DCT

2:19-cv-00359

Growgenix Solutions LLC v. Roberts Intl Agricultural Development

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-00359, D. Utah, 05/22/2019
  • Venue Allegations: Venue is alleged to be proper as all parties, both individual and corporate, are residents of or located in the state of Utah.
  • Core Dispute: Plaintiffs seek a declaratory judgment that Defendant Don Roberts is not a co-inventor of a patent related to systems and methods for creating automated, multi-wavelength lighting cycles for controlled environment agriculture.
  • Technical Context: The technology involves using software-controlled, low-heat LED lighting systems to create customized light "recipes" that optimize the growth of specific plants through different developmental stages.
  • Key Procedural History: The dispute arises from a prior business and testing relationship between Plaintiffs and Defendants. Plaintiffs allege that after this relationship soured, Defendant Roberts began claiming to be an inventor of the core technology and threatened legal action, prompting this declaratory judgment filing.

Case Timeline

Date Event
2015-01-09 '434 Patent Priority Date
2015-07-15 Groviv registered in Utah
2015-08-26 Grow Solutions registered in Utah
2016-02-01 Nu Skin acquires 70% interest in Groviv
2016-12-01 Groviv and Roberts begin discussions for a testing relationship
2017-06-01 Nu Skin acquires remaining 30% interest in Groviv
2017-12-11 Product research study begins at Roberts's farm
2018-01-05 Plaintiffs present a formal compensation plan to Roberts
2018-07-31 '434 Patent Issue Date
2019-05-22 Complaint Filing Date

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

  • Patent Identification: U.S. Patent No. 10,034,434, "Systems and Methods for Creating a Grow Cycle," issued July 31, 2018 (the "’434 Patent").

The Invention Explained

  • Problem Addressed: The patent’s background section notes that many existing grow lights are not suited for growing specific types of plants indoors, as certain plants require particular lighting conditions to thrive that may vary by region or developmental stage (ʼ434 Patent, col. 1:23-32).
  • The Patented Solution: The invention is a system for creating and implementing customized "grow cycles" for plants. It uses a computing device with a user interface to design these cycles, which control a plurality of low-heat lighting elements (e.g., LEDs) to deliver different wavelengths of light for predetermined periods of time, corresponding to different stages of plant growth (ʼ434 Patent, Abstract; col. 3:20-36). This allows for precise control over the light spectrum and duration a plant receives throughout its life.
  • Technical Importance: This approach allows for the creation of optimized, plant-specific "light recipes," which can increase yield and efficiency in controlled agricultural environments by tailoring the lighting conditions to the plant's specific biological needs at each growth phase (ʼ434 Patent, col. 7:64-8:2).

Key Claims at a Glance

  • The complaint does not single out specific claims, instead referencing the "grow light technology, which is the subject of the claims in Grow Solutions' Patent No. US10034434B2" (Compl. ¶56). Independent Claim 1 is representative of the core system.
  • The essential elements of Independent Claim 1 include:
    • A grow lighting assembly comprising a plurality of low heat lighting elements, where at least a first and second element output different wavelengths of light.
    • A computing device storing logic that causes the system to:
      • provide a user interface for creating a "grow cycle."
      • receive a plant type.
      • receive first data for a first portion of the grow cycle using a first wavelength.
      • receive second data for a second portion of the grow cycle using a second wavelength.
      • implement the grow cycle.

III. The Accused Instrumentality

Product Identification

As this is a declaratory judgment action for non-inventorship, there is no "accused instrumentality" in the traditional sense of an infringing product. The instrumentality at the center of the dispute is the patented technology itself, which the complaint refers to as the "GroPod" technology (Compl. ¶19).

Functionality and Market Context

The GroPod technology is described as an automated system for "controlled environment agriculture" designed to grow crops using fewer resources than traditional farming (Compl. ¶18). It combines "low-heat lighting applied to horticulture together with software and data" to provide plants with optimized conditions (Compl. ¶18). The complaint states the technology is currently focused on producing wheatgrass for cattle feed (Compl. ¶19). Defendant Roberts allegedly claims to have contributed design concepts such as fitting the technology within a shipping container, making it "plug and play," and incorporating a "moving race track" (Compl. ¶57).

IV. Analysis of Infringement Allegations

This action does not allege patent infringement. Rather, Plaintiffs seek a declaratory judgment that Defendant Don Roberts is not a co-inventor of the ’434 Patent. The core of the dispute is over who conceived of the patented technology. No probative visual evidence provided in complaint.

The complaint presents a narrative of the inventorship dispute. Plaintiffs allege that the technology was "developed independently and exclusively by the inventors named on Grow Solutions' Patent" (Compl. ¶20), and specifically that named inventor Gary Bret Millar "independently invented the grow light technology" (Compl. ¶67a). Plaintiffs assert that Defendant Roberts made "no contribution to that technology" and is therefore not entitled to be named as an inventor (Compl. ¶67b).

According to the complaint, Roberts claims he contributed to both the "grow light technology" and other design aspects of the GroPod system (Compl. ¶¶ 56-57). These alleged contributions include "suggesting" that the technology be developed to fit within a shipping container, be "plug and play," and use a "moving race track" (Compl. ¶57). Plaintiffs counter that these ideas were either developed independently by the named inventors or were never features of the technology at all (Compl. ¶57).

  • Identified Points of Contention:
    • Factual Question: What, if any, specific contributions did Defendant Roberts make to the conception of the invention as recited in the claims of the '434 Patent? The case will require a factual determination of whether Roberts's alleged ideas were communicated to the named inventors and formed part of their conception of the claimed system.
    • Legal Question: Assuming Roberts did make the suggested contributions, do they meet the legal standard for co-inventorship? This raises the question of whether suggesting a general goal (e.g., make it "plug and play") or a physical configuration (e.g., "fit within a shipping container") constitutes a contribution to the conception of the specific claimed invention, which is centered on a software-controlled system for implementing multi-stage "grow cycles."

V. Key Claim Terms for Construction

While this is not an infringement case, the construction of certain claim terms may be critical to determining the scope of the "invention" for the purpose of assessing inventorship.

  • The Term: "grow cycle"

    • Context and Importance: The dispute centers on whether Roberts's alleged contributions (e.g., form factor, "plug and play") are part of the patented invention. The definition of "grow cycle" is central to what the patent actually protects. Practitioners may focus on this term to determine if the invention is the specific, software-defined lighting process, as opposed to the general physical apparatus housing it. A narrow definition focused on the software and lighting parameters could support the argument that Roberts’s alleged hardware suggestions are outside the scope of the conceived invention.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes a cycle in general terms as including "a plurality of different lighting wavelengths... emitted at different times" (ʼ434 Patent, col. 3:12-15).
      • Evidence for a Narrower Interpretation: Claim 1 requires receiving "first data" and "second data" to create different "portions" of the cycle, and implementing it via a "computing device" (ʼ434 Patent, col. 10:20-43). The patent's figures depict a detailed user interface for programming specific tasks with distinct parameters like light spectrum percentages, hours, and days, suggesting a "grow cycle" is a specific, data-driven, and programmable sequence of lighting events, not just a general schedule (ʼ434 Patent, FIG. 6).

  • The Term: "a computing device that stores logic"

    • Context and Importance: This term anchors the invention in a software-controlled system. The inventorship analysis may depend on whether Roberts is alleged to have contributed to this specific computing element or only to high-level physical or operational concepts. The interpretation of this term will help delineate the boundary between the hardware system and the claimed intelligent control system.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: This could be read to cover any standard computer or processor capable of executing the necessary instructions.
      • Evidence for a Narrower Interpretation: The specification and Figure 1 describe a specific architecture including a "hub device" (108) with "cycle logic" (144a) and "lighting logic" (144b), which communicates with a "remote computing device" (104) and a "user computing device" (106) (ʼ434 Patent, col. 4:40-51). This could support a narrower construction requiring a more distributed or specifically architected logical system.

VI. Other Allegations

The complaint includes additional claims for declaratory judgment related to the broader business dispute between the parties.

  • Partnership Dispute: Plaintiffs seek a declaration that no general partnership exists between Plaintiffs and Defendants under the Utah Uniform Partnership Act. They allege Roberts is at most entitled to compensation as a vendor, consultant, or employee, and is not a partner with an ownership interest (Compl. ¶¶ 61-62).
  • Trade Secret Dispute: Plaintiffs seek a declaration that they have not misappropriated any of Defendants' alleged trade secrets, including information related to manure operations or any other design aspects of the GroPod technology (Compl. ¶¶ 73-76).

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

  • A central issue will be one of conception versus reduction to practice: Did Defendant Roberts's alleged contributions—such as suggesting a "shipping container" form factor or a "plug and play" goal—amount to a contribution to the mental conception of the specific, software-controlled "grow cycle" system defined in the patent's claims, or were they merely suggestions related to the invention's ultimate physical embodiment or commercial application?
  • A key evidentiary question will be one of corroboration: The outcome will likely depend on which party can produce corroborating evidence (e.g., contemporaneous documents, emails, designs, or third-party testimony) to support their version of who conceived of the key features of the claimed invention, as required to establish or disprove inventorship.
  • The patent dispute is presented as one facet of a larger business divorce. A final question is the interplay of claims: How will the court's findings on the state-law claims of partnership and trade secret misappropriation inform the context, credibility, and potential resolution of the federal question of patent inventorship?