Paper No.
`Filed: March 7, 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.
`
`Case IPR2020-01113
`Patent No. 7,473,685
`
`ms
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`SSHACDWRENES3443030950
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`Filed: March 7, 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.
`
`Case IPR2020-01113
`Patent No. 7,473,685
`
`ms
`=
`YS
`a =
`"ET +
`srr
`Be “~ =
`oo
`Sle ong
`a Nm
`
`
`
`SSHACDWRENES3443030950
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`Case IPR2020-01113
`Patent 7,473,685
`
`Pursuant to 35 U.S.C. §§ 141(c) and 319 and 37 C.F.R. § 90.2(a), Patent
`
`Owner UPL NAInc. (“UPL NA”) hereby provides notice that it appeals to the
`
`United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision entered January 4, 2022, (Paper 30), and from all underlying orders,
`
`decisions, rulings, and opinions regarding U.S. Patent 7,473,685 (“the ’685 patent”)
`
`set forth in Inter Partes Review IPR2020-01113.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal include,
`
`but are not limitedto:
`
`e
`
`the Board’s determination that claims 1-4 of the ‘685 patent are
`
`unpatentable under 35 U.S.C. § 103 over Misselbrook!, CN ’5887, JP
`
`9023; and
`
`e
`
`all other issues decided adversely to UPL NAin any order, decision,
`
`ruling or opinion underlying or supporting the Final Written Decision.
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being filed
`
`with the Director of the United States Patent and Trademark Office, and a copy of
`
`this Notice is being concurrently filed with the Patent Trial and Appeal Board.
`
`In
`
`addition, a copy of this Notice and the required docketing fees are being filed with
`
`1U.S. Patent No. 6,387,388 B1.
`2 CN 1127588A.
`3 JP 9-315902.
`
`
`
`the Clerk’s Office for the United States Court of Appeals for the Federal Circuit via
`
`Case IPR2020-01113
`Patent 7,473,685
`
`CM/ECF.
`
`Dated: March 7, 2022
`
`Respectfully submitted,
`
`/Maximilienne Giannelli /
`By:
`Maximilienne Giannelli
`Reg. No. 57,286
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-6023
`Tel: 571-203-2432
`Fax: 571-203-2777
`
`Counselfor Patent Owner
`UPL NA INC.
`
`
`
`Case IPR2020-01113
`Patent 7,473,685
`
`CERTIFICATE OF SERVICE
`
`The undersigned herebycertifies that on March 7, 2022,a true and correct
`
`copy ofthe foregoing PETITIONER’S NOTICE OF APPEALwasserved on the
`
`Director of the United States Patent and Trademark Office, via hand delivery at the
`
`following address:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`The undersigned also hereby certifies that a true and correct copy ofthe
`
`foregoing PETITIONER’S NOTICE OF APPEALandthefiling fee, were filed
`
`on March7, 2022, with the Clerk’s Office of the United States Court of Appeals
`
`for the Federal Circuit, via CM/ECF.
`
`The undersignedalso hereby certifies that a true and correct copy ofthe
`
`foregoing PETITIONER’S NOTICE OF APPEALwasserved electronically on
`
`March7, 2022, on the counsel of record for Patent Ownerat the following email
`
`addresses:
`
`Dorothy P. Whelan
`Thad C. Kodish
`Jacqueline Tio
`FISH & RICHARDSONP.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR49321-0001IP1@fr.com
`
`
`
`Case IPR2020-01113
`Patent 7,473,685
`
`PTABInbound@fr.com
`whelan@fr.com
`tkodish@fr.com
`tio@fr.com
`
`By: /Valencia Daniel/
`Valencia Daniel
`Senior Litigation Legal Assistant
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`Trials@uspto.gov
`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
`
`I.
`
`INTRODUCTION
`
`Tide International (USA), Inc., (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”), seeking interpartes review of claims 14 and 7-12 of U.S. Patent
`No.7,473,685 B2 (Ex. 1001, “the ’685 patent”). Weinstitutedtrial on all of
`
`the groundsin the Petition. Paper 12 (“Institution Dec.”).
`Followinginstitution, UPL NA,Inc., (“Patent Owner’) filed a
`Response(Paper14, “Resp.”), Petitioner filed a Reply (Paper 21, “Reply”),
`and Patent Ownerfiled a Sur-Reply (Paper 23, “Sur-Reply”). We held a
`
`hearing on October 27, 2021, and a transcript is of record. Paper 29 (“Tr.”).
`Wehavejurisdiction pursuant to 35 U.S.C. § 6. This Decisionis 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 preponderanceof the evidence. See 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d) (2019).
`Uponconsiderationofthe full record, and for the reasons explained
`below, wefind Petitioner has shownby a preponderanceof the evidence that
`
`claims 1—4 are unpatentable, but has not shown by a preponderanceofthe
`
`evidence that claims 7—12 are unpatentable on the groundsin the Petition.
`
`Il.
`
`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 andthat “the remaining parties are defendantsin
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`co-pending litigation.” Jd. Patent Owneridentifiesitself, “UPL NA Inc.,”
`
`as the real party-in-interest. Paper 3, 1.
`
`B. Related Matter
`
`Petitioner and Patent Owneridentify 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 claimspriority 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. Accordingto
`the Specification, “[t]he formulation of acephate presently in use .
`.
`. poses
`the problemsof dust, low pourability, high transportation costs, high capital
`manufacturing investment, measurementdifficulties, difficulties in packing
`material disposal, handling problems, high risk of caking and others.” Jd. 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 advantageousthan prior
`granular products and exhibit[] certain very desirable characteristics.”
`
`Ex. 1001, 2:33-43.
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`The claimsof the 685 patent recite particular formulations of granule
`compositions “consisting of’ acephate andcertain recited ingredients in
`amounts falling within specified ranges. Ex. 1001, 7:44-8:65.
`
`D. Challenged Claims
`
`The Petition challenges claims 14 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 aninsecticidally active compoundofthe
`following formula:
`
`wherein R and R!individually are alkyl, alkynyl!or
`alkenyl group containing up to 6 carbon atoms, R?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 atomsor an alkynyl group containing
`3 to 18 carbon atoms, R? is hydrogen or an alkyl group
`containing 1 to 6 carbon atoms, and Y is oxygenor sulfur,
`wherein said insecticidal active compoundis 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/wastabilizer 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 andthat additionally consists
`
`
`
`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. §
`1-4. 7-12
`103(a)!
`Misselbrook,” CN °588,° JP
`
`
`"902,"
`
`
`103(a
`Misselbrook, Mayer,” 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 Ownerrelies on the declaration of David
`A. Rockstraw, Ph.D., P.E. (Ex. 2007);which was submitted with its
`
`Response.
`
`Il. 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
`
`! The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), includedrevisions 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.
`2U.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
`providedacertified translation (Ex. 1007), which wereferto andcite herein
`as “CN °588.”
`4 JP 9-315902, published Dec. 9, 1997 (Ex. 1008). Petitioner has provided a
`certified translation (Ex. 1009), which werefer to and cite herein as
`“JP ’902.”
`5 U.S. Patent No. 6,030,924, issued Feb. 29, 2000 (Ex. 1010) (“Mayer”).
`
`5
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016). This burden of persuasion nevershifts 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 andthe prior art are such that the subject
`
`matter, as a whole, would have been obviousat 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 priorart; (2) any differences between the claimed subject matter andthe
`priorart; (3) the level ofskill in the art; and (4) objective evidence of
`nonobviousness, if any.° See Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966).
`
`Subsumedwithin the Graham factors is the requirement that the
`
`skilled artisan would have had a reasonable expectation of success in
`
`combiningthe prior art references to achieve the claimed invention. Pfizer,
`Inc. y. 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.” Jn re O'Farrell, 853 F.2d 894, 903-4
`(Fed. Cir. 1988). Moreover, “[t]he combination of familiar elements
`according to known methodsis likely to be obvious whenit does no more
`than yield predictable results.” KSR, 550 U.S. at 416.“Ifa person of
`
`6 In this case, Patent Owner doesnot direct us to any objective indicia of
`nonobviousness.
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`ordinary skill can implementa predictable variation, § 103 likely barsits
`
`patentability.” Jd. at 417.
`Onthe other hand, a patent claim “is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, knownin 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 teachingsofthe 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 obviousnessanalysis, “it can be importantto identify a reason that
`would have promptedapersonofordinary skill in the relevantfield 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 insteadarticulate specific reasoning, based
`
`on evidence of record, to support the legal conclusion of obviousness.” Jn 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
`
`Webegin by assessing thelevel 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 priorart solutionsto those problems.
`See Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696-97 (Fed. Cir.
`1983). The priorart itself may also reflect an appropriate level of skill.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`Accordingto 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 4 18.
`Mr. Geigle additionally opines “a person who doesnotsatisfy the identified
`educational level maystill 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 ofordinary 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 understandingofparticles, granules, dispersion,
`wetting, foaming, and/or stability are important, and these fields
`overlap considerably.
`
`Id. 479.
`We adopt Patent Owner’s description of a POSITA becauseit reflects
`the experience of one familiar with the types of problemsandsolutions
`described in the ’685 patent andthe 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 underPetitioner’s description of
`
`a POSITA.
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`C. Claim Construction
`
`In aninter 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 oneof ordinary skill in the art and the prosecutionhistory
`
`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. Thedistrict court’s
`
`constructions are noted in the table below.
`
`District court’s construction
`Claim term
`an agent that assists with dispersion
`“dispersing agent”
`
`
`“antifoaming agent”|an agent that reduces or prevents the formation of
`
`foam
`an agent that promotes physical and chemical
`stabili
`
`
`
`
`
`
`
`
`
`
`“stabilizer”
`
`Id. at 19. At Patent Owner’s urging, the district court also determinedthat
`
`the preamble of claim 1 wasnotlimiting. Jd. at 10. Petitioner adopts these
`constructions, and further contendsthat 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 evidencedbythe testimony of
`
`Petitioner’s expert.
`
`“wetting agent”
`
`
`
`Petitioner’s proposed construction
`an agent that when addedto a liquid, reduces the
`interfacial tension between the liquid and the
`
`surface on which it is spreading
`
`
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`“binding agent”
`
`
`
`that particle
`
`an agent thatassists in the binding ofparticles
`together in a formulation
`an agent that enables a liquid to penetrate the
`pores of a granuleto allow forthe dissolution of
`
`
`“disintegrating agent”
`
`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 Owneralso agrees that the preamble of the
`
`challenged claimsis 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.
`
`Theparties have not identified any disputes regarding the construction
`
`of any term in the challenged claims. As notedin 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 assertedpriorart.” 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 ouranalysis.
`
`Wealso adoptthe parties’ position that the preamble of claims 1 and 7
`
`is not limiting beyond the term “granule.” Claims 1 and 7 eachrecite “[a]
`
`chemically stable dry flow, low compact, dust free soluble
`
`phosphoramidothioate granule consisting of” the set of ingredients recited in
`
`body ofthose claims. Ex. 1001, 7:44-45, 8:19-20. While the wherein
`
`clause describing the dimensionsof “said granule”relies on “granule”in the
`
`10
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`preamble for antecedent basis, none ofthe 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 preambleis limiting if it is “necessary to give live,
`meaning, andvitality 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 agreethat the transitional phrase “consisting of” in
`
`claims 1 and 7 creates a “very strong presumption that the claim elementis
`‘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 overcomethat presumption, nor do
`we see any basis for doing so based on the record before us. Accordingly,
`
`we construe the challenged claimsto 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))).
`
`11
`
`
`
`IPR2020-01113
`Patent 7,473,685 B2
`
`D. References Relied Upon
`
`i.
`
` Misselbrook
`
`Misselbrookis a patent issued on May 14, 2002,fromaseries 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 Misselbrookis
`
`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 lowereyeirritation.” Jd.; see also id. at 2:4—21
`(describing “numerous advantages”its soluble granule formulation provides
`
`overliquid formulations).
`
`While the examples in Misselbrookare 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. Jd. at 5:28-41. Misselbrook teaches “[t]he
`pesticidal compositionsof 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).” Jd. 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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`. 40 to
`.
`0.1 to 60% by weight of a water-soluble pesticide .
`99.9% by weight of a water-solublefiller; 0 to 50% by weight
`of a wetting surfactant; 0 to 50% by weightofa dispersing
`surfactant; 0 to 5% by weight of a defoaming agent(not to the
`exclusion of other ingredients).
`
`Ex. 1005, 3:44-51. Misselbrook teachesthat “[iJn addition to the pesticide,
`
`the water-solublefiller, 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
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`may be employedto dilute the pesticide.” Ex. 1005, 6:1-3. Thus, in
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`addition to sugars(e.g., “lactose, glucose, fructose, mannose”) Misselbrook
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`teaches that other “[a]ppropriate water-solublefillers” include “cellulose,
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`calcium phosphates(s), inorganic water-soluble salts, and thelike, and
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`mixtures thereof.” Jd. at 6:4—10.
`
`li.
`
`CN ’588
`
`CN 7588 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 °588is priorart to the 685 patent.
`
`CN ’588 teaches that acephate “‘is less stable in pesticide
`
`preparations” than other “organophosphorous compounds”and “may be
`
`decomposedviolently with the change of storage conditions, thereby unable
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`to effectively show activity all the time.” CN ’588, 4.’ Accordingto
`CN ’588,“condensed sodium phosphate and/or syntheticsilicic acid with
`alkylsilylated silanol groups on the surface can improvethe stability of
`
`acephate in dry preparations.” Jd.
`
`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 amountthat can stabilize acephate, generally
`0.01 to 50 (wt) %, preferably 1 to 20 (wt) %, more preferably 1
`to 10 (wt) %. The content of syntheticsilicic acid with
`alkylsilylated silanol groups on the surface is an amountthat
`can stabilize acephate, generally 1 to 99 (wt) %.
`
`CN ’588, 5. In addition to these ingredients, CN °588 teachesthatits
`
`compositions may contain a wide variety of “solid carriers” as well as
`
`“adjuvants” such as “surface active agents, coating agents, fragrance and
`
`knownstabilizers” in varying amounts. Jd. CN °588 further teachesthatits
`
`dry pesticide preparation may be in the form of a “water soluble granule.”
`
`Id. at 6.
`
`iii,
`
`JP ’902
`
`JP 902 is a Japanese patent publication published on December9,
`
`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 weagree,
`
`that JP 902 is prior art to the ’685 patent.
`
`7 As doesthe Petition, we cite to the page numbersofthe 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 causevery little dusting
`during use.” JP ’902, Abstr. JP 902 teachesthat a numberofpesticides,
`preferably acephate, can be formulated in such granules andthat the
`“amountof pesticide active ingredient is about from 10 to 95% by weight
`
`relative to the entire formulation” (/d. J] 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 assilica, surfactants, binders, colorants, stabilizers, and
`bulking agents. Jd. {§ 11-12. JP °902 discloses concentration ranges for
`someofthese types of ingredients. Jd. § 12. For instance, JP °902 teaches
`
`the amountof surfactant“is usually about 10% by weight or less and
`preferably about 5% by weightor less,” the amountof binder“is usually
`about 20% by weightor less and preferably about 10% by weightorless,”
`
`and the amountofstabilizers “is about 10% by weightor 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] 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 {ff 18, 24). Specifically, JP °902 describes these
`
`examplesas 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 ofsolid content, and the
`resulting mixture was prepared in the same manneras 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 WKsurfactant, 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 manneras
`Reference Example | to obtain Granules J containing 95%
`acephate.
`
`JP °902 Gf 18, 24.
`JP ’902 describes disintegration tests conducted on these and other
`
`example granules and disclosesthe 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 powdersofthe present invention have excellent disintegration
`in water, dispersibility in water, and caking properties.” Jd. 31. In
`addition, JP ’902 explains these “pesticide granules .
`.
`. prevented caking
`during long-term storage,” “had fewer harmful chemicaleffects,” 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
`
`Mayeris 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).
`
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`Pet. 2. Patent Owner doesnot dispute, and we agree, that Mayeris prior art
`
`to the °685 patent.
`Mayerteachesthat “[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 addedto waterin the spray tank.” /d. at 1:15-30. Thus,
`Mayerproposesto teach “solid formulations for crop protection with
`
`reduced tendency of foaming and dustiness.” Jd. at 1:31-34, 14:49-61
`
`(claim 1 reciting “[a] low dustiness water-dispersible granule formulation”).
`Mayerteachesthat the amountof “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, 4:46. In addition, Mayerteachesthat its formulations contain a
`
`“defoaming agent and/or foam breaking agent” in an amountof “0.05 to
`10% by weight.” Jd. 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 andfillers” in varying amounts. See id. at 4:43—58.
`
`Mayeralso 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 mmsieves”to obtain granules. Id.
`
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`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
`
`-
`
`Ownerdisputes this. See Resp. 13-37. As explained below,Petitioner has
`
`shownby a preponderanceofthe evidence that claims 14 are unpatentable,
`
`but has not shown by a preponderance of the evidence that claims 7-12
`
`would have been obvious overthese references.
`
`i.
`
`Claim 1
`
`Claim 1 recites a granule “consisting of” acephate and five other
`
`ingredients—adispersing 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. Jd. at 22-27, 29-30; Ex. 1003 9f 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
`contendsthat the overlapping ranges in Misselbrook and the other references
`
`present a primafacie case of obviousness for the corresponding ranges in
`
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`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)).
`Forthe “stabilizer” limitation, Petitioner directs us to Misselbrook’s
`
`teachingthat, 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
`regardingtheuseof stabilizers in acephate compositions. Id. (citing CN
`°588, 5; JP °902 Ff 11, 12, 20). In particular, Petitioner cites CN °588’s
`tea
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