Genus PLC v. Inguran LLC

1. Case Identification

• Case #: IPR2021-01027
• Patent #: 10,542,734
• Filed: June 4, 2021
• Petitioner(s): Genus PLC
• Patent Owner(s): Inguran, LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Methods for Increasing Genetic Progress in a Line or Breed of Swine Using Sex-Selected Sperm Cells
• Brief Description: The ’734 patent discloses methods for accelerating genetic improvement in a specific line or breed of swine within a genetic nucleus. The method involves breeding a boar and sow from the same line, collecting and sorting the boar’s semen to create a subpopulation enriched for X- or Y-chromosomes, inseminating the sow, genotyping the offspring for genetic markers, and selecting offspring as parents based on those markers.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Dekkers - Claims 1-5 are anticipated by Dekkers, or alternatively, are obvious over Dekkers in view of Maxwell, Garner, or Kim.

• Prior Art Relied Upon: Dekkers (a 2011 book chapter on pig genetics), Maxwell (a 2004 journal article), Garner (a 2006 journal article), and Kim (a 2000 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dekkers, a comprehensive review of swine breeding, inherently or expressly discloses every element of the challenged claims. Dekkers allegedly teaches methods for genetic improvement within a nucleus herd by selecting boars and sows from the same purebred line. It further describes using advanced reproductive technologies, including artificial insemination (AI) and sperm sexing, and marker-assisted selection based on genotyping offspring. Petitioner asserted that Maxwell and Garner, both explicitly cited by Dekkers, evidence that the claimed sperm sorting purity of at least 80% was a well-known and achievable standard. For claim 5, Petitioner argued Dekkers’ own tables, referencing Kim, disclose using specific single nucleotide polymorphisms (SNPs) like the MC4R gene variant to select for traits such as feed intake (efficiency) and lean growth (carcass lean).
  • Motivation to Combine (for obviousness alternative): Petitioner contended that a person of ordinary skill in the art (POSA) reading Dekkers would be directly motivated to consult the very references Dekkers cites—Maxwell and Garner—for implementing the sperm sexing technology it recommends. The combination would involve merely applying a known technique (high-purity sperm sorting) to the known breeding program described by Dekkers to achieve the predictable result of producing offspring of a desired sex.
  • Expectation of Success: A POSA would have had a high expectation of success, as the combination involves integrating standard, well-understood, and commercially practiced techniques in swine breeding, all of which are described as effective in the prior art.

Ground 2: Obviousness over Dekkers and Okere - Claims 1-5 are obvious over Dekkers in view of Okere.

• Prior Art Relied Upon: Dekkers (a 2011 book chapter) and Okere (a 2002 review article on swine reproductive techniques).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative argument in case Dekkers was found not to teach the claimed sperm-sorting purity. Petitioner argued Dekkers provides the foundational breeding program, including selection within a nucleus herd and genotyping. Okere was introduced as explicitly teaching the use of sperm sexing technology (SST) to increase genetic progress in swine, noting that by 2002, the technology achieved 85-90% purity for X- or Y-chromosome-bearing sperm, satisfying the claim limitation.
  • Motivation to Combine: A POSA seeking to implement the genetic improvement program in Dekkers would be motivated to use effective SST to control offspring sex, a stated goal in Dekkers. Okere described such a successful and available technology. Combining them would improve the rate of genetic progress and increase feed efficiency, providing a strong motivation for a POSA to apply Okere’s techniques within Dekkers’ framework.
  • Expectation of Success: Both references discussed the same underlying technology (Beltsville sperm sorting technology) for the same purpose (improving swine genetics). A POSA would reasonably expect that applying the established sorting method from Okere to the breeding program in Dekkers would be successful.

Ground 3: Obviousness over Buttram and Maxwell/Kim - Claims 1-4 are obvious over Buttram in view of Maxwell; Claim 5 is obvious over Buttram in view of Maxwell and Kim.

• Prior Art Relied Upon: Buttram (Application # 2008/0028478), Maxwell (a 2004 journal article), and Kim (a 2000 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Buttram taught a method for increasing genetic progress in a single, purebred genetic nucleus herd, including providing a boar and sow from the same line, using AI, and employing marker-assisted selection based on genotyping. However, Buttram did not teach the use of sex-sorted semen. Maxwell was combined to supply this missing element, as it explicitly taught using sex-sorted semen with purities over 85% to achieve "faster genetic progress" in swine. For claim 5, Kim was added to show that the specific SNPs correlated with feed efficiency and carcass lean, as required by the claim, were well-known in the art.
  • Motivation to Combine: Buttram’s primary objective was "maximizing [the] rate of genetic progress." Since Maxwell taught that using sex-sorted semen was a tool for achieving "faster genetic progress," a POSA would have been motivated to incorporate Maxwell's sorting technology into Buttram's breeding program to better achieve Buttram's stated goal.
  • Expectation of Success: The combination represented the application of a known technique (sex-sorting from Maxwell) to improve a known process (the breeding program of Buttram), a simple substitution that would yield predictable results.

4. Key Claim Construction Positions

• "genetic progress": Petitioner proposed this term be construed to mean "genetic change within a line, breed or herd whereby individuals in a successive generation...express a desired trait more strongly... and/or express an undesirable trait less strongly." This construction was central to arguing that the prior art methods were aimed at the same goal as the patent.
• "genetic nucleus": Petitioner proposed a construction clarifying that this is the herd at the top of a commercial breeding pyramid where offspring are used for breeding both within the herd itself and in lower levels of the pyramid. This was used to map the breeding structures described in the prior art to the claim language.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and §325(d). It was asserted that this was the first IPR petition filed against the ’734 patent and there were no parallel proceedings that would trigger a denial under Fintiv. Further, Petitioner contended that the asserted prior art and grounds were not substantively considered during prosecution, as the patent issued after only obviousness-type double patenting rejections, and most prior art references were not cited by the examiner.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of the ’734 patent as unpatentable.