Inari Agriculture Inc v. Corteva Agriscience LLC

1. Case Identification

• Case #: IPR2024-01014
• Patent #: 8,901,378
• Filed: June 13, 2024
• Petitioner(s): Inari Agriculture, Inc.
• Patent Owner(s): Corteva Agriscience LLC
• Challenged Claims: 1-8

2. Patent Overview

• Title: Corn Event TC1507 and Methods for Detection Thereof
• Brief Description: The ’378 patent relates to a specific transgenic corn plant, designated "event TC1507," containing a particular DNA construct. This construct, which integrates into the corn genome at a unique location, confers insect resistance and herbicide tolerance.

3. Grounds for Unpatentability

Petitioner’s central argument is that the ’378 patent is not entitled to its claimed priority date of April 30, 2004, because the priority application fails the enablement requirement of 35 U.S.C. §112. Petitioner argued that because the TC1507 event resulted from a "random integration" process (microprojectile bombardment), it is non-reproducible from a written description alone. Therefore, a deposit of biological material (germplasm) was required for enablement, but no such deposit was made. This alleged failure pushes the patent’s effective filing date to at least July 6, 2007, making the "Barbour" publication, which published on February 16, 2006, pre-AIA §102(b) prior art.

Ground 1: Anticipation of Claims 1-2 and 8 under §102

• Prior Art Relied Upon: Barbour (Application # 2006/0037095).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Barbour, which corresponds to the Patent Owner's own earlier application, discloses every element of claims 1, 2, and 8. Barbour allegedly describes the identical TC1507 event, including the same DNA construct with two expression cassettes (for insect resistance and herbicide tolerance) and the specific, unique flanking DNA sequences (SEQ ID NO: 26 and 27) that define the patented event. Petitioner argued that Barbour also expressly discloses the invention as a "corn plant" (claim 1), a "seed" (claim 2), and comprising the full polynucleotide of SEQ ID NO: 24 (claim 8).
  • Enablement of Prior Art: Petitioner contended that Barbour is enabling for anticipation purposes under §102, even though the corresponding priority application was not enabling under §112. This is because the TC1507 corn product ("Herculex I") was commercially sold by the Patent Owner starting in 2003, years before Barbour's publication. A person of ordinary skill in the art (POSA) could have obtained this commercially available corn and, using the detection methods also disclosed in Barbour, identified and possessed the claimed invention, thus rendering Barbour an enabling prior art reference.

Ground 2: Anticipation or Obviousness of Claims 3-4 and 7 under §102/103

• Prior Art Relied Upon: Barbour (Application # 2006/0037095).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barbour anticipates or, at a minimum, renders obvious the breeding methods of claims 3, 4, and 7. Barbour allegedly discloses a method of producing an insect-resistant corn plant by sexually crossing a first parental corn line containing the TC1507 expression cassettes with a second parental line, and then selecting the progeny. This maps directly to the breeding method of claim 3. Barbour's disclosure of using a "second parental corn line" that lacks insect resistance inherently teaches crossing with a "second plant" as required by claim 4. The resulting progeny would necessarily comprise the insect resistance of the parent, meeting the limitation of claim 7.
  • Motivation to Combine (for §103): To the extent any element was not explicitly disclosed, Petitioner argued it would have been obvious for a POSA to apply Barbour's disclosed DNA screening techniques (its claim 54) to the breeding methods (its paragraph 22) to select progeny containing the TC1507 DNA construct.

Ground 3: Obviousness of Claims 5-6 under §103

• Prior Art Relied Upon: Barbour (Application # 2006/0037095) in view of a POSA's general knowledge.
• Core Argument for this Ground:
  • Prior Art Mapping: Claims 5 and 6 depend on the breeding method of claim 3 and specify whether the insect-resistant TC1507 plant serves as the "pollen parent" (male, claim 5) or the plant into which pollen is deposited (female, via claim 6 specifying the "second plant" is the pollen parent).
  • Motivation to Combine: Petitioner argued that it was well known that corn plants have separate male and female flowers, and any plant can serve as either the male or female parent in a cross. A POSA seeking to develop new corn lines from the TC1507 event would have had only two predictable solutions: use the TC1507 plant as the male parent or as the female parent. Driven by market pressure to develop new crop lines, a POSA would have been motivated to pursue both known, predictable options with a reasonable expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• §314(a) & §324(a): No previous IPR petitions have been filed against the ’378 patent, and there is no co-pending district court litigation, making denial under General Plastic or Fintiv factors inapplicable.
• §325(d): Denial under Advanced Bionics is unwarranted because the petition raises issues not considered during prosecution. The primary reference, Barbour, was never before the Examiner. Crucially, the Examiner never considered or analyzed whether the priority application was enabling under §112, which is the core issue that establishes Barbour as prior art. Petitioner presented evidence that the Patent Owner admitted to the European Patent Office (EPO) that reproducing the event without a physical sample would be "almost impossible," an argument not presented to the USPTO.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-8 of Patent 8,901,378 as unpatentable.