United States Court of Appeals
for the Federal Circuit
______________________
MONSANTO TECHNOLOGY LLC,
Appellant
v.
E.I. DUPONT DE NEMOURS & COMPANY,
Appellee
______________________
2017-1032
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/002,028.
______________________
Decided: January 5, 2018
______________________
MATTHEW JAMES HILMERT, Winston & Strawn LLP,
Chicago, IL, argued for appellant.
MICHAEL J. FLIBBERT, Finnegan, Henderson,
Farabow, Garrett & Dunner, LLP, Washington, DC,
argued for appellee. Also represented by CORA RENAE
HOLT, MAUREEN DONOVAN QUELER.
______________________
Before DYK, REYNA, and WALLACH, Circuit Judges.
2 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
WALLACH, Circuit Judge.
Appellee E.I. DuPont de Nemours & Co. (“DuPont”)
sought inter partes reexamination of various claims of
Appellant Monsanto Technology LLC’s (“Monsanto”) U.S.
Patent No. 7,790,953 (“the ’953 patent”). The U.S. Patent
and Trademark Office’s (“USPTO”) Patent Trial and
Appeal Board (“PTAB”) issued a final decision that af-
firmed an examiner’s rejection of claims 1, 7, 12–22, 24,
and 27–30 (“the Asserted Claims”) as anticipated by U.S.
Patent No. 6,426,448 (“Booth”), and of, inter alia, claim 2
as obvious over Booth. See E.I. DuPont de Nemours & Co.
v. Monsanto Tech. LLC, No. 2015-007692, 2016 WL
4255131, at *3 (P.T.A.B. Aug. 10, 2016).
Monsanto appeals. We have subject matter jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We
affirm.
BACKGROUND
I. The Patented Technology
Entitled “Soybean Seed and Oil Compositions and
Methods of Making Same,” the ’953 patent claims a two-
step process for crossing (mating) two parent soybean
lines to produce soybean seeds with a modified fatty acid
profile. See ’953 patent col. 111 ll. 34–67; id. col. 1 ll. 31–
37. The ’953 patent describes “the combination of
transgenes that provide both moderate oleic acid levels
and low saturated fat levels with soybean germplasm that
contains mutations in soybean genes that confer low
linolenic acid phenotypes.” Id., Abstract. Claim 1, which
was amended during the reexamination, is the sole inde-
pendent claim and is illustrative. 1 It recites:
1 Monsanto has not separately argued the patenta-
bility of the remaining Asserted Claims, so all Asserted
Claims rise and fall with claim 1. See Kennametal, Inc. v.
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 3
A method of obtaining a soybean plant with an al-
tered seed oil fatty acid composition comprising
the steps of:
(a) crossing a first soybean parent line
having a seed oil fatty acid composition
comprising a linolenic acid content of
about 3% or less[2] of total seed fatty acids
by weight with a second soybean parent
line having a seed oil fatty acid composi-
tion wherein the i) level of oleic acid is
greater than about 55% of total seed fatty
acids by weight, or ii) wherein both the
level of saturated fatty acid is about 8% or
less of total seed fatty acids by weight and
the level of oleic acid is greater than about
55% of total seed fatty acids by weight,
said second soybean parent line compris-
ing either a transgene that decreases the
expression of an endogenous soybean
FAD2-1 gene to provide the level of oleic
acid greater than about 55% of total seed
fatty acids by weight of said second parent
soybean line of (i); or both a transgene
that decreases the expression of an endog-
Ingersoll Cutting Tool Co., 780 F.3d 1376, 1385 (Fed. Cir.
2015) (stating that “we need not, and do not, separately
analyze whether the [PTAB] correctly found [unpatenta-
bility] even as to the additional limitations recited in the[
remaining] claims” because the appellant “did not argue
for the independent patentability of any of [the remain-
ing] claims”). We treat claim 2 separately in our review of
the PTAB’s obviousness findings.
2 “A ‘low linolenic’ oil composition contains less
than about 3% linolenic acid by weight of the total fatty
acids by weight.” ’953 patent col. 13 ll. 3–4.
4 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
enous soybean FATB gene and a trans
gene that decreases the expression of an
endogenous soybean FAD2-1 gene to pro-
vide the level of saturated fatty acid of
about 8% or less by weight and the level of
oleic acid greater than about 55% of total
seed fatty acids by weight of said second
parent soybean line of (ii); and
(b) obtaining a progeny[3] plant exhibiting
a seed oil fatty acid composition compris-
ing a linolenic acid content of about 3% or
less of total fatty acids by weight and also
comprising either i) an oleic acid level in
the range of [about] 55% to [about] 80% of
total seed fatty acids by weight, or ii) both
a saturated fatty acid level of about 8% or
less of total seed fatty acids by weight and
an oleic acid level of [about] 55% to [about]
3 When a single cross of two soybean parent lines
results in multiple generations of plants, each generation
is referred to as a “progeny.” ’953 patent col. 11 ll. 8–15.
Relevant here, when referring to progeny of a particular
generation, the ’953 patent uses an identifier to specify
the generation. For example, it uses the term “F1 proge-
ny” (“F1”) to refer to the first generation progeny from a
cross of two plants and the term “F2 progeny” (“F2”) to
refer to the second generation of progeny from that cross
(i.e., the first cross of the first progeny). Id. col. 11 ll. 8–9,
12–13; e.g., id. col. 4 l. 50, col. 5 l. 34, col. 7 l. 29, col. 8 ll.
12–13. The ’953 patent also uses the term “progeny”
without a generation identifier to refer more broadly to
any generation of progeny plants, see, e.g., id. col. 5 l. 66,
col. 6 l. 26, col. 8 l. 46, col. 13 l. 26, and uses designations
such as “F2:3” to distinguish separate batches of the
second generation of progeny, e.g., id. col. 25 l. 53.
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 5
80% of total seed fatty acids by weight,
thereby obtaining a soybean plant with an
altered seed oil fatty acid composition.
J.A. 329−30 (footnotes and emphases added) (alterations
in original). 4
II. Booth
Booth is directed toward a number of soybean crosses
aimed at obtaining progeny with desired fatty acid com-
positions. See Booth col. 38 l. 53–col. 45 l. 43 (exs. 5–8),
col. 47 l. 53–col. 48 l. 40 (ex. 11). Similar to the ’953
patent, Booth discloses a “variety of novel soybean genes
that alter oil quality.” Id. col. 6 ll. 40–41. Specifically,
Booth Example 8 describes a method of crossing two
soybean lines, one with a “fan allele” or D3A gene for low
linolenic acid content and the other with a D2T gene for
high oleic acid content. See id. col. 25 l. 45–col. 26 l. 38
(Example 8: “Soybeans with High Oleic Acid and Low
Linolenic Acid Content”); see also id. tbl. 12 (showing the
fatty acid makeup of the selected progeny plants).
During the inter partes reexamination, DuPont sub-
mitted two declarations from one of Booth’s named inven-
tors, Dr. Anthony John Kinney (together, “the Kinney
Declarations”). J.A. 133–275 (First Kinney Declaration),
359–71 (Second Kinney Declaration). DuPont produced
the Kinney Declarations to show data from additional
progeny produced by following the disclosed method of
Example 8, “including plants not selected for inclusion in
4 The bracketed language in amended claim 1 re-
flect language deleted from the ’953 patent as issued.
During inter partes reexamination, Monsanto additional-
ly amended claims 2 and 7–11 and submitted new claims
12–30. J.A. 328–34. The dependent claims as amended
narrow the scope of the fatty acid or linolenic acid profiles
of the progeny plants. See J.A. 330–34.
6 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
Table 12 of the Booth patent.” J.A. 360 (footnote omitted).
Relevant here, the PTAB relied upon the Kinney Declara-
tions to interpret the fatty acid properties of the F2:3
generation because it found the “F2:3 generation results
provided in Exhibit A of the Second Kinney Declaration
represent[ed] the lines of all resulting progeny” from a
cross prepared according to Booth Example 8 and related
Table 12 that were not included in Booth Table 12. E.I.
DuPont, 2016 WL 4255131, at *4 n.9; see J.A. 360 n.1.
DISCUSSION
Monsanto contends that the PTAB erred by:
(1) misconstruing the “about 3% or less” limitation in the
’953 patent to include progeny with a linolenic acid con-
tent of 4%, Appellant’s Br. 45–50; (2) “rejecting [the
Asserted C]laims for anticipation” based on “an unlawful
composite” of Booth and the Kinney Declarations, the
latter of which Monsanto alleges are non-prior art refer-
ences, id. at 33–34 (capitalization and alterations omit-
ted); see id. at 33–50; and (3) employing a legally
erroneous “accidental obviousness theory for claim 2,” id.
at 51 (capitalization and alterations omitted); see id. at
50–60. After articulating the applicable standard of
review, we address these arguments in turn.
I. Standard of Review
“We review the PTAB’s factual findings for substan-
tial evidence and its legal conclusions de novo.” Redline
Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449
(Fed. Cir. 2015) (citation omitted). “Substantial evidence
is something less than the weight of the evidence but
more than a mere scintilla of evidence,” meaning that “[i]t
is such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.” In re NuVa-
sive, Inc., 842 F.3d 1376, 1379, 1380 (Fed. Cir. 2016)
(internal quotation marks and citations omitted). If two
“inconsistent conclusions may reasonably be drawn from
the evidence in record, [the PTAB]’s decision to favor one
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 7
conclusion over the other is the epitome of a decision that
must be sustained upon review for substantial evidence.”
In re Cree, Inc., 818 F.3d 694, 701 (Fed. Cir. 2016) (inter-
nal quotation marks and citation omitted).
II. Claim Construction
A. Legal Standard
We review the PTAB’s ultimate claim construction de
novo and its underlying factual findings for substantial
evidence. In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1340
(Fed. Cir. 2016) (citing, inter alia, Teva Pharm. USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831, 840–41 (2015)). “During
reexamination proceedings of unexpired patents, . . . the
[PTAB] uses the broadest reasonable interpretation
consistent with the specification standard, or BRI.” Id.,
832 F.3d at 1340 (internal quotation marks and citations
omitted). A specification “includes both the written
description and the claims” of the patent. In re Packard,
751 F.3d 1307, 1320 n.11 (Fed. Cir. 2014). A patent’s
specification, together with its prosecution history, 5
constitutes intrinsic evidence to which the PTAB gives
priority when it construes claims. See Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015).
When the PTAB reviews only evidence intrinsic to the
patent, the PTAB’s determination will amount solely to a
determination of law, which we review de novo. See In re
CSB-Sys., 832 F.3d at 1340.
5 A patent’s prosecution history “consists of the
complete record of the proceedings before the [US]PTO,”
which provides “evidence of how the [US]PTO and the
inventor understood the patent.” Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations
omitted).
8 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
B. The PTAB Properly Construed the “About 3% or Less”
Limitation in Step (a)
The PTAB “reasonably interpreted” Booth’s parent
line containing 4% linolenic acid “to be within the scope of
‘about 3%,’” as recited in claim 1 step (a). 6 E.I. DuPont,
2016 WL 4255131, at *6. 7 Monsanto maintains that the
PTAB’s construction is inconsistent with the specification.
Appellant’s Br. 45–50; see J.A. 5006 (arguing before the
PTAB that a “4% linolenic acid content is outside the
scope of a 3% linolenic acid content” (capitalization omit-
ted)). 8 We disagree.
6 Monsanto does not dispute that Booth “meets the
definition of the second line in Monsanto’s claimed cross
[as it relates to D2T],” Oral Arg. at 11:04−12,
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
17-1032.mp3, which includes a separate “about 3% or
less” limitation, see J.A. 329−30.
7 “Claim construction must . . . be explicit, at least
as to any construction disputed by parties.” Gechter v.
Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997). Although
the PTAB did not formally label its “about 3%” finding as
a claim construction, the Examiner treated the analysis
as such, see E.I. DuPont, 2016 WL 4255131, at *5, and the
PTAB stated that it “agree[s] with” the Examiner, id. at
*6–7. The parties also treat the finding as a construction
on appeal. See Appellant’s Br. 45–50; Appellee’s Br. 43–
47. The PTAB’s anticipation analysis is “conducted on a
limitation by limitation basis, with specific fact findings
for each contested limitation and satisfactory explana-
tions,” Gechter, 116 F.3d at 1460 (footnote omitted), and
so we have sufficient basis to review the PTAB’s findings
here. We thus analyze its findings on the term “about
3%” under our claim construction framework.
8 For the first time on appeal, Monsanto proffers a
new definition of “about 3%” to mean allowing variance
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 9
The claim language is not instructive, so we turn to
the remainder of the specification. See Marine Polymer
Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1358 (Fed.
Cir. 2012). Indeed, in Phillips, we held that the specifica-
tion “is the single best guide to the meaning of a disputed
term.” 415 F.3d at 1315 (internal quotation marks and
citation omitted). Here, the specification provides exam-
ples, which are “included to demonstrate preferred em-
bodiments of the invention.” ’953 patent col. 29 ll. 64–65.
Example 9 describes a parent line designated as the
“C1640 line” with “a linolenic acid content of about 3%.”
Id. col. 45 l. 65; see id. col. 45 ll. 64–66. The specification
further identifies Wilcox, J.R. et al., Inheritance of Low
Linolenic Acid Content of the Seed Oil of a mutant In
Glycine Max, Theoretical & Applied Genetics (1985)
(“Wilcox”) as the source of this C1640 line, see id. col. 46
ll. 2–5, and Wilcox states that the C1640 line has a range
of linolenic acid contents from 2.3% to 4.1%, J.A. 5098. In
light of this intrinsic evidence, 9 we agree with the PTAB’s
from 3% “at the most by tenths of a percent and not an
entire percentage.” Appellant’s Br. 46 (emphases added).
Monsanto never proffered this construction to the PTAB,
see J.A. 5001–30 (original brief to PTAB), 5052–66 (rebut-
tal brief to PTAB). While the court “retains case-by-case
discretion over whether to apply waiver,” Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1251 (Fed. Cir. 2005) (cita-
tions omitted), we have held that a party waives an
argument that it “failed to present to the [PTAB]” because
it deprives the court of “the benefit of the [PTAB]’s in-
formed judgment,” In re NuVasive, 842 F.3d at 1380
(citation omitted). Accordingly, we find Monsanto’s new
claim construction argument waived.
9 Neither party discussed further evidence of prose-
cution history for our review, see generally Appellant’s
Br.; Appellee’s Br., so we need not address it, see Teleflex,
10 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
finding that a person having ordinary skill in the art
(“PHOSITA”) would reasonably consider “about 3%” to
encompass a range that includes 4%. See E.I. DuPont,
2016 WL 4255131, at *6.
Monsanto’s counterargument is unavailing. Monsan-
to maintains that “[e]ven if it had been appropriate to
construe ‘about 3% or less’ based on Wilcox rather than
the specification,” the PTAB erred in “defin[ing] the
claims based on the highest, most outlying data point for
linolenic acid in Wilcox’s sample” rather than its mean
and standard deviation values. Appellant’s Br. 48 (em-
phasis added). However, Monsanto fails to identify what
qualifies as an “outlier” or cite anything in the intrinsic
record contradicting the “about 3%” claim interpretation
before us. See generally id. Accordingly, the PTAB did
not err in its construction of the “about 3%” limitation.
III. Anticipation
A. Legal Standard
“Anticipation is a question of fact that we review for
substantial evidence.” Blue Calypso, LLC v. Groupon,
Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016) (citation omit-
ted). Likewise, “[w]hether a claim limitation is inherent
in a prior art reference is a question of fact.” Telemac
Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328
(Fed. Cir. 2001) (citation omitted).
“A person shall be entitled to a patent unless,” inter
alia, “the invention was patented . . . more than one year
prior to the date of the application for patent in the Unit-
ed States.” 35 U.S.C. § 102(b) (2006). 10 A prior art refer-
Inc. v. Ficosa North Am. Corp., 299 F.3d 1313, 1324 (Fed.
Cir. 2002).
10 Congress amended § 102 when it passed the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 11
ence anticipates a patent’s claim under § 102(b) if it
“discloses each and every element of the claimed inven-
tion arranged or combined in the same way as in the
claim.” Blue Calypso, 815 F.3d at 1341 (internal quota-
tion marks, alterations, and citation omitted).
“[A]nticipation by inherent disclosure is appropriate only
when the reference discloses prior art that must neces-
sarily include the unstated limitation . . . .” Transclean
Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373
(Fed. Cir. 2002) (citation omitted).
B. Substantial Evidence Supports the PTAB’s Finding
that Booth Anticipates the Asserted Claims
The PTAB found that Booth anticipates the Asserted
Claims, relying in part on the Kinney Declarations, which
analyze Booth. The PTAB concluded that Booth discloses
step (a) of claim 1 and “the Second Kinney Declaration
shows that . . . the progeny of plants obtained” from step
(a) “as taught by Example 8 of Booth necessarily includes”
plants disclosed in step (b). E.I. DuPont, 2016 WL
4255131, at *9; see id. at *18 (“[T]he evidence in the
Kinney Declarations establishes that carrying out the
crosses described by Booth, particularly[] the D2T and fan
allele cross, would have necessarily resulted in progeny
within the scope of claim 1.”).
Monsanto contends that the PTAB’s anticipation find-
ings are not supported by substantial evidence because
112-29, § 3(b)(1), 125 Stat. 284, 285–87 (2011). However,
because the application that led to the ’953 patent has
never contained a claim having an effective filing date on
or after March 16, 2013 (the effective date of the statutory
changes enacted in 2011), or a reference under 35 U.S.C.
§§ 120, 121, or 365(c) to any patent or application that
ever contained such a claim, the pre-AIA § 102 applies.
See id. § 3(n)(1), 125 Stat. at 293.
12 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
the PTAB may not rely on the Kinney Declarations and,
when reviewing only intrinsic evidence, Booth Example 8
does not “inevitably produce[] progeny within the scope of
[the Asserted C]laims.” Appellant’s Br. 36 (internal
quotation marks omitted); see id. at 36–45. Monsanto
also argues that, if we consider the PTAB’s findings to be
based on inherent anticipation, the record does not sup-
port a finding that Booth inherently anticipates Monsan-
to’s claims. See id. at 35 (citing to the PTAB’s statement
that Booth “necessarily includes” progeny within the claim
scope as evidence of potential review for inherent antici-
pation but noting that the PTAB never used the term
“inherent” explicitly (emphasis added)). 11 We disagree.
1. Substantial Evidence Supports the PTAB’s Finding
that Booth Teaches Steps (a) and (b) of the Asserted
Claims
Substantial evidence supports the PTAB’s finding
that Booth expressly discloses step (a) of claim 1. Step (a)
discloses crossing soybean lines having known genetic
features—a first parent line having “about 3% or less”
seed oil linolenic acid content with a second parent line
having a transgene that decreases the expression of the
FAD2-1 gene—and, thus, having a seed oil oleic acid
content greater than about 55%. ’953 patent col. 111 l. 39;
J.A. 329.
Booth Example 8 describes crossing a first parent line
containing “either a fan allele or the D3A gene” with a
second line containing “the D2T gene.” Booth col. 25
11Monsanto additionally contends that, “[b]ecause
the [PTAB]’s ‘anticipation’ rulings were premised on [an
incorrect claim construction], they should be reversed for
this additional reason as well.” Appellant’s Br. 50. Be-
cause we find the PTAB’s claim construction proper, see
supra Section II.B, we find this argument unpersuasive.
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 13
ll. 49–50. Table 2 of Booth identifies the fatty acid char-
acteristics of the first parent lines that were used. Id. tbl.
2; see J.A. 135–39. Booth states that the fan allele line in
Table 2 has 4% linolenic acid by weight and that the D2T
line has a fatty acid content of 85%. Booth tbl. 2; see J.A.
136–37. Thus, given our claim construction above that
4% is within the “about 3%” limitation, we find that a fan
allele cross of the parent line from Booth anticipates
step (a) of claim 1 of the ’953 patent. We further find
substantial evidence that Booth teaches that the D2T line
contains a transgene that decreases the expression of the
FAD2-1 gene, providing 85% seed oil oleic acid levels—
thus meeting both the transgene and the “greater than
about 55%” seed oil oleic acid requirement for the second
parent line of the ’953 patent claim 1 step (a). See Booth
tbl. 2 (indicating D2T as having an oleic acid content of
85%—oleic being shorthanded in the table as column
“18:1”); see also J.A. 137–39.
Substantial evidence also supports the PTAB’s finding
that Booth “necessarily includes” step (b) of the Asserted
Claims. E.I. DuPont, 2016 WL 4255131, at *7. 12 Step (b)
requires “obtaining a progeny plant” having a seed oil
fatty acid composition with low levels of linolenic acid
(about 3% or less) and oleic acid levels from 55% to 80%.
See ’953 patent col. 111 ll. 58–67; see also J.A. 329. Step
(b) does not limit a progeny to a first generation plant.
See ’953 patent col. 111 ll. 58–67; see Oral Arg. at 5:39–41
(conceding by counsel for Monsanto that “[t]he claims
don’t require any particular progeny.”). Table 12 of Booth
reports seed oil fatty acid profiles of some of those progeny
generation plants. See Booth tbl. 12; see also id. col. 25 ll.
48–65.
12 We treat the PTAB’s statement as a finding of in-
herent anticipation for purposes of this appeal.
14 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
Monsanto argues that Booth does not anticipate step
(b) of claim 1 because Table 12 does not explicitly identify
a progeny with the fatty acid by weight characteristics of
claim 1 step (b), but rather identifies progeny with seed
oil oleic acid contents above the ’953 patent’s claimed
ranges, which “forecloses any claim of inherency.” Appel-
lant’s Br. 37. As the PTAB found, Booth “clearly [informs
a PHOSITA] that Table 12 does not represent the full
scope of the progeny lines resulting from the cross, but
only represents the ‘[s]ingle plants and family means that
were both lowest in linolenic acid content and highest in
oleic acid content.’” E.I. DuPont, 2016 WL 4255131, at *9
(quoting Booth col. 25 ll. 61–65). Indeed, Booth expressly
states that multiple generations of plants, including the
“F2:3 families” generations not shown in Table 12, were
obtained from the cross. See Booth col. 25 ll. 48–65.
Because Booth describes obtaining many progeny from
the cross families of Example 8 but only reports a “select”
subset of results in Table 12, E.I. DuPont, 2016 WL
4255131, at *4, the “select” subset of Table 12 does not
foreclose inherency.
Inherent anticipation applies here because the
“[Booth] disclosures . . . must necessarily include the
unstated limitation,” Transclean, 290 F.3d at 1373, i.e.,
the progeny line having a seed oil fatty acid composition
with low levels of linolenic acid and high levels of oleic
acid. The Second Kinney Declaration’s D2T and fan allele
cross confirm that Booth’s F2:3 generation would neces-
sarily result in progeny within the scope of claim 1. See
J.A. 360, 364–71 (describing and containing resultant
fatty acid profile data set for seeds from the F2:3 genera-
tion from which the Booth Table 12 plants were self-
pollinated to produce F3:4 progeny—of which forty-five
have an oleic acid content of 55% to 80% and a linolenic
acid content of 3.5% or less, and sixteen have an oleic acid
content of between 55% and 80% by weight and a linolenic
acid content of 3% or less by weight). As the PTAB ex-
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 15
plained, the Kinney Declarations confirm that the cross
from step (a) “necessarily includes progeny plants that
have an oleic acid concentration and a linolenic acid
concentration” as claimed in step (b), E.I. DuPont, 2016
WL 4255131, at *7, such that substantial evidence
demonstrates that Booth inherently anticipates step (b) of
the Asserted Claims as construed.
2. The PTAB Properly Relied Upon the Kinney Declara-
tions
Monsanto maintains that the PTAB impermissibly
looked to “non-prior art data” and “secret data” by using
the Kinney Declarations to support its anticipation find-
ing. Appellant’s Br. 34; see id. at 33–36. 13 However,
Monsanto confuses prior art with extrinsic evidence used
to support what is “necessarily present” in a prior art’s
teaching. Extrinsic evidence “may be used to interpret
the allegedly anticipating reference and [to] shed light on
what it would have meant to [a PHOSITA].” Ciba-Geiby
Corp. v. Alza Corp., No. 95-1046, 1995 WL 598380, at *2
(Fed. Cir. 1995) (citation omitted); see In re Baxter Trave-
nol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). We con-
clude that the PTAB did not err in relying upon the
Kinney Declarations.
First, the Kinney Declarations do not expand the
meaning of Booth or serve as prior art: they demonstrate
what is inherent in Booth progeny with various seed oil
fatty acid profiles. See J.A. 142 (“[Booth] discloses the
benefits of producing an altered seed fatty acid content
that favors saturated fatty acids such as oleic acid over
13 Monsanto makes the same argument with respect
to the PTAB’s obviousness findings. See Appellant’s Br.
51, 54. Our finding that the PTAB properly looked to the
Kinney Declarations in its anticipation analysis applies
equally to the PTAB’s obviousness findings.
16 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
polyunsaturated fatty acids such as linolenic acid to
improve the health of those ingesting the soybean plant or
products made from the soybean plant.”); see also J.A. 360
(“Exhibit A shows the fatty acid profiles for seeds from all
of the plants resulting from cross described in [Booth]
Example 8 . . . including plants not selected for inclusion
in Table 12 . . . .” (footnote omitted)).
Second, the Kinney Declarations are not improper
“secret data” simply because they were not published.
The Kinney Declarations were not used as the single prior
art anticipatory reference for purposes of this appeal.
Instead, they were offered in support of the prior art
already of record, Booth, for purposes of anticipation. It is
well established that such reliance on extrinsic evidence
is proper in an inherency analysis. See Telemac, 247 F.3d
at 1328 (“[R]ecourse to extrinsic evidence is proper to
determine whether a feature, while not explicitly dis-
cussed, is necessarily present in a reference.” (citation
omitted)). Moreover, extrinsic evidence need not antedate
the critical date of the patent at issue, Schering Corp. v.
Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003)
(“[T]his court rejects the contention that inherent antici-
pation requires recognition in the prior art.”), nor have
contemporaneous recognition by a PHOSITA, id.
(“[R]ecognition by a [PHOSITA] before the critical
date . . . is not required to show anticipation by inheren-
cy.”). In addition, the Kinney Declarations were not
secretive for purposes of the lower proceeding. Monsanto
submitted the First Kinney Declaration with its Request
For Inter Partes Reexamination, J.A. 133, and submitted
the Second Kinney Declaration in response to Monsanto’s
challenge that the F2:4 generation progeny plant (from
the First Kinney Declaration) represents an “outlier” for
oleic acid content cited in Booth, J.A. 361 (“The 72.8%
oleic acid content in Exhibit 5 of [the First Kinney Decla-
ration] corresponding to sample 7OLT-2709-0 of Table 12
is consistent with the oleic acid contents of the samples
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 17
identified . . . .”). Contrary to Monsanto’s assertions about
a “void of evidence about the origin of that secret data,”
Appellant’s Br. 42, we find the Kinney Declarations
demonstrate the inherent features already in Booth’s
express teachings regarding the resultant progeny char-
acteristics.
Third, although Monsanto cites to Glaxo Inc. v. Novo-
pharm Ltd., 52 F.3d 1043 (Fed. Cir. 1995), to support its
contention that the Kinney Declarations are insufficient
or inaccurate, see Appellant’s Br. 41, Glaxo is inapposite.
In Glaxo, the parties disputed whether the process found
in a prior art’s specification produced the claimed inven-
tion. 52 F.3d at 1047. The petitioner’s expert presented
extrinsic evidence in the form of testimony on the issue of
inherent anticipation; however, the patent-owner success-
fully rebutted the petitioner’s evidence with its own data
and expert testimony. Id. Unlike Glaxo, here, Monsanto
presented no rebuttal testimony. See E.I. DuPont, 2016
WL 4255131, at *5 (“Without evidence to the contrary, it
is reasonable to assume that both Exhibit 5 and Exhibit A
are results directed to a D2T and fan allele cross as
identified by the First Kinney Declaration.”), *7 (“[Mon-
santo] has presented no argument or evidence to suggest
that the data provided by Dr. Kinney in Exhibit A of the
Second Kinney Declaration does not fairly represent
actual test results from a cross prepared in Example 8 of
Booth.”). To the extent Monsanto raises arguments that
Example 8 would not necessarily produce progeny soy-
bean plants each and every time within the scope of the
claims on appeal, see Appellant’s Br. 20–22, we find those
waived, see Singleton v. Wulff, 428 U.S. 106, 120 (1976)
(“It is the general rule, of course, that a federal appellate
court does not consider an issue not passed upon below.”).
In any event, as counsel for Monsanto agreed at oral
argument, the claims do not require that the desired
soybean progeny be produced each and every time. Oral
Arg. at 5:34–7:19, 28:34–56. For the foregoing reasons,
18 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
the PTAB did not err in relying on the Kinney Declara-
tions.
IV. Obviousness
A. Legal Standard
A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a [PHOSITA].” 35 U.S.C. § 103(a) (2006). 14
Obviousness is a question of law based on underlying
findings of fact. See In re Gartside, 203 F.3d 1305, 1316
(Fed. Cir. 2000).
“[A]lthough anticipation can be proven inherently,
proof of inherent anticipation is not the same as proof of
obviousness.” Cohesive Techs., Inc. v. Waters Corp., 543
F.3d 1351, 1364 (Fed. Cir. 2008). “Though less common,
in appropriate circumstances, a patent can be obvious in
light of a single prior art reference if it would have been
obvious to modify that reference to arrive at the patented
invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
1361 (Fed. Cir. 2016), cert. denied sub nom. Google Inc. v.
Arendi S.A.R.L., 137 S. Ct. 1329 (2017). This court has
“repeatedly held that the motivation to modify a prior art
reference to arrive at the claimed invention need not be
the same motivation that the patentee had.” Alcon Re-
search, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir.
2012).
14 Congress also amended § 103 when it enacted the
AIA. Pub. L. No. 112-29, § 3(c), 125 Stat. at 287 (2011).
As discussed supra, the pre-AIA § 103 applies. See id.
§ 3(n)(1), 125 Stat. at 293.
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 19
B. Substantial Evidence Supports the PTAB’s Finding of
Obviousness Related to Claim 2
Dependent claim 2 limits the claim 1 step (b) progeny
plant to specific percentage ranges of linolenic, oleic, and
seed oil fatty acid levels, requiring that a step (b) progeny
plant have a seed oil linolenic acid content “of about 1% to
about 3%” by weight, an “oleic acid content of . . . 65%
to . . . 80%” by weight, and a seed oil saturated fatty acid
level of “about 1.5% to about 8%” by weight. J.A. 330.
The PTAB affirmed the Examiner’s rejection of claim 2 on
grounds that “claim 2 would have been obvious” while
basing its factual findings in large part upon its prior
anticipation findings for similar claim 29. 15 E.I. DuPont,
2016 WL 4255131, at *8 (“Although the Examiner did not
include claim 2 in the anticipation rejection . . . , [Mon-
santo] does not dispute [line 7OLT-IP36102-20 of the
Second Kinney Declaration] falls within the scope of [the
claim 2 limitation] ‘about 3%’ by weight.” (citation omit-
ted)). 16 The PTAB reasoned that a PHOSITA would have
15 Claim 2 is similar to claim 29 in that it requires a
saturated fatty acid level of “about 8%” of total seed fatty
acid as an added limitation. Compare J.A. 330, with
J.A. 334. Monsanto does not dispute that claim 1 is
representative for purposes of anticipation, so we do not
separately address claim 29 in our anticipation findings.
See Kennametal, 780 F.3d at 1385.
16 The PTAB also reviewed and affirmed the Exam-
iner’s obviousness rejections relating to claims 1, 7, 24,
and 27–30. Because we find the Asserted Claims invalid
as anticipated, we do not review Monsanto’s alternative
arguments regarding the PTAB’s obviousness findings
with respect to the Asserted Claims. See In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009) (declining to address
alternative grounds of unpatentability when the court
upholds one such ground).
20 MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO.
a reasonable expectation of success in performing the D2T
or fan allele cross. See E.I. DuPont, 2016 WL 4255131, at
*8–9.
Our findings with respect to anticipation apply equal-
ly here. See supra Section III.B. As such, the Second
Kinney Declaration’s disclosure of a progeny (7OLT-
IP36102-20) with a saturated acid content of about 8% by
weight, an oleic acid content of 80% by weight, and a
linolenic acid content of 3.4% by weight is substantial
evidence to support the finding of obviousness. See J.A.
370; see also J.A. 275, 359–71. Therefore, the sole re-
maining issue concerns whether a PHOSITA would have
been motivated to modify Booth to arrive at the patented
invention. See Arendi S.A.R.L., 832 F.3d at 1361.
Despite Monsanto’s contentions to the contrary, see
Appellant’s Br. 52, we find substantial evidence supports
the PTAB’s determination that a PHOSITA would have
been motivated to combine elements of Booth. The PTAB
did not base its obviousness finding solely on its inherent
anticipation analysis. 17 The PTAB explained that a
PHOSITA would have been motivated to modify Booth to
produce plants having more variable seed oil fatty acid
characteristics, as found in claim 2 of the ’953 patent,
because Booth “only represents the ‘[s]ingle plants and
family means that were both lowest in linolenic acid
content and highest in oleic acid content.’” E.I. DuPont,
17 Given the Examiner did not reject claim 2 on
grounds of anticipation, the PTAB could not independent-
ly adopt this ground of rejection without following the
procedures required for a new ground of rejection. See
Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de
C.V., 865 F.3d 1348, 1357 (Fed. Cir. 2017) (explaining
that the PTAB’s “ability to rely on different grounds [of
rejection] than the examiner” is limited (internal quota-
tion marks and citation omitted)).
MONSANTO TECH. LLC v. E.I. DUPONT DE NEMOURS & CO. 21
2016 WL 4255131, at *9 (quoting Booth col. 25 ll. 61–65)).
The PTAB then “f[ou]nd this evidence sufficiently teaches
[a PHOSITA] that the progeny results also include[]
plants that have higher linolenic acid content and/or
lower oleic acid content.” Id. Monsanto points to no
statement or suggestion in Booth that it would be unde-
sirable to produce progeny having low seed oil levels of
linolenic acid and 65% to 80% oleic acid (i.e., the composi-
tion recited in claim 2). See generally Appellant’s Br.
Accordingly, we uphold the PTAB’s conclusion that claim
2 would have been obvious over Booth.
CONCLUSION
We have considered Monsanto’s remaining arguments
and find them unpersuasive. Accordingly, the Decision on
Appeal of the U.S. Patent and Trademark Office’s Patent
Trial and Appeal Board is
AFFIRMED