*1 PTSD, reports themselves cannot his COMPANY, an informal claim for an MONSANTO
be considered Plaintiff-Appellee, depen- to alcohol in benefits due increase 3.157(b)(1) § Again, under medi- dence. v. only an infor- report cal will be considered report[ “when such ] relate[s] mal claim SCRUGGS, Scruggs, Mitchell Eddie disability treatment of a examination or LLC, Supplies, Farm & previously has which service-connection Venture, Farm Joint HES 3.157(b)(1); § established.” see Craw- been Farms, Inc., Farms, Inc., MES (1993) Brown, Vet.App. 35-36 ford Farms, Inc., Defendants-Appel- MHS case, the instant there has (stating “[i]n lants. prior not been allowance or disallow- claim compensation ance 04-1532, 05-1120, No. 04-1121. formal Therefore, pension. the veteran’s hos- Appeals, United States Court of pitalization report accepted could not be Federal Circuit. claim an informal under 38 C.F.R. 3.157.”); Adjudication see also Proce- Aug. 2006. M21-MR, III, dure Manual Rewrite: Part ii, Chapter D Subpart Section “Claims Reports
Based on of Examination or Hos- (2004)
pitalization” (stating A “Note: no- hospitalization may
tice of not suffice anas claim if a
informal veteran that is [service disability hospitalized for one
connected] disability
for a different for which service granted.”).
connection has not been Be- there is no evidence
cause that service
connection had been claimed or established dependence prior
for alcohol to the 1988
reports, say we cannot the Board misinter- 3.157(b)(1).
preted §
Finally, as to MacPhee’s assertion that misinterpreted
the Veterans Court Rules
10 and of its Rules of Practice and
Procedure, we discern no error reversible
in the court’s decision.
Conclusion herein,
For the reasons set forth
judgment of the Veterans Court is
AFFIRMED. *4 Waxman, P. Picker-
Seth Wilmer Cutler LLP, Washington, ing Hale and Dorr DC, With argued plaintiff-appellee. R.Q. Paul him on Wolfson. the brief Joseph C. the brief was Of counsel on Orlet, LLC, Eppenberger, Opinion by Husch & St. for the court filed Circuit Louis, Judge Missouri. MAYER. Robertson, Wise, Carter, James L. Child Concurring in part dissenting Jackson, P.A., of Caraway, Mississippi, & part opinion Judge filed Circuit DYK. argued defendants-appellants. With MAYER, Judge. Circuit
him on Meredith B. the brief was Aden. Mitchell Scruggs; Scruggs; Eddie Jones, Baker, Donelson, James L. Bear- LLC; Supplies, Farm & man, Berkowitz, P.C., & Caldwell Jack- Venture; Farms, Inc.; Farm Joint HES son, Mississippi for amicus curiae Shea Farms, Inc.; Farms, MES and MHS Inc. Leatherman Riverfield Farms. With d/b/a (collectively “Scruggs”) appeal judg- Bradley him on the brief was S. Clanton. ment of the States United District Court Christopher Murphy, P. Arent Fox for the Northern District of Mississippi PLLC, DC, Washington, for amicus cu- (“Monsan- granting Company’s Biotechnology Industry riae The Organiza- to’s”) summary motions for judgment tion. him the Amy With brief was E.L. invalidity infringement, Mon- *5 Schoenhard. santo Scruggs, F.Supp.2d Co. v. 342 584 (N.D.Miss.2004) (“Summary E. Anthony Judgment Figg, Figg Rothwell Ernst /”); P.C., antitrust violations and DC, & Manbeck mis- Washington, of for use, Monsanto Co. v. Scruggs, amicus curiae Delta and Pine Land Com- (N.D.Miss.2004) (“Sum- F.Supp.2d pany. With him on the brief were Jeffrey II”); mary Judgment L. and common Ihnen and Barbara law Webb Walker. Of alia, of, Hafter, counterclaims counsel inter tortious on the brief Jerome inter- C. ference, Dunbar, competition, unfair Phelps Jackson, and of of invasion Mississippi. privacy, Co. v. Scruggs, Monsanto Kushner, Gary Jay Hogan & Hartson (N.D.Miss.2004). F.Supp.2d 602 Addition- L.L.P., DC, of Washington, for amicus cu- ally, Scruggs appeals trial court’s or- riae American Seed Trade Association. granting der a permanent Monsanto in- With him on the brief were Lorane F. junction. Co. v. Scruggs, Monsanto No. Hebert Ryan and D. Shadrick. (N.D.Miss. 2004) 3:00CV161-P-D Nov. McLemore, Sondra Simpson Special As- (order granting permanent injunction). sistant Attorney General the State of affirm, vacate, We and remand. Jackson, Mississippi, of Mississippi, for amicus curiae State Mississippi. With Background her Hood, on the brief was Jim Attorney 5,352,- Monsanto owns U.S. Patent No. General. (“the patent”), ’605 which is directed III, Joseph Mendelson Center for Food toward a synthetic insertion of gene con- Safety, DC, of Washington, for amicus cu- sisting of a cauliflower 35S mosaic virus riae Safety. Center for Food (“CaMV”) promoter, a protein sequence of interest, signal, and a stop plant into DNA Patterson,
Mark R. Fordham University to create resistance. herbicide Monsanto Law, York, School of York, of New New also 5,164,316; owns Patent Nos. U.S. for amicus curiae American Antitrust In- 5,196,525; 5,322,938 and (collectively “the stitute. patents”),
McPherson which are directed MAYER, BRYSON, DYK, Before and toward insect resistant traits. The Judges. Circuit expand upon McPherson patents the ’605 seeds, It ways, including planted purchased disclo- ment. in and several promoter. harvesting soybeans cotton, and sure of enhanced CaMV 35S after an generation retained the new of seeds. Its technology used Monsanto subsequent crops planted were with those develop her- glyphosate the ’605 to seeds, retained as as with seeds well ob- cotton, soybeans and sold bicide resistant generations tained from subsequent (R) soybeans cot- Ready and Roundup crops. glyphosate ton. herbicides One (R) Roundup Ready plants are which the investigated Scruggs’ Monsanto activi- by which sold Roundup, resistant is is also filed suit infringement ties and used ’605 Monsanto. Monsanto patents. the ’605and McPherson trial pat- the McPherson combination with preliminary injunction, pro- issued a court (“Boll- trait cotton develop ents stacked hibiting Scruggs from further sale and use (R) cotton”), Ready which gard/Roundup containing patented of seeds and cer- glyphosate resistant herbicide biotechnology. Scruggs answered with tain insects. pat- and federal state antitrust claims Specifi- ent misuse affirmative defenses. its biotechnol- began licensing cally, it asserted that Monsanto (“seed violated sellers”); it ogy companies to seed Act, 1-2, §§ the Sherman 15 U.S.C. (R) Ready technology licensed tying purchase purchase to the seed starting Bollgard/Roundup Roundup through grower agree- license (R) starting in technology cotton ments, grower agreements, incentive growers allow 1998. The licenses seed partner agreements, as seed well biotechnology incorporate the Monsanto *6 by tying Bollgard the and produce Roundup to germplasm into their (R) traits in cotton It also asserted seeds. Ready Bollgard/Roundup Ready and the (R) Monsanto violated of Sher- section cer- impose seeds. The licenses also by unlawfully monopolizing man Act sellers, including seed tain restrictions on to a relevant mar- attempting monopolize may not sell seed companies seed Additionally, Scruggs asserted com- ket. technology grow- containing Monsanto’s priva- of mon law counterclaims of invasion grower signs one of Mon- ers unless the with cy, trespass, tortious interference agreements; santo’s and that seed relations, abuse of contract business by may growers grow sold used and/or so be conversion, nuisance, process, strict liabili- only single crop. a commercial tort, (1) competi- unfair ty negligence, and growers on seed include: restrictions tion. con- only to use seed requiring growers biotechnology for taining Monsanto’s infringement sought denied and Scruggs (“exclusivity provi- planting single crop a ’605 invalidity of of the and a declaration sion”); (2) of prohibiting transfer or re-use moved patents. Monsanto for McPherson biotechnology for re- containing seed the summary judgment infringement, on (3) (“no replant policy”); prohibit-
planting defenses, and antitrust and misuse (“no re- ing experimentation research or law counterclaims. the common (4) policy”); requiring payment search and injunc- preliminary moved to vacate the a “technology of fee.” tion, summary judg- and cross-moved summary Roundup Ready Monsanto’s motions both ment. purchased (R) Scruggs’ granted, were and mo- soybean Bollgard/Roundup judgment seeds injunction (R) Ready compa- preliminary tion to vacate cotton seeds from seed a nies, The trial court then issued signed licensing agree- was denied. but never injunction judg- granting and a final permanent In Monsanto’s motion for sum- Proceedings damages judgment infringement, on were mary ment. of the trial ju- this have appeal. We relied stayed pending Scruggs’ court admissions with 1295(a). (1) to 28 U.S.C. pursuant risdiction to: respect purchasing its (R)
Roundup Ready soybeans and Boll- (R) (2) cotton; gard/Roundup Ready its Discussion Monsanto; to obtain from failing a license the trial grant We review court’s sum (3) saving soybean and cotton mary Caterpillar de novo. See judgment seed for future planting. Summary Judg- Indus., Inc. v. 387 F.3d Sturman I, 342 F.Supp. ment at '593-94. Addition- (Fed.Cir.2004). Summary judgment ally, pointed the court to Monsanto’s scien- “if deposi appropriate pleadings, showing Scruggs’ soybean tific tests tions, to interrogatories, and ad answers crops and cotton contained Monsanto’s file, affidavits, together if missions on with patented technology. at 594. Id. any, genuine there is no issue as show that (1) Scruggs argued fact that: neither any moving material and that the Mon- (R) party judgment biotechnology (Roundup Ready to a santo’s is entitled as matter 56(c). soybeans regard Bollgard/Roundup of law.” Fed.R.Civ.P. “With cotton) (R) only to ‘materiality,’ disputes plants those over nor in Scruggs’ affect might patents-in-suit; facts that the outcome fields were covered (2) the governing promoter lawsuit under substantive sequences in Monsanto’s preclude summary judgment.” law will biotechnology sequences did not match the Phillips Corp., (3) OKC Oil Co. claimed in the patent; ’605 and Mon- Cir.1987). (5th 265, 272 test disregarded santo’s results be should complying accepted
for not with scientific rejected standards. trial court those Infringement I. arguments. Scruggs’ affirmative defenses Infringement prop occurs when (1) infringement lack prop- included: claim erly reads on the accused construed (2) patents-in-suit; er notice *7 Powder product. Atlas Co. v. E.I. du Pont implied existence an license to use the Co., 1569, De & 750 & Nemours F.2d (3) technology; Monsanto the doctrine of (Fed.Cir.1984). case, In this (4) exhaustion; patent violation of the (R) Ready its Roundup must show that (5) Act; Variety Plant patent Protection (R) Bollgard/Roundup Ready and seeds misuse; (6) patent invalidity. the by are covered ’605 McPherson and/or respect implied With to the license affir- patents Scruggs and that used those seeds defense, mative the trial court found that in a way patent that violated Monsanto’s Scruggs had expectation “no reasonable rights. infringe Affirmative defenses to they that patented could use ment Monsanto’s noninfringement, include unenforce biotechnology they ability, invalidity unless first (e.g., failing satisfy to obtained a the and, therefore, implied written license” had no li- description require or enablement Next, ments), Id. at misuse, cense. 598. the court patent see 35 U.S.C. found the Corp. Seiffhart, patent inapplicable see 803 F.2d exhaustion defense Senza-Gel (Fed.Cir.1986), and the existence of an because Monsanto never made an unre- license, implied see sale biotechnology. Carborundum Co. v. stricted of its Id. at Innovations, Equip. Molten Finally, rejected Metal F.3d 598-99. it Scruggs’ re- (Fed.Cir.1995). maining affirmative defenses. in the deletions the argues patent that fails because Scruggs again appeal, On (R) in Roundup Ready DNA are the en- plants, read on its claims do not patent the of the DNA inserted into region hancer showing that test results that Monsanto’s DNA, in soybean cotton and not the con- crops and cotton soybean Scruggs’ Accordingly, the Round- promoter region. (R) Roundup Ready Monsanto’s tained (R) by up Ready seeds are covered disregard- be technology should Bollgard patent. ’605 ed, doctrine patent exhaustion that implied had an that applies, and Mon- argues appeal also that license. showing Scruggs’ that santo’s test results crops contained soybean and cotton that argument to the respect With (R) Roundup Ready Bollgard technol- do not read in the ’605 the claims disregarded failing to ogy should be (R) seeds, Scruggs Ready Roundup on the However, it fails negative a control. use that the CaMV 35S specifically argues any contradicting point evidence (R) Ready in sequence Roundup promoter results, which establish Monsanto’s and shorter is different from soybeans patented contain crops biotech- from the CM4-184 promoter than the merely presents hypothetical It nology. pat in the ’605 of the CaMV noted strain suggest that Monsanto’s test situations ent; therefore, not the ’605 does could flawed. Given the evi- results be (R) Roundup Ready biotechnolo cover the record, hypotheses dence in the alone are However, in the ’605 specification gy. genuine to create a issue of insufficient strains of that different states material fact. invention. The may be used CaMV brief, Scruggs attempts In its in the the promoter fact portion incorporate by reference (R) soybeans differs from summary memorandum supporting mentioned CaMV strain CM4-184 to the trial court. judgment it submitted by a few doz patent specification ’605 to “deficien arguments pertain also Those therefore, is, dispari not en nucleotides Monsanto, testing done cies” Moreover, Scruggs appeal does not ties. . However, by incorporation, such argument claim construction the trial court’s summary judgment to a by referring as covering promoter “a the ’605 legal analysis, is a violation memoranda for group con selected from the [] element 28(a)(6). Graphic P. R.App. Fed See cauliflower mosaic sisting of either 35S Inc., Prods., Med. Corp. v. Utah Controls cauliflower mosaic promoter virus or 19S Thus, ...” 591. Id. at promoter *8 Therefore, are deemed arguments those patent em finding that the court’s ’605 perusal a casual shows waived. But even generally, from CaMV ploys promoter the they the same reasons they would fail for strain, just that the CM4-184 and not point to to Scruggs’ failure failed below: addition, the promoter In must stand. issue of materi- raising genuine evidence (R) seeds matches Roundup Ready used al fact. about the sequence information published incorporat argues purchased is that it promoter, 35S which CaMV and in an unrestricted by patent, into the ’605 Monsanto seeds ed reference sale, entitled by patent. Final that it was therefore is covered therefore fash in an unencumbered promoter that the use those seeds ly, Scruggs’ argument (R) patent exhaus the doctrine of is shorter ion under Roundup Ready seeds exhaustion doc sale/patent The first by the ’605 tion. promoter covered than 1336 that the
trine establishes
unrestricted first
cause the seed distributors had no authori
ty
to confer a
by
patentee
patented
right
sale
his
article
to use Monsanto’s
biotechnology, they could not
patent rights
any
in the
confer
exhausts his
article.
Mallinckrodt,
Inc.,
sort of license to use the seeds. See Aro
Medipart,
Inc. v.
See
Mfg.
Top
Co. v. Convertible
700,
(Fed.Cir.1992);
Replacement
976 F.2d
701
see also
Co.,
476,
1526,
377 U.S.
84
12
Elecs.,
Elecs., Inc.,
S.Ct.
Inc. v. Bizcom
LG
453
(1964) (a
L.Ed.2d 457
seller cannot
(Fed.Cir.2006).
confer
F.3d 1364
The doctrine of
rights
implied
broader
via an
than
license
inapplicable
exhaustion is
in this
holder).
it
granted by
has been
case. There was no unrestricted
be
sale
by
growers
cause the use of the seeds
seed
Validity
II.
obtaining
was conditioned on
a “
satisfy
To
the written descrip
Furthermore,
from Monsanto.
‘first
requirement
tion
of 35
U.S.C.
sale’ doctrine
exhaustion of the
DNA,
pertaining
inventions
a patent
right
implicated,
not
is
the new seeds
provide
detailed,
must
“sufficiently
rele
grown
original
from the
batch had never
i.e.,
vant
identifying characteristics
...
been sold.” See Monsanto v. McFarling,
structure,
complete
partial
physi
other
1291,
302 F.3d
With
cal
properties,
chemical
and/or
functional
out the actual sale of the
genera
second
coupled
characteristics when
with a
Scruggs,
tion
seed
there can be no
known or disclosed correlation between
patent exhaustion. The fact that a patent
structure,
or some combina
function
technology
ed
can replicate itself does not
tion of such characteristics.” Enzo Bio-
give purchaser
right
replicated
use
Inc.,
Inc.,
chem
v. Gen-Probe
323 F.3d
copies of the technology. Applying the
(Fed.Cir.2002) (citation
956,
omitted).
subsequent
first sale doctrine to
genera
However,
specific
neither a
DNA sequence
of self-replicating technology
tions
would
a biological deposit
nor
required
to meet
rights
eviscerate the
holder.
a written description requirement
if the
argues
also
that it had
biological material
is known
readily
implied
an
license to use Monsanto’s tech
available to the public. Id. at 965. “[Ref
In
nology.
order to
implied
establish an
specification
erence in the
deposit
to a
in a
license,
the “circumstances of the sale
public depository, which makes its con
‘plainly
must
indicate that
grant
of a
tents accessible ...
constitutes an ade
”
license should be inferred.’ Met-Coil
quate
description ...”
[written]
Id. The
Sys.
Unlimited,
Corp.
Inc.,
v. Korners
description requirement
written
helps to
684,
(Fed.Cir.1986)
(citations
F.2d
ensure that the patent applicant actually
omitted);
Elecs., Inc.,
see also LG
453 invented
subject
the claimed
matter and
F.3d at 1366. It is undisputed that Mon
in possession
patented
of the
invention
requires
santo
all
place
licensees to
a no
at the time of filing. Univ. Rochester v.
bags
(R)
tice on all
Co.,
(Fed.
916,
G.D. Searle &
stating
seeds
that the seeds are
covered
Cir.2004),
rehearing denied 375 F.3d
Patents,
U.S.
purchase
cert denied 543 U.S.
125 S.Ct.
*9
license,
conveys
seeds
no
and that a
(2004).
person skilled
287, 308,
550,
experi-
without undue
use the
U.S.
68 S.Ct.
III. Misuse Antitrust/Patent may Antitrust laws be violated Under section of the Sherman Act, if holder’s conduct falls monopolization prohibited. outside unlawfúl violation, protection afforded laws. To establish a section one must *11 charged monopo- provision, replant policy, had a no a no re- party that the prove policy, payment in a relevant market and ac- search and the of a ly power tech- by anti- power nology Additionally, maintained that li- quired grower or fee. its. by compe- practices instead of competitive agreements cense between 1996 and 1998 Skiing Aspen the merits. Co. grower tition on v. stated that if a chose to gly- use Highlands Skiing Corp., U.S. Aspen phosate herbicide connection with 2847, (R) L.Ed.2d 467 seeds, 105 S.Ct. Roundup Ready grow- then the (1985). (“1996 Roundup Roundup er must use re- striction”). time, Roundup At that may Patent misuse be found only glyphosate approved by herbicide violation, antitrust where there is no even Agency the Environmental Protection ... misuse is a broader “[p]atent because (R) Roundup Ready use with seeds. Mon- antitrust violation.” C.R. wrong than [an] grower agreements give santo’s incentive Inc., Bard, Sys., 157 F.3d Inc. v. MS participating growers seed additional vol- (Fed.Cir.1998). “policy of the untary they if benefits choose to use misuse, prevent is ‘to patent doctrine Roundup exclusively crops herbicide using patent from to obtain patentee containing Roundup Monsanto’s technolo- beyond that which inures market benefit ” gy. partner seed agreements Monsanto’s right.’ Monsanto statutory patent require growers seed who choose to use a 1336, 1341 McFarling, 363 F.3d Co. glyphosate Roundup. herbicide to use (Fed.Cir.2004) Mallinckrodt, 976 (quoting II”)). (“Monsanto The trial court stated In order F.2d at 704 replant policy subject no was not to chal- competitive pat behavior to amount lenge misuse, under the antitrust laws because the “impermissibly ent one must policy identical had been found valid and scope patent grant of the broaden[] rights within its under the laws in Thus, Id. anticompetitive with effect.” which, v. McFarling, the cases the restriction is “[i]n .Co. 1336, 1343 The court also
reasonably
patent grant,
within the
technology
imposed by
found
fees
patent misuse defense can never succeed.”
scope of
Monsanto were within the
its
Moreover,
Id.
owner other
“[n]o
rights. Finally, the court found
...
be denied
wise entitled to relief
shall
policy
that the no research
and Monsanto’s
illegal
guilty
relief or deemed
of misuse
partners
refusal to allow seed
to stack the
patent right by reason of
extension of the
(R)
Ready
transgenic
trait with
Roundup
having
his
...
refused to license or use
”
developed by competitors
traits
to be “field
....
any rights
to the
35 U.S.C.
271(d).
which fall within the
of use restrictions
are,
patent monopoly
scope
[that]
trial,
that Monsan-
At
asserted
therefore,
Summary Judgment
lawful.”
practices
to’s commercial
violate federal
II,
F.Supp.2d at 575.
laws, and constitute
and state antitrust
addressed
specific practices
specifically
it
The trial court
patent misuse. The
.
in-
claims under section
grower
Scruggs’
attacked were Monsanto’s seed
antitrust
Act, applying
per
both
se
programs,
partner
centive
its
license
of the Sherman
seed
In
analyses.
per
rule of reason
its
se
agreements,
grower
agree-
its
ments,
court found that
the 1996
alleged
analysis,
refusal
to sell
(R)
per
Roundup restriction did not constitute
cotton seeds without
only
tying; Roundup
li-
was the
Bollgard
grower
illegal
trait. Monsanto’s
se
exclusivity EPA-approved product for use over
agreements
cense
include an
*12
(2)
attempted
from 1996 to tion or
Roundup
monopolization;
seeds
be-
top of the
there was no federal antitrust
only the licenses taken out dur-
cause
viola-
and
tion,
alleged
the
Roundup
had the
herbicide
state antitrust violations
years
ing those
summary judg-
could also be dismissed on
court also found Monsan-
restriction. The
(3)
ment;
and
inapplica-
misuse was
agreements
incentive
to be
grower
to’s
pat-
ble because Monsanto did not use its
they simply give
because
legal restraints
impermissibly
scope
ents to
broaden the
of
Roundup
growers an incentive
choose
patent grant.
its
pur-
and do not coerce them into
herbicide
Next,
it.
the court found that
chasing
appeal, Scruggs
On
reasserts
Scruggs
to demonstrate that Mon-
failed
exclusivity provision,
replant
that
the
no
buy
partners
santo forced seed
Round- policy,
technology
payments
fee
re
up in order to obtain a license. The court
quired
licensing agree
Monsanto’s
agreements
partner
stated that if the seed
growers
ments with seed
illegal
are
anti-
tie, per
did amount to a
treatment was
se
competitive practices. Monsanto has a
appropriate.
Finally,
not
it found that
right
making,
to exclude others from
us
Scruggs
prove
illegally
failed to
Monsanto
ing,
selling
patented plant
its
technolo
(R)
Ready
trait
Roundup
tied the
to the
Brulotte,
gy,
29-30,
see
379 U.S. at
and its
trait in cotton. The court
Bollgard
stated
no replant policy simply prevents purchas
that
claim
support
the record did not
the
of
using
patented
ers
the seeds from
the
“engineered
shortage
that
a
of biotechnology
biotechnology
when that
single trait cotton seed which ‘forced’
copy
makes a
of itself. This restriction
”
growers
buy
stacked trait seed ....
therefore is a valid
of
rights
exercise
at
Id.
579.
Furthermore,
under
the
laws.
of
analysis,
Under its rule
reason
the
uniform technology
Monsanto’s
fee
es
trial court
found the
also
evidence
fee,
sentially
royalty
a
charging
the
presented
respect
tying
with
to the
claims
scope
which is also within
Scruggs argued
insufficient.
that Monsan-
grant. Lastly,
policy
the no research
is a
binding
to’s
of dealers in downstream mar-
field of use restriction and is also within
imposes
kets to the same restrictions it
protection
laws.
(in
clause”)
partners
its seed
party
“third
argues
also
on appeal that Mon-
was a violation of section 1 of the Sherman
purchase
santo ties the
of its seed to the
Act,
grower
as were the
agree-
incentive
purchase
Roundup through
li-
grower
ments. The court found that
the third
restrictions, grower
agree-
cense
incentive
party clause was a valid restriction be- ments, and
partner agreements.
seed
It
valid,
cause limited use licenses are
unlawfully
asserts that Monsanto
ties the
party
the third
clause simply amounted to Roundup Ready trait to
Bollgard
trait
Additionally,
limited use.
the court held
point
cotton seeds.
It does not
to suffi-
grower
agreements
incentive
were
cient evidence to establish that Monsanto’s
valid;
provisions
merely
were
financial behavior
illegal
tying.
constitutes
incentives
competi-
not foreclose
“d[id]
grower
program
incentive
optional,
tion in a substantial share of the relevant
Additionally,
not coerced.
Monsanto’s
market(s).”
product
Id. at 581.
partners
buy
seed
were not forced to
(1)
The trial court
Roundup
partner
also found that:
under the
agree-
seed
Scruggs’
Furthermore,
evidence was insufficient with re- ments.
no
there is merit to
spect
proving
a violation of
argument
illegally
section
that Monsanto
tied
monopoliza-
Sherman Act for
containing
unlawful
the sale of cotton
the Roundup
(R)
containing
contrary.
to the sale
evidence to the
Ready
gene
The record
trait; Monsanto sells cotton with-
competitors
Bollard
shows
sought
Bollgard trait and there is no
regulatory approval
out the
and obtained
and that
engineered
did,
that Monsanto
they
evidence
when
Monsanto modified its con-
(R)
cotton.
shortage
accordingly.
tracts
In. this unusual set-
*13
ting,
the rule of
applies
reason
to the
Lastly,
that
Scruggs asserts
patent
defense of
misuse based on the
the trial court’s decision should be sent
alleged tying arrangement, and under the
analysis,
for a separate patent
back
misuse
reason,
rule of
Scruggs
required
is
to show
proving patent
of
mis
because the burden
challenged
that the
contracts had an actual
However, patent
use is lower.
misuse cov
competition.
adverse effect on
See U.S.
only activity falling
pat
ers
outside of the
Comm’n,
Philips Corp. v. Int’l Trade
424
grant,
Scruggs
point
ent
did not
to
(Fed.Cir.2005).
1179,
F.3d
1185
any activity falling
pat
outside Monsanto’s
did not do so
therefore
cannot use the
ent.
challenged
provisions
contract
aas defense
argues
The dissent
that Federal Trade
against Monsanto’s patent
infringement
v. Indiana Federation
Commission
of
Therefore,
claims.
Monsanto’s behavior
Dentists,
447,
2009,
476
106
90
U.S.
S.Ct.
did not constitute
misuse.
(1986),
Origina-
L.Ed.2d 445
and Fashion
America,
tors’ Guild
Inc. v. Federal
IV. Common Law Counterclaims
Commission,
457,
Trade
312
61
U.S.
S.Ct.
Scruggs attempts
appeal
to
703,
(1941),
compel
finding
Inc.,
F.3d
purchase
As a condition on the
the trial court’s deci-
Therefore,
vacate
we
Roundup Ready seeds between 1996 and
injunc-
permanent
to the
respect
sion with
required
growers
exe-
for reconsideration in
remand
tion and
*14
licensing agreement containing
cute a
the
eBay
Court’s
case.
light
Supreme
of the
(or similar)
“You
following
language.
[the
...
grower] agree:
a herbicide contain-
[i]f
Conclusion
ing
ingredient
Roundup
the
active
as
same
Accordingly,
judgment
the
United
(or
[glyphosate]
herbicide
one
Ultra™
for the Northern
District Court
States
action)
a similar mode of
is used over
with
Mississippi is affirmed. The
District of
top
Roundup Ready crops, you
of
the
injunction
a
granting
permanent
order
only
agree
Roundup®
to use
branded her-
and the case is remanded.
vacated
at 309.
claims that
bicide.” J.A.
provision unlawfully
this
tied the sale of
COSTS
Roundup
glyphosate
brand
herbicides to
Monsanto shall have its costs.
Roundup Ready
the sale of
seeds.1
'
held,
The district court
and Monsanto
AFFIRMED, VACATED,
justified by
agrees,
provision
that the
was
AND REMANDED
only
fact that Roundup
gly-
the
was the
DYK,
concurring
part
in
Judge,
Circuit
phosate
approved by
herbicide
the EPA at
dissenting
part.
in
that
top”
crops.
time for use “over the
join
majority opinion except
I
the
The district court concluded that “[be-
III,
respectfully
Roundup
only product
Part
I
dissent.
cause
la-
from which
the
Scruggs argues
grower
‘over-the-top’
Roundup
that Monsanto’s
beled for use
Ready
agreements
crops
between 1996 and 1998
between 1996 and
it was
unlawfully
purchase
Roundup
only
the
that
EPA-approved
tied
the
herbicide
could
Roundup
the
purchase
Roundup
crops
herbicide to
be used
seeds,
ready
pat-
during
periodí,]”
and that this constituted
that
thus
misuse,
...
rendering
ent
unen-
“defendants
failed to meet their bur-
rejected
significant
court
this
den of producing
probative
forceable. The district
evi-
III,
majority
In Part
argument.
also dence
Monsanto forced farmers who
contention,
rejects
ground that
purchase Roundup Ready
this
on the
wanted to
seeds
essence, merely
as well.” agreements,
purchase Roundup
en-
majority agrees
personally
by
practice.”);
1. The
that the
misuse
harmed
the abusive
require
showing
(col-
defense does not
of anti-
§
6 Chisum on Patents
nn.3-4
19.04[5]
1339;
standing.
trust
Ante at
also 6 Chi-
see
Thus,
cases).
lecting
the fact that
did
19.04[5],
("[I]t
sum on Patents
at 19-541
grower licensing agreement
execute a
not
has
at
been clear
least since Morton Salt that
containing
is of no
restriction
raising
[patent]
individual defendant
moment.
misuse defense need not show that he was
herbicides,
Scruggs,
glyphosate
577 market for
F.Supp.2d
Co.
the al-
(N.D.Miss.2004).
.majority agrees.
legedly
product.
The
tied
We faced a related
Supreme
I read the
Court
contention in
Philips Corp.
Ante at 1339.
U.S.
v. Inter-
Commission,
contrary.
to the
national Trade
cases as
(Fed.Cir.2005),
Philips’ pack-
where
unequivocally
has
Supreme
Court
age patent
licensing arrangements were
particular practice may
be
held: “That
challenged
impermissible
ties. We held
not,
itself,
justifi-
unlawful is
a sufficient
agreements
that the
per
were not
se un-
among
competitors
cation for collusion
lawful, because there was no evidence of
prevent
it.” Fed. Trade Comm’n v. Ind.
“commercially feasible” alternatives to the
Dentists,
447, 465,
Fed’n
476 U.S.
technology
allegedly
enabled
tied
(1986).2
2009,
2. See Fashion
Guild
Inc.
cused combination would not
but
laborers,
Comm’n,
457, 468,
manufacturers,
actually help
v. Fed. Trade
312 U.S.
would
61
retailers, consumers,
703,
(1941) ("[E]ven
public
gener-
or the
S.Ct.
L.Ed. 949
if
al.”);
Missouri,
Int’l
v.
designs]
Harvester Co.
234 U.S.
copying [of the Guild members'
were
199, 209,
859,
(1914)
34 S.Ct.
significant that simply require the use did not
agreements herbicide; they government-approved
of a required “Roundup the use of
explicitly A potential herbicide.” herbicide
branded that, be
competitor thus would concerned government approval if it secured
even product, approved use of the herbicide
would still be barred under the contracts. potential competi-
The elimination of such permissible
tion is not under the antitrust
laws.
Ill finding court not make a district did power to Monsanto’s market in the Works, Ill. Tool tying
alleged product. — Ink, Inc.,
Inc. v. U.S. -, Indep. 1281, 1293, (2006);
S.Ct. L.Ed.2d Co., F.Supp.2d
see at 575-
80. I judgment would vacate the as to the
alleged grower agree tie in the 1996-1998
ments, and remand the district court to
determine whether the relevant contract
provision in fact constituted misuse
and, occurred, if misuse whether it was Seiffhart, Corp. See Senza-Gel v.
purged. n. MCCRARY, Petitioner, L.
Marcus
OFFICE OF PERSONNEL
MANAGEMENT,
Respondent.
No. 05-3290.
United States Court of Appeals,
Federal Circuit.
Aug. 2006.