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17 March 2022PatentsAlex Baldwin

Split Fed Circ upholds fish food patent ruling

A split US Court of Appeals for the Federal Circuit has affirmed a lower court decision that US chemical company BASF is able to be sued for infringing an Australian government agency’s patents related to fish food.

In an opinion handed down on Tuesday, 15 March, the appellate court said that the company was liable for infringing the six patents but also ordered that the lower court reconsider its remedy.

It affirmed the jury’s verdict that five of the Commonwealth Scientific and Industrial Research Organisation’s (CSIRO) patents were not co-owned by BASF but reversed the contrary verdict for the sixth patent, holding that BASF infringed all asserted patents.

Circuit Judge Taranto said: “BASF has cited no case indicating that CSIRO’s evidence is not enough to support a jury verdict of an adequate written description.

It also remanded the damages levied at BASF for reconsideration, noting the need to include the sixth patent in the remedy. While the remedy is reconsidered, the Federal Circuit asked for the current remedy to remain in place.

Newman’s dissent

Capping off the two-to-one verdict was a dissenting opinion from Judge Newman, who disagreed with his peers’ decision to reverse the jury’s finding that the sixth patent was not co-owned by BASF.

While noting that the verdict as to the five other patents “appeared sustainable”, Newman claimed that a reasonable jury could have found that US patent 9,994,792, titled “Enzymes and methods for producing omega-3 fatty acids” could have been developed using genetic material and information provided by BASF in a prior collaboration with CSIRO.

As a result, Newman held: “The jury could reasonably find joint ownership, applying the law set forth in the agreed jury instructions”.

History

BASF Plant Science sued CSIRO Nuseed and Grains Research in the US District Court for the Eastern District of Virginia in 2017, asking the court to rule that they had infringed certain unrelated patents

In 2018 after BASF amended its complaint to drop Nuseed and Grains Research from the case, CSIRO filed counterclaims alleging that BASF had infringed six of its patents, and listed Cargill Inc as a counterclaim defendant.

BASF asserted as an infringement defence that it co-owned the asserted patents due to a 2008 contract it had signed with CSIRO. Cargill also sought to dismiss the counterclaims for lack of personal jurisdiction and improper venue.

Following trial, the district court jury rejected BASF’s invalidity challenge that the six patents lacked adequate written description. It also found that BASF was co-owner of one of the patents, but not the remaining five.

Both BASF and Cargill on one side, and CSIRO on the other appealed the jury’s verdicts to the US Court of Appeals for the Federal Circuit.

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