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Syngenta Gets Nearly $1M from Jury in Pesticide IP Suit

14 September 2017

A North Carolina federal jury found Wednesday that pesticide maker Willowood LLC infringed Syngenta Crop Protection LLC’s patents for the pesticide azoxystrobin, and awarded Syngenta $975,600.

After roughly four hours of deliberations following a seven-day trial, the Greensboro jury returned at nearly 5 p.m. on Wednesday with a verdict finding that Syngenta did not prove that Willowood imported azoxystrobin into the United States, but that Willowood did owe $75,600 for infringing Syngenta’s patents relating to the chemical compound itself. Willowood’s infringement of the compound patents, and their validity, was settled before the trial. The jury did not, however, find this infringement was willful.

The jury also found that Willowood infringed one of Syngenta’s two patents for processes related to the creation of the pesticide and that this patent, U.S. Patent Number 8,124,761, is valid, and awarded $900,000 in damages.

The trial was presided over by U.S. District Judge Catherine C. Eagles.

Attorneys for the parties did not immediately respond to requests for comment on Thursday.

Syngenta first filed the suit in March 2015, claiming infringement of four patents, copyright infringement, and unfair or deceptive trade practices.

The case deals with a fungicidal chemical called azoxystrobin, which Syngenta and its predecessors started researching and developing in the 1980s. The complaint states that it works on controlling fungal growth and the yield of crops such as wheat, barley, vegetables, bananas, rice and corn. The chemical is sold as Abound, Heritage, Quilt, Quilt Xcel and Quadris, and Syngenta also provides the chemical to other manufacturers.

The patents cover the chemical compound and related processes. The company also copyrighted the labels about the product’s use and warnings, because the “process of creating a product label involves creativity, time and money, and reflects many years of careful product development, testing and stewardship,” the complaint states.

For example, the Quadris Flowable Fungicide label took about 18 years and more than 8,000 clinical trials to develop, Syngenta said.

In August 2013, Willowood released its own product, Azoxy 2SC, with azoxystrobin fungicide being its active ingredient. The company got it approved by the U.S. Environmental Protection Agency through an exception allowing it to cite data from another approved pesticide that meets certain related qualifications.

But Syngenta, which was the only registered source of the chemical at the time, said it never gave Willowood a sample or approved the usage. Based on those false representations, Willowood was allowed to enter the pesticide market for the product, the complaint states.

The companies had a back-and-forth over the patents and source, leading to Willowood saying in September 2014 that it didn’t infringe any patents but refused to explain why not. When Syngenta offered a confidentiality agreement, Willowood didn’t respond, the suit said.

Willowood’s labeling is the exact same as Syngenta’s with only the product and company names switched out, and in some instances mistakenly left in, Syngenta said.

In August 2016, Judge Eagles dismissed Syngenta’s claims of unfair or deceptive trade practices, and in April 2017 the judge granted Willowood summary judgment on Syngenta’s copyright claims.

In that ruling, the judge cited a 2000 Second Circuit decision that the Hatch-Waxman Act allows generic drug manufacturers to use the same required parts of labels as the branded drugmakers they’re competing with.

The patents-in-suit are U.S. Patent Numbers 5,602,076; 5,633,256; 5,847,138; and 8,124,761.

Syngenta is represented by Richard A Coughlin, C. Bailey King and Whit D. Pierce of Smith Moore Leatherwood LLP, and Russell E. Levine, Hari Santhanam and Kourtney Baltzer of Kirkland & Ellis LLP.

Willowood is represented by Alan W. Duncan and L. Cooper Harrell of Mullins Duncan Harrell & Russell PLLC, and Barry S. Neuman, Steven E. Tiller and Peter J. Davis of Whiteford Taylor & Preston LLP.

The case is Syngenta Crop Protection LLC v. Willowood LLC et al., case number 1:15-cv-00274, in the U.S. District Court for the Middle District of North Carolina.

Practices