DCT
1:25-cv-00370
KWS SAAT Se & Co KGaA v. Sesvanderhave NV
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: KWS SAAT SE & CO. KGAA (Germany)
- Defendant: SESVANDERHAVE (Belgium) and SESVANDERHAVE USA, Inc. (Delaware/North Dakota)
- Plaintiff’s Counsel: TROUTMAN PEPPER LOCKE LLP
- Case Identification: 1:25-cv-00370, D. Del., 03/26/2025
- Venue Allegations: Venue is alleged to be proper based on Defendant SESVANDERHAVE USA, Inc. being a Delaware corporation and therefore a resident of the district, and on Defendant SESVANDERHAVE being a foreign entity, for whom venue is proper in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s sugar beet seed varieties, marketed under the "Tandem Technology" brand, infringe two patents related to a specific gene that confers resistance to Rhizomania disease and methods for breeding plants with that gene.
- Technical Context: The dispute is in the field of agricultural biotechnology, where the genetic identification and incorporation of disease-resistance traits into staple crops like sugar beets is a significant driver of commercial value and crop yield protection.
- Key Procedural History: The complaint references an Opposition proceeding before the European Patent Office involving a related European patent. In those proceedings, Defendant SES is alleged to have made admissions regarding the identity of certain resistance genes, which Plaintiff now uses to support its infringement allegations. The complaint also notes that Plaintiff offered a license to the patents-in-suit to an affiliate of the Defendants in April 2024.
Case Timeline
| Date | Event |
|---|---|
| 2013-06-17 | Earliest Priority Date for '781 and '175 Patents |
| 2018-07-10 | '781 Patent Issued |
| 2019-07-09 | Date of Defendant's alleged admissions in European Patent Office Opposition |
| 2020-08-04 | '175 Patent Issued |
| 2021-01-01 | Approximate date based on "2021 Grower Guide" for Accused Products |
| 2024-04-01 | Plaintiff allegedly offered Defendants' affiliate a license to the Patents-in-Suit |
| 2025-03-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,017,781 - "Rhizomania-Resistant Gene," Issued July 10, 2018
The Invention Explained
- Problem Addressed: The patent addresses Rhizomania, which it describes as the "most serious sugar beet disease worldwide" caused by the Beet Necrotic Yellow Vein Virus (BNYVV). This disease can cause crop yield losses of 50% or more, and existing resistance genes, such as RZ-1, were found to be insufficient in regions with heavy infection (’781 Patent, col. 1:41-45, 1:62-65).
- The Patented Solution: The invention provides the isolated nucleic acid sequence for a newly identified resistance gene, RZ-3, derived from a wild beet subspecies (Beta vulgaris subsp. maritima) (’781 Patent, col. 2:1-2). By providing this specific genetic sequence (identified as SEQ ID NO: 1), the patent enables the creation of highly resistant sugar beet plants, either through genetic engineering or, as the patent specification notes, through advanced breeding techniques (’781 Patent, col. 1:20-29, col. 4:41-47).
- Technical Importance: The identification and sequencing of a novel resistance gene provides a new tool for breeders to develop durable, high-yield crops capable of withstanding significant disease pressure.
Key Claims at a Glance
- The complaint asserts independent Claim 3 (Compl. ¶39).
- The essential elements of Claim 3 are:
- A plant cell that comprises a nucleotide sequence selected from a group consisting of several options, including:
- b) a nucleotide sequence comprising the sequence of SEQ ID NO: 1
- Wherein said nucleotide sequence is heterologous to said cell.
- The complaint states infringement of "at least Claim 3," reserving the right to assert other claims (Compl. ¶39).
U.S. Patent No. 10,731,175 - "Rhizomania-Resistant Gene," Issued August 4, 2020
The Invention Explained
- Problem Addressed: As with the ’781 Patent, the invention is directed to combating Rhizomania in sugar beets (’175 Patent, col. 1:46-50). The specific problem for this patent is the inefficiency of traditional breeding, which requires growing plants to maturity to test for resistance.
- The Patented Solution: The ’175 Patent claims a method for more efficiently breeding resistant plants using "marker-assisted selection." It discloses specific DNA sequences (molecular markers) that are genetically linked to the RZ-3 resistance gene (’175 Patent, Abstract). By testing a plant's DNA for these markers (such as those on SEQ ID NO: 4 or 5), a breeder can quickly identify which plants carry the desired resistance gene without having to grow them and expose them to the disease. This allows for the rapid and precise "introgression" (transfer via cross-breeding) of the RZ-3 locus into elite sugar beet lines (’175 Patent, col. 3:45-53).
- Technical Importance: Marker-assisted selection significantly accelerates the pace and precision of plant breeding, reducing the time and cost required to bring new, improved crop varieties to market.
Key Claims at a Glance
- The complaint asserts independent Claim 10 (Compl. ¶79).
- The essential elements of Claim 10 are:
- A method for breeding a plant comprising an RZ-3 locus, wherein the plant belongs to the genus Beta.
- The method comprises the steps of:
- a) extracting genomic DNA of a cell, plant or seed.
- b) detecting the RZ-3 locus in the genomic DNA by using a molecular marker on a DNA sequence according to SEQ ID NO: 4 or on a DNA sequence according to SEQ ID NO: 5.
- c) introgressing the plant comprising the RZ-3 locus detected using the molecular marker with a second plant belonging to the genus Beta.
- The complaint asserts infringement of "at least Claim 10" (Compl. ¶80).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are numerous commercial sugar beet seed varieties sold by Defendants, including SV099N, SV602TT, SV981TT, and others (Compl. ¶7).
- Functionality and Market Context: The accused products are seeds that grow into sugar beet plants. They are advertised as incorporating "Tandem Technology®," which is promoted as providing "maximum Rhizomania protection" (Compl. ¶31). A screenshot from the Defendant's promotional material states this feature is "bred into all SESVanderHave varieties" (Compl. ¶45, p. 11). The complaint alleges that this "Tandem Technology" combines the known Rz1 resistance gene with a second resistance source derived from Beta maritima, and that this second source is the patented RZ-3 gene (Compl. ¶¶32, 51). The "TT" designation in variety names like "SV602TT" is alleged to refer to this Tandem Technology (Compl. ¶47). A screenshot for the SV602TT variety explicitly advertises "Tandem technology for excellent Rhizomania tolerance" (Compl. ¶46, p. 11).
IV. Analysis of Infringement Allegations
'781 Patent Infringement Allegations
| Claim Element (from Independent Claim 3) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plant cell that comprises a nucleotide sequence ... b) a nucleotide sequence comprising the sequence of SEQ ID NO: 1 | The Accused Products are seeds comprising plant cells that allegedly contain the RZ-3 resistance gene, which Plaintiff contends is the sequence of SEQ ID NO: 1. This is based on Defendant's marketing of "Tandem Technology" and alleged admissions in a European patent opposition that its Beta maritima-derived gene (Rz2) is "fully identical" to the patented RZ-3 gene. | ¶42, ¶52, ¶54, ¶57 | col. 219:34-36 |
| wherein said nucleotide sequence is heterologous to said cell | The RZ-3 gene is alleged to be heterologous because it originates from the wild subspecies Beta vulgaris ssp. maritima and was introduced via breeding (introgression) into the cultivated sugar beet subspecies Beta vulgaris ssp. vulgaris (the Accused Products). | ¶58 | col. 9:55-61 |
- Identified Points of Contention:
- Evidentiary Question: The central dispute may be factual: does the gene sequence within the accused seeds actually comprise SEQ ID NO: 1? The complaint relies heavily on inferences from marketing materials and admissions from a foreign proceeding concerning a related patent. The physical evidence from sequencing the accused products' DNA will be a critical point of proof.
'175 Patent Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for breeding a plant comprising an RZ-3 locus ... wherein the method comprises the following steps: | Defendants are alleged to use a breeding method to create the Accused Products, which are advertised as resistant to Rhizomania due to the presence of the Rz3 locus via "Tandem Technology." | ¶82, ¶83 | col. 220:37-41 |
| b) detecting the RZ-3 locus in the genomic DNA by using a molecular marker on a DNA sequence according to ... SEQ ID NO: 5 | The complaint alleges that Defendants use "marker assisted selection" in their breeding process. It further alleges, based on a cited scientific article co-authored by Defendant's Head of Breeding, that a specific molecular marker (CAU4188) is used to detect the Rz2/Rz3 locus, and that this marker is located within the DNA sequence of SEQ ID NO: 5. | ¶87, ¶89, ¶91 | col. 220:42-45 |
| c) introgressing the plant comprising the RZ-3 locus detected using the molecular marker with a second plant | The complaint alleges that Defendants' breeding process involves "successive back-crosses" to introgress the resistance gene. It cites an alleged admission from a European proceeding where Defendant stated the Rz2 sequence was "introgressed in sugar beet." | ¶87, ¶88 | col. 220:46-48 |
- Identified Points of Contention:
- Technical Question: A key question will be whether the complaint's allegations about the defendants' internal breeding process are accurate. The complaint infers the use of a specific marker (CAU4188) and its location within SEQ ID NO: 5, but proving the details of a proprietary commercial breeding program may present an evidentiary challenge.
V. Key Claim Terms for Construction
The Term: "heterologous to said cell" (from '781 Patent, Claim 3)
- Context and Importance: This term is critical because the accused gene was allegedly introduced by breeding between two subspecies of the same plant, not by transgenic modification from a different species. The viability of the infringement claim depends on whether this process results in a "heterologous" sequence.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification defines a "transgenic plant" to include those where the genetic material has been altered "by way of breeding," and states the term is not limited to genetically engineered plants (’781 Patent, col. 4:41-47). This language may support the view that introgression from a different subspecies renders the resulting sequence heterologous in the context of the patent.
- Evidence for a Narrower Interpretation: A party could argue that in the field of genetics, "heterologous" typically implies a more distant genetic relationship than that between two subspecies (B. vulgaris ssp. maritima and B. vulgaris ssp. vulgaris). The focus could be shifted to other parts of the specification that discuss more traditional genetic engineering vectors and transformation methods.
The Term: "detecting the RZ-3 locus ... by using a molecular marker on a DNA sequence according to SEQ ID NO: 5" (from '175 Patent, Claim 10)
- Context and Importance: Infringement of the method claim hinges on proving that the specific marker allegedly used by Defendants falls within the scope of this limitation. The complaint alleges a specific marker, CAU4188, is "located within" SEQ ID NO: 5 (Compl. ¶91). Practitioners may focus on this term because the precise meaning of "on a DNA sequence" could be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes using the disclosed sequences to "develop" markers, suggesting that markers derived from or located within the larger sequence are contemplated (’175 Patent, col. 11:63-66). This could support the idea that using a marker that is a sub-sequence of SEQ ID NO: 5 meets the limitation.
- Evidence for a Narrower Interpretation: A party might argue that "on a DNA sequence according to" requires a higher degree of identity or a more specific relationship than simply being a short sequence located somewhere within a much larger disclosed sequence. The analysis may turn on how one of ordinary skill in the art would interpret this phrase in the context of marker-assisted selection.
VI. Other Allegations
- Indirect Infringement: The complaint includes a count for induced infringement of the ’781 Patent, alleging that Defendants encourage and instruct their customers (farmers) to infringe by growing the accused seeds into plants containing the allegedly infringing cells. This inducement is alleged to occur through advertising, user guides, and the sale of the seeds themselves (Compl. ¶¶67, 69).
- Willful Infringement: Willfulness is alleged for both patents. The complaint bases this on alleged pre-suit knowledge of the patents and the infringing activity, citing Defendant's participation in a European Opposition against a related patent as early as July 2019 and a license offer made by Plaintiff in April 2024 (Compl. ¶¶59, 61, 94).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute between two major agricultural technology companies appears to center on three core questions:
- A core issue will be one of genetic identity: can Plaintiff prove through discovery and genetic sequencing that the resistance gene in Defendant's widely sold "Tandem Technology" products is, in fact, the specific nucleic acid sequence of SEQ ID NO: 1 as claimed in the '781 patent? The case may depend on whether Defendant's alleged admissions in a foreign patent proceeding are borne out by physical evidence.
- A second key issue is one of process verification: for the '175 method patent, can Plaintiff substantiate its allegations regarding Defendant's confidential, internal breeding process? The case will require moving from public-facing documents to direct evidence of whether Defendant actually uses a molecular marker that falls within the technical scope of the claims.
- Finally, a potential legal question is one of definitional scope: does the term "heterologous," as defined in the '781 patent, unambiguously cover a gene transferred between two subspecies of the same plant via introgression, a process distinct from transgenic modification? The court's construction of this single term could be dispositive for the product-based infringement claim.