Weed Control DJ Premature

Posted on | March 20, 2008 | No Comments

2008-1232 Monsanto v. Syngenta Crop
ED/MO 4:07-cv-543

Monsanto appeals from Judge Carol Jackson’s Order dismissing its declaratory judgment action for lack of subject matter jurisdiction and failure to state a claim.  Syngenta owns 6,586,367 directed to a weed-control process that combines a phospho-herbicide with another group of herbicides, including metolachlor.  Monsanto sells a phospho-herbicide  (ROUNDUP) and had announced a new metolachlor-based product PARRLEY.  Syngenta wrote to Monsanto warning that attempts to market these products for use together would infringe the ’367 patent.  Discussion followed about Monsanto purchasing metolachlor, but ultimately Monsanto filed this DJ action.

The court, however, dismissed, finding no "actual controversy" as required by the DJ Act or Art. III.  Applying and reviewing MedImmune, SanDisk, Sony, and Benitec, the court found that Syngenta’s actions were not a course of conduct showing a willingness or preparedness to file suit; Syngenta did not provide details (claim chart) of infringement; nor did it demand royalty payments.  The court concluded:

Nowhere in its amended complaint or in Evett’s declaration is there an allegation that Monsanto recommends to farmers that they tank mix its ROUNDUP and PARRLEY products.  Evett’s "understanding" of Syngenta’s belief about what farmers may have done or might do in the future does not satisfy MedImmune‘s immediacy and reality requirement.

Further, for Monsanto to base its DJ case on a possible claim of contributory infringement, it would have to show that PARRLEY had no noninfringing uses–a difficult argument since PARRLEY is itself an herbicide and can be used alone.

Finally, the court rejected Monsanto’s arguments based on an even newer product, DICAMBA.  Subject matter jurisdiction is based on the facts at the time of filing, so later developing facts cannot be used to establish DJ jurisdiction.

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