Trials@uspto.gov
`571-272-7822
`
`Paper 95
`Entered: December 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PRECISION PLANTING, LLC and AGCO CORP.,
`Petitioner,
`v.
`DEERE & COMPANY,
`Patent Owner.
`
`IPR2019-01053
`Patent 9,861,031 B2
`
`
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`GOODSON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`Denying in Part and Dismissing in Part Petitioner’s Motion to Exclude
`Dismissing Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
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`IPR2019-01053
`Patent 9,861,031 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Precision Planting, LLC and AGCO Corp. (collectively, “Petitioner”)
`filed a Petition (Paper 4, “Pet.”) requesting inter partes review of claims 1–
`18 of U.S. Patent No. 9,861,031 B2 (Ex. 1001, “the ’031 patent”). Deere &
`Company (“Patent Owner”) filed a Preliminary Response. Paper 10. With
`our authorization, the parties filed additional pre-institution briefing. See
`Paper 11; Paper 13. We instituted an inter partes review on all claims on the
`sole ground asserted in the Petition. See Paper 18 (“Dec. on Inst.”). After
`institution of trial, Patent Owner filed a Patent Owner Response. (Paper 34,
`“PO Resp.”), Petitioner filed a Reply (Paper 56, “Pet. Reply”), and Patent
`Owner filed a Sur-Reply (Paper 68, “Sur-Reply”). We held a hearing on
`August 31, 2020, a transcript of which is included in the record. See Paper
`92 (“Tr.”). The parties have also filed motions to exclude, which we address
`below in Section II.
`We have authority under 35 U.S.C. § 6. Petitioner bears the burden of
`proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner
`must prove unpatentability by a preponderance of the evidence. See
`35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine that Petitioner has not shown
`by a preponderance of the evidence that claims 1–18 of the ’031 patent are
`unpatentable.
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`IPR2019-01053
`Patent 9,861,031 B2
`B. Real Parties in Interest
`Petitioner lists the following entities as real parties in interest:
`Precision Planting, LLC; AGCO Corp.; Monsanto Co.; and Bayer AG. See
`Pet. 7. Patent Owner lists only itself as a real party in interest. Paper 6, 1.
`C. Related Matters
`Patent Owner has asserted the ’031 patent against Petitioner in Deere
`& Company v. AGCO Corporation, Civil Action No. 1:18-cv-00827-CFC in
`the U.S. District Court for the District of Delaware. Pet. 7; Paper 6, 1.
`In addition, Petitioner lists the following Board proceedings as related
`matters:
`
`Case No.
`IPR2019-01044
`IPR2019-01046
`IPR2019-01047
`IPR2019-01048
`IPR2019-01050
`IPR2019-01051
`IPR2019-01052
`IPR2019-01054
`IPR2019-01055
`
`Challenged Patent
`U.S. Patent No. 8,813,663
`U.S. Patent No. 9,480,199
`U.S. Patent No. 9,510,502
`U.S. Patent No. 9,686,906
`U.S. Patent No. 9,807,922
`U.S. Patent No. 9,807,924
`U.S. Patent No. 9,820,429
`U.S. Patent No. 10,004,173
`U.S. Patent No. 9,699,955
`
`Pet. 7.
`D. The ’031 Patent
`The ’031 patent issued on January 9, 2018, from an application filed
`February 9, 2015. Ex. 1001, at (45), (22). The ’031 patent states that it is a
`continuation of Application No. 14/504,801, filed October 2, 2014, and a
`
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`IPR2019-01053
`Patent 9,861,031 B2
`continuation of Application No. 12/364,010, filed February 2, 2009. Id. at
`(63).
`
`The ’031 patent relates to a seeding machine having a seed metering
`system and a seed delivery system for delivering seed from the meter to the
`ground. Ex. 1001, 1:14–16. In the “Background of the Invention,” the
`’031 patent explains that in known seed delivery systems, differences in how
`individual seeds exit the metering system and drop through the seed delivery
`tubes cause undesirable variations in seed spacing. Id. at 1:62–65. The
`’031 patent describes that its system reduces seed spacing variability by
`capturing the seed, and then moving it, on a controlled descent, from the
`point at which it exits the metering system to a point near the bottom of the
`seed trench, so that the seed is discharged at a substantially zero horizontal
`speed relative to the ground. Id. at 2:24–40.
`Referring to Figure 3 of the ’031 patent (reproduced below), seed
`stored in a seed hopper is provided to a seed meter that uses vacuum disk 50
`to meter the seed to seed delivery system 28 that carries the seed to a
`planting furrow. Ex. 1001, 3:21–25.
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`
`
`Figure 3 depicts an enlarged side view of a seed delivery system of one
`embodiment of the invention. Ex. 1001, 2:48–49.
`Metering disk 50 is generally flat with a plurality of apertures 52 that
`collect seeds 56 from a seed pool, which “adhere to the disk by air pressure
`differential on the opposite sides of the disk 50 in a known manner.”
`Ex. 1001, 3:42–47. Seed delivery system 28 “includes a housing 48
`positioned adjacent the seed disk 50.” Id. at 3:40–42. Housing 48 includes
`upper opening 58 that “admits the seed from the metering disk 50 into the
`housing,” and “lower housing opening 78 . . . positioned as close to the
`bottom 80 of the seed trench as possible,” through which the seed is
`discharged into the seed trench. Id. at 3:52–55, 3:64–66, 4:45–46.
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`Patent 9,861,031 B2
`Pulleys 60, 62, mounted inside housing 48, support belt 64 for rotation
`within the housing. Ex. 1001, 3:54–55. The belt has elongated bristles 70,
`which serve to capture the seed. Id. at 3:56–59, 4:27–29. Loading wheel 86
`adjacent upper opening 58 is positioned such that the path of the seeds on
`disk 50 brings the seeds into nip 88 formed between the loading wheel and
`distal ends 74 of bristles 70. Id. at 4:4–8.
`As belt 64 rotates counterclockwise around the pulleys, the curve of
`the pulley causes distal ends 74 of bristles 70 to separate from one another.
`Ex. 1001, 4:17–22. When the disk brings the seeds into nip 88, the seeds are
`transferred from the seed meter to the delivery system. Id. at 4:23–29.
`Specifically, as the curved path straightens, the bristle ends close upon
`themselves and capture the seeds. Id. at 4:30–34. As the belt continues to
`move, bristles 70 convey the seeds downward to housing lower opening 78,
`with sidewall 53 of the housing cooperating with bristles 70 to hold the seed
`in the bristles. Id. at 4:34–38.
`E. Challenged Claims
`Petitioner challenges claims 1–18, which are all of the claims in the
`’031 patent. Claims 1 and 12 are independent. Claim 1 is reproduced
`below, with bracketed labels as added by Petitioner:
`1.
`[Pre] A seeding machine for a row unit [a] having a seed
`meter with a plurality of apertures through which an air pressure
`differential is applied to retain seed thereon, the seed meter
`movable to convey seed from a seed reservoir, the seeding
`machine comprising:
`[b] a seed delivery apparatus comprising
`[c] an elongated housing having a first opening
`through which seed is received, [d] a second opening
`through which seed exits, and [e] an elongated interior
`chamber along which seed is conveyed from the first
`opening to the second opening,
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`IPR2019-01053
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`[f] a first pulley,
`a second pulley,
`[g] an endless member driven by the first pulley
`and/or the second pulley, [h] the endless member movable
`within the elongated interior chamber of the elongated
`housing to receive seed from the first opening and convey
`seed to the second opening; and
`[i] a loading surface movable with respect to the endless member
`and positioned to contact and initially guide seed from the seed
`meter into the seed delivery apparatus.
`Ex. 1001, 7:52–8:7; see also Pet. 38–64 (adding labels).
`
`F. Asserted Ground
`Petitioner contends that the challenged claims are unpatentable based
`on the following ground:
`
`Claims Challenged
`Basis1
`References
`§ 103(a) 1–18
`Hedderwick,2 Koning,3 and Benac4
`Pet. 38. In support of its proposed ground, Petitioner relies on the testimony
`of Mr. Douglas S. Prairie. See Ex. 1002; Ex. 1135. Patent Owner relies on
`the testimony of Dr. James L. Glancey. See Ex. 2201.5 The record also
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`that issued as the ’031 patent states that it is a continuation of an application
`filed before March 16, 2013, we apply the pre-AIA version of this statute.
`See 35 U.S.C. § 100(i).
`2 GB 2,057,835 A, published Apr. 8, 1981 (Ex. 1003, “Hedderwick”).
`3 US 4,193,523, issued Mar. 18, 1980 (Ex. 1004, “Koning”).
`4 FR 2,414,288, published Aug. 10, 1979 (Ex. 1006). Citations to Benac in
`this Decision refer to the English translation of FR ’288 in Exhibit 1005.
`5 Petitioner argues that Dr. Glancey’s testimony is unreliable because he “is
`a professional expert witness” who has served as an expert in 144 matters
`regarding a range of technologies, but has never served as an expert in seed
`planting technologies; because his opinions have been excluded by courts on
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`includes testimony from several witnesses on topics relating to objective
`indicia of nonobviousness.
`II. MOTIONS TO EXCLUDE
`The party moving to exclude evidence bears the burden of proving
`that it is entitled to the relief requested—namely, that the material sought to
`be excluded is inadmissible under the Federal Rules of Evidence (“FRE”).
`See 37 C.F.R. §§ 42.20(c), 42.62(a) (2019).
`A. Petitioner’s Motion to Exclude
`1. Brush Belt Videos and Photographs
`Petitioner moves to exclude Exhibits 2141–2143, 2186, 2187, and
`2198 under FRE 901 as lacking authentication. Paper 70, 1, 6–10; Paper 86,
`1–5. Petitioner also argues that the testimony of Dr. Glancey regarding
`these exhibits should be excluded. Paper 70, 10–11. The exhibits at issue
`are videos and photographs of brush belts. Petitioner argues that these
`videos and photographs are unreliable and should be excluded because
`Deere has not provided sufficient information about the brush belt that is the
`
`
`three occasions; because he holds four patents that do not relate to seed
`planting technologies; because he allegedly “conceded that he does not
`understand what the test for obviousness of a patent was in 2003 or in
`2009;” and because his answers at his deposition were allegedly inadequate
`in various ways. See Pet. Reply 2–4. Patent Owner responds that
`Dr. Glancey is a mechanical engineering professor and professional engineer
`who has “extensive person and professional experience with farming and
`seed-planting equipment” and that the three instances in which his testimony
`was excluded were personal injury litigations unrelated to seed-planting
`equipment. Sur-Reply 34–36. Patent Owner also attacks the qualifications
`of Mr. Prairie and asserts that his declaration and deposition testimony has
`been flawed in various ways. Id. We have considered Petitioner’s and
`Patent Owner’s arguments in assessing the weight to be given to
`Dr. Glancey’s and Mr. Prairie’s testimony. We note that neither party has
`moved to exclude Dr. Glancey’s or Mr. Prairie’s testimony.
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`subject of the videos and photographs and the circumstances in which the
`videos and photographs were made. Id. at 4–8. Petitioner further argues
`that Dr. Glancey’s testimony does not authenticate the videos because he did
`not create them and was unable to answer certain questions about the brush
`belts’ characteristics during his deposition. Id. at 9–10.
`Petitioner’s arguments do not persuade us that Patent Owner’s
`showing is insufficient under FRE 901. A proponent’s “burden of proof for
`authentication is slight.” Lexington Insurance Co. v. Western Pennsylvania
`Hospital, 423 F.3d 318, 328 (3rd Cir. 2005). Under FRE 901, the proponent
`must make a showing “sufficient to support a finding that the item is what
`the proponent claims it is.” Fed. R. Evid. 901(a); see also United States v.
`Coohey, 11 F.3d 97, 99 (8th Cir. 1993) (“To meet this standard, the
`proponent need only demonstrate a rational basis for its claim that the
`evidence is what the proponent asserts it to be.”). Once that threshold is
`satisfied, “the evidence goes to the [fact-finder] and it is the [fact-finder]
`who will ultimately determine the authenticity of the evidence.” Threadgill
`v. Armstrong World Indus., Inc., 928 F.2d 1366, 1375 (3rd Cir. 1991). Here,
`Dr. Glancey’s testimony is adequate to support a finding that these videos
`and photographs are what Patent Owner claims they are, i.e., brush belts
`being operated in various ways. See Ex. 2200 ¶¶ 165–169. Petitioner’s
`criticisms of the videos and photographs go to the weight that should be
`assigned to the videos and photographs and Dr. Glancey’s testimony about
`them, and we have considered Petitioner’s arguments in assessing the weight
`those materials should carry.
`Additionally, the nature of our proceedings, in which the same panel
`that decides admissibility also serves as the fact-finder, disfavors exclusion
`in these circumstances. See Corning Inc. v. DSM IP Assets B.V., IPR2013-
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`00053, Paper 66, 19 (PTAB May 1, 2014) (sitting as a non-jury tribunal, the
`Board may assign appropriate weight to evidence presented) (citing
`Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)). As the
`Donnelly court observed, “[o]ne who is capable of ruling accurately upon
`the admissibility of evidence is equally capable of sifting it accurately after
`it has been received . . . .” 123 F.2d at 224.
`Thus, we deny Petitioner’s motion to exclude the videos, photographs,
`and Dr. Glancey’s testimony about those videos and photographs.
`2. Dr. Glancey’s Redirect Testimony
`Next, Petitioner argues that Dr. Glancey’s testimony in response to
`leading questions should be excluded. Paper 70, 12–13; Paper 84, 5. The
`portions of Dr. Glancey’s deposition testimony that Petitioner argues should
`be excluded are his responses during redirect at Exhibit 1115, pages 267–68.
`See id. We do not rely on those portions of Dr. Glancey’s testimony, so we
`dismiss as moot this aspect of Petitioner’s motion.
`3. Exhibits 2249 and 2257
`Finally, Petitioner argues that Exhibits 2249 and 2257 should be
`excluded as untimely. Paper 70, 13; Paper 86, 5. Because we do not rely on
`those exhibits in our analysis, we dismiss as moot this aspect of Petitioner’s
`motion as well.
`4. Conclusion
`For the foregoing reasons, we deny Petitioner’s motion to exclude as
`to Exhibits 2141–2143, 2186, 2187, and 2198, and we dismiss as moot the
`remainder of Petitioner’s motion to exclude.
`B. Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude Exhibits 1049–50, 1052, 1054, 1068,
`1073, 1077–78, 1086–87, 1089, 1091–92, 1103, 1113–15, 1123, 1131–33
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`and paragraphs 84–132 of Exhibit 1135. Paper 73, 15. Most of these
`contested materials relate to the parties’ arguments on objective indicia of
`nonobviousness, which is an issue we do not reach. Accordingly, we do not
`rely on most of these exhibits in our analysis. The contested exhibits that we
`do cite in this Decision are Exhibits 1113, 1114, 1115, and 1133. These
`exhibits are transcripts from Dr. Glancey’s depositions. However, Patent
`Owner does not actually seek exclusion of those exhibits, only consideration
`of errata sheets that Dr. Glancey prepared for those transcripts, which Patent
`Owner filed as Exhibits 2266–69. See Paper 73, 10–11. We also cite below
`to Exhibit 1135, which is Mr. Prairie’s Reply Declaration, but not the
`paragraphs Patent Owner challenges, which relate to objective indicia of
`nonobviousness. Because we do not rely on the materials that Patent Owner
`seeks to exclude, and also because we ultimately find for Patent Owner even
`without excluding these exhibits, we dismiss as moot Patent Owner’s motion
`to exclude.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention, supplying “an important guarantee of
`objectivity in the process” of assessing an obviousness case. Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Factors pertinent to a
`determination of the level of ordinary skill in the art include: (1) the
`inventor’s educational level; (2) type of problems encountered in the art;
`(3) prior art solutions to those problems; (4) rapidity with which innovations
`are made; (5) sophistication of the technology; and (6) educational level of
`workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d
`693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All
`Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)).
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`“Not all such factors may be present in every case, and one or more of these
`or other factors may predominate in a particular case.” Id. Moreover,
`“[t]hese factors are not exhaustive but are merely a guide to determining the
`level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501
`F.3d 1254, 1256 (Fed. Cir. 2007).
`Petitioner proposes that a person of ordinary skill in the art (POSITA)
`“would have had either (1) a bachelor’s degree plus four years of experience
`in mechanical engineering, agricultural engineering, or a related field; or
`(2) a master’s degree plus two years of experience in mechanical
`engineering, agricultural engineering, or a related field.” Pet. 37 (citing Ex.
`1002 ¶¶ 19–20). In the testimony the Petition cites in support of that
`proposal, Mr. Prairie lists factors that are typically considered in assessing
`the level of ordinary skill in the art, and then states “[b]ased on these factors
`together with my experience and expertise,” his opinion of the level of
`ordinary skill in the art is the same as Petitioner proposes. Ex. 1002 ¶¶ 19–
`20. This conclusory testimony is entitled to little weight. See 37 C.F.R.
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”).
`Patent Owner proposes that the ordinarily skilled artisan “would have
`an undergraduate degree in mechanical engineering, agricultural
`engineering, or closely related field” plus “about two years of experience
`designing agricultural products or related machinery in industry or
`academia.” PO Resp. 2–3 (citing Ex. 2201 ¶¶ 47–52). Patent Owner also
`proposes that the level of ordinary skill in the art could be achieved without
`an undergraduate engineering degree, through “about five years of
`experience designing agricultural products or related machinery.” Id.
`Dr. Glancey explains that, in his opinion, Petitioner’s proposed level of
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`ordinary skill is “too restrictive and sets the level of ordinary skill in the art
`of the ’031 Patent too high.” Ex. 2201 ¶ 49. Dr. Glancey provides three
`reasons why he holds this opinion: (1) undergraduate engineering
`curriculums in place in February 2009 focused on design at the freshman
`level and continued this focus throughout the student’s degree program, thus
`mitigating the need for significant post-graduate design experience
`(id. ¶ 50); (2) Masters programs in engineering focus on research for
`publication in peer-reviewed journals, rather than designing products for
`industry (id. ¶ 51); and (3) engineering technicians, who may not have
`formal engineering degrees, “often have years’ worth of relevant hands-on
`experience,” which, in Dr. Glancey’s opinion, qualifies him or her to be
`“considered POSITAs with respect to the ’031 Patent” (id. ¶ 52).
`Based on the evidence and arguments of record, we determine that the
`evidence favors Patent Owner’s proposed level of skill. Our determination
`is primarily based on Dr. Glancey’s analysis and reasons summarized above,
`as well as the prior art of record and the sophistication of the technology of
`the ’031 patent. We have considered Mr. Prairie’s opinion, but we give that
`testimony minimal weight due to the lack of supporting explanation.
`Accordingly, we adopt Patent Owner’s proposed level of ordinary
`skill in the art. Specifically, we determine that a person of ordinary skill in
`the art would have had an undergraduate degree in mechanical engineering,
`agricultural engineering, or a similar field, and two years of experience
`designing agricultural products or related machinery. Alternatively, a person
`of ordinary skill in the art would have had five years of experience designing
`agricultural products or related machinery, without a four-year
`undergraduate engineering degree.
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`However, we note that the differences between the parties’ proposed
`definition of the level of ordinary skill in the art are not determinative. The
`analysis below would be materially the same under either party’s proposed
`definition.
`
`IV. CLAIM CONSTRUCTION
`“In an inter partes review proceeding, a claim of a patent . . . shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b).” See Changes to
`the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).6 That
`standard “includ[es] construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of ordinary skill
`in the art and the prosecution history pertaining to the patent.” Id.; see also
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`We determine that no terms require express construction to resolve the
`parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (claim terms need only be construed “to the extent
`necessary to resolve the controversy”); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(applying Vivid Techs. in the context of an inter partes review).
`
`
`6 The Petition in this case was filed May 29, 2019. See Paper 8, 1.
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`V. OBVIOUSNESS OVER HEDDERWICK, KONING, AND BENAC
`A. Legal Standards for Obviousness
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`Supreme Court set out a framework for assessing obviousness under § 103
`that requires consideration of four factors: (1) the “level of ordinary skill in
`the pertinent art,” (2) the “scope and content of the prior art,” (3) the
`“differences between the prior art and the claims at issue,” and (4) when in
`evidence, “secondary considerations” of non-obviousness such as
`“commercial success, long-felt but unsolved needs, failure of others, etc.”
`Id. at 17–18. When a combination of references together discloses all of the
`limitations in a claim, the Board “must determine whether there was an
`‘apparent reason to combine the known elements in the fashion claimed by
`the patent at issue,’ and whether a person of skill in the art at the time of the
`invention would have had a ‘reasonable expectation of success’ in pursuing
`that combination.” Los Angeles Biomedical Research Institute v. Eli Lilly &
`Co., 849 F.3d 1049, 1064 (Fed. Cir. 2017) (quoting KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007) and Genzyme Therapeutic Prods. Ltd. v.
`Biomarin Pharm. Inc., 825 F.3d 1360, 1373 (Fed. Cir. 2016)).
`B. Summary of Cited Prior Art References
`1. Hedderwick
`Hedderwick relates to a precision seeder, which it defines as “a
`seeding device able to deposit single seeds at predetermined spacings.”
`Ex. 1003, 1:5–8. The seeder includes a seed hopper that transfers seeds to a
`rotating vacuum disc, which has orifices around its periphery that receive
`and retain seeds by pressure differential. Id. at 3:46–52. Figure 2 is
`reproduced below:
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`
`
`Figure 2 depicts a side elevation view of a seeder casing with
`the disc in place and with a surface portion broken away
`to illustrate the operation of the seeder. Id. at 1:100–101.
`The vacuum disc rotates in a counterclockwise direction, past various
`devices, to ensure that a single seed is retained by the orifice, and continues
`to rotate until the “seeds have passed the end of vacuum inlet 78 at about 7
`o’clock.” Ex. 1003, 3:45–61. When the seeds’ “associated vacuum holes 94
`are in register with recess 84 in the wear plate 80,” the seeds drop into a cell
`bounded by fins 90. Id. at 3:55–63. The seed falls from the cell when it
`reaches drop off lip 108, which is positioned slightly past bottom dead
`center. Id. at 3:66–73.
`Hedderwick describes a second embodiment for use when “the
`vertical distance to be travelled by the seeds is greater.” Ex. 1003, 4:2–5.
`Figure 4 is reproduced below:
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`
`
`Figure 4 depicts a side elevation view of a seeder with
`parts broken away. Id. at 1:108–109.
`Disc 130 of the second embodiment can have the same construction as
`disc 70 shown in Figure 2, although disc 130 rotates in a clockwise direction
`in Figure 4. Id. at 4:10–13, 5:51–53. “The major change in the seeder is the
`provision of an endless belt 134 which has a series of fins 135 projecting
`upwardly therefrom.” Id. at 4:23–25. Fins 135, together with casing 137
`and belt 134, define a series of moving cells. Id. at 4:23–28; Fig. 4. These
`“cells are synchronised to align with orifices 129 of disc 130,” such that
`when disc 130 releases a seed it is released into a cell and each cell carries a
`seed. Id. at 4:28–5:5. Belt 134 passes over idler sprocket 152 and driven
`sprocket 132, which drives the belt and thus seeds 148 in the cells, to an end
`of casing 137 where the seed is discharged. Id. at 5:6–7, 74–78; Fig. 4.
`2. Koning
`Koning “relates to a planting machine for potatoes, bulbs or similar
`seed crop.” Ex. 1004, 1:5–6. Figure 4 is reproduced below:
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`Figure 4 depicts an end part of a planting machine
`schematically in a side view. Id. at 3:32–33.
`The planting machine includes conveying member 23 having part 40 that
`extends in a backward direction to a point in furrow 41. Id. at 5:3–6.
`Belt 44 is above part or portion 40 of conveying member 41, is guided
`around rollers 42 and 43, and includes brush hairs 45. Id. at 5:6–8. Brush
`hairs 45 of belt 44 hold the seed crop on part 40 of belt or conveying
`member 23 so that the seed crop delivered by the conveying members are
`delivered at “the same distance in relation to each other in the furrow 41.”
`Id. at 5:8–14. Specifically, “the brush hairs hold the potatoes or the like
`lying on the conveying surface [23] till the moment that they leave the belt.”
`Id. at 3:16–18. Thus, in Koning, it is the combination of two belts or
`conveying members, belt 44 with brush hairs 45, and belt 23 that function
`together to convey seeds to furrow 41. Id. at 5:11–14. By holding the
`potatoes or the like “till the very last moment . . . the velocity of the potatoes
`in relation to each other is completely defined. Under all circumstances a
`regular distribution of the potatoes in the furrow is obtained.” Id. at 3:18–
`22.
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`3. Benac
` Benac relates to a vacuum seed spreader. Ex. 1005, 1:1. The
`“vacuum seed spreader comprising, as is known, a rotary vertical disk 1
`forming a partition between a seed chamber 2 and a vacuum chamber 3,
`generally of annular form.” Id. at 3:15–18. As seen in Figure 1, reproduced
`below, disk 1 “is pierced with orifices 4 evenly distributed over a circle
`concentric to the disk.” Id. at 3:20–21.
`
`
`Figure 1 depicts a cross-sectional view of a seed
`spreader. Ex. 1005, 3:1–3.
`Suction from the vacuum chamber draws seeds against the orifices so that
`the seeds rotate with the disk. Id. at 3:29–31. “A paddle wheel 8 is adjacent
`to the first face 1a of the disk and determines, with this face 1a and with a
`casing 9 that is adjacent and concentric to the paddle wheel, sealed cells 10
`for the seeds.” Id. at 4:6–9. The bottom of casing 9 opens to dropping
`zone 11 in which the seeds are dropped or projected toward the ground. Id.
`at 4:11–13. Cells 10 of the paddle wheel “transport, one by one, the seeds
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`released from the vacuum in the zone 7 just into the dropping zone 11.” Id.
`at 4:13–15. Specifically, “paddles 10a of the paddle wheel 8 sweep the
`orifices 4 of the disk between the release zone 7 and the dropping zone 11,
`such that the seeds are necessarily extracted from the orifices 4 upstream of
`the dropping zone.” Id. at 5:4–9.
`C. Claim 1
`1. Overview of the Parties’ Contentions
`Petitioner contends that the combination of Hedderwick, Koning, and
`Benac together teaches every limitation in claim 1, and that an ordinarily
`skilled artisan would have been motivated to combine the references to yield
`the claimed invention. See Pet. 31–39, 43–67. To briefly summarize the
`manner in which Petitioner relies on the cited references, Petitioner contends
`that Hedderwick teaches the preamble and limitation [a]. See id. at 38–42.
`Regarding limitations [b]–[h], Petitioner proposes modifying Hedderwick by
`replacing finned belt 134 with Koning’s brush belt, and contends that
`Hedderwick so modified teaches these limitations. See id. at 42–59. In
`particular, Petitioner relies on Koning’s brush belt to disclose the “endless
`member” recited in limitation [g]. See id. at 56.7 Petitioner contends that
`Benac’s paddle wheel corresponds to the “loading surface” recited in
`limitation [i], and that when Benac’s paddle wheel is incorporated into
`Hedderwick (as modified to include Koning’s brush belt), the resulting
`combination teaches every aspect of limitation [i]. See id. at 59–64.
`
`
`7 The parties do not present, and we do not reach, the issue of whether the
`recited “endless member” of the challenged claims requires a brush belt. As
`discussed in greater detail below (see infra § II.C.2.a), Petitioner has
`intentionally and unequivocally framed its challenge as a combination of
`teachings from the asserted prior art that includes a brush belt, and that is the
`challenge that we are limited to considering.
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`The Petition includes the following modified version of Hedderwick’s
`Figure 4 to illustrate how Petitioner proposes to combine Benac’s paddle
`wheel into Hedderwick and Koning:
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`
`Pet. 64. In Petitioner’s drawing, Benac’s paddle wheel (colorized yellow) is
`added adjacent Hedderwick’s seed meter disc (colorized blue), and Koning’s
`brush belt (colorized purple) is substituted for Hedderwick’s finned belt.
`Petitioner explains that in the proposed combination, “the paddle wheel
`contacts and guides the seeds from Hedderwick’s seed meter disk directly
`into Koning’s brush belt through Hedderwick’s intake opening/orifice 141.”
`Id. at 63 (citing Ex. 1002 ¶¶ 117–118).8
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`8 We note that the claim does not expressly recite that the loading surface
`guides the seeds directly into the endless member; it recites that the loading
`surface is “positioned to contact and initially guide seed from the seed meter
`into the seed delivery apparatus.” Ex. 1001, 8:4–7. However, in the
`proposed combination as Petitioner frames it, Benac’s paddle wheel guides
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`According to Petitioner, ordinarily skilled artisans would have been
`motivated to replace Hedderwick’s finned belt with Koning’s brush belt,