DCT

1:23-cv-01059

Corteva Agriscience LLC v. Inari Agriculture Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01059, D. Del., 11/27/2023
  • Venue Allegations: Venue is alleged as proper in the District of Delaware because Defendant Inari USA is a Delaware corporation and thus resides in the district.
  • Core Dispute: Plaintiff alleges that Defendant misappropriated its patented, insect-resistant corn seeds from a biological depository, exported them in violation of contractual and patent rights, and used them for commercial purposes including the development of new genetically modified products.
  • Technical Context: The technology involves the genetic engineering of corn to express specific proteins that confer resistance to insect pests, a key innovation in modern agriculture aimed at increasing crop yields and reducing pesticide use.
  • Key Procedural History: The complaint describes a pre-suit history in which Corteva discovered Inari's activities involving its patented seeds. The dispute centers on Inari's alleged acquisition of seeds from the American Type Culture Collection (ATCC), a biological depository where Corteva placed samples of its patented seeds under agreements restricting their use to non-commercial research. Inari is alleged to have used a third-party agent to procure and export the seeds to Belgium for its own commercial research and development.

Case Timeline

Date Event
2009-12-17 ’434 Patent Priority Date
2013-11-05 ’434 Patent Issue Date
2019-07-14 Inari Belgium allegedly executed a Material Transfer Agreement (MTA) with ATCC
2020-05-20 Inari allegedly placed first purchase order for protected seeds
2020-09-08 Inari allegedly placed second purchase order for protected seeds
2021-09-14 Videoconference between Corteva and Inari representatives
2021-10-12 Inari USA letter to Corteva acknowledging access to seeds from ATCC
2021-10-20 Inari allegedly placed third purchase order for protected seeds
2022-12-01 Corteva allegedly first learned of Inari’s scheme to acquire seeds via an agent
2023-11-27 Complaint Filing Date

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

The Invention Explained

  • Problem Addressed: The patent addresses the significant loss of corn crops worldwide caused by insect pests and the need to reduce reliance on traditional chemical pesticides. (Compl. ¶55; ’434 Patent, col. 1:32-38).
  • The Patented Solution: The invention is a specific transgenic corn event, designated "DP-004114-3," created by inserting a novel DNA construct into a particular location in the corn plant's genome. (Compl. ¶56; ’434 Patent, col. 10:26-32). This DNA construct contains four distinct gene cassettes that cause the corn plant to produce proteins (Cry1F, Cry34Ab1, Cry35Ab1) toxic to various insect pests, as well as a protein (pat) that confers tolerance to an herbicide. (’434 Patent, col. 2:46-56). The invention's uniqueness stems not just from the DNA construct itself, but from the specific, stable integration of this construct into the corn genome, creating a heritable trait. (Compl. ¶58; ’434 Patent, col. 1:52-2:13).
  • Technical Importance: This technology provides a built-in, genetic method of insect control that is passed down through seeds, offering an alternative to the external application of chemical pesticides. (Compl. ¶55).

Key Claims at a Glance

  • The complaint asserts infringement of claims 1, 8, and 9. (Compl. ¶141). Claim 8 is the primary asserted independent claim covering the seed product.
  • Essential elements of Independent Claim 8:
    • A seed comprising corn event DP-004114-3,
    • wherein said seed comprises the DNA construct of claim 1,
    • 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 does not explicitly reserve the right to assert dependent claims but asserts infringement of "one or more claims." (Compl. ¶136).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the corn seeds embodying the patented DP-004114-3 event, which Corteva deposited with the ATCC under accession number PTA-11506. (Compl. ¶59, ¶135). The complaint alleges that Inari, through an agent, acquired these specific seeds from the ATCC depository for unauthorized commercial purposes. (Compl. ¶6, ¶92, ¶118).

Functionality and Market Context

The seeds themselves contain the patented genetic traits for insect resistance. (Compl. ¶56). The complaint alleges that Inari's business strategy is to obtain high-quality seeds developed by others, make slight genetic modifications to them, and then commercialize the resulting products to compete with the original innovators. (Compl. ¶3, ¶115). Inari allegedly acquired Corteva's seeds to "short-cut one hundred years of plant breeding" and to "bring seed products to the market in less time and with less expense." (Compl. ¶113, ¶115).

IV. Analysis of Infringement Allegations

The complaint asserts infringement under 35 U.S.C. §§ 271(a), 271(b), and 271(f)(2). The central allegation for direct infringement under § 271(a) is that Inari, acting through its U.S.-based agent IE-SCS, unlawfully "used" the patented seeds within the United States by processing them to obtain a USDA phytosanitary certificate required for export. (Compl. ¶137-138).

’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... Inari obtained samples of corn seed deposited with ATCC under Accession No. PTA-11506, which is the representative sample of the claimed DP-004114-3 event. ¶142 col. 42:8-15
...wherein said seed comprises the DNA construct of claim 1... The deposited seeds are alleged to incorporate the DNA construct of claim 1, which confers insect resistance. ¶141 col. 42:10-11
...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. Corteva alleges it deposited a representative biological sample of the seeds with ATCC under this specific accession number to bolster the patent's disclosure. The complaint includes a purchase order from Inari that explicitly lists "PTA-11506." ¶59; p. 26 col. 6:34-41

Identified Points of Contention

  • Scope Questions: The core legal question for direct infringement will be one of statutory scope: Do the alleged actions of Inari's agent in the U.S.—receiving the patented seeds and conducting testing and inspection to obtain a USDA phytosanitary certificate for export—constitute an infringing "use" under 35 U.S.C. § 271(a)? (Compl. ¶137-138).
  • Technical Questions: A key evidentiary question for infringement under 35 U.S.C. § 271(f)(2) will be whether the patented seed is a "component" of the patented plant of claim 9 that is a "staple article of commerce suitable for substantial noninfringing use." The complaint alleges the seeds are not staple articles of commerce and are especially adapted for combination with water, light, and nutrients to produce the patented plant. (Compl. ¶148-149).

V. Key Claim Terms for Construction

  • The Term: "A seed comprising corn event DP-004114-3"
  • Context and Importance: This term defines the invention. The claim's recitation of the ATCC deposit number (PTA-11506) provides a physical, extrinsic definition of the "event." Practitioners may focus on this term because the dispute involves not just the original deposited seeds but also Inari's alleged genome-edited modifications of those seeds. (Compl. ¶115, ¶118). The central issue will be whether Inari's modified versions still fall within the scope of "corn event DP-004114-3."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification defines a "transgenic event" more broadly as being "produced by transformation of plant cells with a heterologous DNA construct" and characterized by "insertion into a particular genome location." (’434 Patent, col. 10:26-32). This language could support an argument that the "event" is defined by the functional DNA construct and its location, not merely the exact sequence of the deposited sample.
    • Evidence for a Narrower Interpretation: Claim 8 explicitly ties the invention to the "representative sample of corn event DP-004114-3 seed...deposited with" ATCC under a specific accession number. (’434 Patent, col. 42:11-15). This suggests the scope of the claim is defined by the actual biological material on deposit, potentially limiting how far the claim can reach to cover modified versions.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges multiple theories of indirect infringement:
    • Induced Infringement (§ 271(b)): Alleges that Inari, with knowledge of the ’434 Patent, induced ATCC to directly infringe by selling the patented seeds for a commercial purpose, in violation of the Material Transfer Agreement. (Compl. ¶162, ¶165, ¶168).
    • Infringement by Export (§ 271(f)(2)): Alleges that Inari supplied the patented seeds—a "component" of the patented plant of claim 9—from the United States with the intent that they be combined abroad with water, soil, and nutrients to make the patented plant. (Compl. ¶147-148, ¶151).
  • Willful Infringement: The complaint alleges willfulness based on pre-suit knowledge. It cites Inari's own patent applications, which expressly reference the ’434 Patent, Corteva's public "Trait Stewardship" website listing the patent, and direct correspondence between the parties regarding Inari's access to the patented seeds. (Compl. ¶118-119, ¶157, ¶164).

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

  • A core issue will be one of statutory interpretation: Do the alleged domestic activities of Inari's agent—procuring patented seeds from a depository and preparing them for export—rise to the level of an infringing "use" under 35 U.S.C. § 271(a), or does this activity fall short of the statutory bar?
  • A key legal question will be one of extraterritoriality: Does the act of supplying a patented seed from the United States, with the knowledge and intent that it will be grown into a patented plant abroad, constitute supplying a "component" of a patented invention for combination abroad under 35 U.S.C. § 271(f)(2)?
  • A central question of claim scope will be: Can the term "corn event DP-004114-3," which is tied directly to a physical deposit in the asserted claim, be construed to cover the genetically modified versions of that event that Inari allegedly created and patented?