UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`RICETEC, INC.
`Petitioner
`
`v.
`
`BASF SE,
`Patent Owner
`_______________
`
`Case: PGR2021-00114
`
`U.S. Patent 11,096,346
`
`Title: Method for Treating Post-Emergent Rice
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`RICETEC, INC.
`Petitioner
`
`v.
`
`BASF SE,
`Patent Owner
`_______________
`
`Case: PGR2021-00114
`
`U.S. Patent 11,096,346
`
`Title: Method for Treating Post-Emergent Rice
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`Petitioner RiceTec’s Reply to Patent Owner BASF’s Preliminary Response
`
`repeats the same faulty Section 112 legal analysis that pervades its PGR Petition.
`
`RiceTec demands a working example of the G2096S mutant in the priority PCT
`
`documents—the kind of disclosure that the Federal Circuit has repeatedly rejected
`
`as being necessary to demonstrate compliance with the enablement and written
`
`description requirements. Moreover, RiceTec seriously misstates the prosecution
`
`history of the Challenged Claims, whereas an accurate presentation of the record
`
`shows that the Examiner found that the “effective amounts” of the claimed FOP
`
`herbicides actually align or overlap with the prior art disclosures of corresponding
`
`numerical ranges of FOP concentrations—demonstrating that they were not new and
`
`critical ranges that were crucial to the patentability of the Challenged Claims. The
`
`Board allowed RiceTec to address the allegedly “unforeseeable” arguments in
`
`BASF’s POPR, but RiceTec offers no additional evidence or arguments in its Reply
`
`that it is more likely than not that the Challenged Claims are eligible for Post-Grant
`
`Review. The Board should deny institution.
`
`I.
`
`BASF Applied the Correct Legal Standards in Demonstrating
`that the Claims have Section 112 Support in the Priority PCTs
`RiceTec wrongly frames BASF’s “central argument” for priority as being
`
`improperly grounded in an obviousness standard. Reply, 1-2. Its basis for this
`
`assertion comes from a single phrase (in several iterations) in BASF’s Response: a
`
`POSITA would have a “reasonable expectation of success” in extrapolating the
`1
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`results of the I1781L working example to a G2096 mutant. See, e.g., POPR, 66. But
`
`a “reasonable expectation of success” is an important consideration under Federal
`
`Circuit precedent for enablement and that is precisely the context that BASF relies
`
`on here. In In re Wright, the court held that enablemen can be satisfied if the results
`
`of a working example “could be extrapolated with a reasonable expectation of
`
`success” to embodiments for which there are no disclosed working examples. 999
`
`F.2d 1557, 1564 (Fed. Cir. 1993). That BASF intended the formulation “reasonable
`
`expectation of success” as being operative for enablement (and not implicating an
`
`obviousness standard) is further demonstrated by the enablement case law that
`
`BASF relies on for the proposition that a G2096S working example is not required
`
`to satisfy Section 112. POPR, 67 (citing Allergan, Alcon and Strahilevitz).1
`
`RiceTec treats the red herring of obviousness as an occasion to recapitulate
`
`erroneous arguments regarding Section 112 and to shoehorn in new ones. The Reply
`
`asserts that the priority PCTs fail to satisfy Section 112 because they do not disclose
`
`a G2096S mutation “that actually causes the claimed effective tolerance levels.”
`
`
`1 RiceTec also asserts that a POSITA would not have a reasonable expectation of
`
`success because the claims require that the mutation be “produced randomly” and
`
`that BASF ignores this limitation. Reply, 2. BASF did address this issue in detail.
`
`POPR, 28-36, 54-63.
`
`2
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`Reply, 3 (emphasis added); see also Pet., 34-35 (the BASF inventors had not
`
`“actually possessed rice plants from seed that contains the G2096S mutation such
`
`that the rice plant is tolerant to quizalofop at the claimed levels and field conditions.”
`
`(emphasis added)). As already addressed in the POPR (at 67-68), this is not the law
`
`under the enablement standard, nor is it the law for written description. In fact, the
`
`Federal Circuit decision in Nuvo Pharm. v. Dr. Reddy's Labs. that RiceTec relies on
`
`held that adequate written description “does not require experimental data…[and]
`
`the invention does not actually have to be reduced to practice.” 923 F.3d 1368, 1380
`
`(Fed. Cir. 2019); see also Allergan, Inc. v. Sandoz Inc., 796 F.3d 1293, 1309 (Fed.
`
`Cir. 2015) (“no rigid requirement that the disclosure contain ‘either examples or an
`
`actual reduction to practice’” to satisfy written description).
`
`Moreover, RiceTec’s assertion that the Federal Circuit has “‘expressly
`
`rejected’ an ipsis verbis approach of finding written description” (Reply, 3-4) is
`
`simply wrong—the cases RiceTec relies on are quoted out of context or are
`
`distinguishable from the present facts.2 In particular, in Enzo Biochem, Inc. v. Gen-
`
`Probe Inc., the claimed composition of matter was defined only by its function
`
`without regard to any structure. 323 F.3d 956, 968. In rejecting ipsis verbis support
`
`
`2 RiceTec does not dispute that there is ipsis verbis support in the PCT—as laid out
`
`in Section VIII in the POPR—for every limitation of every Challenged Claim.
`
`3
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`for the claims, the court held that the “appearance of mere indistinct words” in the
`
`specification corresponding to the functional claim language does not “necessarily
`
`satisfy the description requirement.” Id. Here, to the contrary, the claims recite a
`
`specific structure, the G2096S mutation—and not some abstracted function of an
`
`undisclosed structure—which is not only expressly disclosed in Mankin, but also as
`
`a most preferred embodiment. Thus, far from “the appearance of mere indistinct
`
`words” as RiceTec claims, Mankin provides sufficient disclosures from which a
`
`POSITA would have understood the inventors’ possession of the G2096S mutant.
`
`RiceTec’s errors infect much of its analysis and dictate that institution be
`
`denied. These errors are not rectified by RiceTec’s reliance (Reply, 4) on Novozymes
`
`A/S v. DuPont Nutrition Biosciences. The patent specification in Novozymes
`
`contained no working examples at all that supported the claimed function and
`
`nothing more than a generic structure that purportedly corresponded to the claimed
`
`function; the only disclosed embodiment with experimental data had the opposite
`
`function than that required by the claims. 723 F.3d at 1348-49. Under these facts,
`
`the Federal Circuit held that the patentee sought “to derive written description
`
`support from an amalgam of disclosures plucked selectively from the priority
`
`application.” Id. at 1349. There is no such hindsight reconstruction required in the
`
`priority PCTs that BASF relies on: it is undisputed that there is at least one
`
`embodiment (the I1781L mutant) with experimental data supporting the claimed
`
`4
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`function and that the disclosed G2096S mutant is a specific structure (and not a
`
`generic one) that was predicted to have the same function as the I1781L mutation.
`
`In other words, these disclosures in the priority PCTs provide written description
`
`support for the claimed invention as an “integrated whole.”
`
`Given the facts of the case and applying the correct legal analysis here, it is
`
`not surprising that RiceTec does not address in its Reply, even briefly (as permitted
`
`by the Board on the conference call), BASF’s reliance on the Examiner’s assessment
`
`of Mankin during prosecution of the RiceTec patent application. There, the
`
`Examiner determined that Mankin describes and enables the G2096S mutant, even
`
`in the absence of a working example: “Regarding the description (or enablement),
`
`Mankin has provided sufficient description of the structure and function relationship
`
`of G2096S in terms of herbicide tolerance, and enabling guidance of making (such
`
`as through random and directed mutagenesis, or genetic modification) and using the
`
`claimed rice plant.” POPR at 15 (quoting EX2004 at 130).
`
`II. BASF Accurately Described the File History
`Regarding the Claimed Numerical Ranges
`Accusing BASF of false statements, RiceTec argues that the Challenged
`
`Claims were allowed because the effective amount ranges of herbicides were added
`
`to overcome the prior art. Reply, 5-6. This is the false statement. The numerical
`
`ranges were not the Examiner’s basis for allowing the Challenged Claims. Reply,
`
`5-6. In fact, the Examiner specifically noted the prior art disclosed ranges
`5
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`encompassed within the claimed effective amounts. For example, the Maneechote
`
`prior art disclosed 25-50 g/HA of quizalofop, and the claims recite quizalofop in the
`
`range of 14-140 g/HA — this range encompasses the prior art. Therefore, it is
`
`incorrect that the ranges were added to distinguish the prior art. Notably, on August
`
`24, 2020, the Examiner recognized this exact point: “Maneechote teaches applying
`
`quizalofop herbicides to rice field in an effective amount to control (sprangletop)
`
`weeds, and that the amount of 30 g AI/ha quizalofop-P is effective in killing
`
`sprangletop grass . . . . Thus 30 g AI/ha quizalofop-P is an effective amount.”
`
`EX1046-Part 3, 919-920 (emphasis added).
`
`The Examiner’s observation aligns with a POSITA’s understanding and
`
`BASF’s arguments that the effective amount ranges of herbicides include those well-
`
`known in the art and indicated on the labels and were not new and critical ranges
`
`that were crucial to the patentability of the Challenged Claims. POPR, 73-75. As
`
`further acknowledged by the Examiner, “none of the prior art teach or suggest the
`
`rice ACCase mutant would provide the claimed levels of tolerance … with less than
`
`10% injury to the treated rice plant in field application post-emergence.” EX1047-
`
`Part 3, 920 (emphasis added). Thus, it was the “herbicide causes less than 10%
`
`injury to the rice plant in field applications” limitation – not the effective amount
`
`ranges of herbicides– that distinguished the claims from the prior art and led to
`
`allowance. EX1047-Part 3, 914-921, 1007.
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`Respectfully submitted,
`
`
`
`
`
`
`/Richard J. McCormick/
`Richard J. McCormick (Reg. No. 55,902)
`Lisa M. Ferri (pro hac vice)
`
`
`Ying-Zi Yang (Reg. No. 52,381)
`Mayer Brown LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: (212) 506-2500
`rmccormick@mayerbrown.com
`lferri@mayerbrown.com
`yyang@mayerbrown.com
`
`Amanda Streff Bonner (Reg. No. 65,224)
`71 South Wacker Dr.
`Chicago, IL 60606-4637
`Tel: (312) 782-0600
`asbonner@mayerbrown.com
`
`Attorneys for Patent Owner BASF SE
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: January 18, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`
`
`
`
`
` PGR2021-00114
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNER’S SUR-REPLY was served on January 18, 2022, via email pursuant to
`
`consent from Petitioner to electronic service by email, to counsel for Patent Owner
`
`at the following email addresses:
`
`gnorton@foxrothschild.com
`rmiller@foxrothschild.com
`HSuh@foxrothschild.com
`tcooper@foxrothschild.com
`
`Gerard Norton
`Ryan Miller
`Howard Suh
`Tanya Cooper
`FOX ROTHSCHILD LLP
`Princeton Pike Corporate Center
`997 Lenox Drive
`Lawrenceville NJ 08648-2311
`
`
`
`Dated: January 18, 2022
`
`
`
`
`/Richard J. McCormick/
`Richard J. McCormick (Reg. No. 55,902)
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
