From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Trials
`Herbert, Toni-Junell; Trials
`mark.feldstein@finnegan.com; Guerra, Kenneth; raj.gupta@finnegan.com; Carson, Charles C.; Bucca, Daniel;
`Klecyngier, David M.; Rick, Michelle; UPL-PGR-Finnegan@finnegan.com
`RE: PGR2023-00017; Request for Authorization to File Motion Pursuant to 37 C.F.R. 42.51(b)(1) and (2)
`Tuesday, January 9, 2024 2:41:51 PM
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`Counsel,
`From the Board –
`Petitioner is authorized to file the requested motion. Petitioner’s motion is limited to 8 pages and
`should be filed by January 17, 2024. Petitioner is authorized to file as an exhibit with its motion the
`email correspondence exchanged between the parties regarding the requested discovery. Patent
`Owner is authorized to file an opposition to Petitioner’s motion. Patent Owner’s opposition is limited
`to 8 pages and should be filed by January 29, 2024.
`Regards,
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`From: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Sent: Tuesday, January 9, 2024 1:14 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: mark.feldstein@finnegan.com; Guerra, Kenneth <Kenneth.Guerra@finnegan.com>;
`raj.gupta@finnegan.com; Carson, Charles C. <ccarson@bakerlaw.com>; Bucca, Daniel
`<dbucca@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>; Rick, Michelle
`<MRick@bakerlaw.com>; UPL-PGR-Finnegan@finnegan.com
`Subject: RE: PGR2023-00017; Request for Authorization to File Motion Pursuant to 37 C.F.R.
`42.51(b)(1) and (2)
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`To the Honorable Board,
`Petitioner (Syngenta) hereby requests authorization to file a Motion for Discovery under 37 C.F.R. §
`42.51(b)(1) and (2) (“Motion”). Petitioner requests 8 pages for its Motion. Patent Owner (UPL)
`opposes the motion.
`Petitioner seeks the underlying data and materials related to the examples in the patent at issue (the
`’727 patent). In the alternative, if the underlying data and materials cannot be found, Petitioner
`seeks a deposition from inventor Rajju Devidas Shroff, resident in India where the experiments took
`place.
`The Parties have exchanged email correspondence but have been unable to reach agreement; there
`have not been any telephonic or in-person meetings.
`If necessary, the parties can be available at the Board’s convenience for a conference call on January
`11 from 10am to 12pm and from 2pm to 7pm.
`Respectfully submitted,
`Toni Herbert
`Counsel for Petitioner, Syngenta Crop Protection AG
`
`Exhibit 3005
`
`

`

`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
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