Appeals from the United States District Court for the Middle
District of North Carolina in No. 1:15-cv-00274-CCE-JEP,
Judge Catherine C. Eagles.
Russell Evan Levine, Kirkland & Ellis LLP, Chicago, IL,
argued for plaintiff-appellant. Also represented by Hari
Santhanam, Meredith Zinanni.
Edward Tiller, Whiteford, Taylor & Preston LLP,
Baltimore, MD, argued for defendants-cross-appellants. Also
represented by Peter James Davis; Barry S. Neuman,
Washington, DC; Alan Duncan, Leslie Cooper Harrell, Mullins
Duncan Harrell & Russell PLLC, Greensboro, NC.
Barbero, Appellate Staff, Civil Division, United States
Department of Justice, Washington, DC, argued for amicus
curiae United States. Also represented by Mark R. Freeman,
Joseph H. Hunt; Matthew G.T. Martin, The United States
Attorney's Office, Middle District of North Carolina,
United States Department of Justice, Greensboro, NC.
C. Garner, Leason Ellis LLP, White Plains, NY, for amicus
curiae New York Intellectual Property Law Association. Also
represented by Lauren Beth Emerson, Robert M. Isackson,
Peter Rathvon, Paley Rothman, Bethesda, MD, for amici curiae
Aceto Agricultural Chemicals Corp., Aceto Corporation,
AgLogic Chemical, LLC, Agro-Gor Corp., Albaugh, LLC, Argite,
LLC, Atticus, LLC, Axss Technical Holdings, LLC, Chemstarr,
LLC, Consus Chemicals, Inc., Decco U.S. Post-Harvest, Inc.,
Drexel Chemical Company, Ensystex, Inc., Ensystex II, Inc.,
Ensystex III, Inc., Ensystex IV, Inc., Extremis, LLC,
GeneraTec, LLC, Gharda Chemicals International, Inc., Helm
Agro US, Inc., LG Chem, Ltd., MEY Corporation, PBI Gordon
Corp., Promika, LLC, Raymat Crop Science, Inc., Raymat
Materials, Inc., RedEagle International, LLC, RiceCo, LLC,
Ro-tam Agrochemical Company, Ltd., Rotam Ltd., Rotam North
America Inc., Sharda CropChem Ltd., Sharda USA, LLC, Summit
Agro US, LLC, Summit Agro North America Holding Corporation,
Tacoma AG, LLC, Tide International USA, Inc., Troy
Corporation, United Phosphorus, Inc., UPL Delaware Inc.,
Jeffrey Paul Kushan, Sidley Austin LLP, for amici curiae
Biotechnology Innovation Organization, CropLife
International. Also represented by Kathi A. Cover, iBiq-uity
Digital Corporation, Columbia, MD.
Reyna, Taranto, and Stoll, Circuit Judges.
Crop Protection, LLC, sued Willowood, LLC, Willowood USA,
LLC, Willowood Azoxystrobin, LLC, and Willowood Limited in
the U.S. District Court for the Middle District of North
Carolina for copyright infringement and patent infringement,
asserting four patents directed to a fungicide compound and
its manufacturing processes. Prior to trial, the district
court dismissed the copyright infringement claims,
determining them to be precluded by the Federal Insecticide
Fungicide and Rodenticide Act. The district court
granted-in-part and denied-in-part Syngenta Crop Protection,
LLC's summary judgment motion with respect to patent
infringement. The district court also denied-in-part the
defendants' motion to exclude expert testimony on
jury trial, the district court entered judgment in favor of
Willowood Limited on all patent infringement claims; in favor
of all defendants on infringement of one patent at issue; and
against Willowood, LLC, and Willowood USA, LLC, on
infringement of the remaining three patents. The district
court denied Syngenta Crop Protection, LLC's motions for
judgment as a matter of law. Syngenta Crop Protection, LLC,
appeals the district court's denials of its motions for
judgment as a matter of law and its final judgment.
Defendants conditionally cross-appeal the district
court's partial denial of their motion to exclude expert
testimony on damages. For the reasons explained below, we
affirm-in-part, reverse-in-part, vacate-in-part, and remand
for further proceedings consistent with this opinion.
Crop Protection, LLC, ("Syngenta") is the assignee
of U.S. Patent Nos. 5, 602, 076 ("the '076
patent"), 5, 633, 256 ("the '256 patent"),
5, 847, 138 ("the '138 patent"), and 8, 124,
761 ("the '761 patent"). The '076 patent is
entitled "Certain Fungicides, Pesticides and Plant
Growth Regulants." The '256 patent is entitled
"Certain Pyrimidinyloxy-phenyl Acrylates, Derivatives
Thereof and Their Fungicidal Use." The '076 and
'256 patents (collectively, "the Compound
Patents") expired on February 11, 2014. The Compound
Patents are directed to a group of chemical compounds,
including azoxystrobin, a fungicide commonly used in
agriculture to control fungal growth on crops. J.A. 7;
Appellant's Br. 9.
'138 patent is entitled "Chemical Process" and
expired on December 8, 2015. The '138 patent is directed
to a two-step process for manufacturing azoxystrobin that
includes an etherification step followed by a condensation
step. Appellant's Br. 12; J.A. 6672. The etherification
step produces an intermediate compound that is then used in
the condensation step to produce azoxystrobin. J.A. 6672.
'761 patent is entitled "Processes for the
Preparation of Azoxystrobin Using DABCO as a Catalyst and
Novel Intermediates Used in the Processes" and does not
expire until April 15, 2029. The '761 patent is directed
to a process of using the chemical catalyst 1,
4-diazabicyclo[2.2.2]octane ("DABCO") during the
condensation step to manufacture azoxystrobin. '761
patent col. 1 ll. 20-25; J.A. 6682-83. Each claim of the
'761 patent requires at least "the presence of
between 0.1 and 2 mol % of [DABCO]." '761 patent
col. 20 ll. 1-2, 25-26.
uses azoxystrobin as an active ingredient in formulating its
fungicide end-use products. Appellant's Br. 7. Syngenta
markets and sells these end-use products under several brand
names, including QUADRIS® and QUILT
XCEL®. Id. Both products are sold
with detailed labels that provide directions for use,
storage, and disposal, as well as first-aid instructions and
environmental, physical, and chemical hazard warnings.
Id. at 19. The QUADRIS® label
comprises fifty-four pages of small-type text and charts.
J.A. 276; 424-77. The QUILT XCEL® label
comprises twenty-nine pages of small-type text and charts.
J.A. 276; 481-509. Syngenta registered these two labels with
the U.S. Copyright Office on March 25, 2015. Appellant's
Br. 19; J.A. 276-77, 479.
District Court Proceedings
March 27, 2015, Syngenta brought suit against Willowood, LLC
("Willowood LLC"), Willowood USA, LLC
("Willowood USA"), and Willowood Limited
("Willowood China") (collectively,
"Willowood") for patent and copyright infringement.
Willowood China is a Hong Kong company that contracts for the
manufacture of azoxystrobin in China and sells the fungicide
to Willowood USA, its Oregon-based affiliate. Willowood USA
and Willowood LLC contract with third parties to formulate
azoxystrobin into Willowood's generic end-use fungicide
products, and market and sell azoxystrobin and those end-use
products in the United States. Shortly before the expiration
of the Compound Patents, Willowood filed applications with
the Environmental Protection Agency ("EPA") to
register its Azoxy 2SC and AzoxyProp Xtra generic products,
which correspond in composition and labeling to
Syngenta's QUADRIS® and QUILT
XCEL® fungicides, respectively. J.A. 278, 714;
Appellant's Br. 19.
asserted in its suit that Willowood's Azoxy 2SC and
AzoxyProp Xtra products infringed claims 1-4 and 12-14 of the
'076 patent, claims 1-3, 5, and 7 of the '256 patent,
claims 6 and 12-14 of the '138 patent, and claims 1, 3-5,
and 9-10 of the '761 patent. J.A. 1617-1619, 1627.
Syngenta also asserted that Willowood infringed
Syngenta's registered copyrights in its
QUADRIS®and QUILT XCEL® labels
by copying those labels for Willowood's Azoxy 2SC and
AzoxyProp Xtra product labels. J.A. 289-91.
October 31, 2016, both parties filed motions for summary
judgment. Syngenta moved for summary judgment that all
asserted claims of the four patents were infringed by
Willowood. Willowood cross-moved for summary judgment,
seeking dismissal of Syngenta's copyright claims and its
claim of infringement of the '761 patent.
Patent Infringement Claims
district court granted summary judgment against Willowood USA
for direct infringement of the Compound Patents on the basis
of Willowood's concession that Wil-lowood USA imported
five kilograms of azoxystrobin into the United States in
2013, prior to the Compound Patents' expiration.
Syngenta Crop Prot., LLC v. Willowood, LLC, No.
1:15-CV-274, 2017 WL 1133378, at *2 (M.D. N.C. Mar. 24, 2017)
("Summary Judgment Order"); see
also J.A. 1617-18. The district court also granted
summary judgment against Willowood LLC for induced
infringement of the Compound Patents on the basis of
Willowood's concession that Willowood LLC contributed to
and induced the formulation and testing of Willowood's
Azoxy 2SC and AzoxyProp Xtra products by third parties using
the same imported five kilograms of azoxystrobin. Summary
Judgment Order, 2017 WL 1133378, at *2-3; see
also J.A. 1618. The district court, however, denied
summary judgment against Willowood China for direct
infringement of the Compound Patents. Summary Judgment
Order, 2017 WL 1133378, at *2. The district court found
a genuine dispute of material fact as to whether Willowood
China's sale of five kilograms of azoxystrobin to
Willowood USA took place in China or within the United States
as required under 35 U.S.C. § 271(a). Id.
district court next denied summary judgment as to
infringement of the '138 patent. Id. at *5. The
district court found that it was undisputed that Willowood
China purchases azoxystrobin from its Chinese supplier,
Yang-cheng Tai He Chemicals Corp. ("Tai He"), and
sells it to Willowood USA, which then imports the
azoxystrobin into the United States. Id. at *4;
see also J.A. 1619. The district court found that it
was also undisputed that the azoxystrobin in question was
manufactured in China by performing both steps of the process
claimed in the '138 patent. Summary Judgment
Order, 2017 WL 1133378, at *4. Relying on our decision
in Akamai Technologies., Inc. v. Limelight Networks,
Inc., the district court determined that 35 U.S.C.
§ 271(g) requires that all steps of a claimed process be
performed by or attributable to a single entity. Id.
at *5 (citing 797 F.3d 1020, 1022 (Fed. Cir. 2015)). On this
basis, the district court found a genuine dispute of material
fact as to whether Tai He performed both steps of the process
claimed by the '138 patent during its manufacture of
azoxystrobin or whether Willowood directed Tai He and others
to practice the claimed process. Id. at *4-5.
respect to the '761 patent, both parties agreed that the
issue of infringement turned on whether the azoxystrobin that
Willowood China purchases and Willowood USA imports was
manufactured using DABCO at concentrations within the claimed
range of 0.1 and 2 mol %. Summary Judgment Order,
2017 WL 1133378, at *6; J.A. 1627. The district court denied
summary judgment on this issue, finding a genuine dispute of
material fact as to whether Willowood's suppliers used
DABCO within the claimed range in the manufacturing process.
See Summary Judgment Order, 2017 WL 1133378, at *7.
district court next granted Syngenta's motion to shift
the burden of proof to Willowood under 35 U.S.C. § 295
on the claim of infringement of the '761 patent. The
district court found that Syngenta demonstrated a substantial
likelihood of infringement, rejecting Willowood's
argument that neither Tai He nor any of its intermediaries
manufacture azoxystrobin using DABCO within the claimed
range. Id. at *7-8. The district court credited the
testimony of Syngenta's expert, who testified that it
would not be commercially reasonable to manufacture
azoxystrobin using DABCO outside the claimed range.
Id. at *8. The district court noted that
Willowood's expert did not rebut this testimony, and
Willowood's only rebuttal witness, the president of Tai
He, had "credibility issues." Id. The
district court also determined that Willowood did not produce
any manufacturing records demonstrating that DABCO was not
used or describing what process was used instead.
Id. at *8, *10. The district court further found
that Syngenta made reasonable efforts to discover Tai
He's actual manufacturing process, but was unsuccessful
because of Willowood's failure to cooperate. Id.
at *9- 10. Finding both elements of § 295 satisfied, the
district court shifted the burden to Willowood to prove
non-infringement of the '761 patent. Id. at *11.
Copyright Infringement Claims
cross-motion for summary judgment, Willowood argued that
Syngenta's copyright claims should be dismissed because
the Federal Insecticide, Fungicide, and Rodenticide Act
("FIFRA") precludes copyright protection for
Syngenta's labels. J.A. 730-37. Willowood asserted that
FIFRA requires generic fungicide products to have labels that
are "identical or substantially similar" to
brand-name labels. J.A. 730-31. Willowood further contended
that because much of its labels' text comprises
instructions and warnings mandated by FIFRA and EPA
regulations, and only limited means of expressing such
information exist, extending copyright protection to
Syngenta's labels "would make subsequent labeling
practically impossible." J.A. 731 & n.14, 733-35
(citing SmithKline Beecham Consumer Healthcare,
L.P. v. Watson Pharm. Inc., 211 F.3d 21, 23 (2d Cir.
also argued that any language that is not required by the EPA
is nonetheless uncopyrightable because it is so
"basic" and "commonplace in the
industry," that it merges with the ideas the language is
meant to convey. J.A. 732. In the alternative, Willowood
argued that its use of some of the ...