§ 271(g) held not to be limited by single-entity requirement; label-related copyright claims remanded

Syngenta Crop Protection, LLC v. Willowood, LLC et al.
Docket Nos. 2018-1614, -2044
December 18, 2019

Brief Summary: DC dismissal of copyright claims relating to Syngenta’s label remanded as premature. DC erred by imposing single-entity requirement on § 271(g).

Summary: Syngenta appealed DC dismissal of copyright claims relating to its product labels and findings of no infringement of its “Compound Patents” (US 5,602,076; 5,633,256 directed to fungicides including azoxystrobin) as well as US 5,847,138 directed processes including an “etherfication step” and US 8,124,761 using “between 0.1 and 2 mol % of” the chemical catalyst DABCO, respectively.
Syngenta asserted that Willowood infringed Syngenta’s registered copyrights by copying the Quadris® and Quilt Xcel® labels for Willowood’s products. The DC agreed with Willowood and the United States that, e.g., “the Federal Insecticide, Fungicide, and Rodenticide Act (‘FIFRA’) precludes copyright protection for Syngenta’s labels”, “FIFRA ‘endorses’ copying by generic applicants”, “Syngenta granted Willowood an implied license to copy its labels by participating in FIFRA’s labeling scheme”, and Willowood’s use are protected under the doctrines of merger (“which permits copying of material that can only be expressed in a limited number of ways”) and fair use. The FC panel remanded the DC’s decision because “FIFRA does not, on its face, require a me-too registrant to copy the label of a registered product”, the DC was required to but did not consider whether “some protected element of Syngenta’s label is both protected under existing copyright doctrines and necessary for the expedited approval of Willowood’s genetic pesticide product” (SmithKline, 2d Cir. 2000 (“Hatch-Waxman Act ‘not only permit[s] but require[s] producers of generic drugs to use the same labeling”, “‘obvious’ that Congress intended for the Hatch-Waxman Act to ‘trump the copyright laws’”)).

The DC denied SJ as to infringement of the ‘138 patent due to a genuine dispute of material fact as to whether Willwood’s Chinese supplier Tai He “performed both steps of the process claimed…or whether Willwood directed Tai He and others to practice the claimed process.” In this “issue of first impression”, the FC panel concluded that the DC “erred by imposing a single-entity requirement under § 271(g)” (“whoever imports…or offers to sell, sells, or uses…a product made by a process patented in the” US, burden on “accused infringer to prove that the patented process was not used”), which is a requirement of § 271(a) (“makes, uses, offers to sell, or sells any patented invention”, “§ 271(a) covers all patented processes, whether or not they result in a product”). Here, the FC panel reversed the DC’s finding of no infringement by Willowood USA since it “imported into the United States an azoxystrobin compound that was manufactured abroad using the process patented by the ‘138 patent.” The FC panel also affirmed the DC finding of no infringement by Willowood China under § 271(g) since it did not import the product, and remanded its decision regarding Willowood LLC to determine its “role, if any”.

The FC panel affirmed the jury finding that Willowood China did not infringe the Compound Patents or the ‘761 patent because it sold the product in China and did not import it into the US.

This entry was posted in Copyright, Importation, Infringement, Uncategorized. Bookmark the permalink.

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