DCT

2:10-cv-00081

EMD Crop Bioscience Inc v. Becker Underwood Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:10-cv-00081, E.D. Wis., 01/29/2010
  • Venue Allegations: Venue is alleged based on Defendant’s substantial business activities in the district, including offers to sell and sales of the accused product, which have allegedly caused injury to the Plaintiffs within the district.
  • Core Dispute: Plaintiffs allege that Defendant’s VAULT® HP growth enhancement system for soybeans infringes five patents related to the use of lipo-chitooligosaccharides (LCOs) as plant-signaling molecules to promote nodulation and growth.
  • Technical Context: The technology involves the use of specific biochemical signals, known as LCOs or Nod factors, to stimulate the natural symbiotic relationship between leguminous plants and nitrogen-fixing soil bacteria, thereby enhancing crop development.
  • Key Procedural History: The complaint alleges that Plaintiffs put Defendant on notice of potential infringement via a letter dated November 13, 2009, and that Defendant’s subsequent response on November 30, 2009, did not provide information to rebut the infringement allegations. This exchange is cited as a basis for willfulness.

Case Timeline

Date Event
1990-04-06 ’718 Patent Priority Date
1991-10-04 ’149 and ’011 Patents Priority Date
1992-06-29 ’018 Patent Priority Date
1992-12-29 ’149 Patent Issue Date
1994-06-14 ’011 Patent Issue Date
1996-08-27 ’718 Patent Issue Date
1997-07-08 ’018 Patent Issue Date
1998-07-21 ’664 Patent Priority Date
2005-12-27 ’664 Patent Issue Date
2009-11-13 Plaintiffs send letter to Defendant
2009-11-30 Defendant responds to Plaintiffs' letter
2010-01-29 Complaint Filing Date

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

U.S. Patent No. 5,646,018 - “Broad Host Spectrum Rhizobiaceae Nodulation Signals,” issued July 8, 1997

  • The Invention Explained:

    • Problem Addressed: The patent’s background section describes the problem of host specificity in rhizobia bacteria, where certain strains can only form beneficial nitrogen-fixing nodules on a narrow range of legume species, limiting their agricultural utility (’018 Patent, col. 1:15–25).
    • The Patented Solution: The invention identifies and characterizes a novel family of nodulation signals (Nod factors) from the broad-spectrum Rhizobium sp. NGR234. These molecules are lipo-oligosaccharides distinguished by specific structural features, including an N-methyl group on the non-reducing terminal glucosamine and a different sugar (fucose or arabinose) attached at the other end. These unique structures are described as being responsible for the ability to signal and induce nodulation across a wide variety of host plants (’018 Patent, Abstract; col. 2:5–39).
    • Technical Importance: The identification of these broad-spectrum signaling molecules provided a basis for developing crop treatments capable of enhancing growth and nitrogen fixation across a more diverse range of commercially important legumes (’018 Patent, col. 1:57–65).

  • Key Claims at a Glance:

    • The complaint does not identify specific asserted claims, alleging infringement of "one or more claims" (Compl. ¶27). For the purpose of this analysis, independent claim 1 is examined.
    • The essential elements of independent claim 1 are:
      • A NodNGR-type factor of a specific chemical formula (I).
      • Wherein R1, R2, and R3 are a hydrogen atom, a carbamyl group, or an acetyl group.
      • Wherein R5 is the aliphatic chain of a fatty acid.
      • Wherein n is an integer between 1 and 4.
      • Wherein one or more of R1, R2, or R3 is a carbamoyl group, and/or R4 is a methyl group, and/or R6 has a specific chemical formula (II).

U.S. Patent No. 5,549,718 - “Substance with Lipo-Oligosaccharide Structure Capable of Acting as Plant-Specific Symbiotic Signals, Processes for Producing Them and Their Applications,” issued August 27, 1996

  • The Invention Explained:

    • Problem Addressed: The patent identifies the economic and ecological drawbacks of using nitrogenous fertilizers and notes the difficulty of establishing beneficial, lab-selected rhizobia strains in farm soils where they are outcompeted by less effective native bacteria (’718 Patent, col. 1:53–2:12).
    • The Patented Solution: The invention provides for an essentially pure lipo-oligosaccharide (Nod factor) that can be applied directly to plants or seeds. By isolating the active signaling molecule itself, the technology bypasses the need for live bacterial inoculation and its associated competitive challenges, allowing for direct stimulation of the plant's symbiotic and growth responses (’718 Patent, Abstract; col. 4:15–32). The specification provides a detailed multi-step process for isolating and purifying these molecules from bacterial cultures (’718 Patent, col. 7:1–col. 8:52).
    • Technical Importance: This technology allows for the direct application of a chemical signal to trigger plant nodulation and other symbiotic responses, offering a more controlled and potentially more effective alternative to inoculating fields with live bacteria (’718 Patent, col. 12:45–52).

  • Key Claims at a Glance:

    • The complaint does not identify specific asserted claims, alleging infringement of "one or more claims" (Compl. ¶28). For the purpose of this analysis, independent claim 1 is examined.
    • The essential elements of independent claim 1 are:
      • A purified lipo-oligosaccharide having a specific chemical formula (I).
      • Wherein G is selected from hexosamine or a substituted hexosamine (acetyl, sulphated, or ether-substituted).
      • Wherein R1, R2, R3, R5, R6, and R7 are selected from H, specific acyl groups, or carbamyl.
      • Wherein R4 is a mono-, di-, or tri-unsaturated aliphatic chain with at least 12 carbon atoms.
      • Wherein n is an integer between 1 and 4.

Multi-Patent Capsule: U.S. Patent No. 6,979,664

  • Patent Identification: U.S. Patent No. 6,979,664, “Composition for Accelerating Seed Germination and Plant Growth,” issued December 27, 2005 (Compl. ¶12).
  • Technology Synopsis: This patent addresses the general problem of slow seed germination and plant growth, particularly in non-legume crops or under suboptimal temperature conditions (’664 Patent, col. 2:55–65). It discloses the surprising discovery that LCOs, previously associated with legume-specific nodulation, also act as general growth promoters, accelerating seed germination and enhancing seedling development in a wide variety of crops, including corn, cotton, and canola (’664 Patent, col. 3:9–24).
  • Asserted Claims: The complaint alleges infringement of "one or more claims" (Compl. ¶29). Independent claims include 1, 2, 17, 22, 23, 31, 33, and 34.
  • Accused Features: The accused product, VAULT® HP, is alleged to be a composition that, when applied to soybeans, accelerates seed germination and plant growth in a manner that infringes the patent's method claims (Compl. ¶¶ 18, 29).

Multi-Patent Capsule: U.S. Patent No. 5,175,149

  • Patent Identification: U.S. Patent No. 5,175,149, “Pentasaccharide Phytohormones and Methods for Their Use,” issued December 29, 1992 (Compl. ¶14).
  • Technology Synopsis: The patent addresses the need for a way to induce root hair curling and nodulation in leguminous plants without relying on the presence of live nitrogen-fixing bacteria (’149 Patent, col. 2:59–64). The invention provides a purified phytohormone, defined as a pentasaccharide (a five-sugar chain) with a fatty acid condensed on one end, which can be applied to plants to directly trigger these developmental responses (’149 Patent, Abstract).
  • Asserted Claims: The complaint alleges infringement of "one or more claims" (Compl. ¶30). Independent claims are 1 (a composition claim) and 2 (a method claim).
  • Accused Features: The VAULT® HP product is alleged to contain a phytohormone that embodies the claimed pentasaccharide structure (Compl. ¶¶ 18, 30).

Multi-Patent Capsule: U.S. Patent No. 5,321,011

  • Patent Identification: U.S. Patent No. 5,321,011, “Pentasaccharide Phytohormones and Methods for Their Use,” issued June 14, 1994 (Compl. ¶15).
  • Technology Synopsis: As a continuation-in-part of the ’149 Patent, this invention further refines the claimed phytohormone structure. It specifically claims a pentasaccharide that includes a 6-α-2-O-methylfucose moiety at the reducing end of the sugar chain (’011 Patent, Abstract; Claim 1). This specific structural modification is presented as a key feature of the phytohormone for inducing root hair curling and nodulation (’011 Patent, col. 2:54–61).
  • Asserted Claims: The complaint alleges infringement of "one or more claims" (Compl. ¶31). Independent claims are 1 (a composition claim) and 2 (a method claim).
  • Accused Features: The VAULT® HP product is alleged to contain a phytohormone that includes the specific 6-α-2-O-methylfucose structure recited in the claims (Compl. ¶¶ 18, 31).

III. The Accused Instrumentality

  • Product Identification: The accused product is Becker Underwood, Inc.’s VAULT® HP (Compl. ¶18).
  • Functionality and Market Context: The complaint describes VAULT® HP as a "growth enhancement system for soybeans" and an "ultra-low volume, high performance growth enhancement system" that contains a Rhizobial inoculant (Compl. ¶18). The infringement theory is based on the allegation that this product contains, as an active ingredient, LCO molecules covered by the patents-in-suit, which function to stimulate plant growth when applied to soybean seeds or plants (Compl. ¶¶ 27–31). The complaint does not provide further technical detail on the product's formulation or mechanism of action.
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain specific infringement contentions or claim charts mapping elements of the accused product to the patent claims. The infringement theory, alleged on "information and belief," is that the VAULT® HP product is or contains a chemical composition that falls within the scope of the asserted claims. The following tables summarize this generalized allegation for the lead patents.

'018 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A NodNGR-type factor of the following formula (I): The complaint alleges that VAULT® HP contains a NodNGR-type factor, a lipo-oligosaccharide that acts as a growth enhancer. The complaint does not provide a specific chemical analysis of the accused product. ¶18, ¶27 col. 2:55-65
in which: R1, R2 and R3 represent a hydrogen atom, a carbamoyl group or an acetyl group; R5 represents the aliphatic chain of a fatty acid; n is between 1 and 4 The complaint does not provide specific details on the chemical structure of the compound in VAULT® HP but alleges it infringes one or more claims, which would require it to meet these structural limitations. ¶27 col. 3:1-5
and wherein: one or more of the substituents R1, R2 or R3 is a carbamoyl group, and/or R4 represents a methyl group, and/or R6 has the general formula (II) The complaint alleges infringement, which implies the compound in VAULT® HP contains at least one of these distinguishing features: a carbamoyl group, an N-methyl group (R4), or the specific fucose/arabinose substituent (R6) at the reducing end. ¶27 col. 3:6-12

'718 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A purified lipo-oligosaccharide having formula I below: The complaint alleges that VAULT® HP contains a lipo-oligosaccharide of the claimed structure. The product is implicitly alleged to contain the LCO in a "purified" state sufficient to meet the claim limitation. ¶18, ¶28 col. 4:36-49
wherein G is selected from the group consisting of hexosamine, acetyl-substituted hexosamine, sulphated-substituted hexosamine, and ether-substituted hexosamine, The complaint does not provide specific details on the G-group substituent but alleges infringement, which would require the compound in VAULT® HP to meet this limitation. ¶28 col. 4:50-53
R4 is selected from the group consisting of a mono-, di-, or tri-unsaturated aliphatic chain containing at least 12 carbon atoms, and n is an integer between 1 and 4 The complaint alleges that the LCO in VAULT® HP has an N-acyl chain (R4) and an oligosaccharide backbone length (n) that meet the structural requirements of the claim. ¶28 col. 4:56-62
  • Identified Points of Contention:
    • Evidentiary Questions: The central point of contention will be factual: does the VAULT® HP product contain a lipo-oligosaccharide, and if so, does its precise chemical structure meet all the limitations of the asserted claims across five different patents? The complaint's "information and belief" pleading standard suggests that extensive chemical analysis (e.g., NMR, mass spectrometry) during discovery will be required to establish the composition of the accused product.
    • Scope Questions: The case raises the question of whether a single commercial product can embody the distinct inventive features of five separate patents. For instance, does the accused LCO possess both the N-methyl group required by the ’018 Patent and the specific methylfucose group of the ’011 Patent, while also meeting the broader structural definitions of the ’149 and ’718 patents?
    • Technical Questions: What is the nature of the Rhizobial inoculant in VAULT® HP (Compl. ¶18)? A key question is whether the LCO is a separately added, purified ingredient or a substance produced in situ by the inoculant. This could impact the analysis of infringement, particularly for claims requiring a "purified" compound, such as in the '718 patent.

V. Key Claim Terms for Construction

  • The Term: "purified" (’718 Patent, Claim 1)

    • Context and Importance: The VAULT® HP product is a commercial agricultural treatment containing a live bacterial inoculant. The definition of "purified" is critical because Defendant may argue that any LCO present is part of a complex, unpurified biological mixture generated by the inoculant, not a "purified" substance as required by the claim. Practitioners may focus on this term because its construction could be dispositive of infringement for the '718 patent.
    • Intrinsic Evidence for a Broader Interpretation: The specification does not provide an explicit numerical purity level. A party could argue that "purified" should be understood relative to the substance's natural state (i.e., inside a bacterium), meaning any compound extracted and isolated from its cellular source meets the definition, regardless of admixture with other carriers or agents (’718 Patent, col. 7:1–10).
    • Intrinsic Evidence for a Narrower Interpretation: The patent details an extensive, multi-step purification protocol involving butanol extraction and multiple rounds of reversed-phase HPLC to isolate the active compound for characterization (’718 Patent, col. 8:11–52). A party could argue that "purified" must be construed in light of these examples to mean a substance subjected to rigorous chemical separation, implying a high degree of isolation not present in a commercial agricultural product.

  • The Term: "NodNGR-type factor" (’018 Patent, Claim 1)

    • Context and Importance: This term is defined by the patentee and tied to a specific chemical structure (Formula I) that includes several distinct features, such as an N-methyl group and a fucose or arabinose substituent (’018 Patent, Claim 1). Infringement hinges on whether the accused compound possesses this exact combination of features.
    • Intrinsic Evidence for a Broader Interpretation: The patent refers to a "family of NodNGR factors" and notes that the factors can come from "a range of strains" with "very different geographical origins," suggesting the term might encompass some structural variation beyond the precise examples shown (’018 Patent, col. 2:8–9; col. 2:21–24).
    • Evidence for a Narrower Interpretation: Claim 1 explicitly defines the term by reference to "the following formula (I)" and its specific substituent requirements (e.g., R4 as a methyl group). The specification distinguishes these factors from other Nod factors (like NodRm) based on these specific structural differences, supporting an interpretation that a compound lacking any one of these elements is not a "NodNGR-type factor." (’018 Patent, col. 2:10–14).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both contributory and induced infringement for all five patents, asserting that Defendant makes, uses, and sells VAULT® HP with the knowledge and intent that its customers will use the product for its intended purpose of soybean growth enhancement, thereby infringing the patents (Compl. ¶¶ 27–31). The product's marketing as a "growth enhancement system for soybeans" is the primary factual basis for this allegation (Compl. ¶18).
  • Willful Infringement: Willfulness is alleged based on Defendant’s purported "actual knowledge" of the patents-in-suit prior to the lawsuit (Compl. ¶32). The complaint cites a November 2009 letter from Plaintiffs to Defendant as evidence of this knowledge and alleges that Defendant's subsequent failure to provide a basis for non-infringement demonstrates that its infringement was and continues to be intentional and willful (Compl. ¶¶ 23, 32).

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

  • A central evidentiary question will be one of chemical identity: what is the precise molecular structure of the active ingredient in the VAULT® HP product? The outcome of the case will depend heavily on discovery and expert analysis to determine if this structure falls within the specific chemical formulas recited across the five asserted patents.
  • A key legal issue will be one of definitional scope: can the term "purified" in the ’718 Patent, which is taught in the context of rigorous laboratory isolation, be construed to read on a signaling molecule present within a commercial agricultural product that also contains a live bacterial inoculant?
  • An overarching question of infringement overlap will be central: can the single LCO compound alleged to be in VAULT® HP simultaneously embody the distinct and specific structural features claimed across multiple patents, such as the N-methyl group of the ’018 Patent and the methylfucose group of the ’011 Patent?