By Carl Kukkonen –
On May 1, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) of U.S. Patent No. 11,140,841 in the case of Aardevo North America, LLC v. Agventure B.V. The patent in question, owned by Agventure, covers methods and lines for breeding diploid, fertile, self-compatible, and highly homozygous potatoes.
The ‘841 patent addresses a longstanding challenge in potato breeding: the development of diploid, self-compatible, and highly homozygous potato lines with robust agronomic performance. Historically, inbreeding in potatoes led to severe inbreeding depression, making it nearly impossible to produce vigorous, fertile, homozygous lines. The patent claims, among other things, potato plants that are diploid, fertile, self-compatible (conferred by the S-locus inhibitor, or Sli, gene), and at least 75% homozygous, with a minimum tuber yield of 200 grams per plant.
Aardevo, LLC, the petitioner, sought to invalidate claims 1–10 of the ‘841 patent, arguing anticipation and obviousness based on a variety of prior art references, including scientific articles and germplasm collections. The petitioner also relied on experimental data and expert declarations to support its case.
The PTAB’s decision addressed each of the petitioner’s grounds for unpatentability, focusing on both the technical disclosures of the prior art and the legal standards for anticipation and obviousness.
A critical threshold issue was the petitioner’s reliance on physical potato lines (US-W4 and RH89-039-16) as prior art. The Board emphasized that, under 35 U.S.C. § 311(b), only patents and printed publications can be used as prior art in IPR proceedings. Physical products, even if publicly available, do not qualify. The Board found that the petitioner’s use of experimental results from physical samples was improper and could not form the basis for anticipation or obviousness in this context.
The petitioner argued that the Jong reference anticipated the claims by disclosing inbred diploid potato lines with high homozygosity and tuber yield. However, the Board found that Jong did not expressly disclose all claim limitations, particularly the required level of homozygosity (at least 75%) and the specified tuber yield in the relevant generations. The Board noted that theoretical calculations of homozygosity do not suffice; actual measured values are necessary, and experimental evidence (such as that from Phumichai et al.) showed that observed homozygosity in S2 generations was often lower than theoretical expectations. Thus, the Board concluded that Jong did not inherently or expressly anticipate the claims.
The petitioner presented multiple obviousness combinations, relying on references such as Jong, Chase, Bamberg, Phumichai, and others. While these references discussed various aspects of potato breeding, the Board found that the petitioner failed to address compelling evidence of objective indicia of non-obviousness presented by the patent owner.
Agventure submitted extensive evidence during prosecution and in the IPR, including:
- Long-felt need: The difficulty and duration of efforts to breed highly homozygous, vigorous, diploid potatoes.
- Industry skepticism: Widespread doubt among experts that such lines could be developed due to inbreeding depression.
- Failure of others: Documented unsuccessful attempts by other researchers and companies.
- Unexpected results: The surprising success of Agventure’s approach, contrary to prevailing scientific opinion.
- Industry praise: Recognition from the Dutch government and leading experts.
The Board found this evidence persuasive and noted that the petitioner did not meaningfully rebut it. The PTAB emphasized that objective indicia are an integral part of the obviousness analysis and can tip the balance even if a prima facie case of obviousness is established.
Takeaways:
- Printed publication requirement: Only patents and printed publications can be used as prior art in IPRs; physical products and experimental data derived from them are excluded.
- Inherency and anticipation: Theoretical expectations are insufficient; actual data is required to establish that all claim limitations are met.
- Objective indicia of non-obviousness: Evidence of long-felt need, skepticism, failure of others, unexpected results, and industry praise can be decisive, especially when unchallenged by the petitioner.
Carl Kukkonen
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