Talk:Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)

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Courtney

The following facts are undisputed, except where otherwise specified. Plaintiff developed and obtained a patent for a chimeric gene which, when expressed in soybeans seeds, enables the seeds to withstand certain insecticides. Roundup Ready™ soybean seeds containing plaintiff's patented chimeric gene were commercially introduced in 1996, and have been sold pursuant to a limited use license. This license prohibits purchasers from saving harvested seed and replanting that seed to produce a second crop.

In 2001, Good Farm employees replanted seed saved from the company's 2000 purchases, rather than purchasing additional seed. After discovering that defendants had done so, plaintiff filed this suit for patent infringement. Subsequent to filing suit, plaintiff inspected and conducted samples on crops produced by defendants in 2001. These samples were tested and the overwhelming majority (488 out of 498 samples) were shown to contain plaintiff's patented biotechnology. The few soybean stems that were not shown to contain plaintiff's technology were dried stems and, according to plaintiff, could not be sufficiently tested. In addition, other samples were taken and were confirmed to contain plaintiff's patented technology.

Good Farm's citation to the U.S. Patent and Trademark's Office (“USPTO”) Utility Examination Guidelines is likewise unavailing. These guidelines were developed by the USPTO to aid its personnel in ensuring that patent applications meet the “utility” requirement of 35 U.S.C. § 101. 66 FR 1092. Within this document, the USPTO states that “isolated and purified DNA molecules” are entitled to patent protection. Id. at 1093. However, the context in which this statement was made makes clear that the “isolated and purified” requirement applies only to genes that naturally occur in nature, as opposed to chimeric genes. See id. (responding to comment that naturally occurring genetic sequences should not be patentable). The document further clarifies that a DNA molecule isolated from its natural environment is patentable if “it can be used to produce a useful protein,” as is the case with plaintiff's chimeric gene. See id. at 1094. Read in whole, the USPTO guidelines stand for the proposition that “[i]f a patent application claims a composition of matter comprising DNA, and the claims meet all the statutory requirements of patentability, there is no legal basis for rejecting the application.” Id. Therefore, defendants' reliance on the guidelines is misplaced. (a) Plant Variety Protection Act Good Farm first argues that the Plant Variety Protection Act precludes plaintiff from enforcing its patent against farming operations that save and replant seed. However, this argument has been rejected by several courts including the U.S. Supreme Court. See J.E.M. AG Supply, Inc. v. Pioneer Hi-Bred Int'l, Inc., 534 U.S. 124, 606 (2001) ( “J.E.M.” ) (stating that the PVPA “does not limit the scope of [35 U.S.C.] § 101's coverage.”); McFarling, 302 F.3d at 1299 (“The right to save seed of plants registered under the PVPA does not impart the right to save seed of plants patented under the Patent Act.”); Scruggs, 249 F.Supp.2d at 756 (“[T]he PVPA is no impediment to the enforceability of ... patents.”). Indeed, two of these authorities concluded that the PVPA is no bar to the enforcement of plaintiff's '605 patent against farms where employees saved and replanted seed. See McFarling, 302 F.3d at 1299; Scruggs, 249 F.Supp.2d at 757.

  • 7 Good Farm attempts to distinguish J.E.M. on its facts, arguing that its holding applies only to patents for plant varieties. But the Supreme Court's holding as to the superiority of the utility patent right over PVPA protection was not dependent upon the type of patent sought in that case. Rather, its holding was a generally applicable legal conclusion that “utility patent holders receive greater rights of exclusion than holders of [PVPA] protection.” J.E.M., 534 U.S. at 143; see McFarling, 302 F.3d at 1299 (applying J.E.M. in case involving Monsanto's '605 patent). Accordingly, Good Farm's cross-motion for partial summary judgment on this ground is denied.

(b) Contract-Related Defenses At the outset, the Court notes that Good Farm's contract-related arguments are presented in a convoluted manner. For example, in connection with its post-sale limitation argument in its opposition and cross-motion papers, Good Farm states “[t]he question of whether a patent holder's claimed license use restriction is enforceable against a user of a patented item is not controlled by any federal statute, but is instead controlled by principles of state contract law.” Def. Opp. at 17. Yet, throughout the remainder of its argument, Good Farm relies upon Federal Circuit cases discussing the federal patent doctrines of repair/reconstruction and implied license. See id. (citing Hewlett-Packard Co. v. Repeat-O-Tyle Stencil Mfg. Corp., Inc., 123 F.3d 1445, 1451 (Fed.Cir.1997), and Kendall Co. v. Progressive Med. Tech., Inc., 85 F.3d 1570 (Fed.Cir.1996)). Then, in a subsequent section, Good Farm relies on state law and the Uniform Commercial Code to make what appear to be post-sale limitation and exhaustion-like arguments. See Def. Opp. at 18-25. Given the muddled nature in which Good Farm's arguments were presented, the Court restructures and characterizes their arguments in a manner more consistent with the applicable legal authorities.

Furthermore, Good Farm failed to argue that no non-infringing uses of the seeds exist. Indeed, such an argument could not be made because the seeds could be used for one planting season without infringing upon plaintiff's patent. Therefore, Good Farm's implied license defense is rejected and its cross-motion for partial summary judgment on this ground is denied.

By reproducing the purchased seed to create more seed, Good Farm manufactured plaintiff's patented technology without having first obtained permission.