1:26-cv-00413
Synsus Private Label Partners LLC v. Soilgenic Tech LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Synsus Private Label Partners, LLC (Delaware)
- Defendant: Soilgenic Technologies, LLC (Delaware)
- Plaintiff's Counsel: Morris, Nichols, Arsht & Tunnell LLP
- Case Identification: 1:26-cv-00413, D. Del., 04/10/2026
- Venue Allegations: Venue is alleged to be proper in the District of Delaware as Defendant Soilgenic Technologies, LLC is a Delaware limited liability company that resides in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its products do not infringe four of Defendant's patents, and that those patents are invalid and/or unenforceable, following Defendant's demands for a license.
- Technical Context: The technology involves chemical compositions for agricultural fertilizers, specifically formulations using nitrification and urease inhibitors to improve nitrogen efficiency and crop yields.
- Key Procedural History: The complaint alleges that this action follows a period of licensing negotiations initiated by the Defendant. A central issue raised by the Plaintiff is the prior invalidation of U.S. Patent No. 10,221,108, a patent allegedly related to the patents-in-suit, by the Patent Trial and Appeal Board (PTAB) in a post-grant review proceeding, which was summarily affirmed by the U.S. Court of Appeals for the Federal Circuit. Plaintiff asserts this invalidation is material to the invalidity of the patents-in-suit and is the basis for an inequitable conduct allegation against one of the patents.
Case Timeline
| Date | Event |
|---|---|
| 2012-10-01 | U.S. Patent No. 11,021,414 Priority Date |
| 2014-04-17 | U.S. Patent No. 9,650,306 Priority Date |
| 2014-04-17 | U.S. Patent No. 10,633,300 Priority Date |
| 2015-05-13 | U.S. Patent No. 10,494,311 Priority Date |
| 2017-05-16 | U.S. Patent No. 9,650,306 Issued |
| 2019-12-03 | U.S. Patent No. 10,494,311 Issued |
| 2020-04-28 | U.S. Patent No. 10,633,300 Issued |
| 2020-08-10 | PTAB issues Final Written Decision invalidating related '108 patent |
| 2021-06-01 | U.S. Patent No. 11,021,414 Issued |
| 2022-06-10 | Federal Circuit affirms PTAB decision invalidating '108 patent |
| 2025-08-21 | Defendant sends notice letter to Plaintiff alleging infringement |
| 2025-10-07 | Defendant provides claim charts to Plaintiff for some patents |
| 2025-11-14 | Plaintiff responds to claim charts, asserting non-infringement and invalidity |
| 2026-01-05 | Defendant provides Plaintiff with a non-exclusive licensing proposal |
| 2026-02-20 | Defendant provides a revised, non-negotiable license offer |
| 2026-04-10 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,650,306 - "Compositions and Methods Comprising Nitrification Inhibitors Containing a Mixture of Protic and Aprotic Solvent Systems"
The Invention Explained
- Problem Addressed: The complaint states that the patent family aims to solve problems experienced in the agricultural field with nitrification inhibitors, including issues related to safety, toxicity, cost, storage stability, clumping of fertilizer granules, and degradation of the inhibitors Compl. ¶62
- The Patented Solution: The patent describes compositions to be added to fertilizers that comprise nitrification inhibitors dissolved in a specific organic liquid solvent system Compl. ¶64 This system uses a mixture of protic and aprotic solvents, which allegedly creates a stable, environmentally safe composition that avoids clumping and inhibitor degradation Compl. ¶62 The '306 Patent specification explains that the compositions provide improved even application to fertilizer granules without causing clumping '306 Patent, col. 6:12-16
- Technical Importance: This technology purports to increase fertilizer efficiency by preventing nitrogen loss in the soil, thereby increasing nitrogen use efficiency for crops Compl. ¶62
Key Claims at a Glance
- The complaint asserts non-infringement of the '306 patent, focusing on limitations found in independent claim 1 Compl. ¶77
- Essential elements of independent claim 1 include:
- A composition comprising one or more nitrification inhibitors.
- An organic liquid solvating system comprising a mixture of aprotic and protic solvents.
- Wherein the protic solvent is selected from a specified group including certain alcohols, polyols, glycols, glycol ethers, and lactates.
U.S. Patent No. 10,633,300 - "Compositions and Methods Comprising Nitrification Inhibitors Containing a Mixture of Protic and Aprotic Solvent Systems"
The Invention Explained
- Problem Addressed: As a continuation of the '306 patent, the '300 patent addresses similar problems related to fertilizer efficiency and the stability of nitrification inhibitors Compl. ¶66
- The Patented Solution: The '300 patent is directed to a fertilizer composition that includes urea, and similar to its parent, uses nitrification inhibitors dissolved in an organic liquid solvent system Compl. ¶66 The patent claims a liquid fertilizer additive that includes a powdered colorant, which serves to provide visual evidence of coverage on fertilizer granules '300 Patent, col. 7:17-20
- Technical Importance: The invention aims to improve the application and effectiveness of nitrogen-based fertilizers containing urea, a primary source of nitrogen in agriculture Compl. ¶66
Key Claims at a Glance
- The complaint asserts non-infringement of the '300 patent, focusing on limitations found in independent claim 11 Compl. ¶89
- Essential elements of independent claim 11 include:
- A fertilizer composition comprising urea and a liquid fertilizer additive.
- The liquid fertilizer additive comprising dicyandiamide and dimethyl sulfoxide.
- A colorant, wherein the colorant comprises a powdered colorant.
U.S. Patent No. 10,494,311 - "Non-Aqueous Organo Liquid Delivery Systems Containing Dispersed Poly (Organic Acids) That Improve Availability of Macro and Micro-Nutrients to Plants"
Technology Synopsis
This patent, from the "Poly (Organic Acid) Family," claims liquid coating formulations for fertilizer granules Compl. ¶67 The formulations comprise poly(organic acids) or their salts dissolved in non-aqueous organic solvents to improve fertilizer efficiency and solve prior art issues like toxicity, stability, and clumping Compl. ¶67 Compl. ¶69
Asserted Claims & Accused Features
- The complaint focuses its non-infringement allegations on limitations found in independent claim 1 Compl. ¶102
- Plaintiff alleges its products do not contain compositions with the specific monomers (e.g., aspartic acid, glutamic acid, maleic acid) required to form the claimed poly(organic acids) Compl. ¶102
U.S. Patent No. 11,021,414 - "Liquid Formulations of Urease Inhibitors for Fertilizers"
Technology Synopsis
This patent, from the "Urease Inhibitor Family," claims liquid fertilizer compositions comprising phosphoramides, such as N-(n-Butyl)thiophosphoric triamide ("NBPT"), dissolved in an aprotic solvent like dimethyl sulfoxide ("DMSO") Compl. ¶70 Compl. ¶72 Urease inhibitors are used to slow the breakdown of urea in fertilizers, increasing efficiency and addressing issues of toxicity and stability Compl. ¶70
Asserted Claims & Accused Features
- The complaint's non-infringement allegations center on limitations in independent claim 18 Compl. ¶114
- Plaintiff alleges its products do not contain the claimed "one or more protic solvents selected from the group consisting of polyethylene glycols, glycerin and one or more glycerin derivatives" Compl. ¶114
III. The Accused Instrumentality
Product Identification
This is a declaratory judgment action where the Plaintiff, Synsus, seeks a declaration of non-infringement. The products that Defendant Soilgenic previously accused of infringement include: the "Nitrogard Family" (Vol Terra, V-Gard, D-Gard, and Evergard); "Nitrogen Stabilizers" (NBPT 20%, NBPT 26.7%, etc.); HiCharge NBPT and HiCharge DCD; the Verdesian Trident® family of products; and Innvictis Trivictin™ Compl. ¶30 Compl. ¶38
Functionality and Market Context
- Synsus describes its business as providing research, development, and manufacturing of specialty chemical formulations for agricultural and lawn care markets Compl. ¶2 Its products include specialty liquid fertilizers and nitrogen stabilizers designed to reduce nitrogen loss and allow for more efficient use of nutrients Compl. ¶2 Compl. ¶4
- Synsus alleges that some of the compositions identified by Soilgenic, specifically the "Nitrogard Family and Nitrogen Stabilizers," are not actual products offered for sale Compl. ¶41 For the remaining accused products, Synsus alleges they do not contain all the limitations of the asserted patents Compl. ¶41
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'306 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a composition comprising... an organic liquid solvating system comprising... a protic solvent selected from the group consisting of, "a) an alcohol or polyol from the family of alkylene and poly(alkylene) glycols, b) an alkylene glycol selected from the group consisting of ethylene, propylene, and butylene glycol, c) glycerin, d) an alkylene glycol alkyl ether selected from the group comprising of dipropylene glycol methyl ether, tripropylene glycol methyl ether, and tripropylene glycol butyl ether, and e) ethyl, propyl, or butyl lactate" | Plaintiff alleges that it does not manufacture, use, offer to sell, sell, or import a composition comprising a protic solvent selected from this specifically enumerated group. | ¶77 | col. 7:36-54 |
'300 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a fertilizer composition comprising... a liquid fertilizer additive comprising... a colorant, wherein the colorant comprises a powdered colorant | Plaintiff alleges that it does not manufacture, use, offer to sell, sell, or import a fertilizer composition that comprises a "powdered colorant." | ¶89 | col. 8:17-20 |
Identified Points of Contention
- Factual Dispute: The central dispute for both the '306 and '300 patents appears to be factual. The complaint raises the question of whether Plaintiff's products contain the specific chemical constituents required by the claims. For the '306 patent, the dispute centers on the identity of the protic solvent Compl. ¶77 For the '300 patent, the dispute focuses on the physical form of the colorant used Compl. ¶89
- Scope Questions: The complaint raises the question of whether certain accused instrumentalities are legally cognizable products at all, alleging that some are merely names for compositions that are not offered for sale Compl. ¶41
- Validity Questions: The complaint alleges that the '300 patent claims are invalid as obvious in view of prior art Compl. ¶95 and that independent claim 11 is invalid under 35 U.S.C. § 112 for lacking an antecedent basis for "the organic liquid solvating system" Compl. ¶94
V. Key Claim Terms for Construction
The Term: "organic liquid solvating system" ('306 Patent, claim 1; '300 Patent, claim 11)
Context and Importance: This term appears in the independent claims of both lead patents and defines the chemical environment for the active nitrification inhibitors. The complaint's allegation that claim 11 of the '300 patent lacks an antecedent basis for this term suggests its definition and support in the specification will be a point of contention for validity Compl. ¶94 Practitioners may focus on this term to determine if the specification provides a clear and consistent definition that supports the scope asserted across both patents.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '306 patent specification states the invention is comprised of "one or more organic solvents that create a non-aqueous organo solvent delivery system, (NOSDS)" '306 Patent, col. 5:32-35 This language suggests "solvating system" could be read broadly to encompass various combinations of organic solvents.
- Evidence for a Narrower Interpretation: Claim 1 of the '306 patent explicitly requires the "solvating system" to comprise "a mixture of aprotic solvents and protic solvents," where the protic solvent is chosen from a specific Markush group. This could support an argument that the term should be construed as being limited to mixtures containing components from the specifically enumerated lists.
The Term: "powdered colorant" ('300 Patent, claim 11)
Context and Importance: Plaintiff's non-infringement argument for the '300 patent hinges on this term, as it alleges its products do not use a "powdered colorant" Compl. ¶89 The construction of "powdered" will be critical: does it refer to the state of the colorant before it is mixed into the liquid formulation, or must it remain in a powdered or particulate state in the final product?
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The '300 patent specification refers to using "a food coloring or dye... to improve the visual evidence of complete coverage" '300 Patent, col. 7:17-20 An argument could be made that any colorant that achieves this purpose, regardless of its initial form, falls within the scope, and "powdered" is merely an example.
- Evidence for a Narrower Interpretation: The explicit use of the word "powdered" in claim 11, without any indication that it is exemplary, may support a narrower construction. An argument could be advanced that if the patentee intended to cover liquid dyes, the claim would have been drafted more broadly to recite "colorant" without the "powdered" limitation.
VI. Other Allegations
Indirect Infringement
The complaint states that Plaintiff does not and has not infringed any claim of the Asserted Patents, "either directly or indirectly" Compl. ¶76 Compl. ¶88 Compl. ¶101 Compl. ¶113 The complaint does not provide specific facts from Defendant's infringement allegations that would form the basis of an indirect infringement claim.
Inequitable Conduct ('414 Patent)
The complaint includes a count for declaratory judgment of unenforceability of the '414 patent due to inequitable conduct Compl. ¶¶122-142 The allegation is based on the failure of the inventors and prosecuting attorneys to disclose the PTAB's Final Written Decision invalidating the related '108 patent to the USPTO during the prosecution of the '414 patent application Compl. ¶137 Compl. ¶139 The complaint alleges this decision was material to patentability and was withheld with the specific intent to deceive the USPTO Compl. ¶133 Compl. ¶141
VII. Analyst's Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to center on three primary questions for the court:
Factual Congruence: A threshold issue is one of technical fact: do Plaintiff's accused fertilizer formulations contain the specific chemical components-such as the protic solvents in the '306 and '414 patents, the powdered colorant in the '300 patent, and the poly(organic acid) monomers in the '311 patent-as strictly required by the plain language of the asserted independent claims?
The Shadow of Prior Litigation: A key legal question will be the impact of the prior invalidation of a related patent. The court will need to determine whether the claims of the patents-in-suit are patentably distinct from the invalidated claims of the '108 patent, or if the prior art and reasoning that defeated the '108 patent are equally fatal to the validity of the patents now asserted against Plaintiff.
Duty of Candor: The case presents a pointed question of prosecution integrity regarding the '414 patent. The court will be asked to decide if the failure to disclose the adverse PTAB decision against a sister patent during prosecution was a material omission done with deceptive intent, a finding that could render the entire '414 patent unenforceable.