Fox Rothschild attorneys Howard S. Suh, Ryan North Miller and Gerard P. Norton, Ph.D. successfully represented RiceTec, Inc. in invalidating two patents owned by BASF. The U.S. Patent Trial and Appeal Board (PTAB) issued its Judgment and Final Written Decision invalidating the two patents (U.S. Patent No. 11,096,345 and U.S. Patent No. 11,096,346) on March 8, 2023.

RiceTec and its Fox Rothschild team had been monitoring the prosecution of these patents before the U.S. Patent Office and sued BASF on the day the patents issued in Post Grant Review (“PGR”) Proceedings before the PTAB.

The BASF patents relate to methods of treating rice which contain certain genetic mutations that causes the rice to be resistant to certain types of herbicides.  As RiceTec explained to the PTAB, RiceTec believes that BASF specifically prosecuted these patents in order to create freedom to operate issues relating to RiceTec’s products.

Almost one year ago, based on RiceTec’s petitions, the PTAB instituted the PGR proceedings to commence based on the fact that the PTAB initially found that the challenged claims of the BASF patent were invalid for being anticipated over RiceTec’s prior published patent applications.

After a year of briefings, expert reports, expert depositions and oral arguments before a panel of three Administrative Patent Judges, the PTAB issued its Final Decision. It confirmed its initial determination that the patents were anticipated over the RiceTec prior art, but also separately found that all of the claims of the patents were also invalid for lack of written description.

Suh argued the case before the PTAB panel. Norton and Miller assisted with the briefing.

Click here and here to read the full text of the decisions.