iTakeaway: A claim construction based on the device accused of infringement will not be accepted by the Board.
In its Decision, the Board denied institution of inter partes review of claims 1-26 of the ’672 Patent because Petitioner did not establish a reasonable likelihood of prevailing on any challenged claim. The ’672 Patent describes “a method for analyzing a population of haploid seeds, where tissue samples are removed from a plurality of these seeds using an automated seed sampler system, while germination viability of these seeds is preserved, and analyzing the samples for characteristics indicative of genetic or chemical traits.”
The Board first addressed claim construction. Petitioner proposed construction of six terms, and Patent Owner proposed construction of one term. The Board determined that only the term “seed sampler system” needs to be construed for purposes of determining whether to institute the inter partes review. Petitioner proposed that “automated” encompasses “partially machine driven and/or computer controlled to reduce the amount of work done by humans.” Petitioner based its proposed construction on its product that Patent Owner has accused of infringement. Patent Owner proposed that “automated seed sampler system” means “a system that, substantially without the need for human interaction, intervention, or control, is capable of extracting samples from seeds and conveying the seeds and seeds samples to corresponding locations.” Patent Owner based its proposed constructions on potions of the intrinsic evidence, including the written description of Patent Application Serial No. 11/213,435, which is incorporated by reference in the ’672 Patent. The Board agreed with Patent Owner, and stated that “it is well settled that claims may not be construed by reference to the accused device.”
The Board then turned to the obviousness grounds of unpatentability asserted by Petitioner. Patent Owner argued that the combination of references asserted by Petitioner failed to identify an “automated seed sampler system.” The Board agreed with Patent Owner that Petitioner failed to provide a combination of references that identified an “automated seed sampler system” as it was construed. Thus, the Board determined that there is not a reasonable likelihood that the obviousness grounds of unpatentability would be successful. Accordingly, the Board did not institute trial.
E.I. Du Pont De Nemours and Co. v. Monsanto Technology LLC, IPR2014-00331
Paper 14: Decision Denying Institution of Inter Partes Review
Dated: July 21, 2014
Patent 8,312,672 B2
Before: Lora M. Green, Sheridan K. Snedden, and Susan L. C. Mitchell
Written by: Mitchell
Related Proceeding: Monsanto Company v. Pioneer Hi-Bred International, Inc., Case No. 4:12-cv-1090-CEJ (E.D. Missouri); IPR2014-00332; IPR2014-00333;IPR2014-00334; and IPR2014-00335
