In its Final Written Decision, the Board determined that all of the challenged claims (1-5, 7-11, 13, and 14) of the ’259 Patent are unpatentable, denied Patent Owner’s Corrected Motion to Amend, granted in part Petitioner’s Motion to Exclude, and dismissed as moot Patent Owner’s Motion to Exclude. The ’259 Patent is directed to a combination seed capsule, comprising at least one viable seed, a coating of composition comprising a soil conditioning material mounted proximate and disposed outwardly of the outer surface of the seed, and optionally including one or more of inorganic chemical fertilizers, growth enhancer, binder, and/or anti-fungal agent.
The Board began by addressing evidentiary matters. First, Patent Owner asserted in a conference call that Petitioner’s Reply raised new arguments and evidence. The Board agreed that the Reply and in particular two supporting declarations contain material outside the proper scope of a reply because both declarations contain materials in support of the Petition, making them untimely filed. Therefore, the Board did not consider those declarations or the arguments based upon them. The Board then addressed Petitioner’s Motion to Exclude, which was granted in part as to a declaration that was submitted with Patent Owner’s Reply in Support of its Motion to Amend. The Board agreed with Petitioner that said declaration should have been filed in support of the Motion to Amend and was therefore not timely and was not considered. Finally, the Board addressed Patent Owner’s Motion to Exclude a declaration submitted with the Reply. Because the Board already found it untimely, the Board dismissed this Motion as moot.
The Board then turned to claim construction, stating claims must be interpreted using the broadest reasonable construction in the context of the specification unless the patentee acts as his own lexicographer or the patentee disavows the full scope of a claim term. The Board first addressed the meaning of the term “soil conditioning materials,” adopting the construction applied in the Decision to Institute. Patent Owner stated that this definition was overbroad based upon the testimony of its experts, but the Board stated that Patent Owner’s constructions were unpersuasive because the experts provided no credible analysis in support of their claim constructions. The Board then examined the term “combination seed capsule.” Patent Owner provided a construction, but Petitioner argued that because the term is in the preamble it is not limiting because the claim body describes a structurally complete invention. The Board agreed with Petitioner. Next, the Board reviewed the term “being in a solid state at time of coating,” and Patent Owner argued for a narrower construction based on its disavowal of claim scope to overcome prior art. The Board found that Patent Owner did disavow claim scope as supported by the prosecution history. Finally, the Board addressed the term “agglomeration operation,” which the Board construed in its Decision to Institute to be a product-by-process limitation. Patent Owner agreed that it is a product-by-process limitation, but also wanted to narrow it to only include fine particles. The Board did not agree with that limitation.
Next, the Board discussed the challenge to claims 1, 2, 5, 7, 8, 11, 13, and 14 as being anticipated by Roth. The Board found that Petitioner did not show that Roth anticipates said claims because it does not disclose the soil conditioning materials “being in a solid state at time of coating.”
The Board then examined the challenge to claims 1-5, 7-11, 13, and 14 as obvious over Roth and Lowe. The Board found that Roth and Lowe disclose all of the limitations of the claims. Petitioner asserted that because Roth teaches a MAS carrier for agricultural chemicals that can coat a seed and because Lowe teaches an agricultural carrier consisting of paper sludge, a person of ordinary skill in the art would have had reason to substitute Lowe’s paper mill sludge for Roth’s MAS coating. Patent Owner disagreed, asserting that the proposed combination runs contrary to the disclosure of Roth. The Board agreed with Petitioner, stating that Patent Owner’s argument was not persuasive and that its declaration in support of its argument failed to provide the underlying basis for its conclusions.
The Board then reviewed the challenge that claims 1, 7, and 13 are anticipated by Schreiber. Patent Owner argued that Schreiber does not disclose a “combination seed capsule,” but the Board found that a “combination seed capsule” is found in the preamble and does not limit the claim. Therefore, claims 1, 7, and 13 are anticipated by Schreiber.
Next, the Board discussed the challenge to claims 2, 5, 8, 11, and 14 as obvious over Schreiber and Roth. Petitioner proposed using Roth’s MAS in place of Schreiber’s peat moss, but the Board found that Roth’s MAS does not satisfy the requisite claim limitation, therefore, claims 2, 5, 11, and 14 are not obvious over Schreiber and Roth.
The Board then turned to the challenge to claims 3, 4, 9, and 10 as obvious over Schreiber and Lowe. Patent Owner disputed that a person of ordinary skill in the art would have had reason to combine Schreiber and Lowe, and the Board agreed.
Finally, the Board reviewed the challenge to claims 1, 2, 7, 8, 13, and 14 as anticipated by Matthews. Patent Owner again asserted that Matthews does not disclose a “combination seed capsule,” but the Board found this does not limit the claim. Further, the Board did not find Patent Owner’s additional arguments persuasive. Therefore, the Board found that claims 1, 2, 7, 8, 13, and 14 are anticipated by Matthews.
In regards to the findings about the combination of Roth and Lowe, the Board had to review evidence of secondary considerations. Patent Owner alleged copying by others, long felt need, and commercial success, but the Board found that Patent Owner failed to provide sufficient credible evidence to support its allegations. Specifically, Patent Owner did not demonstrate that the products of Petitioner upon which Patent Owner alleged copying fall within the scope of any claim of the ’259 Patent, that Petitioner was aware of the ’259 Patent prior to developing the product, or that Petitioner developed its product by copying the ’259 Patent. Further, Patent Owner failed to present credible evidence that the alleged long felt need was satisfied by the invention of the ’259 patent or that the commercial success of any product was attributable to the patented features of the product.
The Board then discussed Patent Owner’s Corrected Motion to Amend. The Board found that Patent Owner failed to demonstrate that the added limitations distinguish over the known prior art, such as Roth in combination with Lowe. Specifically, the Board found that Patent Owner failed to show how the new structural limitations differ from what was previously recited in the claim, and failed to construe any of the new claim limitations.
The Scotts Company LLC v. Encap, LLC, IPR2013-00110
Paper 79: Final Written Decision
Dated: June 24, 2014
Before: Michael P. Tierney, Lora M. Green, and Rama G. Elluru
Written by: Per Curiam