E.I. du Pont de Nemours and Companyv.Monsanto Technology LLC

Patent Trial and Appeal Board

Jul 11, 2014

13108762 (P.T.A.B. Jul. 11, 2014)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: July 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

E.I. DU PONT DE NEMOURS AND COMPANY,
Petitioner,
v.
MONSANTO TECHNOLOGY LLC,
Patent Owner.

Case IPR2014-00331
Patent 8,312,672 B2

Before LORA M. GREEN, SHERIDAN K. SNEDDEN, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
MITCHELL, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
Petitioner E.I. du Pont de Nemours and Company (“Petitioner”) filed
a Petition (Paper 4, “Pet.”) to institute an inter partes review of claims 1-26
(the “challenged claims”) of U.S. Patent No. 8,312,672 B2 (Exhibit 1001,
“the ’672 patent”). See 35 U.S.C. §§ 311-319. Patent Owner, Monsanto
Technology LLC (“Patent Owner”), filed an Amended Preliminary
Response. Paper 19 (“Prelim. Resp.”). The standard for instituting an inter
partes review is set forth in 35 U.S.C. § 314(a), which provides as follows:
(a) THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines
that the information presented in the petition filed under section
311 and any response filed under section 313 shows that there
is a reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
35 U.S.C. § 314(a).
For the reasons discussed below, we conclude that Petitioner has not
established a reasonable likelihood that it would prevail in showing the
unpatentability of any challenged claim of the ’672 patent. Therefore, we do
not authorize an inter partes review for any claim of the ’672 patent.
B. Related Proceedings
Petitioner identifies the following related district court proceeding,
Monsanto Co. v. Pioneer Hi-Bred International, Inc., 4:12-cv-1090-CEJ
(E.D. Mo.). Pet. 2-3. Petitioner also identifies petitions for inter partes
review involving U.S. Patent Nos. 7,832,143; 8,028,469; 8,071,845; and
8,245,439. Id. at 3; see IPR2014-00332; IPR2014-00333; IPR2014-00334;
IPR2014-00335.
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C. The ’672 Patent (Ex. 1001)
The ’672 patent is directed to a method for analyzing a population of
haploid seeds, where tissue samples are removed from a plurality of these
seeds using an automated seed sampler system, while germination viability
of these seeds is preserved, and analyzing the samples for characteristics
indicative of genetic or chemical traits. Ex. 1001, Abstract. According to
the Specification of the ’672 patent, several patent applications, including
U.S. Patent Application Ser. No. 11/213,435 (see Ex. 1024), filed on August
26, 2005, which are incorporated by reference in their entirety, “disclose
apparatus and systems for the automated sampling of seeds as well as
methods of sampling, testing, and bulking seeds.” Ex. 1001, 1:50-59.
D. Illustrative Claim
Claim 1, the sole independent claim of the ’672 patent, is illustrative
of the claimed subject matter. Claim 1 is reproduced below.
1. A method for analyzing a population of haploid seeds, the
method comprising:
removing tissue from individual seeds in a population of
haploid seeds using an automated seed sampler system while
preserving germination viability of the seeds; and
analyzing the removed tissue for the presence or absence
of one or more traits of interest.
Id. at 17:2-8.
E. Prior Art References Applied by Petitioner
Petitioner challenges the patentability of claims 1–26 of the ’672
patent on the basis of the following items of prior art:

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References Patents/Printed Publications Date Exhibit
Horigane
1
Two-dimensional Analysis of
Kernels Using a New Sample
Preparation Method, 41
CHEMISTRY AND BIOLOGY 398-402
June 25,
2003
1003
Sherba EPA 0 127 313 B1 July 19,
1989
1004
Churchill William Johannsen and the
Genotype Concept, 7 J. OF THE
HISTORY OF BIO. 5-30
1974 1005
Eder In vivo Haploid Induction in Maize,
104 THEORETICAL AND APPLIED
GENETICS 703-708
2002 1006
Chunwongse Pre-germination Genotypic
Screening Using PCR
Amplification of Half-Seeds, 86
THEORETICAL AND APPLIED
GENETICS 694-698
1993 1007
Sangtong Serial Extraction of Endosperm
Drillings (SEED)—A Method for
Detecting Transgenes and Proteins
in Single Viable Maize Kernels, 19
PLANT MOLECULAR BIOLOGY
REPORTER 151-158
2001 1008
Groos Study of the Relationship Between
Pre-harvest Sprouting and Grain
Color by Quantitative Trait Loci
Analysis in a WhitexRed Grain
Bread-wheat Cross, 104
THEORETICAL AND APPLIED
GENETICS 39-47
2002 1009

1
Petitioner relies upon a certified translation for Horigane (Ex. 1003), and
provides an affidavit attesting to the accuracy of the translation. See Ex.
1003; 37 C.F.R. § 42.63(b).
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References Patents/Printed Publications Date Exhibit
Concibido Introgression of a Quantitative
Trait Locus for Yield from Glycine
Soja into Commercial Soybean
Cultivars, 106 Theoretical and
Applied Genetics 575-582
2003 1010
Frisch Comparison of Selection Strategies
for Marker-Assisted Backcrossing
of a Gene, 39 CROP SCIENCE 1295-
1301
1999 1011
Kisha Genetic Diversity Among Soybean
Plant Introductions and North
American Germplasm, 38 CROP
SCIENCE 1669-1680
1998 1012
Arumuganathan Estimation of Nuclear DNA Content
of Plants by Flow Cytometry, 9
PLANT MOLECULAR BIOLOGY
REPORTER 229-241
1991 1013
Kato Chromosome Doubling of Haploid
Maize Seedlings Using Nitrous
Oxide Gas at the Flower Primordial
Stage, 121 PLANT BREEDING 370-
377
2002 1014
Wright Commercial Hybrid Seed
Production, HYBRIDIZATION OF
CROP PLANTS 161-176
1980 1015
F. The Asserted Ground of Unpatentability
Petitioner contends that the challenged claims are unpatentable under
35 U.S.C. § 103(a) based on the following grounds (Pet. 6-8):
References Basis Claims challenged
Horigane and Sherba § 103(a) 1, 8, 9, 16, 25, and 26
Horigane, Sherba, and Churchill § 103(a) 4
Horigane, Sherba, and Eder § 103(a) 24
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References Basis Claims challenged
Horigane, Sherba, and Chunwongse § 103(a) 2, 3, 5, 10, 20, and 21
Horigane, Sherba, and Sangtong § 103(a) 6
Horigane, Sherba, and Groos § 103(a) 7 and 11
Horigane, Sherba, and Concibido § 103(a) 12
Horigane, Sherba, and Frisch § 103(a) 13
Horigane, Sherba, and Kisha § 103(a) 14 and 15
Horigane, Sherba, and Arumuganathan § 103(a) 17-19
Horigane, Sherba, Kato, and Eder § 103(a) 22
Horigane, Sherba, and Wright § 103(a) 23

II. ANALYSIS
A. Claim Interpretation
Consistent with the Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (“AIA”), we interpret a claim using the
“broadest reasonable construction in light of the specification of the patent in
which it appears.” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Also, claim terms are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
A claim term will not be accorded its ordinary meaning, however, “if
the patentee acted as his own lexicographer and clearly set forth a definition
of the disputed claim term in either the specification or prosecution history.”
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CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
“Although an inventor is indeed free to define the specific terms used to
describe his or her invention, this must be done with reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). Also, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
specification.”).
Petitioner proposes constructions for the terms “automated,”
“genotypic character of the seeds,” phenotypic characteristic,” “chemical
trait,” “traits of interest are genetically linked with a haplotype associated
with a QTL,” and “traits of interest are indicative of association with a
recurrent parent to facilitate selection for marker-assisted backcrossing.”
Pet. 8-10. Patent Owner proposes a construction for “automated seed
sampler system.” Prelim. Resp. 18-19. For purposes of this decision, we
only need to construe expressly, “seed sampler system.”
Petitioner does not provide a construction for “automated seed
sampler system,” but does provide a proposed construction for “automated.”
Petitioner defines automated as encompassing “partially machine driven
and/or computer controlled to reduce the amount of work done by humans.”
Pet. 8. Petitioner bases this proposed construction on its product that
Petitioner asserts Patent Owner has accused of infringement. Id. at 9 (stating
construction is based on Monsanto’s accusation that Pioneer’s use of its
“Laser-Assisted Seed Selection” platform infringes many claims of the ’672
patent).
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Patent Owner asserts that Petitioner’s construction of “automated”
would lead to an unreasonable result in which “a seed sampler system that is
1% computer-controlled and 99% manual” would meet that limitation.
Prelim Resp. 23. Patent Owner, on the other hand, bases its construction for
“automated” on the following passage of U.S. Patent No. 8,028,469 (“the
’469 patent”), that is a cited reference in the ’672 patent. Prelim. Resp.
21-22.
The operation of the seed sorter system 10 is generally
completely controlled and automated by the CCS 700 such that
the operations performed by the imaging station 300, the
orientation station 400 and the sample and sort station 500
occur substantially without need for human interaction,
intervention, or control.
Prelim. Resp. 22 (citing Ex. 2005, 5:35-44 (’469 patent)); id. at 22, n.4
(citing V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1311 (Fed.
Cir. 2005) (“This court has established that ‘prior art cited in a patent or
cited in the prosecution history of the patent constitutes intrinsic
evidence.”)).
In construing “automated,” Petitioner improperly refers to an accused
device to develop its construction. See NeoMagic Corp. v. Trident
Microsys., Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002) (“It is well settled that
claims may not be construed by reference to the accused device.”). Patent
Owner, however, notes portions of the intrinsic evidence that supports its
construction.
Patent Owner further asserts that the “automated seed sampler
system” is
a device that can automatically (a) take tissue samples directly
from individual seeds precisely and without depriving the seed
of its germination viability and (b) convey both the seed and the
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seed samples to different, but corresponding locations, such as
corresponding wells of separate seed trays. Thus, when the
seed sample is subjected to analysis that confirms the presence
of a particular trait of interest, the corresponding seed can be
readily identified and grown.
Prelim. Resp. 8-9. Patent Owner proffers the following construction for
“automated seed sampler system,” incorporating its construction for
“automated,” as the broadest reasonable construction in light of the
specification: “a system that, substantially without the need for human
interaction, intervention, or control, is capable of extracting samples from
seeds and conveying the seeds and seed samples to corresponding
locations.” Id. at 19.
To arrive at this construction, Patent Owner refers to the written
description of Patent Application Serial No. 11/213,435 (“the ’435
application”), which is incorporated by reference in the ’672 patent. Id. at
19-21. According to the ’435 application, the automated seed sampler
includes
a sampling station; a sampler for removing material from a seed
in the sampling station; a seed convey[o]r for conveying the
seed from the sampling station to a compartment in a seed tray;
and a conveyor for conveying the material removed from the
seed to a corresponding compartment in a sample tray. . . . The
samples can be tested, and the seeds can be sorted according to
the results of the testing of their corresponding samples.
Ex. 1024, 33 (Abstract); see id. at 2 ¶¶ 6-7, 6 ¶ 52 (stating achieving “one-
to-one correspondence between a seed and its sample”), 14 ¶ 82 (describing
sample transport system that deposits sample in unique sample holder “so
that the relationship between samples and their respective seeds can be
determined”).
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We need not reach the question of the proper construction of
“automated.” For purposes of this decision, we need only construe the scope
of the term “seed sampler system.” Based on this record, we agree with
Patent Owner that the broadest reasonable construction of “seed sampler
system,” in light of the specification, is “a system that is capable of
extracting samples from seeds and conveying the seeds and seed samples to
corresponding locations.”
B. Obviousness over Horigane and Sherba
Petitioner contends that Horigane and Sherba, which are references
common to each ground of obviousness for all challenged claims 1-26,
“demonstrate that it would have been obvious to sample haploid seed tissue
in an automated way that preserves the seed’s germination viability and to
then analyze the sampled tissue in a variety of known ways for
characteristics or traits of interest.” Pet. 15-16.
1. Horigane
Horigane discloses a polyspecimen analytical system, in which a seed,
such as a wheat seed, may be analyzed using spectroscopic methods, such as
through the use of a two-dimensional spectrophotometer or a two-
dimensional elemental analyzer. Ex. 1003, Abstract. Horigane notes that in
order to perform such method, it is necessary to prepare the analytical
surface under the same conditions, but that it is difficult to put several
kernels side by side. Id. at 398. Thus, Horigane discloses a kernel holder
“capable of keeping the angle and height of the analytical surface of a
sample relative to the analytical stage constant and developed a technique
for comparing the distribution of components among individuals by
preparing continuous cross-sectioned kernels.” Id. at 399.
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Once the kernels are fixed into the holder, such as by using a
light-curable resin such as those used in dentistry, the analytical portion of
the kernel needs to be cut into a smooth surface. Id. at 399-400.
Figure 3 of Horigane is reproduced below:

Figure 3 shows the preparation of analytical samples of a wheat kernel, and
the cutting device. Id. at 400. The samples are cut with a diamond disc that
is 22mm in diameter. Id. The portion of the holder that holds the wheat
kernels is approximately 40 mm in length. Id. at 399, Figure 1 (not
reproduced here). The cutting device, shown in the lower left of Figure 3, is
programmed for cutting and grinding with a sequential controller. Id. at 400.
The lower left of Figure 3 shows an enlarged view of the cut portions of
wheat endosperms, as well as the diamond disc. As taught by Horigane, the
embryos removed by cutting maintain their germination ability. Id.
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2. Analysis
Petitioner presents an explanation and a claim chart demonstrating
where the limitations of the challenged claims may be found in the cited
references. Id. at 15-59. Petitioner also relies on the declaration of Clifford
F. Weil, Ph.D. Ex. 1016. Petitioner contends that Horigane discloses a
method for studying traits of interest of wheat endosperm using an
automated cutting tool to remove the endosperm tissue from a population of
twenty wheat kernels held in a kernel holder. Pet. 16. Specifically,
Petitioner relies on Horigane to teach the limitations of claim 1 except
sampling of haploid seeds, although Petitioner contends that the Horigane
method is applicable to any seed type. Id.
Petitioner relies on Sherba to disclose analyzing haploid seeds, while
retaining their germination viability. Id. at 16-17. Petitioner concludes that
one of skill in the art would have combined Horigane with Sherba because
they both analyze seeds while preserving germination viability, and the
importance of haploid seeds would have motivated one of skill in the art to
sample and analyze these seeds for known traits of interest. Id. at 17.
Patent Owner responds that Petitioner has failed to demonstrate a
reasonable likelihood that it would prevail in demonstrating that the claims
are rendered obvious over the combination of Horigane and Sherba “because
it has failed to identify an ‘automated seed sampler system’ anywhere in the
prior art.’” Prelim. Resp. 26. For instance, Patent Owner asserts that
Petitioner points to an automated cutting tool of Horigane as the claimed
“automated seed sampler system.” Id. at 27. Such an automated cutting
tool, Patent Owner argues, “is only a single potential part of the overall
claimed system, which must also be capable of conveying seeds and seed
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samples to corresponding locations such as seed and sample trays.” Id.
Finally, Patent Owner asserts that Horigane’s process involves numerous
labor-intensive and manual steps, such as tissue removal and gluing the
individual seeds in the kernel holder, and therefore, is not automated. Id. at
28-29. Patent Owner asserts that Sherba does not cure these deficiencies.
Id. at 33-34.
We agree with Patent Owner. Horigane does not disclose the claimed
seed sampler system required by all challenged claims, much less an
automated one. The kernels in Horigane remain in the kernel holder for
analysis while the location of the embryos removed by cutting is not
disclosed. Therefore, Horigane’s system is not capable of extracting
samples from seeds and conveying the seeds and seed samples to
corresponding locations, as required by all of the challenged claims.
Petitioner points to none of the remaining proffered references to cure these
deficiencies.
III. CONCLUSION
For the foregoing reasons, we are not persuaded that the Petition
establishes a reasonable likelihood that Petitioner would prevail in showing
any of claims 1-26 of the ’672 patent are unpatentable under 35 U.S.C.
§ 103(a).
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied at to all challenged claims of
the ’672 patent.

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PETITIONER:
Todd R. Walters. Esq.
Erin M. Dunston, Esq.
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
erin.dunston@bipc.com
PATENT OWNER:
Andrew R. Sommer
Melinda L. Patterson
WINSTON & STRAWN LLP
asommer@winston.com
mpatterson@winston.com