PTAB

IPR2020-01113

Tide Intl USA Inc v. UPL Na Inc

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1. Case Identification

2. Patent Overview

  • Title: High-Concentration Acephate Granule Formulations
  • Brief Description: The ’685 patent relates to the chemical composition of chemically stable, soluble phosphoramidothioate granule formulations containing a high concentration (85-98% by weight) of the insecticide acephate, along with various functional excipients.

3. Grounds for Unpatentability

Ground 1: Obviousness over Misselbrook, CN '588, and JP '902 - Claims 1-4 and 7-12 are obvious over Misselbrook in view of CN ’588 and JP ’902.

  • Prior Art Relied Upon: Misselbrook (Patent 6,387,388), CN '588 (Chinese Patent Publication No. 1127588A), and JP '902 (Japanese Patent Publication No. 9-315902A).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every element of the challenged claims. Misselbrook taught soluble granule formulations of water-soluble pesticides, explicitly naming acephate, with an active ingredient concentration up to 90% and the optional inclusion of other ingredients like wetting agents, dispersing agents, defoaming agents, and stabilizers. CN ’588 taught methods for stabilizing acephate in dry pesticidal preparations (including granules) with an acephate content of up to 99% and the use of stabilizers. Critically, JP ’902 taught low-dust, soluble pesticide granules, preferably using acephate, and provided specific examples of formulations containing 95% acephate, along with surfactants, binders, and fillers.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would have been motivated to improve upon Misselbrook’s general disclosure of high-concentration granules to achieve cost savings. To do so, a POSITA would have looked to references like CN ’588 for specific teachings on stabilizing high concentrations of acephate and to JP ’902 for working examples of successful 95% acephate granules, which addressed known industry problems like dusting and caking.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because combining the known components was merely optimizing a formulation using standard techniques, with JP '902 providing a clear roadmap and proof of concept for a 95% acephate granule.

Ground 2: Obviousness over Misselbrook, Mayer, and CN '588 - Claims 1-4 and 7-12 are obvious over Misselbrook and Mayer in view of CN ’588.

  • Prior Art Relied Upon: Misselbrook (Patent 6,387,388), Mayer (Patent 6,030,924), and CN '588 (Chinese Patent Publication No. 1127588A).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented a similar argument, substituting Mayer for JP '902. Mayer taught less dusty, water-dispersible granule formulations with a high active ingredient content (30-90% by weight, preferably up to 87%) and explicitly listed insecticides as a preferred active ingredient. Mayer also taught the inclusion of a full suite of formulation auxiliaries, including dispersants, stabilizers, wetting agents, and fillers. When combined with Misselbrook’s specific disclosure of acephate and CN ’588’s teachings on stabilizing acephate, the combination disclosed all elements of the challenged claims.
    • Motivation to Combine (for §103 grounds): The motivation was again to improve upon Misselbrook's granules by formulating a less dusty, cost-effective, high-concentration acephate product. A POSITA would combine Misselbrook’s teaching of acephate with Mayer’s general framework for high-concentration insecticide granules and CN ’588’s specific solution for acephate stability.
    • Expectation of Success (for §103 grounds): Success would be expected, as this combination involved applying known formulation principles (Mayer) to a specific, well-known insecticide (Misselbrook's acephate) using a specific, known stabilization technique for that insecticide (CN '588).

  • Additional Grounds: Petitioner asserted an additional obviousness challenge over Misselbrook and JP ’902 in view of Mayer but relied on similar arguments for combining the references to achieve a high-concentration, stable acephate granule.

4. Key Claim Construction Positions

  • Petitioner argued that the preambles of independent claims 1 and 7 ("A chemically stable dry flow, low compact, dust free soluble phosphoramidothioate granule") are not limiting.
  • For the body of the claims, Petitioner contended that the transitional phrase "consisting of" creates a strong presumption of a closed claim but does not preclude an obviousness finding where the prior art teaches the claimed elements and separately teaches that other ingredients may be "optionally" included.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §325(d). It asserted that even though a similar reference (Lescota) was before the Examiner during prosecution, the Examiner materially erred by overlooking key disclosures regarding higher active ingredient concentrations (up to 90%) that fell within the finally-allowed range. Petitioner further contended that the newly presented references (CN ’588, JP ’902, and Mayer) were not cumulative as they provided specific examples and teachings not of record, such as working 95% acephate granules.
  • Regarding discretionary denial under §314(a) and Fintiv factors, Petitioner argued that institution was favored. The primary reasons were that the co-pending district court litigation was indefinitely stayed with no trial date due to the COVID-19 pandemic and difficulties deposing witnesses in China, making the inter partes review (IPR) an efficient alternative. Petitioner also asserted that the merits of the petition were particularly strong.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-4 and 7-12 of the ’685 patent as unpatentable.