Deere & Company

Patent Trials and Appeals Board

Dec 15, 2020

IPR2019-01051 (P.T.A.B. Dec. 15, 2020)

Trials@uspto.gov Paper 95
571-272-7822 Entered: December 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
PRECISION PLANTING, LLC and AGCO CORP.,
Petitioner,
v.
DEERE & COMPANY,
Patent Owner.
_______________

IPR2019-01051
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_______________

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

TARTAL, Administrative Patent Judge.

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

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We have jurisdiction to conduct this inter partes review
under 35 U.S.C. § 6. This Final Written Decision is issued pursuant
to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2018). For the reasons
discussed below, we determine that a preponderance of the evidence fails
to show that any of claims 1‒20 (the “Challenged Claims”) of U.S. Patent
No. 9,807,924 B2 (Ex. 1001, “the ’924 patent”) are unpatentable.
I. INTRODUCTION
A. Summary of Procedural History
Precision Planting, LLC and AGCO Corp. (collectively, “Petitioner”)1
filed a Petition (Paper 4, “Pet.”) requesting inter partes review of the
Challenged Claims. We instituted inter partes review of the Challenged
Claims on the single ground of unpatentability asserted in the Petition.
Paper 18. Deere & Company (“Patent Owner”) filed a Patent Owner
Response. Paper 34 (“PO Resp.”). Petitioner filed a Reply to the Patent
Owner Response. Paper 57 (“Reply”) (under seal), 58 (publically accessible
with redactions). Patent Owner filed a Sur-reply to Petitioner’s Reply.
Paper 68 (“Sur-reply”).
Petitioner bears the burden of proving unpatentability of the
Challenged Claims by a preponderance of the evidence, and the burden of
persuasion never shifts to Patent Owner. See 35 U.S.C. § 316(e) (2012);
37 C.F.R. § 42.1(d) (2017); Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Oral argument was held and a
transcript of the hearing appears in the record. Paper 92 (Tr.). Additionally,

1 Petitioner identifies Monsanto Co. and Bayer AG as additional real parties
in interest. Pet. 6.
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Petitioner and Patent Owner each filed a motion to exclude opposed by the
other, which we address below in Section II.
B. Related Proceedings
The ’924 patent is a subject of Deere & Company v. AGCO
Corporation and Precision Planting LLC, Civil Action No. 1:18-cv-00827-
CFC (D. Del.). See Pet. 7; Paper 5, 1; Ex. 2005, 1.2 Petitioner also
identifies the following proceedings at the Board 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
IPR2019-01050 U.S. Patent No. 9,807,922
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.
C. The ’924 Patent
The ’924 patent, titled “Seeding Machine with Seed Delivery
System,” issued on November 7, 2017, from an application filed on
May 5, 2015. Ex. 1001, codes (22), (45), (54). The ’924 patent states it is

2 An action by Patent Owner asserting the ’924 patent against Precision
Planting LLC in Deere & Company v. Precision Planting LLC, Civil Action
No. 1:18-cv-00828-CFC was consolidated with the co-pending District of
Delaware case against AGCO Corporation. See Exs. 2003, 2004, and 2005.
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a continuation of both Application No. 14/504,801, filed on October 2, 2014,
and Application No. 12/364,010, filed on February 2, 2009. Id. at code (63).
The ’924 patent “relates 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.
The ’924 patent explains, as background of the invention, that
the “seed metering system receives the seeds in a bulk manner from the seed
hopper carried by the planter frame or by the row unit,” and that the “seeds
are singulated and discharged at a predetermined rate to the seed placement
or delivery system.” Id. at 1:38–51. The ’924 patent further describes
the “most common seed delivery system” as a “gravity drop system”
whereby “singulated seeds from the seed metering system merely drop into
the seed tube and fall via gravitational force from a discharge end thereof
into the seed trench.” Id. at 1:52–58. Although the seed tube in prior
systems may have a “rearward curvature to reduce bouncing of the seed as it
strikes the bottom of the seed trench and to impart a horizontal velocity to
the seed in order to reduce the relative velocity between the seed and the
ground,” according to the ’924 patent “differences in how individual seeds
exit the metering system and drop through the seed tube” cause undesirable
variation in seed spacing. Id. at 1:58–63.
The ’924 patent describes that its seed delivery system reduces seed
spacing variability by capturing the seed from the seed meter, moving the
seed down to a lower discharge point, and then accelerating the seed
“rearward to a horizontal velocity approximately equal to the forward travel
speed of the seeding machine such that the seed, when discharged, has a low
or zero horizontal velocity relative to the ground.” Id. at 2:25–40.
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Figures 2 and 3 of the ’924 patent are reproduced below.

Figure 2 illustrates a side view of row unit 16 of a seeding machine,
including seed hopper 24, seed meter 26, and seed delivery system 28
(shown in more detail in Figure 3). Id. at 2:46–47, 3:13–27. Seed stored in
seed hopper 24 is provided to seed meter 26 and carried by delivery
system 28 into a planting furrow or trench first formed by furrow openers 30
and then closed over the seed by closing wheels 34. Id. at 3:21–28.
Figure 3 illustrates an enlarged side view of seed delivery system 28,
including housing 48 adjacent to seed disk 50. Ex. 1001, 2:48–49, 3:40–51.
Seed disk 50 is generally flat with a plurality of apertures 52 that collect
seeds 56 from a seed pool, which “adhere to the disk by air pressure
differential on the opposite sides of the disk 50 in a known manner.” Id.
at 3:43–47. Seed from seed disk 50 is admitted to seed delivery housing 48
through upper opening 58. Id. at 3:54–55.
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Within housing 48, belt 64 with bristles 70 is supported by
pulleys 60, 62, one of which is a drive pulley.3 Id. at 3:56–59. In operation,
belt 64 rotates counterclockwise around the pulleys, causing distal ends 74
of bristles 70 to separate from one another as the belt curves around the
pulleys. Id. at 4:17–22. Loading wheel 86 adjacent upper opening 58 is
positioned such that the path of the seeds on disk 50 brings the seeds into
nip 88 formed between the loading wheel and distal ends 74 of bristles 70.
Id. at 4:3–8. As the path of belt 64 around the pulley ends, the bristle ends
close upon themselves and capture the seeds. Id. at 4:30–34. Side wall 53
of housing 48 works together with bristles 70 to hold the seed as it is moved
to ramp 84 near lower opening 78 from which the seed is discharged into the
seed trench. Id. at 3:64–4:2, 4:34–38, 4:43–46. The ’924 patent explains as
follows:
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 ’924 patent further states that “[w]hile brush bristles are
the preferred embodiment . . . other material types can be used to grip the
seed such as a foam pad, expanded foam pad, mesh pad or fiber pad.”
Id. at 7:41–45.

3 A belt with bristles or brush hairs is generally referred to by the parties as a
“brush belt.” See, e.g., Pet. 2–3; PO Resp. 20.
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D. Illustrative Claims
Challenged claims 1, 8, and 15 are independent, claims 2–7 depend
from claim 1, claims 9–14 depend from claim 8, and claims 16–20 depend
from claim 15. Claims 1 and 15, reproduced below, are illustrative of the
claimed subject matter.
1. A seed delivery apparatus comprising:
an elongated housing having a first opening through which seed
is received into the seed delivery apparatus, a second opening
through which seed exits the seed delivery apparatus, and an
elongated interior chamber along which seed is conveyed
from the first opening to the second opening; and
an endless member positioned within the elongated housing, the
endless member movable within the elongated interior
chamber of the elongated housing to receive seed from the
first opening and convey seed to the second opening, the
endless member shaped to maintain contact with a top of each
seed conveyed by the endless member along the elongated
interior chamber between the first and second openings of the
elongated housing.
Ex. 1001, 7:52–67.
15. A method of delivering a seed from a seed meter to a furrow,
the method comprising:
receiving the seed through a first opening defined in a housing;
receiving the seed within an endless member in the housing at
a first elevation;
driving the endless member about at least two axes spaced apart
from one another;
pushing the seed downward to a second elevation lower than
the first elevation by driving the endless member;
discharging the seed from the endless member at the lower
elevation; and
discharging the seed from a second opening defined in the
housing.
Id. at 8:60–9:6.
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E. Asserted Ground of Unpatentability
Petitioner contends that the Challenged Claims would have been
obvious under 35 U.S.C. § 103 over the combination of Hedderwick4 and
Koning.5 Pet. 9. Petitioner supports its challenge with expert testimony by
Randal K. Taylor. Ex. 1002 (Declaration); Ex. 1135 (Reply Declaration).
Dr. Taylor earned B.S., M.S., and Ph.D. degrees in Agricultural
Engineering. Ex. 1002 ¶ 2. He also has approximately thirty years of
experience in Agricultural Engineering, and is a Fellow in the American
Society of Agricultural and Biological Engineers (“ASABE”). Id. ¶¶ 3–9.
He is a named inventor on two U.S. patents. Id. ¶ 9. Dr. Taylor is a
Distinguished Professor in the Department of Biosystems and Agricultural
Engineering at Oklahoma State University. Id. ¶ 6.
In opposition, Patent Owner relies on the testimony of Dr. James L.
Glancey. Ex. 2207. 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. Id. ¶ 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.

4 U.K. Pat. Appl. GB 2,057,835 A, published April 8, 1981 (Ex. 1003,
“Hedderwick”).
5 U.S. Patent No. 4,193,523, issued March 18, 1980 (Ex. 1004, “Koning”).
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Petitioner argues that Dr. Glancey’s testimony is unreliable because
he is “a professional expert witness” who has served as an expert in 144
matters regarding a range of technologies, but has never served as an expert
in seed planting technologies; because his opinions have been excluded by
courts on three occasions; because he holds four patents that do not relate to
seed planting technologies; because he allegedly “conceded that he does not
understand what the test for obviousness of a patent was in 2003 or
in 2009;” and because his answers at his deposition were allegedly
inadequate in various ways. Reply 2–4.
Patent Owner responds that Dr. Glancey is a mechanical engineering
professor and registered professional engineer who has “extensive personal
and professional experience with farming and seed planting equipment,” and
that the three instances in which his testimony was excluded were personal
injury matters unrelated to seed-planting equipment. Sur-reply 33–34.
Patent Owner, in turn, attacks Dr. Taylor as having “never been qualified as
an expert,” for not analyzing “any brush-belts,” and because his answers at
his deposition were allegedly inadequate in various ways. Id. at 34.
Petitioner did not move to exclude the declaration testimony of
Dr. Glancey and Patent Owner did not move to exclude the declaration
testimony of Dr. Taylor. We have considered the parties arguments in
assessing the weight to be given to each declarant’s testimony.6

6 The record also includes testimony we considered from several witnesses
that we do not rely upon on topics relating to objective indicia of
nonobviousness or other matters. See Exs. 2025, 2031–2033.

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II. MOTIONS TO EXCLUDE
The party moving to exclude evidence bears the burden of proving
that it is entitled to the relief requested—namely, that the material sought to
be excluded is inadmissible under the Federal Rules of Evidence (“FRE”).
See 37 C.F.R. §§ 42.20(c), 42.62(a) (2019). In an inter partes review in
which we both decide admissibility and serve as the fact-finder, we are well-
positioned to determine and assign appropriate weight to evidence presented,
and we recognize that a complete record of the evidence is preferable to
facilitate public access as well as appellate review. See, e.g., Sony Computer
Entm’t Am. LLC v. Game Controller Tech. LLC, IPR2013-00634,
Paper 32 at 31 (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 Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)
(“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.”)). For the reasons provided
below, we deny-in-part and dismiss-in-part Petitioner’s Motion to Exclude
and dismiss Patent Owner’s Motion to Exclude.
A. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibits 2141–2143, 2186, 2187,
and 2198 based on FRE 901 as lacking authentication, portions of
Dr. Glancey’s declaration that rely on those exhibits, portions of
Dr. Glancey’s deposition testimony purportedly “resulting from leading
questions,” and Exhibits 2245, 2257, and 2271 as “untimely.” Paper 70, 1;
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see also Paper 86 (Petitioner’s Reply in support of its motion to exclude).
Patent Owner opposes Petitioner’s Motion to Exclude. Paper 77.
1. Exhibits 2141–2143, 2186, 2187, and 2198, and portions of
Dr. Glancey’s Declaration Relying on those Exhibits
Exhibits 2141–2143, 2186, 2187, and 2198 are videos and
photographs of brush belts. Petitioner argues that these videos and
photographs are unreliable and should be excluded, because Patent Owner
has not provided sufficient information about the brush belt that is the
subject of the videos and photographs and the circumstances in which the
videos and photographs were made. Paper 70, 4–9; Paper 86, 1–5.
Petitioner further argues that Dr. Glancey’s testimony does not authenticate
the videos because he did not create them and was unable to answer certain
questions about the brush belts’ characteristics during his deposition.
Paper 70, 9–10. Petitioner also argues that certain paragraphs of
Dr. Glancey’s declaration should be excluded because they “purport to rely
on the unauthenticated exhibits.” Id. at 10 (citing Ex. 2207 ¶¶ 163–165, 168,
169).
Petitioner’s arguments do not persuade us that Patent Owner’s
showing is insufficient under FRE 901. A proponent’s “burden of proof for
authentication is slight.” Lexington Insurance Co. v. Western Pennsylvania
Hospital, 423 F.3d 318, 328 (3rd Cir. 2015). Under FRE 901, the proponent
must make a showing “sufficient to support a finding that the item is what
the proponent claims it is.” Fed. R. Evid. 901(a); see also United States v.
Coohey, 11 F.3d 97, 99 (8th Cir. 1993) (“To meet this standard, the
proponent need only demonstrate a rational basis for its claim that the
evidence is what the proponent asserts it to be.”). Once that threshold is
satisfied, “the evidence goes to the [fact-finder] and it is the [fact-finder]
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who will ultimately determine the authenticity of the evidence.”
Threadgill v. Armstrong World Indus., Inc., 928 F.2d 1366, 1375 (3rd
Cir. 1991). Here, Dr. Glancey’s testimony is adequate to support a finding
that these videos and photographs are what Patent Owner claims they are,
i.e., brush belts being operated in various ways. See Ex. 1114, 133:14–
134:2; Ex. 2200 ¶¶ 162–164, 168, 169. Petitioner’s criticisms of the videos
and photographs go to the weight that should be assigned to the videos and
photographs, and Dr. Glancey’s testimony about them, and we have
considered Petitioner’s arguments in assessing the weight those materials
should carry. Thus, Petitioner’s motion to exclude Exhibits 2141–2143,
2186, 2187, and 2198, and Dr. Glancey’s testimony about those exhibits is
denied.
2. Portions of Dr. Glancey’s Deposition Testimony
Petitioner argues that Dr. Glancey’s testimony in response to leading
questions should be excluded. Paper 70, 12–13; Paper 86, 5. The portions
of Dr. Glancey’s deposition testimony that Petitioner argues should be
excluded are his responses during redirect at Exhibit 1115, pages 267–68.
See id. We do not rely on those portions of Dr. Glancey’s testimony, so we
dismiss as moot this aspect of Petitioner’s motion.
3. Exhibits 2245, 2257, and 2271
Petitioner argues that Exhibits 2245, 2257, and 2271 were submitted
by Patent Owner with its Sur-reply and should be excluded as untimely.
Paper 70, 13; Paper 86, 5. Because we do not rely on any of those exhibits
in our analysis, we dismiss as moot Petitioner’s motion to exclude them.
4. Conclusion
For the reasons provided above, Petitioner’s motion to exclude is
denied as to Exhibits 2141–2143, 2186, 2187, and 2198 and the portions of
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Dr. Glancey’s declaration that rely on those exhibits, and dismissed as moot
as to the testimony of Dr. Glancey in response to allegedly leading questions
and as to Exhibits 2245, 2257, and 2271.
B. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibits 1049, 1050, 1052, 1068,
1073, 1077, 1078, 1086, 1087, 1089, 1091, 1092, 1103, 1104, 1113–15,
1123, 1131–33, and 1135. Papers 73 (under seal), 74 (publically accessible
with redactions); see also Papers 88 (under seal), 89 (publically accessible
with redactions) (Patent Owner’s Reply in support of its motion to exclude).
Petitioner opposes Patent Owner’s Motion to Exclude. Papers 80 (under
seal), 81 (publically accessible with redactions).
Exhibits 1049, 1050, 1052, 1068, 1131, 1132, 1073, 1077, 1103,
and 1104, as well as the portions of Exhibit 1135 Patent Owner seeks to
exclude, all relate to arguments concerning objective indicia of
nonobviousness, which is an issue we do not reach. See Paper 73, 1–15.
Exhibits 1078, 1086, 1087, and 1123 are documents introduced during
depositions by Petitioner not otherwise cited in briefing. Paper 73, 7–8;
Paper 81, 7–8. Exhibits 1089, 1091, and 1092 relate to court orders or
opinions purportedly excluding Dr. Glancey’s opinions as unreliable in other
proceedings concerning different technologies than at issue in this case.
Paper 73, 8; Paper 81, 8. Exhibits 1113, 1114, 1115, and 1133 are
transcripts from Dr. Glancey’s depositions. However, Patent Owner does
not actually seek exclusion of those exhibits, only consideration of errata
sheets that Dr. Glancey prepared for those transcripts, which Patent Owner
filed as Exhibits 2266–2269. Paper 81, 10. Because we do not rely on the
materials that Patent Owner seeks to exclude, and also because we would
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ultimately find for Patent Owner even without excluding these exhibits, we
dismiss as moot Patent Owner’s motion to exclude.
III. ANALYSIS
A. Legal Standard for Obviousness
In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court
set out a framework for assessing obviousness under § 1037 that requires
consideration of four factors: (1) the “level of ordinary skill in the pertinent
art,” (2) the “scope and content of the prior art,” (3) the “differences between
the prior art and the claims at issue,” and (4) “secondary considerations” of
nonobviousness such as “commercial success, long felt but unsolved needs,
failure of others, etc.” Id. at 17–18; KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007). When a combination of references together discloses all of
the limitations in a claim, the Board “must determine whether there was
an ‘apparent reason to combine the known elements in the fashion claimed
by the patent at issue,’ and whether a person of skill in the art at the time of
the invention would have had a ‘reasonable expectation of success’ in
pursuing that combination.” Los Angeles Biomedical Research Institute v.
Eli Lilly & Co., 849 F.3d 1049, 1064 (Fed. Cir. 2017) (quoting KSR, 550
U.S. at 406 and Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc.,
825 F.3d 1360, 1373 (Fed. Cir. 2016) (citations omitted).

7 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 ’924 patent states that it is a continuation of an application
filed before March 16, 2013, we apply the pre-AIA versions of these
statutes. See 35 U.S.C. § 100(i).
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B. Level of Ordinary Skill in the Art
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., 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, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421.
Petitioner asserts 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, 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. 37 (citing Ex. 1002 ¶ 18).
Dr. Taylor opines this same level of ordinary skill, but adds the additional
sentence that “Such a person would have been familiar with the mechanics
and design of agricultural planters.” Ex. 1002 ¶ 18. Dr. Taylor does not
disclose the underlying facts or data on which his opinion is based. See
37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
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underlying facts or data on which the opinion is based is entitled to little or
no weight.”); TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1358 (Fed.
Cir. 2019) (“Conclusory expert testimony does not qualify as substantial
evidence.”) (citations omitted).
According to Patent Owner, a person of ordinary skill in the art would
have had an undergraduate degree in mechanical engineering, agricultural
engineering, or closely related field, and “about two years of experience
designing agricultural products or related machinery in industry or
academia,” or, alternatively, “about five years of experience designing
agricultural products or related machinery, without a four-year
undergraduate engineering degree.” PO Resp. 2 (citing Ex. 2207 ¶¶ 47–52).
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.
In support of Patent Owner, Dr. Glancey states that Petitioner’s
proposed level of ordinary skill is “too restrictive and sets the level of
ordinary skill in the art of the ’924 [p]atent too high.” Ex. 2207 ¶ 49.
Dr. Glancey provided the following reasons: (1) undergraduate engineering
curriculums in place in February 2009 focused on 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; (2) masters programs in engineering focus on research for
publication in peer-reviewed journals, rather than designing products for
industry; and (3) engineering technicians, who may not have formal
engineering degrees, “often have years’ worth of relevant hands-on
experience” that corresponds to a person of ordinary skill in the art.
Id. ¶¶ 50–52.
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Based on the evidence and arguments of record prior art, we
determine that a person of ordinary skill in the art 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
engineering degree. To the extent there is any inconsistency, we credit the
testimony of Dr. Glancey over Dr. Taylor because Dr. Glancey’s opinion
was more supported with more persuasive analysis and reasoning, as
summarized above. However, we note that the differences between the
parties’ proposed definition of the level of ordinary skill in the art are not
determinative. The analysis below would be materially the same under
either party’s proposed definition.
C. Claim Construction
“In an inter partes review proceeding, a claim of a patent . . . shall be
construed using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. 282(b).” 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) (codified at 37 C.F.R. § 42.100(b) (2019)) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018). That standard
“includ[es] construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.; see also
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
Petitioner asserts that the each claim should be construed “in
accordance with the ordinary and customary meaning of such claim as
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understood by one of ordinary skill in the art” and “no terms need to be
construed.” Pet. 35. Petitioner, however, also provides a lengthy footnote
providing an analysis of the claim term “endless member.” See id. at 35 n.7.
Patent Owner states that in the Delaware Case the court construed
“endless member” to mean “a continuous conveyor forming a loop, such as a
belt or a chain,” and 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.” PO Resp. 2–3 (citing Ex. 1038).
Patent Owner also proposes constructions for “endless member . . . movable
to push the seed,” as recited in claim 8, and “endless member accelerates
seed,” as recited in claim 12. Id. at 3–7.
We determine that no terms require express construction to resolve the
parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in
controversy need to be construed and “only to the extent necessary to
resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
Techs. in the context of an inter partes review).
D. Scope and Content of the Prior Art
1. Summary of Hedderwick
Hedderwick, titled “Precision Seeder,” describes “a seeding device
able to deposit single seeds at predetermined spacings.” Ex. 1003,
code (54), 1:5–8. The seeder includes a seed hopper that transfers seed to a
rotating vacuum disc, which has orifices around its periphery that receive
and retain seeds by pressure differential. Id. at 3:46–52.
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Figure 2 is reproduced below:

Figure 2 illustrates a “side elevational view of a seeder casing with the disc
in place and with surface portion broken away . . . to illustrate the operation
of the seeder.” Id. at 1:100–101. The vacuum disc rotates in a
counterclockwise direction, past various devices, to ensure that a single seed
is retained by the orifice, and continues to rotate until the “seeds have passed
the end of vacuum inlet 78 at about 7 o’clock.” Ex. 1003, 3:45–61. When
the seeds’ “associated vacuum holes 94 are in register with recess 84 in the
wear plate 80,” the seeds drop into a cell bounded by fins 90. Id. at 3:55–63.
The seed fall from the cell when it reaches drop off lip 108, which is
positioned slightly past bottom dead center. Id. at 3:66–73.
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Hedderwick describes a second embodiment for use when “the
vertical distance to be travelled by the seeds is greater.” Ex. 1003, 4:2–5.
Figure 4 is reproduced below:

Figure 4 illustrates a side elevational view of a seeder with parts broken
away. Id. at 1:108–109. Disc 130 of the second embodiment can have the
same construction as disc 70 shown in Figure 2, although disc 130 rotates in
a clockwise direction in Figure 4. Id. at 4:10–13, 5:51–53. “The major
change in the seeder is the provision of an endless belt 134 which has a
series of fins 135 projecting upwardly therefrom.” Id. at 4:23–25. Fins 135,
together with casing 137 and belt 134, define a series of moving cells. Id.
at 4:23–28; Fig. 4. These “cells are synchronised to align with orifices 129
of disc 130,” such that when disc 130 releases a seed it is released into a cell
and each cell carries a seed. Id. at 4:28–5:5. Belt 134 passes over idler
sprocket 152 and driven sprocket 132, which drives the belt and thus
seeds 148 in the cells, to an end of casing 137 where the seed is discharged.
Id. at 5:6–7, 74–78; Fig. 4.
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2. Summary of Koning
Koning, titled “Planting Machine for Potatoes, Bulbs or Similar Seed
Crop,” and describes a planting machine “comprising a hopper and a
conveying and distributing device . . . for feeding the potatoes or the like to
the planting foot.” Ex. 1004, code (54), 1:5–6. Figure 4 is reproduced
below:

Figure 4 illustrates an “end part of a planting machine schematically in a
side view.” Id. at 3:32–33. The planting machine includes conveying
member 23 having part 40 that extends in a backward direction to a point in
furrow 41. Id. at 5:3–6. Belt 44 with brush hairs 45 is above part 40 and is
guided around rollers 42 and 43. Id. at 5:6–8. Brush hairs 45 of belt 44 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.
Specifically, “the brush hairs hold the potatoes or the like lying on the
conveying surface till the moment that they leave the belt.” Id. at 3:16–18.
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. By holding the potatoes or the like “till
the very last moment . . . the velocity of the potatoes in relation to each other
is completely defined. Under all circumstances a regular distribution of the
potatoes in the furrow is obtained.” Id. at 3:18–22.
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E. Alleged Obviousness Over Hedderwick and Koning
Petitioner contends that claims 1–20 of the ’924 patent would have
been obvious over Hedderwick and Koning. Pet. 38–89; Reply 4–34.
Petitioner’s contentions are supported by Dr. Taylor. Ex. 1002 ¶¶ 59–139;
Ex. 1135 ¶¶ 14–62. Patent Owner disputes these contentions, particularly
with regard to the sufficiency of the reasons purportedly supporting the
asserted combination. PO Resp. 7–34; Sur-reply 14–28. Although we find
that Hedderwick and Koning teach or suggest each limitation of claim 1,
Petitioner has not shown by a preponderance of the evidence a sufficient
rationale for the combination. Our discussion below is primarily focused on
that dispositive issue as it applies to all Challenged Claims.
1. Petitioner Shows by a Preponderance of the Evidence that
Hedderwick and Koning Teach or Suggest Each Limitation of
Independent Claim 1
Petitioner provides a detailed explanation showing how Hedderwick
and Koning teach or suggest each limitation of claim 1, which we
summarize below. Pet. 38–56.
A seed delivery apparatus comprising:
Petitioner shows that Hedderwick teaches an apparatus that delivers
seed from seed meter disc 130 to a discharge opening near the ground.
Pet. 38–39 (citing Ex. 1003, 5:53–60, Fig. 4). Petitioner also shows that
Koning teaches an apparatus using a brush with bristles to hold seeds,
such as “potatoes, bulbs or similar seed crop” as they are delivered to the
ground with uniform spacing. Id. at 40–42 (citing Ex. 1004, 1:5–6, 1:9–13,
3:12–22, 5:8–14, Fig. 4).
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an elongated housing having a first opening through which
seed is received into the seed delivery apparatus, a second
opening through which seed exits the seed delivery
apparatus, and an elongated interior chamber along
which seed is conveyed from the first opening to the
second opening; and
Petitioner shows that casing 137 of Hedderwick corresponds to the
claimed “elongated housing,” including orifice 141 (a “first opening”) and a
discharge opening at the lower portion of casing 137 through which seed
exits (a “second opening”). Id. at 43–50 (citing Ex. 1003, 1:67–78,
4:23–5:13, 5:26–31, 5:49–63, 5:72–81, 6:60–72, Figs. 4, 5). Hedderwick’s
casing 137 also has “an elongated interior chamber,” as claimed, extending
between sprockets 132 and 152. Id. at 50 (citing Ex. 1003, 5:6–11, 5:72–81,
Fig. 4).
an endless member positioned within the elongated housing,
the endless member movable within the elongated interior
chamber of the elongated housing to receive seed from the
first opening and convey seed to the second opening, the
endless member shaped to maintain contact with a top of
each seed conveyed by the endless member along the
elongated interior chamber between the first and second
openings of the elongated housing.
Petitioner shows that Koning teaches a brush belt (belt 44 with
bristles 45) corresponding to “an endless member,” as claimed, and that
Hedderwick teaches casing 137, an “elongated housing,” as well as endless
belt 134. Id. at 50–56 (citing Ex. 1004, 1:9–13, 3:12–22, 5:3–14, Fig. 4). In
particular, Petitioner shows that Koning’s brush belt corresponds to the
claimed “endless member shaped to maintain contact with a top of each seed
conveyed by the endless member.” Id. at 54–56.
Patent Owner does not dispute that the combination of Hedderwick
and Koning, as proposed by Petitioner, teaches each of the limitations of
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claim 1. See PO Resp., generally; see also id. at 36–37 (arguing that
Hedderwick, alone, does not teach an “endless member shaped to maintain
contact with a top of each seed conveyed,” but not disputing that the asserted
combination with Koning teaches that limitation). Based on the cited
evidence above, Petitioner has shown by a preponderance of the evidence
that Petitioner’s asserted combination of Koning and Hedderwick teaches or
suggests each limitation of claim 1.
2. Petitioner Fails to Show by a Preponderance of the Evidence a
Sufficient Rationale to Support the Asserted Combination of
Hedderwick and Koning as Applied to Independent Claim 1
Petitioner addresses at length in the Petition the reasons it contends a
person of ordinary skill in the art would have been motivated to combine
Hedderwick and Koning in the manner proposed by Petitioner. Pet. 29–34.
To assess Petitioner’s reasoning, we first consider how Petitioner proposes
combining the teachings of the asserted references and then turn to the
evidence offered by Petitioner in support and Patent Owner in opposition.
Petitioner contends that Hedderwick, as modified by Koning, would
function as follows: “Hedderwick’s seed meter disc 130 would transfer
individual seeds to where the seed meter disc 130 mates with the opening
(orifice 141) in the elongated casing,” and “[a]t this mating point, Koning’s
brush belt would, in turn, receive the seeds from the disk and deliver the
seeds to the ground.” Pet. 42 (citations omitted). Thus, Petitioner proposes
applying Koning’s teaching of the use of the generally downward facing
portion of the bristles of a brush belt to control the spacing and descent of
potatoes on a conveyor to the ground to Hedderwick’s system to instead use
the generally upward facing portion of the bristles of Koning’s brush belt to
receive seeds transferred from a seed meter disc above the bristles to be
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conveyed by the bristles to the ground.8 Id. According to Petitioner, a
person of ordinary skill in the art “would have been motivated to combine
the teachings of Hedderwick (a precision seeder with a seed meter and an
endless belt within a housing) with Koning’s brush belt with bristles (for
maintaining contact with the seeds by gripping them and pushing them along
to the ground) to obtain the alleged invention claimed in the ’924 patent.”
Id.; see also id. at 40 (Petitioner stating that it “[does] not rely on
Hedderwick alone for the seed delivery apparatus because [Hedderwick]
allows gravity to impact the movement of the seeds”).
Petitioner chose to frame the proposed combination to include the
receipt of seeds from above onto the moving brush belt of Koning’s
“delivery system,” such that it is incumbent on Petitioner to show that an
ordinarily skilled artisan would have had reason to combine the references in
that proposed manner and would have reasonably expected success in doing
so. See, e.g., Pet. 46–47 (explaining that in the asserted combination
“Koning’s brush belt would directly receive the seed from Hedderwick’s

8 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 ’924 patent requires a brush belt. The challenge
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
Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“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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seed meter disc at the first opening where the disc ‘mates with’ the
opening”) (citing Ex. 1002 ¶ 78). To be clear, we recognize that “[t]he test
for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art, not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference.” Hologic, Inc. v. Minerva Surgical, Inc., 764 Fed.
Appx. 873, 880 (Fed. Cir. 2019) (quoting In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012)). Nonetheless, 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); see also Adidas AG v. Nike, Inc., 963
F.3d 1355, 1359–60 (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, 1382–83 (Fed. Cir. 2019) (determining
that it unnecessary to reach other issues when reasonable expectation of
success is dispositive).
Petitioner contends both Hedderwick and Koning are in the field of
“agricultural seed planting” and address the same problem of “suboptimal
seed spacing” by “using belts to increase control over the movement of
seeds as they are delivered to the ground.” Pet. 29. Petitioner states that
“Hedderwick’s endless belt does not completely define the velocity of the
seeds relative to one another, and does not ‘hold’ the seeds throughout their
descent until the ‘moment that they leave the belt.’” Id. at 30–31 (citing
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Ex. 1002 ¶ 61; Ex. 1003, 2:60–62, 5:74–77; Ex. 1004, 3:16–18;
Ex. 1024, 135). Koning achieves even spacing, Petitioner asserts, because
its “brush belt ensures that the ‘velocity’ of the seeds ‘in relation to each
other is completely defined.’” Id. at 31 (quoting Ex. 1004, 3:12–22).
Thus, Petitioner relies on Koning’s “brush belt with bristles (as opposed to
Hedderwick’s endless belt with fins) to hold seeds . . . stationary with
respect to each other as they are delivered to the ground so that they are
planted in the furrow at a reliably uniform spacing.” Id. at 40–42 (citing
Ex. 1002 ¶ 71; Ex. 1003, 5:72–79; Ex. 1004, 1:5–6, 1:9–13, 3:12–22,
5:8–14, Fig. 4).
Petitioner reasons that an ordinarily skilled artisan would have been
motivated to replace Hedderwick’s finned belt with Koning’s brush belt to
achieve the benefits of finer seed spacing disclosed in Koning. Id. at 32–34;
Reply 6–20). According to Petitioner, an ordinarily skilled artisan “desiring
finer control over seeds as they descend to the furrow would have
recognized that replacing Hedderwick’s endless belt with Koning’s brush
belt would provide certain benefits—delivering seeds the same distance
apart and with a consistent velocity—that further the common goal of
achieving accurate seed spacing.” Id. at 32. Petitioner further contends that
a person of ordinary skill “would have recognized Koning’s brush belt as a
known technique . . . that could be applied to Hedderwick in a known way to
provide the predictable benefit disclosed in Koning of increasing control
over the seeds as they are received and pushed along to the ground to
improve seed spacing.” Id. at 33. Dr. Taylor supports Petitioner’s asserted
rationale for substantially the same reasons identified in the Petition. See
Ex. 1002 ¶¶ 59–66; Ex. 1135 ¶¶ 19–48.
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Patent Owner disputes the sufficiency of Petitioner’s rationale
supporting the combination of Hedderwick and Koning. Patent Owner
argues that Petitioner relies on hindsight and that an ordinarily skilled artisan
would not have been motivated to combine Koning’s belt with Hedderwick,
and would not have expected that combination to succeed. PO Resp. 19–34;
Sur-reply 14–28.9
Based on the full record before us, we conclude that Petitioner has not
met its burden of showing that a person of ordinary skill in the art at the time
of the invention would have been motivated to, or would have had reason to,
selectively apply a portion of Koning’s “delivery system,” and, specifically,
Koning’s brush belt, but not conveying member 23, to the system of
Hedderwick. As Patent Owner points out, the function that the brush belt
serves in Petitioner’s proposed combination is different from its function in
Koning. See PO Resp. 20–22. In Koning, the brush hairs of the belt hold
potatoes “lying on the conveying surface” so as to maintain the speed and
relative position of potatoes as they are moved by the conveyor to the
furrow. Ex. 1004, 3:12–22, 5:3–14, Fig. 4; see also Pet. 31 (similarly
describing Koning). Koning does not teach a system, as proposed by
Petitioner, in which seeds are transferred from above into a moving brush
belt. Petitioner provides insufficient persuasive evidence that a person of
ordinary skill in the art would have had reason to use the brush belt of
Koning in an undisclosed manner to receive seed into brush hairs 45 from
Hedderwick’s seed meter disc located above the bristles, rather than to use

9 Patent Owner also argues that Koning does not qualify as analogous art
and, relatedly, that judicial estoppel bars Petitioner from contending
otherwise. PO Resp. 8–19; Sur-reply 13–14, 30–33.
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brush hairs 45 to control the movement of a seed crop against conveyor 23
as disclosed by Koning’s delivery system, or that such a person would have
reasonably expected success in in doing so.
Petitioner argues that a person of ordinary skill in the art “would have
recognized Koning’s brush belt as a known technique,” and would have
found “[i]ncorporating Koning’s brush belt into Hedderwick’s row unit” to
be “simple . . . to implement” and to have “merely required applying a
known technique to a known device.” Pet. 32–33; see also Ex. 1002 ¶ 64
(Dr. Taylor stating the same in support of Petitioner); Ex. 1135 ¶ 32 (Dr.
Taylor testifying in Reply declaration that “[a] person of ordinary skill in the
art would have known how to adjust the brush belt taught by Koning for use
in Hedderwick’s system.”). Petitioner further asserts that a person of
ordinary skill in the art would have had a reasonable expectation of success,
because Koning shows the brush belt receiving seeds as its bristles are
rotating around upper roller 42, such that an ordinarily skilled artisan would
have understood to incorporate Koning’s brush belt into Hedderwick so that
that it receives seeds as the belt curves around Hedderwick’s driven
sprocket 132. Pet. 32; see also Ex. 1002 ¶ 64 (Dr. Taylor testifying that “[a]
person of ordinary skill in the art would have understood, through no more
than routine experimentation, to incorporate Koning’s brush belt into
Hedderwick’s system in such a manner that it receives seeds as the belt
curves around Hedderwick’s driven sprocket 132 and its bristles are flexed
open.”).
Critically, neither Petitioner nor Dr. Taylor acknowledge, much less
bridge, the gap between Koning’s use the bristles of a brush belt generally
facing downward to hold potatoes from above as they lie on a conveying
surface, versus the brush belt’s use in the proposed combination to receive
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seeds that are deposited onto it from above. In short, what Petitioner
casually calls a “known technique” was not taught or suggested by Koning.
Patent Owner explains this issue as follows:
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 [person of ordinary skill in the art]
would not predict that such a belt could be used successfully for
that purpose because, for among other reasons, a [person of
ordinary skill in the art] 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.
Fundamentally, Koning’s belt, which is intended to steady
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. Ex. 2207,
¶¶134–136. Petitioners are thus not suggesting using a “familiar
element according to known methods” to “yield predictable
results.” Cf. KSR, 550 U.S. at 401.
PO Resp. 21. Petitioner argues in reply that Koning’s use of a conveyor to
transport potatoes held in place by a brush belt means Koning’s brush belt
conveys seeds “just as in the ’924 patent,” because “[t]he brush belt of the
’924 patent also works with a housing surface to hold the seed.” Pet.
Reply 12–13 (citing Ex. 1001, 4:36–38, Fig. 3; Ex. 1002 ¶¶ 42, 63; Ex.
1004, 3:16; Ex. 1135 ¶¶ 34, 35). In this regard, the ’924 patent states that
“side wall 53 of the housing cooperates with the bristles 70 to hold the seed
in the brush bristles as the seed is moved to the lower opening.” Ex. 1001,
4:36–38. Petitioner’s attempt to equate a stationary side wall taught by the
’924 patent to the moving conveyor 23 of Koning is not persuasive or
credible because they clearly function in different ways and serve different
purposes. As Patent Owner shows, Koning makes clear that the potatoes are
“delivered by conveying members 23,” not Koning’s brush belt, which
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instead “hold the potatoes on the conveying members 23.” PO Sur-reply 15
(quoting Ex. 1004, 5:8–14).
Further, the persuasiveness of Dr. Taylor’s testimony—i.e., that it
would have been simple for an ordinarily skilled artisan to adapt Koning’s
brush belt for use in the proposed combination, where seeds are deposited
onto the brush belt from above—is further undermined, as Patent Owner
notes, by Dr. Taylor’s testimony that he has not studied the dynamics of a
moving brush belt and did not consider the extent to which a moving brush
belt would resist entry of a seed. See PO Resp. 31; Ex. 2189, 35:6–16,
115:12–116:2; see also Ex. 2189, 115:12–116:2 (Dr. Taylor further
suggesting that “brush dynamics or the brush belt dynamics . . . are
challenges that someone’s going to face and will be overcome through
routine experimentation”). We note that in his declaration Dr. Taylor
provides no explanation of what experimentation would be required and no
support for the notion that it would be routine. See Ex. 1002 ¶ 64
(Dr. Taylor testifying that “[a] person of ordinary skill in the art would have
understood, through no more than routine experimentation, to incorporate
Koning’s brush belt into Hedderwick’s system in such a manner that it
receives seeds as the belt curves around Hedderwick’s driven sprocket 132
and its bristles are flexed open.”); Ex. 1135 ¶ 25 (Dr. Taylor testifying that
“it was well-known to use brush belts, brush wheels, and other types of
brushes in many areas of planting,” and that “[a] person of ordinary skill in
the art therefore would have had the knowledge necessary to implement a
brush belt into Hedderwick’s system with routine experimentation.”).
Dr. Taylor identifies no other evidence that a seed would be expected to
enter a moving brush belt in the manner of the proposed combination other
than Koning; however, Koning does not teach using a brush belt to receive
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and convey seeds that have been received from above. Dr. Taylor does not
account for that difference by explaining why an ordinarily skilled artisan
would expect Koning’s brush belt to effectively capture and carry seeds
received from above, as in the proposed combination.
With regard to fundamental differences between how Koning transfers
potatoes to the ground, versus the manner in which Petitioner proposes using
Koning’s brush belt to carry seed, during his deposition Dr. Taylor resisted
agreeing that the potatoes are lying on conveyor 23 in Koning, testifying
instead that they are supported by conveyor 23, belt 44, and “probably
multiple sides as the bristles form around the potatoes.” Ex. 2189 70:19–
71:2. Dr. Taylor recognized that conveyor 23 of Koning supports “some of
the weight,” but maintained that “there’s nothing that says to me one way or
the other how much of the weight of the potato that the brush belt is actually
supporting.” Id. at 72:10–73:18 (further explaining that he “didn’t do a free
body diagram on it to determine how much of that support is coming from
the brush belt and how much is coming from the conveyor belt”). In our
view, it is clear from Koning’s description that the potatoes lie on the
conveyor and the purpose of the brush belt is to maintain their position
relative to each other while they are moved by the conveyor. Ex. 1004,
3:16–24, 5:3–14, Fig. 4; see also Ex. 2207 ¶¶ 137–138 (Dr. Glancey
testifying that a simple mechanical analysis shows that in Koning,
about 87% of the potatoes’ weight is supported by the conveying member).
Dr. Taylor’s seeming reluctance to acknowledge the differences between the
brush belt’s function in Koning versus the proposed combination
undermines the persuasiveness of his testimony that the proposed
combination would have been a simple application of a known technique to
a known device.
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By contrast, Dr. Glancey testifies that a person of ordinary skill
“reviewing Koning’s disclosed assembly using a belt with brush hairs to
cover and hold potatoes when used in combination with a conveyor with a
separate covering 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. 2207 ¶ 136; see also id.
¶ 134 (Dr. Glancey testifying that the brush belt of Koning “was not—and
was not taught as being—a modular ‘off the shelf’ component with
predictable uses”).
Dr. Glancey provides an analysis of why he reaches this conclusion as
follows:
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 person of ordinary skill “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. ¶ 139. Dr. Glancey testifies
(id. ¶ 145) as follows:
A device such as Koning’s belt that covers from above 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 [person
of ordinary skill in the art] would use a brush belt for carrying
seeds rather than covering them is the ’924 Patent.
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In its Reply, Petitioner argues that “brush belts were well-known and
used in many aspects of planting so a [person of ordinary skill in the art]
would have had the knowledge necessary to make a brush belt work in
Hedderwick’s system without undue experimentation.” Reply 8. To support
this argument, Petitioner cites Koning and two other references: Thiemke10
and Gould.11 See id. at 9–11. In his declaration accompanying Petitioner’s
Reply, Dr. Taylor discusses those same references. See Ex. 1135 ¶¶ 27, 28.
But these two additional references do little to aid Petitioner’s case because
neither Thiemke nor Gould discloses a moving brush belt that captures seeds
directed directly into it from above, as Petitioner proposes in its
combination.
Figures 3 and 4 of Thiemke are reproduced below.

10 U.S. Patent No. 6,651,570 B1, issued November 25, 2003 (Ex. 1015,
“Thiemke”).
11 U.S. Patent No. 1,376,933 issued May 3, 1921 (Ex. 1030, “Gould”).
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Figures 3 and 4 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,” which can be formed of nylon
bristles. Id. at 5:54–57, 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.
Gould describes a machine “for taking an individual plant from a
quantity, depositing it positively in the ground and properly covering it, and
of operating with great rapidity.” Ex. 1030, 1:25–30. Figure 4 of Gould is
reproduced below:

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Figure 4 shows a sectional side elevation view of Gould’s plant-setting
machine. Id. at 1:38. Gould explains that brush belt 11 operates beneath
hopper 1 and “travels vertically downward . . . and cooperates with a second
brush belt 12 to move the plant from the hopper.” Id. at 1:75–82. In
considering Gould’s teaching of two vertically oriented and opposed brush
belts that cooperate to move plants from a hopper, we see little relevance to
Petitioner’s proposal to load seeds into a brush belt by releasing them
directly into the bristles.
Petitioner additionally contends that Patent Owner’s arguments are
based on the erroneous premise that an ordinarily skilled artisan must be
able to physically combine the references. See Reply 6–7 (citing Mouttet,
686 F.3d at 1332–33. We disagree. Patent Owner’s arguments, summarized
above, simply point out that an ordinarily skilled artisan would not have
expected success in combining the references’ teachings in the way
Petitioner proposes. Motivation to combine and reasonable expectation of
success are properly assessed with reference to the combination as Petitioner
has framed it. The Federal Circuit has explained that doing so is not
inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not
fault the Board for analyzing Petitioners’ obviousness grounds in the way
presented in the Petition.”).
Petitioner also argues in its Reply that the ’924 patent does not require
operation of an endless member at “any particular speed” and does not
“address the purported difficulties of using a brush belt or provide any
explanation of how to overcome such problems (e.g., bristle stiffness or
density).” Reply 7. We agree that the ’924 patent is generic in its
description of the brush belt’s characteristics. See Ex. 1001, 7:38–45
(describing that “brush bristles are the preferred embodiment, and may be
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Patent 9,807,924 B2
37
natural or synthetic” but other material types can also be used); see also id.
at 4:53 (stating that “[t]he belt shown in FIG. 3 has relatively long
bristles.”); id. at 5:1–2 (stating that “a short bristle brush can be used as
well.”). But, critically, the ’924 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,
4:17–35, Fig. 3; see Ex. 2207 ¶ 43. Petitioner does not point to any prior art
that teaches such a solution.
It is Petitioner’s burden to establish that a person of ordinary skill
would have been motivated to combine the references in the proposed
manner and would have reasonably expect success in doing so. See
35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376
(Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that
burden. Neither the references, other evidence, nor Dr. Taylor 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 conveyor 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 ’924 patent, rather than
covering and guiding seeds carried by a separate and distinct conveyor, 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
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Patent 9,807,924 B2
38
ordinary skill would have had reason to adapt Koning’s brush belt to such a
use with a reasonable expectation of success in doing so.
3. Petitioner Fails to Show by a Preponderance of the Evidence
a Sufficient Rationale to Support the Asserted Combination
of Hedderwick and Koning as Applied to Independent
Claims 8 and 15
Independent claim 8, like claim 1, is directed to a “seed delivery
apparatus.” Ex. 1001, 8:24–36. Independent claim 8, like claim 1, requires
an “elongated housing” and an “endless member positioned within the
elongated housing” that receives seed from an opening in the housing. Id.
at 7:59–60. Independent claim 15 is a method counterpart clam to claims 1
and 8. Id. at 8:60–9:6. Petitioner does not direct us to any persuasive
evidence of any substantive differences between claims 1, 8, and 15 that
would cause a different analysis or conclusion for claims 8 and 15 from the
conclusion reached for claim 1. See Pet. 29–35 (addressing the motivation
to combine asserted by Petitioner as to all Challenged Claims).
Accordingly, based on the analysis and evidence discussed above for
claim 1, we determine that Petitioner fails to show by a preponderance of the
evidence a sufficient rationale to support the asserted combination of
Hedderwick and Koning as applied to independent claims 8 and 15 for the
same reasons discussed above with respect to claim 1.
4. Petitioner Fails to Show by a Preponderance of the Evidence
a Sufficient Rationale to Support the Asserted Combination
of Hedderwick and Koning as Applied to Dependent
Claims 2–7, 9–14, and 16–20
Dependent claims 2–7 depend from claim 1, dependent claims 9–14
depend from claim 8, and dependent claims 16–20 depend from claim 15.
Petitioner does not direct us to any persuasive evidence of any substantive
differences between claims 2–7, 9–14, and 16–20 and the claims from which
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Patent 9,807,924 B2
39
they depend that would cause a different analysis or conclusion for
claims 2–7, 9–14, and 16–20 from the conclusion reached for the claims
from which they depend. See Pet. 29–35 (addressing the motivation to
combine asserted by Petitioner as to all Challenged Claims). Accordingly,
based on the analysis and evidence discussed above for claim 1, we
determine that Petitioner fails to show by a preponderance of the evidence a
sufficient rationale to support the asserted combination of Hedderwick and
Koning as applied to dependent claims 2–7, 9–14, and 16–20 for the same
reasons discussed above with respect to the claims from which they depend.
5. Petitioner Fails to Show by a Preponderance of the Evidence
that any of the Challenged Clams Would Have Been Obvious
Over Hedderwick and Koning
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. “[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. “[I]nventions 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.
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 had reasons or been motivated to combine Hedderwick and
Koning in a manner that corresponds to any of the Challenged Claims.
“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 of Mayville, Inc. v. The Toro Company, 848 F.3d 1354,
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Patent 9,807,924 B2
40
1367 (Fed. Cir. 2017). “[W]e cannot allow hindsight bias to be the thread
that stitches together prior art patches into something that is the claimed
invention.” Id. 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 (emphasis omitted). 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
to arrive at the invention recited in independent claim 1, or any other of the
Challenged Claims. Based on the Petition and the evidence of record, we
determine that Petitioner has not established by a preponderance of the
evidence that any of the Challenged Claims would have been unpatentable
over the asserted combination of Hedderwick and Koning.
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. 83.12 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 &

12 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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Patent 9,807,924 B2
41
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.
V. CONCLUSION
The outcome for the Challenged Claims in this proceeding is set forth
below. In summary:

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–20 of U.S. Patent No. 9,807,924 B2 have
not been proven by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied
in part and dismissed in part;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; 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.
Claims

35
U.S.C. §
References/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–20 103 Hedderwick,
Koning
1–20
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Patent 9,807,924 B2
42

For PETITIONER:

Grant K. Rowan
Mary V. Sooter
Natalie Pous
WILMER, CUTLER, PICKERING, HALE,
& 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