Pennington Seed et. al. v. Hartzell et. al.

8/4/2019 Pennington Seed et. al. v. Hartzell et. al.

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IN THE UNITED STATES DISTRICT COURTWESTERN DISTRICT OF MISSOURI

SOUTHERN DIVISION

PENNINGTON SEED, INC. and

GRASSLANZ TECHNOLOGY LIMITED,

Plaintiffs,

v.

GARON HARTZELL and

JOHN DOES 1-10,

Defendants.

CASE NO. 6:11-cv-03311

COMPLAINT

Plaintiffs Pennington Seed, Inc. and Grasslanz Technology Limited bring this action for

damages and injunctive relief against Defendants Garon Hartzell and John Does 1-10 for the

unauthorized use and sale of Plaintiffs patented products. Plaintiffs allege:

JURISDICTION AND VENUE

1. This is an action for relief from patent infringement arising under thePatent Laws of the United States, Title 35 of the United States Code. The subject matter of the

patent-in-suit concerns the use of non-toxic endophytes in certain tall fescue grass cultivars.

2. This Court has subject matter jurisdiction over this patent action pursuantto 28 U.S.C. 1331, as Plaintiffs claims arise under the laws of the United States, and 28 U.S.C.

1338, which provides that district courts have original jurisdiction over any civil action arising

under any Act of Congress relating to patents. Supplemental jurisdiction is proper in this Court

pursuant to 28 U.S.C. 1367 over all of Plaintiffs non-federal question claims because they

form a part of the same case or controversy.


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3. Venue is proper in this district pursuant to 28 U.S.C. 1391, as asubstantial part of the events giving rise to the claims occurred in this district.

THE PARTIES

4. Plaintiff Pennington Seed, Inc. (Pennington) is a for-profit corporationorganized under the laws of Delaware with its principal place of business located in Madison,

Morgan County, Georgia. Pennington is the exclusive licensee in the United States of the patent-

in-suit and enjoys along with Grasslanz Technology Limited the legal right to bring this cause.

5. Plaintiff Grasslanz Technology Limited (Grasslanz) is a corporationorganized under the laws of New Zealand with its principal place of business located in

Hamilton, New Zealand. Grasslanz is registered to do business within the United Stated through

its wholly owned subsidiary, AgResearch (USA) Limited. Grasslanz is the owner of the patent-

in-suit and has granted Pennington an exclusive license to the patent-in-suit in the United States.

6. Defendant Garon Hartzell is an individual residing in Everton, DadeCounty, Missouri. Hartzell is alleged herein to have infringed the patent-in-suit by replanting

and selling without authority Jesup tall fescue grass seed containing the patented MaxQ

endophyte technology.

7. Defendant John Does 1-10 are persons and entities who provided or usedservices or goods that facilitated, enabled, or contributed to Hartzells infringement of the patent-

in-suit in the manner described herein. On information and belief, most or all John Doe

Defendants reside within the state of Missouri.

FACTS

8. Plaintiffs are in the business of producing, marketing, licensing, andselling certain grasses known to benefit livestock. Plaintiffs market their grasses through a


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variety of organizations including wholly owned subsidiaries, joint ventures, sales

representatives, and independent dealers.

9. In the course of business, and only after the investment of substantialresearch, time, and expense, Grasslanzs predecessor-in-interest, AgResearch Limited

(AgResearch), developed products incorporating endophytes that form stable synthetic

combinations with tall fescue, including the non-toxic endophyte known and identified in the

United States marketplace as MaxQ.

10. In order to protect its interest and investment in the product known asMaxQ, AgResearch applied to the United States Patent and Trademark Office for a patent prior

to the introduction of MaxQ into the marketplace.

11. On August 29, 2000, U.S. Patent No. 6,111,170 (the 170 patent or thepatent-in-suit) entitled Tall Fescue Endophytes was duly and legally issued to the inventors

named therein, who subsequently assigned their rights in such patent to AgResearch.

12. On July 1, 2004, AgResearch sold and assigned all its rights and interestsin and to the 170 patent and the underlying technology to Grasslanz. On July 1, 2008, Grasslanz

licensed the technology protected by the 170 patent to Pennington, such that both parties are

proper litigants to this action.

13. In connection with substantially all sales of MaxQ, Plaintiffsconspicuously mark the MaxQ products with a notice of patent rights under the 170 patent.

Further, Plaintiffs make MaxQ available only under a limited license that grants the user the

right to plant the seed for forage purposes, only. Users are expressly forbidden from saving,

replanting, selling, or otherwise transferring any seed produced when MaxQ is planted and

grown.


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14. By virtue of the 170 patent and the limited license granted to end users ofthe MaxQ product, the tall fescue products containing the non-toxic endophyte known as

MaxQ can be grown, marketed, and sold only with Plaintiffs permission, in accordance with

the patent laws of Title 35, United States Code.

15. Without authority, Defendant Hartzell harvested, saved, replanted, andsold seed products embodying Plaintiffs patented MaxQ technology, all in violation of

Plaintiffs patent rights. Defendant Hartzell identified the seed as MaxQ in the course of

promoting and selling the seed to downstream producers.

16.

Defendant Hartzell sold the harvested seed to other producers without

giving notice of Plaintiffs patent rights and the contractual restrictions associated with use of the

MaxQ technology, thereby exposing Plaintiffs to further misuse and unauthorized replication

of their patented technology by the downstream producers.

17. Defendant Hartzells sales also placed the reputation of the MaxQproduct at risk since it was sold without the rigorous production standards employed by

Plaintiffs.

18. Defendant Hartzell received actual notice of Plaintiffs patent rights priorto his infringing acts, and his infringing acts were thus knowing and willful.

19. On information and belief, John Doe Defendants 1-10 either unlawfullysupplied the infringing products to Defendant, purchased the infringing products from

Defendant, or otherwise facilitated, enabled, or contributed to Defendant Hartzells infringement.


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COUNT I

DAMAGES FOR INFRINGEMENT OF THE PATENT-IN-SUIT

20. Plaintiffs incorporate by reference the allegations set forth in the foregoingparagraphs.

21. Defendants willfully and directly infringed one or more claims of the 170patent.

22. Defendants have induced others to infringe one or more claims of the 170patent.

23.

Defendants have committed acts of contributory infringement of one or

more claims of the 170 patent.

24. As a consequence of Defendants infringing activities, Plaintiffs havesuffered monetary damages for which they are entitled compensation in an amount to be

determined, but in no event less than a reasonable royalty.

25. Further, Plaintiffs will suffer irreparable harm if Defendants are allowed toharvest, sell, distribute, or dispose of additional quantities of Plaintiffs patented MaxQ product

without restriction. Fescue seed is a fungible commodity, and MaxQ seed harvested by

Defendants is critical evidence in this case. Existing fields planted with MaxQ will continue to

generate seed that could constitute additional infringing materials, and the fields can be easily

damaged or destroyed, such as by burning or tilling, leading to spoliation of evidence.

26. No adequate remedy at law exists against future infringements resultingfrom a release of further seed by Defendants, and the injuries to Plaintiffs will continue unless

and until the Court preliminarily and permanently enjoins the Defendants infringing activities.

Plaintiffs request injunctive relief preventing Defendants from destroying or disposing of their


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existing fields as well as the harvested MaxQ fescue seed, until such time as Plaintiffs can

ascertain the amount of illegally planted and harvested MaxQ seed.

COUNT II

CONVERSION

27. Plaintiffs incorporate by reference the allegations set forth in the foregoingparagraphs.

28. Defendants are exercising dominion and control over patented technology.29. Defendants have converted the patented technology to their own use

without permission.

30. As a result of Defendants actions, Plaintiffs are entitled to recovercompensatory damages.

31. As Defendants conversion of the intellectual property was done willfullyand maliciously, with reckless disregard for Plaintiffs rights, Plaintiffs are entitled to an award

of punitive damages.

RELIEF DEMANDED

WHEREFORE, Plaintiffs pray for relief and judgment as follows:

a) That the Defendants be declared to have infringed, induced others toinfringe, and/or committed acts of contributory infringement with respectto the claims of the 170 patent;

b) That the Defendants, their officers, agents, employees, parents,subsidiaries, affiliates, successors, and all others in active concert or

participation with them or acting on their behalf be preliminarily andpermanently enjoined from further infringement of the 170 patent;

c) That the Defendants, their officers, agents, employees, parents,subsidiaries, affiliates, successors, and all others in active concert or

participation with them or acting on their behalf be temporarily restrainedfrom destroying, selling, or otherwise transferring or disposing of grass

and grass seed currently in their possession;


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d) That the Defendants be ordered to account for pay to Plaintiffs alldamages caused to Plaintiffs in an amount adequate to compensate

Plaintiffs for the infringement and conversion of the 170 patent, but in noevent less than a reasonable royalty;

e)

That the Court treble the damages awarded for the infringement pursuantto 35 U.S.C. 284;

f) That Plaintiffs be granted prejudgment and post-judgment interest on thedamages caused to them by reason of Defendants infringement and

conversion of the 170 patent;

g) That this be declared an exceptional case pursuant to 35 U.S.C. 285and that Defendants be ordered to pay Plaintiffs attorneys fees and costs;

h) That the Court award damages sufficient to compensate Plaintiffs forDefendants conversion of Plaintiffs intellectual property, together with

interest and costs;

i) That the Court award punitive damages for Defendants willful andmalicious acts of conversion; and

j) That the Court award such other relief to which Plaintiffs may be entitled.

Respectfully submitted,

PENNINGTON SEED, INC. andGRASSLANZ TECHNOLOGY LIMITED

By: /s/ Mark Murphey HenryMark Murphey Henry, Mo. Bar No. 58097

Henry Law FirmP.O. Box 8850

Fayetteville, AR 72703Phone: (479) 695-1330

Fax: (479) [email protected]

Pennington Seed et. al. v. Hartzell et. al.

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