In a June 10, 2013 decision, the Federal Circuit affirmed Judge Naomi Reice Buchwald’s dismissal of a patent non-infringement and invalidity declaratory judgment action because there was not justiciable controversy. At issue in the action were twenty-three of Monsanto’s patents for “Roundup Ready” genetically modified seeds (that were also the subject of a recent Supreme Court decision). A “coalition of farmers, seed sellers, and agricultural organizations” had sued Monsanto out of a concern that their crops or seeds could inadvertently become contaminated with Monsanto’s genetically modified seeds, and that they could therefore be accused of infringement. As a result of this concern, some of the plaintiff’s used costly “buffer zones” to protect their crops from contamination and others refrained from planting certain crops altogether. After the lawsuit was started, the plaintiffs asked Monsanto to “‘expressly waive any claim for patent infringement [Monsanto] may ever have against [the plaintiffs] and memorialize that waiver by providing a written covenant not to sue.’” Monsanto declined to provide a formal covenant not to sue, but it did point the plaintiffs toward a statement on its website that it has never been Monsanto’s intention to sue over trace amounts of seeds that are present through inadvertent means. Monsanto’s counsel also assured the plaintiffs’ counsel that “Monsanto is unaware of any circumstances that would give rise to any claim for patent infringement or any lawsuit against your clients. Monsanto therefore does not assert and has no intention of asserting patent-infringement claims against your clients.” Judge Buchwald dismissed the action, holding that “these circumstances do not amount to a substantial controversy and . . . there has been no injury traceable to defendants.”
The Federal Circuit affirmed Judge Buchwald’s dismissal of the action. The Court first assumed “(without deciding) that using or selling windblown seed would infringe any patents covering those seed, regardless of whether the alleged infringer intended to benefit from the patented technologies.” The Court further found that given the ubiquity of the genetically modified seeds, inadvertent contamination was likely. Thus, according to the Court, infringement by the plaintiffs’ was a possibility. The Court nevertheless found that Monsanto’s representations of its intention not to sue, while not a constituting a formal covenant not to sue, were sufficient to moot any potential claim against the plaintiffs.
