Corteva’s federal lawsuit against Inari is heading into the discovery phase with the Delaware district court’s denial of Inari’s motion to dismiss the case. As we’ve reported previously, this case raises some fascinating (geeked-out) issues regarding the overlapping intellectual property protection available for plants, particularly patents and Plant Variety Protection (PVP). The court’s ruling was quick to hone in on the unanswered question at the heart of the lawsuit:
We want inventors to share their ideas with the world rather than keep them secret. So in exchange for limited exclusivity, inventors teach us how the trick was done. Competitors get the benefit of that knowledge. And they may make improvements, and even be rewarded with their own patents on those improvements. But the competitor does not get free license to use the original invention however it wishes. That’s Patent Law 101, and easy enough to understand when everything is on paper. What happens when the original disclosure of the invention was not just words or drawings on a page, but also a plant seed stored in a public depository in the United States?
In a nutshell, Corteva deposited corn seed to obtain a patent, Inari obtained that seed through public channels and then made improvements to the seed through gene-editing. As it turns out, Corteva’s seed deposits were also protected by PVP Certificates. For its gene-editing efforts, Inari was awarded its own patents on the improved seed.
A key area of contention is whether PVP-protected seed which is deposited to obtain a patent loses its PVP protections – as the court stated: “We agree that Inari has identified a tension in the way that the Patent Act and the PVPA overlap.” The court acknowledged that just because intellectual property protections overlap does not mean one will cancel the other out.
Other notable issues addressed by the court, but which remain unanswered for the time being:
- Does phytosanitary testing of seed consitute a “use” of the seed? If so, then such testing may be an infringement of the patent protecting the seed. On this point, the court indicated that phytosanitary testing “could” be a “use” of the seed but also noted that “there is nothing definitive in the record about what exactly phytosanitary testing entails.”
- Is seed a component of a plant? As Corteva argues, plants are multi-component inventions, and seed is one of the components. If this is true, then exporting seed outside the U.S. to be grown into a plant would also constitute patent infringement. Here the court simply indicated that it could not hold that seed is not a component of a plant.
At this point in the case, Corteva has alleged enough facts to proceed with its lawsuit, and the law is not sufficiently established that it can provide clear answers to the issues. Thus, the parties will engage in discovery to further develop facts and evidence to support their respective arguments. Regardless of how the district court ultimately answers the questions, we think it is virtually certain this case will be appealed to the Federal Circuit, the appellate court that decides patent matters. Stay tuned.
