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Ex-Deere Lawyer’s Data Holdback May Doom Planting-Tech Case (1)

Sept. 21, 2022, 4:09 PMUpdated: Sept. 21, 2022, 9:46 PM

A retired Deere & Co. senior patent counsel allegedly withheld knowledge of “damaging Russian prior art” from the US Patent and Trademark Office while seeking patents whose claims the Russian agency rejected that were “identical” to patents the USPTO ultimately issued, a court filing shows.

Kinze Manufacturing Inc. and Ag Leader Technology Inc. say the lawyer’s failure to disclose the Russian documents to US patent examiners qualifies as inequitable conduct and renders unenforceable Deere’s US patents for planting technology that the agriculture giant alleges they infringe, according to a joint status report filed Tuesday in the US District Court for the Southern District of Iowa.

Kinze and Ag Leader asked a federal judge for a conference “to determine the correct course forward” as they fight Deere’s bid to toss their inequitable conduct counterclaims.

Deer sued the smaller firms for patent infringement at the federal courthouse in Des Moines nearly two years ago. Its second amended complaint, filed in June 2021, alleges that Kinze’s True Speed 4905 model planter and Ag Leader’s SureSpeed high-speed planting system, sold as an after-market retrofit kit, infringe 11 patents.

Deere makes and sells the competing ExactEmerge planting system, capable of precision planting at up to 10 miles per hour, the suit says; Kinze in 2020 developed its True Speed metering system, which can plant at speeds of up to 12 miles per hour. Ag Leader bought a version True Speed to sell as an after-market part under the name SureSpeed, the suit says.

Precision agriculture harnesses big data to automate operations and boost productivity.

The defendants claim the American attorney responsible for managing Deere’s US and Russian patent portfolios related to the asserted patents—Charles Graham, whose LinkedIn profile says he worked for Deere from 1999 through 2018—"committed inequitable conduct by failing to disclose the Russian prior art and adverse examination documents to the U.S. Patent Examiners,” the filing says.

“Graham’s motivation was clear: He wanted to prevent this Russian prior art from damaging Plaintiffs’ U.S. patent portfolio, while hoping that it would remain hidden in Russia (as it nearly did).”

‘Notoriously Difficult’

Deere, the world’s biggest tractor maker, said in the joint filing that Kinze and Ag Leader are seeking the court’s “pre-approval to file a ‘second chance’ counterclaim” if the judge dismisses their pending counterclaims. “There is no procedural mechanism that requires this Court to provide an advisory opinion on a motion that neither it nor Plaintiffs have seen,” it said.

In the joint filing, Kinze and Ag Leader said that “Russian Patent Office records are notoriously difficult to search,” and Deere “produced nothing from their Russian patent files” despite the defendants’ April 2021 discovery request for documents about Deere’s foreign patent prosecution activities. Kinze and Ag Leader also said they “independently uncovered material prior art that was cited against Deere’s patent applications in Russia that correspond to the applications for the asserted patents in this case.”

The USPTO, the defendants said, didn’t find the “prior art from Russia and the former Soviet Union.” But the Russian Patent Office, they said, used the prior art it uncovered to reject Deere’s Russian applications. The rejected claims, Tuesday’s filing says, were “identical in all relevant respects” to claims Deere “convinced the USPTO to issue.”

Deere started producing “limited information” on its Russian patent activities “months after” the defendants filed their inequitable conduct counterclaim, the filing says. The records “directly contradict” Deere’s “repeated assertion” that it was “unreasonable to infer that ‘Mr. Graham (or any other Deere employee) knew” of the documents Kinze and Ag Leader found, the filing says.

The Russian prior art forced Deere to limit the scope of its patent claims in Russia, the defendants said, “and caused Deere to completely abandon at least one Russian patent application in its entirety.” Despite “his duty to disclose” such details to the USPTO, they said, “Graham decided to withhold it all.”

‘Weaponized’ Patents

Kinze and Ag Leader say in court filings that Deere has “weaponized” patents it “knows are invalid” by suing its competitors “as part of its brand purity campaign, intending to leave American farmers with only one planter choice: Deere.”

In the market for row crop planters and high-speed planters, Deere is a so-called “mainline” manufacturer of original agricultural equipment such as tractors and combines, court papers say.

Kinze is a “shortline” maker of products including planters, grain carts, and tillage equipment that are designed to work with any tractor or combine. Ag Leader’s precision farming technology includes after-market system upgrades for planters produced by all manufacturers, but it doesn’t make or sell tractors, combines, or planters, the suit says.

In July, a federal jury in Delaware rejected Deere’s arguments that Precision Planting LLC’s SpeedTube and vSet2 products—and new planters that contain them made by Precision’s corporate parent, AGCO Corp.—infringe either of two Deere patents related to high-speed, accurate seed placement and spacing. The patents are among those at issue in the Iowa case.

Related Disputes

In a redacted post-trial brief filed in the Delaware case on Wednesday, Deere said it deserves a new trial on infringement and argued for a judgment of no invalidity because AGCO’s expert “admitted the claims are not invalid under the Court’s construction.”

In January 2021, the Patent Trial and Appeal Board denied AGCO’s ninth straight challenge to the validity of Deere’s related patents. The upheld patent was one of 10 whose validity AGCO’s Precision had convinced the USPTO tribunal to review in the wake of Deere’s litigation, which was paused while the reviews were conducted. The PTAB declined to review one patent.

One patent at issue in both the Iowa case and in the lost trial was among two that the PTAB upheld in November 2020. Bloomberg Law estimates it will expire in February 2029. The other surviving patent, estimated to expire in April 2029, was upheld about two weeks later.

Deere is represented by Duncan Green PC, Kirkland & Ellis LLP, and Seyfarth Shaw LLP. Kinze and Ag Leader are represented by Fredrikson & Byron PA and Barnes & Thornburg LLP.

The case is Deere & Co. v. Kinze Mfg. Inc., S.D. Iowa, No. 4:20-cv-389, joint status report filed 9/20/22.

(Updates with additional details and context throughout.)

To contact the reporter on this story: Christopher Yasiejko in Wilmington, Del., at cyasiejko@bloombergindustry.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Carmen Castro-Pagán at ccastro-pagan@bloomberglaw.com