Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 10
`
` Entered: November 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAYER CROPSCIENCE LP,
`Petitioner,
`
`v.
`
`SYNGENTA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01332
`Patent 8,404,618 B2
`____________
`
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 10
`
` Entered: November 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAYER CROPSCIENCE LP,
`Petitioner,
`
`v.
`
`SYNGENTA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01332
`Patent 8,404,618 B2
`____________
`
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01332
`Patent 8,404,618 B2
`
`I.
`
`INTRODUCTION
`
`Bayer CropScience LP (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
`requesting institution of an inter partes review of claims 1–5 and 7–12 of
`U.S. Patent No. 8,404,618 B2 (Ex. 1001, “the ’618 patent”). Syngenta
`Limited (“Patent Owner”) timely filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Pursuant to our authorization, Petitioner also filed a Reply
`to address Patent Owner’s arguments that certain prior art references are
`disqualified under pre-AIA 35 U.S.C. § 103(c)(1).
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . 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 Petition,
`Patent Owner’s Preliminary Response, and Petitioner’s Reply, and for the
`reasons explained below, we determine that Petitioner has not shown that
`there is a reasonable likelihood that it would prevail with respect to at least
`one of the challenged claims. We, thus, deny institution of an inter partes
`review as to the ’618 patent.
`A. Related Proceedings
`Petitioner and Patent Owner do not identify any related proceedings.
`B. The ’618 Patent (Ex. 1001)
`The ’618 patent issued on March 26, 2013, with Andrew Plant, Willy
`Thaddaeus Ruegg, Jean Wenger, Ulrich Johannes Haas, and Anjaas Greiner
`listed as co-inventors. Ex. 1001, (45), (75). The ’618 patent claims priority
`to a PCT application filed April 29, 2005, as well as to a foreign application
`filed April 30, 2004. Id. at (22), (30). The ’618 patent relates generally to
`“new herbicidal compositions for combating weed grasses and weeds in
`
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`2
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`IPR2017-01332
`Patent 8,404,618 B2
`
`crops of useful plants, which comprise a herbicide and a safener which
`preserves the useful plant but not the weed grasses and weeds against the
`phytotoxic action of the herbicide.” Id. at 1:7–11. The ’618 patent indicates
`that “[t]he interaction of herbicides and safeners is complex, and it is
`difficult to predict which safeners, if any, will be useful with a given
`herbicide.” Id. at 1:23–26. As the herbicide to be used in the composition,
`the ’618 patent identifies compounds of “formula I,” which are set forth
`generally in independent claim 1 and more specifically in dependent claims
`2–9.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–5 and 7–12 of the ’618 patent.
`Independent claim 1 and dependent claim 9 are illustrative, and are
`reproduced below:
`1. A herbicidal composition comprises a mixture of
`a) a herbicidally active amount of a compound of the formula I
`
`
`
`wherein
`R1 and R2 are each independently of the other hydrogen or C1-
`C10alkyl
`R3 and R4 are each independently of the other hydrogen, C1-
`C10alkyl or C1-C10haloalkyl;
`m is an integer selected from 1 or 2;
`R5 and R6 are each independently of the other hydrogen or
`methyl;
`n is an integer selected from 1 or 2;
`
`
`
`3
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`IPR2017-01332
`Patent 8,404,618 B2
`
`
`Y is phenyl or phenyl substituted by halogen, C1-C6alkyl or C1-
`C6haloalkyl, or
`Y is diazole in which the diazole can be substituted by
`hydroxyl, halogen, C1-C10alkyl or C1-C10alkyl substituted by
`hydroxyl, C1-C10alkoxy, C1-C4haloalkyl, C1-C4haloalkoxy;
`and
`b) a herbicide-antagonistically active amount of a safener
`selected from the group consisting of cloquintocet-mexyl or a
`lithium, sodium, potassium, calcium, magnesium, aluminium,
`iron, ammonium, quaternary ammonium, sulfonium or
`phosphonium salt thereof, fenchlorazole-ethyl, mefenpyr-
`diethyl, isoxadifen-ethyl, furilazole or the R isomer thereof,
`benoxacor, dichlormid, MON4660, oxabetrinil, cyometrinil,
`the Z isomer thereof, fenclorim, N-cyclopropyl-4-(2-methoxy-
`benzoylsulfamoyl)-benzamide, N-isopropyl-4-(2-methoxy-
`benzoylsulfamoyl)-benzamide, naphthalic acid anhydride or
`flurazole, or a combination thereof.
`
`
`9. The composition according to claim 1, wherein the
`compound of the formula I is 3-(5-difluoromethoxy-1-
`methyl-3-trifluoromethyl-1H-pyrazol-4-ylmethylsulf- onyl)-
`5,5-dimethyl-4,5-dihydroisoxazole.
`The compound of claim 9 is also referred to as “pyroxasulfone.”
`Ex. 1002 ¶ 38; Ex. 2001 ¶ 39.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the claims of the ’618 patent
`based on the following grounds:
`
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`4
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`IPR2017-01332
`Patent 8,404,618 B2
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`
`References
`Polge Patent1
`
`Basis
`§ 102(e)(2)
`
`Claims challenged
`1–5 and 7–12
`
`Polge Publication2
`
`§ 102(e)(1)
`
`1–5 and 7–12
`
`Polge Patent and Owen3
`
`§ 103(a)
`
`1–5 and 7–12
`
`Polge Publication and Owen
`
`§ 103(a)
`
`1–5 and 7–12
`
`§ 103(a)
`
`Takahashi,4 Owen, and
`Ziemer15
`Takahashi, Owen, and
`Ziemer26
`Takahashi, Owen, and
`Ziemer37
`Takahashi, Owen, and Hubele8 § 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`1–5 and 7–12
`
`1–5 and 7–12
`
`1–5 and 7–12
`
`1–5 and 7–12
`
`Takahashi, Owen, and Chollet9 § 103(a)
`
`1–5 and 7–12
`
`Takahashi, Owen, and Fedtke10 § 103(a)
`
`1–5 and 7–12
`
`Takahashi, Owen, and
`Sprague11
`Takahashi, Owen, and Davies12 § 103(a)
`
`§ 103(a)
`
`1–5 and 7–12
`
`1–5 and 7–12
`
`§ 103(a)
`
`1–5 and 7–12
`
`Takahashi, Owen, and
`Leuschen13
`
`1 US Patent 8,551,918 B2 issued to Nicholas Polge on October 8, 2013
`(“Polge Patent”) (Ex. 1008).
`2 PCT Publication WO 2005/055716 A2 published on June 23, 2005, to
`Nicholas Polge (“Polge Publication”) (Ex. 1009).
`3 Michael D.K. Owen et al., Evaluation of preemergence applications of
`KIH-485, s-metolachlor & CGA-154281, and s-metolachlor & atrazine &
`CGA-154281 for crop phytotoxicity and weed control in corn, Nashua, IA,
`2003 NCWSS Research Report, Vol. 60, 51–52 (2003) (“Owen”) (Ex. 1012)
`4 English translation of PCT Publication WO 2004/014138 A1 published on
`February 19, 2004, to Satoru Takahashi (“Takahashi translation”) (Ex.
`1013/Ex. 1014).
`
`
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`5
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`IPR2017-01332
`Patent 8,404,618 B2
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`
`Petitioner further relies upon the Declaration of Michael D. K. Owen,
`Ph.D. (Ex. 1002) in support of its challenge. Patent Owner relies upon the
`Declaration of Stevan Knezevic, Ph.D. (Ex. 2001) in its Preliminary
`Response.
`II. ANALYSIS
`A. Claim Construction
`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); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`
`
`5 PCT Publication WO 03/022050 A1 published March 20, 2003, to Frank
`Ziemer et al. (“Ziemer1)” (Ex. 1016).
`6 US Patent 6,251,827 B1 issued to Frank Ziemer et al. on June 26, 2001
`(“Ziemer2”) (Ex. 1017).
`7 PCT Publication WO 02/060255 A2 published on August 8, 2002, to Frank
`Ziemer et al. (“Ziemer3)” (Ex. 1018).
`8 US Patent 4,902,340 issued to Adolf Hubele on February 20, 1990
`(“Hubele”) (Ex. 1019).
`9 English Translation of PCT Publication WO 98/47356 published on
`October 29, 1998 (“Chollet translation”) (Ex. 1020/Ex. 1021).
`10 Carl Fedtke et al., Synergistic Activity of the Herbicide Safener
`Dichlormid with Herbicides Affecting Photosynthesis, Zeitschrift Für
`Naturforschung, Section C, Biosciences 1990 Vol. 45, 565–56 (“Fedtke”)
`(Ex. 1022).
`11 Christy L. Sprague et al., Enhancing the Margin of Selectivity of RPA
`201772 in Zea mays with Antidotes, Weed Science, Vol. 47, 492–497 (1999)
`(“Sprague”) (Ex. 1023).
`12 Joanna Davies et al., Herbicide Safeners – Commercial Products and
`Tools for Agrochemical Research, Pesticide Outlook 10–15 (February 2001)
`(“Davies”) (Ex. 1015).
`13 William E. Lueschen et al., Effects of a Seed-Applied Safener on Corn
`Injury from Clomazone, Imazaquin and Imazethapyr, University of
`Minnesota Southern Experiment Station Research Report, 72–73 (1989)
`(“Lueschen”) (Ex. 1024).
`
`
`
`6
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`IPR2017-01332
`Patent 8,404,618 B2
`
`2144–46 (2016). Under the broadest reasonable construction standard, claim
`terms are generally given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Absent
`claim language carrying a narrow meaning, the PTO should only limit the
`claim based on the specification . . . when [it] expressly disclaim[s] the
`broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`“Although an inventor is indeed free to define the specific terms used to
`describe his or her invention, this must be done with reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner proposes constructions for the terms “comprises” and
`“herbicide antagonistically active amount of safener.” See Pet. 13–18. We
`apply the traditional understanding in patent law that the transitional phrase
`“comprising” in claim language is open-ended. See Gillette Co. v. Energizer
`Holdings, Inc., 405 F.3d 1367, 1371–73 (Fed. Cir. 2005). At this stage of
`the proceeding, however, we find that no explicit construction of any other
`claim term is necessary to determine whether to institute a trial in this case.
`See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir.
`2011) (“[C]laim terms need only be construed ‘to the extent necessary to
`resolve the controversy.’” (Quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`B. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art for the
`’618 patent would be “an agronomist, i.e., a person who studies the science
`of the production of crops for use as food, fuel or fiber, with a focus on weed
`
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`7
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`IPR2017-01332
`Patent 8,404,618 B2
`
`science and controlling weeds,” and that “[t]his person would likely be a
`university researcher or a scientist at a crop science company” and “have a
`minimum of five years of experience evaluating herbicides and
`combinations thereof on at least one major field crop and would have
`knowledge of the different modes of actions and chemical classes of
`herbicides, and the problems[, such as crop injury,] encountered using
`herbicides.” Ex. 1002 ¶ 14. Patent Owner does not explicitly address the
`education and experience level required for the skilled artisan in its
`Preliminary Response.
`On this record, we adopt Petitioner’s definition of the level of
`ordinary skill in the art as it undisputed and consistent with the evidence of
`record. We further note that the prior art itself demonstrates the level of skill
`in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding
`ordinary skill level are not required “where the prior art itself reflects an
`appropriate level and a need for testimony is not shown”) (quoting Litton
`Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
`1985)).
`
`C. Patentability Analysis
`1. Anticipation Based on Polge; Obviousness Based on
`Polge and Owen
`The Polge Patent (Ex. 1008) and Polge Publication (Ex. 1009)
`(collectively, “Polge”) share the same written description, and Petitioner
`relies upon the same teachings in both references. Petitioner asserts that “the
`two references differ insofar as (a) the statutory requirements for prior art
`under § 102(e)(1) are different than under § 102(e)(2); (b) the claims of the
`Polge publication are different than the claims of the Polge patent; and (c)
`8
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`IPR2017-01332
`Patent 8,404,618 B2
`
`the named owners are different as well.” Pet. 33. For purposes of our
`analysis herein, we consider the references together.
`Petitioner contends that Polge anticipates each of the challenged
`claims. Pet. 26–34. Petitioner also contends that the challenged claims are
`rendered obvious by Polge in combination with Owen. Id. at 34–37. Polge
`teaches an herbicidal composition which can include an acetamide herbicide,
`and identifies “KIH-485” among the preferred acetamide herbicides. Ex.
`1008, 2:14, 4:53–56; Ex. 1009, 3. Owen describes a study evaluating the
`preemergence application of KIH-485 and other herbicides for crop
`phytotoxicity and weed control in corn. Ex. 1012, 51.
`Petitioner contends that the KIH-485 herbicide identified in Polge and
`Owen is pyroxasulfone, i.e., the herbicide compound of dependent claim 9.
`Pet. 9–10. Neither Polge nor Owen, however, identifies the chemical
`structure or formula of KIH-485. Moreover, one other reference of record,
`dated 2004, states that “KIH-485 is an experimental herbicide from Kumiai
`America,” and “[t]he chemistry, fate and action, and biological information
`has not been released at this time.” Ex. 1040, 34; see also Ex. 2001 ¶ 27
`(Patent Owner’s declarant attesting that KIH-485 is an “‘experimental code
`name,’ which does not provide any information whatsoever about the
`chemical structure, chemical family, chemical common name, or mechanism
`of action of the experimental herbicide”). Petitioner’s only documentary
`evidence correlating KIH-485 to pyroxasulfone comes from an undated
`publication, which states that “[t]he experimental portion of the study was
`conducted between October 17 and October 21, 2008,” which is well after
`the priority date claimed for the ’618 Patent. Ex. 1025, 10. Given that
`Petitioner does not challenge the priority date, we agree with Patent Owner
`
`
`
`9
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`IPR2017-01332
`Patent 8,404,618 B2
`
`that Exhibit 1025 does not qualify as prior art. Prelim. Resp. 15. Petitioner,
`therefore, has not shown that the skilled artisan would have understood or
`recognized KIH-485 as the claimed herbicide prior to the filing date of
`the’618 patent.
`Accordingly, we determine that Petitioner has not established a
`reasonable likelihood of prevailing with respect to its anticipation challenges
`based on Polge or its obviousness challenges based on Polge and Owen.
`2. Obviousness Based on Takahashi and Owen
`Petitioner contends that the challenged claims are also rendered
`obvious by the combination of Takahashi and Owen, along with one of
`several references teaching the use of a safener. Pet. 37–59.
`For these obviousness challenges, Petitioner relies upon Owen as
`teaching that “KIH-485 was superior to other soil-applied acetamide
`herbicides for weed control, yet it caused ‘significant injury’ at the rate of
`0.446 lb/A (which was nonetheless effective to control weeds.” Pet. 39. As
`discussed above, however, Petitioner has not shown that the skilled artisan
`would have understood or recognized the KIH-485 herbicide mentioned in
`Owen to be pyroxasulfone prior to the filing date of the ’618 patent.
`Petitioner has also not demonstrated why the skilled artisan would have
`considered Owen’s teaching regarding KIH-485 to be relevant to Takahashi,
`which does not utilize the KIH-485 nomenclature to refer to the herbicides
`of formula (I) discussed therein.
`Accordingly, we determine that Petitioner has not established a
`reasonable likelihood of prevailing with respect to its obviousness
`challenges based on Takahashi and Owen.
`
`
`
`
`10
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`IPR2017-01332
`Patent 8,404,618 B2
`
`III. CONCLUSION
`
`For the foregoing reasons, we conclude Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in proving the
`unpatentability of claims 1–5 and 7–12 of the ’618 patent.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition for inter
`partes review is denied as to all challenged claims of the ’618 patent.
`.
`
`
`
`
`11
`
`
`
`IPR2017-01332
`Patent 8,404,618 B2
`
`PETITIONER:
`Susan E. Shaw McBee
`Chester Moore
`Stephanie Amoroso
`MCBEE MOORE WOODWARD & VANIK IP, LLC
`ptab-ipr@mmwvlaw.com
`cgmoore@mmwvlaw.com
`samoroso@mmwvlaw.com
`
`Andrew S. Baluch
`BALUCH LLP
`andrew@baluchlaw.com
`
`PATENT OWNER:
`John C. Alemanni
`Allison W. Dobson
`KILPATRICK TOWNSEND
`jalemanni@kilpatricktownsend.com
`adobson@kilpatricktownsend.com
`
`
`
`
`
`12
`
`
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