DCT

3:25-cv-00735

Syngenta Crop Protection AG v. UPL Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:25-cv-00735, 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, and because the other UPL entities transact business in or direct conduct to the Eastern District of Virginia.
  • Core Dispute: Plaintiff seeks a declaratory judgment that Defendant’s patents on fungicidal combinations are invalid and unenforceable, alleging the patents were procured through inequitable conduct, including reliance on fabricated field trial data, and further alleges Defendant has engaged in anticompetitive conduct in violation of federal antitrust laws.
  • Technical Context: The technology involves multi-component fungicidal mixtures designed for agricultural crop protection, a field where combining active ingredients with different modes of action is critical for managing the development of fungal resistance.
  • Key Procedural History: The complaint alleges a history of commercial dealings, including a 2017 mancozeb supply agreement between the parties, followed by licensing negotiations in which Defendant asserted the patents-in-suit. Plaintiff previously challenged U.S. Patent No. 11,445,727 in a Post-Grant Review (PGR), and the complaint references a July 2024 Patent Trial and Appeal Board (PTAB) decision finding numerous claims of that patent unpatentable.

Case Timeline

Date Event
2016-11-04 Priority Date for ’727 and ’625 Patents
2017-08-17 Syngenta and UPL enter mancozeb procurement agreement
2020-12-22 UPL files continuation application that led to ’625 Patent
2022-09-20 U.S. Patent No. 11,445,727 Issues
2023-01-31 Syngenta files Petition for Post-Grant Review of ’727 Patent
2024-07-26 PTAB issues Final Written Decision in PGR of ’727 Patent
2025-09-02 U.S. Patent No. 12,402,625 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

  • Patent Identification: 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 new fungicidal combinations that provide a broader spectrum of disease control, combine preventative and curative actions, and allow for lower application rates to combat growing fungal resistance and decreasing crop tolerances (’727 Patent, col. 2:1-5).
  • The Patented Solution: The invention is a three- or four-part fungicidal combination. It pairs a succinate dehydrogenase (SDHI) inhibitor fungicide (specifically benzovindiflupyr) with a dithiocarbamate fungicide (such as mancozeb) and at least one other fungicide from two distinct classes: ergosterol biosynthesis inhibitors and quinone outside inhibitors (’727 Patent, Abstract; col. 3:40-49). The patent asserts that this specific combination results in "surprising and unexpected advantages," including a synergistic enhancement of efficacy beyond what would be expected from the individual components (’727 Patent, col. 3:12-25).
  • Technical Importance: Combining fungicides with different modes of action is a primary industry strategy for managing the evolution of resistance in crop pathogens, which poses a significant threat to global food production (Compl. ¶14).

Key Claims at a Glance

  • The complaint discusses combinations that fall within the scope of independent claims 1 and 2.
  • Independent Claim 1: A fungicidal combination consisting of:
    • benzovindiflupyr
    • mancozeb
    • at least another fungicide selected from an ergosterol biosynthesis inhibitor fungicide, and a quinone outside inhibitor fungicide.
  • Independent Claim 2: A fungicidal combination consisting of:
    • benzovindiflupyr
    • mancozeb
    • an ergosterol biosynthesis inhibitor fungicide
    • and a quinone outside inhibitor fungicide.
  • The complaint does not specify an intention to assert dependent claims, but parties typically reserve this right.

U.S. Patent No. 12,402,625 - Fungicidal Combinations

  • Patent Identification: U.S. Patent No. 12,402,625, "Fungicidal Combinations," issued September 2, 2025.

The Invention Explained

  • Problem Addressed: As a continuation of the application that led to the ’727 Patent, the ’625 Patent addresses the same technical problem of needing more effective, resistance-managing fungicidal combinations (’625 Patent, col. 2:1-5).
  • The Patented Solution: The invention claimed in the ’625 Patent is a highly specific three-part fungicidal mixture. The patent’s specification discloses the same general technology as its parent, describing purportedly synergistic effects from combining specific classes of fungicides to achieve enhanced disease control (’625 Patent, Abstract; col. 3:45-53).
  • Technical Importance: This patent claims a specific combination of active ingredients, reflecting a focus on protecting a precise formulation from competition.

Key Claims at a Glance

  • The complaint alleges this patent’s claim was amended to "expressly and narrowly cover" a product Syngenta intended to market (Compl. ¶35).
  • Independent Claim 1: A fungicidal combination consisting of:
    • mancozeb
    • prothioconazole
    • and benzovindiflupyr.
  • The complaint does not specify an intention to assert dependent claims.

III. The Accused Instrumentality

Product Identification

As this is a declaratory judgment action, the relevant instrumentalities are Plaintiff Syngenta’s products that are the subject of the dispute. These include combinations of fungicides intended for sale in the U.S. market (Compl. ¶38). Specifically, the complaint identifies fungicidal mixtures containing mancozeb combined with Syngenta's existing products, Mitrion™ (which contains benzovindiflupyr and prothioconazole) and Elatus® (which contains benzovindiflupyr and azoxystrobin) (Compl. ¶36-37).

Functionality and Market Context

These products are agricultural fungicides designed to control diseases such as Asian Soybean Rust in major crops (Compl. ¶36). The complaint alleges that UPL has asserted its patents against these combinations, specifically identifying Syngenta's Mitrion™ product (when used with mancozeb) as practicing the claimed invention (Compl. ¶32). Syngenta claims it has been unable to market these combinations in the U.S. due to UPL’s assertions and threats of litigation (Compl. ¶38).

IV. Analysis of Infringement Allegations

The complaint alleges that UPL has repeatedly asserted its patents would be infringed by Syngenta's products. The following charts summarize the infringement theories as described in the complaint.

’727 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A fungicidal combination consisting of benzovindiflupyr, mancozeb... Syngenta's planned products involve combining mancozeb with its Mitrion™ or Elatus® products, both of which contain benzovindiflupyr (sold as Solatenol®). ¶20, ¶37 col. 4:1-6
...and at least another fungicide selected from an ergosterol biosynthesis inhibitor fungicide... Syngenta's Mitrion™ product contains prothioconazole, which the complaint identifies as an ergosterol biosynthesis inhibitor specified in the claims. ¶20, ¶36 col. 7:46-55
...and a quinone outside inhibitor fungicide. Syngenta's Elatus® product contains azoxystrobin, which the complaint identifies as a quinone outside inhibitor specified in the claims. ¶20, ¶37 col. 7:60-65

’625 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A fungicidal combination consisting of: mancozeb... Syngenta's planned product combines its Mitrion™ product with mancozeb. ¶35-36 col. 4:54-61
...prothioconazole... Syngenta's Mitrion™ product contains the active ingredient prothioconazole. ¶35-36 col. 7:53-54
...and benzovindiflupyr. Syngenta's Mitrion™ product contains the active ingredient benzovindiflupyr (under the brand name Solatenol®). ¶35-36 col. 4:1-6

Identified Points of Contention

The primary dispute articulated in the complaint is not a technical disagreement over claim scope but rather a challenge to the patents' validity and enforceability.

  • Factual/Evidentiary Questions: The central issue raised is whether the field trial data disclosed in the patents, which purports to show synergistic efficacy, is fabricated. The complaint includes a table titled 'Table 1' that purports to show the mean percent disease control for fungicide combinations, which UPL allegedly used to prove unexpected results (Compl. p. 14). Syngenta alleges these trials could not have been conducted as described because key ingredients were not approved for use in India at the time and required regulatory approvals for the genetically modified crops used were never obtained (Compl. ¶58-63). A second table, 'Table 2,' presents similar allegedly fabricated data for a four-part combination to demonstrate the benefit of adding mancozeb (Compl. p. 14).
  • Legal Questions (Inequitable Conduct): The case will raise the question of whether the submission of this allegedly fabricated data to the USPTO was a material misrepresentation made with the specific intent to deceive the patent examiner, which would render the patents unenforceable (Compl. ¶177-178).

V. Key Claim Terms for Construction

While the complaint centers on inequitable conduct, the construction of certain claim terms could become relevant.

  • The Term: "fungicidal combination consisting of"
    • Context and Importance: The scope of this term is critical to determining what constitutes an infringing act. Practitioners may focus on this term because the dispute involves Syngenta's products being mixed with mancozeb by an end-user ("tank-mixing"), which may or may not fall within the scope of a "combination consisting of" the listed ingredients (Compl. ¶36).
    • Intrinsic Evidence for a Broader Interpretation: The patent specification discloses that the "constituents of the composition of the present invention may be tank mixed and sprayed," which could support construing "combination" to include separate products mixed by an end-user just prior to application (’625 Patent, col. 16:38-42).
    • Intrinsic Evidence for a Narrower Interpretation: The transitional phrase "consisting of" is a term of art in patent law that is presumptively closed, meaning it excludes any elements not specified in the claim. A party could argue this language limits the claim to a pre-formulated product containing only the recited active ingredients and no others.

VI. Other Allegations

  • Indirect Infringement: The complaint does not explicitly detail UPL's theory of indirect infringement. However, UPL's position can be inferred to be that Syngenta induces infringement by providing product labels that instruct farmers to combine Mitrion™ or Elatus® with mancozeb, thereby directing them to create the patented combination (Compl. ¶36, ¶38).
  • Willful Infringement: From UPL's perspective, any infringement by Syngenta would be willful. The complaint details extensive pre-suit communications, including licensing negotiations and UPL’s explicit assertion that Syngenta’s planned products would infringe, which establishes that Syngenta had pre-suit knowledge of the patents-in-suit (Compl. ¶21-33).

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

This case appears poised to turn on fundamental questions of conduct before the U.S. Patent and Trademark Office rather than on nuanced technical debates over claim interpretation.

  • A core issue will be one of factual veracity and inequitable conduct: Can Syngenta produce clear and convincing evidence that the field trial data, which was used to demonstrate the non-obviousness of the claimed inventions, was fabricated? If so, the court will then have to determine whether this data was material to patentability and submitted with an intent to deceive the USPTO.
  • A second key question will be one of antitrust liability: If the patents are found to be unenforceable due to fraudulent procurement, did UPL's subsequent enforcement activities—including its licensing demands and alleged threats of litigation—constitute unlawful market monopolization under the Walker Process doctrine?