Upl Na Inc. v. Tide International (Usa), Inc.

Case: 22-1514 Document: 34 Page: 1 Filed: 04/14/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UPL NA INC.,
Appellant
v.
TIDE INTERNATIONAL (USA), INC.,
Appellee
______________________
2022-1514
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
01113.
______________________
Decided: April 14, 2023
______________________
MAXIMILIENNE GIANNELLI, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Reston, VA, argued for
appellant. Also represented by JOSHUA GOLDBERG, RAJEEV
GUPTA, PARMANAND K. SHARMA, Washington, DC.
BAILEY K. BENEDICT, Fish & Richardson P.C., Houston,
TX, argued for appellee. Also represented by THAD
CHARLES KODISH, Atlanta, GA; LAURA E. POWELL, Wash-
ington, DC.
______________________
Case: 22-1514 Document: 34 Page: 2 Filed: 04/14/2023
2 UPL NA INC. v. TIDE INTERNATIONAL (USA), INC.
Before MOORE, Chief Judge, LOURIE and STOLL, Circuit
Judges.
LOURIE, Circuit Judge.
UPL NA Inc. (“UPL”) appeals from a final written de-
cision of the U.S. Patent and Trademark Office Patent
Trial and Appeal Board (“the Board”) holding that claims
1−4 of U.S. Patent 7,473,685 are unpatentable as obvious
in view of the asserted prior art. Tide Int’l (USA), Inc. v.
UPL NA Inc., No. IPR2020-01113, 2022 WL 97652(P.T.A.B. Jan. 4, 2022) (“Decision”). For the following rea-
sons, we affirm.
BACKGROUND
This appeal pertains to an inter partes review (“IPR”)
in which Tide International (USA), Inc. (“Tide”) challenged
claims 1–4 and 7–12 of the ’685 patent directed to granules
of an insecticidally active compound known as acephate.
Representative claim 1 is presented below:
1. A chemically stable dry flow, low compact,
dust free soluble phosphoramidothioate gran-
ule consisting of
(i) 85-98% w/w an insecticidally active com-
pound of the following formula:
wherein R and R1 individually are alkyl,
alkynyl or alkenyl group containing up to 6
carbon atoms, R2 is hydrogen, an alkyl group
containing 1 to 18 carbon atoms, a cycloalkyl
group containing 3 to 8 carbon atoms, an
Case: 22-1514 Document: 34 Page: 3 Filed: 04/14/2023
UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 3
alkenyl group containing 2 to 18 carbon atoms
or an alkynyl group containing 3 to 18 carbon
atoms, R3 is hydrogen or an alkyl group
containing 1 to 6 carbon atoms, and Y is
oxygen or sulfur, wherein said insecticidal
active compound is Acephate;
(ii) 0.1-5.0% w/w a dispersing agent;
(iii) 0.1-3% w/w a wetting agent;
(iv) 0.01-0.08% w/w an antifoaming agent;
(v) 0.01-1% w/w a stabilizer and
(vi) fillers to make 100%,
wherein said granule has a length of 1.5-3.0
mm and a diameter of 0.5-1.5 mm.
’685 patent, col. 7 l. 44–col. 8 l. 4 (emphasis added). Inde-
pendent claim 7 recites the same limitations as claim 1 and
adds that the granules further consist of “0.1-3% w/w a
binding agent,” as well as “0.01-10% w/w a disintegrating
agent.” Id. col. 8 ll. 19–47.
Tide petitioned for IPR of claims 1–4 and 7–12, assert-
ing three obviousness grounds, each based primarily on
U.S. Patent 6,387,388 to Misselbrook. J.A. 64. Mis-
selbrook teaches water-soluble pesticide granules, includ-
ing a “more preferred” granule made up of a pesticide,
which may be acephate, a dispersing agent, a wetting
agent, an antifoaming agent, and a filler. J.A. 816–17.
Compared to claim 1 of the ’685 patent, that granule lacks
only a stabilizing agent, though Misselbrook does teach
more generally that stabilizers may be included. J.A. 817;
Decision at *5. In its petition, Tide proposed combining
Misselbrook with references that provided more express
motivations to include stabilizers in Misselbrook’s granules
and to support a motivation for, and reasonable expecta-
tion of success in, producing granules with ingredient con-
centrations that fell within the claimed ranges.
Case: 22-1514 Document: 34 Page: 4 Filed: 04/14/2023
4 UPL NA INC. v. TIDE INTERNATIONAL (USA), INC.
The Board concluded that Tide had met its burden to
establish that claims 1−4 were unpatentable as obvious
over the asserted prior art. Decision at *8−15. In so doing,
the Board found unpersuasive UPL’s arguments that the
prior art’s recitation of a binder, which is not a limitation
recited in claim 1, led away from a conclusion of obvious-
ness. Id., *12−13. The Board also concluded that Tide had
not met its burden to establish that claims 7−12 would
have been obvious. Id., *16−19.
UPL appealed the Board’s decision as to claims 1−4.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and
35 U.S.C. § 141(c).
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings for substantial evidence, In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate to support the find-
ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
UPL raises two issues on appeal. First, UPL contends
that the Board erred in construing “fillers” to include fillers
that were also known to act as binding agents and there-
fore it erred in concluding that Misselbrook disclosed a
composition with a filler. UPL also asserts that the Board
erred in finding a motivation to combine the asserted prior
art to arrive at the granules of claims 1–4, which lack an
express “binding agent” limitation. We address each argu-
ment in turn.
I.
UPL first contends that the Board’s construction of
“fillers” to include fillers that were also known to be useful
binding agents conflicts with black-letter patent law.
Claim construction is a question of law that we review de
novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454
Case: 22-1514 Document: 34 Page: 5 Filed: 04/14/2023
UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 5
(Fed. Cir. 1998) (en banc). “It is a ‘bedrock principle’ of pa-
tent law that ‘the claims of a patent define the invention[,]
which the patentee is entitled . . . to exclude’” others from
practicing. Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)).
Although the parties disputed what “fillers” meant,
neither argued for a formal construction. Decision at *13,
n.9. UPL asserts, however, that the plain and ordinary
meaning of “fillers,” as it appears in claim 1, excludes those
that were known to also act as binding agents. In particu-
lar, UPL points to the closed “consisting of” transitional
phrase, the fact that claim 1 does not expressly recite “a
binding agent,” and the fact that independent claim 7, also
a consisting-of claim, recites both “a binding agent” and
“fillers.” The Board, however, held that the plain meaning
of “fillers” does not exclude those that were known to also
act as binding agents. We agree. The transitional phrase
“consisting of” excludes elements not specified in the claim.
In re Gray, 53 F.2d 520, 521 (CCPA 1931). It does not mean
that a single, listed ingredient may only serve one function.
That “a binding agent” is an additional limitation of claim
7 does not alter this conclusion.
Moreover, in analyzing whether the prior art taught
“fillers,” a question of fact that we review for substantial
evidence, the Board correctly identified that Misselbrook
teaches “water-soluble fillers” including inorganic water-
soluble salts that UPL acknowledges were not known to act
as binding agents. Decision at *13; J.A. 817; Oral Arg. at
2:47−3:10, https://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=22-1514_04042023.mp3. The Board’s deci-
sion that the prior art taught fillers, as recited in claim 1,
was thus supported by substantial evidence.
II.
UPL next contends that the Board erred in finding a
Case: 22-1514 Document: 34 Page: 6 Filed: 04/14/2023
6 UPL NA INC. v. TIDE INTERNATIONAL (USA), INC.
motivation to combine, because “no publication of record
provided any rationale for removing or replacing the bind-
ing agents of Misselbrook.” Appellant’s Br. at 30–31. But
Tide’s obviousness challenge was based on Misselbrook’s
teaching of acephate granules consisting of each of the
claimed ingredients, including fillers that did not act as
binding agents. Tide was not required to show that a
skilled artisan would have been motivated to remove an in-
gredient not present in Misselbrook’s granules.
Moreover, the Board found that “Misselbrook’s express
teaching that ‘any water soluble or water dispersible’ dilu-
ent can be used as fillers’ rebuts [UPL’s] argument” that a
skilled artisan “would understand fillers with binding
properties like lactose, sucrose, and glucose to be a ‘key fea-
ture’ of those granules.” Decision at *13. UPL has not
sought to rebut this finding with any assertion of unex-
pected results or other evidence of criticality. Id., *10. In-
stead, UPL points to U.S. Patent 5,075,058 to Chan, which
provides that “a minimum amount of any particular bind-
ing agent is required in order to meet physical properties
of attrition resistance, crush strength and bulk density.”
J.A. 1684. But the ’685 patent claims do not recite these
physical properties, so the “requirement” disclosed in Chan
is not necessarily a “requirement” here. At best, UPL
points to evidence that could be in tension with the Board’s
finding. However, mere contradictory evidence is not
enough to overturn a finding of fact. Velander v. Garner,
348 F.3d 1359, 1378–79 (Fed. Cir. 2003) (“If the evidence
will support several reasonable but contradictory conclu-
sions, we will not find the Board’s decision unsupported by
substantial evidence simply because the Board chose one
conclusion over another plausible alternative.”). And we
hold that, despite the Chan teaching, the Board’s finding
that a skilled artisan would have been motivated to pre-
pare acephate granules without a binding agent was sup-
ported by substantial evidence.
CONCLUSION
Case: 22-1514 Document: 34 Page: 7 Filed: 04/14/2023
UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 7
We have considered UPL’s remaining arguments and
do not find them persuasive. For the foregoing reasons, we
affirm the Board’s final written decision.
AFFIRMED