Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: October 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYER CROPSCIENCE LP,
`Petitioner,
`
`v.
`
`EXOSECT LIMITED,
`Patent Owner.
`
`Case PGR2017-00018
`Patent 9,380,739 B2
`
`Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER M. KAISER,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: October 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYER CROPSCIENCE LP,
`Petitioner,
`
`v.
`
`EXOSECT LIMITED,
`Patent Owner.
`
`Case PGR2017-00018
`Patent 9,380,739 B2
`
`Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER M. KAISER,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PGR2017-00018
`Patent 9,380,739 B2
`
`INTRODUCTION
`
`A. Background
`Bayer CropScience LP (“Petitioner”) filed a Petition requesting post-
`grant review of claims 1–3, 5–8, and 10–12 of U.S. Patent No. 9,380,739 B2
`(Ex. 1001, “the ’739 patent”). Paper 2 (“Pet.”). Exosect Limited (“Patent
`Owner”) did not file a Preliminary Response.
`We have authority to determine whether to institute a post-grant
`review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard for
`instituting a post-grant review is set forth in 35 U.S.C. § 324(a), which
`provides that a post-grant review may not be instituted “unless the Director
`determines . . . it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable.”
`After considering the Petition, we determine that Petitioner has
`demonstrated it is more likely than not that at least one of the claims it
`challenges is unpatentable. Accordingly, we institute post-grant review.
`
`B. Related Matters
`The parties do not identify any pending infringement suits asserting
`the ’739 patent. Pet. 1; Paper 5, 2. Both parties note that the Canadian
`equivalent of the ’739 patent has been asserted in a patent infringement
`action in Canada, Exosect Limited v. Bayer CropScience Inc., Federal Court
`File No. T-490-15. Id.
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`Patent 9,380,739 B2
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–3, 5–8, and 10–12 of the ’739 patent
`are unpatentable based on the following grounds (Pet. 30–84):1
`Statutory
`Basis
`Challenged Claims
`Ground2
`§ 112(b)
`§ 112(b)
`§ 112(b)
`
`1–3, 5–8, and 10–12
`1–3, 5–8, and 10–12
`1–3, 5–8, and 10–12
`
`Indefiniteness of “electret”
`Indefiniteness of “controlling”
`Indefiniteness of “adheres more
`firmly”
`1–3, 5–8, and 10–12
`Lack of written description
`1–3, 5–8, and 10–12
`Lack of enablement
`1–3 and 6–8
`Exosect Press Release 13
`1–3 and 6–8
`Exosect Press Release 1
`Reichert4 and Exosect Press Release 1 1–3, 5–8, and 10–12
`Reichert and Exosect Press Release 25 1–3, 5–8, and 10–12
`
`§ 112(a)
`§ 112(a)
`§ 102
`§ 103
`§ 103
`§ 103
`
`
`1 Petitioner also relies on Declarations from Dr. Curt Raschke and Peter N.
`Marks. Ex. 1029 (“the Raschke Declaration” or “Raschke Decl.”); Ex. 1030
`(“the Marks Declaration” or “Marks Decl.”).
`2 The relevant post-grant review provisions of the America Invents Act
`(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), took effect on March 16,
`2013. 125 Stat. at 293, 311. Because the application from which the ’739
`patent issued was filed after that date, our citations to Title 35 are to its post-
`AIA version. Section 4(c) of the AIA re-designated 35 U.S.C. §§ 112(1), (2)
`as 35 U.S.C. §§ 112(a), (b), respectively, effective September 16, 2012. 125
`Stat. at 296–297.
`3 PRLog, Exosect Press Release, “Exosect CEO, Martin Brown, to address
`CropWorld North America conference 2012” (Feb. 6, 2012) (Ex. 1012,
`“Exosect Press Release 1”).
`4 Reichert et al., US 2015/0072857, published Mar. 12, 2015 (Ex. 1040,
`“Reichert”).
`5 Exosect Press Release, “Exosex SPTab launched at Expocida” (Feb. 23,
`2012) (Ex. 1013, “Exosect Press Release 2”).
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`Patent 9,380,739 B2
`D. The ’739 Patent
`The ’739 patent issued on July 5, 2016, from the 35 U.S.C. § 371
`national-stage application of International Application No. PCT/GB2013/
`000153, which was filed on April 3, 2013. The PCT Application claims
`priority to six UK patent applications, all of which were filed on April 4,
`2012. Ex. 1001, 1:7–12; see Ex. 1003; Ex. 1004; Ex. 1005; Ex. 1006; Ex.
`1007; Ex. 1008.
`The ’739 patent relates to “[m]ethods and uses of controlling the
`flowability of a population of plant seeds and dust drift therefrom by placing
`individual seeds in contact with particles of a flowability enhancing agent.”
`Ex. 1001, at [57]. “[D]uring haulage and storage movement” of plant seeds,
`friction between the individual seeds can lead to erosion of the seed coat,
`which creates dust and “causes a loss of viability to a significant fraction of
`the seeds.” Id. at 1:22–34. Moreover, some seeds are coated or pelleted,
`and erosion in these cases can cause the loss into the environment of other
`elements of the coating or pelleting material, including “pesticides and/or
`fertilizers.” Id. at 1:34–45.
`In addition, it is important for plant seeds to be able “to flow or slide
`past each other,” because this allows the flow of seeds in storage and sowing
`equipment to be controlled so as to minimize damage to the seeds or
`blocking of the equipment. Id. at 1:49–58. This property, called
`“flowability” in the ’739 patent, is improved conventionally using “a mineral
`earth component such as talc, diatomaceous earth or kaolin as a drying
`agent.” Id. at 1:58–62. The ’739 patent teaches that these drying agents
`“tend to detach from plant seeds over time.” Id. In addition, these agents
`can “cause clumping of seeds,” leading to “blockages in sowing equipment.”
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`Id. at 1:63–66. Further, seed coatings conventionally are applied “in the
`form of wet slurry,” requiring additional drying steps. Id. at 1:66–2:8. The
`’739 patent notes that there are “[c]ommercial preparations of coated seeds”
`that “are alleged to be free flowing,” but that these preparations “tend to
`have complex coatings that inter alia make use of several polymer layers and
`other components that are expensive to produce.” Id. at 2:9–13. Thus,
`according to the ’739 patent, “[t]here exists a need to provide seeds for
`planting that have improved flowability and improved dust drift control over
`conventional seeds.” Id. at 2:14–16.
`The ’739 patent describes solving this problem “by placing the plant
`seeds of a mass of seeds in contact with dry free flowing particles of a
`flowability enhancing agent that is made up of at least one species of electret
`particle made up of a wax.” Id. at 2:17–21. These electret particles are
`described as “adher[ing] more firmly to the plant seeds than do particles that
`comprise a dry free flowing substance that is or includes a mineral earth
`component.” Id. at 2:22–24. According to the ’739 patent, this “[t]ypically”
`causes the seeds to be “more free-flowing than conventional plant seed
`populations” and to “exhibit reduced clumping of seeds within the seed mass
`than conventional plant seed populations.” Id. at 2:25–29. The ’739 patent
`describes several examples of its invention, applying carnauba wax particles
`under the trade name Entostat to “soya bean seed,” “perennial rye grass,”
`“cotton,” “maize,” “wheat seed,” and “oilseed rape.” Id. at 11:10–24:55.
`
`E. Illustrative Claims
`Of the challenged claims of the ’739 patent, claims 1 and 6 are
`independent and illustrative. They recite:
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`Patent 9,380,739 B2
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`1. A method of controlling the flowability of plant seeds by
`placing the plant seeds of a mass of seeds in contact with dry
`free flowing particles of a flowability enhancing agent that is
`made up of at least one species of electret particle made up of a
`wax, wherein the electret particle adheres more firmly to the
`plant seeds than do particles that comprise a dry free flowing
`substance that is or includes a mineral earth component.
`Ex. 1001, 24:58–64.
`
`6. A method of controlling dust drift from a population of plant
`seeds by placing the plant seeds of a mass of seeds in contact
`with dry free flowing particles of a flowability enhancement
`agent made up of electret particles made of a wax that adheres
`more firmly to plant seeds than a dry particulate compound or
`composition that is a flowability enhancement agent that
`comprises a dry free flowing substance that is a mineral earth or
`includes a mineral earth component.
`Id. at 25:13–21.
`
`ANALYSIS
`
`A. Claim Construction
`In a post-grant review, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.200(b).
`Claim terms also are given their ordinary and customary meaning, as would
`be understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Petitioner raises seven issues under the rubric of claim construction.
`Pet. 12–22.
`
`1. “Electret”
`Each challenged claim recites the term “electret particle.” Ex. 1001,
`24:58–26:20. Petitioner argues that the term “electret” should be interpreted
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`as requiring both physical characteristics and a processing history. Pet.
`14–15. Specifically, with respect to the physical characteristics, Petitioner
`argues that an electret must be “‘a dielectric material that has a quasi-
`permanent electric charge or dipole polarization’ which ‘generates internal
`and external electric fields,’ and ‘is the electrostatic equivalent of a
`permanent magnet.’” Id. at 14 (quoting Ex. 1009,6 43–44). In addition, with
`respect to the material’s processing history, Petitioner argues that an electret
`must have been “formed through ‘human intervention’ that ‘involves cooling
`a suitable dielectric material within a strong electric field, after heating it
`above its melting temperature,’ whereupon the ‘field repositions the charge
`carriers or aligns the dipoles within the material,’ and ‘[w]hen the material
`cools, solidification secures them in position.’” Id. at 14–15 (quoting
`Ex. 1009, 44) (alteration in original). Petitioner also sets forth two other
`“plausible” constructions for “electret,” but does not ask that we adopt either
`of these constructions. Id. at 32–33. As discussed below, we need not
`choose between these constructions to determine whether to institute review.
`Accordingly, we do not construe this term expressly at this time. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”).
`
`2. Claim Preambles
`Claim 1 recites “[a] method of controlling the flowability of plant
`seeds,” and claim 6 similarly recites “[a] method of controlling dust drift
`from a population of plant seeds.” Ex. 1001, 24:58–25:21. Petitioner argues
`
`
`6 Exhibit 1009 is the prosecution history of the ’739 patent.
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`Patent 9,380,739 B2
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`that these preambles should not be construed as limiting the scope of the
`claims beyond the additional limitations that define the scope of the claimed
`methods. Pet. 19–20.
`“[A] preamble generally is not limiting when the claim body describes
`a structurally complete invention such that deletion of the preamble phrase
`does not affect the structure or steps of the claimed invention.” Catalina
`Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002).
`Here, deleting the preamble of claim 1 would leave
`placing the plant seeds of a mass of seeds in contact with dry
`free flowing particles of a flowability enhancing agent that is
`made up of at least one species of electret particle made up of a
`wax, wherein the electret particle adheres more firmly to the
`plant seeds than do particles that comprise a dry free flowing
`substance that is or includes a mineral earth component.
`Ex. 1001, 24:58–64. Similarly, deleting the preamble of claim 6 would
`leave
`
`placing the plant seeds of a mass of seeds in contact with dry
`free flowing particles of a flowability enhancement agent made
`up of electret particles made of a wax that adheres more firmly
`to plant seeds than a dry particulate compound or composition
`that is a flowability enhancement agent that comprises a dry
`free flowing substance that is a mineral earth or includes a
`mineral earth component.
`Id. at 25:13–21. On the present record, these altered claims remain
`structurally complete and just as well-defined as they are with their
`preambles in place. Accordingly, on the present record, and for purposes of
`the present decision, we construe the preambles of the challenged claims as
`non-limiting.
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`Patent 9,380,739 B2
`3. “Adheres more firmly”
`Claim 1 recites that “the electret particle adheres more firmly to the
`plant seeds than do particles that comprise a dry free flowing substance that
`is or includes a mineral earth component.” Ex. 1001, 24:58–64. Claim 6
`similarly recites that the “electret particles [are] made of a wax that adheres
`more firmly to plant seeds than a dry particulate compound or composition
`that is a flowability enhancement agent that comprises a dry free flowing
`substance that is a mineral earth or includes a mineral earth component.” Id.
`at 25:13–21. Petitioner argues that these functional limitations are not
`limiting, because they inherently occur when the structural limitations of the
`claimed method are carried out. Pet. 20–22. This was the position the
`Examiner adopted during the prosecution of the ’739 patent. Ex. 1009,
`58–59 (“adhesiveness is a property that would have necessarily flown [sic]
`from forming an overcoat of wax material onto seeds”), 59 (the adhesiveness
`limitation is “intended use, since it does not add structure to the claim nor
`change[] the function of the wax”). Petitioner suggests that the patent
`applicant acquiesced to the Examiner’s determination. Pet. 21 (citing
`Ex. 1009, 44–45).
`In addition to this argument, Petitioner argues in the alternative that, if
`the “adheres more firmly” functional limitation is limiting, then “‘adheres
`more firmly’ requires some direct measurement of particle-to-seed
`adherence that controls for variables such as the size and shape of the
`particles.” Id. at 22. Moreover, Petitioner argues that this measurement of
`adherence plausibly could be construed in either of two ways. Id. at 38–40
`(discussing whether to measure adherence directly or through an effect such
`as dust production).
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`We are not persuaded on the current record that the “adheres more
`firmly” limitation necessarily must occur when the method steps recited in
`each of the challenged claims are carried out. Whether this limitation limits
`the scope of the challenged claims is an issue that we will determine
`following development of a full record during trial, rather than based solely
`on the evidence to which we have been directed so far. Accordingly, we do
`not construe this limitation as non-limiting at this time. Moreover, to the
`extent that it is limiting, we are not persuaded that we must determine the
`precise construction of this limitation in order to determine whether to
`institute review. Accordingly, we do not construe “adheres more firmly”
`expressly at this time. Vivid Techs., 200 F.3d at 803.
`
`4. Other Terms
`Petitioner argues that we should construe several additional terms.
`First, claim 1 recites “placing the plant seeds . . . in contact with . . . at least
`one species of electret particle,” and claim 6 similarly recites “placing the
`plant seeds . . . in contact with . . . electret particles.” Ex. 1001, 24:58–
`25:21. Petitioner argues that these phrases should be interpreted to require
`that the particles with which the plant seeds are placed in contact have been
`made into electret particles before they are placed into contact with the plant
`seeds. Pet. 15–17.
`Second, Claim 1 recites “dry free flowing particles of a flowability
`enhancing agent,” and claim 6 similarly recites “dry free flowing particles of
`a flowability enhancement agent.” Ex. 1001, 24:58–25:21. Petitioner
`argues that these phrases should be interpreted to require that the particles of
`the flowability enhancing agent be dry and free flowing before they are
`placed into contact with the plant seeds. Pet. 17–18.
`
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`Third, Claim 1 recites that the electret particles “adhere[] more firmly
`to the plant seeds than do particles that comprise a dry free flowing
`substance that is or includes a mineral earth component.” Ex. 1001,
`24:58–64. Claim 6 similarly recites that the electret particles “adhere[] more
`firmly to plant seeds than a dry particulate compound . . . that is a mineral
`earth or includes a mineral earth component.” Id. at 25:13–21. Petitioner
`argues that these phrases should be construed to “allow[] for the presence of
`material in addition to a mineral earth component” in the material to whose
`strength of adherence the strength of adherence of the electret particles is
`compared. Pet. 18.
`Fourth, Claim 1 recites “at least one species of electret particle made
`up of a wax,” and claim 6 similarly recites “electret particles made of a
`wax.” Ex. 1001, 24:58–25:21. Petitioner argues that these phrases should
`be interpreted to exclude any non-wax materials from the electret particles.
`Pet. 18–19.
`Because the asserted grounds of unpatentability may be assessed
`without a construction of any of these phrases, we are not persuaded that this
`issue must be resolved to determine whether to institute review.
`Accordingly, we do not construe any of these phrases expressly at this time.
`Vivid Techs., 200 F.3d at 803.
`
`B. Post-Grant Review Eligibility
`Post-grant reviews are available only for patents “described in section
`3(n)(1)” of the Leahy-Smith America Invents Act (“AIA”), Pub L. No. 112-
`29, 125 Stat. 284 (2011). AIA § 6(f)(2)(A). Such patents are those that
`issue from applications “that contain[] or contained at any time . . . a claim
`to a claimed invention that has an effective filing date as defined in section
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`100(i) of title 35, United States Code, that is on or after” “the expiration of
`the 18-month period beginning on the date of the enactment of” the AIA.
`Id. § 3(n)(1). Because the AIA was enacted on September 16, 2011, post-
`grant reviews are available only for patents that issue from applications that
`at one point contained at least one claim with an effective filing date on or
`after March 16, 2013, with “effective filing date” having the definition given
`to it by 35 U.S.C. § 100(i): “the filing date of the earliest application for
`which the . . . application is entitled, as to such invention, to a right of
`priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit
`of an earlier filing date under section 120, 121, 365(c), or 386(c).”
`35 U.S.C. § 100(i)(1)(B). Entitlement to the benefit of an earlier date under
`§§ 119, 120, 121, and 365 is premised on disclosure of the claimed invention
`in the manner provided by § 112(a) (other than the requirement to disclose
`the best mode) in the application for which the benefit of the earlier filing
`date is sought. See 35 U.S.C. §§ 119(e), 120. In the event that the
`application is not entitled to any earlier filing date or right of priority, the
`effective filing date is “the actual filing date of the . . . application for the
`patent containing a claim to the invention.” Id. § 100(i)(1)(A).
`Here, the ’739 patent issued from an application filed on April 3,
`2013, which is after March 16, 2013. Ex. 1001, at [22]. But the ’739 patent
`claims priority to foreign applications that were filed on April 4, 2012,
`which is before March 16, 2013. Id. at [30]. Accordingly, if the ’739 patent
`is entitled to this priority, then it is not eligible for post-grant review.
`Petitioner argues that the ’739 patent is not entitled to the priority of
`the foreign applications because those applications do not satisfy the written
`description and enablement requirements of 35 U.S.C. § 112(a). Pet. 23–27.
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`Specifically, Petitioner argues that the foreign applications do not describe
`the electret particle and the dry free flowing particles that are recited in all of
`the challenged claims. Id. At least on the present record, we agree.
`The foreign applications do not use the term “electret.” Ex. 1003;
`Ex. 1004; Ex. 1005; Ex. 1006; Ex. 1007; Ex. 1008; see Ex. 1029 ¶ 66.
`There is also no evidence that the foreign applications describe either the
`electrical properties of the wax particles they disclose or the nature of the
`adhesive forces between those wax particles and plant seeds. Ex. 1029
`¶¶ 67–69. In addition, there is no evidence in the present record that the
`foreign applications describe how to make electret particles, calling into
`question whether they sufficiently enable limitations to electret particles. Id.
`¶ 68. Finally, the foreign applications describe their flowability
`enhancement agents as taking the form of solid particles, semi-solid
`droplets, or liquid droplets, and the evidence currently of record suggests
`that electrets cannot exist in liquid form, which tends to show that making
`the agent into an electret was not important to the function of the invention
`described in the foreign applications. See, e.g., Ex. 1003, 14; Ex. 1029 ¶ 69.
`Similarly, with respect to the limitations reciting dry free flowing
`particles, the present record contains no evidence that the foreign
`applications use the term “dry free flowing” at all. Ex. 1029 ¶ 66. There is
`evidence that the term “free flowing,” which is used in the foreign
`applications, is used only to describe the seeds to which a flowability
`enhancement agent is applied, not to describe the flowability enhancement
`agent itself. See, e.g., Ex. 1003, 7, 9. In addition, as explained above, the
`foreign applications describe a flowability enhancement agent that can be
`applied in semi-solid or liquid forms, as well as in the form of dry particles,
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`so the subject matter described in the foreign applications was not required
`to be dry. See, e.g., id. 14; Ex. 1029 ¶ 69.
`The current record, which has not benefitted from Patent Owner’s
`submission of any evidence or argument, does not demonstrate any dispute
`with respect to the above-described evidence. Accordingly, at least on the
`present record, we are persuaded that the challenged claims are not entitled
`to the priority of the foreign applications. Therefore, it appears the ’739
`patent is eligible for post-grant review.
`Additionally, “[a] petition for a post-grant review may only be filed
`not later than the date that is 9 months after the date of the grant of the
`patent.” 35 U.S.C. § 321(c). Here, the ’739 patent issued on July 5, 2016.
`Ex. 1001, at [45]. The Petition was filed on April 2, 2017. Pet. 85, 87.
`Because this is within 9 months of the issuance of the ’739 patent, the
`Petition is timely.
`
`C. Asserted Indefiniteness
`Petitioner asserts that claims 1–3, 5–8, and 10–12 of the ’739 patent
`are unpatentable under 35 U.S.C. § 112(b) as indefinite on three separate
`grounds. Pet. 30–40.
`
`1. “Electret”
`Petitioner argues that claims 1–3, 5–8, and 10–12 are indefinite
`because the meaning of “electret,” a term recited in each claim, is unclear.
`Id. at 30–34. Specifically, Petitioner argues that the term “electret” in the
`’739 patent “is ‘amenable to two or more plausible claim constructions.’”
`Id. at 30 (quoting Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
`(precedential)). But Petitioner only explains why one of its identified
`constructions is plausible. Id. at 30–32 (explaining why “electret” should be
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`construed as requiring both physical characteristics and a processing
`history); id. at 12–15 (same). Not only does Petitioner fail to explain why
`the other constructions could be adopted, but Petitioner actually argues that
`those constructions should not be adopted. Id. at 32–34 (arguing it would be
`improper to construe “electret” without including the processing
`component).
`Moreover, Petitioner does not explain why any of the individual
`“plausible” constructions it identifies for “electret” are themselves indefinite
`in scope. Petitioner admits that “[t]he tem ‘electret’ is definite under
`§ 112(b) . . . if [Petitioner’s] full ‘Definition of Electret’ . . . is adopted.” Id.
`at 30. The definition Petitioner refers to is its proposed construction of
`“electret.” Compare Pet. 30 (setting out Petitioner’s “full ‘Definition of
`Electret’”), with Pet. 14–15 (setting out Petitioner’s proposed construction of
`“electret”). With respect to the other two “plausible” constructions,
`Petitioner does not even allege that the scope of the term “electret” would be
`unclear if we were to adopt one of these constructions. Therefore, Petitioner
`has not demonstrated that it is more likely than not that the term “electret”
`renders the scope of the challenged claims unclear enough to render them
`unpatentable as indefinite. Accordingly, we deny institution of post-grant
`review on the asserted ground that the term “electret” renders claims 1–3,
`5–8, and 10–12 indefinite.
`
`2. “Controlling”
`Petitioner argues that claims 1–3, 5–8, and 10–12 are indefinite
`because the meaning of “controlling,” a term recited in each claim, is
`unclear. Id. at 34–37. Petitioner proposes two possible meanings that the
`term “controlling” might have, one of which is that the meaning of
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`PGR2017-00018
`Patent 9,380,739 B2
`
`“controlling” is unimportant because it appears only in the non-limiting
`preambles of the challenged claims. Id. As discussed above, we construe
`the preambles in which the term “controlling” appears as non-limiting.
`Accordingly, the meaning of “controlling” is unimportant to determining the
`scope of any of the challenged claims. Thus, we deny institution of post-
`grant review on the asserted ground that the term “controlling” renders
`claims 1–3, 5–8, and 10–12 indefinite.
`
`3. “Adheres More Firmly”
`Petitioner argues that claims 1–3, 5–8, and 10–12 are indefinite
`because the meaning of “adheres more firmly,” a term recited in each claim,
`is unclear. Id. at 37–40. Petitioner proposes first that this term may not
`limit the scope of the challenged claims at all and then proposes that, if the
`term does limit the scope of the challenged claims, it might do so in either of
`two possible ways. Id. As discussed above, we do not agree with Petitioner
`that the present record is sufficient to conclude that the term “adheres more
`firmly” does not limit the scope of the challenged claims, and we leave that
`determination for trial. In addition, as discussed above, to the extent that
`this term is limiting, the present record is insufficient to permit us to
`determine the proper construction. Because we cannot determine the proper
`scope of this term, we are persuaded that Petitioner has shown sufficiently,
`on the present record and for purposes of the present decision, that the scope
`of the challenged claims is uncertain. Accordingly, we determine that it is
`more likely than not that the challenged claims are indefinite because of
`their use of the “adheres more firmly” functional limitation. Therefore, we
`institute post-grant review on the asserted ground that the term “adheres
`more firmly” renders claims 1–3, 5–8, and 10–12 indefinite.
`
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`PGR2017-00018
`Patent 9,380,739 B2
`D. Written Description
`Petitioner asserts that claims 1–3, 5–8, and 10–12 of the ’739 patent
`are unpatentable under 35 U.S.C. § 112(a) as lacking sufficient written
`description. Pet. 41–56. To prevail on the asserted ground of
`unpatentability, Petitioner must demonstrate that the specification of the
`’739 patent does not convey with reasonable clarity to those skilled in the art
`that, as of the filing date sought, the patent applicant was in possession of
`the invention that is now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
`1555, 1563–64 (Fed. Cir. 1991).
`We note at the outset that the claims of the originally filed application
`are quite similar, and in some cases identical, to the corresponding issued
`claims of the ’739 patent. Compare Ex. 1001, 24:58–26:20, with Ex. 1002,
`37–39. “[M]any original claims will satisfy the written description
`requirement” by themselves. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
`F.3d 1336, 1349 (Fed. Cir. 2010). But those claims need not necessarily
`satisfy the requirement for adequate written description. When a claim
`recites a genus and “use[s] functional language to define the boundaries of
`[the] claimed genus,” it “may simply claim a desired result, and may do so
`without describing species that achieve that result.” Id. When this is the
`case, “the specification must demonstrate that the applicant has made a
`generic invention that achieves the claimed result and do so by showing that
`the applicant has invented species sufficient to support a claim to the
`functionally-defined genus.” Id.
`Petitioner argues that the claims of the ’739 patent “define the
`invention only by function, not by structure.” Pet. 42. We agree, at least in
`part. There certainly are structural limitations in the claims. For example,
`
`17
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`PGR2017-00018
`Patent 9,380,739 B2
`
`claim 1 recites “placing the plant seeds of a mass of seeds in contact with
`dry free flowing particles . . . made up of at least one species of electret
`particle that is made up of a wax.” Ex. 1001, 24:58–64. This does not
`define the scope of the claim by function. But claim 1 also recites that “the
`electret particle adheres more firmly to the plant seeds than do particles that
`comprise a dry free flowing substance that is or includes a mineral earth
`component.” Id. This defines the scope of the claim using functional
`language to report a desired result, without reciting particular species of
`electret particles, plant seeds, and mineral earth-containing particles that
`achieve the desired result. Similarly, claim 6 recites “a wax that adheres
`more firmly to plant seeds than a dry particulate compound or composition
`that is a flowability enhancement agent that comprises a dry free flowing
`substance that is a mineral earth or includes a mineral earth component,”
`which defines the scope of the claim using functional language to report a
`desired result without reciting particular species of waxes, plant seeds, and
`mineral earth-containing particles that achieve the desired result. Id. at
`25:13–21. Because all the remaining challenged claims depend from claim
`1 or claim 6, all of those claims contain similar limitations. 37 C.F.R.
`§ 1.75(c).
`The originally filed versions of claim 1 and claim 6 contained
`functional limitations very similar to those appearing in the issued claims.
`Ex. 1002, 37. Thus, all of the challenged claims must find written
`description support in the specification but outside those original claims.
`Ariad, 598 F.3d at 1349. That is, “the specification must demonstrate that
`the applicant has made a generic invention that achieves the claimed result
`and do so by showing that the applicant has invented species sufficient to
`
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`PGR2017-00018
`Patent 9,380,739 B2
`
`support a claim to the functionally-defined genus.” Id. Here, then, the
`specification must demonstrate the possession of a generic wax electret
`particle that achieves the result of adhering more firmly to seeds than does a
`particle that “comprise[s] a dry free flowing substance that is or includes a
`mineral earth component.” Ex. 1001, 24:58–64.
`Petitioner argues that the specification of the ’739 patent does not
`demonstrate such possession. Pet. 48–51. On the present record, we agree.
`The only test reported in the specification of the ’739 patent “is intended to
`assess the amount of free floating dust and abrasion particles of treated seeds
`under defined mechanical stress conditions.” Ex. 1001, 11:37–39. It may be
`the case that the person of ordinary skill in the art would have understood
`the correlation between a treatment that affected dust production from seeds
`in a given way and the presence of particles that adhere mo
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