## Facts

- Bruno Imazio discovered a new heather plant in 1978, later patented as “Erica Sunset,” based on early and profuse blooming characteristics.
- Imazio obtained U.S. Plant Patent No. 5,336, claiming a new variety of heather characterized by blooms over the entire stem beginning in early December.
- Imazio accused Coastal Nursery and associated individuals of infringing by marketing a similar plant as “Holiday Heather.”
- Coastal denied infringement and asserted independent development, contending its plant was not a clone or other asexual progeny of the patented plant.
- The district court preliminarily enjoined Coastal from distributing “Holiday Heather” plants and later granted summary judgment of infringement to Imazio based on a “same essential characteristics” comparison.
- A later jury upheld validity and found willful infringement, resulting in enhanced damages and an attorney-fee award to Imazio.
- Coastal appealed, challenging the infringement standard and resulting remedies.

## Issues

1. Whether plant patent infringement may be shown by proof that an accused plant has the “same essential characteristics” as the patented plant.
2. Whether the correct infringement test requires proof that the accused plant is an asexual reproduction (clonal progeny) of the patented plant.
3. Whether independent creation of a similar plant defeats plant-patent infringement.

## Decision

- The Federal Circuit reversed the summary judgment of infringement.
- The court held that a plant patent is infringed only by an asexual reproduction of the patented plant (i.e., clonal progeny), not by mere similarity in observable characteristics.
- The court vacated the willfulness finding and the attorney-fee award as dependent on the erroneous infringement ruling.
- The case was remanded for further proceedings applying the correct infringement standard, including factual development on clonality.

## Legal Principles

- The scope of a plant patent is limited to the specific patented plant and its asexually reproduced progeny, not a broader class of plants sharing similar traits.
- Plant-patent infringement requires proof—direct or circumstantial—that the accused plant is an asexual progeny (clone) of the patented plant.
- A “same essential characteristics” test improperly expands plant patent rights beyond the statutory scheme and is not a sufficient basis for infringement.
- Independent creation or independent breeding of a similar plant is a complete defense to plant-patent infringement when the accused plant is not clonally derived from the patented plant.
- Summary judgment of plant-patent infringement is improper where material facts remain as to whether the accused plant is an asexual progeny of the patented plant.

## Conclusion

The Federal Circuit held that plant patent rights are confined to the patented plant and its asexual progeny, so infringement requires proof of clonal derivation rather than mere similarity in characteristics; it therefore reversed the infringement judgment, vacated willfulness and fees, and remanded for fact-finding under the correct standard.


Imazio Nursery, Inc. v. Dania Greenhouses, 69 F.3d 1560 (Fed. Cir. 1995)