GENUS PLC Holding
In
Background
The '734 patent claimed a method of "increasing the genetic progress" in swine breeds using a boar (male pig) and sow (female pig) from "a genetic nucleus." In the claimed method, the boar and sow are selected based on certain genetic markers desirable for breeding, and a semen sample is collected from the boar. Id. at *6. The semen sample is then sorted into at least two subpopulations of sperm cells, "wherein at least 80% of a first subpopulation bears X-chromosomes or Y-chromosomes." Id.
Petitioner argued that the '734 patent was anticipated and obvious over four prior art references: Dekkers, Maxwell, Garner, and Kim.
Anticipation
Petitioner asserted the '734 patent was anticipated by the Dekkers reference, as evidenced by either Maxwell or Garner. Id. at *14. Dekkers disclosed a three-tiered pyramid-based breeding structure for animal genetics to obtain "genetic improvement." Specifically, Dekkers taught that artificial insemination and sex sorting technology could be used to improve genetic lines, while the Maxwell and Garner references disclosed sexed-chromosome sorting in swine at "85-95% accuracy." Id. at *14, *18. Patent Owner asserted that Dekkers cannot anticipate the challenged claims because it does not, on its own, "explicitly or inherently disclose" sexed-chromosome sorting to an "at least 80% purity level." The PTAB agreed with Patent Owner, noting that Petitioner's argument was "more applicable to an obviousness-based challenge." Id. at *20. "To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference." Id. at *9. The PTAB explained that in the case at hand:
Petitioner cannot rely upon specific disclosures in Maxwell or Gardner based on the generic reference to these publications cited [in] Dekkers. Merely citing Maxwell or Gardner in association with sorting sperm as discussed in Dekkers is not incorporation by reference with any level of particularity.
Id. at *19.
Obviousness
Turning to the obviousness challenge, Petitioner alleged the '734 patent was obvious over Dekkers and the remaining prior art references. While Dekkers was not specific to swine breeding, it disclosed the identification of ideal genetic markers in a sire (male) and dam (female), and through artificial insemination and sexed-chromosome sorting, the desired genetic traits "trickle down" into offspring populations. As discussed above, the accuracy of 85-95% in swine chromosome sorting had already been disclosed in Maxwell and Garner, so the final question was whether it would have been obvious to a person of ordinary skill to utilize Dekkers in light of those references.
The PTAB determined a person of ordinary skill would have understood the "genetic nucleus" of the '734 patent to align with the top tier of Dekkers's "breeding pyramid." Id. at *24, 27. Furthermore, sexed-chromosome sorting, which was already being used in swine breeding with an 80% accuracy rate, "reasonably suggested" that Dekkers, in light of Maxwell, would utilize the sexed-chromosome sorting to advance the desired genetic traits stemming from the "genetic nucleus," or top tier of the Dekkers's pyramid. Id. at *35. As such, the PTAB held that the challenged claims of the '734 patent were unpatentable as obvious.
Take Away
Petitioners should exercise caution when relying on more than one reference to establish anticipation. Absent clear evidence of incorporation-by-reference, such multi-reference anticipation challenges could well fail.
Practitioners generally are reminded that when arguing the reasonable expectation of success aspect of an obviousness determination, the focus is on the invention as claimed. In this case, the PTAB faulted Patent Owner's nonobviousness position for trying to frame the scope of the invention "as the commercial tier at the bottom of the pig production pyramid. However, the scope of the claimed invention is directed to the substantially smaller herd sitting at the top of the commercial pig breeding pyramid." Id. at *32. This is seen in the claim construction of "genetic nucleus" as "an animal herd comprising one or more lines and positioned at the top of a multi-level pyramidal hierarchy in a commercial herd breeding structure." Id. at *33.
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