DCT
8:19-cv-01201
L KS UPL Na Inc v. Tide Intl USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: UPL NA Inc. (Delaware)
- Defendant: Tide International (USA), Inc. (California); Zhejiang Tide CropScience Co., Ltd. (China); Ningbo Tide Imp. & Exp. Co., Ltd. (China)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP; Boies Schiller Flexner LLP
- Case Identification: 8:19-cv-01201, C.D. Cal., 06/17/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant Tide USA having its principal place of business in Irvine, California, within the district, and the other two Tide entity defendants being non-U.S. residents.
- Core Dispute: Plaintiff alleges that Defendants’ acephate-based agricultural insecticide products infringe a patent covering a specific granular formulation for phosphoroamidothioates designed to be stable, dust-free, and soluble.
- Technical Context: The technology relates to agrochemical formulations, specifically methods for creating granular pesticides that are safer to handle, easier to measure, and more stable than traditional powder or liquid forms.
- Key Procedural History: The complaint alleges that Plaintiff sent a notice letter identifying the patent-in-suit to a chairman of the Defendant corporate group on June 5, 2017. Subsequent to the filing of this complaint, an Inter Partes Review (IPR) proceeding (IPR2020-01113) was initiated against the patent-in-suit. The IPR concluded with the cancellation of claims 1-4, including the lead asserted claim of the complaint (Claim 1), while confirming the patentability of claims 7-12. This development significantly alters the landscape of the dispute, as the primary infringement theory detailed in the complaint is based on a now-cancelled claim.
Case Timeline
| Date | Event |
|---|---|
| 2001-12-18 | ’685 Patent Priority Date |
| 2009-01-06 | ’685 Patent Issue Date |
| 2012-12-04 | Date by which Defendant Tide Group allegedly obtained 55 U.S. EPA registrations |
| 2017-06-05 | Alleged date of notice letter sent by Plaintiff to Defendant regarding the ’685 Patent |
| 2019-06-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,473,685 - "Processes for Preparation of Chemically Stable, Dry-Flow, Low Compact, Dust Free, Soluble Granules of Phosphoroamidothioates"
The Invention Explained
- Problem Addressed: The patent's background describes issues with prior art agrochemical formulations. Dusts and powders create airborne drift and handling hazards, while liquid formulations involve costly solvents and container disposal challenges (’685 Patent, col. 1:21-44). Prior attempts to create granulated forms of the insecticide acephate were commercially unsuccessful and faced manufacturing difficulties (’685 Patent, col. 2:1-13).
- The Patented Solution: The invention provides a specific composition and process for producing soluble, dust-free granules of phosphoroamidothioates like acephate. The solution involves combining the active ingredient with a precise recipe of six functional components (dispersing agent, wetting agent, antifoaming agent, stabilizer, and fillers) and processing them through grinding, granulation, and sizing to achieve specific physical dimensions (’685 Patent, Abstract; col. 4:45-66). This creates a final product that is stable, easy to handle, and dissolves readily in water for application.
- Technical Importance: The claimed formulation aimed to provide a commercially viable, high-concentration granular insecticide that solved the known safety, stability, and handling problems of earlier formulations (’685 Patent, col. 2:21-29).
Key Claims at a Glance
- The complaint asserts infringement of "at least claim 1" of the ’685 Patent (Compl. ¶48).
- Independent Claim 1 requires:
- A chemically stable dry flow, low compact, dust free soluble phosphoroamidothioate granule consisting of:
- (i) 85-98% w/w of an insecticidally active compound (e.g., acephate);
- (ii) 0.1-5.0% w/w of a dispersing agent;
- (iii) 0.1-3% w/w of a wetting agent;
- (iv) 0.01-0.08% w/w of an antifoaming agent;
- (v) 0.01-1% w/w of a stabilizer;
- (vi) fillers to make 100%;
- wherein the granule has a length of 1.5-3.0 mm and a diameter of 0.5-1.5 mm.
- The complaint’s use of the phrase "one or more claims" suggests a reservation of rights to assert other claims (Compl. ¶48).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "Tide Acephate 90 WDG, Tide Acephate 90 WSG, and Tide Acephate 97 SG," collectively referred to as the "Tide Acephate Products" (Compl. ¶30).
Functionality and Market Context
- The accused products are described as acephate-based insecticides used for systemic and contact control of insects on various crops (Compl. ¶4, ¶17).
- The complaint alleges that Defendants manufacture, import, use, offer for sale, and sell these products in the United States, directly competing with Plaintiff's own acephate products (Compl. ¶5, ¶30).
- The complaint includes a screenshot from Defendants' website depicting a "Global Sales Network" which includes "Tide USA," offered as evidence of an established business presence in the United States (Compl. ¶9).
IV. Analysis of Infringement Allegations
’685 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A chemically stable dry flow, low compact, dust-free soluble phosphoramidothioate granule... | The complaint alleges on information and belief that the Tide Acephate Products contain granules with these properties. | ¶34 | col. 7:44-46 |
| consisting of (i) 85-98% w/w an insecticidally active compound such as acephate... | The Tide Acephate Products are alleged to contain 85-98% w/w acephate. | ¶32, ¶35 | col. 7:51-59 |
| (ii) 0.1-5% w/w dispersing agent... | The accused products are alleged to contain a dispersing agent, such as polyvinylpyrrolidone, sodium tripolyphosphate, and/or ammonium sulfate, in the claimed range. | ¶32, ¶37 | col. 7:60-61 |
| (iii) 0.1-3% w/w wetting agent... | The accused products are alleged to contain a wetting agent, such as ethylene diamine alkoxylate, in the claimed range. | ¶32, ¶39 | col. 7:62-63 |
| (iv) 0.01-0.08% w/w antifoaming agent... | The accused products are alleged to contain an antifoaming agent, such as silicon oil, in the claimed range. | ¶32, ¶41 | col. 7:64-65 |
| (v) 0.01-1% w/w a stabilizer... | The accused products are alleged to contain a stabilizer in the claimed range. | ¶43 | col. 8:1-2 |
| (vi) fillers to make 100%... | The accused products are alleged to contain fillers, such as sodium sulfate, to reach 100% composition. | ¶32, ¶44 | col. 8:2-3 |
| wherein said granule has a length of 1.5-3.0 mm and a diameter of 0.5-1.5 mm. | The granules within the accused products are alleged to meet these specific physical dimensions. | ¶45 | col. 8:4-6 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that certain commodity chemicals (e.g., "polyvinylpyrrolidone," "ethylene diamine alkoxylate") found in the accused products satisfy functional claim limitations like "dispersing agent" and "wetting agent" (Compl. ¶32). A central dispute may be whether these specific chemicals fall within the scope of the claim terms as defined by the patent specification.
- Technical Questions: A key factual question is whether the accused products actually contain the precise combination of six ingredient categories in the exact weight-by-weight percentage ranges required by Claim 1. The complaint makes these allegations on "information and belief," raising the question of what evidence will support these specific compositional and dimensional limitations (Compl. ¶32-46).
V. Key Claim Terms for Construction
The Term: "consisting of"
Context and Importance: Practitioners may focus on this term because it is a restrictive transition phrase that closes the claim to any elements not recited. The infringement analysis for Claim 1 will hinge on whether the accused products contain only the six listed categories of ingredients (aside from standard impurities). The complaint alleges the accused products include, "inter alia," a list of components, which creates an open question as to whether other unlisted, functional ingredients are present that would place the products outside the scope of this limitation (Compl. ¶32).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that any additional substances are merely inert "fillers" (element vi) or non-functional impurities, and thus do not defeat infringement.
- Evidence for a Narrower Interpretation: A defendant may argue that the presence of any other functional ingredient not classifiable into one of the six recited categories (e.g., a flow aid, a second type of stabilizer) means the "consisting of" limitation is not met, precluding literal infringement.
The Term: "dispersing agent"
Context and Importance: The definition of this functional term is critical because the complaint identifies specific chemicals like "polyvinylpyrrolidone" as meeting the limitation (Compl. ¶32). Whether this classification is appropriate will be a point of contention.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim itself does not specify the chemical nature of the "dispersing agent", suggesting a broad functional definition could be applied.
- Evidence for a Narrower Interpretation: The specification discloses that in a "preferred embodiment, the dispersing agent 4 is selected from the derivative of sulfonated fatty alcohols" (’685 Patent, col. 3:47-49). A defendant could argue this disclosure narrows the scope of the term to this specific class of chemicals, potentially excluding the different chemicals alleged to be in the accused product.
VI. Other Allegations
- Indirect Infringement: The complaint includes a recitation of infringement under 35 U.S.C. § 271(b) and (c) in its formal count (Compl. ¶48). However, it does not plead specific facts to support claims of induced or contributory infringement, such as allegations that Defendants instruct end-users to perform infringing acts or knowingly sell a non-staple component for an infringing use.
- Willful Infringement: The complaint alleges that infringement has been willful since at least June 5, 2017 (Compl. ¶49). This allegation is based on a notice letter that Plaintiff's counsel allegedly sent to a chairman of the Defendant group, which explicitly identified the ’685 Patent and its relevance to Defendants' acephate products, thereby establishing alleged pre-suit knowledge (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central factual question is one of compositional identity: does the chemical and physical makeup of the accused Tide Acephate Products match the precise six-component recipe and dimensional requirements of Claim 1, especially given the restrictive "consisting of" claim language?
- A key legal issue will be one of claim construction: can the functional terms in the patent, such as "dispersing agent" and "wetting agent", be construed to cover the specific, chemically distinct ingredients allegedly used in the accused formulations?
- The most critical question for the case's survival is one of procedural consequence: given the post-filing cancellation of the lead asserted Claim 1 in an IPR proceeding, can the Plaintiff pivot and establish infringement of the remaining, uncancelled claims (7-12), for which no specific infringement theory was articulated in the original complaint?