Monsanto’s Roundup Ready GMO Patents Convincingly Upheld on Appeal (Again)

Monsanto v. David (Fed. Cir. 2008)

Once again, the CAFC has upheld Monsanto’s Roundup Ready Soybean patents and the company’s strategy of enforcing those patents against farmers.  The facts here are similar to the McFarling case. David  – is a big-time soybean farmer – was found to have saved a portion of his soybean seeds and planted them the following year.  David also signed Monsanto’s technology agreement, in which farmers agree not to save and re-plant.

Here, the CAFC refused to reexamine the question of whether plant genes are patentable under Section 101 and J.E.M Ag Supply. Rather, the court is precedentially bound by the McFarling and other cases to find the subject matter appropriately patentable. David’s “inconsistent testimony” allowed the court to also agree that no clear error had been made in the lower court’s factual findings in favor of Monsanto.

The court also agreed that this is an exceptional case: “It is a case of a farmer with apparent disregard for patent rights, license agreements, and the judicial process. With that in mind, as well as the record evidence of David’s inconsistent testimony, we agree with the district court that this is an “exceptional” case.” Thus affirming the award of costs and fees.

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20 thoughts on “Monsanto’s Roundup Ready GMO Patents Convincingly Upheld on Appeal (Again)

  1. 20

    I am another farmer that wants to know when some of Monsanto’s patents expire. How many years are a patent good for?

    Thanks,
    Texas Farmer

  2. 19

    Farmer David writes: “But I’ve a really big question, one that I bet you cannot answer: will the day ever come that farmers can save seed containing Monsanto’s patented transgenes because patents are supposed to expire and then be in the public domain?

    In fact, there could be a few of those patents already expired, but I don’t know of any farmers who can navigate and interpret the myriad of patents Monsanto cites on the take-it-or-leave it, a.k.a. contracts of adhesion, that farmers have to sig if they want to plant Monsanto seed.

    Monsanto is resorting to the use of serial patents and I don’t think farmers will ever be able to save any seed, they will just keep tweaking and renewing the same patents.”

    David, when a particular seed product goes off-patent, others CAN can make it; you may find it available and without the strings Monsanto previously had attached. As for the Monsanto products, if you obligate yourself contractually to not save seeds, then you (like the David of the case report) have no room to complain. If you don’t like the Monsanto terms, you are free to purchase any other soybean seed available to you. Roundup-Ready seeds are certainly not the only soybean seeds available to US farmers.

    My apologies if that sounds harsh, but there it is.

  3. 18

    Here’s what I don’t understand — why are damages around $55-$60 a bag when Monsanto sells the seeds for $7 + another $20 or $25 to the seed grower? If the cost savings with Monsanto seeds is $55-$60, why isn’t Monsanto charging that much?

    In other words, why do we see farmers claiming that the reasonable royalty is only the Technology Fee? Why don’t they ever claim, in the alternative, that the reasonable royalty is the Technology Fee plus the seed company price? That is surely established because it is the price across the nation. And it would still be better for the farmers than paying $55 or $60 per bag.

  4. 17

    My name is David, I’m a farmer, and no, I’ve never saved any of Monsanto’s seed containing its patented transgenes.

    But I’ve a really big question, one that I bet you cannot answer: will the day ever come that farmers can save seed containing Monsanto’s patented transgenes because patents are supposed to expire and then be in the public domain?

    In fact, there could be a few of those patents already expired, but I don’t know of any farmers who can navigate and interpret the myriad of patents Monsanto cites on the take-it-or-leave it, a.k.a. contracts of adhesion, that farmers have to sig if they want to plant Monsanto seed.

    Monsanto is resorting to the use of serial patents and I don’t think farmers will ever be able to save any seed, they will just keep tweaking and renewing the same patents.

  5. 16

    This David suit brings to mind Einstein’s expression that “doing the same thing over and over again and expecting a different result is insanity.” The Federal Circuit for one is obviously losing patience (and willing to award attorneys fees and costs to Monsanto) over the continuing effort to test Monsanto’s Round Up Ready technology and associated Technology License.

  6. 15

    BTW, the patent map (IP Vision) you posted with this thread is a useful aid in seeing the strategic landscape for the patent in question. Cool

  7. 13

    MaxDrei,

    The court upheld the validity of the patent, which is another way of saying that the court ruled that the patent was not shown to be invalid. You’re right in that courts do not rule that patents are valid, merely not invalid. However the phrase “upheld” or “upheld the validity” is in very common usage.

    link to google.com

    —-

    “last word, sucka!”

    It is inexcusably rude to hijack the identity of those few of us who do not post using pseudonyms for whatever reason. Please stop.

  8. 12

    Dumb question from Europe: When did US courts start to find valid any patent claim issued by the USPTO?

    I thought courts considered the petitions that 1) a claim is infringed and 2) a claim is invalid. A finding that not even one of the attacks on validity is proven, up to the governing “clear and convincing” standard of proof, is not the same, is it, as finding the claim valid? The court has simply found the petition not powerful enough to strike down one of those impeccable claims duly and lawfully issued by the USPTO.

  9. 9

    With respect, I’m quite aware of the current caselaw. Construing claims to sustain their validity only applicable where “[a] court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Phillips, 415 F.3d at 1327 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)).

    I don’t believe that ambiguity was an argument in this case. I am also not particularly concerned with the label for a section of the opinion, when the arguments clearly are not infringement arguments.

  10. 8

    Well, I guess the court got it wrong too by labeling the section to which you refer as “Infringement.”

    Also you should re-read Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed Cir. 1999) (“[C]laims should be so construed, if possible, as to sustain their validity.”). Just because 112 is mentioned doesn’t make it a holding on validity.

  11. 7

    Loverboy, the proper question is (1) where does David dispute the meaning of any claim term, that being the essence of claim construction, and (2) where does David dispute that the construed claims literally read on his soybean plants, that being the essence of infringement.

    “I don’t infringe” because of failures of written description, enablement, best mode, statutory subject matter, and the like are defenses based on invalidity. The court discusses them and rejects them, resulting in a finding of infringement. I have quoted the most relevant sections, and pointed to the pages of the opinion. I cannot imagine what else you require.

  12. 5

    I disagree again.

    As we all can see, there is more than a passing reliance on section 112. The argument is a full scope of enablement argument akin to that in Sitrick v. Dreamworks. Since we all know that the scope of a claim is not limited by the scope of enablement, we are analyzing validity rather than infringement. The fact the the Fed. Cir. chose to repeat David’s argument and supposed consequence does not change the analysis.

    Also, there’s the second argument based on 35 U.S.C. 101.
    From page 7: “Contrary to David’s arguments on appeal, nothing in J.E.M. invalidates or limits the ’605 patent or any utility patent on a gene sequence in a seed or a plant. In fact, in J.E.M., the Supreme Court explicitly refused to limit the extent of patentable subject matter: “we decline to narrow the reach of § 101 where Congress has given us no indication that it intends this result.” J.E.M., 534 U.S. at 146-47.”

    I see a validity argument. Perhaps you should as well.

  13. 4

    The key phrase is “thus, the ’605 patent is limited to the gene sequence and does not cover the plant containing such a gene.” Yes, there’s reliance on 112, but the argument (at least as phrased by the court) is that the claim is limited to something and shouldn’t cover the alleged infringing activities.

    Dude is correct. No where in the opinion does the court uphold the validity of the patent.

  14. 3

    I disagree.

    Opinion at page 6: “David argues that the written description of the ’605 patent lacks the specificity that would be required of a patented plant variety under the utility patent statute; thus, the ’605 patent is limited to the gene sequence and does not cover the plant containing such a gene. David argues that J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001), stands for the proposition that plants can only receive patent protection under the Plant Patent Act of 1930, 35 U.S.C. §§ 161-164 (the “P.P.A.”), the Plant Variety Protection Act of 1970, 7 U.S.C. § 2321 (the “P.V.P.A.”), or under a utility patent on a plant variety.”

    The first argument is a validity challenge under 35 U.S.C. 112 as applied under 35 U.S.C. 101, 161, and 162. The second argument is a validity challenge under 35 U.S.C. 101 in view of 35 U.S.C. 161. Neither of the arguments rest on a jury-determinable question of fact, so it is improper to characterize the result as merely a decision concerning infringement.

  15. 2

    “Soybeans reproduce asexually and thus, the saved seeds were genetic copies of the originals”.
    Soybeans reproduce sexually, but if the line is homozygous (both ‘parents’ have 2 copies of the gene – no segregation) for the gene, all progeny will get it also.

    (‘parents’ because soybean can self-pollinate)

  16. 1

    with all due respect, the title of your post is highly inaccurate. There was no validity holding in the case. Therefore, the court did not uphold any patent.

    This case decided infringment and damages. It decided nothing about the patent’s validity.

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