Free Letter - District Court of Delaware - Delaware

Case 1:07-cv-00038-SLR

Document 20

Filed 04/26/2007

Page 1 of 3
Richard L. Horwitz

1313 North Market Street P.O. Box 951 Wilmington, DE 19899-0951 302 984-6000 www.potteranderson.com

Partner Attorney at Law [email protected] 302 984-6027 Direct Phone 302 658-1192 Fax

April 26, 2007

VIA ELECTRONIC FILING The Honorable Sue L. Robinson United States District Court for the District of Delaware J. Caleb Boggs Federal Building 844 North King Street, Wilmington, DE 19801 Re: Syngenta Biotechnology, Inc. , et al. v. Dekalb Genetics Corporation, et al. C.A. No. 07-38-SLR

Dear Chief Judge Robinson: Pursuant to Local Rule 7.1.2(c) and in connection with defendants DEKALB Genetics Corporation ("DEKALB") and Monsanto Company's ("Monsanto") (collectively, "Defendants") motion to transfer (D.I. 7), Defendants inform the Court of the recent decision of the Eastern District of Missouri in DEKALB Genetics Corp. v. Syngenta Seeds, Inc., Case No. 4:06CV01191-ERW denying Syngenta's motions to sever and transfer and to dismiss. See Memorandum and Order (April 24, 2007) (Ex. A hereto). By way of background, on August 9, 2006, DEKALB brought suit in the U.S. District Court for the Eastern District of Missouri ("the Missouri court") against Syngenta Seeds, Inc., Syngenta Biotechnology, Inc., Golden Harvest Seeds, Inc., Garwood Seed Co., Golden Seed Company, LLC, Sommer Bros. Seed Co., Thorp Seed Co., JC Robinson Seeds, Inc. ("JC Robinson"), and Garst Seed Co. (collectively, "the Syngenta Companies") for infringement of U.S. Patent No. 5,554,798 ("the '798 patent ") based on their making, using, and selling GA21 corn. The Syngenta Companies responded with a motion to transfer the case from the Missouri court to this Court. The Missouri court denied the motion to transfer on the grounds that the case could not have been brought against JC Robinson in Delaware. After losing on their motion to transfer, certain of the Syngenta Companies ("the Delaware DJ Plaintiffs") filed the instant action challenging the '798 patent. Simultaneously, the Syngenta Companies filed two motions in the Missouri court: a motion alleging that the Missouri court lacked personal jurisdiction over the Delaware DJ Plaintiffs and should dismiss them from the case and a motion to sever JC Robinson and transfer DEKALB's claims against the remaining Synge nta Companies to this Court. These tactics by the Syngenta Companies were plainly meant to accomplish the same result sought by their failed motion to transfer, i.e. remove the case from the Missouri court and place it in Delaware.

Case 1:07-cv-00038-SLR The Honorable Sue L. Robinson April 26, 2007 Page 2

Document 20

Filed 04/26/2007

Page 2 of 3

The Missouri case being the first-filed case involving the '798 patent, the Defendants moved this Court for an order transferring this declaratory judgment patent case to the Missouri court. Presently, that motion is pending before Your Honor. In its opposition to that motion, the Delaware DJ Plaintiffs argued that "severance of JC Robinson [from the Missouri case would] remove[] the impediment preventing the Missouri court from transferring the claims against the remaining defendants to Delaware." D.I. 12. However, on Tuesday, April 24, the Missouri court denied the motion to sever and denied Syngenta's motion to transfer DEKALB's claims against the non-Delaware DJ Plaintiffs to Delaware. Ex. A, at 6. The Missouri court explained that JC Robinson has an ongoing relationship with both GH Holding, Inc., and with Syngenta Seeds, Inc. Plaintiff filed suit in this district against all the entities that are associated with GH Holding, Inc., and Defendants have failed to provide sufficient information to show that a ruling against Syngenta Seeds Inc., will have the effect of preventing the sale of infringing products with respect to JC Robinson. See LG Electronics, 131 F. Supp. 2d at 812. All Defendants which make of [sic] GH Holding, Inc. have some interest in GA21 corn. Id. The Missouri court also decided that DEKALB's initial complaint did not "satisfy Plaintiff's burden of creating a prima facie case of personal jurisdiction" for the Delaware DJ Plaintiffs. Id. at 12. The Missouri court, however, decided to permit DEKALB to amend its complaint to "include sufficient allegations of personal jurisdiction. " Id. Subject to that, the Missouri court denied the Syngenta Companies' motion to dismiss for lack of personal jurisdiction, with the understanding that the Syngenta Companies may refile their motion after DEKALB amends its complaint. Defendants respectfully submit that this is a significant ruling because it defeats one of the main bases upon which Syngenta has opposed Defendants' pending motion to transfer. The Missouri court's decision confirms that DEKALB's first-filed patent infringement suit in Missouri will in fact proceed against, at a minimum, Syngenta Seeds, Inc., Golden Harvest Seeds, Inc., Sommer Bros. Seed Co., JC Robinson Seeds, Inc., and Garst Seed Co. Thus, Syngenta's stated desire to litigate all of DEKALB's patent infringement claims in one forum can only be accomplished if that litigation proceeds in Missouri, not Delaware. Moreover, the burden due to the complexities that are inherent in concurrent litigation should tip the scales in favor of transferring the instant declaratory judgment to the Missouri court. Furthermore, DEKALB intends to amend its complaint in the Missouri case to comply with the Missouri court's decision and, therefore, expects to establish personal jurisdiction over the Delaware DJ Plaintiffs in Missouri. Accordingly, Defendants submit that this decision by the Missouri court further supports Defendants' pending motion to transfer the instant case to the Missouri court.

Case 1:07-cv-00038-SLR The Honorable Sue L. Robinson April 26, 2007 Page 3

Document 20

Filed 04/26/2007

Page 3 of 3

Respectfully, /s/ Richard L. Horwitz Richard L. Horwitz

RLH:msb
791803

cc:

Clerk of the Court (via hand delivery) John W. Shaw (via electronic mail) (w/enc.) Michael J. Flibbert (via electronic mail) (w/enc.)

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 1 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 2 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 3 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 4 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 5 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 6 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 7 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 8 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 9 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 10 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 11 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 12 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 13 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 14 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 15 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 16 of 17

Case 1:07-cv-00038-SLR

Document 20-2

Filed 04/26/2007

Page 17 of 17