Former UC Davis researchers Douglas Shaw and Kirk Larson ran the university’s world-renowned strawberry breeding program until they retired in 2014. They say the school rejected their proposal to form a private breeding company when they retired that would license the strawberry plants they invented, develop new varieties from them, and pay the school royalties.
UC Davis contends that Shaw and Larson used its plants to develop new ones anyway. It sued them and their company, California Berry Cultivars (CBC), in 2016 claiming they violated nine patents for its most successful strawberries.
But the scientists and CBC, as cross-complainants, claim that farming conglomerates didn’t want Shaw’s company competing with them, so they had the California Strawberry Commission pressure UC Davis to deny Shaw a license, by suing the school to keep the breeding program open once Shaw and Larson retired.
Shaw says UC Davis not only denied him a license, but filed a single patent application on 168 strawberry varieties, or cultivars, which he and Larson invented at the school, to freeze CBC’s ability to work with the plants.
“It worked – CBC is tied up by UC’s claims and the new UC Davis program has not released a single new cultivar,” the researchers said in a May 1 trial brief. The trial on Wednesday was in its third day.
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 per acre.
Shaw and Larson developed more than a dozen strawberry varieties at UC Davis that are grown throughout the world. In 2004, they released the Albion variety, known for its sweetness and high yield. It is the most widely planted strawberry in California today.
In trying to persuade the jury that the school denied Shaw a license to satisfy the California Strawberry Commission, the researchers’ attorneys have spent much of the trial arguing that UC Davis acted in bad faith by filing a patent application on all 168 strawberry varieties at once.
Their main argument is that UC Davis at first encouraged Shaw to launch a private company to license its plants, but changed course and denied him a license after it reached a settlement with the strawberry commission, and then sought patent protection to bar access to the plants.
Noting that the U.S. Patent and Trademark Office called the mass application “inappropriate” because only one plant can be named in each application, the researchers’ counsel maintains that UC Davis had never filed one application on such a large number of plants, and that Shaw had discouraged the university from filing because he didn’t believe the cultivars were patentable.
“When in your 17 years at the university did you file a patent application when the inventor said [the invention] can’t be patented?” Shaw’s attorney Greg Lanier asked Michael Carriere, an intellectual property manager in UC Davis’s Innovation Access office, which decides whether to pursue patents on its researchers’ inventions.
“We didn’t, but it was a unique situation,” Carriere responded.
UC Davis says it filed the application to assert its rights over the plants after it denied Shaw a license and he threatened to release the plants publicly unless it changed its mind. The school says a public release would have caused it to lose its rights and the royalties it needs to run the breeding program.
“We were driven by concerns that the plants could be put into the public domain and we wanted to make sure the university had a strong form of protection,” Carriere said.
Lanier noted that Shaw made his initial statement about publicly releasing the plants in a 2011 email to the school, and emailed again two years later to say he was still waiting for “guidance” before deciding to release them.
“Are you seriously telling this jury there was a threat made?” Lanier asked Carriere, referring to the time lag between Shaw’s emails.
“I don’t think the separation in time diminishes that there was a threat made,” Carriere replied. “The threshold question seems to be, ‘Was there a threat?’ and the emails to me document a threat.”
Cross-examining Agriculture School Dean Helene Dillard, who made the decision to deny the license, Shaw’s attorney Rick McKnight cited a university guideline instructing deans to follow the recommendations of the department chair as evidence of the school’s allegedly illicit deal with the strawberry commission. The chair had recommended that the license be granted.
“I was receiving the recommendation of the department chair, but [the guideline] says final authority is to the dean,” Dillard said. “I felt we followed that.”
Dillard said the strawberry commission and many growers opposed the breeding program going private because private breeders can impose restrictions on when seeds are planted and how fruit is labeled, while the university imposes no such restrictions.
Lanier and McKnight are with Jones Day in San Francisco and Los Angeles. The university is represented by Rachel Krevans with Morrison & Foerster in San Francisco.