In its Decision, the Board denied institution of inter partes review, holding that Petitioner had not established a reasonable likelihood that it would prevail with respect to any challenged claim in the ‘469 patent. The ‘469 patent relates to “systems and methods for an automated seed sampling and sorting system.” Petitioner challenged the patentability of claims 55 and 58-60 as being obvious over a combination of five references (Horigane 1, Horigane 2, Keller, Kelley, and CN2510248 Y).
With respect to claim construction, the Board noted that although the parties proposed construction of several terms, the Board found it unnecessary to expressly construe any claim term.
The Board then turned to the asserted obviousness ground of unpatentability. Patent Owner focused its analysis in the Preliminary Response on two features of claim 55: “orienting a seed based on image data collected when imaging the seed, and wherein the imaging, orienting, and removing steps comprise automated operations.” Patent Owner argued that the two Horigane references do not disclose “orienting a seed based on image data,” in contrast to the position taken in the Petition.
The Board next analyzed the two Horigane references. Ultimately, the Board was persuaded by Patent Owner that neither Horigane reference taught the limitation “orienting the at least one seed based on image data collected when imaging the at least one seed.” Rather, Horigane 1 disclosed two types of imaging, one regarding the size of the kernels to make a kernel holder, and one regarding color. The step of orienting the seeds was done manually in Horigane 1, and was not based on image data.
With respect to Horigane 2, the Board noted that although the reference discloses orienting the seeds to analyze surfaces that had been cut, the “orientation is not taught to be done based on image data,” but was rather done manually.
The Board then addressed an argument raised by Petitioner based on a construction of the claim term “automated” as “partially machine driven and/or computer controlled to reduce the amount of work done by humans.” Even under this interpretation, the Board was still not persuaded. As discussed above, the Board found that Horigane 1 and 2 disclose manual processes that do not teach an “automated” operation, even under Petitioner’s interpretation.
The Board also found that Petitioner had not presented sufficient “reasoning with rational underpinning to support a conclusion of obviousness” with respect to combining the references. In particular, Petitioner relied upon Keller as providing a reason to combine Kelley and CN2510248 Y, which allegedly taught the lacking orienting seeds based on imaging data, with the Horigane references. The Board was not persuaded. The Board noted that Keller disclosed a need for automated equipment in some “large-scale horticultural operations.” According to the Board, this did not “address the problem of automating operations for orienting a seed using image data for removing tissue.”
In addition, the Board found that Petitioner had failed to explain why it would have been obvious to have modified the Horigane references based on the teachings of Kelley and CN2510248 Y, which only concerned general purpose robotic systems. Instead, Petitioner relied upon a conclusory statement that persons of skill in the art would have looked to general purpose robotic systems (as in Kelley and CN2510248 Y) to automate the seed orienting methods in Horigane 1 and 2.
Therefore, the Board was not persuaded that Petitioner had shown a reasonable likelihood that it would prevail in establishing the unpatentability of claim 55 and its dependent claims 58-60 of the ‘469 patent.
E.I. Du Pont De Nemours and Company v. Monsanto Technology LLC, IPR2014-00335
Paper 15: Decision Denying Institution of Inter Partes Review
Dated: July 21, 2014
Patent: 8,028,469 B2
Before: Lora M. Green, Sheridan K. Snedden, and Susan L.C. Mitchell
Written by: Mitchell
Related Proceedings: Monsanto Co. v. Pioneer Hi-Bred International, Inc., No. 4:12-cv-1090-CEJ (E.D. Mo.); IPR2014-00331; IPR2014-00332; IPR2014-00333; and IPR2014-00334