BASF PLANT SCIENCE, LP v. COMMONWEALTH SCIENTIFIC

Commonwealth Scientific and Industrial Research Organization (CSIRO), a research arm of the Australian government, owns six U.S. patents relating to the engineering of plants, particularly canola, to produce specified oils not native to the plants. In 2017, BASF sued CSIRO seeking a declaratory judgment and CSIRO filed counterclaims asserting infringement and adding Cargill as a counterclaim defendant. BASF asserted, as an infringement defense, that it co-owned the asserted patents by virtue of a 2008 contract between it and CSIRO. Cargill’s objections for lack of personal jurisdiction and improper venue were denied. The case proceeded to trial and the parties stipulated to infringement of five of the patents, and the jury found infringement of the sixth. The jury also rejected the invalidity challenges, including the challenge that the claims lacked adequate written-description support. As to the co-ownership defense to infringement, the jury found that BASF co-owned only one of the patents, (precluding infringement of that patent) but not the other patents. The district court ruled that the evidence would not support a finding of willfulness. After a bench trial concerning remedies, the district court denied a conduct-stopping injunction but granted an ongoing royalty. Various appeals were taken. The CAFC: 1) affirms the determination that venue as to Cargill was proper; 2) regarding the jury’s verdict rejecting the written-description challenge, affirms as to claims limited to canola plants, but reverse as to the broader genus claims; 3) affirms the jury’s verdict that five patents were not co-owned by BASF but reverse the contrary verdict as to the sixth; and 4) on the remedy issues, affirms the district court’s refusal to submit willfulness to the jury. The CAFC remands for reconsideration of the remedy, while leaving the current remedy in place pending such reconsideration.  Judge Newman dissents with respect to the reversal of the jury’s verdict that BASF and CSIRO are joint owners of one of the six patents because in her view, the Agreement’s criteria for joint ownership set forth in the 2008 contract between parties are met by evidence that was not disputed.

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