Chapter §24.04 Enforcement of Plant Patents

• Jurisdiction: United States

§24.04 Enforcement of Plant Patents

The term of a plant patent is the same as that for a utility patent.⁹² In other words, a plant patent (assuming its application was filed on or after June 8, 1995) will expire twenty years after its earliest effective U.S. filing date.⁹³

The scope of exclusionary rights afforded by a plant patent is quite narrow.⁹⁴ In the leading case, Imazio Nursery v. Dania Greenhouses,⁹⁵ the Federal Circuit interpreted the Plant Patent Act to conclude that "the scope of a plant patent is the asexual progeny of the patented plant variety."⁹⁶ In other words, to establish infringement of its plant patent, a patentee must establish that a defendant's allegedly infringing plant is the asexually reproduced progeny of the patented plant.⁹⁷ An independently developed plant, even if genetically identical to the patented plant, does not infringe.⁹⁸ In this regard, the exclusionary scope of a plant patent is relatively much more narrow than that of a utility patent.

Plaintiff Bruno Imazio, the owner of Imazio Nursery, discovered a heather plant, which he named "Erica Sunset," as a seedling growing in a cultivated field of the variety Erica persoluta (believed to be the seed parent variety). Imazio contended that Erica Sunset was distinct due to its early blooming and ability to reach full bloom more than one month before its parent plant bloomed. Accordingly, Imazio's U.S. Plant Patent No. 5,336 ('336 patent) claimed:

A new variety of Heather persoluta, substantially as herein shown and described, particularly characterized by its profuse production of blooms over the entire length of the stem beginning in early December. ⁹⁹

In 1992, Imazio sued Coastal Nursery in the Northern District of California for infringement of the '336 patent based on Coastal's sales of its "Holiday Heather" plant. Like "Erica Sunset," "Holiday Heather" also bloomed in the winter months.¹⁰⁰ Imazio sought summary judgment in its favor.

After reviewing the testimony of expert witnesses for both parties, the district court found that " 'undisputed evidence . . . shows that the patented Erica Sunset heather and the Holiday Heather are the same plants both morphologically (internal and external characteristics) and phenologically (blooming cycle).' "¹⁰¹ In the district court's view, this evidence meant that Imazio had successfully demonstrated that "the Holiday Heather is an asexual reproduction of the Erica Sunset." On this basis, the district court granted Imazio's motion for summary judgment of infringement. A jury thereafter found the '336 patent not invalid and willfully infringed.

On appeal, the Federal Circuit disagreed with the district court that 35 U.S.C. §163, which grants plant patentees the right to exclude others from, inter alia, asexually reproducing, selling, or using the patented plant, could be triggered by the sale of an alleged infringing plant merely having "the same essential characteristics as the patented plant."¹⁰² Having extensively considered the scope of the phrase "asexually reproduced" in connection with determining the meaning of "variety" in 35 U.S.C. §161,¹⁰³ the Federal Circuit in Imazio Nursery concluded that it had to construe "asexual reproduction" in the same limited way. The appellate court accordingly held that "for purposes of plant patent infringement, the patentee must prove that the alleged infringing plant is an asexual reproduction, that is, that it is the progeny of the patented plant."¹⁰⁴ Merely showing that two plants had the same essential characteristics was not enough to establish plant patent infringement.

The Federal Circuit's holding also meant that the district court had erred in refusing to allow accused infringer Coastal to raise a defense of independent creation.¹⁰⁵ The appellate court explained:

The statute requires asexual reproduction of the patented plant for there to be infringement. It is necessarily a defense to plant patent infringement that the alleged infringing plant is not an asexual reproduction of the patented plant. Part of this proof could be,

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