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

Filing 765

MEMORANDUM AND ORDER IT IS HEREBY ORDERED that Defendants Motion to Compel Supplemental Answers to Interrogatories [doc. #655] is DENIED. Signed by Honorable E. Richard Webber on May 26, 2011. (MCB)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

MONSANTO COMPANY and
MONSANTO TECHNOLOGY LLC,
Plaintiffs,
vs.
E.I. DU PONT 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 Defendants E.I. du Pont de Nemours and
Company and Pioneer Hi-Bred International, Inc. (collectively, “Defendants”) Motion to Compel
Supplemental Answers to Interrogatories [doc. #655]. In their Motion, Defendants seek an order
compelling Plaintiffs Monsanto Company and Monsanto Technology LLC (collectively,
“Monsanto”) to provide supplemental answers to four specific interrogatories, arguing that
Monsanto’s responses have thus far been inadequate.
Federal Rule of Civil Procedure 33(a) provides that the scope of discovery by
interrogatory is the same as that for discovery generally, embracing “any nonprivileged matter
that is relevant to any party’s claim or defense – including the existence, description, nature,
custody, condition, and location of any documents or other tangible things and the identity and
location of persons who know of any discoverable matter.” See Fed. R. Civ. P. 26(b)(1). In
circumstances where the answer to an interrogatory could be gleaned from examining certain
documents, Rule 33(d) permits the responding party to answer by making those records available

to the asking party, so long as the burden of arriving at the answer would be substantially the
same for either party.
First, Defendants argue that Monsanto has inadequately responded to its Interrogatory No.
1, which states as follows:
Identify the sequence and function of any DNA, transcribed RNA, or expressed
protein or peptide that corresponds in whole or in part to the DNA inserted in the 403-2 event or NK603 event within the accused Roundup Ready®/OGAT soybean or
corn products in this case, within any Roundup Ready® crops or seeds that Monsanto
has sued for patent infringement based on the claims of the ‘247 Reissue patent or
U.S. Patent No. 5,633,435 (“the ‘435 patent”), including those in Monsanto Co. v.
Trivette, No. 4:07-cv-343 (E.D. Mo.) (Perry, J.), and within any Roundup Ready®
crops from seeds sold by Monsanto, identify the five persons at Monsanto most
knowledgeable of same, and identify all documents reflecting or relating to same.
Subject to a number of objections, Monsanto initially responded with a two-page answer and
attached some corresponding technical reports, and then later supplemented its response pursuant
to Rule 33(d) with citations to over ten thousand pages of documents it had already produced to
Defendants. Defendants contend that Monsanto’s response remains insufficient because it has
not properly identified the sequence and function of transcribed RNA and expressed proteins or
peptides that correspond to the 40-3-2 and NK603 events.
The Court has reviewed Monsanto’s response and finds that no relief is warranted with
respect to this interrogatory. Monsanto represents in its Opposition that it has provided
Defendants with all of the responsive non-privileged information in its possession, and that it
will supplement its answers with additional information in the event that its experts produce or
rely on additional information concerning the sequence or function of transcribed RNA and
expressed proteins or peptides corresponding to the 40-3-2 and NK603 events. As such, the
Court is persuaded that Monsanto has satisfied its obligations in answering this interrogatory, and
Defendants’ Motion will be denied on this point.

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Defendants’ Interrogatory No. 2 asks Monsanto to
[s]eparately, in claim chart form, for each asserted claim of the ‘247 Reissue Patent,
explain in detail on a limitation-by-limitation basis, and provide all supporting facts
for your contention that any of Defendants’ accused products infringe on each such
claim, literally or under the doctrine of equivalents, identify the five persons at
Monsanto most knowledgeable of same, and identify all documents reflecting or
relating to same.
Monsanto responded with a claim chart, which it supplemented following this Court’s claim
construction order, setting forth the forty-seven allegedly infringed claims, stating whether the
alleged infringement is literal or under the doctrine of equivalents, stating the accused product,
and discussing Monsanto’s infringement allegations. Monsanto has refused to provide
information about the five persons most knowledgeable about its infringement contentions,
asserting that these individuals are all counsel for Monsanto and therefore do not possess any
discoverable information on this topic. Defendants argue that Monsanto’s claim chart is
insufficient because it fails to specifically address how each element of the asserted in claims is
found in Defendants’ stacked seed products. With respect to the identifications of
knowledgeable persons, Defendants state that they are willing to exclude Monsanto’s current
litigation counsel from the interrogatory.
Monsanto will not be ordered to supplement its response to this interrogatory.
Monsanto’s claim chart sufficiently answers this interrogatory, insofar as (1) it is undisputed that
Defendants’ stacked soybean and corn products contain Monsanto’s 40-3-2 and NK603 events,
respectively; and (2) Monsanto’s answer incorporates by reference its answer to Interrogatory
No. 1, in which Monsanto set forth the sequence and function of those transgenes. Furthermore,
it appears that Defendants’ request for more precise technical information concerning
infringement will be addressed through the disclosure of Monsanto’s expert reports. The Court
will not order Monsanto to respond with the identities of five persons with the most knowledge
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of its infringement allegations, as Defendants have failed to articulate any basis as to how this
information is likely to lead to discoverable information, given that these persons are all former
or current counsel for Monsanto, whose knowledge about these matters is privileged or
constitutes attorney work product.1
Defendants next contend that Monsanto must supplement its response to their
Interrogatory No. 3, which states:
Separately for each claim of the ‘247 Reissue Patent, state and explain in detail with
all supporting facts, the earliest effective filing date to which that claim is entitled
and whether the claim is entitled to the benefit of earlier filed applications US SN
07/749,611 or 07/576,537 under 35 U.S.C. § 120, including identifying where the
claimed inventions are disclosed in such earlier filed application, and identify the five
persons at Monsanto most knowledgeable of same, and identify all documents
reflecting or relating to same.
Monsanto responded that all of the asserted claims of the ‘247 Patent are entitled to claim
priority to either the ‘611 or the ‘537 application – that is, to 1990 or 1991 filing dates – and
provided a chart with citations to those applications in support. Defendants assert that Monsanto
should be required to provide a single alleged priority date, that Monsanto should provide alleged
priority dates for the unasserted claims of the ‘247 Patent, and, as with the previous interrogatory,
that Monsanto must identify five persons with knowledge of this issue.
Defendants’ Motion will be denied on this point. Monsanto is entitled to argue in the
alternative for effective priority dates; thus, there is nothing improper about Monsanto’s response
as to the asserted claims. See Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267, 1277 (Fed.
Cir. 2010) (“A patentee may seek to rely on an earlier priority date to overcome intervening prior
art” and “may also argue in the alternative for different priority dates at trial.”) (internal citations

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This conclusion is, of course, subject to any subsequent finding of waiver as to these

matters.
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omitted). As to the unasserted claims, Defendants state that Monsanto alleged to the PTO that
the basis for seeking the reissue application was to separate out certain claims that were only
entitled to a September 1994 priority date, and Defendants therefore claim that Monsanto’s
subjective beliefs about which claims are entitled to that priority date are relevant to Defendants’
allegations of inequitable conduct and improper broadening during reissue. The Court disagrees,
in the sense that while Monsanto’s subjective beliefs about whether any claims of the ‘247 Patent
are entitled to 1994 priority dates may be relevant to whether it intended to mislead the PTO in
seeking reissue, Monsanto’s current analysis of the priority dates to which the unasserted claims
are entitled says nothing about its beliefs at the time it made those representations. As such, the
Court will not require Monsanto to supplement its answer with this information. For the same
reason set forth above with respect to Interrogatory No. 2, Monsanto will also not be required to
identify five persons knowledgeable about this topic.
Lastly, Defendants seek additional information in response to their Interrogatory No. 4:
Describe each and every error in the U.S. Patent No. 5,633,435 (“the ‘435 Patent”)
based on which Monsanto sought reissue, explain how each error(s) rendered the
‘435 Patent wholly or partly inoperative or invalid, and identify each and every claim
in the ‘435 Patent rendered wholly or partly inoperative or invalid by reason of each
such error(s), describe each and every error in conduct made in the preparation and/or
prosecution of the applications leading to the ‘435 Patent, explain how and why each
error(s) in conduct arose or occurred, identify by whom each such error(s) in conduct
were committed, and specify how and when each such error(s) were first discovered
by Monsanto.
Defendants argue that Monsanto’s response to this interrogatory is insufficient because it does
not address Monsanto’s prior statement, in a 2005 reissue declaration, that “[a]lthough
identification of only one error is required, claims in this reissue are also amended to correct the
classification of certain sequences as DNA sequences, and not amino acid sequences.”

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Monsanto represents that its answer is nevertheless complete, and as such, there is
nothing for the Court to compel. It would be fruitless for the Court to order Monsanto to provide
information on a purported basis for reissue that it now asserts was not a basis for reissue.
Defendants therefore are not entitled to any relief as to this interrogatory.
Accordingly,
IT IS HEREBY ORDERED that Defendants’ Motion to Compel Supplemental Answers
to Interrogatories [doc. #655] is DENIED.
Dated this 26th Day of May, 2011.
________________________________________
E. RICHARD WEBBER
SENIOR UNITED STATES DISTRICT JUDGE

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