Organic Seed Farmers & Trade Assn. v. Monsanto Co.

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Patents, Infringement
  • Date Filed: 06-10-2013
  • Case #: 2012-1298
  • Judge(s)/Court Below: United States Court of Appeals for the Federal Circuit
  • LexisNexis Citation: 2013 U.S. App. LEXIS 11601
  • Westlaw Citation: 2013 WL 2460949
  • Full Text Opinion

There is no judicable case or controversy where a patent holder makes binding assurances that it will not sued a party for patent infringement and that party fails to allege circumstances that place it beyond the scope of those assurances.

Opinion (Dyk): The Organic Seed Growers & Trade Association ("the Association") filed a lawsuit seeking a declaratory judgment of non-infringement and invalidity for 23 patents owned by Monsanto Co. ("Monsanto") The patents cover genetically modified seeds developed by Monsanto that are widely use in agriculture. The Association sued claiming its members where concerned their fields would inadvertently become contaminated with Monsanto seeds and that they would then be sued for patent infringement. After the suit was filed, Monsanto referred the Association to its website, which states that it is not Monsanto's policy to sue “where trace amounts of [its] patented seeds or traits are present … as a result of inadvertent means.” It also sent a letter to the Association indicating that, because the Association's members do not use or sell transgenic seeds, it was “unaware of any circumstances that would give rise to any claim for patent infringement or any lawsuit against” the Association's members. To present a judicial claim, a party must show that there is a substantial controversy of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. The District Court determined that there was no substantial controversy between the parties and granted Monsanto's motion to dismiss. The Association appealed. The Federal Circuit found that when considered together, the statement on Monsanto's website and the letter sent to the Association “unequivocally disclaim any intent to sue” and while not amounting to a covenant not to sue, Monsanto's reliance on those representations in this case will judicially estop it from later asserting a contrary position against the Association. Because any future suit would be precluded by judicial estoppel, the Federal Circuit AFFIRMED the District Court's DISMISSAL.

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