Deere & Company

Patent Trials and Appeals Board

Dec 2, 2020

IPR2019-01048 (P.T.A.B. Dec. 2, 2020)

Trials@uspto.gov Paper 99
571-272-7822 Date: December 2, 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.

IPR2019-01048
Patent 9,686,906 B2

Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
BARRY L. GROSSMAN, 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 (“Petitioner”) filed a
Petition requesting an inter partes review of claims 1–20 of U.S. Patent No.
9,686,906 (Ex. 1001, “the ’906 patent”). Paper 4 (“Pet.”). Deere &
Company (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim.
Resp.”). After receiving our authorization to do so, Petitioner filed a Reply
(Paper 11) and Patent Owner filed a Sur-Reply (Paper 12).
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 17 (“Dec. Inst.”).
Patent Owner filed a Response. Paper 35 (PO Resp.). Petitioner filed
a Reply. Paper 58 (Confidential), 59 (Redacted) (“Reply”). Patent Owner
filed a Sur-reply. Paper 70 (“Sur-reply”).
Petitioner submitted 89 exhibits. See Exs. 1001–1148 (not
consecutive; some exhibit numbers not used); see also Ex. 1148, a Joint
Exhibit Index concordance of exhibits in this proceeding and the related
post-grant proceedings). Petitioner relies, in part, on the Declaration
testimony of Dr. Randal K. Taylor.1 See Ex. 1002.

1 Dr. Taylor earned B.S., M.S., and Ph.D. degrees in Agricultural
Engineering. Ex. 1002 ¶ 2. He also has approximately thirty years of
experience in Agricultural Engineer, and is a Fellow in the American
Society of Agricultural and Biological Engineers (“ASABE”). Id. ¶¶ 3–9.
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Patent Owner submitted 200 exhibits. See Exs. 2001–2272 (not
consecutive; some exhibit numbers not used)). Patent Owner relies, in part,
on the Declaration testimony of Dr. James L. Glancey.2 See Ex. 2206.
Petitioner filed a Motion to Exclude evidence submitted by Patent
Owner. Paper 74 (“Pet. Mot. Excl.”). Patent Owner filed a Response to the
Motion to Exclude. Paper 85 (“PO Resp. Mot. Excl.”). Petitioner filed a
Reply. Paper 90 (“Pet. Reply Mot. Excl.”).
Patent Owner filed a Motion to Exclude evidence submitted by
Petitioner. Paper 77 (“PO Mot. Excl.”). Petitioner filed a Response to the
Motion to Exclude. Paper 81 (“Pet. Resp. Mot. Excl.”). Patent Owner filed
a Reply. Paper 93 (“PO Reply Mot. Excl.”).
A hearing was held August 31, 2020. Paper 96 (“Tr.”). This was a
joint hearing that also included related cases IPR2019-01044; 01046; 01051;
01053; and 01055.
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.

He is a named inventor on two U.S. patents. Id. ¶ 9. Dr. Taylor is a
Distinguished Professor in the Department of Biosystems and Agricultural
Engineering at Oklahoma State University. Id., Exhibit A.
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. 2206 ¶ 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 the composite material
manufacturing and automation. Id. at ¶ 6. Dr. Glancey is a Registered
Professional Engineer in Delaware. Id. ¶ 11.
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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 1–20 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 the purposes
of 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 6, 1.
C. Related Matters
Patent Owner sued Petitioner for infringement of the ’906 patent. See
Pet. 7; Paper 6, 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”)).3

3 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,”
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 01048
IPR proceeding and the related inter partes review proceedings. Ex. 3004.
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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
IPR2019-01050 U.S. Patent No. 9,807,922
IPR2019-01051 U.S. Patent No. 9,807,924
IPR2019-01052 U.S. Patent No. 9,820,429
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. 7. The listed IPR proceedings involve the same parties as this 01048
IPR proceeding. The challenged patents in the list above also are involved
in the Delaware Case. E.g., see Exs. 3005, 3006.
D. The ’906 Patent
According to the ’906 patent, precise placement of seeds during
planting is critical to producing maximum crop yield. Ex. 1003, 1:11–21. If
the seeds are planted too close together, they tend to “choke off” one
another; if they are planted too far apart, valuable farmland is wasted.
Id. at 1:16–21; 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.”).
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There is a balance between planting seeds quickly and spacing seeds
precisely. Ex. 2031 ¶ 11; 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 ’906 patent relates generally to seeding machines called
“planters” that are used by farmers to plant seeds efficiently and precisely in
a field. Ex. 1001, 1:20–22. An illustration of a seed planter is shown below.

Illustration of a seed planter. See Ex. 2003 ¶ 34.4

4 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 ’906 patent. We make no finding,
however, that this particular planter is within the scope of the invention
claimed in the ’906 patent.
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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
¶ 32.
An annotated figure from Dr. Taylor’s Declaration testimony of the
basic components of a typical seed planter is shown below. See Ex. 1002
¶ 32.

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. Ex. 1002 ¶ 32.
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
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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.
As described in the ’906 patent, planter or seeding machine 10
includes tool bar 12 as part of planter frame 14. Ex. 1001, 3:8–11. Mounted
to the tool bar are multiple planting row units 16. One of these row units is
shown in Figure 2.
Figure 2, reproduced below, is a side view of one row unit 16.
Ex. 1001, 2:46–47.

Figure 2 of the ’906 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
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 ’906 patent, reproduced
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below and annotated by Dr. Taylor, Petitioner’s Declarant (Ex. 1002 ¶ 42),
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
pressure differential on the opposite sides of disk 50, which the ’906 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
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76 of side wall 53. Id. at 3:57–64. The belt rotates in a counterclockwise
direction, 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 the belt 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. 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.
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 7:37–44.
E. Illustrative Claims
Petitioner challenges claims 1–20, which are all of the claims in the
’906 patent. Claims 1, 8, and 15 are independent claims. Independent
claims 1 and 8 are directed to a “seed delivery apparatus.” Independent
claim 15 is directed to a “method of delivering a seed from a seed meter to a
furrow.” Claim 1 is representative and is reproduced below.
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1. A seed delivery apparatus comprising:
an elongated housing having a first opening through which seed
is received into the seed delivery apparatus, a second
opening through which seed exits the seed delivery
apparatus, and an elongated interior chamber along which
seed is conveyed from the first opening to the second
opening; and
an endless member positioned within the elongated housing, the
endless member positioned to receive seed through the
first opening of the elongated housing, the endless member
movable within the elongated interior chamber of the
elongated housing to
convey seed away from the first opening at a first velocity,
accelerate seed toward the second opening, and
discharge seed through the second opening at second
velocity greater than the first velocity.
Ex. 1001, 7:50–67.
F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–20 would have been unpatentable on
the following ground:
Claim(s) Challenged 35 U.S.C. §5 Reference(s)/Basis
1–20 103 Hedderwick6 and Koning7

5 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
that issued as the ’906 patent states that it is a continuation of two prior
applications, the earliest of which was filed February 2, 2009 (see Ex. 1001,
code (63) (Related U.S. Application Data), we apply the pre-AIA versions of
these statutes. See 35 U.S.C. § 100(i).
6 U.K. Pat. Appl. GB 2,057,835 A, Pub. Apr. 8, 1981. Ex. 1003
(“Hedderwick”).
7 U.S. Pat. No. 4,193,523, issued March 18, 1980. Ex. 1004 (“Koning”).
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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 refer to any of those
exhibits, 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.
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
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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
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, evidence 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.
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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.
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
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
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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.
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., 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
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determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
Inc. 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 (2007).
Petitioner asserts that a person of ordinary skill would have had “(1) a
bachelor’s degree plus four years’ experience in mechanical engineering,
agricultural engineering, or a related field; or (2) a master’s degree plus two
years’ experience in mechanical engineering, agricultural engineering, or a
related field.” Pet. 36 (citing Ex. 1002 ¶ 18). Petitioner provides no analysis
of the factors supporting this conclusion. Dr. Taylor opines this same level
of ordinary skill, but adds the additional sentence that “Such a person would
have been familiar with the mechanics and design of agricultural planters.”
Ex. 1002 ¶ 18. Dr. Taylor does not disclose the underlying facts or data on
which his opinion is based. 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.”); TQ Delta, LLC v. Cisco Sys., Inc.,
Nos. 2018-1766, 1767, slip op. at 10 (Fed. Cir. Nov. 22, 2019) (“Conclusory
expert testimony does not qualify as substantial evidence.”) (citations
omitted).
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 closely related field, and “about
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two years of experience designing agricultural products or related machinery
in industry or academia.” PO Resp. 2 (citing Ex. 2206 ¶¶ 47–52). 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 expert 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 ’906 Patent too high.”
Ex. 2206 ¶ 49. Dr. Glancey provides three reasons why he holds this
opinion: (1) undergraduate engineering curriculums in place in February
2009 focused on 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. ¶ 50); (2) masters programs
in engineering focus on research for publication in peer-reviewed journals,
rather than designing products for industry (id. ¶ 51); 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 with respect to the
’906 Patent” (id. ¶ 52).
At the hearing, Counsel for Petitioner stated that the different
experience levels for a person of ordinary skill proposed by the parties was
“not outcome . . . determinative” (Tr. 36:17) and that the challenged claims
would have been obvious applying “either [party’s] definition” of the level
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of ordinary skill (id. at 36:18–19). Counsel for Patent Owner took a
different view. He stated the level of ordinary skill “does matter”
(id. at 68:4) and “could make a difference” (id. at 68:12) in the outcome.
Based on the prior art, Dr. Glancey’s opinion testimony and analysis,
and providing some, but minimal, weight to Dr. Taylor’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
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 30, 2019. See Paper 5. 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
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(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.200(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 was effective on
November 13, 2018, and 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
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification. Id.
Petitioner submits that no terms need to be specifically construed for
purposes of resolving the issues raised in the Petition. Pet. 34. Although
taking this position in this proceeding, we note that Petitioner provides a
two-page footnote providing an analysis of the claim term “endless
member.” See id., 34–36, n.6.
Patent Owner notes that the District Court in the Delaware Case
construed the terms “endless member” and “seed delivery apparatus” (PO
Resp. 2–3 (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
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“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.” Ex. 1038, 3. The Court’s Order states its conclusions on claim
constructions without any discussion or analysis. See Ex. 1038.
Patent Owner proposes additional constructions for the terms
“ejecting” and “flexes to discharge seed.” PO Resp. 3.
“[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.
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 the
challenged claims are not patentable.
D. Ground 1
The sole Ground of unpatentability asserted by Petitioner is that
claims 1–20 of the ’906 patent would have been obvious over the
combination of Hedderwick and Koning. E.g. Pet. 9 (“Petitioners request
cancellation of claims 1-20 of the ’906 patent . . . as being unpatentable . . .
over Hedderwick and Koning.”).8

8 In footnote 7, Petitioner states “the [’906] patent discloses an ‘endless
member’ as a brush belt with bristles, or belt with other materials, that grip
the seed. Should the Patent Owner argue that an ‘endless member’ is
broader than this, and includes other types of endless belts, such as flighted
belts or belts with cells, then the claims of the ’906 patent are still
unpatentable in view of Hedderwick, either with or without Koning’s brush
belt.” Pet. 37, n.7. Petitioner, however, has not addressed this speculative
possibility in this proceeding. Patentability based on Hedderwick alone is
not before us.
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1. Hedderwick (Ex. 1003)
We make the following findings of fact concerning Hedderwick.
Hedderwick discloses a “‘precision seeder’ . . . to deposit single seeds
at predetermined spacings in seed beds . . . [or] in unprepared soil.” Ex.
1003, 1:5–14. Hedderwick states that if seeds are planted as doubles or
triples the two seedlings from such a planting will tend to kill off one
another. If the seedlings are too close together then they also tend to choke
off one another and if they are too far apart then the economy of the business
is adversely affected as more space than is essential would be used.
Id. at 1:14–21.
Figure 4, annotated by Petitioner (Pet. 22) and reproduced below,
discloses a side elevation view of one embodiment of the disclosed seeder.
See Ex. 1003, 1:108–110.

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Figure 4 shows the components of seeder unit 120, which comprises
hopper 122, sub hopper 126, singling disc 130. Id. at 4:6–10. Figure 4 also
shows endless belt 134, with fins 135 “projecting upwardly therefrom,”
which rides in guideway 137. Id. at 4:23–28. The belt and fins define
“cells” that align with orifices 129 of disc 130. Id. at 4:25–5:2. Seeds are
released singly from orifices 129 and rotated to positions that mate with the
cells of the endless belt and fins. Id. at 5:51–60. Seeds 148 are conveyed
down along moving belt 134, driven by counterclockwise-turning sprocket
132, to a position behind plow 146, where gravity forces the seeds along fins
135 to ensure uniform positioning of seeds. Id. at 5:72–78. The seeds are
conveyed until they reach a discharge opening slightly above bottom dead
center of the bottom pulley over which the endless belt rides, whereby each
seed rests against a fin at the moment of discharge. Id. at 6:60–72.
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. Id. at 3:44–4:21. Figure 4 of Koning,
annotated by Petitioner (Pet. 25) and reproduced below, discloses a side
view of a different embodiment of a planting machine, on which Petitioner
relies.

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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.
3. Independent Claim 1
Independent claim 1 claims a “seed delivery apparatus” having an
“elongated housing” and an “endless member” that receives seed through a
first opening in the housing and discharges seed through a second opening.
Ex. 1001, 7:50–67. Claim 1 also requires that the velocity of the seed
exiting from the second opening is greater than the velocity of the seed
entering from the first opening. Id. at 7:63–67.
Petitioner provides a clause-by-clause analysis of each recited element
in claim 1 asserting where each claimed element and limitation9 is shown in
Hedderwick and Koning, and why each element or limitation would have
been obvious. See generally, Pet. 37–67; see also, e.g. id. at 45 (analyzing
clause 1[a] and concluding, “Accordingly, the combination of Hedderwick
and Koning renders obvious an elongated housing (casing 137) having a first
opening (orifice 141) through which seed is directly received into the seed

9 Petitioner labels these clauses “Elements” 1[a–h]
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delivery apparatus.”). See Stratoflex., 713 F.2d at 1537 (“[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
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 the references, as proposed by Petitioner.
a) Overview of the Parties’ Contentions
Petitioner relies on Hedderwick for the basic structure of the claimed
apparatus or steps of the claimed method, but relies on Koning’s belt 44 with
brush hairs 45 (generally referred to as a “brush belt”) to replace endless belt
134 in Hedderwick. Pet. 52 (“Thus, the combination of Hedderwick and
Koning renders obvious an endless member (Koning’s brush belt) positioned
within an elongated housing (Hedderwick’s casing)”).
Petitioner makes clear that it “[does] not rely on Hedderwick alone for
the seed delivery apparatus because [Hedderwick] allows gravity to impact
seed movement.” Pet. 39. Petitioner explains that Hedderwick “describes
that the seeds may move about within the cells of the flighted belt.” Id.
(citing Ex. 1003, 5:72–79). Petitioner asserts that “Koning discloses a
system using a brush belt with bristles that does not allow gravity to impact
movement of seeds.” Id. (emphasis added). As we explained above,
Koning’s system includes both belt 44 (with bristles 45) and belt 23
cooperating together to convey seeds. According to Petitioner, Koning’s
“bristles hold seeds as they are delivered to the ground so that they are
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planted in the furrow at a reliably uniform spacing, in the same way as the
bristles of the ’906 patent.” Id. Petitioner concludes that a person of
ordinary skill “seeking to maximize control over seed movement would have
been motivated to combine the teachings of Hedderwick and Koning by
replacing Hedderwick’s endless belt with Koning’s brush belt to achieve the
disclosed benefits of reliable and improved seed spacing.” Id. at 41. Thus,
it is clear that Petitioner’s asserted basis of unpatentability is to replace
endless belt 134 of Hedderwick with Koning’s brush belt 44 with bristles 45.
Id. at 48.
Petitioner summarizes its view of how Hedderwick, as modified by
Koning, would function, as follows: “Hedderwick’s seed disc would rotate
to transfer individual seeds to the point where the disc mates with the intake
opening in the casing. At this mating point, Koning’s brush belt would
capture the seeds and hold them in place until it delivers them to the
ground.” Pet. 41 (citations omitted).
Petitioner asserts that Hedderwick and Koning each describe the
importance of controlling seed movement as the seeds travel to the ground to
ensure uniform seed spacing. Id. at 28–29 (citing Ex. 1002 ¶¶ 58–60).
Petitioner also asserts that “a POSITA desiring finer control over seed
spacing would have recognized that substituting Koning’s brush belt for
Hedderwick’s endless belt would provide certain specific benefits—
delivering seeds the same distance apart and with a consistent velocity—that
further their common goal of achieving accurate seed spacing.” Pet. 29–30.
According to Petitioner, the reason why a person of ordinary skill
would have combined the disclosures of Hedderwick and Koning would
have been “to obtain the disclosed benefit of greater seed control provided
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by Koning’s brush belt.” Id. at 30 (citing Ex. 1002 ¶ 61). It is Dr. Taylor’s
opinion that a “person of ordinary skill in the art would have been motivated
to combine Hedderwick and Koning to realize the greater seed control
provided by Koning’s brush belt.” Ex. 1002 ¶ 61.10
Patent Owner takes a different view of Petitioner’s asserted
unpatentability based on Hedderwick and Koenig. According to Patent
Owner: Petitioner relies on “hindsight” to support its motivation to combine
the asserted references (e.g., PO Resp. 18–24); Koning and Hedderwick are
in disparate fields and Koning is “non-analogous art.” (e.g., id. at 15–18);
Petitioner should be estopped from contending that Koning is not non-
analogous art (e.g., id. at 8–15); and objective evidence “confirms
nonobviousness” (id. at 36–81).
b) 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

10 Although the parties, and thus the Board, focus on whether it would have
been obvious to modify Hedderwick with the brush belt of Koning, the
challenged claims do not include the term “brush belt.” We do not hold, and
this Decision should not be understood to suggest, that the “endless
member” claim term in the ’906 patent requires a brush belt. The challenge
Petitioner asserts, however, is to replace the endless belt of Hedderwick with
Koning’s brush belt, so that is the challenge we must evaluate. See SAS
Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“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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would have reasonably expected success in doing so. Because those issues
are 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 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).
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).
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. 19 (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 20 (emphasis added) (citing Ex. 2206,
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¶¶ 134–136). 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. 2206 ¶ 137. 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 in the absence of a separate conveying member
to bear their weight and a POSA would not predict that such a
belt could be used successfully for that purpose because, for
among other reasons, a POSA 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. 20.
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. 2206 ¶ 134.
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. 2206 ¶ 136.
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
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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. ¶ 139. According to Dr. Glancey’s testimony,
A device such as Koning’s [brush] belt that covers relatively
massive seed objects such as potatoes is not the same as a device
such as Hedderwick’s finned 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 ’906 Patent.
Id. ¶ 145.
Additionally, Patent Owner asserts that the complex fluid-like
dynamics of moving brush hairs are not readily adaptable to carrying small
objects. PO Resp. 25–30 (citing Ex. 2206 ¶¶ 162–170).
Neither the references, other evidence, nor Dr. Taylor provide
sufficiently persuasive evidence, even in combination, to establish why a
person of ordinary skill would have modified Hedderwick 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 so that it carries
seeds deposited into the bristles, as in the ’906 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.
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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.
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
with only hindsight bias.” Metalcraft v. Toro, 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. “[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. “[I]nventions 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.
Petitioner and Dr. Taylor (Ex. 1002 ¶¶ 57–67) 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
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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) 11 nor Gould (Ex. 1030) 12, however, discloses a
brush belt that carries seeds released into the brush hairs.
Figures 3 and 4 of Thiemke are reproduced below:

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

11 U.S. Pat. No. 6,651,570 B1, issued Nov. 25, 2003.
12 U.S. Pat. No. 1,376,933, issued May 3, 1921.
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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:

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
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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.
c) 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 Hedderwick 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 15
Independent claim 8, like claim 1, is directed to a “seed delivery
apparatus.” Ex. 1001, 8:21–35. Independent claim 8, like claim 1 includes
an elongated housing and an endless member positioned within the housing
that receives seed from an opening in the housing. Independent claim 15 is a
method counterpart of claims 1 and 8. Id. at 8:56–9:5.
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We have not been directed to any persuasive evidence of any
substantive differences between claims 1, 8, and 15 that would cause a
different analysis or conclusion for claims 8 and 15 from the conclusion
reached for claim 1. Accordingly, based on the analysis and evidence
discussed above for claim 1, we determine that Petitioner has not established
by a preponderance of the evidence that claims 8 and 15 are unpatentable.
5. Dependent Claims 2–7, 9–14, 16–20
Dependent claims 2–7 depend from claim 1. Dependent claims 9–14
depend from claim 8. Dependent claims 16–20 depend, directly or
indirectly, from claim 15. These claims stand with the claims from which
they depend.
Accordingly, based on the analysis and evidence discussed above for
claim 1, we determine that Petitioner has not established by a preponderance
of the evidence that dependent claims 2–7, 9–14, 16–20 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. 81.13 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,

13 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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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
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 1–20 are unpatentable.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–20 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
1–20 103 Hedderwick,
Koning
1–20
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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