Federal Circuit No. 2012-11298

Plaintiffs/Appellants Organic Seed Growers & Trade Association (OSG), a coalition of framers, seed sellers, and agricultural organizations, sought declaratory judgment of non-infringement with respect to twenty-three patents owned by Defendant/Appellee Monsanto related to genetically modified herbicide resistant seeds. The United States District Court for the Southern District of New York concluded that there was no justiciable case or controversy and dismissed for lack of jurisdiction. OSG sought review, and Federal Circuit affirmed the district court's decision.

In support of its argument that an actual controversy existed, OSG claimed that "Monsanto's evident history of aggressive assertion of its transgenic seed patents against other growers and sellers" left them in fear that if they infringed those patents, they would also be sued—even if they only infringed inadvertently. OSG asked Monsanto to expressly waive any claim for patent infringement Monsanto may ever have against OSG, and to provide OSG with a written covenant not to sue. When Monsanto refused OSG's requests, OSG alleged that they had been forced to forgo growing crops that they otherwise would like to grow and they must took costly precautions to avoid contamination. However, Monsanto referred OSG to a statement posted on Monsanto's website which showed that they had no intent to sue farmers who inadvertently sold transgenic contaminated seeds when there were only trace amounts of Monsanto's patented seeds or traits involved.

OSG urged that this sufficed for declaratory judgment jurisdiction. Conversely, Monsanto argued that it had made assurances that mooted any potential controversy. The court found that Monsanto's representations "unequivocally disclaimed any intent to sue growers, seed sellers, or organizations for inadvertently using or selling trace amounts of genetically modified seeds", including seeds contaminated with up to one percent of the patented traits. While Monsanto's representations were not a covenant not to sue, they had a "similar effect" and OSG had not made allegations that they fell outside the scope of Monsanto's representations.

The Federal Circuit therefore concluded that OSG lacked an essential element of standing and the district court correctly concluded that it lacked Declaratory Judgment Act jurisdiction.

Author: Wenyuan (Bobbie) Wu (summer law clerk)