DCT

2:20-cv-00181

her Majesty Queen In Right Of Canada v. Van Well Nursery Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:20-cv-00181, E.D. Wash., 05/03/2022
  • Venue Allegations: Venue is alleged to be proper as all Defendants reside in the judicial district, conduct regular business there, and a substantial part of the alleged acts of infringement occurred in the district.
  • Core Dispute: Plaintiff alleges that cherry trees and fruit marketed by Defendants under the name "Glory" are in fact an unauthorized, asexually propagated reproduction of Plaintiff's patented "Staccato" cherry variety.
  • Technical Context: The dispute is in the field of plant breeding, where new fruit varieties with commercially valuable traits, such as late-season maturation, are protected by plant patents.
  • Key Procedural History: The complaint alleges a complex history wherein Plaintiff provided its patented "Staccato" plant material to Defendant Van Well Nursery for testing under a restrictive agreement. Plaintiff alleges this material was improperly provided to Defendant Goodwin, who then filed for and obtained a separate plant patent (U.S. Plant Patent No. 22,693) for the same tree under the name "Glory." The complaint references prior disputes, settlement discussions, and conflicting genetic testing results, setting the stage for a fact-intensive inquiry into the genetic identity of the "Glory" and "Staccato" trees.

Case Timeline

Date Event
1990-08-01 AAFC and Van Well enter into a Restriction Agreement for plant selections, including Staccato (approx. date)
1998-07-15 Sublicense agreement for AAFC's 'Sonata' variety involving Van Well
2002-03-13 '551 Patent Priority Date
2003-01-01 Goodwin allegedly first observes the "different" tree in his orchard
2009-12-15 '551 Staccato Patent Issue Date
2010-12-01 Goodwin files for U.S. Plant Patent on "Glory" tree
2012-05-01 U.S. Plant Patent No. 22,693 ("Glory" patent) issued
2014-01-01 Genetic tests allegedly show "Glory" is "Staccato"; SVC and Van Well settle dispute (approx. date)
2017-10-01 Plaintiff's licensee (SVC) allegedly learns Van Well resumed propagating "Glory" trees (approx. date)
2018-03-26 AAFC formally notifies Van Well it lacks permission to propagate "Glory"
2018-04-01 Van Well sells thousands of "Glory" trees to Monson Fruit Company (approx. date)
2022-05-03 First Amended Complaint Filing Date

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

U.S. Plant Patent No. 20,551 P3 - "Cherry Tree Named '13S2009'", December 15, 2009

The Invention Explained

  • Problem Addressed: The patent addresses general objectives in the cherry breeding industry, including diversifying products to take advantage of niche markets and improving traits for consistent production of high-quality fruit (ʼ551 Patent, col. 2:1-4). A significant, though implicit, problem is the compressed harvest season for most commercial cherry varieties, which can lead to market oversupply and depressed prices (ʼ551 Patent, col. 4:1-4).
  • The Patented Solution: The patent discloses a new and distinct cherry tree variety, commercially known as Staccato®, whose "most distinguishing characteristic" is its very late fruit maturity ('551 Patent, col. 3:62-65). This trait extends the harvest season, providing a financial advantage to growers ('551 Patent, col. 3:65-67). The patented tree is also described as being self-compatible, producing large and very firm fruit, and having tolerance to rain-induced cracking ('551 Patent, Abstract).
  • Technical Importance: The development of a commercially viable, late-maturing cherry variety allows growers to supply fresh fruit to the market after the peak harvest season has ended, potentially commanding higher prices. (Compl. ¶23).

Key Claims at a Glance

  • The complaint asserts the single claim of the patent.
  • The single claim of a plant patent defines the invention by reference to the entire disclosure. The essential elements of Claim 1 are:
    • A new and distinct variety of sweet cherry tree named '13S2009'
    • substantially as herein illustrated and described.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are sweet cherry trees, cuttings, budwood, and fruit that Defendants possess, propagate, and sell under the name "Glory" (Compl. ¶¶ 5-6, 53).

Functionality and Market Context

The complaint alleges that the "Glory" tree is not a new variety but is, in fact, the patented "Staccato" tree (Compl. ¶6). The central allegation is that the "Glory" tree is genetically identical to the Staccato® variety, a claim Plaintiff supports by citing to its own DNA analysis (Compl. ¶¶ 42-44). The complaint alleges that Defendant Goodwin filed for and obtained a separate patent on the "Glory" tree after it was "ultimately planted in an orchard on Goodwin's property" (Compl. ¶¶ 32-33). Defendants are alleged to have sold thousands of these trees, which directly compete with Plaintiff's patented product (Compl. ¶¶ 10-11, 41). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'551 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A new and distinct variety of sweet cherry tree named '13S2009' substantially as herein illustrated and described. The complaint alleges that the "Glory" cherry tree is not a distinct variety but is an unauthorized, asexually propagated reproduction of Plaintiff's patented '13S2009' (Staccato®) tree. The complaint alleges that genetic studies show the "Glory" and "Staccato" varieties are the same, with a less than 0.0076% chance they are not. ¶6, ¶42-44, ¶53 col. 5:12-23
  • Identified Points of Contention:
    • Technical Question: The central issue is a question of fact: is the accused "Glory" tree genetically and phenotypically the same as the patented '13S2009' "Staccato" tree? The complaint presents its own DNA evidence as proof of identity (Compl. ¶¶ 42-44) while simultaneously seeking to discredit a published academic paper (the "Hewitt paper") that it claims "wrongly asserts" a difference between the two genotypes (Compl. ¶¶ 46-47). The resolution of this issue will likely depend on the court's evaluation of competing expert scientific testimony.
    • Legal Question: A core legal question is one of inventorship and ownership. If the "Glory" tree is found to be identical to the "Staccato" tree, it would directly support Plaintiff's separate cause of action seeking to correct the inventorship of the '693 "Glory" patent from Gordon Goodwin to Plaintiff's breeder, W. David Lane (Compl. ¶¶ 56-57). This highlights that the dispute is not just about infringement, but about the rightful ownership of the underlying intellectual property.

V. Key Claim Terms for Construction

For plant patents, infringement analysis focuses less on construing specific terms and more on comparing the accused plant's characteristics to those described and illustrated in the patent. The key phrase governing this comparison is "substantially as herein illustrated and described."

  • The Term: "substantially as herein illustrated and described"
  • Context and Importance: This phrase defines the scope of the patent right. The entire infringement case hinges on whether the accused "Glory" tree falls within this scope by possessing the novel characteristics of the patented plant. Practitioners may focus on this standard because it determines whether minor variations between the accused plant and the patent's description are sufficient to avoid infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The use of the word "substantially" suggests the claim is not limited to exact replicas and can cover plants with minor, commercially insignificant deviations from the patent's description. The patent describes typical characteristics, which may imply a range of natural variation is encompassed ('551 Patent, col. 3:51-56).
    • Evidence for a Narrower Interpretation: The patent provides a detailed botanical description with specific quantitative and qualitative measurements, such as fruit maturity ("about 27 days after 'Van'"), fruit shape ("Flattened Heart"), flesh firmness ("Very firm (81 by Shores Durometer)"), and genetic markers ('551 Patent, col. 11-12). A party could argue that an accused plant must match these specific, distinguishing characteristics to be considered "substantially" the same.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce and contribute to infringement by "knowingly and with intent, actively encouraging its customers, retailers and/or growers to propagate, make, use, offer for sale and/or sell Glory trees" (Compl. ¶54).
  • Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge that "Glory" is the same as the patented "Staccato" variety. The complaint alleges this knowledge stems from genetic test results discussed in 2014 and formal notice of infringement provided by AAFC on March 26, 2018, well before the filing of the lawsuit (Compl. ¶¶ 7, 8, 25).

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

  • A central issue for the court will be one of scientific identity: Is the accused "Glory" cherry tree, as a matter of genetic and botanical fact, an asexual reproduction of the patented "Staccato" variety? The outcome will likely depend on a "battle of the experts" interpreting competing DNA evidence and phenotypic data.
  • A second key question concerns inventorship and rightful ownership: Beyond simple infringement, the case raises the question of who is the true inventor of the tree being sold as "Glory." The court's finding on the identity of the trees will be dispositive for Plaintiff's claims to correct inventorship on the separate '693 "Glory" patent and declare itself the rightful owner.