Weedkiller: Infringement Upheld For Sales Before Patent For Selective Herbicide Expires

On August 19, 2024, the Federal Court of Appeal of Canada (the Court) released its decision in Agracity Crop v Upl Na Inc, 2024 FCA 133, dismissing Agracity Crop & Nutrition Ltd.’s (Agracity) appeal of the lower court’s decision finding that it had infringed Canadian Patent No. 2,346,021 (the 021 Patent).

The 021 Patent, which concerns a selective herbicide known as flucarbazone sodium, expired in 2019.  The owners of the 021 Patent, Upl Na Inc., Arysta Lifescience North America, LLC and Upl Agrosolutions Canada Inc. (collectively, the Respondents), alleged that Agracity entered the market a few months early, violating their patent protection.  In 2019, the Respondents were able to obtain a rare interim injunction enjoining Agracity from selling or distributing its product (as previously reported in the E-TIPS® Newsletter here).

At the lower court, Agracity argued that U.S. Patent No. 5,534,486 (the 486 Patent) and corresponding Canadian Patent No. 2,064,636 (the 636 Patent) rendered the 021 Patent invalid for anticipation and obviousness, having already identified flucarbazone sodium as an herbicide.  The Respondents, however, argued that the 021 Patent covered its use as a “selective” herbicide, a property of flucarbazone sodium which was not known at the time of the 486 and 636 Patents.  A “selective” herbicide is one which kills or reduces weeds with minimal injury to the surrounding crop.  The lower court found that the 021 Patent was not invalid for any of the grounds alleged by Agracity, and that Agracity had infringed the 021 Patent.

Agracity appealed the decision, arguing that, though the trial judge’s summary of the tests for anticipation and obviousness were correct, the trial judge had failed to follow those legal tests. The Court, however, found no reviewable error in the lower court’s decision, and dismissed Agracity’s appeal.

Summary By: Claire Bettio