Trials@uspto.gov Paper No. 8
`571-272-7822
` Date: September 15, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYNGENTA CROP PROTECTION AG,
`Petitioner,
`v.
`FMC Corporation,
`Patent Owner.
`
`PGR2020-00028
`Patent 10,294,202 B2
`
`
`
`
`
`
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`CYNTHIA M. HARDMAN, Administrative Patent Judges.
`HARDMAN, Administrative Patent Judge
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`I.
`INTRODUCTION
`Syngenta Crop Protection AG (“Petitioner”) filed a Petition requesting
`post-grant review of claims 1–7, 9–13, and 21–31 of U.S. Patent No.
`10,294,202 B2 (“the ’202 Patent,” Ex. 1001). Paper 1 (“Pet.”). FMC
`Corporation (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 7 (“Prelim. Resp.”).
`To institute a post-grant review, we must determine that the
`information presented in the Petition demonstrates “that it is more likely
`than not that at least 1 of the claims challenged in the petition is
`unpatentable.” 35 U.S.C. § 324(a). For the reasons explained below, we
`institute a post-grant review of the challenged claims based on the grounds
`of unpatentability identified in the Petition. Pet. 5 (statement of grounds).
`The following preliminary findings of fact and conclusions of law are
`made for the sole purpose of determining whether to institute review. Any
`final decision will be based on the full trial record.
`A.
`Related Matters
`Petitioner identifies the following two applications to which the
`’202 Patent claims priority: (1) U.S. Provisional Application No.
`61/911,324 (filed 12/3/2013); and (2) PCT/US2014/068073,
`WO2015/084796 (published June 11, 2015). Pet. 3–4.
`Patent Owner states that it “knows of no judicial or administrative
`matters that may affect or be affected by a decision in this proceeding.”
`Paper 3 (Patent Owner Mandatory Notices), 2.
`B.
`The ’202 Patent (Ex. 1001)
`The ʼ202 Patent, titled “Pyrrolidinones as Herbicides,” “relates to
`certain pyrrolidinones, their N-oxides and salts, and compositions and
`
`2
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`methods of their use for controlling undesirable vegetation.” Ex. 1001, code
`(54), 1:5–7. The specification states that “[t]he control of undesired
`vegetation is extremely important in achieving high crop efficiency,” and
`that “[m]any products are commercially available for these purposes, but the
`need continues for new compounds that are more effective, less costly, less
`toxic, environmentally safer or have different sites of action.” Id. at 1:11–
`23.
`
`The challenged claims of the ʼ202 Patent cover a genus of
`pyrrolidinone compounds (claims 1–7, 22–31), herbicidal compositions and
`mixtures comprising such compounds (claims 9–12, 21), and a method for
`controlling the growth of undesired vegetation comprising using such
`compounds (claim 13). Id. at 285:29–293:24. The ’202 Patent provides
`sixteen synthesis schemes for preparing the disclosed compounds (id. at
`33:9–41:49), as well as seven example syntheses (id. at 42:44–50:35). The
`ʼ202 Patent also discloses approximately 350 compounds that were prepared
`(Index Tables A–D) and tested for herbicidal effect on various crop and
`weed species (Tables A–H5). Id. at 173:49–54, 174:1–182:50, 182:57–
`285:27.
`Prosecution History
`C.
`We provide a brief overview of the prosecution history to supply
`context for the dispute between the parties. The ’202 Patent issued from
`U.S. Patent Application Serial No. 15/101,615 (“the ’615 application”), filed
`on December 2, 2014, as PCT/US2014/068073. Ex. 1001, codes (21), (22),
`(86). The ’202 Patent claims earliest priority to Provisional Application No.
`61/911,324, filed on December 3, 2013. Id. at code (60).
`
`3
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`The ’615 application was filed with eleven claims, of which claim 1
`was independent. Ex. 1002, 2230–2235. Pursuant to an election of species
`requirement, applicants elected Compound 351, which is a compound of
`Formula 1 wherein:
`Q1 is Ph(3-CF3) (e.g., phenyl substituted with 1 substituent selected
`from R7; R7 is C1-C8 haloalkyl (3-trifluoromethyl));
`Q2 is Ph(2-F) (e.g., phenyl substituted with 1 substituent selected from
`Rl0; Rl0 is halogen (2-fluoro));
`Yl and Y2 are both O;
`R2, R3, R4, R5 and R6 are each H; and
`Rl is CH3 (i.e. methyl).
`Id. at 1700, 1690. Compound 351 is depicted below:
`
`
`
`Id. at 1690.
`The Examiner subsequently rejected the claims as anticipated by
`Kotoku et al., US 2016/0137639 (equivalent of WO2014/065413). Id. at
`1033. Applicants initially sought to amend claim 1 to disclaim the
`compounds found in Kotoku by adding exclusionary provisos (id. at 1011),
`but the Examiner found that the proposed amendments added new matter
`(id. at 990).
`
`4
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`Applicants filed a Request for Continued Examination, and to
`overcome the new matter rejection and exclude the compounds disclosed in
`Kotoku, provided claims that, inter alia, removed the exclusionary provisos
`and amended the definition of R7. Id. at 959–63, 972.
`The Examiner issued a Notice of Allowability (id. at 56), and the
`’202 Patent thereafter issued in due course.
`D.
`Illustrative Claim
`Of the challenged claims, claims 1 and 31 are independent. Claim 1,
`reproduced below, is illustrative:
`1. A compound selected from Formula I, N-oxides and
`salts thereof:
`
`
`
`wherein
`Q1 is a phenyl ring optionally substituted with up to 5
`substituents independently selected from R7; or a 5- to 6-
`membered heterocyclic ring or an 8- to 10-membered
`heteroaromatic bicyclic ring system, each ring or ring
`system containing ring members selected from carbon atoms
`and 1 to 4 heteroatoms independently selected from up to 2
`O, up to 2 S and up to 4 N atoms, wherein up to 3 carbon
`ring members are independently selected from C(═O) and
`C(═S), and the sulfur atom ring members are independently
`selected from S(═O)u(═NR8)v, each ring or ring system
`optionally substituted with up to 5 substituents
`independently selected from R7 on carbon atom ring
`members and selected from R9 on nitrogen atom ring
`members;
`
`5
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`Q2 is a phenyl ring or a naphthalenyl ring system, each ring or
`ring system optionally substituted with up to 5 substituents
`independently selected from R10; or a 5- to 6-membered
`fully unsaturated heterocyclic ring or an 8- to 10-membered
`heteroaromatic bicyclic ring system, each ring or ring
`system containing ring members selected from carbon atoms
`and 1 to 4 heteroatoms independently selected from up to 2
`O, up to 2 S and up to 4 N atoms, wherein up to 3 carbon
`ring members are independently selected from C(═O) and
`C(═S), and the sulfur atom ring members are independently
`selected from S(═O)u(═NR8)v, each ring or ring system
`optionally substituted with up to 5 substituents
`independently selected from R10 on carbon atom ring
`members and selected from R11 on nitrogen atom ring
`members;
`Y1 and Y2 are each independently O, S or NR12;
`R1 is H, hydroxy, amino, C1-C6 alkyl, C1-C6 haloalkyl, C2-
`C6 alkenyl, C3-C6 alkynyl, C4-C8 cycloalkylalkyl, C2-
`C8 alkoxyalkyl, C2-C8 haloalkoxyalkyl, C2-C8 alkylthioalkyl,
`C2-C8 alkylsulfinylalkyl, C2-C8 alkylsulfonylalkyl, C2-
`C8 alkylcarbonyl, C2-C8 haloalkylcarbonyl, C4-
`C10 cycloalkylcarbonyl, C2-C8 alkoxycarbonyl, C2-
`C8 haloalkoxycarbonyl, C4-C10 cycloalkoxycarbonyl, C2-
`C8 alkylaminocarbonyl, C3-C10 dialkylaminocarbonyl, C4-
`C10 cycloalkylaminocarbonyl, C1-C6 alkoxy, C1-C6 alkylthio,
`C1-C6 haloalkylthio, C3-C8 cycloalkylthio, C1-
`C6 alkylsulfinyl, C1-C6 haloalkylsulfinyl, C3-
`C8 cycloalkylsulfinyl, C1-C6 alkylsulfonyl, C1-
`C6 haloalkylsulfonyl, C3-C8 cycloalkylsulfonyl, C1-
`C6 alkylaminosulfonyl, C2-C8 dialkylaminosulfonyl, C3-
`C10 trialkylsilyl or G1;
`R2 and R3 are each independently H, halogen or C1-C4 alkyl; or
`R2 and R3 are taken together with the carbon atom to which they
`are bonded to form a C3-C7 cycloalkyl ring;
`R4 and R5 are each independently H, halogen or C1-C4 alkyl;
`R6 is H, hydroxy, amino, C1-C6 alkyl, C1-C6 haloalkyl, C2-
`C6 alkenyl, C3-C6 alkynyl, C2-C8 alkoxyalkyl, C2-
`C8 haloalkoxyalkyl, C2-C8 alkylthioalkyl, C2-
`C8 alkylsulfinylalkyl, C2-C8 alkylsulfonylalkyl, C2-
`
`6
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`C8 alkylcarbonyl, C2-C8 haloalkylcarbonyl, C4-
`C10 cycloalkylcarbonyl, C2-C8 alkoxycarbonyl, C2-
`C8 haloalkoxycarbonyl, C4-C10 cycloalkoxycarbonyl, C2-
`C8 alkylaminocarbonyl, C3-C10 dialkylaminocarbonyl, C4-
`C10 cycloalkylaminocarbonyl, C1-C6 alkoxy, C1-C6 alkylthio,
`C1-C6 haloalkylthio, C3-C8 cycloalkylthio, C1-
`C6 alkylsulfinyl, C1-C6 haloalkylsulfinyl, C3-
`C8 cycloalkylsulfinyl, C1-C6 alkylsulfonyl, C1-
`C6 haloalkylsulfonyl, C3-C8 cycloalkylsulfonyl, C1-
`C6 alkylaminosulfonyl, C2-C8 dialkylaminosulfonyl, C3-
`C10 trialkylsilyl or G1;
`each R7 and R10 is independently halogen, cyano, nitro, C1-
`C4 alkyl, C1-C4 haloalkyl, C2-C4 alkenyl, C2-C4 haloalkenyl
`C2-C4 alkynyl, C2-C4 haloalkynyl, C1-C4 nitroalkyl, C2-
`C4 nitroalkenyl, C2-C4 alkoxyalkyl, C2-C4 haloalkoxyalkyl,
`C3-C4 cycloalkyl, C3-C4 halocycloalkyl, cyclopropylmethyl,
`methylcyclopropyl, C1-C4 alkoxy, C1-C4 haloalkoxy, C2-
`C4 alkenyloxy, C2-C4 haloalkenyloxy, C3-C4 alkynyloxy, C3-
`C4 haloalkynyloxy, C3-C4 cycloalkoxy, C1-C4 alkylthio, C1-
`C4 haloalkylthio, C1-C4 alkylsulfinyl, C1-
`C4 haloalkylsulfinyl, C1-C4 alkylsulfonyl, C1-
`C4 haloalkylsulfonyl, hydroxy, formyl, C2-C4 alkylcarbonyl,
`C2-C4 alkylcarbonyloxy, C1-C4 alkylsulfonyloxy, C1-
`C4 haloalkylsulfonyloxy, formylamino, C2-
`C4 alkylcarbonylamino, —SF5, —SCN, C3-C4 trialkylsilyl,
`trimethylsilylmethyl or trimethylsilylmethoxy;
`each R8 is independently H, cyano, C2-C3 alkylcarbonyl or C2-
`C3 haloalkylcarbonyl;
`each R9 and R11 is independently cyano, C1-C3 alkyl, C2-
`C3 alkenyl, C2-C3 alkynyl, C3-C6 cycloalkyl, C2-
`C3 alkoxyalkyl, C1-C3 alkoxy, C2-C3 alkylcarbonyl, C2-
`C3 alkoxycarbonyl, C2-C3 alkylaminoalkyl or C3-
`C4 dialkylaminoalkyl;
`each R12 is independently H, cyano, C1-C4 alkyl, C1-
`C4 haloalkyl, —(C═O)CH3 or —(C═O)CF3;
`each G1 is independently phenyl, phenylmethyl,
`pyridinylmethyl, phenylcarbonyl, phenoxy, phenylethynyl,
`phenylsulfonyl or a 5- or 6-membered heteroaromatic ring,
`
`7
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`each optionally substituted on ring members with up to 5
`substituents independently selected from R13;
`each R13 is independently halogen, cyano, hydroxy, amino,
`nitro, —CHO, —C(═O)OH, —C(═O)NH2, —SO2NH2, C1-
`C6 alkyl, C1-C6 haloalkyl, C2-C6 alkenyl, C2-C6 alkynyl, C2-
`C8 alkylcarbonyl, C2-C8 haloalkylcarbonyl, C2-
`C8 alkoxycarbonyl, C4-C10 cycloalkoxycarbonyl, C5-
`C12 cycloalkylalkoxycarbonyl, C2-C8 alkylaminocarbonyl,
`C3-C10 dialkylaminocarbonyl, C1-C6 alkoxy, C1-
`C6 haloalkoxy, C2-C8 alkylcarbonyloxy, C1-C6 alkylthio, C1-
`C6 haloalkylthio, C1-C6 alkylsulfinyl, C1-
`C6 haloalkylsulfinyl, C1-C6 alkylsulfonyl, C1-
`C6 haloalkylsulfonyl, C1-C6 alkylaminosulfonyl, C2-
`C8 dialkylaminosulfonyl, C3-C10 trialkylsilyl, C1-
`C6 alkylamino, C2-C8 dialkylamino, C2-
`C8 alkylcarbonylamino, C1-C6 alkylsulfonylamino, phenyl,
`pyridinyl or thienyl; and
`each u and v are independently 0, 1 or 2 in each instance of
`S(═O)u(═NR8)v, provided that the sum of u and v is 0, 1 or
`2;
`provided that
`(a) the compound of Formula 1 is other than N-1H-
`benzotriazol-1-yl-2-oxo-4-phenyl-3-
`pyrrolidinecarboxamide;
`(b) when Q1 is a 3-furanyl or 3-pyridinyl ring, then said ring is
`substituted with at least one substituent selected from R7;
`(c) when Q1 is unsubstituted phenyl, and Q2 is a phenyl or
`pyridyl ring, then said Q2 ring is substituted with R10 other
`than optionally substituted phenoxy at a 2-position (relative
`to the bond of the Q2 ring to the remainder of Formula 1),
`and unsubstituted at the 5- and 6-positions (with respect to
`the 2-position), and R5 is H or halogen;
`(d) when Q1 is a phenyl ring and said ring is substituted with
`R7 at both ortho positions (relative to the bond to the
`remainder of Formula 1), then said ring is also
`independently substituted with R7 on at least one additional
`position;
`(e) Q2 is other than optionally substituted 1H-pyrazol-5-yl; and
`
`8
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`(f) when Q2 is a 1H-pyrazol-3-yl ring, said ring is substituted at
`the 1-position with R11.
`Ex. 1001, 285:29–288:13.
`Dependent claims 2–7 and 22–30 narrow the choices for various
`substituents on the compounds recited in claim 1. Id. at 288:14–48, 291:1–
`292:44. Independent claim 31 recites the same core compound as claim 1,
`but as compared to claim 1, recites fewer options for several of the
`substituents. Id. at 292:45–293:24.
`Claims 9–12 and 21 cover an “herbicidal composition,” an “herbicidal
`mixture,” or a “mixture” that includes a compound of claim 1. Id. at
`288:61–289:30, 290:63–67. Claim 13 covers controlling vegetation growth
`using an “herbicidally effective amount” of a compound of claim 1. Id. at
`289:31–34.
`E.
`The Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–7, 9–13, and 21–31 are unpatentable
`on the following grounds:
`
`
`
`9
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`Claim(s)
`35 U.S.C. §
`Challenged
`1–3, 9–13, 21–30 § 112(a)1
`9–13
`§ 112(a)
`1–7, 22–31
`§ 102(a)(1)
`1–7, 22–31
`§ 103
`
`Reference(s)/Basis
`Enablement
`Written Description
`Olsson2
`Olsson
`
`Pet. 5. Petitioner relies upon the Declaration of Dr. David Allen Hunt, Ph.D.
`(Ex. 1003) to support its contentions.
`II. ANALYSIS
`Post-Grant Review Eligibility
`A.
`The post-grant review provisions apply only to patents that contain a
`claim with an effective filing date on or after March 16, 2013. See AIA,
`Pub. L. No. 112-29, 125 Stat. 284 (2011), §§ 3(n)(1), 6(f)(2)(A).
`The ’202 Patent issued from an application filed on December 2,
`2014, which is after March 16, 2013. Ex. 1001, code (22). The ’202 Patent
`claims earliest priority to a provisional application filed on December 3,
`2013, which is also after March 16, 2013. Id. at code (60). Accordingly, the
`’202 Patent is eligible for post-grant review.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103, and 112. Because the
`challenged claims have an effective filing date after the effective date of the
`applicable AIA amendments, we refer to the AIA versions of 35 U.S.C.
`§§ 102, 103, and 112 throughout this Decision.
`2 Olsson et al., U.S. Patent Pub. 2007/0123508 A1, published May 31, 2007
`(“Olsson,” Ex. 1004). During prosecution, applicants filed an Invention
`Disclosure Statement listing Olsson, among other references. Ex. 1002,
`1704.
`
`10
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`Level of Ordinary Skill in the Art
`B.
`We consider the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art (“POSA”) at the time of
`the invention. Petitioner contends that such a person would have had “at
`least a Bachelor’s degree in biochemistry or chemistry with several years’
`experience in agrochemistry, or alternatively, an advanced degree (Masters
`or Ph.D.) in biochemistry or organic chemistry with emphasis in these same
`areas,” and “may also work in collaboration with other scientists and/or
`clinicians who have experience in weed science, plant pathology, or related
`disciplines.” Pet. 13 (citing Ex. 1003 ¶ 66). Patent Owner states that for
`purposes of its preliminary response, it does not contest Petitioner’s
`definition. Prelim. Resp. 20.
`Because Petitioner’s proposed definition is unopposed at this stage
`and is not inconsistent with the cited prior art, we adopt it for the purposes of
`this Decision.
`C.
`Claim Construction
`We interpret a claim “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).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe
`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.
`Petitioner asserts that claims 1 and 31 include limitations in a “when”
`clause, which it contends “only limits the claim’s scope to the extent the
`cited condition occurs, and should be read as ‘if.’” Pet. 13–14. Petitioner
`states that the ’202 Patent defines “several terms related to chemical
`
`11
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`structures in 5:36–9:9, as well as terms related to herbicidal mixtures at
`28:61–33:8,” and that it has adopted those definitions. Id. at 14. Petitioner
`asserts that the “remaining terms are to be construed in accordance with their
`ordinary and customary meaning.” Id.
`Patent Owner agrees with Petitioner that “the ‘when’ clauses
`appearing in claims 1 and 31 only limit the claim scope when the cited
`condition occurs.” Prelim. Resp. 3. Patent Owner additionally states that
`“all claim terms should be given their plain and ordinary meaning, in light of
`the definitions set forth in the ʼ202 Patent specification.” Id.
`At this stage of the proceeding, for the purpose of deciding whether to
`institute review, we agree with the parties that the “when” clauses appearing
`in claims 1 and 31 only limit the claim scope when the cited conditions
`occur, and that all remaining claim terms should be given their plain and
`ordinary meaning in light of the definitions set forth in the Specification.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`Any final written decision entered in this case may include final claim
`constructions that differ from the preliminary understanding of the claims set
`forth above, or from any discussion of claim scope provided in our analysis
`below. Any final claim constructions will be based on the full trial record,
`where each party has an opportunity to be heard.
`
`12
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`Real Parties in Interest
`D.
`Petitioner identifies itself as the real party in interest (“RPI”). Pet. 3.
`Petitioner also states: “While not a real-party-in-interest, Syngenta AG
`owns 100% of Syngenta Crop Protection AG.” Id.
`Patent Owner argues that the Petition “fails to name all real parties in
`interest,” specifically, parent companies Syngenta AG, ChemChina, and
`CNAC. Prelim. Resp. 2, 61. Patent Owner asserts that Syngenta AG “owns
`100% of the capital and voting rights” of Petitioner, and this fact alone
`“establishes the requisite control over [Petitioner] to qualify Syngenta AG as
`a real party in interest.” Id. at 61. Patent Owner further asserts that
`Syngenta AG is a wholly-owned subsidiary of CNAC, which in turn is a
`wholly-owned subsidiary of ChemChina. Id. Patent Owner additionally
`asserts that (1) the chairperson of ChemChina is also the chairperson of
`Syngenta Group (a group Patent Owner alleges encompasses Syngenta AG),
`and (2) the CEO of Syngenta Group is also the chairperson of Syngenta AG.
`Id. at 61–62. Patent Owner argues that “[t]he corporate structure of which
`Petitioner is a part suggests that Syngenta AG, CNAC, and ChemChina had
`a pre-existing relationship with Petitioner and the opportunity to control
`Petitioner.” Id. at 62.
`Under 35 U.S.C. § 322(a)(2), a petition may be considered only if it
`identifies all RPIs. We generally accept a petitioner’s initial identification of
`RPI(s), unless the patent owner presents some evidence to support its
`argument that an unnamed party should also be included. See Worlds Inc. v.
`Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018) (explaining that “an IPR
`petitioner’s initial identification of the real parties in interest should be
`accepted unless and until disputed by a patent owner,” and that “a patent
`
`13
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`owner must produce some evidence to support its argument that a particular
`third party should be named a real party in interest”). Because Patent Owner
`here “produce[d] some evidence that tends to show that a particular third
`party should be named a real party in interest,” Worlds, 903 F.3d at 1244
`(emphasis in original), we proceed to address the merits of the RPI issue.
`See Prelim. Resp. 59−62 (citing Exs. 2001−2004).
`“[A]t a general level, the ‘real party-in-interest’ is the party that
`desires review of the patent.” Patent Trial and Appeal Board Consolidated
`Trial Practice Guide 73 (Nov. 2019), https://www.uspto.gov/
`TrialPracticeGuideConsolidated (“TPG”) 14. “Whether a party who is not a
`named participant in a given proceeding nonetheless constitutes a ‘real
`party-in-interest’ . . . is a highly fact-dependent question,” and is assessed
`“on a case-by-case basis.” TPG 13 (citing Taylor v. Sturgell, 553 U.S. 880,
`893–95 (2008)). “Determining whether a non-party is a ‘real party in
`interest’ demands a flexible approach that takes into account both equitable
`and practical considerations, with an eye toward determining whether the
`non-party is a clear beneficiary that has a preexisting, established
`relationship with the petitioner.” Applications in Internet Time, LLC v. RPX
`Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018). Not just any relationship will
`be sufficient. Instead, Congress intended the term “real party in interest” to
`have its “common-law meaning,” id., and “the common law seeks to
`ascertain who, from a practical and equitable standpoint, will benefit from
`the redress that the chosen tribunal might provide.” Id. at 1349 (citation
`omitted). Relevant factors for determining whether a non-party is an RPI
`include the non-party’s relationship with the petitioner, the non-party’s
`
`14
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`relationship to the petition, and the nature of the entity filing the petition. Id.
`at 1351.
`As discussed above, Patent Owner alleges that the relationship
`between Petitioner and each of Syngenta AG, CNAC, and ChemChina is
`that of subsidiary and parent. The traditional rule is that mere status as a
`corporate parent is insufficient to render an entity an RPI (or even a privy).
`See Taylor, 553 U.S. at 893–95 (summarizing the common-law rule as
`recognizing six types of relationships that constitute privity, but not
`including a parent-child corporate relationship among them). As the Federal
`Circuit has held in the context of privity, “control of a party . . . through
`stock ownership or corporate officership is not enough to create privity,
`absent a showing that the corporate form has been ignored.” Gillig v. Nike,
`Inc., 602 F.3d 1354, 1362 (Fed. Cir. 2010) (emphasis in original). We see
`no reason why this rationale does not equally apply to the determination of
`whether a relationship is sufficient to give rise to an RPI.
`Although it could be argued that the parent company of a petitioner
`always “has a preexisting, established relationship with the petitioner” and is
`likely to benefit when its subsidiary benefits, the preservation of the
`common-law meaning of RPI in Applications suggests that the mere
`establishment of parent-company status is insufficient to render a non-party
`an RPI. Applications, 897 F.3d at 1351. Additionally, on this record, we see
`no evidence relating to the relationship of Syngenta AG, CNAC, or
`ChemChina to the Petition. Further, on this record, the mere overlap of
`personnel between (1) parent entities ChemChina and Syngenta Group, and
`(2) parent entities Syngenta Group and Syngenta AG, does not indicate a
`sufficient blurring of corporate separation such that the parent corporations
`
`15
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`could have controlled the filing and participation of the Petition. Cf.
`Galderma S.A. v. Allergan Industrie, SAS, IPR2014-01422, Paper 14 at 12–
`13 (PTAB Mar. 5, 2015) (parent company determined to be an RPI where
`the same person was President and CEO of both companies and there was a
`“pattern of control” by the parent over the subsidiary).
`The present record provides insufficient basis to conclude that
`Syngenta AG, CNAC, and/or ChemChina are RPIs to this proceeding. We
`therefore decline to deny institution for Petitioner’s alleged failure to
`identify Syngenta AG, CNAC, or ChemChina as RPIs.3 Nevertheless, given
`that Patent Owner has raised a disputed issue of fact, we concurrently enter
`an order addressing this issue. See Conduct of Proceeding, entered
`concurrently herewith.
`E.
`The Asserted Grounds of Unpatentability
`We address in turn the following grounds of unpatentability advanced
`in the Petition: (1) lack of enablement of claims 1–3, 9–13, and 21–30; (2)
`lack of written description support for claims 9–13; (3) anticipation of
`claims 1–7 and 22–31 by Olsson; and (4) obviousness of claims 1–7 and 22–
`31 over Olsson. Pet. 5.
`
`
`3 We note that even if Petitioner failed to identify certain RPIs, denial of
`institution is not the appropriate remedy. Cf. Lumentum Holdings, Inc. v.
`Capella Photonics, Inc., IPR2015-00739, Paper 38, 5 (PTAB Mar. 4, 2016)
`(precedential) (holding that “a lapse in compliance with” the requirements of
`35 U.S.C. § 312(a) “does not deprive the Board of jurisdiction over the
`proceeding, or preclude the Board from permitting such lapse to be
`rectified”); Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11,
`3 (PTAB Feb. 14, 2019) (precedential) (granting a petitioner’s motion to
`amend its mandatory notices to identify additional RPI).
`
`16
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`
`Enablement
`1.
`A patent’s specification must describe the invention and “the manner
`and process of making and using it, in such full, clear, concise, and exact
`terms as to enable any person skilled in the art to which it pertains, or with
`which it is most nearly connected, to make and use the same.” 35 U.S.C.
`§ 112(a) (2012). The enablement requirement asks whether “the
`specification teach[es] those in the art to make and use the invention without
`undue experimentation.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
`In analyzing undue experimentation, we consider factors such as: “(1) the
`quantity of experimentation necessary, (2) the amount of direction or
`guidance presented, (3) the presence or absence of working examples, (4)
`the nature of the invention, (5) the state of the prior art, (6) the relative skill
`of those in the art, (7) the predictability or unpredictability of the art, and (8)
`the breadth of the claims.” Id.
`Petitioner asserts that the Specification fails to enable both (1) use of
`the full scope of compounds of claims 1–3, 9–13 and 21–30 as herbicides;
`and (2) how to make the full scope of the compounds encompassed by
`claims 1– 3, 9–13, 21, 23, and 27–30. Pet. 15, 32. We address each
`argument in turn.
`
`a) Whether the ’202 Patent Enables a Skilled Artisan
`to Use the Full Scope of Claims 1–3, 9–13, and
`21–30
`(1)
`The Parties’ Contentions
`Petitioner asserts that claim 1 “covers over a billion[] compounds,”
`Pet. 18 (citing Ex. 1003 ¶ 139), and it would require undue experimentation
`to determine which of these compounds would be an effective herbicide. Id.
`at 18–19 (citing Ex. 1003 ¶¶ 140–155; Exs. 1007, 1011–1016). Petitioner
`
`17
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`contends that “[t]he biological data provided . . . fails to enumerate the
`majority of the substituents available at each position” of the claimed genus,
`and “indicates that substitutions, particularly at the Q1, Q2, R1, and R6
`positions, can strongly impact herbicidal activity and even eliminate it.” Id.
`at 16 (citing Ex. 1003 ¶¶ 135, 136, 144, 151, 155–172). Petitioner asserts
`that “several of the compounds tested failed to exhibit any herbicidal activity
`at the high screening levels (e.g., 1000 and 500 g ai/ha), which would
`indicate that a POSA would not be able to use the claimed compounds as an
`herbicide without undue experimentation, if at all.” Id. at 16–17 (citing
`Ex. 1003 ¶ 137); see also id. at 22–30 (citing, e.g., Ex. 1003 ¶¶ 153–172).
`Petitioner asserts that small substitutions can have dramatic effects on
`herbicidal activity by altering properties such as lipophilicity, metabolism,
`plant uptake, and translocation, yet the ’202 Patent fails to teach a structure-
`activity relationship, mode of action, or what enzymes or binding sites (if
`any) the claimed compounds affect. Id. at 17, 19–20. Petitioner further
`asserts that the ’202 Patent exemplifies only 350 compounds, many of which
`lack variation at positions including Q1, Q2, Y2, R4, and Y1. Id. at 19–20.
`Petitioner asserts that “[a] POSA reading the ’202 Patent is left to guess how
`changing substituents outside of the limited active examples provided will
`impact herbicidal efficacy, and would not be able to determine, without
`undue experimentation, which compounds of claim 1 will be effective.” Id.
`at 21 (citing Ex. 1003 ¶¶ 150–151).
`Patent Owner argues that Petitioner has failed to properly analyze the
`Wands factors, and that this alone “should lead to non-institution.” Prelim.
`Resp. 23. Patent Owner further argues that an analysis of the Wands factors
`shows that the claims are enabled. Id. at 6. Patent Owner asserts that claims
`
`18
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`1–3 and 21–30 “are compound claims and do not specifically recite use as an
`herbicide.” Id. at 8–9.
`Patent Owner argues that the quantity of experimentation needed is
`not viewed in the abstract, but as a function of the pertinent art, and in the
`agrochemical field—which Patent Owner characterizes as “well-developed”
`and “mature and sophisticated”—a high level of experimentation is
`expected, given the many different species of plants and potential times of
`herbicide application. Id. at 19, 6–7 (citing Ex. 1001, 155:17–156:13;
`Ex. 1003 ¶ 38; Pet. 11–12); see also id. at 21 (arguing that the agrochemical
`field is considered “unpredictable,” but there is “no requirement to know in
`advance precisely all of the compounds that will show herbicidal activity
`against the desired vegetation”). Patent Owner also characterizes the level
`of skill in the art as “high.” Id. at 20; see also supra Section II.B.
`Patent Owner argues that the ’202 Patent teaches and uses standard
`organic syntheses to make the compounds and standard assays for
`determining herbicidal activity. Prelim. Resp. 8, 11–17. Patent Owner also
`argues that the ’202 Patent provides “numerous working examples” of how
`to synthesize the compounds and formulate herbicides, and provides
`biological data showing herbicidal efficacy. Id. at 18. Patent Owner asserts
`that the law permits even a considerable amount of experimentation, and that
`Petitioner has not argued that the required experimentation here is not
`routine. Id. at 23–24. Patent Owner also asserts that “determination of
`whether an embodiment is operative is well within the routine
`experimentation expected in the field.” Id. at 32–33. Patent Owner argues
`that Petitioner seeks to impose an “overly high ‘predictability’ standard” that
`
`19
`
`

`

`PGR2020-00028
`Patent 10,294,202 B2
`
`would require a skilled artisan to be able to predict a priori whether a
`specific structure will have herbicidal activity. Id. at 30.
`(2) Analysis
`We begin by addressing Patent Owner’s assertion that claims 1–3 and
`21–30 “are compound claims and do not specifically recite use as an
`herbicide.” Prelim. Resp. 8–9. To the extent Patent Owner is suggesting
`that the ’202 Patent need not enable a person of ordinary skill in the art to
`use these claimed compounds because the claims themselves do not recite a
`specific use, on this record, we disagree. “The how to use prong of section
`112 incorporates as a matter of law the requirement of 35 U.S.C. § 101 that
`the specification disclose as a matter of fact a practical utility for the
`invention.” In re Ziegler, 992 F.2d 1197, 1200–01 (Fed. Cir. 1993); see also
`In re Fouche, 439 F.2d 1237, 1243 (CCPA 1971) (“[I]f [the claimed]
`compositions are in fact useless, appellant’s specification cannot have taught
`how to use them.”). In other word