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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`COMMONWEALTH SCIENTIFIC AND INDUSTRIAL
`RESEARCH ORGANISATION,
`Petitioner
`
`v.
`
`BASF PLANT SCIENCE GMBH
`Patent Owner.
`
`_______________
`
`Case PGR2020-00033
`Patent 10,301,638
`
`_______________
`
`PATENT OWNER EXHIBIT LIST
`
`
`
`2001
`
`2002
`
`Exhibit (Ex.) Description
`Complaint for Declaratory Judgement, Docket No. 1 in Case No.
`2:17-cv-00503 in the U.S. District Court for the Eastern District
`of Virginia
`CSIRO’s Answer To BASF Plant Science, LP’s Amended
`Complaint and CSIRO’s, GRDC’s and Nuseed Pty Ltd.’s
`Counterclaims Against BASF Plant Science, LP and Cargill,
`Inc., Docket No. 56 in Case No. 2:17-cv-00503 in the U.S.
`District Court for the Eastern District of Virginia
`Counterclaimants Commonwealth Scientific and Industrial
`Research Organisation, Grains Research and Development
`Corp., and Nuseed Pty Ltd.’s Initial Markman Brief, Docket No.
`207 in Case No. 2:17-cv-00503 in the U.S. District Court for the
`Eastern District of Virginia
`
`2003
`
`2004
`
`Singh et al., U.S. Patent No. 8,106,226 B2 (Jan. 31, 2012)
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Exhibit A to CSIRO’s Opening Claim Construction Brief,
`Docket No. 207-1 in Case No. 2:17-cv-00503 in the U.S. District
`Court for the Eastern District of Virginia
`Claim Construction Opinion and Order, Docket No. 274 in Case
`No. 2:17-cv-00503 in the U.S. District Court for the Eastern
`District of Virginia
`Excerpt from Rebuttal Validity Expert Report of Ljerka Kunst,
`Ph.D. in Case No. 2:17-cv-00503 in the U.S. District Court for
`the Eastern District of Virginia (Cover and signature page of
`report and ¶s 123-136, 9 pages total)
`Proponents’ Opposition To Opponents’ Renewed Motion for
`Judgment as a Matter of Law Under Fed. R. Civ. P. 50(B) or, in
`the Alternative, for a New Trial Pursuant to Rule 59(A), Docket
`No. 871 in Case No. 2:17-cv-00503 in the U.S. District Court for
`the Eastern District of Virginia
`Verdict Form, dated November 1, 2019, Docket No. 788 in Case
`No. 2:17-cv-00503 in the U.S. District Court for the Eastern
`District of Virginia
`Minutes of Proceedings, dated May 5, 2020, Docket No. 883 in
`Case No. 2:17-cv-00503 in the U.S. District Court for the
`Eastern District of Virginia
`
`2011
`
`Petrie et al., U.S. Patent No. 8,809,559 B2 (Aug. 19, 2014)
`
`
`
`
`
`
`
`
`
`Exhibit (Ex.) Description
`
`2012
`
`Declaration of Heike Sederoff, Ph.D., dated December 2, 2020
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`Williams et al., “Low temperature-induced fatty acid
`desaturation in Brassica napus: thermal deactivation and
`reactivation of the process,” Biochimica et Biophysica Acta,
`1128:275-279 (1992)
`Sarmiento et al., “Oleate desaturation and acyl turnover in
`sunflower (Helianthus annuus L.) seed lipids during rapid
`temperature adaptation,” Planta, 205:595-600 (1998)
`Iba, “Acclimative Response to Temperature Stress in Higher
`Plants: Approaches of Gene Engineering for Temperature
`Tolerance,” Annu. Rev. Plant Biol., 53:225-245 (2002)
`Hugly et al., “Enhanced Thermal Tolerance of Photosynthesis
`and Altered Chloroplast Ultrastructure in a Mutant of
`Arabidopsis Deficient in Lipid Desaturation,” Plant Physiol.,
`90:1134-1142 (1989)
`Hansen et al., “Essential Fatty Acids and Human Nutrition,” J.
`Am. Med. Assoc., 132:855-859 (1946)
`Hazel, “Thermal Adaptation in Biological Membranes: Is
`Homeoviscous Adaptation the Explanation?,” Annu. Rev.
`Physiol., 57:19-42 (1995)
`Yoshida et al., “Bacterial Long-Chain Polyunsaturated Fatty
`Acids: Their Biosynthetic Genes, Functions, and Practical Use,”
`Mar. Drugs, 14, 94 (2016)
`Sayanova et al., “Eicosapentaenoic acid: biosynthetic routes and
`the potential for synthesis in transgenic plants,” Phytochemistry,
`65:147-158 (2004)
`Hu et al., “Species Delimitation and Interspecific Relationships
`of the Genus Orychophragmus (Brassicaceae) Inferred from
`Whole Chloroplast Genomes,” Frontiers in Plant Science, 7,
`1826 (2016)
`Warwick et al., “Phylogeny of tribe Brassiceae (Brassicaceae)
`based on chloroplast restriction site polymorphisms and nuclear
`ribosomal internal transcribed spacer and chloroplast trnL intron
`sequences,” Can. J. Bot., 83:467-483 (2005)
`
`2
`
`
`
`
`
`2024
`
`2025
`
`2026
`
`2023
`
`Exhibit (Ex.) Description
`Hu et al., “Intergeneric hybrids between Brassica napus and
`Orychophragmus violaceus containing traits of agronomic
`importance for oilseed rape breeding,” Theor Appl Genet,
`105:834-840 (2002)
`Downey et al., “Genetic Control of Fatty Acid Biosynthesis in
`Rapeseed (Brassica napus L.),” J. Am. Oil Chem. Soc., 41:475-
`478 (1964)
`Murphy, “Manipulation of lipid metabolism in transgenic plants:
`biotechnological goals and biochemical realities,” Biochemical
`Soc. Trans., 22:926-931 (1994)
`Knutzon et al., “Manipulating seed oils for polyunsaturated fatty
`acid content,” pages 287 to 304 in Harwood (Ed.), “Plant Lipid
`Biosynthesis: Fundamentals and Agricultural Applications,”
`Society for Experimental Biology Seminar Series, Series
`Number 67, Cambridge Univ. Press (1998)
`Gelvin, “Agrobacterium-Mediated Plant Transformation: the
`Biology behind the ‘Gene-Jockeying’ Tool,” Microbiology And
`Molecular Biology Reviews, 67:16-37 (2003)
`Metz et al., “Production of Polyunsaturated Fatty Acids by
`Polyketide Synthases in Both Prokaryotes and Eukaryotes,”
`Science, 293:290-293 (2001)
`Singh et al., PCT International Application Publication No. WO
`2005/103253 A1 (November 3, 2005)
`Stefanov et al., “Differential activity of the mannopine synthase
`and the CaMV 35S promoters during development of transgenic
`rapeseed plants,” Plant Science, 95:175-186 (1994)
`Truksa et al., “Molecular analysis of flax 2S storage protein
`conlinin and seed specific activity of its promoter,” Plant
`Physiology and Biochemistry, 41:141-147 (2003)
`Petrie et al., “Metabolic Engineering Plant Seeds with Fish Oil-
`Like Levels of DHA,” PLoS ONE, 7, e49165 (2012).
`Declaration of Xiao Qiu, Ph.D. Under 37 C.F.R. § 1.130(a),
`dated November 27, 2020
`Declaration of Dr. Ljerka Kunst in Support of Counterclaimants’
`Rebuttal Markman Brief, Docket No. 203-1 in Case No. 2:17-cv-
`00503 in the U.S. District Court for the Eastern District of
`Virginia
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`3
`
`
`
`
`
`
`
`2035
`
`2036
`
`Exhibit (Ex.) Description
`Excerpts from the transcript of the deposition of Dr. Narendra
`Yadav, Ph.D. dated November 23, 2020
`Assignment, recorded in the U.S. Patent & Trademark Office on
`October 20, 2006 at Reel 018416, Frame 0670, assigning the
`inventors’ rights to U.S. Patent App. Serial No. 10/590,457 to
`BASF Plant Science GmbH
`Moloney et al., “High efficiency transformation of Brassica
`napus using Agrobacterium vectors,” Plant Cell Reports, 8:238-
`242 (1989)
`O’Neill et al., “Natural variation for seed oil composition in
`Arabidopsis thaliana,” Phytochemistry, 64:1077-1090 (2003)
`Hua et al., “Genomic in situ hybridization analysis of Brassica
`napus x Orychophragmus violaceus hybrids and production of B.
`napus aneuploids,” Plant Breeding, 125:144-149 (2006)
`Transcript of Conference Call with the Board and the parties’
`Counsel in PGR2020-00033 (Dec. 3, 2020)
`Written joint research Agreement (37 pages) between Bioriginal
`and BASF dated July 2002, and Addendum (4 pages) dated
`October 2005.
`Patent Owner Request for a Certificate of Correction (dated
`April 5, 2021), which includes copies of Papers 19, 21, 26, and
`Ex. 2041.
`Certificate of Correction for U.S. Patent No. 10,301,638 (dated
`May 18, 2021).
`
`2037
`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`Respectfully submitted,
`
`
` /
`
` Sandip H. Patel, Reg.# 43848 /
`Sandip H. Patel (Reg. No. 43,848)
`spatel@marshallip.com
`Lead Counsel for Patent Owner
`
`
`4
`
`
`
`
`May 20, 2021
`
`
`
`
`
`CERTIFICATE OF FILING AND SERVICE
`
`The undersigned certifies that on May 20, 2021, pursuant to 37 CFR § 42.6, a
`
`copy of the foregoing “PATENT OWNER EXHIBIT LIST” is being electronically
`
`filed via the Patent Trial and Appeal Board’s End to End (PTAB E2E) system and
`
`is being served via electronic mail on the petitioner as follows:
`
` /
`
` Sandip H. Patel, Reg.# 43848 /
`Sandip H. Patel (Reg. No. 43,848)
`spatel@marshallip.com
`MARSHALL, GERSTEIN & BORUN LLP
`
`ggershik@cooperdunham.com
`
`jwhite@cooperdunham.com
`
`bcomack@arelaw.com
`
`
`May 20, 2021
`
`
`
`
`
`
`
`
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