DCT
2:18-cv-05257
James M Green v. Monrovia Nursery Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: James M Green, Cecil M Green, and Rita M Green (Florida)
- Defendant: Monrovia Nursery Co Inc Company (California)
- Plaintiff’s Counsel: Procopio Cory Hargreaves Savitch LLP; Hellsell Fetterman LLP
- Case Identification: 2:18-cv-05257, C.D. Cal., 06/20/2018
- Venue Allegations: Venue is alleged to be proper based on a choice of venue provision in a contract between the parties, as well as Defendant's status as a California corporation with its principal place of business and substantial business activities within the district.
- Core Dispute: Plaintiffs allege that Defendant's 'TANGO TWIRL' mandevilla plant infringes patents covering Plaintiffs' 'Rita Marie Green' variety and that sales of 'TANGO TWIRL' constitute a breach of a licensing agreement between the parties.
- Technical Context: The dispute centers on plant genetics and the commercial rights to a novel Mandevilla plant variety characterized by a rare 'double-flowering' trait.
- Key Procedural History: The complaint alleges the parties entered into a licensing agreement in 1998, under which patents covering Plaintiffs' plant variety were obtained and assigned to Defendant. A key provision allegedly stipulates that patent ownership reverts to Plaintiffs upon a breach of the agreement by Defendant. Plaintiffs claim that Defendant's failure to pay royalties on the accused 'TANGO TWIRL' product constitutes such a breach, thereby granting them ownership of the patents-in-suit and standing to sue for infringement.
Case Timeline
| Date | Event |
|---|---|
| 1998-08-20 | Priority Date for ’547 and ’787 Patents |
| 1998-09-10 | Licensing Agreement signed between the Greens and Monrovia |
| 2000-01-01 | Alleged discovery year for the 'Monrey'/'TANGO TWIRL' variety |
| 2001-02-27 | U.S. Plant Patent No. PP11,787 Issued |
| 2001-10-09 | U.S. Patent No. 6,300,547 Issued |
| 2003-11-11 | U.S. Plant Patent No. PP14,290 (covering 'Monrey') Issued |
| 2017-04-12 | Plaintiffs sent notice of breach letter to Defendant |
| 2018-06-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,300,547 - "MANDEVILLA PLANT WITH DOUBLE FLOWER," Issued October 9, 2001
The Invention Explained
- Problem Addressed: The patent background notes that known Mandevilla varieties possess single, funnel-shaped flowers and that a plant with double flowers would have enhanced decorative qualities and thus be commercially desirable (ʼ547 Patent, col. 2:35-44).
- The Patented Solution: The invention is a new variety of Mandevilla plant that exhibits "double flowers." This structure is composed of a traditional outer corolla of petals plus a generally concentric inner ring of "petaloids," which are described as converted stamens ('547 Patent, col. 2:48-52). This novel formation gives the appearance of a "flower-within-a-flower," enhancing the plant's decorative value ('547 Patent, col. 4:15-17).
- Technical Importance: The development of a heritable double-flowering trait in a species previously known only for single flowers represented a significant novelty in the horticultural field, creating a new, marketable aesthetic for a popular decorative plant ('547 Patent, col. 2:35-38).
Key Claims at a Glance
- The complaint does not specify asserted claims but makes general allegations of infringement. The broadest independent claim is Claim 1.
- Independent Claim 1:
- A plant of a Mandevilla variety "Rita Marie Green"
- having at least one double flower.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Plant Patent No. PP11,787 - "MANDEVILLA PLANT WITH DOUBLE FLOWER CALLED 'RITA MARIE GREEN'," Issued February 27, 2001
The Invention Explained
- Problem Addressed: Similar to the ʼ547 Patent, the background identifies a need for a new Mandevilla variety with more decorative double blossoms than the single-flowered plants previously known ('787 Patent, col. 1:4-10).
- The Patented Solution: The patent protects a new and distinct variety of Mandevilla plant, named 'Rita Marie Green', which was discovered as a mutation of the 'Alice du Pont' variety ('787 Patent, col. 1:11-20). The key characteristic of this asexually reproducible plant is its stable "red to red-purple double flowers," which feature an outer corolla and an inner ring of petaloids ('787 Patent, Abstract).
- Technical Importance: A plant patent grants the holder the right to exclude others from asexually reproducing, using, or selling the specific, unique plant variety, thereby protecting the value of the genetic discovery in the commercial nursery market.
Key Claims at a Glance
- Plant patents contain a single claim.
- Claim 1:
- A new and distinct variety of Mandevilla plant
- having red to red-purple double flowers
- substantially as shown and described herein.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Mandevilla plants sold by Monrovia under the commercial names "PINK PARFAIT" and "TANGO TWIRL" (Compl. ¶¶50, 56).
Functionality and Market Context
- The complaint alleges that "PINK PARFAIT" is the trademark under which Monrovia sells the licensed 'Rita Marie Green' variety (Compl. ¶26). The infringement allegation concerning this product appears to be based on the theory that Monrovia’s license was terminated due to breach, rendering continued sales infringing (Compl. ¶49).
- "TANGO TWIRL" is identified as the brand name for a plant variety Monrovia calls 'Monrey' (Compl. ¶32). Plaintiffs allege that 'TANGO TWIRL' is not an independent discovery but is, in fact, "genetically related to or the same as" the patented 'Rita Marie Green' plant (Compl. ¶34). The complaint alleges that both varieties share the "same unique trait of double flowers with two corollas of petals" (Compl. ¶34).
- One of the complaint's visual exhibits shows a photograph of the 'TANGO TWIRL' flower, which is described as having "fully double flowers" with "18-20 petals" (Compl. p.15). The complaint positions Monrovia as the "largest plant nursery in the world" and alleges that its marketing of 'TANGO TWIRL' has diverted sales from the 'PINK PARFAIT' variety (Compl. ¶¶20, 70).
IV. Analysis of Infringement Allegations
'547 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plant of a Mandevilla variety "Rita Marie Green" | The complaint alleges that the accused 'TANGO TWIRL' plant is "either identical to Rita Marie Green or genetically derived therefrom." | ¶38 | col. 2:49-52 |
| having at least one double flower. | The accused 'TANGO TWIRL' plant is alleged to share the "same unique trait of double flowers with two corollas of petals" as the patented variety. | ¶34 | col. 2:46-48 |
'787 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A new and distinct variety of Mandevilla plant... | Plaintiffs allege that 'TANGO TWIRL' is not a new and distinct variety but is instead the same as or derived from the patented 'Rita Marie Green' plant, which Monrovia had access to via plant cuttings provided by the Plaintiffs. | ¶¶29, 38, 96 | col. 1:1-3 |
| ...having red to red-purple double flowers substantially as shown and described herein. | The accused 'TANGO TWIRL' is marketed as having "delicate soft-pink, fully double flowers." The complaint includes comparative photographs to support the allegation that 'TANGO TWIRL' has the same double-flower characteristic as the patented plant, which is described as having red to red-purple flowers. A photographic exhibit in the complaint shows the flower of the 'TANGO TWIRL' plant (Compl. p.15). | ¶¶34, 56, p.10 | col. 3:20-25; Fig. 1 |
- Identified Points of Contention:
- Standing: A threshold legal question is whether Plaintiffs have standing to sue for infringement. Their claim to ownership of the patents rests on the allegation that Defendant's actions constituted a material breach of the licensing agreement, which in turn triggered a contractual reverter clause transferring the patents back to Plaintiffs (Compl. ¶¶27, 49). The validity of this ownership transfer will be a primary focus.
- Technical Question: The central factual dispute is the genetic origin of the 'TANGO TWIRL' plant. The complaint alleges, based on an expert opinion, that it is "almost mathematically certain" that 'TANGO TWIRL' is identical or derived from 'Rita Marie Green' (Compl. ¶¶37-38). Defendant's position, reflected in its own patent and marketing, is that 'TANGO TWIRL' ('Monrey') was an independent discovery from a different parent plant (Compl. ¶31, ¶95). This sets up a likely battle of expert testimony on plant genetics.
V. Key Claim Terms for Construction
In this plant patent dispute, the central issues are more factual (genetic identity) than legal (claim construction). However, the interpretation of the following terms will be critical.
The Term: "Mandevilla variety 'Rita Marie Green'" ('547 Patent)
Context and Importance: This term's scope is at the heart of the infringement analysis for the '547 Patent. The case turns on whether the accused 'TANGO TWIRL' plant, which Defendant identifies as the 'Monrey' variety, can be considered the "'Rita Marie Green' variety." Practitioners may focus on this term because it frames the core factual question of genetic identity versus distinct varietal status.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '547 Patent specification defines the concept of an "essentially derived" variety, which is one "predominantly derived from the initial variety...while retaining the expression of the essential characteristics" ('547 Patent, col. 3:17-25). Plaintiffs may argue this definition expands the term's scope to include genetic sports or mutations like 'TANGO TWIRL' is alleged to be.
- Evidence for a Narrower Interpretation: The patent consistently refers to the specific, named variety 'Rita Marie Green' ('547 Patent, col. 2:49-52). Defendant may argue that this name limits the claim to the specific plant line developed by the Greens and does not read on what it claims is a separately discovered variety ('Monrey') with a different parentage (Compl. ¶31).
The Term: "substantially as shown and described herein" ('787 Patent)
Context and Importance: This is standard plant patent claim language. Infringement requires showing that an accused plant is an asexual reproduction of the patented plant, and thus corresponds to the characteristics "shown and described." The dispute will center on a factual comparison of the 'TANGO TWIRL' plant's characteristics against the detailed description in the '787 Patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "substantially" provides some latitude, suggesting that minor, immaterial phenotypic variations between the accused plant and the patent's description may not defeat an infringement claim.
- Evidence for a Narrower Interpretation: The '787 Patent provides a highly detailed description of the 'Rita Marie Green' variety, including specific color codes (e.g., "Red-purple group R.H.S. 58B and 58C"), dimensions, and morphology ('787 Patent, col. 3-4). Defendant will likely argue that any significant deviation of the 'TANGO TWIRL' plant from this precise description places it outside the claim's scope.
VI. Other Allegations
Willful Infringement
The complaint alleges that Defendant’s infringement was and is "knowing, intentional, and willful" (Compl. ¶¶52, 58). This allegation is supported by the parties' long-standing contractual relationship, Defendant's role as the original assignee and prosecutor of the patents-in-suit, and Plaintiffs' pre-suit notice of breach letter sent in April 2017, which explicitly outlined their infringement theory (Compl. ¶¶21, 27, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears poised to turn on the resolution of three central questions:
- A threshold issue of contract law and standing: Did Defendant’s alleged failure to pay royalties on 'TANGO TWIRL' sales constitute a material breach of the 1998 licensing agreement sufficient to trigger the patent ownership reverter clause, thereby granting Plaintiffs standing to bring this infringement suit?
- A core evidentiary question of genetic identity: Is the accused 'TANGO TWIRL' plant an asexual reproduction or genetic derivative of the patented 'Rita Marie Green' variety, as Plaintiffs allege, or is it a distinct variety independently discovered from a different genetic lineage, as Defendant claims?
- A key question for the non-patent counts regarding commercial representations: Did Defendant's marketing, which included distinct descriptions and photographs for 'TANGO TWIRL' and 'PINK PARFAIT', falsely disparage the licensed product and mislead consumers as to the origin and relationship of the two plant varieties?