DCT
2:24-at-01353
Tessendero Kerley Inc v. Sacramento Ag Products LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tessenderlo Kerley, Inc. (Delaware)
- Defendant: Sacramento Ag Products, LLC (California)
- Plaintiff’s Counsel: Barnes & Thornburg LLP
- Case Identification: 2:24-cv-01353, E.D. Cal., 10/25/2024
- Venue Allegations: Venue is alleged to be proper based on the defendant residing and transacting business within the Eastern District of California, where the alleged unlawful acts are said to have occurred.
- Core Dispute: Plaintiff alleges that Defendant’s "Grow-K 238" liquid fertilizer infringes a patent related to a specific chemical composition and method for applying agricultural fertilizers.
- Technical Context: The technology resides in the agricultural chemicals field, specifically concerning liquid fertilizers designed to deliver potassium and sulfur to crops with reduced risk of damaging seed germination.
- Key Procedural History: The complaint notes that Plaintiff's related K-ROW 23® trademark has achieved incontestable status. No prior patent litigation, Inter Partes Review (IPR) proceedings, or licensing history concerning the patent-in-suit are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-05 | U.S. Patent No. 8,545,591 Priority Date |
| 2013-10-01 | U.S. Patent No. 8,545,591 Issue Date |
| 2024-10-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,545,591 (Potassium Sulfite/Potassium Bisulfite (KS/KBS) Liquid as Starter, Side-dress, Broadcast, Foliar and Fertigation Fertilizers), issued October 1, 2013.
The Invention Explained
- Problem Addressed: The patent’s background section describes a problem with certain fertilizers, particularly "starter" fertilizers applied directly with seeds ("in-furrow"). These fertilizers can create a high "salt or osmotic effect," which draws essential moisture away from seeds and can damage or prevent germination (’591 Patent, col. 3:51-67).
- The Patented Solution: The invention is a liquid fertilizer composition containing potassium sulfite (KS) and potassium bisulfite (KBS) at a neutral to slightly alkaline pH. This formulation is described as having a "relatively lower salt index and potentially lower phytotoxicity damage" compared to other conventional potassium and sulfur fertilizers, making it safer for application near seeds (’591 Patent, Abstract; col. 4:21-29). The patent covers both the composition itself and various methods of applying it to fertilize crops (’591 Patent, col. 4:25-34).
- Technical Importance: This approach provided a "seed safe" fertilizer that could deliver essential nutrients without the high risk of germination damage associated with other in-furrow fertilizers, a significant concern in agriculture (’591 Patent, col. 4:35-43).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 40 (’591 Patent, col. 12:11, col. 14:1; Compl. ¶33).
- Independent Claim 1 recites a method for fertilizing crops by applying a liquid fertilizer composition:
- comprising potassium sulfite and potassium bisulfite;
- in a ratio of about 7.3:2.7 to about 9.2:0.80;
- at a pH of about 7.5 to about 8.5; and
- applied "simultaneously with, prior to or immediately after planting seed for the crop."
- Independent Claim 40 recites a method for fertilizing an agricultural crop by applying a fertilizer composition:
- comprising potassium sulfite and potassium bisulfite;
- with a potassium sulfite to potassium bisulfite ratio between about 7.3:2.7 to about 9.20:0.80; and
- applied by a method selected from a group including "in-furrow application, foliar application, side-dress treatment, pre-planting soil injection, broadcast application and fertigation."
III. The Accused Instrumentality
Product Identification
- The accused product is the "Grow-K 238" fertilizer (Compl. ¶24).
Functionality and Market Context
- The complaint alleges the accused product is marketed as a "low salt, seed safe liquid fertilizer that provides vital, readily available potassium and sulfur" (Compl. ¶23).
- According to the complaint, Defendant’s marketing materials state the product can be applied through various methods that overlap with the patented methods, including "in-furrow," "banded," and "fertigation" (Compl. p. 7).
- The complaint alleges the goods are "identical or highly similar" to Plaintiff's own fertilizer products (Compl. ¶31).
IV. Analysis of Infringement Allegations
The complaint’s claim chart, presented on pages 7 and 8, visually outlines the plaintiff's infringement theory by mapping claim elements to the accused product's alleged functionality based on the defendant's website (Compl. pp. 7-8). Further, the complaint references a copy of the defendant's website, attached as Exhibit C, as evidence of the infringing use and marketing (Compl. ¶30).
’591 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for fertilizing agricultural crops comprising | The Grow-K 238 product is alleged to be a fertilizer specifically adapted for fertilizing agricultural crops. | p. 7 | col. 2:13-17 |
| applying a liquid fertilizer composition comprising potassium sulfite and potassium bisulfite | The accused Grow-K 238 is alleged to be a liquid fertilizer comprising potassium sulfite and potassium bisulfite. | p. 7 | col. 4:21-24 |
| in a ratio of potassium sulfite to potassium bisulfite in the range of about 7.3:2.7 to about 9.2:0.80 | The complaint alleges the infringing product has a potassium sulfite to potassium bisulfite ratio within this range. | p. 7 | col. 12:13-15 |
| at a pH of about 7.5 to about 8.5 | The complaint alleges the infringing product has a pH within this range. | p. 7 | col. 12:15-16 |
| simultaneously with, prior to or immediately after planting seed for the crop. | The infringing product is alleged to be applied "in-furrow," which constitutes application with or near the seed at planting. | p. 7 | col. 12:16-18 |
Identified Points of Contention
- Technical Question: The complaint alleges that the accused "Grow-K 238" product meets the specific chemical ratio and pH limitations of the claims (Compl. p. 7). However, it does not present empirical data, such as laboratory test results, to substantiate these allegations. This raises a central factual question for discovery: does the chemical composition of the "Grow-K 238" product, upon testing, actually fall within the claimed ranges for KS/KBS ratio and pH?
- Scope Question: Claims 1 and 40 both use the term "about" to qualify the numerical ranges for the chemical ratio and pH. The patent does not explicitly define the scope of "about." This raises the question of how much deviation from the recited values is permissible while still falling within the literal scope of the claims, an issue that may require judicial construction.
V. Key Claim Terms for Construction
The Term: "about" (e.g., "about 7.5 to about 8.5")
- Context and Importance: This term modifies the critical numerical boundaries for pH and chemical ratios in both asserted independent claims. Its construction will be central to the infringement analysis, as it will determine whether a product with properties close, but not identical, to the recited values literally infringes. Practitioners may focus on this term because its interpretation could expand or contract the scope of literal infringement.
- Intrinsic Evidence for a Broader Interpretation: The specification refers to the invention having a "neutral/moderate pH range of 7.5-8.5," language that may suggest some flexibility around the endpoints (’591 Patent, col. 4:45-46).
- Intrinsic Evidence for a Narrower Interpretation: The patent provides a detailed table correlating specific KS/KBS ratios to specific pH values, which could be argued to demonstrate the inventor's precise understanding and intent for the numbers, thereby supporting a narrow reading of "about" to cover only minor, insignificant variations (’591 Patent, Table 1, col. 4).
The Term: "comprising"
- Context and Importance: This transitional phrase introduces the elements of the claimed composition and method. Its interpretation is fundamental to determining whether the presence of unrecited ingredients in the accused product avoids infringement. Practitioners may focus on this term if the accused product contains additional chemical components beyond potassium sulfite and bisulfite.
- Intrinsic Evidence for a Broader Interpretation: As a matter of patent law, "comprising" is typically interpreted as an open-ended term, meaning the claim reads on compositions or methods that include additional, unrecited elements. The specification supports this by noting the claimed fertilizer can be applied "along with other fertilizers or pesticides" (’591 Patent, col. 5:46-47).
- Intrinsic Evidence for a Narrower Interpretation: A party could argue that while "comprising" is open, it does not permit the inclusion of additional components that would alter the "basic and novel properties" of the invention. The abstract, for instance, describes the invention as "comprised primarily of potassium sulfite and potassium bisulfite," which might be used to argue that the presence of other significant active ingredients could take a product outside the claim's scope (’591 Patent, Abstract).
VI. Other Allegations
Indirect Infringement
- The complaint alleges both induced and contributory infringement. Inducement is premised on allegations that Defendant's website, instruction materials, and other services direct and encourage end-users (farmers) to apply the "Grow-K 238" product in ways that practice the patented methods (Compl. ¶¶ 39, 41, 43). Contributory infringement is alleged on the basis that the product is a material part of the invention, is not a staple article of commerce suitable for substantial noninfringing use, and is known to be especially adapted for an infringing use (Compl. ¶¶ 44-46).
Willful Infringement
- Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the ’591 Patent. The complaint asserts, upon information and belief, that Defendant has had "actual knowledge of the '591 patent or was at least willfully blind as to its existence" since the launch of its infringing product (Compl. ¶¶ 26, 36, 42, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: will discovery and empirical testing of the accused "Grow-K 238" fertilizer confirm that its chemical composition (specifically, the potassium sulfite/bisulfite ratio and pH) falls within the numerical ranges required by the asserted claims, as the complaint alleges?
- The outcome may depend on a question of definitional scope: how will the court construe the term "about"? The interpretation of this term will directly impact the literal scope of the claims and could be determinative of infringement if the accused product's properties are close to, but not exactly matching, the recited numerical limits.
- A key factual dispute for the willfulness and indirect infringement claims will be the question of knowledge and intent: what evidence, if any, demonstrates that the Defendant had pre-suit knowledge of the ’591 Patent and specifically intended for its customers to use the accused product in a manner that directly infringes the patented methods?