DCT
1:25-cv-01520
Syngenta Crop Protection AG v. UPL Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Syngenta Crop Protection AG (Switzerland)
- Defendant: UPL Limited (India); UPL Corporation Limited (Mauritius); UPL NA Inc. (Delaware)
- Plaintiff’s Counsel: Baker & Hostetler LLP
- Case Identification: 1:25-cv-01520, E.D. Va., 09/11/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant UPL Ltd. is not a U.S. resident, permitting suit in any judicial district for the patent claims, and because Defendants transact business in the district, making venue proper for the antitrust claims.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendants' patents on fungicidal combinations are invalid and unenforceable due to alleged inequitable conduct, and further alleges Defendants have engaged in anticompetitive conduct in violation of federal antitrust laws.
- Technical Context: The dispute centers on chemical compositions used in agriculture that combine multiple fungicides to protect crops, such as soybeans, from fungal diseases like Asian Soybean Rust.
- Key Procedural History: The complaint alleges that Defendants obtained the patents-in-suit by submitting fabricated field trial data to the U.S. Patent and Trademark Office (USPTO). Plaintiff previously challenged U.S. Patent No. 11,445,727 in a Post-Grant Review (PGR) proceeding, where the Patent Trial and Appeal Board (PTAB) found numerous claims unpatentable. Plaintiff also alleges Defendants are leveraging the patents, obtained through alleged fraud, to monopolize markets for certain fungicides and coerce competitors into restrictive supply agreements.
Case Timeline
| Date | Event |
|---|---|
| 2015-09-XX | Syngenta's Solatenol® (benzovindiflupyr) receives EPA registration |
| 2016-11-04 | Priority date for ’727 and ’625 Patents |
| 2017-08-17 | Syngenta and UPL enter mancozeb procurement agreement |
| 2022-09-20 | U.S. Patent No. 11,445,727 ('727 Patent) issues |
| 2023-01-31 | Syngenta files Petition for Post-Grant Review of the ’727 Patent |
| 2024-07-26 | PTAB issues Final Written Decision in PGR, finding claims unpatentable |
| 2025-09-02 | U.S. Patent No. 12,402,625 ('625 Patent) issues |
| 2025-09-11 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,445,727 - Fungicidal Combinations, issued September 20, 2022
The Invention Explained
- Problem Addressed: The patent background describes a need for improved fungicidal combinations that provide a broader spectrum of disease control, enhance efficacy, and help manage the development of fungicide resistance in crop pathogens, which is a significant challenge with single-action fungicides (’727 Patent, col. 2:5-9, 2:62-63).
- The Patented Solution: The invention is a three-component fungicidal combination. It combines a dithiocarbamate fungicide (a multi-site inhibitor), a succinate dehydrogenase (SDHI) inhibitor fungicide (which inhibits fungal respiration), and a third fungicide from one of two other classes: an ergosterol biosynthesis inhibitor or a Quinone outside inhibitor (’727 Patent, Abstract; col. 3:41-49). The patent asserts that this specific type of three-way combination results in "surprising and unexpected advantages," including enhanced efficacy and a reduction in fungal disease incidence (’727 Patent, col. 3:10-24).
- Technical Importance: Combining fungicides with different modes of action is a primary strategy in modern agriculture to provide durable crop protection and mitigate the risk of pathogens developing resistance to any single active ingredient (Compl. ¶14).
Key Claims at a Glance
- The complaint focuses on independent claim 1.
- Claim 1 recites the essential elements of the combination:
- A fungicidal combination consisting of:
- benzovindiflupyr (an SDHI fungicide);
- mancozeb (a dithiocarbamate fungicide); and
- at least another fungicide selected from an ergosterol biosynthesis inhibitor fungicide, and a quinone outside inhibitor fungicide.
U.S. Patent No. 12,402,625 - Fungicidal Combinations, issued September 2, 2025
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’727 Patent, the ’625 Patent addresses the same technical problem of providing improved fungicidal combinations (’625 Patent, col. 1:11-15).
- The Patented Solution: This patent claims a more specific three-component fungicidal combination. The complaint alleges that after Plaintiff identified its specific three-way fungicidal product during licensing negotiations, Defendant amended the claims in this continuation application to narrowly cover that exact combination (Compl. ¶35).
- Technical Importance: The technical context is identical to that of the ’727 Patent.
Key Claims at a Glance
- The complaint focuses on claim 1 of the issued patent (Compl. ¶78).
- Claim 1 recites the essential elements of the combination:
- A fungicidal combination consisting of:
- mancozeb;
- prothioconazole (an ergosterol biosynthesis inhibitor); and
- benzovindiflupyr (an SDHI fungicide).
III. The Accused Instrumentality
Product Identification
As this is a declaratory judgment action, the relevant products are Plaintiff's own fungicidal products, which it desires to market and sell in the United States and which Defendant has allegedly asserted are covered by the patents-in-suit (Compl. ¶¶33, 38). These products are combinations involving mancozeb and Plaintiff's proprietary fungicide, benzovindiflupyr (marketed as Solatenol®).
Functionality and Market Context
- The complaint identifies two key product scenarios. The first involves Plaintiff's Elatus® product, which contains benzovindiflupyr and azoxystrobin (a quinone outside inhibitor). Plaintiff's desired use includes combining Elatus® with mancozeb, which would allegedly be covered by the ’727 Patent (Compl. ¶37).
- The second involves Plaintiff's Mitrion™ product, which contains benzovindiflupyr and prothioconazole. Plaintiff's label for Mitrion™ in Brazil recommends combining it with mancozeb, creating the specific combination claimed in the ’625 Patent (Compl. ¶36).
- Plaintiff alleges that it has been unable to market these combinations in the U.S. due to Defendant's assertions that such sales would constitute infringement and its demands for unreasonable license terms (Compl. ¶¶33, 38).
IV. Analysis of Infringement Allegations
The infringement theories summarized below are based on Plaintiff's characterization of Defendant's assertions made during prior negotiations and related proceedings (Compl. ¶¶32-33, 39).
’727 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fungicidal combination consisting of: | A combination of Plaintiff's Elatus® product with mancozeb, as allegedly contemplated for sale in the U.S. | ¶37 | col. 21:40-44 |
| benzovindiflupyr, | Plaintiff’s Elatus® product contains benzovindiflupyr as an active ingredient. | ¶37 | col. 3:63-65 |
| mancozeb, | The intended use involves the application of Elatus® in combination with mancozeb. | ¶38 | col. 3:55-56 |
| and at least another fungicide selected from... a quinone outside inhibitor fungicide | Plaintiff’s Elatus® product contains azoxystrobin, which is a quinone outside inhibitor fungicide. | ¶37 | col. 4:38-46 |
’625 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A fungicidal combination consisting of: | A combination of Plaintiff's Mitrion™ product with mancozeb, as recommended on the product's label in Brazil and contemplated for the U.S. market. | ¶36 | col. 21:35-39 |
| mancozeb, | The intended use involves the application of Mitrion™ in combination with mancozeb. | ¶36 | col. 3:55-56 |
| prothioconazole, | Plaintiff’s Mitrion™ product contains prothioconazole as an active ingredient. | ¶36 | col. 4:22-37 |
| and benzovindiflupyr | Plaintiff’s Mitrion™ product contains benzovindiflupyr as an active ingredient. | ¶36 | col. 3:63-65 |
Identified Points of Contention
- The central dispute articulated in the complaint is not over claim scope or technical infringement, but rather the validity and enforceability of the patents themselves. Plaintiff alleges the patents were procured through inequitable conduct, rendering them unenforceable (Compl. ¶¶8, 51). The complaint includes a figure showing a data table from the '727 patent's specification which Plaintiff alleges contains fabricated field trial results used to overcome an examiner's rejection (Compl. p. 14; ¶¶52, 57).
- Technical Question: A fundamental question for the court will be whether the experimental data presented in the patent specifications (e.g., ’727 Patent, Table 1, col. 20:50-63) reflects results from actual field trials. The complaint alleges that regulatory approvals required for such trials in India were never obtained, suggesting the trials never occurred (Compl. ¶¶58-63).
V. Key Claim Terms for Construction
The claims primarily recite specific, well-known chemical compounds, which may limit the scope for claim construction disputes. However, the structure of the combination could be a point of focus.
- The Term: "fungicidal combination consisting of"
- Context and Importance: This term appears at the preamble of the independent claims of both patents. The construction of "combination" and the transitional phrase "consisting of" defines the physical and legal scope of the claimed invention. Practitioners may focus on this term because it determines whether infringement occurs only when the components are pre-formulated into a single product sold by one entity, or also when an end-user mixes separately-sold products in a tank for application, as Plaintiff's product labels allegedly recommend.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (covering tank-mixing): The patent specifications are not limited to pre-mixed compositions. The ’727 Patent includes method-of-use claims (e.g., Claim 10) for "controlling fungal diseases in plants consisting of, applying to the locus of the plant a combination..." which may support an interpretation that the "combination" is formed at the time of application.
- Evidence for a Narrower Interpretation (requiring a pre-formulated product): The phrase "consisting of" is a closed-ended term, meaning the combination must not contain any other active fungicidal ingredients. A party could argue this points toward a deliberately formulated composition rather than an ad-hoc mixture by an end-user which might contain other unlisted components.
VI. Other Allegations
The complaint's primary counts are not for infringement but are affirmative claims for unenforceability and antitrust violations.
- Unenforceability due to Inequitable Conduct: Plaintiff alleges that Defendants and their agents engaged in inequitable conduct before the USPTO, rendering both patents unenforceable. The allegations center on two main acts:
- Fabricated Data: The complaint alleges that Defendants submitted field trial data to the USPTO to demonstrate "surprising" and "unexpected" synergistic results for the claimed combinations, knowing that these trials never took place and the data was fabricated. This allegedly occurred during prosecution of both the ’727 and ’625 patents (Compl. ¶¶51-64, 78-79).
- Failure to Disclose Prior Art: The complaint alleges that Defendants knew of but intentionally withheld a material prior art reference ("Godoy") from the USPTO during prosecution of the ’727 patent. The PTAB later found claims of the ’727 patent to be anticipated by this reference (Compl. ¶¶65-67).
- Antitrust Violations: Plaintiff alleges that Defendants' actions constitute monopolization and attempted monopolization in violation of the Sherman Act. The core allegations are:
- Walker Process Fraud: Obtaining the patents through intentional fraud on the USPTO and then attempting to enforce them to exclude competitors from the U.S. "mancozeb+ combinations" market (Compl. ¶¶188-190).
- Anticompetitive Leveraging: Using the allegedly fraudulent patents as leverage to force Plaintiff into restrictive supply agreements, requiring Plaintiff to source 70% to 100% of its global mancozeb requirements from Defendant in exchange for a license to the patents (Compl. ¶¶154-155).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to be less about technical nuances of infringement and more about the integrity of the patent prosecution process and its intersection with competition law. The central questions for the court will likely be:
- A core issue will be one of evidentiary integrity: Can Plaintiff produce clear and convincing evidence that the field trial data presented in the patents-in-suit was fabricated, and, critically, that the patent applicants submitted this data to the USPTO with a specific intent to deceive the agency?
- A key question of antitrust causation: Assuming the patents are found to have been procured by fraud, can Plaintiff demonstrate that Defendants wielded these patents with the specific intent to monopolize a well-defined market, and that Plaintiff suffered a direct antitrust injury as a result of this conduct, separate from the costs of patent litigation?
- A dispositive question will be one of materiality and intent: Did the undisclosed "Godoy" prior art reference anticipate the patent claims, and can Plaintiff prove that the applicants both knew of the reference and its materiality, and made a deliberate decision to withhold it from the USPTO to deceive the examiner?