By Kevin E. Noonan –

The province of the post-grant review (PGR) provisions of the Leahy-Smith America Invents Act under 35 U.S.C. §§ 321–329 permits a challenger to assert invalidity for anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103 (among other provisions of the Patent Act).  The Federal Circuit explicated how those provisions are applied not only to the limitations of the challenged claims but also to the teachings of the prior art in Syngenta Crop Protection AG v. UPL Ltd.

Syngenta in its PGR challenged all claims of UPL’s U.S. Patent No. 11,445,727 directed to combinations of various fungicides used for a variety of purposes (including “control[ling]] diseases, improv[ing] harvest quality, and increase[ing] yields”).  Claim 1 was set forth in the opinion as representative:

1.  A fungicidal combination consisting of benzovindiflupyr [“a succinate dehydrogenase inhibitor (SDHI) fungicide”], mancozeb [“a di-thiocarbamate fungicide”], and at least another fungicide selected from an ergosterol biosynthesis inhibitor fungicide, and a quinone outside inhibitor fungicide,

wherein the ergosterol biosynthesis inhibitor [EBI] is selected from azaconazole, bitertanol, bromuconazole, cyproconazole, difenoconazole, diniconazole, epoxiconazole, etaconazole, fenbuconazole, fluquinconazole, flusilazole, flutriafol, hexaconazole, imibenconazole, ipconazole, metconazole, myclobutanil, penconazole, propiconazole, simeconazole, tebuconazole, tetraconazole, triadimefon, triadimenol, triticonazole, prothioconazole, imazalil, oxpoconazole, pefurazoate, prochloraz, triflumizole, fenarimol, nuarimol, pyrifenox, pyrisoxazole, triforine, and mixtures thereof; and

wherein the quinone outside inhibitor fungicide [QOI] is selected from azoxystrobin, coumoxystrobin, enoxastrobin, flufenoxystrobin, picoxystrobin, pyraoxystrobin, mandestrobin, pyraclostrobin, pyrametostrobin, triclopyricarb, kresoximmethyl, dimoxystrobin, fenaminostrobin, metominostrobin, trifloxystrobin, famoxadone, fluoxastrobin, fenamidone, pyribencarb, and mixtures thereof.

Syngenta asserted three grounds of invalidity in its PGR Petition.  The first ground of invalidity on anticipation for claims 1, 3-5, 7, 9, and 10, was supported by Godoy et al., Efficiency of Multisite Fungicides in Controlling Asian Soybean Rust, Phakopsora Pachyrhizi, in the 2015/16 Harvest: Summarized Results of Cooperative Trials, 121 EMBRAPA SOJA, CIRCULAR TÉCNICA (Aug. 2016); J.A. 1853–59, which the opinion characterizes as providing “a multitude of fungicidal combinations for treating Asian soybean rust [and i]n particular . . . application of fungicidal compounds of ‘azoxystrobin + benzovindiflupyr and mancozeb’ at different doses” (azoxystrobin being recited in the second wherein clause of claims 1 and 2 of the ‘727 patent).  The second ground of invalidity, on anticipation and obviousness grounds for claims 1 and 3-10 asserted U.S. Patent No. 9,314,022 to Tobler, which disclosed two groups of embodiments that included fungicide combinations encompassing mancozeb plus additional compounds including benzovindiflupyr and in certain embodiments azoxystrobin.  The third ground of invalidity, on obviousness grounds asserted the combination of International Publication No. WO 2015/079334 (De Oliviera), Wiglesworth & Tally, Solatenol Fungicide – a New SDHI Fungicide from Syngenta, 105 (2d Supp.) PHYTOPATHOLOGY 11–12 (2015); J.A. 1950–51, Godoy and/or Tobler.  As explained in the opinion, the DeOliviera reference disclosed fungicidal combinations comprising “a first dithiocarbamate fungicide, and at least a second fungicide selected from a demethylation inhibitor, quinone outside inhibitor [QOI], succinate dehydrogenase inhibitor [SDHI], quinone inside inhibitor[,] or combinations thereof,” wherein certain of these combinations included mancozeb, a QOI “selected from trifloxystrobin, picoxystrobin, azoxystrobin, or pyraclostrobin” (all of these compounds recited in the challenged claims) and an EBI selected from “prothioconazole, tebuconazole, cyproconazole, epoxiconazole, metconazole, and tebuconazole” (likewise all of these compounds being recited in the challenged claims).  The opinion notes that the DeOliveira reference did not disclose benzovindiflupyr but the disclosures of Wiglesworth, Godoy and Tobler provided this component supporting Syngenta’s obviousness assertion.

Importantly for the Board’s ultimate determination of invalidity on all of Syngenta’s asserted grounds the terms “combination” and “composition” were construed as “not exclud[ing] a composition formed by applying the component fungicides sequentially.”  Also construed was the term “consisting of” to have its conventional meaning as included the recited fungicide components and no others.

In its Final Written Decision (FWD) the Board held that all challenged claims under the first ground were invalid as being anticipated by the Godoy reference; all challenged claims under the second ground were invalid as being anticipated by the Tobler reference; and claim 2 was invalid for obviousness under the third ground by the DeOliveira reference in view of the Wigelsworth, Godoy and Tobler references, which decision provided the grounds for UPL’s appeal of the Board’s invalidity determinations.

Although prevailing on its PGR challenges Syngenta appealed the Board’s decision (two days before the FWD was handed down) denying their request for leave to file a sanctions motion under 37 C.F.R. § 42.11, alleging that certain “field trials” disclosed in the ‘727 patent specification had never taken place, after failing to obtain discovery on this issue and carrying out their own field trials.  The Board denied the request for leave and Syngenta appealed.

On all grounds for appeal by both parties the Federal Circuit affirmed, in an opinion by Judge Taranto joined by Judges Hughes and Cunningham.  UPL’s first basis for appeal was its assertion that Syngenta’s petition was defective regarding “required statements of claim construction” relating to how the asserted prior art disclosed the “consisting of” claim limitation.  The Board failed to find any prejudice in Syngenta’s pleadings and the panel found no abuse of discretion in these determinations of the Board.  The parties had both argued that claim terms should be given their “ordinary and customary meaning[s]” and that each party had had the opportunity to provide their interpretation of what that should mean.  The Board held that the pleadings contained in the petition were sufficient to satisfy the statutory requirements under 35 U.S.C. § 322(a)(3) and the rules under 37 C.F.R. § 42.204(b)(4) and 37 C.F.R. § 42.22.

Specific objections argued by UPL included that the Board’s construction of “combination” and “composition” to permit “sequential applications of component fungicides” as in error, but the panel found no such error, asserting that “the two terms in this patent have the same meaning in the disputed respect,” that UPL had not “point[ed] the court to any meaningful, material difference between the two terms in the patent” and that the patent “often interchanges its use of the two terms,” citing certain portions of the specification illustrating the equivalence of these terms as used in the ‘727 patent.*  In view of this support in the specification, the panel agreed with the Board’s construction of these terms.

UPL also argued that the Board’s decisions on anticipation and obviousness were not supported by substantial evidence.  The panel’s assessment of this question included their determination regarding “the undisputed proper construction of ‘consisting of.’”  The dispute regarded whether the prior art disclosed embodiments that were limited to combinations of the recited elements and no other, or whether additional combinations having other components could be disclosed in the cited art (as stated in the opinion, UPL’s argument was that proper application of anticipating art required affirmative exclusion of additional components).  The opinion notes that UPL “provide[d] no authority to support such a legal requirement” and that, moreover, “[w]hat a relevant artisan would find disclosed or suggested by a reference is a factual matter.”  The panel illustrates these principles with regard to references that use “comprises” in their disclosures that can satisfy the requirements for anticipation or obviousness when disclosing embodiments reciting just the components in recited claims containing “consisting of” as a transitional phrase, stating “[t]he ‘comprising’ term includes the set of enumerated elements both with additional elements and without additional elements,” citing Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1328 (Fed. Cir. 1999), opinion amended on reh’g, 204 F.3d 1359 (Fed. Cir. 2000), and Eye Therapies, LLC v. Slayback Pharma, LLC, 141 F.4th 1264, 1272 (Fed. Cir. 2025).

Having established the rules for proper application of the asserted prior art, the panel then turned to how the Board had done so for each of these references.  With regard to Godoy, the Court stated that it was “undisputed” that the reference disclosed mixtures of benzovindiflupyr, mancozeb, and azoxystrobin for treating plants as recited in the ‘727 patent.  The disclosure of this reference of inclusion of another compound, termed Nimbus, did not preclude the anticipatory nature of this art for the challenged claims because the compound was not a fungicide as properly determined by the Board supported by substantial evidence in the panel’s opinion (which evidence was set forth in detail in the opinion).

As for the Tobler reference, UPL relied on their being more than 30,000 possible 3-component combinations disclosed by that reference.  The panel refuted this argument in favor of the Board’s finding that the reference disclosed the claimed combination(s) in addition to these other combinations.  The panel asserts that “[a] reference may disclose and thereby anticipate a combination required by a claim at issue even if it also discloses alternatives” citing Hewlett–Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003), and that “Tobler explicitly enumerates the claimed [combination] consisting of the compound [benzovindiflupyr] + [mancozeb]” plus one of 250 disclosed compounds that included azoxystrobin, picoxystrobin, difenoconazole, propiconazole, and others recited in the ‘727 claims.  Accordingly, the Board’s determination of anticipation based on the Tobler reference was supported by substantial evidence.

UPL’s argument regarding the Board’s obviousness determination was that the skilled worker would not have had motivation to combine the asserted references.  The panel found such motivation regarding SDHI compounds (specifically, benzovindiflupyr as disclosed in Wiglesworth and Tobler) with the combinations disclosed in DeOliveira in view of the combinations of benzovindiflupyr with mancozeb and azoxystrobin as disclosed in Godoy.  The express motivation identified by the Board was “to make the combination at issue as a way of enhancing improved disease control in a documented way.”  The panel rejected “UPL’s sole evidentiary argument” that DeOliveira had disclosed combining SDHI’s other than benzovindiflupyr as not amounting to a teaching away.

Finally, the panel addressed Syngenta’s cross-appeal related to the Board’s denial of their request for leave to file a sanctions motion.  The panel notes that prior to Syngenta’s submission of its request, UPL had withdrawn any reliance on the disputed data.  Accordingly, the Court affirmed the Board’s denial in view of “the language of the relevant sanctions regulation, 37 C.F.R. § 42.11.  Specifically, the opinion acknowledges Syngenta’s standing to appeal the Board’s denial of standing to request sanctions under Spokeo, Inc. v. Robins, 578 U.S. 330, 338 (2016) (that being “a cognizable concrete injury from denial of the opportunity to seek recovery of money it expended in litigation over what it says was UPL’s inclusion of fabricated data in its patent, and UPL’s reliance on it during the proceeding, and the asserted injury could be redressed if the motion was allowed to be filed and Syngenta is right on the merits of its sanctions claim”).  The Court also states that Syngenta is entitled to a presumption that its claims have merit, under Federal Elections Commission v. Ted Cruz for Senate, 596 U.S. 289, 298 (2022) (citing Warth v. Seldin, 422 U.S. 490, 500 (1975)); Rocky Mountain Helium, LLC v. United States, 841 F.3d 1320, 1325 (Fed. Cir. 2016); and Eregli Demir Ve Celik Fabrikalari T.A.S. v. United States International Trade Commission, 177 F.4th 1319, 1336 (Fed. Cir. 2026).  But the Court acknowledged that the relevant regulations also grant the Board the “discretion to determine whether a party may file a sanctions motion in the first place,” and set limits thereupon under 37 C.F.R. §§ 42.11(d), 42.12(a), and further that the panel’s review is on an abuse-of-discretion basis.  The panel rejected Syngenta’s purported reliance on Spectrum Solutions LLC v. Long-horn Vaccines & Diagnostics LLC, No. IPR2021-00847, 2024 WL 3561972 (P.T.A.B. July 11, 2024), in support of the safe harbor in the regulations triggered by a “good faith effort to comply” with the regulations.  In the Court’s opinion the Board did not abuse this discretion and accordingly affirmed denial of Syngenta’s request.

* The combinations of the present invention may be sold as a pre-mix composition or a kit of parts such that individual actives may be mixed before spraying.  Alternatively, the kit of parts may contain succinate dehydrogenase inhibitor fungicide and the dithiocarbamate fungicide pre-mixed and the third active may be admixed with an adjuvant such that the two components may be tank mixed before spraying.

The composition of the present invention maybe [sic] applied simultaneously as a tank mix or a formulation or may be applied sequentially.  The application may be made to the soil before emergence of the plants, either pre-planting or post-planting.  The application may be made as a foliar spray at different timings during crop development, with either one or two applications early or late post-emergence [emphases in opinion].

Syngenta Crop Protection AG v. UPL Ltd. (Fed. Cir. 2026)
Nonprecedential disposition
Panel: Circuit Judges Taranto, Hughes, and Cunningham
Opinion by Circuit Judge Taranto