Federal Circuit Upholds PTAB Unpatentability Ruling Against Fungicide Combination Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Syngenta Crop Protection AG v. UPL Ltd., affirming a Patent Trial and Appeal Board (PTAB) final written decision that held all challenged claims of a fungicide combination patent unpatentable. The CAFC rejected arguments from UPL Ltd. and affirmed the PTAB’s denial of leave for Syngenta Crop Protection AG to seek sanctions.

UPL owns U.S. Patent No. 11,445,727, which relates to fungicidal combinations of a dithiocarbamate fungicide, a succinate dehydrogenase inhibitor (SDHI) fungicide, and at least one ergosterol biosynthesis inhibitor (EBI) or quinone outside inhibitor (QOI) fungicide. Claim 1 recites a combination consisting of benzovindiflupyr, mancozeb, and at least one additional fungicide from listed EBIs and QOIs, while claim 2 requires one from each group.

Syngenta petitioned for post-grant review (PGR) in January 2023, asserting anticipation by Godoy, anticipation by U.S. Patent No. 9,314,022 (Tobler), and obviousness over WO Application Publication No. 2015/079334 (De Oliveira) in view of Wiglesworth, Godoy, or Tobler. In a July 26, 2024, final written decision, the PTAB construed “combination” and “composition” to include sequential application of component fungicides. It held claims 1, 3 through 5, 7, 9, and 10 anticipated by Godoy, claims 1 and 3 through 10 anticipated by Tobler, and claim 2 obvious. UPL appealed, and the CAFC exercised jurisdiction under 28 U.S.C. Section 1295(a)(4)(A) and 35 U.S.C. Sections 141(c) and 329.

UPL argued that the petition lacked required claim construction statements and explanations of how the references disclose the “consisting of,” “combination,” and “composition” limitations. The CAFC found no abuse of discretion in the PTAB’s conclusion that no prejudicial pleading defect existed. The CAFC explained that since UPL first proposed constructions in its responses, Syngenta was entitled to elaborate in its reply on the petition’s tables identifying where each reference taught each limitation.

The CAFC agreed with the PTAB that “combination” and “composition” share the same meaning, which allows sequential application. A specification passage uses the terms interchangeably and states that the composition may be applied simultaneously as a tank mix or sequentially. The CAFC explained that the passage “plainly contemplates sequential application.”

UPL and Syngenta had agreed before the PTAB that “consisting of” means the combinations include the recited fungicides and “no other fungicides.” UPL argued that a reference cannot meet that limitation unless it excludes additional components, but the CAFC noted that UPL cited no authority for that requirement and that what a reference discloses is a factual matter. UPL contended that “Nimbus,” listed in Godoy’s treatments, was an additional fungicide. Substantial evidence supported the PTAB’s finding that Nimbus was not a fungicide in Godoy, including its absence from the active ingredient column and evidence that it was a mineral-oil adjuvant in Brazil. UPL’s contrary evidence concerned use on bananas, peach scabs, and pelargonium rust rather than soybeans. The CAFC affirmed the anticipation holding for claims 1, 3 through 5, 7, 9, and 10.

UPL argued that Tobler presents more than 30,000 potential three-ingredient combinations, but a reference can anticipate even if it discloses alternatives, the CAFC explained. Tobler enumerates benzovindiflupyr plus a compound from a group of 250 named compounds plus mancozeb, and the PTAB found that 47 of those compounds appear in the lists in claim 1. The CAFC distinguished Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., where the reference lacked an express disclosure of the required compound, and stated that Tobler “expressly discloses the claimed combination by explicit recitations.” The CAFC affirmed the anticipation holding as to claims 1 and 3 through 10.

For claim 2, De Oliveira discloses four combinations of mancozeb with an EBI and a QOI from the claim, so Syngenta’s challenge required adding benzovindiflupyr. The PTAB found a motivation to combine based on Wiglesworth’s report of high efficacy against soybean rust, Tobler’s description of synergy between benzovindiflupyr and each of azoxystrobin and cyproconazole, and Godoy’s report of improved disease control. UPL argued that De Oliveira already names other SDHIs, but the CAFC found “there is no basis for any suggestion of a teaching away from benzovindiflupyr as an available alternative to the SDHIs mentioned by De Oliveira” and thus affirmed the obviousness holding for claim 2.

Syngenta’s cross-appeal challenged the PTAB’s July 30, 2024, denial of leave to file a sanctions motion alleging that field trials reported in the ‘727 patent never occurred. UPL had notified the PTAB in January 2024 that it was withdrawing reliance on the field-trial data. The CAFC concluded that Syngenta has Article III standing based on the denied opportunity to seek recovery of its litigation expenses. The CAFC applied the safe-harbor provision of 37 C.F.R. Section 42.11(d)(2), under which a sanctions motion “must not be filed or be presented to the Board” when the challenged position is withdrawn or appropriately corrected, and found no abuse of discretion since the PTAB could reasonably find that UPL had withdrawn the position.

Syngenta pointed to Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics LLC, in which the Director of the United States Patent and Trademark Office (USPTO) referred to a good faith effort to comply with the safe harbor. That decision provides no basis to overturn the PTAB, the CAFC explained, since it does not add a good-faith requirement that would exclude an express and definitive withdrawal.

Ultimately, Circuit Judge Taranto, writing for the court, and joined by Circuit Judges Hughes and Cunningham, affirmed the PTAB’s final written decision holding the challenged claims of the ‘727 patent unpatentable and its denial of leave to file the sanctions motion.