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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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`––––––––––––––
`
`PRECISION PLANTING LLC, AGCO CORPORATION,
`Petitioners,
`
`v.
`
`DEERE & COMPANY,
`Patent Owner
`
`––––––––––––––
`
`IPR2019-01046
`U.S. Patent No. 9,480,199
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`––––––––––––––
`
`
`PATENT OWNER SUR-REPLY
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`

`

`TABLE OF CONTENTS
`
`C.
`
`
`I.
`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION ........................................................................... 2
`II.
`III. OBJECTIVE INDICIA DEMONSTRATES NONOBVIOUSNESS ............ 4
`IV. KONING IS NON-ANALOGOUS ART ..................................................... 13
`V. A POSA WOULD HAVE NO MOTIVATION TO COMBINE AND
`NO REASONABLE EXPECTATION OF SUCCESS ............................... 15
`A.
`Petitioners Mischaracterize Deere’s Arguments ................................ 15
`B.
`A POSA Would Have Had No Motivation to Use Koning’s
`Brush-belt in Hedderwick or Expectation of Success ........................ 16
`A POSA Would Have Had No Motivation or Reasonable
`Expectation of Success in Inserting Seeds Into a Brush-belt
`With Yamahata’s Guide ..................................................................... 21
`Petitioners’ Proposed Combination Would Not Achieve the
`Claimed “Blocking Loading Surface” And “Delivery System” ........ 28
`Deere’s Arguments Are Entirely Consistent ...................................... 29
`E.
`Petitioners Are Judicially Estopped ................................................... 30
`F.
`VI. PETITIONERS’ WRONGLY ATTACK DR. GLANCEY ......................... 32
`
`
`
`D.
`
`i
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`

`

`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Demaco Corp. v. F Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988)................................................................................................11
`
`Fanduel, Inc. v. Interactive Games LLC,
`2020 WL 4342681 (Fed. Cir. Jul. 29, 2020) ........................................................................1, 23
`
`Festo Corp. v. Shoketsu Kinzoku, Ltd.,
`535 U.S. 722 (2002) .................................................................................................................32
`
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019)..........................................................................................10, 11
`
`Haynes Int’l, Inc. v. Jessop Steel Co.,
`8 F.3d 1573 (Fed. Cir. 1993)....................................................................................................30
`
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 ..........................................................................................................................15
`
`High Point SARL v. Sprint Nextel Corp.,
`817 F.3d 1325 (Fed. Cir. 2016)................................................................................................30
`
`K/S Himpp v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014)................................................................................................18
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011)................................................................................................31
`
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................................1, 15, 31
`
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 33, 33 (PTAB Jan. 24, 2020) ....................................................9, 11, 12
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016)................................................................................................22
`
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012)................................................................................................15
`
`New Hampshire v. Maine,
`532 U.S. 742 (2001) .....................................................................................................30, 31, 32
`
`ii
`
`

`

`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00039, Paper 77, 20 (PTAB Feb. 24, 2020) .............................................................33
`
`Otsuka Pharm. Co. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012)................................................................................................16
`
`Perry v. Blum,
`629 F.3d 1 (1st Cir. 2010) ........................................................................................................30
`
`Power-One Inc. v. Artesyn Technologies Inc.,
`599 F.3d 1343 (Fed. Cir. 2010)................................................................................................13
`
`Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019)..........................................................................................22, 28
`
`SAS Institute, Inc. v. Iancu,
`128 S.Ct. 1348 (2018) ..............................................................................................................29
`
`Storage Technology Corp. v. Cisco Systems, Inc.,
`329 F.3d 823 (Fed. Cir. 2003)....................................................................................................3
`
`TQ Delta, LLC v. CISCO Systems, Inc.,
`942 F.3d 1352 (Fed. Cir. 2019)................................................................................................17
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007)................................................................................................31
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016)..................................................................................................9
`
`Wilson v. Martin,
`789 Fed.App’x 861 (Fed. Cir. 2019)........................................................................................30
`
`Statutes
`
`35 U.S.C. §316(e) ............................................................................................................................1
`
`Other Authorities
`
`37 C.F.R. §1.97(h) .........................................................................................................................31
`
`37 C.F.R. §42.6(e)..........................................................................................................................36
`
`37 C.F.R. §42.24 ............................................................................................................................35
`37 C.F.R. §42.65(a)........................................................................................................................34
`
`iii
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`

`

`IPR2019-01046
`U.S. Patent No. 9,480,199
`INTRODUCTION
`Petitioners cannot explain why, if it were so obvious based on thirty-year-
`
`
`I.
`
`
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`old references, others did not develop the claimed inventions earlier, given the
`
`need to increase productivity by planting faster while maintaining spacing
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`accuracy. Precision’s own failures are undisputed, as is its praise of its own
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`eventual success. POR 68-69 (moon shot). The extensive record evidence confirms
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`that Petitioners engage in “the distortion caused by hindsight bias.” KSR Intern.
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`Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`This bias is apparent when considered against Precision’s characterization of
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`Koning when it sought its own patent. As Precision persuasively argued then,
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`Koning “is not directed to a seed planter for row crops” and a POSA “would not be
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`motivated to look for planters for planting potatoes or bulbs.” Ex.2001-7-Sauder-
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`File-History, 318. Petitioners’ current litigation-inspired arguments completely
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`contradict this representation, as they attempt to shoehorn Koning into a three-way
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`combination with Yamahata and Hedderwick to recreate the preferred embodiment
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`of the ’199 Patent by treating the prior art as a parts catalog. Petitioners—not
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`Deere—must prove all propositions of unpatentability. Fanduel, Inc. v. Interactive
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`Games LLC, 2020 WL 4342681, 6 (Fed. Cir. Jul. 29, 2020); 35 U.S.C. §316(e).
`
`They have not done so. Validity should be confirmed.
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`1
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`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`II. CLAIM CONSTRUCTION
`“Blocking Loading Surface”: The specification explains that the “blocking
`
`
`
`loading surface” inserts seeds into the endless member. POR 4-7. Seeds are
`
`brought to a nip, formed in part by the blocking loading surface. In the Figure 3
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`embodiment for example, seeds are “pinched off the seed disk between the loading
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`wheel and the bristles 70 to remove the seed” from the disk and are “captured or
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`entrapped in the bristles by insertion of the seed into the bristles.” Ex.1001, 4:20-
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`28. Petitioners’ own expert understood this passage to mean that “the loading
`
`wheel is pushing the seed…into the brush bristles.” Ex.2265-Taylor-Reply-Dep.,
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`257:3-258:14.
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`Petitioners suggest “[t]he claim language is not limited to ‘inserting’ seed
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`into the endless member,” Reply 28, although they agree the surface must “block
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`movement of seeds in one path.” Id. 27-28. Petitioners ignore the “loading”
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`requirement. Under Petitioners’ construction, a blocking loading surface could
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`“block[]…and redirect[]” seeds, id., but still fail to “load” (“insert”) seed into an
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`endless member. Ex.2149-Webster’s (associating “loading” with “inserting”);
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`Ex.2154-Oxford (same).
`
`During prosecution, the Examiner identified Hanson’s surfaces (Fig. 4: 40,
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`26c) as the “blocking loading surface” (Ex.1022-199-File-History, 119-120):
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`2
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`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`Deere’s response that Hanson’s surfaces do not “block[] seeds,” id. 151-152,
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`without using the word “insert” did not disclaim the ordinary meaning of “load.”
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`Storage Technology Corp. v. Cisco Systems, Inc., 329 F.3d 823, 833 (Fed. Cir.
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`2003) (prosecution disclaimer requires “clear and unambiguous disavowal”).1
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`
`1 The district court claim construction standard applies. 83 FR 51340. In re Zletz
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`(Reply 28), applied BRI.
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`3
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`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`“Delivery System”: Petitioners also argue that “delivery system” in the ’199
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`
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`Patent should be construed as a means-plus-function term, even though the district
`
`court did not so construe it. Tellingly, Petitioners do not make this argument with
`
`respect to the “delivery system” limitation in any of the other related proceedings.
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`The Board need not reach this issue. Petitioners say that under their
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`construction, a “delivery system” must have a “brush-belt with bristles” or some
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`equivalent. Reply 30. Petitioners contend that their Hedderwick-Koning
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`combination discloses a brush-belt that “removes seed from the seed meter by
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`capturing the seed.” Id., 31. Thus, in light of the ground raised in the Petition,
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`decision as to whether Hedderwick-Koning teaches a “delivery system” does not
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`turn on claim construction, but rather whether a POSA would have been motivated
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`to make the combination and expected success in doing so, as discussed below.
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`III. OBJECTIVE INDICIA DEMONSTRATES NONOBVIOUSNESS
`Petitioners make little attempt to rebut the vast objective evidence of
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`nonobviousness, including:
`
`• Long-felt need to increase productivity by planting faster while
`
`maintaining spacing accuracy. POR 64-66.
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`• Precision’s own multiple, failed attempts to develop a high-speed
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`planter based on the Sauder patent design which lacked reliable seed
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`transfer. Ex.2115-Larkin-SpeedTube-Tutorial (“elephant trunk” with
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`4
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`

`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`belt “dropped down” to the bottom of the seed trench “didn’t work
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`because of the acceleration things that Jason [Stoller] talked about [in
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`Ex.2113-Stoller-SpeedTube-Tutorial-1]”). POR 68-69.
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`• Industry skepticism that a solution could be found, including from
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`Sauder himself, Ex.2111-Sauder-SpeedTube-Tutorial-1, 0:25-1:00
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`(“Farming with speed, really?…[I] used to say…when you’re planting
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`if you go over 5-mph I’m not going to rent you my farm”), and
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`Precision’s expert’s surprise at ExactEmerge’s results. Ex.2257-No-
`
`Till-Farmer-Nov.-2015, 7; POR 71-73.
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`• Widespread praise for, and success of, ExactEmerge and SpeedTube.
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`POR 80-97.
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`• Deere’s own false starts. POR 69-70.
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`Dr. Glancey provided detailed charts, corroborated by examination and
`
`testing of both products, demonstrating that they practice the challenged claims.
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`Ex.2215-199-ExactEmerge-Chart, Ex.2225-199-SpeedTube-Chart. Further, he
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`carefully explained the nexus between the objective evidence and the claims. POR
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`74-80, 90-96; Ex.2205-Glancey-Decl., ¶¶311-12, 343-44.
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`5
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`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`RELIABLE SEED FRANS‘FER
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`Knuckuut wheel {blocking loading
`surface} hlock5 and redilects Seed
`movement anhe release position. and
`inserts seed into the BrushBelt. which
`removes and caplunas the seed from
`the meter
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`Brushfielt
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`C DNTFI‘OLLED SEED DES CENT
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`Seed. capturad in the brisflas or
`BrushBEl‘t. is moved [ram 3 release
`position In a discharge pnsiliun by the
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`6
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`
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`Petitioners argue “planters could plant at high speeds before the
`
`ExactEmerge.” Reply 34. But before Deere’s invention, “higher speed meant poor
`
`spacing,” which lowers yield. Ex.2118-SpeedTube-Video, 0:28-0:35; Ex.2139-
`
`SpeedTube-Website (“As speeds increase, conventional planters struggle to
`
`maintain good spacing.”).2
`
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`2 Petitioners’ reliance on Ex.1052, 52 is misplaced. This document, offered without
`
`foundation, addressed market definition under antitrust law and its factual
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`7
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`Petitioners’ claim that no evidence links ExactEmerge’s ability to plant at
`
`
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`higher speeds to the claimed features, Reply 33-36, is contradicted by voluminous
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`videos, writings and testimony linking ExactEmerge’s ability to plant faster to its
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`knockout-wheel’s (“blocking loading surface’s”) ability to reliably hand-off seed
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`from the meter to its BrushBelt, which controls seed descent by “mov[ing] the
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`individual seeds…from the release position to a discharge position.” POR 80-90.
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`Because the witnesses were not aware of all the prior art, they did not testify that
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`individual ExactEmerge components were “new,” Ex.1132-Veale-Dep., 175:8-19;
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`Ex.1068-Schmidt-Dep., 83:17-87:4-9, 112:6-113:3; Ex.1131-Hough-Dep., 163:1-
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`11, but all confirmed their declaration testimony that ExactEmerge’s success was
`
`due to the combination of features recited in the claims. E.g., Ex.1132-Veale-Dep.,
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`132:18-133:3; 134:7-12; Ex.1068-Schmidt-Dep., 99:2-100:9; Ex.1131-Hough-
`
`
`statements have proven inaccurate over time. Ex.2031-Schmidt-Decl., ¶¶18-21;
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`Ex.2032-Veale-Decl., ¶¶13-17; Ex.2033-Hough-Decl., ¶¶12-18 (initial skepticism
`
`to faster planting was overcome with experience); Ex.2111-Sauder-SpeedTube-
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`Tutorial-1, 1:05-2:05; Ex.2117-Kauffman-SpeedTube-Tutorial, 0:00-1:02
`
`(Precision explaining drawbacks of larger/additional planters). Allegations that
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`Precision was “innovative” in some respects, and that Deere was “falling behind,”
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`Reply 36, are irrelevant.
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`8
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`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`Dep., 284:9-286:21, 298:3-299:15. Mr. Hough testified directly to the impact of
`
`
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`the blocking loading surface: he has “seen…firsthand” that when the knockout-
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`wheel was misaligned on one row unit, it failed to “insert the seed accurately into
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`the BrushBelt” and caused unacceptable seed-to-seed ground spacing for “just that
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`row.” Ex.1131-Hough-Dep., 296:7-298:2.
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`Petitioners’ attacks on nexus all fail. Petitioners first argue that nexus is
`
`negated because knockout-wheels and brush-belts were known in the prior art.
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`Reply 34-35. Petitioners are wrong. Prior art knockout-wheels did not transfer
`
`seeds into a “delivery system which moves the individual seeds…from the release
`
`position to a discharge position.” Ex.2044-ExactEmerge-Sales-Essentials, 11 (“In
`
`the past…the knock out wheel only pushed out a seed that was stuck in the hole.
`
`With the ExactEmerge, the knock out wheel is used for a crisp hand off to the
`
`brush belt.”); Ex.2265-Taylor-Reply-Dep., 121:19-122:5. Prior art brush-belts
`
`were not used to convey seeds from the meter to the soil. Ex.2205-Glancey-Decl.,
`
`¶¶145-146; Ex.2264-Glancey-Dep., 117:6-12.
`
`Moreover, Petitioners mistakenly assume that nexus must be drawn to
`
`individual novel claim elements. Rather, nexus can be drawn, as it is here, to a
`
`novel combination of elements that comprises the invention as a whole.
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 33 (PTAB Jan. 24,
`
`2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed.
`
`9
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`Cir. 2016)). See Ex.1115-Glancey-Dep., 219:4-7 (“It’s that combination of a
`
`
`
`unique loading component and an endless member receiving seed reliably that
`
`collectively is the innovation.”); Ex.2263-Prairie-Reply-Dep., 200:14-203:8
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`(Prairie unable to identify single reference showing combination).
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`ExactEmerge’s substantial “take rate” over Deere’s much lower-priced
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`MaxEmerge option (which shares many features with ExactEmerge) establishes
`
`conclusively that ExactEmerge’s success is due to the claimed combination of
`
`features, which enable faster, accurate planting. Ex.2033-Hough-Decl., ¶¶19-24.3
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`Petitioners’ own expert concluded that ExactEmerge maintained seed spacing
`
`accuracy at higher speeds whereas MaxEmerge could not. Ex.2191-Taylor-Study,
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`13.
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`Petitioners argue nexus is negated because ExactEmerge has other
`
`unclaimed features. Reply 34-35. Petitioners offer no evidence that any other
`
`features are as critical to ExactEmerge’s success as those claimed. Deere need only
`
`show that the objective evidence is the “direct result of the unique characteristics
`
`of the claimed invention” to prove nexus. Fox Factory, Inc. v. SRAM, LLC, 944
`
`F.3d 1366, 1373-74 (Fed. Cir. 2019). Having shown objective evidence
`
`
`3 Mr. Hough clarified the market share data used in his take rate analysis is relied
`
`on in the ordinary course of business. Ex.1131-Hough-Dep., 299:17-300:12.
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`10
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`

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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`“reasonably commensurate with the scope of the claims,” Lectrosonics, 32, Deere
`
`
`
`need not disprove “all imaginable contributing factors[, which] would be unfairly
`
`burdensome.” Demaco Corp. v. F Von Langsdorff Licensing Ltd., 851 F.2d 1387,
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`1394 (Fed. Cir. 1988). Cf. Fox Factory, 944 F.3d at 1374 (“we have never held that
`
`the existence of one or more unclaimed features, standing alone, means nexus may
`
`not be presumed. Indeed, there is rarely a perfect correspondence between the
`
`claimed invention and the product.”) (emphasis original).
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`ExactEmerge’s bowl-shaped meter is not required for faster, accurate
`
`planting. SpeedTube achieves this using a flat-shaped meter. Ex.1115-Glancey-
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`Dep., 169:17-170:8. “Speed-matching” helps maintain spacing at discharge, but the
`
`claimed inventions include the critical prerequisites needed to leverage the value of
`
`that feature. Ex.1115-Glancey-Dep., 181:1-185:7 (without reliable handoff and
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`controlled descent “speed-matching essentially results in garbage-in garbage-
`
`out.”); Ex.2113-Stoller-SpeedTube-Tutorial-1 (vertical accelerations during
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`handoff “is what really drive[s] poor seed spacing”). Petitioners’ expert agrees that
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`“[v]ertical vibration during planting usually interferes with the seed metering and
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`delivery process,” Ex.2191-Taylor-Study, 1, and “vertical vibration…increases
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`linearly with speed.” Ex.2265-Taylor-Reply-Dep., 67:15-22.
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`ExactEmerge and SpeedTube use an independent electric motor for speed-
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`matching, but there is no “connection between row unit vertical vibration and the
`
`11
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`fact that [ExactEmerge] has an electric motor on it,” Ex.2265-Taylor-Reply-Dep.,
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`
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`98:9-19. Speed-matching could be achieved without dual electric motors. Id.,
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`104:1-16; Ex.1115-Glancey-Dep., 267:11-21. Petitioners’ reference to the
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`“BrushBelt conditioner” grasps at straws. ExactEmerge is also designed to work
`
`with a controller, battery, wires, and a tractor with tires, which are “essential” but
`
`nothing suggests these features were “critical” to its praise and success. Ex.1115-
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`Glancey-Dep., 216:17-220:3.
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`Petitioners also argue nexus is negated because the claims do not expressly
`
`recite high-speed operation. Reply 33-34. The ’199 Patent recognizes that “spacing
`
`variation is exacerbated by higher travel speeds.” Ex.1001-199-Patent, 1:65-67.
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`However, claims need not expressly recite the invention’s beneficial results to
`
`establish nexus. In Lectrosonics, the Board found nexus based on evidence linking
`
`the ability to avoid “RF dropouts”—which fulfilled a long-felt need for “reliabl[y]
`
`capturing sound data from actors”—to the claimed feature of “replacing a portion
`
`of said remote audio data with said stamped local audio data.” Id., 61-67. Here, the
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`evidence clearly links ExactEmerge’s fulfilling the need to plant faster while
`
`maintaining seed spacing accuracy to the claimed combination of a “blocking
`
`loading surface” and “delivery system which moves the individual seeds…from
`
`the release position to a discharge position,” which ensure reliable hand-off and
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`controlled descent of the seed, thus solving the “row unit ride” problem that long
`
`12
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`vexed the industry, including Precision. POR 66-67, 74-80. These features are
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`
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`expressly identified by witnesses, customers, industry press and Deere’s sales
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`materials. POR 81-87. Similarly, Precision itself lauded SpeedTube’s combined
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`use of feeder wheels and flighted belt as the key to faster, accurate planting.
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`Ex.2205-Glancey-Decl., ¶¶290-296, 352-361. Power-One Inc. v. Artesyn
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`Technologies Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010) (competitor “touted” its
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`own infringing product).
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`IV. KONING IS NON-ANALOGOUS ART
`Koning plants “Potatoes, Bulbs or Similar Seed Crop,” Ex.1004-Koning,
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`which present different handling challenges from seeds because they are much
`
`larger, heavier and lack a protective seed coat. Ex.2205-Glancey-Decl., ¶¶90-136.
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`Koning’s reference to differently-sized or irregularly-shaped potatoes (Reply 4-5)
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`in no way suggests an ability to plant an entirely different kind of object—small
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`seeds. Ex.2200-Glancey-Decl., ¶¶90-142; Ex.2001-7-Sauder-File-History, 318
`
`(“Koning…is not directed to a seed planter for row crops”).4 Petitioners argue
`
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`4 Prairie observes green onion bulbs are “not much larger…than a corn seed.”
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`Ex.1135, ¶20. But Precision represented that onion planters are also non-analogous
`
`art: “[t]he JP ‘815 reference discloses…mechanically transplant[ing] thin and long
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`13
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`“overlapping concepts were routinely used in potato, corn, and other planting
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`
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`systems,” Reply 5-6, but none of their evidence shows this. Even when corn and
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`potatoes are planted on the same farm, they are planted using different equipment.
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`Ex.1068-Schmidt-Dep., 31:3-21; Ex.1131-Hough-Dep., 294:12-295:22; Ex.1133-
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`Glancey-Dep., 192:1-193:14, 197:4-200:8, 240:8-241:5, 293:21-296:21; Ex.2189-
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`Taylor-Dep., 33:8-35:5, 80:10-21, 87:22-89-25.
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`The Faber and Williams patents, Reply 6, confirm this. Faber replaced corn-
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`planting equipment on a frame with equipment for planting potatoes. Ex.1079-
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`Faber, 1:77-101; Ex.2263-Prairie-Reply-Dep., 45:20-48:1. Williams taught
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`interspersing rows of different crops in the same field by using different planting
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`equipment to plant the different crops. Ex.1080-Williams, 12:3-8, 15:14-21;
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`Ex.2263-Prairie-Reply-Dep., 56:18-58:15.
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`Petitioners argue essentially that a farmer might observe corn planters and
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`potato planters on the same farm. Even so, these different machines handle very
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`different materials, are from a different field of endeavor, and are not reasonably
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`pertinent to the problem facing the ’199 Patent’s inventors. POR 13-19.
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`bulbs of scallion and the like….is directed to a completely different field of art
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`than…seed planters for row crop planting.” Ex.2001-7-Sauder-File-History, 317.
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`14
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`IPR2019-01046
`U.S. Patent No. 9,480,199
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`V. A POSA WOULD HAVE NO MOTIVATION TO COMBINE AND NO
`REASONABLE EXPECTATION OF SUCCESS
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`
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`Petitioners Mischaracterize Deere’s Arguments
`A.
`Deere’s “underlying premise” is not that a POSA “must physically combine
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`Koning and Hedderwick.” Reply 7. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
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`2012), is inapposite because Deere is not arguing that a brush-belt or seed guide
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`could not be “bodily incorporated” into Hedderwick. Obviousness requires
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`analyzing how a POSA would have viewed the prior art teachings as a whole, and
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`whether those teachings would have motivated—or discouraged—a combination.
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`KSR, 550 U.S. at 424-25 (“The proper question…was whether a pedal designer of
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`ordinary skill…would have seen a benefit to upgrading Asano with a sensor.”);
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`Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331-32 (“benefits, both
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`lost and gained, should be weighed against one another” in evaluating motivation
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`to combine) (emphases added). Here, numerous conflicts among the teachings of
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`Petitioners’ references undermines any expectation of success, and would have
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`discouraged a POSA from attempting the combination.
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`Deere’s argument is also not premised on operating the brush-belt at “high
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`speed.” Reply 7. Petitioners argue that using a brush-belt to convey seeds “would
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`have been readily done.” Pet. 42. Not so. The complex dynamics of a moving
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`brush-belt and its resistance to seed entry—even at conventional speeds of 5-
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`mph—would have negated any expectation of success. Ex.2205-Glancey-Decl.,
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`15
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`¶¶165-168; Ex.2186-Brush-Belt-Corn-5mph-Video; Ex.2187-Brush-Belt-No-
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`
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`Meter-5mph-Video.
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`B. A POSA Would Have Had No Motivation to Use Koning’s Brush-
`belt in Hedderwick or Expectation of Success
`Petitioners’ argument rests on the false premise that Koning teaches use of a
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`brush-belt to “carry” potatoes/bulbs/similar seed crop. Reply 8-9. Koning teaches
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`only that a brush-belt “hold[s] the potatoes lying on the conveying members 23” as
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`they are “delivered by the conveying members” to the ground. Ex.1004-Koning,
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`5:8-14. Petitioners’ suggestion that Koning teaches a brush-belt that can convey
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`seeds itself is pure hindsight. POR 19-23. The only brush-belt used to convey seeds
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`in this record is described in the ’199 Patent and embodied by ExactEmerge.5
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`Petitioners’ argument that the ’199 Patent itself teaches how to use a brush-
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`belt to convey seeds, Reply 7-8, exposes their hindsight. POR 19-23; Otsuka
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`Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor’s
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`own path itself never leads to a conclusion of obviousness; that is hindsight.”). No
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`prior art taught using a brush-belt to convey seeds in a planter and a POSA would
`
`have had no expectation of success in using a brush-belt in this manner. Ex.1115-
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`
`5 Petitioners’ observation that the ’199 Patent’s brush-belt works with a housing,
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`Reply 14, is irrelevant. The housing is stationary; only the brush-belt “convey[s]”
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`seed. Ex.1001-199-Patent, 4:32-36.
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`16
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`Glancey-Dep., 219:17-20 (“the world changed in February 2009 because of [the]
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`
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`teachings of Deere”).
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`Petitioners now attempt to expand their ground to include Thiemke and
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`Gould. Reply 8-11. Neither teaches conveying seeds. Thiemke’s brush wheel is not
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`a “brush-belt” that moves seeds “from a release position,” Ex.1114-Glancey-Dep.,
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`49:15-52:21, and it only momentarily contacts seeds as it accelerates them on a
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`seed slide. Ex.1015-Thiemke, 4:7-11; Ex.2263-Prairie-Reply-Dep., 101:19-103:21.
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`Gould teaches opposing brush-belts to move whole plants—not seeds—to the
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`ground. Ex.1030-Gould, 1:9-12; Ex.2263-Prairie-Reply-Dep., 108:1-19.
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`Petitioners’ argument that it was “common in agriculture to combine
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`components from different systems depending on planting needs,” Reply 11, does
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`not support Prairie’s conclusion that a POSA would “take components taught in
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`one system—like Koning’s brush-belt—and combine them with another system—
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`like the one taught by Hedderwick.” Ex.1135-Prairie-Reply-Decl., ¶¶43-44. Mr.
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`Prairie’s ipse dixit is unsupported. He never handled or experimented with brush-
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`belts, Ex.2193-Prairie-Dep., 109:19-110:16, 113:2-9, 116:20-117:12; Ex.2194-
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`Prairie-Dep., 296:9-297:23; Ex.2263-Prairie-Reply-Dep., 158:16-160:2, nor did he
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`consult farmers, planter dealers, or engineers. Ex.2263-Prairie-Reply-Dep., 192:18-
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`194:17. Mr. Prairie’s testimony is conclusory and unsupported by evidence. It
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`should be rejected. TQ Delta, LLC v. CISCO Systems, Inc., 942 F.3d 1352, 1362-
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`17
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`63 (Fed. Cir. 2019) (reversing Board for relying on petitioner’s expert’s
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`
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`“conclusory statements and unspecific expert testimony”); K/S Himpp v. Hear-
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`Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014) (“core factual finding”
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`underlying unpatentability requires “more than a conclusory statement”).
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`The only record evidence relevant to the challenges a POSA would confront
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`in attempting to use a brush-belt to convey seeds comes from Dr. Glancey.
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`Ex.2205-Glancey-Decl., ¶¶163-176. This evidence demonstrates a POSA would
`
`have no reasonable expectation of success implementing Petitioners’ hindsight-
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`driven combination. Dr. Glancey handled, planted with, and operated brush-belts at
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`conventional and high speeds, Ex.1113-Glancey-Dep., 142:21-144:1, 178:13-
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`180:16; Ex.1114-Glancey-Dep., 138:19-152:3; Ex.1133-Glancey-Dep., 98:14-99:4,
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`and he relies on testimony from Messrs. Schmidt, Veale, and Thiemke describing
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`their first-hand experience, Ex.2031-Schmidt-Decl.; Ex.2032-Veale-Decl.;
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`Ex.2025-Thiemke-Decl.; Ex.1115-Glancey-Dep., 120:12-21, 163:2-19; Ex.2205-
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`Glancey-Decl., ¶229.
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`Dr. Glancey cites several videos demonstrating these challenges. Ex.2141-
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`Brush-Seed-Surfing-Problem-Video; Ex.2142-Brush-Pass-Through-Problem-
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`Video; Ex.2143-Brush-Seed-Bunching-Problem-Photo; Ex.2186-Brush-Belt-Corn-
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`5mph-Video; Ex.2187-Brush-Belt-No-Meter-5mph-Video; Ex.2198-Brush-
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`Jamming-Problem-Video. Ex.2205-Glancey-Decl., ¶¶163-176. Ex.2186 is
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`18
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`particularly relevant: a moving brush-belt—an ExactEmerge brush-belt optimized
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`
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`for planting at the conventional 5-mph—resists entry of seed dropped from above,
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`which is exactly the scenario posited in Petitioners’ substitution of Koning’s brush-
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`belt into Hedderwick. Specifically, a seed “surfs” on top of the brush bristles and
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`does not enter into the belt. Ex.2141 shows the same problem encountered during
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`the development of the Thiemke brush-wheel.
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`19
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`It took inventive skill, not routine experimentation, to solve this problem. Ex.-
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`
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`2205-Glancey-Decl., ¶¶167-169.
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`While Petitioners criticize the videos because Dr. Glancey did not recall
`
`certain details during his deposition, Reply 12-13, he confirmed the videos were
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`made either by him or one of the ’199 Patent’s inventors. Ex.1114-Glancey-Dep.,
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`134:7-135:16, 139:14-140:7; Ex.2264-Glancey-Dep., 113:9-114:12, 115:6-15.6
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`More telling is Mr. Prairie’s refusal to acknowledge the obvious resistance of the
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`brush-belt to insertion of a corn seed plainly shown in Ex.2186-Brush-Belt-Corn-
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`5mph-Video. Ex.2263-Prairie-Reply-Dep., 89:19-96:12. Prairie never physically
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`6 Petitioners crop a quote from Dr. Glancey’s deposition to argue he “disclaimed
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`reliance on the videos.” Reply 13. In the next sentence (which Petitioners omit) Dr.
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`Glancey explained his “point” was “to substantiate my claims, for example, that a
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`brush belt exhibits very fluid-like characteristics, and the finger acting upon it was
`
`a -- I thought a good way to show that phenomenon.” Ex.1114-Glancey-Dep.,
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`151:12-16. See Ex.2264-Glancey-Dep., 113:13-115:5.
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`20
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