Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 6
`Entered: April 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DEVELOPMENT TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`E.I. DU PONT DE NEMOURS AND COMPANY,
`Patent Owner.
`____________
`
`Case PGR2018-00102
`Patent 9,848,543 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`E.I. du Pont de Nemours and Company (“DuPont”) is the owner of
`U.S. Patent No. 9,848,543 B2 (“the ’543 patent”). Development
`Technologies, LLC (“DTL”) filed a petition requesting post-grant review of
`claims 1–18 of the ’543 patent. Paper 1 (“Pet.”). DuPont did not file a
`preliminary response in rebuttal. Because we determine that DTL has
`demonstrated that at least claim 1 of the ’543 patent is more likely than not
`
`
`571-272-7822
`
`
`
`Paper 6
`Entered: April 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DEVELOPMENT TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`E.I. DU PONT DE NEMOURS AND COMPANY,
`Patent Owner.
`____________
`
`Case PGR2018-00102
`Patent 9,848,543 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`E.I. du Pont de Nemours and Company (“DuPont”) is the owner of
`U.S. Patent No. 9,848,543 B2 (“the ’543 patent”). Development
`Technologies, LLC (“DTL”) filed a petition requesting post-grant review of
`claims 1–18 of the ’543 patent. Paper 1 (“Pet.”). DuPont did not file a
`preliminary response in rebuttal. Because we determine that DTL has
`demonstrated that at least claim 1 of the ’543 patent is more likely than not
`
`
`
`PGR2018-00102
`Patent 9,848,543 B2
`
`unpatentable under 35 U.S.C. § 112(a), we institute post-grant review of all
`claims as challenged in the petition, namely, that claims 1–18 are
`unpatentable under 35 U.S.C. §§ 103, 112(a), and 112(b). See 35 U.S.C.
`§ 324(a).
`
`I. BACKGROUND
`
`
`
`A. The ’543 Patent
`The ’543 patent issued December 26, 2017, and claims priority to a
`provisional application filed July 9, 2013. Ex. 1001, cover page, (45), (65);
`Ex 1003, 1 (showing claim of priority). As such, the ’543 patent is eligible
`for post-grant review because the petition was filed within nine months of
`the ’543 patent’s issue date and the earliest possible priority date for the ’543
`patent is after the March 16, 2013 effective date for the Leahy-Smith
`America Invents Act. See 35 U.S.C. § 321.
`The ’543 patent is directed to microporous tubing adapted for use in
`subsurface irrigation of plants or seeds. Ex. 1001, 1:5–9, 1:55–62. There
`are eighteen claims in the ’543 patent, with claims 1, 10, 12, and 17 being
`independent. Id. at 12:22–14:47. Independent claim 1, which is illustrative
`for purposes of this decision, recites:
`1. A method for subsurface irrigation of plants or seeds
`comprising the steps of[:]
`i. providing one or more hydrophobic porous tubes that are
`not coated with a hydrophilic material into which an aqueous
`irrigation fluid is supplied to one or more of the tubes, wherein
`the tubes comprise materials having a hydrohead (HH);
`ii. locating the tubes with at least a portion of their length in
`the proximity of a plurality of plants to be irrigated that are in
`their growth phase;
`
`
`
`
`
`2
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`PGR2018-00102
`Patent 9,848,543 B2
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`
`iii. passing the aqueous irrigation liquid into the tubes during
`said growth phase of the plants to be irrigated, at an applied
`pressure (Pgrowth) at or below HH;
`wherein the tubes are in fluid contact with each other and are
`configured in a configuration such that the aqueous irrigation
`fluid enters the tube configuration and is pressurized therein
`such that the minimum length of tubing between the irrigation
`fluid entry point and at least one of the plants to be watered is
`61 meters and the HH of at least a portion of the one or more
`tubes is at least 100 cmwc, and wherein, once filled with fluid,
`the tubes will remain filled when the applied pressure is
`removed.
`Id. at 12:22–43 (emphases added).
`The critical limitation here is the “wherein” clause at the end of
`claim 1, which requires that “once filled with fluid, the tubes will
`remain filled when the applied pressure is removed.” That same
`“wherein” clause is found in each of the other independent claims and
`appears to have been the reason for their allowance. See Exs. 1010,
`1011.
`
`B. The Asserted Challenges
`DTL challenges the patentability of claims 1–18 under 35 U.S.C.
`§§ 112(a), 112(b), and 103. For the section 112(a) challenge, DTL makes
`two arguments, first, that claims 1–18 lack sufficient written description
`support in the specification of the ’543 patent (Pet. 20–24), and, second, that
`the specification does not enable any of those claims (id. at 29–31). Relying
`on section 112(b), DTL asserts that claims 1–18 are also indefinite. Id. at
`24–29. Finally, in its section 103 challenge, DTL asserts that claims 1, 2, 5–
`9, 12–15, 17, and 18 would have been obvious to an ordinarily skilled
`artisan in view of several combinations of prior art references and “common
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`PGR2018-00102
`Patent 9,848,543 B2
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`knowledge” within the industry. Pet. 32–39. DTL’s specific challenges are
`listed in the table below. In further support of these challenges, DTL
`submits declarations from technical experts retained for purposes of this
`proceeding. See Exs. 1004, 1005.
`Basis
`Ground Claims Challenged
`Lack of written description support
`§ 112(a) 1–18
`Non-enablement
`§ 112(a) 1–18
`Indefiniteness
`§ 112(b) 1–18
`§ 103
`1, 2, 5–8, 12–15, 17, 18 Sinda,1 Stachnik,2 and “common
`knowledge”3
`1, 2, 5–9, 12–15, 17, 18 LaRue,4 Stachnik, and “common
`knowledge”
`1, 2, 5–8, 12–15, 17, 18 Osborn,5 Stachnik, and “common
`knowledge”
`
`§ 103
`
`§ 103
`
`II. ANALYSIS
`A. Claim Construction
`DTL proposes a construction for two claim terms: “fill” and
`“remove.” Pet. 19. Relying on dictionary definitions, DTL argues that, in
`the context of the independent claims, the term “fill” means to “occupy the
`whole of” and the term “remove” means “abolish or get rid of,” which DTL
`
`1 U.S. Patent App. Pub. No. US 2011/0265897 A1, pub. Nov. 3, 2011
`(Ex. 1026, “Sinda”).
`2 U.S. Patent App. Pub. No. US 2005/0166451 A1, pub. Aug. 4, 2005
`(Ex. 1019, “Stachnik”).
`3 As “evidence of prior art knowledge,” DTL and its expert cite: (1) Lomax,
`K.M., Emission Characteristics of Porous Tubing, AGRICULTURAL WATER
`MANAGEMENT, 15 (1988), 197–204 (1988) (Ex. 1020, “Lomax”); and (2)
`U.S. Patent No. 5,117,582, iss. Jun. 1992 (Ex. 1021, “Cissel”). Pet. 34–35;
`Ex. 1004, § D ¶¶ 1, 6–7, 11.
`4 U.S. Patent App. Pub. No. US 2014/0047766 A1, pub. Feb. 20, 2014
`(Ex. 1028, “LaRue”).
`5 U.S. Patent No. 3,939,875, iss. Feb. 24, 1976 (Ex. 1030, “Osborn”).
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`Patent 9,848,543 B2
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`argues is tantamount to exhausting the tubes of any applied pressure. Pet. 19
`(citing Ex.1014, 1015). At this stage, we discern no reason to doubt the
`plain and ordinary meaning of those terms as reflected by their respective
`dictionary definitions. Thus, for purposes of this decision, we construe the
`term “fill” to mean “occupy the whole of” and the term “remove” to mean
`“abolish or get rid of; completely exhaust.”6
`
`B. Threshold for Institution
`Central to this proceeding is the claim 1 limitation “wherein, once
`filled with fluid, the tubes will remain filled when the applied pressure is
`removed.” DTL argues that this limitation complies with neither the written
`description requirement nor the enablement requirement of section 112(a).
`Pet. 20–24, 29–31, respectively. For both challenges, we focus on
`independent claim 1, as DTL does not argue the independent claims
`separately. See, e.g., Pet. 25 (“Petitioner here and elsewhere addresses
`recited language in independent claim 1, but it will be understood that
`independent claims 10, 12, and 17 recite many, most, or all of the same or
`similar limitations, and therefore suffer from the same or similar essential
`infirmities”).
`Section 112(a) of Title 35 of the United States Code provides, in part,
`that the “specification shall contain a written description of the invention.”
`35 U.S.C. § 112(a). To meet the written description requirement, the
`specification must “reasonably convey[] to those skilled in the art that the
`
`
`6 DTL also submits a table of proposed constructions for additional terms
`found in claims 1, 10, 12, and/or 17. See Ex. 1017. At this stage, without
`hearing first from DuPont, we see no need for an express construction of any
`other claim terms.
`
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`Patent 9,848,543 B2
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`inventor had possession of the claimed subject matter as of the filing date.”
`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc). A proper analysis of this issue “requires an objective inquiry into
`the four corners of the specification from the perspective of a person of
`ordinary skill in the art.” Id. Drafting a claim more broadly than what the
`specification describes and supports will render the claim invalid.
`After reviewing DTL’s arguments and evidence, we find merit to its
`challenges under section 112(a). As discussed above, section 112(a)
`compliance is measured from the standpoint of what an ordinarily skilled
`artisan would have understood from the specification as originally filed.
`Here, DTL proffers evidence of that understanding from its technical expert.
`See Ex. 1004 § C ¶¶ 1–13. We credit that unrebutted testimony and give it
`substantial weight at this stage, for it is consistent with what the
`specification discloses, or more accurately in this case, what the
`specification omits.
`Here, the specification itself makes clear that the specification lacks
`written description for the “once filled . . . the porous tubes will remain
`filled” limitation of claim 1. From our review at this stage, the specification
`of the ’543 patent describes neither the physical construct of the claimed
`“porous” tubing nor the particular surface and flow properties necessary to
`achieve the tubing’s fluid-retention capability, as also claimed. DTL’s
`expert provides ample expert testimony indicating that an ordinarily skilled
`artisan would not be able to glean the presence or import of the tubing’s
`physical properties from reviewing the specification. See Ex. 1004 § C
`¶¶ 3–5, 7, 9, 12, 13. DTL’s expert likewise confirms that the specification
`fails to account for how long or to what extent the tubes would remain filled
`
`6
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`PGR2018-00102
`Patent 9,848,543 B2
`
`under environmental conditions that include evaporation, permeation, and
`other dissipative effects occurring within the tubes once applied pressure is
`removed. Id. § C ¶¶ 10–11, § D ¶ 12. Nor does the specification indicate
`how much of the applied pressure needs to be “removed” to achieve a state
`of fluid retention. Id. § C ¶¶ 6, 9, 13.
`In our view, that lack of description with respect to the physical
`properties of the claimed porous tubing and the manner in which it achieves
`the claimed fluid-retention capability is not merely a matter of varying
`interpretations of description already found in the specification. Rather, the
`preliminary record reflects that the specification is more likely devoid of any
`description that might inform an ordinarily skilled artisan of how the fluid-
`retention capability of the porous tubing is achieved. Ex. 1004 § C ¶¶ 3–13,
`§ D ¶ 12.
`We note that the ’543 patent discloses a number of examples
`purporting to show the performance of Tyvek® tubing when filled with water
`at an applied pressure. Ex. 1001, 9:19–12:19. Nowhere, however, do those
`examples ever discuss removal of the “applied pressure,” let alone describe
`what happens when the tubing is no longer pressurized. Instead, the
`disclosed examples contemplate only a situation where “[a]pplied pressure
`was increased.” Id. at 9:60. We are left to speculate not only as to what
`might happen if the pressure was removed, but also how it might happen.
`This is so despite claim 1 reciting that the tube “will remain filled” in the
`absence of applied pressure.
`
`Because the specification lacks any meaningful description of the
`fluid-retention capability of claim 1, as explained by the presently
`unrebutted testimony of DTL’s expert, we conclude that DTL has shown
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`Patent 9,848,543 B2
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`that claim 1 is more likely than not unpatentable under section 112(a) for
`lack of written description support. For similar reasons, we also conclude
`that DTL has demonstrated sufficiently that claim 1 is more likely than not
`unpatentable due to a non-enabling disclosure for the claimed fluid-retention
`capability. See Pet. 29–31.
`More specifically, as discussed above, the specification omits any
`meaningful details and examples that might provide guidance and direction
`for how the claimed fluid-retention capability of the “porous tubes” is
`achieved once “applied pressure is removed.” See Ex. 1004 § C ¶¶ 3–13,
`§ D ¶ 12. Moreover, the specification admits that the claimed porous tubes
`exhibit “unexpectedly high water flow rates in the presence of plants even at
`head pressures below their hydrostatic head pressure,” which would seem to
`be the antithesis of what claim 1 requires. Ex. 1001, 1:55–59. As DTL
`points out, and we agree, “[i]t remains unexplained how the tubes would
`‘remain filled’ in the face of ‘unexpectedly high water flow rates.’” Pet. 31.
`Thus, we conclude that DTL additionally demonstrates that claim 1 is
`more likely than not unpatentable under section 112(a) for lack of
`enablement. Because DTL demonstrates that at least claim 1 meets the
`threshold for institution, we institute inter partes review of all the claims
`challenged on the basis of lack of written description support and non-
`enablement. 35 U.S.C. § 324(a).
`
`C. Alternative Challenges
`DTL also challenges claims 1, 2, 5–9, 12–15, 17, 18 as obvious over
`various combinations that include Stachnik in combination with either
`Sinda, LaRue, or Osborn. Pet. 32–39 (citing claim mapping charts in
`Exs. 1025, 1027, 1029). At this stage, because a key limitation of the claims
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`PGR2018-00102
`Patent 9,848,543 B2
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`more likely than not lacks sufficient written description support in the
`specification and/or is not enabled by specification, we are unclear as to the
`merits of DTL’s obviousness challenges. See Ex. 1004 § D ¶ 12 (DTL’s
`expert testifying that claimed fluid-retention capability “is not possible for
`porous tubes”). But we do note the prior art’s disclosure of the use of
`Tyvek® tubing in irrigation systems. See, e.g., Ex. 1019 (Stachnik) ¶¶ 30,
`31, 46; Ex. 1020 (Lomax) 197–198, 203; Ex. 1030 (Osborn), 2:35–51, 3:1–
`43; see also Ex. 1004 § D ¶¶ 3, 6 (DTL’s expert confirming the same).
`Also, we do not take a position at this time with respect to DTL’s
`indefiniteness challenge under section 112(b). Further analysis of both the
`indefiniteness and obviousness challenges is best left for trial after full
`development of the record. Because “[e]qual treatment of claims and
`grounds for institution purposes has pervasive support in SAS,” we institute
`on all grounds as raised in DTL’s petition. PGS Geophysical AS v. Iancu,
`891 F.3d 1354, 1360 (Fed. Cir. 2018).
`
`III. ORDER
`Accordingly, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 324(a), a post-grant review
`of claims 1–18 of the ’543 patent as challenged in the petition is instituted;
`and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 324(c) and
`37 C.F.R. § 42.4(b), a post-grant review of the ’543 patent will commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a trial.
`
`
`
`
`9
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`PGR2018-00102
`Patent 9,848,543 B2
`
`
`FOR PETITIONER:
`Scott D. Balderston
`Steven R. Olsen
`DEVELOPMENTAL TECHNOLOGIES, LLC
`sbalderston@symbus.com
`solsen@sropetent.com
`
`
`FOR PATENT OWNER:
`
`Stephen J. Gombita
`Steven C. Benjamin
`E.I. DU PONT DE NeMOURS AND COMPANY
`stephen.j.gombita@dupont.com
`steven.c.benjamin@dupont.com
`
`10
`
`
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