Organic Seed Growers & Trade Ass'n v. Monsanto Co.
| Decision Date | 24 February 2012 |
| Docket Number | No. 11 Civ. 2163(NRB).,11 Civ. 2163(NRB). |
| Citation | 851 F.Supp.2d 544,103 U.S.P.Q.2d 1623 |
| Court | U.S. District Court — Southern District of New York |
| Parties | ORGANIC SEED GROWERS AND TRADE ASSOCIATION; Organic Crop Improvement Association International, Inc.; Ocia Research and Education Inc.; the Cornucopia Institute; Demeter Association, Inc.; Center for Food Safety; Beyond Pesticides; Navdanya International; Maine Organic Farmers and Gardeners Association; Northeast Organic Farming Association of New York; Northeast Organic Farming Association/Massachusetts Chapter, Inc.; Northeast Organic Farming Association of New Hampshire; Northeast Organic Farming Association of Rhode Island; CT Nofa; Northeast Organic Farming Association of Vermont; Rural Vermont; Ohio Ecological Food & Farm Association; Florida Certified Organic Growers and Consumers Inc.; Southeast Iowa Organic Association; Northern Plains Sustainable Agriculture Society; Mendocino Organic Network; Northeast Organic Dairy Producers Alliance; Midwest Organic Dairy Producers Alliance; Western Organic Dairy Producers Alliance; Canadian Organic Growers; Manitoba Organic Alliance; Peace River Organic Producers Association; Union Paysanne; Family Farmer Seed Cooperative; Sustainable Living Systems; Global Organic Alliance; Food Democracy Now!; Family Farm Defenders Inc.; Farm–to–Consumer Legal Defense Fund; Weston A. Price Foundation; Michael Fields Agricultural Institute; Fedco Seeds Inc.; Adaptive Seeds, LLC; Sow True Seed; Southern Exposure Seed Exchange; Mumm's Sprouting Seeds; Baker Creek Heirloom Seed Co., LLC; Comstock, Ferre & Co., LLC; Seedkeepers, LLC; Siskiyou Seeds; Countryside Organics; Wild Garden Seed; Cuatro Puertas; Seed We Need; Interlake Forage Seeds Ltd.; Alba Ranch; Wild Plum Farm; Gratitude Gardens; Richard Everett Farm, LLC; Philadelphia Community Farm, Inc.; Genesis Farm; Chispas Farms LLC; Kirschenmann Family Farms Inc.; Midheaven Farms; Koskan Farms; California Cloverleaf Farms; North Outback Farm; Taylor Farms, Inc.; Jardin Del Alma; Ron Gargasz Organic Farms; Abundant Acres; T & D Willey Farms; Full Moon Farm, Inc.; Common Good Farm, LLC; American Buffalo Company; Radiance Dairy; Quinella Ranch; Nature's Way Farm Ltd.; Levke and Peter Eggers Farm; Frey Vineyards, Ltd.; Bryce Stephens; Chuck Noble; Larhea Pepper; Paul Romero; Brian Wickert; Bruce Drinkman; Murray Bast; and Donald Wright Patterson, Jr., Plaintiffs, v. MONSANTO COMPANY and Monsanto Technology LLC, Defendants. |
OPINION TEXT STARTS HERE
38,825, 39,247. Cited.Daniel B. Ravicher, Esq., Sabrina Y. Hassan, Esq., Public Patent Foundation, Benjamin N. Cardozo School of Law, New York, NY, for Plaintiffs.
Seth P. Waxman, Esq., Gregory H. Lantier, Esq., Rachel L. Weiner, Esq., Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., for Defendants.
Plaintiffs bring this lawsuit against defendants Monsanto Company and Monsanto Technology LLC (together “defendants” or “Monsanto”), seeking declaratory judgments that plaintiffs are not infringing various of defendants' patents, that those patents are invalid and unenforceable, and that, regardless, defendants would be entitled to no remedies against plaintiffs. Presently before us is defendants' motion to dismiss for lack of subject matter jurisdiction.
For the reasons set forth herein, defendants' motion is granted.
The relevant facts are largely uncontested. Plaintiffs are farmers and seed businesses, both organic and non-organic, as well as related membership organizations. Plaintiffs do not want to use, grow crops raised from, or sell transgenic seed, which is seed that has had genetic code of another species introduced to it. Defendants develop, manufacture, license, and sell chemicals and agricultural biotechnology, including transgenic seed.
Defendants produce, in particular, transgenic seed known as “Roundup Ready,” which is resistant to the herbicide glyphosate, the active ingredient in defendants' product “Roundup.” This resistance trait and related technologies are covered by a variety of patents held by defendants.2
Growers who wish to use defendants' seeds must obtain limited-use licenses to do so. Because subsequent generations of plants grown from these seeds will also contain the glyphosate-tolerance trait, these licenses authorize growers to use the seed only to grow a single crop; growers are not authorized to harvest and plant the second-generation seed produced from the original planting, or to sell seeds containing the patented trait outside authorized channels of distribution.
Despite these restrictions, some unlicensed—and unintended—use of transgenic seeds is inevitable. Like any other seeds, transgenic seeds may contaminate non-transgenic crops through a variety of means, including seed drift or scatter, crosspollination, and commingling via tainted equipment during harvest or post-harvest activities, processing, transportation, and storage. Seed businesses and farmers may, at some expense, test their seeds and crops to ensure that no contamination has occurred, and non-transgenic farmers may establish buffer zones between themselves and farmers using transgenic seed in order to reduce the risk of cross-transmission.
No plaintiffs claim that contamination has yet occurred in any crops they have grown or seed they have sold. However, one plaintiff farmer claims that seed he considered purchasing in 2010 was contaminated with genetically engineered seed, , and one plaintiff seed distributor claims that it received shipments contaminated with genetically modified seed in each of 2005, 2008, 2009, and 2010, . Neither plaintiff asserts that the offending seeds were covered by defendants' patents.
Contamination can theoretically affect non-transgenic farmers by lowering the price for which their crops may be sold and potentially resulting in rejected shipments. While there is no evidence in the record that any farmer has ever been decertified as organic by the U.S. Department of Agriculture National Organic Program (the “NOP”) because of seed contamination, we do not foreclose that hypothetical possibility. According to the NOP, however, “[o]rganic certification is process based.” As a result, “[i]f all aspects of the organic production or handling process were followed correctly, then the presence of a detectable residue from a genetically modified organism alone does not constitute a violation of this regulation.” ( Id.) 3
Additionally, inadvertent growth of crops with patented traits may potentially subject a farmer to liability for patent infringement. While defendants investigate hundreds of possible patent infringers each year, between 1997 and April 2010 they filed just 144 lawsuits to enforce their patent rights against farmers. Defendants, moreover, have never filed a patent-infringement suit against a certified organic farm or handling operation over the presence of patented traits in its operations, and they stated at oral argument that they have never sued a party who did not “want to make use of the traits that are manifested in [defendants'] transgenic products.” (Oral Arg. Tr. at 10:2–9; see also id. at 34:23–35:14.) Indeed, defendants have expressly declared that it is not their policy “to exercise [their] patent rights where trace amounts of our seed or traits are present in [a] farmer's fields as a result of inadvertent means.” (Chachkin Decl., Ex. 0, Monsanto's Commitment: Farmers and Patents.) Nevertheless, plaintiffs allege without specification that defendants have accused certain non-intentional users of Monsanto's seed of patent infringement and threatened them with litigation. No plaintiffs claim to have been so threatened.
On March 29, 2011, plaintiffs filed a complaint seeking declaratory judgments that twenty-three of defendants' patents are invalid, unenforceable, and not infringed by plaintiffs, and that, regardless, defendants would be entitled to no remedy against plaintiffs. That same day, defendants republished on their blog their commitment not to exercise their patent rights over inadvertently acquired trace amounts of patented seed or traits. (FAC, Ex. 2, Monsantoco, “PUBPAT Allegations Are False, Misleading and Deceptive” (Mar. 29, 2011).)
Shortly thereafter, plaintiffs wrote to defendants and emphasized a point asserted in their filing: “none of [the plaintiffs] intend[s] to possess, use or sell any transgenic seed, including any transgenic seed potentially covered by Monsanto's patents.” (FAC, Ex. 3, Letter from Daniel B. Ravicher, Public Patent Found., to Todd Zubler, Esq., WilmerHale (Apr. 18, 2011).) Nonetheless, the letter professes a fear of being sued by defendants for patent infringement and “request[s] that Monsanto expressly waive any claim for patent infringement it may ever have against [plaintiffs] and memorialize that waiver by providing a written covenant not to sue.” ( Id.) Plaintiffs asserted that defendants' failure to respond to the letter would make it “reasonable for [plaintiffs] to feel they would be at risk of having Monsanto assert claims of patent infringement against them should they ever become contaminated by transgenic seed potentially covered by Monsanto's patents.” ( Id.)
In response to plaintiffs' letter, defendants reiterated that it is not their policy to exercise their patent rights against farmers whose fields inadvertently contain trace amounts of patented seeds or traits. In particular, the reply letter referenced plaintiffs' claim that they do not have any intention of using any transgenic seed and noted that, “[t]aking [that] representation as true, any fear of suit or other action is unreasonable, and any decision not to grow certain crops...
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