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Monsanto's '435 patent: Now you see it, now you don't

by Robert Schubert
CropChoice editor

(Thursday, July 1, 2004 -- CropChoice commentary) -- Just what is Monsanto trying to hide?

Patents are the cornerstone of the biotech revolution. Without them, there would be no profit or control. For years Monsanto, the St. Louis-based chemical and biotechnology corporation, has used the patents on its genetically engineered seed varieties as the legal basis for persecuting farmers.

But when Mississippi farmer Mitchell Scruggs recently questioned the validity of what is perhaps one of Monsanto's most valued patents in a lawsuit the company initiated, the presiding judge allowed it to remove the patent from the case. Monsanto wouldn't return calls or e-mails about this matter.

The '435 patent (No. 5,633,435) covers a gene that Monsanto engineered into canola, corn, cotton and soybeans. Armed with the gene, the crop plants are RoundUp Ready; they resist the glyphosate herbicide that Monsanto makes and markets as RoundUp. The technology allows farmers to spray RoundUp to kill weeds without harming the RoundUp Ready crops.

Monsanto sued Scruggs in September 2000 for infringing the '435 and other patents by saving seed he'd harvested from RoundUp Ready cotton and soybean plants and then sowing them the following season. Such practice violates the technology agreement requiring that farmers who choose to grow Monsanto's intellectual property must buy new seed every year from licensed dealers. (Monsanto itself doesn't sell seed, though its subsidiaries Asgrow, DeKalb and Hartz do.)

Scruggs denied the charges, but went further by attacking the validity and enforceability of '435 and four other patents. "We had the ‘435 patent in our sights," said Scruggs' lead counsel James L. Robertson, who practices law in Jackson, Miss.

In mid-May of 2002, Monsanto asked the Court to disregard everything Scruggs had done in the case up to that time, with one exception. "Monsanto was strangely silent regarding the ‘435 patent," Robertson said. "That was our first signal that Monsanto knew it had a problem."

Indeed, Monsanto's approach may be changing. In new saved seed lawsuits it has filed since 2003, the company hasn't mentioned this patent.

In the Scruggs case, court papers show that Monsanto first filed a motion to remove the patent from the lawsuit in July of 2002, supposedly to simplify matters. The request was denied in January 2003. Undaunted, Monsanto tried again the following December. This time it offered to dismiss all claims against Scruggs on the patent with prejudice and to promise -- in a binding covenant -- not to sue Scruggs again on '435. Monsanto initially filed these documents under seal, out of view of the public and the media. On June 16, the court agreed to Monsanto's motion for dismissal, ordered the company to repay Scruggs the money he'd spent on that portion of his defense, and unsealed the documents. However, Monsanto will maintain its infringement lawsuit on a second patent said to cover the RoundUp Ready trait product.

"Monsanto has been hammering farmers with this RoundUp Ready patent since 1998," Robertson said. "We’ve seen some 20 suits Monsanto has filed, citing the 435 patent as Count One. For at least five years, Monsanto has used the 435 patent to force farmers into costly settlements, preliminary injunctions and a few big damage awards, plus Monsanto’s attorney’s fees...The practice was particularly pernicious because of a doctrine holding that a patent upheld in one case is evidence of its validity in the next. For example, in January 2001 in the Scruggs case, Monsanto presented the 435 patent in Count One. Its expert told the Court how wonderful it was. Scruggs had no patent lawyer and no expert and got killed with a preliminary injunction. Three months later, Monsanto got a preliminary injunction hearing in April 2001 in St. Louis against Homan McFarling [another Mississippi farmer we've reported on recently; see http://www.cropchoice.com/leadstry.asp?recid=2540 ]. Monsanto presented the 435 patent again, just like in Scruggs, but added 'Judge, this patent has been upheld in Scruggs case, and you should consider that as evidence of its validity here' and on and on. When a farmer finally has the wherewithal to stand up and fight, Monsanto moves heaven and earth to get its important ‘435 patent out of the line of fire."

Scruggs certainly opposed the withdrawal of the ‘435 patent, but to no avail. "We had found major problems with the ‘435 patent. Monsanto’s extraordinary efforts to get it out of the case leave little doubt that the problems are serious," said Jager Smith, a Jackson, Miss. patent lawyer and a member of Scruggs' defense. "Monsanto appeared to be worried that even more problems will become publicly known if the case had gone forward with the ‘435 patent in it."

"The whole purpose of the patent system is to have a public record of patent claims, and it looks like Monsanto was trying to ‘hide the ball,’" said Gary Myers, who teaches intellectual property law at the University of Mississippi and consults the Scrugss legal team.

The Patent Act requires a patent applicant to disclose the best way to use the invention. But lawyers for Scruggs had pointed out in court filings that Monsanto’s ‘435 patent application had not disclosed that RoundUp herbicide cannot be sprayed on RoundUp Ready cotton crops after the fourth true leaf has emerged. However, in its Technology Use Guides, Monsanto does warn farmers that they can damage their RoundUp Ready crops if they spray RoundUp herbicide over the top after the fourth true leaf has appeared.

Monsanto provided the court a copy of an Application for Reissuance of the '435 patent dated July 18, 2003, Robertson said. His office checked periodically with the U.S. Patent and Trademark Office and was told it had no record of any such application to re-issue the application. Re-issue notice is supposed to be published in the PTO's Official Gazette, but it hasn't appeared there either.

This reporter called the PTO customer service line earlier this week about the matter and was told that indeed the re-issue application, numbered 10-622-201, was dated July 18, 2003. The official was curious as to why it's still in the pre-examination process. Like Robertson and his staff, I couldn't find the application on the PTO website or in the Official Gazette. I inquired at length about the matter in an e-mail to the patent office, but was told such questions couldn't be answered over e-mail.

Given all this, one might wonder why other farmers facing lawsuits didn't challenge the validity of this patent. Most likely because they don't have the money to hire the specialized lawyers and experts. But Monsanto's biotech competitors do. Why didn't they go after '435? "Maybe they figured if you can't knock out all of Monsanto's patents, what's the point," Robertson said. Instead, they all jumped into bed together. Witness the many cross-licensing agreements Monsanto has made -- DuPont/Pioneer in 2002, DowAgrosciences in 2002 and Bayer CropScience in 2003.

Indeed, Bayer has been trying to exploit the issue by advertising that farmers can spray over the top of its BXN herbicide resistant cotton product well past the fourth true leaf. BXN cotton is the only competing herbicide tolerant cotton trait product commercially available to farmers. BXN has a very small market share.

Not to be outdone, Monsanto has publicly announced that it is developing a new product -- RoundUp Ready Flex cotton -- that will not be subject to the fourth true leaf limitation. It probably won't be commercially available to farmers before 2006.

The Scruggs case is set for trial in U. S. District Court in Greenville, Mississippi beginning August 2, 2004.


For Court documents, contact:
Mr. Arlen B. Coyle
U. S. District Court
U. S. Courthouse
911 Jackson Avenue, Room 369
Oxford, Mississippi 38655-3622
Tele: 662-234-1971

Hon, W. Allen Pepper, Jr.
U. S. District Judge
U. S. Courthouse
305 Main Street, Room 329
Greenville, Mississippi 38701-4013

Source: James L. Robertson interview, court documents, and news release

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