By Shane Padilla, Owen Carpenter, and Matt Johnson –
On September 24, 2024, the PTAB denied institution of a post-grant review proceeding initiated by Inari Agriculture, Inc. (Petitioner) against Pioneer Hi-Bred International, Inc. (Patent Owner). The patent at issue was U.S. Patent No. 11,659,803 (“the ’803 patent”) titled “Maize Inbred 1PFLQ21.” The ’803 patent is directed to a genetically engineered hybrid inbred maize seed and plant (1PFLQ21) that is both more resilient than other maize varieties and produces more useful commodity ingredients.
Petitioner asserted invalidity grounds under 35 U.S.C. § 103, 101, and 324(b) for all 20 claims of the ’803 patent.
First, Petitioner argued that U.S. Patent No. 8,907,160 (“Chifflet”) disclosed one of the parent maize plants (PH1V5T) used in creating the hybrid maize plant claimed by the ’803 patent. Petitioner contended that because the Chifflet plant could be used to create other maize hybrids, a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at other maize hybrid plants, including 1PFLQ21, which would render the ’803 patent obvious. The patent owner responded that the other parent maize plant claimed in the ’803 patent was not known in the art at the relevant time, and thus the POSA would not have had a reasonable expectation of success in creating 1PFLQ21. Further, the patent owner argued that even if the other parent plant was known in the art at the relevant time, the POSA still would not have a reasonable expectation of success because a genotypic match is not guaranteed by simply crossing the parent plants. Rather, more work was required to produce 1PFLQ21, as “a POSA would not expect that a cross of the same parents will produce the same child.” The petitioner made the same arguments for all three independent claims of the ’803 patent.
The PTAB agreed with the patent owner for all three independent claims of the ’803 patent and therefore, all of the dependent claims. Namely, the PTAB explained that while the petitioner was correct that Chifflet could be used to create new lines of maize hybrids, the petitioner did not provide an explanation as to how or why the POSA would use the Chifflet maize line to arrive at 1PFLQ21 other than randomly crossing different maize varieties to ultimately end up with 1PFLQ21.
Second, the petitioner made the same arguments it used with Chifflet to argue obviousness in view of two other references, U.S. Patent Nos. 8,466,351 (Smalley) and 10,405,509 (Gadlage). The patent owner made the same counter arguments as it did with Chifflet, and the court agreed with patent owner for both references, for the same reasons as Chifflet.
Third, petitioner argued that under section 101, the ’803 patent did not provide the required utility for patentability. The patent owner in turn argued that the petitioner was actually arguing their point on patent examination eligibility, which is not the law of utility. The PTAB agreed with the patent owner, noting that “the ’803 patent identifies specific, real-world uses for the claimed invention” including use of maize grain in oils, meals, flour, starches, syrups, proteins, cellulose, silage, and sugars.
Lastly, Inari argued that post-grant review should be instituted under § 324(b) to answer the novel legal question: “Whether plant utility patent claims should be found unpatentable for lack of a specific utility if the specification lacks any distinct statement concerning one or more specific benefits of the claimed plant as compared to known varieties?” Inari claimed that “[r]equiring a specific statement concerning the benefits of the claimed plant variety would provide clear rules for examiners enabling them to apply longstanding precedent concerning the specific utility requirement under §101.” Pioneer responded that the novel legal question under § 324(b) must relate to conditions for patentability under § 282(b)(2)-(3). More specifically, Pioneer rebutted that “[Inari’s] questions at best concern a matter of patent examination process or policy not within the proper scope of post grant review under the AIA.”
The PTAB again agreed with Pioneer, holding that the question was indeed a matter of patent examination process or policy that was improper to raise in a post-grant review proceeding. Inari conceded in its Petition that the question was directed to “enhance patent examination quality of the patent examination process for innovations related to agricultural products,” as well as to “enhance the transparency of IP information” for these innovations. The PTAB made clear that it is the Director, not the Board, who is “responsible for providing policy direction and management supervision for the Office and for the issuance of patents” under 35 U.S.C. § 3(2)(A). Because a post-grant review proceeding was “not the proper vehicle” for Inari’s request, the PTAB held that Inari “[did] not raise a novel or unsettled legal question warranting institution of a post-grant review proceeding under 35 U.S.C. §324(b).”
Takeaways:
The public knowledge of a parent plant claimed in an inbred hybrid plant patent does not render the patent obvious if a POSA would not be motivated to create the claimed hybrid plant or any reasonable expectation of success in creating the claimed hybrid other than randomly crossing various plants. When making arguments regarding utility, do not confuse the policy and practice of patent eligibility at the examination phase with the law of utility.
Further, the PTAB is known for strict adherence to rules, and Petitioners have limited space to make their case for unpatentability in a petition. Arguing novel theories for trial institution in a petition, such as those related to heightened utility standards or examination process or policy, may be an ill-advised use of space in a PTAB petition.
Matthew Johnson
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