DCT
2:18-cv-02317
Larry L Walker v. AMVAC Chemical Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Larry L. Walker (Tennessee)
- Defendant: AMVAC Chemical Corporation (California)
- Plaintiff’s Counsel: Farris Bobango, PLC
- Case Identification: 2:18-cv-02317, E.D. Tenn., 03/28/2017
- Venue Allegations: Venue is based on the allegation that a substantial part of the events giving rise to the claims, including negotiations between the parties, occurred in the Eastern District of Tennessee.
- Core Dispute: Plaintiff alleges he is the true inventor of a patent assigned to Defendant, claiming Defendant misappropriated his invention—a method of using the herbicide ametryn—in breach of contract and filed for the patent without naming him as an inventor.
- Technical Context: The dispute is in the field of agricultural chemistry, specifically concerning herbicidal compositions and methods for controlling weeds in corn crops.
- Key Procedural History: The complaint alleges that the parties entered into a Confidentiality Agreement in 2009, under which Plaintiff disclosed his proprietary "Ametryn Method." The complaint centers on allegations that Defendant used this confidential information to file for and obtain the patent-in-suit, in violation of the agreement.
Case Timeline
| Date | Event |
|---|---|
| 2009-02-27 | Plaintiff and Defendant enter into Confidentiality Agreement |
| 2009-12-29 | Plaintiff and Defendant enter into Testing and Evaluation Agreement |
| 2010-03-03 | Plaintiff files his own patent application ('975 Application) |
| 2010-12-31 | Testing and Evaluation Agreement expires |
| 2011-09-08 | Plaintiff's '975 Application is published |
| 2011-11-08 | Priority Date of '270 Patent (filing of provisional application) |
| 2012-11-08 | '270 Patent application filed |
| 2013-05-09 | '270 Patent application published |
| 2014-10-01 | Confidentiality obligations under the 2009 Agreement allegedly expire |
| 2014-12-30 | '270 Patent issues |
| 2017-03-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,921,270 - "Method For Pre-Emergent Weed Control Using Triazine-Based Herbicide"
- Patent Identification: U.S. Patent No. 8,921,270, "Method For Pre-Emergent Weed Control Using Triazine-Based Herbicide," issued December 30, 2014.
The Invention Explained
- Problem Addressed: The patent's background section notes that the chemical ametryn was conventionally used as a post-emergent herbicide, meaning it was applied to kill weeds that have already sprouted. However, it states that ametryn had "never been shown nor demonstrated to be a pre-emergent herbicide in annual crops, such as cereals." (’270 Patent, col. 1:31-34). The technical challenge was to find an effective way to prevent weed growth from the start (pre-emergence) without harming the desired crop.
- The Patented Solution: The invention is a method of using a composition "consisting essentially of" the triazine-based herbicide ametryn as a pre-emergent treatment to control weed growth in crop plants, specifically corn. (’270 Patent, Abstract; col. 2:47-54). The method involves applying ametryn to the soil before the crop plants emerge, thereby inhibiting weed growth while allegedly being safe for the crop.
- Technical Importance: The claimed solution provides a method for using an existing chemical compound in a new way (pre-emergent vs. post-emergent) to address the persistent agricultural problem of weed control, potentially offering a different efficacy or safety profile than existing options. (’270 Patent, col. 1:38-41).
Key Claims at a Glance
- The complaint alleges that Plaintiff made all conceptual contributions to claims 1, 2, 3, 4, 6, 7, 12, 19, 21, 22, and 24 of the ’270 Patent (Compl. ¶78). Independent claim 1 is central to the dispute.
- Independent Claim 1:
- A herbicidal method for control of undesirable vegetation in a crop plant,
- consisting essentially of applying a herbicidally effective amount of a composition consisting essentially of a single herbicide being ametryn as the only active ingredient,
- to the undesirable vegetation, the habitat of the crop plant, or a combination thereof,
- before emergence of the crop plant,
- wherein the single herbicide is applied at a rate of from about 0.1 to about 3 pounds of active ingredient per acre,
- and wherein the crop plant is a corn.
- The complaint requests a declaration that Plaintiff is an inventor of the specified dependent claims as well (Compl., Prayer for Relief ¶4).
III. The Disputed Invention
Invention Identification
- The complaint identifies the disputed invention as the "Ametryn Method," which Plaintiff allegedly developed between 2001 and 2009 (Compl. ¶8).
Functionality and Market Context
- The Ametryn Method is described as a "method for the use of triazine-based corn herbicide, specifically the triazine-based corn herbicide ametryn, to control weeds in corn crops" (Compl. ¶8).
- Plaintiff alleges he disclosed this method, including confidential and trade secret information, to Defendant AMVAC under a Confidentiality Agreement for the purpose of evaluating a potential marketing partnership (Compl. ¶¶14, 27). The complaint alleges that the claims of the ’270 Patent "incorporate and make use of the Ametryn Method" that Plaintiff disclosed (Compl. ¶57).
- No probative visual evidence provided in complaint.
IV. Analysis of Inventorship Allegations
The complaint does not allege infringement of the ’270 Patent by a product, but rather that the patent itself improperly embodies Plaintiff's invention. The core of this count is that Plaintiff conceived of the claimed method and communicated it to the named inventors. The following table maps the elements of the asserted independent claim to Plaintiff's alleged inventive "Ametryn Method."
'270 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Contribution (The 'Ametryn Method') | Complaint Citation | Patent Citation |
|---|---|---|---|
| A herbicidal method for control of undesirable vegetation in a crop plant... wherein the crop plant is a corn. | The complaint alleges Plaintiff developed a method for using ametryn to "control weeds in corn crops." | ¶8 | col. 12:47 |
| consisting essentially of applying... a composition consisting essentially of a single herbicide being ametryn as the only active ingredient | The complaint alleges Plaintiff's method specifically involved the herbicide "ametryn." | ¶8 | col. 12:40-42 |
| ...before emergence of the crop plant... | The complaint alleges that the ’270 Patent claims cover the use of ametryn as a "preemergent herbicide," and that AMVAC's filing incorporating this method breached the parties' agreements. | ¶¶70-71 | col. 12:44-45 |
| wherein the single herbicide is applied at a rate of from about 0.1 to about 3 pounds of active ingredient per acre (lb ai/a) | The complaint alleges Plaintiff disclosed confidential "product performance" information and that the patent's claims incorporate his method, but does not specify the exact application rates he allegedly conceived. | ¶15 | col. 12:45-47 |
- Identified Points of Contention:
- Conception & Communication: A central question will be what specific information regarding the "Ametryn Method" Plaintiff actually conceived of and communicated to AMVAC. The case will require evidence demonstrating that Plaintiff conceived of the complete and operative invention as claimed, particularly the novel pre-emergent application to corn, and that this conception was communicated to the named inventors before they conceived of it themselves.
- Scope Questions: The dispute raises the question of whether Plaintiff's "Ametryn Method" is coextensive with the scope of the claims in the ’270 Patent. For example, what evidence demonstrates that Plaintiff, and not the named inventors, conceived of the specific application rates or the composition "consisting essentially of" ametryn as recited in the claims?
V. Key Claim Terms for Construction
While claim construction is typically for infringement analysis, the definition of certain terms will be critical to determining the scope of the invention Plaintiff claims to have conceived.
The Term: "pre-emergent"
Context and Importance: The patent distinguishes the invention from prior art by characterizing ametryn's conventional use as "post-emergent" (’270 Patent, col. 1:31). The novelty of the claimed method hinges on its "pre-emergent" application. Practitioners may focus on this term because Plaintiff's inventorship claim depends on proving he conceived of this specific, new mode of application, not just the general use of ametryn on corn.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines "pre-emergent" as "the application of the herbicide composition to a habitat, a weed, or soil, prior to the emergence of the crop plants from the soil." (’270 Patent, col. 2:51-54). This definition is time-based relative to the crop plant and could be argued to cover a wide range of application timings.
- Evidence for a Narrower Interpretation: The claims and examples provide specific timing windows, such as "between about 5 days and about 60 days prior to planting of the crop plant" (’270 Patent, col. 12:51-53) and specific timings in field trials (e.g., 12 days preplant, 0 day preplant). A party might argue these specific embodiments narrow the practical scope of what was invented.
The Term: "consisting essentially of"
Context and Importance: This transitional phrase limits the scope of the composition to the listed ingredients (ametryn) and those that do not materially affect the "basic and novel characteristic(s)" of the invention. Practitioners may focus on this term because it defines whether the invention is the use of pure ametryn or a formulation. Proving conception requires showing Plaintiff conceived of a composition that fits within this scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue this language allows for the inclusion of standard adjuvants, solvents, or safeners that do not alter the fundamental herbicidal action of ametryn, as described throughout the patent's examples which use an 80% WDG (water dispersible granule) formulation. (’270 Patent, col. 8:57-60).
- Evidence for a Narrower Interpretation: A party could argue this phrase strictly limits the composition to only ametryn as the sole active ingredient, distinguishing it from any combination herbicide. Claim 1 itself specifies "a single herbicide being ametryn as the only active ingredient" (’270 Patent, col. 12:40-42), reinforcing a narrow reading.
VI. Other Allegations
The complaint contains several counts in addition to the request for correction of inventorship.
- Breach of Contract (Count I): Plaintiff alleges that Defendant breached the Confidentiality and Testing Agreements by filing patent applications that "incorporate the Ametryn Method" without notifying Plaintiff and outside the scope of the permitted evaluation. (Compl. ¶¶ 70-72).
- Accounting and Specific Performance (Counts III & IV): Plaintiff seeks an accounting of all revenues Defendant received from the alleged use of the Ametryn Method (Compl. ¶¶ 83-85). Plaintiff also seeks specific performance of the Confidentiality Agreement, which allegedly entitles him to a "non-exclusive, world-wide license" for any inventions made by Defendant involving the disclosed technology. (Compl. ¶¶ 87-89).
- Willful Infringement: This is not a patent infringement case against a third-party product, so willfulness in that context is not alleged. However, the complaint does allege that in violating the agreements, Defendant acted "intentionally, maliciously or in reckless disregard for the rights of Walker" (Compl. ¶90).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to turn less on traditional patent infringement analysis and more on the factual history of the parties' contractual relationship and the conception of the invention. The central questions for the court will likely be:
- A primary contractual question: Did Defendant's use of the information allegedly provided by Plaintiff to prosecute the ’270 Patent constitute a breach of the confidentiality and/or evaluation agreements? The answer will depend on the specific terms of those agreements and the nature of the information exchanged.
- A core inventorship question: Can Plaintiff provide sufficient corroborating evidence to prove, by clear and convincing evidence, that he conceived of the complete and operative method claimed in the ’270 Patent—specifically, the pre-emergent application of a composition consisting essentially of ametryn to control weeds in corn—and communicated that invention to the named inventors at AMVAC?