Makhteshim Agan of North America (MANA) and Control Solutions, Inc. (CSI) announced that on March 22, 2013, the companies filed a contempt of court suit against BASF with the U.S. District Court for the Middle District of North Carolina for violating an Oct. 27, 2010, Consent Judgment as it relates to the long-standing fipronil patent infringement case between parties.
Under the terms of the October 2010 Consent Judgment, BASF agreed that the process by which the fipronil active ingredient in the Taurus SC product is manufactured, “will not infringe any claim of U.S. Patent No. 5,618,945”. The Consent Judgment further provides that BASF would not prosecute a claim that the process used to make MANA’s and CSI’s Fipronil infringes U.S. Patent No. 5,618,945 (the ‘945 patent).
Disregarding the October 2010 Consent Judgment, BASF filed another complaint on March 20, 2013 alleging infringement by MANA and CSI of the ‘945 patent. BASF’s filing was submitted in a different District - the U.S. District Court for the Northern District of Georgia, Atlanta Division.
MANA and CSI maintain consistency in statements that their process for manufacturing Fipronil has not changed since October 2010 and therefore still does not infringe any claim of BASF’s patent; therefore BASF’s claim has no merit. MANA’s and CSI’s process for manufacturing Fipronil uses Makhteshim Agan Group’s proprietary technology and a patent application was filed to protect its intellectual property rights to the process.
MANA and CSI called attention at last week’s Court motion for contempt that the repeat 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. BASF filed its initial lawsuit against MANA and CSI in Spring 2010; filed numerous “emergency” motions with the Court in Spring 2011; and filed a motion for contempt in the Spring of 2012.
Mark Boyd, president and CEO of CSI states, “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. We believe that the timing of BASF’s latest complaint is notable – following last week’s Federal Circuit ruling affirming an earlier District Court decision that the Taurus SC products did not infringe patents directed toward methods of using Fipronil as a termiticide.”
The Federal Circuit’s unanimous decision authorized MANA and CSI with the continuation of U.S. marketplace activity and customer engagement in relation to Taurus SC product sales.
BASF has maintained allegations dating back to April 2010, of patent infringement against MANA and CSI in regards to the Taurus SC brand. Both in the district and the appeal cases, MANA and CSI have all been favored in previous court rulings.
In June 2011, Makhteshim Agan Industries’ affiliate CSI launched sales of fipronil-based products under the brand names Taurus SC for the professional pest control market, and Prefurred for companion animal use.
Fipronil is utilized for termite prevention and treatment, flea, ant and tick control, and as a broad-spectrum insecticide for crop markets in a variety of branded products throughout the world. The active ingredient is used in crop protection mainly for treatment of cotton, potatoes, rice and seed treatment in addition to broad uses for non-crop applications.