united states patent and trademark office before...
TRANSCRIPT
Patent No. 8,533,992 Petition for Inter Partes Review
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT AND TRIAL APPEAL BOARD
FarmedHere, LLC Petitioner
v. Just Greens, LLC
Patent Owner
Patent No. 8,533,992 Issue Date: Sept. 17, 2013
Title: METHOD AND APPARATUS FOR AEROPONIC FARMING
Inter Partes Review No. _____
PETITION FOR INTER PARTIES REVIEW
UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
Filed on behalf of Petitioner: Brian C. Kwok (Reg. No. 58,828) Thomas Mavrakakis (Reg. No. 39,763) MAVRAKAKIS LAW GROUP LLP 735 Emerson Street Palo Alto, CA 94301 Tel: (650)-804-7800
ii
TABLE OF CONTENTS
I. NOTICES AND STATEMENTS ....................................................................... 1 II. INTRODUCTION .............................................................................................. 3 III. TECHNOLOGY BACKGROUND AND SUMMARY OF ALLEGED INVENTION ............................................................................................................ 5
A. Technology Background ................................................................................ 5 1. Soilless Systems .......................................................................................... 5 2. Growth Substrates ....................................................................................... 7
B. General Description of the ’992 Patent .......................................................... 8 C. Level of Skill in the Art ................................................................................ 10 D. Prosecution of the ’992 Patent ...................................................................... 12
IV. CLAIM CONSTRUCTION .............................................................................. 14 A. “Cloth Material” ........................................................................................... 14 B. “Attaching at Least Some of the Edges/Releasably Attaching at Least Some
of the Edges” .................................................................................................. 16 1. “edges” ...................................................................................................... 16 2. “attaching” ................................................................................................. 17 3. “releasably attaching” ................................................................................ 17
V. IDENTIFICATION OF CHALLENGE ........................................................... 17 VI. OVERVIEW OF REFERENCES ..................................................................... 18
A. Overview of the Biocontrols Website .......................................................... 18 B. Overview of the Genisis Catalog .................................................................. 23 C. Overview of European Patent No. 04403381 (“Schroder”) and Erdelose
Kulturverfahren im Gartenbau (“the German Text”) ..................................... 26 D. Overview of The Best of the Growing Edge (“The Growing Edge”) .......... 28 E. Overview of U.S. Patent No. 5,515,648 (“Sparkes”) ................................... 29
VII. SPECIFIC GROUNDS FOR REJECTION ................................................... 31 A. Ground 1: Anticipation By The Biocontrols Website .................................. 31
1. The Biocontrols Website Anticipates Claim 1, 30 and 47. ....................... 31 2. The Biocontrols Website Anticipates Claims 13 and 32. .......................... 34 3. The Biocontrols Website Anticipates Claims 16 and 35. .......................... 36 4. The Biocontrols Website Anticipates Claims 18-20, 39-41 and 49. ......... 36 5. The Biocontrols Website Anticipates Claims 21-23, 42-45 and 50. ......... 36 6. The Biocontrols Website Anticipates Claims 23 and 45. .......................... 37
B. Ground 2: Obviousness Based on the Biocontrols Website in View of Common Sense and Common Knowledge of Ordinary Artisans .................. 37
C. Ground 3: Obviousness in View of the Biocontrols Website and the Genisis Catalog (“the Genesis Descriptions”) ............................................................ 39
iii
1. The Genesis Descriptions at a Minimum Render Obvious Claims 1, 13, 16-20, 25-26, 30, 32-36, 39-41, 47 & 49. ................................................. 39
2. The Genesis Descriptions at a Minimum Render Obvious Claims 21-23, 42-45 and 50. ............................................................................................ 40
3. The Genesis Descriptions Render Obvious Claims 25 and 26. ................. 41 D. Ground 4: Obviousness In View of the Genesis Descriptions And
Descriptions Of Dr. Schroder’s Work. ........................................................... 42 E. Ground 5: Obviousness in View of the Growing Edge Combined With the
German Text. .................................................................................................. 46 1. The Growing Edge Renders Obvious Claims 1, 30 and 47. ...................... 47 2. The Growing Edge Renders Obvious Claims 13 and 32. .......................... 51 3. The Growing Edge Renders Obvious Claims 14-16 and 33-35. ............... 52 4. The Growing Edge Renders Obvious Claims 18-20, 39-41 and 49. ......... 52 5. The Growing Edge Renders Obvious Claims 23 and 45. .......................... 52 6. The Growing Edge Renders Obvious Claims 25 and 26. .......................... 53
F. Ground 6: Anticipation by Sparkes .............................................................. 53 1. Sparkes Anticipates Claims 1, 30 and 47. ................................................. 53 2. Sparkes Anticipates Claims 13 and 32. ..................................................... 57 3. Sparkes Anticipates Claims 16, 17, 35 and 36. ......................................... 58 4. Sparkes Anticipates Claims 23 and 45. ..................................................... 58
G. Ground 7: Obviousness in View of Sparkes and Common Sense ............... 59 VIII. CONCLUSION .............................................................................................. 59
iv
TABLE OF AUTHORITIES
Cases Abbvie Inc. v. Mathilda & Terrence Kennedy Inst. of Rheumatology Trust,
764 F.3d 1366 (Fed. Cir. 2014) .......................................................................... 47 Amkor Technology, Inc. v. Tessera, Inc.,
Case IPR2013-00242 (PTAB, Jan. 31, 2014) (De Franco, APJ) .......................... 1 Bradford Co. v. Afco Mfg.,
2008 U.S. Dist. LEXIS 15292(S.D. Ohio Feb. 28, 2008) .................................. 25 Clio USA, Inc. v. The Proctor & Gamble Co.,
Case IPR2013-00438 (PTAB, Jan. 9, 2014) (Kamholz, APJ) .............................. 3 Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356 (Fed. Cir. 2006) .......................................................................... 45 Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.,
Case IPR 2014-00570 (PTAB Sept. 30, 2014) (DeFranco, APJ) ......................... 2 Gardner v. TEC Sys., Inc.,
725 F.2d 1338 (Fed. Cir. 1984) .......................................................................... 48 Hoffman-LaRoche, Inc. v. Apotex, Inc.,
748 F.3d 1326 (Fed. Cir. 2014) .......................................................................... 45 In re Boe,
355 F.2d 961 (CCPA 1966) ................................................................................ 49 In re Hall,
781 F.2d 897 (Fed. Cir. 1986) ............................................................................ 26 In re Kerkhoven,
626 F.2d 846 (Fed. Cir. 1980) ............................................................................ 44 In re Petering,
301 F.2d 676 (CCPA 1962) ................................................................................ 47 In re Rhinehart,
531 F.2d 1048 (CCPA 1976) .............................................................................. 48 KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) ...................................................................................... 39, 46 Leapfrog Enterprises, Inc. v. Fisher-Price, Inc.,
485 F.3d 1157 (Fed. Cir. 2007) .......................................................................... 45 Mahurkar v. C.R. Bard, Inc.,
79 F.3d 1572 (Fed. Cir. 1996) ............................................................................ 25 Orion IP, LLC v. Hyundai Motor Am.,
605 F.3d 967(Fed. Cir. 2012) ............................................................................. 25
v
Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 46
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 16
Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013) .......................................................................... 40
Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344 (Fed. Cir. 2001) .......................................................................... 46
Techs, Inc. v. InfoUSA, Inc., 587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 39
Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374 (Fed. Cir. 2013) .......................................................................... 21
Wm Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356 (Fed. Cir. 2012) .......................................................................... 61
Statutes 35 U.S.C. § 102 ..................................................................................... 20, 24, 26, 28 35 U.S.C. § 102(b) .................................................................................................. 27 35 U.S.C. § 103 ....................................................................................................... 12 35 U.S.C. § 112 ....................................................................................................... 12 35 U.S.C. § 315(a)(1) ............................................................................................... 2 35 U.S.C. §§ 311-319 ............................................................................................... 1 Regulations 37 C.F.R. § 42.100 .................................................................................................... 1 37 C.F.R. § 42.100(b) ............................................................................................. 14 37 C.F.R. § 42.104(a) ............................................................................................... 3 37 C.F.R. § 42.8(b)(2) .............................................................................................. 1 37 C.F.R. § 42.8(b)(3)-(b)(4) .................................................................................... 3
vi
Exhibit List for Inter Partes Review of U.S. Patent No. 8,533,992
Exhibit Description Exhibit #
U.S. Patent No. 8,533,992 to Harwood (“the ’992 patent”) 1001
The Best of the Growing Edge (1994) (“Growing Edge”) 1002
U.S. Patent No. 4,332,105 to Nir (“Nir”) 1003
U.S. Patent No. 7,426,802 to Umbaugh 1004
U.S. Patent No. 3,300,895 to Pavlica 1005
U.S. Patent No. 2,175,113 to Fischer 1006
European Patent No. 0440033 to Schroder (“Schroder”) 1007
U.S. Patent No. 5,515,648 to Sparkes (“Sparkes”) 1008
U.K. Patent No. 2,162,033 to Haberda et al. 1009
U.S. Patent No. 6,397,520 to Kosinski 1010
U.S. Patent App. No. 11/224,491 File History excerpt (5/9/2008 Non-Final Rejection)
1011
U.S. Patent No. 8,533,992 File History 1012
Definition of “cloth” from Merriam-Webster Dictionary 1013
http://en.wikipedia.org/wiki/Aeroponics 1014
Affidavit of Christopher Butler on behalf of the Internet Archive regarding www.biocontrols.com
1015
Annotated Version of Biocontrols Website 1016
vii
Genisis Technology Product Catalog 1017
Declaration of Richard Stoner 1018
Declaration of Dr. Merle H. Jensen 1019
Hydroponics Worldwide – A Technical Overview 1020
Basic Principles of Hydroponics 1021
Re-examing Aeroponics for Spaceflight Plant Growth 1022
Letter from Dr. Mostefa Laabasi including Genisis Marketing Literature
1023
Greenhouse Grower (November 1983)
1024
World Farming Agrimanagement (September/October 1984) 1025
Domain Registration for www.aeroponics.com 1026
Nylon Fibers (April 2004) 1027
Cellulose Background 1028
Cellulose Cloths Available on Amazon.com 1029
German Book Erdelose Kulterverfahren im Gartenbau 1030
Certified English Translation of Erdelose Kulterverfahren im Gartenbau
1031
How To Hydropnics 1032
Exemplary Fleece from JoAnn Fabric On-Line Store 1033
Description of Polyester Manufacturing 1034
Fabric History from Fabric University 1035
viii
Wikipedia Article on Fiberglass 1036
Definition of “Edge” From Merriam-Webster Dictionary 1037
Definition of “Attach” From Merriam-Webster Dictionary 1038
Definition of “Release” From Merriam-Webster 1039
Hydroponic Production of Vegetables and Ornamentals 1040
“About Us” Page from Great Veggies LLC 1041
Demand For Arbitration Before JAMS 1042
1:14-cv-00370 NDIL January 17, 2014 Complaint 1043
1:14-cv-00370 NDIL June 16, 2014 Dismissal 1044
Fabric Structures from Fabric Architecture 1045
Mesh and Netting Fabric 1046
U.S. Patent Publication 2009/0008260 to Chang 1047
Textile Dictionary from Fabric Link 1048
Nylon Net Fabric from JoAnn Fabric On-Line Store 1049
Polartec Fabrics – Polartec Classic 1050
Fairchild’s Dictionary of Textiles (7th ed.) 1051
Textiles (11th ed.) 1052
J.J. Pizzuto’s Fabric Science Swatch Kit (8th ed.) 1053
Index No. 650201/2014 NYSCEF October 10, 2014 Stipulation of Discontinuance
1054
ix
October 13-14, 2014 FarmedHere and AeroFarms Email Correspondence
1055
Distribution Agreement between Aero Farm Systems and Cityponic, LLC
1056
Information Disclosure Statement for Serial No. 10/621,618 by Applicant Umbaugh, Jr.
1057
CV of Dr. Merle H. Jensen 1058
1
Petitioner FarmedHere, LLC (“Petitioner”) respectfully petitions for inter
partes review of claims 1, 13-23, 30, 32-36, 39-45, 47, 49, 50 of U.S. Patent No.
8,533,992 (“the ’992 patent”). 35 U.S.C. §§ 311-319 & 37 C.F.R. § 42.100 et seq.
I. NOTICES AND STATEMENTS Petitioner is the real party-in-interest. Pursuant to 37 C.F.R. § 42.8(b)(2),
Petitioner identifies the following related matters. On December 24, 2013, the
Patent Owner filed a demand for arbitration against Petitioner and others, alleging
infringement of the ’992 patent and State law claims. (Ex. 1042.) A demand for
arbitration does not trigger 35 U.S.C. § 315(b). See Amkor Technology, Inc. v.
Tessera, Inc., Case IPR2013-00242 (PTAB, Jan. 31, 2014) (De Franco, APJ). In
Amkor, the Board held that a pre-existing arbitration could not bar a Board review,
emphasizing that Congress intended Board reviews to be a “meaningful and less
expensive alternative to litigation.” Id. Dismissing the Patent Owner’s position,
the Board stated: “[I]n terms of arbitration, a patent owner could invoke an
arbitration clause in a license agreement and make a general allegation of
infringement to trigger a [statutory] deadline [if Patent Owner’s position were
adopted].” Id. That impermissible scenario would not be possible if arbitrations
and Board reviews do not co-exist. Thus, the Board has already acknowledged that
arbitrations and Board reviews are complementary (just as Federal actions and
Board reviews are complementary).
2
Petitioner initially moved to stay the arbitration in New York State Court,
which had no jurisdiction over patent issues. Later, solely and explicitly in the
interest of efficiency, Petitioner withdrew its motion to stay. (Ex. 1054 & 1055.)
FarmedHere continues to dispute that it was bound by an arbitration provision in
the Distribution Agreement at issue in New York, a contract which was executed
before the ‘992 patent (or the AIA) existed. (Ex. 1055 & 1056.) Importantly, even
if it were bound by an arbitration provision in the Distribution Agreement,
Petitioner has never agreed that it would not challenge the ‘992 patent’s validity at
the USPTO. See Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.,
Case IPR 2014-00570 (PTAB Sept. 30, 2014) (DeFranco, APJ) (denying motion to
terminate alleging lack of standing even where patent license arbitration provision
allegedly specifically precluded challenges to validity).
Additionally, Petitioner filed a complaint in January 2014, seeking, inter
alia, a declaratory judgment of invalidity and non-infringement of the ’992 patent.
(Ex. 1043) On June 16, 2014, the District Court dismissed the complaint without
prejudice. (Ex. 1044.) Thus, this Petition is not barred by a pending declaratory
judgment action. 35 U.S.C. § 315(a)(1); Clio USA, Inc. v. The Proctor & Gamble
Co., Case IPR2013-00438 (PTAB, Jan. 9, 2014) (Kamholz, APJ) (A declaratory
judgment action dismissed without prejudice is “considered never to have
existed”).
3
Pursuant to 37 C.F.R. § 42.8(b)(3)-(b)(4), Petitioner identifies the following
counsel (and power of attorney accompanies this Petition) and service information.
Lead counsel is Brian C. Kwok (Reg. No. 58,828.) Backup counsel is Thomas
Mavrakaks (Reg. No. 39,763)
Post and Hand Delivery MAVRAKAKIS LAW GROUP, LLC 735 Emerson St. Palo Alto, CA 94301
Email [email protected] [email protected]
Telephone No. 650.804.7800 Fax No. 650.852.9224
Petitioner certifies that the ’992 patent is available for inter partes review,
and that Petitioner is not barred from requesting an inter partes review. 37 C.F.R.
§ 42.104(a).
II. INTRODUCTION The claims of the ’992 patent recite a method for a specific type of soilless
agriculture – “aeroponic farming.” The Patent Owner did not invent aeroponics.
(Ex. 1001 at Background of Invention.) For example, the ’992 patent identifies a
prior art aeroponic system on display at Walt Disney World since the early 1980’s.
(Id. at 1:26-62.) Dr. Merle Jensen, whose Expert Declaration and CV accompany
this Petition, designed that system. (Ex. 1019 at ¶ 7; Ex. 1058 .)
The ’992 patent therefore begins with the concession that its alleged
invention at most “enhances the efficiency of aeroponic farming.” (Ex. 1001 at
4
1:21-22.) But the alleged “enhancement” that resulted in the patent claims was not
the Patent Owner’s idea. At the United States Patent and Trademark Office (“the
USPTO”), the Patent Owner made the factual assertion that he was the first to use
cloth as a seed and plant growth substrate in an aeroponic system. The Patent
Owner got this fact wrong first in the specification, (see, e.g., Ex. 1001 at 5:19-21),
and then repeatedly in prosecution arguments. Significantly, the Patent Owner’s
claim was the primary reason the patent claims were allowed.
Cloth, however, was a well known growth substrate used in numerous
soilless agriculture systems including aeroponic systems, as illustrated by the prior
art accompanying this Petition. Before 2004, many types of cloth, including the
’992 patent’s preferred fleece, had been used in soilless farming. Yet none of the
prior art relied upon in the grounds of this Petition disclosing cloth growth
substrates was considered by the USPTO.
Moreover, the dependent claims challenged here fare no better. The details
recited in these claims are not emphasized in the specification and were not
addressed in the prosecution history. That is unsurprising because the dependent
claims merely introduce routine implementation details. As one example, some
dependent claims (e.g., claims 18-20) further recite growing leafy greens and/or
salad greens, which had been grown in aeroponic systems for decades. (See Ex.
1019 at ¶¶ 84-86; see, e.g., Ex. 1020 at 1-4.)
5
III. TECHNOLOGY BACKGROUND AND SUMMARY OF ALLEGED INVENTION
A. Technology Background
Soilless growing encompasses several different techniques and was a well-
established field prior to 2004. As the name suggests, seeds and plants are grown
on something other than soil – ordinarily a growth substrate. (See Ex. 1021; Ex.
1020 at 1-4.). Soilless techniques all share the approach of delivering water and
nutrients (a “nutrient solution”) to seeds and/or plant roots without the presence of
soil. There are a variety of soilless growing techniques, including aeroponics, that
offer different methods of nutrient solution delivery. (See Ex. 1021.)
1. Soilless Systems
“Hydroponics” – a technique known since the 1850s, (Ex. 1001 at 1:39-43)
– involves growing plants without soil through the use of a variety of growing
media or substrates that support and deliver a nutrient solution to plant roots and/or
seeds. (See Ex. 1019 at ¶¶ 18-19; Ex. 1002 at 10.).
One variation of the traditional hydroponic technique is the nutrient film
technique (“NFT”), in which the nutrient solution supply to the plant roots beneath
the growth medium is continuously recirculated, as opposed to, for example, using
a static nutrient solution source to nourish the plant roots. (See Ex. 1001 at 1:43-
46; Ex. 2 at 8-9; see also Ex. 1019 at ¶ 26.) Another variation known as “ebb and
flow,” which the ’992 patent characterizes as “distinct” from its aeroponic system,
6
involves “periodically submer[ging] [plant roots] in liquid nutrients[,]” such that
the nutrient solution ebbs and flows throughout the reservoir. (See Ex. 1001 at
1:26-29.)
Another variation on the hydroponic technique is the “aeroponic” technique,
which allows nutrient solution to be supplied to the base of the growth substrate
containing seeds, or to plant roots suspended below the substrate, via an aerated
mist. (See, e.g., Ex. 1002 at 19-20; Ex. 1019 at ¶ 27.) The ’992 patent states that
aeroponic systems are better than systems such as NFT and “ebb and flow” which
have “drawbacks” such as requiring “large amounts of water.” (See Ex. 1001, at
1:52-56.) A prior art aeroponic system with a support collar substrate is below.
(Ex. 1002 at 4.)
7
2. Growth Substrates
Hydroponic systems ordinarily require some sort of growth media, also
known as growth substrates, to provide physical support for plants, to shield the
plant roots from light when necessary, and typically to provide a way to deliver
nutrient solution to plant roots and/or seeds. (Ex. 1019 at ¶ 22.) More absorbent
substrates typically allow seeds to be germinated directly on the substrate, whereas
less absorbent substrates typically require seeds to be germinated at another
location and transferred to the growth substrate for the majority of the plant’s
growth cycle. (Id.) Well before 2004, an identified, predictable set of growing
media had been employed as alternatives to soil in soilless cultivation. (Id. at ¶¶
20-21.) Examples included screens, rock wool and pea gravel. (See, e.g., Ex. 1002
at 4-5 (“The Growing Medium”); Ex. 1003 at 5:41-56; Ex. 1004 at Figs. 2-4.)
Importantly here, soilless growing media also included cloths and fabrics such as
cheesecloth, flannel, fleece and cotton. (See, e.g., Ex. 1005 at 3:28-39; Ex. 1006 at
1:11-45; Ex. 1007, European Patent No. 04403381 (“the Schroder Patent”) at 1:1-
6.) These soil substitutes all perform the same function as soil would –
transporting water and nutrients to the plant’s roots and supporting its root
structure. For example, U.S. Patent No. 3,300,895 describes a hydroponic
apparatus for growing seeds on a cotton wool pad that absorbs nutrient-rich liquid
from a reservoir. (See Ex. 1005 at 3:28-39.) In fact, cloth materials have been
8
developed specifically for use with soilless cultivation, such as, for example, the
cloth material described in U.S. Patent No. 6,397,520. (See Ex. 1010 at 3:17-40 &
6:43-53 (describing “fiberballs” made from natural or synthetic fibers that absorb
“nutrient liquid” when used with known hydroponic methods such as spraying).)
It is thus unsurprising that many different types of growing substrates had
been used in aeroponic systems including absorbent cloth growth substrates. (See,
e.g., Ex. 1008, U.S. Patent No. 5,515,648 (“Sparkes”) at 6:9-18, 6:66-7:10
(describing the use of fiber glass cloth, absorbent mats and foam as growth media
in an aeroponic growing apparatus).) As early as the 1980’s, an aeroponic
apparatus was described in printed publications as using “cloth seed support
sheets.” (See Ex. 1017 at 6.) A further example is U.K. Patent No. 2,162,033,
which describes a growing media for use in an aeroponic system made of “non-
woven fabrics.” (See Ex. 1009 at 2:39-43.)
B. General Description of the ’992 Patent
The ’992 patent states: “The invention relates … to an apparatus which
enhances the efficiency of aeroponic farming.” (Ex. 1001 at 1:20-22.) The
Abstract provides that the invention is “[a] system and method of aeroponic
farming includes depositing seeds in a flat containing micro-fleece cloth and
placing the flat within a growth chamber.” (See Ex. 1001 at Abstract.)
9
Elaborating on its purported enhancement to aeroponics, the ’992 patent
describes modular “growth chambers.” (See id. at 11:32-34.) An alleged benefit
of the growth chamber was its “flexibility” since each chamber could be “tailored”
to “the specific needs of the plants being grown including light, temperature,
nutrient composition, delivery and space.” (Id. at 11:32-39) The growth chambers
included a “flat” growth substrate (a microfleece in the preferred embodiment),
support for the growth substrate, nozzles to spray nutrient solution, a light source,
and seeds and resulting plants. Figure 8 illustrates the exterior and a cut away
interior of a “growth chamber.”
US. Patent
Sep. 17, 2013 Sheet 6 of7
US 8,533,992 B
2
10
The ’992 patent claims: “Cloth as a growing medium is new, unique, and
well suited to the purpose of growing plants.” (Ex. 1001 at 5:19-21.) The ’992
patent identifies the avoiding of particulates, ease of handling and cleaning, and
optimal simulation of proper growing conditions as alleged benefits of cloth over
other existing growth media. (Id. at 5:21-35.) According to the ’992 patent, the
preferred cloth “reduces light to the root zone and absorbs nutrients protecting the
spray from reaching the plant foliage.” (Id. at 5:44-46.) Figure 1 illustrates that
cloth.
C. Level of Skill in the Art
A person of ordinary skill in the art would have been someone with a good
working knowledge of soilless agriculture including aeroponic systems. (See Ex.
1019 at ¶ 51.) The ordinary artisan would be very familiar with general agriculture
principles (e.g., the light and nutrients optimal for particular crops, etc.), the types
11
of crops that had been grown with soilless agriculture and the specific
requirements for soilless agriculture (e.g., known substitutes for soil, fluid delivery
mechanisms, avoiding exposing roots to light, etc.). (See Ex. 1019 at ¶ 51; Ex.
1020 at 1-7 (“A successful grower who grows in soil usually has a good
knowledge of horticulture, soils, plant pathology, entomology, and plant
physiology, as well as the engineering capability to provide an environment best
suited for plant growth”); Ex. 1032 at 15 (describing reasons to avoid exposing
roots to light.) Likewise, an ordinary artisan would be proficient in selecting and
sizing a particular growth substrate based on the requirements of a particular
application (e.g., type of crop, availability of water, etc.) (See Ex. 1019 at ¶ 51.)
As discussed by Dr. Merle Jensen, the ordinary artisan would have been part of a
“do-it-yourself” culture in which artisans are motivated to build their own
hydroponic systems (including aeroponic systems), experimenting with off-the-
shelf items. (See Ex. 1019 at ¶ 51; Ex. 1002 at 10-11; Ex. 1032 at 62-97.)
The ordinary artisan would have gained their knowledge through an
undergraduate Bachelor’s degree in agriculture or a comparable field, in
combination with 3-5 years of work experience with soilless agriculture. (See Ex.
1019 at ¶ 52.) Alternately, under appropriate circumstances, an equivalent level of
ordinary skill could also be obtained via 5-7 years of work experience absent a
college degree. (See id. at ¶ 52.)
12
D. Prosecution of the ’992 Patent
The Patent Owner filed Provisional Application No. 60/608,687 on
September 10, 2004. The Patent Owner’s first attempt to obtain patent coverage
was Application No. 11/224,491 filed on September 12, 2005, and resulted in all
pending claims being rejected and abandoned. There, the Examiner found the
Patent Owner’s broad claims were anticipated or rendered obvious by U.S. Patent
No. 4,332,105 (“Nir”), Exhibit 1003. The Examiner reasoned that Nir disclosed an
aeroponic system including a screen growth substrate for seeds, light, and nutrient
solution spray onto the lower side of growth substrate. (Ex. 1011 at 2-3.)
The Patent Owner then filed Application No. 12/189,712. During the
pendency of Application No. 12/189,712, the Patent Owner filed Application No.
12/965,210, which resulted in the ’992 patent. Initially, the Patent Owner’s
narrowed claims were rejected under 35 U.S.C. § 112 and 35 U.S.C. § 103 as
obvious over Nir in view of U.S. Patent No. 4,047,327 (“Tesch”). (Ex. 1012,
5/11/2011 Non-Final Rejection at 3-14.) Tesch disclosed a woven or knitted fleece
material used to curb weed and other undesirable growth. (Id. at 5-6)
In response, the Patent Owner amended the claims and argued that the prior
art did not disclose the claimed limitations because Nir “does not teach nor suggest
a method of aeroponic farming wherein seeds are deposited on a cloth material[.]”
(Ex. 1012 11/10/11 Amendment and Remarks at 16.) Furthermore, the Patent
13
Owner argued that Tesch “specifically teaches away from implementing a cloth
material for growing plants and allowing roots to penetrate the cloth material, as
claimed by Applicant[.]” (Id.)
The Examiner maintained several of the rejections under section 112, and
issued final rejections for all pending claims. (Ex. 1012, 12/21/2011 Final
Rejection.) In particular, the Examiner rejected the pending claims as obvious
over Nir in view of JP 5-146231 and additional references, finding that JP 5-
146231 (“Koide”) disclosed the cloth material allegedly missing from the prior art.
(Id. at 4) Koide discloses a fabric growing medium that absorbs water in a
hydroponic apparatus. In the rejection, the Examiner reasoned that it would have
been obvious to include the fabric of Koide in Nir’s aeroponic system. (Id.)
The Patent Owner then requested an interview with the Examiner. There,
the Patent Owner argued that the prior art did not disclose a cloth material that
absorbs nutrient solution to promote growth of seeds and plants. (Ex. 1012,
2/27/2012 Request for Continued Examination.) The Examiner suggested
amending the claims “to include the limitations of the at least one cloth material
absorbs the nutrient solution to establish an available source of nutrient solution to
promote growth of the seeds and plants.” (Ex. 1012, 2/8/2012 Interview
Summary.)
14
In response, the Patent Owner amended all independent claims to require
that “the at least one cloth material absorbs the nutrient solution to establish an
available source of nutrient solution to promote growth of the seeds and plants,” as
the Examiner suggested. (Ex. 1012, 2/27/2012 Request for Continued
Examination.) The Patent Owner purported to differentiate the growth substrate in
the prior art as either incapable of absorption in the case of Nir, or not providing a
source of nutrients in the case of Koide. (Id. at 15 & 17-22.) The Examiner then
allowed the claims. (Ex. 1012, 5/28/2013 Notice of Allowability.)
IV. CLAIM CONSTRUCTION Claims must be given their broadest reasonable interpretation in light of the
specification here. 37 C.F.R. § 42.100(b). Petitioner’s positions here are not to be
taken as a concession regarding the appropriate scope to be given to claim
elements in another forum. The following discussion of claim interpretation is
supported by the Expert Declaration of Dr. Merle Jensen. (Ex. 1019 at ¶¶ 53-58.)
A. “Cloth Material”
Petitioner proposes that the broadest reasonable interpretation of “cloth
material” is: “a flexible material constructed from solutions, fibers, yarns, or
fabrics, in any combination.”
The term “cloth material” appears in all three of the ’992 patent’s
independent claims. The ’992 patent uses the words “cloth” and “fabric”
synonymously in the specification and claims. (Ex. 1001 at 5:14-46, 6:62-7:43 &
15
claims 17 & 36.) Technical literature confirms that “cloth” and “fabric” are
synonyms. (Ex. 1051 at 120 (defining “cloth” as “a generic term for all textile
fabrics.”); Ex. 1052 at 560 (same).) The ‘992 patent’s “fabric” “growing medium”
is preferably “flat” and made of “non-organic fibers.” (Ex. 1001 at 4:56-5:2.)
Technical literature provides definitions of “fabric” in accord with Petitioner’s
proposed interpretation. (Ex. 1051 at 208 (“A flexible sheet material that is
assembled of textile fibers and/or yarns that are woven, knitted, braided, netted,
felted, plaited, or otherwise bonded together to give the material mechanical
strength.”); Ex. 1052 at 7 (defining “fabric” as “a flexible planar substance
constructed from solutions, fibers, yarns or fabrics, in any combination”).)
Likewise, from Merriam-Webster’s, “cloth” means “1a: a pliable material made
usually by weaving, felting or knitting natural or synthetic fibers and filaments and
1b. similar material (as of glass).” (Ex. 1013.) With reference to Ground 6 below,
the lay definition makes clear that certain materials made of glass fibers are
understood to be “cloth.” (See also Ex. 1053 at Assignment 3 (describing “glass”
as a “fabric”).)
One of ordinary skill in the art would understand the term “cloth material” to
be consistent with the technical and lay literature. (Ex. 1019 at ¶¶ 53-54.) The
’992 patent specification refers to the “weave” of the cloth, (see, e.g., Ex. 1001 at
5:26), but dependent claim 17, for example, states that “the cloth comprise[s] a
16
woven fabric.” Thus, the “cloth material” may not be limited to woven cloth (or
any species of cloth). See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (Claims of narrower scope can clarify the meaning of broader claims).
B. “Attaching at Least Some of the Edges/Releasably Attaching at Least Some of the Edges”
Dependent claims 21, 22, 42, 43 and 50 recite either “attaching at least some
of the edges of the at least one cloth material from a support” or “releasably
attaching at least some of the edges of the at least one cloth material from a
support.” Petitioner provides here broadest reasonable interpretations for “edges,”
“attaching” and “releasably attaching.”
1. “edges”
Petitioner proposes that the broadest reasonable interpretation of “edge” is
“a narrow portion of the cloth material adjacent to its border.” (Ex. 1019 at ¶ 55.)
The word “edge” in the patent claims is used to modify where “cloth material” is
attached to a support. “Edge” is a common English word that, in the context of an
object like the “cloth material,” is defined by Webster’s to mean “the narrow part
adjacent to a border.” (Ex. 1037.) In the preferred embodiment, the cloth is
“fastened via snaps” to a trolley. (Ex. 1001 at 8:1-3 & Fig. 6B.) The snaps are
illustrated as being in the body of the cloth – slightly removed from the end of the
cloth.
17
2. “attaching”
The broadest reasonable interpretation of the word “attach” is “to fasten or
join one thing to another.” (Ex. 1038.) As discussed above, the “edge” of the
cloth material is claimed as being “attach[ed]” to a support. Consistently, the
preferred embodiment notes that the cloth material is fastened to a trolley. (Ex.
1001 at 8:1-3 & Fig. 6B; see also Ex. 1019 at ¶ 56.)
3. “releasably attaching”
The term “attaching” is further modified in the claims as “releasably
attaching.” As discussed immediately above, the cloth material is fastened to
snaps, which in turn can be unsnapped. The ’992 patent notes that the cloth
material may be “machine wash[ed]” and “reused”. (Ex. 1001 at 5:41-42, 5:58-
64.) The term “releasably attaching” should be construed to mean “non-
permanently fastening or joining one thing to another.” (Ex. 1039; Ex. 1019 at ¶
57.)
V. IDENTIFICATION OF CHALLENGE Petitioner respectfully requests cancellation of claims 1, 13-23, 30, 32-36,
39-45, 47, 49, and 50 of the ’992 patent as unpatentable under (pre-AIA) 35 U.S.C.
§§ 102 and 103 based on the following grounds.
Ground 35 USC Claims Reference(s)
1 102(a) 1, 13, 16, 18-23, 30, 32, 35, 39-45, 47, 49 & 50
www.biocontrols.com
18
2 103(a) 14-15, 17, 33-34 & 36 www.biocontrols.com in view of common sense and common knowledge
3 103(a) 1, 13, 16-23, 25-26, 30, 32-36, 39-45, 47 & 49- 50
www.biocontrols.com in view of Genisis Catalog
4 103(a) 14-17 & 33-36 The Biocontrols Website and/or the Genisis Catalog in view of descriptions of work by Dr. Fritz Schroder
5 103(a) 1, 13, 14-20, 23, 30, 32-36, 39-41, 45, 47 & 49
The Best of the Growing Edge
6 102(a) 1, 13, 16, 23, 30, 32, 35, 45 & 47
Sparkes
7 103(a) 1, 13, 14-15, 16, 17, 23, 30, 32, 33-36, 45 & 47
Sparkes in view of common sense and common knowledge and/or Schroder
A discussion follows explaining why each of the challenged claims is
unpatentable.
VI. OVERVIEW OF REFERENCES Petitioner presents below a discussion of key features of prior art references
that form the basis for the Grounds below.
A. Overview of the Biocontrols Website
The Biocontrols Website was (and still is) a resource for information and
products relating to aeroponic growing. (See www.biocontrols.com.) In addition
to selling aeroponic growth chambers such as the Genesis Growing System, the
19
Biocontrols Website also offered education on aeroponic growing such as
recommendations on nutrients and light sources. (Ex. 1018 at ¶ 8.) The Genesis
Growing system, was the work of aeroponics pioneer Mr. Richard Stoner, whose
Declaration accompanies this Petition. (Ex. 1018.)
The version of the Biocontrols Website reflected in Exhibit 15 was available
on the Internet as early as the late 1990’s. Exhibit 1015 is a snapshot of the
Biocontrols Website from 2002, well before the critical date. (See Ex. 1015,
Affidavit of Christopher Butler at 1-2.) Exhibit 1016 is the identical document to
Exhibit 1015 except that Petitioner has added page numbers for ease of reference.
As illustrated above, the Biocontrols Website was generally available to the public
on the Internet, and existed at least in part to promote and teach aeroponic
technology to as many interested persons as possible. (Ex. 1018 at ¶ 8)
Beginning in the 1980’s, Mr. Stoner tried to raise awareness of Genesis and
his work with aeroponics as much as possible via press releases, publishing papers,
etc. (Ex. 1018 at ¶ 10; Ex. 1022; Ex. 1023; Ex. 1024; Ex. 1025.) In order to drive
potential customers and interested persons to the Biocontrols Website, Mr. Stoner
had registered in the late 1990’s the domain name “www.aeroponics.com,” and
that web address directed an Internet user to the Biocontrols Website. (See Ex.
1018 at ¶ 9; Ex 1016 at 8 (directing interested persons to email for information at
[email protected]); Ex. 1026, Domain Registration for www.aeroponics.com.)
20
Particularly given the years a site known as “www.aeroponics.com” was freely
accessible on the Internet, an ordinary artisan, who likely already would know of
Genesis as a result of marketing efforts over decades, performing a simple Internet
search for “aeroponics” – let alone exercising reasonable diligence – would have
been able to locate the Biocontrols Website. See, e.g., Voter Verified, Inc. v.
Premier Election Solutions, Inc., 698 F.3d 1374, 1380-81 (Fed. Cir. 2013)
(Content located on a website “undisputedly open to any internet user” constituted
a “printed publication”). For example, on July 18, 2003, a year before the priority
date of the ‘992 patent, the owner of U.S. Patent No. 7,426,802 cited the
Biocontrols Website as prior art. (Ex. 1004; Ex. 1057.) The Biocontrols Website
is therefore prior art. See 35 U.S.C. § 102.
The Biocontrols Website describes an aeroponic system branded “Genesis.”
Genesis was an aeroponic growth chamber that had an upper part and a lower part.
(Ex. 1016 at 20-23.) The growth chamber can be used to grow plants such as
lettuce from seeds, resulting in “abundant harvests.” (Id. at 1, 13-14.)
The top of the growth chamber includes holes called “plant support
structures” which are open to the air. (Id. at 10.) The “plant support structures”
support non-organic cloth growth substrates called Seed-Pads, Aero-Pads and
Aero-Nets at their edges. (Id. at 9-11.) The Seed-Pads, Aero-Pads and Aero-Nets
are flexible so that they may be inserted in the “plant support structures.” (Id.)
21
A “net” is a type of fabric. (Ex. 1051 at 208 & 383; Ex 1052 at 347.)
Ordinary artisans have used the word “pad” to describe cellulose wool cloth for
growing seeds in a soilless system. (See, e.g., Ex. 1005 at 3:7-40.) Consistently, in
Genesis, the cloth “nets” and “pads” are used to hold seeds and/or plants. (Ex.
1019 at ¶ 63.) Further, these cloth “nets” and “pads” are described as retaining
varying amounts of nutrient solutions so that a grower could pick a substrate suited
to his or her needs. (Id. at ¶¶ 64-67.)
More particularly, the Aero-Nets are described as being made of plastic
coated nylon fibers. (Ex. 1016 at 10.) By 2004, nylon had long been used to make
cloth including the “nylons” product synonymous with women’s stockings. (Ex.
1019 at ¶ 64; Ex. 1027; Ex. 1004 at 3:49 (noting nylon as an example of “fabric”);
Ex. 1052 at 158-166; see also Exs. 1045-1049.) The Aero-Pads are described as
being nylon fibers attached to a dark “degradable cellulose material.” (Ex. 1016 at
10.) Cellulose is a well known fiber – a common example of which is cotton fibers
– used to make cloth. (Ex. 1028; Ex. 1029; Ex. 1052 at 58-59.) Ordinary artisans
had long used cellulose fiber cloths to grow seeds and plants in soilless systems.
(Ex. 1005 at 3:7-9 (“The pad 4 may consist of cellulose, cotton wool[.]”); Ex. 1010
at 2:56-59 (noting cellulose as a preferred organic fiber used to form a cloth
growth substrate).) The Seed-Pads are another fabric that visually appears similar
22
to gauze. (Ex. 1019 at ¶ 66; Ex. 1006 at 1:46-2:8 (describing a “fabric or gauze”
disc used a growth substrate in a soilless system).)
Genesis included spray nozzles inside the lower part of growth chamber to
supply nutrient solution to seeds and/or plant roots in the nets/pads in the upper
part of the growth chamber. (Ex. 1019 at ¶ 61.) The Biocontrols Website also
teaches using various types of lights to promote plant growth. (Id.) Pictures of the
cloth substrates show that they are non-transparent (the Aero-Pad being the
darkest), and therefore they inhibit light from reaching the roots of growing plants.1
An illustration and various pictures of Genesis are reproduced below
including a picture showing roots growing into the body of the chamber.
1 Aero-Nets “are suitable for … seeds (2 mm dia[meter] and larger)[.]” (Ex.
1016 at 9.) Thus, there are openings in the net smaller than 2 mm. (Id.) Light can
pass through these openings, but light will be blocked by the material of the net.
23
B. Overview of the Genisis Catalog
Like the Biocontrols Website, the Genisis Catalog is also the result of Mr.
Stoner’s work. Before the widespread availability of the Internet, Mr. Stoner,
through his company Genisis Technology, Inc., sold his aeroponic growth
chambers via print catalogs such as the one reflected in Exhibit 1017 (“the Genisis
Catalog”). In the 1980’s, Mr. Stoner widely distributed the Genisis Catalog to the
public in order to generate interest and sales. (Ex. 1018 at ¶ 3.) The Genisis
Page Number 020Page Number 020
24
Growing System depicted in the Genisis Catalog is an early version of the Genesis
Growing System that was later sold via the Biocontrols Website. The Genisis
Catalog describes all of the components necessary to assemble an aeroponic
growth chamber and how to operate them. Mr. Stoner distributed this catalog via
mail and in-person handouts at various trade shows in the United States during the
1980’s. (Id. at ¶ 4) He estimates that the Genisis Catalog was disseminated to
thousands of individuals and entities in the United States. (Id. at ¶ 6) Accordingly,
the Genisis Catalog was widely disseminated and publicly accessible prior art. See
Orion IP, LLC v. Hyundai Motor Am., 605 F.3d 967, 974-975 (Fed. Cir. 2012)
(Electronic Parts Catalog was “printed publication” accessible to those interested
in automobile parts); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir.
1996) (same); Bradford Co. v. Afco Mfg., 2008 U.S. Dist. LEXIS 15292, at *10
(S.D. Ohio Feb. 28, 2008) (same). The Genisis Catalog is therefore a prior art
“printed publication.” See 35 U.S.C. § 102; In re Hall, 781 F.2d 897, 899 (Fed.
Cir. 1986).
Because it is an earlier description of the same product, the growth chamber
in the Genisis Catalog is mechanically the same as the growth chamber of the
Biocontrols Website. The catalog, however, describes a few implementation
variations relevant here.
25
First, the Genisis Catalog describes a poly fiber cloth seed support sheet (or
alternately a mesh sheet) attached beneath the “plant support structures” to provide
circular growth substrates across the top of the chamber. (Ex. 1017, at 6; see also
Ex. 1019 at ¶¶ 116-117.) As illustrated in the picture on page 6 of the catalog, the
attached poly cloth sheet is horizontally disposed as a support so that seeds can
grow from the top of Genesis. (Ex. 1017, at 6; see also Ex. 1019 at ¶¶ 116-117.)
Second, the Genisis Catalog notes an “effluent station” and “filtration
station” connected to the growth chamber for receiving excess nutrient solution.
(Ex. 1017 at 14.) The effluent station and filtration station are used to recycle the
nutrient solution to conserve nutrient solution. (Ex. 1019 at ¶¶ 116-117.)
A picture of the system of the Genisis Catalog growth chamber, which looks
the same as the product from the Biocontrols Website, is below.
GENISIS TECHNOLOGY, INC. P.O. BOX 7180, BOULDER, COLORADO 80306
SEED GERMINATION CHAMBER SPECIFICATIONS
SIZE: 15.25" X 18" X 49.75" Inches (121bs)
MATERIAL: Polystyrene with ultra-violet light stabilizer, PVC fittings and brass impingement jets, 10 year life. Mesh/cloth sheets are included.
OPERATING REQUIREMENTS: Chamber must be used in greenhouse (or equivalent) conditions which supply full sunlight or high intensity grow lights, water pressure 35 to 90 psi max., fresh air, sanitary conditions, and a temperature range of 75Q to 85Q degrees F.
DESCRIPTION: The Seed Germination Chamber is designed to generate and grow thousands of plants in a 6.4 sq ft area. The Seed Germination Chamber provides an enclosed air environment that retains moisture and heat for rapid plant growth. The Seed Germination Chamber is connected to the Hydro Control Unit (SCU or CCU) and Digital Timer, which control and deliver a high intensity pulsed spray of water and nutrients to the Chamber. Seeds (depending upon seed size) are supported by either poly mesh or cloth sheets suspended inside the chamber. The hydro-atomize spray of the water/nutrient solution is delivered to the underside of seed support sheets for fast germinqtion and root growth. '
FEATURES: Each Seed Germination. Chamber top contains 161 edgeless holes with mesh supports for germinating seeds. The modular patented design of the Seed Germination Chamber allows easy seed placement and plant removal. The Seed Germination Chamber bottom supports the water supply pipe and spray arms and provides for the discharging of all effluent water. The Seed Germination Chamber tops are available in two sizes : 1 /2" or 1" inch holes. The Seed Germination Chamber top is interchangable with any Chamber bottom. Replacable mesh or cloth seed support sheets (14 inches x 45 inches) are included. Select one of the following a.) Poly mesh screen (fine or coarse), b.) Poly fiber cloth 3/16" thick.
APPLICATION: Up to ten Seed Germination Chambers can be connected in series. Each chamber can be used for germinating plants by placing seeds (the amount depending upon seed size) in each of the edgeless holes on the Chamber top. The selected mesh or cloth supports the seeds. Once the seeds have germinated they can be easily pulled from the Germination Chamber and transplanted to a Growing Chamber or soil.
6
26
C. Overview of European Patent No. 04403381 (“Schroder”) and Erdelose Kulturverfahren im Gartenbau (“the German Text”)
First, European Patent No. 04403381 (“the Schroder Patent”) was first
published on August 7, 1981, and therefore is prior art to the ’992 patent. See 35
U.S.C. § 102. It represents the early 1990’s work of Dr. Fritz-Gerald Schroder
described in a number of references in this Petition.
The Schroder Patent discloses a method for growing plants in fleece material
instead of soil using a hydroponic growing apparatus. (Ex. 1007.) The hydroponic
method disclosed in Schroder differs from an aeroponic method like Genesis in
· Genisis Technology, Inc.
GBNISIS GRoWING SYSTEM PATEN'l'ED
FOR ACCELERATED PLANT PROPAGATION AND FULL TERH GRO--wTH
CAT ALOGil
27
that the nutrient solution in Schroder is supplied by immersing the growing
medium (the fleece) in liquid via plastic hoses. (See Ex. 1007 at 1:19-24.)
Second, the textbook Erdelose Kulterverfahren im Gartenbau (“the German
Text”) was published in German in 2002. (Ex. 1030, Erdelose Kulterverfahren im
Gartenbau.) The German Text is a prior art printed publication. 35 U.S.C. §
102(b). It includes a section of a chapter elaborating on Dr. Schroder’s work. A
certified copy of a translation of the relevant portions of the German Text is
attached hereto as Exhibit 1031.
Certain descriptions of Dr. Schroder’s work have noted the use of a film
with slits over the fleece growth substrate for certain crops. The German Text
describes that the film is not used in the case of vegetables such as radishes. (Ex.
1031 at 31.) Rather, “seeds were strewn directly on the wet fleece[.]” (Id.) The
German Text highlights the benefits of “black polyester fleece,” noting that it “can
be used for several years following rough cleaning[.]” (Id. at 28.) The German
Text also notes that roots develop under the black fleece if they are sensitive to
light. (Id. at 32.) This is because the black fleece inhibits the light from passing
through to the roots. (Ex. 1019 at ¶ 135.)
28
D. Overview of The Best of the Growing Edge (“The Growing Edge”)
The Best of the Growing Edge (“The Growing Edge”) is a single book, and
thus a single printed publication pursuant to 35 U.S.C. § 102. The Best of the
Growing Edge was first published in 1994, and therefore is prior art.
The Growing Edge is a magazine that began publication in approximately
1989 to address new techniques and equipment for cultivating plants, including
hydroponics and aeroponics. The Best of the Growing Edge is a collection of
articles from the first five years of the magazine’s publication assembled as a book.
(Ex. 1002.) The book starts with an introduction to various soilless systems
including a description of a standard aeroponic system and goes on in another
chapter to suggest that readers could “Build Your Own Hydroponic System!” It
also includes a substantial discussion of artificial lighting to promote
photosynthesis. (Ex. 1002 at 98-101.) Included in this collection is an article titled
“Aero-Hydroponics: the Hydroponic Method of the Future!” that discloses a
particular aeroponic system. Also included in this collection is the article “Plant
Plane Hydroponics” authored by Dr. Schroder.
“Plant Plane Hydroponics” discloses using fleece as a growing medium in
hydroponic cultivation. And, like the German Text, the Growing Edge underscores
the benefits of fleece as a growth substrate, highlighting that it can be “used for
three to five years without replacement[.]” (Ex. 1002 at 22.)
29
E. Overview of U.S. Patent No. 5,515,648 (“Sparkes”)
U.S. Patent No. 5,515,648 (“Sparkes”) issued as a U.S. patent on May 14,
1996, and it therefore constitutes prior art.
Sparkes discloses a soilless growing apparatus directed at solving the
problem of inconsistent light levels among crops. (See, e.g., Ex. 1008, at 1:7-15.)
Sparkes addresses this problem by rotating plants about a single light source so that
each of the plants in the apparatus is subjected to an equal amount of light. (Id. at
1:54-58) The Sparkes apparatus is an aeroponic system because it provides water
and nutrients via a “sustained mist.” (See, e.g., id. at 5:66.) Figure 2 illustrates the
sustained mist of nutrient solution being supplied below the growth substrate,
which in turn provides a source of nutrient solution to the plant roots (or, earlier,
seeds).
30
Sparkes describes a variety of cloth growth substrates to support the seed
and plant such as strips of material, foam, fiberglass cloth or a mat. (Id. at 6:12-15
& 7:1-2; see also Ex. 1007 at 1:54-57 (describing “the use of fiberglass mats to
support water distribution in closed or open cultivation systems.”).) As illustrated
in Figure 2, the growth substrate is exposed to the air, absorbs sprayed nutrient
solution so the spray does not reach the growing plant, and inhibits light from
reaching the plant roots. (Ex. 1008 at 4:6-11, 5:36-59, 7:44-50 & Figs. 2 & 4.)
5,515,648
/r\\\\ Sheet 2 0f 5 US. Patent
May 14, 1996
\\\\ \ \
\
- 5‘
ON . “
8
\\\\\\\\ \\\\ N .mm
31
VII. SPECIFIC GROUNDS FOR REJECTION The reasons for the Grounds below are set forth in the discussion and claim
charts below. The Grounds are also supported by the discussion of prior art above
and the Expert Declaration of Dr. Merle Jensen. (Ex. 1019.)
A. Ground 1: Anticipation By The Biocontrols Website
As further discussed below, the Biocontrols Website anticipates claims 1,
13, 16, 18-20, 23, 30, 32, 35, 39-41, 45, 47 and 49 of the ’992 patent. (See Ex.
1019 at ¶¶ 68-110.)
1. The Biocontrols Website Anticipates Claim 1, 30 and 47.
As shown in the claim charts and discussion below, the Biocontrols Website
anticipates claim 1, 30 and 47 of the ’992 patent. (See Ex. 1019 at ¶¶ 68-78, 88-98
& 104-105.)
Claim 1 www.biocontrols.com A method of aeroponic farming, comprising:
Ex. 1016 at 9-10, 13 & 20-22.
providing a growth chamber configured and dimensioned to receive at least one cloth material;
Ex. 1016 at 9-11, 13, & 20-22. “Insert vegetative cuttings or seeds into the chamber top.” Id. at 20. “Seed pads fit firmly in the Aeroponic plant support structures.” Id. at 10.
providing the at least one cloth material;
Ex. 1016 at 9-10 & 13. “[A]ero-Nets are made of plastic coated nylon fibers.” “[A]ero[Pads] are made of plastic coated nylon fibers that are welded to a special degradable cellulose material.” “Sterile media with balanced moisture retention and air exchange for hi-density yields … Seed-Pads provide a flexible support of any type of seed from germination to harvest.” Id. at 9-10.
depositing seeds on the at least one cloth material,
Ex. 1016 at 9-10. “Aero-Pads are suitable for even the smallest seeds and micro plants that will be grown to
32
said at least one cloth material functioning to support the seeds thereon;
full term.” “Seed-Pads provide a flexible support of any type of seed from germination to harvest.” Id. at 9-10.
subjecting an upper surface of the at least one cloth material to light of the proper frequencies in the growth chamber to promote photosynthesis in plants; and
Ex. 1016 at 24-29. “Only 37% of the energy in sunlight is within the wavelength (color) useful for photosynthesis, while 62.4% is infrared (thermal energy) and the remaining 0.6% is ultraviolet.” Id. at 24. “According to our research for NASA, care should be taken to ensure that plants grow under an artificial light source have adequate infra-red protection to prevent undue environmental stress for the plants.” Id. at 25. “The indoor grower has several options for maximizing the artificial light energy for photosynthesis.” Id. at 26.
spraying a nutrient solution onto the at least one cloth material and a developing root mass of the plants in the growth chamber, wherein the at least one cloth material absorbs the nutrient solution to establish an available source of nutrient solution to promote growth of the seeds and plants.
Ex. 1016 at 9-10 & 20-23. “[A]ero-Nets help maintain micro levels of moisture thereby enabling you to reduce spray delivery intervals and increase oxidation rates.” “Aero-Pads retain larger levels of moisture thus allowing the seed(s) or vegetable cutting(s) to soak up more moisture with fewer spray intervals during the initial development and germination phase.” “[A]ero-Pads allow plant roots to rapidly penetrate and expand through the cellulose to its exterior.” “Sterile media with balanced moisture retention.” Id. at 9-10. “The thicker substrate … is thought to retain more moisture between misting cycles, resulting in reduced root biomass in early development.” Id. at 13.
Claim 30 www.biocontrols.com 30. A method for aeroponically growing plants, the method comprising:
Ex. 1016 at 9-10, 13 & 20-22.
depositing seeds on an upper surface of at least one cloth material, said at least one cloth material functioning to support the seeds thereon;
Ex. 1016 at 9-11, 13 & 20-22. “[A]ero-Nets are made of plastic coated nylon fibers.” “Aero[Pads] are made of plastic coated nylon fibers that are welded to a special degradable cellulose material.” “Seed-Pads provide a flexible support of any type of seed from germination to harvest.” “These durable Aeroponic
33
products support the growing plantlet and assist in the plant’s development processes.” Id. at 9-10.
growing the seeds on the upper surface of the at least one cloth material, the at least one cloth material operable to allow roots to grow through the at least one cloth material and extend downwardly from a lower surface of the at least one cloth material, operable to support plants upright above the upper surface of the at least one cloth material, operable to inhibit the spray of nutrient solution from passing directly through the at least one cloth material and reaching the growing plants disposed above the upper surface of the at least one cloth material, and operable to inhibit the amount of light passing through the at least one cloth material and reaching the roots;
Ex. 1016 at 9-11 & 13. “Aero-Pads allow plant roots to rapidly penetrate through the cellulose to its exterior. [A]ero-Pads will not inhibit the plant’s expanding root system.” “[A]ero-Pads retain larger levels of moisture thus allowing the seed(s) or vegetable cutting(s) to soak up more moisture with fewer spray intervals during the initial development phase.” Id. at 9-10. “Figure 2 and 2a demonstrate[s] [sic] the [e]ffect [sic] of substrate on root biomass development. The thicker substrate (used on the left plant of Figure 2a) is thought to retain more moisture between misting cycles, resulting in reduced root biomass in early development.” Id. at 13.
directing light at least one of onto and above the upper surface of the at least one cloth material to aid in growing the plants on the at least one cloth material;
Ex. 1016 at 24-29. “Only 37% of the energy in sunlight is within the wavelength (color) useful for photosynthesis, while 62.4% is infrared (thermal energy) and the remaining 0.6% is ultraviolet.” Id. at 24. “According to our research for NASA, care should be taken to ensure that plants grow under an artificial light source have adequate infra-red protection to prevent undue environmental stress for the plants.” Id. at 25. “The indoor grower has several options for maximizing the artificial light energy for
34
photosynthesis.” Id. at 26. spraying a nutrient solution below the lower surface of the at least one cloth material and onto the roots of the plants extending downwardly from the lower surface of the at least one cloth material, wherein the at least one cloth material absorbs the nutrient solution to establish an available source of nutrient solution to promote growth of the seeds and plants; and
Ex. 1016 at 10 & 20-22. “[A]ero-Pads retain larger levels of moisture thus allowing the seed(s) or vegetable cutting(s) to soak up more moisture with fewer spray intervals during the initial development phase.” Id. at 10. “Figure 2 and 2a demonstrate[s] [sic] the [e]ffect [sic] of substrate on root biomass development. The thicker substrate (used on the left plant of Figure 2a) is thought to retain more moisture between misting cycles, resulting in reduced root biomass in early development.” Id. at 13. “The hydro-atomized spray interval (time between water/nutrient applications) and the duration (length of time of the spray application) are controlled by the system’s Hydro Control Unit.” Id. at 22.
harvesting the plants grown on the upper surface of the at least one cloth material.
Ex. 1016 at 1 & 13. “Seed-Pads provide a flexible support of any type of seed from germination to harvest.” Id. at 10.
Claim 47 is largely identical to claim 30, except that claim 47 additionally
requires that the cloth material be “exposed to air.” As discussed below with
respect to claim 13, the seeds are grown through “plant support structures” in the
top of Genesis, and thus the cloth material is exposed to the air. (See, e.g., Ex.
1016 at 9-10 & 20-21 (illustrating “plant support structures”); see also Ex. 1019 at
¶¶ 104-105.)
2. The Biocontrols Website Anticipates Claims 13 and 32.
The Biocontrols Website anticipates claims 13 and 32, as illustrated in the
chart below. (See Ex. 1019 at ¶¶ 79-82 & 99-100.)
35
Claim www.biocontrols.com 13. A method according to claim 1, wherein the subjecting the upper surface to light comprises subjecting the upper surface of the at least one cloth material exposed to the air to the light, and the spraying the nutrient solution comprises spraying onto the bottom surface of the at least one cloth material exposed to air to the nutrient solution, and wherein the plants are generally solely supported by the at least one cloth material.
Ex. 1016 at 1, 7, 8, 10, 20-22 & 24. “Only 37% of the energy in sunlight is within the wavelength (color) useful for photosynthesis, while 62.4% is infrared (thermal energy) and the remaining 0.6% is ultraviolet.” Id. at 24. “According to our research for NASA, care should be taken to ensure that the plants grow under an artificial light source have adequate infra-red protection to prevent undue environmental stress for the plants.” Id. at 25. “The indoor grower has several options for maximizing the artificial light energy for photosynthesis.” Id. at 26. “[A]ero-Pads retain larger levels of moisture thus allowing the seed(s) or vegetable cutting(s) to soak up more moisture with fewer spray intervals during the initial development phase.” Id. at 10. “Figure 2 and 2a demonstrate[s] [sic] the [e]ffect [sic] of substrate on root biomass development. The thicker substrate (used on the left plant of Figure 2a) is thought to retain more moisture between misting cycles, resulting in reduced root biomass in early development.” Id. at 13. “The hydro-atomized spray interval (time between water/nutrient applications) and the duration (length of time of the spray application) are controlled by the system’s Hydro Control Unit.” Id. at 22. “Aero-Pads are suitable for even the smallest seeds and micro plants that will be grown to full term.” “Seed-Pads provide a flexible support of any type of seed from germination to harvest.” Id. at 9-10.
Claim 32 depends on claim 30, but claims similar features to those claimed
in claim 13. For the same reasons recited above with respect to claim 13, the
Biocontrols Website anticipates claim 32. (See Ex. 1019 at ¶¶ 99-100.)
36
3. The Biocontrols Website Anticipates Claims 16 and 35.
Claims 16 and 35 are dependent on claims 1 and 30, respectively. Each of
these claims requires that “the at least one cloth material” recited in the claim from
which it depends “comprises non-organic fibers.” The Biocontrols Website
anticipates these claims by disclosing “plastic coated nylon fibers.” (See, e.g., Ex.
1016 at 9-10; see also Ex. 1019 at ¶¶ 82-83 & 101; Ex. 1027.)
4. The Biocontrols Website Anticipates Claims 18-20, 39-41 and 49.
Claims 18-20, 39-41 and 49 are dependent claims that specify the type of
plants claimed in independent claims 1, 30 and 47, requiring that they be “leafy
greens” or “salad greens,” depending on the claim in question. The Biocontrols
Website anticipates claims 18-20, 39-41 and 49 because it discloses, for example,
using the aeroponic system it discloses to grow lettuce. (See, e.g., Ex. 1016 at 13.)
As understood by an ordinary artisan, the terms “leafy greens” and “salad greens”
both include lettuce. (See Ex. 1019 at ¶¶ 84-86, 102 & 106.) In fact, the named
inventor Edward Harwood has described lettuce as a “leafy green” in a commercial
article describing his aeroponics work. (Ex. 1041.)
5. The Biocontrols Website Anticipates Claims 21-23, 42-45 and 50.
Dependent claims 21-23, 42-45 and 50 relate to the way in which the cloth
material described in independent claims 1 and 30 is integrated into a growth
chamber. The Biocontrols Website illustrates the Seed-Pads, Aero-Pads and Aero-
Nets being individually inserted into and then narrow parts on the exterior of the
37
cloths joined to the “plant support structures” on top of Genesis. (Ex. 1016 at 9-
10.) The interior part of the cloths, which is not joined to the “plant support
structures,” is inside the holes. Moreover, the Biocontrols Website discloses
cleaning and reuse of the growth substrates. (Id. at 10.) Thus, a user can remove
the pad, plant and roots, as illustrated below.
6. The Biocontrols Website Anticipates Claims 23 and 45.
Claims 23 and 45 are dependent claims reciting that the method described in
the claims from which they depend “further compris[es] supporting the at least one
cloth material above a tray.” (See Ex. 1001 at 13:44-45, 15:4-5.) The Biocontrols
Website anticipates because it discloses using a cloth material above a tray, the
bottom of the growing chamber. (See, e.g., Ex. 1016 at 20-21; see also Ex. 1019 at
¶¶ 107-110.)
B. Ground 2: Obviousness Based on the Biocontrols Website in View of Common Sense and Common Knowledge of Ordinary Artisans
Claims 14-15, 17, 33-34 & 36 are obvious in view of the Biocontrols
website and an ordinary artisan’s skill anr/or common sense. (Ex. 1019 at ¶¶ 111-
Page Number 010
38
114.) See, e.g., Techs, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009).
Claims 14-15, 17, 33-34 and 36 require a specific type of “cloth material,” such as
fleece, micro-fleece, or woven fabric. The Biocontrols Website discloses using
cloth nets and pads as a growing medium. (See, e.g., Ex. 1016 at 9-10.) The nets
and pads could be woven and/or a type of fleece, but those particular
implementation details are not explicit. Although the Biocontrols Website does
not provide specific details about all the possible net and pad materials that could
be used, it would have been obvious by 2004, as a matter of common sense, to use
well known materials with similar absorbency and support functionality, including
materials such as woven fabric and fleece. (See Ex. 1050 (noting the off-the-shelf
Polartec fleece’s history); See Ex. 1052 at 258 (“Woven fabrics are widely used,
and weaving is one of the oldest and most widely used methods of making
fabric.”); Ex. 1019 at ¶¶ 111-114.) See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (A “finite number of identified, predictable solutions” typically
leads to a finding that a claim is “the product … of ordinary skill and common
sense”). The choice of cloth material is just such an implementation detail
involving predictable solutions. (Id.)
39
C. Ground 3: Obviousness in View of the Biocontrols Website and the Genisis Catalog (“the Genesis Descriptions”)
The Biocontrols Website anticipates or renders obvious many claims of the
’992 patent. In the alternative, those claims are at least obvious in view of the
Biocontrols Website and the Genisis Catalog. (Ex. 1019 at ¶¶ 124-130.)
The 1987 Genisis Catalog describes an earlier version of Genesis described
in the Biocontrols Website. (Compare Ex. 1016 at 20 with Ex. 1017 at Cover, 5.)
The Biocontrols Website and the Genisis Catalog describe the same product, but
each prior art reference contains implementation details. It would have been
common sense to combine related descriptions of the same product. See, e.g.,
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (KSR “reject[ed] a
blinkered focus on individual documents” in an obviousness analysis). (See Ex.
1019 at ¶¶ 120-122.)
1. The Genesis Descriptions at a Minimum Render Obvious Claims 1, 13, 16-20, 25-26, 30, 32-36, 39-41, 47 & 49.
The Aero-Nets, Aero-Pads and/or Seed-Pads all are “cloth materials,” and
the Biocontrols Website anticipates the claims. See Section VII.A.1-4 & 6 &
VII.B. The Genisis Catalog discloses a “poly fiber cloth sheet” which is
unquestionably a “cloth.” To the extent that Patent Owner disputes that the
Biocontrols Website discloses a “cloth material,” the claims listed above are
obvious in view of the Genesis descriptions. (See Ex. 1019 at ¶ 124.)
40
2. The Genesis Descriptions at a Minimum Render Obvious Claims 21-23, 42-45 and 50.
The exterior surfaces of the Aero-Nets, Aero-Pads and/or Seed-Pads fit on
the “plant supports structures” so they are (releasably) attached the “plant support
structures.” See Section VII.A.5. With respect to claim 23, the disclosed cloth
materials are above the bottom portion of the aeroponic growth chamber, which
constitutes a tray. To the extent that Patent Owner disputes that the Biocontrols
Website anticipates, the implementation variant in the Genisis Catalog with the
suspended the poly fiber sheet anticipates. (Ex. 1019 at ¶¶ 125-128.)
Claim Genisis Catalog 21. The method according to claim 1, further comprising attaching at least some of the edges of the at least one cloth material from a support.
“Seeds (depending upon seed size) are supported by either poly mesh or cloth sheets suspended inside the chamber.” Ex. 1017 at 6.
22. The method according to claim 1, further comprising releasably attaching at least some of the edges of the at least one cloth material from a support.
“Seeds (depending upon seed size) are supported by either poly mesh or cloth sheets suspended inside the chamber.” “Replac[e]able [sic] mesh or cloth seed support sheets (14 inches x 45 inches) are included.” Ex. 1017 at 6.
23. The method according to claim 21, further comprising supporting the at least one cloth material above a tray.
See Ex. 1017 at 6 & 14. “The Seed Germination Chamber bottom supports the water supply pipe and spray arms and provides for the discharging of all effluent water.” Ex. 1017 at 6. “The discharged water free drains from the Growing Chambers into a catch trough[.]” Ex. 1017 at 14.
42. The method according to claim 30, further comprising attaching at
See citations for claim 21, above.
41
least some of the edges of the at least one cloth material from a support. 43. The method according to claim 29, further comprising releasably attaching at least some of the edges of the at least one cloth material from a support.
See citations for claim 22, above.
44. The method according to claim 30, wherein the growing the seeds on the upper surface of the at least one cloth material comprises growing the plurality of seeds on the upper surface of a generally horizontally disposed at least one cloth material.
“Each chamber can be used for germinating plants by placing seeds (the amount depending upon seed size) in each of the edgeless holes on the Chamber top. The selected mesh or cloth supports the seeds.” Ex. 1017 at 6.
45. The method according to claim 30, further comprising supporting the at least one cloth material above a tray.
See citations for claim 23, above.
50. The method according to claim 47, further comprising releasably attaching at least some of the edges of the at least one cloth material from a support.
See citations for claim 22, above.
3. The Genesis Descriptions Render Obvious Claims 25 and 26.
Claims 25 and 26 require that excess nutrient solution be collected for reuse
(claim 25) and recirculated (claim 26). The Genisis Catalog describes that the
42
“effluent water is collected” before being sent to the Filtration Station where the
nutrient solution is processed for reuse in the aeroponic chamber. (Ex. 1017 at 12
& 14; Ex. 1019 at ¶¶ 129 & 130; see also Ex. 1021 (describing how excess nutrient
solution “drains back into a reservoir”.) In fact, the ’992 patent itself concedes that
“[m]ost systems allow for recirculation of nutrients for a finite period, with such a
system known as closed systems.” (Ex. 1001 at 4:47-55.)
D. Ground 4: Obviousness In View of the Genesis Descriptions And Descriptions Of Dr. Schroder’s Work.
Claims 14, 15, 33, 34 are obvious in view of the Genesis Descriptions
combined with Dr. Schroder’s work – the Schroder Patent and the German Text.
(Ex. 1019 at ¶¶ 131-139.) The Schroder Patent discloses a soilless growing
technique and related apparatus using fleece or similar textiles as a growing
medium. Like the apparatus in the Schroder Patent, Genesis is an apparatus for
growing plants in a soilless environment using a cloth growth substrate. A person
of ordinary skill in the art reviewing prior art concerning Genesis would be
motivated to review other soilless growing publications such as Schroder to assess
alternative cloth growth substrates. (See Ex. 1019 at ¶ 136.) Specifically, the prior
art literature for Genesis advertised cloth growth substrates – Aero-Pads, Aero-
Nets and Seed-Pads and polyester fiber “cloth seed support sheets.” The ’992
patent identifies a PolarTec brand fleece as the preferred cloth growing substrate.
43
(Ex. 1001 at 5:66 – 6:8.) PolarTec is made of polyester fibers. (Ex. 1050; Ex.
1053 at Key to Fabric Swatches.) Thus, given that the Genesis Catalog discloses a
generic polyester fiber sheet (without specifying the brand) and Schroder discloses
a polyester fiber fleece both for the purpose of soilless growing substrates, it would
have been prima facie obvious to use fleece with the Genesis soilless growing
system. See In re Kerkhoven, 626 F.2d 846, 850 (Fed. Cir. 1980)
Moreover, an ordinary artisan interested in Genesis would be motivated to
review literature concerning suitable off-the-shelf polyester fiber sheets rather than
buying sheets from Genesis’ manufacturer. (Ex. 1019 at ¶ 136.) Ordinary artisans
routinely use off-the-shelf type items like those described in the Genesis
Descriptions and the descriptions of Dr. Schroder’s work to build their own
aeroponic system (or components thereof). (See, e.g., Ex. 1032, at 71-76
(describing how to build an aeroponic system at home with common items).)
The German Text reports that Schroder’s fleece was very successful for
soilless growing, highlighting how polyester fleece could “be used for several
years” in a soilless agriculture system. (Ex. 1031, at 28.) While the way nutrient
solution is delivered varies in soilless growing techniques, the growth substrate is a
ordinarily uniting feature between the implementations so an ordinary artisan
would easily have a “reasonable expectation” that Schroder’s demonstrably
“successful” polyester fiber fleece would work similarly well in place of the
44
polyester fiber sheet in the Genesis aeroponic chamber. See Hoffman-LaRoche,
Inc. v. Apotex, Inc., 748 F.3d 1326, 1331 (Fed. Cir. 2014) (“All that is required is a
reasonable expectation of success.”) Given that fleece may be obtained in bulk at,
an ordinary artisan would have been motivated to use fleece to minimize costs and
maximize yields. (Ex. 1033; Ex. 1020 at 1-4 (“Gross returns from greenhouse
vegetables must be high.”) See, e.g., Leapfrog Enterprises, Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“[R]educed cost” and other factors
supplied motivation to combine children’s toys); Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1371 (Fed. Cir. 2006); Sandt
Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1355 (Fed. Cir. 2001).
Not only was fleece known to work well with soilless agriculture, there was
a discussion of aeroponics that literally immediately follows the discussion of Dr.
Schroder’s work in the German Text. (Ex. 1031 at 32.) Similarly, Dr. Schroder’s
work is also bookended with a description of the aeroponics systems in the 2002
treatise Hydroponic Production of Vegetables and Ornamentals, the relevant
excerpt of which is attached hereto as Exhibit 1040. (Ex. 1040 at 153-155.) The
repeated appearances of Schroder’s fleece in soilless agriculture literature
underscores that ordinary artisans recognized its value. And the repetitive,
consistent bookending of descriptions of Dr. Schroder’s work and aeroponics
systems in technical literature evidences that by 2004 there were “a finite number
45
of identified, predictable solutions” in the soilless agriculture field. See KSR Int’l,
550 U.S. at 421. An ordinary artisan literally would only need to turn a page and
to use “simple logic” to recognize that Schroder’s fleece could be used in an
aeroponic system. See Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1331 (Fed. Cir. 2009).
The Schroder Patent discloses growing plants on fleece in a soilless system,
and therefore discloses the limitation of claims 14 and 33. For example, Schroder
discloses “a polyester fiber fleece” that serves as a “textile layer as a root area for
supplying liquids and nutrients of cultivated plants in hydroponic cultivation
processes that guarantees an adequate distribution of liquid and which at the same
time is easily workable.” (Ex. 1007 at 2:20-24, 42, 44.)
Schroder also discloses the limitations required by claims 15 and 34. Claims
15 and 34 claim a “micro-fleece,” which is fleece where the polyester fibers have
been spun very thin. (See Ex. 1034; Ex. 1035; see also Ex. 1019 at ¶¶ 138-139.)
Given the disclosure of the genus of “polyester fiber fleece,” an ordinary artisan
would envisage the two general species macrofiber fleece and microfiber fleece.
(Ex. 1052 at 117.) See, e.g., Abbvie Inc. v. Mathilda & Terrence Kennedy Inst. of
Rheumatology Trust, 764 F.3d 1366, 1379 (Fed. Cir. 2014) (“[S]pecies are
unpatentable when prior art disclosures describe the genus containing those species
such that a person of ordinary skill in the art would be able to envision every
46
member of the class.”); In re Petering, 301 F.2d 676, 681-82 (CCPA 1962). And,
not only would an ordinary artisan envisage micro “polyester fiber fleece,” the law
is clear that reciting a size (such as fineness of fibers) of prior art is not sufficient
to distinguish that prior art. See Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1346-
49 (Fed. Cir. 1984) (en banc) (holding that claimed relative dimension did not
patentably distinguish the prior art silent on dimensions but performing the same
function); In re Rhinehart, 531 F.2d 1048, 1053 (CCPA 1976).
E. Ground 5: Obviousness in View of the Growing Edge Combined With the German Text.
The Growing Edge renders obvious claims 1, 13, 14, 16, 18-20, 23, 25, 26,
30, 32-33, 35, 39-41, 45, 47, and 49. (Ex. 1019 at ¶¶ 140-170.) The Growing
Edge book itself is a Section 102 prior art reference. Petitioners here rely primarily
upon two articles entitled “Aero-hydroponics: The Hydroponic Method of the
Future” and “Plant Plane Hydroponics” within the Chapter “Soilless Gardening” in
that reference. Under the circumstances, combining elements set forth in one
document would have been obvious. The Growing Edge states: “Above all else,
… selections [of articles] were made based on their ability to contribute to the
book as a whole.” (Ex. 1002 at Introduction (emphasis added).) While an explicit
motivation to combine is no longer required under KSR, the Growing Edge
Introduction, in fact, supplies that explicit suggestion. And, not only does the
Growing Edge teach reading the articles “as a whole,” the Growing Edge is geared
47
to “provid[ing] new growers with the information needed to start in high-tech
gardening, indoors, outdoors or in the greenhouse.” (Ex. 1002 at Introduction.)
Particularly insofar as the two primary articles relied upon are literally one-after-
the-other, an ordinary artisan would be motivated to combine the “basic
information” on “soilless gardening” contained in the articles. (Id.) See also In re
Boe, 355 F.2d 961, 965 (CCPA 1966) (“All of the disclosures in a reference must
be evaluated for what they fairly teach one of ordinary skill in the art[.]”) (internal
citations omitted). Finally, an ordinary artisan interested in the Schroder article in
the Growing Edge would be motivated to review the discussion of Dr. Schroder’s
work in the German Text. See Section VII.D.
1. The Growing Edge Renders Obvious Claims 1, 30 and 47.
As shown in the claim chart below, when combined, the two articles
described above in the Growing Edge disclose each element of claims 1, 30 and 47
of the ’992 patent. In the description of Schroder in the Growing Edge, following
germination, seedlings are deposited on the fleece in rockwool cubes. (Ex. 1002 at
21.) To the extent that Patent Owner argues “seedlings” are not “seeds,” it would
be obvious to an ordinary artisan that an apparatus used for growing seedlings
could also be used for growing from seeds (germination) simply by removing or
turning off a light source. (Ex. 1019 at ¶ 22.) But, in all events, the German Text
explains that certain vegetables can be grown from seed to plant by sprinkling
48
seeds directly on the fleece. (Ex. 1022, at 31.) Thus, there are no differences
between claims 1, 30 and 47 and the Growing Edge if the Growing Edge is
combined with the German Text.
Claim 1 The Best of the Growing Edge 1. A method of aeroponic farming, comprising:
Ex. 1002 at 4 & 19-20 .
providing a growth chamber configured and dimensioned to receive at least one cloth material;
Ex. 1002 at 14-15, 20 & 21; Ex. 1031 at 31. “Each of the chambers is 10 feet long and has 16 plant sites.” (Ex. 1002 at 20.) “The growing medium is polyester fleece[.]” Id. at 21.
providing the at least one cloth material;
Ex. 1002 at 21-22. “The growing medium is polyester fleece[.]”
depositing seeds on the at least one cloth material, said at least one cloth material functioning to support the seeds thereon;
Ex. 1002 at 21; Ex. 1031 at 31. “[S]eeds were strewn directly on the wet fleece[.]” Ex. 1031 at 31.
subjecting an upper surface of the at least one cloth material to light of the proper frequencies in the growth chamber to promote photosynthesis in plants; and
Ex. 1002 at 21 & 93-101. “Plants may be addicted to light, but not just any light will do. The grower who can supply the optimal quantity, quality and color of light will be able to manipulate shape, size, maturity, color and crop yield as well as stimulate plant growth.” Ex. 1002 at 98.
spraying a nutrient solution onto the at least one cloth material and a developing root mass of the plants in the growth chamber, wherein the at least one cloth material absorbs the nutrient solution to establish an available source of nutrient solution to
Ex. 1002 at 4, 19, 21-23. “In aero-hydroponics, the nutrient solution is sprayed through the air in order to infuse the nutrient with dissolved oxygen.” Ex. 1002 at 19. “The structural characteristics of the polyester fleece ensures an even distribution of nutrient solution.” Id. at 23.
49
promote growth of the seeds and plants.
Claim 30 The Best of the Growing Edge 30. A method for aeroponically growing plants, the method comprising:
Ex. 1002 at 4 & 19-20.
depositing seeds on an upper surface of at least one cloth material, said at least one cloth material functioning to support the seeds thereon;
Ex. 1002 at 21; Ex. 1031 at 31. “[S]eeds were strewn directly on the wet fleece[.]” Ex. 1031 at 31.
growing the seeds on the upper surface of the at least one cloth material, the at least one cloth material operable to allow roots to grow through the at least one cloth material and extend downwardly from a lower surface of the at least one cloth material, operable to support plants upright above the upper surface of the at least one cloth material, operable to inhibit the spray of nutrient solution from passing directly through the at least one cloth material and reaching the growing plants disposed above the upper surface of the at least one cloth material, and operable to inhibit the amount of light
Ex. 1002 at 21-23; Ex. 1031 at 28 & 31. “Due to the absorbency of the fleece, almost all of the solution will remain in the fleece for the plant to use[.]” Ex. 1002 at 21. “The cubes are inserted into slits cut in the top layer of sheeting and set directly on the fleece” Id. “[S]eeds were strewn directly on the wet fleece[.]” Ex. 1031 at 31. “A black polyester fleece … has proven to be the best textile.” Ex. 1031 at 28.
50
passing through the at least one cloth material and reaching the roots; directing light at least one of onto and above the upper surface of the at least one cloth material to aid in growing the plants on the at least one cloth material;
Ex. 1002 at 21 & 93-101. “Plants may be addicted to light, but not just any light will do. The grower who can supply the optimal quantity, quality and color of light will be able to manipulate shape, size, maturity, color and crop yield as well as stimulate plant growth.” Ex. 1002 at 98.
spraying a nutrient solution below the lower surface of the at least one cloth material and onto the roots of the plants extending downwardly from the lower surface of the at least one cloth material, wherein the at least one cloth material absorbs the nutrient solution to establish an available source of nutrient solution to promote growth of the seeds and plants; and
Ex. 1002 at 4, 19, 21-23. “In aero-hydroponics, the nutrient solution is sprayed through the air in order to infuse the nutrient with dissolved oxygen.” Ex. 1002 at 19. “In aeroponic systems the roots are suspended in air and misted with a nutrient solution.” Id. at 4. “The structural characteristics of the polyester fleece ensures an even distribution of nutrient solution.” Id. at 23.
harvesting the plants grown on the upper surface of the at least one cloth material.
Ex. 1002 at 22-23.
Claim 47 is largely identical to claim 30, except that claim 47 additionally
requires that the cloth material be “exposed to air.” As discussed below with
respect to claim 13, both of the systems described in the Growing Edge have the
51
plants and growth substrates exposed to air. (See, e.g., Ex. 1002 at 19 & 21; see
also Ex 1019 at ¶ 159.) Accordingly, the fleece material is “exposed to the air.”
2. The Growing Edge Renders Obvious Claims 13 and 32.
As shown in the claim chart and discussion below, The Growing Edge
anticipates claims 13 and 22 of the ’992 patent.
Claim 13 The Best of the Growing Edge 13. A method according to claim 1, wherein the subjecting the upper surface to light comprises subjecting the upper surface of the at least one cloth material exposed to the air to the light, and the spraying the nutrient solution comprises spraying onto the bottom surface of the at least one cloth material exposed to air to the nutrient solution, and wherein the plants are generally solely supported by the at least one cloth material.
Ex. 1002 at 19, 21-23 & 93-101; Ex. 1031 at 31. “Plants may be addicted to light, but not just any light will do. The grower who can supply the optimal quantity, quality and color of light will be able to manipulate shape, size, maturity, color and crop yield as well as stimulate plant growth.” Ex. 1002 at 98. “In aero-hydroponics, the nutrient solution is sprayed through the air in order to infuse the nutrient with dissolved oxygen.” Id. at 19. “In aeroponic systems the roots are suspended in air and misted with a nutrient solution.” Id. at 4. “[S]eeds were strewn directly on the wet fleece[.]” Ex. 1031 at 31.
Claim 32 depends on claim 30, but claims similar features to those claimed
in claim 13. For the same reasons recited above with respect to claim 13, the
Growing Edge anticipates claim 32. (See Ex. 1019 at ¶¶ 143-160.)
52
3. The Growing Edge Renders Obvious Claims 14-16 and 33-35.
Dependent claims 14-16 and 33-35 all relate to the particular type of “cloth
material” that is claimed in independent claims 1 and 30. For example, 14 and 33
require that the “cloth material” claimed in claims 1 and 30, respectively,
“comprises fleece cloth.” Because the Growing Edge discloses a system in which
fleece was used as a growing medium, it discloses the limitations of claims 14 and
33. (See Ex. 1019 at ¶¶ 164-166.)
Additionally, the Growing Edge discloses that the particular fleece used was
“polyester fleece.” Because polyester is a “man-made fiber,” the Growing Edge
discloses the limitations of 16 and 35 as well. (Id. at ¶ 166) As discussed above,
“micro-fleece” is simply “fleece” with small fibers, and the limitation is
unpatentable for reasons discussed in Section VII.D above.
4. The Growing Edge Renders Obvious Claims 18-20, 39-41 and 49.
Claims 18-20, 39-41 and 49 are dependent claims that require the type of
plant grown to be “leafy greens” or “salad greens,” depending on the claim in
question. The Growing Edge discloses, for example, growing leaf lettuce, iceberg
lettuce, and radicchio. (See, e.g., Ex. 1002 at 22-23; see also Ex. 1019 at ¶ 167.)
5. The Growing Edge Renders Obvious Claims 23 and 45.
The Growing Edge discloses the element of dependent claims 23 and 45
because it discloses “supporting the at least one cloth material above a tray” as
required by these claims. For example, The Growing Edge describes a growing
53
“module” in which includes a “tray,” such as the bottom of the growing module.
(See, e.g., Ex. 1002 at 4 (depicting a chamber bottom connected to a “return line”
connected to a “nutrient reservoir”) & 19-20 (figure depicting growing module
with a bottom); see also Ex. 1019 at ¶ 168.)
6. The Growing Edge Renders Obvious Claims 25 and 26.
The Growing Edge discloses the element of dependent claims 25 and 26
because it discloses an aeroponic system with a “return line” which is connected to
the “nutrient reservoir.” (Ex. 1002 at 4.) This is an illustration of a system in
which excess nutrient solution is “cycled” (i.e., recirculated) after traveling down
the return line to be collected in the “nutrient reservoir.” (Ex. 1019 at ¶¶ 169-170;
Ex. 1001 at 4:47-55 (conceding that “most” prior art hydroponic systems “allow
for recirculation of nutrient solutions”).)
F. Ground 6: Anticipation by Sparkes
Sparkes anticipates claims 1, 13, 16, 23, 30, 32, 35, 45 and 47. (See Ex.
1019 at ¶¶ 171-190.)
1. Sparkes Anticipates Claims 1, 30 and 47.
Sparkes anticipates claims 1, 30 and 47 of the ’992 patent. (See Ex. 1019 at
¶¶ 173-179 & 181-187.)
Claim Sparkes 1. A method of aeroponic farming, comprising:
Ex. 1008 at 1:31-63, 4:22-27 & Fig. 2.
providing a growth Ex. 1008 at 3:60-4:19, 8:7-14 & Figs. 1-5. “The
54
chamber configured and dimensioned to receive at least one cloth material;
present invention relates to the propagation and growing of plants, and particularly concerns an apparatus for growing large numbers of plants in a small area[.]” Ex. 1008 at Abstract. “To the inner surface of the dense foam material is bonded an inner permeable layer 36 such as foam, mineral wool, glass fibres, etc.” Ex. 1008 at 6:12-14. “As a further alternative, seeds or plants may be initially germinated or rooted and grown as a ‘mat’ 44 in a layer of growing medium 24[.]” Ex. 1008 at 7:43-46.
providing the at least one cloth material;
Ex. 1008 at 4:6-11, 5:36-59, 6:12-16, 6:45 – 7:10, 7:43-49 & Figs. 2, 4, 5. “A growing medium 24 fills the container formed by the spring 22 and membrane 23[.]” Ex. 1008 at 4:6-11. “To the inner surface of the dense foam material is bonded an inner permeable layer 36 such as foam, mineral wool, glass fibers, etc.” Ex. 1008 at 6:12-14. “As a further alternative, seeds or plants may be initially germinated or rooted and grown as a ‘mat’ 44 in a layer of growing medium 24[.]” Ex. 1008 at 7:43-46.
depositing seeds on the at least one cloth material, said at least one cloth material functioning to support the seeds thereon;
Ex. 1008 at 4:6-11, 5:36-59 & 7:43-49. “A growing medium 24 fills the container formed by the spring 22 and membrane 23[.]” Ex. 1008 at 4:6-11. “To the inner surface of the dense foam material is bonded an inner permeable layer 36 such as foam, mineral wool, glass fibers, etc.” Ex. 1008 at 6:12-14. “As a further alternative, seeds or plants may be initially germinated or rooted and grown as a ‘mat’ 44 in a layer of growing medium 24[.]” Ex. 1008 at 7:43-46.
subjecting an upper surface of the at least one cloth material to light of the proper frequencies in the growth chamber to promote photosynthesis in plants; and
Ex. 1008 at 1:7-13, 2:1-8, 3:42-55, 5:5-16. “The spectrum of the radiation emitted may be chosen so as to induce a particular growth response in the species of plant to be cultivated, and the spectrum may be variable to suit different stages in the plant’s growth cycle.” Ex. 1008 at 3:47-51.
spraying a nutrient solution onto the at least one cloth material and a developing root mass of
Ex. 1008 at 1:54-63, 4:20-27, 5:60-67, 6:18-36 & Fig 2. “Nutrients may be provided to the interior of the cylinder either as a mist, a spray of droplets, or as a liquid stream.” Ex. 1008 at 1:61-63. “In the
55
the plants in the growth chamber, wherein the at least one cloth material absorbs the nutrient solution to establish an available source of nutrient solution to promote growth of the seeds and plants.
embodiment shown, a nutrient supply duct 26 is provided at intervals with nozzles 27 which provide a nutrient spray to the interior of the cylinder 16. The nutrient spray may form a mist within the cylinder or may be in the form of larger droplets directed onto the membranes 23 at the radially inner ends of the plant holders 21.” Ex. 1008 at 4:22-27.
Claim 30 Sparkes 30. A method for aeroponically growing plants, the method comprising:
Ex. 1008 at 1:31-63, 4:22-27 & Fig. 2.
depositing seeds on an upper surface of at least one cloth material, said at least one cloth material functioning to support the seeds thereon;
Ex. 1008 at 4:6-11, 5:36-59 & 7:43-49. “A growing medium 24 fills the container formed by the spring 22 and membrane 23[.]” Ex. 1008 at 4:6-11. “To the inner surface of the dense foam material is bonded an inner permeable layer 36 such as foam, mineral wool, glass fibers, etc.” Ex. 1008 at 6:12-14. “As a further alternative, seeds or plants may be initially germinated or rooted and grown as a ‘mat’ 44 in a layer of growing medium 24[.]” Ex. 1008 at 7:43-46.
growing the seeds on the upper surface of the at least one cloth material, the at least one cloth material operable to allow roots to grow through the at least one cloth material and extend downwardly from a lower surface of the at least one cloth material, operable to support plants upright above the upper surface of the at least one cloth material, operable to
Ex. 1008 at 1:7-13, 2:1-8, 3:42-54, 4:6-11, 5:5-16, 5:36-59, 7:44-50 & Figs 2 & 4. “A growing medium 24 fills the container formed by the spring 22 and membrane 23, and the growth medium 24 supports the plant 25 which may be a cutting rooted in the growth medium 24, or may be a seedling which has been planted into the container[.]” Ex. 1008 at 4:6-11. “To the inner surface of the dense foam material is bonded an inner permeable layer 36 such as foam, mineral wool, glass fibers, etc.” Ex. 1008 at 6:12-14. “As a further alternative, seeds or plants may be initially germinated or rooted and grown as a ‘mat’ 44 in a layer of growing medium 24[.]” Ex. 1008 at 7:43-46. “This composite construction of the cylinders 16
56
inhibit the spray of nutrient solution from passing directly through the at least one cloth material and reaching the growing plants disposed above the upper surface of the at least one cloth material, and operable to inhibit the amount of light passing through the at least one cloth material and reaching the roots;
enables nutrient liquids to be fed to the plant roots through the foam, the spirally wound stratification of the foam in different densities causing liquids to be transported along the cylinder[.]” Ex. 1008 at 6:30-36. “In order to control root development, the central region of the cylinders may be selectively illuminated, as light will inhibit root growth.” Ex. 1008 at 4:46-50.
directing light at least one of onto and above the upper surface of the at least one cloth material to aid in growing the plants on the at least one cloth material;
Ex. 1008 at 1:7-13; 2:1-8; 3:42-55; 5:5-16. “The spectrum of the radiation emitted may be chosen so as to induce a particular growth response in the species of plant to be cultivated, and the spectrum may be variable to suit different stages in the plant’s growth cycle.” Ex. 1008 at 3:47-51.
spraying a nutrient solution below the lower surface of the at least one cloth material and onto the roots of the plants extending downwardly from the lower surface of the at least one cloth material, wherein the at least one cloth material absorbs the nutrient solution to establish an available source of nutrient solution to promote growth of the seeds and plants; and
Ex. 1008 at 1:54-63; 4:20-27; 5:60-67; 6:18-36. “Nutrients may be provided to the interior of the cylinder either as a mist, a spray of droplets, or as a liquid stream.” Ex. 1008 at 1:61-63. “In the embodiment shown, a nutrient supply duct 26 is provided at intervals with nozzles 27 which provide a nutrient spray to the interior of the cylinder 16. The nutrient spray may form a mist within the cylinder or may be in the form of larger droplets directed onto the membranes 23 at the radially inner ends of the plant holders 21.” Ex. 1008 at 4:22-27. “This composite construction of the cylinders 16 enables nutrient liquids to be fed to the plant roots through the foam, the spirally wound stratification of the foam in different densities causing liquids to be transported along the cylinder[.]” Ex. 1008 at 6:30-36.
harvesting the plants grown on the upper surface of the at least one
“It is further forseen that the apparatus may be used for the continuous growth and harvesting of root crops[.]” Ex. 1008 at 6:38-39.
57
cloth material.
Claim 47 is largely identical to claim 30, except that claim 47 additionally
requires that the cloth material be “exposed to air.” The cloth growing medium in
Sparkes is “exposed to the air” through the openings in the cylinders that contain
the plants. (See, e.g., Ex. 1008 at Figs. 1, 2; see also Ex. 1019 at ¶ 179.)
2. Sparkes Anticipates Claims 13 and 32.
Sparkes anticipates claims 13 and 32 of the ’992 patent. (See Ex. 1019 at ¶¶
179 & 188.)
Claim Sparkes 13. A method according to claim 1, wherein the subjecting the upper surface to light comprises subjecting the upper surface of the at least one cloth material exposed to the air to the light, and the spraying the nutrient solution comprises spraying onto the bottom surface of the at least one cloth material exposed to air to the nutrient solution, and wherein the plants are generally solely supported by the at least one cloth material.
Ex. 1008 at 1:7-13, 1:54-63, 2:1-8, 3:42-55, 4:20-27, 5:5-16, 5:60-67 & 6:18-36. “The spectrum of the radiation emitted may be chosen so as to induce a particular growth response in the species of plant to be cultivated, and the spectrum may be variable to suit different stages in the plant’s growth cycle.” Ex. 1008 at 3:47-51. “Nutrients may be provided to the interior of the cylinder either as a mist, a spray of droplets, or as a liquid stream.” Ex. 1008 at 1:61-63. “In the embodiment shown, a nutrient supply duct 26 is provided at intervals with nozzles 27 which provide a nutrient spray to the interior of the cylinder 16. The nutrient spray may form a mist within the cylinder or may be in the form of larger droplets directed onto the membranes 23 at the radially inner ends of the plant holders 21.” Ex. 1008 at 4:22-27. “This composite construction of the cylinders 16 enables nutrient liquids to be fed to the plant roots through the foam, the spirally wound stratification of the foam in
58
different densities causing liquids to be transported along the cylinder[.]” Ex. 1008 at 6:30-36. “A growing medium 24 fills the container formed by the spring 22 and membrane 23[.]” Ex. 1008 at 4:6-11. “To the inner surface of the dense foam material is bonded an inner permeable layer 36 such as foam, mineral wool, glass fibers, etc.” Ex. 1008 at 6:12-14. “As a further alternative, seeds or plants may be initially germinated or rooted and grown as a ‘mat’ 44 in a layer of growing medium 24[.]” Ex. 1008 at 7:43-46.
Claim 32 depends on claim 30, but claims similar features to those claimed
in claim 13. For the same reasons recited above with respect to claim 13, Sparkes
anticipates claim 32. (See Ex. 1019 at ¶ 188.)
3. Sparkes Anticipates Claims 16, 17, 35 and 36.
Claims 16 and 35 require that “the at least one cloth material” “comprises
non-organic fibers.” Sparkes anticipates these claims by disclosing non-organic
glass fibers. (See, e.g., Ex. 1008 at 6:9-18; see also Ex. 1019 at ¶¶ 180 & 187.)
Claims 17 and 36 require that “the at least one cloth material” comprises “a
woven fabric.” Sparkes anticipates these claims by disclosing a fiberglass cloth,
which is typically a woven cloth. (See Ex. 1036.)
4. Sparkes Anticipates Claims 23 and 45.
Claims 23 and 45 are dependent claims reciting “supporting the at least one
cloth material above a tray.” Sparkes anticipates claims 23 and 45 because it
59
discloses using a cloth growing medium above a tray, such as the inner surface of
the cylinder this is below the plants and their roots. (See, e.g., Ex. 1008 at Figs. 1,
2; see also Ex. 1019 at ¶ 190.)
G. Ground 7: Obviousness in View of Sparkes and Common Sense
Foam, one of the growth substrates disclosed in Sparkes, is a type of fabric.
(Ex. 1052 at 340 & 342.) To the extent that Patent Owner argues foam is not cloth,
an ordinary artisan would have been familiar with the use of foam and familiar
types of cloth to absorb spills, etc. (See Ex. 1008, at 6:31-36; Ex. 1019 at ¶¶ 191-
192.) Thus, foam and (woven) cloth would at the very least be understood to be
obvious, interchangeable substitutes. See, e.g., Wm Wrigley Jr. Co. v. Cadbury
Adams USA LLC, 683 F.3d 1356, 1364-65 (Fed. Cir. 2012) (See Ex. 1019 at ¶¶
191-192.) Likewise, for similar reasons to those discussed above in Grounds 4 and
5, an ordinary artisan would have been highly motivated to use Schroder’s fleece
in Sparkes, rendering obvious claims 14, 15, 33 and 34.
VIII. CONCLUSION There is a reasonable likelihood that at least one of claims 1, 13-23, 30, 32-
36, 39-45, 47, 49, 50 of the ’992 patent will be found to be unpatentable. Thus,
Petitioner requests institution of an inter partes review to cancel those claims.
Dated: December 1, 2014
Respectfully submitted,
/s/ Brian Kwok
Brian Kwok (Reg. No. 58,828)
60
Thomas Mavrakakis (Reg. No. 39,763) MAVRAKAKIS LAW GROUP LLP 735 Emerson Street Palo Alto, CA 94301 Telephone: (650) 804-7800
Counsel for Petitioner FarmedHere, LLC
CERTIFCATE OF SERVICE
I certify that on December 2, 2014, a copy of this Petition, including all
attachments, appendices, and exhibits, will be served on Patent Owner via Federal
Express at the following address:
McCarter & English, LLP One Canterbury Green 201 Broad Street, 9th Floor Stamford, CT 06901
Jeffrey H. Daichman KANE KESSLER, P.C. 1350 Avenue of the Americas New York, NY 10019 Telephone: 212-541-6222 Fax: 212-245-3009 Email: [email protected]
/s/ Brian Kwok Brian Kwok Counsel for Petitioner