IP Law Daily, PATENT—E.D. Pa.: Temporary restraining order issued in pesticide dispute, (Aug 19, 2024)

By Kevin M. Finson

A temporary restraining order was justified against a competitor who attempted to register an infringing pesticide product for sale because the patentee appeared likely to succeed on the merits and the lost market share which would result from not issuing the order would be irreparable.

A pesticide manufacturer was entitled to a temporary restraining order against a competitor, the U.S. District Court in Philadelphia has held. There was no dispute that the competitor’s product infringed the asserted patents, and that the patentee showed it was likely to succeed on the merits as to the validity of the patents (FMC Corp. v. Sharda USA LLC, No. 2:24-cv-02419-MRP (E.D. Pa. Aug. 16, 2024)).

FMC Corporation (FMC) was the owner of U.S. Patent Nos. 9,596,857 (the ‘857 patent) and 9,107,416 (the ‘416 patent), both of which claimed stable compositions of chemicals used as insecticides. FMC registered a pesticide using this formula with the EPA in 2007 and marketed it under the name HERO®. In 2022 Sharda USA, LLC (Sharda) applied to register its own insecticide product with the EPA, making use of an exception to a requirement for acute toxicology data that applied when the proposed product was similar or identical to an already-registered product. Sharda also sent three separate letters to FMC offering to pay for the data which FMC had provided to the EPA in its HERO® application. The EPA conditionally registered the Sharda product, WINNER, on the basis that it was identical or substantially similar to a currently registered pesticide. FMC brought suit for infringement based on the registration and sought a temporary restraining order. After the court denied the request without prejudice, FMC brought a renewed motion on a fuller record. The court considered the traditional injunction factors.

Likelihood of success on the merits. Sharda did not dispute that its product infringed. Instead, it argued that the asserted patents were invalid as anticipated or obvious in light of a prior art article and that they were invalid for lack of written description and indefiniteness. The court found that the prior art reference did not disclose the specific combination of pesticides in question and the commercial success of HERO® showed there was at least a likelihood that the claimed invention was not obvious. The court also found that the written description and indefiniteness argument hinged on a claim construction which the court had previously rejected.

Irreparable harm. FMC argued, and the court agreed, that the highly seasonal nature of the agricultural pesticide industry combined with the fact that FMC was previously the only seller of the claimed sort of pesticide showed that any sales made by Sharda would be sales lost by FMC, and the loss of potentially lifelong customers in that industry was not quantifiable and therefore irreparable.

Balance of equities and public interest. The court found that the balance of equities favored FMC, as any loss that could be suffered by Sharda was the result of its own decision to take the calculated risk of launching an allegedly infringing product. The enforcement of patent rights was consistent with the public interest, and Sharda did not offer an argument on that issue.

The court granted the motion for a temporary restraining order.

The Case is No. 2:24-cv-02419-MRP.

Judge: Perez, M.

Attorneys: Lesley McCall Grossberg (Ice Miller LLP) for FMC Corp. Manish K. Mehta (Benesch Friedlander Coplan & Aronoff LLP) for Sharda USA LLC.

Companies: FMC Corp.; Sharda USA LLC

Cases: Patent PennsylvaniaNews