Digests

Monsanto Canada Inc. v. Schmeiser

T-1593-98

2001 FCT 256, MacKay J.

29/3/01

63 pp.

Action for patent infringement by defendants using, reproducing and creating genes, cells and canola seeds and plants containing genes and cells claimed in plaintiffs' patent, and by selling harvested canola seed, without consent or licence of plaintiffs--Plaintiffs' commercial product "Roundup Ready Canola" canola seed tolerant of glyphosate herbicides including plaintiffs' "Roundup"--Issues (1) admissibility of evidence of tests conducted on samples of defendants' canola; (2) validity of plaintiffs' patent; (3) possible waiver of patent rights by plaintiffs; (4) infringement of patent; (5) remedies applicable in case of infringement; (6) costs--Action allowed--(1) Where order providing for samples to be taken granted on consent and without any stipulation about further notice before samples to be taken, or about defendants' right to be represented and present during sampling process, no breach of Court's order--Samples taken under Court order in accord with law--Evidence of test using those samples relevant to issues before Court and admissible--In light of factors outlined in R. v. Collins, [1987] 1 S.C.R. 265 even if some evidence for test could be said to be improperly obtained by conversion of defendants' property without consent, defendant has civil remedies to address that issue; Charter not applicable to exclude it--Evidence, samples of defendants' 1997 and 1998 canola crops, of conditions independent from and existing before action commenced--Evidence relevant to plaintiffs' case--Not otherwise obtainable--Introduction thereof not prejudicial to defendants' case--Evidence of tests conducted on all samples taken of 1997 and 1998 canola crops of corporate defendant admissible--Clearly relevant to issues--Not obtained illegally--Its admission would not bring administration of justice into disrepute--(2) Defendants question validity of plaintiffs' patent on ground subject-matter not patentable; governing legislation Plant Breeders' Rights Act (PBRA), not Patent Act--Nothing in PBRA precluding inventor from seeking registration under Patent Act--Fact plaintiffs may have inserted patented gene in number of varieties of canola, each of which different from others, not rendering subject-matter of patent improper subject for patent--Patent not granted in relation to any claim for particular variety of canola, or for canola plants exclusively--Subject-matter probably inappropriate for registration under PBRA, but not inappropriate for registration under Patent Act--Fact replication of gene may occur in natural course of events, without human intervention after insertion of gene in original plant cells, and plants, produced for seeds, and that this may result in differences between individual canola plants not in itself precluding registration, under Patent Act, of invention--Harvard Mouse case (President and Fellows of Harvard College) v. Canada (Commissioner of Patents), [1998] 3 F.C. 510 (T.D.); revd [2000] 4 F.C. 528 (C.A.) implicitly supporting grant of patent herein to Monsanto--(3) No loss or waiver of plaintiffs' patent rights--Defendants urge that having introduced invention for unconfined release into environment without control over dispersion, plaintiffs, as inventor and licensee, have lost claim to enforcement of their rights to exclusive use--Circumstances here not akin to those defendants argue part of larger law of admixture--On evidence, plaintiffs herein undertook variety of measures designed to control unwanted spread of canola containing their patented gene and cell--Plaintiffs' conduct not supporting conclusion it has lost or waived its exclusive rights arising by statute as result of grant of patent--(4) Defendants infringed patent--By growing seed known to be Roundup tolerant and selling harvested seed, defendants made use of invention without permission of plaintiffs and infringed patent--Declaration patent valid--Plaintiffs entitled to injunction restraining action of sort here found to constitute infringement--Pending settlement of terms of judgment concerning appropriate injunction, defendants enjoined from planting seed retained from their 1997 or 1998 canola crops, or any seed saved from plants known to be Roundup tolerant, and from selling or otherwise depriving plaintiffs of their exclusive right to use plants which defendants know or ought to know are Roundup tolerant, or using seeds from such plants--Plaintiffs also entitled to order for delivery up of any plants or seeds from 1997 and 1998 crops--Court declining to order accounting of profits in amount requested by plaintiffs--Reference concerning profits would be required, but reference can be time-consuming, difficult and costly--Order that plaintiffs together entitled to profits earned by defendants in amount counsel for parties may agree upon within 21 days of filing of reasons, failing which, judgment will provide for general damages in amount of $15,450 plus amount of damages, if any, that may be established by Monsanto US as loss to it arising from defendants' infringement of patent--Not case for exemplary damages--Plaintiffs entitled to pre-judgment interest on profits in accord with Federal Court Act, s. 36(1) and Pre-judgment Interest Act of Saskatchewan and post-judgment interest in accord with Federal Court Act, s. 37(1)--Individual defendant's conduct not such that liability in regard to damages or interest here warranted--Judgment for damages or recovery of profits awarded against Schmeiser Enterprises only--Federal Court Act, R.S.C., 1985, c. F-7, ss. 36(1) (as am. by S.C. 1990, c. 8, s. 9), 37(1) (as am. idem)--Pre-judgment Interest Act, S.S. 1984-85-86, c. P-22.2--Patent Act, R.S.C., 1985, c. P-4--Plant Breeders' Rights Act, S.C. 1990, c. 20.