Smith et al.v.Smith et al.

Patent Trial and Appeal Board

May 27, 2015

13490118 (P.T.A.B. May. 27, 2015)

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: May 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

Loken-Flack, LLC,
Junior Party
(Application 13/490,118,
Named Inventors: Raymond S. Smith,
Robert M. Osburn, and Lynn R. Loken),
v.
Novozymes Bioag A/S,
Senior Party
(Patent 8,357,631,
Named Inventors: Raymond S. Smith, and
Robert M. Osburn).

Patent Interference No. 105,996 (RES)
(Technology Center 1600)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE and
DEBORAH KATZ, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

JUDGMENT
1
In view of the Decision on Motions, entered simultaneously with this paper, 2
holding that Loken-Flack failed to prove that Lynn R. Loken was a joint inventor 3
of the subject matter of any of Novozymes’ claims or of the Count, it is— 4
2

ORDERED that judgment be entered against junior party Loken-1
Flack, LLC; 2
FURTHER ORDERED that claims 16-34 of Loken-Flack’s involved 3
Application 13/490,118 be finally refused, 35 U.S.C. 135(a); and 4
FURTHER ORDERED that a copy of this judgment be entered in the 5
administrative records of Loken-Flack’s involved Application 13/490,118 and 6
Novozymes’ involved Patent 8,357,63; 7
FURTHER ORDERED that a party seeking judicial review of this judgment 8
promptly serve notice on the Director of the United States Patent and Trademark 9
Office. 37 C.F.R. §§ 90.1 and 104.2. 10
We direct the parties’ attention to Biogen MA, Inc., v. Japanese Foundation 11
for Cancer Research, ___ F.3d ___; 2015 WL 2109812 (Fed. Cir. May 7, 2015). 12

cc (electronic delivery):
Attorney for Loken-Flack, LLC
Craig R. Miles, Esq.
Susan Hudachek, Esq.
CR MILES, P.C.
405 Mason Court, Suite 119
Fort Collins CO 80524
Tel: (970) 492-0000
Fax: (970) 492-0003
Email: crmiles@crmiles.com
Email: sfhudachek@crmiles.com
Attorney for Novozymes Bioag A/S
John J. Cotter, Reg. No. 38,116
Andrea B. Reed, Reg. No. 61,982
K&L GATES LLP
State Street Financial Center
One Lincoln Street
Boston, Massachusetts 02111
Tel: (617) 261-3100
Fax: (617) 261-3175
Email: john.cotter@klgates.com
Email: andrea.reed@klgates.com

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered : May 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

Loken-Flack, LLC,
Junior Party
(Application 13/490,118,
Named Inventors: Raymond S. Smith,
Robert M. Osburn, and Lynn R. Loken),
v.
Novozymes Bioag A/S,
Senior Party
(Patent 8,357,631,
Named Inventors: Raymond S. Smith, and
Robert M. Osburn).

Patent Interference No. 105,996 (RES)
(Technology Center 1600)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE and
DEBORAH KATZ, Administrative Patent Judges.
SCHAFER, Administrative Patent Judge.

Decision - Motions - 37 C.F.R. § 41.125(a)
This interference is an originality/inventorship contest between Novozymes’ 1
Patent 8,357,631 (Novozymes’ Patent) and Loken-Flack’s (L-F) Application 2
13/490,118 (L-F’s Application). Three motions are pending before us: (1) L-F’s 3
2

Motion 1 (Paper 112) for a judgment that Lynn R. Loken is a joint inventor of 1
subject matter claimed by both parties; (2) Novozymes’ Miscellaneous Motion 1 2
(Paper 183) to exclude certain L-F evidence; and (3) Loken Motion 2 (Paper 164) 3
to exclude certain Novozymes’ evidence. 4
We deny L-F’s Motion 1 and, for the reasons explained below, do not reach 5
the other two motions. 6
I. 7
Novozymes’ patent issued from Application 12/521,375 (Novzymes’ 8
Application). That application was filed on June 26, 2009, naming Raymond S. 9
Smith and Robert M. Osburn as inventors. The PTO published the specification 10
and claims of Novozymes’ Application on April 15, 2010, as United States Patent 11
Application Publication 2010/0093537. Novozymes’ Application became 12
available to the public at least by that date. Novoymes claimed the benefit of the 13
filing date of a PCT application and two provisional applications. 14
L-F filed its application on June 6, 2012, subsequent to the publication of 15
Novozymes’ application but before the issuance of Novozymes’ involved Patent 16
8,357,631 on January 22, 2013. The written description and claims of L-F’s 17
application are essentially copies of those of Novozymes’ then pending 18
application.
1
L-F’s application named the same two inventors as Novozymes’ 19
application, but also named an additional inventor, Lynn R. Loken (Loken). The 20
application also claimed to be a continuation of Novozymes’ Application and 21
claimed the benefit of the filing dates of the same PCT and provisional applications 22
that were claimed by Novozymes’ Application. 23
An Examiner recommended that the Board declare an interference to resolve 24
the inventorship question. See Application 13/490,118, Miscellaneous Action 25

1
The concordance of the parties’ respective claims is shown in Appendix 1.
3

Entered February 14, 2014. This interference was declared for that purpose. 1
Because the determination of inventorship will necessarily control entitlement to 2
the benefit of earlier effective filing dates, it was unnecessary to accord the benefit 3
to either party. Novozymes was designated the senior party because of its earlier 4
actual filing date and because the inventorship of its patent is presumed to be 5
correct. See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 6
2004) (The inventors named on an issued patent are presumed to be correct and a 7
party seeking to add a name has the burden of proving its case.). 8
Each party was authorized to file a single motion addressing inventorship. 9
Paper 21, p.3. Only L-F filed a motion. Paper 112. Its motion asserted that Loken 10
was a joint inventor of subject matter claimed in Novozymes’ patent. L-F, as the 11
moving party, bears the burden of proof to establish that the named inventors of the 12
Novozymes’ patent are incorrect. See 37 C.F.R. § 41.121 and 41.208. Novozymes 13
opposed the motion. Paper 133. 14
II. 15
The invention relates to compositions said to enhance plant growth or crop 16
yield when applied to plants or seeds. The compositions include two necessary 17
components: (1) lipo-chitooligosaccharide (LCO) and one or more chitinous 18
compounds selected from chitins and chitosans. This proceeding was declared 19
with a single Count. We reproduce Count 1 below: 20
Count 1 21
A method for enhancing plant growth or crop yield comprising 22
administering to a plant or seed a composition comprising at 23
least one lipo-chitooligosaccharide and one or more chitinous 24
compounds selected from the group consisting of chitins and 25
chitosans in an effective amount for enhancing plant growth or 26
crop yield. 27
4

Paper 1, p. 3. The count is identical in wording to L-F’s Claim 16 and to 1
Novozymes’ Claim 21. Paper 7, p. 1; Paper 12, p. 4. An "effective amount" is 2
defined as an amount that increases plant growth or crop yield when compared 3
with the growth or crop yield of plants or seeds that have not been treated with the 4
composition. Ex. 2005, 5:38-41; Ex. 2007, 6:28-30. According to the parties’ 5
respective specifications, the enhanced plant growth or crop yield results from 6
the effects of lipo-chitooligosaccharide in combination with 7
chitin/chitosan . . . when applied to seeds and/or foliage. 8
Ex. 2005, 2:51-57; Ex. 2007, 3:4-8. Thus, the invention is the combination of two 9
components –an LCO compound
2
and the chitinous compounds—which must be 10

2
Consistent with their use in the parties’ specifications, the terms “lipo-
chitooligosaccharide” and “LCO” refer to the compounds themselves. Each
Party’s specification states :
For the purposes of this invention, a "lipo-chitooligosaccharide"
("LCO") is a compound having the general LCO structure, i.e.,
an oligomeric backbone of B-1,4- linked N-acetyl-
Dglucosamine residues with an N-linked fatty acyl chain at the
non-reducing end, as described in U.S. Pat Nos. 5,549,718;
5,646,018; 5,175,149; and 5,321,011. This basic structure may
contain modifications or substitutions found in naturally
occurring LCO's . . . . Also encompassed by the invention are
synthetic LCO compounds, . . . and LCO's produced through
genetic engineering. Precursor oligosaccharide molecules for
the construction of LCOs may also be synthesized by
genetically engineered organisms . . . .
. . . .
LCO's may be utilized in various forms of purity and may be
used alone or with rhizobia. Methods to provide only LCO's
include simply removing the rhizobial cells from a mixture of
LCOs and rhizobia, or continuing to isolate and purify the LCO
molecules thru LCO solvent phase separation followed by
HPLC chromatography as described by Lerouge, et. al (U.S.
Pat. No. 5,549,718).
Ex. 2005, 2:58 – 3:25; Ex. 2007, 3:9-33.
5

present in the composition in amounts effective to improve or enhance plant 1
growth or crop yield. 2
III. 3
Focusing on Novozymes’ Claims 1 and 9, L-F contends that Loken is a joint 4
inventor of at least the subject matter of those claims. Claims 1 and 9, as they 5
appear in Novozymes’ involved patent are reproduced below: 6
1. A composition for enhancing plant growth or crop yield comprising at 7
least one lipo-chitooligosaccharide and one or more chitinous compounds 8
selected from the group consisting of chitins and chitosans. 9
9. The composition of claim 1, wherein the one or more chitinous 10
compounds are present at a concentration of between 0.1 to 15% w/v. 11
Ex. 2005, 18:42-45 and 65-67. 12
L-F’s Motion 1 (Paper 112) contends that Loken is a joint inventor along 13
with Novozymes’ Smith and Osburn because Loken (1) conceived an embodiment 14
of the invention or (2) made an original contribution to the conception of the 15
invention by suggesting the use of chitinous compounds to Smith. According to 16
LF: 17
Loken either conceived of an embodiment of the Count, . . , or, 18
. . . made some original contribution to the inventive thought in 19
collaboration with Smith and Osburn to achieve a definite and 20
permanent idea of the complete and operative embodiment of 21
the Count. 22
Paper 112, 1:12-16. 23
IV. 24
In July 2002, under a marketing agreement with Agrihouse, Inc.,
3
L-F 25
marketed and sold a product referred to as “ODC” Ex. 2002, ¶ 6. ODC is an 26
acronym for “organically derived colloid.” Id. ODC is a mixture that includes 27
chitins, chitosans and water. Ex. 2001, ¶ 6; Ex. 2015, p. 1. The Loken-Flack 28

3
Agrihouse is a third-party, not involved in this interference.
6

company was specifically created to sell and market Agrihouse’s ODC product. 1
Ex. 2001, ¶ 2; Ex. 2002, ¶ 2. L-F marketed ODC under the tradenames “Beyond” 2
and “Yea!” Ex. 2002, ¶ 7. The use of ODC to enhance plant growth and crop 3
yield is said to be the subject of three earlier patents not involved in this 4
interference: Patent Nos. 5,726,123; 6,167,652 and 6,193,988 (the ODC patents). 5
Ex. 2075, p. 3, ¶ 3.1. 6
Alleged inventor Loken testifies that by September 2002, as an alternative to 7
marketing ODC as a standalone product, he came up with the idea of combining 8
ODC with commercial growth enhancing products containing rhizobacteria. 9
Ex. 2001, ¶ 12. We understand rhizobacteria to be a family of bacteria that have 10
the ability to assist certain plants with nitrogen uptake by converting plant 11
unusable N2 in the atmosphere to plant usable ammonia (NH3). Loken further 12
testifies that he contacted Kyle Rushing of Gustafson, LLC, and suggested that 13
Gustafson test the effectiveness of ODC alone and in combination with two 14
Gustafson products sold under the trade names “Bioyield” and “Kodiak.” Those 15
products contained rhizobacteria. Ex. 2001, ¶ 15. In November 2002 Loken 16
testifies he provided Gustafson with a sample of ODC. Ex. 2001, ¶ 12. Gustafson 17
tested Bioyield with ODC as a treatment for tomato seeds. Ex. 2003, ¶ 4. The 18
results of the test were said to show that the combination of ODC and Bioyield 19
improved plant growth and crop yield compared with untreated controls. Ex. 2003, 20
¶ 6; Ex. 2008. Further tests performed by Gustafson on tomato seeds also were 21
said to show enhanced growth. Ex. 2001, ¶ 18; Exs. 2048 and 2049. 22
Loken also testifies that in the Summer of 2003, he contacted Celpril 23
Industries and suggested testing ODC alone and combined with a product sold by 24
Celpril under the trade name “Celgard.” Ex. 2001, ¶ 20; Ex. 2004, ¶ 2. Celgard 25
contains rhizobacteria. Ex. 2004, ¶ 2. Celpril conducted tests using corn seed with 26
ODC supplied by L-F, both alone and in combination with Celgard. Ex. 2004, ¶ 4. 27
7

The test results are said to show increased germination with the combination of 1
ODC and Celgard as compared to the untreated controls. Ex. 2004, ¶ 6. 2
Loken testifies that based upon the test results, he thought that the 3
combination of ODC with rhizobacteria was an effective combination for 4
improving plant growth. Ex. 2001, ¶ 22. He provided Gary Flack, another L-F 5
employee, with the name of potential customers who were selling rhizobacteria-6
containing products that Loken thought could be combined with ODC. Ex. 2002, 7
¶ 10. Flack prepared a list of potential customers for ODC. Ex. 2002, ¶ 11. The 8
list is said to be of record as Ex. 2050. The list had two columns. Ex. 2050. One 9
was originally titled “ODC AS CARRIER FOR RHIZOBACTERIA.
4
” Ex. 2002, 10
¶ 11; Ex. 2050. The other column was titled “ODC.” Ex. 2050. 11
One of the companies on Flack’s list under the “ODC AS CARRIER FOR 12
RHIZOBACTERIA” was Nitragin. Inc. Ex. 2002, ¶ 10; Ex. 2050. Nitragin 13
became part of EMD Crop Bioscience, Inc., which subsequently became 14
Novozymes Bioag, Inc., the Senior Party. Loken testifies that in November 2003, 15
he became aware that Nitragin was introducing a rhizobacteria-containing product 16
under the trade name “Optimize.” Ex. 2001, ¶ 28. He further testifies that he 17
subsequently obtained a Material Safety Data Sheet (MSDS) and application 18
instructions for OPTIMIZE. Ex. 2001, ¶ 29; Exs. 2055 and 2056. Both the MSDS 19
and instruction sheet indicate that Optimize contained the rhiozobacterium 20
“Bradyrhizobium japonicum” and also included LCO. Exs. 2055 and 2056. 21
Flack testifies that he contacted Nitragin in an attempt to have them conduct 22
tests with ODC alone and in combination with Nitragin’s rhizobacteria-containing 23
products. Ex. 2002, ¶ 12. Flack testifies that he explained the result of the 24

4
Sometime later, that heading was crossed out and changed to “MIRACLE
CARRIER”. Ex. 2002, ¶ 11; Ex. 2050.
8

Gustafson tests with ODC combined with Gustafson’s rhizobacteria product 1
Bioyield. He also says he sent a sample of ODC to Nitragin. Ex. 2002, ¶ 12. 2
Sometime later, Loken prepared a marketing letter that Flack circulated to 3
various companies including Nitragin. Ex. 2002, ¶ 13-14. The marketing letter 4
summarized the results of the Celpril tests with ODC combined with Celpril’s 5
rhizobacteria product Celgard. Exs. 2057 and 2058. 6
Flack testifies that around January 18, 2004, he spoke with Stewart Smith of 7
Nitragin uging him to “test [ODC] alone and in combination with rhizobacteria 8
containing products of Nitragin.” Ex. 2002, ¶ 16. Smith is said to have agreed to 9
run some tests using ODC and to have suggested the combination of ODC with 10
Nitragin’s rhizobateria-containing product “Optimize.” Ex. 2002, ¶ 16. 11
On March 25, 2004, L-F and Nitragin entered into a confidential disclosure 12
agreement. Ex. 2060. Loken testifies that on March 26, 2004, he met with 13
representatives of Nitragin and made a presentation describing L-F’s ODC product 14
Beyond, and the believed positive test results in field trials run by Gustafson and 15
Celpril on the combination of Beyond with those companies’ rhizobacteria-16
containing products. Ex. 2001, ¶ 38. Loken further testifies that at that meeting 17
he suggested that Nitragin should test ODC alone and in combination with 18
Nitragin’s Optimize rhizobacteria product. Ex. 2001, ¶ 38. Nitragin agreed to do 19
some tests with ODC during it’s spring field trials. Ex. 2061. The discussions 20
during the March 26 meeting were said to include the possibility of jointly 21
patenting “the use of ODC and specific bacterial strains as applied to either 22
legumes or other plant species.” Ex. 2061. 23
In January 2005, Nitragin provided L-F with the results of the field tests on 24
soybean seeds treated with ODC alone. Ex. 2001, ¶ 40; Exs. 2062 and 2063. The 25
results appear to show enhancement compared with untreated controls. Ex. 2062. 26
9

On February 25, 2005, L-F and Nitragin signed a Materials Transfer and 1
Testing Agreement. Ex. 2064. 2
In September 2005, Loken sent a memo to Nitragin summarizing the results 3
of test plantings said to have been treated with L-F’s Beyond ODC product alone. 4
According to the memo there was a 30% increase in crop yield and that L-F had 5
preliminary commitments to treat “thousands of acres.” Ex. 2001, ¶ 48; Ex. 2069. 6
Loken testifies that around September 20, 2005, he visited Nitragin to inform them 7
that their Optimize rhizobacteria product was not considered effective by farmers 8
and to discuss the sale of L-F’s Beyond ODC product combined with Optimize. 9
Ex. 2001, ¶ 49. 10
Loken testifies that in October of 2005, he received results of additional 11
Nitragin field tests. Ex. 2002, ¶ 45; Ex. 2067. The tests compared growth 12
promotion of untreated seeds to seeds treated with each of “NI-50C-2,” “NI-50S-13
2,” and ODC alone and seeds treated with “NI50C-2” and “NI-50S-2” each 14
combined with ODC. Ex. 2067, pp. 3-5. Loken further testifies that at the time he 15
received the results he understood “NI-50C-2” and “NI-50S-2” to be an LCO 16
product separate from Optimize: “My understanding from [Nitragin] was that NI-17
50S-2 and NI-50C-2 were LCO containing products that when incorporated into a 18
commercial legume formulation containing rhizobia was named OPTIMIZE . . . .” 19
Ex. 2001, ¶ 45. 20
Loken testifies that in December 2005, he and Flack visited Nitragin to 21
discuss certain matters including an Environmental Protection Agency product 22
registration for ODC combined with Nitragin’s Optimize and filing a patent 23
application on that combination. Ex. 2001, ¶ 51. A subsequent telephone 24
conference with Nitragin personnel is said to have discussed additional patent 25
filings including a patent on L-F’s Beyond ODC - containing product combined 26
with specific rhizobacteria. Ex. 2002, ¶ 53. 27
10

Loken further testifies that in July 2006, he received information that 1
Nitragin saw benefits in the combination of ODC and LCO. Ex. 2001, ¶ 58. The 2
information was in the form of an email apparently forwarded from Kyle Rushing 3
of Gustafson to Loken. Ex. 2077. The email indicates that Nitrigen was interested 4
in the combination of ODC and LCO. The email that was forwarded was from 5
Hren of Nitragin (by that time EMD) to Rushing. Ex. 2077. The forwarded email 6
states in part: 7
LCO and ODC optimum ratio will not become clearer 8
after business arrangements with Loken-Flack are resolved. 9
The best I can recommend is a 50/50 mix. In our initial peek 10
nonscientific combination, we have found advantages versus 11
the individuals. Those results are not available due to the 12
nature of ongoing negotiations. I will state that our results 13
never checked on an improvement in overall across crops 14
performance consistency. I believe this is the main issue you 15
are hoping to solve with either product. 16
. . . . 17
In closing, I will urge you to continue with your evaluations 18
(good or bad to LCO) and not wait for a business resolution 19
with Loken-Flack. I believe it would be a false hope to expect 20
something to better technically clarify with regards to best mix 21
ratios and overall performance consistency in the immediate 22
future. 23
Ex. 2077. 24
Loken testifies that on July 26, 2006, he received a proposed marketing 25
agreement from Nitragin. The proposed agreement provided that Nitragin would 26
license the chitosan technology of the ODC patents, but Nitragin would own the 27
rights to formulations of the patented technology when used in combination with 28
LCO. Ex. 2074, p. 3, ¶ 3.0. The agreement was not executed. Ex. 2001, ¶ 56. 29
In the fall of 2006, L-F received additional test results on corn seeds treated 30
with ODC alone. Those tests are said to show increased yields compared to 31
untreated seeds. Ex. 2001, ¶ 56; Ex. 2073. 32
11

On November 15, 2006, Loken testifies that he received an email from Hren 1
of Nitragin indicating that Nitragin was seeking EPA registration for Beyond 2
(L-F’s ODC product) combined with LCO for seed and foliar treatment. Ex. 2001, 3
¶ 60; Ex. 2079. 4
On July 17, 2008, Loken testifies he received a copy of a Power Point 5
presentation prepared by Nitragen (by that time EMD). Ex. 2001, ¶ 62; Ex. 2084. 6
The presentation was titled: “ODC (Organically Derived Colloidals) Super 7
Concentrate.” The presentation was subtitled: “Historical Yield Enhancement 8
Field Evaluations of ODC Application Alone and in Combination with EMO Crop 9
BioScience's LCO and Revv Technologies.” Ex. 2085, p. 1. While L-F does not 10
provide an explanation of the results, the presentation appears to show results for 11
treatments including LCO, ODC, Optimize as well as unidentified materials in 12
various combinations. Ex. 2085 13
V. 14
Section 116(a) of Title 35, requires that jointly made inventions be applied 15
for jointly: 16
Joint Inventions.— When an invention is made by two or more 17
persons jointly, they shall apply for patent jointly and each 18
make the required oath, except as otherwise provided in this 19
title. Inventors may apply for a patent jointly even though 20
(1) they did not physically work together or at the same 21
time, 22
(2) each did not make the same type or amount of 23
contribution, or 24
(3) each did not make a contribution to the subject 25
matter of every claim of the patent. 26
35 U.S.C. § 116(a). A patent is invalid if more or fewer than the true inventors are 27
named. Gemstar-TV Guide Int'l Inc. v. United States ITC, 383 F.3d 1352, 1381 28
(Fed. Cir. 2004). Correlatively, the claims of a pending application are not 29
allowable if the true joint inventors are not correctly named. While a joint 30
12

inventor’s contribution does not have to be to all the limitations of any single claim 1
(Eli Lilly., 376 F.3d at 1362), each joint inventor must generally contribute to the 2
conception of the invention (Bard Peripheral Vascular, Inc. v. W.L. Gore & 3
Associates, Inc., 776 F.3d 837, 845 (Fed. Cir. 2015)). The joint inventors 4
contribution to conception of the invention must be “not insignificant in quality, 5
when that contribution is measured against the dimension of the full invention.” 6
Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). 7
Conception also requires contemporaneous recognition and appreciation of 8
the invention. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 593 (Fed. Cir. 9
1997) citing Breen v. Henshaw, 472 F.2d 1398, 1401 (CCPA 1973). “[T]here is no 10
conception or reduction to practice where there has been no recognition or 11
appreciation of the existence of the [invention].” Dow Chem. Co. v. Astro-12
Valcour, Inc., 267 F.3d 1334, 1341 (Fed. Cir. 2001) (citation omitted). In the 13
appreciation analysis, the relevant uncertainty relates to the emerging recognition 14
of something new. Invitrogen Corp. v. Clontech Laboratories, Inc., 429F.3d 1052, 15
1064 (Fed. Cir. 2005). “[A]n accidental and unappreciated duplication of an 16
invention does not defeat the patent right of one who, though later in time, was the 17
first to recognize that which constitutes the inventive subject matter.” Id. at 1063 18
quoting Silvestri v. Grant, 496 F.2d 593, 597 (CCPA 1974). 19
A contribution of information in the prior art cannot give rise to joint 20
inventorship because it is not a contribution to conception. Eli Lilly, 376 F.3d at 21
1362. Supplying a prior art component whose principles of use were known, is an 22
insufficiently significant contribution even if it is a component essential to the 23
invention. Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 981 (Fed. 24
Cir.1997). A joint inventor is required to do more than merely explain well-25
known concepts and/or the current state of the art. Pannu v. Iolab Corp., 155 F.3d 26
1344, 1351 (Fed. Cir. 1998). 27
13

In determining the sufficiency of the degree of contribution to conception, it 1
has been noted that “[t]he determination of whether a person is a joint inventor is 2
fact specific, and no bright-line standard will suffice in every case.” Bard 3
Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 776 F.3d 837, 845 (Fed. 4
Cir. 2015) (citation omitted). 5
VI. 6
A. 7
L-F first argues that by December 15, 2003, Lynn R. Loken, conceived an 8
embodiment of the invention. Paper 112, 17: 18-19. The alleged conceived 9
embodiment is the combination of Nitragin’s rhizobacteria-containing product 10
Optimize with ODC. The principal ingredients of Optimize are LCO and 11
rhizobacteria. Ex. 2056. The principal ingredients of ODC are chitinous 12
compounds. Ex. 2015. The Count and Novozymes’ Claims 1 and 9 require a 13
composition for enhancing plant growth “comprising” at least one LCO and one or 14
more chitinous compounds. The transitional phrase “comprising” opens the Count 15
and Claims 1and 9 to additional ingredients and, therefore, does not exclude 16
embodiments that would also include additional components such as rhizobacteria. 17
Thus, the combination of ODC with Optimize at least facially meets the limitations 18
of the count and Novozymes’ Claim 1. 19
However, L-F has not provided evidence sufficient to establish that Loken 20
conceived that embodiment. Flack testifies that pursuant to Loken’s instructions, 21
he suggested that Nitragin perform field tests using ODC alone “and in 22
combination with rhizobacteria containing products of Nitragin.” Ex. 2002, ¶ 12. 23
However, both Loken and Flack testify that it was Nitragin’s Stewart Smith that 24
suggested combining ODC with Nitragin’s rhizobacteria and LCO-containing 25
product Optimize during a telephone conversation around January 18, 2004. Thus, 26
Flack testifies: 27
14

Smith finally agreed to test the ODC alone and in combination 1
with rhizobacteria containing products and suggested 2
OPTIMIZE, a rhizobacteria containing product of Nitragin, as 3
Nitragin's leading candidate. 4
Ex. 2002, ¶ 16 (emphasis added). See also Ex. 2001, ¶ 34 (“Smith had suggested 5
the rhizobacteria containing product OPTIMIZE as Nitragin's leading candidate for 6
testing.”). 7
Loken testifies to the effect that prior to Flack’s January 18, 2004, telephone 8
conversation with Smith, Loken knew about Optimize and that that product 9
contained rhizobacteria and LCO. Ex. 2001, ¶ 28. However, Loken does not 10
testify that before that conversation, he specifically had the concept of combining 11
ODC with Optimize. Neither Loken nor Flack testify that they specifically had 12
Optimize in mind as a potential rhizobacteria-containing product to be combined 13
with ODC. Rather, their testimony is more general in suggesting that ODC be 14
combined with any of Nitragin’s rhizobacteria-containing products without 15
identifying any specific product. Ex. 2001, ¶ 24; Ex. 2002, ¶ 12. This general 16
suggestion contrasts with L-F’s very specific suggestions to combine ODC with 17
Gustafson’s and Celpril’s specific rhyiobacteria-containing products Bioyield and 18
Celgard. Ex. 2001, ¶¶ 15 and 20; Ex. 2003, ¶ 4; Ex. 2004, ¶ 2. 19
Thus, it appears from L-F’s evidence that it was Nitragin that first suggested 20
combining ODC with Optimize. L-F’s evidence does not establish that Loken 21
conceived of combining ODC with Nitrogen’s Optimize and, therefore, did not 22
conceive of a product containing chitinous compounds and LCO. 23
B. 24
Even if L-F had the idea of combining ODC with Optimize, L-F’s evidence 25
does not persuade us that Loken had an appreciation of the inventive subject matter 26
involved in this interference, i.e., the combination of ODC and LCO in an amount 27
effective to enhance plant growth or crop yield. Conception requires recognition 28
15

or appreciation of the existence of the inventive subject matter. Dow, 267 F.3d at 1
1341. 2
LF’s activities in marketing ODC were directed to the use of ODC alone or 3
combined with rhizobacteria products, not to the ODC/LCO combination. Loken 4
testifies that he suggested testing ODC alone and combined with Gustafson’s 5
rhizobacterial products Bioyield and Kodiak. Ex. 2001, ¶ 15; Ex. 2003, ¶ 2. He 6
also testifies that he suggested that Celpril test ODC alone and combined with 7
Celpril’s rhizobacteria product Celgard. Ex. 2001, ¶ 20; Ex. 2004, ¶ 2. After 8
receiving Gustafson’s and Celpril’s results, Flack prepared a list of possible 9
customers for ODC. The list had two columns that having headings reflected L-10
F’s interest in marketing ODC alone (“ODC”) and in combination with 11
rhizobacteria (“ODC as carrier for rhizobacteria”). Ex. 2002, ¶ 11; Ex. 2050. LF’s 12
subsequent contacts with Nitragin in October 2003, and January 2004, urged them 13
to “test the ODC alone and in combination with rhizobacteria containing products 14
of Nitragen.” Ex. 2002, ¶¶ 12 and 16. In March of 2004, Loken testifies he met 15
with Nitragin suggesting testing of ODC alone and combined with Optimize. 16
Ex. 2002, ¶ 38. Loken’s follow-up email to Smith commented on Nitragin’s 17
interest in “applying for a joint patent covering the use of ODC and specific 18
bacterial strains as applied to either legumes or other plant species." Ex. 2001, 19
¶ 39; Ex. 2061. Thus, Loken’s and L-F’s efforts were directed to ODC alone and 20
combined with rhizobacteria rather than the ODC/LCO combination. 21
Loken testifies that in October 2005, he received a report from Nitragin 22
showing the test results that he understood to be for ODC combined with LCO 23
(NI-50C-2 and NI-50S-2) without rhizobacteria. Ex. 2001, ¶ 45; Ex. 2067. Loken 24
does not testify that he suggested that Nitragin run such tests. Notwithstanding 25
apparent knowledge of the those results, in a subsequent meeting with Nitragin in 26
December 2005, the discussions apparently focused on ODC combined with 27
16

Optimize and on ODC combined with specific species of rhizobacteria. Ex. 2001, 1
¶ 51 and 53. Loken’s testimony does not indicate that the ODC/LCO combination 2
was discussed. Thus, it does not appear that Loken had any appreciation of the 3
benefits of the ODC/LCO combination. 4
Additionally, the evidence identified by L-F that relates to ODC in a 5
composition including LCO, appears to show that the concept originated with 6
Nitragin. Thus, the specific suggestion to combine ODC with Optimize originally 7
came from Smith at Nitragin during the January 18, 2004, discussions with Smith. 8
Ex. 2002, ¶ 16; Ex. 2001; ¶ 34. The October 2005 report on the results of tests on 9
compositions including ODC and LCO, but without rhizobacteria, also originated 10
from Nitragin. Ex. 2001, ¶ 45; Ex. 2067. The July 2006 email from Kyle Rushing 11
at Guftason forwarding an email from Nitragin (by that time EMD) indicates that 12
Nitragin was investigating compositions having the ODC/LCO combination. 13
Ex. 2077. The email from Hren at Nitragin informed Loken that Nitragin was 14
seeking an EPA registration for the ODC/LCO combination. Ex. 2001, ¶ 60; 15
Ex. 2079. The copy of the Power Point presentation relating to the evaluation of 16
ODC combined with LCO (Ex. 2084) was prepared by EMD. Ex. 2001, ¶ 62. The 17
only evidence that indicates that Loken suggested using ODC in a composition that 18
included LCO is Loken’s testimony about the March 26, 2004, meeting with 19
Nitragin. Ex. 2001, ¶ 38. Loken testifies that he suggested that Nitragin should 20
run field tests of ODC combined with Optimize. Id. However, testing that 21
combination already had been recommended to L-F by Smith during the 22
January 18, 2004, discussions with Flack. Ex. 2002, ¶ 16. 23
None of the above evidence, or any of the other evidence which L-F 24
identifies, establishes that Loken appreciated that the LCO/ODC combination 25
would enhance plant growth or crop yield. The evidence appears to show that it 26
17

was only after Nitragin had reported the results of field tests on treatments with 1
ODC/LCO combination, that Loken appreciated that there were benefits 2
Thus, to the extent, L-F may have had the idea of combining ODC with 3
Optimize, we fail to see sufficient evidence that Loken had any appreciation of the 4
benefits of the LCO/ODC combination that forms the inventive subject matter of 5
Novozymes’ Claims 1 and 9 and Count 1. “[A]n accidental and unappreciated 6
duplication of an invention does not defeat the patent right of one who, though 7
later in time, was the first to recognize that which constitutes the inventive subject 8
matter.” Invitrogen, 429F.3d at 1063. 9
C. 10
L-F also argues that Loken made a substantial original contribution to 11
the invention by suggesting the use and benefits of ODC to Nitragin: 12
Loken had made an original contribution to the conception of 13
an embodiment of the Count by placing in the possession of 14
[Nitragin’s] Smith the chitin/chitinous composition utilized in 15
embodiments of the Count, Loken's knowledge of the good 16
results obtained by Gustafson in combining ODC with 17
BIOYIELD a Rhizobium bacteria containing product to treat 18
tomato seeds, which at Flack's suggestion regarding a 19
combination of ODC and rhizobacteria containing product, 20
prompted Smith to suggest OPTIMIZE, an LCO product 21
containing a Rhizobium bacteria, which was sufficient to enable 22
Loken, Smith and Osburn to reduce an embodiment of the 23
Count to actual or constructive practice without extensive 24
experimentation. 25
Paper 112, 25:15-23 26
However, the use of ODC to enhance plant growth and crop yield was 27
known in the prior art. In fact, using ODC for this purpose was said to be the 28
subject of at least three prior art patents. Ex. 2074, ¶ 3.1. For example, one of 29
those patents, U.S. Patent 6,193,988 (Ex. 2011), discloses using chitinous 30
compounds to encapsulate plant “propagules” 31
18

to enhance plant emergence and yield of plant product. 1
Specifically, it is a goal to use propagule encapsulation to 2
enhance emergence and yield separately or in addition to 3
disease control and extended shelf-life . . . .. 4
Ex. 2011, 5:28-33. We understand propagules to be plant materials that develop 5
into plants and include seeds and propagatable portions of plants such as tubers. A 6
suggestion to use a prior art material for its known use does not make the 7
contributor a joint inventor. “A contribution of information in the prior art cannot 8
give rise to joint inventorship because it is not a contribution to conception.” Eli 9
Lilly, 376 F.3d at 1362. Thus, a joint inventor is required to do more than merely 10
explain well-known concepts and/or the current state of the art. Hess, 106 F.3d at 11
981; see also Pannu, 155 F.3d at 1351. It may have been the result of Loken’s and 12
L-F’s urging to use ODC which sparked Nitragin’s interest in that material. 13
However, L-F has not directed us to evidence showing that Loken had a theory or a 14
suspicion that ODC when combined with LCO would result in the enhanced plant 15
growth or crop yield that results from that combination. L-F’s general suggestion 16
to Nitragin to use the prior art ODC, either alone or combined with rhyzobacteria-17
containing products is, in our view, of insufficient quality when measured against 18
the dimension of the full invention, to consider Lynn R. Loken to be joint inventor 19
of the invention of the subject matter of the Count or of Novozymes’ Claims 1 and 20
9. L-F has not sustained its burden of establishing that Lynn R. Loken was a joint 21
inventor of any of the subject matter claimed by Novozymes.
5
22

5
In its opposition, Novozymes argues that L-F had the burden of proving facts by
clear and convincing evidence. Paper 133, p. 4-8. In reaching our decision, we
have used the default civil litigation standard of a preponderance of the evidence
and held that under that standard L-F had not met its burden. The default civil
litigation standard is used in interferences except under the circumstances specified
in 37 C.F.R. § 41.207(a)(2) or with respect to inequitable conduct. The result
19

L-F’s Motion 1 is denied. 1
VII. 2
In deciding L-F’s motion we have considered the entirety of the evidence 3
relied upon in that motion, but have ruled that L-F’s motion failed to meet its 4
burden of establishing entitlement to the relief requested. See 37 C.F.R. 5
§§ 41.121(b) and 41.208(b). It is therefore, unnecessary to consider Novozymes 6
Miscellaneous Motion 1 to exclude certain of L-F’s evidence (Paper 183). 7
Additionally, because L-F’s motion did not meet its burden, we need not consider 8
Novozymes Opposition (Paper 133). It is, therefore, unnecessary to consider L-F’s 9
motion (Paper 164) to exclude certain of Novozymes’ exhibits relied upon in that 10
opposition. 11
ORDER 12
Upon consideration of Loken Motion 1 (Paper 112), the cited evidence, and 13
for the reasons given, it is 14
ORDERED that Loken Motion 1 is denied. 15
FURTHER ORDERED that because the decision on Loken Motion 1 16
fully answers the question of inventorship of the claimed subject matter, we do 17
need to consider or decide: 18
(1) Loken Motion 2 (Paper 164) or 19
(2) Novozymes Miscellaneous Motion 1(Paper 183). 20
FURTHER ORDERED that a judgment against L-F is issued as a 21
separate paper. 22

would have been no different under the higher clear and convincing evidence
standard.
20

cc (electronic delivery):
Attorney for Loken-Flack, LLC
Craig R. Miles, Esq.
Susan Hudachek, Esq.
CR MILES, P.C.
405 Mason Court, Suite 119
Fort Collins CO 80524
Tel: (970) 492-0000
Fax: (970) 492-0003
Email: crmiles@crmiles.com
Email: sfhudachek@crmiles.com
Attorney for Novozymes Bioag A/S
John J. Cotter, Reg. No. 38,116
Andrea B. Reed, Reg. No. 61,982
K&L GATES LLP
State Street Financial Center
One Lincoln Street
Boston, Massachusetts 02111
Tel: (617) 261-3100
Fax: (617) 261-3175
Email: john.cotter@klgates.com
Email: andrea.reed@klgates.com

21

Appendix I
Concordance of the Parties’ Claims by Subject Matter