Summary of a Recent
Judicial
Development in
Biotechnology
Patent Infringement Claim Regarding
GM Corn Denied
Eric PendergrassNational AgLaw Center Graduate Assistant
In Monsanto v. Syngenta Seeds, Inc<.i>., 431 F.Supp.2d 482 (D. Del. 2006), the United States District Court for the District of Delaware denied a patent infringement claim made by Monsanto Co. (Monsanto) against Syngenta Seeds, Inc. (Syngenta). The court denied Monsanto's claim on the grounds that Syngenta relied upon Monsanto, the patent holder, to perform the first step in the patented process and the description of that step in the patent was not specific enough to allow for duplication without considerable experimentation.
Monsanto and its subsidiaries patented the process of creating genetically modified corn that was resistant to glyphosate herbicides, but Syngenta was able to create a similar genetically modified corn variety by building off of the methods set out in the patent. Id. at 484. After their competitor's success with creating another glyphosate resistant variety, Monsanto and its subsidiaries filed suit claiming that its patents on the process for creating these genetically modified plants were violated. Id. The United States District Court for the District of Delaware, however, disagreed and granted summary judgment to the defendants because no patent violation could be identified as a matter of law. Id.
The court explained that when a process receives the protection associated with a patent, like with the process Monsanto claims was violated, the entire process is patented, not the individual steps. Id. at 486. This restriction, referred to as the "all elements rule," protects the combination of the steps of the process, but the individual steps can still be utilized without violating the patent. Id. The court explained that in the present situation, Syngenta did not perform the first step in the process of creating the genetically modified seed, but rather took over the process after Monsanto's subsidiary completed the first step. Id. at 487. Since Syngenta was not responsible for completion of this first step, either by performing it itself or paying someone else to do it, it did not violate Monsanto's patent. Id.
The court further explained that the claims within the patent were of such a general nature that someone skilled in the art could not duplicate the process without undue experimentation. Id. at 489. The court concluded that Syngenta could not have easily relied on the information contained within the patent to develop the first step in the patented process without considerable experimentation on its own, thereby further precluding a patent violation. Id. at 490.
The case was decided on May 10, 2006; this summary was posted July 20, 2007.