DCT

2:24-cv-00372

David Austin Roses Ltd v. Jessie's Nursery LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00372, D. Ariz., 02/22/2024
  • Venue Allegations: Venue is asserted as proper in the District of Arizona because the facts giving rise to the claims, including the alleged sale and distribution of infringing products, occurred within the judicial district.
  • Core Dispute: Plaintiff alleges that Defendants are illegally propagating, importing, and selling rose plant varieties that are protected by twenty of Plaintiff's U.S. Plant Patents.
  • Technical Context: The case concerns the protection of new and distinct plant varieties, specifically proprietary English roses, which are the product of extensive horticultural breeding and represent significant commercial value in the ornamental plant market.
  • Key Procedural History: The complaint alleges that Plaintiff sent a cease-and-desist letter to Defendants on December 11, 2023, providing actual notice of the asserted patents and alleged infringement. This notice and Defendants’ subsequent alleged failure to fully cease infringing activities form the primary basis for the claim of willful infringement.

Case Timeline

Date Event
2005-01-31 Priority Date, U.S. Patent PP17,267
2005-02-01 Priority Date, U.S. Patent PP17,159
2005-10-31 Priority Date, U.S. Patent PP17,553
2006-10-17 Issue Date, U.S. Patent PP17,159
2006-12-12 Issue Date, U.S. Patent PP17,267
2007-04-03 Issue Date, U.S. Patent PP17,553
2007-09-26 Priority Date, U.S. Patent PP19,254
2008-09-23 Issue Date, U.S. Patent PP19,254
2010-05-17 Priority Date, U.S. Patent PP22,032
2010-06-15 Priority Date, U.S. Patent PP22,206
2011-03-14 Priority Date, U.S. Patent PP22,947
2011-07-19 Issue Date, U.S. Patent PP22,032
2011-10-25 Issue Date, U.S. Patent PP22,206
2012-04-27 Priority Date, U.S. Patent PP24,462
2012-08-14 Issue Date, U.S. Patent PP22,947
2012-12-11 Priority Date, U.S. Patent PP25,042
2013-03-28 Priority Date, U.S. Patent PP25,064
2014-02-04 Priority Date, U.S. Patent PP26,363
2014-04-11 Priority Date, U.S. Patent PP26,365
2014-04-11 Priority Date, U.S. Patent PP26,676
2014-04-11 Priority Date, U.S. Patent PP26,677
2014-05-20 Issue Date, U.S. Patent PP24,462
2014-11-11 Issue Date, U.S. Patent PP25,042
2014-11-18 Issue Date, U.S. Patent PP25,064
2014-12-23 Priority Date, U.S. Patent PP27,349
2016-02-02 Issue Date, U.S. Patent PP26,363
2016-02-02 Issue Date, U.S. Patent PP26,365
2016-05-03 Issue Date, U.S. Patent PP26,676
2016-05-03 Issue Date, U.S. Patent PP26,677
2016-11-08 Issue Date, U.S. Patent PP27,349
2017-04-24 Priority Date, U.S. Patent PP29,874
2017-05-04 Priority Date, U.S. Patent PP29,958
2018-11-27 Issue Date, U.S. Patent PP29,874
2018-12-11 Issue Date, U.S. Patent PP29,958
2019-12-12 Priority Date, U.S. Patent PP32,531
2019-12-12 Priority Date, U.S. Patent PP32,662
2019-12-12 Priority Date, U.S. Patent PP32,874
2020-12-01 Issue Date, U.S. Patent PP32,531
2020-12-22 Issue Date, U.S. Patent PP32,662
2021-03-09 Issue Date, U.S. Patent PP32,874
2023-04-01 Alleged Infringing Sales Begin
2023-10-28 Defendant Jessie's Nursery, LLC Incorporated
2023-12-11 Plaintiff Sends Cease-and-Desist Letter
2024-02-22 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Plant Patent No. 32,874 - "Rosa Hybrida Shrub Named 'AUSgray'," issued March 9, 2021

The Invention Explained

  • Problem Addressed: The patent describes the objective of breeding a new cut-flower rose variety with a specific combination of desirable traits: a yellow/apricot color, a double bloom in a cupped form, strong stems, good vase life, and a fresh tea fragrance ('32,874 Patent, col. 1:12-16).
  • The Patented Solution: The invention is the 'AUSgray' plant itself, a new and distinct variety of Rosa hybrida shrub that embodies this unique set of characteristics. The patent's detailed botanical description specifies traits such as the petal count (approx. 123), color (RHS 11A yellow group), and fragrance (tea), which collectively distinguish it from prior varieties ('32,874 Patent, col. 4:1-12). The accompanying color photograph provides a visual representation of the claimed plant ('32,874 Patent, Fig. 1).
  • Technical Importance: The creation of a new plant variety with a novel combination of aesthetic and performance characteristics provides a distinct product for the competitive commercial horticulture and cut-flower markets ('32,874 Patent, col. 1:12-16).

Key Claims at a Glance

  • The patent contains a single independent claim (Claim 1).
  • Claim 1: A new and distinct variety of rose plant of the shrub class, substantially as herein shown and described, characterized by:
    • Apricot/yellow colored, many-petalled, double bloom
    • Strong stems
    • Tea fragrance
    • Suitability for cut-flower production

U.S. Plant Patent No. 27,349 - "Rosa Hybrida Shrub Named 'AUSweather'," issued November 8, 2016

The Invention Explained

  • Problem Addressed: The primary objective of the breeding program was to create a rose variety suitable for cut-flower production with double, pink blooms where the many petals are arranged in a "quartered formation," combined with a long vase life and fragrance ('27,349 Patent, Abstract; col. 1:20-24).
  • The Patented Solution: The 'AUSweather' variety is a new Rosa hybrida shrub that achieves this objective. The patent describes its key distinguishing features, including its specific pink color (RHS 65B red-purple group), high petal count (approx. 92), and quartered bloom structure, which are shown in the accompanying illustration ('27,349 Patent, col. 4:1-15, Fig. 1).
  • Technical Importance: This variety introduces a new combination of color, form (quartered petals), and performance (vase life) for the commercial cut-flower industry, differentiating it from existing pink rose cultivars ('27,349 Patent, col. 1:20-24).

Key Claims at a Glance

  • The patent contains a single independent claim (Claim 1).
  • Claim 1: A new and distinct variety of rose plant of the shrub class, substantially as herein shown and described, characterized by:
    • Double, pink blooms
    • Many petals arranged in a quartered formation
    • Long vase life
    • Moderate rose fragrance

Multi-Patent Capsule: U.S. Plant Patent No. 29,874 - "Rosa Hybrida Shrub Named 'AUSoblige'," issued November 27, 2018

  • Technology Synopsis: This patent protects a new rose variety bred for cut-flower production, featuring large white/creamy double blooms with approximately 60 petals forming a loose, ruffled rosette shape ('29,874 Patent, Abstract). The invention aimed to create a new aesthetic combination with leathery, matt green leaves and a musk fragrance ('29,874 Patent, col. 4:63-64).
  • Asserted Claims: Claim 1.
  • Accused Features: Defendants are accused of asexually reproducing, using, and selling the 'Ausoblige' rose variety (Compl. ¶44).

Multi-Patent Capsule: U.S. Plant Patent No. 32,531 - "Rosa Hybrida Plant Named 'AUSwagsy'," issued December 1, 2020

  • Technology Synopsis: This patent protects a cut-flower rose variety with ivory-colored, double blooms containing many petals (approx. 105) arranged in an informal formation ('32,531 Patent, Abstract). The breeding objective was to combine this appearance with good vase life, strong stems, and a fresh fragrance ('32,531 Patent, col. 1:20-24).
  • Asserted Claims: Claim 1.
  • Accused Features: Defendants are accused of asexually reproducing, using, and selling the 'Auswagsy' rose variety (Compl. ¶45).

Multi-Patent Capsule: U.S. Plant Patent No. 17,267 - "Shrub Rose Plant Named 'AUSimmon'," issued December 12, 2006

  • Technology Synopsis: This patent covers a rose plant suitable for cut-flower production in greenhouse conditions, characterized by medium pink, shallow cupped blooms ('17,267 Patent, Abstract). The invention sought to combine this aesthetic with a long vase life, upright growth, and a moderate fruity fragrance ('17,267 Patent, col. 1:12-16).
  • Asserted Claims: Claim 1.
  • Accused Features: Defendants are accused of asexually reproducing, using, and selling the 'Ausimmon' rose variety (Compl. ¶46).

(Note: The complaint asserts 15 additional plant patents which follow the same pattern of allegations.)

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are live rose plants of 20 different varieties, including 'Ausgray', 'Ausweather', 'Ausoblige', 'Auswagsy', and 'Ausimmon', allegedly protected by Plaintiff's patents (Compl. ¶¶39-58).

Functionality and Market Context

The complaint alleges that Defendants have been illegally propagating and/or importing these patented rose varieties and offering them for sale to consumers throughout the United States (Compl. ¶¶25, 39-58). These sales are allegedly conducted through an Etsy shop and a dedicated website, "jessiesrose.com" (Compl. ¶¶20, 23). The complaint alleges that many of these varieties are part of Plaintiff's exclusive "wedding collection" and are not commercially available as plants from any authorized source, suggesting illicit procurement (Compl. ¶27). The complaint provides screenshots, such as those in Exhibits V-Z, which allegedly depict Defendants’ online listings offering for sale rose varieties protected by Plaintiff's patents (Compl. ¶26, Exs. V-Z).

IV. Analysis of Infringement Allegations

The infringement allegations for plant patents are based on establishing that the accused plant is an asexual reproduction (i.e., a clone) of the patented plant. The complaint makes a direct allegation of identity for each patent.

'32,874 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A new and distinct variety of rose plant ... substantially as herein shown and described, characterized particularly by its apricot/yellow color... The complaint alleges that Defendants are asexually reproducing, importing, using, offering for sale, and selling plants of the 'Ausgray' variety. ¶42 col. 1:12-16

'27,349 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A new and distinct variety of rose plant ... substantially as herein shown and described, characterized particularly by its ... double, pink blooms with many petals arranged in a quartered formation... The complaint alleges that Defendants are asexually reproducing, importing, using, offering for sale, and selling plants of the 'Ausweather' variety. ¶43 col. 1:20-24
  • Identified Points of Contention:
    • Factual Question (Identity): The central dispute will be factual: are the rose plants sold by Defendants genetically identical to, or phenotypically indistinguishable from, the plants described and claimed in the patents-in-suit? The complaint's allegations of direct copying of marketing materials may be used to support an inference of direct copying of the plants themselves (Compl. ¶29).
    • Scope Questions (The "Substantially" Standard): Should discovery reveal minor variations between the accused plants and the patent descriptions, a question may arise as to whether the accused plants are still "substantially as herein shown and described." The court would need to determine if any observed differences are significant enough to place the accused plants outside the scope of the claims.

V. Key Claim Terms for Construction

In plant patent litigation, the analysis focuses less on construing individual terms and more on the overall scope of the single claim, which covers the plant "substantially as herein shown and described."

  • The Term: "substantially as herein shown and described"
  • Context and Importance: This phrase defines the entire scope of protection for a plant patent. The case will depend on whether the Defendants' plants fall within this scope. Practitioners may focus on this standard because it determines whether minor phenotypic variations in an accused plant are sufficient to avoid infringement. The dispute is not one of definition, but of the application of this standard to the physical evidence—the plants themselves.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The use of the word "substantially" suggests the patent is not limited to a plant that is a perfect, 100% identical match in all respects under all conditions. An argument for a broader scope would posit that the claim covers any plant that possesses the same novel combination of essential distinguishing characteristics, allowing for minor variations due to growing conditions or somatic mutation.
    • Evidence for a Narrower Interpretation: The phrase "as herein shown and described" ties the claim scope tightly to the specific embodiments, detailed botanical data (e.g., petal counts, color codes), and photographs in the patent ('32,874 Patent, col. 3-4, Fig. 1). An argument for a narrower scope would contend that any deviation from the characteristics that were identified as novel and distinguishing in the specification places a plant outside the claim.

VI. Other Allegations

  • Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. §§ 163 and 271(a) and does not plead separate counts or provide specific factual allegations for indirect infringement (inducement or contributory infringement) (Compl. ¶¶39-58).
  • Willful Infringement: Willfulness is explicitly alleged for all patent infringement counts (Compl. ¶¶37, 59). The allegation is based on both constructive knowledge and actual, pre-suit knowledge. The complaint asserts that Defendants had constructive knowledge of the patents and that infringement was willful from the outset (Compl. ¶28). More significantly, it alleges that Plaintiff provided Defendants with actual notice via a detailed cease-and-desist letter on December 11, 2023, and that Defendants continued their infringing activities thereafter, allegedly strengthening the basis for willfulness (Compl. ¶¶35-36).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of biological identity: Can Plaintiff prove through expert horticultural analysis, morphological comparison, and potentially genetic testing that the rose plants sold by Defendants are, in fact, asexual reproductions of the specific varieties claimed in the twenty asserted patents?
  • A key evidentiary question will be one of provenance and willfulness: What evidence will emerge regarding how Defendants initially obtained the genetic material for these proprietary, and in some cases non-publicly available, rose varieties? The answer will be critical for the willfulness claim, particularly in assessing Defendants' conduct both before and after receiving the cease-and-desist letter.
  • A potential legal and factual question is the scope of the claim: If the accused plants exhibit variations from the patents' detailed descriptions, the central question will become whether these are minor differences within the scope of "substantially as... described," or if they constitute distinct varieties that do not infringe.