Trials@uspto.gov
`571-272-7822
`
`Paper 95
`Date: December 15, 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.
`
`IPR2019-01055
`Patent 9,699,955 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)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 95
`Date: December 15, 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.
`
`IPR2019-01055
`Patent 9,699,955 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)
`
`
`
`
`
`
`
`
`IPR2019-01055
`Patent 9,699,955 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–
`8, 10, 12–17, 19, and 20 of U.S. Patent No. 9,699,955 B2 (Ex. 1001, “the
`’955 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 19 (“Dec. on Inst.”). After institution of trial, Patent Owner filed a
`Patent Owner Response. (Paper 34, “PO Resp.”), Petitioner filed a Reply
`(Paper 59, “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 1–8, 10, 12–17, 19, and 20 of
`the ’955 patent are unpatentable.
`
`2
`
`
`
`IPR2019-01055
`Patent 9,699,955 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. 9. Patent Owner lists only itself as a real party in interest. Paper 5, 1.
`C. Related Matters
`Patent Owner has asserted the ’955 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. 9; Paper 5, 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
`IPR2019-01053
`IPR2019-01054
`
`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. 9,861,031
`U.S. Patent No. 10,004,173
`
`Pet. 9.
`D. The ’955 Patent
`The ’955 patent issued on July 11, 2017, from an application filed
`May 5, 2015. Ex. 1001, at codes (45), (22). The ’955 patent states that it is
`a continuation of Application No. 14/504,801, filed October 2, 2014, and a
`
`3
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`continuation of Application No. 12/364,010, filed February 2, 2009. Id.
`at code (63).
`The ’955 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
`’955 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
`’955 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 2:24–39.
`Referring to Figure 3 of the ’955 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, 3:20–25.
`
`4
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`
`
`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 3:40–41. 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 3:51–54, 63–65, 4:45–46.
`
`5
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`Pulleys 60, 62, mounted inside housing 48, support belt 64 for rotation
`within the housing. Ex. 1001, 3:55–56. 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 4:24–28.
`Specifically, as the curved path straightens, the bristle ends close upon
`themselves and capture the seeds. Id. at 4:31–34. 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 1–8, 10, 12–17, 19, and 20. Of the
`challenged claims, claims 1, 8, and 16 are independent. Claim 1 is
`reproduced below, with bracketed labels as added by Petitioner:
`1.
`[Pre] A seeding machine for a row unit, the seeding
`machine comprising:
`[a] a seed delivery apparatus including
`[b] an elongated housing having a first opening
`through which seed is received into the seed delivery
`apparatus, a second opening through which seed exits the
`seed delivery apparatus, and an elongated interior chamber
`along which seed is conveyed from the first opening to the
`second opening, and
`[c] an endless member positioned within the
`elongated housing, the endless member movable within
`
`6
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`the elongated interior chamber of the elongated housing to
`receive seed from the first opening and convey seed to the
`second opening;
`[d] a seed meter having a plurality of apertures through
`which an air pressure differential is applied to retain seed
`thereon; and
`[e] a nip proximate the first opening and through which
`seed from the seed meter passes, wherein seed is carried by the
`seed meter under the air pressure differential at least to the nip.
`Ex. 1001, 7:51–8:4; see also Pet. 46–62 (adding labels).
`
`F. Asserted Ground
`Petitioner contends that the challenged claims are unpatentable based
`on the following ground:
`
`Claims Challenged
`Basis1
`References
`§ 103(a) 1–8, 10, 12–17, 19, 20
`Hedderwick,2 Koning,3 and Benac4
`Pet. 46. 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. 2202.5 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 ’955 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
`three occasions; because he holds four patents that do not relate to seed
`
`7
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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.
`Petitioner also argues that the testimony of Dr. Glancey regarding these
`exhibits should be excluded. Id. at 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 subject of the
`
`
`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 1–4. Patent Owner responds that
`Dr. Glancey is a mechanical engineering professor and professional engineer
`who has “extensive personal 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 33–35. 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.
`
`8
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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-
`
`9
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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. 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. 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, 1050, 1052, 1054,
`1068, 1073, 1077, 1078, 1086, 1087, 1089, 1091, 1092, 1103, 1113–15,
`
`10
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`1123, 1131–33 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)).
`
`11
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`“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. 45 (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
`as well as 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. 2202 ¶¶ 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
`
`12
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`ordinary skill is “too restrictive and sets the level of ordinary skill in the art
`of the ’955 Patent too high.” Ex. 2202 ¶ 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 ’955 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 ’955 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.
`
`13
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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.
`
`14
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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:
`
`15
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`
`
`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:
`
`16
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`
`
`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:
`
`17
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`
`
`
`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.
`
`18
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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.
`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
`
`19
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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. 34–41, 46–68. To briefly summarize the
`manner in which Petitioner relies on the cited references, Petitioner contends
`that Hedderwick teaches the preamble and limitation [d]. See id. at 46–48,
`60–62. Petitioner proposes modifying Hedderwick by replacing finned belt
`134 with Koning’s brush belt, and contends that Hedderwick so modified
`teaches limitations [a]–[c]. See id. at 48–60. In particular, Petitioner relies
`on Koning’s brush belt to disclose the “endless member” recited in
`limitation [c]. See id. at 57.7 Petitioner contends that when Benac’s paddle
`wheel is positioned proximate Hedderwick’s orifice 141, the resulting
`combination teaches every aspect of limitation [e]. See id. at 62–68.
`
`
`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.
`
`20
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`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:
`
`
`Pet. 67. 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
`would remove the seeds from the disc, and push the seeds through the intake
`opening into the bristles of Koning’s brush belt.” Id. at 40; see also id. at 66
`(“When Hedderwick’s endless belt is substituted with Koning’s brush belt,
`the bristles of the brush belt would receive the seed removed from
`Hedderwick’s seed meter disc via Benac’s paddle wheel directly through the
`first opening in Hedderwick’s casing.”).
`
`21
`
`
`
`IPR2019-01055
`Patent 9,699,955 B2
`According to Petitioner, ordinarily skilled artisans would have been
`motivated to replace Hedderwick’s finned belt with Koning’s brush belt, in
`order to improve the accuracy of seed spacing. See id. at 51. Specifically,
`Petitioner argues that in Hedderwick, seeds can move within the cells of the
`finned belt, which means that the relationship between seeds is not
`completely defined by the belt before the seeds are deposited into the soil.
`Id. at 36. An ordinarily skilled artisan “seeking to
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
