iTakeaway: A petitioner relying upon a single prior art reference as teaching all the limitations of an independent claim based on a particular claim construction, only adding secondary references for the limitations of the dependent claims, assumes the risk that institution will be denied for all claims if any limitation is found lacking in the alleged anticipatory reference based upon an alternative claim construction.
In its Decision, the Board denied institution of inter partes review of claims 1-11 of the ’143 Patent because Petitioner did not establish a reasonable likelihood of prevailing on any challenged claim. The ’143 Patent describes plant breeding methods for “sampling transgenic seeds to test for the presence or absence of a transgene or the zygosity of a transgene (number of transgenes) in a population of seeds in a high throughput manner.”
The Board first addressed claim construction, and determined that only “high-throughput method for analyzing individual seeds in a population of seeds” needs to be construed. First, the Board determined that although the limitation is in the preamble, it is limiting because the utility of the process cannot be understood without construing the preamble language of the claim as limiting. Then, the Board interpreted “high-throughput method.” Petitioner argued that the phrase “high-throughput method for analyzing individual seeds in a population of seeds” to mean “a method that enables analysis of a larger number of seeds in a population of seeds per unit time than does a completely manual method.” Patent Owner argued that the phrase “high-throughput method” is “a method that permits one to analyze a high volume of individual seeds quickly using automated technology.” The Board determined that although there is no special definition or other language in the specification that explicitly informs as to the meaning of “high-throughput,” the Board was persuaded by Patent Owner’s evidence and reasoning that the ordinary meaning typically implies automation. Accordingly, the Board based its definition on the definition in the Oxford Dictionary of Biochemistry, and then added that it required automation based on the description in the specification.
The Board then turned to the anticipation ground of unpatentability asserted by Petitioner. Petitioner alleged that the reference disclosed a high-throughput method, because the reference disclosed using 96-well sample trays for extracting DNA from many samples at a time. However, the Board determined the reference failed to disclose high-throughput method utilizing automation. Thus, the Board determined that there is not a reasonable likelihood that the anticipation ground of unpatentability would be successful. Further, the Board also determined that there was no reasonable likelihood of success on the obviousness grounds of unpatentability asserted by Petitioner for the same reasons. Accordingly, the Board did not institute trial.
E.I. Du Pont De Nemours and Co. v. Monsanto Technology LLC, IPR2014-00333
Paper 14: Decision Denying Institution of Inter Partes Review
Dated: July 11, 2014
Patent 7,832,143 B2
Before: Lora M. Green, Sheridan K. Snedden, and Susan L. C. Mitchell
Written by: Snedden
Related Proceeding: Monsanto Company v. Pioneer Hi-Bred International, Inc., Case No. 4:12-cv-1090-CEJ (E.D. Missouri); IPR2014-00331; IPR2014-00332;IPR2014-00334; and IPR2014-00335
