DCT

1:23-cv-01059

Corteva Agriscience LLC v. Inari Agriculture Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01059, D. Del., 10/15/2024
  • Venue Allegations: Venue is alleged in Delaware based on Defendant Inari USA being a Delaware corporation and Defendant Inari Belgium being a non-U.S. resident.
  • Core Dispute: Plaintiff alleges that Defendant misappropriated hundreds of varieties of Plaintiff's patented and PVP-protected corn and soybean seeds from a biological depository, exported them, and used them for commercial purposes, including developing its own genetically modified seed products.
  • Technical Context: The lawsuit concerns genetically engineered plant traits that provide crops with enhanced characteristics, such as insect resistance and herbicide tolerance, a cornerstone of the modern agricultural technology market.
  • Key Procedural History: The complaint alleges that after misappropriating Corteva's seeds, Inari filed and obtained its own U.S. patents on what it describes as "modifications" of Corteva's patented transgenic events, explicitly referencing Corteva's technology in its patent applications.

Case Timeline

Date Event
2004-09-29 U.S. Patent No. 7,956,246 Priority Date
2005-10-28 U.S. Patent No. 8,283,522 Priority Date
2009-12-17 U.S. Patent No. 8,575,434 Priority Date
2011-06-07 U.S. Patent No. 7,956,246 Issued
2011-07-26 U.S. Patent Nos. 8,680,363 & 9,695,441 Priority Date
2012-10-09 U.S. Patent No. 8,283,522 Issued
2013-11-05 U.S. Patent No. 8,575,434 Issued
2014-03-25 U.S. Patent No. 8,680,363 Issued
2017-05-04 Inari USA allegedly executes Material Transfer Agreement with ATCC
2017-07-04 U.S. Patent No. 9,695,441 Issued
2019-07-14 Inari Belgium allegedly executes Material Transfer Agreement with ATCC
2020-02-01 Inari allegedly begins placing orders with ATCC for Corteva's seeds
2021-09-14 Corteva and Inari USA hold videoconference regarding use of events
2022-12-01 Corteva allegedly discovers Inari's acquisition of hundreds of seeds
2024-10-15 Second Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,575,434 - "Maize Event DP-004114-3 and Methods for Detection Thereof"

  • Issued: November 5, 2013

The Invention Explained

  • Problem Addressed: The patent's background describes the significant loss of corn crops worldwide due to damage from insect pests, which has historically required the use of chemical pesticides (Compl. ¶55; ’434 Patent, col. 1:32-38).
  • The Patented Solution: The invention is a specific, novel transgenic "event" in maize (corn), designated DP-4114. This event comprises a unique DNA construct inserted into a particular location in the corn plant's genome, causing the plant to express proteins that are toxic to certain insect pests (Compl. ¶¶56-57). The patent specification explains that creating a commercially viable event is a difficult process, as the location of the inserted gene significantly influences its expression, requiring researchers to screen "hundreds to thousands of different events" to find one with the desired traits (Compl. ¶58; ’434 Patent, col. 1:52-2:13).
  • Technical Importance: This technology allows for the creation of insect-resistant crops, reducing the need for externally applied chemical pesticides and protecting crop yields from pest damage (Compl. ¶55).

Key Claims at a Glance

  • The complaint asserts at least independent claim 8 (Compl. ¶195).
  • Claim 8, which depends on claim 1, includes the following essential elements:
    • A seed
    • comprising corn event DP-004114-3
    • wherein the seed comprises the DNA construct of claim 1
    • wherein a representative sample of the seed has been deposited with the American Type Culture Collection (ATCC) under Accession No. PTA-11506
  • The complaint also references claims 1 and 9 in its infringement counts (Compl. ¶¶198, 202).

U.S. Patent No. 7,956,246 - "Corn event DAS-59122-7 and methods for detection thereof"

  • Issued: June 7, 2011

The Invention Explained

  • Problem Addressed: Similar to the '434 Patent, the ’246 patent addresses the problem of insect pest damage as a "major factor in the loss of the world's corn crops" (Compl. ¶61; ’246 Patent, col. 1:31-37).
  • The Patented Solution: The invention provides a different novel transgenic corn event, designated DAS-59122. This event involves the insertion of a DNA construct containing genes (cry34Ab1, cry35Ab1) that confer resistance to certain beetle pests, as well as a gene (pat) that confers tolerance to glufosinate herbicide (Compl. ¶¶62-63). The patent describes that producing a commercially useful transgenic event requires screening a large number of potential events to identify one with "optimal expression" of the desired traits (Compl. ¶64; ’246 Patent, col. 1:51-2:13).
  • Technical Importance: This technology provides corn plants with built-in resistance to common insect pests and tolerance to a widely used herbicide, offering farmers a dual-trait agricultural tool (Compl. ¶63).

Key Claims at a Glance

  • The complaint asserts at least independent claim 12 (Compl. ¶234).
  • Claim 12 includes the following essential elements:
    • A seed
    • comprising in its genome the nucleotide sequence set forth in SEQ ID NO: 23
  • The complaint also references claim 10 in its infringement counts (Compl. ¶237).

U.S. Patent No. 8,283,522 - "Herbicide resistance gene"

  • Issued: October 9, 2012 (Compl. ¶66)
  • Technology Synopsis: The patent addresses the challenge of controlling weeds that are resistant to common herbicides like glyphosate (Compl. ¶67; ’522 Patent, col. 2:18-22). The solution is a polynucleotide (the AAD-12 gene) that, when expressed in a plant like soybean, confers resistance to other herbicides such as 2,4-D (Compl. ¶¶67-68).
  • Asserted Claims: At least independent claim 13 is asserted (Compl. ¶269).
  • Accused Features: Inari's alleged use of seeds containing Corteva's transgenic soybean event DAS-44406, which includes the patented AAD-12 gene (Compl. ¶¶69, 265).

U.S. Patent No. 8,680,363 - "Insect resistant and herbicide tolerant soybean event 9582.814.19.1"

  • Issued: March 25, 2014 (Compl. ¶70)
  • Technology Synopsis: The patent describes a specific transgenic event in soybeans, DAS-81419, which confers dual traits of resistance to lepidopteran (moth) pests and tolerance to glufosinate herbicide (Compl. ¶¶71-72). The difficulty of creating an event with desired expression levels is noted (Compl. ¶73; ’363 Patent, col. 1:25-53).
  • Asserted Claims: At least claim 8 is asserted (Compl. ¶306).
  • Accused Features: Inari's alleged use of genetic material derived from Corteva's DAS-81419 soybean event for genetic editing in Belgium (Compl. ¶152, ¶302).

U.S. Patent No. 9,695,441 - "Insect resistant and herbicide tolerant soybean event 9582.814.19.1"

  • Issued: July 4, 2017 (Compl. ¶75)
  • Technology Synopsis: The patent is a continuation related to the '363 Patent and also claims soybean seeds, plants, and tissues that include the specific transgenic event DAS-81419, which confers insect and herbicide resistance (Compl. ¶76).
  • Asserted Claims: At least claim 2 is asserted (Compl. ¶341).
  • Accused Features: Inari's alleged acquisition and use of seeds containing the DAS-81419 event (Compl. ¶¶152, 337).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are not publicly sold products but rather the biological materials themselves: hundreds of varieties of Corteva’s proprietary corn and soybean seeds that Inari allegedly acquired from the American Type Culture Collection (ATCC), a biological depository (Compl. ¶6, ¶123). The complaint alleges that Inari then used these seeds and the genetic material derived from them to conduct research, genetic modification, and development of its own commercial seed products (Compl. ¶¶3, 152, 154).

Functionality and Market Context

The complaint alleges Inari's business model is to acquire elite, patent-protected seeds from competitors, make "slight genetic modifications," and then commercialize the resulting seeds to "bring these advanced products to market in less time and with less expense than the industry norm" (Compl. ¶¶3, 157). The accused acts include acquiring Corteva's seeds containing specific transgenic events (e.g., DP-4114, DAS-59122), exporting them to facilities in Belgium and Chile, and using them for genetic editing (Compl. ¶¶130, 152, 153). An invoice reproduced in the complaint shows Inari ordering ATCC materials for shipment to its agent, Infinite-Eversole Specialty Crop Services LLC ("IE-SCS"), rather than directly to Inari (Compl. p. 38).

IV. Analysis of Infringement Allegations

The complaint’s primary theory for direct infringement under 35 U.S.C. § 271(a) is that Inari, through its agent IE-SCS, "used" the patented seeds within the United States by performing phytosanitary testing required for their exportation (Compl. ¶¶194, 233, 268).

8,575,434 Patent Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
A seed comprising corn event DP-004114-3, wherein said seed comprises the DNA construct of claim 1... Inari, through its agent IE-SCS, is alleged to have acquired, possessed, and used corn seeds containing the DP-4114 event within the United States (Compl. ¶¶192, 194). ¶192, ¶194 col. 60:8-10
...wherein a representative sample of corn event DP-004114-3 seed has been deposited with American Type Culture Collection (ATCC) with Accession No. PTA-11506. The complaint alleges Inari acquired the specific seeds deposited under ATCC Accession No. PTA-11506 and provides documentation from ATCC as evidence (Compl. ¶¶59, 144, 191). ¶59, ¶191 col. 6:34-41
Use within the United States The complaint alleges that Inari's agent, IE-SCS, used the patented seeds in the United States to conduct laboratory testing required to obtain a USDA phytosanitary certificate for export (Compl. ¶¶193-195). ¶194-¶195 N/A

Identified Points of Contention

  • Legal Scope Question: A central question may be whether conducting phytosanitary testing on a seed for the purpose of export constitutes an infringing "use" of the patented seed under 35 U.S.C. § 271(a).
  • Evidentiary Question: What specific actions comprised the phytosanitary testing, and does the evidence show these actions were performed on the patented seeds within the United States? The complaint alleges this was a "use" without providing extensive detail on the testing protocol itself (Compl. ¶194).

7,956,246 Patent Infringement Allegations

Claim Element (from Independent Claim 12) Alleged Infringing Functionality Complaint Citation Patent Citation
A seed comprising in its genome the nucleotide sequence set forth in SEQ ID NO: 23. Inari is alleged to have acquired and used seeds containing the DAS-59122 event, which the '246 patent defines by the claimed nucleotide sequence (Compl. ¶¶230-231). ¶231 col. 78:11-13
Use within the United States As with the '434 patent allegations, the complaint alleges that Inari's agent used these specific seeds in the U.S. to conduct testing necessary to obtain a phytosanitary certificate for export (Compl. ¶¶232-234). ¶233-¶234 N/A

Identified Points of Contention

  • Technical Scope Question: The complaint alleges Inari used seeds containing the DAS-59122 event to create its own modified versions (Compl. ¶162). A potential point of contention, particularly for any products Inari might develop, is whether such modified seeds still "compris[e] in [their] genome" the exact, unmodified nucleotide sequence of SEQ ID NO: 23.
  • Legal Scope Question: As above, the nature of the "use" via phytosanitary testing will be a key issue for the direct infringement claim asserted in the complaint (Compl. ¶234).

V. Key Claim Terms for Construction

The Term: "corn event DP-004114-3" ('434 Patent, Claim 8)

Context and Importance

The definition of this term is central to the scope of the patent. The patent defines an "event" not just by the inserted DNA construct but also by its specific location in the genome, which influences its expression and phenotypic effect (Compl. ¶56). Practitioners may focus on whether Inari's alleged modifications to the DP-4114 locus (Compl. ¶161) create a new, distinct "event" that falls outside the patent's claims.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: The patent defines a transgenic event as being produced by transformation, regeneration, and "selection of a particular plant characterized by insertion into a particular genome location" ('434 Patent, col. 10:26-33). Parties could argue this definition centers on the original insertion location, and subsequent minor edits at that same location do not create a new event.
  • Evidence for a Narrower Interpretation: The claims tie the event directly to the "DNA construct of claim 1" and the specific seed deposited with ATCC (Compl. ¶195). Parties could argue that any modification to that construct or its resulting expression profile, as alleged by Inari, results in a product that is no longer the claimed "corn event DP-004114-3."

The Term: "A seed comprising in its genome the nucleotide sequence set forth in SEQ ID NO: 23" ('246 Patent, Claim 12)

Context and Importance

The open-ended term "comprising" is fundamental to claim construction. The dispute will turn on whether a seed genome that has been genetically edited, but which originated from a seed containing SEQ ID NO: 23, still "compris[es]" that sequence.

Intrinsic Evidence for Interpretation

  • Evidence for a Broader Interpretation: "Comprising" is a well-established term of art in patent law that means the claimed device or composition includes the listed elements but is not limited to them. A plaintiff may argue that as long as the entirety of SEQ ID NO: 23 is present somewhere in the accused seed's genome, the claim is met, regardless of other modifications.
  • Evidence for a Narrower Interpretation: A defendant could argue that if its genetic modification altered any part of the SEQ ID NO: 23 sequence itself, the resulting genome no longer "compris[es]" the claimed sequence. The patent specification repeatedly links the invention to the specific characteristics of the DAS-59122 event, which is defined by the precise sequence ('246 Patent, col. 10:44-50), potentially suggesting the integrity of that sequence is essential.

VI. Other Allegations

Indirect Infringement

The complaint alleges multiple forms of indirect infringement. It alleges Inari induced ATCC to infringe by selling patented seeds for a prohibited commercial purpose (Compl. ¶¶220, 226). It further alleges infringement under 35 U.S.C. § 271(f)(2) by supplying the patented seeds from the U.S. with the knowledge and intent that they would be combined with water, nutrients, and light abroad to grow into infringing plants (Compl. ¶¶206, 210, 244, 248).

Willful Infringement

The complaint alleges willfulness based on extensive pre-suit knowledge. It cites Inari’s own patent applications that explicitly reference Corteva’s patents-in-suit (Compl. ¶¶215, 250), correspondence in which Inari acknowledged Corteva’s patent scope (Compl. ¶128, ¶222), and Corteva’s public "Trait Stewardship" website which lists the asserted patents (Compl. ¶156, ¶257).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of extraterritorial scope: Can the act of exporting a patented, self-replicating seed from the U.S., with the intent that it be grown into a claimed plant abroad, constitute supplying a "component" for an infringing foreign "combination" under 35 U.S.C. § 271(f)?
  • A key legal question for direct infringement will be one of statutory interpretation: Does conducting phytosanitary testing on patented seeds within the U.S., as an alleged necessary step for their exportation for commercial use, constitute an infringing "use" under 35 U.S.C. § 271(a)?
  • A central technical and claim construction question will be one of modification: Does a seed that originates from a patented transgenic event but contains subsequent genetic edits still fall within the scope of claims reciting a specific "event" or "comprising" a specific DNA sequence, particularly when the patent holder deposited a representative seed to define the invention?