DCT
3:24-cv-00722
Sakata Seed America Inc v. Priority Seed Production LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sakata Seed America, Inc. (California)
- Defendant: Zhejiang Mitsuo Seed Co., Ltd. (China) and Priority Seed Production, LLC (Arizona)
- Plaintiff’s Counsel: Squire Patton Boggs (US) LLP
- Case Identification: 3:24-cv-00722, S.D. Cal., 05/08/2024
- Venue Allegations: Venue is alleged based on Defendants committing acts of patent infringement within the district, and on Defendant Priority Seed Production, LLC maintaining a regular and established place of business—a field where the accused plants are grown—within the district.
- Core Dispute: Plaintiff alleges that Defendants' unauthorized development and cultivation of specific broccoli lines for hybrid seed production infringes a patent covering Plaintiff's proprietary "GKO-1" inbred broccoli line.
- Technical Context: The technology involves the development of distinct, stable, and uniform inbred plant lines with desirable agronomic traits, which are then used as parent stock to produce high-yield commercial hybrid varieties.
- Key Procedural History: The patent-in-suit is a reissue of U.S. Patent 7,256,328. The complaint notes that Plaintiff sent a notice letter to Defendants regarding infringement in March 2024, which was followed by communications between counsel for the parties prior to the suit's filing.
Case Timeline
| Date | Event |
|---|---|
| 2005-08-31 | Priority Date (Original Application Filing) |
| 2007-08-14 | Original U.S. Patent 7,256,328 Issued |
| 2008-09-09 | Reissue Application for RE41,114 Filed |
| 2010-02-09 | U.S. Reissue Patent RE41114 Issued |
| 2024-03-12 | Plaintiff's Counsel sent notice letter to Defendant Priority |
| 2024-05-08 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Reissue Patent No. RE41,114, "Inbred Broccoli Line GKO-1," issued February 9, 2010.
The Invention Explained
- Problem Addressed: The patent's background section notes the ongoing need in agriculture to develop improved hybrid broccoli varieties to meet increasing global demand. This requires the creation of new and stable (homozygous) inbred parent lines with superior traits, a process that can be slow and challenging. (RE41,114 Patent, col. 2:6-13).
- The Patented Solution: The invention is a specific, novel inbred broccoli line, designated "GKO-1." This line is described as possessing a unique combination of commercially valuable characteristics, including a "tighter head" structure suitable for the "crown-cut market" and "better holding ability," allowing it to remain mature in the field longer before harvest. ('114 Patent, col. 5:6-15). The patent protects the GKO-1 line itself (via deposited seed samples), plants derived from it, and methods for using it in breeding programs.
- Technical Importance: The development of a stable inbred line with a novel combination of desirable agronomic traits provides a foundational genetic tool for creating new, superior F1 hybrid broccoli cultivars for the agricultural market. ('114 Patent, col. 5:4-15).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 18, as well as dependent claims 2, 19, 23, 34, and 35. (Compl. ¶1).
- Independent Claim 1:
- A seed of inbred broccoli line designated GKO-1,
- wherein a representative sample of seed of said broccoli line was deposited under NCIMB No. 41436.
- Independent Claim 18: A method of introducing a desired trait into inbred broccoli line GKO-1, comprising the steps of:
- (a) crossing a GKO-1 plant with another broccoli plant having a desired trait to produce progeny;
- (b) selecting progeny plants with the desired trait;
- (c) crossing the selected progeny with GKO-1 plants to produce backcross progeny;
- (d) selecting backcross progeny that have both the desired trait and "all of the physiological and morphological characteristics of broccoli line GKO-1 listed in Table 1"; and
- (e) repeating steps (c) and (d) three or more times to produce selected fourth or higher backcross progeny.
III. The Accused Instrumentality
Product Identification
- The "Accused Plants," which are alleged to be cytoplasmic male sterile (CMS) versions of Plaintiff's GKO-1 line of broccoli, and the seeds from which they are grown. (Compl. ¶¶1, 9, 35).
Functionality and Market Context
- The complaint alleges that Defendant Mitsuo developed the Accused Plants from Sakata's GKO-1 material and supplied the seeds to Defendant Priority. (Compl. ¶35). Priority is alleged to be growing the Accused Plants in a field in the Southern District of California for the purpose of producing a hybrid seed crop. (Compl. ¶¶36, 38). The infringement allegation is based on the assertion that the Accused Plants possess the specific phenotypic traits of the patented GKO-1 line, as detailed in the patent, and have been modified to introduce the trait of male sterility. (Compl. ¶¶41-44, 48). These activities are alleged to create products that will compete directly with Sakata's patented GKO-1 line and its derivative products. (Compl. ¶55). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
RE41,114 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A seed of inbred broccoli line designated GKO-1, wherein a representative sample of seed of said broccoli line was deposited under NCIMB No. 41436. | The seed from which the Accused Plants were derived is alleged to be seed of the inbred broccoli line GKO-1. This is based on allegations that the resulting plants exhibit the phenotypic traits of GKO-1 as listed in the patent's Table 1. | ¶¶46, 45 | col. 20:21-24 |
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) crossing a GKO-1 plant... with a plant of another broccoli line that comprises a desired trait... | Upon information and belief, Mitsuo crossed a GKO-1 plant with another broccoli line that comprised the desired trait of male sterility. | ¶49 | col. 20:47-59 |
| (b) selecting one or more progeny plants that have the desired trait... | Upon information and belief, Mitsuo selected progeny plants that possessed the trait of male sterility. | ¶49 | col. 21:23-25 |
| (c) crossing the selected progeny plants with the GKO-1 plants to produce backcross progeny plants; | Upon information and belief, Mitsuo crossed the selected male-sterile progeny with GKO-1 plants. | ¶49 | col. 21:26-28 |
| (d) selecting for backcross progeny plants that have [i] the desired trait and [ii] all of the physiological and morphological characteristics of broccoli line GKO-1 listed in Table 1... | Upon information and belief, Mitsuo selected for backcross progeny that possessed both male sterility and all the characteristics of GKO-1 as listed in Table 1. | ¶49 | col. 21:29-35 |
| (e) repeating steps (c) and (d) three or more times in succession to produce selected fourth or higher backcross progeny plants... | Upon information and belief, Mitsuo repeated the backcrossing and selection steps three or more times. | ¶49 | col. 21:36-39 |
- Identified Points of Contention:
- Scope Questions: A primary issue for product claims (e.g., Claim 1) will be whether the Accused Plants fall within the definition of "inbred broccoli line designated GKO-1." The complaint relies on phenotypic similarities to make this connection (Compl. ¶¶41-44), but the claim itself defines the line by reference to a specific biological deposit (NCIMB No. 41436). This raises the question of whether phenotypic comparison is sufficient, or if genetic analysis will be required to prove identity.
- Technical Questions: For the method claim (Claim 18), the complaint alleges the specific multi-step breeding process was performed "Upon information and believe" (Compl. ¶49). A significant question will be what evidence Plaintiff can marshal to prove that Defendant Mitsuo actually performed this precise sequence of crossing and selection steps, as direct evidence of a competitor's internal breeding program is often difficult to obtain.
V. Key Claim Terms for Construction
The Term: "inbred broccoli line designated GKO-1"
Context and Importance: This term appears in nearly all asserted claims and is the central pillar of the infringement case. The definition of this term will determine whether the Accused Plants are covered by the patent at all.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the term should be understood by the detailed list of "physiological and morphological characteristics" provided in Table 1 of the specification ('114 Patent, col. 5:35-57), suggesting that any line exhibiting these traits is functionally a "GKO-1" plant.
- Evidence for a Narrower Interpretation: Claim 1 explicitly ties the term to a physical sample: "wherein a representative sample of seed of said broccoli line was deposited under NCIMB No. 41436" ('114 Patent, col. 20:22-24). This provides a strong basis for arguing that the term is not a mere collection of traits but is narrowly defined by the specific genetic makeup of the deposited material.
The Term: "all of the physiological and morphological characteristics"
Context and Importance: This phrase is a critical limitation in the selection step of method claim 18 and the resulting product-by-process claim 19. To infringe, the accused backcrossed plants must retain all of the original GKO-1 traits from Table 1, in addition to the newly introduced trait. Practitioners may focus on this term because proving that a plant possesses "all" characteristics of another, without exception, can be a high evidentiary bar.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "all" should be interpreted to mean all material characteristics, such that the resulting plant is commercially and phenotypically indistinct from GKO-1, allowing for minor, unlisted, or trivial variations.
- Evidence for a Narrower Interpretation: The plain meaning of "all" is absolute. An opposing party could argue that if the Accused Plants differ from the traits listed in Table 1 in any measurable way, this limitation is not met, and the claim is not infringed. The complaint's allegation that the plants would exhibit these traits if grown under specific conditions (Compl. ¶45) suggests this may be a point of factual dispute.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Mitsuo induced infringement by Priority. The factual basis is the allegation that Mitsuo contracted with Priority to grow the Accused Plants and provided the seeds to Priority for that purpose, knowing that Priority's cultivation would constitute direct infringement. (Compl. ¶¶82, 84). Contributory infringement is also alleged on the basis that the seeds are cytoplasmically male sterile and have no substantial non-infringing use other than for growing the patented plants. (Compl. ¶85).
- Willful Infringement: Willfulness is alleged against both Defendants based on knowledge of the patent and their infringement as of at least March 2024, when Plaintiff's counsel sent notice letters and engaged in subsequent communications with Defendants' counsel. (Compl. ¶¶57-62, 70, 79).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of biological identity: can Plaintiff prove, likely through genetic testing, that the Accused Plants are the same as or derived from the "inbred broccoli line GKO-1" as defined by the biological sample deposited under NCIMB No. 41436? The case may turn on whether the court finds the complaint's reliance on phenotypic similarity sufficient to establish this link.
- A key evidentiary question will be one of proof of process: for the method claims, what evidence can Plaintiff discover and present to demonstrate that Defendant Mitsuo actually performed the specific, multi-step backcrossing and selection process recited in Claim 18, which is foundational to several other asserted claims and is alleged only "upon information and belief"?