Bayer Wins Injunction Banning Syngenta's Fungicide

A North Carolina federal judge imposed a preliminary injunction barring Syngenta Crop Protection LLC from selling a fungicide targeted by a Bayer CropScience Inc. patent infringement suit, saying Bayer had a good chance of winning its case.

U.S. District Judge Catherine Eagles said Syngenta's Appear fungicide contained the active ingredients in the patented formula for Bayer’s Chipco Signature fungicide and that Syngenta’s defense relied on the same arguments it had raised in a failed bid to invalidate the patent before the Board of Patent Appeals and Interferences.

"If Syngenta is not restrained from making, using, selling, offering to sell and marketing its Appear product that likely infringes on Bayer's [U.S. Reissued Patent Number RE42,394 E] before the prime selling season starts on Oct. 1, 2013, Bayer's continuing loss of market share and customer goodwill, which its '394 patent ought to protect, will accelerate, causing irreparable harm," Judge Eagles said.

The suit, filed April 16, alleges that Syngenta's Appear product ripped off Bayer's discovery that combining the pigment phthalocyanine with certain fungicides enhances the potency of a fungus-killing product.

That mixture — covered by U.S. Patent Number 5,599,804, which was first issued in February 1997 and reissued in May 2011 — is the key to Bayer's Signature line of fungicides, which are widely used on turfgrass on golf courses, sports fields, sod farms and residential and commercial properties, the suit says.

During the patent reissue proceedings, an examiner declared Bayer’s innovation as invalid and obvious based on prior discoveries, but the Board of Patent Appeals and Interferences later sided with Bayer and found that the formula was novel and could be patented, Judge Eagles said.

Syngenta first started selling Appear in October 2012, and Bayer became suspicious a month later that the product might infringe its patent, after ads began running that touted Appear as the only competitor to Bayer's fungicide and urged customers to switch to Syngenta's lawn treatment.

Judge Eagles' decision to grant Bayer's injunction request recentlywas influenced in part by Syngenta’s reliance on the same prior art references that failed to convince a three-judge patent appeal board panel that Bayer’s formula was nothing new.

The district court judge also pointed out that Syngenta's Appear contains the same compounds as Bayer's product "in a ratio that falls within the patented range." Additionally, Bayer has dragged at least one alleged infringer of the '394 patent before the same court previously, and "the accused product in that case is no longer on the market as a result of that litigation."

Judge Eagles said Syngenta introduced its product while Bayer’s patent remained valid for only a few more years, and failing to impose a preliminary injunction would prematurely rob Bayer of the market benefits of its intellectual property.

The injunction request was also filed at a critical time because a large proportion of the annual sales of Appear occur starting Oct. 1, when Syngenta offers its customers the opportunity to accumulate rebates by purchasing its products.

If the preliminary injunction — banning Syngenta from selling Appear or any other infringing product while the lawsuit was pending — was not entered before that date, Bayer risked taking a big hit from the competition from the accused fungicide, the judge said.

Representatives for the parties were not immediately available to comment.