DCT

2:23-cv-00531

Selecta Klemm GmbH Co KG v. Westhoff Vertriebsgesellschaft mbH

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00531, E.D. Tex., 11/20/2023
  • Venue Allegations: Venue is alleged to be proper because the defendants are foreign corporations not resident in the United States and have allegedly committed infringing acts within the district, including soliciting customers and placing infringing products into the stream of commerce in Texas.
  • Core Dispute: Plaintiff alleges that Defendants’ "Discoball™" series of petunias are produced using patented breeding methods, and that the importation and sale of these petunias in the U.S. infringes two of its process patents.
  • Technical Context: The dispute is in the field of ornamental horticulture, specifically concerning proprietary methods for breeding Petunia plants to exhibit a novel and commercially valuable spotted flower color pattern.
  • Key Procedural History: The complaint details an extensive history of pre-suit communications beginning in 2017. Plaintiff alleges it repeatedly notified Defendant Westhoff of its pending and issued patents covering the spotted petunia technology. The complaint further alleges that Westhoff admitted in 2018 and 2019 to using Plaintiff's "NightSky®" variety—a commercial embodiment of a claimed parental line—in its own breeding programs, before later claiming its new "Discoball™" series was developed from a "totally different background" and refusing to provide breeding records.

Case Timeline

Date Event
2016-03-31 Priority Date for ’288 and ’114 Patents (Provisional App. 62/316,271)
2017-02-15 Selecta allegedly sends letter to Westhoff regarding related Plant Patent and pending utility patent application
2018-02-22 Westhoff allegedly admits to using Selecta's "NIGHTSKY" petunia in its breeding program
2019-12-19 Westhoff allegedly re-confirms use of Selecta's "NightSky®" variety in its breeding program
2020-03-17 U.S. Patent No. 10,588,288 Issues
2020-03-18 Selecta allegedly sends notice letter to Westhoff with a copy of the newly issued ’288 Patent
2022-03-08 U.S. Patent No. 11,266,114 Issues
2023-03-13 Selecta allegedly sends notice letter to Westhoff with a copy of the newly issued ’114 Patent
2023-11-20 Complaint Filed

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

U.S. Patent No. 10,588,288 - "Petunia Plants Having a Spotted Flower Color Pattern," Issued Mar. 17, 2020

The Invention Explained

  • Problem Addressed: The patent addresses the ongoing goal in ornamental plant breeding to develop plants with novel characteristics, such as new flower color patterns, to create superior and commercially valuable Petunia varieties (Compl. ¶24; ’288 Patent, col. 2:15-20). The specific spotted flower color pattern was a newly discovered trait not previously observed in the known Petunia gene pool (Compl. ¶26; ’288 Patent, col. 2:28-31).
  • The Patented Solution: The patent discloses methods for producing Petunia plants that reliably exhibit the spotted flower pattern. The core of the invention is a set of breeding processes that start with a specific, proprietary Petunia line, ‘KLEPH15313’ (commercially known as NightSky®), which carries the genetic information for the trait (’288 Patent, col. 8:60-64; Compl. ¶34). The specification explains that the visible spots are the result of a molecular mechanism known as post-transcriptional gene silencing (PTGS) of the Chalcone Synthase A gene, which is responsible for pigment production (’288 Patent, col. 13:5-17).
  • Technical Importance: The invention provided a method to create and propagate a stable, heritable, and visually distinct spotted pattern, creating a new and popular category of ornamental petunias marketed as "Sky Petunias" (Compl. ¶30).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 4, and 5, and reserves the right to assert dependent claims 2-3 and 6-13 (Compl. ¶¶ 36-41, 85-86).
  • Independent Claim 1 (Method of Production):
    • A method for producing a Petunia plant having a spotted flower color pattern, comprising:
    • a) crossing two Petunia plants,
    • b) harvesting the resultant Petunia seed,
    • c) growing the seed from step b to produce progeny, and
    • d) selecting resulting progeny for the spotted flower color pattern;
    • wherein at least one of the two Petunia plants is ‘KLEPH15313,’ representative tissue of which has been deposited.

U.S. Patent No. 11,266,114 - "Petunia Plants Having a Spotted Flower Color Pattern," Issued Mar. 8, 2022

The Invention Explained

  • Problem Addressed: As a continuation of the ’288 patent, the ’114 patent addresses the same technical problem of creating novel petunia varieties (Compl. ¶¶ 24-26; ’114 Patent, col. 2:15-20).
  • The Patented Solution: This patent expands upon the methods disclosed in the ’288 patent. The claims cover breeding processes that produce seeds for, or plants with, the spotted flower pattern by using an expanded list of specified parental lines, including the original ‘KLEPH15313’ and additional proprietary lines such as ‘PH-2014-0040,’ ‘PH-2014-0443,’ and ‘PH-2015-1874’ (’114 Patent, col. 23:59-col. 24:7; Compl. ¶42). This effectively broadens the scope of protected breeding methods to cover work derived from a larger family of proprietary plants that exhibit the desired trait.
  • Technical Importance: The patent protects the development of a wider range of "Sky Petunia" varieties derived from an expanded base of proprietary genetic material, securing a broader commercial franchise for the spotted pattern trait (Compl. ¶66).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 2, and 11 and reserves the right to assert dependent claims 3-10 and 12-19 (Compl. ¶¶ 44-46, 87-91).
  • Independent Claim 1 (Method of Seed Production):
    • A method for producing a seed that develops into a Petunia plant having a spotted flower color pattern, comprising:
    • crossing a first Petunia plant with a stock Petunia plant and harvesting resulting seed;
    • wherein the first and/or stock Petunia plant has the spotted flower color pattern and is a product of one or more crosses;
    • said cross being between a parental line plant with another Petunia plant or with itself;
    • wherein the parental line plant is selected from the group consisting of deposited lines ‘KLEPH15313,’ ‘PH-2014-0040,’ ‘PH-2014-0443,’ and ‘PH-2015-1874.’

III. The Accused Instrumentality

Product Identification

The accused products are various petunia varieties marketed and sold in the United States by Defendants under the brand "Discoball™" (Compl. ¶11).

Functionality and Market Context

The Accused Products are petunia plants characterized by flowers "flecked with white speckling," a trait that gives them a spotted appearance (Compl. ¶92). The complaint alleges these products were promoted and offered for sale at industry events such as the California Spring Trials in 2023 (Compl. ¶92). A side-by-side photographic comparison provided in the complaint shows that the spotted flower pattern of the "Westhoff Discoball™" variety is visually very similar to the Plaintiff's "Selecta NightSky®" variety (Compl. ¶93). The complaint alleges that the unique spotted flower pattern is not found in the gene pool of commercial or wild Petunia outside of the Plaintiff's varieties and their progeny, and therefore the Accused Products could only have been obtained by using the patented methods (Compl. ¶¶ 26, 82).

IV. Analysis of Infringement Allegations

The complaint alleges infringement under 35 U.S.C. § 271(g), which prohibits the importation, sale, offer for sale, or use within the U.S. of a product which is made by a process patented in the U.S.

'288 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for producing a Petunia plant...comprising: a) crossing two Petunia plants, b) harvesting the resultant Petunia seed, c) growing the seed from step b to produce progeny, and d) selecting resulting progeny for the spotted flower color pattern On information and belief, Westhoff performed these standard plant breeding steps to develop its "Discoball™" series of petunias. ¶¶ 81-82 col. 23:3-10
wherein at least one of the two Petunia plants is ‘KLEPH15313,’ representative tissue of ‘KLEPH15313’ having been deposited... Westhoff allegedly admitted to using Plaintiff's "NightSky®" petunia variety, the commercial embodiment of ‘KLEPH15313,’ as part of its breeding program. ¶¶ 51, 53, 57, 84 col. 23:11-14

'114 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for producing a seed...comprising: crossing a first Petunia plant with a stock Petunia plant and harvesting resulting seed... On information and belief, Westhoff performed these breeding steps to create the seeds that grow into the "Discoball™" petunias. ¶¶ 81-82, 88 col. 23:50-58
wherein the first Petunia plant and/or the stock Petunia plant has the spotted flower color pattern, and is a product of one or more crosses comprising a cross between: a parental line plant with another Petunia plant, or with itself; The accused "Discoball™" plants exhibit the spotted pattern. The complaint alleges this pattern is unique to Plaintiff's genetic lines and that Defendants' plants must therefore be a "product" of crosses involving those lines. ¶¶ 26, 82, 93 col. 23:59-63
wherein the parental line plant is selected from the group consisting of: ‘KLEPH15313,’...‘PH-2014-0040,’...‘PH-2014-0443,’ and ‘PH-2015-1874,’... The complaint alleges that Westhoff admitted using ‘KLEPH15313’ (NightSky®) and, on information and belief, must have used one of the claimed parental lines to create the Accused Products. ¶¶ 51, 53, 87 col. 24:1-7
  • Identified Points of Contention:
    • Evidentiary Question: The central issue for these process patent claims will be proof. The complaint alleges infringement "on information and belief," supported by Westhoff's alleged prior admissions and the alleged uniqueness of the trait. A key question is what evidence Plaintiff can obtain through discovery (e.g., breeding records, pedigree charts, genetic testing) to prove that Defendants actually used the claimed parental lines and performed the claimed process steps to create the Accused Products.
    • Technical Question: A factual dispute will likely arise over Westhoff's claim to have used "new parentage" with a "totally different background" (Compl. ¶¶ 65, 70). The court may need to determine, based on expert testimony and genetic evidence, whether this "new parentage" is truly independent of Plaintiff's proprietary lines or if it is a progeny that still falls within the scope of a "product of one or more crosses" as required by the claims. The side-by-side photo comparison from the complaint will be used by the Plaintiff to suggest a common origin (Compl. ¶93).

V. Key Claim Terms for Construction

  • The Term: "product of" (as in "product of a single cross" in the ’288 patent or "product of one or more crosses" in the ’114 patent)

  • Context and Importance: This term is critical for defining the reach of the claims through successive generations of plants. Defendants will likely argue their "Discoball™" plants, even if distantly related, are not a direct "product of" the specific crosses recited. Practitioners may focus on this term because the case hinges on whether plants several breeding generations removed from the initial patented cross are still covered.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent specification explicitly states that "progeny" is not limited and includes subsequent F2 through F10 generations, suggesting an intent to cover descendants over many breeding cycles (’288 Patent, col. 5:1-4).
    • Evidence for a Narrower Interpretation: A defendant might argue that the term "product of a single cross" (in '288 claim 4) implies a more immediate relationship (e.g., an F1 generation plant) and that subsequent crosses with unrelated plants break the chain of infringement.

  • The Term: "parental line plant is ‘KLEPH15313’" (and other deposited lines)

  • Context and Importance: The claims are tied to specific, deposited biological materials. Infringement requires proof that the accused breeding process started with one of these exact proprietary lines. The entire infringement theory rests on linking Defendants' activities back to these specific plants.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: Plaintiff will argue that using the commercially available "NightSky®" variety is equivalent to using the deposited ‘KLEPH15313’ line, as the patent and complaint explicitly link the two (Compl. ¶27; ’288 Patent, col. 3:35-36). The complaint's allegations of Westhoff's admission to using "NightSky®" directly support this interpretation (Compl. ¶51).
    • Evidence for a Narrower Interpretation: A defendant could argue that any genetic drift or variation between the specific deposited sample and the commercially sold "NightSky®" plants they allegedly used creates a non-infringing distinction, although this is generally a difficult argument to sustain for asexually propagated plants.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant Westhoff actively induces infringement by its co-defendant partners (Vivero, PSI Mexico, and Cohen). The alleged inducement is based on Westhoff contracting with these nurseries to produce the Accused Products outside the U.S. and instructing them to import, sell, and offer them for sale within the U.S. (Compl. ¶¶ 94, 108, 121).
  • Willful Infringement: The complaint makes a detailed case for willfulness. It alleges that Westhoff had pre-suit knowledge of the patents and the allegedly infringing nature of its activities dating back to at least 2017. This is supported by allegations of numerous letters, including copies of the issued patents and their claims, and alleged admissions by Westhoff that it used Plaintiff’s proprietary plant material in its breeding programs (Compl. ¶¶ 47-64, 109, 122).

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

  • A core issue will be one of evidentiary proof: Can Plaintiff compel the production of breeding records and genetic data from Defendants to prove, by a preponderance of the evidence, that the "Discoball™" petunias were made using the specific patented processes, which require starting with Plaintiff's proprietary and deposited parental lines?
  • A key technical question will be one of genetic provenance: The case will likely turn on a factual battle of experts over whether the spotted trait in the accused "Discoball™" series is genetically unique to Plaintiff's patented lines, as alleged, or if Defendants can prove they independently developed the trait from an entirely different genetic source, thereby refuting the charge of infringement under 35 U.S.C. § 271(g).
  • A central legal question will concern claim scope and attenuation: How far does the term "product of...crosses" extend? The court will need to determine if a plant developed through multiple subsequent breeding cycles, potentially involving other genetic material, is still considered a "product" of the initial patented cross, or if the genetic link becomes too attenuated to support a finding of infringement.