`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`1,4 GROUP, INC.
`Petitioner
`v.
`WASHINGTON STATE UNIVERSITY
`Patent Owner
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`
`
`DECLARATION OF ADDIE WAXMAN
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,999,419
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`1
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0001
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`I, Addie Waxman, hereby declare as follows:
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`
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`1.
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`I hold a Bachelor of Science degree in biology, a minor in chemistry,
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`and an emphasis in microbiology, from Virginia Polytechnic Institute and State
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`University. I hold a Master of Science degree in food science also from Virginia
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`Polytechnic Institute and State University. My thesis was titled “The Inhibition of
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`Pseudomonas in Cottage Cheese Through the Use of Genetically Altered Lactic
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`Acid Starter Cultures.” Since 2012, I have been working toward a doctor of
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`philosophy degree in potato science from the University of Idaho.
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`2.
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`From 1989 to 1997, I worked as a food scientist for J. R. Simplot
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`Company in the battered French fry division, retail products, fruits and vegetables,
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`and in McDonald’s hash brown division.
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`3.
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`From 2003 to 2009, I was a professor in environmental studies for the
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`University of Phoenix.
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`4.
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`Since February 2010, I have been employed by 1,4 Group, Inc. I
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`began as a research associate, working in the Research and Development
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`Department. I was promoted to Senior Scientist in August, 2012. I conduct
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`experimentation on potato physiology and potato dormancy. More specifically, my
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`position with 1,4 Group, Inc., includes conducting independent research,
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`experimentation, and testing on potato storage chemicals, including methylated
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`napthalenes, essential oils, ketones, alcohols, and chlorpropham (also known as
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`2
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0002
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`CIPC). I provide testing of these chemicals in small scale, large scale, and
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`commercially-sized potato storage units. I also advise chemical applicators in
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`determining best chemical programs for their storage based upon the size of the
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`storage unit, desired holding time, and potato variety.
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`5.
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`I have been a member of the Bio-Pesticide Industry Alliance (“BPIA”)
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`since 2011 and have been an active member of the planning committee for the
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`BPIA. I was the chairperson of the Planning Committee for 2014–2015 and joined
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`the board of the BPIA in March, 2015.
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`6.
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`7.
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`I am a member of the Potato Association of America.
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`In all, I have over ten years’ experience working as a food scientist in
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`the potato industry.
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`8.
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`I have more than five years’ experience working in developing
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`compounds and methods for sprout inhibition of potatoes.
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`I.
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`Summary of Opinions
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`9.
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`It is my opinion that the subject matter of claims 1, 4, 12–15, 17, 18,
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`and 21 of U.S. Patent 8,999,419 were previously disclosed in U.S. Patent
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`Publication No. 2007/0290062 to Forsythe et al. (“Forsythe”) (Ex. 1004). Forsythe
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`disclosed a method of inhibiting sprouting in potato tubers during storage (Ex.
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`1004, ¶ [0012]), comprising simultaneously or substantially simultaneously (Ex.
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`1004, ¶ [0012]) applying during storage of the potato tubers (Ex. 1004, ¶ [0012]) a
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`3
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0003
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`composition (Ex. 1004, ¶¶ [0012], [0036], & [0038]) comprising i) one or more
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`
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`sprout inhibiting agents selected from the group consisting of (cid:302),(cid:533)-unsaturated
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`aliphatic aldehydes; (cid:302),(cid:533)-unsaturated aliphatic ketones; C3 to C14 saturated aliphatic
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`aldehydes; C3 to C14 saturated aliphatic ketones; C3 to C14 saturated or
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`unsaturated aliphatic primary alcohols; and C3 to C14 saturated or unsaturated
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`aliphatic secondary alcohols (Ex. 1004, ¶¶ [0012], [0036], & [0038] (e.g., “higher
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`alcohols”)) and ii) one or more sprout inhibitors selected from the group consisting
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`of chlorpropham (CIPC), dimethylnapthalene (DMN), diisopropylnapthalene
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`(DIPN), carvone, and an essential oil (Ex. 1004, ¶¶ [0012], [0036], & [0038] (e.g.,
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`CIPC, DMN, DIPN, clove oil, mint oil, eucalyptus oil). Forsythe also disclosed a
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`composition (Ex. 1004, ¶¶ [0012] & [0038]) for inhibiting sprouting of potato
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`tubers during storage, comprising i) one or more sprout inhibiting agents selected
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`from the group consisting of C8-C14 saturated or unsaturated aliphatic primary
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`alcohols; and C8-C14 saturated or unsaturated aliphatic secondary alcohols (Ex.
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`1004, ¶¶ [0012] & [0038] (e.g., “higher alcohols”) and ii) one or more sprout
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`inhibitors selected from the group consisting of chlorpropham (CIPC),
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`dimethylnapthalene (DMN), diisopropylnapthalene (DIPN), carvone, and an
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`essential oil (Ex. 1004, ¶¶ [0012] & [0038] (e.g., CIPC, DMN, DIPN, clove oil,
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`mint oil, eucalyptus oil)).
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`4
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0004
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`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`
`10.
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`It is my opinion that the subject matter of claims 1, 2, 4, 17, and 18 of
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`
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`the ‘419 patent were disclosed by an obvious combination of Forsythe and
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`International Publication No. WO 2007/044200 A2 to Olson et al. (“Olson”) (Ex.
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`1005). In addition to the disclosure in Forsythe discussed above, Olson disclosed a
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`method of inhibiting sprouting in potato tubers during storage (Ex. 1005, p. 15),
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`comprising simultaneously or substantially simultaneously (Ex. 1005, p. 15)
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`applying during storage of the potato tubers (Ex. 1005, p. 15) a composition (Ex.
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`1005, p. 15 (“the same or different compositions”)) comprising i) one or more
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`sprout inhibiting agents selected from the group consisting of (cid:302),(cid:533)-unsaturated
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`aliphatic aldehydes; (cid:302),(cid:533)-unsaturated aliphatic ketones; C3 to C14 saturated aliphatic
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`aldehydes; C3 to C14 saturated aliphatic ketones; C3 to C14 saturated or
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`unsaturated aliphatic primary alcohols; C3 to C14 saturated or unsaturated aliphatic
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`secondary alcohols (Ex. 1005, p. 14 (e.g., “aliphatic aldehydes and ketones, . .
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`medium and long-chain alcohols”)); and ii) one or more sprout inhibitors selected
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`from the group consisting of chlorpropham (CIPC), dimethylnapthalene (DMN),
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`diisopropylnapthalene (DIPN), carvone, and an essential oil (Ex. 1005, p. 14 (e.g.,
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`CIPC, . . . chlorpropham, . . . diisopropylnapthalene, dimethylnapthalene, carvone, .
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`. . and essential oils”).
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`11.
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`It is my opinion that the subject matter of claim 2 of the ‘419 patent
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`was disclosed in an obvious combination of Forsythe, Olson, and U.S. Patent
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`5
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0005
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`Publication No. 2009/0062126 to Knowles et al. (“Knowles ‘126”) (Ex. 1006) and
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`
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`the Notice of Pesticide Registration for CIPC 7A, EPA Reg. No. 2749-517 (“CIPC
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`7A”) (Ex. 1007). In addition to the disclosures of Forsythe and Olson discussed
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`above, Knowles ‘126 disclosed that CIPC is a sprout inhibitor (Ex. 1006, ¶¶ [0007]
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`& [0008]) that can be used in combination with other sprout-inhibiting compounds
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`to allow the use of less of the CIPC (Ex. 1006, ¶ [0040]) and CIPC 7A disclosed an
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`application rate for a CIPC-including sprout inhibitor within the range of 1–14
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`mg/kg (Ex. 1007, pp. 4–5 (e.g., 13.3 mg/kg)).
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`12.
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`It is my opinion that the subject matter of claim 3 of the ‘419 patent
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`was disclosed in an obvious combination of Forsythe, Olson, and the Notice of
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`Pesticide Registration for 1,4SIGHT, EPA Reg. No. 67727-1 (“1,4SIGHT”) (Ex.
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`1008). In addition to the disclosures of Forsythe and Olson discussed above,
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`1,4SIGHT disclosed applying a sprout inhibitor composition when sprouts begin to
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`appear on the potato tubers (Ex. 1008, p. 4).
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`13.
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`It is my opinion that the subject matter of claims 5 and 16 of the ‘419
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`patent was disclosed in an obvious combination of Forsythe, Olson, and Knowles
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`‘126. In addition to the disclosures of Forsythe and Olson discussed above,
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`Knowles ‘126 disclosed a method and composition wherein the one or more sprout
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`inhibiting agents is 3-none-2-one (Ex. 1006, ¶ [0053]) and the one or more sprout
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`inhibitors is CIPC (Ex. 1006, ¶¶ [0008] & [0040]).
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`6
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0006
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`
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`
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`14.
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`It is my opinion that the subject matter of claims 18 and 21 of the ‘419
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`patent was disclosed in an obvious combination of Forsythe, Olson, U.S. Patent No.
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`3,824,094 to Tso et al. (“Tso”) (Ex. 1009), and U.S. Patent No. 3,852,057 to
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`Findley et al. (“Findley”) (Ex. 1010). In addition to the disclosures of Forsythe and
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`Olson discussed above, Tso disclosed a tobacco sucker growth-inhibiting method
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`and composition wherein octanol is used in combination with CIPC as an inhibitor
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`(Ex. 1009, Title; Col. 1: lines 48–50, 54–56, & 58–61; Col. 2: lines 1–2, 7–8; &
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`Col. 3: lines 3–30 (“C8 (n-octanol)” in an emulsion with “CIPC”) and Findley
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`disclosed that compositions, which may include n-octanol, suitable for retarding the
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`growth of tobacco suckers are also suitable for inhibiting the sprouting of potatoes
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`(Ex. 1010, Col. 1: lines 4–7; Col. 2: lines 7–17; & Col. 4: lines 21–25).
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`15.
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`It is my opinion that the subject matter of claims 6, 7, 9–11, 19, and
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`22–24 of the ‘419 patent was disclosed in an obvious combination of Forsythe,
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`CIPC 7A, 1,4SIGHT, and Knowles ‘126. Forsythe disclosed a method of inhibiting
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`sprouting in potato tubers during storage (Ex. 1004, ¶ [0038]), comprising applying
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`one or more sprout inhibitors selected from the group consisting of chlorpropham
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`(CIPC), dimethylnapthalene (DMN), diisopropylnapthalene (DIPN), carvone, and
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`an essential oil (Ex. 1004, ¶ [0038] (e.g., “CIPC, DMN, DIPN, clove oil, mint oil,
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`eucalyptus oil”) to the potato tubers and applying during storage of the potato tubers
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`one or more sprout inhibiting agents selected from the group consisting of (cid:302),(cid:533)-
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`7
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0007
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`
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`unsaturated aliphatic aldehydes; (cid:302),(cid:533)-unsaturated aliphatic ketones; C3 to C14
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`
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`saturated aliphatic aldehydes; C3 to C14 saturated aliphatic ketones; C3 to C14
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`saturated or unsaturated aliphatic primary alcohols; and C3 to C14 saturated or
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`unsaturated aliphatic secondary alcohols (Ex. 1004, ¶ [0038] (e.g., “alcohol,
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`essentially higher alcohols, tuber sprout inhibitors”). In addition, CIPC 7A (Ex.
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`1007) disclosed application of a CIPC-including sprout inhibitor composition after
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`wound healing and prior to sprouting (Ex. 1007, pp. 1 & 4 (e.g., “after bruises and
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`cuts have healed”)) and 1,4SIGHT disclosed application of a DMN-including sprout
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`inhibitor composition after wound healing is complete and when sprouts begin to
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`appear (Ex. 1008, pp. 2–4 (e.g., “when wound healing is complete” and if
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`“sprouting occurs, the potatoes may be retreated”). Also, Knowles ‘126 disclosed
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`application of sprout-inhibiting compounds (Ex. 1006, ¶ [0042] (e.g., C3 to C14
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`(cid:302),(cid:533)-unsaturated aldehydes or ketones)) that may be applied in combination with
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`other sprout-inhibiting agents (Ex. 1006, ¶ [0040]) and that CIPC and DMN are
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`sprout-inhibiting agents (Ex. 1006, ¶¶ [0008] & [0009]), with less of the other
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`sprout-inhibiting agents being needed (Ex. 1006, ¶ [0040]), and with the timing for
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`exposure of the potatoes to the compounds being during storage after wound
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`healing and prior to sprouting (Ex. 1006, ¶¶ [0005], [0007], [0009], [0036], &
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`[0037]). Various application timings are also disclosed, such as application 2–8
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`weeks after transfer of the potato tubers to storage (Ex. 1007, p. 4 (“minimum of
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`8
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0008
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`
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`two weeks”), repeating application multiple times during storage (Ex. 1006,
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`
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`¶ [0037], and repeating application at intervals of from 4 to 12 weeks (Ex. 1006, ¶
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`[0037]). Knowles ‘126 also disclosed application of maleic hydrazide (MH) prior
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`to harvest. (Ex. 1006, ¶ [0006].) CIPC 7A teaches an application rate for a CIPC-
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`including sprout inhibitor that is within the range of 1–14 mg/kg (Ex. 1007, pp. 2, 4,
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`& 5 (see also, below at ¶¶ 53 & 54)). Knowles ‘126 also disclosed that combined
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`uses of sprout inhibitor compounds, such as C3 to C14 (cid:302),(cid:533)-unsaturated aldehydes
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`and ketones, with other sprout inhibiting agents (Ex. 1006, ¶ [0040]) may allow use
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`of less of the another substance (Ex. 1006, ¶ [0040]).
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`16.
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`It is my opinion that the subject matter of claim 8 of the ‘419 patent
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`was disclosed in an obvious combination of Forsythe, CIPC 7A, 1,4SIGHT,
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`Knowles ‘126, and Olson. In addition to the disclosures of Forsythe, CICP 7A,
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`1,4SIGHT, and Knowles ‘126 discussed above, Forsythe disclosed that its
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`chemicals could be applied sequentially (Ex. 1004, ¶ [0038]), and Olson disclosed
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`that a first inhibiting chemical could be applied and then a second sprout inhibiting
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`chemical could be applied at a later time (Ex. 1005, p. 13), and the time elapsed
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`between applications may be from a few moments to a few months (Ex. 1005,
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`p. 13).
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`17.
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`It is my opinion that the subject matter of claim 20 of the ‘419 patent
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`was disclosed in an obvious combination of Forsythe, CIPC 7A, 1,4SIGHT,
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`9
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0009
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`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`Knowles ‘126, Tso, and Findley. In addition to the disclosures of Forsythe, CIPC
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`
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`7A, 1,4SIGHT, and Knowles ‘126 discussed above, Tso disclosed that octanol is an
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`example of a C6 to C18 saturated fatty alcohol that is effective, in a composition with
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`CIPC, to inhibit sucker growth on tobacco plants (Ex. 1009, Col. 1: lines 48–50,
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`54–56, 58–61; Col. 2: lines 1–2, lines 7–8; and Col. 3: lines 3–30), and Findley
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`disclosed that compositions, such as including “acyclic aliphatic monohydric
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`alcohols of about 3–10 carbon atoms,” and with “n-octanol” being the most
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`preferred, “are also suitable for inhibiting the sprouting of potatoes” (Ex. 1010, Col.
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`1: lines 4–7; Col. 2: lines 7-17; & Col. 4: lines 21–25).
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`18.
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`It is my opinion that the subject matter of claims 12, 13, and 21 of the
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`‘419 patent was disclosed in Tso (Ex. 1009). Tso disclosed a composition (Ex.
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`1009, Col. 2: lines 7–8; Col. 3: lines 3–30) comprising i) one or more sprout
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`inhibiting agents selected from the group consisting of C8-C14 saturated or
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`unsaturated aliphatic primary alcohols; and C8-C14 saturated or unsaturated
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`aliphatic secondary alcohols (Ex. 1009, Col. 1: lines 54–56 (e.g., “C6 to C18
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`saturated fatty alcohol”); & Col. 2: lines 7–8 (“C8 (n-octanol))); and ii) one or more
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`sprout inhibitors selected from the group consisting of chlorpropham (CIPC),
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`dimethylnapthalene (DMN), diisopropylnapthalene (DIPN), carvone, and an
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`essential oil (Ex. 1009, Col. 2: lines 7–8; Col. 3: lines 3–30 (e.g., “CIPC”).
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`10
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0010
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`
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`19.
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`It is my opinion that the subject matter of claim 12 of the ‘419 patent
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`
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`was disclosed in an obvious combination of Tso; Findley; W. G. Burton,
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`“Experiments on the use of alcohol vapours to suppress the sprouting of stored
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`potatoes,” EUROPEAN POTATO JOURNAL, Vol. 1, Issue 1, (Mar. 1958), pp. 42–51
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`(abstract) (hereinafter “Burton 1958”) (Ex. 1011); W. G. Burton, “Suppression of
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`the Sprouting of Potatoes by the Vapour of Alcohols,” NATURE, Vol. 178, (Jul. 28,
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`1956), p. 218 (hereinafter “Burton 1956”) (Ex. 1012); W. G. Burton, “THE
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`POTATO: A Survey of Its History and of Factors Influencing Its Yield, Nutritive
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`Value, Quality and Storage,” H. VEENMAN & ZONEN N.V., 2d. ed., (1966), p. 285
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`(hereinafter “Burton 1966”) (Ex. 1013); U.S. Patent No. 3,853,532 to Rein et al.,
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`issued Dec. 10, 1974, at Col. 2: lines 20–32 (hereinafter “Rein”) (Ex. 1014); and
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`U.S. Patent No. 4,404,016 to Zinninger et al., issued Sep. 13, 1983, Col. 1: line 68–
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`Col. 2: line 3 (hereinafter “Zinninger”) (Ex. 1015). In addition to the disclosures of
`
`Tso discussed above, Findley disclosed that compositions, which may include n-
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`octanol, suitable for retarding the growth of tobacco suckers are also suitable for
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`inhibiting the sprouting of potatoes (Ex. 1010, Col. 1: lines 4–7; Col. 2: lines 7–17;
`
`& Col. 4: lines 21–25). Each of Burton 1958 (Ex. 1011), Burton 1956 (Ex. 1012),
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`Burton 1966 (Ex. 1013), Rein (Ex. 1014), and Zinninger (Ex. 1015) disclosed
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`alcohols that are suitable for sprout inhibition, sucker control, or chemical pruning
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`agents. (Ex. 1011, Abstract (disclosing use of “alcohol vapours” to suppress
`
`
`
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`11
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0011
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`
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`sprouting); Ex. 1012, p. 218 (disclosing the use of methyl through decycl alcohols
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`
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`(i.e., C1–C10 alcohols) for suppression of sprouting); Ex. 1013, p. 285 (disclosing
`
`“[n]onanol,” which is a C9 saturated aliphatic primary alcohol, “kills the young
`
`sprouts as soon as they appear”); Ex. 1014, Col. 2: lines 20–32 (disclosing that, as
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`“chemical pruning agents,” “C8, C9, C10 and C12 fatty alcohols were highly
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`effective”); Ex. 1015, Col. 1: line 68–Col. 2: line 3 (disclosing “[c]ommonly used
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`contact sucker control agents are C6 to C18 saturated fatty alcohols, for example, n-
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`hexanol, n-octanol, n-decanol, n-dodecanol, n-tetradecanol, n-hexadecanol or
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`mixtures thereof”).)
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`II. Understanding of the Relevant Law
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`A. Claim Construction and Relevant Timeframe
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`20.
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`I understand that a claim term in an inter partes review is to be given
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`its broadest reasonable construction in light of the specification of the patent in
`
`which it appears. I understand that the specification may expressly define a term
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`that is recited in the claims. I also understand, however, that, if no such definition
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`is present, the broadest reasonable interpretation that a person of ordinary skill in
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`the “relevant timeframe” would have applied controls the construction. I will
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`assume for the purpose of this report that September 2, 2010, the filing date of the
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`provisional application to which the ‘419 patent claims priority, is the earliest date
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`the purported invention was made and that the relevant time period extends through
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`
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`12
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0012
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`
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`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
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`September 2, 2011, which is the international filing date of the international
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`
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`application that entered the national phase in the U.S. and matured into the ‘419
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`patent. (Ex. 1001.) I may refer to this time period as the “relevant timeframe,” and
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`my testimony concerning obviousness is directed to this timeframe, even if I
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`occasionally do not use a past tense. To the extent that there is a relevant event or
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`difference within this relevant timeframe, I will specify that where appropriate.
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`B. Anticipation
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`21.
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`I understand that a claim in an issued patent is invalid if it is
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`anticipated. In this case, “anticipation” means that there is a single prior art
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`reference that discloses every element of the claim, arranged in the way required by
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`the claim.
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`22.
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`I understand that, for a prior art reference to anticipate a claim, the
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`prior art reference must disclose, expressly or inherently, each of the claim
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`elements. I understand that “inherent” disclosure means that the claim element or
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`elements, although not expressly described by the prior art reference, must
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`necessarily be present based on the disclosure. I understand that the mere
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`possibility that the element is present is not sufficient to qualify as an “inherent
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`disclosure.”
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`13
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0013
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`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`
`C. Obviousness
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`
`
`23.
`
`I understand that a claim in an issued patent is invalid if it is obvious.
`
`Unlike anticipation, obviousness does not require that every element of the claim be
`
`in a single prior art reference. Instead, it is possible for claim elements to be
`
`described in different prior art references provided there is a motivation or
`
`sufficient reasoning to combine the references.
`
`24.
`
`I understand that a claim is invalid for obviousness if the differences
`
`between the claimed subject matter and the prior art are such that the subject matter,
`
`as a whole, would have been obvious, at the time the alleged invention was made,
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`to a person having ordinary skill in the art to which said subject matter pertains.
`
`25.
`
`I understand, therefore, that, when evaluating obviousness, one must
`
`consider obviousness of the claim “as a whole.” This consideration must be from
`
`the perspective of the person of ordinary skill in the art, and such perspective must
`
`be considered as of the “time the invention was made.”
`
`26. The level of ordinary skill in the art is discussed in Section III, below.
`
`27. The relevant timeframe for obviousness, i.e., the “time the invention
`
`was made,” is discussed in Section II.A, above.
`
`28.
`
`I understand that, in considering the obviousness of a claim, one must
`
`consider four things: the scope and content of the prior art, the level of ordinary
`
`
`
`
`14
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`
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0014
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`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`skill in the art at the relevant time, the differences between the prior art and the
`
`
`
`claim, and any “secondary considerations.”
`
`29.
`
`I understand that “secondary considerations” include real-world
`
`evidence that can tend to make a conclusion of obviousness more probable or less
`
`probable. For example, the commercial success of a product embodying of claim of
`
`the patent could provide evidence tending to show that the claimed invention is not
`
`obvious. In order to understand the strength of the evidence, one would want to
`
`know whether the commercial success is traceable to a certain aspect of the claim
`
`not disclosed in a single prior art reference (i.e., whether there is a causal “nexus” to
`
`the claim language).
`
`30. One would also want to know how the market reacted to disclosure of
`
`the invention and whether commercial success might be traceable to things other
`
`than innovation, e.g., the market power of the seller, an advertising campaign, or the
`
`existence of many features beyond the claims that might be desirable to consumers.
`
`One would also want to know how the product compared to similar products not
`
`embodying the claim. I understand that commercial success evidence should be
`
`reasonable commensurate with the scope of the claim but that it is not necessary for
`
`a commercial product to embody the full scope of the claim.
`
`31. Other kinds of secondary considerations are possible. For example,
`
`evidence that the relevant field had a long-established, unsolved problem or need
`
`
`
`
`15
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`
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0015
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`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`that was later met by the claimed invention could be indicative of non-obviousness.
`
`
`
`Evidence that others had tried, but failed, to make an aspect of the claim might
`
`indicate that the art lacked the requisite skill to do so. Evidence of copying of the
`
`patent owner’s products might also indicate that its approach to solving a particular
`
`problem was not obvious. Evidence that the art recognized the value of products
`
`embodying a claim, for example, by praising the named inventors’ work, might tend
`
`to show that the claim was non-obvious.
`
`32.
`
`I further understand that prior art references can be combined where
`
`there is an express or implied rationale to do so. Such a rationale might include an
`
`expected advantage to be obtained or it might be implied under the circumstances.
`
`For example, a claim is likely obvious if design needs or market pressures existing
`
`in the prior art make it natural for one or more known components to be combined,
`
`where each component continues to function in the expected manner when
`
`combined (i.e., when there are no unpredictable results). A claim is also likely
`
`invalid where it is the combination of a known base system with a known technique
`
`that can be applied to the base system without an unpredictable result. In these
`
`cases, the combination must be within the capabilities of a person of ordinary skill
`
`in the art.
`
`33.
`
`I understand that, when considering obviousness, it is not appropriate
`
`to refer to teachings in the specification of the patent itself for motivation to
`
`
`
`
`16
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`
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0016
`
`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`combine certain prior art. One can, however, refer to portions of the specification
`
`
`
`admitted to be prior art, including the “BACKGROUND” section. Furthermore, a
`
`lack of discussion in the patent specification concerning how to implement a
`
`disclosed technique can support an inference that the ability to implement the
`
`technique was within the ordinary skill in the prior art.
`
`III. Level of Ordinary Skill in the Art
`
`34.
`
`I have considered what the level of ordinary skill in the art of the ‘419
`
`patent was in the relevant timeframe. In considering the level of ordinary skill, I
`
`have taken into account the levels of education and experience of individuals
`
`working in the field, the types of problems encountered in the field, and the
`
`sophistication and complexity of the science and technology. I understand that a
`
`person of ordinary skill in the art is a hypothetical person who is deemed to be
`
`aware of the content of all analogous technical literature.
`
`35.
`
`In the relevant timeframe, one of ordinary skill in the art of the ‘419
`
`patent, in my opinion, would have had at least an undergraduate degree in a
`
`chemistry-, agriculture-, or biology-related field and would have several years
`
`(more than 5 years) of experience working in developing compounds and methods
`
`for sprout inhibition of potatoes. The levels of education, experience, and
`
`knowledge can trade off against one another. I believe that I have at least that level
`
`
`
`
`17
`
`
`
`1,4 GROUP, INC.
`Exhibit 1003
`Page 0017
`
`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`of skill and that I can opine as to the perspective of a person of ordinary skill in the
`
`
`
`art in the relevant timeframe.
`
`36. A person of ordinary skill in the art in the relevant timeframe would
`
`have understood that there are various chemicals that are effective to inhibit growth
`
`of sprouts on potatoes. More specifically, a person of ordinary skill in the art in the
`
`relevant timeframe would have understood that common sprout inhibitor chemicals
`
`included, but were not limited to, CIPC, DMN (dimethylnapthalene), DIPN
`
`(diisopropylnapthalene), maleic hydrazide (MH), essential oils (e.g., clove oil, mint
`
`oil, eucalyptus oil, volatile aromatic oils), carvone, alkyl napthalenes, aliphatic
`
`aldehydes and ketones (including C3 to C14 (cid:302),(cid:533)-unsaturated aldehydes and ketones
`
`(including 3-nonen-2-one)), and alcohols (including medium and long-chain
`
`alcohols, which includes higher alcohols). See Forsythe (Ex. 1004), ¶¶ [0012],
`
`[0036], & [0038]; Olson (Ex. 1005), p. 14; Knowles ‘126 (Ex. 1006), ¶¶ [0006],
`
`[0008], [0042], & [0053].
`
`37.
`
`In further regard to the above, concerning alcohols as sprout inhibitors,
`
`a person of ordinary skill in the art in the relevant timeframe would have
`
`understood that the alcohols that could be effective sprout inhibiting alcohols
`
`included at least some members of the categories of “C3 to C14 saturated or
`
`unsaturated aliphatic primary alcohols; C3 to C14 saturated or unsaturated aliphatic
`
`secondary alcohols,” as recited in claim 1 of the ‘419 patent. It had been widely
`
`
`
`
`18
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`
`
`1,4 GROUP, INC.
`Exhibit 1003
`Page 0018
`
`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`known in the art for decades, including in the relevant timeframe, that alcohols
`
`
`
`could have sprout-inhibiting properties. That is, there were numerous disclosures
`
`and teachings of use of alcohols as sprout inhibitors or, more generally, as chemical
`
`pruning agents. See, e.g., Forsythe (Ex. 1004), ¶ [0038] (disclosing “alcohol,
`
`especially higher alcohols, tuber sprout inhibitors”); Olson (Ex. 1005), p. 14
`
`(disclosing “medium and long-chain alcohols” as being within “additional sprout
`
`inhibitors”); Knowles ‘126 (Ex. 1006), Abstract (disclosing “[c]ompositions . . . for
`
`inhibiting the sprouting of potato tubers,” which “compositions comprise C3 to C14
`
`aliphatic aldehydes and ketones, and/or C3 to C7 primary and secondary aliphatic
`
`alcohols”); Tso (Ex. 1009), Col. 1: lines 54–56 (disclosing “substantially any
`
`individual alcohol or mixture of alcohols within the C6 to C18 range will achieve
`
`sucker control”); Findley (Ex. 1010), Col. 2: lines 7–17, Col. 4: lines 21–24; Title
`
`(disclosing compounds “useful in the practice of this invention,” i.e., methods “for
`
`controlling axillary shoots of tobacco plants” and also “for inhibiting the sprouting
`
`of potatoes,” include “acyclic aliphatic monohydric alcohols of about 3–10 carbon
`
`atoms”); Burton 1958 (Ex. 1011) (disclosing use of “alcohol vapours” to suppress
`
`sprouting); Burton 1956 (Ex. 1012) (disclosing the use of methyl through decycl
`
`alcohols (i.e., C1–C10 alcohols) for suppression of sprouting); Burton 1966 (Ex.
`
`1013) (disclosing “[n]onanol,” which is a C9 saturated aliphatic primary alcohol,
`
`“kills the young sprouts as soon as they appear”); Rein (Ex. 1014), Col. 2: lines 20–
`
`
`
`
`19
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`
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`1,4 GROUP, INC.
`Exhibit 1003
`Page 0019
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`
`
`
`Declaration of Addie Waxman
`in Support of Petition for Inter Partes Review of U.S. Patent No. 8,999,419
`
`32 (disclosing that, as “chemical pruning agents,” “C8, C9, C10 and C12 fatty alcohols
`
`
`
`were highly effective”); & Zinninger (Ex. 1015), Col. 1: line 68–Col. 2: line 3
`
`(disclosing “[c]ommonly used contact sucker control agents are C6 to C18 saturated
`
`fatty alcohols, for example, n-hexanol, n-octanol, n-decanol, n-dodecanol, n-
`
`tetradecanol, n-hexadecanol or mixtures thereof”).
`
`38. A person of ordinary skill in the art in the relevant timeframe would
`
`have understood that multiple sprout inhibitor chemicals could potentially be used
`
`in various combinations of multiple sprout inhibitor chemicals. See Forsythe (Ex.
`
`1004), ¶ [0012]; Knowles ‘126 (Ex. 1006), ¶ [0040]. It was particularly understood
`
`that sprout inhibitor CIPC could be used in combination with other sprout
`
`inhibitors, including DMN, clove oil, and higher alcohols. See, e.g., Forsythe (Ex.
`
`1004), ¶ [0012]; Tso (Ex. 1009), Col. 1: lines 54–56, 58–61; Col. 2: lines 1–2, 7–8;
`
`Col. 3: lines 3–30. It was also particularly understood that sprout inhibitor agents
`
`C3 to C14 (cid:302),(cid:533)-unsaturated aldehydes and ketones could be used in combination
`
`with other sprout inhibitors. See Knowles ‘126 (Ex. 1006), ¶¶ [0040] & [0042].
`
`39. A person of ordinary skill in the art in the relevant timeframe would
`
`have understood that multiple sprout inhibitor chemicals being used to treat stored
`
`potatoes could potentially be applied simul
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