In its Decision, the Board denied institution of inter partes review of claims 1, 2, 5-16 and 18-22 of the ‘439 patent. According to the Board, Petitioner had not established that there is a reasonable likelihood that it would prevail on proving that these claims were unpatentable.
Petitioner filed a Petition challenging claims 1, 2, 5-16 and 18-22 of the ’439 patent. In reply, Patent Owner filed a Patent Owner Preliminary Response.
The ’439 patent relates to systems and methods of separating, extracting samples from, and sorting seeds, and to mapping related “wells.” Claims 1 and 15 are the independent claims of the ’439 patent. Claims 2 and 5-14 and claims 6 and 18-22 respectively depend, directly or indirectly, from independent claims 1 and 15. Claims 1, 2, 5-7, 9-13, 15, 16, and 18-22 were challenged as having been obvious in view of Horigane 1 and Horigane 2 under 35 U.S.C. § 103(a); and claims 8 and 14 were challenged as having been obvious in view of Horigane 1, Horigane 2, Keller, Kelley, and CN2510248Y under 35 U.S.C. § 103(a).
Petitioner asked the Board to construe six different claim terms or phrases. The Board, in reply, indicated that no explicit construction of any of the claim term or phrase was necessary at this time. Thus, the Board did not provide any explicit construction for any of the claim terms/phrases.
Petitioner asserted that claims 1, 2, 5-7, 9-13, 15, 16, and 18-22 are unpatentable over Horigane 1 taken in combination with Horigane 2. Each of these claims, according to the Board, requires that “once the seeds are loaded in the seed transport, the seeds are brought into proper orientation substantially simultaneously.” The Board then agreed with Patent Owner that “Horigane 1’s method requires the seeds to be oriented before loading the seed into the holder such that the seed is placed into the holder dorsal side out,” which in turn led the Board to conclude that it was “not persuaded that Horigane 1 discloses the separate step of orienting seeds while the seeds are held in the seed transport as recited in claims 1 and 15.” The Board further found that “the seeds of Horigane 2 also are oriented prior to being loaded into the seed holder” and that the “handling of the seed holder does not alter the orientation of the seeds with respect to the holder or other individual seeds.” Thus, the Board “was not persuaded that Horigane 2 discloses the step of orienting seeds while the seeds are held in the seed transport, as recited in independent claims 1 and 15.”
Accordingly, the Board concluded that Horigane 1 and Horigane 2 do not teach every element of any of claims 1, 2, 5-7, 9-13, 15, 16, and 18-22. Consequently, the Board found that Petitioner had not demonstrated a reasonable likelihood that the combination of these two references would have rendered obvious these claims of the ’439 patent. Moreover, addressing the remaining challenged claims, the Board found that the other references of record did not make up for these deficiencies in Horigane 1 and Horigane 2. Thus, the Board was “not persuaded that there is a reasonable likelihood that [Petitioner] would prevail at trial based on obviousness of either claim 8 or 14 over the combination of Horigane 1, Horigane 2, Keller, Kelley, and CN2510248Y.”
E.I. Du Pont de Nemours and Company v. Monsanto Technology LLC, IPR2014-00334
Paper 16: Decision
Dated: July 11, 2014
Patent 8,245,439 B2
Before: Lora M. Green, Sheridan K. Snedden, and Susan L. C. Mitchell
Written by: Snedden
Related Proceedings: Monsanto v. Pioneer Hi-Bred International, Inc., Case No. 4:12-cv-1090-CEJ (U.S. Dist. Ct. E.D. Missouri); Petitioner also filed Petitions for inter partes review of claims 1-13 of U.S. Patent No. 8,071,845; claims 55, 58, 59, and 60 of U.S. Patent No. 8,028,469; claims 1-11 of U.S. Patent No. 7,832,143; and claims 1-26 of U.S. Patent No. 8,312,672