Fipronil legal saga continues

By |  March 26, 2013

Photo courtesy of, and copyrighted by, Gene White, pmimages@earthlink.net

BASF has filed a lawsuit alleging infringement on its fipronil production-process patent rights by Makhteshim Agan of North America (MANA), Control Solutions Inc. (CSI) and Do It Yourself Pest Control Inc. BASF filed the lawsuit with the United States District Court of Northern Georgia on March 19 — one day before BASF lost its appeal in a related lawsuit concerning the use of fipronil in and around structures to control termites and other insects.

Three days later, on March 22, MANA and CSI filed a counter lawsuit, claiming BASF is in Contempt of Court for violating an October 2010 Consent Judgment in which the parties agreed MANA’s and CSI’s fipronil production processes did not infringe on U.S. Patent No. 5,618,945. BASF now claims MANA and CSI have changed their fipronil production processes and are infringing on BASF’s related patent rights.

Meanwhile, on March 20 the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., affirmed a 2012 ruling by the U.S. District Court for the Middle District of North Carolina that CSI’s Taurus SC does not infringe on U.S. Patents 6,414,010 or 6,835,743 covering the use of fipronil-based termiticides/insecticides in and around structures.

“Throughout this case, MAI [parent company to MANA and CSI] has maintained BASF’s claims have been without merit,” says Shaul Friedland, head of MAI’s Americas region. “MAI and CSI remained steadfast in their belief the Court would deny the opposing side’s motions and appeals.”

In BASF’s latest lawsuit filing, the company claims it “has identified certain impurities in Taurus SC”— a fipronil-based termiticide/insecticide manufactured and marketed by Pasadena, Texas-based CSI — “that clearly establish [Taurus SC] was manufactured using a process protected by BASF’s patent rights.”

“Intellectual property is the cornerstone of our innovation-based marketplace,” says Jan Buberl, Director of Specialty Products, BASF North American Crop Protection. “Improper activity that undermines patent protection laws is unfair to those who act properly and lawfully.

“Several of the lot numbers of Taurus SC we tested in Germany over the past few weeks raised suspicion due to traces of byproducts covered by our production-process patent rights,” Burberl claims. “Testing of Taurus SC is ongoing as we investigate other lot numbers from various channels to discover the scope of this patent infringement.”

MAI and CSI deny BASF’s patent allegations.

“This latest lawsuit by BASF is just another curiously timed diversion attempt,” says CSI President Mark Boyd. “We invited BASF to tour our production facilities, but they declined. We’re hiding nothing. The ’945 fipronil production-process patent which BASF claims we are violating is the same patent to which we have a consent judgment from the U.S. District Court for the Middle District of North Carolina. We have not changed our Court-approved fipronil production process. We do not infringe any BASF patent.

“Contrary to the picture some are trying to paint, MAI is a global leader in active ingredient development and related patents. We fully support innovation and patent protection,” Boyd adds. “But we also realize patent protection does not extend indefinitely — for good reason — and that’s where Taurus SC comes into play.”

MANA and CSI called attention in the Court motion for contempt, alleging a repeated pattern of timing regarding BASF’s annual filings of complaints, new lawsuits and motions show possible intent for creating ongoing marketplace havoc for sales of Taurus SC. “Once again, BASF’s most-recent filing comes at the onset of the U.S. termite control season, which is a critical period for CSI’s sales of Taurus SC to licensed pest control applicators,” Boyd adds.

“BASF is confident it has acted appropriately,” Buberl says. “We are committed to protecting our intellectual property rights that are the backbone of our ability to offer innovative solutions to our customers. BASF is confident that our positions in the court will be upheld.”

 

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