Monsanto Co. v. David, No. 4:04CV425 HEA.

CourtUnited States District Courts. 8th Circuit. United States District Court (Eastern District of Missouri)
Writing for the CourtAutrey
Citation448 F.Supp.2d 1095
PartiesMONSANTO COMPANY and Monsanto Technology LLC Plaintiffs, v. Loren DAVID, Defendant.
Decision Date25 July 2006
Docket NumberNo. 4:04CV425 HEA.

Page 1095

448 F.Supp.2d 1095
MONSANTO COMPANY and Monsanto Technology LLC Plaintiffs,
Loren DAVID, Defendant.
No. 4:04CV425 HEA.
United States District Court, E.D. Missouri, Eastern Division.
July 25, 2006.

Page 1096

Joseph C. Orlet, Matthew R. Grant, S. Christian Mullgardt, II, Adam E. Miller, Kenneth R. Heineman, Husch And Eppenberger, LLC, St. Louis, MO, for Plaintiffs.

Bruce E. Johnson, Cutler Law Firm PC, West Des Moines, IA, for Defendant.


AUTREY, District Judge.

This matter is before the Court on Plaintiffs' (Monsanto) Motion for Attorneys'

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Fees Pursuant to 35 U.S.C. § 285, [Doc. No. 200]; defendant's Motion for Amendment of April 20, 2006 Opinion, Memorandum and Order, [Doc. No. 202]; defendant's Second Motion for Amendment of April 20, 2006 Opinion, Memorandum and Order, [Doc. No. 212]; plaintiffs' Motion for Prejudgment Interest, [Doc. No. 203]; plaintiffs' Motion for Treble Damages Pursuant to 35 U.S.C. § 284, [Doc. No. 206]; plaintiffs' Motion for Bill of Costs, [Doc. No. 208], and defendant's Rule 59(e) Motion to Alter or Amend Award of Contract Attorneys' Fees and Costs in April 20, 2006 Opinion, Memorandum and Order, [Doc. No. 241].

Motion for Treble Damages Pursuant to 35 U.S.C. § 284

Monsanto seeks treble damages, because of the Court's finding that defendant's infringement was willful. Under 35 U.S.C. § 284, when there is willful patent infringement, the Court may "increase the damages up to three times the amount found or assessed." The parties urge the Court to make the determination of whether to assess enhanced damages in accordance with the factors set out in Read Corp. v. Portec, Inc., 970 F.2d 816, 826 (Fed.Cir.1992). The parties differ, however, as to the application of those factors to this case.

In making the determination, the Court must consider "factors that render defendant's conduct more culpable, as well as factors that are mitigating or ameliorating." Id. Read examined a number of cases and listed nine factors that may appropriately be considered, including:

(1) whether the infringer deliberately copied the ideas or design of another;

(2) whether the infringer, when he knew of the other's patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed;

(3) the infringer's behavior as a party to the litigation;

(4) defendant's size and financial condition;

(5) closeness of the case;

(6) duration of the defendant's misconduct;

(7) remedial action by the defendant;

(8) defendant's motivation for harm; and

(9) whether defendant attempted to conceal its misconduct.

Read, 970 F.2d at 827.

Whether defendant deliberately copied the ideas or design of Monsanto

Defendant argues that this factor does not apply in this case because it is aimed at engineers or companies that employ engineers. Defendant, however, does not support this position with any authority upon which he relies. The Court is not convinced that this factor is limited to engineers and/or companies employing engineers, rather, the factor goes to the issue of whether the infringer took the patented idea and/or design of the patent holder. In this instance, it is clear that defendant "copied" Monsanto's patented design, i.e. the herbicide resistant soybean seeds. See, Monsanto v. Ralph, Cause No 4:00CV135 RWS, Transcript of Hearing, June 17, 2003. As such, this factor weighs in favor of enhanced damages.

Whether Defendant investigated the Scope of the Patent and formed a good faith belief that it was invalid or that it was not infringed

Defendant again argues that this factor is not aimed at "a North Dakota farmer." In attempting to convince the Court that this factor does not support enhanced damages, defendant urges that he never denied that he knew Roundup Ready seed

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was patented. This argument, however, goes to the very issue of factor two. Defendant knew that the seed was patented, he was also aware that he was forbidden from saving the seed and planting the saved seed. Knowledge and scope of the patent, at least to that extent, was known to defendant, and in saving seed, defendant knew that he was infringing.

The infringer's behavior as a party to the litigation

Throughout the course of this litigation, defendant presented various renditions of how and when he planted his fields and purchased seed and herbicides. Several "mistakes" of the dates of purchases were presented in an effort to establish that defendant did not in fact save seed. However, as the Court has previously found, these "mistakes" were not credible in light of the entire record. As such, defendant's behavior as a party to the litigation favors enhanced damages.

Defendant's size and financial condition

Monsanto argues that defendant has large amounts of land and that he received substantial subsidies from the government in relation to that land and crop production. Further, Monsanto argues that defendant's size and financial condition cannot be adequately assessed because of defendant's failure to provide information regarding his finances.

Clearly defendant's financial condition will be substantially effected by the Court's ruling with respect to liability. Furthermore, it cannot be ignored that defendant operates his farming operation by himself, with the assistance of his family. Based on the information before the Court, the Court is persuaded, therefore that defendant's size and financial condition should not support a finding of enhanced damages.

Closeness of the case

After consideration of the entire record, the Court finds that this was not a "close" case. Monsanto's evidence established that defendant was infringing Monsanto's patent. Defendant's efforts in defending the case were a compilation of varying explanations attempting to "prove" he did not infringe. Monsanto presented unbiased evidence that defendant's fields were planted with Roundup Ready soybeans. Defendant consistently urged he did not, however, his explanations were not consistent. This factor supports enhanced damages.

Duration of the defendant's misconduct

Although Monsanto argues that it is clear that defendant has been infringing prior to 2003, the only evidence before the Court is what was presented and proven at trial, i.e., that the defendant's infringement was for the 2003 growing season.

Remedial action by the defendant

There is no evidence of any remedial action by the defendant. Quite the contrary, defendant's actions prior to and throughout this litigation demonstrate a that defendant took no remedial action.

Defendant's motivation for harm

The Court can only speculate that defendant's motivation for the infringement was to save money in not purchasing new seed and using saved seed. This motivation weighs in favor of enhanced damages, but there is no clear evidence to establish this in light of defendant's continued denial of wrong-doing.

Whether defendant attempted to conceal his misconduct

This factor has been established through the evidence presented by Monsanto at trial. Although defendant clearly knew he

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was not at liberty to save the seed, the evidence established that he in fact saved and replanted the seed, hence the Court's finding of willful infringement. Defendant presented various explanations of his actions, all clearly motivated by the attempt to conceal his infringement.

Based on the application of the Read factors to the evidence and record before the Court, enhanced damages are appropriate. The Court finds, however, that treble damages are not. As previously stated, defendant will be substantially effected by the damages awarded in this matter. Furthermore, pursuant to this Court's previous orders and rulings herein, defendant will be required to pay attorneys' fees, interest and costs. Even though the Court finds that enhanced damages are appropriate for defendant's willful violation of the patent, the imposition of treble damages is too harsh a remedy. Accordingly, the Court awards Monsanto enhanced damages in the amount of $10,000.

Motion for Attorneys' Fees Pursuant to 35 U.S.C. § 285

The Court may also award attorneys fees in an "exceptional case." 35 U.S.C. § 285.

The decision to award attorney fees under 35 U.S.C. § 285 in "exceptional" cases is discretionary with the trial court judge. Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.Cir.1989). "Among the types of conduct which can form a basis for finding a case exceptional are willful infringement, inequitable conduct before the P.T.O., misconduct during litigation, vexatious or unjustified litigation, and frivolous suit." Id. at 1551.

Amsted Industries Inc. v. Buckeye Steel Castings Co., 23 F.3d 374, 376 (Fed.Cir. 1994). Again, the cases have described a two-step process for determining whether to award fees: the court must first determine whether a case is exceptional, and then the court must determine whether attorney fees are appropriate. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1460 (Fed.Cir.1998). See also, Agfa Corp. v. Creo Products Inc., 451 F.3d 1366 (Fed.Cir.2006).

After considering the evidence presented and defendant's actions prior to and throughout this litigation, the Court concludes that this is an exceptional case. Monsanto's enforcement of its patent rights efforts were continuously...

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2 cases
  • Monsanto Co. v. David, No. 2007-1104.
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • 5 Febrero 2008
    ...Monsanto attorney fees, prejudgment interest, and costs, bringing the total damages award to $786,989.43. Monsanto Co. v. David, 448 F.Supp.2d 1095, 1102-03 (E.D.Mo.2006). Because we hold that the district court correctly held that the '605 patent was infringed, but find that portions of th......
  • Monsanto Co. v. Hargrove, No. 4:09-CV-1628 (CEJ)
    • United States
    • U.S. District Court — Eastern District of Missouri
    • 7 Noviembre 2011
    ...the date on which the defendants should have made royalty payments to the date of the judgment in this case. See Monsanto Co. v. David, 448 F.Supp.2d 1095 (E.D. Mo. 2006) (adopting a prejudgment interest rate of 9%, consistent with MO. REV. STAT. § 408.040(2) (2011));5 see also Domestic Fab......

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