DCT

5:24-cv-00723

Atticus LLC v. FMC Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:24-cv-00723, W.D.N.C., 12/19/2024
  • Venue Allegations: Plaintiff Atticus alleges venue is proper in the Western District of North Carolina because Defendant FMC conducts business in the state, has a registered agent there, and because Atticus resides in the district, making it the proper venue for a potential infringement action by FMC.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its forthcoming chlorantraniliprole-based pesticide products do not infringe four of Defendant’s patents related to specific pesticide formulations.
  • Technical Context: The dispute is in the agricultural chemical sector, centering on formulations for chlorantraniliprole, a widely used insecticide active ingredient.
  • Key Procedural History: The complaint details an extensive history of Defendant FMC’s global litigation to enforce its chlorantraniliprole patent portfolio against generic competitors. It also describes pre-suit communications in which Atticus sought assurances of non-infringement from FMC for its planned generic products, which FMC allegedly refused to provide, creating the basis for this declaratory judgment action.

Case Timeline

Date Event
2006-12-01 Priority Date for U.S. Patent Nos. 8,709,513 and 9,332,756
2007-06-27 Priority Date for U.S. Patent No. 9,826,737
2009-09-04 Priority Date for U.S. Patent No. 8,530,382
2013-09-10 U.S. Patent No. 8,530,382 Issues
2014-04-29 U.S. Patent No. 8,709,513 Issues
2016-05-10 U.S. Patent No. 9,332,756 Issues
2017-11-28 U.S. Patent No. 9,826,737 Issues
2023-03-20 Atticus submits various chlorantraniliprole EUP applications to EPA
2024-03-20 EPA approves Atticus’s application for chlorantraniliprole TGAI
2024-12-19 Complaint for Declaratory Judgment filed

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

U.S. Patent No. 8,530,382 - "Anthranilic Diamide Compositions for Propagule Coating," issued September 10, 2013

The Invention Explained

  • Problem Addressed: The patent’s background section notes that anthranilic diamide insecticides (such as chlorantraniliprole) have low water solubility, which impedes their absorption from a coated propagule (e.g., a seed) into the growing plant, limiting their systemic effectiveness (’382 Patent, col. 1:38-44).
  • The Patented Solution: The invention is a composition for coating propagules that combines the anthranilic diamide insecticide with a specific class of nonionic ethylene oxide-propylene oxide (EO/PO) block copolymers. This combination is described as promoting the absorption of the insecticide into the propagule and developing roots, thereby delivering insecticidally effective concentrations to the plant’s foliage (’382 Patent, col. 2:41-52; Abstract).
  • Technical Importance: The claimed solution aims to enhance the efficacy of seed-applied systemic insecticides, a critical method for protecting crops during early growth stages.

Key Claims at a Glance

  • The complaint asserts non-infringement of all claims, focusing on independent claim 1 (Compl. ¶¶ 229, 278).
  • Essential elements of independent claim 1 include:
    • An insecticidal composition comprising by weight:
    • (a) from about 9 to about 91% of an anthranilic diamide insecticide (e.g., chlorantraniliprole); and
    • (b) from about 9 to about 91% of a nonionic ethylene oxide-propylene oxide block copolymer component selected from poloxamers, reverse poloxamers, poloxamines, and reverse poloxamines, having specific water solubility, hydrophilic-lipophilic balance (HLB), and molecular weight characteristics.
    • Wherein the weight ratio of component (b) to component (a) is about 1:5 to about 10:1 (’382 Patent, col. 47:29-48).
  • The complaint notes that all other claims of the patent depend on claim 1 (Compl. ¶230).

U.S. Patent No. 8,709,513 - "Liquid Formulations of Carboxamide Arthropodicides," issued April 29, 2014

The Invention Explained

  • Problem Addressed: The patent addresses the need for stable and effective liquid formulations for carboxamide arthropodicides, as liquid concentrates are often preferred for ease of use in agriculture but can present challenges in keeping the active ingredient properly suspended (’513 Patent, col. 2:1-4).
  • The Patented Solution: The invention is a "suspension concentrate composition" comprising specific percentages of five key components: the solid active ingredient (a carboxamide arthropodicide), water, a water-immiscible liquid compound (specifically a methylated seed oil from certain plants), and a multi-part surfactant component with defined dispersing, emulsifying, and wetting properties (’513 Patent, Abstract; col. 43:20-44). The specific combination aims to create a physically stable and biologically effective formulation.
  • Technical Importance: This technology provides a method for creating stable, ready-to-use liquid insecticide products, which are commercially important for their convenience in mixing and application.

Key Claims at a Glance

  • The complaint asserts non-infringement of all claims, focusing on independent claim 1 (Compl. ¶¶ 234, 289).
  • Essential elements of independent claim 1 include:
    • An arthropodicidal suspension concentrate composition comprising by weight:
    • (a) from 5 to about 30% of a carboxamide arthropodicide (e.g., chlorantraniliprole);
    • (c) from about 20 to about 50% of water;
    • (d) from about 20 to about 60% of one or more water-immiscible liquid compounds comprising a methylated seed oil of sunflower, soybean, cotton, linseed, or rapeseed; and
    • (e) from about 3 to about 20% of a surfactant component with specified percentages of dispersing, emulsifying, and wetting surfactants (’513 Patent, col. 43:20-44).
  • The complaint notes that all other claims of the patent depend on claim 1 (Compl. ¶235).

U.S. Patent No. 9,332,756 - "Liquid Formulations of Carboxamide Arthropodicides," issued May 10, 2016 (Multi-Patent Capsule)

  • Technology Synopsis: This patent relates to liquid insecticide formulations, specifically a suspension concentrate. The invention claims a composition comprising an arthropodicide, a high concentration of a water-immiscible liquid carrier (methylated seed oil), a specific emulsifier mixture (dodecylbenzenesulfonate and ethoxylated sorbitol hexaoleate), a fumed silica thickener, water, and citric acid (’756 Patent, col. 35:36-39:41). This formulation is designed to provide a stable liquid product.
  • Asserted Claims: Independent claim 1 (Compl. ¶239).
  • Accused Features: Atticus's various chlorantraniliprole End-Use Products (EUPs), including the Osaria™, Asenra™, and Contigo™ products, are alleged not to infringe this patent (Compl. Counts III, VII, XI).

U.S. Patent No. 9,826,737 - "Solid Formulations of Carboxamide Arthropodicides," issued November 28, 2017 (Multi-Patent Capsule)

  • Technology Synopsis: This patent relates to solid insecticide formulations. The core of the invention is a "particulate component" where a mixture of the active insecticide and a surfactant is infiltrated into the pores of a solid carrier, such as silica (’737 Patent, Abstract; col. 39:27-40:2). This method aims to create a solid formulation that effectively releases the active ingredient.
  • Asserted Claims: Independent claim 1 (Compl. ¶244).
  • Accused Features: Atticus's various chlorantraniliprole EUPs, including the Osaria™, Asenra™, and Contigo™ products, are alleged not to infringe this patent (Compl. Counts IV, VIII, XII).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a portfolio of Atticus's chlorantraniliprole-containing pesticide products, including Osaria™, Asenra™, Contigo™, Asenra MC™, Pixovere™, Kylix™, Osaria OPT™, and Asenra G™ (Compl. Prayer for Relief ¶A). The specific non-infringement counts focus on these individual products.

Functionality and Market Context

  • The accused products are generic pesticide formulations intended to compete with Defendant FMC’s branded chlorantraniliprole products like Altacor® and Coragen® (Compl. ¶¶ 154, 172). For example, the Osaria™ product is a water-dispersible granule (WDG) containing 35% chlorantraniliprole (Compl. ¶153). Atticus has received EPA registration for its technical grade chlorantraniliprole and alleges that EPA approval for its EUPs is imminent (Compl. ¶¶ 145, 161). The complaint alleges that FMC's aggressive defense of its chlorantraniliprole franchise, illustrated by a "Diamides Lifecycle Strategy" graphic showing an "IP & Regulatory" pillar focused on litigating infringements (Compl. ¶68, p. 14), creates the immediate controversy necessitating this declaratory judgment action.

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment, the allegations are of non-infringement.

  • ’382 Patent Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
(b) from about 9 to about 91% of a nonionic ethylene oxide-propylene oxide block copolymer component selected from poloxamers, reverse poloxamers, poloxamines and reverse poloxamines... The complaint alleges that Atticus's Osaria™ product does not contain this specific block copolymer component. ¶279 col. 47:38-46
...having a water solubility of at least about 5% by weight at 20° C, a hydrophilic-lipophilic balance value of at least or about 5 and an average molecular weight ranging from about 3000 to about 20000 daltons... The complaint further alleges that no component in the Osaria™ product performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed component. ¶280 col. 47:38-46
  • ’513 Patent Infringement Allegations
Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
(d) from about 20 to about 60% of one or more water-immiscible liquid compounds comprising a methylated seed oil of sunflower, soybean, cotton, linseed, or rapeseed... The complaint alleges that Atticus's Osaria™ product does not contain a water-immiscible liquid compound comprising this specific type of methylated seed oil. ¶290 col. 43:32-36
...and (e) from about 3 to about 20% of a surfactant component comprising... The complaint further alleges that no component in the Osaria™ product could be deemed an equivalent to the claimed "methylated seed oil." ¶291 col. 43:37-44
  • Identified Points of Contention:
    • Scope Questions: The primary dispute raises questions about the scope of the claims. For the ’382 patent, a key question is whether the claim's recitation of "poloxamers, reverse poloxamers, poloxamines and reverse poloxamines" constitutes a closed group that excludes any other type of EO/PO block copolymer. For the ’513 patent, a question is whether the phrase "comprising a methylated seed oil..." allows for the presence of other, different water-immiscible liquids or if it requires the presence of that specific ingredient.
    • Technical Questions: The core of the case will likely turn on factual, technical evidence regarding the composition of Atticus's products. Beyond literal infringement, a central question will be one of equivalence: does an alternative ingredient used by Atticus perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed components (Compl. ¶¶ 280, 291)?

V. Key Claim Terms for Construction

  • The Term: "a nonionic ethylene oxide-propylene oxide block copolymer component selected from poloxamers, reverse poloxamers, poloxamines and reverse poloxamines" (’382 Patent, Claim 1)

    • Context and Importance: The literal non-infringement defense for the ’382 patent hinges on this term. Atticus alleges its products do not contain any of the four specifically listed copolymer types (Compl. ¶279). Practitioners may focus on this term because its construction as either an exhaustive or an exemplary list will be dispositive for literal infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the general class of nonionic EO/PO block copolymers and their properties at length, which a party might argue provides context for a broader scope than just the four named examples (’382 Patent, cols. 21-22).
      • Evidence for a Narrower Interpretation: The use of "selected from" often introduces a Markush group, which is typically construed as a closed list, limiting the claim to only the members explicitly recited. The patent specification provides distinct definitions for each of the four listed types, suggesting they are specific, limiting choices (’382 Patent, col. 22:52-col. 24:51).

  • The Term: "water-immiscible liquid compounds comprising a methylated seed oil of sunflower, soybean, cotton, linseed, or rapeseed" (’513 Patent, Claim 1)

    • Context and Importance: Atticus's non-infringement defense for the ’513 patent relies on the absence of this specific ingredient in its formulations (Compl. ¶290). The interpretation of "comprising a methylated seed oil" will determine whether formulations using different types of oils can fall within the claim's literal scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The transitional phrase "comprising" is a hallmark of open-ended claim language, suggesting that the presence of other, unrecited compounds is permitted. A party could argue that a mixture containing the claimed oil and other oils would still meet the limitation.
      • Evidence for a Narrower Interpretation: The claim does not merely say "comprising a water-immiscible liquid"; it specifically identifies the liquid as "comprising a methylated seed oil" from a discrete list of sources. A party could argue this requires the mandatory presence of that specific oil type, and its absence in an accused product is dispositive of non-infringement.

VI. Other Allegations

This section is not applicable as the complaint is for declaratory judgment of non-infringement and does not contain allegations of indirect or willful infringement.

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

The resolution of this declaratory judgment action will likely depend on the court's answers to the following central questions:

  • A primary issue will be one of compositional fact: Do Atticus’s pesticide formulations literally contain the specific "nonionic ethylene oxide-propylene oxide block copolymer component" and "methylated seed oil" components recited in FMC’s patent claims, or are the formulations chemically distinct?
  • A dispositive legal question will be one of technical equivalence: If Atticus's products are not literal infringers, do the alternative ingredients they employ perform substantially the same function, in substantially the same way, to achieve the same result as the patented components, thus creating liability under the doctrine of equivalents?
  • The outcome will hinge on claim scope: Will the court construe the claim terms narrowly, limiting them to the specific chemical structures and sources explicitly listed in the claims, or will it find that the patent specification supports a broader interpretation that covers the alternative formulations developed by Atticus?