The Scotts Company LLCv.Encap, LLC

Patent Trial and Appeal Board

Feb 5, 2013

09769076 (P.T.A.B. Feb. 5, 2013)

Trials@uspto.gov Paper 9
571-272-7822 Entered: February 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

THE SCOTTS COMPANY LLC
Petitioner

v.

ENCAP, LLC
Patent Owner
____________

Case IPR2013-00491
Patent 8,474,183 B2

Before LORA M. GREEN, RAMA G. ELLURU, and
ADAM V. FLOYD, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Petitioner, The Scotts Company LLC (“Scotts”), filed a petition
(Paper 1) (“Pet.”) to institute an inter partes review of claims 1-3, 5-10, and
12-15 of U.S. Patent No. 8,474,183 B2 (the “’183 patent”) pursuant to 35
U.S.C. §§ 311-319. Pet. 6-7. Patent Owner, Encap, LLC, (“Encap”), filed a
preliminary response (Paper 8) (“Prelim. Resp.”) to the petition. We have
jurisdiction under 35 U.S.C. § 314. For the reasons that follow, the Board
denies inter partes review of each of the challenged claims.

I. BACKGROUND
The standard for instituting an inter partes review is set forth in
35 U.S.C. § 314(a), which states:
Threshold–The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311
and any response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
We deny inter partes review for the reasons discussed below.
Scotts informs us that the ’183 patent is the subject of co-pending
litigation titled Encap, LLC v. Scotts Company LLC, Case No. 1:11-cv-
000685-WCG (E.D. Wis.). Pet. 5.

A. The ’183 Patent (Ex. 1016)
The ’183 patent discloses a method for determining moisture content
of soil and/or seed at the soil surface based on the color or color intensity of
mulch placed on the soil surface. Ex. 1016, 4:5-7, 4:54-55. The method
includes placing a mulch product at the soil surface. Id. at 16:18. The
mulch product contains a dye and/or pigment that changes color or color
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intensity in response to the moisture level added to or removed from the soil.
Id. at 4:47-50, 4:54-55, 5:23-26, 7:56-62, 8:12-14, 16:15-25.

B. Exemplary Claims
Claims 1, 8, and 15 of the ’183 patent are the only challenged
independent claims. Claims 2, 3, 5-7, 9, 10, and 12-14 directly depend from
claims 1 or 8. Claim 1 is representative of the challenged claims, and is
reproduced below:
1. A method of determining moisture content of soil and/or seed at
soil surface comprising:
placing a mulch product at surface of soil;
said surface of said soil containing seed(s);
determining moisture content of said surface of said soil
and/or seed by color intensity of said mulch product;
changing color intensity of said mulch product when moisture
is removed from said mulch product;
changing color intensity of said mulch product when moisture
is added to said mulch product;
adjusting moisture level of said surface of said soil and/or
seed in response to said color intensity of said mulch
product;
said seed consisting essentially of grass, vegetable and/or
flower seed;
said color coming from a pigment and/or dye in said mulch
product;
said mulch product comprising a fiber, cellulose, clay,
loam, sand, and/or a combination of same;
said color intensity of said mulch product has a relationship
to said moisture content of said surface of said soil and/or seed,
indicating watering needs of said seed.
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C. The Prior Art
Scotts relies on the following prior art:
Exhibit Prior Art
1002 Lignocell Brochure, The Superior Planting Medium,
Lignocell® Limited (“Lignocell”)
1003 J. R. Kessler, Jr., Hobby Greenhouse Operations and
Practices. Alabama Cooperative Extension System,
1-8, (July 1999). (“Kessler”)
1004 US Patent No. 5,683,957 (“Huang”)
1005 Robert J. Black and Richard W. Henley, Care of
Plants in the Home, Univ. of Florida, Florida
Cooperative Extension Service, 1-9 (March 1994)
(“Black”)
1006 US Patent No. 6,228,804 B1 (“Nakashima”)
1007 US Patent No. 5,741,832 (“Spittle”)

D. The Asserted Grounds
Scotts challenges claims 1-3, 5-10, and 12-15 of the ’183 patent on the
following grounds. Pet. 27-57.
Reference[s] Basis Claims challenged
Lignocell and Kessler § 103 Claims 1, 5-7, and 15
Lignocell and Black § 103 Claims 1, 5-7, and 15
Lignocell, Kessler, and
Huang
§ 103 Claims 3, 8, 10, and
12-14
Lignocell, Black, and Huang

§ 103 Claims 3, 8, 10, and
12-14
Nakashima and Spittle § 103 Claims 1, 2, 5-9, and
12-15
Nakashima, Spittle, and
Huang
§ 103 Claims 3 and 10

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II. ANALYSIS
A. Claim Interpretation
Consistent with the statute and legislative history of the America
Invents Act, the Board interprets claims using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
Under the broadest reasonable construction standard, claim terms of
an unexpired patent are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art at the time of the
invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). “Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification . . . when [it] expressly
disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004). “Although an inventor is indeed free to define the specific terms
used to describe his or her invention, this must be done with reasonable
clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
For purposes of this decision, we interpret the claim language of the
challenged claims according to its plain and ordinary meaning.

B. Asserted Grounds of Unpatentability
1. Grounds containing Lignocell
a. Claims 1, 5-7, and 15
Scotts maintains that the combinations of (1) Lignocell and Kessler;
and (2) Lignocell and Black, render obvious claims 1, 5-7, and 15. Claim 1
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requires, among other limitations, “placing a mulch product at surface of
soil,” “said surface of said soil containing seed(s),” “determining moisture
content of said surface of said soil and/or seed by color intensity of said
mulch product,” and “said color intensity of said mulch product has a
relationship to said moisture content of said surface of said soil and/or seed,
indicating watering needs of said seed.” Dependent claims 5-7 depend from
claim 1. Independent claim 15 has similar requirements of “placing a mulch
product at surface of said soil,” “said surface of said soil containing seed(s)
and/or plant(s),” “determining moisture content of said surface of said soil
and/or seed by color [rather than color intensity] of said mulch product, and
“said color intensity of said mulch product has a relationship to said
moisture content of said soil and/or seed, indicating watering needs of said
seed.” For both asserted grounds identified above, Scotts refers to disclosure
from Lignocell for teaching the limitations “placing a mulch product at
surface of soil” and “said surface of said soil containing seed(s) and/or
plant(s).” Pet. 30, 32, 39, 40-41. Lignocell discloses that coconut coir can
be used as mulch. Ex. 1002 at 2. Scotts contends that Lignocell shows that
coir is a mulch product that “can be applied to a soil surface (e.g., over a
seeded area).” Pet. 28 (citing Ex. 1002 at 2-3).
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Scotts refers to the following picture reproduced from Lignocell. See,
e.g., Pet. 3, 30.

This picture shows a tractor placing product on a surface. Scotts, however,
does not explain, with supporting evidence (e.g., expert opinion), how a
person of ordinary skill would interpret this picture. We are not persuaded
by the Lignocell picture alone that the coir product is placed at the surface of
soil, as required by claims 1 and 15. Scotts Company has not provided
persuasive evidence as to what material the coir product is placed upon. See
Prelim. Resp. 15. As Encap points out, Lignocell discloses that coir can be
placed over soil-less growing medium such as a rocky, arid landscape. Id.
Scotts Company also has not provided sufficient evidence that said
surface of said soil contains seed(s) and/or plant(s), as required by claims 1
and 15. See Prelim. Resp. 15-16. In its claim chart, Scotts states that
“Lignocell teaches that the coir mulch can be applied to the surface of soil
(e.g., over a seeded area)” and refers to the pictures “showing plant life
growing from an area where mulch was applied.” See e.g., Pet. 30. We are
not persuaded by Scotts Company’s assertion. For example, we agree with
Encap that Scotts has not provided persuasive evidence that the plant life is
growing from a seed that was present on the surface of the soil. Prelim.
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Resp. 15-16. Lignocell discloses that seeds may be placed on top of the coir
product in a container to which water and nutrients have been added.
Ex. 1002 at 3 (top of page). That disclosure indicates that seeds may be
placed on top or inside the product itself without any soil present. See
Prelim. Resp. 15 (arguing that Lignocell discloses creating a substitute layer
for the soil with a coir product).
In addition, we agree with Encap that Scotts has not provided
sufficient evidence to show that Lignocell teaches the claimed, “determining
moisture content of the surface of the soil and/or seed by color intensity or
color of the mulch product” and “the color intensity of the mulch product
has a relationship to the moisture content of the surface of said soil and/or
seed beneath the mulch product,” as required by claims 1 and 15. Prelim.
Resp. 14. Scotts contends that Lignocell teaches those limitations because it
shows that coir is a mulch product that “can be applied to a soil surface (e.g.,
over a seeded area), and is light brown when dry and dark brown when wet.”
Pet. 28 (citing Ex. 1002 at 3). Thus, contends Scotts Company, “Lignocell
teaches that the color intensity of a coir mulch product has a relationship to
the moisture content of the soil surface (e.g., when the coir mulch is light
brown, the soil surface is dry).” Pet. 28. For example, Lignocell identifies
“TYPICAL PROPERTIES OF WETTED UP MATERIAL” as including
“Colour – Light to dark brown.” Ex. 1002 at 4.
While the cited disclosure relates to a possible relationship between
the color or color intensity of the coir mulch and the moisture content of the
coir mulch, it does not teach that the color or color intensity of the coir
mulch can be used to determine the moisture content of the surface of the
soil and/or seed on which the coir mulch has been applied, or that it has a
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relationship to the moisture content of the soil and/or seed upon which it is
placed.
Lignocell in combination with Kessler does not cure this deficiency.
Scotts refers to the following Kessler disclosure:
One advantage to a soil containing peat moss is that it changes
from dark brown when wet to light tan in color when dry. This
color change can be used to determine when to water.
Pet. 28 (citing Ex. 1003 at 5); see also Pet. 31. Scotts further contends that
peat and coir are known substitutes for one another. Pet. 29 (citing Ex. 1003
at 4). Thus, argues Scotts, in view of Kessler, it would have been obvious to
one of ordinary skill in the art to adjust the moisture level of a soil surface
containing Lignocell’s coir mulch in response to the color of the mulch.
Pet. 29.
At most, Kessler’s disclosure indicates that soil containing peat moss
(i.e., soil mixed with peat moss) changes color when wet or dry, and that
color change can be used to determine when to water. Ex. 1003 at 4.
Similar to Lignocell, Kessler does not disclose using a change in color or
color intensity of mulch to determine the moisture content of the soil
beneath the mulch, nor does Kessler teach that the color intensity of the
mulch has a relationship to the moisture content of the soil and/or seed,
beneath the mulch product.
Black, likewise, does not cure the deficiencies of Lignocell. Scotts
refers to the disclosure of Black, stating that plants grow well in potting
mixes containing high levels of peat. Pet. 37 (citing Ex. 1005 at 5). Black
also states:
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The following methods may be used to determine when to
water: . . . Judging Soil Color – Potting mixtures will change
from a dark to light color as they dry.
Ex. 1005 at 4. Thus, argues Scotts, in view of Black, it would have been
obvious to one of ordinary skill in the art to adjust the moisture level of a
soil surface containing Lignocell’s coir mulch in response to the color of the
mulch. Pet. 38. Black’s disclosure indicates that “[p]otting mixtures”
change color as they dry and that color change can be used to determine
when to water. Ex. 1005 at 4. Similar to Kessler, however, Black only
discloses using a change in the color of the potting mixture itself to
determine when it is dry. Scotts has not provided persuasive evidence that
the combination of Lignocell and Black teach determining the moisture
content of the surface of the soil and/or seed by color or color intensity of
the mulch product, or that the color intensity of the mulch product has a
relationship to the moisture content of the soil and/or seed beneath the
mulch, as required by claims 1 and 15. See Prelim. Resp. 27.
Upon consideration of the evidence of record, and for the reasons
discussed above, we determine that Scotts has not established a reasonable
likelihood that Lignocell in combination with Kessler or Black teaches all
the limitations of independent claims 1 and 15, and for the same reasons,
dependent claims 5, 6, and 7.
b. Claims 3, 8, 10, and 12-14
Scotts maintains that combinations of (1) Lignocell, Kessler, and
Huang; and (2) Lignocell, Black, and Huang render obvious claims 3, 8, 10,
and 12-14. Dependent claim 3 depends from claim 1 and dependent claims
10 and 12-14 depend from claim 8. Similar to claims 1 and 15, independent
claim 8 recites, “determining moisture content of said surface of said soil
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and/or seed by color intensity of said mulch product” and “said color
intensity of said mulch product has a relationship to said moisture content of
said surface of said soil and/or seed, indicating watering needs of said seed.”
Scotts refers to the teachings of Lignocell and Kessler, as well as, Lignocell
and Black, in support of its contentions that those limitations of claim 8 are
taught by the asserted combinations. Pet. 35-36, 44-45. Upon consideration
of the evidence of record, and for the reasons discussed above with respect
to claims 1 and 15, we determine that Scotts has not established a reasonable
likelihood that neither the combination of Lignocell, Kessler, and Huang nor
the combination of Lignocell, Black, and Huang, renders obvious
independent claim 8, and dependent claims 3, 10, and 12-14.
2. Grounds that contain Nakashima
Scotts maintains that: (1) the combination of Nakashima and Spittle
renders obvious claims 1, 2, 5-9, and 12-15; and (2) the combination of
Nakashima, Spittle, and Huang renders obvious claims 3 and 10.
Scotts contends that Nakashima teaches a color change material that
changes color in response to water. Pet. 46 (citing Ex. 1006 at Abstract, 1:5-
9). Specifically, Nakashima states that “[t]he color-change materials can be
applied also to various indicators,” including “the detection of water in
soils.” Ex. 1006 at 11:53-61. Thus, argues Scotts, “adding a reversible
color-change material to soil renders obvious adding the same material to []
mulch applied to soil, as both require moisture to support plant life.”
Pet. 47; see Pet. 48. As an example of a mulch product applied to soil,
Scotts refers to Spittle, which teaches applying a mulch product to a seed
bed. Pet. 47 (citing Ex. 1007 at Abstract, 1:9-10, 3:6-10, 4:15-26).
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The relevant inquiry for the alleged grounds of unpatentability based
on obviousness is whether the petitioner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Scotts has not provided sufficient rationale for combining Nakashima and
Spittle. Scotts relies on conclusory statements, without any substantiating
evidence (e.g., expert declaration), as to why a person of ordinary skill in the
art would have combined the teachings of Nakashima and Spittle.
That soil and mulch both require moisture and support plant life and
seed growth is not in itself sufficient rationale for combining Nakashima’s
color change indicator with Spittle’s mulch that is placed on top of the soil
surface. To demonstrate obviousness, Scotts must show why a person of
ordinary skill in the art would have thought to combine available elements of
knowledge, as evidenced by the prior art, in a particular way, to reach the
claimed invention. See KSR, 550 U.S. at 418. Nakashima teaches using a
color change material to detect water in soil. Ex. 1006 at 11:53-61. In other
words, Nakashima only teaches detecting the presence or absence of water
in soil, not the degree of the “moisture content” of the soil. Scotts has not
provided sufficient rationale as to why a person of ordinary skill would have
combined Nakashima’s color-change material, which detects the presence or
absence of water, with Spittle’s mulch, to “determin[e] moisture content” of
the surface of the soil and/or seed “by color intensity” of the mulch product,
which requires a degree in the change of color, in order to “adjust[] moisture
level” of the surface of soil and/or seed.
Furthermore, modifying Spittle’s mulch to include Nakashima’s color
change material would not result in the claimed “color intensity” of “said
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mulch product has a relationship to said moisture content of said surface of
said soil and/or seed,” as required by independent claims 1, 8, and 15. As
noted above, Nakashima teaches detecting the presence or absence of water
in the material in which it is contained, or on which it is placed. Ex. 1006 at
11:53-61. Thus, if Spittle’s mulch contained, or was coated with,
Nakashima’s color-change material and placed on the surface of the soil
and/or seed, the color-change material would detect the presence or absence
of water in the mulch. Scotts has not provided persuasive evidence that the
modified Spittle mulch would exhibit “color intensity” in relation to the
moisture content of the surface of the soil and/or seed, as required by
independent claims 1, 8, and 15. Neither does Scotts refer to Huang to teach
the limitation “color intensity of said mulch product.” Pet. 56-57.
For the reasons discussed above, we determine that Scotts has not
established a reasonable likelihood that independent claims 1, 8, and 15 are
rendered obvious by Nakashima and Spittle or by Nakashima, Spittle, and
Huang. For the same reasons, we determine that Scotts has not established a
reasonable likelihood that dependent claims 2, 3, 5-7, 9, 10, and 12-14 are
rendered obvious over either grounds.

C. Conclusion
We conclude that Scotts has not demonstrated a reasonable likelihood
that at least one challenged claim is unpatentable based on the asserted
grounds. We, therefore, do not institute an inter partes review on any of the
asserted grounds as to any of the challenged claims.

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III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims of
the ’183 patent.

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PETITIONER:

Robert Schulman
rschulman@hunton.com

Alexander Spiegler
aspiegler@hunton.com

PATENT OWNER:

Philip Weiss
weissandweiss@aol.com