E.I. du Pont de Nemours and Companyv.Monsanto Technology LLC

Patent Trial and Appeal Board

Jul 11, 2014

12358985 (P.T.A.B. Jul. 11, 2014)

Trials@uspto.gov Paper No. 14
571-272-7822 Entered: July 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

E.I. DU PONT DE NEMOURS AND COMPANY,
Petitioner,

v.

MONSANTO TECHNOLOGY LLC,
Patent Owner.
____________

Case IPR2014-00333
Patent 7,832,143 B2
____________

Before LORA M. GREEN, SHERIDAN K. SNEDDEN, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
E.I. du Pont de Nemours and Company (“DuPont”) filed a Petition to
institute inter partes review of claims 1–11 of U.S. Patent No. 7,832,143 B2 (Ex.
1001, “the ’143 patent”) pursuant to 35 U.S.C. § 311–319. Paper 1 (“Pet.”).
Patent Owner Monsanto Technology LLC (“Monsanto”) filed a Patent Owner
Preliminary Response. Paper 13 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314. The standard for instituting an
inter partes review is set forth in 35 U.S.C. § 314(a):
THRESHOLD – The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.

Upon consideration of the above-mentioned Petition and Preliminary
Response, we conclude that DuPont has not established that there is a reasonable
likelihood that it would prevail with respect to claims 1–11 of the ’143 patent.
Accordingly, we decline to institute an inter partes review of those claims.
A. Related Proceedings
According to the parties, the ’143 patent is involved in the following co-
pending case: Monsanto Company v. Pioneer Hi-Bred International, Inc., Case No.
4:12-cv-1090-CEJ (United States District Court for the Eastern District of
Missouri). Pet. 4–5; Paper 7, 2.
In addition, concurrently with the instant Petition, DuPont also filed
petitions for inter partes review for: claims 1-13 of U.S. Patent No. 8,071,845;
claims 55, 58, 59, and 60 of U.S. Patent No. 8,028,469; claims 1, 2, 5-16, and 18-
22 of U.S. Patent No. 8,245,439; and claims 1-26 of U.S. Patent No. 8,312,672.
Pet. 2-3; Paper 7, 2; see IPR2014-00331, IPR2014-00332, IPR2014-00334, and
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IPR2014-00335.
B. The ’143 patent (Ex. 1001)
The ’143 patent discloses plant breeding methods for “sampling transgenic
seeds to test for the presence or absence of a transgene or the zygosity of a
transgene (number of transgenes) in a population of seeds in a high throughput
manner.” Ex. 1001, 5:59–63. The method is disclosed as generally comprising
automatically removing a tissue sample from at least one or more seeds in a
population of seeds, and depositing the removed tissue samples into individual
compartments of a sample tray that holds a nucleic acid extraction buffer. Id. at
5:63 to 6:43. The nucleic acid is analyzed for the presence or absence of at least
one genetic marker. Id. at 5:38–58.
The analysis does not affect the germination viability of the seeds. Id. at
5:7–16. Accordingly, seeds may be selected from the population based upon the
results of the nucleic acid analysis, and plants may be subsequently cultivated from
the selected seed. Id. Suitable seeds for use with the methods include wheat and
maize seed. Id. at 6:47–66.
C. Independent Claim
Claim 1 is the only independent claim of the ’143 patent, and is reproduced
below.
1. A high-throughput method for analyzing individual seeds in a
population of seeds, the method comprising:
removing a tissue sample from at least one or more seeds in a
population of seeds while preserving germination viability of the at
least one or more seeds from which the tissue sample is removed;
depositing the tissue sample into an individual compartment of
a sample tray;
contacting the tissue sample with an extraction buffer to remove
DNA from the tissue sample; and
analyzing the extracted DNA for the presence or absence of a
transgene of interest.
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Claims 211 depend from claim 1, either directly or indirectly.
D. The Prior Art
DuPont relies on the following prior art.
V. Sangtong et al., Serial Extraction of Endosperm Drillings (SEED) − A
Method for Detecting Transgenes and Proteins in Single Viable Maize
Kernels, 19 PLANT MOLECULAR BIOLOGY REPORTER 151-158 (2001)
(“Sangtong”) (Ex. 1003).

A. Horigane et al., Two-dimensional analysis of kernels using a
new sample preparation method, 41(6) CHEMISTRY AND BIOLOGY
398-402, published on June 25, 2003, in Japanese (“Horigane 1”) (Ex. 1008,
the English translation of which is Ex. 1009).

Horigane, US 2004/0074822 A1, published April 22, 2004 (“Horigane 2”)
(Ex. 1004).

Lei He & Kai Wang, A 384-Well Microtiter-Plate-Based Template
Preparation and Sequencing Method, PCR CLONING PROTOCOLS 411-
416 (2d ed., Humana Press 2002) (“He”) (Ex. 1005).

J. Chunwongse et al., Pre-germination Genotypic Screening Using PCR
Amplification of Half-seeds, 86 THEOR APPL GENET 694-698 (1993)
(“Chunwongse”) (Ex. 1006).

Lipman et al., Tolerance of Liquid-Air Temperature By Seeds of Higher
Plants for Sixty Days, PLANT PHYSIOLOGY 392-394 (1934) (“Lipman”) (Ex.
1007).

DuPont further relies on a Declaration from Dr. Clifford F. Weil (Ex. 1010).

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E. The Asserted Grounds
DuPont challenges the claims of the ’143 patent based on the following
grounds:
Challenged Claims Basis Reference[s]
1, 9 § 102(b) Sangtong
2–4, 8 § 103(a) Sangtong, Chunwongse
5, 6 § 103(a) Sangtong, He
7 § 103(a) Sangtong, He, Lipman
1, 9 § 103(a) Horigane 1, Sangtong
2–4, 8 § 103(a) Horigane 1, Sangtong, Chunwongse
5, 6 § 103(a) Horigane 1, Sangtong, He
7 § 103(a) Horigane 1, Sangtong, He, Lipman
10, 11 § 103(a)
Horigane 1, Sangtong, Chunwongse,
Horigane 2

II. ANALYSIS
A. Claim Interpretation
We interpret claims using the “broadest reasonable construction in light of
the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b).
We presume that a claim term carries its “ordinary and customary meaning,” which
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. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). That presumption is rebutted, however, where the patentee
acts as his own lexicographer, giving the term a particular meaning in the
specification with “reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We interpret the following terms of the challenged claims as part of our
analysis. Our determination of whether to grant DuPont’s Petition does not require
explicit construction of any other claim term at this time.
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1. “High-throughput method for analyzing individual seeds in a
population of seeds”
a. Whether the preamble of claim 1 is limiting
We first address whether the preamble of claim 1 is limiting. We recognize
that, in general, “[a]n intended use or purpose usually will not limit the scope of
the claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering–
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). “But . . . preamble language
will limit the claim if it recites not merely a context in which the invention may be
used, but the essence of the invention without which performance of the recited
steps is nothing but an academic exercise.” Id. (citing Griffin v. Bertina, 285 F.3d
1029, 1033 (Fed. Cir. 2002); see also, Pitney Bowes Inc. v. Hewlett Packard Co.,
183 F.3d 1298, 1305 (Fed. Cir. 1999) (stating claim preamble is limiting when it is
“necessary to give life, meaning, and vitality” to the claim). In Boehringer, for
example, the Federal Circuit found the “growing and isolating . . . virus” language
of a preamble limiting because “‘growing’ and ‘isolating’ are not merely
circumstances in which the method may be useful, but instead are the raison d’être
of the claimed method itself.” Boehringer, 320 F.3d at 1344–45. Without the
preamble, the court found that “the claimed method [was] reduce[d] to nothing
more than a process for producing cytopathic effects in sheets of cultured MA–104
cells—a process whose absence of fathomable utility rather suggests the academic
exercise.” Id. at 1345. The court thus recognized that one of ordinary skill in the
art would not understand the utility of the process without construing the
“growing” and “isolating” language of the preamble as limiting.
We conclude that, as in Boehringer, one of ordinary skill in the art would
not understand the utility of the process of claim 1, viewed in light of the
specification, without construing the preamble language of the claim as limiting.
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The body of claim 1 lacks any clear language indicating that the utility of the
invention is for the analysis of individual seeds. Further, there are no steps in the
claimed method that describes the “high-throughput” purpose of the preamble.
Hence, the body of the claim does not set forth the essence of the invention, and
we construe the preamble as limiting.
b. Interpretation of “high-throughput method”
As to the interpretation of “high-throughput method” recited in the preamble
of claim 1, the dispute between the parties centers on the amount of automated
technology that is required by the broadest reasonable construction of “high-
throughput method,” viewed in light of the specification. DuPont asks that we
construe the phrase “high-throughput method for analyzing individual seeds in a
population of seeds” to mean “a method that enables analysis of a larger number of
seeds in a population of seeds per unit time than does a completely manual
method.” Pet. 7, citing Ex. 1001, 4:3236; Ex. 1010 ¶ 52. Although DuPont (Pet.
7) and Dr. Weil (Ex. 1010, ¶ 52) acknowledge that the ’143 patent does not define
the phrase “high-throughput method for analyzing individual seeds in a population
of seeds,” DuPont, nonetheless, relies on the following passage from the
specification to support this interpretation of the preamble phrase.
As a result, the marker-assisted breeding program results in a “high-
throughput” and more efficient platform wherein a population of
seeds having a desired trait, marker or genotype can be more
effectively bulked in a shorter period of time, with less field and labor
resources required.
Ex. 1001, 4:3236.
Monsanto, on the other hand, contends that the broadest reasonable
construction of the preamble phrase “high-throughput method,” viewed in light of
the specification, is “a method that permits one to analyze a high volume of
individual seeds quickly using automated technology.” Prelim. Resp. 21.
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Monsanto directs our attention to several passages in the written description of the
’143 patent that describes “high-throughput” processes in such terms as
“automatically,” “automated,” “automation,” and “robotics.” Id. at 2124, citing
Ex. 1001, 5:59 to 6:2, 6:28–31, 6:38–43, 6:44–46, 17:51–59. Monsanto also notes
that the Oxford Dictionary of Biochemistry defines “high-throughput” as “a
process that is scaled up, usually via increased levels of automation using robots.”
Id. at 24, citing Ex. 2007.
We recognize that there is sometimes “a fine line between reading a claim in
light of the specification, and reading a limitation into the claim from the
specification.” Comark Commc’ns v. Harris Corp., 156 F.3d 1182, 1187
(Fed.Cir.1998) (citations omitted); see also Constant v. Advanced Micro–Devices,
Inc., 848 F.2d 1560, 1571 (Fed.Cir.1988) (“Although the specification may aid the
court in interpreting the meaning of disputed claim language, particular
embodiments and examples appearing in the specification will not generally be
read into the claims.”). We also recognize, however, that the specification contains
a written description that “can provide guidance as to the meaning of the claims,
thereby dictating the manner in which the claims are to be construed, even if the
guidance is not provided in explicit definitional format.” SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001); cf.
Johnson Worldwide Associates, Inc. v. Zebco Corp., 175 F.3d 985, 991 (Fed. Cir.
1999) (“Varied use of a disputed term in the written description demonstrates the
breadth of the term rather than providing a limited definition.”).
In this case, there is no special definition or other language in the
specification that explicitly informs us as to the meaning of “high-throughput” to
one of skill in the art. We are, however, persuaded by Monsanto’s evidence and
reasoning that the ordinary meaning of the term “high-throughput” typically
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implies automation, such as with the use of robots, and that the term “high-
throughput” is used throughout the written description of the ’143 patent in a
manner consistent with an interpretation that includes automation. Accordingly,
we construe the phrase “high-throughput method” to mean “a process that is scaled
up via increased levels of automation.” Our construction of the term “high-
throughput method” is based on the definition of that term set forth in the Oxford
Dictionary of Biochemistry, but we have modified that definition such that our
interpretation requires automation, as opposed to an interpretation that “usually”
includes automation. This construction is supported by the specification of the
’143 patent, which consistently uses the term “high-throughput” in the context of
automated methods.
B. Asserted Grounds of Unpatentability
1. Anticipation of Claims 1 and 9 by Sangtong (Ex. 1003)
DuPont contends that claims 1 and 9
1
are anticipated by Sangtong. Pet. 15–
21. DuPont relies on the following disclosures of Sangtong. Sangtong discloses a
method for the detection of transgenes and their protein products in the endosperm
of individual maize kernels. Ex. 1003, 151–152. Tissue is removed from maize
kernels such that the embryo is not damaged, and the kernels can be germinated
subsequently. Id. DNA is then extracted from the tissue and analyzed for the
presence or absence of a transgene of interest. Id. at 154. Sangtong further
discloses that “[a]ll liquid handling steps are carried out in 96-well format, which
lends itself to automation for high-throughput.” Id. at 152.
DuPont concludes that Sangtong discloses a high-throughput method of
analyzing individual seeds because Sangtong discloses using 96-well sample trays

1
Claim 9 depends from claim 1 and recites that the population of seeds of claim 1
may be maize seed.
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for extracting DNA from many samples at a time. Pet. 18–19. We are not
persuaded. Anticipation requires that every element of the claimed invention must
be found in a single prior art reference, arranged as in the claim. Brown v. 3M, 265
F.3d 1349, 1351 (Fed. Cir. 2001). In that regard, Sangtong does not disclose a
high-throughput method utilizing automation. Rather, Sangtong merely discloses a
method that may be adapted to automation, not a method scaled up via increased
levels of automation. Accordingly, Sangtong fails to teach every element of the
claim. DuPont, therefore, has not demonstrated a reasonable likelihood that
Sangtong anticipates claims 1 and 9 of the ’143 patent.
2. Obviousness of Claims 2–8 Over the Combination of Sangtong,
Chunwongse, He, and Lipman
Each of claims 2–8 depends from claim 1, either directly or indirectly.
DuPont contends that claims 2–8 are obvious over the combination of Sangtong,
Chunwongse, He, and Lipman. Pet. 21–32. With respect to claims 2-8, DuPont
relies on its analysis of claim 1 as anticipated by Sangtong to show that the
elements of claim 1 are taught by the combination. Id. at 22. As explained above,
however, Sangtong does not disclose a high-throughput method utilizing
automation, and thus fails to teach every element of claim 1. DuPont points to no
disclosure in any of Chunwongse, He, and Lipman that provides the missing
element for claim 1. Furthermore, DuPont does not present any articulated
reasoning with rational underpinning to support a conclusion of obviousness. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For example, DuPont
does not explain why a person of ordinary skill in the art would have modified the
teachings of Sangtong to arrive at the limitations of claim 1, as required by
dependent claims 2-8. Further, DuPont does not explain sufficiently how the
disclosures of Chunwongse, He, and/or Lipman cure the deficiency of Sangtong.
Accordingly, upon review of DuPont’s analysis of the evidence of record, DuPont
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has not set forth sufficiently how each element of claims 2-8 is taught or suggested
by Sangtong, alone or in combination with Chunwongse, He and Lipman.
We are not persuaded, therefore, that there is a reasonable likelihood that
DuPont would prevail at trial based on obviousness of any of claims 2–8 over the
combination of Sangtong, Chunwongse, He, and Lipman.
3. Obviousness of Claims 1 and 9 Over the Combination of
Horigane 1 and Sangtong
DuPont contends that claims 1 and 9 would have been obvious over the
combination of Horigane 1 and Sangtong. Pet. 34–41. Horigane 1 discloses a
system for analyzing plant tissue samples by molecular spectrometry for the
purposes of improving plant breeds, biometrics authentication, and quality
evaluation. Ex. 1009, 398. A kernel holder capable of holding multiple wheat
grains is used to keep the kernel at the desired angle and height. Id. at 399.
Analytical samples of wheat grains are cut with a cutting device to prepare an
analytical surface. Id. at 400. Horigane 1 discloses that the cutting device “is
programmed for cutting and grinding with a sequential controller and can
repeatedly be used for the preparation of analytical surface under the same
conditions, and therefore polyspecimen samples to be analyzed can be prepared
with high reproducibility.” Id. Embryo portions are also removed by cutting and
can be subsequently germinated. Id.
DuPont acknowledges that Horigane 1 does not disclose the steps of
depositing the tissue sample into an individual compartment of a sample tray,
contacting the tissue sample with an extraction buffer to remove DNA from the
tissue sample, or analyzing the extracted DNA for the presence or absence of a
transgene of interest as required by claim 1. Pet. 40. DuPont relies on Sangtong
for the disclosure of the claimed elements absent in Horigane 1. Id. Sangtong
discloses a method for the detection of transgenes and their protein products in the
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endosperm of individual maize kernels. Ex. 1003, 151–152. Tissue is removed
from maize kernels such that the embryo is not damaged and the kernels can be
subsequently germinated. Id. DNA is then extracted from the tissue and analyzed
for the presence or absence of a transgene of interest. Id. at 154. DNA extraction
is performed using a 96-well format (individual compartment). Id. at 152.
DuPont contends that both Sangtong and Horigane 1 relate to methods for
sampling seeds, while preserving germination viability, and analyzing the sampled
tissue for a given trait. Pet. 13–14. DuPont asserts that a person of ordinary skill
in the art would have been motivated to combine the disclosures of Horigane 1 and
Sangtong due to the ongoing desire to increase the efficiency and volume of seed
analysis methods. In this regard, DuPont notes that Sangtong describes a high-
throughput DNA extraction method using a 96-well sample tray format suitable for
automation, and Horigane 1 describes a high-throughput seed sampling method
using a computer-controlled blade cutting device for sampling a population of
seeds. Id.
Upon review of DuPont’s analysis and the evidence of record, summarized
above, we are not persuaded that DuPont has set forth sufficiently how Horigane 1
and Sangtong may be combined to arrive at the methods of claims 1 and 9. For
example, DuPont does not provide an adequate rationale for why a person of
ordinary skill in the art would modify Horigane 1 for tissue collection used in
DNA analysis. Horigane 1 appears to grind multiple seeds at a time for the
purposes of making a reproducible analytical surface for study using spectrometric
analytical techniques. Ex. 1009, Figure 3B, lower left. In Horigane 1, the tissue
removed from the seeds by grinding is not analyzed; it is the remaining analytical
surface of the seed that is analyzed. In Santong, however, it is the ground material
that is analyzed. Sangtong carefully cleans the grinding equipment between the
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grinding of seeds to prevent cross-contamination of the ground material from the
seed that is to be tested. Ex. 1003, 153. DuPont contends that the ordinary artisan
would have used the method of Horrigane I and analyzed the sampled seed for the
presence or absence of a transgene. Pet. 27. What is missing from DuPont’s
challenge, however, is an explanation of how the ordinary artisan would have
modified the method of Horrigane I, wherein multiple seeds are ground
simultaneously, to prevent cross-contamination of protein and DNA between the
seeds, as required by the method disclosed by Sangtong. See KSR Int’l Co., 550
U.S. at 418 (reaffirming that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Accordingly, we conclude that DuPont has not demonstrated that there is a
reasonable likelihood that it would prevail in showing that claims 1 and 9 of the
’143 patent would have been obvious over the combination of Horigane 1 and
Sangtong.
4. Obviousness of Claims 2–8 Over the Combination of Horigane 1,
Sangtong, Chunwongse, He, and Lipman
DuPont contends that claims 2–8 are obvious over the combination of
Horigane 1, Sangtong, Chunwongse, He, and Lipman. Pet. 41–52. As explained
above, however, we are not persuaded that DuPont has set forth sufficiently how
Horigane 1 and Sangtong may be combined to arrive at the methods of claim 1,
from which claims 2–8 depend. DuPont points to no other disclosure in any of
Chunwongse, He, and Lipman and provides no further rationale to cure this
deficiency. Accordingly, upon review of DuPont’s analysis of the evidence of
record, we are not persuaded that there is a reasonable likelihood that DuPont
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would prevail at trial based on obviousness of any one of claims 2–8 over the
combination of Horigane 1, Horigane 2, Keller, Kelly, and CN2510248.
C. Obviousness of Claims 10 and 11 Over the Combination of Horigane 1,
Sangtong, Horigane 2, and Chunwongse
DuPont contends that claims 10 and 11 would have been obvious over the
combination of Horigane 1, Sangtong, Horigane 2, and Chunwongse. Pet. 52–59.
Claims 10 and 11 depend from claim 1 and provide as follows:
10. The method as set forth in claim 1, wherein removing the tissue
sample from at least one or more seeds in a population of seeds and
depositing the tissue sample into an individual compartment of a
sample tray are done by an automated seed sampler system.

11. The method of claim 1, further comprising removing a tissue
sample from each seed in a population of seeds and depositing each
tissue sample into an individual compartment of a sample tray having
an extraction buffer present therein using an automated system; and
analyzing the extracted DNA from each tissue sample for the presence
or absence of a transgene of interest.

As in previous grounds discussed above, DuPont relies upon Horigane 1 and
Sangtong for the elements of claim 1. Briefly, Sangtong is relied upon for the
extraction and analysis of tissue sample DNA for the presence or absence of a
transgene of interest. Horigane 1 is relied upon for the disclosure of a system for
analyzing plant tissue samples by molecular spectrometry. Ex. 1009, 398. In
Horigane 1, wheat grains are placed in a kernel holder capable of holding multiple
wheat grains at a desired angle and height. Id. at 399. Wheat grains are then cut
with a computer-controlled cutting device to make an analytical surface. Id. at
400. The processed wheat grains are then analyzed using spectroscopy. Id.
DuPont acknowledges that Horigane 1 is silent regarding depositing a tissue
sample into a sample tray via an automated system. Pet. 56. For this element of
claim 10, DuPont relies on Horigane 2. Id. at 56–57. Horigane 2 discloses an
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apparatus for settling, analyzing, and sorting materials. Ex. 1004, abstract, ¶¶ 54–
83. Seeds, for example, are settled into a holder at a definite posture and held in
place using a light-hardenable adhesive. Id. ¶ 56. Once arranged in the holder,
each individual seed may be cut or ground to prepare an analyzing surface. Id. ¶
69. After the seeds are analyzed, the seed holders are transferred to a computer-
controlled sorting device in which desirable seeds are pushed from the holder and
into a collector means. Id. ¶¶ 99-100.
DuPont contends that one of ordinary skill in the art would have been
motivated to combine Horigane 1, Sangtong, and Horigane 2, because all of these
publications describe a high-throughput method for sampling seed and because all
publications disclose extracting the seed sample in such a way as to preserve the
seed’s germination viability. Pet. 57.
Upon review of DuPont’s analysis and the evidence of record, summarized
above, we are not persuaded that DuPont has set forth sufficiently how each
element of claim 10 of the ’143 patent is taught or suggested by the combination of
Horigane 1, Sangtong, and Horigane 2. Claim 10 requires the automatic removal
of a tissue sample and the automatic depositing of that tissue sample into an
individual compartment of a sample tray. Horigane 2, relied upon by DuPont for
the elements of claims 10, does not disclose the automatic removal and depositing
of a tissue sample. Rather, the apparatus of Horigane 2 is designed to place a seed
in a holder where tissue is then removed from the seed, not for collection, but for
the purposes of preparing an analytical surface on the seed. Ex. 1004, abstract,
¶¶ 54–83. Accordingly, we are not persuaded that the prior art references relied
upon by DuPont disclose each element of claim 10.
Furthermore, DuPont does not explain adequately why a person of ordinary
skill in the art would have modified the automated systems Horigane 1 and
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Horigane 2, designed for spectroscopic analysis, with the DNA analytical method
of Sangtong. The rationale that each of Horigane 1, Sangtong, and Horigane 2
relate to high-throughput methods for sampling seeds in a manner that preserves
the seed’s ability to germinate does not explain how a person of ordinary skill in
the art would have modified the prior art systems to arrive at the invention
described in claim 10.
Like claim 10, claim 11 requires the automatic removal of a tissue sample
and the automatic depositing of that tissue sample into an individual compartment
of a sample tray. Chunwongse is not relied upon by DuPont to cure the deficiency
of the combination of Horigane 1, Sangtong, and Horigane 2. Pet. 58–59.
Accordingly, we are not persuaded that the prior art references relied upon by
DuPont disclose each element of claim 11 for the reasons discussed above.
In view of the above, we are not persuaded that there is a reasonable
likelihood that DuPont would prevail at trial with respect to claims 10 and 11 of
the ’143 patent, based on obviousness of claims 10 and 11 over the combination of
Horigane 1, Sangtong, and Horigane 2.
D. Conclusion
The Petition does not persuade us that there is a reasonable likelihood that at
least one of the challenged claims is unpatentable based on the asserted grounds.
We do not institute an inter partes review on claims 1–11 of the ’143 patent for the
reasons stated above.
III. ORDER
In consideration of the foregoing, it is hereby ORDERED that the petition
challenging the patentability of claims 1-30 of U.S. Patent No. 7,832,143 B2 is
denied as to all challenged claims and no trial is instituted.
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For PETITIONER:

Todd R. Walters
Erin M. Dunston
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
erin.dunston@bipc.com

For PATENT OWNER:

Andrew Sommer
Melinda Patterson
WINSTON & STRAWN LLP
asommer@winson.com
mpatterson@winston.com