Trials@uspto.gov
`571-272-7822
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`Paper No. 30
`Date: January 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TIDE INTERNATIONAL (USA), INC.,
`Petitioner,
`v.
`UPL NA INC.,
`Patent Owner.
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`VALEK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
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`
`
`571-272-7822
`
`Paper No. 30
`Date: January 4, 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TIDE INTERNATIONAL (USA), INC.,
`Petitioner,
`v.
`UPL NA INC.,
`Patent Owner.
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`VALEK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
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`I.
`INTRODUCTION
`Tide International (USA), Inc., (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”), seeking inter partes review of claims 1–4 and 7–12 of U.S. Patent
`No. 7,473,685 B2 (Ex. 1001, “the ’685 patent”). We instituted trial on all of
`the grounds in the Petition. Paper 12 (“Institution Dec.”).
`Following institution, UPL NA, Inc., (“Patent Owner”) filed a
`Response (Paper 14, “Resp.”), Petitioner filed a Reply (Paper 21, “Reply”),
`and Patent Owner filed a Sur-Reply (Paper 23, “Sur-Reply”). We held a
`hearing on October 27, 2021, and a transcript is of record. Paper 29 (“Tr.”).
`We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner bears the burden of proving unpatentability of the challenged
`claims by a preponderance of the evidence. See 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d) (2019).
`Upon consideration of the full record, and for the reasons explained
`below, we find Petitioner has shown by a preponderance of the evidence that
`claims 1–4 are unpatentable, but has not shown by a preponderance of the
`evidence that claims 7–12 are unpatentable on the grounds in the Petition.
`II.
`BACKGROUND
`
`A. Real Parties in Interest
`Petitioner identifies itself, “Tide International (USA), Inc.,” as well as
`
`“Zhejiang Tide Cropscience Co. Ltd., Ningbo Tide Imp. & Exp. Co., Ltd.,
`and Tide International Company Limited” as the real parties-in-interest.
`Pet. 73. Petitioner explains that Tide International Company Limited is its
`parent corporation and that “the remaining parties are defendants in
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`Patent 7,473,685 B2
`co-pending litigation.” Id. Patent Owner identifies itself, “UPL NA Inc.,”
`as the real party-in-interest. Paper 3, 1.
`
`B. Related Matter
`Petitioner and Patent Owner identify the following related matter
`involving the ’685 patent: UPL NA Inc. v. Tide International (USA), Inc.,
`No: 8:19-cv-1201-RSWL-KS (C.D. Cal. 2019) (“the related litigation”).
`
`C. The ’685 Patent
`The ’685 patent was issued on January 6, 2009, and claims priority to
`a utility application filed on April 22, 2002, and a provisional application
`filed December 18, 2001. Ex. 1001, codes (45), (63), (60).
`The ’685 patent relates to “[d]ry flow, low compact, dust free, soluble
`granules” containing the pesticide “acephate” in combination with other
`ingredients, and processes for making such. Ex. 1001, Abstr. According to
`the Specification, “[t]he formulation of acephate presently in use . . . poses
`the problems of dust, low pourability, high transportation costs, high capital
`manufacturing investment, measurement difficulties, difficulties in packing
`material disposal, handling problems, high risk of caking and others.” Id. at
`2:13–20.
`
`The Specification purports to overcome these problems by describing
`a method that constitutes “an improvement over prior manufacturing
`processes” that produces granules that are “more advantageous than prior
`granular products and exhibit[] certain very desirable characteristics.”
`Ex. 1001, 2:33–43.
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`Patent 7,473,685 B2
`The claims of the ’685 patent recite particular formulations of granule
`compositions “consisting of” acephate and certain recited ingredients in
`amounts falling within specified ranges. Ex. 1001, 7:44–8:65.
`
`D. Challenged Claims
`The Petition challenges claims 1–4 and 7–12. Of these, claims 1 and
`7 are independent. Claim 1 reads as follows:
`1. A chemically stable dry flow, low compact, dust free
`soluble phosphoramidothioate granule consisting of
`(i) 85-98% w/w an insecticidally active compound of the
`following formula:
`
`
`wherein R and R1 individually are alkyl, alkynyl or
`alkenyl group containing up to 6 carbon atoms, R2 is hydrogen,
`an alkyl group containing 1 to 18 carbon atoms, a cycloalkyl
`group containing 3 to 8 carbon atoms, an alkenyl group
`containing 2 to 18 carbon atoms or an alkynyl group containing
`3 to 18 carbon atoms, R3 is hydrogen or an alkyl group
`containing 1 to 6 carbon atoms, and Y is oxygen or sulfur,
`wherein said insecticidal active compound is Acephate:
`(ii) 0.1-5.0% w/w a dispersing agent;
`(iii) 0.1-3% w/w a wetting agent;
`(iv) 0.01-0.08% w/w an antifoaming agent;
`(v) 0.01-1% w/w a stabilizer and
`(vi) fillers to make 100%,
`wherein said granule has a length of 1.5-3.0 mm and a
`diameter of 0.5-1.5 mm.
`Ex. 1001, 7:44–8:4. Claim 7 is directed to a granule with the same
`dimensions, ingredients, and ranges as claim 1 and that additionally consists
`
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`IPR2020-01113
`Patent 7,473,685 B2
`of a “binding agent” and a “disintegrating agent” within specified ranges.
`See id. at 8:19–48.
`
`E. Instituted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §
`References
`Misselbrook,2 CN ’588,3 JP
`1–4, 7–12
`103(a)1
`’902,4
`1–4, 7–12
`103(a)
`Misselbrook, Mayer,5 CN ’588
`1–4, 7–12
`103(a)
`Misselbrook, JP ’902, Mayer
`Petitioner relies on the declaration of William Geigle (Ex. 1003) in
`
`support of these grounds. Patent Owner relies on the declaration of David
`A. Rockstraw, Ph.D., P.E. (Ex. 2007), which was submitted with its
`Response.
`
`III. ANALYSIS OF ASSERTED GROUNDS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and 103 that became
`effective after the filing of the application that led to the ’685 Patent.
`Therefore, we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103.
`2 U.S. Patent No. 6,387,388 B1, issued May 14, 2002 (Ex. 1005)
`(“Misselbrook”).
`3 CN 1127588A, published July 31, 1996 (Ex. 1006). Petitioner has
`provided a certified translation (Ex. 1007), which we refer to and cite herein
`as “CN ’588.”
`4 JP 9-315902, published Dec. 9, 1997 (Ex. 1008). Petitioner has provided a
`certified translation (Ex. 1009), which we refer to and cite herein as
`“JP ’902.”
`5 U.S. Patent No. 6,030,924, issued Feb. 29, 2000 (Ex. 1010) (“Mayer”).
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`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden of persuasion never shifts to patent owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) 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 of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, if any.6 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`Subsumed within the Graham factors is the requirement that the
`skilled artisan would have had a reasonable expectation of success in
`combining the prior art references to achieve the claimed invention. Pfizer,
`Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007). “Obviousness
`does not require absolute predictability of success . . . all that is required is a
`reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–4
`(Fed. Cir. 1988). Moreover, “[t]he combination of familiar elements
`according to known methods is likely to be obvious when it does no more
`than yield predictable results.” KSR, 550 U.S. at 416. “If a person of
`
`
`6 In this case, Patent Owner does not direct us to any objective indicia of
`nonobviousness.
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`ordinary skill can implement a predictable variation, § 103 likely bars its
`patentability.” Id. at 417.
`
`On the other hand, a patent claim “is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in the
`prior art.” KSR, 550 U.S. at 418. An obviousness determination requires
`finding “both ‘that a skilled artisan would have been motivated to combine
`the teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”). A
`petitioner’s assertion of obviousness “cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing
`KSR, 550 U.S. at 418).
`
`B. Level of Ordinary Skill in the Art
`We begin by assessing the level of skill in the art. Considerations
`
`relevant to determining the level of ordinary skill in the art include the type
`of problems encountered in the art and prior art solutions to those problems.
`See Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir.
`1983). The prior art itself may also reflect an appropriate level of skill.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
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`According to Petitioner’s declarant, Mr. Geigle, “a person of ordinary
`skill in the art for the ’685 patent has a bachelor’s degree or Ph.D. in
`chemistry or chemical engineering, with at least two to four years of
`experience or education specifically in the formulation and development of
`[solid pesticides subjected to granulation processes].” Ex. 1003 ¶ 18.
`Mr. Geigle additionally opines “a person who does not satisfy the identified
`educational level may still qualify as a person of ordinary skill if they [have]
`had more relevant work experience.” Id.
`
`Patent Owner’s declarant, Dr. Rockstraw, offers a similar description
`of a person of ordinary skill in the art (“POSITA”), but states the POSITA’s
`experience more generally as “experience with agrochemicals and related
`formulations.” Ex. 2007 ¶ 77. According to Dr. Rockstraw,
`requiring at least two to four years of experience or education
`“specifically in the formulation and development” of “solid
`pesticides subjected to granulation processes” is overly
`limiting. Ex. 1003, ¶ 18. There are other areas of practice in
`which an understanding of particles, granules, dispersion,
`wetting, foaming, and/or stability are important, and these fields
`overlap considerably.
`Id. ¶ 79.
`
`We adopt Patent Owner’s description of a POSITA because it reflects
`the experience of one familiar with the types of problems and solutions
`described in the ’685 patent and the cited prior art, which include granule as
`well as other kinds of agrochemical formulations. That said, we do not
`discern a meaningful difference between the parties’ proposals. Our
`findings and conclusions would be the same under Petitioner’s description of
`a POSITA.
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`C. Claim Construction
`In an inter partes review, claim terms are “construed using the same
`
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. [§] 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b).
`
`Here, the district court in the related litigation construed certain terms
`that appear in the challenged claims. Ex. 1015. The district court’s
`constructions are noted in the table below.
`Claim term
`District court’s construction
`“dispersing agent”
`an agent that assists with dispersion
`“antifoaming agent”
`an agent that reduces or prevents the formation of
`foam
`an agent that promotes physical and chemical
`stability
`
`“stabilizer”
`
`Id. at 19. At Patent Owner’s urging, the district court also determined that
`the preamble of claim 1 was not limiting. Id. at 10. Petitioner adopts these
`constructions, and further contends that the identical preamble in claim 7 is
`not limiting, for purposes of this proceeding. Pet. 3.
`
`In addition to the terms construed by the district court, Petitioner
`contends the following terms should be given their “plain and ordinary
`meaning” as set forth in the table below and evidenced by the testimony of
`Petitioner’s expert.
`Claim term
`“wetting agent”
`
`Petitioner’s proposed construction
`an agent that when added to a liquid, reduces the
`interfacial tension between the liquid and the
`surface on which it is spreading
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`“binding agent”
`
`an agent that assists in the binding of particles
`together in a formulation
`“disintegrating agent” an agent that enables a liquid to penetrate the
`pores of a granule to allow for the dissolution of
`that particle
`
`Pet. 4–5 (citing Ex. 1003 ¶¶ 53–55).
`
`Patent Owner “agrees with the constructions adopted by the district
`court” and applies the additional constructions proposed by Petitioner for
`“wetting agent,” “binding agent,” and “disintegrating agent” as set forth
`above. Resp. 12. Patent Owner also agrees that the preamble of the
`challenged claims is not limiting. See Resp. 12; Tr. 50:17–20, 51:3–5
`(Patent Owner’s counsel stating “[w]e agree that the preamble is not
`limiting. . . .”). Patent Owner does not propose any additional terms for
`construction.
`
`The parties have not identified any disputes regarding the construction
`of any term in the challenged claims. As noted in the Institution Decision,
`the constructions proposed in the Petition “appear to be consistent with the
`cited portions of the intrinsic record of the ’685 patent as well as the usage
`of similar terms in the asserted prior art.” Dec. 29. Neither party disputes
`this, nor suggests that any of these terms have a different meaning in the art.
`Accordingly, we adopt the claim constructions noted above for our analysis.
`
`We also adopt the parties’ position that the preamble of claims 1 and 7
`is not limiting beyond the term “granule.” Claims 1 and 7 each recite “[a]
`chemically stable dry flow, low compact, dust free soluble
`phosphoramidothioate granule consisting of” the set of ingredients recited in
`body of those claims. Ex. 1001, 7:44–45, 8:19–20. While the wherein
`clause describing the dimensions of “said granule” relies on “granule” in the
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`preamble for antecedent basis, none of the other preamble language appears
`to be necessary to breathe life and meaning into the claim, and the claim
`body recites a structurally complete invention. See Catalina Marketing Int’l,
`Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
`(explaining that a preamble is limiting if it is “necessary to give live,
`meaning, and vitality to the claim,” but “is not limiting where a patentee
`defines a structurally complete invention in the claim body”) (internal
`quotations omitted). Thus, we agree with the parties, and the district court in
`the related litigation, that the preamble language other than “granule” is not
`limiting.
`
`Moreover, we agree that the transitional phrase “consisting of” in
`claims 1 and 7 creates a “very strong presumption that the claim element is
`‘closed’ and therefore exclude[s] any elements, steps, or ingredients not
`specified in the claim.” Pet. 5; Resp. 12 (both quoting Multilayer Stretch
`Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1358
`(Fed. Cir. 2016)). Neither party seeks to overcome that presumption, nor do
`we see any basis for doing so based on the record before us. Accordingly,
`we construe the challenged claims to be limited to granule compositions
`containing only those ingredients recited in the claims.
`
`There are no other terms that need to be construed to resolve the
`issues presented in this proceeding. Therefore, we do not construe any
`additional terms. See, e.g., Nidec Motor Corp. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
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`D. References Relied Upon
`
`i. Misselbrook
`Misselbrook is a patent issued on May 14, 2002, from a series of
`
`applications dating back to November 6, 1996. Ex. 1005, 1. Petitioner
`asserts that Misselbrook qualifies as prior art under 35 U.S.C. § 102(e).
`Pet. 2. Patent Owner does not dispute, and we agree, that Misselbrook is
`prior art to the ’685 patent.
`Misselbrook describes “soluble granule (SG) pesticidal formulation[s]
`comprising a water-soluble pesticide and a water-soluble filler.” Ex. 1005,
`Abstr. According to Misselbrook, these granule formulations provide
`“efficacy equal to the corresponding liquid formulation, yet with improved
`handler safety, such as lower eye irritation.” Id.; see also id. at 2:4–21
`(describing “numerous advantages” its soluble granule formulation provides
`over liquid formulations).
`While the examples in Misselbrook are directed to a different
`pesticide active ingredient (see Ex. 1005, 9:20–17:13), Misselbrook teaches
`that acephate is one of the “[e]xemplary water-soluble pesticides” for use in
`its granule compositions. Id. at 5:28–41. Misselbrook teaches “[t]he
`pesticidal compositions of the present invention comprise 0.1 to 90% by
`weight of a water-soluble pesticide . . . and 30 to 99.9% by weight of a
`water-soluble filler, preferably lactose (not to the exclusion of other
`ingredients).” Id. at 3:34–39; see also id. at 3:58–60 (“In one embodiment
`of the present invention the formulation contains about 0.1 to 90% by weight
`of the water-soluble pesticide.”).
`Misselbrook also discloses “a more preferred embodiment”
`comprising:
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`0.1 to 60% by weight of a water-soluble pesticide . . . 40 to
`99.9% by weight of a water-soluble filler; 0 to 50% by weight
`of a wetting surfactant; 0 to 50% by weight of a dispersing
`surfactant; 0 to 5% by weight of a defoaming agent (not to the
`exclusion of other ingredients).
`Ex. 1005, 3:44–51. Misselbrook teaches that “[i]n addition to the pesticide,
`the water-soluble filler, the wetting surfactant, the dispersing surfactant and
`the defoaming agent, the instant pesticidal compositions may also
`appropriately contain stabilizers, synergists, coloring agents, etc.” Id. at
`6:53–57.
`
`Moreover, Misselbrook explains that “[t]he term ‘water-soluble filler’
`as used herein includes any water soluble or water dispersible agent which
`may be employed to dilute the pesticide.” Ex. 1005, 6:1–3. Thus, in
`addition to sugars (e.g., “lactose, glucose, fructose, mannose”) Misselbrook
`teaches that other “[a]ppropriate water-soluble fillers” include “cellulose,
`calcium phosphates(s), inorganic water-soluble salts, and the like, and
`mixtures thereof.” Id. at 6:4–10.
`
`ii. CN ’588
`CN ’588 is a Chinese patent publication published on July 31, 1996.
`
`Ex. 1006, code (43). Petitioner asserts that CN ’588 is prior art under 35
`U.S.C. § 102(b). Pet. 2. Patent Owner does not dispute, and we agree, that
`CN ’588 is prior art to the ’685 patent.
`
`
`CN ’588 teaches that acephate “is less stable in pesticide
`preparations” than other “organophosphorous compounds” and “may be
`decomposed violently with the change of storage conditions, thereby unable
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`to effectively show activity all the time.” CN ’588, 4.7 According to
`CN ’588, “condensed sodium phosphate and/or synthetic silicic acid with
`alkylsilylated silanol groups on the surface can improve the stability of
`acephate in dry preparations.” Id.
`
`To this end, CN ’588 describes a “dry pesticide preparation” wherein
`the “content of acephate” is
`generally 0.5 to 99 (wt) %, preferably 5 to 95 (wt) %. The
`content of condensed sodium phosphate in the dry pesticide
`preparation is an amount that can stabilize acephate, generally
`0.01 to 50 (wt) %, preferably 1 to 20 (wt) %, more preferably 1
`to 10 (wt) %. The content of synthetic silicic acid with
`alkylsilylated silanol groups on the surface is an amount that
`can stabilize acephate, generally 1 to 99 (wt) %.
`CN ’588, 5. In addition to these ingredients, CN ’588 teaches that its
`compositions may contain a wide variety of “solid carriers” as well as
`“adjuvants” such as “surface active agents, coating agents, fragrance and
`known stabilizers” in varying amounts. Id. CN ’588 further teaches that its
`dry pesticide preparation may be in the form of a “water soluble granule.”
`Id. at 6.
`
`JP ’902
`iii.
`JP ’902 is a Japanese patent publication published on December 9,
`
`1997. Ex. 1008, code (43). Petitioner asserts that JP ’902 is prior art under
`35 U.S.C. § 102(b). Pet. 2. Patent Owner does not dispute, and we agree,
`that JP ’902 is prior art to the ’685 patent.
`
`
`7 As does the Petition, we cite to the page numbers of the translation in
`Exhibit 1007.
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`JP ’902 describes “pesticide granules” that are “easy-to-use” because
`they “prevent caking during long-term storage and cause very little dusting
`during use.” JP ’902, Abstr. JP ’902 teaches that a number of pesticides,
`preferably acephate, can be formulated in such granules and that the
`“amount of pesticide active ingredient is about from 10 to 95% by weight
`relative to the entire formulation” (Id. ¶¶ 5–7) and “even more preferably
`about 50 to 95% by weight” (Id. ¶ 12).
`
`In addition, JP ’902 teaches that such granules may include other
`ingredients such as silica, surfactants, binders, colorants, stabilizers, and
`bulking agents. Id. ¶¶ 11–12. JP ’902 discloses concentration ranges for
`some of these types of ingredients. Id. ¶ 12. For instance, JP ’902 teaches
`the amount of surfactant “is usually about 10% by weight or less and
`preferably about 5% by weight or less,” the amount of binder “is usually
`about 20% by weight or less and preferably about 10% by weight or less,”
`and the amount of stabilizers “is about 10% by weight or less.” Id.
`
`JP ’902 provides a number of exemplary granule formulations
`containing acephate and other ingredients such as surfactants, binders,
`stabilizers, and bulking agents. See, e.g., JP ’902 ¶¶ 9, 11, 18, 24. The
`Petition cites two of those examples in particular, i.e., Reference Example 4
`and Example 6, which are described as containing “95% Acephate.”
`Pet. 17–18 (citing Ex. 1008 ¶¶ 18, 24). Specifically, JP ’902 describes these
`examples as follows:
`[Reference Example 4]
`Preparation of Granules D Containing 95% Acephate
`After thoroughly mixing together 95 parts acephate, 0.5 parts
`Newpol PE-64 surfactant, 1.0 part dextrin, 0.1 part Cyanine
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`Green G, and 3.4 parts lactose, 8 parts water was added per 100
`parts by weight formulation in terms of solid content, and the
`resulting mixture was prepared in the same manner as Reference
`Example 1 to obtain Granules D containing 95% acephate.
`[Example 6]
`Preparation of Granules J Containing 95% Acephate
`After thoroughly mixing together 95 parts acephate, 0.2 parts
`Dixsol WK surfactant, 0.1 part Cyanine Green G, 0.5 part
`Aerosil 200, and 4.2 parts lactose, 4 parts water was added per
`100 parts by weight formulation in terms of solid content, and
`the resulting mixture was prepared in the same manner as
`Reference Example 1 to obtain Granules J containing 95%
`acephate.
`JP ’902 ¶¶ 18, 24.
`
`JP ’902 describes disintegration tests conducted on these and other
`example granules and discloses the results of those tests in Table 1. JP ’902
`¶¶ 28–32. JP ’902 reports that “[i]t is clear from Table 1 that the granular
`water-soluble powders of the present invention have excellent disintegration
`in water, dispersibility in water, and caking properties.” Id. ¶ 31. In
`addition, JP ’902 explains these “pesticide granules . . . prevented caking
`during long-term storage,” “had fewer harmful chemical effects,” and
`“readily disintegrated and dispersed in water to create easy-to-use
`formulations that can be used in place of conventional powdery water-
`soluble formulations and liquid formulations.” Id. ¶ 32.
`
`iv. Mayer
`Mayer is a patent issued on February 29, 2000. Ex. 1010, code (45).
`
`Petitioner asserts that Mayer qualifies as prior art under 35 U.S.C. § 102(b).
`
`16
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`Pet. 2. Patent Owner does not dispute, and we agree, that Mayer is prior art
`to the ’685 patent.
`
`Mayer teaches that “[m]any solid crop protection agents are currently
`supplied in the form of wettable powders” containing an “insecticidal active
`ingredient[] . . . together with inert fillers, such as chalk or kaolin, in
`particular surface active substances, in the preparation of such formulations
`so that the formulations are well wetted and dispersed in water.” Ex. 1010,
`1:9–15. According to Mayer, such formulations “tend to foam” and
`“develop dust when added to water in the spray tank.” Id. at 1:15–30. Thus,
`Mayer proposes to teach “solid formulations for crop protection with
`reduced tendency of foaming and dustiness.” Id. at 1:31–34, 14:49–61
`(claim 1 reciting “[a] low dustiness water-dispersible granule formulation”).
`
`Mayer teaches that the amount of “active ingredient” in its granule
`formulations “is, as a rule, 30 to 90% by weight, preferably 50 to 87% by
`weight, and, in particular, 70 to 85% by weight of total composition.”
`Ex. 1010, 4:4–6. In addition, Mayer teaches that its formulations contain a
`“defoaming agent and/or foam breaking agent” in an amount of “0.05 to
`10% by weight.” Id. at 4:26–29. Mayer further teaches these formulations
`also include “formulation auxiliaries selected from the group consisting of
`dispersants, agglomeration auxiliaries, stabilizers, wetting agents,
`disintegrants and fillers” in varying amounts. See id. at 4:43–58.
`
`Mayer also describes the preparation of “cylindrical granules.” See
`Ex. 1010, 5:65–6:23; 9:28–49 (Ex. 1). Mayer describes extruding the mixed
`ingredients “through a die or screen” with “die holes rang[ing] in diameter
`from 0.25 to 7 mm, and preferably, from 0.4 mm to 2 mm” and, after drying,
`sieving the product “on 0.4 and 2.0 mm sieves” to obtain granules. Id.
`
`17
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`E. Ground 1: Obviousness over Misselbrook, CN ’588, and JP ’902
`Petitioner contends that claims 1–4 and 7–12 are unpatentable as
`
`obvious over Misselbrook, CN ’588, and JP ’902. See Pet. 14–39. Patent
`Owner disputes this. See Resp. 13–37. As explained below, Petitioner has
`shown by a preponderance of the evidence that claims 1–4 are unpatentable,
`but has not shown by a preponderance of the evidence that claims 7–12
`would have been obvious over these references.
`
`i. Claim 1
`Claim 1 recites a granule “consisting of” acephate and five other
`
`ingredients––a dispersing agent, a wetting agent, an antifoaming agent, a
`stabilizer, and fillers. Ex. 1001, 7:44–8:4. Petitioner must show that a
`granule containing only those ingredients, in the recited amounts, and in the
`recited dimensions would have been obvious.
`
`To do so, Petitioner relies primarily on Misselbrook’s teaching of a
`granule containing a pesticide such as acephate and four other ingredients: a
`wetting surfactant, a dispersing surfactant, a defoaming agent, and a water-
`soluble filler. See Pet. 19–33. Petitioner contends, supported by the
`testimony of Mr. Geigle, that these ingredients respectively correspond to
`the “wetting agent,” “dispersing agent,” “defoaming agent” and “fillers”
`recited in claim 1. Id. at 22–27, 29–30; Ex. 1003 ¶¶ 83, 86, 89, 95.
`Petitioner also points out that Misselbrook teaches ranges for the amount of
`pesticide and these other ingredients that overlap with the corresponding
`weight percentage ranges in claim 1. See Pet. 23, 25, 26. Petitioner
`contends that the overlapping ranges in Misselbrook and the other references
`present a prima facie case of obviousness for the corresponding ranges in
`
`18
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`claim 1. See id. at 13 (citing In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
`2003); In re Wertheim, 541 F.2d 257, 267 (CCPA 1976)).
`
`For the “stabilizer” limitation, Petitioner directs us to Misselbrook’s
`teaching that, in addition to a granule containing the ingredients noted
`above, the “instant pesticidal compositions may also appropriately contain
`stabilizers, synergists, coloring agents, etc.” Pet. 27–28 (quoting 1005,
`6:53–57). Petitioner further relies on teachings in CN ’588 and JP ’902
`regarding the use of stabilizers in acephate compositions. Id. (citing CN
`’588, 5; JP ’902 ¶¶ 11, 12, 20). In particular, Petitioner cites CN ’588’s
`teaching that “acephate is less stable in pesticide compositions” and “may
`decompose violently” to show that a POSITA would have been motivated to
`include a stabilizer in Misselbrook’s granule. Id. at 16 (quoting CN ’588, 4–
`5). According to Petitioner, a POSITA would have been motivated to
`include a stabilizer because they “would know that acephate may
`decomposed under changed storage conditions as compared to other
`organophosphorus compounds, and that adding a stabilizer could avoid such
`decomposition.” Id. at 28–29 (citing CN ’588, 4; Ex. 1003 ¶ 94).
`
`For the “85-98% w/w . . . Acephate” limitation (Ex. 1001, 7:46–64),
`Petitioner argues that all three of the cited references disclose pesticide
`ranges that overlap with the recited acephate range, creating a presumption
`that range would have been obvious. See Pet. 14, 19–21 (citing Ex. 1005,
`3:34–39; CN ’588, 5; JP ’902 ¶¶ 7, 12, 24). Petitioner also relies on working
`examples in JP ’902 that describe granules containing 95% acephate and
`some of the ingredients recited in claim 1. Id. at 20 (citing JP ’902 ¶¶ 18,
`24). Petitioner contends that “[t]o allay the costs of granulation, a POSITA
`would aim for higher acephate concentrations to reduce manufacturing
`
`19
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`costs” and therefore would have been motivated to formulate Misselbrook’s
`granule with an amount of acephate in the claimed range. Id. at 21 (citing
`Ex. 1005, 2:14–18; Ex. 1003 ¶ 74). According to Petitioner,
`[a] POSITA would be motivated to use routine experimentation
`to determine a formulation allowing for high weight
`percentages of acephate to achieve cost savings. A POSITA
`would also possess a reasonable expectation of success in
`achieving higher acephate concentrations and would not view
`the concentration as unexpected or producing unexpected
`results based on at least JP ’902’s 95% acephate granules.
`Id. at 21–22 (citing Ex. 1003 ¶¶ 80–82).
`
`Regarding the concentration ranges for the other ingredients,
`Petitioner again relies on overlapping ranges disclosed in the cited
`references. See Pet. 23–30. Moreover, Petitioner alleges it would have been
`obvious to optimize the amounts of these ingredients to the recited ranges in
`order to accommodate a higher percen
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