Samuel T. "Sam" Lockner

DuPont Pioneer – Monsanto Licensing Deal Valued at $1.75 Billion

For the past several years, Carlson Caspers has represented one of the largest agribusinesses companies in the world, DuPont Pioneer®. Although much of the firm’s work on behalf of DuPont Pioneer® involves confidential information, one public example of its representation is in its negotiation with Monsanto Company over the genetically modified trait known as Roundup Ready 2, one of the largest patent licensing agreements ever struck.
Carlson Caspers assisted DuPont Pioneer in the complex negotiations on this matter, which resulted in DuPont Pioneer gaining broad, royalty-bearing licenses to Monsanto’s new technology, and being allowed to stack multiple traits in the same product. Both companies also agreed to dismiss all existing antitrust and patent infringement actions against each other with respect to their technology for genetically modified seeds.

Multiple Global Licensing Agreements for DuPont Pioneer and CRISPR-Cas9 Technology Section

Carlson Caspers assisted DuPont Pioneer in securing a non-exclusive license to the Broad Institute patent portfolio relating to CRISPR-Cas9 (Clustered Regularly Interspaced Short Palindromic Repeats) genome editing technology, as well as negotiating an agreement with Broad on a governance framework and standard licensing terms for the joint out-licensing of CRISPR-Cas9 technology to third parties in specific fields.
Carlson Caspers has led multi-year licensing negotiations for its long-time client, DuPont Pioneer, concerning its in- and out-licensing of CRISPR-Cas9 gene-editing technology. In addition, Carlson Caspers negotiated an arrangement with Caribou Biosciences that included a 1) cross-license of their respective CRISPR-Cas9 intellectual property portfolios, 2) the creation of a multi-year research collaboration to advance genome editing technology platforms, and 3) an equity investment by DuPont Pioneer in Caribou Biosciences.
Carlson Caspers also led negotiations and completed a technology license agreement with ERS Genomics (“ERS”) that granted DuPont Pioneer exclusive rights to the ERS patent portfolio covering CRISPR-Cas9 genome editing technology in certain fields.
According to DuPont Pioneer’s website, “This ground-breaking technology is expected to help scientists to develop innovative and sustainable solutions for growers similar to those realized through conventional plant breeding practices, but with even greater quality, accuracy and with more efficient development timelines.”
DuPont Pioneer is applying CRISPR-Cas as an advanced plant breeding tool to develop seed products for more excellent environmental resiliency, productivity, and sustainability and has defined it as a set of CRISPR-Cas guiding principles.

Par v. Breckenridge (Megestrol)

Carlson Caspers represented Polymer Group in a trademark infringement action relating to the sale of non-woven wipes by Magla and its customer, The Kroger Company. Carlson Caspers obtained a favorable settlement for its client.

Pozen v. Teva Pharmaceuticals USA, Inc. (sumatriptan and naproxen sodium)

Carlson Caspers represented Teva Pharmaceuticals in its effort to seek FDA permission to market a generic version of Treximet® (sumatriptan and naproxen sodium) before expiration of Pozen’s patents. Our client settled its case, while other litigants that proceeded through trial were found to infringe patents that were further found not invalid.

Takeda Pharmaceutical Company et al. v. Watson Pharmaceuticals, Inc., et al. (ramelteon)

Carlson Caspers represented Watson in a patent infringement lawsuit by Takeda in an effort to defeat Watson’s FDA application to sell a generic version of Takeda’s Rozerem® sleep-aid. The case was settled without trial on favorable terms. District of Delaware (2011).