GENET archive


4-Patents: On the Monsanto-Bayer dispute on Bt patents

------------------------------- GENET-news -------------------------------

TITLE:  Plant of Attack
SOURCE: IP Law and Business, USA, by Susan Hansen
        posted by Checkbiotech, Switzerland
DATE:   07 Feb 2006

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Plant of Attack

Susan Knoll fended off a billion-dollar damages claim for Monsanto in a
case involving bug-resistant corn seeds. Susan Knoll has tried a string
of intellectual property cases for Monsanto Company. But until this past
October, when Monsanto faced 0ff against Bayer CropScience NV in federal
district court in St. Louis, the 47-year-old Howrey partner had never
served as the company's Iead counsel in such a high-stakes trial.

The heat was on--Bayer was claiming that Monsanto infringed a patent on
technology for making bug-resistant corn seeds, and seeking at least $1 .
5 billion in damages.

"To have a case of this magnitude, you feel a little more pressure,"
says Knoll, who is based in Houston and has taken over as Monsanto's
lead outside IP counsel, now that veteran Howrey partner John Lynch has
cut back on his workload. "I had to put it out of my mind."

The dispute centered on Monsanto's YieldGard Corn, a bioengineered corn
seed containing a protein that repels a worm, the European corn borer,
that eats into corn stalks and can destroy thousands of acres of crops.
Bayer had initiated the fight, hitting two of Monsanto's biggest
YieldGard licensees with infringement suits.

Monsanto countered by seeking a declaratory judgment that YieldGard
didn't infringe Bayer's patent. In pre-trial proceedings, federal court
judge E. Richard Webber gave Knoll and her eight-lawyer Monsanto team
the go-ahead to put on their case first.

Knoll's first witness, Monsanto scientist Fred Perlak, joined the
company in 1981 and led Monsanto's initial foray into biotechnology
research. Perlak recalled his early efforts to isolate a bacteria gene
that could be used to kill the corn borers, and noted that Monsanto
first applied for a patent on that work in 1984.

Knoll's second witness, Monsanto scientist David Fischhoff, built on
that testimony. Drawing on lab notebooks from the mid-1 980s, Fischhoff
recalled his attempts to reengineer the bacteria gene so that it could
be injected into corn plants.

Next, Knoll called on Robb Fraley, Monsanto's chief technology officer,
who noted that this breakthrough led to the company's commercial launch
of YieldGard Corn in 1997. Since then, some 200 distributors have
licensed the seeds, which are currently planted on nearly 40 million
acres of corn.

Bayer's defense team, from Womble Carlyle Sandridge & Rice and Connolly
Bove Lodge & Hutz, argued that Monsanto was not the first to patent the
technology. The real inventor, Bayer argued, was a Belgian company
subsequently acquired by Bayer--Plant Genetics Systems--that applied for a
U.S. patent in 1986, and received it in 1996.

To prove that Monsanto infringed that patent, Bayer's lawyers called on
Jay Ji, director of Ventana Medical Systems, an independent research
laboratory in Tucson. Ji described the testing he conducted on the gene
in Monsanto's seeds. Bayer's next witness, Jan Leemans, a former
scientist at Plant Genetics, pointed out that Ji's test results showed
that the Monsanto corn produced the same protein described in Plant
Genetics's patent.

In her cross of Ji, however, Knoll emphasized that Ji's lab notebooks
showed that he had altered test conditions in order to come up with the
protein results he wanted. "He had testified on direct that he hadn't
changed the conditions," says Knoll. "I pointed out page-by-page in his
lab notebooks where he had."

Likewise, Knoll confronted Leemans with an internal Bayer memo, obtained
in discovery, showing that Bayer scientists had actually analyzed the
reengineered gene in YieldGard Corn and found that the Monsanto gene was
different from Plant Genetics's gene. She also forced Leemans to concede
that the gene in Bayer's patent had never been used in a commercial
product, and that Bayer had never managed to turn the gene into an
effective worm-killing agent.

On November 22, after a three-week trial, the jury ruled that Monsanto
had not infringed the patent. Bayer counsel Timothy Barber of Womble
Carlyle did not return calls. Bayer has announced plans to appeal.

Monsanto in-house counsel David Snively says that Monsanto will pursue
claims that Bayer obtained its patent by inequitable conduct, and will
request attorneys' fees.


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