Syngenta Crop Protection AG v. UPL Ltd. — Fungicide Patent Claims Remain Unpatentable

Background

UPL owned U.S. Patent No. 11,445,727, which claimed combinations of fungicides for treating crop diseases. The combinations included a dithiocarbamate fungicide, a succinate dehydrogenase inhibitor, and at least one fungicide from other specified classes. Syngenta sought post-grant review, arguing that earlier publications disclosed or made obvious the claimed combinations.

The Patent Trial and Appeal Board found every challenged claim unpatentable on anticipation or obviousness grounds. During the proceeding, Syngenta also alleged that field trials reported in the patent never occurred and asked for permission to file a sanctions motion. The Board denied permission after UPL withdrew reliance on the disputed data. UPL appealed the invalidity rulings, while Syngenta cross-appealed the sanctions decision.

The Court’s Holding

The Federal Circuit affirmed all of the Board’s rulings. It upheld the Board’s construction of “combination” and “composition” and found substantial evidence that the Godoy reference anticipated several claims. In context, the Board could find that an added mineral oil called Nimbus was not itself a fungicide and therefore did not take Godoy’s disclosed treatment outside the patent’s closed “consisting of” language.

The panel also sustained the finding that the Tobler reference anticipated additional claims. Although Tobler described many possible ingredients, it expressly identified the claimed three-part structure and listed numerous claimed fungicides among components described as especially suitable or preferred. The court distinguished cases in which a broad genus merely encompassed an unlisted species: Tobler expressly recited the relevant ingredients, so the Board did not have to bridge a disclosure gap through experimentation or expert inference.

For another claim, substantial evidence supported obviousness. De Oliveira disclosed relevant multi-fungicide combinations, while other references taught that benzovindiflupyr was effective against soybean rust and could work synergistically with ingredients in those combinations. That record gave a skilled artisan reason to add the known compound; the existence of other possible fungicides did not amount to teaching away.

The court also upheld the denial of Syngenta’s requested sanctions motion. The governing PTAB regulation bars filing or presenting a sanctions motion when the challenged position is withdrawn or appropriately corrected. Because UPL had definitively withdrawn reliance on the allegedly fabricated data, the Board reasonably applied that safe harbor even though Syngenta said it had already incurred substantial expense. The panel recognized Syngenta’s standing to seek review but found no abuse of discretion on the merits.

Key Takeaways

• A reference can anticipate a claimed combination even when it also lists alternatives, particularly when it expressly identifies the relevant ingredients as suitable or preferred.
• Closed “consisting of” claim language turns on whether additional materials fall within the claimed category, making the factual role of additives important.
• Obviousness does not require the prior art to identify only one option; known alternatives and documented efficacy may supply motivation to combine absent teaching away.
• Withdrawing a challenged contention can trigger the PTAB sanctions safe harbor even after the opposing party has incurred costs addressing that contention.

Why It Matters

The opinion illustrates how detailed lists in agricultural and chemical prior art can amount to an express disclosure rather than an impermissibly broad genus. Patent owners cannot necessarily avoid anticipation by emphasizing the number of choices in a reference when the claimed ingredients and combination are specifically identified. The sanctions ruling is also practically significant for PTAB litigants: prompt withdrawal can foreclose a sanctions filing, while parties alleging misconduct should account for the regulation’s emphasis on correcting the proceeding rather than reimbursing every expense already incurred.