A Potential Paradigm Shift in PVR Disputes Awaiting Supreme Court Review

A recent plant variety right (PVR) dispute has garnered the attention of Taiwan’s IP community as the Intellectual Property and Commercial Court (IPC Court) reconsiders a pivotal question in PVR cases: What precisely should be compared when assessing PVR infringement?

The Previous Rule

Three years ago, in a dispute involving two rose breeds, the IPC Court addressed this query in what became known as the Idyll decision. A panel of the court declared that a comparison should be drawn between the traits of the allegedly infringing plant and the registered traits of the PVR-protected plant variety. The Idyll approach was analogous to the comparison process used in patent cases, wherein an alleged infringing product is compared with the patent claims. Idyll Floral Co., Ltd. v. Taipei Flowers Auction Co., Ltd. et al., 109 Min Zhi Shang 1, Taiwan’s IP Court (September 2020).

A Possible Paradigm Shift

The landscape shifted in April 2023 with the case of Liu v. Wang. As it happened, another panel of the same IPC Court departed from the Idyll rule. They held that a comparison between the accused infringing plant and the right holder’s plant is permissible and adequate, provided both plants were nurtured under identical conditions. Liu v. Wang, 110 Min-Zhi-Shang-Yi 1, IPC Ct. (April 2023).

The Taiwanese Pear

In Liu v. Wang, the plaintiff’s plant is a renowned Taiwanese pear breed called “Baodao Ganlu,” literally “Formosan Sweet Dew” (the writer’s translation). This pear, celebrated for its juiciness, sweetness, and huge size, holds significant popularity among consumers. It was reported that Liu, the right holder and an independent farmer, invested 18 years and conducted over 1,000 crossbreeding attempts to develop this variety. He filed the PVR application in 2014, and spent another 40 months to see the right granted.

Photos of Baodao Ganlu pears in the 2014 application
Source: Ministry of Agriculture’s Plant Variety Database

Comparative Cultivation

Wang the defendant, another farmer, was accused of growing and selling Baodao Ganlu without a license.

With the assistance from the court through an “evidence preservation proceeding,” Liu obtained a branch from Wang’s pear tree and subsequently grafted it onto a commonly cultivated pear tree at Liu’s orchard in January 2021. Simultaneously, a branch from Liu’s Baodao Ganlu tree was selected for the same process. Consequently, the parties’ samples were cultivated side by side under precisely identical conditions in Liu’s orchard. By late February, both trees blossomed and bore fruits, all under the observation of a state agricultural research station designated by the court. The entire process was agreed upon and witnessed by both parties and their lawyers.

The Infringement Analysis

In August 2021, the research station submitted its analysis report to the court, concluding that the pear samples shared each of the 57 traits recorded by the research station. These traits encompassed the fruit, flower, petal, and twig. The pears proved indistinguishably similar.

As a result, the court ruled in favor of Liu, holding Wang accountable for PVR infringement. Wang’s appeal proved unsuccessful. The court awarded Liu a total of NT$900,000 in damages, calculated based on Wang’s profits. Additionally, the court imposed a permanent injunction against Wang’s cultivation of the infringing plants.

The Methodology Issue

During the trial, Wang challenged the “plant-against-plant” methodology employed in the research station’s report. He argued that the comparison should have been made against the registered traits of Baodao Ganlu in accordance with the rule established in the Idyll decision. Wang further contended that the research station’s method could not guarantee the authenticity of Liu’s pear samples used for comparison.

The court rejected Wang’s arguments for two primary reasons. Firstly, Wang and his team remained silent throughout the process of branch sampling, grafting and cultivation. They did not voice concerns about the authenticity of Liu’s pear samples, nor did they question the comparative cultivation method used for the infringement analysis.

Secondly, the court accepted the research station’s rationale that their “plant-against-plant” comparison, at least in this case, was more logical than the Idyll approach. According to the research station, the Idyll approach does not consider non-genotype level variations often caused by changes in cultivation conditions and environments.  In contrast, a comparison of plant samples cultivated under identical conditions offered greater accuracy and significance. 

The research station emphasized that the Baodao Ganlu samples submitted in the PVR application were cultivated without commercial additives to meet regulatory requirements. This cultivation did not mirror real-world commercial cultivation practices. Given that the infringement analysis was used in a commercial dispute, the plant-against-plant approach was deemed more appropriate.

The Uniformity and Stability Issue

The research station’s aforementioned explanation implied that variations had occurred between the Baodao Ganlu samples submitted in the 2014 PVR application and those used in the 2021 infringement analysis.

This point was exactly what Wang contested in addition to his challenge to the comparison methodology the court endorsed.  Wang argued that Liu’s pear samples used in the infringement analysis displayed significant quantitative and qualitative variations from the registered traits of Baodao Ganlu. These differences were pronounced to the extent that Baodao Ganlu had lost its uniformity and stability, warranting the revocation of its PVR registration, Wang argued.

Notably, the registered Baodao Ganlu samples were characterized by an average weight of 856 grams per piece, while Liu’s 2021 samples averaged over 1,300 grams per piece. Additionally, differences in sepal persistence modes were noted, and Wang asserted that these qualitative deviations were unrelated to cultivation conditions.

The court, accepting the research station’s expert opinion, dismissed these claims. According to the research station’s visual inspection, only 11 out of the 57 registered traits of Baodao Ganlu exhibited “level 2” deviations in Liu’s 2021 pear samples.  The remaining 46 traits were consistent or only displayed “level 1” minor deviation. The court attributed these variations to changes in cultivation conditions and environments, holding there was adequate causation between the two.

The court also noted that the temperature records indicated a warm spring in 2021 when the comparative cultivation was undertaken. This explained why Liu’s 2021 pear samples were larger and featured longer-persisting sepals compared to the 2014 samples used in the PVR application.

Supreme Court’s First Glimpse

While the Idyll decision did not ascend to the Supreme Court for review, the Liu v. Wang case has been appealed and awaits the Supreme Court’s review. This presents an opportunity for the Supreme Court to address the PVR question for the first time.

In the interim, the question arises: can the comparison methodology endorsed in Liu v. Wang be reconciled with the Idyll rule?

Drawing a parallel to the scope of invention patents, wherein equivalents are covered, a PVR could encompass deviations within a reasonable extent. Under Article 25 of the Plant Variety and Plant Seed Act, the PVR right shall extend to depending varieties, namely:

  1. Varieties essentially derived from a variety protected by the PVR, and where such protected variety is not essentially derived from another variety,
  2. Varieties not clearly distinguishable in comparison with a variety protected by the plant variety right, and
  3. Varieties which require repeated use of a variety protected by the plant variety right in order to be produced.

Thus, cultivating samples of the right holder’s variety could serve as a necessary step to establish the reasonable scope of trait deviations under specific cultivation conditions. Similarly, the plant-against-plant comparison could be viewed as a practical means of comparing the accused infringing plant against the reasonable scope of trait deviations represented by the rights holder’s plant sample. But of course, for this theory to hold ground, the right holder’s plant sample for comparison must be an authentic specimen agreed upon by all relevant parties.