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

Patent Trial and Appeal Board

Jul 11, 2014

12848751 (P.T.A.B. Jul. 11, 2014)

Trials@uspto.gov Paper No. 16
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 IPR2014-00332
Patent 8,071,845 B2

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

GREEN, Administrative Patent Judge.

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

IPR2014-00332
Patent 8,071,845 B2

2

I. INTRODUCTION
E.I. du Pont de Nemours and Company (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1-13 of
U.S. Patent No. 8,071,845 B2 (Ex. 1001, “the ’845 patent”). Monsanto
Technology LLC (“Patent Owner”) filed a 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), which provides as follows:
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.
On consideration of the information presented in the Petition and the
Preliminary Response, we are not persuaded that there is a reasonable
likelihood that Petitioner would prevail in showing that claims 1-13 of the
’845 patent are unpatentable. Accordingly, we decline to institute an inter
partes review of those claims.
A. Related Proceedings
According to Petitioner and Patent Owner, the ’845 patent is involved
in the following co-pending case: Monsanto Co. v. Pioneer Hi-Bred
International, Inc., Case No. 4:12-cv-1090-CEJ (E. D. Mo.). Pet. 4; Paper 7,
2.
IPR2014-00332
Patent 8,071,845 B2

3

In addition, concurrently with the instant Petition, Petitioner also filed
Petitions for inter partes review for: claims 1-11 of U.S. Patent No.
7,832,143; 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;
IPR2014-00333 – IPR2014-00335.
B. The Asserted Grounds of Unpatentability
Petitioner asserts the challenged claims are unpatentable on the
grounds set forth below. Pet. 5-6.
IPR2014-00332
Patent 8,071,845 B2

4

Reference(s) Basis Claims Challenged
Horigane 1
1
and
Sangtong
2

§ 103(a) 1-5, 12, and 13
Horigane 1, Sangtong,
and Kamiya
3

§ 103(a) 6
Horigane 1, Sangtong,
and Wright
4

§ 103(a) 7-9
Horigane 1, Sangtong,
and Horigane 2
5

§ 103(a) 10 and 11
C. The ’845 Patent
The ’845 patent, titled “Automated Seed Sampler and Methods of
Sampling, Testing and Bulking Seeds,” relates to a population of seeds,

1
Horigane et al., Two-dimensional analysis of kernels using a new sample
preparation method, 41 CHEMISTRY AND BIOLOGY 398-402 (2003) (Ex.
1003) (“Horigane 1”). Note that Exhibit 1002 is the reference in the original
Japanese, while Exhibit 1003 is a certified translation of Exhibit 1002.
Moreover, Petitioner provides an affidavit attesting to the accuracy of the
translations. See Ex. 1003; 37 C.F.R. § 42.63(b).
2
Sangtong et al., Serial Extraction of Endosperm Drillings (SEED) – A
Method for Detecting Transgenes and Proteins in Single Viable Maize
Kernals, 19 PLANT MOLECULAR BIOLOGY REP. 151-58 (2001) (Ex. 1004)
(“Sangtong”).
3
Motokazu Kamiya & Tadahiko Kiguchi, Rapid DNA Extraction Method
from Soybean Seeds, 53 BREEDING SCI. 277-79 (2003) (Ex. 1005)
(“Kamiya”).
4
Harold Wright, Commercial Hybrid Seed Production, HYBRIDIZATION OF
CROP PLANTS 161-76 (1980) (Ex. 1006) (“Wright”).
5
Horigane, U.S. Patent No. 6,537,826 B1, issued Mar. 25, 2003 (Ex. 1007)
(“Horigane 2”).
IPR2014-00332
Patent 8,071,845 B2

5

wherein the seeds have had a portion of the seed tissue removed by an
automated sampling system. Ex. 1001, Abstract. Substantially all of the
seeds in the population have in common the presence or absence of a
transgene. Id. The ’845 patent describes a system for non-destructively
obtaining a material for testing from a seed, wherein the system may
comprise a sampler for removing material from the seed; a seed conveyor
that conveys the seed from the sampler to a compartment in a seed tray; and
a conveyor that transports the material that has been removed from the seed
to a corresponding compartment in a sample tray. Id. at 1:37-38, 51-56.
D. Illustrative Claim
Petitioner challenges claims 1-13 of the ’845 patent. Claim 1 is the
sole independent claim of the challenged claims, is illustrative of the
claimed subject matter, and is reproduced below.
1. A population of seeds, wherein substantially all of the
seeds in the population have a portion of seed tissue removed
by an automated sampling system, wherein substantially all of
the seeds in the population have the presence or absence of at
least one transgene in common, and wherein the presence or
absence of the at least one transgene in the seeds in the
population is determined by analyzing the portion of seed tissue
removed from the seeds.
Ex. 1001, col. 18, l. 65 – col. 19, l. 5.
IPR2014-00332
Patent 8,071,845 B2

6

II. ANALYSIS
A. Claim Construction
Consistent with the Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284 (2011) (“AIA”), we interpret a claim using the
“broadest reasonable construction in light of the specification of the patent in
which it appears.” 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under that standard,
claim terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). For purposes of this institution decision, we provide the following
construction of the term “automated.” Beyond that term, explicitly
construed below, we determine that no express claim construction is
necessary for any other claim term for purposes of this decision.
“automated”
Petitioner asserts that the Specification of the ’845 patent does not
define the term “automated.” Pet. 7. Relying on Patent Owner’s allegation
that Pioneer Hi-Bred International, Inc. (“Pioneer”) infringes the ’845 patent
in a concurrent lawsuit, wherein Pioneer’s process requires a number of
manual steps, Petitioner contends that Patent Owner “has taken the position
that the term ‘automated’ encompasses ‘partially machine driven and/or
computer controlled to reduce the amount of work done by humans.’” Id.
We note, however, that construing a claim by reference to an accused device
IPR2014-00332
Patent 8,071,845 B2

7

is inappropriate. See NeoMagic Corp. v. Trident Microsys., Inc., 287 F.3d
1062, 1074 (Fed. Cir. 2002) (“It is well settled that claims may not be
construed by reference to the accused device.”).
Patent Owner responds that the ’845 patent “provides for a device that
can automatically (a) take tissue samples directly from individual seeds
precisely and without depriving the seed of its germination viability and
(b) convey both the seed and the seed samples to different but corresponding
locations, such as corresponding wells of separate seed trays.” Prelim. Resp.
11. Patent Owner contends that “automated” requires that the above
“functions occur substantially without the need for human interaction,
intervention, or control.” Id. According to Patent Owner, under Petitioner’s
proffered construction, “automated” would “include a system that is 99%
manually operated so long as it is 1% ‘machine driven and/or computer
controlled.’” Id. at 3.
Independent claim 1 is drawn to a product, that is, a population of
seeds. The claim requires the population of seeds to have a portion of seed
tissue removed by an automated sampling system, which is a process
limitation. However, “[t]he patentability of a product does not depend on its
method of production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985);
see also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315
(Fed. Cir. 2006) (“once a product is fully disclosed in the art, future claims
to that same product are precluded, even if that product is claimed as made
by a new process.”). The recitation of a process in a product claim limits the
IPR2014-00332
Patent 8,071,845 B2

8

product only to the extent that the process imparts distinctive structural
characteristics to the product. Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d
1261, 1268 (Fed. Cir. 2012).
Here, the Specification of the ’845 patent does not appear to provide
any description of any specific structure that is imposed on the seeds of the
population when the sampling system is automated, as opposed to any other
type of system, such as a manual system. Thus, for purposes of this
decision, we interpret “automated” as not imparting any specific structural
limitation to the claimed population of seeds.
B. Obviousness over Horigane 1 and Sangtong
Petitioner contends that the seed populations of claims 1-5, 12, and 13
are unpatentable under 35 U.S.C. § 103(a), given the combination of the
disclosures of Horigane 1 and Sangtong. Pet. 19-35. In addition, Petitioner
relies on the combination of Horigane 1 and Sangtong, with additionally
cited references, in challenging claims 6-11. Petitioner presents a claim
chart demonstrating where the limitations of the challenged claims may be
found in the cited references. Id. at 19-26. Petitioner also relies on the
Declaration of Clifford F. Weil, Ph.D. Ex. 1008.
Petitioner initially notes that claim 1 is directed to a population of
seeds. Pet. 26. Petitioner contends that Horigane 1 discloses a population of
seeds. Id. at 27-28. In addition, Petitioner contends that Horigane 1
discloses an automated sampling system, which has a sequential controller,
for grinding and cutting of the seed to remove a portion of the seed tissue.
IPR2014-00332
Patent 8,071,845 B2

9

Id. at 28. Specifically, Petitioner relies on Horigane 1 to teach the limitation
that “wherein substantially all of the seeds in the population have a portion
of seed tissue removed by an automated sampling system.” Id. at 19.
Horigane 1 discloses a polyspecimen analytical system, in which a
seed, such as a wheat seed, may be analyzed using spectroscopic methods,
such as through the use of a two-dimensional spectrophotometer or a two-
dimensional elemental analyzer. Ex. 1003, Abstract.
Horigane 1 notes that in order to perform such method, it is necessary
to prepare the analytical surface under the same conditions, but that it is
difficult to put several kernels side by side. Id. at 398. Thus, Horigane 1
discloses a kernel holder “capable of keeping the angle and height of the
analytical surface of a sample relative to the analytical stage constant and
developed a technique for comparing the distribution of components among
individuals by preparing continuous cross-sectioned kernels.” Id. at 399.
Once the kernels are fixed into the holder, for example by using a
light curable resin, such as those used in dentistry, the analytical portion of
the kernel is cut into a smooth surface. Id. at 399-400.
IPR2014-00332
Patent 8,071,845 B2

10

Figure 3 of Horigane 1 is reproduced below:

Figure 3 shows the preparation of analytical samples of a wheat kernel, and
the cutting device. Id. at 400. The samples are cut with a diamond disc that
is 22mm in diameter. Id. The portion of the holder that holds the wheat
kernels is approximately 40 mm in length. Id. at 399, Fig. 1. The cutting
device, shown in the lower left of Figure 3, is programmed for cutting and
grinding with a sequential controller. Id. at 400. The lower left of Figure 3
shows an enlarged view of the cut portions of wheat endosperms, as well as
the diamond disc. As taught by Horigane 1, the embryos removed by cutting
maintain their germination ability. Id.
Petitioner acknowledges that “Horigane 1 is silent with regard to the
presence or absence of a transgene.” Pet. 29. Sangtong is relied upon by the
IPR2014-00332
Patent 8,071,845 B2

11

Petitioner for that teaching. Id. at 29. Specifically, Petitioner contends that
Sangtong teaches a method for detecting a transgene in the protein product
of maize endosperm, such that the kernel may be germinated after analysis.
Id. at 29. According to Petitioner, Samples 2-7 and 13 of Sangtong
represent a population of seeds containing a transgene, whereas Samples 1,
8-12, and 14 represent a population of seeds lacking the transgene. Id.
Based on the teaching of Sangtong that the “‘method is particularly useful
for screening transgenic kernels in breeding experiments,’” Petitioner
contends that Sangtong implicitly teaches that one would use the method to
select a population of seeds, such that each member of the population has in
common the presence of a transgene. Id.
Sangtong teaches a method for detecting a transgene in maize
endosperm, in which the kernel may still be germinated after analysis. Ex.
1004, Abstract. A hand-held rotary grinder is used to grind the kernels. Id.
at 153. The ground endosperm is transferred to a 96 well plate, and drill
bits, funnels, and fingers are “thoroughly washed between samples to avoid
contamination.” Id. The ground endosperm is then serially extracted, first
for protein, and then for DNA. Id. at Abstract. The protein extraction is
used to determine the expression product of the transgene, while the DNA
extraction may be used in PCR to detect the transgene itself. Id.
Petitioner contends that the “Horigane method is applicable to any
type of analysis of removed tissue,” and as “Sangtong describes removing
endosperm tissue from seeds of corn while preserving the germination
IPR2014-00332
Patent 8,071,845 B2

12

viability of the seeds and then analyzing the removed tissue for the presence
or absence of a transgene and the expression of the transgene,” it would have
been obvious to the ordinary artisan to use the method of Horigane 1 to
analyze the sampled seed for the presence or absence of a transgene. Pet.
27. Petitioner contends further that the combination would maintain the
benefits of the automation taught by Horigane 1 while testing for transgenes
as taught by Sangtong. Id. at 30.
Patent Owner contends that Petitioner has failed “to provide any
reasonable basis for how or why a person of skill in the art would have
combined Horigane [1] with Sangtong.” Prelim. Resp. 25. Specifically,
according to Patent Owner, Petitioner “does not even begin to explain how
its proposed combination would actually yield th[e] desired result.” Id. at
29.
We agree with Patent Owner. 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. 1003, Figure 3B,
lower left. Sangtong, however, removes analytical samples from the seeds
and carefully cleans the grinding equipment between the grinding of seeds to
prevent cross-contamination of the ground material from the seed that is to
be tested. Ex. 1004, 153. Petitioner contends that the ordinary artisan would
have used the method of Horigane 1 and analyzed the sampled seed for the
presence or absence of a transgene. Pet. 27. What is missing from
Petitioner’s challenge, however, is an explanation of how the ordinary
IPR2014-00332
Patent 8,071,845 B2

13

artisan would have modified the method of Horigane 1, 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. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(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)).
None of the remaining proffered references cure that deficiency.
III. CONCLUSION
For the foregoing reasons, we are not persuaded that the Petition
establishes a reasonable likelihood that Petitioner would prevail in showing
claims 1-13 of the ’845 patent are unpatentable under 35 U.S.C. § 103(a).
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied as to all challenged claims of
the ’845 patent.

IPR2014-00332
Patent 8,071,845 B2

14

For PETITIONER:

Todd R. Walters, Esq.
Erin M. Dunston, Esq.
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