Monsanto Co. v. Trantham

• Decision Date: 16 August 2001
• Docket Number: No. 00-2656 M1/BRE.,00-2656 M1/BRE.
• Citation: 156 F.Supp.2d 855
• Parties: MONSANTO COMPANY, Plaintiff, v. William TRANTHAM, Defendant.
• Court: U.S. District Court — Western District of Tennessee

156 F.Supp.2d 855

MONSANTO COMPANY, Plaintiff, v. William TRANTHAM, Defendant.

No. 00-2656 M1/BRE.

United States District Court, W.D. Tennessee, Western Division.

August 16, 2001.

COPYRIGHT MATERIAL OMITTED

Glen G. Reid, Jr., Wyatt Tarrant & Combs, Memphis, Douglas P. Matthews, Joel E. Cape, Wayne K. McNeil, Frilot Partridge Kohnke & Clements, New Orleans, LA, Miles P. Clements, Frilot Partridge Kohnke & Clements, New Orleans, LA, Gregory E. Upchurch, Thompson Coburn LLP, St. Louis, MO, for F/N/A Monsanto Company, f/n/a Monsanto Company, Monsanto Company, plaintiffs.

Jim Waide, Waide & Associates, P.A., Tupelo, MS, for William Trantham, defendants.

ORDER DENYING DEFENDANT'S MOTION TO SUBSTITUTE EXPERTS ORDER GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT ORDER DISMISSING DEFENDANT'S COUNTERCLAIMS

McCALLA, District Judge.

Before the Court are Defendant's Motion To Substitute David W. Parvin, Jr., As An Expert In Lieu Of Leroy Davis, filed on June 14, 2001, and Plaintiff's Motion For Summary Judgment filed on May 14, 2001. For the reasons stated herein, Defendant's Motion To Substitute Experts is DENIED. In addition, Plaintiff's Motion For Summary Judgment is GRANTED, and Defendant's counterclaims are DISMISSED.

I. Facts

This case stems from Plaintiff's patents on technology that allows a seed producer of cottonseed and soybeans seeds¹ to insert genes into the seed to make the resulting plants resistant to glysophate herbicides, such as Roundup herbicide, a product manufactured by Plaintiff. Seeds with the patented technology are called Roundup Ready®. A grower using the Roundup Ready® seed can spray his crops with the Roundup herbicide, or another glysophate herbicide, thereby killing the weeds in his field without damaging his crops. The technology can also be injected into cottonseed to make the resulting cotton plants insect repellant. Cottonseed using the technology is called Bollgard® Cotton. Cottonseed containing both versions of the technology is called Bollgard® with Roundup Ready® Cotton. Plaintiff's Roundup Ready® and Bollgard® gene technology is protected by three patents, which were issued prior to the events giving rise to this controversy. Plaintiff sells the gene technology to seed producers under a license to use the technology in the production of cottonseed and soybeans. The seed producers then sell the seed treated with the technology to retailers or to growers, both of whom must obtain licenses from Plaintiff before selling or using the seeds with the Roundup Ready® or Bollgard® technology. The license agreement does not require the seed producers or retailers to sell the seed developed with the Monsanto technology at any specific price nor does the license restrict the grower or the retailer from selling conventional types of seed.

In order for an individual farmer to use seed produced with the patented gene technology, the farmer must be licensed to use the product. Under the licensing arrangement, a grower is only allowed to use the technology in one growing season and is prohibited from saving for later planting any of the seed produced from plants grown using the purchased seed. The grower is also prohibited from selling saved seed or transferring the seed to anyone else for planting.

Although the gene technology is covered by several patents, the operative patent for the purposes of this case is U.S. Patent No. 5,352,605 (the " '605 patent"). Claims 1 and 4 of the '605 patent are the claims covering the Roundup Ready® and Bollgard® gene technology. Claims 1 and 4 of the '605 patent are as follows:

1. A chimeric gene which is expressed in plant cells comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter isolated from CaMV protein-encoding DNA sequences and a CaMV (19S) promoter isolated from CaMV protein-encoding DNA sequences, and a structural sequence which is heterologous with respect to the promoter.

4. A plant cell which comprises a chimeric gene that contains a promoter from cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter and a CaMV (19S) promoter, wherein said promoter is isolated from CaMV protein-encoding DNA sequences, and a structure sequence which is heterologous with respect to the promoter.

This gene technology can be inserted into any cotton or soybean plant variety.

Defendant is a farmer in Tipton County, Tennessee. Defendant has never obtained a license from Plaintiff to use its technology in cottonseed. In 1999, Defendant purchased, along with James Wood, approximately 900 bushels of cottonseed from the Burlison Gin, located near Covington, Tennessee. Defendant then used that seed to plant over 100 acres of land with cotton seed. Defendant applied Roundup herbicide over the cotton, some of which was killed. In 2000, Defendant used seed purchased from the Burlison Gin to plant his cotton crops and again applied Roundup herbicide to the crop.

Defendant also purchased soybeans in 1999 from a retailer named Terra Seed and Chemical Company.² Defendant planted and harvested the soybeans in 1999, and then planted his 2000 crop with soybeans saved from the previous year's harvest.

Plaintiff was granted leave by this Court to enter Defendant's land to collect samples of the cotton and soybean crops to be tested for the presence of the Roundup Ready® and Bollgard® gene technology. Plaintiff used three separate testing procedures on the cotton and soybean crops, and detected Plaintiff's patented gene technology in 93% of the cotton samples and 100% of the soybean samples.

II. Summary Judgment Standards

Under Federal Rule of Civil Procedure 56(c), summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). So long as the movant has met its initial burden of "demonstrat[ing] the absence of a genuine issue of material fact," id. at 323, 106 S.Ct. 2548, and the nonmoving party is unable to make such a showing, summary judgment is appropriate, Emmons v. McLaughlin, 874 F.2d 351, 353 (6th Cir.1989). In considering a motion for summary judgment, "the evidence as well as all inferences drawn therefrom must be read in a light most favorable to the party opposing the motion." Kochins v. Linden-Alimak, Inc., 799 F.2d 1128, 1133 (6th Cir.1986); see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

When confronted with a properly-supported motion for summary judgment, the nonmoving party "must set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); see also Abeita v. TransAmerica Mailings, Inc., 159 F.3d 246, 250 (6th Cir.1998). A genuine issue of material fact exists for trial "if the evidence [presented by the nonmoving party] is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In essence, the inquiry is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Id. at 251-52, 106 S.Ct. 2505.

III. Discussion

There are three principal issues before the Court: (1) whether to allow Defendant to substitute Dr. Parvin for Dr. Davis as an expert witness, (2) Plaintiff's motion for summary judgment on Defendant's counterclaims, and (3) Plaintiff's motion for summary judgment on Plaintiff's claims of patent infringement. The Court will address each issue in turn.

A. Defendant's Motion To Substitute Experts

As an initial matter, the Court must address Defendant's Motion To Substitute David W. Parvin, Jr., As An Expert In Lieu Of Leroy Davis, filed on June 14, 2001. Defendant moves the Court to allow him to substitute Dr. Parvin for Dr. Davis as an expert in economics to provide expert testimony on Defendant's antitrust counterclaims. For the reasons stated below, the Court DENIES this motion.

The deadline for submitting expert reports in this case was originally set for February 5, 2001. On February 1, 2001, the Court entered an order granting Plaintiff's motion to extend the deadline for disclosure of expert reports to February 28, 2001. On March 1, 2001, the Court again extended this deadline to March 7, 2001, this time at the request of Defendant. Also on March 1, 2001, the Court extended the discovery cutoff date from March 30, 2001, to April 13, 2001, and reset the deadline for filing motions for summary judgment to April 30, 2001. On April 16, 2001, the Court granted Defendant's motion to extend the deadline for expert depositions from April 16, 2001, to April 30, 2001, and reset the deadline for filing motions for summary judgment to May 14, 2001. On April 26, 2001, Plaintiff took the deposition of Defendant's expert economist Dr. Leroy Davis. The deposition demonstrated that Dr. Davis did not have sufficient knowledge of antitrust issues to provide expert testimony on Defendant's antitrust counterclaims. (Def.'s Mot. To Substitute Experts ¶ 3.) On April 30, 2001, Defendant filed a notice of withdrawal of Dr. Davis as an expert witness. Plaintiff then filed a motion for summary judgment on May 14, 2001. Six and one-half weeks after Defendant withdrew Dr. Davis as an expert witness and over three months after the extended date for disclosure of expert witnesses, Defendant filed the present motion to substitute experts.

In the motion, Defendant argues that there is no prejudice to Plaintiff by the substitution since the claims presented in this case are substantially similar to those in...