NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

UPL NA INC.,

Appellant

v.

TIDE INTERNATIONAL (USA), INC.,

Appellee

______________________ 

2022-1514

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2020-

01113.

______________________ 

Decided: April 14, 2023

______________________ 

MAXIMILIENNE GIANNELLI, Finnegan, Henderson, 

Farabow, Garrett & Dunner, LLP, Reston, VA, argued for 

appellant. Also represented by JOSHUA GOLDBERG, RAJEEV 

GUPTA, PARMANAND K. SHARMA, Washington, DC. 

 BAILEY K. BENEDICT, Fish & Richardson P.C., Houston, 

TX, argued for appellee. Also represented by THAD 

CHARLES KODISH, Atlanta, GA; LAURA E. POWELL, Washington, DC. 

 ______________________ 

Case: 22-1514 Document: 34 Page: 1 Filed: 04/14/2023
2 UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 

Before MOORE, Chief Judge, LOURIE and STOLL, Circuit 

Judges.

LOURIE, Circuit Judge. 

UPL NA Inc. (“UPL”) appeals from a final written decision of the U.S. Patent and Trademark Office Patent 

Trial and Appeal Board (“the Board”) holding that claims 

1−4 of U.S. Patent 7,473,685 are unpatentable as obvious 

in view of the asserted prior art. Tide Int’l (USA), Inc. v. 

UPL NA Inc., No. IPR2020-01113, 2022 WL 97652 

(P.T.A.B. Jan. 4, 2022) (“Decision”). For the following reasons, we affirm. 

BACKGROUND

This appeal pertains to an inter partes review (“IPR”)

in which Tide International (USA), Inc. (“Tide”) challenged

claims 1–4 and 7–12 of the ’685 patent directed to granules 

of an insecticidally active compound known as acephate. 

Representative claim 1 is presented below:

1. A chemically stable dry flow, low compact, 

dust free soluble phosphoramidothioate granule consisting of

(i) 85-98% w/w an insecticidally active compound of the following formula:

wherein R and R1 individually are alkyl, 

alkynyl or alkenyl group containing up to 6 

carbon atoms, R2 is hydrogen, an alkyl group 

containing 1 to 18 carbon atoms, a cycloalkyl 

group containing 3 to 8 carbon atoms, an 

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UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 3

alkenyl group containing 2 to 18 carbon atoms 

or an alkynyl group containing 3 to 18 carbon 

atoms, R3 is hydrogen or an alkyl group 

containing 1 to 6 carbon atoms, and Y is 

oxygen or sulfur, wherein said insecticidal 

active compound is Acephate;

(ii) 0.1-5.0% w/w a dispersing agent;

(iii) 0.1-3% w/w a wetting agent;

(iv) 0.01-0.08% w/w an antifoaming agent;

(v) 0.01-1% w/w a stabilizer and

(vi) fillers to make 100%, 

wherein said granule has a length of 1.5-3.0 

mm and a diameter of 0.5-1.5 mm. 

’685 patent, col. 7 l. 44–col. 8 l. 4 (emphasis added). Independent claim 7 recites the same limitations as claim 1 and

adds that the granules further consist of “0.1-3% w/w a 

binding agent,” as well as “0.01-10% w/w a disintegrating 

agent.” Id. col. 8 ll. 19–47.

Tide petitioned for IPR of claims 1–4 and 7–12, asserting three obviousness grounds, each based primarily on 

U.S. Patent 6,387,388 to Misselbrook. J.A. 64. Misselbrook teaches water-soluble pesticide granules, including a “more preferred” granule made up of a pesticide, 

which may be acephate, a dispersing agent, a wetting 

agent, an antifoaming agent, and a filler. J.A. 816–17. 

Compared to claim 1 of the ’685 patent, that granule lacks 

only a stabilizing agent, though Misselbrook does teach 

more generally that stabilizers may be included. J.A. 817;

Decision at *5. In its petition, Tide proposed combining 

Misselbrook with references that provided more express 

motivations to include stabilizers in Misselbrook’s granules

and to support a motivation for, and reasonable expectation of success in, producing granules with ingredient concentrations that fell within the claimed ranges. 

Case: 22-1514 Document: 34 Page: 3 Filed: 04/14/2023
4 UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 

The Board concluded that Tide had met its burden to 

establish that claims 1−4 were unpatentable as obvious 

over the asserted prior art. Decision at *8−15. In so doing, 

the Board found unpersuasive UPL’s arguments that the 

prior art’s recitation of a binder, which is not a limitation 

recited in claim 1, led away from a conclusion of obviousness. Id., *12−13. The Board also concluded that Tide had 

not met its burden to establish that claims 7−12 would 

have been obvious. Id., *16−19. 

UPL appealed the Board’s decision as to claims 1−4. 

We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 

35 U.S.C. § 141(c).

DISCUSSION

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 finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

UPL raises two issues on appeal. First, UPL contends 

that the Board erred in construing “fillers” to include fillers 

that were also known to act as binding agents and therefore it erred in concluding that Misselbrook disclosed a 

composition with a filler. UPL also asserts that the Board 

erred in finding a motivation to combine the asserted prior 

art to arrive at the granules of claims 1–4, which lack an 

express “binding agent” limitation. We address each argument in turn.

I.

UPL first contends that the Board’s construction of 

“fillers” to include fillers that were also known to be useful 

binding agents conflicts with black-letter patent law. 

Claim construction is a question of law that we review de 

novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 

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UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 5

(Fed. Cir. 1998) (en banc). “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention[,]

which the patentee is entitled . . . to exclude’” others from 

practicing. Phillips v. AWH Corp., 415 F.3d 1303, 1312 

(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari 

Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 

2004)). 

Although the parties disputed what “fillers” meant, 

neither argued for a formal construction. Decision at *13, 

n.9. UPL asserts, however, that the plain and ordinary 

meaning of “fillers,” as it appears in claim 1, excludes those 

that were known to also act as binding agents. In particular, UPL points to the closed “consisting of” transitional 

phrase, the fact that claim 1 does not expressly recite “a 

binding agent,” and the fact that independent claim 7, also 

a consisting-of claim, recites both “a binding agent” and 

“fillers.” The Board, however, held that the plain meaning 

of “fillers” does not exclude those that were known to also 

act as binding agents. We agree. The transitional phrase 

“consisting of” excludes elements not specified in the claim. 

In re Gray, 53 F.2d 520, 521 (CCPA 1931). It does not mean 

that a single, listed ingredient may only serve one function. 

That “a binding agent” is an additional limitation of claim 

7 does not alter this conclusion. 

Moreover, in analyzing whether the prior art taught 

“fillers,” a question of fact that we review for substantial 

evidence, the Board correctly identified that Misselbrook 

teaches “water-soluble fillers” including inorganic watersoluble salts that UPL acknowledges were not known to act 

as binding agents. Decision at *13; J.A. 817; Oral Arg. at 

2:47−3:10, https://oralarguments.cafc.uscourts.gov/default.aspx?fl=22-1514_04042023.mp3. The Board’s decision that the prior art taught fillers, as recited in claim 1, 

was thus supported by substantial evidence.

II.

UPL next contends that the Board erred in finding a 

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6 UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 

motivation to combine, because “no publication of record

provided any rationale for removing or replacing the binding agents of Misselbrook.” Appellant’s Br. at 30–31. But 

Tide’s obviousness challenge was based on Misselbrook’s 

teaching of acephate granules consisting of each of the 

claimed ingredients, including fillers that did not act as 

binding agents. Tide was not required to show that a 

skilled artisan would have been motivated to remove an ingredient not present in Misselbrook’s granules.

Moreover, the Board found that “Misselbrook’s express 

teaching that ‘any water soluble or water dispersible’ diluent can be used as fillers’ rebuts [UPL’s] argument” that a 

skilled artisan “would understand fillers with binding 

properties like lactose, sucrose, and glucose to be a ‘key feature’ of those granules.” Decision at *13. UPL has not 

sought to rebut this finding with any assertion of unexpected results or other evidence of criticality. Id., *10. Instead, UPL points to U.S. Patent 5,075,058 to Chan, which 

provides that “a minimum amount of any particular binding agent is required in order to meet physical properties 

of attrition resistance, crush strength and bulk density.” 

J.A. 1684. But the ’685 patent claims do not recite these 

physical properties, so the “requirement” disclosed in Chan 

is not necessarily a “requirement” here. At best, UPL 

points to evidence that could be in tension with the Board’s 

finding. However, mere contradictory evidence is not 

enough to overturn a finding of fact. Velander v. Garner, 

348 F.3d 1359, 1378–79 (Fed. Cir. 2003) (“If the evidence 

will support several reasonable but contradictory conclusions, we will not find the Board’s decision unsupported by 

substantial evidence simply because the Board chose one 

conclusion over another plausible alternative.”). And we 

hold that, despite the Chan teaching, the Board’s finding

that a skilled artisan would have been motivated to prepare acephate granules without a binding agent was supported by substantial evidence. 

CONCLUSION

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UPL NA INC. v. TIDE INTERNATIONAL (USA), INC. 7

We have considered UPL’s remaining arguments and 

do not find them persuasive. For the foregoing reasons, we 

affirm the Board’s final written decision. 

AFFIRMED

Case: 22-1514 Document: 34 Page: 7 Filed: 04/14/2023