from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/002, 028.
Matthew James Hilmert, Winston & Strawn LLP, Chicago, IL,
argued for appellant.
Michael J. Flibbert, Finnegan, Henderson, Farabow, Garrett
& Dunner, LLP, Washington, DC, argued for appellee. Also
represented by Cora Renae Holt, Maureen Donovan Queler.
Dyk, Reyna, and Wallach, Circuit Judges.
Wallach, Circuit Judge.
E.I. DuPont de Nemours & Co. ("DuPont") sought
inter partes reexamination of various claims of Appellant
Monsanto Technology LLC's ("Monsanto") U.S.
Patent No. 7, 790, 953 ("the '953 patent"). The
U.S. Patent and Trademark Office's ("USPTO")
Patent Trial and Appeal Board ("PTAB") issued a
final decision that affirmed an examiner's rejection of
claims 1, 7, 12-22, 24, and 27-30 ("the Asserted
Claims") as anticipated by U.S. Patent No. 6, 426, 448
("Booth"), and of, inter alia, claim 2 as obvious
over Booth. See E.I. DuPont de Nemours & Co. v.
Monsanto Tech. LLC, No. 2015-007692, 2016 WL 4255131, at
*3 (P.T.A.B. Aug. 10, 2016).
appeals. We have subject matter jurisdiction pursuant to 28
U.S.C. § 1295(a)(4)(A) (2012). We affirm.
"Soybean Seed and Oil Compositions and Methods of Making
Same, " the '953 patent claims a two-step process
for crossing (mating) two parent soybean lines to produce
soybean seeds with a modified fatty acid profile.
See '953 patent col. 111 ll. 34-67; id.
col. 1 ll. 31- 37. The '953 patent describes "the
combination of transgenes that provide both moderate oleic
acid levels and low saturated fat levels with soybean
germplasm that contains mutations in soybean genes that
confer low linolenic acid phenotypes." Id.,
Abstract. Claim 1, which was amended during the
reexamination, is the sole independent claim and is
illustrative. It recites:
A method of obtaining a soybean plant with an altered seed
oil fatty acid composition comprising the steps of:
(a) crossing a first soybean parent line having a seed oil
fatty acid composition comprising a linolenic acid content of
about 3% or less of total seed fatty acids by weight
with a second soybean parent line having a seed oil fatty
acid composition wherein the i) level of oleic acid is
greater than about 55% of total seed fatty acids by weight,
or ii) wherein both the level of saturated fatty acid is
about 8% or less of total seed fatty acids by weight and the
level of oleic acid is greater than about 55% of total seed
fatty acids by weight, said second soybean parent line
comprising either a transgene that decreases the expression
of an endogenous soybean FAD2-1 gene to provide the level of
oleic acid greater than about 55% of total seed fatty acids
by weight of said second parent soybean line of (i); or both
a transgene that decreases the expression of an endogenous
soybean FATB gene and a trans gene that decreases the
expression of an endogenous soybean FAD2-1 gene to provide
the level of saturated fatty acid of about 8% or less by
weight and the level of oleic acid greater than about 55% of
total seed fatty acids by weight of said second parent
soybean line of (ii); and
(b) obtaining a progeny plant exhibiting a seed oil fatty acid
composition comprising a linolenic acid content of about
3% or less of total fatty acids by weight and also
comprising either i) an oleic acid level in the range of
[about] 55% to [about] 80% of total seed fatty acids by
weight, or ii) both a saturated fatty acid level of about 8%
or less of total seed fatty acids by weight and an oleic acid
level of [about] 55% to [about] 80% of total seed fatty acids
by weight, thereby obtaining a soybean plant with an altered
seed oil fatty acid composition.
329-30 (footnotes and emphases added) (alterations in
is directed toward a number of soybean crosses aimed at
obtaining progeny with desired fatty acid compositions.
See Booth col. 38 l. 53-col. 45 l. 43 (exs. 5-8),
col. 47 l. 53-col. 48 l. 40 (ex. 11). Similar to the '953
patent, Booth discloses a "variety of novel soybean
genes that alter oil quality." Id. col. 6 ll.
40-41. Specifically, Booth Example 8 describes a method of
crossing two soybean lines, one with a "fan allele"
or D3A gene for low linolenic acid content and the other with
a D2T gene for high oleic acid content. See id. col.
25 l. 45-col. 26 l. 38 (Example 8: "Soybeans with High
Oleic Acid and Low Linolenic Acid Content"); see
also id. tbl. 12 (showing the fatty acid makeup of the
selected progeny plants).
the inter partes reexamination, DuPont submitted two
declarations from one of Booth's named inventors, Dr.
Anthony John Kinney (together, "the Kinney
Declarations"). J.A. 133-275 (First Kinney Declaration),
359-71 (Second Kinney Declaration). DuPont produced the
Kinney Declarations to show data from additional progeny
produced by following the disclosed method of Example 8,
"including plants not selected for inclusion in Table 12
of the Booth patent." J.A. 360 (footnote omitted).
Relevant here, the PTAB relied upon the Kinney Declarations
to interpret the fatty acid properties of the F2:3 generation
because it found the "F2:3 generation results provided
in Exhibit A of the Second Kinney Declaration represent[ed]
the lines of all resulting progeny" from a cross
prepared according to Booth Example 8 and related Table 12
that were not included in Booth Table 12. E.I.
DuPont, 2016 WL 4255131, at *4 n.9; see J.A.
contends that the PTAB erred by: (1) misconstruing the
"about 3% or less" limitation in the '953
patent to include progeny with a linolenic acid content of
4%, Appellant's Br. 45-50; (2) "rejecting [the
Asserted C]laims for anticipation" based on "an
unlawful composite" of Booth and the Kinney
Declarations, the latter of which Monsanto alleges are
non-prior art references, id. at 33-34
(capitalization and alterations omitted); see id. at
33-50; and (3) employing a legally erroneous "accidental
obviousness theory for claim 2, " id. at 51
(capitalization and alterations omitted); see id. at
50-60. After articulating the applicable standard of review,
we address these arguments in turn.
Standard of Review
review the PTAB's factual findings for substantial
evidence and its legal conclusions de novo." Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
449 (Fed. Cir. 2015) (citation omitted). "Substantial
evidence is something less than the weight of the evidence
but more than a mere scintilla of evidence, " meaning
that "[i]t is such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion."
In re NuVasive, Inc., 842 F.3d 1376, 1379, 1380
(Fed. Cir. 2016) (internal quotation marks and citations
omitted). If two "inconsistent conclusions may
reasonably be drawn from the evidence in record, [the
PTAB]'s decision to favor one conclusion over the other
is the epitome of a decision ...