From:
`To:
`Cc:
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`Subject:
`Date:
`Attachments:
`
`Scott.McKeown@WolfGreenfield.com
`Director_PTABDecision_Review
`OJohnstone-PTAB@WolfGreenfield.com; hyma@fr.com; Jean Ge; TFoley-PTAB@WolfGreenfield.com; kane@fr.com;
`SMcKeown-PTAB@WolfGreenfield.com
`RE: PGR2024-00019
`Thursday, October 24, 2024 8:45:32 PM
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`Director Vidal,
`
`Petitioner provides this notification email in accordance with the Revised Interim Director Review
`Process, and hereby respectfully request Director Review of the denial of institution in the above
`captioned PGR (concurrently uploaded to P-TACTS). The denial presents an issue of first
`impression that impacts important issues of law and policy relative to plant utility patents.
`
`Petitioner presented prior art teachings in its PGR petition that rendered obvious the plant variety
`claimed in U.S. Patent 11,659,803. Rather than consider that art by applying the same
`patentability analysis used in initial examination (concerning the phenotype of the variety as
`disclosed in the ‘803 Patent’s specification), the Board found that it was excused because the
`Petitioner’s section 103 analysis had not sequenced the genotype of the seed deposit PO had
`made to satisfy section 112 and which PO itself acknowledges to be a non-limiting “exemplary
`embodiment.” That is, the Board created a new patentability test only applied post-grant in which
`seed deposit genotype analysis is required for the first time. The Board held that “Petitioner’s lack
`of evidence in the prior art regarding 1PFLQ21’s genotype” excused it from further analysis,
`reasoning that “[b]y depositing the seeds” PO had made such “genetic sequence…available.” To
`overcome this new presumption potential challengers must access seed deposits and perform
`seed analysis that would wrongly subject potential challengers to the risk of patent infringement
`merely in seeking to overcome the Board’s heightened new standard. Corteva Agriscience LLC v.
`Inari Agric., Inc., No. CV 23-1059, 2024 WL 3653040, at *11 (D. Del. Aug. 2, 2024)
`
`The agency has no power to legislate a new post-grant patentability analysis at all let alone one
`unique to a technology. Left to stand, this decision improperly adds a new presumption of
`patentability that is unique to plant utility patents at a time when both the agency and USDA have
`recognized significant abuses in the plant patent space. Requiring the public to analyze seed
`deposits as a threshold prerequisite for a viable patentability challenge “unnecessarily reduce[s]
`competition in seed…markets beyond that reasonably contemplated by the Patent Act”—
`notwithstanding Executive Order 14036’s mandate that the PTO and USDA collaborate to ensure
`that the patent system does not unnecessarily reduce such competition. 86 Fed. Reg. 36987,
`36993 (July 14, 2021). This decision creates yet another obstacle for American farmers. Indeed,
`rather than serving as an alternative to litigation, this decision forces litigation liability onto any
`member of the public seeking to challenge such patents before the PTAB.
`
`Respectfully Submitted.
`
`Scott McKeown
`Lead Counsel
`Inari Agriculture
`
`PGR2024-00019
`Ex. 3100
`
`

`

`Scott McKeown (Mik-Q-En)
`Shareholder
`Scott.McKeown@wolfgreenfield.com
`202.389.6025
`
`Wolf, Greenfield & Sacks, P.C.
`BOSTON | NEW YORK | WASHINGTON DC
`
`wolfgreenfield.com
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