§ 271(a) and (b) “Single Actor” Requirement Not Present for § 271(g) Bar on Sale of Products Made by Patented Process
Syngenta Crop Protection, LLC v. Willowood, LLC, __ F.3d __, 2019 WL ___ (Fed. Cir. Dec. 18, 2019) (REYNA, Taranto, Stoll) (M.D.N.C.: Eagles) (3 of 5 stars)
Fed Cir part-affirms, part-reverses, part-vacates judgment of no liability. Syngenta’s four patents relate generally to agricultural fungicides, and to Syngenta’s QUADRIS and QUILT XCEL products. Its copyrights relate to the QUADRIS and QUILT XCEL labels.
Copyright: The district court erred by entering summary judgment of no infringement on Syngenta’s copyright claims. The opinion reasons that while the Federal Insecticide, Fungicide, and Rodenticide Act (“FIFRA”) contemplates expedited EPA review for generic pesticides having labels “identical or substantially similar” in labeling to registered products (7 U.S.C. § 136a(c)(3)(B)(i)(I)), this does not necessarily require identical labeling for those seeking expedited review, only labeling whose differences would not increase risk. See Op. at 18. SmithKline, 211 F.3d 21 (2d Cir. 2000), is thus distinguishable because the statute there (Hatch-Waxman) expressly required the same labeling. The opinion acknowledges that, in application, EPA sometimes puts a generic applicant in a position where copying of the label is effectively required, but reasons that such circumstances could be considered under the fair use doctrine. The summary judgment is vacated. “On remand, the district court should first discern whether the Copyright Act . . . would prohibit Willowood’s use of any portion of Syngenta’s label.” Op. at 21.
Patent (§ 271(g)): The district court also erred by entering summary judgment of no infringement for one Syngenta patent and one defendant. As to that judgment, this district court erred in its interpretation of § 271(g). The opinion holds that unlike § 271(a) or § 271(b), for § 271(g) in the context of method patents there is no requirement that the method have been practiced by a single actor. What matters for § 271(g) are the importation/sale of a product made by a U.S.-patented process, not the details of who practiced the relevant patent. Thus liability is for the importer/seller under § 271(g), not necessarily the maker. Neither Akamai, 797 F.3d 1020 (Fed. Cir. 2015), nor Limelight, 572 U.S. 915 (2014), are contradictory because they address different proscribed acts (under §§ 271(a) and (b)). The summary judgment is vacated.
Patent (jury verdict of no liability for certain patents): The jury’s verdict of no infringement for three of Syngenta’s patents was supported by substantial evidence.
Cross-appeal: Willowood’s cross-appeal was conditional on reversal of the jury verdict, and is thus moot.
KEYWORDS: SECTION 271(G); DIVIDED INFRINGEMENT; METHOD CLAIMS; COPYRIGHT; INFRINGEMENT (NO); SUMMARY JUDGMENT