Summary of a Recent
Judicial Development in
Biotechnology

Patent Infringement Suit Transferred to
Federal District Court In Missouri

Gaby R. Jabbour
National AgLaw Center Research Assistant

In a motion brought by Monsanto Company (Monsanto) to transfer an action brought by Bayer Bioscience, N.V. (Bayer) to the United States District Court for the Eastern District of Missouri, the United States District Court for the District of Delaware has granted Monsanto's motion, holding that Monsanto had met its burden of demonstrating that transfer was appropriate. Bayer Bioscience N.V. v. Monsanto Co., No. CA. 03-023, 2003 WL 1565864, at *2 (D. Del. Mar. 25, 2003).

On January 10, 2003, Bayer, a foreign corporation headquartered in Ghent, Belgium, plaintiff, filed an action in the federal district in Delaware alleging that Monsanto had engaged in an activity that infringed on one of its patents. See id. at *1. The patent at issue "involve[d] a corn product that ha[d] been genetically modified to express a particular 'Bt' gene that makes the corn resistant to a type of Coleopteran insect known as the corn rootworm." Id. Several hours after Bayer filed its action, Monsanto, a Delaware corporation with its headquarters in St. Louis, Missouri, defendant, filed a declaratory judgment action against Bayer for noninfringement in the federal district court in Missouri. See id.

Monsanto and Bayer were already "engaged in litigation in the Eastern District of Missouri regarding four other patents assigned to Bayer." Id. These four patents also "relat[ed] to crops genetically engineered with a 'Bt gene,' purportedly rendering the crops toxic to a class of insects known as Lepidopteran insects." Id.

Monsanto filed a motion to transfer the action "to the United States District Court for the Eastern District of Missouri pursuant to 28 U.S.C. § 1404(a)." Id. Bayer argued that its action had been filed first, and therefore the court should not transfer its "first-filed action to the Eastern District of Missouri." Id.

The court noted that "[s]ection 1404(a) provides that for the convenience of the parties and the witnesses, in the interest of justice, the court may transfer this action to any other district where it might have been brought." Id. It added that while it did not dispute that the action filed by the plaintiff was first-filed "albeit only by several hours," it concluded that "the 1404(a) factors nevertheless weigh in favor of litigating this dispute in Missouri." Id.

The court stated that "[w]hen considering a motion to transfer, the court must determine whether on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum" by using "a 'multi-factor balancing test' embracing not only the statutory criteria of convenience of the parties and the witnesses and the interests of justice, but all relevant factors, including certain private and public interests." Id. at *2.

The court explained that the private interests "include the plaintiff's choice of forum; the defendants' preference; whether the claim arose elsewhere; and the location of books and records, to the extent that they could not be produced in alternative forum." Id. It added that the relevant public interests are "the enforceability of the judgment; practical considerations that could make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; and the public choice of the fora." Id.

Based on its consideration of these factors, the court determined that "Monsanto has met its burden of demonstrating that [the] transfer is appropriate." Id. The court relied on the following considerations to reach this conclusion:

(1) while the defendant is a Delaware entity, and should reasonably expect to litigate in this forum, there is little connection between Delaware and this action or the parties; (2) no party maintains operations in Delaware; (3) the parties are large and international organizations with substantial assets; (4) because the parties are litigating apparently related issues in Missouri, travel time and convenience in the aggregate would be substantially increased with a transfer of forum; and (5) any disparity in court congestion is not so great as to weigh against transfer due to the 'mirror image' action currently pending in the Eastern District of Missouri.

Id.

The court concluded that "given the on-going relationship that the Eastern District of Missouri has with the same parties, and the same, or related, patent or patents, . . . the public and private interests are sufficient to tip the balance of convenience strongly in favor of [the] transfer." Id.

The case was decided on March 25, 2003; this summary was posted June, 2003