DCT
2:19-cv-00493
Driscoll's Inc v. California Berry Cultivars LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Driscoll's, Inc. (California) and Driscoll's of Europe B.V. (Netherlands)
- Defendant: California Berry Cultivars, LLC (California) and Douglas Shaw (California)
- Plaintiff’s Counsel: Morrison & Foerster LLP
- Case Identification: 2:19-cv-00493, E.D. Cal., 04/29/2022
- Venue Allegations: Venue is alleged to be proper based on Defendant Shaw's residence within the district and Defendant CBC's incorporation in California and its maintenance of business locations within the district, where acts of infringement allegedly occurred.
- Core Dispute: Plaintiff alleges that Defendants improperly obtained and asexually reproduced Plaintiff's patented strawberry varieties for use as parent stock in their own commercial breeding program, thereby infringing three U.S. Plant Patents.
- Technical Context: The lawsuit concerns the highly competitive agricultural sector of strawberry cultivar development, where creating new plant varieties with superior traits like yield, flavor, and disease resistance is a key driver of market success.
- Key Procedural History: The complaint alleges that in a prior litigation, a jury found Defendants had willfully infringed plant patents owned by the University of California. Plaintiff alleges that evidence from that trial revealed Defendants had also used Driscoll's proprietary varieties in their breeding program, a fact which may be relevant to the current allegations of knowledge and willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2006-11-22 | U.S. Plant Patent No. 18,878 Priority Date |
| 2008-06-03 | U.S. Plant Patent No. 18,878 Issue Date |
| 2010-06-11 | U.S. Plant Patent No. 22,247 Priority Date |
| 2011-10-07 | U.S. Plant Patent No. 23,400 Priority Date |
| 2011-11-15 | U.S. Plant Patent No. 22,247 Issue Date |
| 2012-01-01 | Approximate date Defendants' alleged acquisition of patented varieties began |
| 2013-02-19 | U.S. Plant Patent No. 23,400 Issue Date |
| 2013-11-01 | Approximate date Defendant Shaw allegedly planned to obtain varieties before CBC founding |
| 2015-01-01 | Approximate date Defendants' breeding plans allegedly required use of patented plants |
| 2016-01-01 | Approximate date of Defendants' breeding diagrams allegedly showing use of patented varieties |
| 2017-05-01 | Approximate date of jury verdict in prior litigation involving Defendants and University of California |
| 2022-04-29 | Second Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Plant Patent No. 18,878 - "Strawberry Plant Named 'DrisStrawTwo'", Issued June 3, 2008
The Invention Explained
- Problem Addressed: The development of new plant cultivars is an ongoing process to improve upon existing commercial varieties. The patent identifies its own parent plants, 'Driscoll Camarillo' and 'Driscoll Marin', as points of comparison, implying a need for a new combination of traits not present in the prior art ('878 Patent, col. 1:6-9, col. 2:13-22).
- The Patented Solution: The patent discloses a new and distinct strawberry cultivar, 'DrisStrawTwo' (identified in the complaint as the Amesti™ variety), which originated from a controlled cross ('878 Patent, col. 1:6-9; Compl. ¶12). The invention is defined by a unique combination of characteristics, including large fruit size, heavy fruit production, and resistance to powdery mildew, which are detailed throughout the specification and tables to establish its novelty and nonobviousness ('878 Patent, Abstract; Tables 1-7). Asexual propagation, primarily through stolons, ensures these distinctive characteristics are retained ('878 Patent, col. 1:15-20).
- Technical Importance: The creation of proprietary varieties with high yield and specific disease resistance is a critical method for agricultural companies to maintain a competitive edge in the produce market (Compl. ¶6, 7).
Key Claims at a Glance
- The patent asserts a single independent claim: "1. A new and distinct cultivar of strawberry plant as described and shown herein" ('878 Patent, col. 6:50-52).
- The scope of this claim is defined by the entirety of the plant’s characteristics described in the specification and depicted in the drawings, including its habit, vigor, leaf shape, fruit size, and other botanical traits.
U.S. Plant Patent No. 22,247 - "Strawberry Plant Named 'DrisStrawSixteen'", Issued November 15, 2011
The Invention Explained
- Problem Addressed: The patent seeks to provide a novel strawberry cultivar with a distinct set of commercially valuable traits, comparing its characteristics to its female parent 'El Dorado' and the commercial variety 'Sabrosa' to highlight its improvements ('247 Patent, col. 4:37-61).
- The Patented Solution: The '247 Patent claims the 'DrisStrawSixteen' cultivar (identified in the complaint as the Lusa™ variety), a product of a cross between proprietary parents ('247 Patent, col. 1:10-13; Compl. ¶13). The cultivar is distinguished by its globose plant habit, strong vigor, and large-sized berries ('247 Patent, Abstract). The detailed botanical description and data tables serve to define the specific, reproducible characteristics of this new plant when propagated asexually ('247 Patent, col. 2:2-col. 4:61).
- Technical Importance: Developing new cultivars with specific combinations of physical traits (e.g., vigor, berry size) and organoleptic properties allows breeders to meet diverse agricultural needs and consumer preferences (Compl. ¶5-7).
Key Claims at a Glance
- The patent asserts a single independent claim: "1. A new and distinct variety of strawberry plant as described and shown herein" ('247 Patent, col. 4:62-64).
- The claim's essential elements consist of the unique combination of phenotypic traits of the 'DrisStrawSixteen' plant as detailed in the patent's text and figures.
U.S. Plant Patent No. 23,400
- Patent Identification: U.S. Plant Patent No. 23,400, "Strawberry Plant Named 'DrisStrawTwentySeven'", Issued February 19, 2013 (Compl. ¶14).
- Technology Synopsis: This patent discloses the 'DrisStrawTwentySeven' cultivar (identified as the Marquis™ variety), created by crossing 'DrisStrawEight' with a proprietary male parent ('400 Patent, col. 1:10-14; Compl. ¶14). The invention is presented as a distinct variety characterized by high yield, very large conical fruit, and strong sweetness, distinguishing it from its parent and other commercial varieties ('400 Patent, Abstract & col. 1:26-30).
- Asserted Claims: The patent contains a single independent claim for "A new and distinct variety of strawberry plant named 'DrisStrawTwentySeven' as described and shown herein" ('400 Patent, col. 6:14-16).
- Accused Features: The complaint alleges that Defendants obtained and asexually reproduced the Marquis™ variety for use in their breeding program, which included using runners for propagation and processing the fruit and seeds of the resulting plants (Compl. ¶41, 42).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is not a publicly sold product but rather Defendants' internal strawberry breeding program (Compl. ¶10). The specific acts of infringement are the alleged unauthorized asexual reproduction, possession, and use of plants and their parts that are clonal copies of Driscoll's patented varieties (Compl. ¶23, 32, 41).
Functionality and Market Context
- The complaint alleges that Defendants obtained and asexually propagated Driscoll's patented varieties—Amesti™, Lusa™, and Marquis™—to serve as genetic source material in CBC’s own breeding efforts to develop new, competing strawberry cultivars (Compl. ¶10, 23). The complaint includes a "Northern Factorial I 2016" breeding diagram, allegedly from Defendants' files, which visually depicts "Amesti," "Lusa," and "Marquis" as parent plants in planned genetic crosses (Compl. ¶23, p. 7). In the context of the plant breeding industry, access to elite, protected germplasm is a significant competitive factor, and CBC is positioned as a competitor to Driscoll's (Compl. ¶7, 8).
IV. Analysis of Infringement Allegations
PP’878 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A new and distinct cultivar of strawberry plant, substantially as shown and described. | Defendants allegedly obtained, asexually reproduced (e.g., by cutting runners), and used the Amesti™ variety (the commercial embodiment of the patented plant) in their breeding program. | ¶23 | col. 1:15-20 |
| Defendants also allegedly used "parts thereof," including the fruit and the seeds contained within (referred to as "achenes"), for use in their breeding program. | ¶24, 25 | col. 6:50-52 |
PP’247 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A new and distinct variety of strawberry plant as described and shown herein. | Defendants allegedly obtained, asexually reproduced (e.g., by cutting runners), and used the Lusa™ variety (the commercial embodiment of the patented plant) in their breeding program. | ¶32 | col. 1:15-20 |
| Defendants also allegedly used "parts thereof," including fruit and seeds, for use in their breeding program. | ¶33, 34 | col. 4:62-64 |
The complaint includes a "Southern Factorial I 2016" breeding diagram that shows "Lusa" as a parent plant scheduled for cross-breeding (Compl. ¶32, p. 10).
Identified Points of Contention
- Factual Question: A central factual dispute will likely be whether the plant material used by Defendants was, in fact, asexually reproduced progeny of Driscoll's patented plants. The case may depend on evidence such as genetic testing to prove clonal identity and testimony or documents tracing the material's chain of custody.
- Scope Question: The complaint's assertion that using seeds ("achenes") from an asexually reproduced plant constitutes infringing use of a "part thereof" raises a legal question (Compl. ¶24, 33, 42). The court may need to determine if "part thereof" under 35 U.S.C. § 163, which governs asexually reproduced plants, extends to seeds, which are the product of sexual reproduction and create genetically distinct offspring.
V. Key Claim Terms for Construction
While plant patents do not undergo claim construction in the same manner as utility patents, the interpretation of key statutory terms defining the scope of infringement is critical.
The Term: "asexually reproduced" (from 35 U.S.C. § 163)
- Context and Importance: This term is the foundation of a plant patent holder's right to exclude. The entire infringement case rests on the plaintiff's ability to prove that the plants used by the defendants were created through asexual reproduction from the patented stock. Practitioners may focus on the type and quantum of evidence (e.g., genetic markers, chain-of-custody documentation) required to meet the legal standard for proving asexual reproduction.
- Intrinsic Evidence for Interpretation: The patents-in-suit explicitly state that their distinctive characteristics are "retained true to type through successive generations of asexual reproduction" and identify propagation by stolons (runners) as the primary method ('878 Patent, col. 1:18-20). The complaint alleges that Defendants' acts of "cutting one or more runners" constitute the creation of infringing asexual reproductions (Compl. ¶23, 32, 41). The interpretation is less about breadth and more about the factual question of whether clonal identity exists.
The Term: "any part thereof" (from 35 U.S.C. § 163)
- Context and Importance: The definition of this term is critical to the scope of infringement, as Plaintiff alleges that using the fruit and seeds of the infringing plants in a breeding program is an infringing act (Compl. ¶24, 33, 42). Whether a "part" must be capable of asexual reproduction itself, or if it includes any portion of the plant, such as sexually-produced seeds, will be a central legal issue.
- Intrinsic Evidence for a Broader Interpretation: The complaint advances a plain-language argument that "seeds are part of the fruit, and the fruit are part of the plants" (Compl. ¶24). This simple, transitive logic could support a reading that includes any physical component of the plant.
- Intrinsic Evidence for a Narrower Interpretation: The patents’ repeated emphasis on the stability of traits through "asexual propagations" could be used to argue that the scope of "part thereof" should be tied to the core of the patent right—asexual reproduction ('878 Patent, col. 1:19-20). A party could argue the term should be limited to vegetative parts (e.g., runners, cuttings) capable of creating a clonal copy, not sexual components like seeds which are used to create new, non-identical varieties.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant Shaw is personally liable for infringement by directing CBC and its agents to perform the infringing acts of asexual propagation and use (Compl. ¶27, 36, 45). It further alleges inducement by causing the patented varieties to be used in cross-breeding with other strawberry varieties (Compl. ¶25, 34, 43).
- Willful Infringement: Willfulness is alleged based on Defendants' purported pre-suit knowledge of the patents and their infringing nature (Compl. ¶26, 35, 44). The allegations are supported by references to Defendants' "internal practices, past conduct, general knowledge of [the patented varieties]," and the prior adverse finding of willful infringement in a similar case brought by the University of California (Compl. ¶9, 26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the plaintiff furnish sufficient genetic or documentary evidence to prove that the plants in the defendants' possession are genetically identical, asexually propagated clones of the specific cultivars protected by the patents-in-suit?
- The case presents a significant question of statutory scope: Can the term "any part thereof" in the Plant Patent Act, which protects against unauthorized asexual reproduction, be construed to encompass the fruit and seeds of an infringing plant, even though seeds are products of sexual reproduction and are used here to create genetically distinct offspring?
- A key legal question will concern intent and prior conduct: To what extent will the facts and the jury's finding of willfulness in the prior patent litigation involving the same defendants and University of California strawberry patents be admissible and persuasive in establishing knowledge and willful infringement in this case?