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5 January 2022PatentsMuireann Bolger

Canada’s patent dispute over cherry tree plant moves to trial

The Canadian government will be able to pursue its allegations of plant patent infringement against two US fruit companies at trial, a federal court in Washington has determined.

The dispute arose in May 2020 when Canada’s Department of Agriculture and Agri-food (AAFC) sued Van Well Nursery, and Monson Fruit for planting “thousands” of trees that allegedly infringe US plant patent 20,551 on the “Staccato” cherry tree that is held by the Canadian government.

The US District Court for the Eastern District of Washington handed down its decision yesterday, January 4 denying the government’s motion to dismiss a monopoly counterclaim and the companies’ motion for summary judgment for invalidity of the patent.

Background

This case centres on the protection and enforcement of IP rights in a Canadian bred sweet cherry called Staccato, which matures its fruit crop significantly later than most other commercial cherry varieties. This extends the cherry harvest season and gives growers a distinct financial advantage, according to the complaint.

The filing alleged that Van Well and Monson have and are propagating, possessing, growing, and selling trees and/or fruit called “Glory,” which is actually the patented Staccato variety.

According to the Canadian government, Van Well came into possession of the variety, when under the protection of a testing agreement that expressly prohibited Van Well from distributing or selling the Staccato variety of trees.

But the government held that Van Well violated this agreement when it sold Staccato trees to a couple, Gordon and Sally Goodwin, who later applied for a new patent covering the plant variety, entitled “Glory” in 2012.

“However, the variety described and claimed in the ‘Glory’ patent was actually Staccato,” contended the complaint. Six years later in 2018, Van Well sold this variety to another company, Monson.

The complaint alleged eight causes of action: plant patent infringement; correction of inventorship; declaratory judgment; unfair competition and false designation of origin in violation of the Lanham Act; conversion; tortious interference with economic relations; and unfair competition.

The companies countered that the government had knowingly used an invalid patent to “control or attempt to control” the relevant market by limiting the number of acres planted and deterring entry into the market

Yesterday, the court ruled that “genuine disputes of material fact” preclude a judgment on patent invalidity.

“Of the disputed facts presented, a reasonable jury could find that AAFC patent is valid, for example, by finding that all growers had testing agreements executed on behalf of AAFC and that AAFC, pursuant to the contracts, retained ownership to the Staccato plant material,” the court stated.

But the court also held that the fruit companies had submitted a convincing argument under Section 2 of the Sherman Antitrust Act of 1890, and rejected the Canadian’s government's bid to dismiss the monopoly counterclaim

The court concluded: “Monson Fruit, Van Well, and the Goodwins stated a plausible claim under the theory of Walker Process fraud, and the alleged fraud was pleaded with sufficient particularity. Both motions are denied.”

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18 May 2016   Food brand The Quaker Oats Company has accused a group of Quakers of trademark infringement despite the fact that the group’s business, a Christmas tree farm, is called Quaker Oaks.
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