Trials
`Guerra, Kenneth; Trials
`Feldstein, Mark; raj.gupta@finnegan.com; UPL-PGR-FINNEGAN; Herbert, Toni-Junell; Bucca, Daniel; Carson,
`Charles C.; Klecyngier, David M.; EXT-Mrick@bakerlaw.com
`RE: PGR2023-00017
`Tuesday, July 30, 2024 8:21:16 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`Patent Owner affirmatively withdrew “any substantive reliance on the ’727 patent examples in this
`proceeding.” Paper 39, 3. Because Patent Owner did not rely on the field trial data, there does not
`appear to be any basis for Petitioner’s proposed motion for sanctions.
`
`Petitioner’s request is denied.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>
`Sent: Wednesday, July 24, 2024 2:54 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Feldstein, Mark <mark.feldstein@finnegan.com>; raj.gupta@finnegan.com; UPL-PGR-FINNEGAN
`<UPL-PGR-FINNEGAN@finnegan.com>; Herbert, Toni-Junell <therbert@bakerlaw.com>; 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
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`We write to correct Petitioner’s mischaracterization of Patent Owner’s position. As Patent Owner
`has already communicated to Petitioner, “Syngenta’s proposed motion is untimely and without
`merit.” Specifically, Patent Owner has communicated to Petitioner that “Syngenta’s motion is
`improperly based on trials on which UPL had previously disclaimed reliance in this PGR.” See
`Paper 39, 3 (withdrawing reliance); Paper 40, 6 (PTAB acknowledging no reliance on trial data to
`deny Syngenta discovery). Patent Owner further communicated to Petitioner’s counsel that its
`motion “additionally ignores that the Syngenta field trials conducted at your direction—but which
`you misrepresented and sought to withhold—independently established enablement and unexpected
`results.”
`
`Exhibit 3009
`
`

`

`We also note that Petitioner again improperly deviates from the procedure set forth in the Scheduling
`Order (Paper 9). See January 1, 2024, Board Email (instructing Petitioner to follow procedure
`outlined in Scheduling Order and not include substantive argument). Petitioner has bypassed the
`request for an “additional conference call,” failing to provide “multiple times when all parties are
`available,” and whether “the parties have met and conferred telephonically or in person.” Paper 9,
`2. Petitioner has not asked Patent Owner for availability for a call with the Board and the parties
`have not met and conferred telephonically or in person to attempt to reach agreement. Further,
`Petitioner’s email below improperly “contain[s] substantive argument.” Paper 9, 2.
`
`In the event the Honorable Board nevertheless is considering granting Petitioner’s request, Patent
`Owner requests that a call be held to discuss the matter first, pursuant to the Scheduling Order.
`Patent Owner is available Friday (7/26) between 10:00am-1:00pm (ET), Monday (7/29) between
`10:00am-1:00pm (ET), and Wednesday (7/31) between 10:00am-1:00pm (ET).
`
`Respectfully,
`
`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: Wednesday, July 24, 2024 11:39 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: 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>; 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: PGR2023-00017
`Importance: High
`
`
`To the Honorable Board,
`
` Petitioner (Syngenta ) seeks authorization to file a motion for sanctions against Patent
`Owner (UPL) in the above-referenced matter. Petitioner served Patent Owner with a motion for
`sanctions, supporting Declaration, and Exhibit in the above-referenced matter on July 2, 2024, which
`is 21 days prior to seeking authorization to file the motion per Rule 42.11 (d).
`
`Briefly, the issue surrounding the motion is that recent investigations by Syngenta have
`revealed that the purported field trials described in the ’727 Patent and relied upon by UPL in first
`obtaining issuance of the patent and later in opposing Syngenta’s Petition for post-grant review
`never took place. UPL’s failure to disclose that fact to the Office and the Board, and thus, its failure
`to uphold its ongoing duty of candor and good faith is sanctionable misconduct.
`
`

`

`
`
`Patent Owner’s response of July 22, 2024, evening did not dispute or remedy. We are
`requesting authorization to file our motion for sanctions now that the 21 days have passed.
`
`Respectfully,
`
`Toni-Junell Herbert
`Lead Counsel for Petitioner
`
`
`
`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.
`
`