DCT
1:22-cv-01280
Pioneer Hi Bred Intl Inc v. Syngenta Seeds LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pioneer Hi-Bred International, Inc. (Iowa) and E. I. du Pont de Nemours and Company (Delaware)
- Defendant: Syngenta Seeds, LLC (Delaware)
- Plaintiff’s Counsel: Barnes & Thornburg, LLP
- Case Identification: 1:22-cv-01280, D. Del., 09/29/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware limited liability company.
- Core Dispute: Plaintiffs allege that Defendant’s process for producing doubled haploid maize plants, and the subsequent importation and use of those plants, infringes a patent directed to a method for rapidly creating such plants.
- Technical Context: The technology involves genetic methods to accelerate plant breeding, specifically by creating homozygous (genetically uniform) lines of maize in a few generations, a process that traditionally takes many years.
- Key Procedural History: The complaint notes that Defendant Syngenta, in its own U.S. Patent No. 8,980,632, cited and incorporated by reference the international patent application corresponding to the patent-in-suit. This may be relevant to questions of pre-suit knowledge of the patented technology.
Case Timeline
| Date | Event |
|---|---|
| 2005-09-21 | U.S. Patent No. 8,859,846 Priority Date |
| 2014-10-14 | U.S. Patent No. 8,859,846 Issued |
| 2014-10-14 | Alleged infringement by Syngenta begins |
| 2019-04-01 | Date of Syngenta presentation illustrating accused process |
| 2022-09-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,859,846 - Doubling of Chromosomes in Haploid Embryos
- Patent Identification: U.S. Patent No. 8859846 (“the ’846 Patent”), Doubling of Chromosomes in Haploid Embryos, issued October 14, 2014.
The Invention Explained
- Problem Addressed: The patent’s background section describes the process of obtaining homozygous plants for product development as an "inefficient use of labor and time resources" due to the need for several generations of self-pollination (’846 Patent, col. 1:11-15).
- The Patented Solution: The invention provides a multi-step method to significantly shorten this timeline. The process involves pollinating a maize plant with a special "inducer line" to create haploid embryos (containing only one set of chromosomes), isolating those embryos at a specific early stage of development, treating them with a chemical agent to double their chromosomes, and then culturing them into fertile, homozygous "doubled haploid" plants (’846 Patent, Abstract; col. 2:23-30). This method aims to produce fertile, doubled haploid plants with high frequency (’846 Patent, col. 2:18-20).
- Technical Importance: The ability to rapidly produce homozygous lines allows plant breeders to accelerate the development and commercialization of new hybrid crop varieties with desirable traits (Compl. ¶13).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 of the ’846 Patent (Compl. ¶19).
- Independent Claim 1 requires a method comprising the following essential elements:
- (a) pollinating silks of a maize ear with a maize inducer line to produce diploid and haploid maize embryos;
- (b) isolating the haploid maize embryo between 4-21 days after pollination, where the haploid embryo is distinguished from the diploid embryos via a marker;
- (c) contacting the haploid maize embryo with a chromosome doubling agent to produce a doubled haploid maize embryo cell;
- (d) culturing the doubled haploid embryo cell on a "non-callus promoting medium"; and
- (e) generating a doubled haploid maize plant from the cell.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is Syngenta's method for producing doubled haploid maize plants and seeds, identified as its "Embryo Rescue Doubled Haploid (ERDH) process" (Compl. ¶¶ 21, 30). The infringement allegations also cover the resulting plants and seeds themselves, which are alleged to be products made by the patented process and imported into the United States (Compl. ¶¶ 18, 19).
Functionality and Market Context
The complaint alleges that Syngenta performs its ERDH process at nurseries in Chile and Guatemala to create doubled haploid maize plants (Compl. ¶¶ 21, 32). These plants and their seeds are then allegedly imported into the United States, including Puerto Rico, for use in corn product development and trial seed production (Compl. ¶32). The complaint cites Syngenta's own materials stating that the doubled haploid method "speed[s] up . . . development for hybrid crops by several years" (Compl. ¶13).
IV. Analysis of Infringement Allegations
- Claim Chart Summary: The complaint’s infringement theory under 35 U.S.C. § 271(g) is based on allegations that Syngenta’s ERDH process, performed abroad, includes all steps of Claim 1, and that the resulting plants and seeds are imported into the U.S. A Syngenta presentation from April 2019 is the primary source of evidence cited (Compl. ¶20).
’846 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) pollinating silks of a maize ear with a maize inducer line to produce at least one diploid maize embryo and at least one haploid maize embryo; | Syngenta's process allegedly involves pollinating maize ears with an inducer line to produce both haploid and diploid embryos. A visual in the Syngenta Presentation depicts the "Pollination and Harvest of Induced Ears" (Compl. p.6). | ¶23 | col. 17:31-34 |
| (b) isolating said haploid maize embryo between 4-21 days after step (a), wherein said at least one haploid maize embryo is distinguished from the diploid maize embryos via expression of a marker; | Syngenta is alleged to isolate haploid embryos between 4-21 days post-pollination, distinguishing them from diploid embryos using a color marker (R1-nj). A visual titled "Haploid Selection" shows purple diploid kernels being separated from cream-colored haploid kernels (Compl. p.8). | ¶¶24, 25 | col. 17:35-38 |
| (c) contacting said haploid maize embryo with a chromosome doubling agent to produce at least one doubled haploid maize embryo cell; | The complaint alleges Syngenta treats the isolated haploid embryos with a chromosome doubling agent. An image from the Syngenta Presentation titled "Chromosome Doubling" depicts this step (Compl. p.9). | ¶26 | col. 17:39-41 |
| (d) culturing said doubled haploid maize embryo cell on a non-callus promoting medium; | Syngenta is alleged to culture the treated embryos on "embryo-rescue media to produce seedlings rather than plant callus tissue," which Plaintiffs contend is a "non-callus promoting medium." | ¶27 | col. 17:42-43 |
| (e) generating a doubled haploid maize plant from said doubled haploid maize embryo cell. | Syngenta is alleged to grow the cultured embryo cells into mature maize plants. A visual from the Syngenta Presentation titled "Production of Doubled Haploid Lines" depicts plants growing in a greenhouse (Compl. p.10). | ¶28 | col. 18:41-43 |
Identified Points of Contention
- Scope Questions: A central question may be whether Syngenta's "embryo-rescue media" meets the claim limitation of a "non-callus promoting medium." The analysis will depend on the precise definition of this term as derived from the patent's specification.
- Technical Questions: A key evidentiary question is whether Plaintiffs can prove that Syngenta's process performs the isolation step within the specific timeframe of "between 4-21 days" after pollination, as required by claim 1(b). The complaint alleges this based on "information and belief" and interpretation of Syngenta's own publications, but Syngenta's internal process documentation will be critical (Compl. ¶25).
V. Key Claim Terms for Construction
- The Term: "non-callus promoting medium"
- Context and Importance: This term appears in step (d) of Claim 1 and is a specific technical requirement of the claimed method. Infringement will depend on whether the growth medium Syngenta allegedly uses (described as "embryo-rescue media") falls within the scope of this term. Practitioners may focus on this term because it distinguishes the claimed invention from other plant tissue culture techniques that deliberately induce callus (undifferentiated tissue) growth.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent defines the term as "a medium that does not support proliferation of dedifferentiated masses of cells or tissue" and notes that a "preferred" example is a medium "used for embryo rescue, containing typical salt and vitamin formulations" (’846 Patent, col. 9:1-5). This language could support an interpretation that covers a range of standard embryo rescue media.
- Evidence for a Narrower Interpretation: The specification contrasts this medium with others that "contain elevated levels of cytokinin that promote meristem proliferation" (’846 Patent, col. 9:16-18). A defendant could argue that this contrast implies that the term excludes any medium with more than a minimal or baseline level of such hormones, potentially narrowing its scope.
VI. Other Allegations
Willful Infringement
The complaint does not include a separate count for willful infringement but does request a finding that the case is "exceptional" under 35 U.S.C. § 285 (Compl., Prayer for Relief ¶E). The factual basis for this appears to stem from the allegation that Syngenta, in its own patent application, cited the international publication corresponding to the ’846 Patent. This is alleged to have occurred before the lawsuit was filed and may be used to argue that Syngenta had pre-suit knowledge of the patented technology (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of process verification: Beyond the public presentation, what evidence will emerge in discovery to confirm that Syngenta’s internal ERDH process precisely matches every claimed step, particularly the "4-21 days" isolation window and the exact formulation of its growth medium?
- A core issue will be one of definitional scope: How will the term "non-callus promoting medium" be construed? The outcome of this claim construction dispute could determine whether Syngenta's use of what it calls "embryo-rescue media" meets this limitation of Claim 1.
- A final question will relate to scienter and damages: To what extent did Syngenta’s citation of the ’846 Patent's international counterpart in its own patent filings establish pre-suit knowledge of the invention, and how might that influence a potential finding of an exceptional case or an enhancement of damages?