Walnut Creek, California
January 31, 2008
Syngenta's actions stifle
competition in sale of versatile insecticide, company says
Valent U.S.A. Corporation
and its parent company,
Sumitomo
Chemical Co. Ltd., announced today that they have filed
complaints against Syngenta AG (NYSE:SYT) and a number of its
subsidiaries in the International Trade Commission (ITC) and
against one Syngenta subsidiary in the U.S. District Court for
Western Wisconsin. These cases seek relief for infringement of
Sumitomo Chemical's patent on an insecticide compound known as
clothianidin. Valent and Sumitomo Chemical filed a separate
complaint against Syngenta Crop Protection, Inc. in the U.S.
District Court for Northern California, alleging that Syngenta's
later use patent on clothianidin is invalid.
The three complaints involve patents covering the invention and
use of clothianidin, an insecticide used to control insect pests
on plants. The ITC and Wisconsin court complaints allege that
Syngenta is violating Sumitomo Chemical's basic patent on
clothianidin ("the '404 patent"). The Northern California case
alleges that Syngenta is trying to prevent Valent and Sumitomo
Chemical from selling their clothianidin insecticide for
controlling insects on transgenic useful plants by threatening
to enforce a separate clothianidin use patent ("the '469
patent") that was issued to Syngenta about 15 years after the
'404 patent was issued. In that case, Valent and Sumitomo
Chemical are asking the court to declare that patent invalid.
Bayer AG (NYSE:BAY) or one of its affiliates is also involved in
the dispute because it has contractual relationships with
Syngenta that have been invoked by Bayer to bar Valent and
Sumitomo Chemical from selling clothianidin to control insect
pests on transgenic useful plants, the lawsuit states. Bayer is
not named in the lawsuits, but Sumitomo Chemical did undertake
substantial negotiations with Bayer.
"It is both ironic and unfair that Syngenta and Bayer seek to
prevent Valent and our parent company, Sumitomo Chemical, from
fully marketing clothianidin products in the U.S. even though
Sumitomo Chemical owns the basic patent on this versatile and
effective insecticide," said Trevor Thorley, President and Chief
Operating Officer of Valent.
Clothianidin is a later generation of neonicotinoid
insecticides, an important class of powerful insecticides.
Sumitomo Chemical, through a subsidiary, acquired the
agricultural chemical business of Takeda Chemical Industries,
Ltd. ("Takeda") including the '404 patent. "Acquisition of the
'404 patent was the 'crown jewel' of the transaction because it
is the landmark patent that claims the invention of the
clothianidin compound," the Northern California court complaint
states.
The ITC complaint and the companion civil complaint filed in the
U.S. District Court for Western Wisconsin allege that Syngenta
and a number of its subsidiaries are violating Sumitomo
Chemical's '404 patent, which covers the invention of
clothianidin and its use in controlling insect pests on plants
in general. The ITC complaint seeks an exclusion order and a
cease and desist order prohibiting the importation and sale by
Syngenta and its subsidiaries of infringing products containing
clothianidin and converting into clothianidin after intended
use.
According to the complaint filed at the ITC, Syngenta and its
subsidiaries violate Sumitomo Chemical's '404 patent in two
ways. First, Syngenta sells products in the U.S. that contain
clothianidin. Second, Syngenta's products contain a chemical
compound called thiamethoxam, some of which is metabolized into
clothianidin by the intended use of the products. According to
U.S. law, selling a product that contains any amounts of a
patented compound is an infringement of the patent, and selling
a product containing a compound that metabolizes into a patented
compound also constitutes a violation of the patent.
The Northern California case against Syngenta Crop Protection,
Inc. asks the court to invalidate a separate patent (the '469
patent) that was issued to Syngenta in 2006. That patent "claims
patent protection for controlling pests on transgenic useful
plants with clothianidin, whereas the earlier '404 patent
received patent protection for controlling insect pests on
plants in general with clothianidin," the Northern California
court complaint states.
"The '469 patent is both anticipated and obvious and therefore
invalid in light of the prior art," the complaint continues. The
complaint states that this prior art includes earlier patents
and publications that describe the use of clothianidin for
controlling insects on plants in general; recognition that
clothianidin kills certain insects that are common pests for
both transgenic and non-transgenic plants, so that it would be
obvious to control the same insects with clothianidin on both
types of plants; recognition that transgenic plants need to be
treated with a broad spectrum insecticide, and clothianidin is a
known broad spectrum insecticide; and the prior art use of
imidacloprid, another neonicotinoid similar to clothianidin, on
transgenic plants.
During lengthy negotiations with Syngenta and Bayer, Sumitomo
Chemical "expressed its view that the '469 patent is invalid,
but that it nonetheless wished to pursue a reasonable licensing
agreement to protect its product launch plans and to avoid
costly patent litigation," the complaint states. However,
Sumitomo Chemical's "efforts to negotiate with both Bayer and
Syngenta have been fruitless and futile," the complaint says.
Valent U.S.A. Corporation markets and sells fungicides,
herbicides, insecticides, bioinsecticides, insect growth
regulators, nematicides, baits and plant growth regulators for
the agricultural, horticultural, turf, ornamental, industrial
vegetation management and professional pest control markets.
Valent is a wholly owned subsidiary of Sumitomo Chemical Co.,
Ltd. Its headquarters are in Walnut Creek, CA. For more
information about Valent, visit the company's web site at
http://www.valent.com.
Sumitomo Chemical Co. Ltd. is a diversified global chemical
company. It has six business sectors, including the Agricultural
Chemicals Sector. The Agricultural Chemicals Sector is one of
the Company's most globalized Sectors, with more than half of
its sales coming from its overseas operations. The Sector is
composed of the Crop Protection Division - Domestic, the Crop
Protection Division - International, the Environmental Health
Division, and the Animal Nutrition Division. The Crop Protection
Divisions have been building a global sales network for such
products as insecticides, fungicides, herbicides and plant
growth regulators. They hold one of the largest shares of the
market for agrochemicals in Japan and rank among the top ten
players in the world. The Sector places a great emphasis on R&D
as the source of its long-term competitiveness to launch a
continuous stream of unique products with a view to capturing
one of the two top positions in niche markets or particular
regions. For more information visit the company's web site at
http://www.sumitomo-chem.co.jp/english/.
BACKGROUND
The patent for Clothianidin is United States Patent 5,034,404,
issued July 23, 1991. The disputed patent for controlling pests
on transgenic useful plants with Clothianidin is United States
Patent 7,105,469, issued September 12, 2006. The ITC complaint
includes diagrams that depict the molecular structures of
clothianidin and thiamethoxam. |
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