Precision Planting LLC v. MasChio Holding Spa

1. Case Identification

• Case #: IPR2024-00008
• Patent #: 8,770,121
• Filed: October 4, 2023
• Petitioner(s): Precision Planting LLC
• Patent Owner(s): Maschio Gaspardo S.P.A.
• Challenged Claims: 1-5, 7-14, and 16

2. Patent Overview

• Title: Seed Distribution Element for Precision Pneumatic Seed Drills
• Brief Description: The ’121 patent discloses a vacuum seed meter used in agricultural planters. The technology centers on a housing with a fixed portion and a movable portion, between which a perforated "sowing disc" rotates to pick up and distribute seeds. A key feature is a "thrust-bearing element" supported in the movable (vacuum chamber) portion to withstand axial load from the disc, thereby reducing wear on a pneumatic seal.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1–3, 7–12, and 16 under 35 U.S.C. §102 by VenHuizen

• Prior Art Relied Upon: VenHuizen (Patent 7,228,807).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that VenHuizen, which discloses a vacuum seed planter, teaches every limitation of the challenged claims. VenHuizen’s metering unit includes a housing with a first member (fixed portion) and a hinged second member (movable portion). A rotatable seed disk is interposed between them, with a seal on the movable portion. Critically, Petitioner asserted that VenHuizen’s hub handle (58), which locks the seed disk to a retaining hub, functions as the claimed "thrust-bearing element." This handle constrains the seed disk's axial movement when vacuum is applied, is located within the movable portion when the housing is closed, and rotates with the disk, thus anticipating the core elements of independent claim 1.
  • Key Aspects: Petitioner contended that the hub handle in VenHuizen, while not a traditional thrust bearing, meets the functional requirements of the claim term as construed by Petitioner.

Ground 2: Anticipation of Claims 1–5 and 10–14 under 35 U.S.C. §102 by Fiorido

• Prior Art Relied Upon: Fiorido (E.P. Patent Application No. 0536543).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fiorido, which discloses a pneumatic precision seed drill, also anticipates the claims. Fiorido’s device has a fixed seed container and a movable casing between which a perforated disk rotates. Petitioner identified Fiorido’s driving disk (31), which is connected to a drive shaft via bearings, as the claimed "thrust-bearing element." This driving disk bears against the sowing disk, constraining its axial movement under vacuum load. Petitioner further argued that since Fiorido teaches that the drive shaft can be introduced from either side of the housing, a POSITA would understand the movable portion could house the suction chamber and the rotatably supported thrust-bearing element, thus anticipating the claimed configuration.

Ground 3: Obviousness of Claims 1–3, 7–12, and 16 over Amazone in view of Fiorido, VenHuizen, and Applicant Admitted Prior Art

• Prior Art Relied Upon: Amazone (Amazone Manual, Oct. 2005), Fiorido (E.P. Patent Application No. 0536543), VenHuizen (Patent 7,228,807), and Applicant Admitted Prior Art (AAPA).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Amazone discloses a precision airplanter with a seed housing having fixed and movable portions, a rotating singling disc, and a seal on the movable portion. However, based on Petitioner’s proposed construction, Amazone lacks a centrally located "transmission drive shaft" and the claimed thrust-bearing element. Fiorido was argued to supply these missing elements, specifically its centrally located drive shaft and its driving disk, which functions as a thrust-bearing element. VenHuizen was cited for its teaching of a hinged connection between the housing portions.
  • Motivation to Combine: A POSITA would combine these references to solve the known problem of seal wear, as admitted in the ’121 patent. A POSITA would replace Amazone's peripherally-located gearing with Fiorido’s well-known, centrally-located drive and thrust-bearing mechanism to improve durability and performance. Similarly, adding a hinge as taught by VenHuizen was argued to be a simple, known modification to improve serviceability.
  • Expectation of Success: Petitioner contended there would be a high expectation of success because the combination involves substituting known mechanical components into a conventional seed meter to achieve predictable results.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3) based on Fiorido in view of VenHuizen and AAPA, relying on a similar motivation to add VenHuizen's hinge and mounting frame to Fiorido's core design.

4. Key Claim Construction Positions

• "thrust-bearing element": Petitioner argued this term should be construed broadly as "an element that provides support against an axial force," rather than being limited to a traditional, formal thrust bearing. This construction is central to its argument that elements like VenHuizen’s hub handle and Fiorido’s driving disk meet the claim limitation.
• "supported rotatably in the movable portion": Petitioner argued the term "in" means the element must only be located within the confines of the movable portion when closed, not necessarily physically mounted on or affixed to it. This construction is critical for the anticipation argument over VenHuizen, where the hub handle is part of the fixed portion's assembly but resides inside the movable portion when closed.
• "transmission drive shaft": Petitioner argued, based on mandatory language in the ’121 patent’s specification ("obligatory," "requires"), this shaft must be construed as being mounted on the fixed portion of the housing and centered relative to the sowing disc. This construction supports the obviousness argument that Amazone lacks this feature, motivating its combination with Fiorido.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), stating that although VenHuizen and Fiorido were cited on the face of the ’121 patent, they were never substantively analyzed or applied by the Examiner during prosecution. Petitioner asserted this rendered the claims "effectively unexamined" over this art, a conclusion supported by a European counterpart patent being invalidated by the EPO over VenHuizen. Furthermore, the Amazone reference was never previously considered by the USPTO.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7-14, and 16 of the ’121 patent as unpatentable.