To a casual grocery shopper, looking to find the perfect topping for her shortcake, ingredient for her smoothie or vehicle for her heavenly chocolate fondue, patents are probably the last things on her mind. Yet, in fact, the very item that she seeks, the strawberry, an aromatic, bright red, juicy, and sweet fruit, has been at the center of ongoing patent litigation.
Patent law covers the invention or discovery of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. While this generally brings to mind mechanical apparatuses and technology, patents are also granted to, “whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.” 35 U.S.C. §161.
Believe it or not, the beloved strawberry is the result of a plant that is protected by patents. In fact, there are actually thousands of varieties of strawberry breeds in existence. For instance, the strawberry plant named “Opera” is “characterized by its compact and semi-upright plant habit; moderately vigorous to vigorous growth habit; uniform fruit ripening; large broadly rounded to conical fruits that are glossy and red in color; pleasant fruit aroma and taste; excellent fruit postharvest longevity; and moderately resistant to Verticillium dahliae and Phytophthora cactorum.” By contrast, the “DrisStrawFifty” is “characterized by having medium-sized, dark orange-red fruit, a globose-semi-upright plant habit, and mid-season harvest maturity…”
Scientists have been working for decades to engineer new varieties of strawberries designed to improve their color, taste, appearance and durability. Their successes are why the strawberries one buys in April are a different variety than one bought under the exact same brand in June. It is also the rationale explaining why strawberries are made available worldwide and year-round.
In fact, The United States produces more than 3 billion pounds of strawberries each year, with US consumption being approximately 8 pounds per capita. But the strawberry market, and in particular, the California market, has a history of competition.
Driscoll’s, the engineer of the “DrisStrawFifty,” is one of the largest berry companies in the United States. In this role, it develops several new breeds of strawberries each year. Driscoll’s licenses its breeds to approved growers who then return the berries to Driscoll’s to be sold under Driscoll’s widely recognized brand names. Using this methodology, Driscoll’s sells more than a billion packages every year. In fact, it was Driscoll’s that first decided to sell strawberries in the clamshell plastic packaging, which is now the industry standard. Driscoll’s attributes its success to its Intellectual Property protection. Driscoll’s IP consists of its cultivars- the new varieties it creates through breeding and its germoplasm- the genetic library of plants from which its breeders can draw to create future cultivars. (Think of the cultivars as the result of a recipe and the germoplasm as the cabinet of possible ingredients).
Yet, Driscoll’s is not alone in the competitive strawberry market. For years, UC Davis, led by researchers Doug Shaw and Kirk Larson, also competed in the market, supplying the majority of strawberries in California, and earning the university hundreds of millions of dollars. Unlike Driscoll’s, UC Davis was more open about its products, and were willing to supply its breeds and research (for a nominal royalty fee) to any grower wishing to use its plants. However, in 2011, UC Davis decided to shift its focus away from commercial sales of strawberries to genomics. Shaw and Larson were unhappy with this decision and decided to leave UC Davis to form their own private business, California Berry Cultivars (CBC).
However, the breakaway was not smooth sailing. Upon leaving, Shaw and Larson tried to get a license from UC Davis that would allow them to use UC Davis’ cultivars and germoplasm for their new business. However, UC Davis ultimately decided not to grant a license to them.
In 2016, a frustrated Shaw and Larson filed a lawsuit against the University of California alleging that the University was denying them the benefit of their own creations. In return, UC Davis filed a countersuit, alleging that Shaw and Larson ignored their wishes and took UC Davis’s germoplasm with them when they started CBC. Moreover, UC California accused Shaw and Larson of illegally breeding cultivars on behalf of their new company, while they were still employed by UC Davis.
In May of 2015, a federal district jury unanimously held that Shaw and Larson were guilty of willfully infringing UC patents, breaching duties of loyalty and fiduciary duty and using plant material owned by the UC Davis Public Strawberry Breeding Program to develop berries for California Berry Cultivars (CBC). It was quite the scandal! As part of the settlement, CBC agreed to return certain cultivars to the university and give up $2.5 million in future patent inventor royalties.
Yet, the saga continues! In a lawsuit filed on March 20, 2019, Driscoll’s has now sued CBC as well. As a result of the trial in 2017, some CBC breeding records were made public, revealing that CBC had also been breeding with several of Driscoll’s varieties. Driscoll’s a company known for the protection of its IP rights, was quick to protect them.
While it’s possible that Shaw and Larson were simply some “bad berries in the bunch” who refused to play by the rules, their actions certainly raise issues of Intellectual Property and questions over who should have the rights to use and benefit from germoplasms and cultivars. Perhaps the germoplasm should be treated differently from cultivars under the law. Perhaps a market like strawberries, where scientists are constantly innovating and developing new fruits should be treated differently from other plants. These are questions for another day. For now, the battle for the best and most legal strawberry will continue. Whatever the outcome, I bet you’ll never look at a strawberry in the supermarket in the same way.
Sarah Sue Landau is a J.D. candidate, 2020, at NYU School of Law.