Monsanto Company v. E.I. Dupont De Nemours and Company et al

Filing 1661

MEMORANDUM AND ORDER: IT IS HEREBY ORDERED that Monsanto's Motion to Unseal Orders Rejecting Defendants' Claims that They Had Rights to Stack and Access Monsanto's Regulatory Data [ECF No. 1583 ] is GRANTED. IT IS FURTHER ORDERED t hat the two June 6, 2012, Orders [ECF Nos. 1308 , 1309 ] and the Hatch-Waxman Order [ECF No. 1447 at 6-7, Monsanto's Motion to Exclude All Evidence Regarding Defendants' Hatch-Waxman Safe Harbor Defense] are UNSEALED. IT IS FURTHER ORDERED that the December 21, 2011 Memorandum and Order [ECFNo. 974], as redacted, is UNSEALED. Signed by District Judge E. Richard Webber on November 16, 2012. (BRP)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

MONSANTO COMPANY and
MONSANTO TECHNOLOGY LLC,
Plaintiffs,
vs.
E.I. DUPONT DE NEMOURS AND
COMPANY and PIONEER HI-BRED
INTERNATIONAL, INC.,
Defendants.

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Case No. 4:09CV00686 ERW

MEMORANDUM AND ORDER
This matter comes before the Court on Monsanto’s Motion to Unseal Orders Rejecting
Defendants’ Claims that They had Rights to Stack and Access Monsanto’s Regulatory Data [ECF
No. 1583].
I.

BACKGROUND
Monsanto initiated this action against Defendants E.I. Du Pont De Nemours and

Company and Pioneer HiBred International, Inc. (collectively, “Defendants”), asserting claims
for breach of contract, patent infringement, inducement to infringe, and unjust enrichment. In its
Complaint, Monsanto alleged that Defendants violated Monsanto’s contractual and patent rights
by producing certain stacked seed products, combining Defendants’ Optimum® GAT®
(“OGAT”) trait with Monsanto’s Roundup Ready® (“RR”) trait in soybeans. Defendants
brought several counterclaims against Monsanto, requesting a declaratory judgment that license
agreements provided them with the right to stack the traits, and asserting a number of antitrust
counterclaims. During the course of this litigation, the Court entered an Order concluding that a
separate trial of the antitrust claims was warranted. The patent and antitrust claims were

bifurcated. Following trial on the patent claims, the jury returned a verdict for Monsanto, and
awarded damages in the amount of $ 1 Billion. The separate trial on Defendants’ antitrust
counterclaims is docketed to commence in 2013.
On June 28, 2010, the Court entered a Protective Order in this matter. The Protective
Order greatly limits the dissemination of confidential information contained within documents
filed with the Court and produced between the parties, in order to protect, among other things,
the parties’ proprietary, financial, and commercial information. [ECF No. 238]. The Protective
Order commands that only three members of each parties’ in-house counsel team may review
court documents filed under seal. Id.
Pursuant to the Protective Order, the Court has filed under seal several memorandum
opinions and orders. One of those orders, dated June 6, 2012, found that Defendants had
“breached” their license agreement with Monsanto by stacking OGAT with RR [ECF No. 1308].
In another order issued that same date, the Court found that Defendants’ contention that § 3.01(f)
of the license permitted them to research and develop the same stack was “not tenable,”
“illogical,” and “nonsensical” and that Monsanto was not required to provide regulatory letters of
access for the stacked product [ECF No. 1309]. Another order dated June 29, 2012, (the “HatchWaxman Order”) determined, among other things, that Defendants’ stacking of OGAT with RR
was not otherwise permitted under the safe harbor provision of the Hatch-Waxman Act [ECF No.
1447 at 6-7, “Monsanto’s Motion to Exclude All Evidence Regarding Defendants’ HatchWaxman Safe Harbor Defense”]. Also filed under seal pursuant to the Protective Order was this
Court’s December 21, 2011 Sanctions Order (“the Sanctions Order”) [ECF No. 974].
In the Sanctions Order, the Court found, among other things, that during the period
running from 2002 through 2008, e-mails exchanged between several of Defendants’ senior

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business executives, their inside counsel, and their outside counsel, showed that Defendants
knew that their 2002 license agreements with Monsanto prohibited them from stacking and
commercializing glyphosate-tolerant traits. Notwithstanding this knowledge, Defendants,
throughout two years of litigating this matter, stated that they negotiated for stacking rights and
always believed they had those rights. The Court’s finding in the Sanctions Order included that
documents belatedly produced by Defendants showed that, for more than a year, Defendants had
made false representations to the Court about issues critical to their breach-of-contract defenses
and counterclaims. The egregiousness of Defendants’ behavior and the lack of remorse
Defendants displayed for their wrongdoing convinced the Court that only the most severe
sanctions would deter their misconduct and preclude them from continuing their abuse of the
judicial process. Accordingly, in addition to awarding Monsanto attorney’s fees incurred from
defending Defendants’ reformation counterclaim and filing its motion for sanctions, the Court
ordered that Defendants’ pleadings on the breach-of-contract claims and counterclaims be
stricken.
The Court sealed its Sanctions Order to avert the possibility that media coverage might
taint or prejudice the patent trial jury pool. Monsanto now moves the Court to unseal these
Orders. Defendants oppose only unsealing of the Sanctions Order.
II.

LEGAL STANDARD
Federal courts “recognize a general right to inspect and copy public records and

documents, including judicial records and documents.” Nixon v. Warner Commc’ns, Inc., 435
U.S. 589, 597 (1978) (footnotes omitted). This right is not absolute, however, and courts have
properly denied access, for example, where the records were sought to “gratify spite or promote
public scandal,” where they functioned only as “reservoirs of libelous statements for press

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consumption,” and where they contained “business information that might harm a litigant’s
competitive standing.” Id. at 598. (internal quotations and citations omitted). Nevertheless,
“there is a common law presumption in favor of public access to judicial records.” United States
v. McDougal, 103 F.3d 651, 657 (8th Cir.1996). Because the right to access is not absolute, it
“requires a weighing of competing interests.” In re Guidant Corp. Implantable Defibrillators
Prods. Liab. Litig., 245 F.R.D. 632, 636 (D. Minn. 2007) (quoting Webster Groves Sch. Dist. v.
Pulitzer Publ’g Co., 898 F.2d 1371, 1376 (8th Cir.1990)).
The Court has supervisory power over its papers and files, and the decision to seal or
unseal a court document is left to sound discretion of the Court, “a discretion to be exercised in
light of the relevant facts and circumstances of the particular case.” Nixon., 435 U.S. at 598-99.
However, “only the most compelling reasons can justify non-disclosure of judicial records.” In re
Neal, 461 F.3d 1048, 1053 (8th Cir. 2006) (quoting In re Gitto Global Corp., 422 F.3d 1, 6 (1st
Cir.2005)).
The presumption in favor of access places the burden on the party seeking to maintain
confidentiality to establish sufficient grounds for prohibiting public access to the record. See
Rohrbough v. Hall, 2010WL 1998554 at *1 (E.D. Mo. May 19, 2010). “When the concern is the
efficient administration of justice and the provision to defendants of fair trials, the consideration
of competing values is one heavily reliant on the observations and insights of the presiding
judge.” United States v. Webbe, Jr., 791 F.2d 103, 106 (8th Cir. 1986) (quoting Belo
Broadcasting Corp. v. Clark, 654 F.2d 423, 431 n. 18 (5th Cir. 1981)). The Eighth Circuit has
not given specific guidance on the competing interests to be weighed by the Court. However,
other courts have examined six factors to determine if a party has overcome the presumption in

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favor of publication. Schedin v. Ortho-McNeil-Janssen Pharm., Inc., 2011 WL 1831597 at *1
(D. Minn. May 21, 2011) (citing United States v. Hubbard, 650 F.2d 293, 318 (D.C. Cir. 1980)).
Those factors are: (1) the need for public access to the documents at issue; (2) the
extent of previous public access to the documents; (3) the fact that someone has
objected to disclosure, and the identity of that person; (4) the strength of any
property and privacy interests asserted; (5) the possibility of prejudice to those
opposing disclosure; and (6) the purposes for which the documents were
introduced during the judicial proceedings.1
Schedin, 2011 WL 1831597 at *1-2 (citing Doe v. Exxon Mobile Corp., 570 F. Supp. 2d 49, 52
(D. D.C. 2008)).
III.

DISCUSSION
Monsanto asserts that, with the patent trial now concluded, the Court should unseal these

orders, stating the following reasons: 1) there is no compelling reason to shield from the public this
Court’s decision relating to its determination of Monsanto’s breach-of-contract claims, its
declaration of the parties’ rights under the seed license agreements, its rejection of Defendants’
position that it should be entitled to access Monsanto’s technology under the Hatch-Waxman Act,
or its finding that Defendants committed fraud upon this Court in an effort to manipulate the judicial
process for their own business interests; 2) unsealing the orders would give Monsanto the
opportunity to respond to Defendants’ public allegations concerning Defendants’ right to stack
OGAT with RR1, and to Defendants’ continued assertions that they did not infringe the Roundup
Ready® soybean patent, that the Monsanto patent is invalid, and that actions by Monsanto were

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For purposes of analysis, these enumerated factors will be referred to as “the six-factor
test articulated in Hubbard.”
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preventing regulatory approval and commercialization plans for OGAT soybeans; 3) keeping the
Sanctions Order sealed permits Defendants to avoid the financial consequences of their conduct and
provides no deterrent effect in precluding similar future conduct by the parties and their counsel, or
future unrelated litigants and their counsel; and 4) Defendants can show no compelling reasons
justifying continued non-disclosure of these Orders, as the orders contain no confidential information
that has not already been made public in the course of this litigation.
In their Memorandum in Opposition to Monsanto’s Motion to Unseal Orders [ECF No.
1620], Defendants agree that there is no reason to maintain under seal the two June 6, 2012 orders
[ECF Nos. 1308, 1309], or the Hatch-Waxman Order [ECF No. 1447 at 6-7, “Monsanto’s Motion
to Exclude All Evidence Regarding Defendants’ Hatch-Waxman Safe Harbor Defense”].
Accordingly, the Court unseals these Orders [ECF Nos. 1308, 1309, 1447 at 6-7, “Monsanto’s
Motion to Exclude All Evidence Regarding Defendants’ Hatch-Waxman Safe Harbor Defense”] for
public dissemination.
However, Defendants do oppose Monsanto’s request to unseal the Sanctions Order.
A. Monsanto’s Previous Motion to Unseal [ECF No. 1003]
Monsanto previously filed a motion to unseal the Sanctions Order on January 5, 2012 [ECF
No. 1003]. In a Memorandum and Order, dated February 16, 2012, the Court granted in part, and
denied in part, Monsanto’s January 5 motion [ECF No. 1042]. The Order adopted all aspects of a
Stipulation contained within the parties’ Consent Motion to Amend the Protective Order [ECF No.
1037-1], and unsealed the Sanctions Order for purposes of dissemination to the individuals listed in
the Stipulation (Defendants’ and Monsanto’s senior executives), and the Department of Justice’s
Antitrust Division, Transportation, Energy, and Agriculture Section. In all other aspects, however,
the Sanctions Order remained sealed.

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In its January 5 motion to unseal, Monsanto argued that the order should be disseminated to
the public in order to undo damage caused by Defendants’ media assault against Monsanto.
Monsanto submitted exhibits in support of its motion, showing that the misrepresentations
Defendants made to the Court, and for which the Defendants were sanctioned, had also been made
on several occasions to national media outlets. Monsanto claimed the only way to protect the public
was to reveal Defendants’ deception through the publication of a redacted version of the Sanctions
Order. In their vehement opposition to allowing any public access to the order, Defendants
contended that release of the Sanctions Order, even in redacted form, would prejudice them at trial.
In balancing the preference for access and the parties’ interests, the Court noted that the angry
tenor of Monsanto’s motion suggested a strong desire to punish and to publicly shame Defendants.
The Court also noted, however, that Monsanto’s exhibits showed a calculated, strategic effort by
Defendants to demonize Monsanto and to portray themselves as the seed industry’s David to
Monsanto’s Goliath. Thus, due to the its determination to avoid being used as a pawn in the parties’
public relations battle, and concern about the impact unsealing the Sanctions Order could have had
on the jury pool for the patent trial, the Court found that “it would imprudent of the Court to allow
Monsanto to use the Order to fight Defendants’ public relations campaign.” The Court found that
the need for access was outweighed by Defendants’ interest in being heard by an unbiased jury.
Accordingly, the Court determined that the Order would not be redacted and unsealed for public
dissemination until after the jury rendered a verdict in the patent trial.
B. Monsanto’s Present Motion to Unseal [ECF No. 1583]
Monsanto contends that the presumption in favor of access to judicial records strongly favors
unsealing this Court’s prior Orders, as they go the “the very heart” of the commercial dispute over
one of the most significant agricultural inventions in U.S. history and reveal the competitive

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relationship between two large competitors. Monsanto further claims that unsealing the Orders
would “shed light” on DuPont’s lack of stacking rights under the license, lack of regulatory rights
to stack, and “the extent to which DuPont has attempted to exploit the judicial process for its own
gain.” Additionally, Monsanto asserts that, as the patent trial has concluded, there is no longer any
compelling reason for the Orders to remain sealed because the Court’s concern regarding jury pool
bias no longer applies.
In their opposition to the Motion to Unseal currently before the Court, Defendants assert that
“the same reasons why the Court declined to unseal the December 21 Order in February of this year
require that the order remain under seal today.” Defendants contend that the “Order is interlocutory,
is replete with references to confidential information, risks prejudicing further jury proceedings in
this case, and should not be used as a commercial weapon.”
Defendants argue that, after the extensive publicity surrounding pretrial rulings and the jury’s
verdict in the patent trial, any remaining uncertainty concerning the current status of DuPont’s legal
rights with respect to stacking would be “more than adequately addressed by unsealing the June 6,
2012 Orders and the Hatch-Waxman Order.” Pointing out that the antitrust claims in the case are
scheduled for trial in 2013 and that the parties are involved in other litigation in this district,
Defendants claim that unsealing the Sanctions Order would prejudice these proceedings. They aver
that unsealing the Sanctions Order “would serve only to gratify private spite and confer competitive
advantage.” As well, Defendants assert that unsealing the Sanctions Order would be unfair to nonparties, as the Order “quotes extensively from internal e-mails between DuPont executives, in-house
counsel, and research scientists regarding the negotiation and interpretation of DuPont’s licensing
agreement with Monsanto.” They state that redacting names, as suggested by Monsanto in its brief,
would not sufficiently mask the identities of the involved individuals.

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Monsanto counters that avoiding potential embarrassment resulting from the public learning
that Defendants had committed fraud on the court is not a basis to prevent disclosure of the
Sanctions Order. Monsanto argues that the presumption favoring public access to judicial records
is especially strong where the records concern sanctionable conduct, because public awareness is
necessary to redress the wrong and to discourage future misconduct. Monsanto further claims that
the Sanctions Order contains no trade secret or competitively-sensitive information; but, rather
“concerns only decade-old negotiations over license agreements, the key provisions of which have
already been made public.” Monsanto asserts that unsealing the Sanctions Order will inform the
public that Defendants falsely stated they always believed they had stacking rights, and that the
conclusion of the patent trial and the remoteness of the antitrust trial eliminate the danger of jury bias
from disclosing the Sanctions Order. Monsanto contends that allowing the Sanctions Order to
remain unsealed merely allows Defendants to perpetuate their fraud. This Court agrees.
As an initial matter, the Court notes that the principal reason for refusing Monsanto’s
previous motion to unseal the Sanctions Order was the Court’s unwillingness to compromise
Defendants’ chance for an unbiased jury in the patent trial. The possibility of prejudice to those
opposing disclosure is the fifth factor of the six-factor test articulated in Hubbard2. Because the
patent trial has concluded, the Court’s concern regarding negative pretrial publicity is no longer a
consideration. Defendants’ present claim that unsealing the Sanctions Order will prejudice the
antitrust trial or other litigation between them and Monsanto is insufficient to justify maintaining its
confidentiality. Defendants have had the opportunity to litigate their legal rights with respect to
stacking and have made the issue public. Since the return of the jury verdict, Defendants continue
to stand by their position that they did not infringe the Roundup Ready® soybean patent and that

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650 F.2d at 318.
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the Monsanto patent is invalid. Defendants also continue to represent that they believed that they
had a right to stack under their license agreement with Monsanto. In an August 1, 2012, news
release, Defendants claimed that several fundamental errors in the case deprived the jury of
important facts and arguments and led to the disappointing outcome [ECF No. 1584-1]. Because
the Sanctions Order has remained under seal, Defendants have been able to continue their public
relations spin. Defendants stated in the news release that the trial evidence “demonstrated clearly
that Monsanto’s Roundup Ready® soybean patent (RE 39,247) is invalid and unenforceable and
that Monsanto intentionally deceived the United States Patent and Trademark Office on several
occasions as it sought patent protection.”
As discussed, the Court denied Monsanto’s previous motion to unseal the Sanctions Order.
Recognizing facets of the case would turn on credibility determinations that could be undermined
by the findings contained within the Order, the Court was not willing to compromise Defendants’
chance at an unbiased jury during trial of the patent claims. Although the patent trial has concluded,
Defendants assert that the same reasons for denying the prior motion require that the Sanctions Order
remain under seal. However, the jury has already returned a verdict in the parties’ patent dispute.
Moreover, the antitrust trial, docketed to begin in late 2013, is still quite remote, and the opportunity
for voir dire examination will serve to eliminate any jurors who may have been prejudiced by the
unsealing of the Sanctions Order. See Chandler v. Florida, 449 U.S. 560 (1981). The Court
concludes that the potential for prejudice in the antitrust matter does not justify maintaining the
Sanctions Order under seal. Accordingly, the fifth factor weighs in favor of unsealing the Sanctions
Order.
The Court also finds that the first factor of the six-factor test first articulated in Hubbard, the
need for public access, weighs in favor of Monsanto’s request to unseal the Sanctions Order. The

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findings contained within the Order concern important issues in the patent dispute, and could serve
to inform the public about our legal system, and to help the public understand some of the basic
theories underlying Monsanto’s claims and Defendants’ defenses.
The Court finds the second factor, prior public access, to be neutral. The Sanctions Order
was sealed, subject to a Protective Order, and thus was not available to the public at any prior time.
However, the Sanction Order’s previous confidential designation does mean that the Order must
remain sealed indefinitely, and does not overcome the presumption in favor of access to judicial
records.3 Defendants argue that unsealing the Sanctions Order is not warranted because the public
already has substantial access to key information in the Sanctions Order dealing with Defendants’
contract rights, and they claim the Order adds nothing to the extensive public record regarding those
rights. Defendants are correct that the public is now aware that Defendants had no right to stack
OGAT with Monsanto’s RR trait. However, the primary findings of the Sanctions Order concern
the Defendants’ actual knowledge and understanding of their stacking rights under their 2002 license
agreement with Monsanto; the Defendants’ continued misrepresentation to the public and the Court,
contrary to their true subjective knowledge, that they always believed that they had those rights; and
the basis for the Court’s striking of Defendants’ reformation defenses and counterclaims. The
findings and conclusions of the Sanctions Order, a judicial record determining Defendants’ actual
understanding of their lack of stacking rights under the license agreement, have not been made
public.

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This lack of previous access makes this factor somewhat less relevant than it would be to
a determination whether more liberal access should be granted to materials previously available
on a limited basis. The Court notes, however, that, in denying Monsanto’s prior request to
unseal, the Court announced that it would reconsider a motion to unseal the Sanctions Order after
the jury rendered a verdict in the patent trial. Thus, the parties were aware of the possibility that
the Sanctions Order would become public.
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Regarding the third factor, the nature of objections and the party objecting, the Court finds
this factor weighs in favor of unsealing the Sanctions Order. Defendants and their attorneys
knowingly perpetrated a fraud against the Court, and unreasonably protracted the patent litigation
to the prejudice of Monsanto. Consequently, the Court finds the Defendants’ objection, that
unsealing the Order would prejudice other litigation between the parties, gratify private spite, and
confer competitive advantage, to be an ironic attempt to wield the Protective Order as both a shield
and a sword. The public is entitled to a full disclosure of the Defendants’ fraud, which unduly
delayed resolution of this litigation.
As to the fourth factor, the strength of any property and privacy interest asserted, the
Sanctions Order contains no trade secrets or other confidential research, development or commercial
information. The Sanctions Order quoted provisions of the parties’ license agreement, however,
these provisions were made publicly available during an October 2009 hearing and the patent trial.
The only other documents quoted in the Sanctions Order are the e-mail communications that directly
contradict Defendants’ assertion that they believed they had the right to sell RR/OGAT stacked
seeds. Defendants have not pointed to specific private or public interests that need protection, other
than their assertion that unsealing the Sanctions Order would be unfair to non-parties, which suggests
that access could cause individuals embarrassment or other unpleasant circumstances. Although
Defendants have represented the nature of these communications as confidential, the excerpts
contained within the Sanctions Order concern only the license agreement, the parties’ interpretations
of certain of its sections, and negotiations regarding the agreement. Because possible embarrassment
or discomfort is not enough to justify sealing court records and the public version of the Sanctions
Order could redact individual’s names, the fourth factor weighs in favor of unsealing the Sanctions
Order.

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Finally, the Court finds that the sixth factor, the purposes for which the documents were
introduced during the judicial proceedings, weighs in favor of disclosure. The Order concerns
sanctions for abuse of the judicial process, and discusses wrongful behavior engaged in by entities
and individuals that have legal and ethical obligations to shareholders, the public at large, and the
Court. Public awareness of the sanctionable conduct in which Defendants engaged would serve to
discourage similar future misconduct by Defendants, their counsel, and non-related litigants and their
counsel.
In sum, the Court finds that one of the Hubbard factors is neutral, and that the remaining five
factors weigh in favor of Monsanto. As a result, the Court determines that Defendants have not met
their burden to overcome the presumption in favor of access to judicial records. See Rohrbough,
2010 WL 1998554 at *1.
IV.

CONCLUSION
The preference for access to court orders and filings must be weighed with the parties’

interests in maintaining confidentiality. In this case, the general public’s need for access to the
Sanctions Order outweighs Defendants’ need for confidentiality.
Accordingly,
IT IS HEREBY ORDERED that Monsanto’s Motion to Unseal Orders Rejecting
Defendants’ Claims that They Had Rights to Stack and Access Monsanto’s Regulatory Data [ECF
No. 1583] is GRANTED .
IT IS FURTHER ORDERED that the two June 6, 2012, Orders [ECF Nos. 1308, 1309]
and the Hatch-Waxman Order [ECF No. 1447 at 6-7, “Monsanto’s Motion to Exclude All Evidence
Regarding Defendants’ Hatch-Waxman Safe Harbor Defense”] are UNSEALED.

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IT IS FURTHER ORDERED that the December 21, 2011 Memorandum and Order [ECF
No. 974], as redacted, is UNSEALED.
Dated this

16th

day of November, 2012.

E. RICHARD WEBBER
SENIOR UNITED STATES DISTRICT JUDGE

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