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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`BAYER CROPSCIENCE LP
`Petitioner
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`v.
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`SYNGENTA LIMITED
`Patent Owner.
`_______________
`
`Case IPR2017-01332
`Patent 8,404,618 B2
`_______________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S REQUEST FOR REHEARING
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`IPR2017-01332
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`I.
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`Patent 8,404,618 B2
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`THE ONLY BASIS FOR DENIAL IS MOOT, AND ADOPTING A
`NEW RATIONALE WOULD DENY BAYER DUE PROCESS.
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`The Board should institute trial because Syngenta has now conceded that a
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`post-filing reference can indeed be used to show the state of the art (Opp. 3),1
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`thereby mooting the sole reason the Board denied institution, i.e., that “Exhibit
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`1025 does not qualify as prior art.” Dec. 10. This concession confirms that it was
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`an abuse of discretion for the Board to deny institution based on an “erroneous
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`view of the law” espoused in Syngenta’s POPR. Cooter & Gell v. Hartmarx
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`Corp., 496 U.S. 384, 405 (1990) (equating abuse of discretion with legal error).
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`Bayer’s Due Process rights would be violated if the Board affirms denial by
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`adopting a different rationale on rehearing (newly raised in Syngenta’s opposition),
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`from which Petitioner has no right or ability to seek correction from the Board.
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2136 (2016) (“constitutional
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`questions” not barred from judicial review).
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`II. BAYER DID NOT NEWLY RELY ON INHERENCY.
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`Bayer’s new case law citations on rehearing were necessitated solely by the
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`Decision’s legal error (at 9-10) in denying institution because “Exhibit 1025 does
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`1“Patent Owner acknowledges that a post-filing date reference may be used to
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`show the state of the art and knowledge of one skilled in the art at the time the
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`application was filed.” Opp. 3.
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`1
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`IPR2017-01332
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`not qualify as prior art.” There is no “inherency” argument in Bayer’s rehearing
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`Patent 8,404,618 B2
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`
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`request for either Ground 1 or 2. To the contrary, in its request, Bayer explained
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`that the structure of KIH-485 is not an inherent “property” “flowing from”
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`anything, but rather, that KIH-485’s chemical “structure is its identity, not merely
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`one of its properties.” Req. 8 (quoting In re Crish). Syngenta does not even
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`mention Crish, much less distinguish it. Moreover, the holding in In re Wilson
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`does not restrict use of post-filing references only to show inherency as Syngenta
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`alleges (Opp. 4). See MPEP § 2124 (discussing many permissible uses). Just as
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`the Board permitted in Manoj (or Desai), Bayer used Exhibit 1025 to show that
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`KIH-485 in Polge was, in fact, pyroxasulfone having a chemical structure covered
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`by every claim of the ‘618 patent. Syngenta never rebutted this fact, and even
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`admitted it.2 Syngenta’s temporal distinction of Manoj (Opp. 6) is meritless, and in
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`any case, the “Steele” reference cited by Syngenta’s expert (Ex. 2001, 6) discloses
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`the chemical name for KIH-485 and was submitted to the journal in February 2005
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`(before the ’618 patent’s PCT date). None of Syngenta’s new factual issues were
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`decided in the Decision, and are better resolved in trial.
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`2 “Claim 9 corresponds to the structure of KIH-485 which the industry now knows
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`is pyroxasulfone.” POPR 3.
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`2
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`IPR2017-01332
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`Patent 8,404,618 B2
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`Despite Syngenta’s view that the holding in Wilson applies only to show
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`inherency, which requires no recognition by a person of ordinary skill, Syngenta
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`takes the inconsistent position that post-filing references can be used to show only
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`that a POSA knew a fact at the time. This is contradicted by Crish. Syngenta also
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`misapplies Hogan. Opp 5. Hogan holds that later publications may be used as
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`evidence of art existing on the filing date of an application. Hogan only prohibited
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`later evidence about “amorphous polymers which [polymers] did not exist on the
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`filing date.” Because KIH-485 indisputably did exist as of the filing date (even if
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`its structure was not known at the time), Exhibit 1025 is properly used, making this
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`case directly analogous to Crish. A prior art reference need not use the same terms
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`as the patent claim in haec verba for §102. The “[t]he invention is not the language
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`of the [claim] but the subject matter thereby defined.” Teva Pharm. Indus., Ltd. v.
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`AstraZeneca Pharm., LP, 661 F.3d 1378, 1383 (Fed. Cir. 2011).
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`III. SYNGENTA’S NEW ARGUMENT THAT POLGE IS NOT ENABLED
`IS UNTIMELY AND INCORRECT.
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`Syngenta’s new arguments that i) Exhibit 1025 cannot be used for enablement
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`of the anticipatory reference; ii) Polge is not enabled; and iii) Exhibit 1025 is not
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`authenticated or is otherwise deficient, are untimely and incorrect. Opp. 6-7, 3.
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`These arguments are incorrect because i) Polge is a U.S. patent and is presumed
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`enabled (Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed.
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`Cir. 2003)); ii) Syngenta, not Bayer, has the burden of persuasion to show non-
`3
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`IPR2017-01332
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`enablement of an anticipatory reference (IPR2014-00599, Paper 72, 28-29 (“we
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`Patent 8,404,618 B2
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`
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`place the ultimate burden of proving non-enablement on the patentee”); and iii)
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`Exhibit 1025 is corroborated by expert testimony and Syngenta’s own admissions
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`in its POPR (at 3). None of these issues were decided in the Decision; trial should
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`be held to resolve them in the first instance.
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`The allegation that Exhibit 1025 was somehow used to enable Polge is untrue.
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`Polge is presumptively enabled, even for its unclaimed disclosures. See Amgen,
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`314 F.3d at 1355. Moreover, Polge’s invention is not KIH-485 as a new chemical
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`entity requiring disclosure of how to make it, as Syngenta misconstrues, but rather
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`is a combination of known elements in the prior art: KIH-485, oil, and safener. No
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`knowledge of the structure of KIH-485 was needed to enable a POSA to physically
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`mix these components as Polge teaches. Polge—with no connection to Kumiai—
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`knew to include the pre-emergent herbicide called KIH-485 for combination with
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`oil and a safener more than a year before the 2005 PCT date of the ‘618 patent. It
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`is undisputed that numerous university researchers possessed and evaluated KIH-
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`485 in the field and freely published their results since 2003. Req. 6 & n.2. These
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`researchers (POSAs) had physical possession of KIH-485 and could have mixed it
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`with oil and a safener as claimed in the ’618 patent. No more is needed for
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`enablement of Polge. That Polge mis-named KIH-485 an “acetamide” is also
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`immaterial, as it was known to the university researchers to be an herbicide, and
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`4
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`IPR2017-01332
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`was always pyroxasulfone. See Teva, 661 F.3d at 1383 (“[T]hat which we call a
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`Patent 8,404,618 B2
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`
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`rose [b]y any other name would smell as sweet.”). Even if the Board newly and
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`erroneously finds that anticipation requires more enablement than mixing known
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`components, such a requirement is absent for Ground 2—the combination of Polge
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`with Owen under §103 (both use “KIH-485”). “[A] non-enabling reference may
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`qualify as prior art for the purpose of determining obviousness under 35 U.S.C.
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`103.” Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
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`IV. BAYER’S § 103 RATIONALE WAS NOT CONSIDERED BY THE
`EXAMINER AND IS NOT A NEW GROUND.
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`Syngenta’s reiteration that Bayer’s rationale for Ground 3 based on Takahashi
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`was rejected by the Examiner (Opp. 9-10) is still false. The Examiner’s statement
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`that “there is no motivation to combine the isoxazoline herbicides with safeners as
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`claimed” (Ex. 1004, 26) unequivocally fails to address whether motivation existed
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`to add safeners to the co-herbicides that are combined with the isoxazolines (Pet.
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`66-67). Denial based on Section 325(d) would thus be improper (and was not the
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`reason the Board denied institution). Nor has the Federal Circuit held that the
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`“new ground of rejection” precedent (e.g., In re Koenig) is wholly inapplicable to
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`AIA proceedings. See Genzyme Therap, Prods. L.P. v. Biomarin Pharm. Inc., 825
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`F.3d 1360, 1366 n.1 (Fed. Cir. 2016) (considering whether a violation of the “new
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`ground of rejection” doctrine has occurred in an IPR as between the Board’s
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`institution and final written decisions).
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`5
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`
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`By:
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` /Susan E. Shaw McBee/
`Susan E. Shaw McBee
`Reg. No. 39,294
`MCBEE MOORE WOODWARD &
`VANIK LLC
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing “Petitioner’s
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`Reply to Patent Owner’s Opposition to Petitioner’s Request for Rehearing” was
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`served on February 9, 2018, by email to:
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`KTS-Syngenta-618-IPR@kilpatricktownsend.com
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`John C. Alemanni:
`Allison W. Dobson:
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`jalemanni@kilpatricktownsend.com
`adobson@kilpatricktownsend.com
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`By:
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`/Hilary Fallow/
`Hilary Fallow
`MCBEE MOORE WOODWARD &
`VANIK LLC
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`
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