DCT

1:24-cv-02186

Syngenta Ltd v. Vidal

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Name: Syngenta Limited, et al. v. Vidal
  • Case Identification: 1:24-cv-02186, E.D. Va., 12/04/2024
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Virginia pursuant to 35 U.S.C. § 154(b)(4)(A), which provides for exclusive remedy by civil action against the Director in this court.
  • Core Dispute: Plaintiff challenges the U.S. Patent and Trademark Office's calculation of the Patent Term Adjustment (PTA) for U.S. Patent No. 11,608,323, seeking to reverse a 70-day reduction for alleged "applicant delay."
  • Technical Context: The patent-in-suit concerns novel pyrrolone compounds designed for use as herbicides, a field critical to global agricultural productivity and weed management.
  • Key Procedural History: The dispute arises from the prosecution of the application that issued as the '323 patent. After the Notice of Allowance, the USPTO requested corrected application papers for chemical structures in the claims. In response, Plaintiff submitted the requested papers along with a corrected Application Data Sheet (ADS) to update applicant and assignee information. The USPTO subsequently determined that filing the corrected ADS constituted applicant delay, reducing the patent's term adjustment by 70 days. Plaintiff filed two petitions for administrative review, both of which were denied, leading to this civil action.

Case Timeline

Date Event
2013-10-07 '323 Patent Priority Date
2014-02-10 PCT application filed
2016-07-04 Application enters U.S. National Stage
2017-10-17 Corrected ADS filed in parent application
2018-12-17 Continuation application ('900 application) filed
2022-11-23 Notice of Allowance mailed for '900 application
2022-12-02 USPTO mails Notice to File Corrected Application Papers
2023-01-18 Syngenta files response with legible claims and a corrected ADS
2023-01-31 USPTO mails corrected Filing Receipt
2023-02-09 Syngenta pays issue fee
2023-03-01 USPTO mails Issue Notification with initial PTA of 341 days
2023-03-21 U.S. Patent No. 11,608,323 Issues
2023-06-02 Syngenta files first Petition for PTA review, requesting 472 days
2023-10-05 USPTO issues decision granting PTA of 401 days
2024-03-05 Syngenta files second Petition for PTA review, requesting 471 days
2024-06-07 USPTO mails final determination of PTA as 401 days
2024-12-04 Complaint filed
2024-12-31 Certificate of Correction, stating 401-day PTA adjustment, is sealed

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

U.S. Patent No. 11,608,323 - "HERBICIDAL COMPOUNDS"

  • Issued: March 21, 2023

The Invention Explained

  • Problem Addressed: The patent's background section notes a general need in the agricultural sector for new herbicidal compounds and compositions to control unwanted plant growth (U.S. Patent No. 11,608,323, col. 1:10-13).
  • The Patented Solution: The invention provides a specific class of chemical compounds, namely substituted pyrrolone compounds represented by a general formula (Formula I), which are asserted to possess herbicidal activity (ʼ323 Patent, Abstract; col. 1:47-66). The patent describes the synthesis of these compounds and their use in herbicidal compositions for controlling weeds in crops of useful plants (ʼ323 Patent, col. 1:10-13, col. 4:37-48).
  • Technical Importance: The development of novel herbicidal compounds is significant for managing weed resistance to existing treatments and improving crop yields (ʼ323 Patent, col. 1:10-13).

Key Claims at a Glance

While this is a Patent Term Adjustment dispute and not an infringement action, the scope of the patent is defined by its claims.

  • The asserted patent contains one independent claim (Claim 1).
  • The essential elements of independent claim 1 are:
    • A compound of formula (I)
    • wherein X is oxygen
    • R¹ is methoxy
    • R³ is hydroxyl
    • R² is methyl
    • Rª is hydrogen
    • R' is hydrogen
    • Rᶜ is trifluoromethyl
    • Rᵈ is hydrogen
  • The patent also includes dependent claims directed to specific compounds, herbicidal compositions containing the compounds, and methods of controlling weeds (ʼ323 Patent, claims 2-9).

III. The Accused Instrumentality

This is an action against the Director of the USPTO for review of a Patent Term Adjustment determination and does not involve an accused instrumentality.

IV. Analysis of Infringement Allegations

No infringement is alleged in the complaint.

V. Key Claim Terms for Construction

Claim construction is not at issue in this Patent Term Adjustment dispute.

VI. Summary of Key Legal Arguments

No probative visual evidence provided in complaint.

Plaintiff’s complaint is an appeal of an agency decision under the Administrative Procedure Act (APA), challenging the USPTO Director’s calculation of the Patent Term Adjustment (PTA) for the '323 patent. The core arguments are:

  • Improper "Applicant Delay" Assessment: Plaintiff argues that its filing of a corrected Application Data Sheet (ADS) to conform applicant and assignee data with parent applications does not constitute a "failure to engage in reasonable efforts to conclude prosecution" under 35 U.S.C. § 154(b)(2)(C)(i) (Compl. ¶¶ 35, 55). The filing is characterized as a necessary ministerial correction, not a tactic to delay patent issuance (Compl. ¶¶ 56, 70).
  • Arbitrary Application of Regulations: The complaint alleges the Director’s application of 37 C.F.R. § 1.704(c)(10) is "arbitrary and capricious" because the regulation, which defines certain post-allowance filings as applicant delay, does not explicitly list a corrected ADS among them (Compl. ¶¶ 38, 64). Plaintiff further argues that the delay was actually caused by the USPTO's own action of issuing a corrected filing receipt, which was not requested by the Plaintiff (Compl. ¶¶ 15, 60).
  • Challenge to Agency Deference: Plaintiff asserts that under recent Supreme Court jurisprudence, the Director is "entitled to no deference" for an agency interpretation of law where a statute is ambiguous (Compl. ¶¶ 39, 66, 72, 82). This argument positions the case to be decided based on the court's independent interpretation of the PTA statute and its implementing regulations.
  • Improper Rulemaking Allegations: The complaint contends that the USPTO has expanded the scope of what constitutes applicant delay through policy changes in the Manual of Patent Examining Procedure (MPEP) and Official Gazette notices, rather than through the formal notice-and-comment rulemaking process required by the APA (Compl. ¶¶ 42-44, 47-49).

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

This case does not turn on claim construction or infringement but on principles of administrative law and statutory interpretation. The central questions for the court appear to be:

  • A core issue will be one of regulatory scope: Does the filing of a corrected Application Data Sheet to conform applicant and assignee information, when submitted alongside other papers expressly requested by the USPTO, fall within the meaning of "other paper... after a notice of allowance has been given" that demonstrates a "failure to engage in reasonable efforts" under 37 C.F.R. § 1.704(c)(10) and 35 U.S.C. § 154(b)(2)(C)(i)?
  • A central legal question will be one of administrative deference: To what extent, if any, should the court defer to the USPTO's interpretation of "applicant delay" as implemented through its internal guidance (MPEP) and past decisions, particularly in light of recent jurisprudence that curtails judicial deference to agency interpretations of law?