## Facts

- Monsanto owned patents covering glyphosate-tolerant (“Roundup Ready”) soybean technology embodied in licensed seed.
- Monsanto distributed the technology through a Technology Agreement requiring payment of a per-bag technology fee and limiting use to planting a single commercial crop in a single season; the agreement prohibited saving harvested seed for replanting.
- Homan McFarling, a farmer, purchased licensed Roundup Ready soybean seed in 1997 and 1998 and signed the Technology Agreement each time.
- McFarling nonetheless saved about 1,500 bushels of harvested patented soybeans and replanted saved seed in subsequent seasons; he indicated he would continue absent an injunction.
- Monsanto sued for breach of contract and patent infringement based on McFarling’s replanting of seed containing Monsanto’s patented traits.
- Prior appellate rulings upheld liability and rejected McFarling’s antitrust and patent-misuse defenses, but invalidated a liquidated-damages clause as an unenforceable penalty and remanded for a determination of actual damages.
- On remand, a jury awarded $40 per bag (approximately $375,000 total); the district court entered damages for patent infringement tied to the same conduct and entered a permanent injunction barring further unauthorized use.

## Issues

1. Whether substantial evidence supported the jury’s $40-per-bag award as Monsanto’s actual damages after the liquidated-damages clause was held unenforceable.
2. Whether McFarling could reopen or vacate settled liability determinations and previously rejected defenses in the post-remand proceedings.
3. Whether the district court abused its discretion in the scope of the permanent injunction, including whether it should have been expanded as Monsanto requested.

## Decision

- The Federal Circuit affirmed the damages judgment, holding the $40-per-bag award was supported by the trial record as a measure of actual damages.
- The court rejected McFarling’s attempts to relitigate liability-related issues, concluding they were barred by law-of-the-case and the mandate rule from earlier appeals.
- The court affirmed the permanent injunction as entered.
- The court affirmed the denial of Monsanto’s request to modify and broaden the injunction.

## Legal Principles

- After a liquidated-damages provision is invalidated as a penalty, a plaintiff may still recover actual damages supported by economic evidence, including the value of the licensed technology and losses attributable to unauthorized use.
- Law-of-the-case and the mandate rule bar relitigation of issues decided in earlier appeals in the same case absent exceptional circumstances.
- Unauthorized planting of patented seed obtained under a restricted license can support patent-infringement liability, and damages may be assessed based on the economic value of the rights exploited, provided recovery is not duplicative.
- Permanent injunctions in patent cases are reviewed for abuse of discretion; equitable relief may be limited to the scope of infringement proven and the record developed.

## Conclusion

The Federal Circuit affirmed a jury’s $40-per-bag actual-damages award and a permanent injunction against a farmer who replanted saved patented soybean seed in violation of license restrictions, and it refused to revisit settled liability issues or require broader injunctive relief.


Monsanto Co. v. McFarling, 488 F.3d 973 (Fed. Cir. 2007)