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Fipronil Litigation Update — April 2013

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Recent developments include MANA/CSI filing a contempt of court suit against BASF, which followed BASF's patent infringement lawsuit against MANA/CSI and Do It Yourself Pest Control.

| April 8, 2013

April 2010
BASF files two separate patent-infringement lawsuits against Cheminova A/S and Makhteshim Agan of North America (MANA), along with its U.S. subsidiary Control Solutions, Inc. (CSI), in U.S. District Court in North Carolina. BASF alleges infringement of its (1) process (manufacturing) and (2) method-of-use (application) patents.

October 2010
MANA agrees not to introduce any fipronil-related products that would infringe on BASF’s manufacturing “process” patents. At the time, BASF’s Jan Buberl calls it a “major milestone for defending our intellectual property.”

May 2011
Judge William L. Osteen, Jr. denies BASF’s request for a preliminary injunction, paving the way for the introduction of Taurus Termiticide/Insecticide from Control Solutions, Inc. In ruling on the motion, Judge Osteen interpreted a key term of the disputed patents, determining that the Exterior Perimeter/Localized Interior (EP/LI) treatment instructions featured in the master label for Taurus SC did not meet the limitations of the claim for the patents in question.

October 2011
Judge Osteen announces BASF and Cheminova had reached a settlement “in principle” on all matters relating to their litigation, with the court granting 60 days to conclude the settlement talks.

January 2012
Judge Osteen rules that MANA had not infringed on the BASF method-of-use patents, granting a summary judgment in the case. BASF announces plans to appeal the lower court’s ruling to the United States Circuit Court of Appeals for the Federal District in Washington, D.C.

April 2012
BASF files a motion for contempt, claiming MANA and CSI allegedly violated a court order restricting the company from producing fipronil-based termiticides using any manufacturing process other than that set forth in the original consent judgment.

May 2012
Makhteshim and Control Solutions, Inc. submit a preliminary response to the court as it relates to BASF’s motion for contempt, in addition to declarations by CSI Chief Operating Officer Howard Stoddard and Michael Grabarnick, chief chemist at Makhteshim Chemical Works. A Status Conference is held in mid-May so the court can hear from both parties “regarding the use of a Special Master and limited discovery.”

March 2013
On March 20, The U.S. Court of Appeals for the Federal Circuit in Washington, D.C., affirmed Osteen’s earlier ruling that Makhteshim Agan Group/Control Solutions’ Taurus SC does not infringe on two of BASF’s patents, commonly referred to as ‘010 and ‘743, aka the “perimeter use patents.”

Also on March 20, BASF files a patent infringement lawsuit against Makhteshim of North America (MANA), Control Solutions and Do It Yourself Pest Control in the U.S. District Court for the Northern District of Georgia. The patent at issue in this case is U.S. Patent 5,618,945, which is in regards to fipronil manufacturing process-related patents. Two days later, MANA and Control Solutions file a contempt of court suit against BASF with the U.S. District Court for the Middle District of North Carolina, claiming BASF violated Osteen’s October 2010 Consent Judgment.

 

Editor’s note: The pest control industry is closely monitoring fipronil litigation proceedings. Since these are ongoing developments, keep visiting www.pctonline.com for the latest updates. Significant recent developments include:

On March 22, Makhteshim Agan Group/Control Solutions (MANA)/Control Solutions Inc. (CSI) filed a contempt of court suit against BASF with the U.S. District Court for the Middle District of North Carolina, claiming BASF violated an Oct. 27, 2010, Consent Judgment as it relates to the longstanding fipronil patent infringement case between the parties. In a press release from MANA/CSI, the companies noted that “the repeat pattern of timing regarding BASF’s annual filings of complaints, new lawsuits and motions show possible intent for creating ongoing marketplace havoc for sales of Taurus SC.”

In that same release, Mark Boyd, president and CEO of CSI, stated, “Once again, BASF’s most recent filing comes at the onset of the U.S. termite control season — which is a critical period for CSI’s sales of Taurus SC to licensed pest control applicators. We believe that the timing of BASF’s latest complaint is notable – following [the March 20] Federal Circuit ruling affirming an earlier District Court decision that the Taurus SC products did not infringe patents directed toward methods of using Fipronil as a termiticide.”

In response, BASF Spokesperson Thomas Hill, stated, “BASF is confident it has acted appropriately. We are committed to protecting our intellectual property rights that are the backbone of our ability to offer innovative solutions to our customers. BASF is confident that our positions in the court will be upheld.”

The March 22 MANA/CSI contempt filing came two days after BASF filed a patent infringement lawsuit against Makhteshim of North America, Control Solutions and Do It Yourself Pest Control in the U.S. District Court for the Northern District of Georgia. The patent at issue in this case is U.S. Patent 5,618,945, which is in regards to fipronil manufacturing process-related patents. BASF says Makhteshim of North America, Control Solutions and Do It Yourself Pest Control are violating BASF patent rights in the manufacture and sale of fipronil-based termiticides/insecticides.

“BASF has identified certain chemical impurities in Taurus SC, the fipronil-based termiticide produced and marketed by Control Solutions, Inc. that clearly establish that the MANA/CSI product was manufactured using the process protected by the ’945 patent,” BASF said in a press release.

Jan Buberl, director of Specialty Products, BASF North American Crop Protection, added, “Intellectual property is the cornerstone of our innovation-based marketplace. Improper activity that undermines patent protection laws is unfair to those who act properly and lawfully.”

PERIMETER USE PATENTS. On March 20, the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., affirmed a ruling by U.S. District Judge William L. Osteen Jr. that said Makhteshim Agan Group/Control Solutions’ Taurus SC does not infringe on two of BASF’s patents, commonly referred to as ’010 and ’743, aka the “perimeter use patents.”

In the “perimeter use patents” case, the U.S. Court of Appeals ruling read, in part, “Because the district court correctly construed the claims of the patents, and because under the correct construction MANA’s accused product does not infringe, we affirm,” wrote Circuit Judges Reyna, Bryson and Wallach. This ruling was in regards to an appeal from the United States District Court for the Middle District of North Carolina in No. 10-CV-0276, Judge William L. Osteen, Jr.

“BASF has maintained longstanding allegations beginning in April 2010, of patent infringement against MANA and CSI in regards to the Taurus SC brand. Both in the district and the appeal cases throughout the last three years, MAI has been favored in the Court ruling which determined that they do not infringe the claims of any patent,” Makhteshim Agan Group (MAI) said in a press release.

“The Federal Circuit decision on March 20, 2013, finally puts to rest any question of whether the Taurus SC product infringes upon BASF or its patent holdings,” the press release continued.

“Throughout this case, MAI has maintained a corporate position and opinion that BASF’s claims have been without merit,” said Shaul Friedland, head of MAI’s Americas region. “MAI and CSI remained steadfast in their belief that the Court would deny the opposing side’s motions and appeals.”

Visit www.pctonline.com for the latest developments. — PCT staff

 

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Press releases from both parties

BASF press release

Makhteshim Agan Group/Control Solutions press release




 

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