DCT
2:24-cv-02947
Tessenderlo 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-02947, E.D. Cal., 10/25/2024
- Venue Allegations: Venue is alleged to be proper as the Defendant is a California corporation that resides in, transacts business in, and operates from a location within the Eastern District of California.
- Core Dispute: Plaintiff alleges that Defendant’s "Grow-K 238" liquid fertilizer, and the method of its application, infringes a patent related to a specific chemical composition for liquid fertilizers designed for safe application near crop seeds.
- Technical Context: The lawsuit concerns the agricultural sector, specifically liquid fertilizers formulated to provide potassium and sulfur with low phytotoxicity, enabling direct application with seeds to enhance early crop growth.
- Key Procedural History: The complaint does not mention any prior patent litigation, licensing history, or administrative patent challenges.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-05 | ’591 Patent Priority Date |
| 2013-10-01 | ’591 Patent Issue Date |
| 2024-10-25 | Complaint Filing Date |
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. (Compl. ¶16; ’591 Patent).
U.S. Patent No. 8,545,591 - “Potassium Sulfite/Potassium Bisulfite (KS/KBS) Liquid as Starter, Side-dress, Broadcast, Foliar and Fertigation Fertilizers”
The Invention Explained
- Problem Addressed: The patent addresses the problem of starter fertilizers causing damage to germinating seeds. This damage is often due to a high "salt or osmotic effect," where fertilizer salts draw essential moisture away from the seeds, or from toxic ions like ammonia. (’591 Patent, col. 2:55-67). This problem forces farmers to use complex, costly application methods to place fertilizer away from the seed, or risk crop injury. (’591 Patent, col. 2:46-52).
- The Patented Solution: The invention is a liquid fertilizer comprised of potassium sulfite (KS) and potassium bisulfite (KBS) at a specific ratio and a neutral to slightly alkaline pH. (’591 Patent, Abstract). This composition is described as having a lower salt index, which reduces the risk of phytotoxicity and allows it to be applied directly with or near the seed ("in-furrow") to promote early growth without the same risk of damage as conventional fertilizers. (’591 Patent, col. 4:21-45).
- Technical Importance: The technology provides a method to deliver potassium and sulfur that is safer for "in-furrow" application, a technique particularly valuable in no-tillage and minimum-tillage farming where soils may remain cooler for longer. (’591 Patent, col. 2:50-56).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 40. (Compl. ¶33).
- Independent Claim 1 recites a method for fertilizing crops with essential elements including:
- applying a liquid fertilizer composition comprising potassium sulfite and potassium bisulfite
- in a ratio of potassium sulfite to potassium bisulfite in the range of about 7.3:2.7 to about 9.2:0.80
- at a pH of about 7.5 to about 8.5
- simultaneously with, prior to or immediately after planting seed for the crop
- Independent Claim 40 recites a method for fertilizing an agricultural crop with essential elements including:
- applying a fertilizer composition comprising potassium sulfite and potassium bisulfite
- said composition having a potassium sulfite to potassium bisulfite ratio of between about 7.3:2.7 to about 9.20:0.80
- by applying the fertilizer to the crop by a method selected from a group including in-furrow application, foliar application, side-dress treatment, and others.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's "Grow-K 238" liquid fertilizer and the methods of its use. (Compl. ¶¶23-24).
Functionality and Market Context
- The "Grow-K 238" product is described in the complaint as a "low salt, seed safe liquid fertilizer that provides vital, readily available potassium and sulfur." (Compl. ¶23). The complaint alleges the product is marketed for application methods including "in-furrow, banded, 2x2 or 2x0, and fertigation (drip, Y-drop, flood, or sprinkler irrigation)." (Compl. p. 7). The complaint provides a claim chart to illustrate how the accused product's features align with the patent claims. (Compl. pp. 7-8). It is alleged that the product is made, used, and sold throughout the United States. (Compl. ¶25).
IV. Analysis of Infringement Allegations
Claim Chart Summary
- The complaint presents its infringement allegations for claims 1 and 40 in a chart format. The core of these allegations is summarized below.
’591 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for fertilizing agricultural crops comprising | Defendant’s Infringing product is a fertilizer specifically adapted for fertilizing agricultural crops. | ¶p. 7 | col. 5:40-42 |
| applying a liquid fertilizer composition | The Infringing Product is a "low salt, seed safe liquid fertilizer" that can be applied via various irrigation methods. | ¶p. 7 | col. 5:1-2 |
| comprising potassium sulfite and potassium bisulfite | The Infringing Product is a fertilizer that comprises water, potassium sulfite, and potassium bisulfite. | ¶p. 7 | col. 4:21-23 |
| 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 Infringing Product comprises a ratio of potassium sulfite to potassium bisulfite in the range of about 7.3:2.7 to about 9.2:0.80. | ¶p. 7 | col. 5:3-5 |
| at a pH of about 7.5 to about 8.5 | The Infringing Product comprises a ratio of potassium sulfite to potassium bisulfite...at a pH of about 7.5 to about 8.5. | ¶p. 7 | col. 5:3-5 |
| simultaneously with, prior to or immediately after planting seed for the crop. | The Infringing Product is applied simultaneously with, prior to or immediately after planting seed, as it "can be applied via in-furrow." | ¶p. 7 | col. 4:29-31 |
Identified Points of Contention
- Scope Questions: The claims recite specific chemical properties using the modifier "about" (e.g., "about 7.3:2.7 to about 9.2:0.80," "about 7.5 to about 8.5"). A central dispute may be the proper scope of "about" and whether the accused product's precise formulation falls within the claimed ranges.
- Technical Questions: The complaint's allegations regarding the chemical composition and pH of the "Grow-K 238" product appear to be based on Defendant's marketing statements from its website. (Compl. p. 7). A key factual question for the court will be whether the product as actually manufactured and sold has the chemical properties required by the claims, which would likely require empirical testing and expert analysis.
V. Key Claim Terms for Construction
The Term: "a ratio of potassium sulfite to potassium bisulfite in the range of about 7.3:2.7 to about 9.2:0.80" (Claim 1).
Context and Importance: This limitation defines the specific chemical makeup of the patented composition. Proving infringement will require the Plaintiff to establish that the accused product's composition falls within this numeric range. Practitioners may focus on this term because the word "about" introduces ambiguity, and the patent links these ratios directly to a functional pH range.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "about" should be interpreted to encompass standard manufacturing tolerances or minor variations that do not materially affect the fertilizer's low-phytotoxicity characteristic, which is a key objective of the invention. (’591 Patent, col. 4:24-28).
- Evidence for a Narrower Interpretation: A party could point to Table 1 in the patent, which provides a detailed list of specific ratios corresponding to specific pH values. (’591 Patent, col. 4, Table 1). This could support an argument that the term "about" should be construed narrowly to cover only the specific ratios that achieve the pH range of "about 7.5 to about 8.5," as explicitly taught in the patent. (’591 Patent, col. 5:3-5).
The Term: "simultaneously with, prior to or immediately after planting seed for the crop" (Claim 1).
Context and Importance: This term defines the timing of the claimed method, tying it to the act of planting. This is critical for distinguishing the invention as a "starter fertilizer" used for "in-furrow" application. The complaint alleges the accused product "can be applied via in-furrow," raising the question of whether this capability alone meets the method claim limitation. (Compl. p. 7).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses various application methods, including "in-furrow," "side dress," and "broadcast." (’591 Patent, col. 4:29-34). A party might argue the temporal term is not strictly limited to a single pass of machinery but covers any application performed as part of the overall planting process.
- Evidence for a Narrower Interpretation: The background section explicitly discusses "in-furrow treatments" as placing fertilizers "directly with the seed." (’591 Patent, col. 2:51-53). This could support a narrower construction requiring the application to occur in the same physical and temporal event as seeding.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is alleged based on Defendant’s marketing, website instructions, and other support services that allegedly encourage and instruct customers to use the "Grow-K 238" product in a manner that directly infringes, such as for in-furrow application. (Compl. ¶¶ 39-43). Contributory infringement is alleged on the basis that the accused product is a material part of the invention, is not a staple article of commerce suitable for substantial non-infringing use, and is known to be especially adapted for an infringing use. (Compl. ¶¶ 44-46).
- Willful Infringement: The complaint alleges that Defendant had knowledge of the ’591 patent "since its first sale of the Infringing Product." (Compl. ¶36, ¶48). This alleged pre-suit knowledge forms the basis of the claim for willful infringement and enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: The complaint bases its infringement allegations on Defendant's marketing claims. A key question for the court will be whether discovery and expert testing confirm that the accused "Grow-K 238" fertilizer, as actually formulated and sold, possesses the specific potassium sulfite to potassium bisulfite ratio and pH range required by the patent claims.
- A second central issue will be one of claim scope: The case will likely involve significant dispute over the construction of the word "about" as it modifies the numerical ranges in the asserted claims. The resolution of whether the term allows for a meaningful degree of variance or is tied strictly to the values disclosed in the patent's examples will be critical to the infringement analysis.
- Finally, a key question for indirect infringement will be intent and use: The complaint alleges the product "can be applied" in an infringing manner. The court will need to determine whether the Defendant specifically intended for users to apply the product in a way that practices the patented method, and whether the product has substantial non-infringing uses that would defeat the contributory infringement claim.