http://ipkitten.blogspot.com/2025/04/driscolls-strawberry-plant-patent.html
The long-running claim about infringement of Driscoll’s strawberry plant patents seems to have come to an end. Last month’s judgment from the US District Court for the Eastern D. California was unsealed on Monday, finding that Driscoll’s failed to provide enough evidence to continue their case against California Berry Cultivars, LLC.
Background
| Photo by Valeria Boltneva |
The broader dispute originated when prominent researcher Douglas Shaw left the University of California (UC Davis) to form his own private breeding business, California Berry Cultivars (CBC). Shaw and UC Davis settled in 2017 after a jury found that he took strawberry plants, including eleven patented varieties, from UC Davis without permission to use in CBC’s breeding programme.
This drew attention from the California-based Driscoll’s, the world’s largest berry company that holds many strawberry plant patents. The company initiated a claim in 2019 alleging that CBC had taken and used some of Driscoll’s varieties in its breeding programme without authorisation. However, Judge Nunley had repeatedly found issues with Driscoll’s pleadings. As this Kat reported last month, things weren’t looking good for Driscoll’s after the court denied its latest motion for leave to amend to allege additional facts to support its other claims.
By this point, the case focused on alleged infringement of three US plant patents: PP18,878 ‘DrisStrawTwo’ (also known as AMESTI™), PP22,247 ‘DrisStrawSixteen’ (also known as LUSA™) and PP23,400 ‘DrisStrawTwentySeven’ (also known as MARQUIS™). Driscoll’s alleged that Shaw had developed the breeding plans for CBC, which used Driscoll’s patented varieties as parent plants. Under these directions, personnel at Eurosemillas in Spain undertook the crosses and then shipped the harvested seeds back to Canada and the United States for germination and planting.
Strawberry Plant Breeding
The decision turned on the nature of strawberry breeding. Strawberry plants are capable of both asexual and sexual reproduction. The former means that strawberry plants are eligible for protection under the US Plant Patent Act of 1930, while the latter is important for cross-breeding to produce new varieties.
To make a cross, breeders use genetic material from two “parent” plants. The plant that contributes pollen is called the “male” parent, while the plant that is fertilised and produces the seed is called the “female” parent. But don’t be misled by these shorthand references: most strawberry plants produce flowers with both male and female parts (also known as “bisexual” or “perfect” flowers). Therefore, it was equally possible to use each patented variety as a male or female parent in a cross.
Plant Patent Infringement
In addition to the general provisions on patent infringement in 35 USC § 271, the Plant Patent Act provides in 35 USC § 163 that:
In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.
Driscoll’s alleged that there were two types of infringing conduct in this case. First, the cross-breeding with the patented varieties that took place in Spain, and second, the importation of the seeds into the US that had been grown on patented plants in Spain. On the first point, Judge Nunley confirmed that the Plant Patent Act only applies to domestic conduct. None of the case law cited by Driscoll’s appeared to support the argument for extraterritorial liability for plant patent infringement. Consequently, the induced infringement claim also failed.
On the second point, Driscoll’s theory of infringement seemed to be that a seed that grows on an asexually reproduced patented plant would constitute “part” of a plant for the purposes of the Plant Patent Act. Therefore, the issue turned on whether Driscoll’s could provide evidence that the female parent of the imported seeds was one of the patented varieties.
However, CBC’s breeding plans from 2015 and 2016 did not specify which variety was to be the female and male parent for each cross, nor was there evidence of how Eurosemillas executed the crosses. Therefore, Driscoll’s failed to meet its evidential burden to support a summary judgment. Its arguments rested on speculation or guesswork about the parentage of the imported seeds. Judge Nunley found that “The mere existence of progeny of Patented Plants in Defendants’ fields in 2019 does not support even an inference that Defendants imported and used seeds that were grown on a Patented Plant, as opposed to the other variety in any given cross.”
Final Thoughts
Plants move around a lot during breeding and commercialisation activities, so territoriality can easily become a serious problem for plant variety protection. For example, as Katfriend Doug Calhoun has discussed in the IPKat, the New Zealand courts previously engaged with tricky questions about liability for infringement of kiwifruit plant variety rights based on activity in China.
While the outcome may be frustrating for Driscoll’s, this case highlights important principles about the territoriality of IP rights and the importance of civil procedure. The scope of protection for plant varieties can vary significantly depending on the jurisdiction, and indeed, the type of IP right. For example, the Plant Patent Act only protects against imports, whilst both importing and exporting the variety from the US would constitute infringement under the Plant Variety Protection Act of 1970. With these different overlapping systems in the United States, plant IP can create thorny challenges that require complex legal and commercial strategies to protect the various interests of breeders, growers, and consumers.
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