Syngenta Crop Protection, LLC v. Willowood, LLC.
On Friday May 4, 2018, NYIPLA filed an amicus curiae brief in support of neither party to address one patent law issue and one copyright issue in Syngenta Crop Protection, LLC v. Willowood, LLC., Fed. Cir. No. 18-1614 (on appeal from the U.S. District Court for the M.D. North Carolina, 1:15-cv-274, Catherine Eagles, J.), 2017 WL 1133378 (M.D.N.C. March 24, 2017).
The patent law issue concerns infringement under §271(g) based on importation of a pesticidal chemical compound and a U.S. patent on the process for making that compound. As recognized by the District Court, the §271(g) issue is a question of first impression with respect to application of the single entity rule, as set forth in BMC Resources, Inc. v. Paymentech, L.P., 496 F.3d 1373, 1380-81 (Fed. Cir. 2007), accepted by the U.S. Supreme Court in Limelight Networks, Inc. v. Akamai Techs. Inc., 134 S. Ct. 2111, 2119 (2015), and confirmed by this Court in Akamai Techs., Inc., v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (per curiam), applies to 35 U.S.C. §271(g). The District Court found that there were material issues of fact in dispute with respect to whether a “single entity” performed the patented process abroad, and denied plaintiff’s motion for summary judgement. NYIPLA argued that the District Court erred in its analysis because, for §271(g) to apply, although the product must have been made abroad by a “process patented in the United States,” the infringing acts covered by §271(g) are importation of that product. The entities involved in performing the process abroad do not have liability as infringers under §271(g) so the single entity rule does not apply to the carrying out of the process.
The copyright issue concerns whether the District Court properly granted summary judgment dismissing Syngenta’s claim that Willowood’s labeling infringed Syngenta’s copyright in its original labeling for the chemical compound, because the Federal Insecticide Fungicide and Rodenticide Act (FIFRA) precludes copyright protection. Willowood argued that because FIFRA mandates that the me-too applicant’s labeling be “identical or substantially similar” to that of the original registrant, FIFRA precludes suits by original registrants under the Copyright Act, which otherwise prohibits an unauthorized work that is identical or substantially similar to a copyrighted work.
NYIPLA argued that the District Court erred in its analysis because it failed to apply Pom Wonderful v. Coca-Cola, 134 S. Ct. 2228 (2014), which sets forth a method for resolving perceived conflicts between federal statutes. The Pom Wonderful case was not discussed by the parties nor by the District Court, and NYIPLA asserted that under that method for resolving such conflicts the FIFRA does not preclude the Copyright Act because they can coexist. The development of the jurisprudence under Pom Wonderful is of particular importance to NYIPLA members, given the potential for conflicts between any federal statute that mandates the creation of a work (i.e. labeling, RFPs, mandated disclosures, etc.), with the various intellectual property rights impinged upon by such works.
The brief was authored by Mel Garner, Marty Schwimmer, Rob Isackson and Lauren Emerson of LEASON ELLIS LLP, and Ksenia Takhistova of HUNTON ANDREWS KURTH LLP, with support from Nick Bartelt of the HANSEN IP INSTITUTE OF Fordham University Law School.