From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Guerra, Kenneth <Kenneth.Guerra@finnegan.com>
`Monday, January 8, 2024 11:00 AM
`Herbert, Toni-Junell
`Bucca, Daniel; Carson, Charles C.; Klecyngier, David M.; Rick, Michelle; Mehta, Rakesh;
`Feldstein, Mark; Gupta, Raj; UPL-PGR-FINNEGAN
`RE: RE:PGR2023-00017
`
`[External Email: Use caution when clicking on links or opening attachments.]
`
`Hi Toni,
`
`We were unable to respond to your Friday email by COB the same day due to UPL time zone
`considerations. Based on the information you provided, UPL will oppose leave by Syngenta to file its
`proposed motion for additional discovery. We are available for a conference call with the Board on
`January 11 from 10 am to 12 pm and 2 pm to 7 pm.
`
`We also note that your email failed to include UPL’s designated service email address and all counsel of
`record. We have added them to this reply.
`
`Best,
`Ken
`
`Kenneth S. Guerra
`Associate
`Pronouns: He, Him, His
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4124 | mobile +1 219 576 4160 | Kenneth.Guerra@finnegan.com | www.finnegan.com
`
`From: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Sent: Friday, January 5, 2024 11:40 AM
`To: Feldstein, Mark <mark.feldstein@finnegan.com>; Guerra, Kenneth
`<Kenneth.Guerra@finnegan.com>; Mehta, Rakesh <rmehta@bakerlaw.com>
`Cc: Bucca, Daniel <dbucca@bakerlaw.com>; Carson, Charles C. <ccarson@bakerlaw.com>; Klecyngier,
`David M. <dklecyngier@bakerlaw.com>; EXT-Mrick@bakerlaw.com <Mrick@bakerlaw.com>
`Subject: RE:PGR2023-00017
`
`Dear Counsel,
`
`SYNGENTA EXHIBIT 1045
`Syngenta v. UPL, PGR2023-00017
`
`Page 1 of 9
`
`

`

`Please advise whether you would oppose a motion by Petitioner to seek: (1) the underlying data and
`materials related to the examples in the patent at issue (the ‘727 patent) or, in the alternative that the
`underlying data and materials cannot be found; (2) a deposition of inventor Rajju Devidas Shroff,
`resident in India where the experiments for the examples took place.
`
`Please also provide multiple times you are available next week for a conference call with the Board. We
`ask that you provide your availability no later than the close of business today.
`
`Kind Regards,
`Toni
`
`Toni Herbert
`Partner
`
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1578
`
`therbert@bakerlaw.com
`bakerlaw.com
`
`This email is intended only for the use of the party to which it is
`addressed and may contain information that is privileged,
`confidential, or protected by law. If you are not the intended
`recipient you are hereby notified that any dissemination, copying
`or distribution of this email or its contents is strictly prohibited.
`If you have received this message in error, please notify us immediately
`by replying to the message and deleting it from your computer.
`
`Any tax advice in this email is for information purposes only. The content
`of this email is limited to the matters specifically addressed herein
`and may not contain a full description of all relevant facts or a
`complete analysis of all relevant issues or authorities.
`
`Internet communications are not assured to be secure or clear of
`inaccuracies as information could be intercepted, corrupted, lost,
`destroyed, arrive late or incomplete, or contain viruses. Therefore,
`we do not accept responsibility for any errors or omissions that are
`present in this email, or any attachment, that have arisen as a result
`of e-mail transmission.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`Page 2 of 9
`
`

`

`Guerra, Kenneth <Kenneth.Guerra@finnegan.com>
`Tuesday, January 2, 2024 1:08 PM
`Herbert, Toni-Junell
`Carson, Charles C.; Klecyngier, David M.; Bucca, Daniel; Rick, Michelle; Feldstein,
`Mark; Gupta, Raj; UPL-PGR-FINNEGAN
`RE: Syngenta v. UPL, PGR2023-00017
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Toni,
`
`As we noted from the start, you have continuously misrepresented Dr. Jacobsen’s declaration. To be
`clear, we disagree that his opinions rely on testing referenced in the ’727 patent. You have further
`failed to provide legal and factual bases for any of your proposed discovery fishing expeditions. Indeed,
`it is not even clear from your evolving demands what discovery Syngenta now seeks. What is clear,
`however, is that the information sought is unlike the additional discovery of Syngenta’s testing ordered
`by the Board, which you directed and relied upon specifically for the purposes of this proceeding,
`intentionally withheld, and misrepresented as “not helpful to Patent Owner” (EX2019, 10:13-14).
`
`Accordingly, while you can inform the Board that we are available on January 3, 2023 from 2-4 pm and
`January 4, 2023 from 10 am to 1 pm, please advise them that it remains Patent Owner’s position that
`there is no dispute ripe for their consideration. Likewise, to the extent you have any other
`information—factual or legal—in support of your extraordinary additional discovery, please fully advise
`us today rather than sandbagging us before the Board.
`
`Best,
`Ken
`
`Kenneth S. Guerra
`Associate
`Pronouns: He, Him, His
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4124 | mobile +1 219 576 4160 | Kenneth.Guerra@finnegan.com | www.finnegan.com
`
`From: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Sent: Friday, December 29, 2023 4:52 PM
`To: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>; Feldstein, Mark
`<mark.feldstein@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-PGR-FINNEGAN <UPL-
`PGR-FINNEGAN@finnegan.com>
`Cc: Carson, Charles C. <ccarson@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>;
`Bucca, Daniel <dbucca@bakerlaw.com>; EXT-Mrick@bakerlaw.com <Mrick@bakerlaw.com>
`Subject: RE: Syngenta v. UPL, PGR2023-00017
`
`Page 3 of 9
`
`

`

`EXTERNAL Email:
`
`Ken,
`
`We note that you do not dispute that Dr. Jacobsen relied in his declaration on the testing referenced in the ‘727
`patent. As such we are entitled to all data, protocols, assessments, etc. relating to that testing as more specifically
`identified in our email dated Dec. 13. We further understand that you have investigated and determined that
`none of the identified data or other information exists. This is surprising given the discussion of the testing in the ‘
`patent, UPL’s reliance upon it during prosecution as described in our petition, and Dr. Jacobsen’s reliance upon it in
`his declaration. Your representation that no documentation exists only underscores the need to depose the ‘727
`inventor regarding the testing and to determine, for example, whether the disclosed testing was actually
`performed and the underlying documentation discarded or lost.
`
`Please give your availability for a call with the Board between January 3-5, 2024.
`
`Kind regards,
`Toni
`
`Toni Herbert
`Partner
`
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1578
`
`therbert@bakerlaw.com
`bakerlaw.com
`
`From: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>
`Sent: Wednesday, December 27, 2023 6:06 PM
`To: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Cc: Bucca, Daniel <dbucca@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>; Carson,
`Charles C. <ccarson@bakerlaw.com>; Rick, Michelle <MRick@bakerlaw.com>; Feldstein, Mark
`<mark.feldstein@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-PGR-FINNEGAN <UPL-
`PGR-FINNEGAN@finnegan.com>
`Subject: RE: Syngenta v. UPL, PGR2023-00017
`
`Hi Toni,
`
`Syngenta has provided neither factual nor legal bases to justify any of its now multiple requests for
`additional discovery. Your continued fishing also suggests that you may be trying to fabricate a dispute
`to raise with the Board.
`
`Page 4 of 9
`
`

`

`Nevertheless, as previously explained, UPL investigated and was unable to locate data relating to trials
`described in the ’727 patent beyond those reported therein. UPL will also not agree to the deposition of
`Mr. Rajju Devidas Shroff.
`
`Best,
`Ken
`
`Kenneth S. Guerra
`Associate
`Pronouns: He, Him, His
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4124 | mobile +1 219 576 4160 | Kenneth.Guerra@finnegan.com | www.finnegan.com
`
`From: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Sent: Tuesday, December 26, 2023 12:02 PM
`To: Feldstein, Mark <mark.feldstein@finnegan.com>; Guerra, Kenneth
`<Kenneth.Guerra@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-PGR-FINNEGAN <UPL-
`PGR-FINNEGAN@finnegan.com>
`Cc: Bucca, Daniel <dbucca@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>; Carson,
`Charles C. <ccarson@bakerlaw.com>; EXT-Mrick@bakerlaw.com <Mrick@bakerlaw.com>
`Subject: Re: Syngenta v. UPL, PGR2023-00017
`
`EXTERNAL Email:
`
`Counsel,
`
`Further to our email below, we ask that you respond to us by the close of business Wednesday
`(December 27th) about availability of underlying data and whether you will voluntarily make Rajju
`Devidas Shroff available for a deposition.
`Kind Regards,
`Toni
`
`Toni Herbert
`Partner
`
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1578
`
`therbert@bakerlaw.com
`bakerlaw.com
`
`Page 5 of 9
`
`

`

`From: Herbert, Toni-Junell
`Sent: Wednesday, December 20, 2023 4:09 PM
`To: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>; Bucca, Daniel <dbucca@bakerlaw.com>;
`Feldstein, Mark <mark.feldstein@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-PGR-
`FINNEGAN <UPL-PGR-FINNEGAN@finnegan.com>
`Cc: Klecyngier, David M. <dklecyngier@bakerlaw.com>; Carson, Charles C. <ccarson@bakerlaw.com>;
`Rick, Michelle <MRick@bakerlaw.com>; Bucca, Daniel <dbucca@bakerlaw.com>
`Subject: RE: Syngenta v. UPL, PGR2023-00017
`
`Dear Counsel,
`
`We are bit confused by your assertion. Dr. Jacobsen unambiguously relies on the testing in the ’727
`patent. For example, we cited to paragraph 52 of Jacobsen’s declaration in our original email. Indeed,
`unless Jacobsen did not review this portion of the ’727, it is unclear how the data would not influence
`his opinion.
`
`Further, we would also like to confirm that you and UPL investigated the availability of underlying
`material, correct? And that nothing was found? We understand such material allegedly existed as the
`’727 plainly states, e.g., "trials were carried out at various locations in India.” Accordingly, the results
`provided in the ’727 would presumably be averages. As you are aware, disease control is based on
`disease severity/pressure. As such, we expect disease severity/pressure would have been collected to
`determine a % control.
`
`To this end, we further note that the testing protocol used in the ’727 patent is at issue. Since these
`trials were “carried out at various locations in India” and you are representing the data and protocol
`material, etc. do not now exist, we now ask whether you will voluntarily make available the one inventor
`who may be able to provide information as to the trials in India: inventor, Rajju Devidas Shroff,
`residence in India. For convenience, we would be willing to take the deposition remotely.
`
`Kind Regards,
`
`Toni Herbert
`Partner
`
`
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1578
`
`therbert@bakerlaw.com
`bakerlaw.com
`
`Page 6 of 9
`
`

`

`From: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>
`Sent: Tuesday, December 19, 2023 6:52 PM
`To: Bucca, Daniel <dbucca@bakerlaw.com>; Feldstein, Mark <mark.feldstein@finnegan.com>; Gupta,
`Raj <Raj.Gupta@finnegan.com>; UPL-PGR-FINNEGAN <UPL-PGR-FINNEGAN@finnegan.com>
`Cc: Herbert, Toni-Junell <therbert@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>;
`Carson, Charles C. <ccarson@bakerlaw.com>; Rick, Michelle <MRick@bakerlaw.com>
`Subject: RE: Syngenta v. UPL, PGR2023-00017
`
`[External Email: Use caution when clicking on links or opening attachments.]
`
`Counsel,
`
`Your emails misrepresent Dr. Jacobsen’s Declaration and provide neither factual nor legal bases to
`support your request for data underlying examples in the ’727 patent. Nevertheless, UPL has
`investigated and was unable to locate any data beyond those reported in the ’727 patent.
`
`Best,
`Ken
`
`Kenneth S. Guerra
`Associate
`Pronouns: He, Him, His
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4124 | mobile +1 219 576 4160 | Kenneth.Guerra@finnegan.com | www.finnegan.com
`
`From: Bucca, Daniel <dbucca@bakerlaw.com>
`Sent: Monday, December 18, 2023 10:31 AM
`To: Feldstein, Mark <mark.feldstein@finnegan.com>; Guerra, Kenneth
`<Kenneth.Guerra@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-PGR-FINNEGAN <UPL-
`PGR-FINNEGAN@finnegan.com>
`Cc: Herbert, Toni-Junell <therbert@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>;
`Carson, Charles C. <ccarson@bakerlaw.com>; EXT-Mrick@bakerlaw.com <Mrick@bakerlaw.com>
`Subject: RE: Syngenta v. UPL, PGR2023-00017
`
`EXTERNAL Email:
`
`Counsel,
`
`Further to our email below, we ask that you respond to our email about producing data relied upon by
`Dr. Jacobsen by the close of business Tuesday (December 19th).
`
`Regards,
`
`Page 7 of 9
`
`

`

`Daniel Bucca, Ph.D.
`
`T +1.202.861.1575
`M +1.703.402.9442
`
`
`
`From: Bucca, Daniel
`Sent: Wednesday, December 13, 2023 2:29 PM
`To: Feldstein, Mark <mark.feldstein@finnegan.com>; Guerra, Kenneth
`<Kenneth.Guerra@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-PGR-FINNEGAN <UPL-
`PGR-FINNEGAN@finnegan.com>
`Cc: Herbert, Toni-Junell <therbert@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>;
`Carson, Charles C. <ccarson@bakerlaw.com>; Rick, Michelle <MRick@bakerlaw.com>
`Subject: Syngenta v. UPL, PGR2023-00017
`
`Counsel,
`
`We note that in Dr. Jacobsen’s Declaration he relies on the examples of the ‘727 patent as
`“demonstrating the effectiveness of the fungicidal combinations of the invention … as shown in Table
`1.” Ex2020 at paragraph 52. As such, we ask that you provide all data and assessments in relation to
`the Examples referred to in the ‘727 Patent and Table 1 including any testing/experimental protocol, the
`underlying data for disease control, and any calculations or determinations of efficacy, disease control,
`and synergistic effect.
`
`Regards,
`
`Daniel Bucca, Ph.D.
`He | Him | His
`Counsel
`
`
`Washington Square
`1050 Connecticut Ave N.W. | Suite 1100
`Washington, DC 20036-5403
`T +1.202.861.1575
`M +1.703.402.9442
`
`dbucca@bakerlaw.com
`bakerlaw.com
`
`This email is intended only for the use of the party to which it is
`
`Page 8 of 9
`
`

`

`addressed and may contain information that is privileged,
`confidential, or protected by law. If you are not the intended
`recipient you are hereby notified that any dissemination, copying
`or distribution of this email or its contents is strictly prohibited.
`If you have received this message in error, please notify us immediately
`by replying to the message and deleting it from your computer.
`
`Any tax advice in this email is for information purposes only. The content
`of this email is limited to the matters specifically addressed herein
`and may not contain a full description of all relevant facts or a
`complete analysis of all relevant issues or authorities.
`
`Internet communications are not assured to be secure or clear of
`inaccuracies as information could be intercepted, corrupted, lost,
`destroyed, arrive late or incomplete, or contain viruses. Therefore,
`we do not accept responsibility for any errors or omissions that are
`present in this email, or any attachment, that have arisen as a result
`of e-mail transmission.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`Page 9 of 9
`
`