PTAB challenges

Proceedings overview

There are two active AIA trial proceedings on US Patent 10947555B2. Both are Inter Partes Reviews (IPRs) and are currently in the appeal stage. This indicates that the patent has undergone scrutiny at the PTAB, but a final, unappealable decision on claim patentability is still pending. This posture suggests that the patent claims have been challenged, but as the proceedings are on appeal, no claims have been definitively canceled or sustained at the Federal Circuit level yet.

IPR2024-00179 — Inari Agriculture Inc. v. Corteva Agriscience LLC

• Type: Inter Partes Review
• Filed: 2023-11-15
• Status: Final Written Decision - Appealed. The PTAB has issued a Final Written Decision, which has subsequently been appealed to the Federal Circuit.
• Judge panel: Michael J. Fitzpatrick, Roberta Pollock, Timothy G. Majors
• Petition grounds: Challenges claims 1-34 of US10947555B2. The specific prior art and statutory bases (§ 102 / § 103) are not explicitly detailed in the search results but are expected to be based on patents and printed publications in an IPR.
• Institution decision: Instituted on 2024-03-19. The Board instituted review of all claims 1-34, noting that Inari's petition challenged the same claims, grounds, and substantially the same evidence as IPR2023-01036.
• Final Written Decision (if issued): Issued on 2024-12-17. The specific verdict at a claim-level granularity (which claims were canceled or held patentable) is not available in the provided search results.
• Settlement / termination: Not terminated by settlement. The FWD was issued and subsequently appealed.
• Appeal: Yes, the FWD was appealed to the Federal Circuit under docket number 25-1466. The specific issues on appeal are not detailed in the provided information.
• Defensive value: The issuance of an FWD and subsequent appeal means that the patentability of claims 1-34 has been thoroughly scrutinized by the PTAB. The outcome of the Federal Circuit appeal will be crucial in determining the ultimate strength of these claims. Until the appeal is resolved, the status of claims 1-34 remains uncertain.

IPR2023-01036 — Bayer CropScience LP et al. v. Corteva Agriscience LLC

• Type: Inter Partes Review
• Filed: 2023-06-15
• Status: Pending - Instituted. While listed as "Pending - Instituted" by one source, other information indicates that the PTAB instituted trial on 2023-12-19, and IPR2024-00179, which also challenged claims of US10947555B2, was joined with this IPR.
• Judge panel: Not explicitly stated in the provided search results, but Michael J. Fitzpatrick, Roberta Pollock, and Timothy G. Majors are associated with IPR2024-00179, which was joined.
• Petition grounds: Challenges claims of US10947555B2. The specific claims and statutory bases (§ 102 / § 103) are not explicitly detailed in the search results, but IPRs are limited to challenges based on patents and printed publications.
• Institution decision: Instituted on 2023-12-19. The Board instituted inter partes review, and subsequently, IPR2024-00179 was joined with this proceeding.
• Final Written Decision (if issued): Not yet issued. The status "Pending - Instituted" indicates that the trial is ongoing.
• Settlement / termination: No settlement or termination has been reported; the proceeding is ongoing.
• Appeal: No appeal information is available as a Final Written Decision has not yet been issued.
• Defensive value: This active IPR demonstrates an ongoing challenge to the patent's claims. While no claims have been definitively canceled, the institution of the IPR indicates the petitioner successfully demonstrated a reasonable likelihood of prevailing on at least one claim. The outcome of this IPR, once a Final Written Decision is issued, will significantly impact the patent's strength.

Strategic summary

Currently, two Inter Partes Review (IPR) proceedings, IPR2024-00179 and IPR2023-01036, are active for US patent 10947555B2. Both IPRs were instituted, meaning the PTAB found a reasonable likelihood that at least some challenged claims are unpatentable. Inari Agriculture Inc. in IPR2024-00179 challenged claims 1-34, and a Final Written Decision (FWD) was issued on 2024-12-17, which has since been appealed to the Federal Circuit (docket 25-1466). The specific outcomes for individual claims in that FWD are not yet publicly detailed in the provided information. IPR2023-01036 by Bayer CropScience LP et al. is still pending, but it appears IPR2024-00179 was joined with it. As of now, no claims of 10947555B2 have been definitively canceled or sustained by a Federal Circuit decision. Therefore, claims 1-34 are currently under scrutiny and their ultimate patentability remains in question pending the Federal Circuit's review of IPR2024-00179 and the FWD in IPR2023-01036. The remaining claims (if any beyond 1-34) are untested in these IPRs.

Regarding estoppel, 35 U.S.C. § 315(e)(2) generally bars a petitioner (and their privies) from raising any ground they raised or reasonably could have raised in an IPR in subsequent civil actions or ITC proceedings. Given that both IPRs have been instituted and are actively challenging claims, the petitioners (Inari and Bayer CropScience LP et al.) would likely be estopped from re-litigating obviousness and anticipation grounds based on patents and printed publications that were raised or could have been raised in these IPRs. For a new defendant facing assertion of this patent, prior art grounds not presented or that could not have been presented in these IPRs (e.g., certain § 112 grounds or other prior art not based on patents or printed publications) would still be available.

The pattern signals indicate aggressive use of IPRs against this patent by multiple petitioners (Inari and Bayer CropScience LP et al.), suggesting that the patent is considered a significant barrier in the agricultural technology space. The appeal of the FWD in IPR2024-00179 to the Federal Circuit highlights the patent owner's determination to defend the patent. The joining of IPR2024-00179 with IPR2023-01036 also points to a coordinated or similar attack on the patent.

Recommended next steps

• For IPR2024-00179, closely monitor the Federal Circuit appeal (docket 25-1466) for the disposition of the appeal and the Federal Circuit's opinion regarding the PTAB's Final Written Decision. This will provide the definitive outcome for claims 1-34.
• For IPR2023-01036, monitor the PTAB docket for the issuance of the Final Written Decision, which is expected to address the patentability of the challenged claims. PTAB typically has a one-year statutory deadline from institution to issue a FWD, which would be around December 2024.
• If you are a defendant facing assertion of this patent, consider a comprehensive prior art search for non-patent literature or other art that might fall outside the scope of what could have been reasonably raised in the existing IPRs, especially for challenges under 35 U.S.C. § 112 (written description, enablement, indefiniteness) or § 101 (eligibility), which are not typically available in IPRs.