DCT

2:24-cv-00702

Syngenta Ltd v. Stewart

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-02186, E.D. Va., 12/04/2024
  • Venue Allegations: Venue is asserted as proper in the Eastern District of Virginia under 35 U.S.C. § 154(b)(4)(A), which provides for exclusive remedy by civil action against the Director in this district for applicants dissatisfied with a Patent Term Adjustment (PTA) determination.
  • Core Dispute: Plaintiff challenges the U.S. Patent and Trademark Office Director's calculation of the Patent Term Adjustment for U.S. Patent No. 11,608,323, seeking to restore 70 days of patent term that Plaintiff alleges were improperly deducted as "applicant delay."
  • Technical Context: The patent-in-suit relates to novel herbicidal compounds, a technology critical to the agricultural sector for weed control and crop yield optimization.
  • Key Procedural History: The dispute arises from the prosecution of the application leading to the patent-in-suit. After receiving a Notice of Allowance, Plaintiff submitted a corrected Application Data Sheet (ADS) to update applicant and assignee information, concurrently with other papers requested by the PTO. The PTO characterized the 70-day period following this submission as applicant delay, reducing the PTA award. Plaintiff twice petitioned the Director for reconsideration, which was denied, leading to this civil action. The complaint argues this denial is contrary to statute and represents an arbitrary and capricious agency action.

Case Timeline

Date Event
2013-10-07 ’323 Patent Priority Date (Indian Application 2977/DEL/2013)
2014-02-10 PCT Application PCT/EP2014/071167 Filed
2016-07-04 Application entered U.S. National Stage
2018-12-17 Continuation Application (leading to '323 patent) Filed
2022-11-23 PTO mailed Notice of Allowance
2023-01-18 Syngenta filed a legible copy of claims and a corrected ADS
2023-03-21 U.S. Patent No. 11,608,323 Issued
2023-06-02 Syngenta filed first Petition to Director for PTA review
2023-10-05 PTO mailed decision indicating PTA of 401 days
2024-03-05 Syngenta filed second Petition to Director for PTA review
2024-06-07 PTO mailed Director's final determination of PTA as 401 days
2024-12-04 Complaint Filed

II. Technology and Patent-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 describes the ongoing need in the agricultural industry for new herbicidal compounds and compositions to control unwanted plant growth, addressing issues like weed resistance and the need for more effective or selective treatments (Compl. ¶1; ’323 Patent, col. 1:8-12).
  • The Patented Solution: The invention provides novel pyrrolone compounds of a specific chemical structure (Formula I) that exhibit herbicidal activity. The specification details the synthesis of these compounds and their use in compositions to control or inhibit plant growth (’323 Patent, Abstract; col. 1:30-32). The patent provides numerous examples of specific chemical structures falling within the scope of the claims (’323 Patent, col. 57:1 - col. 114:19).
  • Technical Importance: The development of new classes of chemical herbicides is significant for maintaining agricultural productivity by providing new tools to manage weeds that may have developed resistance to existing products.

Key Claims at a Glance

  • The complaint does not assert specific claims for infringement, as the dispute concerns patent term adjustment. However, the patent’s scope is defined by its claims, with Claim 1 being an independent claim.
  • 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
    • Rᵇ is hydrogen
    • Rᶜ is trifluoromethyl
    • Rᵈ is hydrogen
  • The complaint does not reserve the right to assert any claims, as this is not an infringement action.

III. Analysis of the Patent Term Adjustment Dispute

This action does not concern patent infringement. The central dispute is the United States Patent and Trademark Office (PTO) Director’s calculation of Patent Term Adjustment (PTA) for the ’323 Patent.

  • The Disputed Agency Action: The PTO granted a PTA of 401 days for the ’323 Patent (Compl. ¶21). Plaintiff Syngenta contends it is entitled to 471 days, alleging that the PTO improperly subtracted 70 days as "applicant delay" (Compl. ¶¶ 1-2, 62). This 70-day reduction stems from Plaintiff's filing of a corrected Application Data Sheet (ADS) on January 18, 2023, after a Notice of Allowance had been mailed but before the issue fee was paid (Compl. ¶¶14, 19).
  • Plaintiff's Position: The complaint alleges that the PTO’s reduction of the PTA is arbitrary, capricious, and contrary to law (Compl. ¶36). Plaintiff argues that its submission of the corrected ADS was a routine, non-substantive correction to ensure the patent would issue with the correct applicant and assignee information (Compl. ¶57). It was filed concurrently with other papers—a legible copy of the claims—that were expressly requested by the PTO (Compl. ¶¶13-14). Plaintiff asserts this action does not constitute a "failure to engage in reasonable efforts to conclude prosecution" under the controlling statute, which it argues was intended by Congress to penalize only "egregious and obvious delay tactics" like the filing of "submarine patents" (Compl. ¶¶35, 39, 56).
  • Statutory and Regulatory Framework: The dispute centers on the interpretation of 35 U.S.C. § 154(b)(2)(C)(i), which mandates a reduction in PTA for periods where an applicant "failed to engage in reasonable efforts to conclude prosecution" (Compl. ¶28). The PTO's action was based on its regulation, 37 C.F.R. § 1.704(c)(10), which defines the filing of an "other paper" after a notice of allowance as applicant delay (Compl. ¶30). Plaintiff argues that the PTO has not explicitly enumerated a corrected ADS as such an "other paper" and that the agency's application of the rule in this case is an overreach of its statutory authority (Compl. ¶¶37-38, 64).

IV. Legal Claims for Relief

  • Count One (Patent Term Adjustment Under 35 U.S.C. § 154): Plaintiff alleges the Director failed to comply with 35 U.S.C. § 154(b)(2)(C)(i) in calculating the PTA for the ’323 patent (Compl. ¶68). The complaint asserts that Plaintiff's conduct did not constitute a purposeful manipulation of the patent system to delay issuance and that its filing of the corrected ADS was a reasonable effort to conclude prosecution (Compl. ¶¶69-70). Therefore, the 70-day reduction is alleged to be inconsistent with the statute (Compl. ¶73).
  • Count Two (Declaratory Judgment Under The Administrative Procedures Act, 5 U.S.C. § 702 et seq.): Plaintiff alleges the Director’s application of 37 C.F.R. § 1.704(c)(10) is "arbitrary, capricious, an abuse of discretion or otherwise not in accordance with law" under the APA (Compl. ¶78). The complaint argues that the PTO's interpretation produces an "unfair and irrational result" by penalizing an applicant for making a necessary correction that could otherwise be remedied post-issuance via a certificate of correction without PTA reduction (Compl. ¶¶59, 80). The complaint further argues that the Director is entitled to no judicial deference for this interpretation, citing the Supreme Court's decision in Loper Bright Enterprises v. Raimondo (Compl. ¶¶72, 82).

No probative visual evidence provided in complaint.

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

This case presents a focused challenge to the PTO's administrative authority in calculating patent term. The outcome will likely depend on the court's resolution of two central questions:

  • A core issue will be one of statutory interpretation: Does the filing of a corrected Application Data Sheet (ADS) after a notice of allowance to ensure the accuracy of applicant and assignee data constitute a "failure... to engage in reasonable efforts to conclude prosecution" under 35 U.S.C. § 154(b)(2)(C)(i), or is the PTO's expansive interpretation of "applicant delay" to include such ministerial corrections contrary to Congressional intent?
  • A key procedural question will be the standard of review: In light of the Supreme Court's recent limitations on agency deference, to what extent, if any, will the court defer to the PTO Director's interpretation and application of 37 C.F.R. § 1.704(c)(10), and does its application to the facts alleged in the complaint represent an arbitrary and capricious action under the Administrative Procedure Act?