On April 27, 2017, the United States District Court for the Northern District of California (the “Court”) ruled on a wide variety of summary judgment motions, several of which present interesting issues related to plant patent law.
These motions were filed in a case that arose out of a dispute over patented and unpatented strawberry varieties between the University of California (“UC”) and two professors who left UC in 2014 to join California Berry Cultivars, LLC (“CBC”). Slip Op. at 2-3. This alert focuses on the Court’s holdings on the patented strawberry varieties and the allegedly infringing activities.
By statute, plant patents may only claim asexually reproduced plants. 35 U.S.C. § 161 (“Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title”) (emphasis added). One of the primary arguments CBC made was that it could not be liable for infringing UC’s plant patents because CBC had not, and was not, asexually reproducing the patented strawberries. Id. at 11-12.
However, while a plant patent may only claim asexually reproduced plants, infringement activities are not so narrowly defined. 35 U.S.C. § 163 (“In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States. . . .”).
Noting that infringement activities are listed with the conjunction “or,” the Court held that asexual reproduction was not an absolute requirement for infringement. The language required only that UC “prove that the plants CBC was ‘using’ in its breeding activities were asexually reproduced—not that CBC itself both reproduced and used the plants.” Id.
CBC then argued that some of UC’s infringement claims arose from activities that took place in Spain, and therefore those foreign activities, at least, could not constitute infringement because they did not occur in the United States. Id. Basing its argument on the Federal Circuit’s decision in NTP, Inc. v. Research in Motion, Ltd., UC countered that because CBC controlled the activities and received the benefit of the infringement, the “situs” of the act was domestic, despite CBC importing into the US seeds developed from breeding activities in Spain. Id.; see also 418 F.3d 1282, 1316-17 (Fed. Cir. 2005) (laying out the control and benefit test for determining the situs of infringement).
However, the Court disagreed with this argument because NTP, Inc. v. Research in Motion, Ltd.pertains specifically to system patents. Slip. Op. at 12-13. Not finding case law or other justifications as to how and why the system test should be extended to plant patents, the Court declined to apply the control and benefit test to this case. Instead, the Court held that the more logical and proper situs of infringement was Spain, where the “offending act is committed,” i.e., where the strawberry plants were bred. Id. at 13.
The Court likewise rejected the theory of infringement under 35 U.S.C. § 271(f)(1) that states that an infringer may also be anyone who, without authority, supplies “all or a substantial portion of the components of a patented invention” abroad to “actively induce” the combination of the components. Id. As strawberry plants do not have “components” like the systems and devices normally considered under § 271(f)(1), the Court held that CBC could not be infringing on that ground. Id.
Although the Court rejected the activities in Spain as a basis for infringement, it did find that CBC could be infringing based on importation of the strawberry seeds. Under 35 U.S.C. § 163, a plant patent may also be infringed by importing the patented plant, “or any parts thereof, into the United States.” CBC argued that the importation of the seeds could not be infringement because the seed is not a part of the plant, where seeds “primarily comprise genetic material that is unique from either of their parent plants.” Id. at 13. The court was unmoved, holding that: “[f]ruit is part of the plant, and seeds are part of the fruit, so seeds are part of the plant.” Id. at 14.
Cases involving plant patents are not particularly common as compared to cases involving other types of patents. Accordingly, any appeals should be closely watched for further developments and commentary on how the Patent Act’s plant-related provisions should be interpreted.