- Syngenta Crop Protection AG v. FMC CorporationSome claims unpatentablePTAB · Aug 31, 2021 · PGR2020-00028 · APJ Cynthia M Hardman · PGR · Final written decision
Claims 1–3, 9–13, and 21–30 are unpatentable for lack of enablement; claims 9–13 also lack written description. Petitioner did not prove anticipation or obviousness of claims 1–7 and 22–31.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of skill in the art, we consider factors including the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Because Petitioner’s proposed definition is consistent with the prior art of record and the sophistication of the technology demonstrated by the record, we apply it here.5” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the complete record developed at trial, we determine that to resolve the disputes herein, we do not need to expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for disputed terms, and only as necessary to resolve the controversy).” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find that Dr. Dayan’s testimony on these points lacks sufficient supporting analysis. In opining that the tested substituents are representative of the steric and electrostatic properties across the claimed substituents, Dr. Dayan merely compares the properties of the tested substituents to each other. See, e.g., id. ¶¶ 52–56. He does not expressly compare them to the properties of the many remaining, untested substituents within the scope of the claims. See id.; see also Reply 14 (“At best, [Dr.] Dayan testified that the positive activity . . . at each substituent” suggests that the position is involved in herbicidal activity, “not that the tested compounds were sufficient to provide any reasonable expectation of success as to the billions of structurally diverse compounds covered” by the claims.). And although Dr. Dayan acknowledges that several tested compounds showed no herbicidal activity, he does not expressly explain how he took these compounds into account in nevertheless concluding that an ordinarily skilled artisan would expect at least some activity across all claimed substituents. See, e.g., Ex. 2011 ¶¶ 54–56 (noting exceptions to herbicidal activity). As one example, Dr. Dayan acknowledges the lack of activity shown in the data for substituents larger than hydrogen at the R6 position, but does not explain the impact of that data on the remaining claimed substituents. See id. ¶ 54 (Dr. Dayan noting that activity is “not as favored by larger alkyl groups” at R6, but nevertheless concluding that “one would expect at least some herbicidal activity” across all claimed R6 substituents). In contrast, Dr. Hunt compares the size and properties of the R6 substituents that showed no activity with the size and properties of other claimed but untested R6 substituents. Ex. 1003 ¶¶ 163, 166–68; Ex. 1029 ¶¶ 37, 38. This comparison indicates that the majority of R6 substituents are larger than the tested substituents, such that the vast majority of the claimed compounds (i.e., those with compounds having R6 substituents larger than those tested), could have no herbicidal activity. Ex. 1003 ¶ 167; Ex. 1029 ¶¶ 12, 37, 38. Thus, we find that the data in the Specification regarding at least position R6 gives a person of ordinary skill in the art reason to doubt that substantially all compounds within the full scope of claim 1 of the ’202 patent would exhibit herbicidal activity. Ex. 1003 ¶ 163; Ex. 1029 ¶¶ 11, 12, 38; In re Surrey, 370 F.2d 349, 355 (CCPA 1966) (“[W]here the applicant seeks to obtain a monopoly in exchange for his disclosure of a group of compounds there should be a disclosure which gives a reasonable assurance that all, or substantially all of them are useful.”).” slip op. at 29
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable
“We find that the need for iterative QSAR modeling, together with the sheer number of candidate compositions that must be synthesized (each of which would take at least a week to make) for both the modeling and herbicide testing, weighs against enablement, especially in light of the limited guidance in the Specification and the general unpredictability in the art. 3. Conclusion In sum, it is undisputed that claim 1 covers at least a billion compounds. The art is unpredictable, and the Specification indicates that not all of the compounds falling within claim 1 are effective herbicides. See, e.g., Pet. 22 (listing compounds that showed no herbicidal activity). Although the level of ordinary skill in the art is relatively high and the field is mature, Petitioner establishes by a preponderance of the evidence that the ’202 patent does not provide sufficient meaningful guidance or working examples across the full scope of claim 1 to allow a person of ordinary skill in the art to determine which other compounds across the full scope of the claim have herbicidal activity without undue experimentation.” slip op. at 45
Patent outcomesUS 10,294,202 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 10,294,202 - Coxcom, LLC v. Joao Control & Monitoring Systems, LLCSome claims unpatentablePTAB · Feb 15, 2017 · IPR2015-01762 · APJ Beth Z Shaw · IPR · Final written decision
Claims 1, 3–5, 8, 13–17, 20, and 84–86 are unpatentable as obvious over Koether and Crater; claim 44 was not shown unpatentable on that ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“owner must provide sufficient rebuttal evidence to bring reasonably into question the accuracy of Petitioner’s identification of RPIs.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012). Whether a non-party is a real party in interest is a “highly fact-dependent question” that is addressed on a “case-by-case” basis. See 77 Fed. Reg. 48,759. “A common focus of the inquiry is . . . whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Id. The concept of control means that “the non-party ‘had the opportunity to present proofs and argument’ . . . or ‘to direct or control the content’ of the filing.” JP Morgan Chase & Co., et al. v. Maxim Integrated Prods., Inc., Case CBM2014-00179, slip op. at 10 (PTAB Feb. 20, 2015) (Paper 11) (“JP Morgan”). “‘The evidence as a whole must show that the non-party possessed effective control over a party’s conduct of the [proceeding] as measured from a practical, as opposed to a purely theoretical standpoint.’” Id. (quoting Gonzalez v. Banco Cent Corp., 27 F.3d 751, 759 (1st Cir. 1994)).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1001, Abst. It describes the relevant problems encountered in the art as those involved in the control, monitoring, or security of vehicles or premises, in a network environment. Id. at 1:20–52; 3:12–21. The ’363 patent is not directed to specific issues associated with electrical circuits or electrical connections between devices. The Specification identifies no specific problem that stems from the apparatus being a particular type of electrical device. From this evidence, we conclude that a person of ordinary skill in the art with respect to the ’363 patent would be skilled in the field of networked systems. For the foregoing reasons, we are not persuaded that the level of ordinary skill in the art requires specific coursework or education in the form of a degree in electrical engineering. Instead, we are persuaded by Petitioner’s statement of the level of ordinary skill in the art, and our finding of the level of ordinary skill is similar to that proposed by Petitioner, but with a slight modification, i.e., that a basic level of experience is required, at the level of at least two years of experience in networked systems. We find that the level of ordinary skill in the art is that of one having at least two years of working experience with networked systems. A more advanced degree would be paired with a shorter period of working experience.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner has not articulated a persuasive reason for giving Mr. Bennett’s testimony little or no weight. Moreover, as discussed above, we are not persuaded that a person of ordinary skill in the art of the ’363 patent would be required to have a specific degree or coursework in electrical engineering. We are, thus, not persuaded that Mr. Bennett’s answers, during deposition, to questions about his background are wrong or that the entirety of his testimony should be given little or no weight based on this testimony.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“For purposes of the Decision to Institute, we construed the terms “remote,” “premises,” and “located at.” Dec. 8–9. We reviewed and adopted Patent Owner’s explicit definitions for these terms, which Patent Owner provided in the prosecution of the application that issued as the ’363 patent. Dec. 8 (citing Ex. 2002). Based on our review of the full record, we discern no reason to modify or further discuss in this Final Written Decision our constructions for these claim terms. For convenience, these claim constructions are reproduced in the table below. Term Citations Construction Remote Ex. 2002, “‘Remote’ means ‘separate and apart from, or 10–11 external from, or at a distance from or distant from, or not located in.’” Premises Ex. 2002, 8– “‘Premises’ means ‘a building or a structure 9 and the grounds or parcel of land associated with the building or the structure, or a building or structure or a portion, room, or office, of or in the building or structure, or a home, mobile home, mobile building, mobile structure, residence, residential building, office, commercial building, commercial office, structure, equipment, facility, machine, rig, assembly line, or edifice.’” Located at Ex. 2002, 8 “‘Located at’ means ‘situated at, or situated in, or situated on.’”” slip op. at 12
Patent outcomesUS 7,397,363 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 7,397,363
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.