United States Court of Appeals 

for the Federal Circuit ______________________ 

MONSANTO COMPANY AND

MONSANTO TECHNOLOGY, LLC,

Plaintiffs-Appellees,

v.

E.I. DU PONT DE NEMOURS AND COMPANY AND

PIONEER HI-BRED INTERNATIONAL, INC.,

Defendants-Appellants.

______________________ 

2013-1349

______________________ 

Appeal from the United States District Court for the 

Eastern District of Missouri in No. 09-CV-0686, Senior 

Judge E. Richard Webber.

______________________ 

Decided: May 9, 2014

______________________ 

SETH P. WAXMAN, Wilmer Cutler Pickering Hale and 

Dorr LLP, of Washington, DC, argued for plaintiffsappellees. With him on the brief were PAUL R.Q.

WOLFSON, THOMAS G. SAUNDERS, CAROLYN JACOBS 

CHACHKIN, and DANIEL AGUILAR. Of counsel on the brief 

were GEORGE C. LOMBARDI, and JAMES MATTHEW 

HILMERT, Winston & Strawn LLP, of Chicago, Illinois; 

JOHN JUSTIN ROSENTHAL, of Washington, DC; and JOSEPH 

P. CONRAN, Husch Blackwell, LLP, of St. Louis, Missouri. 
2 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

THOMAS G. HUNGAR, Gibson, Dunn & Crutcher LLP, 

of Washington, DC, argued for defendants-appellants. 

With him on the brief was SCOTT P. MARTIN. Of counsel 

on the brief were JAMES P. DENVIR III and AMY J.

MAUSER, Boies, Schiller & Flexner LLP, of Washington, 

DC.

______________________ 

Before LOURIE, REYNA, and WALLACH, Circuit Judges.

LOURIE, Circuit Judge. 

E.I. Du Pont de Nemours and Company and its subsidiary Pioneer Hi-Bred International, Inc. (collectively 

“DuPont”) appeal from the orders of the United States 

District Court for the Eastern District of Missouri imposing sanctions on DuPont by striking DuPont’s contract 

reformation defense and counterclaims and awarding 

Monsanto Company and Monsanto Technology, LLC 

(collectively “Monsanto”) attorney fees. See Monsanto Co. 

v. E.I. Du Pont de Nemours & Co., No. 4:09-CV-0686, ECF 

No. 974 (E.D. Mo. Dec. 21, 2011) (sealed sanctions order); 

ECF No. 1043 (E.D. Mo. Feb. 16, 2012) (order approving

itemized attorney fees); ECF No. 1662 (E.D. Mo. Nov. 16, 

2012) (unsealed and redacted version of sanctions order). 

Because the district court did not abuse its discretion in 

imposing the sanctions, we affirm. 

BACKGROUND

Monsanto developed a genetic modification in soybean 

seeds, marketed under the Roundup Ready® (“RR”) brand 

name and known as the 40-3-2 event (the “RR trait”), 

which enables soybean plants to tolerate the application 

of glyphosate herbicide that kills weeds. See Monsanto, 

ECF No. 124, slip op. at 1 (E.D. Mo. Jan. 15, 2010) (partial judgment on the pleadings). Monsanto owns U.S. 

Patent RE 39,247E (the “’247 Patent”), which covers the 

RR trait. In 1992, Monsanto granted Pioneer Hi-Bred 

International, Inc. (“Pioneer”) a nonexclusive license to 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 3

produce and sell soybean seeds containing Monsanto’s 

glyphosate-tolerant traits. After Pioneer became a subsidiary of DuPont, Monsanto and Pioneer entered into an 

Amended and Restated Roundup Ready® Soybean License 

Agreement on April 1, 2002 (the “License”), which superseded the 1992 license. J.A. 656. Under the License, 

DuPont produced and sold soybean seeds that were

glyphosate-tolerant due to the RR trait. Monsanto, ECF 

No. 124, slip op. at 2.

In 2006, DuPont announced that it had developed its 

own glyphosate-tolerant trait, Optimum GAT® (“OGAT”), 

which was expected to confer tolerance to both glyphosate 

and acetolactate synthase inhibitor herbicide. J.A. 33991. 

DuPont intended to commercialize the OGAT trait, but 

subsequent testing indicated that OGAT alone did not 

provide sufficient glyphosate-tolerance for commercial 

use. J.A. 34004. DuPont therefore stacked, or combined,

its OGAT trait with Monsanto’s RR trait and discovered

that the OGAT/RR stack provided increased yields in field 

trials. Appellant Br. 15; J.A. 14281. DuPont did not sell 

any OGAT/RR soybean product, however, and discontinued its development in 2011 or 2012. Reply Br. 29.

In May 2009, Monsanto sued DuPont for breach of the 

License and infringement of the ’247 Patent. Monsanto

maintained that the License did not allow DuPont to 

stack the RR trait with another glyphosate-tolerant trait, 

such as OGAT, or to commercialize the stacked product. 

Monsanto, ECF No. 124, slip op. at 2. DuPont answered 

and counterclaimed that the License permitted it to stack 

OGAT with RR and that if the License were interpreted to 

restrict or preclude the OGAT/RR stack, then the License

should be reformed. Id.; Monsanto, ECF No. 21, at 81–82 

(E.D. Mo. June 16, 2009) (answer and counterclaims). 

DuPont also asserted antitrust counterclaims. Id. 
4 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

The License provides in section 3.01 that: 

(a) Subject to the terms of this Agreement, Monsanto hereby grants to Licensee, and Licensee, hereby accepts, a non-exclusive license 

within the Licensed Field . . . to develop, use, 

produce, have produced, offer to sell, sell and 

import Licensed Commercial Seed . . . . 

(e) The parties agree that except for applicable 

patents, Licensee shall be free to introduce 

any gene and/or trait into, and commercialize 

as set forth in subparagraph 3.01(a), Licensed 

Commercial Seed . . . without the prior consent of Monsanto, except as specifically provided in subparagraph 3.01(g) and 3.01(h). . . . 

(g) Licensee shall not be entitled to . . . (iv) use 

Biological Materials outside the Licensed 

Field. . . . 

(i) Licensee agrees not to commercialize a variety of Licensed Commercial Seed which carries 

a gene or genes not supplied by Monsanto and 

which results in increased tolerance to a nonglyphosate herbicide without the prior written 

consent of Monsanto which consent shall not 

be withheld if Licensee reasonably demonstrates . . . that the introduction of such nonglyphosate herbicide tolerance gene(s) does not 

increase the injury . . . from glyphosate application to the crop . . . . 

J.A. 660–61 (emphases added). The term “Licensed Field” 

is defined in section 2.09 as: “Licensed Commercial Seed 

which exhibit genetically-engineered protection against 

Glyphosate herbicide solely due to the presence of the 

Glyphosate-Tolerant Soybean Event: 40-3-2.” Id. at 658 

(emphasis added).
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 5

The district court granted partial judgment on the 

pleadings to Monsanto in January 2010, holding that the 

License was “unambiguous and [did] not grant [DuPont]

the right to stack non-RR glyphosate-tolerant trait technologies with the licensed” trait. Monsanto, ECF No. 124, 

slip op. at 10, 23. The court reasoned that the primary 

license grant provision, section 3.01(a), was limited to a 

license “to produce and sell Licensed Commercial Seed 

‘within the Licensed Field.’” Id. at 7. In view of the 

Licensed Field definition in section 2.09, the court concluded that “Licensed Commercial Seed may only exhibit 

glyphosate resistance that is solely due to 40-3-2,” and 

thus that the OGAT/RR stack was outside the Licensed 

Field because it generated glyphosate resistance that was 

not solely due to 40-3-2. Id. at 7–8 (emphasis in original). 

The court therefore dismissed DuPont’s contract-based

counterclaim. Id. at 24.

On January 29, 2010, DuPont moved for reconsideration and sought to restore its counterclaim to reform the 

License. Monsanto, ECF No. 150 (E.D. Mo. Jan. 29, 2010)

(motion for reconsideration). DuPont also moved for leave 

to file a second amended answer and counterclaims

(“SAAC”) to add three contract reformation counterclaims. 

Monsanto, ECF No. 164 (E.D. Mo. Feb. 19, 2010) (motion 

for leave to amend). DuPont contended that the amendments were the product of “additional investigations” into 

the factual basis for reformation. Id. at 11–12.

The district court declined to reconsider its ruling that 

the License did not grant DuPont “a right to create 

OGAT/RR stacked seed products.” Monsanto, ECF No. 

283, slip op. at 8 (E.D. Mo. July 30, 2010) (order on motions for reconsideration and for leave to amend). While 

noting that “it [would] be difficult for Defendants to prove 

their reformation claims, especially given the clear and 

convincing evidence standard,” id. at 14, the court nonetheless granted DuPont leave to file the SAAC to assert

reformation counterclaims and defenses, id. at 15.
6 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

In the SAAC, DuPont acknowledged that it intended 

to commercialize the OGAT/RR stack and asserted that 

the License should be reformed to reflect the parties’ 

understanding that it would not restrict DuPont from 

developing the OGAT/RR stack. Monsanto, ECF No. 316, 

at 30–31, 108, 110–11 (E.D. Mo. Aug. 19, 2010). DuPont

based the amended reformation counterclaims on three

alternative grounds: (1) mutual mistake, (2) DuPont’s 

unilateral mistake and Monsanto’s knowing silence, and 

(3) Monsanto’s fraud. Id. at 167–72. 

To support those counterclaims, DuPont asserted that 

“[a]t all times during the drafting and execution of the 

[License], Pioneer and DuPont thought that [the License] 

did not prohibit Pioneer from stacking other traits or 

genes, including traits or genes for glyphosate tolerance . . 

. .” Id. at 167–69. DuPont also asserted that “Pioneer 

and DuPont and Monsanto’s agents all understood that 

the Licensed Field term, including the language ‘solely 

due to the presence of’ . . . has nothing to do with stacking 

restrictions,” and that “Pioneer and DuPont did not at any 

time understand the Licensed Field term to restrict 

Pioneer from stacking traits or genes that provide similar 

protection as the licensed trait.” Id. at 121.

During discovery, both parties filed motions that required the district court’s frequent intervention. Concerning DuPont’s reformation counterclaims, Monsanto moved 

to compel production of documents relating to DuPont’s 

understanding of stacking restrictions under the License. 

Monsanto, ECF No. 639 (E.D. Mo. Mar. 4, 2011). The 

district court ruled that, by asserting reformation claims 

based on mutual mistake and unilateral mistake, DuPont 

had placed its subjective belief concerning its stacking 

rights at issue, “the truthful resolution of which require[ed] an examination of attorney-client communications.” Monsanto, ECF No. 756, slip op. at 3 (E.D. Mo. 

May 17, 2011). The court consequently gave DuPont the 

option to “either voluntarily dismiss these reformation 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 7

claims or produce to Monsanto all documents bearing on 

these issues that it previously withheld.” Id. at 4.

DuPont chose to continue litigating its reformation 

counterclaims and produced previously withheld internal

e-mails of its in-house attorneys and high-level executives 

who were directly involved in negotiating the License. 

Those e-mails showed, for example, that DuPont’s negotiators were aware in March 2002 that the “solely” language in section 2.09 could be a stacking restriction. See,

e.g., J.A. 14797 (“[S]ection 2.09 may be a problem . . . if we 

use a Glyphosate resistance gene (i.e. GAT) as a selectable marker in soybean transformation.”). Moreover, 

when DuPont developed the OGAT/RR stack in 2007 and 

early 2008, those in-house attorneys advised that DuPont

did not have the right to commercialize the OGAT/RR 

stack “[b]ecause of the field of use limitation in section 

3.01(a).” See, e.g., J.A. 14291, 14799. 

Monsanto then moved for sanctions, seeking to invoke 

the district court’s inherent powers and asserting that 

DuPont had misrepresented its subjective belief concerning stacking rights and had perpetrated a fraud on the 

court. Monsanto, ECF No. 864 (E.D. Mo. Sept. 6, 2011). 

DuPont maintained in opposition that it had always

understood that the License authorized it to make and 

sell the OGAT/RR stack. Monsanto, ECF No. 893, at 9–

10, 13, 21 (E.D. Mo. Sept. 21, 2011) (DuPont’s opposition 

brief); Monsanto, ECF No. 961, at 43:3–5 (E.D. Mo. Nov. 

30, 2011) (motion hearing transcript). 

After a hearing, the district court granted the motion 

and imposed sanctions pursuant to its inherent powers on 

December 21, 2011. Monsanto, ECF No. 974 (sealed 

sanctions order); ECF No. 1662 (unsealed and redacted 

version). The court noted that, since the beginning of the 

litigation, DuPont had taken the position that “they 

contracted for, and have always believed that the [License] provided them with, the right to stack and com-
8 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

mercialize” the RR trait with the OGAT trait in soybeans, 

which provided the basis for DuPont’s reformation claims. 

Monsanto, ECF No. 1662, slip op. at 2. The court found, 

however, that DuPont’s position was not “rooted in fact”

and that DuPont had made misrepresentations, which 

called into question its candor to the court. Id. 

Specifically, Monsanto argued that DuPont had made 

five types of misrepresentations in its pleadings and 

motions: (1) that it “always had the right to commercialize (or sell) RR/OGAT stacked seeds;” (2) that it “always 

had the right to stack RR and OGAT traits;” (3) that it

“believe[d] that Section 2.09 of the license agreements, 

the ‘Licensed Field’ definition, ha[d] no relation to stacking;” (4) that it “did not discover the meaning of the 

‘Licensed Field’ definition and its limitation on stacking 

until 2008;” and (5) that it “believe[d] that Section 3.01(a) 

[did] not contain any type of field of use limitation.” Id. at 

4. After reviewing the record and considering arguments 

from both parties, the court found that DuPont had made 

factual misrepresentations concerning its subjective belief 

under each of the five categories as shown by its internal 

documents in order to support its reformation claims. Id.

at 8, 15, 18–20. The court thus held that DuPont had 

perpetrated a fraud on the court and abused the judicial 

process, which warranted sanctions. Id.

As sanctions, the district court struck DuPont’s

reformation defense and counterclaims. Id. at 32. Moreover, after finding that DuPont had acted in bad faith, the 

court awarded attorney fees to Monsanto, but limited the 

award to fees incurred in defending against DuPont’s

reformation counterclaims beginning on January 29, 

2010, the date on which DuPont moved to restore those

claims, as well as fees incurred for the sanctions motions. 

Id. at 34; Monsanto, ECF No. 1043.

The parties then litigated the remaining claims. In 

June 2012, the district court granted summary judgment 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 9

in Monsanto’s favor on its breach of contract claims and 

rejected DuPont’s license defense, but held that the only 

contractual damages available to Monsanto were nominal 

damages. Monsanto, ECF Nos. 1308, 1309, 1310 (E.D. 

Mo. June 6, 2012). The patent infringement claims 

proceeded to trial and the jury returned a verdict for 

Monsanto, awarding a royalty as damages for the patent 

infringement. Monsanto, ECF No. 1563 (E.D. Mo. Aug. 1, 

2012). A separate trial on DuPont’s antitrust counterclaims was scheduled for October 2013. Monsanto, ECF 

No. 1618 (E.D. Mo. Oct. 2, 2012). In March 2013, Monsanto and DuPont stipulated to dismiss all claims and 

counterclaims with prejudice and jointly moved for final 

judgment. Monsanto, ECF No. 1687 (E.D. Mo. Mar. 26, 

2013). DuPont reserved its right to appeal from the 

sanctions orders and rulings embodied therein, but not 

from other orders or rulings of the court. Monsanto, ECF 

No. 1688 (E.D. Mo. Mar. 26, 2013). The district court 

entered final judgment accordingly. Monsanto, ECF No. 

1691 (E.D. Mo. Mar. 26, 2013).

DuPont timely appealed and we have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). Zenith Elecs. Corp. v. 

Exzec, Inc., 182 F.3d 1340, 1346 (Fed. Cir. 1999) (holding 

that dismissal of patent claims with prejudice did not 

divest our jurisdiction to review a district court’s decision 

regarding nonpatent claims). 

DISCUSSION

I.

In appeals in patent cases, we apply the law of the regional circuit “to which district court appeals normally lie, 

unless the issue pertains to or is unique to patent law.” 

Molins PLC v. Quigg, 837 F.2d 1064, 1066 (Fed. Cir. 

1988). When reviewing the imposition of sanctions under 

a district court’s inherent powers, we apply the law of the 

regional circuit in which the district court sits, here the 
10 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

Eighth Circuit. Baldwin Hardware Corp. v. FrankSu 

Enter. Corp., 78 F.3d 550, 560–562 (Fed. Cir. 1996). 

The Eighth Circuit reviews a district court’s imposition of sanctions under its inherent powers for an abuse of 

discretion. Stevenson v. Union Pac. R.R. Co., 354 F.3d 

739, 745 (8th Cir. 2004) (citing Chambers v. NASCO, Inc., 

501 U.S. 32, 55 (1991)); Dillon v. Nissan Motor Co., 986 

F.2d 263, 267 (8th Cir. 1993). Applying Eighth Circuit 

law, we give “substantial deference to the district court’s 

determination as to whether sanctions are warranted 

because of its familiarity with the case and counsel involved.” Willhite v. Collins, 459 F.3d 866, 869 (8th Cir. 

2006). Moreover, “whether the extent of a sanction is 

appropriate is a question peculiarly committed to the 

district court.” Dillon, 986 F.2d at 268. “[T]he issue is not 

what we might have done if the situation had been presented to us originally, but rather, whether the district 

court abused its discretion in imposing the sanction.” Id.

at 267. “‘A district court would necessarily abuse its 

discretion if it based its ruling on an erroneous view of the 

law or on a clearly erroneous assessment of the evidence.’” 

Plaintiffs’ Baycol Steering Comm. v. Bayer Corp., 419 F.3d 

794, 802 (8th Cir. 2005) (quoting Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405 (1990)). Factual findings 

are not clearly erroneous unless “the reviewing court on 

the entire evidence is left with the definite and firm 

conviction that a mistake has been committed.” Anderson 

v. City of Bessemer, 470 U.S. 564, 573 (1985).

II.

DuPont contends that interpreting the objective 

meaning of the License was a question of law and that the 

district court improperly sanctioned DuPont for making 

reasonable legal arguments that section 3.01 of the License permitted stacking and commercialization of 

glyphosate-tolerant traits. DuPont also contends that the 

district court erred in improperly relying on selected 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 11

documents to find that DuPont misrepresented its subjective belief concerning stacking restrictions, whereas the 

full record reflected a contested factual issue. Moreover, 

DuPont contends that the views of its individual employees should not be attributed to the company. DuPont also 

contends that the statements made by its employees in 

2007 and 2008 were irrelevant to the reformation of the 

2002 agreement and that those statements were merely 

conservative legal advice of in-house counsel. DuPont 

asserts that the sanctions were improper because the 

court’s ability to function impartially was not adversely 

affected and that the sanctions would hinder zealous 

advocacy. DuPont also asserts that its conduct did not 

meet the high standard for a finding of fraud on the court. 

Monsanto responds that the district court did not 

sanction DuPont for making legal arguments concerning

the objective meaning of the License, but, rather, the 

court imposed narrowly-tailored sanctions on DuPont for 

factual misrepresentations of its subjective belief concerning stacking rights supporting its reformation claims. 

Monsanto contends that those representations were 

directly contradicted by DuPont’s later-produced internal 

documents and that the court properly relied on documents that were authored by DuPont’s in-house attorneys 

and top executives who negotiated the License. Moreover, 

Monsanto argues that the court properly considered 

documents from 2007 and 2008, because they shed additional light on DuPont’s prior understanding of the 2002 

agreement and whether DuPont continued to maintain 

that understanding. Monsanto also responds that 

DuPont’s repeated misrepresentations and their effect on 

the litigation supported the court’s finding that DuPont 

acted in bad faith, which warranted the attorney fees 

sanction. 

We agree with Monsanto that the district court did 

not abuse its discretion in imposing narrowly-tailored 

sanctions on DuPont for making factual misrepresenta-
12 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

tions concerning its subjective understanding of the 

License in order to advance its reformation counterclaims. 

“[A] district court possesses inherent powers ‘to manage 

[its] affairs so as to achieve the orderly and expeditious 

disposition of cases.’” Wescott Agri-Prods., Inc. v. Sterling 

State Bank, Inc., 682 F.3d 1091, 1095 (8th Cir. 2012) 

(quoting Chambers, 501 U.S. at 43). “A court must exercise its inherent powers with restraint and discretion, and 

a primary aspect of that discretion is the ability to fashion 

an appropriate sanction.” Harlan v. Lewis, 982 F.2d 

1255, 1262 (8th Cir. 1993).

The record is clear that the district court did not sanction DuPont for making legal arguments concerning the 

objective meanings of the License. Almost two years 

before imposing the sanctions, the court interpreted the 

License as a matter of law in the partial judgment on the 

pleadings, in which it concluded that the License did not 

grant DuPont the right to stack OGAT with the RR trait. 

Monsanto, ECF No. 124. DuPont then moved for reconsideration of that interpretation and, alternatively, 

sought to reform the License so that it could avoid infringement liability for developing the OGAT/RR stack. 

Monsanto, ECF Nos. 150, 316. The district court declined 

to reconsider its interpretation of the License, but granted 

DuPont leave to file the SAAC to pursue its reformation 

counterclaims. Monsanto, ECF No. 283. Thus, the objective meaning of the License had been decided at an early 

stage of the litigation and DuPont’s allegations were 

made in an attempt to obtain reformation of the License 

in view of the district court’s interpretation.*

* Because DuPont had stipulated to only appeal 

from the sanctions orders, and not from other rulings of 

the district court including the partial judgment on the 

pleadings, we need not consider whether the district court 

correctly interpreted the License as a matter of law.

 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 13

In the sanctions order, the district court made clear 

that DuPont was sanctioned for knowingly making factual misrepresentations concerning its subjective belief in 

order to maintain its reformation claims. Monsanto, ECF 

No. 1662, slip op. at 2, 4, 8, 15, 18–20. The court reviewed 

DuPont’s statements in the SAAC and subsequent motions concerning reformation and found that DuPont had 

misrepresented its subjective belief, an element of reformation that was to be decided as a matter of fact. Id. at 

8–9, 15–16, 18–19. As sanctions, the court specifically

and exclusively targeted the reformation claims, which 

depended on DuPont’s factual misrepresentations, by 

striking those claims and awarding related attorney fees. 

Id. at 32–34.

Even though the court also cited statements from

DuPont’s motion opposing the partial judgment on the 

pleadings regarding the objective meaning of the License, 

the court referred to those statements only to infer 

DuPont’s litigation position on its subjective belief concerning the License. Id. at 5–6, 8, 20 (finding that 

DuPont maintained in the litigation that “they believed 

they had the right to sell RR/OGAT stacked seeds”). By 

asserting the reformation counterclaims after the partial 

judgment on the pleadings, DuPont maintained its prior

position that the 2002 agreement allowed it to stack and 

commercialize an OGAT/RR product, although at that 

later stage it based its claims on its purported subjective 

belief in that position. Even assuming that DuPont’s

arguments concerning the objective meaning of the License were not sanctionable when first made, its subsequent insistence in attempting to reform the License to 

reflect its interpretation of the agreement rendered those 

earlier statements relevant to factual issues underlying 

the reformation claims. 

Under Delaware law, which governs the License, a 

contract may be reformed in rare instances to express the

“real agreement” of the parties. Cerberus Int’l, Ltd. v. 
14 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

Apollo Mgmt. L.P., 794 A.2d 1141, 1151 (Del. 2002). 

Delaware law recognizes three grounds for reformation: 

(1) mutual mistake, (2) unilateral mistake coupled with 

knowing silence of the other party, and (3) fraud by the 

other party. See id. (mutual mistake and unilateral 

mistake); Emmert v. Prade, 711 A.2d 1217, 1219 (Del. Ch. 

1997) (fraud). Because a duly executed formal instrument 

may not be lightly set aside, a party seeking to reform a 

contract must prove by clear and convincing evidence

that, before executing the written instrument, the parties 

came to a specific prior understanding that differed 

materially from the written agreement, and that it mistakenly believed that the final, executed contract accurately expressed that prior understanding. Cerberus, 794 

A.2d at 1150–52, 1155; Hob Tea Room, Inc. v. Miller, 89 

A.2d 851, 856–57 (Del. 1952). Thus, by asserting reformation counterclaims based on all three possible grounds, 

DuPont’s subjective belief concerning the License became

a material factual issue. 

Here, the district court did not clearly err in finding 

that DuPont had made material factual misrepresentations of its subjective belief. DuPont’s later-produced 

internal documents contradict its litigation statements

concerning its subjective belief. For example, DuPont 

maintained in the SAAC that it “did not at any time 

understand the Licensed Field term [in section 2.09] to 

restrict” stacking of glyphosate-tolerant traits. Monsanto, 

ECF No. 316, at 121. However, in a March 26, 2002 email, a DuPont negotiator noted that “section 2.09 may be 

a problem . . . if we use a Glyphosate resistance gene (i.e. 

GAT) as a selectable marker in soybean transformation.” 

J.A. 14797. The district court thus found that DuPont

was aware of possible stacking restrictions in section 2.09, 

but it did not change the language of that section or 

suggest any language on the topic of stacking glyphosatetolerant traits prior to executing the License. Monsanto, 

ECF No. 1662, slip op. at 10–11, 18. Thus, we discern no 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 15

clear error in the district court’s findings that DuPont had 

made factual misrepresentations of its subjective understanding. 

We also find no error in the district court’s reliance on 

the statements of DuPont’s individual employees to infer 

DuPont’s subjective belief concerning the License. Those 

employees were high-level executives and in-house attorneys, who directly participated in the negotiation with 

Monsanto as DuPont’s corporate representatives. In 

addition, because DuPont had waived its attorney-client 

privilege to pursue the reformation counterclaims, the 

court properly considered the statements of DuPont’s inhouse attorneys who were part of the negotiation team. 

In addition, we find no error in the district court’s discretionary consideration of subsequent statements made 

by those negotiators in the 2007 and 2008 documents, 

which are relevant at least as circumstantial evidence of

DuPont’s prior understanding of the 2002 agreement and 

whether DuPont “always” had that understanding as it 

had pled. DuPont’s negotiators stated in 2007 that 

DuPont did not have the right to commercialize the 

OGAT/RR stack because of the field of use limitation in 

section 3.01(a). J.A. 14799. The district court observed 

that those negotiators expressed “no surprise at an expected claim by Monsanto that the [License contained] 

stacking restrictions.” Monsanto, ECF No. 1662, slip op. 

at 28. Moreover, DuPont asserted to the district court

that it had always believed that the License granted it 

certain rights, and thus the 2007 and 2008 documents 

were relevant to the basis of that assertion. Monsanto, 

ECF No. 893, at 1, 9–10, 21; ECF No. 961, at 43:3–5. As 

such, the court did not err in considering the 2007 and 

2008 documents.

DuPont argues, however, that the record as a whole 

showed a disputed factual issue concerning its subjective 

belief and thus did not warrant sanctions for misrepre-
16 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

sentation. DuPont specifically referred to internal e-mails 

between its negotiators in March 2002. J.A. 14440, 

14969–70, 14301–02. However, we find that those e-mails 

do not support DuPont’s broad assertion to the district 

court that it had negotiated for and obtained the right to 

make and sell an OGAT/RR product. 

In a March 27, 2002 e-mail, a DuPont negotiator informed his colleague that the parties were “[s]till having 

major problems with the RR/[ ] stack on beans as a commercial product,” but Monsanto had “OK’ed a gene that 

confers [glyphosate] resistance as a marke[r] (i.e. GAT).” 

J.A. 14440 (emphasis added). That negotiator, however, 

cautioned his colleague that “[b]efore you get too excited 

about GAT . . . [t]hey do not know about it specifically, 

and they will obviously have other issues (i.e. patents) 

regarding [its] use . . . [but] at least the agreement does 

not prohibit use of a non-Mon[santo] gene which supplies 

gly[phosate]-tolerance.” J.A. 14440. In a March 28 

e-mail, the negotiator explained to his colleague that by 

introducing section 3.01(i), which addressed the stacking 

and commercialization of non-glyphosate-tolerant gene(s)

with the RR trait, DuPont “would not be blocked against 

using another glyphosate resistance gene as a selectable 

marker, . . . but . . . it does not necessarily mean we have 

an FTO on another Gly[phosate]-tolerant gene,” where 

FTO referred to freedom-to-operate. J.A. 14969 (emphasis added). 

Upon review of the entire record, we find no clear error in the district court’s finding of misrepresentation. 

The March 27 and 28 e-mails are consistent with the 

court’s finding that DuPont was aware that Monsanto 

sought to impose stacking restrictions during the license 

negotiation, but that DuPont did not propose contract

language to specifically address its right to stack and 

commercialize an OGAT/RR product. At best, those emails showed that DuPont anticipated using OGAT as a 

selectable marker, a research tool or marker for detecting
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 17

the successful transformation of another gene into the RR 

soybeans. Those e-mails, however, contained no discussion concerning whether DuPont negotiated for the right 

to make and sell an OGAT/RR commercial product. 

Notably, DuPont made no argument at the district court 

that the License should be reformed based on DuPont’s

purported belief that it was not prohibited from using

OGAT as a selectable marker. Instead, DuPont sought in

the district court to reform the License in order to obtain 

the express right to make and sell an OGAT/RR product, 

when its internal documents directly contradicted its 

broad assertion of that right. See, e.g., J.A. 14799 

(“[DuPont] can stack but no commercial rights.”); J.A. 

14318 (“A conservative reading says we can stack but may 

not be able to commercialize, a potentially useless right.”). 

We therefore conclude that the district court did not 

clearly err in finding that DuPont had misrepresented its 

subjective belief concerning the License in order to maintain its reformation claims. We further conclude that the 

district court did not abuse its discretion in imposing its 

narrowly-tailored sanctions. 

A district court has the discretion “‘to fashion an appropriate sanction for conduct which abuses the judicial 

process,’ including assessing attorney fees or dismissing 

the case.” Wescott, 682 F.3d at 1095 (quoting Chambers, 

501 U.S. at 44–45). “When a litigant’s conduct abuses the 

judicial process, dismissal of a lawsuit is a remedy within 

the inherent power of the court.” Martin v. DaimlerChrysler Corp., 251 F.3d 691, 694 (8th Cir. 2001) (citing 

Pope v. Fed. Express Corp., 974 F.2d 982, 984 (8th Cir. 

1992)). Under Eighth Circuit law, “a finding of bad faith 

is not always necessary to the court’s exercise of its inherent power to impose sanctions.” Stevenson, 354 F.3d at 

745; Harlan, 982 F.2d at 1260 (noting that the bad faith 

requirement does not extend “to every possible disciplinary exercise of the court’s inherent power”). However, 

“[a] bad faith finding is specifically required in order to 
18 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

assess attorneys’ fees.” Stevenson, 354 F.3d at 751 (citing 

Chambers, 501 U.S. at 45–46). Thus, “if a court finds that 

fraud has been practiced upon it, or that the very temple 

of justice has been defiled, it may assess attorney’s fees 

against the responsible party, as it may when a party 

shows bad faith by delaying or disrupting the litigation or 

by hampering enforcement of a court order.” Chambers, 

501 U.S. at 46 (internal citation and quotation marks 

omitted).

Here, the district court found that DuPont had abused 

the judicial process and acted in bad faith. The court 

found that DuPont repeatedly misrepresented its subjective belief in order to support its reformation counterclaims, which prolonged the “already-protracted 

proceedings and caused unnecessary expense to Monsanto 

and needless effort by the [c]ourt.” Monsanto, ECF No. 

1662, slip op. at 8, 15, 19, 20. The court found that 

DuPont delayed the litigation “by their insistence that 

they believed they had the right to stack and commercialize RR and OGAT.” Id. at 33. The court reasoned that 

striking portions of the SAAC was “the only means” to 

deter DuPont’s misconduct and to preclude DuPont from 

continuing its behavior, which the district court found to 

be “an abuse of judicial process.” Id. at 32. The court also 

found that the repeated misrepresentations had “compromised the integrity of the case,” that DuPont’s refusal 

“to abandon these false statements . . . amount[ed] to 

vexatious conduct,” and that DuPont had “acted in bad 

faith.” Id. at 34.

We consider those findings of the district court not to 

be clearly erroneous, as the court had first-hand 

knowledge of how DuPont’s conduct affected the progress 

of the litigation. For almost two years from January 2010 

to December 2011, DuPont restored, amended, and litigated its reformation counterclaims. When seeking leave

to file the SAAC, DuPont represented to the district court 

that the amended counterclaims were the product of its 
MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS 19

“additional investigation” of the factual basis for reformation. Monsanto, ECF No. 164, at 11–12. DuPont’s

internal documents, however, contradicted its litigation 

statements concerning reformation. Those internal 

documents were initially withheld by DuPont under a 

claim of privilege and produced only after the court’s 

ruling on Monsanto’s motion to compel, in which the court 

gave DuPont the option of either dismissing the reformation claims or producing those internal documents. 

DuPont chose to continue litigating the reformation 

claims and seeking to invoke the court’s equitable power 

to reform the License in order to obtain the right to make 

and sell an OGAT/RR product, despite contradictory

evidence showing that DuPont’s own negotiators questioned whether DuPont had obtained that right. We 

therefore conclude that the district court did not err in 

holding that DuPont had abused the judicial process and 

acted in bad faith. 

Moreover, the district court properly exercised its discretion in imposing targeted sanctions by carefully fitting 

its sanctions to the conduct that it found to be improper. 

The court allowed DuPont to continue litigating other 

contract, patent infringement, and antitrust counterclaims and defenses. The court limited the attorney fees

award to fees directly incurred on the reformation claims

after January 29, 2010, the date on which DuPont moved 

to restore those claims. We therefore conclude that the 

court acted within its discretion.

Although, as indicated, we agree with the district 

court that DuPont’s overly zealous advocacy to advance

its reformation claims constituted bad faith and vexatious 

conduct, we do find that DuPont’s conduct did not satisfy

the high standard for “fraud on the court” as described in 

Nichols v. Klein Tools, Inc., 949 F.2d 1047, 1048 (8th Cir. 

1991) and Pfizer Inc. v. International Rectifier Corp., 538 

F.2d 180, 195 (8th Cir. 1976). In those cases, fraud on the 

court was narrowly defined as “the most egregious mis-
20 MONSANTO COMPANY v. E.I. DU PONT DE NEMOURS

conduct directed to the court itself, such as bribery of a 

judge or jury or fabrication of evidence by counsel.” Id. 

Such conduct did not occur here.

However, other Eighth Circuit cases appear to apply a 

lower standard for sanctions under the court’s inherent 

powers and do not require a finding of “fraud on the 

court.” See, e.g., Gas Aggregation Servs., Inc. v. Howard 

Avista Energy, LLC, 458 F.3d 733, 739 (8th Cir. 2006) 

(sanctions after a finding of bad faith); Stevenson, 354 

F.3d at 751 (sanctions of attorney fees and adverse inference jury instruction for “bad faith conduct”); see also

Chambers, 501 U.S. at 46 (sanctions of attorney fees when 

a party “shows bad faith by delaying or disrupting the 

litigation”). Under the latter test, DuPont exceeded the 

bounds of appropriate conduct and stretched its advocacy 

beyond what was reasonably justified. Because the 

district court correctly found that DuPont had abused the 

judicial process and acted in bad faith by making affirmative factual misrepresentations and because the court 

imposed narrowly-tailored sanctions, we affirm. 

CONCLUSION

Because we conclude that the district court did not 

abuse its discretion in imposing the sanctions on DuPont, 

we affirm. 

AFFIRMED