Rhone-Poulenc Agro, S.A. v. Monsanto Co.

• Decision Date: 07 August 2006
• Docket Number: No. 1:97CV1138.,1:97CV1138.
• Citation: 445 F.Supp.2d 531
• Court: U.S. District Court — Middle District of North Carolina
• Parties: RHONE-POULENC AGRO, S.A., (Now known as Aventis Crop Science SA), Plaintiff, v. MONSANTO COMPANY, (Now known as Pharmacia Corp.), and DeKalb Genetics Corp., Defendants.

445 F.Supp.2d 531

RHONE-POULENC AGRO, S.A., (Now known as Aventis Crop Science SA), Plaintiff, v. MONSANTO COMPANY, (Now known as Pharmacia Corp.), and DeKalb Genetics Corp., Defendants.

No. 1:97CV1138.

United States District Court, M.D. North Carolina.

August 7, 2006.

COPYRIGHT MATERIAL OMITTED

Charles A. Burke, John F. Morrow, Jr., Michael E. Ray, Womble Carlyle Sandridge & Rice, Winston-Salem, NC, Francis Digiovanni, George Pazuniak, J. Kenneth Joung, Richard D. Levin, Rudolf E.

Hutz, Connolly Bove Lodge & Hutz, Wilmington, DE, Timothy G. Barber, Womble Carlyle Sandridge & Rice, PLLC, Charlotte, NC, for Plaintiff.

Adriana S. Luedke, Charles E. Buffon, David J. Ball, Jr., Deborah A. Garza, Douglas E. Phillips, Eric Bosset, John T. Delacourt, Kurt Calia, Laura B. Gasho, Robert N. Sayler, Sonya D. Winner, Covington & Burling, Ellen Dassance, Howrey Simon Arnold & White, LLP, Washington, DC, David C. Weiner, Hahn Louser & Parks, L.L.P., Cleveland, OH, James Donald Cowan, Jr., Smith Moore, L.L.P., Lyn K. Broom, Teague Rotenstreich and Stanaland, Stuart C. Gauffreau, Nexsen Pruet Adams Kleemeier, PLLC, Greensboro, NC, John F. Lynch, Arnold White & Durkee, Houston, TX, Lisa Frye Garrison, Smith Moore, L.L.P., Raleigh, NC, David M. Morris, Ellen Dassance, Lisa J. Saks, Michael E. Lee, Michael Mayer, Patricia M. McDermott, Ray S. Bolze, Howrey Simon Arnold & White, LLP, Washington, DC, Susan K. Knoll, Howrey Simon Arnold & White, LLP, Houston, TX, W. Winburne King, III, Michael E. Ray, Charles A. Burke, John F. Morrow, Jr., John F. Morrow, Jr., Womble Carlyle Sandridge & Rice, Winston-Salem, NC, Stuart C. Gauffreau, Nexsen Pruet Adams Kleemeier, PLLC, Greensboro, NC, W. Winburne King, III, Francis Digiovanni, George Pazuniak, J. Kenneth Joung, Richard D. Levin, Rudolf E. Hutz, Connolly Bove Lodge & Hutz, Wilmington, DE, Timothy G. Barber, Womble Carlyle Sandridge & Rice, PLLC, Charlotte, NC, for Defendant.

MEMORANDUM OPINION

TILLEY, Chief Judge.

This Memorandum Opinion states the findings of fact and conclusions of law in connection with the trial held in this matter from August 22 to September 1, 2000. For the reasons outlined below, the Court finds that for patent 6,040,497 Rick DeRose, Georges Freyssinet, Michel Lebrun, Bernard Leroux, and Alain Sailland are entitled to be named as joint inventors; but for patent 5,554,798 it is determined that conception had occurred prior to any of the applicants making a significant inventive contribution and that their application should be denied. The Director of the Patent and Trademark Office will be directed to add those individuals as joint inventors on the 497 patent.¹

I. PROCEDURAL HISTORY

Litigation between these parties has been extensive and complex. It has been ongoing for several years and prior proceedings include a lengthy trial on bifurcated issues. The Court's 136-page Memorandum Opinion, filed February 8, 2000 [Doc. # 538], outlines the history of the case and the rulings made in connection with the previous trial.

As will be developed in this opinion, Rhone-Poulenc S.A. (now known as "Aventis CropScience S.A." but hereinafter referred to as "RPA") and DeKalb Genetics Corporation ("DeKalb") entered into a collaboration, informally in 1990 and formally in 1991, to develop glyphosate resistant corn. RPA's scientists were to find or develop genetic material which could add the trait of glyphosate resistance and DeKalb scientists were to use the material to "transform" corn by implanting it within cells which could be regenerated into fertile plants that would pass the trait to succeeding generations. During the collaboration, RPA's scientists constructed genetic material which was used by DeKalb in the transforming of corn and the regeneration and hybridizing of plants that were resistant to large, commercial applications of glyphosate.

DeKalb contends that those glyphosate resistant plants, including that commercialized as "Roundup Ready®" Corn, are covered by the '497 and '798 patents.² The issue currently before the Court is whether one or more of the RPA scientists— Drs. Rick DeRose, Georges Freyssinet, Michel Lebrun, Bernard Leroux, and/or Alain Sailland—should be listed as co-inventors on either or both of those patents. Title 35 of the United States Code § 256 authorizes a United States District Court to correct the inventors listed on U.S. patents.

The Court held a trial from August 22 to September 1, 2000 before an advisory jury.³ The jury found that for both of the patents at issue, RPA had proven the following by clear and convincing evidence: 1) that all five individuals contributed to the conception of the claims at issue;⁴ 2) that the claims were the product of either a collaboration between RPA and DeKalb scientists or work under a common direction; 3) that the contributions of the five scientists were not insignificant in quality when measured against the dimension of the full inventions; 4) that the five individuals did more than contribute well known principles or explain concepts that are well known or the current state of the art [Doc. # 661]. More specifically, the jury found that the five individuals contributed to the '497 patent by providing DeKalb with significant DNA constructs that were successful at imparting glyphosate resistance in corn and which were included in the claimed transformation events GG25, GA21, GJ11, and FI117. In regard to the '798 patent, the jury found that the five individuals contributed to the conception of fertile transgenic corn containing DNA constructs encoding EPSP synthase that provide glyphosate resistance to corn.

The parties have submitted lengthy post-trial briefs suggesting findings of fact and conclusions of law. After reviewing the parties' filings and reviewing the evidence presented at trial, the Court now enters this Memorandum Opinion which will constitute its findings of fact, made by a clear and convincing standard, and its conclusions of law.

II. FINDINGS OF FACT

The findings relating to joint inventorship issues such as conception and inventive contributions are dependent upon an understanding of the scientific problem or problems the parties were trying to resolve. Parts A and B of this section will address the object of the parties' undertaking and the pertinent science involved.

A.

Glyphosate, manufactured and marketed by Monsanto Company⁵ as "Roundup®", is an effective and environmentally safe herbicide. Since its toxic action derives from the interruption of a plant's own food production occurring in the chloroplasts, it has no injurious effect on humans or other animals, and it biodegrades quickly in the soil. When applied in an appropriate amount, it is effective to kill all plants with green foliage. "Roundup Ready®" corn contains genetically engineered DNA making it resistant to glyphosate and enabling farmers to spray an entire field of corn, killing the weeds without adversely affecting the corn. Finding a way to impart glyphosate resistance to corn—the world's largest cash crop—was a long-term, worldwide effort of a number of researchers.

B.

Acting at the cellular level, the chemical structure of glyphosate allows it to bond in the chloroplast with EPSPS enzymes and, thereby, block the enzymes' necessary catalytic function in the plant's production of its own food.⁶ When a plant is subjected to glyphosate in amounts sufficient to prevent it from sustaining itself, it dies.

Specifically, the "string" of amino acids comprising a naturally occurring EPSPS enzyme (also referred to as an EPSPS "protein") forms a three dimensional, coil-like shape. Within the structure of the coil there is a "hole" or "cave" where, in the absence of glyphosate, a shikimate molecule and a PEP molecule fit and become bonded to form EPSP. When glyphosate is present, a molecule of glyphosate slips into the cave and bonds with the EPSPS enzyme in such a way as to block the PEP from entering. (DeRose, Trial Tr. vol. I, 113-16, 133.)

Once it was determined that glyphosate's toxicity related to bonding with EPSPS enzymes, the research objective was to find a shape for the enzyme that would allow PEP into the cave but block glyphosate. (Padgette, Trial Tr. vol IV, 579.) Modifications in the amino acid sequence of EPSPS enzymes in one type of plant would not necessarily be effective in others. (Padgette, Trial Tr. vol IV, 584.) For example, modifications which had imparted glyphosate resistance in soybeans or in tobacco had not successfully imparted it to corn, a monocot.

Modifications of an enzyme are not made at the enzyme level but to the gene which is ultimately responsible for the creation of the enzyme. (Freyssinet, Trial Tr. vol. IV, 626-27, 687.) Genes are DNA, located within the chromosomes in the nucleus of a cell. Each functioning gene controls a specific process going on somewhere within the cell. An excellent description of the fundamental biochemistry involved in this process—also supported by the testimony in this case—is found in Mycogen Plant Science, Inc. v. Monsanto Co., 61 F.Supp.2d 199 (D.Del. 1999), adopted by, Mycogen Plant Science, Inc. v. Monsanto Co., 243 F.3d 1316, 1323-24 (Fed.Cir.2001):

Organisms, like plants and animals, are made up of cells. Genes are comprised of DNA (deoxyribonucleic acid), which encodes the necessary information for cells to reproduce and to produce specific proteins.

DNA consists of two long chains or strands that wrap around each other in a shape known as a double-stranded spiral helix. Visually, a molecule of DNA resembles a twisted ladder. The sides of the ladder are connected by rungs made up of pairs of molecules called nucleotides. Four different nucleotides, each containing one of the bases adenine ("A"), guanine ("G"), cytosine ("C") and thymine ("T"), form the particular DNA make-up of genes. A particular DNA molecule can be graphically represented by listing the nucleotide sequences making up that DNA molecule.

Because of the...