Jury Finds Infringement of UC Davis’ Strawberry Patents

SAN FRANCISCO (CN) – A federal jury was unanimous Thursday that two retired University of California, Davis, researchers willfully infringed the university’s patents on its multimillion-dollar strawberry plants.

The jury also found the researchers used UC Davis’ unpatented plants without permission to breed strawberries through a private company that would have competed with the university for a share of California’s $2.5 billion strawberry market.

“This federal jury decision is good news for public strawberry breeding at UC Davis and all strawberry farmers throughout California and the world,” Helene Dillard, dean of the UC Davis College of Agricultural and Environmental Sciences, said in a statement. “Our revitalized public strawberry-breeding program will continue to develop affordable, high-quality varieties and train the next generation of breeders to serve every strawberry farmer, shipper, processor, and consumer.”

Doug Shaw, an acclaimed strawberry breeder who developed more than a dozen varieties of the fruit for UC Davis’s strawberry breeding program before he retired to start California Berry Cultivars (CBC), and his research partner Kirk Larson told UC Davis they wanted to form a private strawberry breeding company when they left the university.

They proposed that the company license the strawberries they had invented, develop new varieties from them, and pay the school royalties. UC Davis rejected the proposal and sought to protect its rights to 168 of the most valuable varieties Shaw and Larson developed by filing a mass patent application.

The university said it did so after Shaw threatened to release the plants publicly if it didn’t reconsider its decision. The university sued the men and CBC in 2016 for conversion and patent infringement, among other grievances.

Shaw and Larson counter-claimed the school acted in bad faith by trying to patent so many strawberry varieties in a single application, thereby freezing CBC’s ability to work with the plants. As part of the claim, they said the California Strawberry Commission pressured UC Davis to deny Shaw a license because its members didn’t want to compete with CBC, but presented no concrete evidence at trial to support the accusation.

UC Davis maintained throughout the case that Shaw and Larson bred seeds for CBC from its unpatented plants in Spain without its permission because they knew breeding them in the United States would violate U.S. patent laws.

Following revelations during trial that a DNA analysis had revealed that 85 percent of the plants CBC grew from imported seeds between 2014 and 2016 contained genetic material from UC Davis’s varieties, Shaw acknowledged that some of CBC’s plants were bred in Spain from the university’s plants, but blamed it on a “mix-up.”

A bench trial before U.S. District Judge Vince Chhabria on equitable claims and injunctive relief is set for May 30.

“CBC hopes that the court’s guidance leads the parties to a constructive resolution of this dispute,” Shaw’s and Larson’s attorney Greg Lanier said in an email Thursday.

California strawberries generate $2.5 billion a year and are the state’s fifth most valuable crop. UC Davis’s agriculture school has developed 56 varieties since 1945, creating strains that are bigger, taste better, stay fresh longer and yield up to six times more berries per acre. California farmers pay less for strawberries developed at UC Davis and get access to new varieties before other farmers.

“This decision is good for the California strawberry industry and will provide future guidance to academic institutions on protecting their assets against infringement,” UC Davis attorney Matthew Chivvis said in a statement.

Chivvis is with Morrison & Foerster and Lanier is with Jones Day, both in San Francisco.

 

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