Avocado company drops plant patent suit against rival

Dominican Republic-based Agroindustrial Ocoeña has asked a US court to dismiss its plant patent claim against a competitor run by the patent inventor’s brother.

On Monday, June 10, avocado company Agroindustrial Ocoeña asked the US District Court for the Southern District of Florida to dismiss with prejudice its patent suit, which alleged California-based Avocados Plus had infringed US patent number PP16,594.

The ‘594 patent, called “Avocado tree named ‘Carla’”, was invented by Carlos Castillo Pimentel and assigned to Agroindustrial Ocoeña.

Back in September 2018, Agroindustrial Ocoeña had accused Avocados Plus, which is owned by Carlos’s brother Manuel Castillo Pimentel, of infringing the patent through the sale of avocados in the US.

“A test comparison of DNA from the accused products with that of fruit from the patented tree reveals that they share identical genetic stock and originate from the same tree or from an asexually reproduced clone copies of the same tree,” said the claim.

But Avocados Plus counterclaimed, alleging that it hadn’t infringed the patent because Carlos had authorised the provision and unrestricted use of the stem, buds, and/or clippings of an avocado tree called Carla to his brother.

Earlier this week, Agroindustrial Ocoeña conceded that Avocados Plus hadn’t infringed the patent, since Manuel Castillo Pimentel and his company have “always had the unrestricted right to practice the invention claimed by the ’594 patent”.

Agroindustrial Ocoeña added that the parties “are desirous of ending this litigation so that each may continue in its business practices without the burden of litigation” and requested that the district court dismiss the suit.

Deepro Mukerjee, national co-chair of Katten’s patent litigation practice and Avocados Plus’ representative, said that the dismissal was a clear victory for the company.

“Our client can now move forward with its business without any threat from Agroindustrial Ocoeña. I know how much this meant to our client on a personal level and it brings me great satisfaction to know we were able to achieve this result.”

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