Deere & Company

Patent Trials and Appeals Board

Dec 28, 2020

IPR2019-01050 (P.T.A.B. Dec. 28, 2020)

Trials@uspto.gov Paper 81
571-272-7822 Entered: December 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PRECISION PLANTING LLC, AGCO CORPORATION,
Petitioner,
v.
DEERE & COMPANY,
Patent Owner.

IPR2019-01050
Patent 9,807,922 B2

Before, BARRY L. GROSSMAN, JAMES A. TARTAL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
Dismissing Petitioner’s Motion to Exclude
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
Precision Planting LLC and AGCO Corporation (collectively
“Petitioner”) filed a Petition requesting an inter partes review of claims 1, 2,
4–11, and 13 of U.S. Patent No. 9,807,922 B2 (Ex. 1001, “the ’922 patent”).
Paper 4 (“Pet.”). Deere & Company (“Patent Owner”) filed a Preliminary
Response. Paper 10 (“Prelim. Resp.”). After receiving our authorization to
do so, Petitioner filed a Reply (Paper 11) and Patent Owner filed a Sur-
Reply (Paper 13).
We concluded that Petitioner satisfied the burden, under 35 U.S.C.
§ 314(a), to show that there was a reasonable likelihood that Petitioner
would prevail with respect to at least one of the challenged claims.
Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), and in
accordance with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018), we
instituted an inter partes review of all the challenged claims on the sole
asserted ground. Paper 20 (“Dec. Inst.”).
Patent Owner filed a Response. Paper 35 (“PO Resp.”). Petitioner
filed a Reply. Paper 57 (“Reply”). Patent Owner filed a Sur-reply. Paper
62 (“Sur-reply”).
Petitioner submitted 107 exhibits. See Exs. 1001–1148 (not
consecutive; some exhibit numbers not used); see also Ex. 1148, a Joint
Exhibit Index concordance of exhibits in this proceeding and the related
post-grant proceedings. Petitioner relies, in part, on the Declaration
testimony of Douglas S. Prairie. See Ex. 1002.1

1 Mr. Prairie earned a B.S. in Agricultural Engineering, and an M.S. in
Mechanical Engineering. He is a registered Professional Engineer in Idaho.
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Patent Owner submitted 105 exhibits. See Exs. 2001–2275 (not
consecutive; some exhibit numbers not used). Patent Owner relies, in part,
on the Declaration testimony of Dr. James L. Glancey. See Ex. 2208.2
Petitioner filed a Motion to Exclude evidence submitted by Patent
Owner. Paper 68 (“Pet. Mot. Excl.”). Patent Owner filed an Opposition to
the Motion to Exclude. Paper 69 (“PO Resp. Mot. Excl.”). Petitioner filed a
Reply. Paper 74 (“Pet. Reply Mot. Excl.”).
Patent Owner filed a Motion to Exclude evidence submitted by
Petitioner. Paper 66 (“PO Mot. Excl.”). Petitioner filed an Opposition to the
Motion to Exclude. Paper 70 (“Pet. Resp. Mot. Excl.”). Patent Owner filed
a Reply. Paper 73 (“PO Reply Mot. Excl.”).

Ex. 1002 ¶ 2. He also has approximately twenty years of experience in the
agricultural and mechanical engineering industry, working primarily on the
development of precision seeding technology. Id. ¶¶ 3–11. Mr. Prairie is an
Instructor in the Agriculture and Biosystems Engineering Department at
South Dakota State University. Id. ¶ 13. He is a named inventor on multiple
U.S. patents and applications relating to seeding and planting technology.
Id. ¶ 14.
2 Dr. Glancey earned degrees in Agricultural and Biological Engineering,
culminating in a Doctor of Philosophy in Engineering with an emphasis in
Mechanical Engineering and concentrations in Civil Engineering,
Agricultural and Biological Engineering, and Applied Mathematics.
Ex. 2206 ¶ 3. Currently, he holds a dual appointment at the University of
Delaware as a Professor of Machine Design and Development in Mechanical
Engineering and a Professor in the College of Agriculture and Natural
Resources. Id. ¶ 4. He is an inventor on one U.S. patent related to
harvesting, and three U.S. patents related to the composite material
manufacturing and automation. Id. ¶ 6. Dr. Glancey is a Registered
Professional Engineer in Delaware. Id. ¶ 11.
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A hearing was held October 13, 2020. Paper 80 (“Tr.”). This was a
joint hearing that also included related cases IPR2019-01052 and IPR2019-
01054.
We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Petitioner has the burden of proving unpatentability of a claim by a
preponderance of the evidence. 35 U.S.C. § 316(e).
Based on the findings and conclusions below, we determine that
Petitioner has not proven that claims 1, 2, 4–11, and 13 are unpatentable.
We dismiss as moot both Petitioner’s Motion to Exclude Evidence
and Patent Owner’s Motion to Exclude Evidence.
B. Real Parties in Interest
Petitioner identifies Precision Planting, LLC and AGCO Corp. as the
real parties-in-interest. Pet. 7. Petitioner also states that “[f]or the purposes
of completeness,” Petitioner also names Monsanto Co. and Bayer AG as real
parties-in-interest. Id.
Patent Owner identifies itself, Deere & Company, as the sole real
party-in-interest. Paper 5, 1.
C. Related Matters
Patent Owner sued Petitioner for infringement of the ’922 patent. See
Pet. 7; Paper 5, 1 (citing Deere & Company v. AGCO Corporation, Civil
Action No. 1:18-cv-00827-CFC (District of Delaware June 1, 2018) (the
“827 case”); Deere & Company v. Precision Planting LLC, Civil Action No.
1:18-cv-00828-CFC (District of Delaware June 1, 2018) (the “828 case”)).3

3 See Ex. 3003 (District Court’s docket entry for January 9, 2019, of an
“ORAL ORDER” stating that the 827 and 828 cases are “consolidated,”
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Petitioner also lists the following Board proceedings as related
matters:
Case No. Challenged Patent
IPR2019-01044 U.S. Patent No. 8,813,663
IPR2019-01046 U.S. Patent No. 9,480,199
IPR2019-01047 U.S. Patent No. 9,510,502
IPR2019-01048 U.S. Patent No. 9,686,906
IPR2019-01051 U.S. Patent No. 9,807,924
IPR2019-01052 U.S. Patent No. 9,820,429
IPR2019-01053 U.S. Patent No. 9,861,031
IPR2019-01054 U.S. Patent No. 10,004,173
IPR2019-01055 U.S. Patent No. 9,699,955
Pet. 7. The listed IPR proceedings involve the same parties as this 01050
IPR proceeding. The challenged patents in the list above also are involved
in the Delaware Case. E.g., see Exs. 3005, 3006.
We note that the disclosure in the ’922 patent is substantially similar
to the disclosure in U.S. Patent No. 9,480,199 (the “’199 patent”), which is
challenged in IPR2019-01046 (the “01046 IPR”). The drawings in the ’922
patent are identical to the drawings in the ’199 patent. The references
asserted in the proceeding before us are identical to the references in the
01046 IPR. In the proceeding before us and in the 01046 IPR, the sole

with the 827 case as “the lead case and all future filings shall be made in that
case only.” Accordingly, the 827 case now includes both of the entities that
this Decision refers to collectively as Petitioner. For simplicity, this
Decision refers to the now consolidated 827 and 828 cases as the “Delaware
Case.” The Delaware Case was stayed pending the outcome of this 01050
IPR proceeding and the related inter partes review proceedings. Ex. 3001.
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asserted ground is that the challenged claims are unpatentable under
35 U.S.C. § 103 based on Hedderwick in view of Yamahata and Koning.
The primary substantive difference between the case before us and the
01046 IPR is that each proceeding challenges a different patent.
D. The ’922 Patent
The ’922 patent relates generally to seeding machines called
“planters” that are used by farmers to plant seeds efficiently and precisely in
parallel seed trenches. Ex. 1001, 1:20–22; Ex. 1002 ¶ 37. A picture of a
seed planter is shown below.

Picture of a seed planter. See Ex. 3007 ¶ 34.4

4 This picture is from the complaint in the Delaware Case is an image of a
“90-foot-wide John Deere DB90 planter, which covers 36 rows with each
pass.” Ex. 3007 ¶ 34. We provide it as an illustration of the general type
and scale of the planters disclosed in the ’922 patent. We make no finding,
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In a typical planter configuration, the planter is attached to a tractor,
which pulls the planter across a field to be planted with seeds. Ex. 1002
¶ 32.
An annotated figure of the basic components of a typical seed planter
is shown below. See Ex. 1002 ¶ 37.

As shown above, a typical seed planter includes a main hopper, which
transfers seeds to several “row units,” each of which includes an auxiliary
hopper and a seed delivery system that delivers, and plants, seeds into a
trench or furrow in the ground. Ex. 1002 ¶ 37.
The most common seed delivery system used in row units is a
“gravity drop system,” in which seeds from the auxiliary hopper drop into a
seed tube and fall by gravitational force into a seed trench. Ex. 1001, 1:52–
58. One problem with this system is that the relative velocity difference
between seed and soil causes individual seeds to bounce and tumble in
somewhat random patterns as each seed enters the trench. Ex. 1001, 1:67–
2:21. According to the Specification, the disclosed seed delivery system

however, that this particular planter is within the scope of the invention
claimed in the ’922 patent.
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provides a “controlled descent” of the seed to result in “a low or zero
horizontal velocity” of the seed relative to the trench. Id. at 2:25–40.
According to the ’922 patent, precise placement of seeds during
planting is critical to producing maximum crop yield. E.g., Ex. 1001,
Abstract (“the seeds are isolated from row unit dynamics thereby
maintaining seed spacing”); see also Ex. 2031 ¶ 16 (“If corn plants are
spaced too close together, the plants compete for resources such as water and
sunlight and neither produces acceptable quality ears. They are basically
weeds. If corn plants are planted too far apart, you have lost the potential for
a productive plant that yields acceptable ears.”).
There is a balance between planting seeds quickly and spacing seeds
precisely. Ex. 2031 ¶ 11 (“As the planter travels over the field, the uneven
terrain will cause seeds to bounce and ricochet throughout its entire path of
travel to the ground. This causes lack of seed spacing accuracy. The faster
you travel across the field, the worse this accuracy problem becomes.”); see
also Ex. 1001, 1:65–67 (“The spacing variation is exacerbated by higher
travel speeds through the field which amplifies the dynamic field
conditions.”).
The ’922 patent relates more specifically to “a seeding machine
having a seed metering system and a seed delivery system for delivering
seed from the meter to the ground.” Ex. 1001, 1:14–16. In the “Background
of the Invention,” the ’922 patent explains that in known seed delivery
systems, differences in how individual seeds exit the metering system and
drop through the seed delivery tubes cause undesirable variations in seed
spacing. Id. at 1:62–65. In the “Summary of the Invention,” the ’922 patent
describes that its system reduces seed spacing variability by capturing the
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seed, and then moving it, on a controlled descent from the point at which it
exits the metering system to a point near the bottom of the seed trench, so
that the seed is discharged at a substantially zero horizontal speed relative to
the ground. Id. at 2:25–40.
As described in the ’922 patent, planter or seeding machine 10
includes tool bar 12 as part of planter frame 14. Ex. 1001, 3:8–11. Mounted
to the tool bar are multiple planting row units 16. Id. at 3:11–12. One of
these row units is shown in Figure 2 of the ’922 patent, reproduced below.

Figure 2 is a side view of one row unit 16. Ex. 1001, 2:46–47.
Figure 2 of the ’922 patent discloses “parallelogram linkage 22 for
mounting the row unit 16 to the tool bar 12 for up and down relative
movement between the unit 16 and toolbar 12.” Ex. 1001, 3:17–21. “Seed
is stored in seed hopper 24 and provided to a seed meter 26,” and “[f]rom
the seed meter 26 the seed is carried by a delivery system 28 [shown in
dashed lines] into a planting furrow, or trench, formed in the soil by furrow
openers 30.” Id. at 3:21–27.
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Petitioner provides the following annotated Figure 3 of the ’922 patent
(Pet. 18), which is reproduced below.

Figure 3 is a side view of the
seed delivery system of the present invention.
Figure 3 shows delivery system 28, with housing 48, adjacent to seed disk
50, containing apertures 52, of the seed meter. Id. at 3:40–51. Seeds 56 are
collected on the apertures from a seed pool and adhere to the disk by air
pressure differential on the opposite sides of disk 50, which the ’922 patent
acknowledges is done “in a known manner.” Id. at 3:45–47. Inside housing
48 are mounted pulleys 60 and 62, which support belt 64 for rotation within
the housing. Id. at 3:52–57. Attached to belt 64 by base member 66 are
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elongated bristles 70, which touch, or are close to touching, the inner surface
76 of side wall 53. Id. at 3:57–64. The belt rotates in a counterclockwise
direction, transferring seeds from the seed meter to the delivery system,
where “the bristles move or convey the seeds downward to the housing
lower opening” 78, holding the seeds against side wall 53 along the way. Id.
at 4:17–37. The seeds accelerate relative to the speed of the belt as they
round the lower portion of the housing on their way to the lower opening 78,
and are “discharged through the lower opening 78 into the seed trench.” Id.
at 4:40–46. The belt shown in Figure 3 has relatively long bristles.
Id. at 4:53. The Specification explains:
As a result of the long bristles and the seed loading point being
at the end of the curved path of the brush around the pulley 60
results in the seeds being loaded into the belt while the bristles
have slowed down in speed. The bristle speed at loading is thus
slower than the bristle speed at the discharge opening as the belt
travels around the pulley 62. This allows in the seed to be loaded
into the belt at a relatively lower speed while the seed is
discharged at the lower end at a desired higher speed.
Id. at 4:53–62.
The Specification explains that while brush bristles are the preferred
embodiment, other materials can be used to grip the seed, such as a foam
pad, expanded foam pad, mesh pad or fiber pad. Id. at 7:43–47.
E. Illustrative Claims
Petitioner challenges claims 1, 2, 4–11, and 13. Claims 1 and 9 are
independent claims. Claim 1 is directed to a “seeding machine.” Claim 9 is
directed to “[a] method of delivering a seed from a seed meter to a furrow.”
Claim 1 is reproduced below:
1. A seeding machine for a row unit having a seed meter with
a plurality of apertures through which an air pressure differential
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is applied to retain seed thereon, the seed meter movable to
convey seed from a seed reservoir, the seeding machine
comprising:
a seed delivery apparatus including
an elongated housing having a first opening through which
seed is received into the seed delivery apparatus, having a second
opening through which seed exits the seed delivery apparatus,
and defining an interior chamber along which seed is conveyed
from the first opening to the second opening;
a first pulley,
a second pulley,
an endless member driven by the first pulley and/or the
second pulley, the endless member movable within the interior
chamber of the elongated housing to receive seed from the first
opening and convey seed to the second opening; and
a loading surface stationary relative to the elongated
housing and positioned to contact and guide seed toward the
endless member.
Ex. 1001 at 7:54–8:11. Independent method claim 9 includes the steps of
releasing seed from the seed meter; guiding the seed with a loading surface
toward a seed delivery apparatus; receiving the seed in the seed delivery
apparatus; and conveying the seed to the furrow.
F. Prior Art and Asserted Grounds
Petitioner contends that the challenged claims are unpatentable based
on the following ground:
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References Basis5 Claims Challenged
Hedderwick,6 Yamahata7, Koning8 § 103(a) 1, 2, 4–11, 13
Pet. 11, 41. In support of its proposed ground, Petitioner relies on the
Declaration of Mr. Douglas S. Prairie. See Ex. 1002.
II. MOTION TO EXCLUDE
Petitioner and Patent Owner each move to exclude a substantial
number of exhibits on a number of different evidentiary grounds. See Pet.
Mot. Excl.; PO Mot. Excl. As our analysis does not refer to any of those
exhibits, we dismiss each motion as moot.
Our general approach for considering challenges to the admissibility
of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., IPR2013-
00053, Paper 66 at 19 (PTAB May 1, 2014). As stated in Corning, similar
to a district court in a bench trial, the Board, sitting as a non-jury tribunal
with administrative expertise, is well-positioned to determine and assign
appropriate weight to evidence presented. Id. (citing Donnelly Garment Co.
v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (stating, in the context of
reviewing an administrative determination of the National Labor Relations
Board based on findings by a Trial Examiner, “We think that experience has

5 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
that issued as the ’922 patent states that it is a continuation of an application
filed before March 16, 2013, we apply the pre-AIA version of this statute.
See 35 U.S.C. § 100(i).
6 GB 2,057,835 A, published Apr. 8, 1981 (Ex. 1003).
7 Japanese Utility Model Registration Publication S56-24815U, published
Mar. 6, 1981 (Ex. 1014). Citations to Yamahata in this decision refer to the
English translation in Exhibit 1011.
8 US 4,193,523, issued Mar. 18, 1980 (Ex. 1004).
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demonstrated that in a trial or hearing where no jury is present, more time is
ordinarily lost in listening to arguments as to the admissibility of evidence
and in considering offers of proof than would be consumed in taking the
evidence proffered . . . . One who is capable of ruling accurately upon the
admissibility of evidence is equally capable of sifting it accurately after it
has been received . . . .”)).
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
hearsay, confusing, misleading, untimely, and/or irrelevant, we will simply
not rely on it or give it little or no probative weight, as appropriate, in our
analysis, which is what we have done here.
“In an inter partes review, we regard it as the better course to have a
complete record of the evidence to facilitate public access, as well as
appellate review.” Sony Computer Entm’t Am. LLC v. Game Controller
Tech. LLC, IPR2013-00634, Paper 32 at 32 (PTAB Apr. 14, 2015); see
also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118,
Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly, 123 F.2d at 224 (“If
the record on review contains not only all evidence which was clearly
admissible, but also all evidence of doubtful admissibility, the court which is
called upon to review the case can usually make an end of it, whereas if
evidence was excluded which that court regards as having been admissible, a
new trial or rehearing cannot be avoided.”)).
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III. ANALYSIS
A. Legal Standards
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of ordinary skill in the art; and (4) when available, objective
evidence of nonobviousness such as commercial success, long felt but
unsolved needs, and failure of others. Graham v. John Deere Co., 383 U.S.
1, 17–18 (1966); see KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”). The Court in Graham
explained that these factual inquiries promote “uniformity and definiteness,”
for “[w]hat is obvious is not a question upon which there is likely to be
uniformity of thought in every given factual context.” Graham, 383 U.S.
at 18. We note that no objective evidence of nonobviousness (e.g.,
commercial success) has been asserted in this proceeding.
The Supreme Court made clear that we apply “an expansive and
flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
Whether a patent claiming the combination of prior art elements would have
been obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
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Id. at 417. To support this conclusion, however, it is not enough to show
merely that the prior art includes separate references covering each separate
limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
that a person of ordinary skill at the time of the invention “would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention.” Id.
Moreover, in determining the differences between the prior art and the
claims, the question under 35 U.S.C. § 103 is not whether the differences
themselves would have been obvious, but whether the claimed invention as a
whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
claimed invention must be considered as a whole in deciding the question of
obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether
the differences themselves would have been obvious. Consideration of
differences, like each of the findings set forth in Graham, is but an aid in
reaching the ultimate determination of whether the claimed invention as a
whole would have been obvious.”).
As a factfinder, we also must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421.
Against this general background, we consider the references, other
evidence, and arguments on which the parties rely.
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B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens through which a judge,
jury, or the Board views the prior art and the claimed invention.” Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point
prevents these factfinders from using their own insight or, worse yet,
hindsight, to gauge obviousness.” Id.
Factors pertinent to a determination of the level of ordinary skill in the
art include: (1) educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of workers active in the field. Envt’l. Designs, Ltd. v.
Union Oil Co. of Calif., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
case, and one or more of these or other factors may predominate in a
particular case. Id. Moreover, these factors are not exhaustive but are
merely a guide to determining the level of ordinary skill in the art. Daiichi
Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
In determining a level of ordinary skill, we also may look to the prior
art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
Additionally, the Supreme Court informs us that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421.
In a one sentence statement, Petitioner proposes that a person of
ordinary skill in the art “would have had either: (1) a bachelor’s degree plus
four years of experience in mechanical engineering, agricultural engineering,
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or a related field or (2) a master’s degree plus two years of experience in
mechanical engineering, agricultural engineering, or a related field.” Pet. 40
(citing Ex. 1002 ¶¶ 21–22). Mr. Prairie, Petitioner’s declarant, states the
factors he considered (Ex. 1002 ¶ 21) without any discussion or analysis of
facts or data related to those factors, and then repeats Petitioner’s asserted
level of ordinary skill as his opinion of the applicable level of skill in this
proceeding (id. ¶ 22). See 37 C.F.R. § 42.65(a) (“(a) Expert testimony that
does not disclose the underlying facts or data on which the opinion is based
is entitled to little or no weight.”).
Patent Owner proposes a slightly different level of ordinary skill.
According to Patent Owner, a person of ordinary skill in the relevant
technology would have had an undergraduate degree in mechanical
engineering, agricultural engineering, or a closely related field, and “about
two years of experience designing agricultural products or related machinery
in industry or academia.” PO Resp. 2 (citing Ex. 2208 ¶¶ 47–52). Patent
Owner also proposes that, as an alternative, a person of ordinary skill could
have had “about five years of experience designing agricultural products or
related machinery, without a four-year undergraduate engineering degree.”
Id. Patent Owner adds that “[s]uch a person would typically have
experience designing projects on a component or small sub-system-level
rather than redesigning a larger planting system.” Id.
Dr. Glancey, Patent Owner’s declarant, explains that, in his opinion,
Petitioner’s proposed level of ordinary skill is “too restrictive and sets the
level of ordinary skill in the art of the ’922 Patent too high.” Ex. 2208 ¶ 49.
Dr. Glancey provides three reasons why he holds this opinion: (1)
undergraduate engineering curriculums in place in February 2009 focused on
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design at the freshman level and continued this focus throughout the
student’s degree program, thus avoiding the need for significant post-
graduate design experience (id. ¶ 50); (2) masters programs in engineering
focus on research for publication in peer-reviewed journals, rather than
designing products for industry (id. ¶ 51); and (3) engineering technicians,
who may not have formal engineering degrees, “often have years’ worth of
relevant hands-on experience,” which, in Dr. Glancey’s opinion, qualifies
him or her to be “considered POSITAs[9] with respect to the ’922 Patent”
(id. ¶ 52).
At the hearing, Counsel for Petitioner stated that the proposed
different experience levels for a person of ordinary skill proposed by the
parties was “would not make a different” outcome in this proceeding. E.g.,
Tr. 29:20–26; 30:14–18. We agree. The minor differences in the levels of
skill proposed by the parties is not outcome determinative in this case.
Based on the prior art, Dr. Glancey’s opinion testimony and analysis,
and providing some, but minimal, weight to Prairie’s opinion testimony, we
determine that the evidence favors Patent Owner’s proposed level of skill,
primarily based on Dr. Glancey’s analysis and reasons summarized above.
Accordingly, we determine that a person of ordinary skill in a
technology pertinent to the challenged claims would have had an
undergraduate degree in mechanical engineering, agricultural engineering, or
similar field, and two years of experience designing agricultural products or
related machinery, or five years of experience designing agricultural
products or related machinery, without a four-year undergraduate

9 In patent jargon, a person of ordinary skill in the art is often referred to by
the acronym “POSITA” or “POSA”.
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engineering degree. A recipient of other academic degrees may qualify as a
person of ordinary skill if they have taken coursework or have experience in
the pertinent technology. Additional education could offset less work
experience; additional work experience could offset less education or
coursework.
C. Claim Construction
The Petition was filed on May 31, 2019. See Paper 8. This filing date
is after the Patent and Trademark Office implemented a rule on claim
construction adopting the same claim construction standard that would be
used to construe the claim in a civil action under 35 U.S.C. § 282(b). See
Changes to the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). The claim
construction standard used in a civil action under 35 U.S.C. § 282(b) is
generally referred to as the Phillips standard. See Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc). This rule applies to all petitions
filed on or after the rule’s effective date. 83 Fed. Reg. 51,340. Thus, the
new claim construction rule applies to this proceeding.
Under the Phillips standard, words of a claim generally are given their
ordinary and customary meaning. Phillips, 415 F.3d at 1312. “[T]he
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention.” Id. at 1313. Importantly, the person of ordinary skill
in the art is deemed to read the claim term not only in the context of the
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particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification. Id.
Petitioner submits that no terms need to be specifically construed for
purposes of resolving the issues raised in the Petition. Pet. 38. Although
taking this position in this proceeding, we note that Petitioner provides an
extensive analysis of the claim term “endless member.” See id., 38–41,
n.9, 10.
Patent Owner notes that the District Court in the Delaware Case
construed the terms “endless member” and “seed delivery apparatus” (PO
Resp. 2–3 (emphasis omitted) (citing Ex. 1038)). The District Court
construed “endless member” to mean “a continuous conveyor forming a
loop, such as a belt or a chain.” Ex. 1038, 2. The District Court construed
“seed delivery apparatus” to mean an apparatus “that removes seed from the
seed meter by capturing the seed and then delivers it to a discharge
position.” Ex. 1038, 3. The Court’s Order states its conclusions on claim
constructions without any discussion or analysis. See Ex. 1038.
Patent Owner states “[t]here is no need for the Board to depart from
these constructions here. Petitioners do not contend otherwise.” PO
Resp. 2.
“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999)). We determine that an explicit construction of the
claims is not necessary for the purposes of determining whether the
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challenged claims are not patentable based on the challenge Petitioner
presented.
D. Ground 1
The sole Ground of unpatentability asserted by Petitioner is that
claims 1, 2, 4–11, and 13 would have been obvious over Hedderwick,
Yamahata, and Koning. Pet. 41–8310.
1. Hedderwick (Ex. 1003)
We make the following findings of fact concerning Hedderwick.
Hedderwick discloses a “‘precision seeder’ . . . to deposit single seeds
at predetermined spacings in seed beds . . . [or] in unprepared soil.”
Ex. 1003, 1:5–14. Hedderwick also discloses that if seeds are planted as
doubles or triples the two seedlings from such a planting will tend to kill off
one another. If the seedlings are too close together then they also tend to
choke off one another and if they are too far apart then the economy of the
business is adversely affected as more space than is essential would be used.
Id. at 1:14–21.
Figure 4, annotated by Petitioner (Pet. 46) reproduced below,
discloses a side elevation view of one embodiment of the disclosed seeder.
See Ex. 1003, 1:108–110.

10 In footnote 10 of the Petition, Petitioner states “[t]he ’922 patent describes
the ‘endless member’ as “a brush belt with bristles,” or belt with other
materials, that “grip the seed.” Petitioner then asserts that “[s]hould the
Patent Owner argue that the claimed ‘endless member’ is broader than this,
and includes other types of endless belts, such as flighted belts or belts with
cells, then the claims of the ’922 patent are still unpatentable in view of
Hedderwick and Yamahata, either with or without Koning’s brush belt.”
Pet. 4041, n.10. Petitioner, however, has not addressed in substantive detail
this speculative possibility in this proceeding. Patentability based on
Hedderwick and Yamahata, without Koning, is not before us.
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Figure 4 shows the components of seeder unit 120, which comprises
hopper 122, sub hopper 126, singling disc 130. Id. at 4:6–10. Figure 4 also
shows endless belt 134, with fins 135 “projecting upwardly therefrom,”
which rides in guideway 137. Id. at 4:23–28. The belt and fins define
“cells” that align with orifices 129 of disc 130. Id. at 4:25–5:2. Seeds are
released singly from orifices 129 and rotated to positions that mate with the
cells of the endless belt and fins. Id. at 5:51–60. Seeds 148 are conveyed
down along moving belt 134, driven by counterclockwise-turning sprocket
132, to a position behind plow 146, where gravity forces the seeds along fins
135 to ensure uniform positioning of seeds. Id. at 5:72–78. The seeds are
conveyed until they reach a discharge opening slightly above bottom dead
center of the bottom pulley over which the endless belt rides, whereby each
seed rests against a fin at the moment of discharge. Id. at 6:60–72.
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2. Yamahata (Ex. 1011)
We make the following findings of fact concerning Yamahata.
Yamahata relates to “a device for guiding falling seeds in a vacuum
seeder.” Ex. 1011, 2:26–27. The vacuum seeder includes a rotating seed
board in which a vacuum is created to suction seeds into seed holes, and
when the vacuum is shut off, the seeds drop from the seed holes. Id. at
2:29–34. Figures 1 and 2, as annotated by Petitioner (Pet. 63, 65,
respectively), are reproduced below.

Figure 1 depicts a cross-sectional view showing a vacuum seeder
using an exemplary guide device, and Figure 2 is a cross-sectional view
from plane II-II in Figure 1. Ex. 1011, 4:27–30. As seen in Figures 1 and 2,
seed board 1 is part of rotating body 2, and includes a plurality of seed holes
4 that “are formed in the seed board 1 at equal circumferential spacing,” and
shut roller 6 “closes the seed holes 4 from the inside at a predetermined
position.” Id. at 3:12–22.
Yamahata discloses that “some seeds get stuck in the seed holes and
do not drop from the seed holes even when the suction is stopped by the shut
roller.” Id. at 2:35–37. Thus, Yamahata uses guide 10 having guide surface
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17 “intersecting the trajectory of the seed holes 4,” so that “the seed 16 is
guided along the guide surface 17 of the guide 10 and is removed from the
seed hole 4.” Id. at 3:34–35, 4:11–13. In this way, if a seed is stuck in seed
hole 4 and “does not fall from the seed hole 4 even after the suctioning force
has been lost in the seed hole 4 due to the shut roller 6, the guide 10 forcibly
removes the seed from the seed hole 4,” so that “all seeds 16 drop from the
seed board 1 at a predetermined position as indicated by arrow B, and the
sowing interval at which each seed drops is regular.” Id. at 4:13–20.
3. Koning (Ex. 1004)
We make the following findings of fact concerning Koning.
Koning discloses a planting machine for potatoes, bulbs or similar
seed crop. Ex. 1004, 1:5–17. The objective of the disclosed planting
machine is to ensure a particularly uniform distribution of the seed crop,
even if the seed crop has different sizes and if the shape of the seed crop is
irregular. Id.
Figure 2 of Koning, reproduced below, shows one embodiment of the
claimed planting machine.
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As shown in Figure 2, the planting machine generally includes hopper
3, conveying member 23, flat belt 25, and planting foot 30 at the “delivery
end” of conveying member 23, and “rollers 38 provided with brush hair” to
provide “a uniform feed of seed crop.” Id. at 3:44–4:21, 4:37–41, 4:68–5:2.
Figure 4 of Koning, annotated by Petitioner (Pet. 47) and reproduced
below, discloses a side view of a different embodiment of a planting
machine, on which Petitioner relies.

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Figure 4 of Koning discloses conveying member 23 having a portion or
part 40 thereof that extends in a backward direction to a point in furrow 41.
Id. at 5:3–6. Belt 44 is above part or portion 40 of conveying member 23, is
guided around rollers 42 and 43, and includes brush hairs 45. Ex. 1004, 5:6–
8. Koning makes clear that it is brush hairs 45 of belt 44 that hold the seed
crop on part 40 of belt or conveying member 23, so that the seed crop
delivered by the conveying members are delivered at “the same distance in
relation to each other in the furrow 41.” Id. at 5:8–14. Thus, in Koning, it is
the combination of two belts or conveying members, belt 44 with brush hairs
45, and belt 23 that function together to convey seeds to furrow 41.
Id. at 5:11–14.
4. Independent Claim 1
Petitioner provides a clause-by-clause analysis of each recited element
in claim 1 asserting where each claimed element and limitation11 is shown in
Hedderwick, Yamahata, and Koning. See generally, Pet. 41–68.
Throughout this analysis, Petitioner cites the declaration testimony of
Mr. Prairie for evidentiary support. Petitioner concludes for claim 1 that
“Hedderwick in view of Koning and Yamahata renders obvious each
element of claim 1.” Id. at 68 (emphasis added). See Stratoflex.,
713 F.2d at 1537 (“[T]he question under 35 U.S.C. § 103 is not whether the
differences themselves would have been obvious. Consideration of
differences, like each of the findings set forth in Graham, is but an aid in
reaching the ultimate determination of whether the claimed invention as a
whole would have been obvious.”). As we explain below, Petitioner fails to
meet its burden of proving the claimed invention as a whole would have

11 Petitioner labels these clauses “Elements” 1[a–j]
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been obvious because there is no persuasive evidence of a rationale why a
person of ordinary skill would stitch together various pieces of the
references, as proposed by Petitioner. As stated in KSR, “a patent composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art.” KSR, 550
U.S. at 418. This is so because “inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed discoveries almost
of necessity will be combinations of what, in some sense, is already known.”
Id. at 418–419. This is not a new concept in the law. See, e.g., Raytheon
Co. v. Roper Corp., 724 F.2d 951, 961 (Fed. Cir. 1983) (Markey, C.J.)
(“. . . virtually every claimed invention is a combination of old elements”)
(citations omitted).12
a) Overview of the Parties’ Contentions
Petitioner contends that “a POSITA seeking to maximize control over
seed movement would have been motivated to combine the teachings of
Hedderwick and Koning by replacing Hedderwick’s endless belt with
Koning’s brush belt to achieve the disclosed benefits of more accurate seed
spacing.” Pet. 48 (citing Ex. 1002 ¶ 96); see also id. at 60 (“a POSITA
seeking to increase control over seed spacing would have been motivated to

12 As Judge Markey summarized this statutory principle of patent law,
The question is not, or never should be, whether all of the
elements in the combination are old. Only God works from
nothing. Man must work with old elements. The question should
be whether the combination itself is patentable. The statute, 35
USC §103, says the invention must be considered ‘as a whole,’
making totally irrelevant the age of the elements in the invention.
Howard T. Markey, Why Not the Statute 65 J. Pat. Off. Soc’y 331, 334
(1983).
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combine the teachings of Hedderwick and Koning by replacing
Hedderwick’s finned endless belt with Koning’s brush belt to achieve the
known benefits of more uniform seed spacing.”). Petitioner further explains
the proposed combination as follows:
Hedderwick’s seed meter disk would rotate to move individual
seeds to the point where the seed meter disk ‘mates with’ the
opening in the casing. Ex. 1003-Hedderwick, 5:53-60 (‘Seeds
148 are . . . rotated to positions just above the point where the
edge of disc 130 mates with orifice 141 through casing 137.’).
At this mating point, Koning’s brush belt would, in turn, receive
the seeds from the seed meter disk and hold the seeds in place
with respect to each other as it conveys them to the ground.
Id. at 48–49 (citing Ex. 1002 ¶¶ 97, 98).
Additionally, Petitioner explains that when the teachings of
Hedderwick and Koning are combined, “an endless member (Koning’s
brush belt) would convey seed along the inner surface of an elongated
housing (Hedderwick’s casing) from the first opening (Hedderwick’s intake
opening/orifice 141) to the second opening (Hedderwick’s discharge
opening).” Pet. 55 (citing Ex. 1002 ¶ 104).
Petitioner further explains that according to the combined teachings of
Hedderwick and Koning, “a seed delivery apparatus (Koning’s brush belt in
Hedderwick’s casing) would rotate around first and second pulleys
(Hedderwick’s driven sprocket 132 and idler sprocket 152). Id. at 57 (citing
Ex. 1002 ¶ 106).13

13 The Specification of the ’922 patent states that the “endless member of the
delivery system has been described as being a brush belt with bristles” (Ex.
1001, 7:40–41), but neither a “brush belt” nor a “brush belt with bristles” is
recited in any of the challenged claims, which refer only to a “seed delivery
apparatus” (Ex. 1001, 7:59, 63, 8:38, 42) and/or an “endless member” (id. at
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Regarding Yamahata, Petitioner asserts that, when combined with
Hedderwick and Koning, Yamahata teaches a loading surface (guide surface
17 of Yamahata’s guide 10) that is stationary relative to the elongated
housing (Hedderwick’s casing) and positioned to contact and guide seed
(from Hedderwick’s seed meter disc 130) toward the endless member
(Koning’s brush belt). Id. at 61 (citing Ex. 1002 ¶ 113). It is Petitioner’s
position that Yamahata uses a stationary loading surface (“guide surface 17”
of “guide 10”) that contacts seeds in the seed holes to release them from the
disk “at a predetermined position,” and guides them towards the ground.
Id. at 64 (citing Ex. 1011, 4:9–22).
Petitioner asserts that “a POSITA would have been motivated to
position Yamahata’s stationary guide immediately above, or proximate to,
Hedderwick’s intake opening, so that the stationary guide contacts and
guides the seeds from Hedderwick’s seed meter disk through Hedderwick’s
intake opening (orifice 141).” Pet. 66 (citing Ex. 1002 ¶ 119). When
Hedderwick’s finned endless belt is replaced with Koning’s brush belt, it is
Petitioner’s position that Yamahata’s stationary guide “would contact and
guide the seeds from Hedderwick’s seed meter disk directly towards
Koning’s brush belt through Hedderwick’s intake opening (orifice 141).”
Id. (citing Ex. 1002 ¶ 119).
Petitioner relies on Hedderwick and Yamahata for the basic structure
of the claimed apparatus or steps of the claimed method, but relies on
Koning’s belt 44 with brush hairs 45 (generally referred to as a “brush belt”)
to replace endless belt 134 in Hedderwick and to serve as the claimed

8:5, 6, 12). Nonetheless, we address the ground and references as asserted
by Petitioner.
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endless member. Pet. 60 (“a POSITA seeking to increase control over seed
spacing would have been motivated to combine the teachings of Hedderwick
and Koning by replacing Hedderwick’s finned endless belt with Koning’s
brush belt to achieve the known benefits of more uniform seed spacing.”).
Petitioner makes clear that it “[does] not rely on Hedderwick alone for
the seed delivery apparatus because [Hedderwick] allows gravity to impact
seed movement.” Pet. 47. Petitioner explains that Hedderwick “describes
that the seeds may move about within the cells of its finned belt.” Id. (citing
Ex. 1003, 5:72–81). Petitioner asserts that “Koning discloses a system using
a brush belt with bristles to hold seeds stationary with respect to each other
as they are delivered to the ground so that they are planted at a reliably
uniform spacing.” Pet. 47 (emphasis added). As we explained above,
Koning’s system includes both belt 44 (with bristles 45) and belt 23
cooperating together to convey seeds. There is no suggestion in Koning that
belt 44 would or could function without belt 23. Petitioner concludes that a
person of ordinary skill “seeking to maximize control over seed movement
would have been motivated to combine the teachings of Hedderwick and
Koning by replacing Hedderwick’s endless belt with Koning’s brush belt
[i.e., belt 44] to achieve the disclosed benefits of more accurate seed
spacing.” Id. at 48. Thus, it is clear that Petitioner’s asserted basis of
unpatentability is to replace endless belt 134 of Hedderwick with Koning’s
brush belt 44 with bristles 45.14 Id.

14 Although the parties, and thus the Board, focus on whether it would have
been obvious to modify Hedderwick with the brush belt of Koning, the
challenged claims do not include the term “brush belt.” We do not hold, and
this Decision should not be understood to suggest, that the “endless
member” claim term in the ’922 patent requires a brush belt. The challenge
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Petitioner summarizes its view of how Hedderwick, as modified by
Koning, would function, as follows: “Hedderwick’s seed meter disk would
rotate to move individual seeds to the point where the seed meter disk ‘mates
with’ the opening in the casing. At this mating point, Koning’s brush belt
would, in turn, receive the seeds from the seed meter disk and hold the seeds
in place with respect to each other as it conveys them to the ground.” Pet.
48–49 (citations omitted).
As part of its rationale for the proposed combination of references,
Petitioner asserts:
Each of the three references is in the same field (agricultural seed
planting), identifies the same problem (suboptimal seed spacing),
and purports to solve this problem using systems to control the
movement of seeds to the ground. Further, each discloses the
benefits of using its features to obtain increased control over seed
movement to achieve more uniform seed spacing.
Pet. 31 (citing Ex. 1002 ¶ 72).
Petitioner also asserts that “a POSITA desiring finer control over seed
spacing would have been motivated to combine the teachings of Koning’s
brush belt with Hedderwick to deliver seeds the same distance apart and
with a consistent velocity.” Id. at 34.

Petitioner asserts, however, is to replace the endless belt of Hedderwick with
Koning’s brush belt, so that is the challenge we must evaluate. See SAS,
138 S. Ct. at 1356 (“the petitioner’s petition . . . is supposed to guide the life
of the litigation,” and it would “not be proper for the Board to deviate from
the grounds in the petition and raise its own obviousness theory.”);
Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1336 (Fed. Cir.
2020) (quoting SAS, 138 S. Ct. at 1356) (“the Board does not ‘enjoy[] a
license to depart from the petition and institute a different inter partes review
of [its] own design.’”).
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According to Petitioner, the reason why a person of ordinary skill
would have combined the disclosures of Hedderwick and Koning would
have been “to obtain finer control over seed placement.” Id.
Patent Owner takes a different view of Petitioner’s asserted
unpatentability. According to Patent Owner, Petitioner relies on “hindsight”
to support its motivation to combine the asserted references and also asserts
that there is no reasonable expectation of success (e.g., PO Resp. 15–19, 30–
56; Sur-Reply 4–18); Koning is “non-analogous art.” (e.g., PO Resp. 5, 9–
14; Sur-Reply 2–4); and Petitioner should be estopped from contending that
Koning is not non-analogous art (e.g., Pet. 5–9; Sur-Reply 19–22).
b) Motivation to Combine and Reasonable Expectation of Success
Of the many disputed issues summarized in the preceding section, our
analysis focuses on whether an ordinarily skilled artisan would have been
motivated to combine the references in the manner Petitioner proposes, and
would have reasonably expected success in doing so. We focus primarily on
the use of Koning’s brush belt in the proposed combination of references.
Because this issue is dispositive of Petitioner’s challenge, it is unnecessary
for us to resolve the other disputed issues. See, e.g., Adidas AG v. Nike, Inc.,
963 F.3d 1355, 1359 (Fed. Cir. 2020) (affirming Board’s determination that
claims were not shown to be obvious because the petitioner had not
demonstrated that an ordinarily skilled artisan would have been motivated to
combine the references); Samsung Electronics Co. v. Elm 3DS Innovations,
LLC, 925 F.3d 1373, 1383 (Fed. Cir. 2019) (determining that it was
unnecessary to reach other issues when reasonable expectation of success
was dispositive).
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Because the proposed combination, as Petitioner chose to frame it,
includes seeds being deposited from above into Koning’s “delivery system,”
which is a moving brush belt, it is incumbent on Petitioner to show that an
ordinarily skilled artisan would have been motivated to combine the
references in that proposed manner and would have reasonably expected
success in doing so. See Adidas, 963 F.3d at 1359–60; Samsung, 925 F.3d at
1382–83. The Federal Circuit has made clear that a satisfactory explanation
of “how the combination of the . . . references [is] supposed to work” is
necessary to support “a conclusion that a relevant skilled artisan would have
been motivated to make the combination and reasonably expect success in
doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994
(Fed. Cir. 2017) (emphasis in original).
In determining whether there would have been a motivation to
combine prior art references to arrive at the claimed invention, it is
insufficient to simply conclude the combination would have been obvious
without identifying any reason why a person of skill in the art would have
made the combination. Metalcraft of Mayville, Inc. v. The Toro Co., 848
F.3d 1358, 1366 (Fed. Cir. 2017). “The question is not whether the various
references separately taught components of the [ ] Patent formulation, but
whether the prior art suggested the selection and combination achieved by
the [ ] inventors.” Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265, 1273
(Fed. Cir. 2018).
As asserted by Patent Owner, “Koning’s [brush] belt does not convey
seeds; it merely “hold[s] the potatoes lying on the conveying members 23.”
PO Resp. 17 (citations omitted). Patent Owner further explains that
“[f]undamentally, Koning’s [brush] belt, which is intended to steady
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potatoes while they are conveyed, is not a conveyor belt. Instead, it is a
moving belt positioned over top of the potatoes not intended to support the
weight of those objects.” Id. at 18 (emphasis added). Dr. Glancey opines,
with supporting data and analysis, that conveying member 23 in Koning
“supports about 87% of the seed potato weight in the orientation taught by
Koning.” Ex. 2208 ¶ 135. He concludes that “it is clear from this proof that
the Koning belt with brush hairs cannot and does not support the weight of
the seed potatoes being conveyed to the soil.” Id.
Additionally, Patent Owner asserts:
Koning does not suggest using a brush-belt for retaining and
conveying seeds in the absence of a separate conveying member
to bear their weight and a POSA would not predict that such a
belt could be used successfully for that purpose because, for
among other reasons, a POSA would not predict that such a belt
would successfully receive, retain or convey small seeds on its
own due to the unique and unpredictable dynamics of such a belt.
PO Resp. 18 (citing Ex. 2208, ¶¶ 134–137, 162–166).
Dr. Glancey, Patent Owner’s expert declarant, testifies that “[a]
POSITA would not have isolated Koning’s belt with brush hairs from
Koning’s other teachings for combination with other non-analogous systems,
because Koning’s [brush] belt was not—and was not taught as being—a
modular ‘off the shelf’ component with predictable uses.” Ex. 2208 ¶ 132.
Dr. Glancey further explains, “[a] POSITA reviewing Koning’s disclosure of
using a belt with brush hairs to cover and hold potatoes conveyed on a
separate conveying surface could not predict that such a belt would
successfully receive, retain or convey small seeds on its own as would be
required in Petitioners’ proposed combination.” Ex. 2208 ¶ 134.
Dr. Glancey provides an analysis of why he reaches this conclusion:
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the properties of brush belts, especially belts moving at speeds
corresponding to seed dispensing rates common for such small
seeds, make it unlikely that seeds will enter the belt in the
absence of a loading surface especially adapted to insert the seeds
into the belt, and nothing in Koning’s disclosure suggests using
a belt with brush hairs to support the entire weight of the seeds
or to convey them without the presence of a separate conveying
member.
Id. Dr. Glancey also concludes that “A POSITA would not have been
motivated to isolate Koning’s belt with brush hairs, remove it from Koning’s
planting machine, adapt it for use in completely different system, and
repurpose it to perform a new and undisclosed function (as a conveyor), as
proposed by Petitioners.” Id. ¶ 137. According to Dr. Glancey’s testimony,
A device such as Koning’s [brush] belt that covers relatively
massive seed objects such as potatoes is not the same as a device
such as Hedderwick’s finned belt which alone carries smaller
seeds. The only evidence I have seen to suggest that a POSITA
would use a brush belt for carrying seeds rather than covering
them is the ’922 Patent.
Id. ¶ 143.
Additionally, Patent Owner asserts that the complex fluid-like
dynamics of moving brush hairs are not readily adaptable to carrying small
objects. PO Resp. 23–30 (citing Ex. 2208 ¶¶ 162–173).
Neither the references, other evidence, nor Mr. Prairie provide
sufficiently persuasive evidence, even in combination, to establish why a
person of ordinary skill would have modified Hedderwick by (1) selectively
gleaning only a portion of Koning’s conveying system, i.e., belt 44 with
bristles 45, (2) selectively excluding Koning’s belt 23, and then (3)
modifying Koning’s brush belt by reversing its orientation so that it carries
seeds deposited into the bristles, as in the ’922 patent, rather than covering
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and guiding seeds carried by a separate and distinct conveyor belt, as in
Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir.
2016) (finding an absence of a motivation to reverse parts to an orientation
that was “totally backwards” from what one of skill in the art would even
attempt). Petitioner’s arguments do not acknowledge the different function
of Koning’s brush belt, or explain why a person of ordinary skill would have
been motivated to adapt Koning’s brush belt to such a use and reasonably
expect success in doing so.
We determine Petitioner fails to meet its burden of providing a
sufficiently persuasive explanation or reason for concluding that one of skill
in the art would have combined these particular references to produce the
claimed invention. “Without any explanation as to how or why the
references would be combined to arrive at the claimed invention, we are left
with only hindsight bias.” Metalcraft, 848 F.3d at 1367. “[W]e cannot
allow hindsight bias to be the thread that stitches together prior art patches
into something that is the claimed invention.” Id.
The existence of common elements found in both the challenged
claims and the references relied on by Petitioner does not establish that the
challenged claims would have been obvious.
The persuasiveness of Mr. Prairie’s testimony—i.e., that an ordinarily
skilled artisan could have adapted Koning’s brush belt for use in the
proposed combination, where seeds are deposited onto the brush belt from
above—is undermined by his testimony that he “can’t recall a time where
I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9.
During his deposition, Mr. Prairie resisted agreeing that the potatoes
are lying on the conveyor in Koning, testifying that he takes from Koning’s
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description that “they are captured by that belt with brush hairs” (Ex. 2193,
99:21–22) and that “there is some weight that’s along the conveying member
23” (id. at 98:16–17). Mr. Prairie testified that he “do[es]n’t believe the
brush hairs support the full weight of the potatoes,” but that Koning did not
provide him sufficient information to answer whether the conveying member
supports the majority of the weight of the potatoes. Id. at 106:22–107:21. In
our view, it is clear from Koning’s description that the seeds lie on the
conveyor 23 and the purpose of the brush belt is to maintain the position of
the seeds relative to each other while they are moved by conveyor 23.
Ex. 1004, 3:16–24, 5:3–14, Fig. 4.
Mr. Prairie’s characterization of Koning’s conveying system is
unpersuasive because, as discussed above, Koning does not teach using a
brush belt alone to receive and carry seeds that have been inserted into the
free ends of brush hairs attached to the brush belt. Mr. Prairie does not
account for that difference by explaining why an ordinarily skilled artisan
would expect Koning’s brush belt, alone, without Koning’s conveying belt
23, to effectively capture and carry seeds inserted into the free ends of the
brush hairs, as in the proposed combination.
As to Koning’s relevant teachings about how its conveying belts 23
and brush belt 44 operate, we credit Dr. Glancey’s testimony over Mr.
Prairie’s equivocal and unpersuasive testimony.
Petitioner and Mr. Prairie (Ex. 1002 ¶¶ 78–83) focus on the brush belt
of Koning (belt 44 with brush hairs 45), without considering that the brush
belt is only one element of a two-element conveying system, or endless
member. Koning’s brush belt works in concert with conveying member 23
to hold seeds in place as they are conveyed into the furrow.
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Petitioner argues that “[t]he use of brushes in planters to control seed
movement was also well-known.” E.g., Pet. 16 (citing Ex. 1015). Thiemke
(Ex. 1015) 15, however, does not disclose a brush belt that carries seeds
released into the brush hairs.
Figures 3 and 4 of Thiemke are reproduced below:

15 U.S. Pat. No. 6,651,570 B1, issued Nov. 25, 2003.
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Figures 3 and 4 of Thiemke are perspective and side views,
respectively, of a seed placement system. Ex. 1015, 3:5–9.
Thiemke explains that seeds discharged from seed metering system 28
are guided by deflector 60 into a nip area between wheel 42 and seed slide
40. Id. at 5:47–54. Thiemke teaches that a “gap of approximately one
millimeter between the circumferential periphery of wheel 42 and seed slide
40 ensures that the seed is gripped by gripping outside layer 54” (id. at 5:54–
57) which can be formed of nylon bristles (id. at 5:1–10). Thiemke does not
suggest that brush belts can capture seeds released into the brush hairs;
indeed, deflector 60 prevents seed from dropping onto the top of wheel 42 in
a manner that would be comparable to how Petitioner proposes seed would
be captured by Koning’s brush belt in the proposed combination.
In summary, we are not persuaded that Petitioner has met its burden
of showing, by a preponderance of the evidence, that ordinarily skilled
artisans would have been motivated to selectively glean Koning’s belt 44
with brush hairs 45 from Koning’s “delivery system,” which also includes
conveying member 23, and then reorient the belt 44 so that the brush hairs
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receive the seeds from Yamahata’s seed guide in the proposed manner, and
would have reasonably expected success in doing so.
The ’922 patent explains that a seed can be inserted into a moving
brush belt by using the outer surface of a loading wheel to pinch seeds off
the seed disk into the bristles of the brush belt. Ex. 1001, 4:17–38, Fig. 3;
see Ex. 2208 ¶ 43. Petitioner does not point to any prior art that teaches
such a solution.
Petitioner relies on Yamahata’s seed guide to disclose the claimed
blocking loading surface. Pet. 61–67. We agree with Patent Owner that
Petitioner has not shown that an ordinarily skilled artisan would have been
motivated to use Yamahata’s seed guide as Petitioner proposes to load seed
in a moving brush belt, and would have reasonably expected success in
doing so. PO Resp. 30–56.
Yamahata explains that the function of its seed guide is to “forcibly
remove[] the seed from the seed hole 4” on the vacuum seeder so that “all
seeds 16 drop . . . at a predetermined position . . . and the sowing interval at
which each seed drops is regular.” Ex. 1011, 4:16–20. Pointing to this
teaching of reliable seed release, Petitioner’s stated motivation for
incorporating Yamahata’s seed guide into the proposed combination is to
increase control over seed movement. Pet. 64–66. But Yamahata’s teaching
that the seed guide scrapes off seeds stuck in vacuum holes does not support
that an ordinarily skilled artisan would expect the seed guide to successfully
load seed into a moving brush belt, as in Petitioner’s proposed combination.
Yamahata does not involve a brush belt, and Yamahata’s seed guide is
intended to ensure that “all seeds 16 drop . . . at a predetermined position.”
Ex. 1011, 4:17–19. For all the reasons discussed above, Petitioner has not
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shown that an ordinarily skilled artisan would expect success from a system
in which a seed is simply dropped from above onto a moving brush belt.
And Petitioner does not persuasively explain why an ordinarily skilled
artisan would have been motivated to, and would have reasonably expected
success in, using Yamahata’s seed guide to load seed into a brush belt.
c) Conclusion for Claim 1
KSR cautions a factfinder to be aware of the “distortion caused by
hindsight bias” and to be “cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421. Petitioner’s proposed combination of the
cited references does not meet its burden of providing a sufficiently
persuasive evidence-based reason why a person of ordinary skill would have
selectively gleaned isolated elements from Koning, modified their operation,
and then combined them with Hedderwick and Yamahata to arrive at the
invention recited in independent claim 1.
Based on the Petition and the evidence of record, we determine that
Petitioner has not established by a preponderance of the evidence that claim
1 is unpatentable.
5. Independent Claim 9
Independent claim 9, similar to claim 1, is directed to a “method of
delivering a seed from a seed meter to a furrow.” Ex. 1001, 8:31–43.
We have not been directed to any persuasive evidence of any
substantive differences between claims 1 and 9 that would cause a different
analysis or conclusion for claim 9 from the conclusion reached for claim 1.
Accordingly, based on the analysis and evidence discussed above for claim
1, we determine that Petitioner has not established by a preponderance of the
evidence that claim 9 is unpatentable.
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6. Dependent Claims 2, 4–8, 10, 11, and 13
Dependent claims 2 and 4–8 depend from claim 1. Dependent claims
10, 11, and 13 depend, directly or indirectly, from claim 9. These claims are
unpatentable based on the same analysis and for the same reasons as the
claims from which they depend.
Accordingly, based on the analysis and evidence discussed above for
independent claims 1 and 9, we determine that Petitioner has not established
by a preponderance of the evidence that dependent claims 2, 4–8, 10, 11, and
13 are unpatentable.
IV. CONSTITUTIONAL CHALLENGE
In a single sentence, Patent Owner states it “challenges the
constitutionality of, and the panel’s authority to adjudicate, this proceeding
under Arthrex, Inc. v. Smith & Nephew Inc., 941 F.3d 1320 (Fed. Cir.
2019).” PO Resp. 56.16 No additional argument or explanation of Patent
Owner’s challenge is presented.
This constitutional issue has been addressed by the Federal Circuit’s
decision in Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures
the constitutional violation.”); see also Arthrex, Inc. v. Smith & Nephew,
Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in denial of
rehearing) (“Because the APJs were constitutionally appointed as of the
implementation of the severance, inter partes review decisions going
forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further for this Decision.

16 We note that the Supreme Court has accepted this case for review.
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020).
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V. CONCLUSION
Petitioner has not established by a preponderance of the evidence that
claims 1, 2, 4–11, and 13 are unpatentable.
VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 4–11, and 13 have not been proven by a
preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot; 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.
In summary:
Claims

35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 4–
11, 13
103 Hedderwick,
Yamahata, Koning
1, 2, 4–11, 13
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FOR PETITIONER:
Grant Rowan
Mary Sooter
Natalie Pous
WILMER CUTLER PICKERING HALE AND DORR LLP
grant.rowan@wilmerhale.com
mindy.sooter@wilmerhale.com
natalie.pous@wilmerhale.com

FOR PATENT OWNER:
Jay Alexander
Peter Chen
Nicholas Evoy
Rajesh Paul
Richard Rainey
COVINGTON & BURLING LLP
jalexander@cov.com
pchen@cov.com
nevoy@cov.com
rpaul@cov.com
rrainey@cov.com