by Dennis Crouch
An interesting mandamus petition is pending from Inari Agriculture — asking the Federal Circuit to overturn the PTAB institution denial in a PGR challenging Pioneer Hi-Bred’s inbred corn patent. U.S. Patent No. 11,659,803. In its decision, the PTAB denied Inari’s obviousness challenge because it failed to sequence and analyze the genome of the deposited seed that defines the claimed plant variety. Inari argues this creates an unconstitutional “Catch-22” where challengers must risk patent infringement liability to file adequate PGR petitions, violating due process and separation of powers principles. [In re_-_ Inari Agriculture, Inc. Petition].
The ‘803 patent claims “seed, plant, plant part, or plant cell of inbred maize variety 1PFLQ21, representative seed of the variety having been deposited under NCMA accession number 202212046.” The specification describes the variety solely through phenotypic characteristics (plant height, silk color, ear length) listed in Table 1, without providing genetic sequence data. Inari’s PGR petition argued the claims were obvious based on prior art disclosing the variety’s parent line PH1V5T and related varieties with similar phenotypic properties, following the approach endorsed by the Board in Ex parte C, 27 U.S.P.Q.2d 1492 (BPAI 1992), where plant utility claims were found obvious based purely on phenotypic comparison without deposit analysis.
As I noted in my 2024 post, this case is part of a larger ongoing patent dispute between these two companies and there is also a good amount of interesting strategy where Pioneer has obtained patents while keeping the parent lines secret. See, Dennis Crouch, Trade Secrets vs. Patents: Pioneer’s Plant Patent Strategy Raises Thorny Issues, Patently-O (Oct. 24, 2024).
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