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

Patent Trial and Appeal Board

Jul 11, 2014

13251993 (P.T.A.B. Jul. 11, 2014)

Trials@uspto.gov Paper No. 16
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 IPR2014-00334
Patent 8,245,439 B2
____________

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

SNEDDEN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
E. I. du Pont de Nemours and Company (“DuPont”) filed a Petition to
institute inter partes review of claims 1, 2, 5–16, and 18–22 of U.S. Patent
No. 8,245,439 B2 (“the ’439 patent”) pursuant to 35 U.S.C. § 311–319.
Paper 1 (“Pet.”). Patent Owner Monsanto Technology LLC (“Monsanto”)
filed a Patent Owner Preliminary Response. Paper 14 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314. The standard for
instituting an inter partes review is set forth in 35 U.S.C. § 314(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.

Upon consideration of the above-mentioned Petition and Preliminary
Response, we conclude that DuPont has not established that there is a
reasonable likelihood that it would prevail with respect to claims 1, 2, 5–16,
and 18–22. Accordingly, we decline to institute inter partes review as to
claims 1, 2, 5–16, and 18–22 of the ’439 patent.
A. Related Proceedings
According to the parties, the ’439 patent is involved in the following
co-pending case: Monsanto Co. v. Pioneer Hi-Bred International, Inc., Case
No. 4:12-cv-1090-CEJ (United States District Court for the Eastern District
of Missouri). Pet. 4–5; Paper 8, 2.
In addition, concurrently with the instant Petition, DuPont also filed
Petitions for inter partes review of claims 1–13 of U.S. Patent No.
8,071,845; claims 55, 58, 59, and 60 of U.S. Patent No. 8,028,469; claims 1–
11 of U.S. Patent No. 7,832,143; and claims 1–26 of U.S. Patent No.
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8,312,672. Pet. 2–3; Paper 8, 2.
B. The ’439 patent (Ex. 1001)
The ’439 patent discloses “systems and methods of separating seeds
from a plurality of seeds, extracting a sample from each seed, sorting the
extracted samples and corresponding seeds respectively to wells in sample
trays and seed trays, and mapping the respective wells to track each sample
with the seed from which it was extracted.” Ex. 1001, 1:55–60. The system
includes an automated seed loading station, an imaging station, a seed
orientation station, and a seed sample and sort station. Id. at 1:66 to 2:8.
Within the seed loading station, individual seeds are separated from a
plurality of seeds in a bulk hopper and loaded onto one of a plurality of
rotary vacuum cup (RVC) banks. Id. at 5:40–57. Images of the seeds are
collected at the imaging station and the imaging data is used to determine a
directional orientation of the tip of each seed. Id. at 11:3–20. The seeds are
rotated on the RVCs to the correct orientation and transported to the seed
sample and sort station. Id. Seed samples are taken and the sample tissue is
sorted and mapped into sample trays for analysis. Id. at 12:48–63.
C. Independent Claims
Claims 1 and 15 are the independent claims of the ’439 patent, and are
reproduced below:
1. A method for removing tissue from multiple individual
seeds, the method comprising:
loading multiple individual seeds in a seed transport;
orienting the multiple individual seeds in the seed transport
substantially simultaneously; and
removing tissue from the oriented multiple individual seeds.

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15. A seed sampling system comprising:
a seed transport configured to hold multiple individual seeds
together as a group and transport the multiple individual seeds
together as the group, and to allow the multiple individual seeds
to be oriented while the multiple individual seeds are being held
in the seed transport; and
a seed sampling subsystem configured to remove tissue from
the oriented multiple individual seeds.

Claims 2 and 5–14 depend from claim 1, either directly or
indirectly. Claims 16 and 18–22 depend from claim 15, either directly
or indirectly
D. The Prior Art
DuPont relies on the following prior art:
A. Horigane et al., Evaluation of Color Characteristics of Cross-
Sectioned Wheat Kernels, 9 (4) FOOD SCIENCE & TECHNOLOGY
RESEARCH 327-31 (2003) (“Horigane 1”) (Ex. 1002).

Horigane, US 2004/0074822 A1, published Apr. 22, 2004 (“Horigane
2”) (Ex. 1003).

Kelley, U.S. Patent No. 4,305,130, issued Dec. 8, 1981 (“Kelley”)
(Ex. 1005).

Chinese Patent Publication No. CN2510248Y, published Sept. 11,
2002 (“CN2510248Y”) (Ex. 1006, the English translation of which is
Ex. 1004).

Keller et al., U.S. Patent Publication No. 2002/0070150 A1, published
June 13, 2002 (“Keller”) (Ex.1027).

DuPont further relies on a Declaration from Dr. Clifford F. Weil
(Ex. 1007).

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E. The Asserted Grounds
DuPont challenges the claims of the ’439 patent based on the
following grounds:
Challenged Claims Basis Reference[s]
1, 2, 5–7, 9–13, 15, 16, 18–22 § 103(a) Horigane 1 and Horigane 2
8, 14 § 103(a)
Horigane 1, Horigane 2, Keller,
Kelley, and CN2510248Y

II. ANALYSIS
A. Claim Interpretation
We interpret claims using the “broadest reasonable construction in
light of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b). We presume that a claim term carries its “ordinary and
customary meaning,” which 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.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). This
presumption, however, is rebutted where the patentee acts as his own
lexicographer, giving the term a particular meaning in the Specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
DuPont asks that we construe the following claim terms or phrases:
1) orienting the multiple individual seeds; 2) removing tissue from each of
the oriented multiple individual seeds substantially simultaneously; 3)
mapping; 4) correlating; 5) characteristic; and 6) automated. Pet. 6–9. We
have considered DuPont’s proposed constructions, taking into account the
plain meaning of the terms and their usage in the Specification, and have
concluded that determination of the issues presented in DuPont’s Petition
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does not require explicit construction of the claim terms at this time.
B. Asserted Grounds of Unpatentability
1. Obviousness of Claims 1, 2, 5–7, 9–13, 15, 16, and 18–22 by
Horigane 1 and Horigane 2
Independent claim 1 recites a method having the steps of “loading
multiple individual seeds in a seed transport” and “orienting the multiple
individual seeds in the seed transport substantially simultaneously.” Thus,
once the seeds are loaded in the seed transport, the seeds are brought into
proper orientation substantially simultaneously. Similarly, independent
claim 15 recites a system requiring a “seed transport” that is “configured . . .
to allow the multiple individual seeds to be oriented while the multiple
individual seeds are being held in the seed transport.”
DuPont contends that claims 1, 2, 5–7, 9–13, 15, 16, and 18–22 are
obvious over the combination of Horigane 1 and Horigane 2. Pet. 17–51.
DuPont relies on the following disclosure in Horigane 1. Horigane 1
discloses methods for measuring color characteristics of wheat kernels. Ex.
1002, Abstract. Figure 1 of Horigane 1 is reproduced below.

Figure 1 is a schematic diagram of a kernel holder disclosed by Horigane 1.
Id. at 328. Horigane 1 discloses that wheat kernels are placed in the holder
dorsal side out and fixed on a holder with light-curing resin. Id. Wheat
kernels are cut crosswise and then endosperms are ground to a depth of 0.05
mm to make a smooth cut-surface for colorimetric measurement. Id. at 328.
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The color of wheat endosperm is then measured and the results used to
predict the color of wheat flour. Id. at 330.
DuPont contends that “Horigane 1 shows multiple individual seeds
oriented simultaneously in a kernel holder” and that “once the multiple
individual seeds are simultaneously oriented in the kernel holder, the whole
set of seeds are transported thereby and oriented together for cutting on the
stage of a cutting instrument.” Pet. 33, citing Ex. 1007 ¶¶ 80–81. As argued
by Monsanto, however, Horigane 1’s method requires the seeds to be
oriented before loading the seed into the holder such that the seed is placed
into the holder dorsal side out. Prelim. Resp. 1–2. As such, we are not
persuaded that Horigane 1 discloses the separate step of orienting seeds
while the seeds are held in the seed transport as recited in claims 1 and 15.
DuPont also contends that Horigane 2 discloses multiple individual
seeds simultaneously oriented in a seed transport. Pet. 33, citing Ex. 1007, ¶
80. DuPont argues that once placed in the kernel holder, the whole set of
seeds is transported and oriented together for cutting. Id., citing Ex. 1007, ¶
81. Similar to Horigane 1, however, Horigane 2 discloses an apparatus for
settling individual seeds into receptacles of a holder at a definite posture.
Ex. 2004 ¶ 55. The seeds are disposed on a holder in a definite arrangement
at a definite posture and settled therein by being bonded to the inner wall of
the receptacle with an energy ray-hardenable adhesive. Id. at ¶ 55–58. An
analyzing surface is then prepared on the surface of the seeds by cutting
and/or grinding and the seeds are analyzed and subsequently sorted. Id. at
¶¶ 60 and 80. Thus, the seeds of Horigane 2 also are oriented prior to being
loaded into the seed holder. The handling of the seed holder does not alter
the orientation of the seeds with respect to the holder or other individual
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seeds. Accordingly, we are not persuaded that Horigane 2 discloses the step
of orienting seeds while the seeds are held in the seed transport, as recited in
independent claims 1 and 15.
Horigane 1 and Horigane 2, thus, fail to teach every element of
independent claims 1 and 15, and dependent claims thereto (claims 2, 5–7,
9–13, 16, and 18–22). DuPont, therefore, has not demonstrated a reasonable
likelihood that the combination of Horigane 1 and Horigane 2 renders
obvious claims 1, 2, 5–7, 9–13, 15, 16, and 18–22 of the ’439 patent.
2. Obviousness of Claims 8 and 14 by Horigane 1, Horigane 2,
Keller, Kelley, and CN2510248Y
DuPont contends that claims 8 and 14 are obvious over the
combination of Horigane 1, Horigane 2, Keller, Kelley, and CN2510248Y.
Pet. 51–59. Both claim 8 and claim 14 depend from claim 1 and DuPont
again relies on its analysis of Horigane 1 and Horigane 2 for the elements of
claim 1. Id. at 54. As explained above, however, neither Horigane 1 nor
Horigane 2 disclose the separate step of orienting seeds while the seeds are
held in the seed transport, as recited in claim 1. DuPont points to no other
disclosure in any of Keller, Kelley, or CN2510248Y that provides this
missing element. Accordingly, upon review of DuPont’s analysis of the
evidence of record, we conclude that DuPont has not set forth sufficiently
how each element of claims 8 and 14 is taught or suggested by the
combination of Horigane 1, Horigane 2, Keller, Kelley, and CN2510248Y.
In view of the above, we are not persuaded that there is a reasonable
likelihood that DuPont would prevail at trial based on obviousness of either
claim 8 or 14 over the combination of Horigane 1, Horigane 2, Keller,
Kelley, and CN2510248Y.
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C. Conclusion
The Petition does not persuade us that there is a reasonable likelihood
that at least one of the challenged claims is unpatentable based on the
asserted grounds. We do not institute an inter partes review on claims 1, 2,
5–16, and 18–22 of the ’439 patent for the reasons stated above.
III. ORDER
In consideration of the foregoing, it is hereby ORDERED that the Petition
challenging the patentability of claims 1, 2, 5–16, and 18–22 of the ’439
patent is denied as to all challenged claims and no trial is instituted.
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For PETITIONER:

Todd R. Walters
Erin M. Dunston
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
erin.dunston@bipc.com

For PATENT OWNER:

Andrew Sommer
Melinda Patterson
WINSTON & STRAWN LLP
asommer@winson.com
mpatterson@winston.com