Monsanto Co. v. Mycogen Plant Science, Inc.
| Decision Date | 18 August 1999 |
| Docket Number | No. Civ.A. 96-133-RRM.,Civ.A. 96-133-RRM. |
| Citation | 61 F.Supp.2d 133 |
| Parties | MONSANTO COMPANY, Plaintiff, v. MYCOGEN PLANT SCIENCE, INC., Agrigenetics, Inc., and Novartis Corporation, Defendants. |
| Court | U.S. District Court — District of Delaware |
Richard L. Horwitz, and Joanne Ceballos, Potter Anderson & Corroon, Wilmington, Delaware; John F. Lynch, Craig M. Lundell, Melinda L. Patterson, and Susan K. Knoll, Arnold, White & Durkee, Houston, Texas, for plaintiff Monsanto Company.
Josy W. Ingersoll, and Richard H. Morse, Young, Conaway, Stargatt & Taylor, Wilmington, Delaware, Daniel J. Thomasch, Richard W. Mark, Craig R. Kaufman, Ryan D. Poliakoff, Orrick, Herrington & Sutclifffe LLP, New York City, Douglas E. Olson, F.T. Alexandra Mahaney, and Jeffrey W. Guise, Lyon & Lyon, La Jolla, California, Gerald Sobel, and Joel Katcoff, Kaye, Scholer, Fierman, Hays & Handler, LLP, New York City, for defendants Mycogen Plant Science, Inc. and Agrigenetics, Inc.
Paul M. Lukoff, Prickett, Jones, Elliott & Kristol, Wilmington, Delaware, Dimitrios T. Drivas, John S. Willems, Jeffrey Oelke, and Leslie Morioka, White & Case LLP, New York City, for defendant Novartis Corporation.
This is a patent case. Plaintiff Monsanto Company owns U.S. Patent No. 5,500,365 ("the '365 patent") which is directed to a modified bacterial gene inserted into plants to make plants insect-resistant. The inventors are David A. Fischhoff and Frederick J. Perlak. In a complaint filed in March 1996, Monsanto contends Mycogen Plant Science, Inc., Agrigenetics, Inc. and Novartis Corporation infringe the '365 patent. Defendants have answered by denying they infringe the '365 patent and asserting certain affirmative defenses. Defendants also counterclaim for declaratory judgment of non-infringement, invalidity and unenforceability of the '365 patent.
In June 1998, a jury returned a verdict finding that the defendants' products literally infringe the '365 patent, but that the defendants' products are so far changed from the principle of the invention claimed in the '365 patent that they do not infringe by application of the reverse doctrine of equivalents. The jury also found that the asserted claims are invalid by prior invention because others invented the claimed subject matter before Monsanto did. The court held a bench trial on defendants' counterclaim that the '365 patent is unenforceable because of Monsanto's alleged inequitable conduct before the Patent and Trademark Office ("PTO") in prosecuting the application leading to the '365 patent.
The parties have moved for judgment as a matter of law, and Monsanto and Mycogen have moved for a new trial. The following is the court's decision on these motions and defendants' inequitable conduct claim.
The court draws the following facts from the evidence presented at the hearing construing the '365 patent's claims and at the jury and bench trials.
Plaintiff Monsanto Company is a Delaware corporation with its principal place of business in St. Louis, Missouri. Monsanto owns the '365 patent which is directed to a modified bacterial gene inserted into plants to make plants insect-resistant.
Defendant Mycogen Plant Science, Inc. is a Delaware corporation with its principal place of business in San Diego, California. Defendant Agrigenetics, Inc. is a Delaware corporation with its principal place of business in San Diego, California. Agrigenetics is a wholly-owned subsidiary of Mycogen. For convenience, the court refers to Mycogen Plant Science, Inc. and Agrigenetics, Inc. collectively as "Mycogen."
Defendant Novartis Corporation is a New York corporation with its principal place of business in Summit, New Jersey. Novartis is the product of a merger between Ciba-Geigy Ltd. and Sandoz Ltd. This merger occurred during the course of this litigation. Monsanto originally named Ciba-Geigy Corporation (Seed Division) ("Ciba Seeds") as a defendant. Ciba Seeds was an unincorporated division of Ciba-Geigy Corporation, ("Ciba-Geigy") a New York corporation with its principal place of business in Tarrytown, New York. Ciba Seeds had its principal place of business in Research Triangle Park, North Carolina. After the merger took place, the court ordered the case caption changed to reflect that Ciba-Geigy is now known as Novartis. See Monsanto v. Mycogen, D.Del.C.A. No. 96-133-RRM, order, McKelvie, J. (June 16, 1998) (D.I.474). The court uses the name Novartis in this opinion for the defendant previously known as Ciba-Geigy.
On March 19, 1996, Monsanto filed a complaint contending that defendants infringe and induce others to infringe the '365 patent.
Mycogen and Novartis answered denying the allegations. Mycogen and Novartis asserted the affirmative defense that the '365 patent is invalid due to prior invention, lack of enablement, lack of written description, indefiniteness and obviousness. Mycogen also asserted the affirmative defense that Mycogen is entitled to a license to practice the teachings of the '365 patent pursuant to a licensing agreement between Monsanto and Mycogen's predecessor corporation.
Mycogen and Novartis counterclaimed that they have not directly or contributorily infringed the '365 patent, and that the '365 patent's claims are invalid for the same reasons stated in their affirmative defenses. In addition, Mycogen counterclaimed that the '365 patent is unenforceable due to Monsanto's alleged inequitable conduct before the PTO in prosecuting the application leading to the '365 patent.
Mycogen also counterclaimed that Monsanto misappropriated Mycogen's trade secrets, breached a confidentiality and non-use agreement between Monsanto and Mycogen's predecessor, and breached an implied covenant of good faith and fair dealing owed to Mycogen. These last counterclaims arise from Monsanto's inspection of a patent application owned by Mycogen's predecessor pursuant to Monsanto's executing a confidential disclosure and non-use agreement. Mycogen's predecessor owned this patent application. Mycogen alleges that Monsanto misused proprietary information contained in this application in developing the technology embodied in the '365 patent. The application at issue has since matured into United States Patent No. 5,380,831 ("the '831 patent"). Like the '365 patent, the '831 patent is directed to a modified bacterial gene inserted into plants to make plants insect-resistant. At the time of trial, Mycogen owned the '831 patent and Agrigenetics had the right to produce its commercial embodiment.
On February 24, 1997, Monsanto moved for summary judgment on Mycogen's counterclaims of trade secrets misappropriation, breach of contract, and breach of an implied covenant of good faith and fair dealing, and on Mycogen's affirmative defense of license. On December 22, 1997, the court granted Monsanto's summary judgment motion, finding the counterclaims are barred by the statute of limitations, and that Monsanto did not grant Mycogen a license to practice the teachings of the '365 patent. The court entered an order finding in favor of Monsanto and against Mycogen on these counterclaims and affirmative defense. See Monsanto v. Mycogen, D.Del.C.A. No. 96-133-RRM, order, McKelvie, J. (December 22, 1997) (D.I.292).
On May 20, 1998, the court held the part of the trial necessary to construe disputed claim language of the '365 patent, in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). At the conclusion of the claim construction hearing, the court construed the patent claim language at issue. In this opinion, the court explains its claim construction decision in greater detail.
From June 15, 1998 to June 30, 1998, the court held a ten-day jury trial on the issues of infringement and validity. On June 30, 1998, the jury returned its verdict. The jury found that defendants' products literally infringe the four asserted claims (Claims 7, 8, 9 and 12) of the '365 patent. Although the jury found the defendants' products literally infringe the asserted claims, the jury also found that defendants' products are so far changed from the principle of the invention claimed in the '365 patent that they do not infringe the asserted claims by application of the reverse doctrine of equivalents. The jury also found that the four asserted claims of the '365 patent are invalid because scientists at Agracetus, Inc. invented the claimed subject matter before Monsanto's inventors did.
On June 29 and July 8, 1998, the court held a bench trial on whether the '365 patent is unenforceable because of Monsanto's alleged inequitable conduct before the PTO in prosecuting the application leading to the '365 patent.
As follows, the court decides all pending trial issues and post-trial motions. To better explain the court's decision on these issues and motions, the court first provides the reader with background on two scientific topics central to this case: (1) Bacillus thuringiensis, a naturally-occurring bacterium, and (2) genetic engineering.
Bacillus thuringiensis ("Bt") is a naturally-occurring bacterium found in soil. Bt possesses an unusual property: it produces a protein that kills certain crop-destroying insects. This protein is known variously as "pesticidal protein toxin," "pesticidal protein," "toxic crystal protein" or "toxin protein." When eaten by certain insects, the protein dissolves the insects' stomach linings, causing the insects to die. While the Bt protein is a natural pesticide, it is not harmful to humans, animals or beneficial insects like bees and ladybugs.
The Bt protein is particularly deadly for insects like the European corn borer. This worm-like insect feeds on corn plants, eating its way into stalks and ears. The European...
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