Trials@uspto.gov
`571-272-7822
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`
`
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`Paper 79
`Date: June 24, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE SCOTTS COMPANY LLC
`Petitioner
`
`v.
`
`ENCAP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00110
`Patent 6,209,259
`____________
`
`
`
`Before MICHAEL P. TIERNEY, LORA M. GREEN, and RAMA G. ELLURU,
`Administrative Patent Judges.1
`
`PER CURIAM.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`1 Floyd, Administrative Patent Judge, who participated in the oral hearing held on
`January 30, 2014, has left the Board; accordingly, Tierney, Administrative Patent
`Judge, has been added to the panel.
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`P. 1
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`IPR2016-00006
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`

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`IPR2013-00110
`Patent 6,209,259
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`
`I.
`
`BACKGROUND
`
`Petitioner, The Scotts Company LLC (“Scotts Company”), filed a Petition
`
`on January 10, 2013, for an inter partes review of claims 1-5, 7-11, 13, and 14
`
`(“the challenged claims”) of U.S. Patent No. 6,209,259 (“the ’259 patent”)
`
`pursuant to 35 U.S.C. §§ 311-319. Paper 2. On April 15, 2013, Patent Owner,
`
`Encap, LLC (“Encap”), filed a Preliminary Response. Paper 9. On July 3, 2013,
`
`the Board granted an inter partes review for all challenged claims on less than all
`
`of the grounds of unpatentability alleged in the Petition. Paper 12, (“Dec.”). The
`
`Board also stayed concurrent reexamination of the ’259 patent. Paper 10.
`
`After institution of trial, Encap filed a Corrected Patent Owner’s Response.
`
`Paper 48. Encap also filed a Corrected Contingent Motion to Amend Claims that
`
`requests substituting proposed new claims 15-24 for claims 2-5, 8-11, 13, and 14,
`
`respectively—contingent upon a determination of unpatentability. Paper 47.
`
`Scotts Company filed a Reply to Patent Owner’s Response (Paper 30), and an
`
`Opposition to Encap’s Motion to Amend Claims (Paper 33). Encap then filed a
`
`Corrected Reply to Scotts Company’s Opposition to Encap’s Motion to Amend
`
`Claims. Paper 49.
`
`Additionally, Scotts Company filed a Motion to Exclude Evidence (Paper
`
`52), to which Encap responded (Paper 64) and submitted supplemental evidence
`
`(Paper 58). Scotts Company filed a Reply in further support of its Motion to
`
`Exclude. Paper 68.
`
`Encap also filed a Motion to Exclude Evidence (Paper 54) to which Scotts
`
`Company responded (Paper 60). Encap, with authorization (Paper 70), filed a
`
`Supplement to its Motion to Exclude (Paper 66), as well as a Reply (Paper 67).
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`2
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`IPR2013-00110
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`Oral hearing was held on January 30, 2014.2
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`Scotts Company has shown by a preponderance of the evidence that claims
`
`1-5, 7-11, 13, and 14 of the ’259 patent are unpatentable. Encap’s Motion to
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`Amend Claims is denied.
`
`A. The ʼ259 Patent
`
`The ʼ259 patent is directed to a combination seed capsule, comprising at
`
`least one viable seed, a coating of a composition comprising a soil conditioning
`
`material mounted proximate and disposed outwardly of the outer surface of the
`
`seed, and optionally including one or more of inorganic chemical fertilizers,
`
`growth enhancer, binder, and/or an anti-fungal agent. Ex. 1001, Abstract, 4:5-11.
`
`According to the ’259 patent Specification, the primary object of the invention is to
`
`“provide solid plant seed capsule products that supply both soil conditioning
`
`properties and the seed, which can benefit from such conditioned soil, in a given
`
`seed capsule particle.” Id. at 3:28-31.
`
`B. Illustrative Claim
`
`Claims 1 and 7 are the only independent claims in the ’259 patent, and are
`
`directed to a “[a] combination seed capsule.” The only difference between these
`
`claims is that claim 7 additionally states that the seed coating is applied by an
`
`agglomeration process. The remaining challenged claims depend from either claim
`
`1 or 7. Claim 1 is illustrative of the claimed subject matter, and is reproduced
`
`below.
`
`
`
`2 A transcript of the oral hearing is included in the record as Paper 78.
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`3
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`
`1. A combination seed capsule comprising:
`
`one viable seed;
`
`said seed acting as a core or pseudo core of said combination seed
`capsule;
`
`a coating of a composition comprising soil conditioning materials;
`
`said soil conditioning materials being in a solid state at time of coating.
`
`
`
`C. Prior Art Supporting the Instituted Challenges
`
`Name
`
`Reference
`
`Schreiber
`Roth
`Lowe
`Matthews
`
`U.S. Patent No. 3,698,133
`U.S. Patent No. 4,065,287
`U.S. Patent No. 5,019,564
`GB670,461
`
`
`
`Issue or
`Publication
`Oct. 17, 1972
`Dec. 27, 1977
`May 28, 1991
`Apr. 16, 1952
`
`Exhibit
`
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1007
`
`D. The Instituted Challenges of Unpatentability
`
`References
`Schreiber
`Schreiber and Roth
`Schreiber and Lowe
`Matthews
`Roth
`Roth and Lowe
`
`
`Grounds
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 102(b)
`§ 102(b)
`§ 103(a)
`
`Claims
`Claims 1, 7, and 13
`Claims 2, 5, 8, 11, and 14
`Claims 3, 4, 9, and 10
`Claims 1, 2, 7, 8, 13, and 14
`Claims 1, 2, 5, 7, 8, 11, 13, and 14
`Claims 1-5, 7-11, 13, and 14
`
`4
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`P. 4
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`
`II. DISCUSSION
`
`A. Evidentiary Matters
`
`1. Scotts Company’s Reply (Paper 30)
`
`In a conference call held on December 3, 2013, Encap asserted that Scotts
`
`Company had raised new arguments and evidence in its Reply to Patent Owner’s
`
`Response to Decision to Institute. Order (Paper 37), 2. The Board denied Encap’s
`
`request to file a surreply, or to enlarge the page limit of Encap’s Reply in support
`
`of its Motion to Amend. Id. We indicated, however, that we would determine
`
`whether Scotts Company’s Reply and supporting evidence contain material
`
`exceeding the proper scope of a reply. Id.
`
`We find that Scotts Company’s Reply, and in particular, the supporting
`
`Declarations of Mr. Fredrick Sundstrom (Ex. 1039) and Mr. Krishna Pagilla
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`(Ex. 1040) contain material outside the proper scope of a reply. 37 C.F.R.
`
`§ 42.23(b) (reply is limited to arguments raised in Patent Owner’s Response).
`
`Specifically, both Declarations contain materials in support of Scotts Company’s
`
`Petition, and therefore, untimely filed. For example, Mr. Sundstrom includes
`
`analyses of claim construction (e.g., Ex. 1039 ¶¶ 7-9), as well as analyses of the
`
`Schreiber (e.g., id. at ¶¶ 10-13), Matthews (e.g., id. at ¶¶ 28, 29), Roth (e.g., id. at
`
`¶ 34), Simmons (id. at ¶¶ 36, 38), and Evans (id. at ¶¶ 43, 44, 46, 48) references.
`
`Likewise, Mr. Pagilla addresses claim construction, as well as the references upon
`
`which Scotts Company sought institution. See, e.g., Ex. 1040 ¶¶ 9-13, 23-27, 32,
`
`33, 36-38. Specifically, we hold that the new evidence could have been included
`
`with the motion. By waiting to serve this evidence on Encap in Scotts Company’s
`
`Reply, Encap was denied the opportunity to file responsive evidence. Thus, we
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`5
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`have not considered the untimely Declarations of Mr. Sundstrom and Mr. Pagilla,
`
`nor the arguments based thereon.3
`
`2. Scotts Company’s Motion to Exclude
`
`Scotts Company filed a Motion to exclude: portions of the deposition
`
`testimony of Mr. Michael Krysiak taken by Encap on November 6, 2013
`
`(Ex. 2002) and December 23, 2013 (Ex. 1038); and the Second Krysiak
`
`Declaration, which includes Attachments A and B (Ex. 2016). Pet. Mot. Excl.
`
`(Paper 52), 1. Mr. Krysiak, Encap’s witness, submitted a second Declaration (Ex.
`
`2012) in support of its Reply to Petitioner’s Opposition to Encap’s Motion to
`
`Amend (Paper 49). Encap responded to Scotts Company’s Motion to Exclude and
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`filed supplemental evidence. PO Resp. Mot. Excl. (Paper 64); PO Supp. Evid.
`
`(Paper 58), respectively. Scotts Company filed a Reply. Paper 68. We grant-in-
`
`part Scotts Company’s Motion to Exclude Evidence.
`
`Scotts Company asserts that Mr. Krysiak’s deposition testimony in response
`
`to two questions (i.e., Ex. 2002, 207, l. 9; Ex. 1038, 209, ll. 7-8) should be
`
`excluded. Pet. Mot. Excl. 9-10. As we did not rely upon this deposition testimony
`
`that Scotts Company seeks to exclude, Scotts Company’s Motion is moot with
`
`respect to such testimony.
`
`Scotts Company also moves to exclude the Second Declaration of
`
`Mr. Krysiak (Ex. 2012). Scotts Company’s primary objection is that the
`
`Declaration is untimely, as it should have been submitted with Encap’s Motion to
`
`
`
`3 The fact that two declarations may contain some material appropriate for a
`response does not require our consideration of them, as the Board will not attempt
`to sort the proper from the improper portions. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012).
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`6
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`Amend (Paper 47). Pet. Mot. Excl., 11-14; see 37 C.F.R. § 42.23(b) (“All
`
`arguments for the relief requested in a motion must be made in the motion. A
`
`reply may only respond to arguments raised in the corresponding opposition or
`
`patent owner response.”). In support of Scotts Company’s Opposition to Encap’s
`
`Motion to Amend (Paper 33), it relied upon the Declaration of Mr. Sundstrom
`
`(Ex. 1039), which was not considered, as discussed above. Encap asserts that
`
`Mr. Krysiak’s Second Declaration is in rebuttal to Declarations and deposition
`
`testimony of Mr. Sundstrom and Mr. Pagilla. PO Resp. Mot. Excl. 10-11. Encap
`
`proffers supplemental evidence—a revised Second Declaration of Mr. Krysiak
`
`with citations to the Declaration and deposition of Mr. Sundstrom. Paper 58;
`
`Ex. 2016.
`
`Reading Mr. Krysiak’s Second Declaration, it is clear that the majority of
`
`the Declaration is in support of Encap’s Motion to Amend rather than in rebuttal to
`
`Scotts Company’s Opposition to Encap’s Motion to Amnd or the Declarations and
`
`deposition testimony4 of Mr. Sundstrom and Mr. Pagilla, and is thus, untimely.
`
`For example, paragraphs 2-3 relate to written description and claim construction,
`
`which Encap has the burden of proving in its Motion to Amend. Additionally,
`
`paragraphs 6-12 describe the background of the technology, which could have
`
`been submitted with Encap’s Motion to Amend opening brief, and thus, are not in
`
`rebuttal to testimony from Mr. Sundstrom or Mr. Pagilla. Likewise, paragraphs
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`25-53 and Schedule A attempt to distinguish over Matthews and Schreiber, which
`
`Encap should have done in Patent Owner’s Motion to Amend. Furthermore, to the
`
`extent that portions of Mr. Krysiak’s Second Declaration are in response to the
`
`
`
`4 While not addressed, we do not suggest that filing a declaration in rebuttal to
`deposition testimony is appropriate.
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`7
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`Declarations of Mr. Sundstrom and Mr. Pagilla, which were excluded, they should
`
`likewise be excluded. Those errors were not corrected in the Supplemental
`
`Evidence (i.e., Ex. 2016) submitted by Encap.
`
`In addition, Encap attempts to incorporate Mr. Krysiak’s Second Declaration
`
`into its Reply to Scott’s Opposition to the Motion to Amend by merely stating,
`
`“The proposed claims define over the prior art succinctly. Id. [Mr. Krysiak’s
`
`Second Declaration] at ¶¶ 14-53.” Reply Mot. Amend 5. In our Order of August
`
`27, 2013, we admonished Encap to refrain from attempting to use an expert
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`declaration in such fashion. We stated, “Encap’s motion to amend may be
`
`supported by an expert declaration, but that the motion itself should set forth the
`
`arguments and explanations with appropriate pinpoint citations to the expert
`
`declaration, rather than incorporating by reference the expert declaration.” Paper
`
`17, 2-3. Thus, Scotts Company’s Motion to Exclude Mr. Krysiak’s Second
`
`Declaration (Ex. 2012) is granted, as Mr. Krysiak’s Corrected Second Declaration
`
`(Ex. 2016) did not remedy the issues, it is not considered.
`
`3. Encap’s Motion to Exclude
`
`Encap moves to exclude the Declaration of Mr. Sundstrom (Ex. 2014), Scott
`
`Company’s witness who provided a declaration in support of Scott Company’s
`
`Reply to Patent Owner’s Response to Decision to Institute (Paper 30), on the basis
`
`that the declarant refused to answer certain questions during his deposition on the
`
`basis of confidentiality, even though a protective order was in place. PO Mot.
`
`Excl. (Paper 54), 5. Having found that Mr. Sundstrom’s Declaration was untimely
`
`submitted, and thus, not considered, Encap’s Motion to Exclude is dismissed as
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`8
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`moot.
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`B. Claim Construction
`
`Consistent with the statute and the legislative history of the AIA, the Board
`
`interprets claims by applying the broadest reasonable construction in the context of
`
`the specification in which the claims reside. 37 C.F.R. § 42.100(b); see Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim
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`terms also are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Two exceptions to the general rule that a claim term is given its ordinary
`
`meaning are: 1) when a patentee sets out a definition and acts as his own
`
`lexicographer; or 2) when the patentee disavows the full scope of a claim term
`
`either in the specification or during prosecution. See In re Paulsen, 30 F.3d 1475,
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`1480 (Fed. Cir. 1994). If an inventor acts as his or her own lexicographer, the
`
`definition must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. Id.
`
`1. “soil conditioning materials”
`
`All of the challenged claims require “a coating of a composition comprising
`
`soil conditioning materials.” The ’259 patent Specification states that “all soil
`
`conditioning materials contemplated herein beneficially modify soil to which they
`
`are applied, in some way other than direct provision of nitrogen, phosphorous,
`
`and/or potassium or other plant nutrients.” Ex. 1001, col. 8, ll. 41-44 (emphasis
`
`added). The Specification further provides specific examples of soil conditioning
`
`materials, such as municipal or other sewage sludge, paper mill sludge, fly ash, and
`
`dust. Id. at col. 7, ll. 21-23. Accordingly, in the Decision to Institute, the Board
`
`construed “soil conditioning materials” as “materials that beneficially modify soil
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`to which they are applied, in some way other than direct provision of nitrogen,
`
`phosphorous, and/or potassium or other plant nutrients, including for example,
`
`municipal or other sewage sludge, paper mill sludge, fly ash, and dust.” Dec. 6-7.
`
`Although Scotts Company agrees with the Board’s preliminary construction
`
`(Pet. Reply, 1-2), Encap asserts the construction is overly broad in view of the
`
`Specification (PO Resp., 8-9). Specifically, Encap asserts the construction should
`
`be amended to include that the soil conditioner not only enhances soil condition of
`
`the growth medium/soil to which it is applied, it also provides soil conditioning
`
`value to the seed so coated irrespective of the general tilth condition of the growth
`
`medium. Id. (citing Ex. 1001, col. 8, ll. 42-52,5 Abstract). Encap does not assert
`
`that its construction is the plain and ordinary meaning of “soil conditioning
`
`materials,” but rather, that the Specification defines the phrase. PO Resp. at 8.
`
`Specifically, Encap asserts the following portion of the Specification defines “soil
`
`conditioning materials:”
`
`However, all soil conditioning materials contemplated herein
`beneficially modify soil to which they are applied, in some way other
`than direct provision of nitrogen, phosphorous, and/or potassium or
`other plant nutrients. By use of soil conditioner in intimate
`association with the seed, this invention not only enhances soil
`condition of the growth medium/soil to which it is applied, it also
`provides soil conditioning value to the seed so coated, and in intimate
`association with the seed, irrespective of the general tilth condition of
`the growth medium into or onto which the seed capsule is applied.
`
`Ex. 1001, col. 8, ll. 42-52.
`
`Through the inclusion of “all soil conditioning materials contemplated
`
`herein,” the first sentence requires the soil conditioning material to beneficially
`
`
`
`5 Encap mistakenly refers to col. 15, l. 29–col. 16, l. 6.
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`modify the soil in some way, other than directly providing plant nutrients. The
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`second sentence is an observation of benefits provided by “this invention;” it does
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`not require the invention provide the observed benefits; much less require just the
`
`soil conditioning material of the invention provide such benefits.
`
`Encap relies upon its experts, Mr. John Katers, Mr. Daniel Madigan, and
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`Mr. Michael Krysiak, all of whom provide identical claim constructions, in support
`
`of its position. Ex. 2007 ¶ 11; Ex. 1020 ¶ 10; Ex. 1022 ¶ 13. The experts provide,
`
`however, no credible analysis in support of their claim constructions, and thus, are
`
`unpersuasive.
`
`Encap asserts also that the examples included in the Board’s preliminary
`
`claim construction should be omitted, because not all municipal or other sewage
`
`sludge, paper mill sludge, fly ash, or dust, necessarily modify the soil in a
`
`beneficial manner. PO Resp. 9. The Board’s preliminary construction, however,
`
`requires the soil conditioning materials “modify soil to which they are applied, in
`
`some way other than direct provision of nitrogen, phosphorous, and/or potassium
`
`or other plant nutrients.” The inclusion of the examples is intended to clarify, not
`
`modify, this requirement.
`
`Accordingly, the Board maintains its construction of “soil conditioning
`
`materials” as:
`
`Materials that beneficially modify soil to which they are
`applied, in some way other than direct provision of nitrogen,
`phosphorous, and/or potassium or other plant nutrients, including for
`example, municipal or other sewage sludge, paper mill sludge, fly ash,
`and dust.
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`2. “combination seed capsule”
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`The phrase “combination seed capsule” appears in the preamble of claims 1
`
`and 7. Encap asserts that the Abstract of the ’259 patent defines “combination seed
`
`capsule.” PO Resp. 10-11. The Abstract reads:
`
`This invention pertains to combination seed capsules wherein
`each seed capsule includes both moieties of at least one soil
`conditioner and at least one seed, and optionally, one or more
`inorganic chemical fertilizer, growth enhancer, binder, and/or anti-
`fungal agent. The combination seed capsules are made by physically
`combining the respective soil conditioner and seed with one other, in
`the absence of any requirement for chemical reactions in the process
`of so combining the respective materials. The combination seed
`capsules provide cooperative and beneficial effects of the soil
`conditioner and the optional inorganic fertilizer, working together in
`controlled intimate relation with the seed, to enhance the germination
`and growth processes of the seed, and the plant emergent therefrom,
`greater than when the soil conditioner and seed, and optionally
`inorganic chemical fertilizer, are applied to the soil separately; the
`improvement being a result of the intimate relationship of the
`respective materials in the combination seed capsule, whereby the
`respective materials cooperate with each other in support of
`germination and plant growth.
`
`Ex. 1001, Abstract (emphases added). Encap asserts that the text that has been
`
`italicized is the definition of a “combination seed capsule.” PO Resp. 11. Encap
`
`also relies upon its technical experts, Messrs. Baker, Madigan, and Krysiak. Id. at
`
`11-12. The experts, however, provide no credible analysis in support of their claim
`
`constructions and are thus, unpersuasive.
`
`Scotts Company asserts that the term “combination seed capsule” appears in
`
`the preamble of both independent claims (i.e., claims 1 and 7), and thus, is not
`
`limiting. Pet. Reply 2. Scotts Company also asserts that in 1998, when the
`
`application that matured into the ’259 patent was filed, the rules prohibited relying
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`on the Abstract “for interpreting the scope of the claims.” Id. at 3 (quoting
`
`37 C.F.R. § 1.72(b)). Lastly, Scotts Company asserts that Encap is attempting to
`
`improperly import limitations into the claims. Id.
`
`First, the Abstract does not provide a definition for a “combination seed
`
`capsule,” but rather observes the benefits of the combination seed capsule.
`
`Second, the preamble term “combination seed capsule” is not limiting because the
`
`claim body describes a structurally complete invention. Catalina Mktg. Int’l v.
`
`Coolsavings.com Inc., 62 USPQ2d 1781, 1785 (Fed. Cir. 2002). Thus, we need
`
`not construe “combination seed capsule,” as it does not limit the claim.
`
`3. “being in a solid state at time of coating”
`
`Independent claim 1 recites, “being in a solid state at time of coating.”
`
`Similarly, independent claim 7 recites, “are in a solid state at time of coating.”
`
`Additionally, claim 7 recites, “said coating being applied to said viable seed by an
`
`agglomeration operation.” Due to the inclusion of these three limitations, claims 1
`
`and 7 were determined to be product-by-process claims in the Decision to Institute.
`
`Dec. 7-8.
`
`Encap asserts that “in a solid state at time of coating” should be construed as
`
`“solid material in the form of particulate, fibrous, or a suspension of a particulate
`
`or fibrous material in a liquid carrier to form an agglomeration of said particulate
`
`and/or fibers.” PO Resp. 12-13 (citing Ex. 1001, col. 8, ll. 1-56). Scotts Company
`
`points out that the Specification reads, the soil conditioning raw material “may be a
`
`particulate powder, or may be fibrous, or may be a suspension of a powder or
`
`fibrous material in a liquid carrier, and is preferably coated onto the substrate seed
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`
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`6 Encap erroneously cites to col. 14, ll. 24-28.
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`to form a seed capsule or other agglomeration of particles, fibers, or the like,” and
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`thus, does not support Encap’s construction. Pet. Reply 3 (quoting Ex. 1001,
`
`col. 8, ll. 1-5 with emphasis added). We agree that the Specification does not
`
`support Encap’s proposed construction.
`
`Encap further asserts that during prosecution of the ’259 patent application,
`
`Mr. Krysiak had discussions with the Examiner relating to “being in a solid state at
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`the time of coating.” PO Resp. 12 (citing Ex. 1022 ¶ 15). Encap’s description of
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`events does not provide support for its proposed claim construction. That is, it
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`does not follow that adding the limitation to overcome Roth, defines the limitation
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`to require “solid material in the form of particulate, fibrous, or a suspension of a
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`particulate or fibrous material in a liquid carrier to form an agglomeration of said
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`particulate and/or fibers.” As before, Mr. Krysiak’s opinion as to how the phrase
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`should be construed includes no analysis, and thus, is unpersuasive.
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`Encap does establish that it disavowed claim scope, however, by adding the
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`limitation “in a solid state at time of coating” to overcome Roth. That clear and
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`unambiguous disavowal of claim scope causes us to modify the claim construction
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`from that set forth in the Decision to Institute. Specifically, Encap narrowed the
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`“in a solid state at time of coating” limitation to require the soil conditioning
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`material be in a solid state at the time of coating the seed. Encap did not narrow
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`“in a solid state at time of coating,” however, to further require a particulate,
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`fibrous, or a suspension of a particulate or fibrous material in a liquid carrier to
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`form an agglomeration of said particulate and/or fibers, as suggested by Encap.
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`The Federal Circuit has addressed the issue of determining whether a claim
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`has been narrowed in the related context of prosecution history estoppel.
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`In order to give due deference to public notice considerations under
`the Warner–Jenkinson framework, a patent holder seeking to establish
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`the reason for an amendment must base his arguments solely upon the
`public record of the patent’s prosecution, i.e., the patent’s prosecution
`history. To hold otherwise—that is, to allow a patent holder to rely on
`evidence not in the public record to establish a reason for an
`amendment—would undermine the public notice function of the
`patent record.
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`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 586 (Fed.
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`Cir. 2000), vacated on other grounds, 535 U.S. 722 (2002).
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`An examination of the prosecution history of record reveals the following
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`events which support our determination that Encap clearly disavowed the full
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`scope of claims 1 and 7. On May 10, 2000, the Examiner issued a rejection to
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`claim 77 as anticipated by Roth, and further rejected claims 77 and 85 as being
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`obvious in view of Roth in combination with two other references. Ex. 1008, 171,
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`175.7 On August 8, 2000, the Examiner issued an interview summary, which
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`indicates that a proposed claim amendment was discussed. Specifically, the
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`Examiner stated that adding, “wherein said soil conditioning material, when added
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`to the seed, are in a dry, solid form,” to the claims would overcome Roth. The
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`Examiner suggested “that the claims be written in a product by process form to
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`clearly distinguish over Roth.” Id. at 203. On September 8, 2000, the Examiner
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`issued an Interview Summary indicating that claims 77 and 85 were discussed, and
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`that “[b]ased on the proposed draft amendment and arguments recited therein, the
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`prior art was overcome.” Id. at 204. The record clearly shows that the only
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`amendment made to claim 77 was the addition of the limitation, “said soil
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`conditioning materials being in a solid state at time of coating.” Id. at 200.
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`Claim 85 was amended in similar fashion to recite, “wherein said soil conditioning
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`7 Claims 77 and 85, ultimately issued as claims 1 and 7, respectively.
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`materials are in a solid state at time of coating.” Id. at 201. Claims 77 and 85
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`ultimately issued as claims 1 and 7, respectively.
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`Thus, Encap successfully overcame Roth by adding the “in a solid state at
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`the time of coating” limitation to claims 1 and 7. Construing the phrase as a
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`product-by-process limitation would not result in distinguishing over Roth, as no
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`discussion was had, nor evidence provided, to suggest the end product of Roth had
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`different characteristics than the claimed composition. The disavowal of claim
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`scope is clear. The limitation “in a product by process form,” therefore, must be
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`construed to require the soil conditioning material be in a solid state at the time of
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`coating. See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir.
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`2014).
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`Furthermore, Roth discloses a spray application of a MAS material that
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`contains 0.1% to 2.5% solids at the time of coating. Ex. 1003, col. 3, ll. 50-51.
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`Thus, the limitation “in a solid state at the time of coating” must further be
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`construed to require more than 2.5% solids. Therefore, we construe “in a solid
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`state at the time of coating” to mean that more than 2.5% of the soil conditioning
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`material must be in a solid state at the time of coating the seed.
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`4. “agglomeration operation”
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`Independent claim 7 requires an “agglomeration operation,” which we
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`construed in our Decision to Institute to be a product-by-process limitation.
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`Dec. 8. Patent Owner concedes that claim 7 is a product-by-process claim. PO
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`Resp. 16. Patent Owner, however, takes issue with the Board’s “holding” that an
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`agglomeration operation means using water and heat to bind a plurality of
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`particles. Id. at 13.
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`We did not construe “agglomeration operation,” other than to note that it is a
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`product-by-process limitation. In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985).
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`The structure implied by the process steps should be considered when assessing the
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`patentability of product-by-process claims over the prior art. See, e.g., In re
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`Garnero, 412 F.2d 276, 279 (CCPA 1969). That is especially true where the
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`product can only be defined by the process steps by which the product is made, or
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`where the manufacturing process steps would be expected to impart distinctive
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`structural characteristics to the final product. Id. Thus, the issue is not focused on
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`what “agglomeration operation” means, but rather on what properties would be
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`embodied in a product made by an agglomeration operation (i.e., an agglomerate).
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`Here, the parties are in near agreement on the properties of an agglomerate.
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`Encap states that an agglomerate is an assemblage of particles adhering to
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`each other, and thus, a magnified image of an agglomerate would reveal that the
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`product is comprised of particulate. PO Resp. 13-16. Without credible
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`explanation, Encap in its conclusion limits its final description of an agglomerate
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`to an assemblage of fine particles. Id. at 16. Evidence cited by Encap that may
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`support this additional limitation is an article by Wolfgang B. Pietsch, titled “The
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`Agglomerative Behavior of Fine Particles.” Id. at 13-14 (citing Ex. 1020 ¶ 11,
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`Attachment A). As the title suggests, however, the article is specifically directed
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`to agglomerates of fine particles. There is no credible suggestion in Mr. Madigan’s
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`Declaration (Ex. 1020) that an “agglomerate” is limited to fine particles. See
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`Ex. 1020 ¶¶ 11-17.
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`Scotts Company appears to accept Encap’s description of an agglomerate,
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`but takes exception, as we do, with the limitation to fine particles. Pet. Reply 3-4.
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`Thus, we determine that an agglomerate is an assemblage of particles
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`adhering to each other. The “agglomeration operation” limitation of claim 7
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`implies that the claimed “combination seed capsule” has a coating of a
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`composition comprising soil conditioning materials comprised of particulate. As
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`such, to satisfy the limitation of an “agglomeration operation,” a reference must
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`disclose a product with the structural limitation of being comprised of particulate,
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`irrespective of the process used to make the product.
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`C. Anticipation by Roth—Claims 1, 2, 5, 7, 8, 11, 13, and 14
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`Roth explains that the MAS coating is “solid” after application. Roth,
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`however, does not disclose the soil conditioning materials “being in a solid state at
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`time of coating,” because Roth discloses a spray application of a MAS material
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`that is 97.5% to 99.9% liquid with the remainder “solids content.” PO Resp. 31-32
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`(citing Ex. 1003, col. 3, ll. 50-51). While a tiny amount (i.e., 0.1% to 2.5%)