DCT
0:25-cv-00043
United Beet Seeds BV v. KWS SAAT Se & Co KGaA
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: United Beet Seeds BV (Belgium)
- Defendant: KWS Saat SE & Co. KGaA (Germany)
- Plaintiff’s Counsel: Fox Rothschild LLP
- Case Identification: 0:25-cv-00043, D. Minn., 01/06/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is not a U.S. resident and is subject to personal jurisdiction in Minnesota through the activities of its U.S. subsidiary, KWS Seeds LLC, which has a principal place of business and multiple research facilities in the state.
- Core Dispute: Plaintiff, a seed producer, seeks a declaratory judgment that it does not infringe, and that the patents are invalid and/or unenforceable for, two patents owned by Defendant related to a gene that confers fungal resistance in sugar beets.
- Technical Context: The technology involves a specific gene sequence that provides sugar beets with resistance to Cercospora leaf spot, a highly destructive fungal disease that can cause significant crop yield losses.
- Key Procedural History: The complaint was filed following a series of communications in which Defendant KWS allegedly accused Plaintiff UBS of infringement, demanded UBS cease all related activities, and threatened litigation in the U.S. and other countries if its demands were not met by a specific deadline. The complaint frames these events as creating an actual and immediate controversy sufficient to warrant a declaratory judgment.
Case Timeline
| Date | Event |
|---|---|
| 2003-08-06 | Public availability of BETA 1859 seed deposit, alleged prior art |
| 2012-03-21 | UBS obtains sample of BETA 1859 seed from IPK Gene Bank |
| 2017-12-14 | Application date for KWS's FIAMMETTA/GIACOMINA varieties, alleged prior art |
| 2019-02-18 | Priority Date for '191 and '944 Patents |
| 2020-09-08 | '191 Patent Issued |
| 2023-03-07 | '944 Patent Issued |
| 2023-12-05 | Plaintiff's predecessors announce intention to form joint venture |
| 2024-08-06 | KWS contacts Plaintiff's predecessor (DLF) alleging IP infringement |
| 2024-11-29 | KWS sends letter to Plaintiff threatening legal action |
| 2025-01-06 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,767,191 - "Gene Conferring Resistance To Cercospora Beticola In Beets"
- Patent Identification: U.S. Patent No. 10,767,191, "Gene Conferring Resistance To Cercospora Beticola In Beets", issued September 8, 2020.
The Invention Explained
- Problem Addressed: The patent addresses the significant agricultural problem of Cercospora leaf spot, a disease caused by the fungus Cercospora beticola that infects sugar beets (Beta vulgaris), leading to substantial yield losses. The patent notes that combating the disease with fungicides is a common but costly practice with potential environmental drawbacks, and existing resistant cultivars have limitations ('191 Patent, col. 1:50-2:10).
- The Patented Solution: The invention provides a genetic solution by identifying a specific nucleic acid molecule that, when present and expressed in a sugar beet plant, encodes a polypeptide that confers resistance to the fungus. The patent claims the nucleic acid itself, the resulting polypeptide (defined by SEQ ID NO: 3), the transgenic plants and seeds containing the gene, and methods for producing them ('191 Patent, Abstract; col. 4:11-30).
- Technical Importance: The technology purports to offer a stable, heritable method for protecting a key agricultural crop from a major pathogen, potentially increasing crop yields and reducing the need for chemical fungicides ('191 Patent, col. 2:20-25).
Key Claims at a Glance
- The complaint focuses on independent claim 1 and alleges claims 1-12 are invalid (Compl. ¶25).
- Independent Claim 1:
- A pelleted seed of a sugar beet plant
- comprising a nucleic acid molecule encoding a polypeptide that is able to confer resistance to Cercospora beticola in a sugar beet plant in which the polypeptide is expressed,
- wherein the polypeptide comprises an amino acid sequence that is at least 95% identical to the amino acid sequence according to SEQ ID NO: 3.
- The complaint reserves the right to assert invalidity against additional claims (Compl. ¶44).
U.S. Patent No. 11,597,944 - "Gene Conferring Resistance To Cercospora Beticola In Beets"
- Patent Identification: U.S. Patent No. 11,597,944, "Gene Conferring Resistance To Cercospora Beticola In Beets", issued March 7, 2023.
The Invention Explained
- Problem Addressed: The problem is identical to that described in the '191 Patent, which is its parent patent ('944 Patent, col. 1:56-2:16; Compl. ¶13).
- The Patented Solution: The solution is also based on the same resistance-conferring gene. However, the claims of the '944 Patent are directed primarily to the sugar beet plant itself, rather than the pelleted seed as claimed in the '191 Patent ('944 Patent, Abstract; Compl. ¶50). The patent describes that the gene can be introduced into the plant's genome to provide resistance ('944 Patent, col. 4:13-25).
- Technical Importance: As with the parent patent, the technology provides a genetic mechanism for disease resistance in an important commercial crop ('944 Patent, col. 2:17-21).
Key Claims at a Glance
- The complaint focuses on independent claim 1 and alleges claims 1-22 are invalid (Compl. ¶48).
- Independent Claim 1:
- A plant of the subspecies Beta vulgaris subsp. vulgaris
- comprising a nucleic acid molecule encoding a polypeptide that is able to confer resistance to Cercospora beticola in a plant in which the polypeptide is expressed,
- characterized in that the nucleic acid molecule comprises a nucleotide sequence which is selected from the group consisting of: (a) a nucleotide sequence that encodes a polypeptide having the amino acid sequence according to SEQ ID NO: 3; and (b) a nucleotide sequence that encodes a polypeptide which has an amino acid sequence that is at least 95% identical to the amino acid sequence according to SEQ ID NO: 3.
- The complaint reserves the right to assert invalidity against additional claims (Compl. ¶55).
III. The Accused Instrumentality
Product Identification
- Plaintiff UBS's Cercospora Resistance (CR) sugar beet seed products (Compl. ¶1, 10).
Functionality and Market Context
- The products are sugar beet seeds that grow into plants designed to be resistant to the Cercospora beticola fungus (Compl. ¶10). UBS alleges these products were developed "through traditional breeding techniques" using "naturally occurring resistant wild beet accessions," as distinct from using recombinant DNA technology to insert a non-native gene (Compl. ¶10). The complaint states that as of 2024, UBS was conducting Official Variety Trials for these seeds in multiple U.S. regions, including Minnesota, which are designed to provide farmers with data to select the best cultivars for planting (Compl. ¶11).
IV. Analysis of Invalidity Allegations
This is a declaratory judgment action where the Plaintiff (UBS) alleges the Defendant's (KWS) patents are invalid. The following charts summarize UBS's primary invalidity arguments based on alleged prior art.
'191 Patent Invalidity Allegations
| Claim Element (from Independent Claim 1) | Alleged Invalidating Prior Art Feature (BETA 1859 Seed Deposit) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A pelleted seed of a sugar beet plant | The complaint alleges that the BETA 1859 deposit provides a sugar beet seed, and that pelleting is a routine, well-known, and non-novel step acknowledged in the patent itself and in numerous other prior art references dating back decades. | ¶26, 31 | col. 24:60-62 |
| comprising a nucleic acid molecule encoding a polypeptide that is able to confer resistance to Cercospora beticola in a sugar beet plant in which the polypeptide is expressed | The complaint alleges that the publicly available BETA 1859 seed contains a gene that is 100% identical to the claimed SEQ ID NO:1, which encodes the resistance polypeptide, and therefore inherently confers the claimed resistance. | ¶29, 30 | col. 4:11-18 |
| wherein the polypeptide comprises an amino acid sequence that is at least 95% identical to the amino acid sequence according to SEQ ID NO: 3 | UBS alleges its sequencing confirmed the gene in the BETA 1859 seed is 100% identical to the DNA sequence of SEQ ID NO:1, which by definition translates to an amino acid sequence that is 100% identical to SEQ ID NO: 3, thus satisfying the "at least 95%" limitation. | ¶28, 29 | col. 4:18-23 |
The complaint also proffers a separate invalidity argument based on KWS's own prior commercial activities. A photograph of a product label for "FIAMMETTA KWS" is provided as evidence that KWS marketed sugar beet varieties containing the claimed gene more than one year before the patent's effective filing date (Compl. ¶37).
'944 Patent Invalidity Allegations
| Claim Element (from Independent Claim 1) | Alleged Invalidating Prior Art Feature (BETA 1859 Seed Deposit) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plant of the subspecies Beta vulgaris subsp. vulgaris | UBS alleges that the publicly available BETA 1859 seed deposit can be, and was, grown into a Beta vulgaris plant. | ¶52 | col. 4:13-18 |
| comprising a nucleic acid molecule encoding a polypeptide that is able to confer resistance to Cercospora beticola... characterized in that the nucleic acid molecule comprises a nucleotide sequence which is selected from the group consisting of: (a) a nucleotide sequence that encodes a polypeptide having the amino acid sequence according to SEQ ID NO: 3; and (b) a nucleotide sequence that encodes a polypeptide which has an amino acid sequence that is at least 95% identical to the amino acid sequence according to SEQ ID NO: 3. | The complaint alleges that sequencing of the plant grown from the BETA 1859 seed revealed it contains the "exact same CR gene claimed in the '944 patent," thus meeting both prongs of the limitation. | ¶52 | col. 4:18-29 |
- Identified Points of Contention:
- Factual/Evidentiary Question: A primary dispute will be factual: does the BETA 1859 seed, publicly available since 2003, actually contain the specific gene sequence claimed in the patents-in-suit? The outcome may depend on the strength of the sequencing evidence presented by UBS (Compl. ¶29, Exhibit D).
- Anticipation Question: If the BETA 1859 seed is found to contain the claimed gene, a legal question will be whether this prior art deposit anticipates the claims. For the '191 patent, this raises the question of whether adding a routine process (pelleting) to a known product (the seed) is sufficient for patentability (Compl. ¶31). For the '944 patent, the question is whether a seed deposit that can be grown into a plant makes the resulting plant anticipated by prior art (Compl. ¶52).
V. Key Claim Terms for Construction
- The Term: "at least 95% identical to the amino acid sequence according to SEQ ID NO: 3"
- Context and Importance: This term defines the breadth of the invention. Its construction is critical not only for infringement but also for the validity challenges under 35 U.S.C. § 112. UBS alleges this term covers "many billions of different combinations," which it argues the inventors neither possessed (written description) nor enabled a person of skill to make (enablement) (Compl. ¶42, 54).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim suggests any polypeptide meeting the numerical threshold is covered. The specification describes methods for creating variants, such as through substitution, deletion, and/or addition of amino acids, which may support a construction that is not limited to the single disclosed sequence ('191 Patent, col. 7:1-8).
- Evidence for a Narrower Interpretation: A party might argue the scope is implicitly limited by the patent's specific embodiments, which center on the polypeptide of SEQ ID NO: 3 itself. The patent's examples and detailed description of the breeding program that produced SEQ ID NO: 3 could be used to argue that the "95% identity" language was intended only to capture minor, functionally equivalent variations, not a vast genus of sequences.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration of non-infringement "either directly or indirectly, literally, under the doctrine of equivalents, or otherwise" but does not plead specific facts relating to indirect infringement, as the filing's purpose is defensive (Compl. ¶81, 86).
- Inequitable Conduct Allegations: The complaint makes extensive and detailed allegations of inequitable conduct against KWS and its patent counsel, forming the basis for Counts III and IV (unenforceability).
- Withholding Material Prior Art: UBS alleges KWS intentionally withheld two key pieces of prior art from the USPTO: (1) the BETA 1859 seed deposit, which UBS alleges anticipates the claims, and (2) KWS's own prior commercialization and marketing applications for its FIAMMETTA and GIACOMINA KWS varieties, which allegedly also embody the invention (Compl. ¶60, 61, 66).
- Affirmative Misrepresentation: The complaint alleges that KWS affirmatively and falsely represented to the Patent Examiner that the claimed gene was the result of a "highly unpredictable spontaneous genetic restructuring" and could not be traced to a public source. UBS alleges this was false because the gene was, in fact, traceable to the undisclosed BETA 1859 deposit. The complaint cites the Examiner's Reasons for Allowance, which appear to rely on this "untraceable" narrative, as evidence of materiality and intent to deceive (Compl. ¶64, 65).
- Infectious Unenforceability: UBS alleges that the inequitable conduct during the prosecution of the parent '191 patent renders the continuation '944 patent unenforceable under the doctrine of infectious unenforceability, given the patents' close relationship and nearly identical specifications (Compl. ¶73-77).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central question will be one of prior art: Does the evidence, particularly genetic sequencing of the 2003 BETA 1859 seed deposit, prove that the claimed invention was already in the public domain years before the patent was filed? The case may turn on the factual and legal consequences of this public deposit.
- A second core issue will be one of patent prosecution conduct: Did the patentee and its counsel intentionally withhold material prior art and/or affirmatively mislead the USPTO regarding the origin of the claimed gene, as alleged by UBS? The court's examination of the prosecution history and the Examiner's stated reasons for allowing the patent will be critical to resolving the serious allegations of inequitable conduct.
- A final key question will address claim scope and validity: Is the claim language "at least 95% identical," which the complaint alleges covers billions of potential sequences, adequately supported by the patent's disclosure under the written description and enablement requirements of patent law, or does it claim far more than the inventors actually invented and described?