Lytone Enterprise, Inc. v. Agrofresh Solutions, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LYTONE ENTERPRISE, INC.,
Appellant
v.
AGROFRESH SOLUTIONS, INC.,
Appellee
______________________
2022-2269
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00451.
______________________
Decided: July 12, 2024
______________________
CASEY K RANING, Fish & Richardson P.C., Wilmington,
DE, argued for appellant. Also represented by N ITIKA
G UPTA F IORELLA; J OHN A. D RAGSETH , Minneapolis, MN.
RAYMOND N IMROD , Quinn Emanuel Urquhart & Sulli-
van, LLP, New York, NY, argued for appellee. Also repre-
sented by J EFFREY G ERCHICK, J ARED W ESTON N EWTON,
Washington, DC.
______________________
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 2
Before L OURIE, BRYSON, and REYNA, Circuit Judges.
L OURIE, Circuit Judge.
Lytone Enterprise, Inc. (“Lytone”) appeals from the fi-
nal written decision of the U.S. Patent and Trademark Of-
fice Patent Trial and Appeal Board (“the Board”) holding
that claims 3 and 11 of U.S. Patent 6,897,185 (“the ’185 pa-
tent”) are unpatentable for obviousness over the asserted
prior art. AgroFresh Sols., Inc. v. Lytone Enter., Inc., No.
IPR2021-00451 (P.T.A.B. July 25, 2022), J.A. 1−42 (“Deci-
sion”). For the following reasons, we affirm.
BACKGROUND
This appeal pertains to an inter partes review (“IPR”)
in which AgroFresh Solutions, Inc. (“AgroFresh”) chal-
lenged claims 1−9 and 11−15 of the ’185 patent, which re-
cite tablet formulations for counteracting the ethylene
response in plants that is involved in the ripening of fruits,
the senescence of flowers, and the abscission of leaves.
Lytone disclaimed claims 1, 2, 4−10, and 12−15 shortly be-
fore the petition was filed; thus IPR was instituted only as
to dependent claims 3 and 11. Claim 3 depends indirectly
from claim 1 through claim 2 as follows:
1. An effervescent tablet dosage comprising an agent
for blocking the ethylene binding site in plants and
an effervescent ingredient, in admixture with one or
more acceptable carriers and/or excipients.
2. The tablet dosage of claim 1, wherein the agent for
blocking the ethylene binding site in plants is se-
lected from the group consisting of cyclopropene, 1-
methylcyclopropene, 3,3-dimethy[l]cyclopropene,
methylenecyclopropane, diazocyclopentadiene,
trans-cyclooctene, cis-cyclooctene, and 2,5-nor-
bornadiene, the derivatives thereof, and the mix-
tures thereof.
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 3
3. The tablet dosage of claim 2, wherein the agent for
blocking the ethylene binding site in plants is 1-
methylcyclopropene.
’185 patent, col. 6, ll. 11−23 (emphases added). Claim 11
depends from claim 1 and further recites that the agent for
blocking the ethylene binding site in plants is released in a
gaseous form. Id. at col. 6, ll. 48−50.
Only the second and third grounds of unpatentability
that AgroFresh raised in its petition are relevant to this
appeal. In Ground 2, AgroFresh asserted that claims 3 and
11 would have been obvious over a Japanese patent appli-
cation (“Hisano”)1 in view of a U.S. patent (“Daly”)2. In
Ground 3, AgroFresh asserted that claims 3 and 11 would
have been obvious over Daly in view of Hisano.
Hisano teaches an “effervescent tablet preparation for
keeping cut flower freshness . . . comprised of carbonate
and water-soluble solid acid.” J.A. 810. The tablet, which
is placed in the water of the fresh-cut flowers, can further
include a non-chlorine-based component such as silver thi-
osulfate (“STS”) or an ethylene suppression agent. Id. at
810–11. Daly is also directed to blocking the ethylene re-
ceptor sites of plants. Id. at 815. Daly notes that STS was
a known compound for such a purpose, but that it had a
“serious waste disposal problem” and thus that there was
a “great desire” to find an alternative to STS. Id. at 816.
Daly teaches that 1-methylcyclopropene (“1-MCP”) is an ef-
fective blocking agent and that it may be stabilized via mo-
lecular encapsulation in cyclodextrin. Id. at 816−17. As
Daly explains, the resulting powder comprising the “caged”
1-MCP may be activated by “simply adding water” to re-
lease the 1-MCP from its cyclodextrin cage. Id. at 817.
1 Hisano et al., translation of Japanese Patent Appli-
cation Publication No. H6-183903; J.A. 810−13.
2 U.S. Patent 6,017,849; J.A. 815−26.
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 4
In its Final Written Decision, the Board found that Ag-
roFresh had established the unpatentability of claims 3
and 11 on both grounds. Lytone appealed.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A)
and 35 U.S.C. § 141(c).
D ISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings for substantial evidence, In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate to support the find-
ing. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
An obviousness inquiry begins with an assessment of
the differences between the asserted prior art and the chal-
lenged claims. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17 (1966). Here, Lytone conceded that the as-
serted references Hisano and Daly disclose each and every
limitation of the challenged claims. Decision at 19 (“Patent
Owner does not dispute that the combination of Hisano and
Daly teaches the claim limitations recited in claims 3 and
11.”).3 In particular, as Lytone concedes, over a year before
the ’185 patent was filed, a product known as EthylBloc
came onto the market. In Lytone’s own words: “EthylBloc
uses a ‘caged’ form of 1-MCP, in which each individual gas
molecule of 1-MCP is molecularly encapsulated (or
3 Despite that concession, in its appeal brief, Lytone
asserted that: “Neither reference, alone or in combination,
discloses the claimed invention.” Appellant’s Br. at 8. Be-
cause of its concession before the Board, that argument is
waived. Microsoft Corp v. Biscotti, Inc., 878 F.3d 1052,
1074–75 (Fed. Cir. 2017). And Lytone has presented no
clear argument on appeal to otherwise support such a po-
sition.
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 5
trapped) inside a cyclodextrin carrier molecule. The result
is a powder that can be dissolved in solvents to release the
1-MCP gas.” Appellant’s Br. at 4−5 (citations omitted).
Lytone further concedes that “1-MCP falls in the category
of ethylene-receptor blocking agents.” Id. The only differ-
ence between the EthylBloc product described in Daly and
the subject matter of the challenged claims is that the
claims recite an effervescent tablet while Daly’s EthylBloc
is a powdered solid. Thus, the only alleged discovery dis-
closed in the ’185 patent is simply “that caged 1-MCP could
be incorporated into an effervescent tablet.” Id. at 6.
Hisano teaches effervescent tablets, as well as their use for
promoting plant freshness via incorporation of an ethylene-
blocking agent. That ethylene-blocking agent is then freed
upon contact with water, much like Daly’s caged 1-MCP.
See Decision at 14–16.
On appeal, Lytone raises issues pertaining only to the
sufficiency of the Board’s analyses of motivations to com-
bine and reasonable expectations of success in formulating
Daly’s caged 1-MCP, which was expressly taught to be a
useful ethylene-blocking agent for promoting plant fresh-
ness, into Hisano’s effervescent tablets, which were ex-
pressly taught to be useful for delivering an ethylene-
blocking agent for promoting plant freshness. In particu-
lar, Lytone asserts that the Board impermissibly based its
obviousness findings on an obvious-to-try rationale and
failed to sufficiently evaluate reasonable expectation of
success. We address each argument in turn.
I
Lytone asserts that the Board erred in its analysis of
whether or not a person of ordinary skill in the art would
have had a motivation to combine the teachings of Hisano
and Daly to arrive at the claimed invention. In particular,
Lytone contends that the Board legally erred by allegedly
relying solely on an “obvious-to-try” theory to reach its con-
clusions of obviousness.
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 6
The Board used the word “try” three times in its anal-
ysis. It first stated that “the ordinarily skilled artisan
would have looked at Hisano as an analogous reference and
would have been motivated to try scaling up its smaller-
scale solution of effervescent tablets for delivery on a larger
scale than single flower vases.” Decision at 25 (emphasis
added). It next explained that “Daly’s teaching of using a
cyclodextrin cage-stabilized and powdered version of 1-
MCP to inhibit ethylene binding in plants would have mo-
tivated the skilled artisan to try this stabilized version in
Hisano’s effervescent tablet preparation because of the
benefits of effervescent ingredients for dissolution and dis-
persion, to treat plants on a larger scale.” Id. at 26 (em-
phasis added). It thereafter noted that it was persuaded
that “the skilled artisan would have viewed [a] disclosure
in Daly as an invitation to try use of an effervescent com-
pound as taught by Hisano.” Id. at 28 (emphasis added).
Those uses of the word “try” do not establish legal er-
ror. Indeed, KSR International Co. v. Teleflex Inc.,
550 U.S. 398 (2007), confirmed that obvious-to-try ration-
ales may be relied upon to support obviousness. Id. at 421
(“[T]he Court of Appeals [] conclude[d], in error, that a pa-
tent claim cannot be proved obvious merely by showing
that the combination of elements was obvious to try.”
(cleaned up)). As explained by the Supreme Court:
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of ordi-
nary skill has good reason to pursue the known op-
tions within his or her technical grasp. If this leads
to the anticipated success, it is likely the product
not of innovation but of ordinary skill and common
sense.
Id. at 421. Such is the case here.
Lytone argues that the obvious-to-try solution was not
“predictable” because “caged 1-MCP technology was new,
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 7
and there was no evidence that a skilled artisan would
have reasonably expected the proposed Hisano-Daly com-
bination would result in a tablet that actually released 1-
MCP gas.” Appellant’s Br. at 23. We disagree. Obvious-
ness has never required “absolute predictability of suc-
cess.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
Rather, “all that is required is a reasonable expectation of
success.” Id. at 904. And, as the Board held, “1-MCP, as
among a finite number of known compounds, would have
been the substitution of one known element, STS, for an-
other, 1-MCP, that yields predictable results.” Decision at
22. That combination led to the anticipated success, which
was not a product of innovation, but of ordinary skill and
common sense. See KSR, 550 U.S. at 417 (describing the
unpatentability of “the predictable use of prior art ele-
ments according to their established functions”).
Moreover, the Board’s analysis was not limited to the
three sentences that include the word “try.” Rather, as the
Board discussed at length, it further found:
that the artisan would have been motivated to com-
bine the teachings of Hisano and Daly because of
1) Daly’s teaching that STS is problematic for use
in inhibiting ethylene in plants due to difficulties
in silver waste byproduct disposal, leading to “a
great desire among postharvest physiologists to
find alternatives to STS”; 2) Daly’s teachings that
cyclopropene and its derivatives, including 1-MCP,
are “commercially acceptable replacement[s] for
STS” and that powder complexes provide ad-
vantages over compressed gases for safety and con-
trol; and 3) Hisano’s teaching that an ethylene
suppressing agent could be delivered via an effer-
vescent tablet, which when dissolved in water, cre-
ates “generated carbonic acid gas [that] will
promote assimilation action, which will be effective
for cultivating, and preserving the freshness of, the
cut flowers (plants).”
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 8
Decision at 26–27 (citations omitted).
The Board also correctly noted that nothing in Hisano
teaches away or provides reasons to not combine its effer-
vescent tablets with Daly’s caged 1-MCP, finding that:
“Hisano makes no statements restricting its use to cut flow-
ers and [instead] suggests broader application including
use of alternative ethylene suppression agents including
STS with effervescent tablets.” Id. at 24.
The Board further directly addressed Lytone’s conten-
tion that Hisano “does not contemplate inclusion of a gase-
ous agent within the tablet” and that “every freshness
preserving agent disclosed in Hisano is a local-acting solid
or liquid, not a gas.” Decision at 22. As the Board correctly
explained, an obviousness inquiry must consider “the infer-
ences that the skilled artisan would have drawn from the
totality of the teachings of the art at the time of the inven-
tion.” Id. at 23–24. It then held that “because Daly sug-
gested the molecularly encapsulated 1-MCP could be made
in powder form, which is the form Petitioner suggested for
use in the proposed obviousness combination, we are not
persuaded by Patent Owner’s arguments regarding con-
cerns [that] the skilled artisan would have had about work-
ing with 1-MCP gas that is released into the atmosphere
where the atmosphere becomes the treatment medium as
opposed to a liquid medium.” Id. at 25 (citations omitted).
We too are not persuaded by Lytone’s arguments that the
Board’s conclusions regarding incorporating the caged 1-
MCP into Hisano’s effervescent tablets were not supported
by substantial evidence. See, e.g., J.A. 811, 816; Decision
at 20, 26.
We thus see no error in the Board’s analysis of motiva-
tions to combine and find its underlying factual findings to
be supported by substantial evidence.
II
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 9
Lytone next asserts that the Board legally erred by al-
legedly refusing to consider if the proposed prior art com-
binations would have worked for the alleged intended
purpose of treating plants on a large scale. See Decision at
39−40; see also id. at 24, 33−35. AgroFresh responds that
the Board properly found that the claimed invention is not
limited to treating large quantities of plants and that the
claims do not require a particular effectiveness level or
other measure of ethylene-blocking to be achieved. Appel-
lee’s Br. at 42–43. We agree with AgroFresh.
The Board held that the skilled “artisan would have
had a reasonable expectation of success in making the sub-
ject matter of claims 3 and 11, which do not recite a specific
amount of release of active agent or require application to
large-scale crops.” Decision at 39–40. Similarly, the Board
correctly noted that “[c]laims 3 and 11 recite a tablet dos-
age containing an effervescent ingredient and an agent ‘for
blocking the ethylene binding site in plants,’ but require no
effectiveness level or other measure of the blocking action
to be achieved.” Id. at 24; see also id. at 39–40 (incorporat-
ing that holding into its Ground 3 analysis).
Lytone nevertheless argues that the record does not
support a finding that 1-MCP would have been effectively
released once tableted. We disagree. Daly expressly
teaches that the “application or delivery methods of [the 1-
MCP] active compounds can be accomplished by simply
adding water to the molecular encapsulation agent com-
plex.” J.A. 817; see also Decision at 15–16. And, as ex-
plained by the Board, record evidence established that
effervescent tablet preparations allowed for improved con-
trol over the release of active ingredients through dissolu-
tion and dispersion. Decision at 19–20. Lytone also
admitted that “[t]ablets can be metered easily and, when
exposed to water, dissolve rapidly, which allows the caged
1-MCP to release into the atmosphere without any manual
mixing.” Appellant’s Br. at 6. The Board’s finding that a
person of ordinary skill in the art would have had a
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 10
reasonable expectation of success was therefore supported
by substantial evidence.
Lytone also argues that the Board refused to consider
evidence or various arguments regarding reasonable ex-
pectation of success. In particular, Lytone maintains that
the Board erred by disregarding a non-prior art reference,
U.S. Patent 6,762,153 (“the ’153 patent”),4 as contempora-
neous evidence of non-obviousness. The ’153 patent, which
was allegedly filed by a predecessor of a petitioner-in-inter-
est, states that:
1-[M]ethylcyclopropene release from larger quanti-
ties of powder can be very slow and incomplete,
sometimes taking days. This is especially true for
the large quantity of powdered complex needed to
treat full-scale fruit storage rooms. Stirring the
powder/water mixture does not appreciably speed
up 1-methylcyclopropene release when large quan-
tities of the complex are involved.
J.A. 1698.
According to Lytone, the Board erred by disregarding
that teaching as well as our holding in Arctic Cat Inc. v.
Bombardier Recreational Products Inc., 876 F.3d 1350
(Fed. Cir. 2017), that an unclaimed concern or risk may be
relevant to a finding that a skilled artisan might have been
dissuaded from pursuing a particular route of inquiry. Id.
at 1362−63. We disagree.
The Board did not ignore the ’153 patent. Rather, it
noted that Lytone had failed to cite case law requiring it to
“hold the actions of a predecessor of a petitioner in interest
against the petitioner.” Decision at 23. That is, the Board
expressly declined to treat the disclosures in the ’153 pa-
tent as admissions that a person of ordinary skill in the art
4 J.A. 1697–1702.
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 11
would have doubted that caged 1-MCP could be effectively
released from the proposed tableted dosage form. We see
no error in that holding.
Moreover, the Board need not have provided an addi-
tional express explanation why that non-prior-art disclo-
sure was insufficient to refute the weight of evidence
supporting its conclusion of obviousness. Novartis AG v.
Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017)
(“The Board is not required to address every argument
raised by a party or explain every possible reason support-
ing its conclusion.” (cleaned up)); see also Shoes by Firebug
LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362,
1371 (Fed. Cir. 2020) (“[I]t is not for us to second-guess the
Board’s assessment of the evidence.” (quoting Velander v.
Garner, 348 F.3d 1359, 1378 (Fed. Cir. 2003)).
Lytone misunderstands Arctic Cat in asserting other-
wise. Arctic Cat evaluated a jury verdict finding that a de-
fendant had not established obviousness by clear and
convincing evidence. The court first held that “[e]vidence
suggesting reasons to combine cannot be viewed in a vac-
uum apart from evidence suggesting reasons not to com-
bine.” 876 F.3d at 1363. The court then held that, where
the reference that had been relied upon to support a moti-
vation to combine further disclosed reasons not to combine,
and where there was “testimony confirming the potential
problems” described in that prior art reference, “a jury
could find a skilled artisan would not have been motivated
to combine” the asserted prior art “to arrive at the claimed
combination.” Id. But here, Lytone asks us to review a
Board decision finding that AgroFresh established by a
preponderance of the evidence that a person of ordinary
skill in the art would have had a reasonable expectation of
success in arriving at the claimed combination. And unlike
in Arctic Cat, the primary references that were relied upon
to establish that element of obviousness do not teach the
alleged concerns that Lytone suggests.
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LYTONE ENTERPRISE, INC. v. AGROFRESH SOLUTIONS, INC. 12
Moreover, mere contradictory evidence is insufficient
to overturn a finding of fact. Velander, 348 F.3d at 1378–
79 (“If the evidence will support several reasonable but con-
tradictory conclusions, we will not find the Board’s decision
unsupported by substantial evidence simply because the
Board chose one conclusion over another plausible alterna-
tive.”). Even if that were not the case, the cited disclosure
in the ’153 patent would be insufficient to do so, as the al-
leged concern is only (1) that the release process may be
“slow” and “incomplete,” yet, as the Board recognized, the
claims do not require a particular level or efficiency of re-
lease, see Decision at 33 (holding that “no effectiveness or
release level is recited”) and (2) that those properties are
“particularly true for the large quantity of powdered com-
plex needed to treat full-scale fruit storage rooms,” yet the
claims do not require a particular scale of application, id.
at 40 (holding that the claims do not “require application
to large-scale crops”).
We thus see no error in the way in which the Board
addressed or weighed the evidence of record.
In view of the above, we affirm the Board’s determina-
tion that AgroFresh established by a preponderance of the
evidence that claims 3 and 11 would have been obvious in
view of the asserted prior art.
CONCLUSION
We have considered Lytone’s remaining arguments
and do not find them persuasive. For the foregoing rea-
sons, we affirm the Board’s determination in IPR2021-
00451 that claims 3 and 11 of the ’185 patent are unpatent-
able.
AFFIRMED
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