BASF Loses Pesticide Patent Appeal Due to Prosecution Disclaimer Doctrine

BASF v. Makhteshim Agan By David LeRay – Edited by Ashish Bakshi BASF Agro B.V., Arnhem (NL), Wadenswil Branch v. Makhteshim Agan of North America, Inc., No. 2012-1206 (Fed. Cir. Mar. 20, 2013) Slip opinion [caption id="attachment_3156" align="alignleft" width="150"] Photo By: Aleksey Gnilenkov - CC BY 2.0[/caption] BASF Agro B.V. (“BASF”), the world’s largest chemical manufacturer, suffered a setback in its patent litigation against Makhteshim Agan of North America (“Makhteshim”), the world’s largest generic agrochemical maker.The Court of Appeals for the Federal Circuit affirmed the Middle District of North Carolina’s grant of summary judgment of non-infringement for the defendants. The suit focuses on patents covering BASF’s termite-killing pesticide, Termidor, which is the United States’ top-selling pesticide. BASF commenced litigation in 2010 after Makhteshim began selling a competing product, Taurus SC. The Federal Circuit affirmed the lower court’s claim construction, which was largely based on the doctrine of prosecution disclaimer, as applied to BASF’s actions during patent prosecution. Under that claim construction, the issue of non-infringement was easily decided as a matter of law; thus, summary judgment of non-infringement for the defendants was appropriate. Specifically, the court found that BASF had disclaimed so-called “barrier” techniques of pesticide application—which aim to surround buildings with a complete polygon of pesticide—in favor of deploying pesticide at discrete locations around the building boundary. Since Makhteshim’s products use the polygonal barrier method, they did not infringe BASF’s patents. Bloomberg gives a brief overview of the case and discusses the relevant pesticides. Croplife provides commentary from business leaders on both sides of the case. BASF obtained patents 6,414,010 and 6,835,743, filed on Jul 19, 1999 and May 13, 2002, respectively. The ’743 Patent is a divisional of the same application that matured into the ’010 Patent. While prosecuting the ‘743 and ‘010 patents, BASF distinguished its claims based on prior art patents having been “designed to provide a ‘barrier’ around the building to be protected” rather than forming both “treated and untreated locations.” BASF Agro B.V., slip op. at 7. BASF had submitted a declaration from a pesticide expert describing the BASF patent as an “unobvious and surprising process” because “insecticide is applied to discrete locations along the perimeter of the structure to form treated and untreated locations along the perimeter.” Id. at 9. Since BASF had distinguished its invention from the prior art, it narrowed the scope of its claims, as the “statements indicate a clear disavowal of subject matter.” Id. at 13. The court rebuffed BASF’s attempt to introduce extrinsic evidence in support of an alternative claim construction, because under Markman, the “extrinsic evidence cannot vary the terms of the claims or otherwise contradict the intrinsic record,” including the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 981 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). The case reaffirms the doctrine of prosecution disclaimer, which prevents a patentee plaintiff from obtaining a claim construction that includes methods or designs that were specifically disclaimed during the patent prosecution. The doctrine is sometimes confused with prosecution history estoppel. However, the former applies to claim construction, whereas the latter applies to doctrine of equivalents infringement analysis. The policy behind prosecution disclaimer is that “the public has a right to rely on representations a patentee has made in the course of obtaining her patent.” BASF Agro B.V., slip op. at 13. David LeRay is a 3L at Harvard Law School.