PTAB

IPR2017-01919

UPL Ltd v. AgroFresh Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Complexes of 1-Methylcyclopropene with Metal Coordination Polymer Networks
  • Brief Description: The ’216 patent discloses adsorption complexes of 1-methylcyclopropene (1-MCP) with specific porous metal coordination polymer networks (MCPNs), a class of materials also known as metal-organic frameworks (MOFs). The technology aims to stabilize and control the release of 1-MCP, a gas used to inhibit ethylene effects and extend the shelf life of produce.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5 and 21 under 35 U.S.C. §102 by Edgington

  • Prior Art Relied Upon: Edgington (International Publication No. WO 2016/037043).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Edgington discloses every element of the challenged composition claims. Edgington describes produce storage systems using adsorbent MOFs to manage plant-related gases, including 1-MCP. Its Figure 1 illustrates 1-MCP being released from an "Adsorbent material," which Petitioner asserted constitutes the claimed "adsorption complex." Furthermore, Edgington’s Table 1 explicitly identifies at least four MOFs—including magnesium formate, Al(OH)fumarate, 2-methylimidazole zinc salt, and Cu3(benzene-1,3,5-tricarboxylate)2—that are identical to MCPNs recited in independent claims 1 and 21 of the ’216 patent. For dependent claims 2-5, Petitioner contended that Edgington’s table also discloses inherent physical properties, such as mean pore diameter and particle size, that fall within the claimed ranges, thereby anticipating those claims as well.

Ground 2: Obviousness of Claims 6-20 over Edgington in view of Lee and Kostansek

  • Prior Art Relied Upon: Edgington (WO 2016/037043), Lee (a 2006 Journal of Food Science article), and Kostansek (Patent 6,548,448).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targets the kit and method claims. Petitioner asserted that Edgington teaches using MOFs to adsorb plant-related volatiles in produce packaging. Lee teaches adsorbing 1-MCP onto a porous agent for controlled release to prolong the storage life of produce. Kostansek teaches enclosing 1-MCP complexes in packaging materials that are impermeable to 1-MCP (e.g., sachets) to prevent premature loss of the active gas.
    • Motivation to Combine: Petitioner argued that since Edgington, Lee, and Kostansek all address the same technical problem—improving produce shelf life by controlling 1-MCP—a person of ordinary skill in the art (POSITA) would have been motivated to combine their teachings. A POSITA would combine Edgington’s superior MOFs with Lee’s system for adsorbing and releasing 1-MCP. To solve the known problem of premature gas loss, it would have been a simple and logical step to place the resulting 1-MCP/MOF complex into the impermeable packaging taught by Kostansek.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because MOFs were well-known to adsorb olefins like ethylene, which is structurally similar to 1-MCP. Edgington’s own disclosure of 1-MCP being released from its adsorbent material further confirmed this expectation.

Ground 3: Obviousness of Claims 1-21 over Daly in view of Edgington and Ho

  • Prior Art Relied Upon: Daly (Patent 6,017,849), Edgington (WO 2016/037043), and Ho (a 2014 Powder Technology review article).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground provides an alternative basis for invalidity. Daly teaches stabilizing volatile 1-MCP by complexing it with a molecular encapsulation agent, specifically α-cyclodextrin, to prolong food shelf life. Both Edgington and the Ho review article teach that MOFs are superior adsorbent materials for gases like 1-MCP, offering known advantages over α-cyclodextrin, such as higher loading capacity and a simpler, solid-state loading process.
    • Motivation to Combine: Petitioner argued a POSITA would have been motivated to substitute the known α-cyclodextrin adsorbent in Daly’s system with the superior MOF adsorbents taught by Edgington and Ho. This would have been a predictable substitution of one known adsorbent for an improved one to achieve better performance in the exact same application (improving produce storage).
    • Expectation of Success: The well-documented advantages of MOFs over α-cyclodextrin for gas adsorption, combined with their known ability to adsorb structurally similar olefins, would have provided a POSITA with a strong and reasonable expectation that the substitution would be successful.

4. Key Claim Construction Positions

  • "Metal coordination polymer network (MCPN)": Petitioner argued this term, as used in the claims, is not generic but is limited by the specification to the twelve specific MOF species recited in the independent claims.
  • "Thermally stable at a temperature of 100 °C. to 575 °C.": Petitioner proposed this phrase should be construed to mean the MCPN is stable at at least one temperature within the specified range, not necessarily stable throughout the entire range. This construction is based on the patent’s examples showing decomposition at temperatures within the range.
  • "Accessible pore volume": Petitioner argued this term should be construed as "total porosity by volume," based on disclosures in the specification equating the two concepts.
  • "1-MCP impermeable": Petitioner proposed this term includes materials with "low gas permeability," not necessarily zero permeability, consistent with the patent’s description of suitable materials.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-21 of the ’216 patent as unpatentable based on the asserted grounds.