Organic Seed Growers and Trade v. Monsanto Company

United States Court of Appeals
for the Federal Circuit
______________________

ORGANIC SEED GROWERS AND TRADE
ASSOCIATION, ORGANIC CROP IMPROVEMENT
ASSOCIATION INTERNATIONAL, INC., THE
CORNUCOPIA INSTITUTE, DEMETER
ASSOCIATION, INC., CENTER FOR FOOD SAFETY,
BEYOND PESTICIDES, NAVDANYA
INTERNATIONAL, MAINE ORGANIC FARMERS
AND GARDENERS ASSOCIATION, NORTHEAST
ORGANIC FARMING ASSOCIATION OF NEW
YORK, NORTHEAST ORGANIC FARMING
ASSOCIATION/MASSACHUSETTS CHAPTER, INC.,
NORTHEAST ORGANIC FARMING ASSOCIATION
OF NEW HAMPSHIRE, NORTHEAST ORGANIC
FARMING ASSOCIATION OF RHODE ISLAND, CT
NOFA, NORTHEAST ORGANIC FARMING
ASSOCIATION OF VERMONT, RURAL VERMONT,
OHIO ECOLOGICAL FOOD & FARM
ASSOCIATION, FLORIDA CERTIFIED ORGANIC
GROWERS AND CONSUMERS INC., SOUTHEAST
IOWA ORGANIC ASSOCIATION, MENDOCINO
ORGANIC NETWORK, NORTHEAST ORGANIC
DAIRY PRODUCERS ALLIANCE, MIDWEST
ORGANIC DAIRY PRODUCERS ALLIANCE,
WESTERN ORGANIC DAIRY PRODCUCERS
ALLIANCE, CANADIAN ORGANIC GROWERS,
PEACE RIVER ORGANIC PRODUCERS
ASSOCIATION, FAMILY FARMER SEED
COOPERATIVE, SUSTAINABLE LIVING SYSTEMS,
GLOBAL ORGANIC ALLIANCE, FOOD
DEMOCRACY NOW!, FARM-TO-CONSUMER
LEGAL DEFENSE FUND, WESTON A. PRICE
FOUNDATION, MICHAEL FIELDS
2 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

AGRICULTURAL INSTITUTE, FEDCO SEEDS INC.,
ADAPTIVE SEEDS, LLC, SOW TRUE SEED,
SOUTHERN EXPOSURE SEED EXCHANGE,
MUMM'S SPROUTING SEEDS, BAKER CREEK
HEIRLOOM SEED CO., LLC, COMSTOCK, FERRE
& CO., LLC, SEEDKEEPERS, LLC, SISKIYOU
SEEDS, COUNTRYSIDE ORGANICS, WILD
GARDEN SEED, CUATRO PUERTAS, SEED WE
NEED, ALBA RANCH, WILD PLUM FARM,
GRATITUDE GARDENS, RICHARD EVERETT
FARM, LLC, PHILADELPHIA COMMUNITY FARM,
INC, GENESIS FARM, CHISPAS FARMS LLC,
MIDHEAVEN FARMS, KOSKAN FARMS,
CALIFORNIA CLOVERLEAF FARMS, NORTH
OUTBACK FARM, TAYLOR FARMS, INC., RON
GARGASZ ORGANIC FARMS, ABUNDANT ACRES,
T & D WILLEY FARMS, FULL MOON FARM, INC.,
COMMON GOOD FARM, LLC, AMERICAN
BUFFALO COMPANY, RADIANCE DAIRY,
QUINELLA RANCH, NATURE'S WAY FARM LTD.,
LEVKE AND PETER EGGERS FARM, FREY
VINEYARDS, LTD., BRYCE STEPHENS, CHUCK
NOBLE, LARHEA PEPPER, PAUL ROMERO,
BRIAN WICKERT, BRUCE DRINKMAN, MURRAY
BAST, AND DONALD WRIGHT PATTERSON, JR.,
Plaintiffs-Appellants,

AND

OCIA RESEARCH AND EDUCATION INC.,
NORTHERN PLAINS SUSTAINABLE
AGRICULTURE SOCIETY, MANITOBA ORGANIC
ALLIANCE, UNION PAYSANNE, FAMILY FARM
DEFENDERS INC., INTERLAKE FORAGE SEEDS
LTD., KIRSCHENMANN FAMILY FARMS INC., AND
JARDIN DEL ALMA,
Plaintiffs,
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 3
v.

MONSANTO COMPANY AND MONSANTO
TECHNOLOGY LLC,
Defendants-Appellees.

______________________

2012-1298
______________________

Appeal from the United States District Court for the
Southern District of New York in No. 11-CV-2163, Judge
Naomi Reice Buchwald.
______________________

Decided: June 10, 2013
______________________

DANIEL B. RAVICHER, Public Patent Foundation, Ben-
jamin N. Cardozo School of Law, of New York, New York,
argued for plaintiffs-appellants. With him on the brief
was SABRINA Y. HASSAN.

SETH P. WAXMAN, Wilmer Cutler Pickering Hale and
Dorr, LLP, of Washington, DC argued for defendants-
appellees. With him on the brief were PAUL R. Q.
WOLFSON, TODD C. ZUBLER, GREGORY H. LANTIER,
CAROLYN J. CHACHKIN and RACHEL L. WEINER.

JUDITH I. MCGEARY, Langley & McGeary, PLLC, of
Cameron, Texas, for amici curiae, Farm and Ranch Free-
dom Alliance, et al.

DAVID C. FREDERICK, Kellogg, Huber, Hansen, Todd,
Evans & Figel, P.L.L.C., of Washington, DC for amici
curiae, Intellectual Property Professors.
4 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

THOMAS F. POCHE, Womble Carlyle Sandridge & Rice,
L.L.P., of Washington, DC, for amici curiae, Biotechnology
Industry Organization, et al.
______________________

Before DYK, BRYSON, and MOORE, Circuit Judges.
DYK, Circuit Judge.
Appellants, a coalition of farmers, seed sellers, and
agricultural organizations, sought declaratory judgments
of non-infringement and invalidity with respect to twenty-
three patents owned by Monsanto Co. and Monsanto
Technology, LLC (collectively, “Monsanto”). The district
court concluded that there was no justiciable case or
controversy and dismissed for lack of jurisdiction. Be-
cause Monsanto has made binding assurances that it will
not “take legal action against growers whose crops might
inadvertently contain traces of Monsanto biotech genes
(because, for example, some transgenic seed or pollen
blew onto the grower’s land),” Defs.’ Mem. of Law in Supp.
of Mot. to Dismiss at 5, Organic Seed Growers & Trade
Ass’n v. Monsanto Co., 851 F. Supp. 2d 544 (S.D.N.Y.
2012) (No. 11-CV-2163), ECF No. 20, and appellants have
not alleged any circumstances placing them beyond the
scope of those assurances, we agree that there is no
justiciable case or controversy. We affirm.
BACKGROUND
The twenty-three patents-in-suit 1 relate to technolo-
gies for genetically modifying seeds. The patented tech-

1 The appellants have challenged the following
Monsanto patents: U.S. Patent Nos. 5,322,938 (“DNA
sequence for enhancing the efficiency of transcription”);
5,352,605 (“Chimeric genes for transforming plant cells
using viral promoters”); 5,362,865 (“Enhanced expression
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 5
nologies are used to incorporate various traits into soy-
beans, corn, and other agricultural crops, including traits
conferring resistance to the herbicide glyphosate (the
active ingredient in Monsanto’s product Roundup). See
generally Bowman v. Monsanto Co., 569 U.S. ___, 133
S.Ct. 1761 (2013); Monsanto Co. v. McFarling, 363 F.3d
1336 (Fed. Cir. 2004). Such seeds are known as “Roundup
Ready.” Farmers using Monsanto’s Roundup Ready
glyphosate-resistant seeds are able to eliminate weeds by
spraying glyphosate over the tops of their crops, a practice
that would kill non-genetically modified, or “convention-

in plants using non-translated leader sequences”);
5,378,619 (“Promoter for transgenic plants”); 5,424,412
(“Enhanced expression in plants”); 5,463,175 (“Glyphosate
tolerant plants”); 5,530,196 (“Chimeric genes for trans-
forming plant cells using viral promoters”); 5,554,798
(“Fertile glyphosate-resistant transgenic corn plants”);
5,593,874 (“Enhanced expression in plants”); 5,641,876
(“Rice actin gene and promoter”); 5,659,122 (“Enhanced
expression in plants using non-translated leader sequenc-
es”); 5,717,084 (“Chimaeric gene coding for a transit
peptide and a heterologous peptide”); 5,728,925 (“Chimae-
ric gene coding for a transit peptide and a heterologous
polypeptide”); 5,750,871 (“Transformation and foreign
gene expression in Brassica species”); 5,859,347 (“En-
hanced expression in plants”); 6,025,545 (“Methods and
compositions for the production of stably transformed,
fertile monocot plants and cells thereof”); 6,040,497
(“Glyphosate resistant maize lines”); 6,051,753 (“Figwort
mosaic virus promoter and uses”); 6,083,878 (“Use of N-
(phosphonomethyl) glycine and derivatives thereof”);
6,753,463 (“Transformed cotton plants”); 6,825,400 (“Corn
plants comprising event PV-ZMGT32(nk603)”); RE38,825
(“Glyphosate tolerant plants”); and RE39,247 (“Glypho-
sate-tolerant 5-enolpyruvylshikimate-3-phosphate syn-
thases”).
6 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

al,” seeds. See Bowman, 569 U.S. at ___, 133 S. Ct. at
1765–67; McFarling, 363 F.3d at 1338–39.
Monsanto sells seed and licenses others to grow and
sell seed, pursuant to a limited-use license (the “Technol-
ogy Agreement”) permitting growers to plant, harvest,
and sell a single generation of genetically modified seeds.
It is undisputed that Monsanto has enforced its patent
rights against farmers who planted Monsanto’s genetical-
ly modified seeds without authorization, see, e.g., Monsan-
to Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011), aff’d
Bowman, 569 U.S. ___, 133 S. Ct. 1761; Monsanto Co. v.
Scruggs, 459 F.3d 1328 (Fed. Cir. 2006), or who replanted
saved seeds in violation of the Technology Agreement, see,
e.g., McFarling, 363 F.3d at 1352. Between 1997 and
2010, Monsanto brought some 144 infringement suits for
unauthorized use of its seed. Approximately 700 other
cases were settled without litigation.
The appellants are growers, seed selling businesses,
and agricultural organizations, all of whom grow, use, or
sell conventional seeds, and many of whom have organic
certification. The appellants “do not want to use or sell
transgenic seed” incorporating Monsanto’s technologies.
First Amended Complaint (“Am. Compl.”) ¶ 2, Organic
Seed Growers, 851 F. Supp. 2d 544 (S.D.N.Y. 2012) (No.
11-CV-2163), ECF No. 3. They also oppose the use of
glyphosate and do not use it on their crops. They are
concerned, however, that
if they do indeed become contaminated by trans-
genic seed, which may very well be inevitable giv-
en the proliferation of transgenic seed today, they
could quite perversely also be accused of patent
infringement by the company responsible for the
transgenic seed that contaminates them.
Id.
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 7
On March 29, 2011, the appellants brought suit
against Monsanto in the Southern District of New York,
seeking declaratory judgments that the patents-in-suit
are invalid, unenforceable, and not infringed. Organic
Seed Growers, 851 F. Supp. 2d at 549. The appellants
alleged that they have been forced to “forgo growing
[conventional] corn, cotton, canola, sugar beets, soybeans,
and alfalfa, since it is widely known that those crops are
currently under severe threat of transgenic seed contami-
nation.” Am. Compl. ¶ 96; see also id. at ¶ 104 (alleging
that “over 85-90% of all soybeans, corn, cotton, sugar
beets, and canola grown in the U.S. contains Monsanto’s
patented genes”). They further alleged that they must
take costly precautions to avoid contamination, such as
testing seeds for transgenic traits and creating “buffer”
zones between their farms and those of neighbors growing
modified crops. Am. Compl. ¶ 108. The appellants con-
tended that if they do not take these precautions, their
crops would be contaminated, and they would be sued for
infringement by Monsanto. At least one appellant de-
clared that the fear of suit by Monsanto is the sole reason
he refrained from cultivating organic corn and soybeans,
and that he would resume growing those crops if that
threat were eliminated. See Decl. of Bryce Stephens,
Organic Seed Growers, 851 F. Supp. 2d 544 (S.D.N.Y.
2012) (No. 11-CV-2163), ECF No. 41.
On April 18, 2011, the appellants asked Monsanto to
“‘expressly waive any claim for patent infringement
[Monsanto] may ever have against [appellants] and
memorialize that waiver by providing a written covenant
not to sue.’” Organic Seed Growers, 851 F. Supp. 2d at
549 (quoting Am. Compl. Ex. 3 (Apr. 18, 2011, letter from
appellants’ counsel to Monsanto’s counsel)). The appel-
lants stated that without such a covenant, they would
“‘feel they would be at risk of having Monsanto assert
claims of patent infringement against them should they
ever become contaminated by transgenic seed potentially
8 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

covered by Monsanto’s patents.’” Id. at 549–50 (quoting
Am. Compl. Ex. 3). Monsanto refused their request and
referred the appellants to a statement posted on its
website, which reads in relevant part:
It has never been, nor will it be Monsanto policy
to exercise its patent rights where trace amounts
of our patented seeds or traits are present in
farmer’s fields as a result of inadvertent means.
J.A. 508 (“Monsanto’s Commitment: Farmers and Pa-
tents”). 2 Through counsel, Monsanto assured the appel-
lants that
Monsanto is unaware of any circumstances that
would give rise to any claim for patent infringe-
ment or any lawsuit against your clients. Mon-
santo therefore does not assert and has no
intention of asserting patent-infringement claims
against your clients. You represent that “none of
your clients intend to possess, use or sell any
transgenic seed, including any transgenic seed po-
tentially covered by Monsanto’s patents.” Taking
your representation as true, any fear of suit or
other action is unreasonable, and any decision not
to grow certain crops unjustified.
Am. Compl. Ex. 4 (alteration omitted) (Apr. 28, 2011,
letter from Monsanto’s counsel to appellants’ counsel).
According to Monsanto, a covenant not to sue is unneces-
sary because it would not have an incentive to bring suit
in the first place because it could not collect significant
damages for low levels of inadvertent infringement.

2 The full statement is available at the following
website:
http://www.monsanto.com/newsviews/Pages/comm
itment-farmers-patents.aspx.
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 9
The district court concluded that “these circumstances
do not amount to a substantial controversy and . . . there
has been no injury traceable to defendants,” and granted
Monsanto’s motion to dismiss for lack of subject matter
jurisdiction. Organic Seed Growers, 851 F. Supp. 2d at
556. The appellants timely appealed. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1). We review the district
court’s determination that it lacks subject matter jurisdic-
tion de novo. Arkema Inc. v. Honeywell Int’l, Inc., 706
F.3d 1351, 1356 (Fed. Cir. 2013).
DISCUSSION
The Declaratory Judgment Act, 28 U.S.C. § 2201(a),
provides that
In a case of actual controversy within its jurisdic-
tion . . . any court of the United States, upon the
filing of an appropriate pleading, may declare the
rights and other legal relations of any interested
party seeking such declaration, whether or not
further relief is or could be sought.
The declaratory judgment plaintiff bears the burden of
showing the existence of an “actual controversy,” see Arris
Grp., Inc. v. British Telecommc’ns PLC, 639 F.3d 1368,
1373 (Fed. Cir. 2011), that is, “any controversy over which
there is Article III jurisdiction,” Caraco Pharm. Labs.,
Ltd. v. Forest Labs., Inc., 527 F.3d 1278, 1290 (Fed. Cir.
2008), cert. denied, 555 U.S. 1170 (2009) (citing Aetna Life
Ins. Co. v. Haworth, 300 U.S. 227, 239–40 (1937)). As the
Supreme Court explained in MedImmune, Inc. v. Genen-
tech, Inc., “‘[b]asically, the question in each case is wheth-
er the facts alleged, under all the circumstances, show
that there is a substantial controversy, between parties
having adverse legal interests, of sufficient immediacy
and reality to warrant the issuance of a declaratory
judgment.’” 549 U.S. 118, 127 (2007) (quoting Md. Cas.
Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)).
10 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

“In determining whether a justiciable controversy is
present, the analysis must be calibrated to the particular
facts of each case.” Matthews Int’l Corp. v. Biosafe Eng’g,
LLC, 695 F.3d 1322, 1328 (Fed. Cir. 2012). Although
there is no bright-line rule applicable to patent cases, we
have held that “Article III jurisdiction may be met where
the patentee takes a position that puts the declaratory
judgment plaintiff in the position of either pursuing
arguably illegal behavior or abandoning that which he
claims a right to do.” SanDisk Corp. v. STMicroelectron-
ics, Inc., 480 F.3d 1372, 1380–81 (Fed. Cir. 2007). A
reasonable apprehension of suit is not necessary. Id.
However, “jurisdiction generally will not arise merely on
the basis that a party learns of the existence of a patent
owned by another or even perceives such a patent to pose
a risk of infringement.” Id. Thus, the question in this
case is not whether the appellants’ subjective fear of suit
by Monsanto is genuine, but whether they have demon-
strated a “‘substantial risk’ that the harm will occur,
which may prompt [them] to reasonably incur costs to
mitigate or avoid that harm.” See Clapper v. Amnesty
Int’l USA, 568 U.S. ___, ___, 133 S.Ct. 1138, 1150 n.5
(2013) (quoting Monsanto Co. v. Geertson Seed Farms, 561
U.S. ___, ___, 130 S.Ct. 2743, 2754–55 (2010)).
The appellants concede that Monsanto has never spe-
cifically alleged that they infringe its patents, nor threat-
ened suit against them. Nevertheless, the appellants
contend that in light of Monsanto’s evident history of
aggressive assertion of its transgenic seed patents against
other growers and sellers (144 suits and 700 settlements),
they must assume that if they infringe those patents, they
will also be sued—even if they only infringe inadvertent-
ly. Am. Compl. ¶ 130. The appellants urge that this
suffices for declaratory judgment jurisdiction. See, e.g.,
Arkema, 706 F.3d at 1357 (holding that it is not “neces-
sary that a patent holder make specific accusations” of
infringement against the declaratory judgment plaintiff);
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 11
Micron Tech, Inc. v. MOSAID Techs., Inc., 518 F.3d 897,
901 (Fed. Cir. 2008) (patentee’s suits against other manu-
facturers supported declaratory judgment jurisdiction);
Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1341
(Fed. Cir. 2008) (“Prior litigious conduct is one circum-
stance to be considered in assessing whether the totality
of circumstances creates an actual controversy.”); see also
Holder v. Humanitarian Law Project, 561 U.S. ___, 130
S.Ct 2705, 2717 (2010) (holding that plaintiffs had stand-
ing where similarly situated parties had been prosecuted
under the same statute). 3
Monsanto here claims that it has not previously sued
“inadvertent infringers,” and that the appellants are
therefore not similarly situated to those who have been
sued. But Monsanto at oral argument made clear that its
view of what constitutes an “inadvertent infringer” is
quite narrow, excluding those growers whose crops be-
come accidentally contaminated, and who do not treat
their fields with Roundup, but who, knowing of the con-
tamination, harvest and replant or sell the seeds.
There is, moreover, a substantial risk that at least
some of the appellants could be liable for infringement if
they harvested and replanted or sold contaminated seed.
Even though the Supreme Court has not addressed the
question, the Court’s recent decision in Bowman v. Mon-
santo Co. leaves open the possibility that merely permit-
ting transgenic seeds inadvertently introduced into one’s
land to grow would not be an infringing use. 4 Bowman,

3 To be sure, an amorphous, “‘widespread under-
standing’” of a risk of suit is not sufficient. Ass’n for
Molecular Pathology v. U.S. Patent & Trademark Office,
689 F.3d 1303, 1323 (Fed. Cir. 2012).
4 In Bowman, the Supreme Court held that patent
exhaustion did not permit a farmer to reproduce Monsan-
to’s transgenic seeds without a license. Bowman, 569
12 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

569 U.S. at ___, 133 S.Ct. at 1769 (recognizing that the
Court’s holding does not extend to a case in which “the
article’s self-replication might occur outside the purchas-
er’s control”). However, our cases suggest that one who,
within the meaning of the Patent Act, uses (replants) or
sells even very small quantities of patented transgenic
seeds without authorization may infringe any patents
covering those seeds. In SmithKline Beecham Corp. v.
Apotex Corp., we rejected the proposition that patent
claims should be construed to avoid reading on “trace
amounts” of a patented compound, even though that
compound’s self-replicating properties might “place poten-
tial infringers in the untenable position of never knowing
whether their product infringes because even a single
undetectable [molecule] would infringe.” 403 F.3d 1331,
1336, 1339–40 (Fed. Cir. 2005); see also Abbott Labs. v.
Sandoz, Inc., 566 F.3d 1282, 1299 (Fed. Cir. 2009) (noting
that de minimis infringement can still be infringement);

U.S. at ___, 133 S.Ct. at 1769. Bowman, a soybean
farmer, conceded that he had deliberately purchased,
harvested, and replanted Roundup Ready soybeans
without a license. Id. at 1765–67. He also used glypho-
sate on his fields, thereby favoring the survival of trans-
genic soybeans and eliminating conventional soybeans.
Id. The Court carefully distinguished Bowman’s use of
the patented soybean seeds from the situation of inad-
vertent infringement:
Bowman was not a passive observer of his soy-
beans’ multiplication; or put another way, the
seeds he purchased (miraculous though they
might be in other respects) did not spontaneously
create eight successive soybean crops. . . . In an-
other case, the [seed]’s self-replication might occur
outside the [farmer’s] control.
Id. at 1769.
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 13
Embrex, Inc. v. Serv. Eng’g Corp., 216 F.3d 1343, 1352–53
(Fed. Cir. 2000) (Rader, J., concurring) (“[T]his court has
not tolerated the notion that a little infringement—de
minimis infringement—is acceptable infringement or not
infringement at all.”). Both parties seem to concede that
at a minimum, using or selling patented seeds without a
license is potentially infringing activity. For purposes of
this appeal, we will assume (without deciding) that using
or selling windblown seeds would infringe any patents
covering those seeds, regardless of whether the alleged
infringer intended to benefit from the patented technolo-
gies. 5
While appellants do not allege that they have detected
contamination in their crops, the district court held that it
is likely inevitable that conventional crops will be contam-
inated by trace amounts of windblown pollen or seeds
from genetically modified crops or other sources. Organic
Seed Growers, 851 F. Supp. 2d at 548. Monsanto
acknowledges that conventional crops could be exposed to
“cross-pollination from nearby fields where biotech crops
are grown,” Appellees’ Br. 6, and that they “might inad-
vertently contain traces of Monsanto biotech genes (be-
cause, for example, some transgenic seed or pollen blew
onto the grower’s land),” Defs.’ Mem. of Law in Supp. of
Mot. to Dismiss at 5, Organic Seed Growers, 851 F. Supp.
2d 544 (S.D.N.Y. 2012) (No. 11-CV-2163), ECF No. 20; see
also J.A. 513 (Tobin Decl.) (acknowledging that contami-

5 Appellants nonetheless contend on the merits that
they cannot be liable for infringement because they do not
purposefully use or sell Monsanto’s transgenic seed and
would do so only inadvertently. Am. Compl. ¶ 5. Declara-
tory judgment plaintiffs’ refusal to concede infringement
does not, of course, defeat jurisdiction. See Arrowhead
Indus. Water, Inc. v. Echolochem, Inc., 846 F.2d 731, 738
(Fed. Cir. 1988).
14 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

nation could result in “Monsanto’s patented traits ap-
pear[ing] inadvertently” in a conventional farmer’s fields).
The record indicates that about one half of domestic
cropland is sown with genetically modified crop varieties,
and that some crops are ninety percent sown with Mon-
santo’s genetically modified seed. An amicus cites a study
finding that, despite stringent precautionary measures
meant to prevent any commingling of modified and con-
ventional seed crops, a large majority of conventional seed
samples have become contaminated by Monsanto’s
Roundup resistance trait. See J.A. 638–43. At least one
of the appellants received, and rejected, multiple ship-
ments of contaminated seeds. The district court found
that due to contamination,
some unlicensed—and unintended—use of trans-
genic seeds is inevitable. Like any other seeds,
transgenic seeds may contaminate non-transgenic
crops through a variety of means, including seed
drift or scatter, crosspollination, and commingling
via tainted equipment during harvest or post-
harvest activities, processing, transportation, and
storage.
Organic Seed Growers, 851 F. Supp. 2d at 548. Indeed,
the Supreme Court recently recognized that there is a risk
of “gene flow” from genetically modified crops into conven-
tional crops. See Geertson Seed Farms, 561 U.S. at ___,
130 S.Ct. at 2752–54 (holding that respondent conven-
tional farmers had standing to challenge the administra-
tive deregulation of transgenic seeds). The genetically
modified seeds cannot easily be separated from conven-
tional seeds; thus, a grower who harvests and uses or sells
contaminated crops risks incurring infringement liability.
Despite this possibility of infringement, the question
is whether Monsanto is correct that its representations
moot any potential controversy. As the Supreme Court
has recognized, a covenant not to sue a declaratory judg-
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 15
ment plaintiff can moot a controversy between the par-
ties. In Already, LLC v. Nike, Inc., trademark holder
Nike’s covenant not to sue the alleged infringer Already
defeated declaratory judgment jurisdiction, because
“Already’s only legally cognizable injury—the fact that
Nike took steps to enforce its trademark—is now gone,
and, given the breadth of the covenant, cannot be ex-
pected to recur.” 568 U.S. ___, ___, 133 S.Ct. 721, 732
(2013). Here, although Monsanto has been unwilling to
give appellants a covenant not to sue, it contends that it
has given them something equally effective: “Monsanto
has explicitly stated its commitment not to take legal
action against growers whose crops might inadvertently
contain traces of Monsanto biotech genes (because, for
example, some transgenic seed or pollen blew onto the
grower’s land).” Defs.’ Mem. of Law in Supp. of Mot. to
Dismiss at 5, Organic Seed Growers, 851 F. Supp. 2d 544
(S.D.N.Y. 2012) (No. 11-CV-2163), ECF No. 20. As noted
above, Monsanto has published the following statement
on its website: “[i]t has never been, nor will it be Monsan-
to policy to exercise its patent rights where trace amounts
of our patented seeds or traits are present in farmer’s
fields as a result of inadvertent means.” Id. Monsanto
represented to the district court that “[t]his statement is
meant to assure growers that Monsanto will not pursue a
patent-infringement suit where Monsanto’s patented
traits appear inadvertently . . . in minimal quantities.”
Id. And Monsanto has maintained throughout this litiga-
tion that if the facts are as alleged, it will not sue the
appellants:
Monsanto is unaware of any circumstances that
would give rise to any claim for patent infringe-
ment or any lawsuit against your clients. Mon-
santo therefore does not assert and has no
intention of asserting patent-infringement claims
against your clients. You represent that “none of
your clients intend to possess, use or sell any
16 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

transgenic seed, including any transgenic seed po-
tentially covered by Monsanto’s patents.” Taking
your representation as true, any fear of suit or oth-
er action is unreasonable, and any decision not to
grow certain crops unjustified.
Am. Compl. Ex. 4 (emphasis added) (alteration omitted)
(Apr. 28, 2011, letter from Monsanto’s counsel to appel-
lants’ counsel); see also Oral Argument at 20:10–20:17
(Monsanto’s counsel stating “if the allegations of [their]
complaint are true, [they] have nothing to fear from us”);
Appellees’ Br. 32 (urging that “in light of Monsanto’s
unambiguous statement to plaintiff’s counsel,” there is no
“‘real and immediate’ controversy” (emphasis added));
Defs.’ Mem. of Law in Supp. of Mot. to Dismiss at 11,
Organic Seed Growers, 851 F. Supp. 2d 544 (S.D.N.Y.
2012) (No. 11-CV-2163), ECF No. 20 (“Monsanto knows of
no basis to sue Plaintiffs, and has no interest in doing
so.”).
Taken together, Monsanto’s representations unequiv-
ocally disclaim any intent to sue appellant growers, seed
sellers, or organizations for inadvertently using or selling
“trace amounts” of genetically modified seeds. Monsanto
makes clear that this covers “USDA [United States De-
partment of Agriculture]-certified organic farm or han-
dling operation[s],” Appellees’ Br. 6–7, which are
prohibited from using genetically modified seed, see 7
C.F.R. § 205.105; J.A. 497–505. While the USDA has not
established an upper limit on the amount of trace contam-
ination that is permissible, the appellants argue, and
Monsanto does not contest, that “trace amounts” must
mean approximately one percent (the level permitted
under various seed and product certification standards).
We conclude that Monsanto has disclaimed any intent to
sue inadvertent users or sellers of seeds that are inad-
vertently contaminated with up to one percent of seeds
carrying Monsanto’s patented traits.
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 17
While Monsanto’s representations are not a covenant
not to sue, they have a similar effect. If we rely on Mon-
santo’s representations to defeat the appellants’ declara-
tory judgment claims (as we do), those representations
are binding as a matter of judicial estoppel. It is well-
established that a party who successfully argues one
position is estopped from later adopting a contrary posi-
tion in a case involving the same patent. See, e.g., U.S.
Philips Corp. v. Sears Roebuck & Co., 55 F.3d 592, 596–97
(Fed. Cir. 1995); see also New Hampshire v. Maine, 532
U.S. 742, 750–51 (2001). The main factors warranting
judicial estoppel are (1) a party’s later position is “clearly
inconsistent” with its prior position, (2) the party success-
fully persuaded a court to accept its prior position, and (3)
the party “would derive an unfair advantage or impose an
unfair detriment on the opposing party if not estopped.”
New Hampshire v. Maine, 532 U.S. at 750–51. Should
Monsanto sue the appellants for future actions falling
within the scope of its representations in this litigation,
all three factors would warrant the application of judicial
estoppel. As the Supreme Court stated in Already, “[the
defendant], having taken the position in court that there
is no prospect of [infringement by the declaratory plain-
tiffs], would be hard pressed to assert the contrary down
the road.” 568 U.S. at ___, 133 S.Ct. at 728 (citing New
Hampshire v. Maine, 532 U.S. at 749). At oral argument,
Monsanto’s counsel wisely acknowledged that “if the court
writes an opinion that relies on the representations that I
made in my letter, in response to their letter, then I think
it would be binding as a matter of judicial estoppel.” Oral
Argument at 17:30–17:51.
One problem with Monsanto’s disclaimer, however, is
that it has limited scope: it applies only to growers or
sellers of “trace” amounts of seed. At oral argument,
Monsanto resisted our efforts to clarify whether it would
assert its patents against a conventional grower who
inadvertently uses or sells greater than trace amounts of
18 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

modified seed, but who, for example, does not make use of
the Roundup Ready trait by spraying the plants with
glyphosate. Thus, we cannot conclude that Monsanto has
disclaimed any intent to sue a conventional grower who
never buys modified seed, but accumulates greater than
trace amounts of modified seed by using or selling con-
taminated seed from his fields. 6
Nonetheless, the appellants here have not made alle-
gations that they fall outside Monsanto’s representations.
While at least some of the appellants allege that they will
necessarily harvest and use or sell trace amounts of
modified seeds, no appellants have alleged that they are
engaging in activities that place them outside the scope of
Monsanto’s disclaimer. There is no allegation that the
alleged contamination already exceeds the one percent
threshold. 7 Nor have the appellants here taken any

6 At oral argument, Monsanto’s counsel was quite
careful never to represent that Monsanto would forgo suit
against a grower who harvested and replanted windblown
seeds—even if that grower gained no advantage by doing
so:
Q: “So, would it be fair to say, in my hypothetical,
that Monsanto would not sue unless the [inad-
vertently infringing] farmer was using Roundup
on his crops?”
A: “It’s never—I don’t know if it would be fair to
say . . .”
Oral Argument at 30:19–30:33.
7 Counsel for the appellants conceded as much at
oral argument:
Q: “So you’re saying that you have cases of your
clients who are contaminated to an extent greater
than one percent?”
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 19
concrete steps that would place them outside the scope of
Monsanto’s binding disclaimer, and at risk of suit for
infringement. No plaintiffs have alleged plans to use or
sell greater than trace amounts of modified seed, such as,
for example, plans to selectively harvest and replant or
sell contaminated seeds in a manner favoring the repro-
duction of transgenic seeds. To the contrary, the appel-
lants are “using their best efforts to avoid” contamination.
Am. Compl. ¶ 2.
We have held that a declaratory judgment plaintiff
must allege “significant, concrete steps to conduct infring-
ing activity.” Cat Tech LLC v. Tubemaster, Inc., 528 F.3d
871, 880 (Fed. Cir. 2008). In Arkema v. Honeywell, for
example, the declaratory judgment plaintiff had “concrete
plans” to supply a product for concededly infringing uses,
had already marketed the product, had responded to
supply requests, and wished to enter supply contracts
with customers. 706 F.3d at 1357. There are no similar
allegations here.
When it is “uncertain when, if ever, the declaratory
plaintiff would engage in potentially infringing activity,
the dispute [does] not present a case or controversy of
sufficient immediacy to support a declaratory judgment.”
See Cat Tech, 528 F.3d at 881 (citing Benitec Austl., Ltd.
v. Nucleonics, Inc., 495 F.3d 1340, 1346–50 (Fed. Cir.
2007)). As the Supreme Court explained in Already, it is
“incumbent on [the declaratory judgment plaintiff] to
indicate that it engages in or has sufficiently concrete

A: “Not in this case, no, but yes, we do have cli-
ents.”
Q: “But not here.”
A: “Right.”
Oral Argument at 37:53–38:13.
20 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY

plans to engage in activities not covered” by a defendant’s
covenant not to sue. 568 U.S. at ___, 133 S.Ct. at 728.
When Already failed to make that showing, the Supreme
Court held that there was no Article III case or controver-
sy. Id. at 732–33. It follows that there is no case or
controversy here.
Finally, the appellants argue that Monsanto’s refusal
to provide a blanket covenant not to sue has a “chilling
effect,” forcing the appellants “to forgo farming or seed
distribution activities that they otherwise would very
much like to pursue.” Am. Compl. ¶ 142. Under some
circumstances, forgoing activities or taking costly precau-
tions may be reasonable responses to a substantial risk of
future harm, and may therefore be cognizable injuries.
See Geertson Seed Farms, 561 U.S. at ___, 130 S.Ct. at
2754–55. However, “‘[a]llegations of a subjective “chill”
are not an adequate substitute for a claim of specific
present objective harm or a threat of specific future
harm.’” Clapper, 568 U.S. at ___, 133 S.Ct. at 1152 (quot-
ing Laird v. Tatum, 408 U.S. 1, 13–14 (1972)); see also
Prasco, 537 F.3d at 1338 (“[A] fear of future harm that is
only subjective is not an injury or threat of injury caused
by the defendant that can be the basis of an Article III
case or controversy.”). Declaratory judgment plaintiffs
need not be “literally certain that the harm they identify
will come about,” but they must show that they are at
“‘substantial risk’” of that harm, and that costly precau-
tions are a reasonable response. Clapper, 568 U.S. at ___,
133 S.Ct. at 1150 n.5 (quoting Geertson Seed Farms, 561
U.S. at ___, 130 S. Ct. at 2754–55). The appellants have
not made that showing here, because the future harm
they allege—that they will grow greater than trace
amounts of modified seed, and therefore be sued for
infringement by Monsanto—is too speculative to justify
their present actions. Parties “cannot manufacture
standing merely by inflicting harm on themselves based
 ORGANIC SEED GROWERS AND TRADE v. MONSANTO COMPANY 21
on their fears of hypothetical future harm.” 568 U.S. at
1151.
The appellants also complain that they are harmed
by, inter alia, exposure to the allegedly adverse health
effects of genetically modified seeds and glyphosate; long-
term environmental impacts of genetically modified seeds;
economic costs following from contamination of conven-
tional crops by transgenic seeds and glyphosate; and the
costs of anti-contamination precautions taken for purpos-
es other than avoiding suit (i.e., to maintain organic
certification). But as the appellants concede, “a declara-
tory judgment here would do nothing to eliminate the risk
of transgenic seed contamination.” Appellants’ Reply Br.
14. Aside from the risk of suit by Monsanto, none of the
alleged harms caused by contamination is traceable to
Monsanto’s enforcement of its patents, they could not be
remedied by a declaratory judgment, and they cannot
serve as a basis for jurisdiction in this case.
In sum, Monsanto’s binding representations remove
any risk of suit against the appellants as users or sellers
of trace amounts (less than one percent) of modified seed.
The appellants have alleged no concrete plans or activities
to use or sell greater than trace amounts of modified seed,
and accordingly fail to show any risk of suit on that basis.
The appellants therefore lack an essential element of
standing. The district court correctly concluded that it
lacks Declaratory Judgment Act jurisdiction.
AFFIRMED
COSTS
No costs.