Precision Planting v. Maschio — Federal Circuit Sends Seed-Drill Obviousness Dispute Back to PTAB

Background

Maschio owns a patent on technology used in precision pneumatic seed drills to control seed distribution along a planting track. Precision Planting challenged claims in an inter partes review, arguing that combinations of prior-art references made the claimed seed-meter structure obvious. The Patent Trial and Appeal Board upheld the disputed claims.

A central issue was whether a reference called Fiorido disclosed a “thrust-bearing element.” The Board found that it did not, relying in part on expert testimony that Fiorido’s driving disk lacked the contact needed to perform that function. That finding shaped both the Board’s missing-element analysis and its conclusion that a skilled artisan would not have combined Fiorido with another seed-meter reference.

The Court’s Holding

The Federal Circuit vacated the Board’s determination for claims 1–3, 7–12, and 16 and remanded. The figures and description in Fiorido showed the relevant disks in contact. Because the prior-art document itself made that relationship apparent, the panel found no substantial evidence supporting the Board’s contrary conclusion that Fiorido lacked a thrust-bearing element.

The court did not decide the ultimate obviousness question. Instead, it directed the Board to redo the analysis while treating Fiorido as disclosing the disputed element. That correction may also change the motivation-to-combine inquiry, because the Board’s earlier reasoning rested on its mistaken understanding of Fiorido.

The panel declined to reach Precision’s remaining attacks on the motivation analysis and instructed the Board to apply the flexible obviousness principles of KSR v. Teleflex on remand. It also rejected an alternative obviousness theory that Precision had not adequately presented to the Board, treating that theory as forfeited.

Key Takeaways

• Expert testimony cannot supply substantial evidence when it conflicts with what the prior-art document plainly depicts.
• Correcting one factual premise may require the PTAB to revisit both whether an element is disclosed and whether references would have been combined.
• Appellants generally cannot rescue an IPR challenge with an obviousness theory they did not present to the Board.

Why It Matters

Patent validity disputes often hinge on how mechanical drawings would be understood by a skilled artisan. The ruling reminds the PTAB that expert opinions must be reconciled with the reference itself. For IPR petitioners, it also underscores the need to preserve alternative theories in the petition rather than waiting for appeal.