Deere & Company

Patent Trials and Appeals Board

Jan 11, 2021

IPR2019-01054 (P.T.A.B. Jan. 11, 2021)

Trials@uspto.gov Paper No. 90
571-272-7822 Entered: January 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
PRECISION PLANTING, LLC and AGCO CORP.,
Petitioner,
v.
DEERE & COMPANY,
Patent Owner.
_______________

IPR2019-01054
Patent 10,004,173 B2
_______________

Before BARRY L. GROSSMAN, JAMES A. TARTAL and
TIMOTHY J. GOODSON, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
Denying in Part and Dismissing in Part Petitioner’s Motion to Exclude
Dismissing Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a)

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We have jurisdiction to conduct this inter partes review
under 35 U.S.C. § 6. This Final Written Decision is issued pursuant
to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2018). For the reasons
discussed below, we determine that a preponderance of the evidence fails
to show that any of claims 1‒4, 6–9, or 11–20 (the “Challenged Claims”) of
U.S. Patent No. 10,004, 173 B2 (Ex. 1001, “the ’173 patent”) are
unpatentable.
I. INTRODUCTION
A. Summary of Procedural History
Precision Planting, LLC and AGCO Corp. (collectively, “Petitioner”)1
filed a Petition (Paper 4, “Pet.”) requesting inter partes review of the
Challenged Claims. We instituted inter partes review of the Challenged
Claims on the single ground of unpatentability asserted in the Petition.
Paper 20. Deere & Company (“Patent Owner”) filed a Patent Owner
Response. Paper 36 (“PO Resp.”). Petitioner filed a Reply to the Patent
Owner Response. Papers 58 (“Reply”) (under seal), 59 (publically
accessible with redactions). Patent Owner filed a Sur-reply to Petitioner’s
Reply. Paper 64 (“Sur-reply”).
Petitioner bears the burden of proving unpatentability of the
Challenged Claims by a preponderance of the evidence, and the burden of
persuasion never shifts to Patent Owner. See 35 U.S.C. § 316(e) (2012);
37 C.F.R. § 42.1(d) (2017); Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Oral argument was held and a
transcript of the hearing appears in the record. Paper 89 (“Tr.”).

1 Petitioner identifies Monsanto Co. and Bayer AG as additional real parties
in interest. Pet. 6.
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Additionally, Petitioner and Patent Owner each filed a motion to exclude
opposed by the other, which we address below in Section II.
B. Related Proceedings
The ’173 patent is a subject of Deere & Company v. AGCO
Corporation and Precision Planting LLC, Civil Action No. 1:18-cv-00827-
CFC (D. Del.). See Pet. 6; Paper 5, 1; Ex. 2005, 1.2 Petitioner also
identifies the following proceedings at the Board as related matters:
Case No. Challenged Patent
IPR2019-01044 U.S. Patent No. 8,813,663
IPR2019-01046 U.S. Patent No. 9,480,199
IPR2019-01047 U.S. Patent No. 9,510,502
IPR2019-01048 U.S. Patent No. 9,686,906
IPR2019-01050 U.S. Patent No. 9,807,922
IPR2019-01051 U.S. Patent No. 9,807,924
IPR2019-01052 U.S. Patent No. 9,820,429
IPR2019-01053 U.S. Patent No. 9,861,031
IPR2019-01055 U.S. Patent No. 9,699,955
Pet. 6.
C. The ’173 Patent
The ’173 patent, titled “Seeding Machine with Seed Delivery
System,” issued on June 26, 2018, from an application filed on August 10,
2017. Ex. 1001, codes (22), (45), (54). The ’173 patent states it is a

2 An action by Patent Owner asserting the ’173 patent against Precision
Planting LLC in Deere & Company v. Precision Planting LLC, Civil Action
No. 1:18-cv-00828-CFC was consolidated with the co-pending District of
Delaware case against AGCO Corporation. See Ex. 2005.
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continuation of Application No. 14/616,877, filed on February 9, 2015, a
continuation of Application No. 14/504,801, filed on October 2, 2014, and a
continuation of Application No. 12/364,010, filed on February 2, 2009. Id.
at code (63). The ’173 patent “relates to a seeding machine having a seed
metering system and a seed delivery system for delivering seed from the
meter to the ground.” Id. at 1:18–20.
The ’173 patent explains, as background of the invention, that
the “seed metering system receives the seeds in a bulk manner from the seed
hopper carried by the planter frame or by the row unit,” and that the “seeds
are singulated and discharged at a predetermined rate to the seed placement
or delivery system.” Id. at 1:42–55. The ’173 patent further describes the
“most common seed delivery system” as a “gravity drop system”
whereby “singulated seeds from the seed metering system merely drop into
the seed tube and fall via gravitational force from a discharge end thereof
into the seed trench.” Id. at 1:56–62. Although the seed tube in prior
systems may have a “rearward curvature to reduce bouncing of the seed as it
strikes the bottom of the seed trench and to impart a horizontal velocity to
the seed in order to reduce the relative velocity between the seed and the
ground,” according to the ’173 patent “differences in how individual seeds
exit the metering system and drop through the seed tube” cause undesirable
variation in seed spacing. Id. at 1:62–2:2.
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The ’173 patent describes that its seed delivery system reduces seed
spacing variability by capturing the seed from the seed meter, moving the
seed down to a lower discharge point, and then accelerating the seed
“rearward to a horizontal velocity approximately equal to the forward travel
speed of the seeding machine such that the seed, when discharged, has a low
or zero horizontal velocity relative to the ground.” Id. at 2:28–43.
Figures 2 and 3 of the ’173 patent are reproduced below.

Figure 2 illustrates a side view of row unit 16 of a seeding machine,
including seed hopper 24, seed meter 26, and seed delivery system 28
(shown in more detail in Figure 3). Id. at 2:49–52, 3:16–29. Seed stored in
seed hopper 24 is provided to seed meter 26 and carried by delivery
system 28 into a planting furrow or trench first formed by furrow openers 30
and then closed over the seed by closing wheels 34. Id. at 3:23–30.
Figure 3 illustrates an enlarged side view of seed delivery system 28,
including housing 48 adjacent to seed disk 50. Ex. 1001, 2:51–52, 3:42–53.
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Seed disk 50 is generally flat with a plurality of apertures 52 that collect
seeds 56 from a seed pool, which “adhere to the disk by air pressure
differential on the opposite sides of the disk 50 in a known manner.” Id.
at 3:45–49. Seed from seed disk 50 is admitted to seed delivery housing 48
through upper opening 58. Id. at 3:56–57.
Within housing 48, belt 64 with bristles 70 is supported by
pulleys 60, 62, one of which is a drive pulley. Id. at 3:58–61. In operation,
belt 64 rotates counterclockwise around the pulleys, causing distal ends 74
of bristles 70 to separate from one another as the belt curves around the
pulleys. Id. at 4:19–24. Loading wheel 86 adjacent upper opening 58 is
positioned such that the path of the seeds on disk 50 brings the seeds into
nip 88 formed between the loading wheel and distal ends 74 of bristles 70.
Id. at 4:5–10. As the path of belt 64 around the pulley ends, the bristle ends
close upon themselves and capture the seeds. Id. at 4:32–36. Side wall 53
of housing 48 works together with bristles 70 to hold the seed as it is moved
to ramp 84 near lower opening 78 from which the seed is discharged into the
seed trench. Id. at 3:66–4:4, 4:36–40, 4:45–48. The ’173 patent explains as
follows:
As a result of the long bristles and the seed loading point being
at the end of the curved path of the brush around the pulley 60
results in the seeds being loaded into the belt while the bristles
have slowed down in speed. The bristle speed at loading is thus
slower than the bristle speed at the discharge opening as the belt
travels around the pulley 62. This allows in the seed to be loaded
into the belt at a relatively lower speed while the seed is
discharged at the lower end at a desired higher speed.
Id. at 4:55–64. The ’173 patent further states that “[w]hile brush bristles are
the preferred embodiment . . . other material types can be used to grip the
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seed such as a foam pad, expanded foam pad, mesh pad or fiber pad.”
Id. at 7:46–50.
D. Illustrative Claims
Challenged claims 1 and 17 are independent, challenged claims 2–4,
6–9, and 11–16 depend from claim 1, and claims 18–20 depend from
claim 17. Claims 1 and 17, reproduced below, are illustrative of the claimed
subject matter.
1. A seeding machine, comprising:
a seed metering system;
a seed transfer device positioned adjacent to the seed metering
system;
a seed delivery system comprising a housing having a first
opening and a second opening, the first opening located
proximal to the seed transfer device through which seed is
transferred from the seed metering system into the seed
delivery system, and the second opening located distal of the
seed transfer device through which seed is discharged from
the seed delivery system; and
an endless member of the seed delivery system movable within
the housing to receive the seed at the first opening and
transport the seed to the second opening;
wherein the seed transfer device transfers seed from the seed
metering system to the seed delivery system through the first
opening of the seed delivery system.
Ex. 1001 at 7:57–8:6.
17. A row unit of a planter configured to move in a travel
direction while planting seed, comprising:
a seed hopper for holding a plurality of seeds;
a seed metering system including a seed metering device for
receiving seed from the seed hopper;
a seed delivery system comprising a housing defining a first
opening and a second opening, the first opening located
proximal to the seed metering system through which seed is
transferred into the seed delivery system, and the second
opening located distal of the seed metering system through
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which seed is discharged from the seed delivery system for
planting in a furrow;
an endless member of the seed delivery system movable within
the housing to receive the seed at the first opening and
transport the seed to the second opening; and
a seed transfer device disposed adjacent to the first opening for
transferring seed from the seed metering system to the seed
delivery system through the first opening of the seed
delivery system.
Id. at 9:1–9:23.
E. Asserted Ground of Unpatentability
Petitioner contends that the Challenged Claims would have been
obvious under 35 U.S.C. § 103 over the combination of Hedderwick,3
Koning,4 and Benac.5 Pet. 8–9. Petitioner supports its challenge with expert
testimony by Douglas S. Prairie. Ex. 1002 (Declaration); Ex. 1135 (Reply
Declaration). Mr. Prairie earned a B.S. in Agricultural Engineering, and an
M.S. in Mechanical Engineering. Ex. 1002 ¶ 2. He is a registered
Professional Engineer in Idaho. Id. He also has approximately twenty years
of experience in the agricultural and mechanical engineering industry,
working primarily on the development of precision seeding technology.
Id. ¶¶ 3–11. Mr. Prairie is an Instructor in the Agriculture and Biosystems
Engineering Department at South Dakota State University. Id. ¶ 13. He is a
named inventor on multiple U.S. patents and applications relating to seeding
and planting technology. Id. ¶ 14.

3 GB 2,057,835 A, published April 8, 1981 (Ex. 1003).
4 US 4,193,523, issued March 18, 1980 (Ex. 1004).
5 FR 2,414,288, published August 10, 1979 (Ex. 1005 (English translation of
French application (Ex. 1006))).
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In opposition, Patent Owner relies on the testimony of Dr. James L.
Glancey. Ex. 2203. Dr. Glancey earned degrees in Agricultural and
Biological Engineering, culminating in a Doctor of Philosophy in
Engineering with an emphasis in Mechanical Engineering and
concentrations in Civil Engineering, Agricultural and Biological
Engineering, and Applied Mathematics. Id. ¶ 3. Currently, he holds a dual
appointment at the University of Delaware as a Professor of Machine Design
and Development in Mechanical Engineering and a Professor in the College
of Agriculture and Natural Resources. Id. ¶ 4. He is an inventor on one
U.S. patent related to harvesting, and three U.S. patents related to the
composite material manufacturing and automation. Id. ¶ 6. Dr. Glancey is a
Registered Professional Engineer in Delaware. Id. ¶ 11.
Petitioner argues that Dr. Glancey’s testimony is unreliable because
he is “a professional expert witness” who has served as an expert in 144
matters regarding a range of technologies, but has never served as an expert
in seed planting technologies; because his opinions have been excluded by
courts on three occasions; because he holds four patents that do not relate to
seed planting technologies; because he allegedly “conceded that he does not
understand what the test for obviousness of a patent was in 2003 or
in 2009;” and because his answers at his deposition were allegedly
inadequate in various ways. Reply 2–4.
Patent Owner responds that Dr. Glancey is a mechanical engineering
professor and registered professional engineer who has “extensive personal
and professional experience with farming and seed planting equipment,” and
that the three instances in which his testimony was excluded were personal
injury matters unrelated to seed-planting equipment. Sur-reply 33–35.
Patent Owner, in turn, attacks Mr. Prairie as having “never been qualified as
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an expert,” for performing “no engineering analysis,” and because his
answers at his deposition were allegedly inadequate in various ways. Id.
at 34–35.
Petitioner did not move to exclude the declaration testimony of
Dr. Glancey and Patent Owner did not move to exclude the declaration
testimony of Mr. Prairie. We have considered the arguments of the parties
in assessing the weight to be given to each declarant’s testimony.6
II. MOTIONS TO EXCLUDE
The party moving to exclude evidence bears the burden of proving
that it is entitled to the relief requested—namely, that the material sought to
be excluded is inadmissible under the Federal Rules of Evidence (“FRE”).
See 37 C.F.R. §§ 42.20(c), 42.62(a) (2019). In an inter partes review in
which we both decide admissibility and serve as the fact-finder, we are well-
positioned to determine and assign appropriate weight to evidence presented,
and we recognize that a complete record of the evidence is preferable to
facilitate public access as well as appellate review. See, e.g., Sony Computer
Entm’t Am. LLC v. Game Controller Tech. LLC, IPR2013-00634,
Paper 32 at 31 (PTAB Apr. 14, 2015); see also Gnosis S.p.A. v. S. Alabama
Med. Sci. Found., IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014)
(citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941)
(“If the record on review contains not only all evidence which was clearly
admissible, but also all evidence of doubtful admissibility, the court which is
called upon to review the case can usually make an end of it, whereas if

6 The record also includes testimony we considered from several witnesses
that we do not rely upon on topics relating to objective indicia of
nonobviousness or other matters. See Exs. 2025, 2031–2033.

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evidence was excluded which that court regards as having been admissible, a
new trial or rehearing cannot be avoided.”)). For the reasons provided
below, we deny-in-part and dismiss-in-part Petitioner’s Motion to Exclude
and dismiss Patent Owner’s Motion to Exclude.
A. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibits 2141–2143, 2186, 2187,
and 2198 based on FRE 901 as lacking authentication, portions of
Dr. Glancey’s declaration that rely on those exhibits, portions of
Dr. Glancey’s deposition testimony purportedly “resulting from leading
questions,” and Exhibits 2249 and 2257 as “untimely.” Paper 72, 1; see also
Paper 82 (Petitioner’s Reply in support of its motion to exclude). Patent
Owner opposes Petitioner’s Motion to Exclude. Paper 73.
1. Exhibits 2141–2143, 2186, 2187, and 2198, and portions of
Dr. Glancey’s Declaration Relying on those Exhibits
Exhibits 2141–2143, 2186, 2187, and 2198 are videos and
photographs of brush belts. Petitioner argues that these videos and
photographs are unreliable and should be excluded, because Patent Owner
has not provided sufficient information about the brush belt that is the
subject of the videos and photographs and the circumstances in which the
videos and photographs were made. Paper 72, 4–9; Paper 82, 1–5.
Petitioner further argues that Dr. Glancey’s testimony does not authenticate
the videos because he did not create them and was unable to answer certain
questions about the brush belts’ characteristics during his deposition.
Paper 72, 9–10. Petitioner also argues that certain paragraphs of
Dr. Glancey’s declaration should be excluded because they “purport to rely
on the unauthenticated exhibits.” Id. at 10 (citing Ex. 2203 ¶¶ 165–167, 169,
170, 222–224).
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Petitioner’s arguments do not persuade us that Patent Owner’s
showing is insufficient under FRE 901. A proponent’s “burden of proof for
authentication is slight.” Lexington Insurance Co. v. Western Pennsylvania
Hospital, 423 F.3d 318, 328 (3rd Cir. 2015). Under FRE 901, the proponent
must make a showing “sufficient to support a finding that the item is what
the proponent claims it is.” Fed. R. Evid. 901(a); see also United States v.
Coohey, 11 F.3d 97, 99 (8th Cir. 1993) (“To meet this standard, the
proponent need only demonstrate a rational basis for its claim that the
evidence is what the proponent asserts it to be.”). Once that threshold is
satisfied, “the evidence goes to the [fact-finder] and it is the [fact-finder]
who will ultimately determine the authenticity of the evidence.”
Threadgill v. Armstrong World Indus., Inc., 928 F.2d 1366, 1375
(3rd Cir. 1991). Here, Dr. Glancey’s testimony is adequate to support a
finding that these videos and photographs are what Patent Owner claims
they are, i.e., brush belts being operated in various ways. See Ex. 1114,
133:14–134:2; Ex. 2203 ¶¶ 163–170, 222–225. Petitioner’s criticisms of the
videos and photographs go to the weight that should be assigned to the
videos and photographs, and Dr. Glancey’s testimony about them, and we
have considered Petitioner’s arguments in assessing the weight those
materials should carry. Thus, Petitioner’s motion to exclude Exhibits 2141–
2143, 2186, 2187, and 2198, and Dr. Glancey’s testimony about those
exhibits is denied.
2. Portions of Dr. Glancey’s Deposition Testimony
Petitioner argues that Dr. Glancey’s testimony in response to leading
questions should be excluded. Paper 72, 12–13; Paper 82, 5. The portions
of Dr. Glancey’s deposition testimony that Petitioner argues should be
excluded are his responses during redirect at Exhibit 1115, pages 267–68.
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See id. We do not rely on those portions of Dr. Glancey’s testimony, so we
dismiss as moot this aspect of Petitioner’s motion.
3. Exhibits 2249 and 2257
Petitioner argues that Exhibits 2249 and 2257 were submitted by
Patent Owner with its Sur-reply and should be excluded as untimely.
Paper 72, 13–14; Paper 82, 5. Because we do not rely on either of those
exhibits in our analysis, we dismiss as moot Petitioner’s motion to exclude
them.
4. Conclusion
For the reasons provided above, Petitioner’s motion to exclude is
denied as to Exhibits 2141–2143, 2186, 2187, and 2198 and the portions of
Dr. Glancey’s declaration that rely on those exhibits, and dismissed as moot
as to the testimony of Dr. Glancey in response to allegedly leading questions
and as to Exhibits 2249 and 2257.
B. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibits 1049, 1050, 1052, 1054,
1068, 1073, 1077, 1078, 1086, 1087, 1089, 1091, 1092, 1103, 1104, 1113–
15, 1123, 1131–33, and 1135. Papers 69 (under seal), 70 (publically
accessible with redactions); see also Papers 79 (under seal), 80 (publically
accessible with redactions) (Patent Owner’s Reply in support of its motion to
exclude). Petitioner opposes Patent Owner’s Motion to Exclude. Papers 75
(under seal), 76 (publically accessible with redactions).
Exhibits 1049, 1050, 1052, 1054, 1068, 1131, 1132, 1073, 1077,
1103, and 1104, as well as the portions of Exhibit 1135 Patent Owner seeks
to exclude, all relate to arguments concerning objective indicia of
nonobviousness, which is an issue we do not reach. See Paper 69, 1–15;
Paper 79, 1–5. Exhibits 1078, 1086, 1087, and 1123 are documents
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introduced during depositions by Petitioner not otherwise cited in briefing.
Paper 69, 8. Exhibits 1089, 1091, and 1092 relate to court orders or
opinions purportedly excluding Dr. Glancey’s opinions as unreliable in other
proceedings concerning different technologies than at issue in this case.
Paper 69, 9; Paper 79, 3. Exhibits 1113, 1114, 1115, and 1133 are
transcripts from Dr. Glancey’s depositions. However, Patent Owner does
not actually seek exclusion of those exhibits, only consideration of errata
sheets that Dr. Glancey prepared for those transcripts, which Patent Owner
filed as Exhibits 2266–2269. Paper 69, 10. Because we do not rely on the
materials that Patent Owner seeks to exclude, and also because we would
ultimately find for Patent Owner even without excluding these exhibits, we
dismiss as moot Patent Owner’s motion to exclude.
III. ANALYSIS
A. Legal Standard for Obviousness
In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme Court
set out a framework for assessing obviousness under § 1037 that requires
consideration of four factors: (1) the “level of ordinary skill in the pertinent
art,” (2) the “scope and content of the prior art,” (3) the “differences between
the prior art and the claims at issue,” and (4) “secondary considerations” of
nonobviousness such as “commercial success, long felt but unsolved needs,
failure of others, etc.” Id. at 17–18; KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007). When a combination of references together discloses all of

7 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
that issued as the ’173 patent states that it is a continuation of an application
filed before March 16, 2013, we apply the pre-AIA versions of these
statutes. See 35 U.S.C. § 100(i).
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the limitations in a claim, the Board “must determine whether there was
an ‘apparent reason to combine the known elements in the fashion claimed
by the patent at issue,’ and whether a person of skill in the art at the time of
the invention would have had a ‘reasonable expectation of success’ in
pursuing that combination.” Los Angeles Biomedical Research Institute v.
Eli Lilly & Co., 849 F.3d 1049, 1064 (Fed. Cir. 2017) (quoting KSR, 550
U.S. at 406 and Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc.,
825 F.3d 1360, 1373 (Fed. Cir. 2016) (citations omitted).
B. Level of Ordinary Skill in the Art
Factors pertinent to a determination of the level of ordinary skill in the
art include: (1) educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology;
and (6) educational level of workers active in the field. Envt’l.
Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983)
(citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707
F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present
in every case, and one or more of these or other factors may predominate in
a particular case. Id. Moreover, these factors are not exhaustive but are
merely a guide to determining the level of ordinary skill in the art. Daiichi
Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In
determining a level of ordinary skill, we also may look to the prior art,
which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
Additionally, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421.
Petitioner asserts that a person of ordinary skill in the art “would have
had either: (1) a bachelor’s degree plus four years of experience in
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mechanical engineering, agricultural engineering, or a related field; or (2) a
master’s degree plus two years of experience in mechanical engineering,
agricultural engineering, or a related field.” Pet. 39 (citing Ex. 1002 ¶¶ 21,
22). Mr. Prairie opines this same level of ordinary skill, but adds the
additional sentence that such an “ordinary artisan would have been familiar
with the mechanics and design of agricultural planters.” Ex. 1002 ¶ 22.
Mr. Prairie does not disclose the underlying facts or data on which his
opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
disclose the underlying facts or data on which the opinion is based is entitled
to little or no weight.”); TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352,
1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as
substantial evidence.”) (citations omitted).
According to Patent Owner, a person of ordinary skill in the art would
have had an undergraduate degree in mechanical engineering, agricultural
engineering, or closely related field, and “about two years of experience
designing agricultural products or related machinery in industry or
academia,” or, alternatively, “about five years of experience designing
agricultural products or related machinery, without a four-year
undergraduate engineering degree.” PO Resp. 2–3 (citing Ex. 2203 ¶¶ 47–
52). Patent Owner adds that “[s]uch a person would typically have
experience designing projects on a component or small sub-system-level
rather than redesigning a larger planting system.” Id.
In support of Patent Owner, Dr. Glancey states that Petitioner’s
proposed level of ordinary skill is “too restrictive and sets the level of
ordinary skill in the art of the ’173 [p]atent too high.” Ex. 2203 ¶ 49.
Dr. Glancey provided the following reasons: (1) undergraduate engineering
curriculums in place in February 2009 focused on design at the freshman
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level and continued this focus throughout the student’s degree program,
thus avoiding the need for significant post-graduate design
experience; (2) masters programs in engineering focus on research for
publication in peer-reviewed journals, rather than designing products for
industry; and (3) engineering technicians, who may not have formal
engineering degrees, “often have years’ worth of relevant hands-on
experience” that corresponds to a person of ordinary skill in the art.
Id. ¶¶ 50–52.
Based on the evidence and arguments of record prior art, we
determine that a person of ordinary skill in the art would have had an
undergraduate degree in mechanical engineering, agricultural engineering, or
similar field, and two years of experience designing agricultural products or
related machinery, or five years of experience designing agricultural
products or related machinery, without a four-year undergraduate
engineering degree. To the extent there is any inconsistency, we credit the
testimony of Dr. Glancey over Mr. Prairie because Dr. Glancey’s opinion
was more supported with more persuasive analysis and reasoning, as
summarized above. However, we note that the differences between the
parties’ proposed definition of the level of ordinary skill in the art are not
determinative. The analysis below would be materially the same under
either party’s proposed definition.
C. Claim Construction
“In an inter partes review proceeding, a claim of a patent . . . shall be
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).” See Changes to
the Claim Construction Standard for Interpreting Claims in Trial
Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
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(Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)) (amending
37 C.F.R. § 42.100(b) effective November 13, 2018). That standard
“includ[es] 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.” Id.; see also
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
Petitioner asserts that the claim terms “seed transfer device,” “seed
metering system,” and “seed metering device” may each be construed to be
means-plus-function claim terms and, therefore, proposes constructions.
Pet. 36–39. However, Petitioner further asserts that “Benac discloses a seed
transfer device under any construction,” and that “under any construction,”
Hedderwick “discloses a seed metering system” and “discloses a seed
metering device.” Id. at 36 n.8, 37 n.9, 39 n.10. Petitioner also provides a
lengthy footnote providing an analysis of the claim term “endless member.”
See id. at 32 n.7.
Patent Owner states that in the Delaware Case the court construed
“endless member” to mean “a continuous conveyor forming a loop, such as a
belt or a chain,” and construed “seed delivery apparatus” to mean an
“apparatus that removes seed from the seed meter by capturing the seed and
then delivers it to a discharge position.” PO Resp. 3 (citing Ex. 1038).
Patent Owner also argues that, because Petitioner contends the asserted
references disclose the terms “seed transfer device,” “seed metering system,”
and “seed metering device” under any construction, an express construction
is not necessary. PO Resp. 3–4.
We determine that no terms require express construction to resolve the
parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in
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controversy need to be construed and “only to the extent necessary to
resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
Techs. in the context of an inter partes review).
D. Scope and Content of the Prior Art
1. Summary of Hedderwick
Hedderwick, titled “Precision Seeder,” describes “a seeding device
able to deposit single seeds at predetermined spacings.” Ex. 1003,
code (54), 1:5–8. The seeder includes a seed hopper that transfers seed to a
rotating vacuum disc, which has orifices around its periphery that receive
and retain seeds by pressure differential. Id. at 3:46–52.
Figure 2 is reproduced below:

Figure 2 illustrates a “side elevational view of a seeder casing with the disc
in place and with surface portion broken away . . . to illustrate the operation
of the seeder.” Id. at 1:100–101. The vacuum disc rotates in a
counterclockwise direction, past various devices, to ensure that a single seed
is retained by the orifice, and continues to rotate until the “seeds have passed
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the end of vacuum inlet 78 at about 7 o’clock.” Id. at 3:45–61. When the
seeds’ “associated vacuum holes 94 are in register with recess 84 in the wear
plate 80,” the seeds drop into a cell bounded by fins 90. Id. at 3:55–63. The
seed fall from the cell when it reaches drop off lip 108, which is positioned
slightly past bottom dead center. Id. at 3:66–73.
Hedderwick describes a second embodiment for use when “the
vertical distance to be travelled by the seeds is greater.” Id. at 4:2–5.
Figure 4 is reproduced below:

Figure 4 illustrates a side elevational view of a seeder with parts broken
away. Id. at 1:108–109. Disc 130 of the second embodiment can have the
same construction as disc 70 shown in Figure 2, although disc 130 rotates in
a clockwise direction in Figure 4. Id. at 4:10–13, 5:51–53. “The major
change in the seeder is the provision of an endless belt 134 which has a
series of fins 135 projecting upwardly therefrom.” Id. at 4:23–25. Fins 135,
together with casing 137 and belt 134, define a series of moving cells. Id.
at 4:23–28; Fig. 4. These “cells are synchronised to align with orifices 129
of disc 130,” such that when disc 130 releases a seed it is released into a cell
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and each cell carries a seed. Id. at 4:28–5:5. Belt 134 passes over idler
sprocket 152 and driven sprocket 132, which drives the belt and thus
seeds 148 in the cells, to an end of casing 137 where the seed is discharged.
Id. at 5:6–7, 74–78; Fig. 4.
2. Summary of Koning
Koning, titled “Planting Machine for Potatoes, Bulbs or Similar Seed
Crop,” and describes a planting machine “comprising a hopper and a
conveying and distributing device . . . for feeding the potatoes or the like to
the planting foot.” Ex. 1004, code (54), 1:5–6. Figure 4 is reproduced
below:

Figure 4 illustrates an “end part of a planting machine schematically in a
side view.” Id. at 3:32–33. The planting machine includes conveying
member 23 having part 40 that extends in a backward direction to a point in
furrow 41. Id. at 5:3–6. Belt 44 with brush hairs 45 is above part 40 and is
guided around rollers 42 and 43. Id. at 5:6–8. Brush hairs 45 of belt 44 hold
the seed crop on part 40 of belt or conveying member 23 so that the seed
crop delivered by the conveying members are delivered at “the same
distance in relation to each other in the furrow 41.” Id. at 5:8–14.
Specifically, “the brush hairs hold the potatoes or the like lying on the
conveying surface till the moment that they leave the belt.” Id. at 3:16–18.
Thus, in Koning, it is the combination of two belts or conveying members,
belt 44 with brush hairs 45, and belt 23 that function together to convey
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seeds to furrow 41. Id. at 5:11–14. By holding the potatoes or the like “till
the very last moment . . . the velocity of the potatoes in relation to each other
is completely defined. Under all circumstances a regular distribution of the
potatoes in the furrow is obtained.” Id. at 3:18–22.
3. Summary of Benac
Benac, titled “Vacuum seed spreader with separate mechanical
dispensing,” relates to a vacuum seed spreader. Ex. 1005, code (54), 1:1–19.
Benac discloses a “vacuum seed spreader comprising, as is known, a rotary
vertical disk 1 forming a partition between a seed chamber 2 and a vacuum
chamber 3, generally of annular form.” Id. at 3:15–18. As seen in Figure 1,
reproduced below, disk 1 “is pierced with orifices 4 evenly distributed over a
circle concentric to the disk.” Id. at 3:20–21.

Figure 1 illustrates a cross-sectional view of a seed spreader. Id. at 3:1.
Suction from the vacuum chamber draws seeds against the orifices so that
the seeds rotate with the disk. Id. at 3:29–31. “A paddle wheel 8 is adjacent
to the first face 1a of the disk and determines, with this face 1a and with a
casing 9 that is adjacent and concentric to the paddle wheel, sealed cells 10
for the seeds.” Id. at 4:6–9. The bottom of casing 9 opens to dropping
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zone 11 in which the seeds are dropped or projected toward the ground. Id.
at 4:11–13. Cells 10 of the paddle wheel “transport, one by one, the seeds
released from the vacuum in the zone 7 just into the dropping zone 11.” Id.
at 4:13–15. Specifically, “paddles 10a of the paddle wheel 8 sweep the
orifices 4 of the disk between the release zone 7 and the dropping zone 11,
such that the seeds are necessarily extracted from the orifices 4 upstream of
the dropping zone.” Id. at 5:4–8.
E. Alleged Obviousness Over Hedderwick, Koning, and Benac
Petitioner contends that claims 1–4, 6–9, and 11–20 of the ’173 patent
would have been obvious over Hedderwick, Koning, and Benac. Pet. 39–
101; Reply 4–35. Petitioner’s contentions are supported by Mr. Prairie.
Ex. 1002 ¶¶ 66–176; Ex. 1135 ¶¶ 16–133. Patent Owner disputes these
contentions, particularly with regard to the sufficiency of the reasons
purportedly supporting the asserted combination. PO Resp. 6–58;
Sur-reply 12–30. We find that Petitioner has not shown by a preponderance
of the evidence a sufficient rationale for the combination. Our discussion
below is primarily focused on that dispositive issue as it applies to all
Challenged Claims.
1. Petitioner Contends that Hedderwick, Koning, and Benac
Teach or Suggest Each Limitation of Independent Claim 1
Petitioner provides a detailed explanation showing how Hedderwick,
Koning, and Benac teach or suggest each limitation of claim 1, which we
summarize below. Pet. 40–65.
A seeding machine, comprising:
Petitioner shows that Hedderwick teaches a “precision seeder” that
delivers seeds to the ground. Pet. 40–41 (citing, e.g., Ex. 1003, Abstract,
Fig. 4, 1:97–109).
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a seed metering system;
Petitioner shows that Hedderwick teaches a seed metering system that
includes seed metering disc 70 with orifices 94 to retrieve seeds from a
hopper by use of a vacuum. Id. at 41–45 (citing, e.g., Ex. 1003, 1:25–31,
3:20–65, 4:6–22, 5:49–60, Figs. 2, 4).
a seed transfer device positioned adjacent to the seed
metering system;
a seed delivery system comprising a housing having a first
opening and a second opening, the first opening located
proximal to the seed transfer device through which seed is
transferred from the seed metering system into the seed
delivery system, and the second opening located distal of
the seed transfer device through which seed is discharged
from the seed delivery system;
Petitioner contends that a “seed transfer device” in accordance with
the ’173 patent transfers “seeds from the seed metering system to the seed
delivery system through the first opening of the seed delivery system.”
Pet. 45. Petitioner relies on Benac as teaching paddle wheel 8 with paddles
10a corresponding to the claimed “seed transfer device” in combination with
being positioned adjacent the seed metering system of Hedderwick’s seed
metering disc 70. Id. at 46–49 (citing, e.g., Ex. 1005, 1:1–19, 2:8–23, 3:15–
31, 4:6–15, 5:4–8, Figs. 1, 2).
Petitioner also contends that Hedderwick in combination with Koning
teaches the claimed “seed delivery system,” with casing 137 of Hedderwick
corresponding to the claimed “housing,” including orifice 141 (a “first
opening”) and a discharge opening at the lower portion of casing 137
through which seed exits (a “second opening”). Id. at 50–53 (citing
Ex. 1003, 1:58–90, 4:25–28, 5:26–31, 5:53–60, 5:72–81, Figs. 4, 5).
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Petitioner explains its combination of elements from the asserted prior art as
follows:
Hedderwick in combination with Benac and Koning
discloses that the first opening (Hedderwick’s orifice 141, intake
opening) is located proximal to the seed transfer device (Benac’s
paddle wheel) through which seed is transferred directly from the
seed metering system (Hedderwick’s seed meter disk) into the
seed delivery system (Koning’s brush belt with Hedderwick’s
casing).”
Id. at 55–56 (citing Ex. 1002 ¶ 113). Petitioner also explains that in its
proposed combination of teachings “the second opening (Hedderwick’s
discharge opening) is located distal of the seed transfer device (Benac’s
paddle wheel) through which seed is discharged from the seed delivery
system (Koning’s brush belt within Hedderwick’s casing).” Pet. 59–60
(citing Ex. 1002 ¶ 117).
Patent Owner argues that because Petitioner’s proposed combination
“locates Benac’s paddle wheel past where seeds have been released from
Hedderwick’s disc, . . . the paddle wheel would not remove seed from the
seed meter and transfer it into an endless member, and thus could not be a
‘seed transfer device.’” Id. at 48. Patent Owner, however, identifies no
persuasive evidence in support of its assertion that a “seed transfer device”
must “remove seed from the seed meter.” See id. Petitioner counters that
Benac’s paddle wheel “would assist in transferring or inserting seeds
thorough orifice 141 into Koning’s brush belt.” Reply 29 (citing Ex. 1003,
4:23–28, 5:56–60; Ex. 1113, 289:22–290:7, 292:5–19; Ex. 1133, 88:7–90,
93:16–22). Patent Owner also argues that a person of ordinary skill in the
art “would have understood that Petitioners’ proposal would not engender
any expectation of achieving a ‘seed transfer device’ or a ‘seed delivery
system,’ as claimed.” PO Resp. 47.
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In summary, Petitioner has shown how Benac’s paddle wheel operates
as a “seed transfer device” in Benac, but Patent Owner has drawn into doubt
whether that teaching, as applied to the combination of Hedderwick and
Koning asserted by Petitioner, is sufficient to show that the combination of
teachings corresponds to the recited limitation. We need not resolve this
issue because we find that even if Petitioner has shown that the asserted
combination of references teaches every limitation of claim 1, whether there
is a sufficient rationale for the asserted combination of references is
dispositive, as addressed below.
an endless member of the seed delivery system movable within
the housing to receive the seed at the first opening and
transport the seed to the second opening;
As part of the claimed “seed delivery system,” Petitioner shows that
Koning’s belt 44 with bristles correspond to the “endless member” in place
of Hedderwick’s endless belt. Pet. 53–55, 62–65 (citing, e.g., Ex. 1004, 1:5–
13, 3:12–22, 5:8–14, Fig. 4).
wherein the seed transfer device transfers seed from the seed
metering system to the seed delivery system through the
first opening of the seed delivery system.
Petitioner explains that in accordance with it proposed
combination of features from the prior art, “the seed transfer device
(Benac’s paddle wheel) transfers seed directly from the seed metering
system (Hedderwick’s seed meter disk) to the seed delivery system
(Koning’s brush belt with Hedderwick’s casing) through the first
opening (Hedderwick’s intake opening/orifice 141) of the seed
delivery system.” Pet. 65.
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2. Petitioner Fails to Show by a Preponderance of the Evidence a
Sufficient Rationale to Support the Asserted Combination of
Hedderwick, Koning, and Benac as Applied to Independent
Claim 1
Petitioner addresses at length in the Petition the reasons it contends a
person of ordinary skill in the art would have been motivated to combine
Hedderwick, Koning, and Benac in the manner proposed by Petitioner.
Pet. 25–31. To assess Petitioner’s reasoning, we first consider how
Petitioner proposes combining the teachings of the asserted references and
then turn to the evidence offered by Petitioner in support and by Patent
Owner in opposition. Because it is dispositive, our analysis is focused on
Petitioner’s rationale for combining Hedderwick and Koning.8

8 Petitioner provides separate reasons in support of combining Benac and
Hedderwick, arguing that both references “disclose vacuum seed meters that
adhere individual seeds on apertures of a seed metering disk,” and that a
person of ordinary skill would have been motivated to apply Benac’s
“paddle wheel that transfers seeds from the seed metering disk, ensuring
their reliable release and improving seed spacing accuracy” to Hedderwick.
Pet. 26–27; see also id. at 49 (asserting that a person of ordinary skill
“would have been motivated to incorporate Benac’s paddle when into
Hedderwick’s seed metering system to ensure reliable transfer of seeds stuck
on Hedderwick’s disk”). Because we find Petitioner’s rationale in support
of combining elements of Koning with Hedderwick unsupported by a
preponderance of the evidence we do not reach the issue of whether
Petitioner’s rationale for including Benac is sufficient. We note, however,
that Petitioner’s arguments in support of combing features of Benac with
Hedderwick appear to mirror arguments made in a related proceeding found
unsupported by a preponderance of the evidence by the Board. See
Precision Planting, LLC, and AGCO Corp. v. Deere & Company, IPR2019-
01044, Paper 94 (PTAB Nov. 30, 2020) (final written decision finding no
challenged claims unpatentable as obvious over combination of Hedderwick,
Koning, and Benac).

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To show unpatentability of claim 1, Petitioner relies on a combination
of “Koning’s brush belt with bristles (for gripping seeds and controlling their
movement from the seed meter to the ground) with Hedderwick (a precision
seeder with seed metering system and endless belt in a housing with upper
and lower openings).” Id. at 25; see also id. at 53 (Petitioner stating that it
“[does] not rely on Hedderwick alone for the seed delivery apparatus
because [Hedderwick] allows gravity to impact seed movement”).
According to Petitioner, the asserted combination would function as follows:
“Hedderwick’s seed meter disk would transfer seeds to the point where the
disk ‘mates with’ the first opening (intake opening or orifice 141) in the
casing,” and “[a]t this mating point, Koning’s brush belt would, in turn,
receive the seeds directly from Hedderwick’s seed meter disk and hold them
as it moves the seed toward the second, discharge opening.” Pet. 55
(citations omitted). Thus, Petitioner proposes applying Koning’s teaching of
the use of generally downward facing bristles of a brush belt that control the
spacing and descent of potatoes on a conveyor below to Hedderwick’s
system to instead use generally upward facing bristles of Koning’s brush belt
to receive seeds transferred from a seed meter disc above the bristles to be
conveyed by the bristles to the ground.9 Id.

9 Although the parties, and thus the Board, focus on whether it would have
been obvious to modify Hedderwick with the brush belt of Koning, the
challenged claims do not include the term “brush belt.” We do not hold, and
this Decision should not be understood to suggest, that the “endless
member” claim term in the ’173 patent requires a brush belt. The challenge
Petitioner asserts, however, is to replace the endless belt of Hedderwick with
Koning’s brush belt, so that is the challenge we must evaluate. See SAS
Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“the petitioner’s
petition . . . is supposed to guide the life of the litigation,” and it would “not
be proper for the Board to deviate from the grounds in the petition and raise
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Petitioner chose to frame the proposed combination to include the
receipt of seeds from above onto the moving brush belt of Koning’s
“delivery system,” such that it is incumbent on Petitioner to show that an
ordinarily skilled artisan would have had reason to combine the references in
that proposed manner and would have reasonably expected success in doing
so. See, e.g., Pet. 29 (stating that the “combination would replace
Hedderwick’s endless belt with Koning’s brush belt”) (citing Ex. 1003,
4:23–5:7, Fig. 4; Ex. 1004, 5:3–14, Fig. 4); see also Ex. 1002 ¶ 113
(Mr. Prairie explaining that in the asserted combination “seed is transferred
directly from the seed metering system (Hedderwick’s seed meter disk) into
the seed delivery system (Koning’s brush belt with Hedderwick’s casing)”).
To be clear, we recognize that “[t]he test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art, not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference.”
Hologic, Inc. v. Minerva Surgical, Inc., 764 Fed. Appx. 873, 880 (Fed.
Cir. 2019) (quoting In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)).
Nonetheless, a satisfactory explanation of “how the combination of the . . .
references [is] supposed to work” is necessary to support “a conclusion that
a relevant skilled artisan would have been motivated to make the
combination and reasonably expect success in doing so.” Personal Web
Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (emphasis in
original); see also Adidas AG v. Nike, Inc., 963 F.3d 1355, 1359–60 (Fed.

its own obviousness theory.”); Koninklijke Philips N.V. v. Google LLC, 948
F.3d 1330, 1336 (Fed. Cir. 2020) (quoting SAS, 138 S. Ct. at 1356) (“the
Board does not ‘enjoy[] a license to depart from the petition and institute a
different inter partes review of [its] own design.’”).
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Cir. 2020) (affirming Board’s determination that claims were not shown to
be obvious because the petitioner had not demonstrated that an ordinarily
skilled artisan would have been motivated to combine the references);
Samsung Electronics Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373,
1382–83 (Fed. Cir. 2019) (determining that it unnecessary to reach other
issues when reasonable expectation of success is dispositive).
In support of combining Hedderwick and Koning, Petitioner contends
that both are in the field of “agricultural seed planting” and address the same
problem of “suboptimal seed spacing” by “using systems to control the
movement of seeds to the ground.” Pet. 25–26. Petitioner states that
Hedderwick’s endless belt “does not completely define the velocity of the
seeds relative to one another or ‘hold’ the seeds throughout their descent
until ‘the moment that they leave the belt.’” Id. at 28. Koning achieves
finer seed spacing, Petitioner asserts, because its “brush belt ensures that the
‘velocity’ of the seeds ‘in relation to each other is completely defined.’” Id.
(quoting Ex. 1004, 3:12–22). Thus, Petitioner reasons that an ordinarily
skilled artisan would have been motivated to rely on Koning’s brush belt
with bristles in place of Hedderwick’s endless belt with fins to “achieve the
disclosed benefits of more uniform seed spacing.” Pet. 54–55 (citing
Ex. 1002 ¶ 111); see also id. at 29 (asserting that a person of ordinary skill
“desiring finer seed spacing would have been motivated to combine the
teachings of Koning’s brush belt with the system of Hedderwick to achieve
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finer seed control) (citing Ex. 1002 ¶ 73; Ex. 1004, 3:12–22, 5:8–14).
Petitioner further contends as follow:
Incorporating the teaching of Koning’s brush belt would have
been simple for a [person of ordinary skill in the art] to
implement and there would have been a reasonable expectation
of success, because such a combination would have applied a
known technique—using a brush belt with bristles (taught by
Koning)—to a known device—a seeding machine that would
benefit from Koning’s brush belt.”
Pet. 29. Mr. Prairie supports Petitioner’s asserted rationale for
substantially the same reasons identified in the Petition. See Ex. 1002
¶¶ 66–76; see also Ex. 1135.
Patent Owner disputes the sufficiency of Petitioner’s rationale
supporting the combination of Hedderwick and Koning. Patent Owner
argues that Petitioner relies on hindsight and that an ordinarily skilled artisan
would not have been motivated to combine Koning’s belt with Hedderwick,
and would not have expected that combination to succeed. PO Resp. 16–31;
Sur-reply 12–18.10
Based on the full record before us, we conclude that Petitioner has not
met its burden of showing that a person of ordinary skill in the art at the time
of the invention would have been motivated to, or would have had reason to,
selectively apply a portion of Koning’s “delivery system,” and, specifically,
Koning’s brush belt, but not conveying member 23, to the system of
Hedderwick. As Patent Owner points out, the function that the brush belt
serves in Petitioner’s proposed combination is different from its function in

10 Patent Owner also argues that Koning does not qualify as analogous art
and, relatedly, that judicial estoppel bars Petitioner from contending
otherwise. PO Resp. 6–16; Sur-reply 10–11, 31–33.
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Koning. See PO Resp. 17–19. In Koning, the brush hairs of the belt hold
potatoes “lying on the conveying surface” so as to maintain the speed and
relative position of potatoes as they are moved by the conveyor to the
furrow. Ex. 1004, 3:12–22, 5:3–14, Fig. 4; see also Pet. 24–25 (similarly
describing Koning). Koning does not teach a system, as proposed by
Petitioner, in which seeds are transferred from above into a moving brush
belt. Petitioner provides insufficient persuasive evidence that a person of
ordinary skill in the art would have had reason to use the brush belt of
Koning in an undisclosed manner to receive seed into brush hairs 45 from
Hedderwick’s seed meter disc located above the bristles, rather than to use
brush hairs 45 to control the movement of a seed crop against conveyor 23
as disclosed by Koning’s delivery system, or that such a person would have
reasonably expected success in in doing so.
Petitioner argues that “using a brush belt with bristles,” as taught by
Koning, was “a known technique” that “would have been simple” for a
person of ordinary skill to implement to a known device, such as
Hedderwick’s seeding machine with “a reasonable expectation of success.”
Pet. 29; see also Ex. 1002 ¶ 74 (Mr. Prairie stating the same in support of
Petitioner); Ex. 1135 ¶ 53 (Mr. Prairie testifying in Reply declaration that
“[a] person of ordinary skill in the art would have known how to fine tune
the brush belt taught by Koning to work in Hedderwick’s system”).
Petitioner further asserts that a person of ordinary skill in the art would have
had a reasonable expectation of success, because Koning shows “that the
brush belt receives the seeds as its bristles are rotating around upper roller 42
while the bristles are flexed in an open configuration,” such that an
ordinarily skilled artisan “would have understood to incorporate Koning’s
brush belt into Hedderwick such that it receives seeds as the belt curves
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around Hedderwick’s driven sprocket 132 as its bristles are flexed open.
Pet. 29; see also Ex. 1002 ¶ 74 (Mr. Prairie stating the same in support of
Petitioner).
Critically, neither Petitioner nor Mr. Prairie acknowledge, much less
bridge, the gap between Koning’s use of a brush belt with bristles generally
facing downward to hold potatoes from above as they lie on a conveying
surface, versus the brush belt’s use in the proposed combination to receive
seeds that are deposited onto or into the bristles from above. In short, what
Petitioner casually calls a “known technique” was not taught or suggested by
Koning. Patent Owner explains this issue as follows:
Koning does not suggest using a brush-belt for retaining and
conveying seeds without a separate conveying member to bear
their weight. A [person of ordinary skill in the art] would not
predict that Koning’s brush-belt could be used successfully for
that purpose because, inter alia, a [person of ordinary skill in the
art] would not predict that Koning’s belt would successfully
receive, retain or convey small seeds on its own due to the unique
and unpredictable dynamics of such a belt. Ex. 2203, ¶¶ 136–
138, 164–167. Fundamentally, Koning’s belt, which is intended
to steady potatoes while they are conveyed, is not a conveyor
belt. Instead, it is a moving belt positioned over top of the
potatoes; not intended to support their weight. Petitioners are
thus not suggesting using a “familiar element according to
known methods” to “yield predictable results.” Cf. KSR, 550
U.S. at 401.
PO Resp. 18. Petitioner argues in reply that Koning’s use of a conveyor to
transport potatoes held in place by a brush belt means Koning’s brush belt
conveys seeds “just as in the ’173 patent,” because “[t]he brush belt of the
’173 patent also works with a housing surface to hold the seed.” Pet.
Reply 12–13 (citing Ex. 1001, 4:29–31, 4:38–39, Fig. 3; Ex. 1002 ¶¶ 48, 49,
74; Ex. 1135 ¶ 54). In this regard, the ’173 patent states that “side wall 53 of
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the housing cooperates with the bristles 70 to hold the seed in the brush
bristles as the seed is moved to the lower opening.” Ex. 1001, 4:38–40.
Petitioner’s attempt to equate a stationary side wall taught by the ’173 patent
to the moving conveyor 23 of Koning is not persuasive or credible because
they clearly function in different ways and serve different purposes. As
Patent Owner shows, Koning makes clear that the potatoes are delivered by
conveying members 23, not Koning’s brush belt, which instead relies on
brush hairs to hold the potatoes on the conveying members 23. Sur-reply 13
(citing Ex. 1004, 5:8–14).
The persuasiveness of Petitioner’s argument and Mr. Prairie’s
testimony—i.e., that it would have been simple for an ordinarily skilled
artisan to adapt Koning’s brush belt for use in the proposed combination,
where seeds are released from above for capture by the brush belt—is
further undermined by Mr. Prairie’s testimony that he “can’t recall a time
where I’ve seen a seed being dropped into a brush belt.” Ex. 2193, 113:5–9;
see also Ex. 2263, 81:2–12 (“Q. And you never attempted to drop a seed
onto a moving brush belt to see whether that would be inserted into the
brush belt, correct? A. As I stated, for the purposes of this case, I did not do
any physical experimentation with a moving brush belt as I didn’t feel it was
necessary. The prior art discloses sufficient information.”) (objection
omitted). Mr. Prairie has “had some industrial design projects where we’ve
had to utilize brushes for various applications,” but he “ha[s] not used a
brush belt to convey seed.” Ex. 2194, 297:6–16. Mr. Prairie testified that
“prior to writing this declaration, brush belt technology was not a specific
area that I study, that I was researching.” Ex. 2263, 79:6–9.
The basis for Mr. Prairie’s opinion, that a seed would be captured by a
moving brush belt in the proposed combination, appears to only be the prior
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art references themselves. Ex. 2193, 214:6–14, 118:7–23. Mr. Prairie
testified that he “did not operate a brush belt for this declaration because [he]
didn’t feel it was necessary to make my assessments” and he “did not do
study or experimentation on a brush belt as I did not feel it was necessary.”
Ex. 2263, 79:17–19, 80:2–4. Mr. Prairie’s reliance on the prior art to
support his conclusions is unpersuasive because Mr. Prairie does not account
for the differences discussed above between the cited references’ usage of
brush belts compared to the way it is used in the proposed combination. In
particular, as relevant to the discussion here, Koning does not teach using a
brush belt to capture seeds that have been released from above. Mr. Prairie
does not account for that difference by explaining why an ordinarily skilled
artisan would expect Koning’s brush belt to effectively capture and carry
seeds released from above, as in the proposed combination.
With regard to fundamental differences between how Koning transfers
potatoes to the ground, versus the manner in which Petitioner proposes using
Koning’s brush belt to carry seed, during his deposition Mr. Prairie resisted
agreeing that the potatoes are lying on the conveyor in Koning, testifying
that he takes from Koning’s description that “they are captured by that belt
with brush hairs” (Ex. 2193, 99:21–22) and that “there is some weight that’s
along the conveying member 23” (id. at 98:16–17). Mr. Prairie testified that
he “do[es]n’t believe the brush hairs support the full weight of the potatoes,”
but that Koning did not provide him sufficient information to answer
whether the conveying member supports the majority of the weight of the
potatoes. Id. at 106:22–107:21.
In our view, it is clear from Koning’s description that the potatoes lie
on the conveyor and the purpose of the brush belt is to maintain their
position relative to each other while they are moved by the conveyor.
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Ex. 1004, 3:16–24, 5:3–14, Fig. 4; see also Ex. 2203 ¶¶ 139–140
(Dr. Glancey testifying that a simple mechanical analysis shows that in
Koning, about 87% of the potatoes’ weight is supported by the conveying
member). Mr. Prairie’s seeming reluctance to acknowledge the differences
between the brush belt’s function in Koning versus the proposed
combination undermines the persuasiveness of his testimony that the
proposed combination would have been a simple application of a known
technique to a known device.
By contrast, Dr. Glancey persuasively testifies that a person of
ordinary skill “reviewing Koning’s disclosed assembly of using a belt with
brush hairs to cover and hold potatoes when used in combination with a
conveyor with a separate covering surface could not predict that such a belt
would successfully receive, retain or convey small seeds on its own as would
be required in Petitioners’ proposed combination.” Ex. 2203 ¶ 138; see also
id. ¶ 136 (Dr. Glancey testifying that the brush belt of Koning “was not—
and was not taught as being—a modular ‘off the shelf’ component with
predictable uses”).
Dr. Glancey provides an analysis of why he reaches this conclusion as
follows:
the properties of brush belts, especially belts moving at speeds
corresponding to seed dispensing rates common for such small
seeds, make it unlikely that seeds will enter the belt in the
absence of a loading surface especially adapted to insert the seeds
into the belt, and nothing in Koning’s disclosure suggests using
a belt with brush hairs to support the entire weight of the seeds
or to convey them without the presence of a separate conveying
member.
Id. ¶ 138. Dr. Glancey also concludes that a person of ordinary skill “would
not have been motivated to isolate Koning’s belt with brush hairs, remove it
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from Koning’s planting machine, adapt it for use in completely different
system, and repurpose it to perform a new and undisclosed function (as a
conveyor), as proposed by Petitioners.” Id. ¶ 141. Dr. Glancey testifies as
follows:
A device such as Koning’s belt that covers from above relatively
massive seed objects such as potatoes is not the same as a device
such as Hedderwick’s finned belt which alone carries smaller
seeds. The only evidence I have seen to suggest that a [person
of ordinary skill in the art] would use a brush belt for carrying
seeds rather than covering them is the ’173 Patent.
Id. ¶ 147.
In its Reply, Petitioner argues that “brush belts were well-known and
used in many aspects of planting so a [person of ordinary skill in the art]
would have had the knowledge necessary to make a brush belt work in
Hedderwick’s system without undue experimentation.” Reply 7–8. To
support this argument, Petitioner cites Koning and two other references:
Thiemke11 and Gould.12 See id. at 7–10. In his declaration accompanying
Petitioner’s Reply, Mr. Prairie discusses those same references. See
Ex. 1135 ¶¶ 41, 42. But these two additional references do little to aid
Petitioner’s case because neither Thiemke nor Gould discloses a moving
brush belt that captures seeds directed directly into it from above, as
Petitioner proposes in its combination.

11 U.S. Patent No. 6,651,570 B1, issued November 25, 2003 (Ex. 1015,
“Thiemke”).
12 U.S. Patent No. 1,376,933 issued May 3, 1921 (Ex. 1030, “Gould”).
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Figures 3 and 4 of Thiemke are reproduced below.

Figures 3 and 4 are perspective and side views, respectively, of a seed
placement system. Ex. 1015, 3:5–9. Thiemke explains that seeds
discharged from seed metering system 28 are guided by deflector 60 into a
nip area between wheel 42 and seed slide 40. Id. at 5:47–54. Thiemke
teaches that a “gap of approximately one millimeter between the
circumferential periphery of wheel 42 and seed slide 40 ensures that the seed
is gripped by gripping outside layer 54,” which can be formed of nylon
bristles. Id. at 5:54–57, 5:1–10. Thiemke does not suggest that brush belts
can capture seeds released into the brush hairs; indeed, deflector 60 prevents
seed from dropping onto the top of wheel 42 in a manner that would be
comparable to how Petitioner proposes seed would be captured by Koning’s
brush belt in the proposed combination.
Gould describes a machine “for taking an individual plant from a
quantity, depositing it positively in the ground and properly covering it, and
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of operating with great rapidity.” Ex. 1030, 1:25–30. Figure 4 of Gould is
reproduced below:

Figure 4 shows a sectional side elevation view of Gould’s plant-setting
machine. Id. at 1:38. Gould explains that brush belt 11 operates beneath
hopper 1 and “travels vertically downward . . . and cooperates with a second
brush belt 12 to move the plant from the hopper.” Id. at 1:75–82. In
considering Gould’s teaching of two vertically oriented and opposed brush
belts that cooperate to move plants from a hopper, we see little relevance to
Petitioner’s proposal to load seeds into a brush belt by releasing them
directly into the bristles.
Petitioner additionally contends that Patent Owner’s arguments are
based on the erroneous premise that an ordinarily skilled artisan must be
able to physically combine the references. See Reply 6–7 (citing Mouttet,
686 F.3d at 1332–33). We disagree. Patent Owner’s arguments,
summarized above, simply point out that an ordinarily skilled artisan would
not have expected success in combining the references’ teachings in the way
Petitioner proposes. Motivation to combine and reasonable expectation of
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success are properly assessed with reference to the combination as Petitioner
has framed it. The Federal Circuit has explained that doing so is not
inconsistent with Mouttet. See Samsung, 925 F.3d at 1382–83 (“We will not
fault the Board for analyzing Petitioners’ obviousness grounds in the way
presented in the Petition.”).
Petitioner also argues in its Reply that the ’173 patent does not require
operation of an endless member at “any particular speed” and does not
“address the purported difficulties of using a brush belt or provide any
explanation of how to overcome such problems (e.g., bristle stiffness or
density).” Reply 7. We agree that the ’173 patent is generic in its
description of the brush belt’s characteristics. See Ex. 1001, 7:43–50
(describing that “brush bristles are the preferred embodiment, and may be
natural or synthetic” but other material types can also be used); see also id.
at 4:55 (stating that “[t]he belt shown in FIG. 3 has relatively long
bristles.”); id. at 5:3–4 (stating that “a short bristle brush can be used as
well.”). But, critically, the ’173 patent explains that a seed can be inserted
into a moving brush belt by using the outer surface of a loading wheel to
pinch seeds off the seed disk into the bristles of the brush belt. Ex. 1001,
4:19–40, Fig. 3; see Ex. 2203 ¶ 43. Petitioner does not point to any prior art
that teaches such a solution.
It is Petitioner’s burden to establish that a person of ordinary skill
would have been motivated to combine the references in the proposed
manner and would have reasonably expect success in doing so. See
35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376
(Fed. Cir. 2016). Petitioner’s arguments and evidence do not carry that
burden. Neither the references, other evidence, nor Mr. Prairie provide
sufficiently persuasive evidence, even in combination, to establish why a
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person of ordinary skill would have modified Hedderwick by (1) selectively
gleaning only a portion of Koning’s conveying system, i.e., belt 44 with
bristles 45, (2) selectively excluding Koning’s conveyor 23, and
then (3) modifying Koning’s brush belt by reversing its orientation so that it
carries seeds deposited into the bristles, as in the ’173 patent, rather than
covering and guiding seeds carried by a separate and distinct conveyor, as in
Koning. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed.
Cir. 2016) (finding an absence of a motivation to reverse parts to an
orientation that was “totally backwards” from what one of skill in the art
would even attempt). Petitioner’s arguments do not acknowledge the
different function of Koning’s brush belt, or explain why a person of
ordinary skill would have had reason to adapt Koning’s brush belt to such a
use with a reasonable expectation of success in doing so.
3. Petitioner Fails to Show by a Preponderance of the Evidence
a Sufficient Rationale to Support the Asserted Combination
of Hedderwick, Koning, and Benac as Applied to Independent
Claim 17
Independent claim 17 is directed to a “row unit of a planter,” much
like claim 1 which is directed to a “seed delivery apparatus.” Ex. 1001,
7:56–8:6, 9:1–23. Independent claim 8, like claim 1, requires a “seed
metering system,” a “seed delivery system,” an “endless member,” and a
“seed transfer device.” Id. Petitioner does not direct us to any persuasive
evidence of any substantive differences between claims 1 and 17 that would
cause a different analysis or conclusion for claim 17 from the conclusion
reached for claim 1. See Pet. 25–31 (addressing the motivation to combine
asserted by Petitioner as to all Challenged Claims). Accordingly, based on
the analysis and evidence discussed above for claim 1, we determine that
Petitioner fails to show by a preponderance of the evidence a sufficient
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rationale to support the asserted combination of Hedderwick, Koning, and
Benac as applied to independent claim 17 for the same reasons discussed
above with respect to claim 1.
4. Petitioner Fails to Show by a Preponderance of the Evidence
a Sufficient Rationale to Support the Asserted Combination
of Hedderwick, Koning, and Benac as Applied to Dependent
Claims 2–4, 6–9, 11–16, and 18–20
Dependent claims 2–4, 6–9, 11–16 depend from claim 1, and
dependent claims 18–20 depend from claim 17. Petitioner does not direct us
to any persuasive evidence of any substantive differences between claims 2–
4, 6–9, 11–16, and 18–20 and the claims from which they depend that would
cause a different analysis or conclusion for claims 2–4, 6–9, 11–16, and 18–
20 from the conclusion reached for the claims from which they depend. See
Pet. 25–31 (addressing the motivation to combine asserted by Petitioner as
to all Challenged Claims). Accordingly, based on the analysis and evidence
discussed above for claim 1, we determine that Petitioner fails to show by a
preponderance of the evidence a sufficient rationale to support the asserted
combination of Hedderwick and Koning as applied to dependent claims 2–
4, 6–9, 11–16, and 18–20 for the same reasons discussed above with respect
to the claims from which they depend.
5. Petitioner Fails to Show by a Preponderance of the Evidence
that any of the Challenged Clams Would Have Been Obvious
Over Hedderwick, Koning, and Benac
The existence of common elements found in both the challenged
claims and the references relied on by Petitioner does not establish that the
challenged claims would have been obvious. “[A] patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art.” KSR, 550 U.S.
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at 418. “[I]nventions in most, if not all, instances rely upon building blocks
long since uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known.” Id. at 418–419.
Petitioner fails to meet its burden of providing a sufficiently
persuasive explanation or reason for concluding that one of skill in the art
would have had reasons or been motivated to combine Hedderwick, Koning,
and Benac in a manner that corresponds to any of the Challenged Claims.
“Without any explanation as to how or why the references would be
combined to arrive at the claimed invention, we are left with only hindsight
bias.” Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1354,
1367 (Fed. Cir. 2017). “[W]e cannot allow hindsight bias to be the thread
that stitches together prior art patches into something that is the claimed
invention.” Id. KSR cautions a factfinder to be aware of the “distortion
caused by hindsight bias” and to be “cautious of arguments reliant upon ex
post reasoning. KSR, 550 U.S. at 421 (emphasis omitted). Petitioner’s
proposed combination of the cited references does not meet its burden of
providing a sufficiently persuasive evidence-based reason why a person of
ordinary skill would have selectively gleaned isolated elements from
Koning, modified their operation, and then combined them with Hedderwick
to arrive at the invention recited in independent claim 1, or any other of the
Challenged Claims. Based on the Petition and the evidence of record, we
determine that Petitioner has not established by a preponderance of the
evidence that any of the Challenged Claims would have been unpatentable
over the asserted combination of Hedderwick, Koning, and Benac.
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IV. CONSTITUTIONAL CHALLENGE
In a single sentence, Patent Owner states it “challenges the
constitutionality of, and the panel’s authority to adjudicate, this proceeding
under Arthrex, Inc. v. Smith & Nephew Inc., 941 F.3d 1320 (Fed.
Cir. 2019).” PO Resp. 95.13 No additional argument or explanation of
Patent Owner’s challenge is presented.
This constitutional issue has been addressed by the Federal Circuit’s
decision in Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures
the constitutional violation.”); see also Arthrex, Inc. v. Smith &
Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020) (Moore, J., concurring in
denial of rehearing) (“Because the APJs were constitutionally appointed as
of the implementation of the severance, inter partes review decisions going
forward were no longer rendered by unconstitutional panels.”).
Accordingly, we do not consider this issue any further for this Decision.
V. CONCLUSION
The outcome for the Challenged Claims in this proceeding is set forth
below. In summary:

13 We note that the Supreme Court has accepted this case for review.
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), cert.
granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13,
2020).
Claims

35
U.S.C. §
References/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–4, 6–9,
11–20
103 Hedderwick,
Koning, Benac
1–4, 6–9,
11–20
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VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–4, 6–9, 11–20 of U.S. Patent
No. 10,004,173 B2 have not been proven by a preponderance of the
evidence to be unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied
in part and dismissed in part;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Grant K. Rowan
Mary V. Sooter
Natalie Pous
WILMER, CUTLER, PICKERING, HALE,
& DORR, LLP
grant.rowan@wilmerhale.com
mindy.sooter@wilmerhale.com
natalie.pous@wilmerhale.com

For PATENT OWNER:

Jay I. Alexander
Peter P. Chen
Rajesh D. Paul
Nicholas L. Evoy
Richard L. Rainey
COVINGTON & BURLING LLP
jalexander@cov.com
pchen@cov.com
rpaul@cov.com
nevoy@cov.com
rrrainey@cov.com