SCT: Copyrighting Labels and scope of 271(g)

Willowood, LLC v. Syngenta Crop Protection, LLC, Docket No. 19-1147 (Supreme Court 2020)

Syngenta sued Willowood for both patent and copyright infringement associated with its generic fungicide compound.  Willowood won at the district court, but that holding was overturned on appeal. Now Willowood is bringing it to the Supreme Court.

The copyright claim: Syngenta product “labels” have many pages of small-type that were registered with the US Copyright office.  Willowood apparently copied the labels for its competing generic product.  Because the fungicides are dangerous chemicals, these labels are required in order to sell the product.

The district court dismissed the copyright claims — holding that the Federal Insecticide, Fungicide, and Rodenticide Act (“FIFRA”) precludes the copyright claim because FIFRA requires a generic product to use “identical or substantially similar” labels that are typically mandated by EPA regulations.  On appeal, the Federal Circuit vacated — holding that statute does not allow thoughtless copying since “the text of FIFRA does not, on its face, require a me-too registrant to copy the label of a registered product.”  Rather, according to the court, the court must look at each copyrightable element of Syngenta’s label and consider whether that portion is “necessary” for the generic approval process.

In its petition for certiorari, Willowood asks for a blanket rule:

Whether, by requiring the EPA to grant expedited review and approval of labels for generic pesticides that are “identical or substantially similar” to the previously approved labels for the same product, Congress intended to preclude claims of copyright infringement with respect to generic pesticide labels.

Question presented in Petition for Certiorari.  This portion of the case could be a nice companion case to Google v. Oracle if certiorari is granted there.

The product label was apparently substantially copied, but without the TM, patent claims, or Syngenta name.

The Patent Claims: A portion of the infringement case turned on the court’s interpretation of 35 U.S.C. 271(g).

(g) Whoever without authority imports into the United States … a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent.

The district court ruled found no infringement because the product was purchased from a separate entity and that the single-infringer-rule requires “every step of a claimed process to be performed or attributable to a single entity.”

On appeal, the Federal Circuit also rejected this statement of the law — holding that importation is the act of infringement under 271(g) (or sale/offer).  The statute does not require that the accused infringer be the one performed the method.

This [statutory] language makes clear that the acts that give rise to liability under § 271(g) are the importation, offer for sale, sale, or use within this country of a product that was made by a process patented in the United States. Nothing in this statutory language suggests that liability arises from practicing the patented process abroad. Rather, the focus is only on acts with respect to products resulting from the patented process. Thus, because the statutory language as a whole is clear that practicing a patented process abroad cannot create liability under § 271(g), whether that process is practiced by a single entity is immaterial to the infringement analysis under that section.

Syngenta Crop Protec., LLC v. Willowood, LLC, 944 F.3d 1344, 1359–60 (Fed. Cir. 2019). In its petitition, Willowood asks that the Supreme Court step-in here as well:

Whether liability for patent infringement under 35 U.S.C. § 271(g) requires that all steps of a patented process must be practiced by, or at least attributable to, a single entity, a requirement that the Supreme Court previously recognized is a prerequisite for infringement under 35 U.S.C. §§ 271(a) and (b) in Limelight Networks Inc. v. Akamai Technologies Inc.




8 thoughts on “SCT: Copyrighting Labels and scope of 271(g)

  1. 3

    The subject Fed. Cir. decision ends with “We therefore affirm-in-part, reverse-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.” Since this case is remanded back to the D.C., not final, and left with several issues to decide [unless they have been waived or settled?], how is this case ripe for a cert petition?

    1. 3.1

      Good question. Are any of the sub-items NOT remaining open subject to interlocutory review?

  2. 2

    “(More than one sense of hypocrisy out there)”

    Yup; that’s what I was aiming fer.

  3. 1

    Anyone else see the possible tie between copyright and “functionality” of the content of the item under copyright as driving a “you can’t have a copyright on that” parallel to the fact that certain items may have overlapping protection under different IP laws for different aspects of functionality and creativity?

    The immediate item that comes to mind for this parallel is of course software, which enjoys both of the different protections of protection for utility under patent and protection for expression under copyright.

    Recall in current software copyright cases how there are those who scream “functionality” (and thus NO copyright) and how I have called (without answer) from these same people on whether they THEN feel that this existence of functionality means that patent coverage should inure.

    Of course, while the parallel IS limited, those familiar with patent law should readily see the playing out of the written matter doctrine (and of course, the critical exceptions to written matter doctrine).

    1. 1.1

      ” … those who scream “functionality” (and thus NO copyright) and how I have called (without answer) from these same people on whether they THEN feel that this existence of functionality means that patent coverage should inure.”

      Yup. IP hypocrisy.

      Reminds one of the hypocrites (here’s looking at you, Big Tech) who shout that others’ claims are not eligible under Alice / Mayo . . . while screaming like banshees when it’s pointed out that their own, very similar claims, should therefore also be found non-eligible.

      What’s good for the goose . . .

      1. 1.1.1

        So, the “screaming like banshees” is when they are defending their own patents (which of course are different because […])….

        It does not even have to get to that level of hypocrisy.

        My aim was more towards those pundits who for years were screaming that patents just were NOT for software and that copyright protection was more than enough.

        This is more of a “philosophy” and less directly on any Big Tech that may also be hypocritical in the sense that you provide.

        (More than one sense of hypocrisy out there)

    2. 1.2

      It’s not hypocritical or self-inconsistent to believe that there are some categories of information that should not be protected by intellectual property laws at all.

      1. 1.2.1


        I cannot agree – even your own statement here comes across as there BEING some other categories of information that SHOULD be protected by intellectual property laws.

        You appear to want to offer as a stalking horse a notion of “purely category of information” and THAT is not the dichotomy that I have presented in items that HAVE multiple aspects that may be protected under multiple IP laws.

        Move the goalposts back please and do NOT treat an item earning protection under the patent laws as some ‘purely’ category of information.

        By the way, there is NO such thing either as copyright for a ‘pure’ item of information, so your stalking horse is a
        in that regard as well.

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