FMC Corporation

Patent Trials and Appeals Board

Aug 31, 2021

PGR2020-00028 (P.T.A.B. Aug. 31, 2021)

Trials@uspto.gov Paper 33
571-272-7822 Date: August 31, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SYNGENTA CROP PROTECTION AG,
Petitioner,
v.
FMC CORPORATION,
Patent Owner.

PGR2020-00028
Patent 10,294,202 B2

Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.
HARDMAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 328(a)
Denying Petitioner’s Motions to Exclude
37 C.F.R. § 42.64

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I. INTRODUCTION
This is a Final Written Decision in a post grant review challenging the
patentability of claims 1–7, 9–13, and 21–31 of U.S. Patent No. 10,294,202
B2 (“the ’202 patent,” Ex. 1001). We have jurisdiction under 35 U.S.C. § 6.
Petitioner has the burden of proving unpatentability of the challenged
claims by a preponderance of the evidence. 35 U.S.C. § 326(e) (2018).
Having reviewed the parties’ arguments and supporting evidence, for the
reasons discussed below, we find that Petitioner has demonstrated by a
preponderance of the evidence that claims 1–3, 9–13, and 21–30 are
unpatentable, but has not demonstrated by a preponderance of the evidence
that claims 4–7 and 31 are unpatentable. We also deny Petitioner’s motions
to exclude.
Procedural History
Syngenta Crop Protection AG (“Petitioner”) filed a Petition requesting
post-grant review of claims 1–7, 9–13, and 21–31 of the ’202 patent.
Paper 1 (“Pet.”). FMC Corporation (“Patent Owner”) filed a Preliminary
Response. Paper 7. Based on the Petition and Preliminary Response, we
determined that Petitioner more likely than not would prevail in showing
that at least one of the challenged claims was unpatentable. Thus, we
instituted trial. Paper 8 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 15, “Resp.”),
Petitioner filed a Reply (Paper 19, “Reply”), and Patent Owner filed a Sur-
reply (Paper 20, “Sur-reply”). On June 16, 2021, we held an oral hearing,
the transcript of which is of record. Paper 32 (“Tr.”).
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Petitioner filed a motion to exclude certain opinions of Patent
Owner’s expert Dr. Dayan (Paper 24), Patent Owner filed an opposition
(Paper 27), and Petitioner filed a reply (Paper 28).
Petitioner also filed a motion to exclude testimony, exhibits, and
arguments regarding patents issued to its expert Dr. Hunt (Paper 25), Patent
Owner filed an opposition (Paper 26), and Petitioner filed a reply (Paper 29).
Real Parties in Interest
Petitioner identifies the real parties in interest as Syngenta Crop
Protection AG and Syngenta AG.1 Paper 11, 1. Patent Owner identifies
itself as the real party in interest. Paper 3, 2.
Related Matters
Petitioner identifies two applications to which the ’202 patent claims
priority: (1) U.S. Provisional Application No. 61/911,324 (filed 12/3/2013);
and (2) PCT/US2014/068073, WO2015/084796 (published June 11, 2015).
Pet. 3–4.
Patent Owner states that it “knows of no judicial or administrative
matters that may affect or be affected by a decision in this proceeding.”
Paper 3, 2.

1 In its Preliminary Response, Patent Owner argued that the Petition “fails to
name all real parties in interest.” Paper 7, 2, 61. We authorized Patent
Owner to file a brief addressing real parties in interest (Paper 10, 3), but
Patent Owner elected not to do so, stating: “In the interest of expediting the
proceeding, FMC declined to pursue the issue further. However, FMC does
not concede that the petition does, in fact, name all real parties in interest.”
Resp. 4 n.4. Because Patent Owner has not raised a real party in interest
argument during the trial, it is waived. See In re NuVasive, 842 F.3d 1376,
1380–81 (Fed. Cir. 2016) (finding that an argument raised in preliminary
proceedings but not raised during trial is waived).
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The ’202 Patent
The ʼ202 patent, titled “Pyrrolidinones as Herbicides,” “relates to
certain pyrrolidinones, their N-oxides and salts, and compositions and
methods of their use for controlling undesirable vegetation.” Ex. 1001, code
(54), 1:5–7. The Specification states that “[t]he control of undesired
vegetation is extremely important in achieving high crop efficiency,” and
that “[m]any products are commercially available for these purposes, but the
need continues for new compounds that are more effective, less costly, less
toxic, environmentally safer or have different sites of action.” Id. at 1:11–
23.
The ’202 patent provides sixteen compound synthesis schemes (id. at
33:9–41:49) and seven example syntheses (id. at 42:44–50:35). The
ʼ202 patent also discloses approximately 350 compounds that were
synthesized (Index Tables A–D), 335 of which were tested for herbicidal
effect on various crop and weed species (Tables A–H5). Id. at 173:49–54,
174:1–182:50, 182:57–285:27.
Illustrative Claim
Of the challenged claims, claims 1 and 31 are independent. Claim 1,
reproduced below, is illustrative:
1. A compound selected from Formula I, N-oxides and
salts thereof:

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wherein
Q1 is a phenyl ring optionally substituted with up to 5
substituents independently selected from R7; or a 5- to 6-
membered heterocyclic ring or an 8- to 10-membered
heteroaromatic bicyclic ring system, each ring or ring
system containing ring members selected from carbon atoms
and 1 to 4 heteroatoms independently selected from up to 2
O, up to 2 S and up to 4 N atoms, wherein up to 3 carbon
ring members are independently selected from C(═O) and
C(═S), and the sulfur atom ring members are independently
selected from S(═O)u(═NR8)v, each ring or ring system
optionally substituted with up to 5 substituents
independently selected from R7 on carbon atom ring
members and selected from R9 on nitrogen atom ring
members;
Q2 is a phenyl ring or a naphthalenyl ring system, each ring or
ring system optionally substituted with up to 5 substituents
independently selected from R10; or a 5- to 6-membered
fully unsaturated heterocyclic ring or an 8- to 10-membered
heteroaromatic bicyclic ring system, each ring or ring
system containing ring members selected from carbon atoms
and 1 to 4 heteroatoms independently selected from up to 2
O, up to 2 S and up to 4 N atoms, wherein up to 3 carbon
ring members are independently selected from C(═O) and
C(═S), and the sulfur atom ring members are independently
selected from S(═O)u(═NR8)v, each ring or ring system
optionally substituted with up to 5 substituents
independently selected from R10 on carbon atom ring
members and selected from R11 on nitrogen atom ring
members;
Y1 and Y2 are each independently O, S or NR12;
R1 is H, hydroxy, amino, C1-C6 alkyl, C1-C6 haloalkyl, C2-
C6 alkenyl, C3-C6 alkynyl, C4-C8 cycloalkylalkyl, C2-
C8 alkoxyalkyl, C2-C8 haloalkoxyalkyl, C2-C8 alkylthioalkyl,
C2-C8 alkylsulfinylalkyl, C2-C8 alkylsulfonylalkyl, C2-
C8 alkylcarbonyl, C2-C8 haloalkylcarbonyl, C4-
C10 cycloalkylcarbonyl, C2-C8 alkoxycarbonyl, C2-
C8 haloalkoxycarbonyl, C4-C10 cycloalkoxycarbonyl, C2-
C8 alkylaminocarbonyl, C3-C10 dialkylaminocarbonyl, C4-
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C10 cycloalkylaminocarbonyl, C1-C6 alkoxy, C1-C6 alkylthio,
C1-C6 haloalkylthio, C3-C8 cycloalkylthio, C1-
C6 alkylsulfinyl, C1-C6 haloalkylsulfinyl, C3-
C8 cycloalkylsulfinyl, C1-C6 alkylsulfonyl, C1-
C6 haloalkylsulfonyl, C3-C8 cycloalkylsulfonyl, C1-
C6 alkylaminosulfonyl, C2-C8 dialkylaminosulfonyl, C3-
C10 trialkylsilyl or G1;
R2 and R3 are each independently H, halogen or C1-C4 alkyl; or
R2 and R3 are taken together with the carbon atom to which they
are bonded to form a C3-C7 cycloalkyl ring;
R4 and R5 are each independently H, halogen or C1-C4 alkyl;
R6 is H, hydroxy, amino, C1-C6 alkyl, C1-C6 haloalkyl, C2-
C6 alkenyl, C3-C6 alkynyl, C2-C8 alkoxyalkyl, C2-
C8 haloalkoxyalkyl, C2-C8 alkylthioalkyl, C2-
C8 alkylsulfinylalkyl, C2-C8 alkylsulfonylalkyl, C2-
C8 alkylcarbonyl, C2-C8 haloalkylcarbonyl, C4-
C10 cycloalkylcarbonyl, C2-C8 alkoxycarbonyl, C2-
C8 haloalkoxycarbonyl, C4-C10 cycloalkoxycarbonyl, C2-
C8 alkylaminocarbonyl, C3-C10 dialkylaminocarbonyl, C4-
C10 cycloalkylaminocarbonyl, C1-C6 alkoxy, C1-C6 alkylthio,
C1-C6 haloalkylthio, C3-C8 cycloalkylthio, C1-
C6 alkylsulfinyl, C1-C6 haloalkylsulfinyl, C3-
C8 cycloalkylsulfinyl, C1-C6 alkylsulfonyl, C1-
C6 haloalkylsulfonyl, C3-C8 cycloalkylsulfonyl, C1-
C6 alkylaminosulfonyl, C2-C8 dialkylaminosulfonyl, C3-
C10 trialkylsilyl or G1;
each R7 and R10 is independently halogen, cyano, nitro, C1-
C4 alkyl, C1-C4 haloalkyl, C2-C4 alkenyl, C2-C4 haloalkenyl
C2-C4 alkynyl, C2-C4 haloalkynyl, C1-C4 nitroalkyl, C2-
C4 nitroalkenyl, C2-C4 alkoxyalkyl, C2-C4 haloalkoxyalkyl,
C3-C4 cycloalkyl, C3-C4 halocycloalkyl, cyclopropylmethyl,
methylcyclopropyl, C1-C4 alkoxy, C1-C4 haloalkoxy, C2-
C4 alkenyloxy, C2-C4 haloalkenyloxy, C3-C4 alkynyloxy, C3-
C4 haloalkynyloxy, C3-C4 cycloalkoxy, C1-C4 alkylthio, C1-
C4 haloalkylthio, C1-C4 alkylsulfinyl, C1-
C4 haloalkylsulfinyl, C1-C4 alkylsulfonyl, C1-
C4 haloalkylsulfonyl, hydroxy, formyl, C2-C4 alkylcarbonyl,
C2-C4 alkylcarbonyloxy, C1-C4 alkylsulfonyloxy, C1-
C4 haloalkylsulfonyloxy, formylamino, C2-
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C4 alkylcarbonylamino, —SF5, —SCN, C3-C4 trialkylsilyl,
trimethylsilylmethyl or trimethylsilylmethoxy;
each R8 is independently H, cyano, C2-C3 alkylcarbonyl or C2-
C3 haloalkylcarbonyl;
each R9 and R11 is independently cyano, C1-C3 alkyl, C2-
C3 alkenyl, C2-C3 alkynyl, C3-C6 cycloalkyl, C2-
C3 alkoxyalkyl, C1-C3 alkoxy, C2-C3 alkylcarbonyl, C2-
C3 alkoxycarbonyl, C2-C3 alkylaminoalkyl or C3-
C4 dialkylaminoalkyl;
each R12 is independently H, cyano, C1-C4 alkyl, C1-
C4 haloalkyl, —(C═O)CH3 or —(C═O)CF3;
each G1 is independently phenyl, phenylmethyl,
pyridinylmethyl, phenylcarbonyl, phenoxy, phenylethynyl,
phenylsulfonyl or a 5- or 6-membered heteroaromatic ring,
each optionally substituted on ring members with up to 5
substituents independently selected from R13;
each R13 is independently halogen, cyano, hydroxy, amino,
nitro, —CHO, —C(═O)OH, —C(═O)NH2, —SO2NH2, C1-
C6 alkyl, C1-C6 haloalkyl, C2-C6 alkenyl, C2-C6 alkynyl, C2-
C8 alkylcarbonyl, C2-C8 haloalkylcarbonyl, C2-
C8 alkoxycarbonyl, C4-C10 cycloalkoxycarbonyl, C5-
C12 cycloalkylalkoxycarbonyl, C2-C8 alkylaminocarbonyl,
C3-C10 dialkylaminocarbonyl, C1-C6 alkoxy, C1-
C6 haloalkoxy, C2-C8 alkylcarbonyloxy, C1-C6 alkylthio, C1-
C6 haloalkylthio, C1-C6 alkylsulfinyl, C1-
C6 haloalkylsulfinyl, C1-C6 alkylsulfonyl, C1-
C6 haloalkylsulfonyl, C1-C6 alkylaminosulfonyl, C2-
C8 dialkylaminosulfonyl, C3-C10 trialkylsilyl, C1-
C6 alkylamino, C2-C8 dialkylamino, C2-
C8 alkylcarbonylamino, C1-C6 alkylsulfonylamino, phenyl,
pyridinyl or thienyl; and
each u and v are independently 0, 1 or 2 in each instance of
S(═O)u(═NR8)v, provided that the sum of u and v is 0, 1 or
2;
provided that
(a) the compound of Formula 1 is other than N-1H-
benzotriazol-1-yl-2-oxo-4-phenyl-3-
pyrrolidinecarboxamide;
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(b) when Q1 is a 3-furanyl or 3-pyridinyl ring, then said ring is
substituted with at least one substituent selected from R7;
(c) when Q1 is unsubstituted phenyl, and Q2 is a phenyl or
pyridyl ring, then said Q2 ring is substituted with R10 other
than optionally substituted phenoxy at a 2-position (relative
to the bond of the Q2 ring to the remainder of Formula 1),
and unsubstituted at the 5- and 6-positions (with respect to
the 2-position), and R5 is H or halogen;
(d) when Q1 is a phenyl ring and said ring is substituted with
R7 at both ortho positions (relative to the bond to the
remainder of Formula 1), then said ring is also
independently substituted with R7 on at least one additional
position;
(e) Q2 is other than optionally substituted 1H-pyrazol-5-yl; and
(f) when Q2 is a 1H-pyrazol-3-yl ring, said ring is substituted at
the 1-position with R11.
Ex. 1001, 285:29–288:13.
Dependent claims 2–7 and 22–30 narrow the choices for various
substituents on the compounds recited in claim 1. Id. at 288:14–48, 291:1–
292:44. Independent claim 31 recites the same core compound as claim 1
(i.e., Formula I), but recites fewer options for several of the substituents. Id.
at 292:45–293:24.
Claims 9–12 and 21 cover an “herbicidal composition,” an “herbicidal
mixture,” or a “mixture” that includes a compound of claim 1. Id. at
288:61–289:30, 290:63–67. Claim 13 covers controlling growth of
undesired vegetation using an “herbicidally effective amount” of a
compound of claim 1. Id. at 289:31–34.
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Asserted Grounds of Unpatentability
We instituted trial based on the following asserted grounds of
unpatentability:2
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–3, 9–13, 21–30 § 112(a) Enablement
9–13 § 112(a) Written Description
1–7, 22–31 § 102(a)(1) Olsson3
1–7, 22–31 § 103 Olsson
Inst. Dec. 52; Pet. 5. In support of its patentability challenges, Petitioner
relies on two declarations from Dr. David Allen Hunt, Ph.D. (Ex. 1003;
Ex. 1029), among other evidence. Patent Owner relies on a declaration from
Franck E. Dayan, Ph.D. (Ex. 2011), among other evidence.
II. ANALYSIS
Level of Ordinary Skill in the Art
We consider the grounds of unpatentability in view of the
understanding of a person of ordinary skill in the art (sometimes referred to
herein as “POSA”) as of December 2013 (the earliest possible priority date
for the challenged claims). See Ex. 1001, code (60). Petitioner contends
that a such a person would have had “at least a Bachelor’s degree in
biochemistry or chemistry with several years’ experience in agrochemistry,
or alternatively, an advanced degree (Masters or Ph.D.) in biochemistry or
organic chemistry with emphasis in these same areas,” and “may also work

2 Patent Owner does not dispute that the ’202 patent is eligible for post-grant
review. Pet. 2; see generally Resp.; see also Inst. Dec. 10 (finding ’202
patent eligible for post-grant review).
3 Olsson et al., U.S. Patent Pub. 2007/0123508 A1, published May 31, 2007
(“Olsson,” Ex. 1004).
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in collaboration with other scientists and/or clinicians who have experience
in weed science, plant pathology, or related disciplines.” Pet. 13 (citing Ex.
1003 ¶ 66). Although Patent Owner suggests that it has offered a similar
proposal, no proposal appears in the Patent Owner Response.4 See Resp. 50.
In determining the level of skill in the art, we consider factors
including the type of problems encountered in the art, prior art solutions to
those problems, and the sophistication of the technology. Custom
Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
1986). Because Petitioner’s proposed definition is consistent with the prior
art of record and the sophistication of the technology demonstrated by the
record, we apply it here.5

4 For completeness, we note that although it is not cited in the Patent Owner
Response, Dr. Dayan’s declaration includes the opinion that a person of
ordinary skill in the art
would have had a degree (Bachelor’s, Masters, or Ph.D.) in
biology, biochemistry, or chemistry with several years’
experience in agrochemistry, including herbicide discovery
and development. This person may also work in
collaboration with other scientists and/or clinicians who have
experience in weed science, plant pathology, or related
disciplines.
Ex. 2011 ¶ 37. This proposal differs from Petitioner’s in adding that the
degree can be in biology, and in requiring “experience in agrochemistry,
including herbicide discovery and development,” regardless of degree level.
In comparison, Petitioner’s proposal does not specify that the degree can be
in biology, and does not require the recited “several years’ experience in
agrochemistry” in connection with an advanced degree. Dr. Dayan states,
however, that his opinions would not change if he were to apply Dr. Hunt’s
proposed level of ordinary skill in the art. Id. ¶ 38.
5 We would reach the same ultimate conclusions in this Decision under
Dr. Dayan’s proposal. See Ex. 2011 ¶ 37.
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Claim Construction
We interpret a claim “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).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe
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.
Petitioner argues that claims 1 and 31 include limitations in a “when”
clause, which “only limit[] the claim’s scope to the extent the cited condition
occurs, and should be read as ‘if.’” Pet. 13–14. Petitioner also states that it
has adopted definitions in the ’202 patent regarding “several terms related to
chemical structures in 5:36–9:9 . . . [and] herbicidal mixtures at 28:61–
33:8.” Id. at 14. Petitioner asserts that the “remaining terms are to be
construed in accordance with their ordinary and customary meaning.” Id.
Patent Owner asserts that “all claim terms should be given their plain
and ordinary meaning, in light of the definitions” in the Specification, and
does not propose any express construction for any term. Resp. 10.
Based on the complete record developed at trial, we determine that to
resolve the disputes herein, we do not need to expressly construe any claim
term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed
only for disputed terms, and only as necessary to resolve the controversy).
Enablement
A patent’s specification must describe the claimed invention and “the
manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or
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with which it is most nearly connected, to make and use the same.” 35
U.S.C. § 112(a). The enablement requirement asks whether “the
specification teach[es] those in the art to make and use the invention without
undue experimentation.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In analyzing whether any required experimentation is undue, we consider
factors such as:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the
prior art, (6) the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims.
Id. Whether a specification is enabling is determined as of the filing date of
the application. Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254 (Fed.
Cir. 2004).
Petitioner asserts that the Specification fails to enable both (1) use as
herbicides of the full scope of the compounds encompassed by claims 1–3,
9–13 and 21–30; and (2) how to make the full scope of the compounds
encompassed by a subset of these claims (i.e., claims 1–3, 9–13, 21, 23, and
27–30). Pet. 15, 32.
On the full trial record, we determine that Petitioner has demonstrated
by a preponderance of the evidence that the Specification fails to enable the
use as herbicides of the full scope of compounds of claims 1–3, 9–13 and
21–30. Because this determination reaches all claims challenged for lack of
enablement, we need not and do not reach Petitioner’s argument that the
Specification fails to enable how to make the full scope of the compounds of
claims 1– 3, 9–13, 21, 23, and 27–30. See SAS Inst. Inc. v. Iancu, 138 S. Ct.
1348, 1359 (2018) (holding a petitioner “is entitled to a final written
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decision addressing all of the claims it has challenged”); Boston Sci. Scimed,
Inc. v. Cook Grp. Inc., Nos. 2019-1594, -1604, -1605, 2020 WL 2071962,
at *4 (Fed. Cir. Apr. 30, 2020) (non-precedential) (recognizing that the
“Board need not address issues that are not necessary to the resolution of the
proceeding” and, thus, agreeing that the Board has “discretion to decline to
decide additional instituted grounds once the petitioner has prevailed on all
its challenged claims”).
We first briefly summarize the parties’ contentions, then turn to our
analysis.
1. Brief Overview of the Parties’ Contentions
Petitioner asserts that claim 1 “covers over a billion[] compounds,”
Pet. 18 (citing Ex. 1003 ¶ 139), but the ’202 patent lacks sufficient guidance
or working examples across the full scope of claim 1 to allow a person of
ordinary skill in the art to determine which of the claimed compounds have
herbicidal activity without undue experimentation. Id. at 18–20 (citing
Ex. 1003 ¶¶ 140–155; Exs. 1007, 1011–1016). According to Petitioner, the
approximately 350 compounds tested in the Specification for herbicidal
activity “fail[] to enumerate the majority of the substituents available at each
position” of the claimed genus, and “indicate[] that substitutions, particularly
at the Q1, Q2, R1, and R6 positions, can strongly impact herbicidal activity
and even eliminate it.” Id. at 16 (citing Ex. 1003 ¶¶ 135, 136, 144, 151,
155–172), 19–20. Petitioner asserts that small substitutions, e.g., an alkyl
instead of a hydrogen, can dramatically affect herbicidal activity by altering
properties such as lipophilicity, metabolism, plant uptake, and translocation,
yet the ’202 patent fails to teach a structure-activity relationship, mode of
action, or what enzymes or binding sites (if any) the claimed compounds
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affect. Id. at 17, 19–20. Petitioner argues that “several of the compounds
tested failed to exhibit any herbicidal activity at the high screening levels
(e.g., 1000 and 500 g ai/ha), which would indicate that a POSA would not be
able to use the claimed compounds as an herbicide without undue
experimentation, if at all.” Id. at 16–17 (citing Ex. 1003 ¶ 137); see also id.
at 22–30 (citing, e.g., Ex. 1003 ¶¶ 153–172).
Patent Owner contends that Petitioner fails to distinguish between the
legal standards for compound claims and method of use claims. Patent
Owner argues that compound claims 1–3 and 21–30 are enabled because an
ordinarily skilled artisan “would not have had a reason to doubt” the
Specification’s teaching that the compounds are herbicides. Resp. 18. As to
both these compound claims and the claims that recite use as an herbicide
(claims 9–13), Patent Owner argues they are enabled because extensive
screening is understood to be a normal part of herbicide development (id. at
24), and the examples in the Specification “include sufficient variation with
respect to at least steric and electrostatic properties . . . to allow a person of
skill in the art to utilize standard modeling techniques . . . to guide the
synthesis and screening of additional molecules falling within the genus”
without undue experimentation (id. at 38 (citing Ex. 2011 ¶ 50), 43).
2. Analysis
We start with Patent Owner’s contention that the enablement standard
is different for compound and method claims. Resp. 17; see also id. at 2.
With respect to the compound claims, Patent Owner argues that “[a]
disclosure of practical utility ‘must be taken as in compliance with the
enabling requirement of . . . § 112 unless there is reason to doubt the
objective truth of the statements contained therein,’ such as when the
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statement ‘involve[s] implausible scientific principles.’” Id. at 18 (quoting
In re Brana, 51 F.3d 1560, 1566 & n.17 (Fed. Cir. 1995)). Patent Owner
argues that Petitioner has presented no evidence that the Specification’s
teaching that the compounds are herbicides6 is implausible or unreliable.
Resp. 18; see also Ex. 2011 ¶ 47 (asserting that based on the Specification’s
biological testing results, “a person of skill in the art would have no reason
to doubt that compounds within the full scope of claim 1 of the ’202 patent
would exhibit herbicidal activity”).
Even assuming Patent Owner were correct that there is a different
enablement standard for compound and method claims, Petitioner has raised
reasons why persons of ordinary skill in the art would doubt that the ’202
patent enables the full scope of the claimed compounds as herbicides. As
will be discussed below, Petitioner has credibly established that in view of
the breadth of the claims, the relative lack of diversity of the compounds
actually tested, and the test results showing inactivity and trends toward
inactivity for compounds that deviated from the narrow range of structures
tested, a person of ordinary skill in the art has reasonable basis to doubt that
compounds within the full scope of claim 1 of the ’202 patent exhibit
herbicidal activity. Accordingly, we proceed to analyzing the parties’
arguments for claims 1–3, 9–13, and 21–30 under the factors set forth in In
re Wands. We begin with claim 1, then turn to the remaining claims.

6 The only asserted utility taught in the Specification for the disclosed
compounds is herbicidal activity. See, e.g., Ex. 1001, 1:5–7, 155:56–57; Ex.
1003 ¶¶ 46–48, 130–33; Resp. 17.
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a. Nature of the Invention, Predictability or
Unpredictability of the Art, and Relative Skill in the Art
The field of the invention is agrochemicals—specifically, herbicides.
See, e.g., Ex. 1001, codes (54), (57). The parties agree that the agrochemical
field is “well-developed and mature.” Resp. 49; Tr. 17:13–16 (Petitioner’s
counsel acknowledging that agrochemical field is mature in some regards);
see also Ex. 1006, 85 (discussing multibillion dollar global herbicide
market), 86 (referencing 184 herbicides marketed between 1970 and 2005).
The parties also agree that level of ordinary skill in the art is relatively
high. See supra Section II.A; see also Resp. 50 (acknowledging that the
level of skill in the art is high); Tr. 15:18 (Petitioner’s counsel
acknowledging that the level of skill in the art is relatively high).
The parties also agree that ordinarily skilled artisans routinely use
field screening tests and computational modeling techniques such as
quantitative structure-activity relationship models (“QSAR”).7 See, e.g.,
Resp. 49; Ex. 2011 ¶¶ 20, 27, 28 (discussing common field screening tests);
Ex. 1003 ¶ 39 (acknowledging use of screening tests in herbicide
development); Ex. 2005, 488–89; Exs. 2017, 2022, 2024 (all relating to use
of QSAR in herbicide development); see also Tr. 7:19–8:5 (Petitioner’s
counsel acknowledging that QSAR is used in the field).
Despite the maturity in the field and relatively high level of ordinary
skill in the art, the parties agree that the art is unpredictable. See Pet. 19–20
(discussing lack of predictability); Ex. 1003 ¶¶ 142–143; Resp. 50 (“As both

7 Comparative molecular field analysis (“CoMFA”) is a form of QSAR.
Ex. 1028, 39:20–21. We use the term QSAR to encompass both QSAR and
CoMFA.
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parties agree, and the Board recognized, chemistry and biotechnology areas
such as the agrochemical field are generally understood to be ‘unpredictable
arts.’”). For example, Petitioner’s expert Dr. Hunt testifies (and Patent
Owner does not dispute) that small structural changes can result in major
differences in biological activity, and even seemingly minor substitutions
can have “dramatic effects on activity by altering such phenomena as
lipophilicity, metabolism, plant uptake, and translocation.” Ex. 1003 ¶ 142
(citing Exs. 1011, 1012); see also id. ¶ 42 (citing Ex. 1007), ¶ 43, ¶ 143
(citing Ex. 1026).
Based on the full record developed at trial—much of it undisputed as
discussed above—we find that the field of invention is mature and the level
of ordinary skill in the art is relatively high, which both weigh in favor of
enablement, but the art is unpredictable, which weighs against enablement.
b. Breadth of Claims
It is undisputed that claim 1 is extremely broad, “cover[ing] more than
a billion different compounds.” Ex. 1003 ¶ 139; see also Ex. 1029 ¶ 8
(asserting that claim 1 covers more than 1032 compounds); Tr. 32:4–7
(Patent Owner’s counsel acknowledging that the number of compounds
covered by the claims is not disputed). More specifically, claim 1 recites
“[a] compound selected from Formula I, N-oxides and salts thereof:
,”
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wherein each of ten different substituents (Q1, Q2, Y1, Y2, R1, R2, R3, R4, R5,
and R6) are independently selected from a wide range of substituents.
Ex. 1001, 285:29–288:13; Ex. 1003 ¶ 49. The Q1, Q2, R1, and R6 groups
alone each recite “well over a thousand possible independent options”
spanning a wide range of size and electrostatic properties. Ex. 1003 ¶ 49
(citing Ex. 1001, 285:44–286:51, 286:59–287:6, 287:33–38); Reply 16–22;
Ex. 1029 ¶¶ 34, 37, 39, 45, 49.
We find that the breadth of the claims weighs against enablement.
c. Direction or Guidance
We find that despite the claim breadth, the direction or guidance in the
Specification on how to practice the full scope of the claims is relatively
scant. For example, Petitioner correctly notes that the Specification does not
disclose the mode of action of the claimed compounds. Pet. 19–20 (citing
Ex. 1003 ¶ 146). Patent Owner does not dispute this, but instead argues that
a patent need not disclose an invention’s method of action. Resp. 44.
Although Patent Owner is correct that a patent need not disclose an
invention’s method of action (see, e.g., Alcon Research Ltd. v. Barr Labs.,
Inc., 745 F.3d 1180, 1190 (Fed. Cir. 2014)), the record reflects that such
information would have helped ordinarily skilled artisans understand how
changes to a compound’s structure impact herbicidal activity. See, e.g.,
Ex. 1003 ¶ 146 (discussing relationship between compound structure and
biological activity). Without this information, by Patent Owner’s own
admission and as will be further discussed below, to practice the full scope
of the claims, ordinarily skilled artisans must engage in iterative QSAR
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modeling to develop a structure-activity relationship themselves.8 See, e.g.,
Resp. 34 (“[A] skilled artisan could have used the biological data from the
specification to develop a structure-activity relationship, and on the basis of
that relationship, select compounds likely to have herbicidal activity to
synthesize and test in the field.”), 3 (referencing “common modeling
techniques that are regularly used by persons skilled in the art when
developing herbicides to establish structure-activity relationships”);
Ex. 2011 ¶ 24.
The record also reflects that knowing a mode of action would have
assisted the QSAR modeling process. See Reply 13 n.4; Ex. 1033, 40 (“An
understanding of a chemical mode/mechanism of action is highly sought
when developing (Q)SARs.”); Ex. 1029 ¶ 22. Accordingly, absence of this
information in the Specification reduces the guidance available to an
ordinarily skilled artisan and increases the quantity of experimentation
needed to practice the full scope of the claims. See Ex. 1029 ¶¶ 21–22; see

8 Relying on testimony from its expert Dr. Dayan, Patent Owner also argues
that it is “uncommon for the mechanism to be known during herbicide
discovery” (Resp. 54 (citing Ex. 2011 ¶ 19)), and that QSAR modeling is
“more predictive of herbicidal activity than the analysis of whether a
particular compound binds to a target site” (id. at 8 (citing Ex. 2011 ¶¶ 22,
25); see also id. at 43). We do not credit these arguments, because
Dr. Dayan’s testimony on these points is little more than ipse dixit and lacks
corroboration. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude
that the lack of factual corroboration warrants discounting the opinions
expressed in the declarations.”). Additionally, despite Patent Owner’s
efforts to downplay the utility of knowing a mode of action, it is notable that
almost half of Dr. Dayan’s 150+ publications relate to the mode of action of
herbicides, while only a few concern QSAR studies. Ex. 1028, 35:25–36:7,
42:16–19; Reply 13 n.4.
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also Wyeth and Cordis Corp. v. Abbott Labs., 720 F.3d 1380, 1385 (Fed.
Cir. 2013) (finding that where “[t]he specification offers no guidance or
predictions about particular substitutions that might preserve the [claimed
activity]”, “[t]he resulting need to engage in a systematic screening process
for each of the many rapamycin candidate compounds is excessive
experimentation”).
The Specification does include a number of working examples, which
we discuss in the next section. Patent Owner also correctly asserts that the
Specification teaches several herbicide formulations and mixtures and how
to test mixtures, and reports test results for several mixtures. Resp. 29
(citing Ex. 1001, 149:1–155:15, 166:60–173:38), 34 (citing Ex. 1001, cols.
275–285, 276:29–44). As Patent Owner recognizes, however, Petitioner
“do[es] not challenge anything with respect to formulating the compounds as
herbicides.” Id. Thus, we find that this additional information regarding
formulations and mixtures does not bear on whether the Specification
provides an ordinarily skilled artisan with direction or guidance on how
changing substituents outside of the limited examples disclosed in the
Specification would impact herbicidal activity.
In view of the above, we conclude that aside from the working
examples (discussed separately below), the Specification lacks meaningful
direction or guidance, which weighs against enablement.
d. Presence or Absence of Working Examples
The Specification provides field test results for herbicidal activity for
335 compounds using different concentrations of the compounds on
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different plant species.9 Resp. 30 (citing Ex. 1001, cols. 82–285); see also
id. at 30–33 (detailing the compounds tested, types of tests, and application
rates), 44–45; Ex. 1003 ¶ 55. These 335 compounds “represent only a
minute fraction,” or “less than 1/10,000 of a percent,” of the total number of
compounds encompassed by claim 1. Ex. 1003 ¶ 147; Ex. 1029 ¶ 7; Pet. 20.
Thirteen of these compounds were inactive in every test performed. Pet. 22
(citing Ex. 1001, Tables A–H5; Ex. 1003 ¶¶ 153–54).
Patent Owner correctly asserts that enablement does not require either
(1) the Specification to disclose testing of “each” claimed compound and
modifying of “each” claimed variable, or (2) that an ordinarily skilled artisan
“know in advance precisely all of the compounds that will show herbicidal
activity.” Resp. 45, 35, 51; see also Sur-reply 3, 8–9. But “[t]he
specification must contain sufficient disclosure to enable an ordinarily
skilled artisan to make and use the entire scope of the claimed invention at
the time of filing.” MagSil Corp. v. Hitachi Global Storage Techs., Inc., 687
F.3d 1377, 1382 (Fed. Cir. 2012) (emphasis added); see also id. at 1382
(“[T]he scope of the claims must be less than or equal to the scope of the
enablement.”). Thus, the salient question here is whether the working
examples demonstrate sufficient variation to guide the selection and use of
other compounds within the full scope of the claims.

9 Petitioner contends that the Specification discloses testing for 351
compounds. See, e.g., Pet. 21; Ex. 1003 ¶ 55. However, we agree with
Patent Owner that while the Specification discloses the synthesis of 351
compounds, only 335 of them were tested for herbicidal activity. Resp. 30;
Ex. 1001, cols. 174–181 (describing synthesized compounds), 181–285
(describing test results). In any event, we would reach the same opinions
herein using Petitioner’s value of 351 compounds tested.
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Petitioner argues that the tested compounds are of limited scope and
several showed inactivity, such that an ordinarily skilled artisan is unable to
determine which other compounds across the full scope of the claim have
herbicidal activity without undue experimentation. See, e.g., Pet. 23. Patent
Owner argues that “the data disclosed in the specification suggests that the
vast majority” of claimed compounds have herbicidal activity, and “there is
sufficient variation to allow skilled artisans to apply standard modeling
techniques such as QSAR and CoMFA to guide the selection of other
molecules falling within the genus for synthesis and screening.” Resp. 67,
46. We find that Petitioner has the better position.
We agree with Petitioner’s expert Dr. Hunt that the test data reported
in the Specification “is clustered around a narrow range of structures”
compared to what is claimed. Ex. 1029 ¶ 11; see also Reply 7. Like the
parties, we focus on the Q1, Q2, R1, and R6 positions recited in claim 1.
Petitioner establishes, and Patent Owner does not dispute, that claim 1
encompasses thousands of choices for each of these positions. Pet. 7;
Ex. 1003 ¶¶ 49, 139, 149, 158, 162. Despite this breadth, the test data spans
only about seventy five choices for Q1, fifty four choices for Q2, seven
choices for R1, and six choices for R6. See Resp. 36–38; Ex. 2011 ¶ 50.
Drilling deeper into the Q1 and Q2 positions, the tested substituents are
overwhelmingly phenyls. Ex. 1003 ¶ 148. At Q1 and Q2, only about
thirty six and eighteen of the tested compounds, respectively, had a
substituent other than a phenyl or substituted phenyl. Id.; Ex. 1029 ¶¶ 43,
46; see also Ex. 2011 ¶ 50 (listing the different tested substituents). Four of
the thirteen inactive compounds had pyrazoles at Q1, and three other
compounds with pyrazoles at Q1 showed only slight activity. Pet. 22–23
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(citing Ex. 1001, Tables A–H5; Ex. 1003 ¶ 156); see also Ex. 1003 ¶¶ 144,
157–58; Ex. 1029 ¶ 44. We credit Dr. Hunt’s testimony that this data
“indicates to a POSA that at least some claimed compounds with
heterocyclic rings at the Q1 position, and particularly 5 membered
heteroaromatic rings, like a pyrazole, could have little or no utility as an
herbicide.”10 Ex. 1003 ¶ 157. We also credit his testimony that based on
this data, an ordinarily skilled artisan would conclude that “activity might
depend upon the nature and location of additional substituent groups on a
heterocyclic compound.” Id.; see also Ex. 1029 ¶ 44.
Thus, the examples in the Specification “demonstrate the lack of
predictability that occurs when Q1, Q2 are a compound other than a
substituted or un-substituted phenyl.” Ex. 1003 ¶ 155. Yet thousands of
heterocyclic groups are possible at Q1, which are not exemplified in the
biological data. Id. ¶ 158. For example, claim 1 permits Q1 to be substituted
off carbon and nitrogen atoms with R7 and R9, respectively, but no R7 and R9
sub-groups were tested on heterocyclic Q1 groups, even though heterocycles
comprise the vast majority of the available substituents at Q1. Ex. 1029 ¶ 45.
And as discussed above, small changes can have a large impact on biological
activity. Ex. 1003 ¶ 42. In view of the above, we credit Dr. Hunt’s
testimony that

10 Although claim 1 places some limits on using pyrazoles at Q2, it does not
restrict using pyrazoles and most heteroaromatic and heterocyclic
compounds at Q1. Ex. 1003 ¶ 157.
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[a] POSA would need to engage in undue experimentation just
to determine which Q1 groups within the scope of claim 1 could
have herbicidal activity, given the large breadth of the
molecules covered, the lack of examples in the specification—
particularly relating to heterocompounds, and the
unpredictability evidenced by the few compounds actually
tested in the ’202 Patent.
Id. ¶ 158 (footnote omitted).
Similarly, with respect to Q2, one-third of tested compounds with a
non-phenyl Q2 had little or no activity. Ex. 1003 ¶¶ 159–162; Ex. 1029
¶¶ 47–48. The lack of or diminished activity across such a large percentage
of the few non-phenyl groups tested at Q2 indicates that activity of
compounds with heteroaromatics or other of the recited non-phenyl groups
at Q2 is unpredictable. Ex. 1003 ¶¶ 159–162; Ex. 1029 ¶¶ 47–48.
Additionally, the R10 and R11 sub-group substituents tested off of the non-
phenyl Q2 groups were extremely limited. Ex. 1029 ¶¶ 49–50. Thus, we
credit Dr. Hunt’s testimony that a person of ordinary skill in the art would
need to engage in undue experimentation to understand which Q2 groups
within the scope of claim 1 would have herbicidal activity. Ex. 1003 ¶ 162;
Ex. 1029 ¶¶ 47–50.
Turning to the R1 position, claimed R1 options extend to moieties
having as many as ten carbons, but in the tested compounds R1 was either
hydrogen or one of only six other substituents. Ex. 1003 ¶¶ 149, 169. The
six non-hydrogen substituents were limited to small molecules having fewer
than three carbons, and activity tended to decrease as R1 got larger. Id.
¶¶ 149, 170; Ex. 1029 ¶¶ 33, 38; see also Ex. 2011 ¶ 52 (listing tested
substituents). Specifically, the highest herbicidal activity is shown for
methyl or hydrogen substituents, and the larger ethyl and propyl substituents
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generally had lower activity. Ex. 1003 ¶ 170. Dr. Hunt compares the
structures of tested R1 substituents to the structures of some exemplary
claimed, but untested, R1 substituents, and demonstrates that the tested and
untested substituents differ significantly in size and location of electron
withdrawing or donating groups. Ex. 1029 ¶ 37; see also id. ¶¶ 38–39. The
majority of the claimed substituents available at R1 “would be larger (and in
most cases, substantially larger)” than the R1 substituents tested in the ’202
patent, despite the “pattern of diminishing activity as the alkyls at R1
increased in size.” Id. ¶ 38.
The testing in the Specification also does not encompass any of the
eight cyclic aromatics groups contemplated by the claimed sub-group G1 at
the R1 position. Ex. 1029 ¶ 34. Each G1 substituent can be substituted with
up to five substituents selected from R13, where R13 is selected from an
additional thirty nine groups that vary in size from a single atom to large
subgroups containing up to eight or ten carbons. Id. The electrostatic
properties and the location of the electron donating or withdrawing groups in
the claimed R13 substituents vary widely. Id. This vast variation in sterics
and electronics possible at G1, however, is unexplored in the Specification.
Id. ¶ 39.
In view of the above, we credit Dr. Hunt’s testimony that
[g]iven the very limited experimental data provided in the ’202
Patent, coupled with the fact that the experimental data
demonstrates that increasing group size could reduce (and
possibly eliminate) herbicidal activity, a POSA would not be
able to use the full scope of the compounds of claim 1—
including all of the potential substituents of the R1 group,
without undue experimentation.
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Ex. 1003 ¶ 171; see also Ex. 1029 ¶ 40 (“[A] person of ordinary skill in the
art would not consider the testing performed with regard to . . . the [R1]
position[] to be either diverse or representative, given the breadth of possible
substituents, and the very limited scope of the testing.”).
Turning to the R6 position, claimed R6 options extend to moieties
having as many as ten carbons, but in the tested compounds R6 was
hydrogen or one of only five other claimed substituents. Ex. 1003 ¶¶ 149,
166; Ex. 2011 ¶ 54. The data shows a lack of activity for R6 substituents
larger than hydrogen or having more than one carbon atom. Ex. 1003
¶¶ 163, 166–68; Ex. 1029 ¶¶ 11, 38. Based on this data, Dr. Hunt testifies
that because the R6 position appears to be sensitive to large molecules,
“there is a significant possibility that the vast majority of the claimed
compounds (i.e., those compounds having larger R6 groups) could have no
activity.” Ex. 1029 ¶ 12.
As he did for R1, Dr. Hunt also compares the structures of tested R6
substituents to the structures of some exemplary claimed, but untested, R6
substituents. Id. ¶ 37. This comparison demonstrates that the tested and
untested substituents differ significantly in the size and location of electron
withdrawing or donating groups, with the untested R6 substituents being
generally much larger than the tested R6 substituents. Id.; see also id. ¶¶ 38–
39; Ex. 1003 ¶¶ 166–67. In view of the above, we credit Dr. Hunt’s
testimony that
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[g]iven the very limited experimental data provided in the ’202
Patent, coupled with the fact that the experimental data
demonstrates that even small substitutions at the R6 position do
not appear to be well-tolerated, (the only alkenyls and alkenyls
tested at R6 had no activity, and no group having more than
1 carbon atom was shown to have herbicidal activity), a POSA
would not be able to use the full scope of the compounds of
claim 1—including all of the potential substituents of the R6
group, without undue experimentation.
Ex. 1003 ¶ 168; see also id. (“[T]he biological data includes no information
regarding the vast majority of the claimed R6 substituents and indicates that
for multiple R6 substituents, there may be little or no herbicidal activity.”).
In sum, we find that small structural changes can result in major
differences in biological activity, and this is borne out in the data in the
patent. Id. ¶¶ 42–43; see also id. ¶¶ 142, 143, 145–46 (addressing structural
features that impact activity); Ex. 1029 ¶ 30. The working examples in the
Specification are clustered around a narrow range of structures compared to
the full scope of the claimed structures. See, e.g., Ex. 1029 ¶ 11. The lack
of significant structural variation in the working examples is particularly
important because “[w]hat little testing deviates from this narrow area of
testing demonstrates a much higher rate of inactivity and diminished
activity.” Id.; see also Reply 7 (citing Ex. 1003 ¶¶ 163–172; Ex. 1029
¶¶ 11–12). The working examples fail to provide sufficient variation to
allow an ordinarily skilled artisan to understand the impact the claimed
substituents at each position, and particularly the Q1, Q2, R1, and R6
positions, will have, especially when considered in combination with the
options at other positions. See, e.g., Ex. 1003 ¶¶ 136–37, 144. We credit
Dr. Hunt’s testimony that there is a vast gap between the scope of the claims
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and the guidance provided in the Specification. Ex. 1003 ¶¶ 138–172; Ex.
1029 ¶¶ 29–50.
Patent Owner appears to argue that the biological test results reported
in the Specification, standing alone, enable the full scope of the claims.
Specifically, its expert Dr. Dayan testifies: “Based on [the] testing [in the
Specification], a person of skill in the art would have no reason to doubt that
compounds within the full scope of claim 1 of the ’202 patent would exhibit
herbicidal activity.” Ex. 2011 ¶ 47. Dr. Dayan also testifies that the
variation in steric and electrostatic properties across the tested substituents
would lead a person of ordinary skill in the art to expect at least some
herbicidal activity across the claimed but untested substituents. Ex. 2011
¶¶ 52–57; see also Resp. 38–42.
For example, Dr. Dayan testifies that the seven tested R1 substituents
vary in size, “with hydrogen being the smallest and tertiary-butoxycarbonyl
being the largest,” and in electrostatic properties, “with the hydroxyl groups
representing a polar group and the alkyl groups representing non-polar
groups.” Ex. 2011 ¶ 52. Based on the test results, Dr. Dayan concludes that
there is “clear evidence that position R1 contributes to herbicidal activity
across a variety of groups,” and that “one would expect at least some
herbicidal activity across the list of substituents that the ’202 patent
identifies for R1, with smaller groups being the most promising candidates
for further screening.” Id. ¶ 53. Dr. Dayan performs a similar analysis for
the R6, Q1, and Q2 positions and opines that because the tested structures
vary in size and polarity, a person of ordinary skill in the art would expect at
least some herbicidal activity across all claimed substituents. Id. ¶¶ 54–57.
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We find that Dr. Dayan’s testimony on these points lacks sufficient
supporting analysis. In opining that the tested substituents are representative
of the steric and electrostatic properties across the claimed substituents,
Dr. Dayan merely compares the properties of the tested substituents to each
other. See, e.g., id. ¶¶ 52–56. He does not expressly compare them to the
properties of the many remaining, untested substituents within the scope of
the claims. See id.; see also Reply 14 (“At best, [Dr.] Dayan testified that
the positive activity . . . at each substituent” suggests that the position is
involved in herbicidal activity, “not that the tested compounds were
sufficient to provide any reasonable expectation of success as to the billions
of structurally diverse compounds covered” by the claims.). And although
Dr. Dayan acknowledges that several tested compounds showed no
herbicidal activity, he does not expressly explain how he took these
compounds into account in nevertheless concluding that an ordinarily skilled
artisan would expect at least some activity across all claimed substituents.
See, e.g., Ex. 2011 ¶¶ 54–56 (noting exceptions to herbicidal activity).
As one example, Dr. Dayan acknowledges the lack of activity shown
in the data for substituents larger than hydrogen at the R6 position, but does
not explain the impact of that data on the remaining claimed substituents.
See id. ¶ 54 (Dr. Dayan noting that activity is “not as favored by larger alkyl
groups” at R6, but nevertheless concluding that “one would expect at least
some herbicidal activity” across all claimed R6 substituents). In contrast,
Dr. Hunt compares the size and properties of the R6 substituents that showed
no activity with the size and properties of other claimed but untested R6
substituents. Ex. 1003 ¶¶ 163, 166–68; Ex. 1029 ¶¶ 37, 38. This
comparison indicates that the majority of R6 substituents are larger than the
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tested substituents, such that the vast majority of the claimed compounds
(i.e., those with compounds having R6 substituents larger than those tested),
could have no herbicidal activity. Ex. 1003 ¶ 167; Ex. 1029 ¶¶ 12, 37, 38.
Thus, we find that the data in the Specification regarding at least position R6
gives a person of ordinary skill in the art reason to doubt that substantially
all compounds within the full scope of claim 1 of the ’202 patent would
exhibit herbicidal activity. Ex. 1003 ¶ 163; Ex. 1029 ¶¶ 11, 12, 38; In re
Surrey, 370 F.2d 349, 355 (CCPA 1966) (“[W]here the applicant seeks to
obtain a monopoly in exchange for his disclosure of a group of compounds
there should be a disclosure which gives a reasonable assurance that all, or
substantially all of them are useful.”).
Moreover, Petitioner, with the support of Dr. Hunt’s testimony,
establishes that merely testing one or two small polar substituents and a
number of other small non-polar substituents does not adequately represent
the electrostatic and steric properties of the entire claimed space. Reply 16;
Ex. 1029 ¶ 30. Dr. Dayan overlooks that it is also important where on the
molecule the polarity or electron donating/receiving group is located. Ex.
1029 ¶ 30; see also id. ¶ 23. With the support of Dr. Hunt’s testimony,
Petitioner establishes, and Patent Owner does not dispute, that the tested and
untested substituents differ significantly in size and location of electron
withdrawing or donating groups. Id. ¶¶ 37–39; Reply 16–20.
The record also reflects that factors beyond sterics and electrostatics
affect biological activity. See, e.g., Ex. 1003 ¶¶ 142–46; Pet. 19. As but one
example, it is well known that the lipophilicity (or log P) of a compound can
significantly impact biological activity. Ex. 1029 ¶ 24. The log P values for
some of the claimed Q1 substituents span several orders of magnitude. Id.;
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Pet. 19. But neither the ’202 patent nor Dr. Dayan’s declaration mentions
lipophilicity, much less analyzes whether the tested compounds are
representative of the full scope of lipophilicity values across the claimed
compounds. Ex. 1029 ¶ 24; Reply 13.
In view of the above, we find that the scope of the working examples
is narrow compared to the scope of the claims.
Patent Owner raises several additional arguments in response. For
one, Patent Owner argues that Dr. Hunt’s testimony regarding inactivity for
larger R6 substituents is “pure, unsupported speculation” because Petitioner
merely relies on a “‘trend’ of decreasing activity for larger R1 and R6
substituents,” but “did no testing or modeling to back up its claim.” Sur-
reply 11. Patent Owner argues that such “conclusory expert testimony” is
“not sufficient to provide clear and convincing evidence of a lack of
enablement.” Id. at 11–12.
Patent Owner’s arguments are unavailing. First, Patent Owner seeks
to hold Petitioner to too high a legal standard. Petitioner has the burden of
establishing unpatentability based on a preponderance of the evidence, not
clear and convincing evidence. 35 U.S.C. § 326(e). Second, Petitioner does
not merely rely on the “trend” of decreasing activity to conclude that larger
R6 groups would likely be inactive. Rather, Dr. Hunt’s testimony is based
on data in the Specification itself showing a lack of activity for compounds
265 and 266, which were tested in both preemergence and postemergence
tests at the highest concentration level (1000 g ai/hg). Ex. 1001, cols. 184,
200; Ex. 1003 ¶¶ 153, 163, 166, 168; Ex. 1029 ¶¶ 35–36.
Compounds 265 and 266 respectively have a propargyl and allyl at R6,
and represent two of only six compounds tested where R6 was not hydrogen,
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and are the only two compounds tested that have more than one carbon at
R6. Ex. 1001, col. 181 (Index Table C); Ex. 1003 ¶¶ 163, 166, 168; Ex.
1029 ¶¶ 35–36; see also Ex. 2011 ¶ 50 (listing tested options for R6, i.e., H,
allyl, Me, OH, OMe, and propargyl). Thus, although the Specification
provides a limited range of variation for R6 substituents, the provided data
shows that no compound having a substituent other than hydrogen or having
more than one carbon was active. Yet claim 1 recites that R6 can be C1–6
alkyls, alkenyls, and alkynyls, a variety of highly functionalized alkyl groups
with up to ten carbons (including carbonyls, alkoxys, haloalkyls, etc.), and
phenyls and 5–6 membered heteroaromatics optionally substituted with up to
5 members (via the G1 limitations), each of which themselves could be a
wide variety of members, including large groups with up to ten carbons and
other aromatics. Ex. 1003 ¶ 166.
Thus, the data in the Specification supports Dr. Hunt’s opinion that
compounds with R6 substituents larger than hydrogen or more than one
carbon are unlikely to be active. Ex. 1003 ¶ 168; Ex. 1029 ¶ 12. We
acknowledge that compounds 265 and 266 represent only two data points,
but such paucity is created by the minimal disclosure of the ’202 patent. The
’202 patent provides only six different options at R6, and only compounds
265 and 266 test R6 substituents larger than hydrogen or having more than
one carbon. See, e.g., Ex. 2011 ¶ 50 (listing variability at R6); Ex. 1003
¶ 163; Ex. 1029 ¶¶ 35–36. We also find Dr. Hunt’s opinion about inactivity
at R6 better supported and thus more credible than Dr. Dayan’s conclusory
opinion that “one would expect at least some herbicidal activity across the
list of substituents that the ’202 patent identifies for R6.” Ex. 2011 ¶ 54. As
discussed above, although Dr. Dayan acknowledges that “[a]ctivity is not as
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favored by larger alkyl groups” at R6, he does not compare the relative sizes
of the tested R6 substituents to the claimed but untested R6 substituents. Id.;
see also id. ¶ 59. A large swath of the claimed R6 substituents are larger
than hydrogen and include more than one carbon (see, e.g., Ex. 1003 ¶ 166),
and thus Dr. Dayan’s conclusion that one would expect at least some
herbicidal activity across the list of substituents that the ’202 patent
identifies for R6 is inconsistent with the data, the scope of the claim, and
lacks credible support.
Patent Owner seeks to justify the limited number of working examples
in the Specification by arguing that “[e]arly filing of an application with its
disclosure of novel compounds” is to be encouraged, and that requiring
“specific testing on all the compounds encompassed by the claims to
demonstrate the utility of the genus would have delayed disclosure.” Resp.
20–21 (citing In re Bundy, 642 F.2d 430, 434 (CCPA 1981)). However,
where an inventor seeks a patent “in exchange for his disclosure of a group
of compounds there should be a disclosure which gives reasonable assurance
that all, or substantially all of them are useful.” Surrey, 370 F.2d at 355. A
patentee is “not entitled to a claim for a large group of compounds merely on
the basis of showing that a selected few are useful and a general suggestion
of a similar utility in the others.” Id. Similar to Surrey, we find that here,
the Specification “fail[s] to provide those of ordinary skill in the
art . . . reasonable assurance, as by adequate representative examples, that
the compounds falling within the scope of the claim will possess the asserted
usefulness.” Id. at 356. We also note that enablement serves to prevent
“overbroad claiming that might otherwise attempt to cover more than was
actually invented.” MagSil, 687 F.3d at 1381. “Thus, a patentee chooses
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broad claim language at the peril of losing any claim that cannot be enabled
across its full scope of coverage.” Id. That is the situation here.
Patent Owner argues that the ’202 patent “provides significantly more
variation and more examples than the patents of [Petitioner’s] own expert,
Dr. Hunt.” Resp. 46. Patent Owner also argues that “Dr. Hunt’s patents
show that the level of disclosure in the ’202 patent is standard in the
herbicide field, and show that it is common for herbicide patents to contain
only a few examples while covering a large number of compounds.” Id. at
48. Patent Owner’s arguments are unavailing, because they presuppose that
Dr. Hunt’s patents are enabled. But whether those patents are enabled is not
at issue here, and we do not undertake such an analysis. We also find that
these two data points (i.e., Dr. Hunt’s two patents cited by Patent Owner) are
insufficient to demonstrate what is purportedly a “common” or “standard”
level of disclosure in the field of herbicide patents.
In sum, we find that the challenged claims are extremely broad, the
working examples are comparatively narrow, and the ’202 patent fails to
provide meaningful guidance as to how modifying each of the ten claimed
variables—and particularly variables Q1, Q2, R1, and R6—would or would
not impact herbicidal activity. Where, as here, “working examples are
present but are ‘very narrow, despite the wide breadth of the claims at issue,’
this factor weighs against enablement.” Idenix Pharms. LLC v. Gilead Scis.
Inc., 941 F.3d 1149, 1161 (Fed. Cir. 2019) (quoting Enzo Biochem, Inc. v.
Calgene, Inc., 188 F.3d 1362, 1374 (Fed. Cir. 1999)); see also Enzo Life
Scis., Inc. v. Roche Molecular Sys., Inc., 928 F.3d 1340, 1348 (Fed. Cir.
2019) (working example was “insufficient to enable the breadth of the
claims here, especially in light of the unpredictability of the art”).
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Accordingly, we find that the relatively narrow scope of working
examples in the Specification weighs against enablement.
e. Quantity of Experimentation
The scope of enablement encompasses not only what is disclosed in a
patent’s specification, but also what would be known to one of ordinary skill
in the art without undue experimentation. Nat’l Recovery Techs. Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed Cir. 1999).
“[T]he artisan’s knowledge of the prior art and routine experimentation can
often fill gaps, interpolate between embodiments, and perhaps even
extrapolate beyond the disclosed embodiments, depending upon the
predictability of the art.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003).
Petitioner argues that “[g]iven the tremendous gap between the scope
of the claims and the limited data in the patent, the testing needed to reliably
predict the herbicidal activity of the full scope of the compounds claimed
would be undue.” Reply 2–3. Patent Owner argues that common modeling
techniques (e.g., QSAR), together with the data in the Specification, permit
an ordinarily skilled artisan to identify additional compounds for synthesis
and screening for herbicidal activity. See, e.g., Resp. 34 (citing Ex. 2011
¶¶ 22–26, 51–57).
A QSAR model “is a type of regression model that seeks to establish
the relationship between a predictor variable and a response.” Ex. 2011
¶ 23. Dr. Dayan explains that “the statistical description between the
predictor and response variables is developed based on a set of training data,
which can then be extended to predict features of new, but related,
compounds.” Id. Dr. Dayan asserts that “there is sufficient variation [in the
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examples in the Specification] with respect to at least steric and electrostatic
properties” to allow persons of ordinary skill in the art to use QSAR “to
guide the synthesis and screening of additional molecules falling within the
[claimed] genus.” Ex. 2011 ¶ 51; see also id. ¶¶ 52–57. According to Patent
Owner and Dr. Dayan, “[a] QSAR model can work in synergy with
screening tests by focusing the compounds selected for screening, and
subsequent QSAR models can then be constructed for optimizing lead
candidates.” Resp. 8 (citing Ex. 2011 ¶¶ 23–24; Ex. 2020, 213).
The record supports that as of the earliest possible filing date of the
’202 patent, QSAR and field screening tests were among the tools ordinarily
skilled artisans used during herbicide development. See, e.g., Ex. 2011
¶¶ 20, 26–28 (discussing common modeling and field screening tests); Ex.
1003 ¶ 39 (acknowledging use of screening tests in herbicide development);
Ex. 2005, 488–89; Exs. 2017, 2022, 2024 (all relating to use of QSAR in
herbicide development); see also Tr. 7:19–8:5 (Petitioner’s counsel
acknowledging that QSAR is used in the field). But on the facts of this case,
we disagree with Patent Owner that the examples in the Specification
include sufficient variation to permit a person of ordinary skill in the art to
use QSAR and routine screening tests to identify additional compounds
across the full scope of the claim without undue experimentation.
The record shows that QSAR’s predictive scope is generally limited to
compounds similar to those used to generate the model. Ex. 1029 ¶¶ 15–20.
“The goal of QSAR is to develop models on a training set of compounds,
these models will then allow for the prediction of the biological activity of
related chemicals.” Ex. 2018, 39. “[A] QSAR should not be used to make
predictions that extrapolate outside of the area of knowledge of the training
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set.” Id. at 49; see also Ex. 1031, 195 (“[I]t is not typical and often not
possible to specify accuracy and prediction confidence for individual
unknown chemicals, specifically those unknown chemicals with structures
requiring that the model extrapolate beyond the chemistry space determined
by the training set.”). In practice, this means, for example, that “if a QSAR
is based on a set of compounds with a certain range of physico-chemical
descriptors i.e. log P values, then it should not be used to make a prediction
for a compound with a log P value outside of that range.” Ex. 2018, 49.
Contrary to Dr. Dayan’s suggestions (see, e.g., Ex. 2011 ¶¶ 51–57),
the range of steric and electrostatic properties represented by the substituents
tested in the examples in the Specification is very limited compared to the
broad range of steric and electrostatic properties encompassed by the
remainder of the substituents recited in claim 1. See supra Section II.C.2.d.
For example, the untested, claimed choices for R1, R6, Q1, and Q2
significantly vary in size, electrostatic properties, and location of electron
donating or withdrawing groups, such that a person of ordinary skill in the
art would not agree that the few compounds tested adequately represent the
steric and electrostatic properties of the full scope of the claimed range of
substituents or compounds. Ex. 1029 ¶¶ 32–50.
Nor does Dr. Dayan demonstrate that sterics and electrostatics are the
only two properties important for modeling the activity of the full scope of
the claimed compounds. Other factors affect biological activity and can be
used in modeling. See, e.g., Ex. 1003 ¶¶ 142–46; Ex. 1029 ¶ 23 (listing
physico-chemical properties that can be used in modeling), ¶ 24 (discussing
importance of lipophilicity and the range seen across the claimed
substituents), ¶ 30; Ex. 2018, 49 (discussing QSAR based on compounds
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with a certain range of log P values); Reply 12–13. Indeed, Dr. Dayan
concedes that most of the QSAR literature focuses not only on steric and
electronic variation, but also on log P. Ex. 1028, 97:7–13. Yet he does not
address the variety of log P values represented across the claimed genus or
whether there is sufficient information in the Specification to model the
same. Accordingly, we agree with Petitioner that any QSAR model created
based on the biological data in the Specification would be limited in
applicability compared to the full scope of claim 1. Ex. 1029 ¶¶ 17, 18, 40,
50; Reply 9–11.
Additionally, to make predictions, a QSAR model must be validated.
Reply 11–12; see also, e.g., Ex. 1031, 198 (“[A] model’s predictive
capability minimally needs to be demonstrated using some sort of cross-
validation or external validation procedures.”); Ex. 1034 at 4299 (Table 3,
“External validation (by predicting unseen examples with the final QSAR
equations) is the only way to establish a reliable QSAR model.”); Ex. 2018
at 49 (“All predictive models require validation i.e. can they be used to make
predictions.”); Ex. 1029 ¶ 26. “When creating a QSAR, the available data is
typically divided into a ‘training’ set, and a ‘test data’ set.” Ex. 1029 ¶ 16.
The training set is used to create the model, and the test data set is used for
validation. Id.; Reply 10. Dr. Dayan testifies that all of the data in the
Specification should be used in the training set (Ex. 1028 at 97:14–21),
meaning that there is no data left for validation. Reply 12. Thus, Dr. Hunt
explains that a person of ordinary skill in the art would “need to make and
test a vast number of different compounds” just for the purpose of
“verify[ing] that any model created could reliably predict activity across the
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full scope of the claims,” which further increases the amount of
experimentation required. Ex. 1029 ¶ 54; see also id. ¶ 27; Reply 12.
The amount of experimentation necessary to practice the full scope of
claim 1 is additionally compounded by the need for iterative modeling.
Patent Owner asserts that “[a] QSAR model can work in synergy with
screening tests by focusing the compounds selected for screening, and
subsequent QSAR models can then be constructed for optimizing lead
candidates.” Resp. 8 (emphasis added) (citing Ex. 2011 ¶¶ 23–24; Ex. 2020,
213); see also Sur-reply 19–20 (quoting Ex. 2017, 516) (“[The] most useful
predictions will often be those made for compounds lying near the edges of”
the tested space, leading practitioners to employ “rolling test sets.”). Each
iteration includes modeling to identify candidates (including synthesizing
compounds to create the test data set for validation), synthesizing promising
candidate compounds identified in the modeling, and assaying those
candidate compounds to assess herbicidal activity. Ex. 2011 ¶¶ 24, 51;
Ex. 1029 ¶ 54; Reply 23. Petitioner establishes, and Patent Owner does not
dispute, that synthesizing even a single claimed compound takes 7 or 8 days.
Ex. 1003 ¶ 152. “This would make it time-consuming and burdensome for
persons skilled in the art to try to create a broad range of compounds to test
for activity,” particularly if a person of ordinary skill in the art “sought to
create widely varied structures in order to test the impact of substitutions at
different groups.” Id.; Pet. 21–22. Although neither party specifies the
number of iterations that would be needed to reach the full scope of claim 1
(see, e.g., Ex. 1029 ¶ 51), the limited scope of data in the Specification and
breadth of the claims suggests that many iterations would be necessary,
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expanding the amount of work an ordinarily skilled artisan must carry out to
practice the full scope of claim 1.
We acknowledge Federal Circuit precedent indicating that the test for
undue experimentation is “not merely quantitative, since a considerable
amount of experimentation is permissible.” PPG Indus., Inc. v. Guardian
Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996); see also Cephalon, Inc.
v. Watson Pharms., Inc., 707 F.3d 1330, 1339 (Fed. Cir. 2013) (“[A]
considerable amount of experimentation is permissible, if it is merely
routine.”); Resp. 12, 21–22. We also agree with Patent Owner that the
quantity of experimentation needed is not viewed in the abstract, but as a
function of the pertinent art. Resp. 21–22. Patent Owner argues that
“extensive screening” of compounds is expected in the field, as are
computational modeling techniques to assist with compound selection.
Resp. 24–25 (citing Ex. 2011 ¶¶ 10, 20; Ex. 1001, 155:17–156:13; Ex. 1003
¶ 38; Pet. 11–12); see also Sur-reply 14–15 (“[I]t is within the knowledge of
a person of ordinary skill in the art to explore related compounds by strategic
substituent modifications.”).
Although there is some support in the record for the notion that
companies may synthesize and screen large numbers of compounds in the
search for new herbicides (see, e.g., Ex. 1019, 116–117), on this record we
do not find that a general expectation of a high level of experimentation
during herbicide development undercuts Petitioner’s showing of undue
experimentation. Rather, similar to Idenix, despite the high level of skill in
the art and routine nature of synthesis and screening techniques, the
“immense breadth of screening required to determine which [compounds]
are effective [herbicides] can only be described as undue experimentation.”
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Idenix, 941 F.3d at 1162; see also Enzo Life Scis., Inc., 928 F.3d at 1348–49
(affirming lack of enablement where claims covered “tens of thousands” of
polynucleotides, each of which would need to be tested to determine
whether it had the claimed functionality); Wyeth, 720 F.3d at 1385
(affirming lack of enablement where “practicing the full scope of the claims
would require synthesizing and screening each of at least tens of thousands
of compounds”).
Patent Owner relies on Johns Hopkins Univ. v. CellPro, Inc. (see
Resp. 21–22), but that case is distinguishable. There, the prior art technique
(“the Kohler/Milstein technique”) taught in the specification to produce the
claimed antibodies “was not foolproof” and “commonly required repetition,”
but expert testimony showed that this “lack of certainty was . . . not
attributable to a failure of disclosure in the [subject] patent.” Johns Hopkins
Univ. v. CellPro, Inc., 152 F.3d 1342, 1360 (Fed. Cir. 1998). Rather, the
required experimentation stemmed from shortcomings with the prior art
Kohler/Milstein technique for producing antibodies. Here, in contrast, the
record shows that the required level of experimentation results from the
limited guidance in the Specification as compared to the breadth of the
claim, rather than from any shortcomings in known techniques available to
ordinarily skilled artisans.
Patent Owner argues that our analysis suggests that “a skilled artisan
would have to make and test every compound covered by the claims.”
Resp. 27. We do not so suggest. But the work a person of ordinary skill in
the art would need to carry out is still undue. See, e.g., Ex. 1029 ¶ 50.
“Permissible experimentation is . . . not without bounds.” Cephalon, 707
F.3d at 1339. For example, in Idenix, the claims recited a method of treating
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HCV by administering nucleoside compounds having a specific chemical
structure. Idenix, 941 F.3d at 1154. The Idenix court found that “at least
many, many thousands” of potential compounds met the structural
requirements of the claims, and their synthesis was routine. Id. at 1157,
1160. Nevertheless, each of the compounds “would need to be screened in
order to know whether or not they are effective against HCV.” Id. at 1162.
The Idenix court stated that where “practicing the full scope of the claims
would have required excessive experimentation, even if routine, the patent is
invalid for lack of enablement.” Id. at 1163 (citation omitted). Thus, in
view of the quantity of experimentation required (even though the
techniques were routine), the lack of meaningful guidance or working
examples across the full scope of the claim, and the immense breadth of
screening required to determine which claimed compounds are effective
against HCV, the Idenix court found undue experimentation. Id. at 1162.
Patent Owner asserts Idenix is distinguishable because (1) there, the
specification disclosed only four examples, whereas here, the working
examples “include a wide range of different substituents reflecting different
steric and electrostatic properties” (Resp. 63); (2) there, the field was “in its
infancy” and there was no evidence of available modeling techniques that
would “cut[] down on the number of compounds that a skilled artisan would
actually need to synthesize and test” (id. at 49, 64); and (3) there, a skilled
artisan would “need[] to randomly search a large group for the rare
compound that would work” (id. at 65), but here, “the vast majority of the
compounds covered by the claims of the ’202 patent would have been
expected to have herbicidal activity” (id. at 64).
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Patent Owner’s arguments are unavailing. First, the relative number
of working examples in Idenix versus here does not persuasively distinguish
Idenix. The claims in Idenix encompassed “at least many, many thousands”
of candidate compounds, and the Idenix specification included four working
examples. 941 F.3d at 1159, 1161. In contrast, the number of compounds
within the scope of claim 1 here is vastly larger (encompassing more than a
billion compounds), and the Specification includes working examples for
only 335 compounds. Additionally, the variation in the working examples
here is limited compared to the scope of the claims, and thus does not
provide as much guidance as Patent Owner’s argument suggests.
Second, the availability here of modeling techniques is likewise
unavailing, because as discussed above, the facts of this case are such that
QSAR cannot bridge the gap between the vast scope of claims and the
comparatively limited disclosure in the Specification to enable persons of
ordinary skill in the art to practice the full scope of the claim without undue
experimentation. See also Reply 2–3 (“Given the tremendous gap between
the scope of the claims and the limited data in the patent, the testing needed
to reliably predict the herbicidal activity of the full scope of the compounds
claimed would be undue.”).
Finally, Patent Owner’s suggestion that “the vast majority” of the
claimed compounds here “would have been expected to have herbicidal
activity” (Resp. 64) is not supported by credible analysis. Nor is Patent
Owner’s related suggestion that there are only a “small number” of
inoperative embodiments within the scope of the claims. Resp. 19, 58–60
(citing, e.g., Ex. 2011 ¶¶ 59, 60). As support for these arguments, Patent
Owner argues that “over 96% of the 335 tested compounds showed some
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level of herbicidal activity, and that percentage would likely be higher at
higher levels of application.” Id. at 60. Patent Owner also relies on
Dr. Dayan’s testimony that based on the data in the Specification, “I would
not expect that the number of inactive compounds would represent a
significant portion of the claimed compounds.” Ex. 2011 ¶ 59.
Patent Owner’s reliance on a 96% activity rate is unavailing. The 335
compounds tested lack diversity and represent only a minuscule fraction of
the claimed compounds. Ex. 1029 ¶ 7. Thus, there is no basis to extrapolate
the 96% rate to the remainder of the compounds encompassed within the
scope of claim 1 given the very different characteristics of the remaining
claimed compounds. Id. ¶ 11. Further, Dr. Dayan’s expectation that the
claims embrace only a small number of inactive compounds is not supported
with credible analysis. As discussed above, Dr. Dayan fails to appropriately
grapple with the impact of the inactive compounds in the Specification in
concluding that an ordinarily skilled artisan would expect few inactive
compounds. See supra Section II.C.2.d. Dr. Dayan’s opinion that if the
inactive compounds were tested at higher concentrations they may exhibit
herbicidal activity (Ex. 2011 ¶ 60) fares no better. We agree with Dr. Hunt
that Dr. Dayan’s assertion is mere speculation. Ex. 1029 ¶ 52. And
although not dispositive, we also note that the tested concentrations (1000
and 500 g ai/ha) are “far above the normal concentrations used for
commercial herbicides.” Id.; see also Ex. 1003 ¶ 153.
Patent Owner likens this case to Angstadt (Resp. 59, 65–66), where
the court found no basis to conclude that ordinarily skilled artisans, “armed
with the specification and its 40 working examples, would not easily be able
to determine which catalyst complexes within the scope of the claims work
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to produce hydroperoxides and which do not.” In re Angstadt, 537 F.2d 498,
503 (CCPA 1976). In Angstadt, however, the court found that skilled
artisans would “easily” be able to determine whether complexes work. Id.
Here, in contrast, extensive modeling, synthesis, and testing is needed to
determine whether a given compound is operative. This case is further
distinguished from Angstadt because there, the specification disclosed a
“large but finite list” of catalysts to use in the claimed method. Id. at 503.
Here, in contrast, it cannot be said that claim 1, which embraces at least one
billion compounds, presents a “finite list” of options.
We find that the need for iterative QSAR modeling, together with the
sheer number of candidate compositions that must be synthesized (each of
which would take at least a week to make) for both the modeling and
herbicide testing, weighs against enablement, especially in light of the
limited guidance in the Specification and the general unpredictability in the
art.
3. Conclusion
In sum, it is undisputed that claim 1 covers at least a billion
compounds. The art is unpredictable, and the Specification indicates that not
all of the compounds falling within claim 1 are effective herbicides. See,
e.g., Pet. 22 (listing compounds that showed no herbicidal activity).
Although the level of ordinary skill in the art is relatively high and the field
is mature, Petitioner establishes by a preponderance of the evidence that the
’202 patent does not provide sufficient meaningful guidance or working
examples across the full scope of claim 1 to allow a person of ordinary skill
in the art to determine which other compounds across the full scope of the
claim have herbicidal activity without undue experimentation.
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Claim 2 depends from claim 1 and narrows the recited choices for R9
and R11. Ex. 1001, 288:14–15. Claim 3 depends from claim 2 and further
narrows the recited choices for Y1, Y2, R1, R2, R3, R4, R5, and R6. Id. at
288:16–20; Resp. 68; Ex. 2011 ¶ 63. The record does not reflect how many
fewer compounds are encompassed by claims 2 and 3 as compared to
claim 1. Nevertheless, neither claim 2 nor claim 3 directly narrows the
substituents available at Q1 and Q2, see Ex. 1003 ¶¶ 176–179, and there are
“thousands of possible variations” at each of these positions. Ex. 1003 ¶ 159
n.8, ¶ 162 n.9. As such, given the breadth of claims 2 and 3, on this record
we find that the same analysis for claim 1 applies to these claims. See also
Pet. 30–31. Beyond pointing out how claim 3 limits certain positions (other
than Q1 and Q2), Patent Owner does not provide additional arguments
specific to these claims. See Resp. 68; see also id. 67–68 (“For the same
reasons described above as to claim 1 of the ’202 patent, the remaining
claims challenged by [Petitioner]—claims 2, 3, 9-13, and 21-30—are
enabled.”).
Claims 9–12 and 21 cover herbicidal compositions and mixtures.
Ex. 1001, 288:61–289:30, 290:63–67. Claim 13 covers controlling
vegetation growth using an “herbicidally effective amount” of a compound
of claim 1. Id. at 289:31–35. None of claims 9–13 or 21 limit the breadth of
compounds covered by claim 1, and thus, the same analysis for claim 1
applies equally to these claims. See also Pet. 30, 31. Patent Owner does not
provide additional argument for these claims. See Resp. 67–68 (“For the
same reasons described above as to claim 1 of the ’202 patent, the remaining
claims challenged by [Petitioner]—claims 2, 3, 9-13, and 21-30—are
enabled.”).
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Claims 22–24 each depend from claim 1, and only limit the
substituents available at Q1, without limiting Q2, R1, or R6. Ex. 1001, 291:1–
19; Ex. 1003 ¶¶ 182–184. Claims 25–30 each depend from claim 1, and
only limit the substituents available at Q2, without limiting Q1, R1, or R6.
Ex. 1001, 291:20–292:44; Ex. 1003 ¶¶ 185–190. Because there are still
“thousands of possible variations” at each of the remaining positions (Q2, R1,
or R6 as appropriate), on this record we find that the same analysis applied to
claim 1 applies to these claims. See, e.g., Ex. 1003 ¶¶ 139, 159 n.8, 162 n.9,
196; see also Pet. 31–32. Patent Owner does not provide additional
argument for claims 22–30. See Resp. 68 (“For the same reasons that FMC
has shown that the full scope of claim 1 is enabled, narrower claims 22-30
are also enabled.”).
Accordingly, for the reasons discussed above, on the full trial record,
we find that Petitioner has demonstrated by a preponderance of the evidence
that challenged claims 1–3, 9–13, and 21–30 are unpatentable for lack of
enablement.
Written Description
The written description requirement, set forth in 35 U.S.C. § 112,
requires that a patent’s specification “contain a written description of the
invention . . . in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains . . . to make and use the same.”
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). This provision ensures that “the inventor actually invented the
invention claimed” and “had possession of the claimed subject matter as of
the filing date.” Id. at 1350–51. The test “requires an objective inquiry into
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the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Id. at 1351.
On the full trial record, for the reasons discussed below, we determine
that Petitioner has established by a preponderance of the evidence that
claims 9–13 lack adequate written description support.
1. Brief Overview of the Parties’ Contentions
Petitioner argues that the Specification does not provide adequate
written description support for claims 9–13. Pet. 32. Claims 9–12 depend
directly or indirectly from claim 1 and recite an herbicidal composition or
mixture comprising a compound of claim 1, and claim 13 recites a method
for controlling the growth of undesired vegetation comprising use of an
herbicidally effective amount of a compound of claim 1. Ex. 1001, 288:61–
289:35. Petitioner asserts that “[w]here, as here, the claims cover a broad
genus, the disclosure must adequately reflect the structural diversity of the
claimed genus, either through the disclosure of sufficient species that are
‘representative of the full variety or scope of the genus,’ or by the
establishment of ‘a reasonable structure-function correlation.’” Pet. 35
(quoting AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1300 (Fed. Cir. 2014)). Petitioner asserts that “[t]he same
data that demonstrates that the patentee had not enabled use of the full scope
of the compounds of claim 1 also demonstrates that it was not in possession
of the full scope of the claimed inventions of claims 9–13.” Id. at 36 (citing
Ex. 1003 ¶ 201). Petitioner further asserts that “[t]he biological data fails to
show herbicidal activity for the vast majority of the claimed compounds and
in fact indicates that many claimed compounds showed no herbicidal
activity.” Id.
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Patent Owner asserts that Petitioner’s written description argument is
“cursory,” and that “the same disclosure that demonstrates enablement . . .
also demonstrates written description.” Resp. 69, 71. Patent Owner, relying
on Dr. Dayan’s testimony, argues that “a skilled artisan would understand
that most of the compounds covered by the claims would have herbicidal
activity.” Id. at 71–72 (citing Ex. 2011 ¶¶ 59–60). Patent Owner also
argues that the biological testing data for the 335 compounds in the
Specification would have permitted a person of ordinary skill in the art
reading the ’202 patent “to recognize the relationship between the structure
of the claimed compounds and herbicidal activity.” Id. at 72 (citing
Ex. 2011 ¶¶ 59–60).
2. Analysis
Each of challenged claims 9–13 requires herbicidal activity.
Ex. 1001, 288:61–289:35. The pertinent question is whether the ’202 patent
demonstrates that the inventors were in possession of compounds, beyond
those exemplified in the Specification, that fall within the claims and have
herbicidal activity. See, e.g., Idenix, 941 F.3d at 1163. On this record, we
determine that the Specification lacks sufficient disclosure to permit an
ordinarily skilled artisan to conclude that the inventors were in possession of
a genus of compounds having herbicidal activity as broad as claimed.
As discussed above, the ’202 Specification does not adequately reflect
the diversity of the claimed genus because the compounds for which
herbicidal activity was demonstrated in the Specification are not
representative of the full variety or scope of the genus. See, e.g., supra
Section II.C.2.d; Ex. 1029 ¶¶ 23, 24, 30, 37–39; Ex. 1003 ¶¶ 142–46; Reply
23–24; see also AbbVie Deutschland, 759 F.3d at 1300 (“One needs to show
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that one has truly invented the genus, i.e., that one has conceived and
described sufficient representative species encompassing the breadth of the
genus.”). Nor is there evidence of “a reasonable structure-function
correlation.” AbbVie Deutschland, 759 F.3d at 1301; see also, e.g., Pet. 19–
20; Ex. 1003 ¶ 150 (“A person reading the ’202 Patent is left to guess how
changing substituents outside of the limited examples provided will impact
herbicidal efficacy.”); ¶ 133 (asserting that the Specification “does not state
what the intended mode of action is for the herbicidal use of the claimed
compounds”); ¶ 146 (“Without knowing the mechanism by which the
herbicide affects plant growth, a POSA has little ability to predict how
changes on the structure of a molecule can impact biological activity.”);
¶ 147 (asserting that the examples in the Specification “do not provide
sufficient guidance for a POSA to determine which of billions of compounds
claimed would be effective as an herbicide”); supra Section II.C.2.c.
Patent Owner relies on Dr. Dayan’s testimony that “a skilled artisan
would understand that most of the compounds covered by the claims would
have herbicidal activity” (Resp. 71), but as discussed above, Dr. Dayan’s
testimony on this point is conclusory. See supra Section II.C.2.e. Patent
Owner also asserts that the 335 compounds tested in the Specification
“would have provided significant guidance to a skilled artisan, especially in
conjunction with the modeling that is commonly used in the art,” such that a
person of ordinary skill “reading the ’202 patent would have been able to
recognize the relationship between the structure of the claimed compounds
and herbicidal activity.” Resp. 72 (citing Ex. 2011 ¶¶ 59, 60). But Patent
Owner and Dr. Dayan fail to explain what in the Specification would permit
an ordinarily skilled artisan to divine a relationship between structure and
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activity, given that the test data is clustered around a narrow range of
structures compared to the remaining scope of claimed structures, and given
that what little testing deviates from this cluster shows diminishing activity.
See, e.g., Ex. 1029 ¶¶ 11–12; Ex. 1003 ¶¶ 163–72; Reply 7. Thus, similar to
Idenix, based on the Specification a person of ordinary skill in the art “is
deprived of any meaningful guidance into what compounds beyond the
examples and formulas, if any, would provide the same result,” and “[i]n the
absence of that guidance, the listed examples and formulas cannot provide
adequate written description support for undisclosed” compounds that also
have herbicidal effect. Idenix, 941 F.3d at 1164.
Accordingly, we conclude that Petitioner has established by a
preponderance of the evidence that claims 9–13 lack adequate written
description support.
Anticipation
Petitioner asserts that claims 1–7 and 22–31 are unpatentable under
35 U.S.C. § 102(a)(1) as anticipated by Olsson (Ex. 1004). Pet. 36. “To
anticipate, the reference must not only disclose all elements of the claim
within the four corners of the document, but must also disclose those
elements arranged as in the claim.” Sanofi-Synthelabo v. Apotex, Inc., 550
F.3d 1075, 1083 (Fed. Cir. 2008) (internal quotation omitted). In other
words, it is not enough to be able to find all of the pieces of the claimed
invention somewhere in a prior art reference; rather, those elements must be
set out in the prior art reference in the same way they are in the claimed
invention. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior
art reference—in order to anticipate under 35 U.S.C. § 102—must not only
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disclose all elements of the claim within the four corners of the document,
but must also disclose those elements ‘arranged as in the claim.’”) (quoting
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
On the full trial record, we determine that Petitioner has not
established by a preponderance of the evidence that claims 1–7 and 22–31
are unpatentable under 35 U.S.C. § 102(a)(1) as anticipated by Olsson.
We first provide an overview of Olsson and the parties’ contentions,
then present our analysis.
1. Overview of Olsson (Ex. 1004)
Olsson, titled “PAR2-Modulating Compounds and Their Use,”
“relates to compounds that modulate the activity of proteinase-activated
receptor-2 (PAR2), to the use of the compounds as tools for the further
elucidation of the role of PAR2 in biological systems and to the treatment
and prevention of diseases and disorders related to PAR-2.” Ex. 1004, code
(54), ¶ 2. Olsson states that PAR2 receptors have been implicated in
numerous physiological processes, and lists treatment applications for the
disclosed compounds. Id. ¶¶ 5, 32–64, 185.
Olsson discloses a genus of compounds having the core structure
reproduced below:

Id. ¶ 7. The structure reproduced above depicts the core structure of
Olsson’s compounds, which comprises a pyrrolidinone ring. Olsson
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discloses various choices for the substituents on this core structure, and
exemplifies several specific compounds. See, e.g., id. ¶¶ 8–31, 65–128.
Olsson provides synthetic routes for making the compounds, and discloses
“a method for treating or preventing a disease or disorder related to
abnormal PAR2 activity comprising administering a therapeutically effective
amount of one or more of the compounds.” Id. ¶¶ 129, 184.
2. Brief Overview of the Parties’ Contentions
Formula I recited in claim 1 of the challenged patent is reproduced
below:

Ex. 1001, 285:31–41. Formula I above depicts the core structure recited in
claim 1 of the challenged patent. Petitioner argues that when R2, R3, and R4
are hydrogen, and Y1 and Y2 are oxygen, the structure of formula I of
challenged claim 1 becomes the structure reproduced below:

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Pet. 38–39 (citing Ex. 1003 ¶ 82). The structure above depicts the core
structure of claim 1, where R2, R3, and R4 are hydrogen, and Y1 and Y2 are
oxygen. Petitioner argues that “[t]his is the same core as of Olsson
(described in paragraph 7), when (n) is set to 1 (as disclosed in paragraph 8,
and as illustrated in paragraph 7), and R3 is selected as —NR5bR5c, which is
one of the three options identified in paragraph 15, and in Olsson’s claim 2.”
Id. at 39 (citing Ex. 1004 ¶¶ 7, 8, 15, 184; Ex. 1003 ¶ 83). Petitioner
provides a depiction of Olsson’s core structure with these substitutions,
which we reproduce below:

Id. at 39. The structure above depicts Olsson’s core structure, with (n) set to
1 and R3 selected as —NR5bR5c. Petitioner also provides the following side-
by-side comparison:
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Id. at 40. The comparison above depicts Formula I of the ’202 patent with
the above-described substitutions (shown on the left), and Olsson’s core
structure with the above-described substitutions (shown on the right).
Petitioner further argues that R1 in Olsson corresponds to the Q1 group
in claim 1 of the ’202 patent, and that for R1, Olsson describes “[o]ptionally
substituted aryls and heteroaryls [as] the first choices,” where aryls are
defined to include benzene rings. Pet. 41–42 (citing Olsson ¶¶ 25, 133).
Petitioner further argues that “a benzene ring attached to a carbon atom at
the R1 position of Olsson[11] would be a phenyl group,” and “a POSA would
understand and be able to envisage that Olsson describes the phenyl group of
Q1.” Id. at 42 (citing Ex. 1003 ¶ 88); see also id. at 42–43 (arguing that
based on other choices for R1 disclosed in Olsson, an ordinarily skilled
artisan could visualize other substituents defined in the ’202 patent for Q1).

11 Although Petitioner sometimes uses superscripts when referring to
positions on Olsson’s core (see, e.g., Pet. 41, referencing Olsson’s “R1”
group), Olsson uses subscripts (see, e.g., Ex. 1004 ¶ 7, referencing “R1”).
For clarity, except when quoting Petitioner or Dr. Hunt, we use Olsson’s
convention.
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As will be discussed further below, Petitioner makes similar arguments that
Olsson defines other substituents on its core structure that overlap with
substituents that are defined for Formula I in challenged claim 1. See id. at
43–46 (discussing the Q2 position in challenged claim 1), 47 (discussing the
R1, R5, and R6 positions in challenged claim 1); see also id. at 49–68 (claim
chart comparing the limitations of challenged claim 1 with Olsson’s
disclosures).
Patent Owner argues that Petitioner does not “identify any
embodiment of Olsson that falls within the challenged claims,” and that
Petitioner’s anticipation argument instead “relies on picking and choosing
unrelated disclosures from disparate and unconnected aspects of the Olsson
reference.” Resp. 74–75.
3. Analysis
We agree with Patent Owner that Petitioner has not directed us to any
species compound in Olsson that falls within the scope of the challenged
claims. Resp. 74. Instead, we find that Petitioner “relies on picking and
choosing unrelated disclosures from disparate and unconnected aspects of
the Olsson reference,” without identifying teachings in Olsson that direct an
ordinarily skilled artisan to make all of the necessary choices
simultaneously. Id. at 74–75.
First, while Olsson’s core structure allows for either a 5-, 6-, or 7-
membered ring, Petitioner focuses on a 5-membered ring. Ex. 1004 ¶¶ 7, 8;
Pet. 39. Petitioner does point us to a reason to focus on 5-membered rings,
noting that Olsson describes such rings in seven of its eight syntheses
schemes. Pet. 39 (citing Ex. 1004 ¶ 184; Ex. 1003 ¶ 83 (noting that “a 5
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membered ring (e.g., n=1) is the configuration that Olsson depicts in most of
its syntheses schemes (schemes 2-8)”)).
Second, from among the options Olsson specifies for the R3 position,
Petitioner selects an amine functional group, NR5bR5c. Pet. 39. Petitioner
asserts that where R3 is NR5bR5c, R5b and R5c respectively correspond to the
Q2 and R6 positions recited in claim 1 of the ’202 patent. Id. at 41 (table),
43. Although Petitioner asserts that NR5bR5c “is one of the three options
identified in [Olsson’s] paragraph 15, and in Olsson’s claim 2” (id.), this
rationale fails to account for the multitude of other options for R3 disclosed
elsewhere in Olsson. See Ex. 1004 ¶¶ 12, 19, 26. That said, Petitioner also
points us to Olsson’s Scheme 3, which depicts a core having a 5-membered
ring, where R3 is NR5bR5c, and more specifically, where R5b is a substituted
phenyl ring and R5c is hydrogen. Pet. 40–41 (citing Ex. 1004 ¶ 184; Ex.
1003 ¶¶ 83–84). Petitioner notes that Olsson also separately provides that
R5b may be, among other things, an aryl ring. Id. at 43; Ex. 1004 ¶ 18.
Third, Petitioner asserts that “Olsson’s R1 position corresponds to the
’202 patent’s Q1,” and that Olsson describes aryl groups (which Petitioner
asserts includes phenyl rings) among the first choices for R1. Id. at Pet. 41–
42 (citing Ex. 1004 ¶¶ 25, 133; Ex. 1003 ¶ 88). Petitioner also notes that
synthesis schemes 7 and 8 depict a substituted phenyl group at the position
corresponding to Q1. Id. at 42 (citing Ex. 1004 ¶ 184).
Fourth and finally, with regard to the R1, R5, and R6 positions of the
’202 patent, which Petitioner asserts respectively correspond to the R2, R1a,
and R5c (or R4a) positions of Olsson (see Pet. 41, 47), Petitioner asserts for
example that “Olsson discloses that any of the R positions may be H, a
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halogen or a C1-C4 alkyl, which falls within the scope of R1, R5, and R6 in
claim 1.” Id. at 47 (citing Ex. 1004 ¶ 130; Ex. 1003 ¶ 101).
Petitioner directs us to information tending to show that individual
substituents of the genus recited in challenged claim 1 can be found within
Olsson’s disclosure, as outlined above.12 However, Petitioner’s presentation
lacks, for example, any rationale as to how Olsson teaches making each of
these disparate choices simultaneously. To establish anticipation, a
“reference must clearly and unequivocally disclose the claimed compound or
direct those skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586,
587 (CCPA 1972). On this record, we find that Petitioner has not met this
standard.
Petitioner’s arguments for the remaining challenged claims suffer
from the same flaws. Each of challenged dependent claims 2–7 and 22–30
narrows the choice of substituents at one or more positions of the generic
formula recited in challenged claim 1. See Ex. 1001, 288:14–48, 291:1–
292:44. Independent claim 31 recites the same core compound as claim 1,
but as compared to claim 1, recites fewer options for R2–R6, Q1, Q2, Y1, and
Y2. Id. at 292:45–293:24. Petitioner points us to where in Olsson the
claimed options are individually taught, but once again, does not
demonstrate that Olsson clearly and unequivocally discloses a compound

12 Petitioner additionally outlines where in Olsson’s disclosure the optional
substituents recited in challenged claim 1 are purportedly found. See, e.g.,
Pet. 45–47. Because the optional substituents are not necessary to anticipate
challenged claim 1, we need not address them here.
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falling within the scope of the challenged claims, or that Olsson directs
ordinarily skilled artisans to the claimed compounds without any need for
picking or choosing. See Pet. 69–90.
We identified these same shortcomings in Petitioner’s arguments in
the Institution Decision (see Inst. Dec. 44–48), but Petitioner did not further
address anticipation during trial. See generally Reply.
For the above reasons, we determine that Petitioner has not
demonstrated by a preponderance of the evidence that claims 1–7 and 22–31
are unpatentable as anticipated by Olsson.
Obviousness
Petitioner asserts that claims 1–7 and 22–31 are unpatentable as
obvious over Olsson. Pet. 90. Petitioner reiterates that Olsson discloses
“each and every limitation” of claims 1–7 and 22–31. Id. Petitioner argues
that “it may be obvious to a person of ordinary skill in the art to try a
combination of elements where there are a finite number of identifiable
solutions and a good reason to pursue the technical solutions within their
grasp,” and “Olsson explains that there was strong interest in modifying the
compounds it discloses because of their applicability to the PAR2 enzyme,
which was known to have wide applicability in treating a wide range of
physiological conditions.” Id. at 92–93.
Patent Owner responds that Olsson “posits a large number of options
for each of the functional groups, [which] cuts against a finding of
obviousness.” Resp. 76.
We agree with Patent Owner. Petitioner relies on an “obvious to try”
theory. Pet. 92–93. In KSR International Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007), the Supreme Court explained that a combination of elements
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may be “obvious to try” when there is a design need or market pressure and
an artisan of ordinary skill in the art pursues known options from “a finite
number of identified, predictable solutions.” The Federal Circuit “has
elaborated that the identified path must ‘present a finite (and small in the
context of the art) number of options easily traversed to show obviousness.’”
Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms. Inc., USA, 748
F.3d 1354, 1360 (Fed. Cir. 2014) (quoting Ortho–McNeil Pharm., Inc. v.
Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008)).
On the full trial record, we determine that Petitioner has not
demonstrated that this is a situation with a “finite” or “small or easily
traversed[] number of options that would convince an ordinarily skilled
artisan of obviousness.” Ortho–McNeil Pharm., 520 F.3d at 1364.
Petitioner points to several selections that must be made from Olsson’s
disclosure to result in a compound that falls within the scope of the
challenged claims, where each selection is chosen from a sizeable menu of
possible options. See Pet. 91–93 (discussing, for example, selection of a 5-
membered ring core, and choices for, at a minimum, substituents R3, –R5b, –
R1a, –R5c, R1, and R2 on this core); see also id. (acknowledging that “Olsson
describes numerous options that satisfy each of the limitations (a)-(f) at the
end of claim 1”). But Petitioner has not put forth a rationale as to how
Olsson teaches making each of these disparate choices simultaneously in a
manner that reaches the claimed compounds. Rather, in focusing on the
chosen substituents, it appears that Petitioner “uses the claimed compounds
of the ’202 patent to guide it through the disclosure of Olsson.” Resp. 77.
This is classic impermissible hindsight. Cf. Grain Processing Corp. v. Am.
Maize–Products Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be
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taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide
through the maze of prior art references, combining the right references in
the right way so as to achieve the result of the claims in suit.’”) (quoting
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir.
1983)).
We identified these same shortcomings in Petitioner’s arguments in
the Institution Decision (see Inst. Dec. 44–48), but Petitioner did not further
address obviousness during trial. See generally Reply.
Accordingly, we determine that Petitioner has not demonstrated by a
preponderance of the evidence that claims 1–7 and 22–31 are unpatentable
as obvious over Olsson.
III. PETITIONER’S MOTIONS TO EXCLUDE
Petitioner’s Motion to Exclude Dr. Dayan’s Testimony
Pursuant to Federal Rules of Evidence (“FRE”) 402, 403, and 702,
Petitioner moves to exclude Dr. Dayan’s testimony that (1) a person of
ordinary skill in the art would expect herbicidal activity from the majority of
the claimed compounds; (2) QSAR modeling would allow a person of
ordinary skill in the art to reliably predict the herbicidal activity of the full
scope of claimed compounds; and (3) any additional testing required to
enable the ’202 patent would be “routine.” Paper 24, 1. Petitioner argues
that this testimony is inadmissible because it applies the incorrect legal
standard for enablement and is conclusory, unreliable, and contrary to the
evidence and therefore prejudicial. Id. at 4–5, 14.
Patent Owner responds that Petitioner’s motion is an unauthorized
reply to Patent Owner’s Sur-reply because it simply re-argues issues on the
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merits. Paper 27, 1. Patent Owner also argues that Dr. Dayan’s testimony is
relevant and well-supported by scientific literature. Id. at 3.
Petitioner, as the moving party, bears the burden of establishing that it
is entitled to the requested relief. 37 C.F.R. §§ 42.20(c), 42.62(a). We
determine that Petitioner has not met its burden. The arguments raised in
Petitioner’s motion relate to the sufficiency, rather than admissibility, of
evidence. Such arguments are improperly advanced in a motion to exclude.
See Patent Trial and Appeal Board Consolidated Trial Practice Guide
(November 2019)13 at 79 (stating that a motion to exclude may not be used
to challenge the sufficiency of the evidence to prove a particular fact); see
also Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19
(PTAB May 1, 2014) (“[T]he Board, sitting as a non-jury tribunal, is well-
positioned to determine and assign appropriate weight to the evidence
presented in this trial.”). Moreover, “there is a strong public policy for
making all information filed in an administrative proceeding available to the
public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-
00010, Paper 59 at 40 (PTAB Feb. 24, 2014). Rather than excluding
evidence that is allegedly conclusory or contrary to the evidence, we simply
give it the appropriate weight in our analysis.
We deny Petitioner’s motion to exclude Dr. Dayan’s testimony.
Petitioner’s Motion to Exclude Dr. Hunt’s Patents
During Dr. Hunt’s deposition, Patent Owner introduced two patents
listing Dr. Hunt as an inventor. Paper 25, 1. Petitioner moves to exclude

13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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testimony, exhibits, and arguments regarding these patents under FRE 401,
402, and 403 as irrelevant, prejudicial, and confusing the issues. Id. at 3.
Patent Owner responds that Dr. Hunt’s patents are relevant to show
the general practice in the field, to highlight the improperly heightened
standards to which Petitioner allegedly subjects the ’202 patent, and to call
into question the credibility of Dr. Hunt’s opinions. Paper 26, 4.
Dr. Hunt’s patents relate to his own inventions, and Patent Owner was
justified in cross examining Dr. Hunt on alleged inconsistencies between
disclosure in his patents and his opinions here. The patents are thus relevant
to at least Dr. Hunt’s credibility, and we are unpersuaded that the probative
value of the patents to our weighing of Dr. Hunt’s testimony is substantially
outweighed by potential prejudice or confusion of issues. As discussed
above, the Board is well-positioned to determine and assign appropriate
weight to the presented evidence, and there is a strong public policy for
making all information filed in an administrative proceeding available to the
public.
Accordingly, we deny Petitioner’s motion to exclude testimony,
exhibits, and arguments regarding Dr. Hunt’s patents.
IV. CONCLUSION14
Based on the information presented, we conclude that:
(1) Petitioner has shown by a preponderance of the evidence that
claims 1–3, 9–13, and 21–30 are unpatentable under 35 U.S.C. § 112(a) for
lack of enablement;

14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
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(2) Petitioner has shown by a preponderance of the evidence that
claims 9–13 are unpatentable under 35 U.S.C. § 112(a) for lack of adequate
written description;
(3) Petitioner has not shown by a preponderance of the evidence that
claims 1–7 and 22–31 are unpatentable under 35 U.S.C. § 102(a)(1) as
anticipated by Olsson; and
(4) Petitioner has not shown by a preponderance of the evidence that
claims 1–7 and 22–31 are unpatentable under 35 U.S.C. § 103 as obvious
over Olsson.
In summary:

Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 9–
13, 21–
30
112 Enablement 1–3, 9–13,
21–30

9–13 112 Written
Description
9–13
1–7, 22–
31
102 Olsson 1–7, 22–31
1–7, 22–
31
103 Olsson 1–7, 22–31
Overall
Outcome
1–3, 9–13,
21–30
4–7, 31
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–3, 9–13, and 21–30 of U.S. Patent
10,294,202 B2 have been shown by a preponderance of the evidence to be
unpatentable;
FURTHER ORDERED that claims 4–7 and 31 of U.S. Patent
10,294,202 B2 have not been shown by a preponderance of the evidence to
be unpatentable;
FURTHER ORDERED that Petitioner’s Motions to Exclude are
denied; 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.

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For PETITIONER:
Toni-Junell Herbert
Michael Anderson
Fabian Koenigbauer
David Klecyngier
BAKERHOSTETLER LLP
therbert@bakerlaw.com
meanderson@bakerlaw.com
fkoenigbauer@bakerlaw.com
dklecyngier@bakerlaw.com

For PATENT OWNER:
Dorothy Whelan
Susan Morrison
Kathryn Grey
FISH & RICHARDSON P.C.
whelan@fr.com
morrison@fr.com
grey@fr.com

Edward Brant
Roberte M.D. Makowski
FMC CORPORATION
edward.brant@fmc.com
roberte.makowski@fmc.com