges to their EPA registration and the imposition of use restrictions, framing the alleged application of unapproved herbicides as a threat not only to Plaintiffs’ intellectual property but also to their broader business and regulatory standing.
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 allegedly signed Technology Stewardship Agreement |
| 2018-04-17 | ’945 Patent Issue Date |
| 2020-01-01 | First alleged season of infringement by Defendant |
| 2024-03-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
No probative visual evidence provided in complaint.
U.S. Patent No. 9,944,945 - Soybean event MON89788 and methods for detection thereof, issued April 17, 2018
The Invention Explained
- Problem Addressed: In developing transgenic crops, it is necessary to screen numerous potential "events" (a specific insertion of foreign DNA into a plant's genome) to identify one that provides optimal and stable expression of the desired trait (e.g., herbicide tolerance). Once a commercially viable event is selected, it becomes critical to have a definitive method to detect its presence for regulatory approval, intellectual property enforcement, and quality control in breeding (ʼ945 Patent, col. 2:3-25).
- The Patented Solution: The patent claims the specific soybean transformation event MON89788, which contains a gene conferring tolerance to glyphosate herbicide. The invention is not just the gene itself, but its unique insertion into the soybean genome. This insertion creates novel DNA sequences at the junction of the inserted transgene and the native soybean DNA. These junction sequences serve as a unique molecular fingerprint, allowing for the precise detection of the MON89788 event and distinguishing it from all other soybean varieties ('945 Patent, col. 7:15-24; Fig. 1).
- Technical Importance: The creation and patenting of a specific transgenic event with unique, detectable junction sequences provides the basis for commercializing a genetically modified crop trait with strong intellectual property protection.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3, 5, and 7 (Compl. ¶88).
- Independent Claim 1:
- A transgenic soybean plant, seed, or plant part
- comprising a DNA molecule
- wherein the molecule comprises SEQ ID NO: 3
- flanking a glyphosate tolerant 5-enolpyruvyl-3-physphoshikimate synthase (EPSPS) coding sequence.
- The complaint does not explicitly reserve the right to assert other claims for this patent.
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: The patent addresses the challenge of making a bacterial enzyme, dicamba monooxygenase (DMO), which degrades the herbicide dicamba, function effectively inside a plant cell. The cellular machinery that DMO requires to function (specifically, ferredoxin) is located within an organelle called the chloroplast. Therefore, the DMO enzyme must be transported into the chloroplast. While this is typically achieved by attaching a signaling sequence called a chloroplast transit peptide (CTP), the patent notes that some CTPs result in the DMO protein being improperly processed after transport, leading to reduced enzyme activity and creating potential regulatory complications ('729 Patent, col. 5:27-67).
- The Patented Solution: The invention identifies specific CTPs that, when genetically fused to the DMO enzyme, not only ensure its transport into the chloroplast but also allow for its correct and complete processing into a single, fully active form. This efficient targeting and processing results in robust and predictable dicamba tolerance in the transgenic plant ('729 Patent, col. 6:8-23).
- Technical Importance: This technology enables the creation of commercially viable dicamba-tolerant crops by ensuring the herbicide-degrading enzyme is localized correctly and functions at maximum efficiency within the plant cell.
Key Claims at a Glance
- The complaint asserts independent claims 23 and 29, and dependent claim 30 (Compl. ¶97, 104).
- Independent Claim 29 (infringed by saved seed):
- A dicamba tolerant seed
- comprising a DNA encoding a chloroplast transit peptide of SEQ ID NO:1
- operably linked to a DNA encoding dicamba monooxygenase.
- Independent Claim 23 (infringed by herbicide application, through its dependency on claims 16, 5, and 1):
- A method for controlling weed growth
- comprising a plant or seed containing a DNA construct (which includes a promoter operably linked to a DNA molecule encoding the CTP of SEQ ID NO:1 and a DMO enzyme)
- the method comprising applying an effective amount of dicamba herbicide to the crop growing environment.
- The complaint does not explicitly reserve the right to assert other claims for this patent.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are not commercial products but rather the Defendant's alleged farming activities conducted during the 2020, 2021, and 2022 soybean seasons (Compl. ¶80-81). These activities are twofold:
- The saving, replanting, and growing of soybean seeds harvested from a previous crop, which allegedly contain Plaintiffs' patented Roundup Ready 2 Xtend® and/or XtendFlex® technologies (Compl. ¶1, 80).
- The application of "unapproved and unlabeled dicamba herbicides" to the soybean crop grown from these saved seeds (Compl. ¶2, 81).
Functionality and Market Context
- The complaint alleges that by saving and replanting seeds, the Defendant obtains the benefits of the patented herbicide tolerance traits without paying the required license fee associated with purchasing new seeds each season, as allegedly required by a Technology Stewardship Agreement (TSA) (Compl. ¶1, 19, 78).
- The alleged application of unapproved dicamba formulations is positioned as not only an act of patent infringement but also as conduct that contributes to off-target herbicide drift incidents. The complaint alleges these incidents harm Plaintiffs' business by prompting stricter EPA regulations on their approved, low-volatility dicamba products, thereby diminishing their value to law-abiding farmers (Compl. ¶60-62, 76).
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... | Defendant allegedly made, used, or sold saved soybean seed. | ¶88 | col. 7:15-18 |
| ...comprising a DNA molecule comprising SEQ ID NO: 3 flanking a glyphosate tolerant...EPSPS coding sequence. | The saved seed allegedly embodies the Roundup Ready 2 Yield®, Xtend®, and/or XtendFlex® technology, which the complaint asserts contains the patented MON89788 event and its unique DNA junction sequence. | ¶88 | col. 7:46-51 |
’729 Patent Infringement Allegations (Saved Seed)
| Claim Element (from Independent Claim 29) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A dicamba tolerant seed... | Defendant allegedly made, used, or sold saved soybean seed having Roundup Ready 2 Xtend® and/or XtendFlex® technology, which confers dicamba tolerance. | ¶97 | col. 3:32-34 |
| ...comprising a DNA encoding a chloroplast transit peptide of SEQ ID NO:1 operably linked to a DNA encoding dicamba monooxygenase. | The saved seed allegedly embodies the patented technology, which contains the specific genetic construct of the claimed CTP linked to the DMO enzyme. | ¶97 | col. 5:10-13 |
’729 Patent Infringement Allegations (Herbicide Application)
| 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 [containing the claimed CTP-DMO construct]... | Defendant allegedly grew soybean plants containing the Roundup Ready 2 Xtend® and/or XtendFlex® technology, which the complaint asserts embodies the claimed CTP-DMO construct. | ¶104 | col. 4:6-8 |
| ...comprising applying to the crop growing environment an amount of dicamba herbicide effective to control weed growth. | Defendant allegedly applied "unapproved and unlabeled dicamba herbicides" to the aforementioned soybean crop. | ¶81, 104 | col. 4:8-11 |
Identified Points of Contention
- Evidentiary Questions: The core of the dispute may be factual. A primary question is what evidence Plaintiffs can produce to demonstrate that the specific seeds saved and planted by the Defendant in fact contained the MON89788 genetic event claimed in the ’945 Patent and the specific CTP-DMO construct claimed in the ’729 Patent. This may require discovery and genetic testing of physical samples from Defendant's farm.
- Scope Questions: Regarding the alleged infringement of method claim 23 of the ’729 Patent, a legal question may arise regarding the scope of the phrase "controlling weed growth." It raises the question of whether the claim, which enables a system of weed control, is infringed by the application of an unapproved herbicide, or if the claim's scope could be interpreted as being limited to agronomically and legally sanctioned applications of herbicide.
V. Key Claim Terms for Construction
The Term: "operably linked" (from Claim 29 of the ’729 Patent)
- Context and Importance: This term defines the required functional relationship between the claimed chloroplast transit peptide (CTP) and the dicamba monooxygenase (DMO) enzyme. For the invention to work as described, the CTP-encoding DNA must be connected to the DMO-encoding DNA in a way that results in a single fusion protein that can be correctly targeted and processed. The construction of this term could be central if the genetic construct in the accused seeds differs from the patent's examples.
- Intrinsic Evidence for a Broader Interpretation: The specification describes creating "chimeric DNA molecules" and "fused" sequences, which may support an interpretation that "operably linked" covers any genetic arrangement that results in the transcription and translation of the intended CTP-DMO fusion protein (’729 Patent, col. 6:63-65).
- Intrinsic Evidence for a Narrower Interpretation: The patent's stated purpose is to overcome the problem of improper processing from prior art CTPs. One could argue that "operably linked" should be construed more narrowly to require a linkage that not only produces a fusion protein, but one that is also "efficiently" and "correctly processed," as this is the novel advantage taught by the patent (’729 Patent, col. 6:8-12, col. 5:46-51).
The Term: "controlling weed growth" (from Claim 23 of the ’729 Patent)
- Context and Importance: The infringement allegation for this method claim is based on the application of an allegedly illegal, unapproved herbicide. The definition of "controlling weed growth" is therefore critical. Practitioners may focus on this term because its interpretation will determine if the claim covers acts that are not regulatorily sanctioned.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the method in functional terms: applying "an amount of dicamba herbicide effective to control weed growth" (’729 Patent, col. 4:9-11). This language focuses on the physical result of the application, which may support an interpretation that is agnostic to the regulatory status of the specific herbicide formulation used.
- Intrinsic Evidence for a Narrower Interpretation: The patent describes the invention in the context of a commercial agricultural system. A party could argue that the term implies a standard, lawful agronomic practice and should not be construed to cover an illegal act that, as the complaint itself alleges, has negative off-target consequences and is contrary to the stewardship required for the technology.
VI. Other Allegations
Willful Infringement
The complaint alleges that the infringement was willful based on Defendant's alleged pre-suit knowledge of the patents and the infringing nature of his conduct. This allegation is supported by claims that the Defendant signed a Technology Stewardship Agreement (TSA) in 2012 and received annual updates, which allegedly provided notice of the patents and expressly prohibited both saving seed and applying unapproved herbicides (Compl. ¶77-79). The complaint further alleges that statutory notice was provided on the labeling of seed bags (Compl. ¶71-72).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on two central questions for the court:
- A primary issue will be one of evidentiary proof: can Plaintiffs produce definitive genetic evidence from Defendant's farm to establish that the seeds saved and planted contained the precise, patented MON89788 genetic "fingerprint" claimed in the ’945 Patent and the specific CTP-DMO construct of the ’729 Patent?
- A key legal question will be one of claim scope: does a method claim for "controlling weed growth" by applying an herbicide to a genetically tolerant plant encompass the application of any formulation of that herbicide, including those that are unapproved and allegedly illegal, or is the scope of patent protection implicitly limited to the lawful, regulated use for which the technology was designed?