Deere & Company

Patent Trials and Appeals Board

Nov 30, 2020

IPR2019-01046 (P.T.A.B. Nov. 30, 2020)

Trials@uspto.gov Paper 97
571-272-7822 Date: November 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

IPR2019-01046
Patent 9,480,199 B2

Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
BARRY L. GROSSMAN, and TIMOTHY J. GOODSON,
Administrative Patent Judges.
GOODSON, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
Denying in Part and Dismissing in Part 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 Corp. (collectively, “Petitioner”)
filed a Petition (Paper 4, “Pet.”) requesting inter partes review of claims 1
and 3 of U.S. Patent No. 9,480,199 B2 (Ex. 1001, “the ’199 patent”). Deere
& Company (“Patent Owner”) filed a Preliminary Response. Paper 9. With
our authorization, the parties filed additional pre-institution briefing. See
Paper 11; Paper 12. We instituted an inter partes review on both challenged
claims on the sole ground asserted in the Petition. See Paper 17 (“Dec. on
Inst.”). After institution of trial, Patent Owner filed a Patent Owner
Response. (Paper 36, “PO Resp.”), Petitioner filed a Reply (Paper 59, “Pet.
Reply”), and Patent Owner filed a Sur-Reply (Paper 71, “Sur-Reply”). We
held a hearing on August 31, 2020, a transcript of which is included in the
record. See Paper 94 (“Tr.”). The parties have also filed motions to
exclude, which we address below in Section II.
We have authority under 35 U.S.C. § 6. Petitioner bears the burden of
proving unpatentability of the challenged claims, and the burden of
persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
must prove unpatentability by a preponderance of the evidence. See
35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine that Petitioner has not shown
by a preponderance of the evidence that claims 1 and 3 of the ’199 patent are
unpatentable.
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B. Real Parties in Interest
Petitioner lists the following entities as real parties in interest:
Precision Planting, LLC; AGCO Corp.; Monsanto Co.; and Bayer AG. See
Pet. 7. Patent Owner lists only itself as a real party in interest. Paper 6, 1.
C. Related Matters
Patent Owner has asserted the ’199 patent against Petitioner in Deere
& Company v. AGCO Corporation, Civil Action No. 1:18-cv-00827-CFC in
the U.S. District Court for the District of Delaware. Pet. 8; Paper 6, 1.
In addition, Petitioner lists the following Board proceedings as related
matters:
Case No. Challenged Patent
IPR2019-01044 U.S. Patent No. 8,813,663
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
IPR2019-01052 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. 8.
D. The ’199 Patent
The ’199 patent issued November 1, 2016 from an application filed
April 16, 2014. Ex. 1001, at [45], [22]. The ’199 patent states that it is a
continuation of Application No. 13/943,561, filed July 16, 2013 (which
matured into the ’663 patent that is the subject of IPR2019-01044), which is
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a continuation of application No. 12/364,010, filed February 2, 2000. Id. at
[63].
The ’199 patent relates 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 ’199
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. The ’199
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.
Referring to Figure 3 of the ’199 patent (reproduced below), seed
stored in a seed hopper is provided to a seed meter that uses vacuum disk 50
to meter the seed to seed delivery system 28 that carries the seed to a
planting furrow. Ex. 1001, 3:19–24.
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Figure 3 depicts an enlarged side view of a seed delivery system of one
embodiment of the invention. Ex. 1001, 2:46–49.
Metering disk 50 is generally flat with a plurality of apertures 52 that
collect seeds 56 from a seed pool, which “adhere to the disk by air pressure
differential on the opposite sides of the disk 50 in a known manner.” Ex.
1001, 3:37–41. Seed delivery system 28 “includes a housing 48 positioned
adjacent the seed disk 50.” Ex. 1001, 3:41–45. Housing 48 includes upper
opening 58 that “admits the seed from the metering disk 50 into the
housing,” and “lower housing opening 78 . . . positioned as close to the
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bottom 80 of the seed trench as possible,” through which the seed is
discharged into the seed trench. Id. at 3:50–54, 62–64, 4:43–44.1
Pulleys 60, 62, mounted inside housing 48, support belt 64 for rotation
within the housing. Ex. 1001, 3:54–58. The belt has elongated bristles 70,
which serve to capture the seed. Id. at 3:58, 4:25–26. Loading wheel 86
adjacent upper opening 58 is positioned such that the path of the seeds on
disk 50 brings the seeds into nip 88 formed between the loading wheel and
distal ends 74 of bristles 70. Id. at 4:1–4:6.
As belt 64 rotates counterclockwise around the pulleys, the curve of
the pulley causes distal ends 74 of bristles 70 to separate from one another.
Ex. 1001, 4:15–20. When the disk brings the seeds into nip 88, the seeds are
transferred from the seed meter to the delivery system. Id. at 4:22–27.
Specifically, as the curved path straightens, the bristle ends close upon
themselves and capture the seeds. Id. at 4:28–32. As the belt continues to
move, bristles 70 convey the seeds downward to housing lower opening 78,
with sidewall 53 of the housing cooperating with bristles 70 to hold the seed
in the bristles. Id. at 4:32–36.
E. Challenged Claims
Petitioner challenges claims 1 and 3. Claim 1 is reproduced below,
with bracketed labels as added by Petitioner:
1. [Pre] A seeding machine, comprising:
[a] a seed meter which includes a metering member with a
plurality of apertures in a circular array, [b] the seed meter

1 The ’199 patent specifies that “[t]he term ‘upper opening’ shall be
construed to mean an open area before the side wall segment 53a in the
direction of belt travel and the term ‘lower opening’ shall mean an open area
after the side wall segment 53a in the direction of belt travel.” Id. at 5:35–
39.
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configured to move individual seeds sequentially along a first
path to a release position;
[c] a delivery system which moves the individual seeds in a
second path from the release position to a discharge position
adjacent a seed furrow formed in soil beneath the seeding
machine; and
[d] a blocking loading surface which blocks movement of the
individual seeds along the first path and permits redirection and
movement of the individual seeds along the second path as the
individual seeds are moved to the discharge position.
Ex. 1001 at 7:50–8:9; see also Pet. 57–80 (adding labels). Claim 3 depends
from claim 1 and adds that “the metering member is configured to use a
pressure differential to retain individual seeds on the metering member.”
Ex. 1001, 8:17–19.
F. Asserted Ground of Unpatentability
Petitioner contends that the challenged claims are unpatentable based
on the following ground:
References Basis2 Claims Challenged
Hedderwick,3 Koning,4 and Yamahata5 § 103(a) 1 and 3
Pet. 43. In support of its proposed ground, Petitioner relies on the testimony
of Mr. Douglas S. Prairie. See Ex. 1002; Ex. 1135. Patent Owner relies on

2 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 ’199 patent states that it is a continuation of an application
filed before March 16, 2013, we apply the pre-AIA versions of this statute.
See 35 U.S.C. § 100(i).
3 GB 2,057,835 A, published Apr. 8, 1981 (Ex. 1003, “Hedderwick”).
4 US 4,193,523, issued Mar. 18, 1980 (Ex. 1004, “Koning”).
5 Japanese Utility Model Registration Publication S56-24815U, published
Mar. 6, 1981 (Ex. 1014). Citations to Yamahata in this decision refer to the
English translation in Exhibit 1011.
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the testimony of Dr. James L. Glancey. See Ex. 2205.6 The record also
includes testimony from several witnesses on topics relating to objective
indicia of nonobviousness.
II. MOTIONS TO EXCLUDE
The party moving to exclude evidence bears the burden of proving
that it is entitled to the relief requested—namely, that the material sought to
be excluded is inadmissible under the Federal Rules of Evidence (“FRE”).
See 37 C.F.R. §§ 42.20(c), 42.62(a) (2019).
A. Petitioner’s Motion to Exclude
1. Brush Belt Videos and Photographs
Petitioner moves to exclude Exhibits 2141–2143, 2186, 2187, and
2198 under FRE 901 as lacking authentication. Paper 72, 1, 4–10.
Petitioner also argues that the testimony of Dr. Glancey regarding these

6 Petitioner argues that Dr. Glancey’s testimony is unreliable because he “is
a professional expert witness” who has served as an expert in 144 matters
regarding a range of technologies, but has never served as an expert in seed
planting technologies; because his opinions have been excluded by courts on
three occasions; because he holds four patents that do not relate to seed
planting technologies; because he allegedly “conceded that he does not
understand what the test for obviousness of a patent was in 2003 or in
2009;” and because his answers at his deposition were allegedly inadequate
in various ways. See Pet. Reply 2–4. Patent Owner responds that
Dr. Glancey is a mechanical engineering professor and professional engineer
who has “extensive person and professional experience with farming and
seed-planting equipment” and that the three instances in which his testimony
was excluded were personal injury litigations unrelated to seed-planting
equipment. Sur-Reply 32–34. Patent Owner also attacks the qualifications
of Mr. Prairie and asserts that his declaration and deposition testimony has
been flawed in various ways. Id. We have considered Petitioner’s and
Patent Owner’s arguments in assessing the weight to be given to
Dr. Glancey’s and Mr. Prairie’s testimony. We note that neither party has
moved to exclude Dr. Glancey’s or Mr. Prairie’s testimony.
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exhibits should be excluded. Id. at 10–12. The exhibits at issue are videos
and photographs of brush belts. Petitioner argues that these videos and
photographs are unreliable and should be excluded, because Deere has not
provided sufficient information about the brush belt that is the subject of the
videos and photographs and the circumstances in which the videos and
photographs were made. Id. at 4–8. Petitioner further argues that Dr.
Glancey’s testimony does not authenticate the videos, because he did not
create them and was unable to answer certain questions about the brush
belts’ characteristics during his deposition. Id. at 9–10.
Petitioner’s arguments do not persuade us that Patent Owner’s
showing is insufficient under FRE 901. A proponent’s “burden of proof for
authentication is slight.” Lexington Insurance Co. v. Western Pennsylvania
Hospital, 423 F.3d 318, 328 (3rd Cir. 2015). Under FRE 901, the proponent
must make a showing “sufficient to support a finding that the item is what
the proponent claims it is.” Fed. R. Evid. 901(a); see also United States v.
Coohey, 11 F.3d 97, 99 (8th Cir. 1993) (“To meet this standard, the
proponent need only demonstrate a rational basis for its claim that the
evidence is what the proponent asserts it to be.”). Once that threshold is
satisfied, “the evidence goes to the [fact-finder] and it is the [fact-finder]
who will ultimately determine the authenticity of the evidence.” Threadgill
v. Armstrong World Indus., Inc., 928 F.2d 1366, 1375 (3rd Cir. 1991). Here,
Dr. Glancey’s testimony is adequate to support a finding that these videos
and photographs are what Patent Owner claims they are, i.e., brush belts
being operated in various ways. See Ex. 2205 ¶¶ 166–170. Petitioner’s
criticisms of the videos and photographs go to the weight that should be
assigned to the videos and photographs, and Dr. Glancey’s testimony about
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them, and we have considered Petitioner’s arguments in assessing the weight
those materials should carry.
Additionally, the nature of our proceedings, in which the same panel
that decides admissibility also serves as the fact-finder, disfavors exclusion
in these circumstances. See Corning Inc. v. DSM IP Assets B.V., IPR2013-
00053, Paper 66, 19 (PTAB May 1, 2014) (sitting as a non-jury tribunal, the
Board may assign appropriate weight to evidence presented) (citing
Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)). As the
Donnelly court observed, “[o]ne who is capable of ruling accurately upon
the admissibility of evidence is equally capable of sifting it accurately after
it has been received . . . .” 123 F.2d at 224.
Thus, we deny Petitioner’s motion to exclude the videos, photographs,
and Dr. Glancey’s testimony about those videos and photographs.
2. Dr. Glancey’s Redirect Testimony
Next, Petitioner argues that Dr. Glancey’s testimony in response to
leading questions should be excluded. Paper 72, 12–13. The portions of Dr.
Glancey’s deposition testimony that Petitioner argues should be excluded are
his responses during redirect at Exhibit 1115, pages 267–68. See id. We do
not rely on those portions of Dr. Glancey’s testimony, so we dismiss as moot
this aspect of Petitioner’s motion.
3. Exhibits 2249 and 2257
Finally, Petitioner argues that Exhibits 2249 and 22
57 should be excluded as untimely. Paper 72, 13. Because we do not
rely on those exhibits in our analysis, we dismiss as moot this aspect of
Petitioner’s motion as well.
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4. Conclusion
For the foregoing reasons, we deny Petitioner’s motion to exclude as
to Exhibits 2141–2143, 2186, 2187, and 2198, and we dismiss as moot the
remainder of Petitioner’s motion to exclude.
B. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibits 1049–50, 1052, 1054, 1068,
1073, 1077–78, 1086–87, 1089, 1091–92, 1103, 1113–15, 1123, 1131–33
and paragraphs 89–137 of Exhibit 1135. Paper 75, 15. Most of these
contested materials relate to the parties’ arguments on objective indicia of
nonobviousness, which is an issue we do not reach. Accordingly, we do not
rely on most of these exhibits in our analysis. The contested exhibits that we
do cite in this Decision are Exhibits 1113, 1114, 1115, and 1133. These
exhibits are transcripts from Dr. Glancey’s depositions. However, Patent
Owner does not actually seek exclusion of those exhibits, only consideration
of errata sheets that Dr. Glancey prepared for those transcripts, which Patent
Owner filed as Exhibits 2266–69. See id. at 10–11. We also cite below to
Exhibit 1135, which is Mr. Prairie’s Reply Declaration, but not the
paragraphs Patent Owner challenges, which relate to objective indicia of
nonobviousness. Because we do not rely on the materials that Patent Owner
seeks to exclude, and also because we would ultimately find for Patent
Owner even without excluding these exhibits, we dismiss as moot Patent
Owner’s motion to exclude.
III. LEVEL OF ORDINARY SKILL IN THE ART
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention, supplying “an important guarantee of
objectivity in the process” of assessing an obviousness case. Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Factors pertinent to a
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determination of the level of ordinary skill in the art include: (1) the
inventor’s educational level; (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. Envtl. 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,
“[t]hese factors are not exhaustive but are merely a guide to 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).
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, 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. 57 (citing Ex. 1002 ¶¶ 21–
22). In the testimony the Petition cites in support of that proposal,
Mr. Prairie lists factors that are typically considered in assessing the level of
ordinary skill in the art, and then states “[b]ased on these factors together
with my experience and expertise,” his opinion of the level of ordinary skill
in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 21–22. This
conclusory testimony is entitled to little weight. 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 that the ordinarily skilled artisan “would have
an undergraduate degree in mechanical engineering, agricultural
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engineering, or closely related field” plus “about two years of experience
designing agricultural products or related machinery in industry or
academia.” PO Resp. 2–3 (citing Ex. 2205 ¶¶ 47–52). Patent Owner also
proposes that the level of ordinary skill in the art could be achieved without
an undergraduate engineering degree, through “about five years of
experience designing agricultural products or related machinery.” Id.
Dr. Glancey 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 ’199 Patent too high.” Ex. 2205 ¶ 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
mitigating the need for significant post-graduate design experience
(id. at ¶ 50); (2) Masters programs in engineering focus on research for
publication in peer-reviewed journals, rather than designing products for
industry (id. at ¶ 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 ’199 Patent” (id. at ¶ 52).
Based on the evidence and arguments of record, we determine that the
evidence favors Patent Owner’s proposed level of skill. Our determination
is primarily based on Dr. Glancey’s analysis and reasons summarized above,
as well as the prior art of record and the sophistication of the technology of
the ’199 patent. We have considered Mr. Prairie’s opinion, but we give that
testimony minimal weight due to the lack of supporting explanation.
Accordingly, we adopt Patent Owner’s proposed level of ordinary
skill in the art. Specifically, we determine that a person of ordinary skill in
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the art would have had an undergraduate degree in mechanical engineering,
agricultural engineering, or a similar field, and two years of experience
designing agricultural products or related machinery. Alternatively, a person
of ordinary skill in the art would have had five years of experience designing
agricultural products or related machinery, without a four-year
undergraduate engineering degree.
However, we note that the differences between the parties’ proposed
definition of the level of ordinary skill in the art are not determinative. The
analysis below would be materially the same under either party’s proposed
definition.
IV. CLAIM CONSTRUCTION
“In an inter partes review proceeding, a claim of a patent . . . shall be
construed using 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,
51,358 (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)).7 That
standard “includ[es] construing the claim in accordance with the ordinary
and customary meaning of such claim as understood by one of ordinary skill
in the art and the prosecution history pertaining to the patent.” Id.; see also
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
We determine that no terms require express construction to resolve the
parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent

7 The Petition in this case was filed May 29, 2019. See Paper 5, 1.
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necessary to resolve the controversy”); see also Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of an inter partes review).
V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC
A. Legal Standards for Obviousness
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under § 103
that requires consideration of four factors: (1) the “level of ordinary skill in
the pertinent art,” (2) the “scope and content of the prior art,” (3) the
“differences between the prior art and the claims at issue,” and (4) when in
evidence, “secondary considerations” of non-obviousness such as
“commercial success, long-felt but unsolved needs, failure of others, etc.”
Id. at 17–18. When a combination of references together discloses all of the
limitations in a claim, the Board “must determine whether there was an
‘apparent reason to combine the known elements in the fashion claimed by
the patent at issue,’ and whether a person of skill in the art at the time of the
invention would have had a ‘reasonable expectation of success’ in pursuing
that combination.’” Los Angeles Biomedical Research Institute v. Eli Lilly
& Co., 849 F.3d 1049, 1064 (Fed. Cir. 2017) (quoting KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) and Genzyme Therapeutic Prods.
Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1373 (Fed. Cir. 2016)).
B. Summary of Cited Prior Art References
1. Hedderwick
Hedderwick relates to a precision seeder, which it defines as “a
seeding device able to deposit single seeds at predetermined spacings.”
Ex. 1003, 1:5–8. The seeder includes a seed hopper that transfers seed to a
rotating vacuum disc, which has orifices around its periphery that receive
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and retain seeds by pressure differential. Id. at 3:46–52. Figure 2 is
reproduced below:

Figure 2 depicts a side elevation view of a seeder casing with
the disc in place and with a surface portion broken away
to illustrate the operation of the seeder. Id. at 1:100–101.
The vacuum disc rotates in a counterclockwise direction, past various
devices, to ensure that a single seed is retained by the orifice, and continues
to rotate until the “seeds have passed the end of vacuum inlet 78 at about 7
o’clock.” Ex. 1003, 3:45–61. When the seeds’ “associated vacuum holes 94
are in register with recess 84 in the wear plate 80,” the seeds drop into a cell
bounded by fins 90. Id. at 3:55–63. The seed falls from the cell when it
reaches drop off lip 108, which is positioned slightly past bottom dead
center. Id. at 3:66–73.
Hedderwick describes a second embodiment for use when “the
vertical distance to be travelled by the seeds is greater.” Ex. 1003, 4:2–5.
Figure 4 is reproduced below:
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Figure 4 depicts a side elevation view of a seeder with
parts broken away. Id. at 1:108–109.
Disc 130 of the second embodiment can have the same construction as
disc 70 shown in Figure 2, although disc 130 rotates in a clockwise direction
in Figure 4. Id. at 4:10–13, 5:51–53. “The major change in the seeder is the
provision of an endless belt 134 which has a series of fins 135 projecting
upwardly therefrom.” Id. at 4:23–25. Fins 135, together with casing 137
and belt 134, define a series of moving cells. Id. at 4:23–28; Fig. 4. These
“cells are synchronised to align with orifices 129 of disc 130,” such that
when disc 130 releases a seed it is released into a cell and each cell carries a
seed. Id. at 4:28–5:5. Belt 134 passes over idler sprocket 152 and driven
sprocket 132, which drives the belt and thus seeds 148 in the cells, to an end
of casing 137 where the seed is discharged. Id. at 5:6–7, 74–78; Fig. 4.
2. Koning
Koning “relates to a planting machine for potatoes, bulbs or similar
seed crop.” Ex. 1004, 1:5–6. Figure 4 is reproduced below:
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Figure 4 depicts an end part of a planting machine
schematically in a side view. Id. at 3:32–33.
The planting machine includes conveying member 23 having part 40 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 41, is guided around
rollers 42 and 43, and includes brush hairs 45. Id. at 5:6–8. Brush hairs 45
of belt 44 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.
Specifically, “the brush hairs hold the potatoes or the like lying on the
conveying surface [23] till the moment that they leave the belt.” Id. at 3:16–
18. 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. By holding the potatoes or the
like “till the very last moment . . . the velocity of the potatoes in relation to
each other is completely defined. Under all circumstances a regular
distribution of the potatoes in the furrow is obtained.” Id. at 3:18–22.
3. Yamahata
Yamahata relates to “a device for guiding falling seeds in a vacuum
seeder.” Ex. 1011, 2:26–27. The vacuum seeder includes a rotating seed
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board in which a vacuum is created to suction seeds into seed holes, and
when the vacuum is shut off, the seeds drop from the seed holes. Id. at
2:29–34. Figures 1 and 2 are reproduced below.

Figure 1 depicts a cross-sectional view showing a vacuum
seeder using an exemplary guide device, and Figure 2 is a
cross-sectional view from II-II in Figure 1. Ex. 1011, 4:27–30.
As seen in Figures 1 and 2, seed board 1 is part of rotating body 2, and
includes a plurality of seed holes 4 that “are formed in the seed board 1 at
equal circumferential spacing,” and shut roller 6 “closes the seed holes 4
from the inside at a predetermined position.” Id. at 3:12–22.
Yamahata discloses that “some seeds get stuck in the seed holes and
do not drop from the seed holes even when the suction is stopped by the shut
roller.” Id. at 2:35–37. Thus, Yamahata uses guide 10 having guide surface
17 “intersecting the trajectory of the seed holes 4,” so that “the seed 16 is
guided along the guide surface 17 of the guide 10 and is removed from the
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seed hole 4.” Id. at 3:34–35, 4:11–13. In this way, if a seed is stuck in seed
hole 4 and “does not fall from the seed hole 4 even after the suctioning force
has been lost in the seed hole 4 due to the shut roller 6, the guide 10 forcibly
removes the seed from the seed hole 4,” so that “all seeds 16 drop from the
seed board 1 at a predetermined position as indicated by arrow B, and the
sowing interval at which each seed drops is regular.” Id. at 4:13–20.
C. Claim 1
1. Overview of the Parties’ Contentions
Petitioner contends that the combination of Hedderwick, Koning, and
Yamahata together teaches every limitation in claim 1 and that an ordinarily
skilled artisan would have been motivated to combine the references to yield
the claimed invention. See Pet. 36–45, 57–80. To briefly summarize the
manner in which Petitioner relies on the cited references, Petitioner contends
that Hedderwick teaches the preamble and limitations [a] and [b]. See id. at
57–63. As to limitation [c], Petitioner proposes modifying Hedderwick by
replacing finned belt 134 with Koning’s brush belt, and contends that
Hedderwick so modified teaches a “delivery system” as recited in
limitation [c]. See id. at 64–74.8 Petitioner contends that Yamahata’s seed
guide corresponds to the “blocking loading surface” recited in limitation [d],
and that when Yamahata’s seed guide is incorporated into Hedderwick and
Koning, the resulting combination teaches every aspect of limitation [d].
See id. at 74–80.

8 We note that the claim does not expressly recite a brush belt, and we do not
hold that a “delivery system” requires a brush belt. However, as discussed
in greater detail below (see infra pp. 23-25), the sole challenge as Petitioner
framed it includes Koning’s brush belt, so that is the challenge we must
evaluate.
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The Petition includes the following modified version of Hedderwick’s
Figure 4 to illustrate how Petitioner proposes to combine Hedderwick,
Koning, and Yamahata:

Pet. 80. In Petitioner’s drawing, Yamahata’s seed guide (colorized yellow)
is added adjacent Hedderwick’s seed meter disc (colorized blue), and
Koning’s brush belt (colorized purple) is substituted for Hedderwick’s
finned belt. Id. at 78–80.
According to Petitioner, ordinarily skilled artisans would have been
motivated to replace Hedderwick’s finned belt with Koning’s brush belt, in
order to improve the accuracy of seed spacing. See id. at 42–43.
Specifically, Petitioner argues that in Hedderwick, seeds can move within
the cells of the finned belt, which means that Hedderwick’s endless belt does
not completely define the relationship between seeds. Id. at 41. According
to Petitioner, an ordinarily skilled artisan “desiring finer seed spacing would
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have been motivated to combine the teachings of Koning’s brush belt with
Hedderwick’s system to deliver seeds the same distance apart and with a
consistent velocity to achieve accurate seed spacing.” Id. at 43. As for
Yamahata, Petitioner argues that Yamahata identifies a problem that seed
can become stuck in the holes of a seed meter disk, and teaches to solve that
problem by using a seed guide to block movement of the seeds on the path
of the rotating disk. Id. at 38–39 (citing Ex. 1011, 2:34–37, 4:13–22).
Petitioner contends that an ordinarily skilled artisan would have been
motivated to incorporate Yamahata’s seed guide into Hedderwick, to
improve control over seed released from Hedderwick’s seed meter disc, and
improve seed spacing. Id. at 39, 78; Ex. 1002 ¶ 74.
Patent Owner counters that Koning does not qualify as analogous art
and, relatedly, that judicial estoppel bars Petitioner from contending
otherwise. PO Resp. 9–19; Sur-Reply 13–14. Patent Owner further argues
that an ordinarily skilled artisan would not have been motivated to combine
Koning’s belt with Hedderwick and Yamahata, and would not have expected
that combination to succeed. PO Resp. 19–35; Sur-Reply 16–21. Patent
Owner also challenges the motivation and reasonable expectation of success
for the incorporation of Yamahata’s seed guide. PO Resp. 35–50; Sur-Reply
21–28. And Patent Owner argues that incorporating Yamahata’s seed guide
would not yield a “blocking loading surface” as claimed. PO Resp. 51–60;
Sur-Reply 28–29. Patent Owner also submits evidence of objective indicia
of nonobviousness. PO Resp. 60–97; Sur-Reply 4–13.
2. 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
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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).
We note at the outset of this analysis that Petitioner chose a peculiar,
and seemingly unnecessarily complex manner of combining the references
to yield the limitations of the claim. Specifically, as we remarked in our
Decision on Institution, it is unclear that Koning is necessary, insofar as
Hedderwick may disclose the “delivery system” of limitation [c] without
finned belt 134 being replaced by Koning’s brush belt. See Dec. on Inst. 20–
21. However, Petitioner did not present a challenge based on Hedderwick
and Yamahata, without Koning. Although the Petition included a footnote
stating that if the “delivery system” does not require a brush belt and
encompasses flighted belts, the claims “are still unpatentable in view of
Hedderwick and Yamahata, either with or without Koning’s brush belt,” (see
Pet. 65 n.12), the Petition never elaborated on a combination that did not
include Koning’s brush belt, and the sole ground set forth in the Petition was
unpatentability “over Hedderwick in view of Yamahata and Koning.” See id.
at 12, 57. Patent Owner argues, persuasively, that Koning is a necessary part
of the challenge that the Petition presented. PO Resp. 7–8; Sur-Reply 29.
Petitioner does not contest that point in its Reply — indeed, most of the
Reply is focused on the obviousness of incorporating Koning’s brush belt
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into Hedderwick. See Pet. Reply 4–27. At the hearing, Petitioner
acknowledged Koning’s essential role in its asserted ground of
unpatentability in view of “the fact that Koning is used as one of the
references in each of the combinations9 we propose.” Tr. 42:8–15, see id. at
13:4–14.
Because the proposed combination as Petitioner chose to frame it
includes seeds being deposited from above into Koning’s “delivery system,”
which 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).
Further, “the petitioner’s petition . . . is supposed to guide the life of
the litigation,” SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018), and it
would “not be proper for the Board to deviate from the grounds in the
petition and raise its own obviousness theory.” Sirona Dental Sys. v. Institut
Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018). The Federal Circuit
recently held the Board erred when it instituted inter partes review based on
a combination of prior art references not advanced in a petition because “the

9 There is only one combination at issue in this proceeding, but the hearing
was a combined hearing for this and several other related cases. See Paper
67, 2.
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Board does not ‘enjoy[] a license to depart from the petition and institute a
different inter partes review of [its] own design.” Koninklijke Philips N.V. v.
Google LLC, 948 F.3d 1330, 1336 (Fed. Cir. 2020) (quoting SAS, 138 S.Ct.
at 1356). These precedents make clear that “the petitioner’s contentions, not
the Director’s discretion, define the scope of the litigation all the way from
institution through to conclusion.” SAS, 138 S.Ct. at 1357; see also id. at
1355 (“Congress chose to structure a process in which it’s the petitioner, not
the Director, who gets to define the contours of the proceeding.”). In
accordance with this framework, we look to the Petitioner’s explanation of
how the proposed combination of Hedderwick, Koning, and Yamahata
would work in assessing motivation and reasonable expectation of success.
Here, in summary and as further detailed below, we are not persuaded
that Petitioner has met its burden of showing, by a preponderance of the
evidence, that ordinarily skilled artisans would have been motivated to
selectively glean Koning’s belt 44 with brush hairs 45 from Koning’s
“delivery system,” which also includes conveying member 23 and then
reorient the belt 44 so that the brush hairs receive the seeds from Yamahata’s
seed guide in the proposed manner, and would have reasonably expected
success in doing so. In Petitioner’s proposed combination, Yamahata’s seed
guide is positioned “immediately above, or proximate to, Hedderwick’s
intake opening (orifice 141), so that the guide blocks seeds on Hedderwick’s
seed meter disk and permits the seeds to be redirected into Koning’s brush
belt through Hedderwick’s intake opening.” Pet. 78–79. From there,
Koning’s brush belt “hold[s] seeds and move[s] them along a second path
(around Hedderwick’s driven and idler sprockets) to the discharge position
(Hedderwick’s discharge opening).” Id. at 79.
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As Patent Owner points out, the function that the brush belt serves in
Petitioner’s proposed combination is different from its function in Koning.
See PO Resp. 21–22. In Koning, the brush belt holds potatoes “lying on the
conveying surface” so as to maintain the speed and relative position of
potatoes as they are moved by the conveyor to the furrow. Ex. 1004, 3:16–
24, 5:3–14, Fig. 4; see also Pet. 42 (quoting same portions of Koning’s
disclosure). Koning does not teach a system in which seeds are dropped
from above into a moving brush belt. And Petitioner does not present
persuasive evidence that an ordinarily skilled artisan would have been
motivated to adapt Koning’s brush belt to such a use, or would have
reasonably expected success in doing so.
Petitioner argues, with citation to its expert, Mr. Prairie, that
“[i]ncorporating the teachings of Koning’s brush belt into Hedderwick’s row
unit would have been simple for a POSITA to implement and would only
have required applying a known technique (brush belt) to a known device
(seeding system).” Pet. 43 (citing Ex. 1002 ¶ 81); see also Ex. 1135 ¶ 53
(Mr. Prairie testifying in Reply declaration that “[a] person of ordinary skill
in the art would have known how to fine tune the brush belt taught by
Koning to work in Hedderwick’s system.”). Petitioner and Mr. Prairie assert
that Koning shows the brush belt receiving seeds as its bristles are rotating
around upper roller 42, such that an ordinarily skilled artisan would have
understood to incorporate Koning’s brush belt into Hedderwick so that that it
receives seeds as the belt curves around Hedderwick’s driven sprocket 132.
Id. at 43–44 n.8; Ex. 1002 ¶ 81.
Petitioner’s and Mr. Prairie’s analysis does not acknowledge, much
less bridge, the gap between Koning’s use of a brush belt to hold potatoes
from above as they lie on a conveying surface, versus the brush belt’s use in
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the proposed combination to receive seeds that are deposited onto it from
above.10 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; see also Ex. 2205 ¶¶ 140–141 (Patent Owner’s
expert, Dr. Glancey, testifying that a simple mechanical analysis shows that
in Koning, about 87% of the potatoes’ weight is supported by the conveying
member). Mr. Prairie’s refusal to acknowledge the differences between the
brush belt’s function in Koning versus the proposed combination
undermines the credibility of his testimony that the proposed combination
would have been a simple application of a known technique to a known
device.

10 See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016)
(noting expert testimony that supported the absence of a motivation to
combine: “[I]f I can equate this one to kind of a simple analogy, if you’re
trying to build a piece of furniture. What’s a typical thing? You put on a
piece of wood. You take a nail, and you hit the nail with a hammer. In
control terms, what Mr. Phipps is suggesting is that you put the hammer on
the workbench, pick up the piece of furniture and bash the piece of furniture
onto the hammer. It’s totally backwards from what I believe one of skill in
the art would even attempt . . . .”).
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The persuasiveness of Mr. Prairie’s testimony—i.e., that it would
have been simple for an ordinarily skilled artisan to adapt Koning’s brush
belt for use in the proposed combination, where seeds are deposited onto the
brush belt from above—is further 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; see also Ex. 2263, 81:2–12 (“Q. And you never
attempted to drop a seed onto a moving brush belt to see whether that would
be inserted into the brush belt, correct? A. As I stated, for the purposes of
this case, I did not do any physical experimentation with a moving brush belt
as I didn’t feel it was necessary. The prior art discloses sufficient
information.”) (objection omitted). Mr. Prairie has “had some industrial
design projects where we’ve had to utilize brushes for various applications,”
but he “ha[s] not used a brush belt to convey seed.” Ex. 2194, 297:6–16.
Mr. Prairie testified that “prior to writing this declaration, brush belt
technology was not a specific area that I study, that I was researching.” Ex.
2263, 79:6–9. Indeed, during his initial deposition in this case, the only
specific example of a moving brush belt Mr. Prairie could recall seeing was
Patent Owner’s ExactEmerge product. Ex. 2193, 108:6–110:10.
The basis for Mr. Prairie’s opinion, that a seed would be expected to
enter a moving brush belt in the proposed combination, appears to only be
Koning itself. Ex. 1002 ¶¶ 79–81; Ex. 2193, 116:12–19, 118:7–23;
Ex. 2263, 159:5–160:2. When asked at his deposition, Mr. Prairie did not
explain any other engineering analysis he performed to make that
determination. Ex. 2193, 114:23–117:12. Mr. Prairie testified that he “did
not operate a brush belt for this declaration because [he] didn’t feel it was
necessary to make my assessments” and he “did not do study or
experimentation on a brush belt as I did not feel it was necessary.”
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Ex. 2263, 79:17–19, 80:2–4. Mr. Prairie’s reliance on Koning is
unpersuasive because, as discussed above, Koning does not teach using a
brush belt to receive and convey seeds that have been dropped onto it from
above. 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 dropped from above, as in the proposed
combination.
In its Reply, Petitioner argues that “brush belts were well-known and
used in many aspects of planting, so a POSITA would have had the
knowledge necessary to make a brush belt work in Hedderwick’s system
without undue experimentation.” Pet. Reply 8. To support this argument,
Petitioner cites Koning and two other references: Thiemke11 and Gould.12
See id. at 9–11. In his declaration accompanying Petitioner’s Reply,
Mr. Prairie discusses those same references. See Ex. 1135 ¶¶ 40–43. But
these two additional references do little to aid Petitioner’s case because
neither Thiemke nor Gould discloses a moving brush belt that captures seeds
dropped directly into it from above, as Petitioner proposes in its
combination. Figures 3 and 4 of Thiemke are reproduced below:

11 US 6,651,570 B1, issued Nov. 25, 2003 (Ex. 1015).
12 US 1,376,933, issued May 3, 1921 (Ex. 1030).
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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 teach
loading seed into a bristle brush by dropping it from directly above; indeed,
deflector 60 prevents seed from dropping onto the top of wheel 42 in a
manner that would be comparable to how Petitioner proposes to load seed
into 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 depositing them from directly above.
To summarize the analysis to this point, Petitioner’s proposed
combination uses Koning’s brush belt in a way that materially differs from
the way Koning uses its brush belt. Petitioner and Mr. Prairie contend that it
would have been a simple matter for an ordinarily skilled artisan to apply
Koning’s brush belt as proposed, but Mr. Prairie has never seen a brush belt
used that way and has never attempted to do it. Mr. Prairie’s basis for his
testimony, that using a brush belt as proposed would have been within the
level of ordinary skill in the art, is his review of the prior art, but Petitioner
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provides no prior art reference that shows loading a brush belt by simply
depositing seed onto it from above. In our view, Petitioner’s showing that
an ordinarily skilled artisan would have been motivated to use Koning’s
brush belt in the proposed manner, and would have reasonably expected
success in doing so, is conjectural and unpersuasive.
Compounding the shortcomings in Petitioner’s affirmative showing,
Patent Owner further undermines Petitioner’s case with its evidence of the
difficulties that ordinarily skilled artisans would have expected to face in
attempting to drop seeds into a moving brush belt. See PO Resp. 28–35;
Sur-Reply 18–20. Patent Owner’s expert, Dr. Glancey, testifies that an
ordinarily skilled artisan “would have been discouraged from attempting to
combine Koning’s belt with brush hairs with Hedderwick due to the
significant real-world engineering challenges that would prevent or frustrate
such a modification.” Ex. 2205 ¶ 164. In particular, Dr. Glancey explains
that in a brush belt moving at a conventional speed, the brush tips “resemble
a fluid medium with surface tension properties,” which “mak[es] it more
difficult to insert an object into the moving brush hairs.” Id. ¶ 166.
According to Dr. Glancey, this surface tension in the brush hairs resists
engagement of seeds into moving bristles and causes seeds to “float” or
“surf” on the brush hair tips, which create spacing and timing problems that
would have discouraged using a brush belt in the manner Petitioner
proposes. Id. ¶¶ 167–168. Dr. Glancey cites video of seeds being dropped
onto moving brush belts that exhibit this effect. Id. ¶ 167 (citing Ex. 2186;
Ex. 2187; Ex. 2141). Dr. Glancey further testifies that ordinarily skilled
artisans attempting to insert seed into a moving brush belt would have been
likely to encounter seed jamming problems when the seed fails to embed
itself in the brush hairs and causes a pile-up effect that disrupts loading of
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subsequent seeds. Id. ¶¶ 170–172 (citing Ex. 2143; Ex. 2198). Dr. Glancey
also testifies that brush belts’ susceptibility to environmental damage would
have discouraged their use in Petitioner’s proposed combination. Id.
¶¶ 173–176.
Petitioner and Mr. Prairie criticize Dr. Glancey’s videos as “not a
reliable indication of how Koning’s brush belt would operate in
Hedderwick’s system.” Pet. Reply 12–13; see Ex. 1135 ¶ 50 (Mr. Prairie
testifying that “Deere’s ‘experiments’ are not scientifically reliable”).
Petitioner points out that in his deposition, Dr. Glancey was unable to
provide certain information about the creation of the videos or the
characteristics of the brush belt in the videos. Pet. Reply 12–13 (citing Ex.
1114, 136:6–143:12, 147:7–155:17); see also Ex. 1135 ¶¶ 48–50
(Mr. Prairie making same points). These criticisms undercut the videos’
value as experimental evidence of how a brush belt would behave in
circumstances that replicate the proposed combination, but the videos still
serve as real-world illustrations of Dr. Glancey’s testimony regarding the
kinds of phenomena that ordinarily skilled artisan would encounter when
seeking to load seed in a moving bristle brush. Aside from attacking
Dr. Glancey’s videos, Petitioner and Mr. Prairie do not address
Dr. Glancey’s broader point that brush belts can suffer from seed surfing,
jamming, and degradation issues, and that these considerations would
dissuade an ordinarily skilled artisan from the proposed combination.
Moreover, while Petitioner and Mr. Prairie are critical of
Dr. Glancey’s videos as demonstrations of how the proposed combination
would work, Petitioner did not present, and Mr. Prairie did not conduct, any
experiments or other kinds of physical demonstrations of their own. See
Ex. 2263, 79:17–19, 80:2–4, 81:2–12. Mr. Prairie testifies:
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The fact that Deere apparently had to create new
“experiments” for these proceedings rather than rely on existing
evidence or research, in my opinion, also undermines its
reliability. If it would have been clear to a person of ordinary
skill in the art that brush belts could not be used with seed, . . .
then Deere should have presented evidence—patents, articles,
studies, papers, or videos—from the prior art to show this.
Ex. 1135 ¶ 51. Yet it is Petitioner’s burden to show motivation and
reasonable expectation of success for the proposed combination, not Patent
Owner’s burden to show that the prior art demonstrates the futility of the
proposed combination. See 35 U.S.C. § 316(e); In re Magnum Oil Tools
Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016). Here, Petitioner’s
affirmative showing on motivation and reasonable expectation of success for
using Koning’s brush belt in the proposed combination is unpersuasive for
the reasons discussed above. And Patent Owner’s evidence of difficulties an
ordinarily skilled artisan would have expected to encounter in that proposal
serves to highlight the issues that Petitioner’s showing ignores.
Petitioner additionally contends that Patent Owner’s arguments are
based on the erroneous premise that an ordinarily skilled artisan must be
able to physically combine the references. See Pet. Reply 7 (citing In re
Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012)). We disagree. Patent
Owner’s arguments, summarized above, simply point out that an ordinarily
skilled artisan would not have expected success in combining the references’
teachings in the way Petitioner proposes. Motivation to combine and
reasonable expectation of success are properly assessed with reference to the
combination as Petitioner has framed it. The Federal Circuit has explained
that doing so is not inconsistent with Mouttet. See Samsung, 925 F.3d at
1382–83 (“We will not fault the Board for analyzing Petitioners’
obviousness grounds in the way presented in the Petition.”).
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Petitioner also argues in its Reply that the ’199 patent does not
“address the purported difficulties of using a brush belt or provide any
explanation of how overcome such problems (e.g., bristle stiffness or
density).” Pet. Reply 7. We agree that the ’199 patent is generic in its
description of the brush belt’s characteristics. See Ex. 1001, 7:36–42
(describing that “brush bristles are the preferred embodiment, and may be
natural or synthetic” but other material types can also be used); id. at 4:51
(“The belt shown in FIG. 3 has relatively long bristles.”); id. at 4:66–67
(“However, a short bristle brush can be used as well.”). But, critically, the
’199 patent explains that a seed can be inserted into a moving brush belt by
using the outer surface of a loading wheel to pinch seeds off the seed disk
into the bristles of the brush belt. Ex. 1001, 4:21–28, Fig. 3; see Ex. 2205
¶ 43. Petitioner does not point to any prior art that teaches such a solution.
Petitioner relies on Yamahata’s seed guide to disclose the claimed
blocking loading surface. Pet. 74–80; Pet. Reply 27–30. We agree with
Patent Owner that Petitioner has not shown that an ordinarily skilled artisan
would have been motivated to use Yamahata’s seed guide as Petitioner
proposes to load seed in a moving brush belt, and would have reasonably
expected success in doing so. PO Resp. 51; Sur-Reply 26–27. Yamahata
explains that the function of its seed guide is to “forcibly remove[] the seed
from the seed hole” on the vacuum seeder so that “all seeds drop . . . at a
predetermined position . . . and the sowing interval at which each seed drops
is regular.” Ex. 1011, 4:16–20. Pointing to this teaching of reliable seed
release, Petitioner’s stated motivation for incorporating Yamahata’s seed
guide into the proposed combination is to increase control over seed
movement. Pet. 39. But Yamahata’s teaching that the seed guide scrapes
off seeds stuck in vacuum holes does not support that an ordinarily skilled
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artisan would expect the seed guide to successfully load seed into a moving
brush belt, as in Petitioner’s proposed combination. Yamahata does not
involve a brush belt, and Yamahata’s seed guide is intended to ensure that
“all seeds 16 drop . . . at a predetermined position.” Ex. 1011, 4:17–19. For
all the reasons discussed above, Petitioner has not shown that an ordinarily
skilled artisan would expect success from a system in which a seed is simply
dropped from above onto a moving brush belt. And Petitioner does not
persuasively explain why an ordinarily skilled artisan would have been
motivated to, and would have reasonably expected success in, using
Yamahata’s seed guide to load seed into a brush belt.
3. Conclusion Regarding Claim 1
We conclude that Petitioner has not demonstrated by a preponderance
of the evidence that claim 1 would have been obvious over Hedderwick,
Koning, and Yamahata.
D. Claim 3
Claim 3 depends from claim 1 and adds the further limitation that “the
metering member is configured to use a pressure differential to retain
individual seeds on the metering member.” Ex. 1001, 8:17–19. Petitioner’s
arguments regarding claim 3 do not remedy the shortcomings discussed
above with respect to claim 1. See Pet. 81; see also Mylan Pharms. Inc. v.
Research Corp. Techs., Inc., 914 F.3d 1366, 1376 (Fed. Cir. 2019)
(“Dependent claims, with added limitations, are generally not obvious when
their parent claims are not.”) (citing W.L. Gore & Assocs., Inc., v. Garlock,
Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983)). Thus, we conclude that
Petitioner has not shown by a preponderance of the evidence that claim 3
would have been obvious over Hedderwick, Koning, and Yamahata.
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Patent 9,480,199 B2
37
VI. 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).” P.O. Resp. 97.13 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,
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.
VII. CONCLUSION
The outcome for the challenged claims in this proceeding is set forth
below. In summary:

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).
Claims

35
U.S.C. §
References Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3 103 Hedderwick, Koning, Yamahata
1, 3
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Patent 9,480,199 B2
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VIII. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1 and 3 have not been proven by a
preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied
in part and dismissed in part;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; 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.
IPR2019-01046
Patent 9,480,199 B2
39
FOR PETITIONER:
Grant Rowan
Mary 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 Alexander
Peter Chen
Nicholas L. Evoy
Rajesh Paul
Richard Rainey
COVINGTON & BURLING LLP
jalexander@cov.com
pchen@cov.com
nevoy@cov.com
rpaul@cov.com
rrainey@cov.com