Deere & Company

Patent Trials and Appeals Board

Dec 31, 2020

IPR2019-01052 (P.T.A.B. Dec. 31, 2020)

Trials@uspto.gov Paper 91
571-272-7822 Entered: December 31, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PRECISION PLANTING LLC, AGCO CORPORATION,
Petitioner,
v.
DEERE & COMPANY,
Patent Owner.

IPR2019-01052
Patent 9,820,429 B2

Before, BARRY L. GROSSMAN, JAMES A. TARTAL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
Dismissing Petitioner’s Motion to Exclude
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Precision Planting LLC and AGCO Corporation (collectively
“Petitioner”) filed a Petition requesting an inter partes review of claims 1–4,
6–11, and 13–20 of U.S. Patent No. 9,820,429 B2 (“the ’429 patent”).
Paper 4 (“Pet.”). Deere & Company (“Patent Owner”) filed a Preliminary
Response. Paper 10 (“Prelim. Resp.”). After receiving our authorization to
do so, Petitioner filed a Reply (Paper 11) and Patent Owner filed a Sur-
Reply (Paper 13).
We concluded that Petitioner satisfied the burden, under 35 U.S.C.
§ 314(a), to show that there was a reasonable likelihood that Petitioner
would prevail with respect to at least one of the challenged claims.
Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), and in
accordance with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018), we
instituted an inter partes review of all the challenged claims, on all the
asserted grounds. Paper 19 (“Dec. Inst.”).
Patent Owner filed a Response. Paper 33 (“PO Resp.”). Petitioner
filed a Reply. Paper 58 (“Reply”). Patent Owner filed a Sur-Reply.
Paper 65 (“Sur-Reply”).
Petitioner submitted 113 exhibits. See Exs. 1001–1148 (not
consecutive; some exhibit numbers not used); see also Ex. 1148 (Joint
Exhibit Index concordance of exhibits in this proceeding and the related
post-grant proceedings). Petitioner relies, in part, on the Declaration
testimony of Douglas S. Prairie. See Ex. 10021.

1 Mr. Prairie earned a B.S. in Agricultural Engineering, and an M.S. in
Mechanical Engineering. He is a registered Professional Engineer in Idaho.
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Patent Owner submitted 232 exhibits. See Exs. 2001–2275 (not
consecutive; some exhibit numbers not used). Patent Owner relies, in part,
on the Declaration testimony of Dr. James L. Glancey. See Ex. 22042.
Petitioner filed a Motion to Exclude evidence submitted by Patent
Owner. Paper 73 (“Pet. Mot. Excl.”). Patent Owner filed an Opposition to
the Motion to Exclude. Paper 74 (“PO Resp. Mot. Excl.”). Petitioner filed a
Reply. Paper 83 (“Pet. Reply Mot. Excl.”).
Patent Owner filed a Motion to Exclude evidence submitted by
Petitioner. Paper 71 (“PO Mot. Excl.”).3 Petitioner filed an Opposition to
the Motion to Exclude. Paper 77 (“Pet. Resp. Mot. Excl.”). Patent Owner
filed a Reply. Paper 82 (“PO Reply Mot. Excl.”).

Ex. 1002 ¶ 2. He also has approximately twenty years of experience in the
agricultural and mechanical engineering industry, working primarily on the
development of precision seeding technology. Id. ¶¶ 3–11. Mr. Prairie is an
Instructor in the Agriculture and Biosystems Engineering Department at
South Dakota State University. Id. ¶ 11. He is a named inventor on multiple
U.S. patents and applications relating to seeding and planting technology.
Id. ¶ 12.
2 Dr. Glancey earned degrees in Agricultural and Biological Engineering,
culminating in a Doctor of Philosophy in Engineering with an emphasis in
Mechanical Engineering and concentrations in Civil Engineering,
Agricultural and Biological Engineering, and Applied Mathematics.
Ex. 2204 ¶ 3. Currently, he holds a dual appointment at the University of
Delaware as a Professor of Machine Design and Development in Mechanical
Engineering and a Professor in the College of Agriculture and Natural
Resources. Id. ¶ 4. He is an inventor on one U.S. patent related to
harvesting, and three U.S. patents related to composite material
manufacturing and automation. Id. ¶ 6. Dr. Glancey is a Registered
Professional Engineer in Delaware. Id. ¶ 11.
3 We cite to the redacted versions of the documents related to this Motion.
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A hearing was held October 13, 2020. Paper 90 (“Tr.”). This was a
joint hearing that also included related cases IPR2019-01050 and IPR2019-
01054.
We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has the burden of proving unpatentability of a claim by a
preponderance of the evidence. 35 U.S.C. § 316(e).
Based on the findings and conclusions below, we determine that
Petitioner has not proven that claims 1–4, 6–11, and 13–20 are unpatentable.
We dismiss as moot both Petitioner’s Motion to Exclude Evidence
and Patent Owner’s Motion to Exclude Evidence.
B. Real Parties in Interest
Petitioner identifies Precision Planting, LLC and AGCO Corp. as the
real parties-in-interest. Pet. 6. Petitioner also states that “[f]or
completeness,” Petitioner also names Monsanto Co. and Bayer AG as real
parties-in-interest. Id.
Patent Owner identifies itself, Deere & Company, as the sole real
party-in-interest. Paper 5, 1.
C. Related Matters
Patent Owner sued Petitioner for infringement of the ’429 patent. See
Pet. 7; Paper 5, 1 (citing Deere & Company v. AGCO Corporation, Civil
Action No. 1:18-cv-00827-CFC (District of Delaware June 1, 2018) (the
“827 case”); Deere & Company v. Precision Planting LLC, Civil Action No.
1:18-cv-00828-CFC (District of Delaware June 1, 2018) (the “828 case”)).4

4 See Ex. 3003 (District Court’s docket entry for January 9, 2019, of an
“ORAL ORDER” stating that the 827 and 828 cases are “consolidated,”
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Petitioner also lists the following Board proceedings as related
matters:
Case No. Challenged Patent
IPR2019-01044 U.S. Patent No. 8,813,663
IPR2019-01046 U.S. Patent No. 9,480,199
IPR2019-01047 U.S. Patent No. 9,510,502
IPR2019-01048 U.S. Patent No. 9,686,906
IPR2019-01050 U.S. Patent No. 9,807,922
IPR2019-01051 U.S. Patent No. 9,807,924
IPR2019-01053 U.S. Patent No. 9,861,031
IPR2019-01054 U.S. Patent No. 10,004,173
IPR2019-01055 U.S. Patent No. 9,699,955
Pet. 6. The listed IPR proceedings involve the same parties as this 01052
IPR proceeding. The challenged patents in the list above also are involved
in the Delaware Case. E.g., see Exs. 3005, 3006.
We note that the disclosure in the ’429 patent is substantially similar
to the disclosure in U.S. Patent No. 9,686,906 (the “’906 patent”), which is
challenged in IPR2019-01048 (the “01048 IPR”). The drawings in the ’429
patent are identical to the drawings in the ’906 patent.

with the 827 case as “the lead case and all future filings shall be made in that
case only.” Accordingly, the 827 case now includes both of the entities that
this Decision refers to collectively as Petitioner. For simplicity, this
Decision refers to the now consolidated 827 and 828 cases as the “Delaware
Case.” The Delaware Case was stayed pending the outcome of this 01052
IPR proceeding and the related inter partes review proceedings. Ex. 3001.
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D. The ’429 Patent
The ’429 patent relates generally to seeding machines called
“planters” that are used by farmers to plant seeds in a field. Ex. 1001, 1:20–
22. In a typical configuration shown below, the planter is attached to a
tractor, which pulls the planter across the field. The planter includes a main
hopper and many “row units” each of which takes seeds from the main
hopper, places them in an auxiliary hopper, and delivers them to the ground.
Id. at 1:26–28. An illustration of a seed planter is shown below:

Illustration of a seed planter.
See Ex. 2003 ¶ 345; see also Ex. 1001, Fig. 1.

5 This illustration from the complaint in the Delaware Case is an image of a
“90-foot-wide John Deere DB90 planter, which covers 36 rows with each
pass.” Ex. 2003 ¶ 34. We provide it as an illustration of the general type
and scale of the planters disclosed in the ’429 patent. We make no finding,
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In a typical planter configuration, the planter is attached to a tractor,
which pulls the planter across a field to be planted with seeds. Ex. 1002
¶ 34.
An annotated figure of the basic components of a typical seed planter
is shown below. See id.

As shown above, a typical seed planter includes a main hopper, which
transfers seeds to several “row units,” each of which includes an auxiliary
hopper and a seed delivery system that delivers, and plants, seeds into a
trench or furrow in the ground. Id.
The most common seed delivery system used in row units is a
“gravity drop system,” in which seeds from the auxiliary hopper drop into a
seed tube and fall by gravitational force into a seed trench. Ex. 1001, 1:52–
58. One problem with this system is that the relative velocity difference
between seed and soil causes individual seeds to bounce and tumble in
somewhat random patterns as each seed enters the trench. Ex. 1001, 1:67–
2:21. According to the Specification, the disclosed seed delivery system

however, whether this particular planter is within the scope of the invention
claimed in the ’429 patent.
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provides a “controlled descent” of the seed to result in “a low or zero
horizontal velocity” of the seed relative to the trench. Id. at 2:25–40.
According to the ’429 patent, precise placement of seeds during
planting is critical to producing maximum crop yield. E.g., Ex. 1001,
Abstract (“the seeds are isolated from row unit dynamics thereby
maintaining seed spacing”); see also Ex. 2031 ¶ 16 (“If corn plants are
spaced too close together, the plants compete for resources such as water and
sunlight and neither produces acceptable quality ears. They are basically
weeds. If corn plants are planted too far apart, you have lost the potential for
a productive plant that yields acceptable ears.”).
There is a balance between planting seeds quickly and spacing seeds
precisely. Ex. 2031 ¶ 11 (“As the planter travels over the field, the uneven
terrain will cause seeds to bounce and ricochet throughout its entire path of
travel to the ground. This causes lack of seed spacing accuracy. The faster
you travel across the field, the worse this accuracy problem becomes.”); see
also Ex. 1001, 1:65–67 (“The spacing variation is exacerbated by higher
travel speeds through the field which amplifies the dynamic field
conditions.”).
The ’429 patent relates more specifically to a “seeding machine
having a seed metering system and a seed delivery system for delivering
seed from the meter to the ground.” Ex. 1001, 1:14–16. In the “Background
of the Invention,” the ’429 patent explains that in known seed delivery
systems, differences in how individual seeds exit the metering system and
drop through the seed delivery tubes cause undesirable variations in seed
spacing. Id. at 1:62–65 (“Undesirable variation in resultant in-ground seed
spacing can be attributed to differences in how individual seeds exit the
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metering system and drop through the seed tube.”). In the “Summary of the
Invention,” the ’429 patent describes that its system reduces seed spacing
variability by capturing the seed, and then moving it, on a “controlled
descent” from the point at which it exits the metering system to a point near
the bottom of the seed trench, so that the seed is discharged at a substantially
zero horizontal speed relative to the ground. Id. at 2:25–40.
As described in the ’429 patent, and described in the related
disclosure, planter or seeding machine 10 includes tool bar 12 as part of
planter frame 14. Ex. 1001, 3:8–12. Mounted to the tool bar are multiple
planting row units 16. Id. One of these row units is shown in Figure 2 of
the ’429 patent, reproduced below.
Figure 2 is a side view of one row unit 16. Ex. 1001, 2:46–47.

Figure 2 of the ’429 patent discloses “parallelogram linkage 22 for
mounting the row unit 16 to the tool bar 12 for up and down relative
movement between the unit 16 and toolbar 12.” Ex. 1001, 3:17–21. “Seed
is stored in seed hopper 24 and provided to a seed meter 26,” and “[f]rom
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the seed meter 26 the seed is carried by a delivery system 28 [shown in
dashed lines] into a planting furrow, or trench, formed in the soil by furrow
openers 30.” Id. at 3:21–27. Figure 3 from the ’429 patent, reproduced
below and annotated by Petitioner (Pet. 16) shows a more detailed side view
of delivery system 28.

Figure 3 shows delivery system 28, with housing 48, adjacent to seed
disk 50, containing apertures 52, of the seed meter. Id. at 3:40–51. Seeds 56
are collected on the apertures from a seed pool and adhere to the disk by air
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pressure differential on the opposite sides of disk 50, which the ’429 patent
acknowledges is done “in a known manner.” Id. at 3:45–47. Inside housing
48 are mounted pulleys 60 and 62, which support belt 64 for rotation within
the housing. Id. at 3:52–57. Attached to belt 64 by base member 66 are
elongated thistles 70, which touch, or are close to touching, the inner surface
76 of side wall 53. Id. at 3:57–64. The belt rotates in a counterclockwise
direction, thus transferring seeds from the seed meter to the delivery system,
where “the bristles move or convey the seeds downward to the housing
lower opening” 78, holding the seeds against side wall 53 along the way. Id.
at 4:17–37. The seeds accelerate relative to the speed of belt base member
66 as they round the lower portion of the housing on their way to the lower
opening 78, and are “discharged through the lower opening 78 into the seed
trench.” Id. at 4:40–46.
Seeds 56 are removed from the seed meter and moved by the delivery
system to the seed discharge point where the seed is accelerated in a
rearward horizontal direction relative to the housing. Id. at 5:13–20. From
the seed meter to the discharge, the seed travel is controlled by the delivery
system, thus maintaining the seed spacing relative to one another. Id.
The belt shown in Figure 3 has relatively long bristles. Id. at 4:53.
The Specification explains:
As a result of the long bristles and the seed loading point being
at the end of the curved path of the brush around the pulley 60
results in the seeds being loaded into the belt while the bristles
have slowed down in speed. The bristle speed at loading is thus
slower than the bristle speed at the discharge opening as the belt
travels around the pulley 62. This allows in the seed to be loaded
into the belt at a relatively lower speed while the seed is
discharged at the lower end at a desired higher speed.
Id. at 4:53–62.
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The Specification explains that while brush bristles are the preferred
embodiment, other materials can be used to grip the seed, such as a foam
pad, expanded foam pad, mesh pad or fiber pad. Id. at 7:43–47.
E. Illustrative Claims
Petitioner challenges claims 1–4, 6–11, and 13–20. Claims 1, 8,
and 17 are independent claims. Independent claims 1 and 17 are directed to
a “row unit for a seeding machine.” Independent claim 8 is directed to a
“method of delivering a seed from a seed metering member to a furrow.”
Claim 1 is representative and is reproduced below.
1. A row unit for a seeding machine having a seed metering
member with a plurality of apertures through which an air
pressure differential is applied to retain seed thereon, the seed
metering member movable to convey seed from a seed reservoir,
the row unit comprising:
a housing for the seed metering member; and
a seed delivery apparatus comprising
a first pulley,
a second pulley, and
an endless member configured to be driven by the first
pulley and/or the second pulley, at least a portion of the endless
member positioned within the housing, wherein the endless
member is positioned to move across at least one of the plurality
of apertures.
F. Prior Art and Asserted Grounds
Petitioner contends that the challenged claims are unpatentable based
on the following grounds:
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Claim(s)
Challenged
References Basis of Unpatentability
1, 2, 4, 6, 7 Holdt6 and Koning7 35 U.S.C. § 103(a)
3, 8, 9, 13–20 Holdt, Koning, and Holly8 35 U.S.C. § 103(a)
10 Holdt, Koning, Holly, and
Sauder9
35 U.S.C. § 103(a)
11 Holdt, Koning, Holly, and
Hanson10
35 U.S.C. § 103(a)
Pet. 9.
Petitioner also relies on the Declaration testimony of Douglas S.
Prairie. See Exs. 1002; 1135.
II. MOTION TO EXCLUDE
Petitioner and Patent Owner each move to exclude a substantial
number of exhibits on a number of different evidentiary grounds. See Pet.
Mot. Excl.; PO Mot. Exclude. As our analysis does not rely on any of the
exhibits the parties seek to exclude, we dismiss each motion as moot.
Our general approach for considering challenges to the admissibility
of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., IPR2013-
00053, Paper 66 at 19 (PTAB May 1, 2014). As stated in Corning, similar
to a district court in a bench trial, the Board, sitting as a non-jury tribunal
with administrative expertise, is well-positioned to determine and assign
appropriate weight to evidence presented. Id. (citing Donnelly Garment Co.

6 German Pat. No. DE2826658A1, publ. Jan. 3, 1980. Ex. 1009 (“Holdt”).
7 US 4,193,523, issued Mar. 18, 1980. Ex. 1004 (“Koning”).
8 U.S. Pub. App. No. 2006/0278726A1, publ. Dec. 14, 2006. Ex. 1029
(“Holly”).
9 U.S. Pat. No. 6,681,706, issued Jan. 27, 2004. Ex. 1007 (“Sauder”).
10 U.S. Pat. No. 4,023,509, issued May 17, 1977. Ex. 1020 (“Hanson”).
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v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (stating, in the context of
reviewing an administrative determination of the National Labor Relations
Board based on findings by a Trial Examiner, “We think that experience has
demonstrated that in a trial or hearing where no jury is present, more time is
ordinarily lost in listening to arguments as to the admissibility of evidence
and in considering offers of proof than would be consumed in taking the
evidence proffered . . . . One who is capable of ruling accurately upon the
admissibility of evidence is equally capable of sifting it accurately after it
has been received . . . .”)).
Moreover, “there is a strong public policy for making all information
filed in an administrative proceeding available to the public.” Liberty Mut.
Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40
(PTAB Feb. 24, 2014). Rather than excluding evidence that is allegedly
hearsay, confusing, misleading, untimely, and/or irrelevant, we will simply
not rely on it or give it little or no probative weight, as appropriate, in our
analysis, which is what we have done here.
“In an inter partes review, we regard it as the better course to have a
complete record of the evidence to facilitate public access, as well as
appellate review.” Sony Computer Entm’t Am. LLC v. Game Controller
Tech. LLC, IPR2013-00634, Paper 32 at 32 (PTAB Apr. 14, 2015); see
also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118,
Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly, 123 F.2d at 224 (“If
the record on review contains not only all evidence which was clearly
admissible, but also all evidence of doubtful admissibility, the court which is
called upon to review the case can usually make an end of it, whereas if
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evidence was excluded which that court regards as having been admissible, a
new trial or rehearing cannot be avoided.”)).
III. ANALYSIS
A. Legal Standards
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of ordinary skill in the art; and (4) when available, objective
evidence of nonobvious, such as commercial success, long felt but unsolved
needs, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966); see KSR, 550 U.S. at 407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.”). The Court in Graham explained that
these factual inquiries promote “uniformity and definiteness,” for “[w]hat is
obvious is not a question upon which there is likely to be uniformity of
thought in every given factual context.” Graham, 383 U.S. at 18. We note
that no objective evidence of patentability has been asserted in this
proceeding.
The Supreme Court made clear that we apply “an expansive and
flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
Whether a patent claiming the combination of prior art elements would have
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been obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id. at 417. To support this conclusion, however, it is not enough to show
merely that the prior art includes separate references covering each separate
limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
that a person of ordinary skill at the time of the invention “would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id.
Moreover, in determining the differences between the prior art and the
claims, the question under 35 U.S.C. § 103 is not whether the differences
themselves would have been obvious, but whether the claimed invention as a
whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
claimed invention must be considered as a whole in deciding the question of
obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether
the differences themselves would have been obvious. Consideration of
differences, like each of the findings set forth in Graham, is but an aid in
reaching the ultimate determination of whether the claimed invention as a
whole would have been obvious.”).
As a factfinder, we also must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421.
Against this general background, we consider the references, other
evidence, and arguments on which the parties rely.
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B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens through which a judge,
jury, or the Board views the prior art and the claimed invention.” Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point
prevents these factfinders from using their own insight or, worse yet,
hindsight, to gauge obviousness.” Id.
Factors pertinent to a determination of the level of ordinary skill in the
art include: (1) educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of workers active in the field. Envt’l. Designs, Ltd. v.
Union Oil Co. of Calif., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
case, and one or more of these or other factors may predominate in a
particular case. Id. Moreover, these factors are not exhaustive but are
merely a guide to determining the level of ordinary skill in the art. Daiichi
Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
In determining a level of ordinary skill, we also may look to the prior
art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
Additionally, the Supreme Court informs us that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421.
In a one sentence statement, Petitioner proposes that a person of
ordinary skill in the art “would have had either: (1) a bachelor’s degree plus
four years of experience in mechanical engineering, agricultural engineering,
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or a related field or (2) a master’s degree plus two years of experience in
mechanical engineering, agricultural engineering, or a related field.”
Pet. 32–33 (citing Ex. 1002 ¶¶ 19–20). Mr. Prairie, Petitioner’s declarant,
states the factors he considered (Ex. 1002 ¶ 19) without any discussion or
analysis of facts or data related to those factors, and then repeats Petitioner’s
asserted level of ordinary skill as his opinion of the applicable level of skill
in this proceeding (id. ¶ 20). See 37 C.F.R. § 42.65(a) (“Expert testimony
that does not disclose the underlying facts or data on which the opinion is
based is entitled to little or no weight.”).
Patent Owner proposes a slightly different level of ordinary skill.
According to Patent Owner, a person of ordinary skill in the relevant
technology would have had an undergraduate degree in mechanical
engineering, agricultural engineering, or a closely related field, and “about
two years of experience designing agricultural products or related machinery
in industry or academia.” PO Resp. 2 (citing Ex. 2204 ¶¶ 46–51). Patent
Owner also proposes that, as an alternative, a person of ordinary skill could
have had “about five years of experience designing agricultural products or
related machinery, without a four-year undergraduate engineering degree.”
Id. Patent Owner adds that “[s]uch a person would typically have
experience designing projects on a component or small sub-system-level
rather than redesigning a larger planting system.” Id.
Dr. Glancey, Patent Owner’s declarant, explains that, in his opinion,
Petitioner’s proposed level of ordinary skill is “too restrictive and sets the
level of ordinary skill in the art of the ’429 Patent too high.” Ex. 2204 ¶ 48.
Dr. Glancey provides three reasons why he holds this opinion: (1)
undergraduate engineering curriculums in place in February 2009 focused on
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design at the freshman level and continued this focus throughout the
student’s degree program, thus avoiding the need for significant post-
graduate design experience (id. ¶ 49); (2) masters programs in engineering
focus on research for publication in peer-reviewed journals, rather than
designing products for industry (id. ¶ 50); and (3) engineering technicians,
who may not have formal engineering degrees, “often have years’ worth of
relevant hands-on experience,” which, in Dr. Glancey’s opinion, qualifies
him or her to be “considered POSITAs[11] with respect to the ’429 Patent”
(id. ¶ 51).
At the hearing, Petitioner argued that the proposed different
experience levels for a person of ordinary skill proposed by the parties
“would not make a different” outcome in this proceeding. E.g., Tr. 29:20–
26; 30:14–18. We agree. The minor differences in the levels of skill
proposed by the parties is not outcome determinative in this case.
Based on the prior art, Dr. Glancey’s opinion testimony and analysis,
and providing some, but minimal, weight to Mr. Prairie’s opinion testimony,
we determine that the evidence favors Patent Owner’s proposed level of
skill, primarily based on Dr. Glancey’s analysis and reasons summarized
above.
Accordingly, we determine that a person of ordinary skill in a
technology pertinent to the challenged claims would have had an
undergraduate degree in mechanical engineering, agricultural engineering, or
similar field, and two years of experience designing agricultural products or
related machinery, or five years of experience designing agricultural

11 In patent jargon, a person of ordinary skill in the art is often referred to by
the acronym “POSITA” or “POSA”.
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products or related machinery, without a four-year undergraduate
engineering degree. A recipient of other academic degrees may qualify as a
person of ordinary skill if they have taken coursework or have experience in
the pertinent technology. Additional education could offset less work
experience; additional work experience could offset less education or
coursework.
C. Claim Construction
The Petition was filed on May 31, 2019. See Paper 8. This filing date
is after the Patent and Trademark Office implemented a rule on claim
construction adopting the same claim construction standard that would be
used to construe the claim in a civil action under 35 U.S.C. § 282(b). See
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019). The claim
construction standard used in a civil action under 35 U.S.C. § 282(b) is
generally referred to as the Phillips standard. See Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc). This rule applies to all petitions
filed on or after the effective date. 83 Fed. Reg. 51,340. Thus, the new
claim construction rule applies to this proceeding.
Under the Phillips standard, words of a claim generally are given their
ordinary and customary meaning. Phillips, 415 F.3d at 1312. “[T]he
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention.” Id. at 1313. Importantly, the person of ordinary skill
in the art is deemed to read the claim term not only in the context of the
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particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification. Phillips, 415 F.3d at 1313.
Petitioner submits that no terms need to be specifically construed for
purposes of resolving the issues raised in the Petition. Pet. 30–31. Although
taking this position in this proceeding, we note that Petitioner provides an
extensive analysis of the claim term “endless member.” See id. at 31–32,
n.7, n.8.
Patent Owner notes that the District Court in the Delaware Case
construed the terms “endless member,” “seed delivery apparatus,” and
“Method of delivering seed.” (PO Resp. 3 (emphasis omitted) (citing
Ex. 1038)). The District Court construed “endless member” to mean “a
continuous conveyor forming a loop, such as a belt or a chain.” Ex. 1038, 2.
The District Court construed “seed delivery apparatus” to mean an apparatus
“that removes seed from the seed meter by capturing the seed and then
delivers it to a discharge position.” Id. at 3. The District Court construed
“method of delivering a seed” to mean a method “that removes seed from
the seed meter by capturing the seed and then delivers it to a discharge
position.” Id. The Court’s Order states its conclusions on claim
constructions without any discussion or analysis. See Ex. 1038.
Patent Owner proposes specific construction for (1) the word
“sweep.” (PO Resp. 3–6), (2) the phrase “sweep across the seed metering
member” (id. at 6–8), and (3) the phrase “move across at least one of the
plurality of apertures” (id. at 8).
“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
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2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999)). We determine that an explicit construction of the
claims is not necessary for the purposes of determining whether Petitioner
has shown that the challenged claims are unpatentable based on the record
before us.
D. Grounds 1–4
Petitioner asserts that claims 1–4, 6–11, and 13–20 of the ’429 patent
would have been obvious based on four different combinations of five
references. Pet. 9.
Patent Owner takes a different view of Petitioner’s asserted
unpatentability. According to Patent Owner, Petitioner relies on “hindsight”
to support its motivation to combine the asserted references and also asserts
that there is no reasonable expectation of success (e.g., PO Resp. 21–25;
Sur-Reply 15); Koning is “non-analogous art.” (e.g., PO Resp. 18–21; Sur-
Reply 11); Petitioner should be estopped from contending that Koning is not
non-analogous art (e.g., PO Resp. 11–15; Sur-Reply 33–36); and objective
evidence “confirms nonobviousness” (PO Resp. 62–104; Sur-Reply 2–11).
Holdt and Koning are fundamental to each of the four asserted
grounds.12 Id. In each of the four asserted Grounds, Petitioner asserts that it

12 In footnote 8 of the Petition, Petitioner states the ’429 patent “discloses an
‘endless member’ as a brush belt with bristles, or belt with other materials,
that grip the seed.” Petitioner then asserts that “[s]hould the Patent Owner
argue that an ‘endless member’ is broader, and includes other types of
endless belts, such as flighted belts or belts with cells, then [the challenged
claims of the ’429 patent] are unpatentable . . . either with or without
Koning’s brush belt and in combination with the additional secondary
references identified in each ground.” Pet. 45–46, n.8. Petitioner, however,
has not addressed in substantive detail the speculative possibility of
unpatentability without Koning as a reference in this proceeding.
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would have been obvious to replace “Holdt’s cellular belt with Koning’s
brush belt in order to achieve the known benefits of finer seed spacing.”
See, Pet. 49 (in the context of independent claim 1); id. at 77 (in the context
of independent claim 8 – “When Holdt’s cellular belt is replaced with
Koning’s brush belt, the combined teachings disclose conveying the seed via
the endless member (Koning’s brush belt) along an interior of a housing”);
id. at 83 (in the context of independent claim 17 – “the combination of Holdt
and Koning renders obvious a seed delivery apparatus (Koning’s brush belt
in Holdt’s housing) having an endless belt (Koning’s brush belt)”); see also
Tr. 16:21–24 (counsel for Petitioner explaining that in the asserted Grounds
“In the combination, the Holdt Finned Belt is replaced with the Koning
Brush Belt”).
According to Petitioner, the reason why the proposed change would
have been obvious is that “a POSITA seeking to maximize control over the
seed would have been motivated to combine the teachings of Holdt and
Koning by replacing Holdt’s cellular belt with Koning’s brush belt to
achieve the disclosed benefits of finer control over seeds and seed spacing.
Pet. 44 (citing Ex. 1002 ¶ 85). Petitioner explains that, in the proposed
“combined teachings of Holdt and Koning,” when Koning’s brush belt is
substituted for Holdt’s cellular belt, “Koning’s brush belt would, in turn,
move across the seed meter to capture the seeds from the cylinder and hold
the seeds in place with respect to each other as it delivers the seeds to the

Accordingly, unpatentability based on Grounds without relying on Koning’s
brush belt is not before us. See, Tr. 24:9–17 (stating “we have argued just
grounds that include Koning,” . . . “we’ve only advanced grounds that
include Koning,” . . . “[b]ut the only grounds we put forth, to be very clear,
is the grounds with Koning.”).
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ground.” Id. (citing Ex. 1002 ¶ 86). Mr. Prairie’s cited Declaration
testimony repeats Petitioner’s arguments.
Our analysis below focuses solely on the use of Koning’s brush belt in
the proposed combination of references. Because this issue is dispositive of
Petitioner’s challenge, it is unnecessary for us to resolve other disputed
issues. See, e.g., Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359–60 (Fed. Cir.
2020) (affirming Board’s determination that claims were not shown to be
obvious because the petitioner had not demonstrated that an ordinarily
skilled artisan would have been motivated to combine the references, and
not reaching other issues).
We first look to the scope and content of the applicable prior art,
which in this instance includes Holdt and Koning.
1. Holdt (Ex. 1009)
We make the following findings of fact concerning Holdt.
Holdt is the English translation of a published German patent
application (Ex. 1010 is the German language application). Holdt discloses
“a seed drill for cereals and other seed varieties.” Ex. 1009, 6:1–2. Holdt
recognizes that some seed drills provide irregular seed distribution when
planting seeds. Id. at 6:21–7:12. Holdt also recognizes that some seed
drills, such as those used for corn and beet seeds, “operate according to the
principle of uniformly spaced sowing.” Id. at 7:13–15. This principle
means that “each seed grain” is “individually deposited in a targeted manner
in the ground.” Id. at 7:15–18. Holdt discloses the substantial advantages of
“uniformly spaced sowing,” which include increased yield,” better weed
suppression, and higher crop density. As stated in Holdt:
It is known that the uniformly spaced sowing leads to an increase
in yield. A high level of field emergence is achieved. Since the
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individual plants are uniformly distributed across the area an
early establishment takes place such that weeds are better
suppressed than is the case in drill sowing. Finally, a higher crop
density can also be achieved in the case of uniformly spaced
sowing. All of the advantages of the uniformly spaced sowing
can be explained by way of the reduced mutual competition of
the plants and the potential of expansion toward all sides thus
provided.
Ex. 1009, 7:26–8:3. The device disclosed in Holdt “is suitable for spreading
cereals and other seed varieties, for example rapeseed, vetches, sunflowers,
beet, corn, broad beans, etc. according to the principle of “uniformly spaced
sowing.” Id. at 9:19–24.
Petitioner provides the following annotated Figure 2 from Holdt.

Patent Owner provides its own annotated Figure 2 from Holdt. We
provide Patent Owner’s version below to show the common understanding
by the parties of the structure, function, and terminology of Holdt.
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The seed drill disclosed in Holdt includes a frame on which seed box
or hopper 2 is disposed. Ex. 1009, 14:3–5. A multiplicity of “retrieving
installations 3” (see Figure 1) or row units are connected to seed box 2.
Id. at 14:5–7. Each retrieving installation 3 “transitioning to conveying
installations 4 which in turn each terminate in a share 5 which when sowing
penetrates the ground.” Id. at 14:7–10.
A multiplicity of “retrieving installations 8,”13 which have two
disks 9a and 9b are connected, as can be seen in Figures 3 and 4.
Id. at 14:20–23. Holes 10 are disposed on the circumference of the disk 9b.
Interior 11 of singularizing cylinder 12 formed by the two disks 9a and 9b is
connected to a vacuum source by way of axle 13 of singularizing
cylinder 12, which fills holes 10 with seeds. Id. at 14:23–29.

13 Holdt refers to the “receiving installations” using both reference numeral 3
(Ex. 1009, 14:6) and reference numeral 8 (id. at 14:21). The structure and
function of the “receiving installations” is not a point of confusion or dispute
between the parties.
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Individual seeds 6 are retained on the circumference of singularizing
cylinder 12 by a vacuum. Ex. 1009, 14:31–33. Seeds 6 are then deposited
on “cellular belt” 17, which is part of “conveying installation” 18.14
Id. at 15:1–3.
Belt 17 includes “webs” 19 that form “cells” 20, which retain “a
seed.” Id. at 15:3–5. The speed of “retrieving installation” 8 and
“conveying installation” 18 are coordinated so that one seed is placed into
each cell 20. Id. at 15:7–10. Cellular belt 17 terminates in “share” 5 where
the seeds are dispensed into the seed furrow. Id. at 15:16–18. Belt 17 and
cells 20 are adjustable to accommodate seeds of different sizes.
Id. at 15:26–31.
After singularizing cylinder 12 retrieves seed from the seed reservoir
(seed box 2) (id. at 14:11-33), the cylinder rotates “such that the seed grains
ultimately make their way into the region of a wedge 16 where [they] are
acquired by a cellular belt 17 which is associated with the conveying
installation 18.” Id. at 14:33–15:10. Then, the seeds are transferred from
the cylinder 12 to cells 20 formed between webs of the cellular belt.
Id. at 15:3-10 (“The cellular belt 17 has webs 19 and thus forms cells 20
which are in each case populated by a seed grain 6.”). Cellular belt 17
rotates counterclockwise around pulleys (rollers 21–24) to deliver the seeds
to the ground. Id. at 15:11–18.
Holdt describes cellular belt 17 moving across seed disk 9 and
removing seeds “directly” from the singularizing cylinder. Id. at 11:5–9. As

14 Holdt uses reference numerals 4 and 18 to refer to “conveying
installations.” Compare Ex. 1009, 14:8, with 15:3. Again, this has not
caused confusion or dispute between the parties.
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disclosed in Holdt, “[t]his enables a more precise transfer of the individual
seed grains from the singularizing installation [12] to the conveying
installation [17]” and provides “higher potential operating speeds.”
Id. at 11:9–15.
2. Koning (Ex. 1004)
We make the following findings of fact concerning Koning.
Koning discloses a planting machine for potatoes, bulbs or similar
seed crop. Ex. 1004, 1:5–17. The objective of the disclosed planting
machine is to ensure a particularly uniform distribution of the seed crop,
even if the seed crop has different sizes and if the shape of the seed crop is
irregular. Id.
Figure 2 of Koning, reproduced below, shows one embodiment of the
claimed planting machine.

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As shown in Figure 2, the planting machine generally includes
hopper 3, conveying member 23, flat belt 25, and planting foot 30 at the
“delivery end” of conveying member 23, and “rollers 38 provided with
brush hair” to provide “a uniform feed of seed crop.” Id. at 3:44–4:21, 4:37–
41, 4:68–5:2.
Figure 4 of Koning, annotated by Petitioner (Pet. 43) and reproduced
below, discloses a side view of a different embodiment of a planting
machine, on which Petitioner relies.

Figure 4 of Koning discloses conveying member 23 having a portion or
part 40 thereof that extends in a backward direction to a point in furrow 41.
Id. at 5:3–6. Belt 44 is above part or portion 40 of conveying member 23, is
guided around rollers 42 and 43, and includes brush hairs 45. Ex. 1004, 5:6–
8. Koning makes clear that it is brush hairs 45 of belt 44 that hold the seed
crop on part 40 of belt or conveying member 23, so that the seed crop
delivered by the conveying members are delivered at “the same distance in
relation to each other in the furrow 41.” Id. at 5:8–14. Thus, in Koning, it is
the combination of two belts or conveying members, belt 44 with brush
hairs 45, and belt 23 that function together to convey seeds to furrow 41.
Id. at 5:11–14.
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3. Independent Claim 1
Petitioner provides a clause-by-clause analysis of each recited element
in independent claim 1 asserting where each claimed element and
limitation15 is shown in the cited references. E.g., see generally, Pet. 33–60
(discussing claim 1, Ground 1). Throughout this analysis, Petitioner cites
the declaration testimony of Mr. Prairie for evidentiary support.
As we explain below, Petitioner fails to meet its burden of proving the
claimed invention as a whole would have been obvious because there is no
persuasive evidence of a rationale why a person of ordinary skill would
stitch together various pieces of Holdt and Koning, as proposed by
Petitioner. As stated in KSR, “a patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR, 550 U.S. at 418. This is so
because “inventions in most, if not all, instances rely upon building blocks
long since uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.” Id. at 418–419.
This is not a new concept in the law. See, e.g., Raytheon Co. v. Roper Corp.,
724 F.2d 951, 961 (Fed. Cir. 1983) (Markey, C.J.) (“. . . virtually every
claimed invention is a combination of old elements”) (citations omitted).16

15 Petitioner labels these clauses “Elements” 1[a–e]
16 As Judge Markey summarized this statutory principle of patent law,
The question is not, or never should be, whether all of the
elements in the combination are old. Only God works from
nothing. Man must work with old elements. The question should
be whether the combination itself is patentable. The statute, 35
USC §103, says the invention must be considered ‘as a whole,’
making totally irrelevant the age of the elements in the invention.
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Petitioner acknowledges that the dispositive issue in this case is
similar to the dispositive issues in the related IPR proceedings that relied on
Koning and Hedderwick. See Tr. 9:20–21 (“So Holdt, like the Hedderwick
reference that is at issue in some of the other IPRs17, and as in the prior
hearing, uses a Finned Belt.”); see also id. at 45:6–11 (counsel for Patent
Owner stating “in all cases . . . their proposed combination relies on the
notion of replacing the conveyor belt that existed in either Hedderwick or
Holdt, the flighted conveyor, and replacing it with a Brush Belt from
Koning”).
Petitioner asserts a person of ordinary skill “seeking to maximize
control over seed delivery spacing” would have been motivated to replace
Holdt’s cellular belt with Koning’s brush belt “in order to achieve the known
benefits of finer seed spacing.” Pet. 49 (citing Ex. 1002 ¶ 93). Mr. Prairie’s
Declaration testimony supports Petitioner’s arguments. Ex. 1002 ¶ 93; see
also id. ¶ 65 (“Koning explains that using a brush belt to deliver seeds
provides the benefit of ensuring the regular distribution of seeds by holding
seeds while they are delivered ‘till the very last moment.’”).
Mr. Prairie testifies that Koning “ensures a particularly uniform
distribution of the seed potatoes or the like.” Ex. 1002 ¶ 65 (citing Ex. 1004,
3:12–22). Mr. Prairie opines that Koning achieves uniform spacing because
“the brush belt ensures that the ‘velocity’ of the seeds ‘in relation to each

Howard T. Markey, Why Not the Statute 65 J. Pat. Off. Soc’y 331, 334
(1983).
17 See IPR2019-01044; 01046; 01048; 01050; 01051; 01053; 01054; 01055,
each of which asserts unpatentability based on replacing the “finned belt” of
Hedderwick (U.K. Pat. Appl. GB 2,057,835 A, published April 8, 1981,
Ex. 1003 in this 01052 proceeding) with the “brush belt” of Koning.
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other is completely defined’ and, as a result, that the seeds are planted ‘the
same distance in relation to each other in the furrow.’” Id. ¶ 67 (citing
Ex. 1004, 3:12-22). It is Mr. Prairie’s opinion that a “a person of ordinary
skill in the art seeking finer control over seeds as they are conveyed down to
the furrow would realize that adding Koning’s brush belt to Holdt’s system
would provide certain benefits that further Holdt and Koning’s common goal
of achieving accurate seed spacing.” Id. ¶ 65.
Petitioner makes clear that it “[does] not rely on Holdt alone to
disclose the claimed seed delivery apparatus because [Holdt] allows gravity
to impact the movement of the seeds.” Pet. 42. Petitioner explains that
Holdt “describes a belt with ‘cells’ in which seeds may move as they are
transferred to the ground. Id. (citing Ex. 1009, 15:3-18). Petitioner asserts
that “Koning discloses a system that uses a brush belt with bristles (as
opposed to Holdt’s cellular belt) to hold seeds . . . stationary with respect to
each other as they are delivered to the ground so that they are planted in the
furrow at a reliably uniform spacing.” Id. at 42–43 (emphasis added).
As we explained above, Koning’s system includes both belt 44 (with
bristles 45) and belt 23 cooperating together to convey seeds. There is no
suggestion in Koning that belt 44 would or could function without belt 23.
Petitioner concludes that a person of ordinary skill “seeking to
maximize control over the seed would have been motivated to combine the
teachings of Holdt and Koning by replacing Holdt’s cellular belt [belt 17]
with Koning’s brush belt [i.e., belt 44 with brush hairs 45] to achieve the
disclosed benefits of finer control over seeds and seed spacing.” Pet. 44.
Thus, it is clear that Petitioner’s asserted basis of unpatentability is to
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replace endless belt 17 of Holdt with Koning’s brush belt 44 with brush
hairs 4518. Id.
Petitioner summarizes its view of how Holdt, as modified by Koning,
would function, as follows:
Holdt’s seed meter (singularizing cylinder 12) would rotate to
transfer individual seeds to the region where they would have
been transferred to the cellular belt. At this region, when
Koning’s brush belt is substituted for Holdt’s cellular belt,
Koning’s brush belt would, in turn, move across the seed meter
to capture the seeds from the cylinder and hold the seeds in place
with respect to each other as it delivers the seeds to the ground.
Pet. 44 (citations omitted).
As part of its rationale for the proposed combination of references,
Petitioner asserts:
Both references are in the same field—agricultural seed
planting—and describe straightforward and well-known
mechanical systems that take seeds from a hopper and deliver
them to the ground. Both references identify the same problem

18 Although the parties, and thus the Board, focus on whether it would have
been obvious to modify Holdt with the brush belt of Koning, the challenged
independent claims, and most of the challenged dependent claims do not
include the term “brush belt.” Dependent claims 7, 16, and 18 specifically
state that the endless belt is “in the form of a bristle belt” (claims 7 and 16)
or “is in the form of a brush” (claim 18). We do not hold, and this Decision
should not be understood to suggest, that the “endless member” claim term
in the ’429 patent requires a brush belt. The challenge Petitioner asserts,
however, is to replace the endless belt of Holdt with Koning’s brush belt, so
that is the challenge we must evaluate. See SAS, 138 S. Ct. at 1356 (“the
petitioner’s petition . . . is supposed to guide the life of the litigation,” and it
would “not be proper for the Board to deviate from the grounds in the
petition and raise its own obviousness theory.”); Koninklijke Philips N.V. v.
Google LLC, 948 F.3d 1330, 1336 (Fed. Cir. 2020) (quoting SAS, 138 S. Ct.
at 1356) (“the Board does not ‘enjoy[] a license to depart from the petition
and institute a different inter partes review of [its] own design.’”).
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in the prior art—suboptimal seed spacing. And both references
solve this problem by using components to increase control over
the movement of seeds as they are delivered to the ground.
Indeed, Koning specifically discloses the benefits of using its
brush belt—finer control of seed spacing—in a seed planting
system such as described in Holdt.
Both references discuss the importance of controlling the
movement of seeds as they travel to the ground to ensure uniform
spacing.
Pet. 26–27 (citations omitted).
Petitioner also asserts that “[i]ncorporating the teaching of Koning’s
brush belt into Holdt’s row unit would be simple for a POSITA to
implement and would merely require applying a known technique to a
known device. Id. at 28. Petitioner, however, cites no persuasive evidence
to support this argument.
According to Petitioner, the reason why a person of ordinary skill
would have combined the disclosures of Holdt and Koning would have been
“to obtain finer control over seed placement.” Id.
a) Motivation to Combine and Reasonable Expectation of Success
Of the many disputed issues summarized in the preceding section, our
analysis focuses on whether an ordinarily skilled artisan would have been
motivated to combine the references in the manner Petitioner proposes, and
would have reasonably expected success in doing so. We focus on the use
of Koning’s brush belt in the proposed combination of references. Because
this issue is dispositive of Petitioner’s challenge, it is unnecessary for us to
resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc., 963
F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that
claims were not shown to be obvious because the petitioner had not
demonstrated that an ordinarily skilled artisan would have been motivated to
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combine the references); Samsung Electronics Co. v. Elm 3DS Innovations,
LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it unnecessary
to reach other issues when reasonable expectation of success is dispositive).
Because the proposed combination as Petitioner chose to frame it
includes seeds being deposited from the seed meter into Koning’s “delivery
system,” which, according to Petitioner, is a moving brush belt, it is
incumbent on Petitioner to show that an ordinarily skilled artisan would have
been motivated to combine the references in that proposed manner and
would have reasonably expected success in doing so. See Adidas, 963 F.3d
at 1359–60; Samsung, 925 F.3d at 1382–83. The Federal Circuit has made
clear that a satisfactory explanation of “how the combination of the . . .
references [is] supposed to work” is necessary to support “a conclusion that
a relevant skilled artisan would have been motivated to make the
combination and reasonably expect success in doing so.” Personal Web
Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (emphasis in
original).
In determining whether there would have been a motivation to
combine prior art references to arrive at the claimed invention, it is
insufficient to simply conclude the combination would have been obvious
without identifying any reason why a person of skill in the art would have
made the combination. Metalcraft of Mayville, Inc. v. The Toro Co., 848
F.3d 1358, 1366 (Fed. Cir. 2017). “The question is not whether the various
references separately taught components of the [ ] Patent formulation, but
whether the prior art suggested the selection and combination achieved by
the [ ] inventors.” Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265, 1273
(Fed. Cir. 2018).
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As asserted by Patent Owner, “Koning’s [brush] belt does not convey
seeds; it merely “hold[s] the potatoes lying on the conveying members 23.”
PO Resp. 23 (citations omitted). Patent Owner further explains that
“[f]undamentally, Koning’s [brush] belt, which is intended to steady
potatoes while they are conveyed, is not a conveyor belt. Instead, it is a
moving belt positioned over top of the potatoes not intended to support the
weight of those objects.” Id. at 23–24 (emphasis added). Dr. Glancey
testifies that
Fundamentally, Koning’s belt, which is intended to steady
potatoes while they are conveyed down an incline, is not a
conveyor belt. Instead, it is a moving belt positioned over top of
the potatoes not intended to support the weight of those objects.
A POSITA reading Koning would learn that a brush belt might
be useful in a planting device that handles relatively massive
objects (such as potatoes or bulbs) as a covering element for
those objects as they are being conveyed by another, separate
component . . . . However, the POSITA does not learn from
reading Koning to use a belt with brush hairs as the sole means
of supporting or conveying a seed, especially the relatively small
seeds exemplified in Holdt.
Ex. 2204 ¶ 147.
Dr. Glancey opines, with supporting data and analysis, that conveying
member 23 in Koning “supports about 87% of the seed potato weight in the
orientation taught by Koning.” Ex. 2204 ¶ 141. He concludes that “it is
clear from this proof that the Koning belt with brush hairs cannot and does
not support the weight of the seed potatoes being conveyed to the soil.” Id.
Additionally, Patent Owner asserts:
Koning does not suggest using a brush-belt for retaining and
conveying seeds without a separate conveying member to bear
their weight. A POSA would not predict that such a belt could
be used successfully for that purpose because, inter alia, a POSA
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would not predict that such a belt would successfully receive,
retain or convey small seeds on its own due to the unique and
unpredictable dynamics of such a belt.
PO Resp. 23 (citing Ex. 2204, ¶¶ 146–148).
Dr. Glancey, Patent Owner’s expert declarant, testifies that “[a]
POSITA would not have isolated Koning’s belt with brush hairs from
Koning’s other teachings for combination with other non-analogous systems,
because Koning’s [brush] belt was not—and was not taught as being—a
modular ‘off the shelf’ component with predictable uses.” Ex. 2204 ¶ 138.
Dr. Glancey further explains, “[a] POSITA reviewing Koning’s disclosure of
using a belt with brush hairs to cover and hold potatoes conveyed on a
separate conveying surface could not predict that such a belt would
successfully receive, retain or convey small seeds on its own as would be
required in Petitioners’ proposed combination.” Ex. 2204 ¶ 140.
Dr. Glancey provides an analysis of why he reaches this conclusion:
the properties of brush belts, especially belts moving at speeds
corresponding to seed dispensing rates common for such small
seeds, make it unlikely that seeds will enter the belt in the
absence of a loading surface especially adapted to insert the seeds
into the belt, and nothing in Koning’s disclosure suggests using
a belt with brush hairs to support the entire weight of the seeds
or to convey them without the presence of a separate conveying
member.
Id. Dr. Glancey also concludes that “[a] POSITA would not have been
motivated to isolate Koning’s belt with brush hairs, remove it from Koning’s
planting machine, adapt it for use in completely different system, and
repurpose it to perform a new and undisclosed function (as a conveyor), as
proposed by Petitioners.” Id. ¶ 143. According to Dr. Glancey’s testimony,
A device such as Koning’s [brush] belt that covers from above
relatively massive seed objects such as potatoes is not the same
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as a device such as Holdt’s cellular belt which alone carries
smaller seeds. The only evidence I have seen to suggest that a
POSITA would use a brush belt for carrying seeds rather than
covering them is the ’429 Patent.
Id. ¶ 150.
Additionally, Patent Owner asserts that the complex fluid-like
dynamics of moving brush hairs are not readily adaptable to carrying small
objects. PO Resp. 34–42 (citing Ex. 2204 ¶¶ 174–177, 182–189).
Neither the references, other evidence, nor Mr. Prairie provide
sufficiently persuasive evidence, even in combination, to establish why a
person of ordinary skill would have modified Holdt by (1) selectively
gleaning only a portion of Koning’s conveying system, i.e., belt 44 with
bristles 45, (2) selectively excluding Koning’s belt 23, and then
(3) modifying Koning’s brush belt by reversing its orientation to change its
fundamental purpose so that it carries seeds deposited into the bristles, as in
the ’429 patent, rather than covering and guiding seeds carried by a separate
and distinct conveyor belt, as in Koning. See WBIP, LLC v. Kohler Co., 829
F.3d 1317, 1327 (Fed. Cir. 2016) (finding an absence of a motivation to
reverse parts to an orientation that was “totally backwards” from what one
of skill in the art would even attempt). Petitioner’s arguments do not
acknowledge the different function of Koning’s brush belt, or explain why a
person of ordinary skill would have been motivated to adapt Koning’s brush
belt to such a use and reasonably expect success in doing so.
Petitioner asserts that, in the proposed combination of Holdt and
Koning, “Holdt’s seed meter (singularizing cylinder 12) would rotate to
transfer individual seeds to the region where they would have been
transferred to the cellular belt.” Pet. 44 (citing 14:24–15:3). According to
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Petitioner, “[a]t this region, when Koning’s brush belt is substituted for
Holdt’s cellular belt, Koning’s brush belt would, in turn, move across the
seed meter to capture the seeds from the cylinder and hold the seeds in place
with respect to each other as it delivers the seeds to the ground.” Id. (citing
Ex. 1004, 3:12–22, 5:8–14; Ex. 1002 ¶ 86). Petitioner also asserts that
Holdt’s wedge 16 “would then push the seed directly into the [bristles of
Koning’s brush] belt.” Tr. 16:21–24; see also, id. at 17:8–11 (“. . . our
proposed combination with the Holdt Seed Meter, the Wedge, and the
Koning Brush Belt where you can see the seed that we've identified is
rotating, being pushed right into the Koning Brush Belt.”).
Brush hairs 45 of belt 44 in Koning do not remove seed from a seed
meter by capturing seeds, as recited in all the challenged claims. See PO
Resp. 47–48 (citing Ex. 2204 ¶¶ 219–221). And, the seed meter of Holdt
does not push seeds into a brush belt. Moreover, as we have discussed
above, there is no persuasive evidence why a person of ordinary skill in the
relevant technology would have selected only a portion of Koning’s
conveying system, i.e., belt 44 with bristles 45, would have excluded
Koning’s belt 23, and would have then reversed the orientation of Koning’s
belt 44 so that it carries seeds deposited into the bristles, as in the ’429
patent, rather than covering and guiding seeds carried by a separate and
distinct conveyor belt, as in Koning.
We determine Petitioner fails to meet its burden of providing a
sufficiently persuasive explanation or reason for concluding that one of skill
in the art would have combined these particular references to produce the
claimed invention. “Without any explanation as to how or why the
references would be combined to arrive at the claimed invention, we are left
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with only hindsight bias.” Metalcraft, 848 F.3d at 1367. “[W]e cannot
allow hindsight bias to be the thread that stitches together prior art patches
into something that is the claimed invention.” Id.
The existence of common elements found in both the challenged
claims and the references relied on by Petitioner does not establish that the
challenged claims would have been obvious.
The persuasiveness of Mr. Prairie’s testimony—i.e., that an ordinarily
skilled artisan could have adapted Koning’s brush belt for use in the
proposed combination, where seeds are deposited onto the brush belt from
above—is undermined by his testimony that he “can’t recall a time where
I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9.
During his deposition, Mr. Prairie resisted agreeing that the potatoes
are lying on the conveyor in Koning, testifying that he takes from Koning’s
description that “they are captured within the belt with brush hairs. And that
there is some weight that’s along the conveying member 23.” Ex. 2193,
96:24–99:25. Mr. Prairie testified that he “do[es]n’t believe the brush hairs
support the full weight of the potatoes,” but that Koning did not provide him
sufficient information to answer whether the conveying member supports the
majority of the weight of the potatoes. Id. at 106:22–107:21. In our view, it
is clear from Koning’s description that the potatoes lie on the conveyor and
the purpose of the brush belt is to maintain their position relative to each
other while they are moved by the conveyor. Ex. 1004, 3:16–24, 5:3–14,
Fig. 4.
Mr. Prairie’s characterization of Koning is unpersuasive because, as
discussed above, Koning does not teach using a brush belt alone to receive
and convey seeds that have been deposited from a seed meter into the free
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end of brush hairs attached to a brush belt. Mr. Prairie does not account for
that difference by explaining why an ordinarily skilled artisan would expect
Koning’s brush belt to effectively capture and carry seeds inserted into the
free ends of the brush hairs, as in the proposed combination.
Petitioner and Mr. Prairie (Ex. 1002 ¶¶ 83–87) focus on the brush belt
of Koning (belt 44 with brush hairs 45), without considering that the brush
belt is only one element of a two-element conveying system, or endless
member. Koning’s brush belt works in concert with conveying member 23
to hold seeds in place as they are conveyed into the furrow.
Petitioner argues that “[t]he use of brushes to control movement of
seeds was also well-known.” E.g., Pet. 13 (citing Ex. 1015, Ex. 1030).
Neither Thiemke (Ex. 1015) 19 nor Gould (Ex. 1030) 20, however, discloses a
brush belt that carries seeds released into the brush hairs.
Figures 3 and 4 of Thiemke are reproduced below:

19 U.S. Pat. No. 6,651,570 B1, issued Nov. 25, 2003.
20 U.S. Pat. No. 1,376,933, issued May 3, 1921.
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Figures 3 and 4 are perspective and side views, respectively, of a seed
placement system. Ex. 1015, 3:5–9.
Thiemke explains that seeds discharged from seed metering system 28
are guided by deflector 60 into a nip area between wheel 42 and seed slide
40. Id. at 5:47–54. Thiemke teaches that a “gap of approximately one
millimeter between the circumferential periphery of wheel 42 and seed slide
40 ensures that the seed is gripped by gripping outside layer 54,” which can
be formed of nylon bristles. Id. at 5:54–57, 5:1–10. Thiemke does not
suggest that brush belts can capture seeds released into the brush hairs;
indeed, deflector 60 prevents seed from dropping onto the top of wheel 42 in
a manner that would be comparable to how Petitioner proposes seed would
be captured by Koning’s brush belt in the proposed combination.
Gould describes a machine “for taking an individual plant from a
quantity, depositing it positively in the ground and properly covering it, and
operating with great rapidity.” Ex. 1030, 1:25–30. Figure 4 of Gould is
reproduced below:
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Figure 4 shows a sectional side elevation view of Gould’s
plant-setting machine. Id. at 1:38.
Gould explains that brush belt 11 operates beneath hopper 1 and “travels
vertically downward . . . and cooperates with a second brush belt 12 to move
the plant from the hopper.” Id. at 1:75–82. In considering Gould’s teaching
of two vertically oriented and opposed brush belts that cooperate to move
plants from a hopper, we see little relevance to Petitioner’s proposal to load
seeds into a brush belt by releasing them directly into the bristles.
It is Petitioner’s burden to establish that a person of ordinary skill
would have been motivated to combine the references in the proposed
manner and would have reasonably expect success in doing so. See
35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376
(Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that
burden.
In summary, we are not persuaded that Petitioner has met its burden
of showing, by a preponderance of the evidence, that ordinarily skilled
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artisans would have been motivated to selectively glean Koning’s belt 44
with brush hairs 45 from Koning’s “delivery system,” but not its companion
conveying member 23, and then reorient belt 44 so that the brush hairs
receive and convey seeds from Holdt’s seed guide, and would have
reasonably expected success in doing so.
b) Conclusion for Claim 1
KSR cautions a factfinder to be aware of the “distortion caused by
hindsight bias” and to be “cautious of arguments reliant upon ex post
reasoning. KSR, 550 U.S. at 421. Petitioner’s proposed combination of the
cited references does not meet its burden of providing a sufficiently
persuasive evidence-based reason why a person of ordinary skill would have
selectively gleaned isolated elements from Koning, modified their operation,
and then combined them with Holdt to arrive at the invention recited in
independent claim 1.
Based on the Petition and the evidence of record, we determine that
Petitioner has not established by a preponderance of the evidence that
claim 1 is unpatentable.
4. Independent Claims 8 and 17
Independent claim 17, like claim 1, is directed to a “row unit for a
seeding machine.” Ex. 1001, 8:61–9:3. Independent claim 8 is a method
counterpart of claims 1 and 17. Id. at 8:20–32.
We have not been directed to any persuasive evidence of any
substantive differences between claims 1, 8, and 17 that would cause a
different analysis or conclusion for claims 8 and 17 from the conclusion
reached for claim 1. Accordingly, based on the analysis and evidence
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discussed above for claim 1, we determine that Petitioner has not established
by a preponderance of the evidence that claims 8 and 17 are unpatentable.
5. Dependent Claims 2–4, 6, 7, 9–11, 13–16, 18–20
Dependent claims 2–4, 6, and 7 depend from claim1. Dependent
claims 9–11, and 13–16 depend, directly or indirectly, from claim 8. Claims
18–20 depend from claim 17. These claims stand with the claims from
which they depend.
Accordingly, based on the analysis and evidence discussed above for
independent claims 1, 8, and 17, we determine that Petitioner has not
established by a preponderance of the evidence that dependent claims 2–4, 6,
7, 9–11, 13–16, and 18–20 are unpatentable.
IV. CONSTITUTIONAL CHALLENGE
In a single sentence, Patent Owner states it “challenges the
constitutionality of, and the panel’s authority to adjudicate, this proceeding
under Arthrex, Inc. v. Smith & Nephew Inc., 941 F.3d 1320 (Fed. Cir.
2019).” PO Resp. 103.21 No additional argument or explanation of Patent
Owner’s challenge is presented.
This constitutional issue has been addressed by the Federal Circuit’s
decision in Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures
the constitutional violation.”); see also Arthrex, Inc. v. Smith & Nephew,
Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of
rehearing) (“Because the APJs were constitutionally appointed as of the
implementation of the severance, inter partes review decisions going

21 We note that the Supreme Court has accepted this case for review.
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020).
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forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further for this Decision.
V. CONCLUSION
Petitioner has not established by a preponderance of the evidence that
claims 1–4, 6–11, and 13–20 are unpatentable.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–4, 6–11, and 13–20 have not been proven
by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
In summary:
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 4, 6,
7
103 Holdt, Koning 1, 2, 4, 6, 7
3, 8, 9,
13–20
103 Holdt, Koning,
Holly
3, 8, 9, 13–20
10 103 Holdt, Koning,
Holly, Sauder
10
11 103 Holdt, Koning,
Holly, Hanson
11
Overall
Outcome
1–4, 6–11,
13–20
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FOR PETITIONER:
Grant K. Rowan
Mary V. Sooter
R. Gregory Israelsen
WILMER, CUTLER, PICKERING,
HALE AND DORR, LLP
grant.rowan@wilmerhale.com
mindy.sooter@wilmerhale.com
greg.israelsen@wilmerhale.com

FOR PATENT OWNER:
Jay I. Alexander
Peter P. Chen
Richard L. Rainey
Nicholas L. Evoy
Rajesh D. Paul
COVINGTON & BURLING LLP
jalexander@cov.com
pchen@cov.com
rrrainey@cov.com
nevoy@cov.com
rpaul@cov.com