Trial Date Set For Second of Two Fipronil Patent Infringement Lawsuits

Fireworks are an annual part of America’s Fourth of July festivities, but the pest management industry could experience some fireworks of its own on July 5, 2011, when a patent infringement lawsuit between BASF and Makhteshim Agan of North America, along with its U.S. subsidiary, Control Solutions Inc., is scheduled to go to court.

A settlement conference will be set for a date approximately two weeks before the highly anticipated jury trial is scheduled to begin, according to U.S. District Court documents. Of course, much could change depending on what happens four months earlier, when BASF and Cheminova are scheduled to meet in the same U.S. District Court on March 1, 2011 in a second fipronil patent infringement lawsuit.

At the center of the proceedings are several fipronil-related patents, the broad-spectrum phenylpyrazole insecticide that is found in Termidor. One of those patents, covering the chemical itself, is set to expire on Aug. 3. Two additional manufacturing process patents will expire in 2023 and 2025, respectively, while the method-of-use patents will expire in 2017. Joining BASF as a plaintiff in the lawsuits is Bayer CropScience, which exclusively licenses two of the patents for BASF.

Since the original court filings in early April, more than 50 different motions, court orders and other filings have taken place as the parties – BASF Agro, Cheminova A/S and Maktheshim Agan of North America, along with its U.S. subsidiary, Control Solutions Inc. – jockey for position in the high-stakes litigation that will have wide ranging implications for the pest management industry, whatever the outcome.

The stakes are high. BASF’s flagship termiticide, Termidor, generates nearly $70 million in annual revenues, representing about 35 percent of the U.S. termite market. More than 4 million structures have been treated with the non-repellent termiticide since it was introduced to the industry a decade ago.

With the deadline for the chemical patent looming (Aug. 3), BASF appears to have successfully forestalled the introduction of generic fipronil in 2010 as the parties prepare for trial in 2011.

“We are pleased that progress continues to resolve this matter,” said Jan Buberl, head of BASF’s Specialty Product Division. “What is important is the contribution of ongoing innovation in the marketplace, and we will continue to actively work to defend our IP (intellectual property) rights.”

PCT contacted Control Solutions, Makhteshem’s U.S. subsidiary, for comment, but as of press time had not received a statement from the company. Visit www.pctonline.com for additional coverage as this story continues to develop.