Aardevo North America LLC v. AgVenture BV

1. Case Identification

• Case #: IPR2025-00136
• Patent #: 11,140,841
• Filed: November 4, 2024
• Petitioner(s): Aardevo North America, LLC
• Patent Owner(s): Agventure B.V.
• Challenged Claims: 1-10

2. Patent Overview

• Title: HYBRID SEED POTATO BREEDING
• Brief Description: The ’841 patent relates to diploid, fertile, and self-compatible potato lines of the species Solanum tuberosum that are highly homozygous (at least 75%) and produce high tuber yields (at least 200g per plant). The patent also covers methods for creating these inbred lines via selfing and methods for producing uniform hybrid potato seed by crossing two such inbred lines. Self-compatibility is described as being conferred by the S-locus inhibitor (Sli) gene.

3. Grounds for Unpatentability

Ground 1: Anticipation over Jong - Claims 1, 4, and 7 are anticipated by Jong.

• Prior Art Relied Upon: Jong (H. de Jong and P.R. Rowe, Inbreeding in cultivated diploid potatoes, Potato Res., 14(1):74-83 (1971)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Jong disclosed all limitations of claim 1. Jong described creating inbred diploid potato lines (e.g., US-W5309 and US-W5315) by crossing a self-compatible S. tuberosum plant (US-W4) with other S. tuberosum plants. The resulting lines were diploid, fertile, and self-compatible. Two of these lines (US-W5309 and US-W5315) produced over 200g of tubers per plant. Petitioner asserted that the S2 generation would be at least 75% homozygous based on standard genetic principles, and Jong’s S5 generation was estimated at 97% homozygous. Self-compatibility was inherently conferred by the Sli gene from the US-W4 parent, the same genetic source used by the patent inventors. Claim 4 was anticipated because Jong disclosed producing the plants from both true seed and tubers. Claim 7, a product-by-process claim, was anticipated because Jong’s plants exhibited all the recited product characteristics.

Ground 2: Obviousness over Core Breeding References - Claims 1-7 are obvious over Jong in view of Chase and Bamberg.

• Prior Art Relied Upon: Jong (1971 journal article), Chase (S.S. Chase, Analytical Breeding in Solanum Tuberosum L., Can. J. Genet. Cytol., 5(4):359-363 (1963)), and Bamberg (J.B. Bamberg et al., Elite Selections of Tuber-bearing Solanum Species Germplasm, NRSP-6 (1994)).
• Core Argument for this Ground:
  • Prior Art Mapping: Jong disclosed potato plants meeting most, if not all, limitations of claim 1. To the extent any limitation was not explicitly taught, it would have been obvious to a person of ordinary skill in the art (POSITA). Chase provided a well-known roadmap for "analytical breeding" in potatoes, which included steps for creating diploid inbreds and crossing them to produce hybrids. Bamberg disclosed publicly available potato germplasm and their desirable agronomic traits, teaching a POSITA which traits were available and valuable for breeding programs.
  • Motivation to Combine: A POSITA would combine these references to implement a systematic hybrid potato breeding program. Jong demonstrated initial success in creating high-yielding, self-compatible diploid inbreds and suggested further work to develop more diverse lines. A POSITA would look to Chase’s established analytical breeding method as a framework for this further work. For dependent claims 2 and 6, which require specific agronomic traits, a POSITA would consult a resource like Bamberg to select parental lines (like those used by Jong) known to possess such traits (e.g., disease resistance) and select for their retention in progeny.
  • Expectation of Success: A POSITA would have a high expectation of success. Jong’s success in achieving vigorous, fertile, and highly homozygous lines after several generations of selfing demonstrated the feasibility of the approach. Chase’s method was presented as a straightforward, stepwise process, and selecting for known traits described in Bamberg was routine breeding work.

Ground 3: Obviousness over Sli Gene and Breeding References - Claims 1-7 are obvious over Phumichai, Jong, Chase, Bamberg, and Spooner.

• Prior Art Relied Upon: Phumichai (C. Phumichai et al., Toward the development of highly homozygous diploid potato lines using the self-compatibility controlling Sli gene, Genome, 48(6):977-984 (2005)), Jong (1971 journal article), Chase (1963 journal article), Bamberg (1994 germplasm selections), and Spooner (D.M. Spooner et al., Extensive simple sequence repeat genotyping of potato landraces..., PNAS, 104(49):19398-19403 (2007)).

• Core Argument for this Ground:

  • Prior Art Mapping: This combination strengthened the obviousness case by adding Phumichai, which explicitly taught using the Sli gene to create highly homozygous (over 91%), self-compatible, diploid potato lines for the express purpose of heterosis breeding. Phumichai reported "considerable tuber yields." Spooner was cited to confirm modern potato taxonomy, establishing that the Phureja potatoes used in Phumichai and Jong are classified within the species S. tuberosum, directly refuting arguments made during the patent's prosecution.
  • Motivation to Combine: A POSITA seeking to create hybrid potatoes would combine the teachings. Phumichai provided the explicit genetic tool (Sli gene) and proof-of-concept for achieving high homozygosity. Jong provided evidence of achieving high tuber yields in similar inbred lines. A POSITA would apply Chase’s systematic breeding scheme to the lines and methods taught by Phumichai and Jong. The combination made the claimed invention obvious by teaching all its elements and providing a clear path to achieve it.
  • Expectation of Success: The expectation of success was very high, as Phumichai demonstrated that Sli-based breeding was a "simple procedure" for creating highly homozygous and vigorous plants. Combined with Jong’s success in achieving high yields, a POSITA would be confident in producing plants meeting the modest claim thresholds of 75% homozygosity and 200g yield.

• Additional Grounds: Petitioner asserted additional challenges, including that claims 8-10 are obvious over combinations including Springer (teaching the use of molecular markers to ensure genetic distance for heterosis), and that claims 1 and 4 are anticipated by publicly available potato lines US-W4 and RH89-039-16.

4. Key Technical Contentions (Beyond Claim Construction)

• Potato Taxonomy: A central contention was that the patent owner improperly distinguished prior art during prosecution by arguing that potato varieties like Phureja were a different species from S. tuberosum. Petitioner provided prior art (Spooner) to argue that, by the priority date, a POSITA would have understood that cultivated potatoes, including Phureja and Tuberosum groups, were all classified as a single species, S. tuberosum. This contention was critical to establishing that references like Phumichai and Jong were not dismissible and directly taught the claimed subject matter.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d). It contended that the petition raised new issues because key prior art references (Chase, Bamberg, Spooner, Springer) were never considered during prosecution. Furthermore, Petitioner argued the Examiner committed material error by:
  • Failing to properly consider Jong, which was cited in an IDS but never applied or discussed, despite disclosing plants meeting all claim limitations.
  • Accepting the patent owner’s scientifically incorrect taxonomic arguments to distinguish Phumichai, thereby overlooking Phumichai’s direct teachings on Sli-based inbreeding in S. tuberosum.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-10 of the ’841 patent as unpatentable.