From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Guerra, Kenneth
`Herbert, Toni-Junell; Giannelli, Maximilienne; Feldstein, Mark; raj.gupta@finnegan.com; UPL-PGR-FINNEGAN
`Klecyngier, David M.; Bucca, Daniel; Carson, Charles C.; Rick, Michelle
`RE: PGR2023-00017
`Friday, October 13, 2023 2:39:16 PM
`image008.png
`image009.png
`image010.png
`image011.png
`
`Hi Toni,
`Thank you for your response and offering your availability. To clarify, we meant to reference the ’727
`patent and “field books.”
`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, October 13, 2023 7:22 AM
`To: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>; Giannelli, Maximilienne
`<Maximilienne.Giannelli@finnegan.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>; Bucca, Daniel <dbucca@bakerlaw.com>;
`Carson, Charles C. <ccarson@bakerlaw.com>; EXT-Mrick@bakerlaw.com <Mrick@bakerlaw.com>
`Subject: FW: PGR2023-00017
`EXTERNAL Email:
`Hello Ken,
`Your below email is a bit confusing. You reference a ’505 patent and “field guides” among several
`unclear and inconsistent statements.
`As requested, we are available for a call with the Board on Oct. 16.
`We reiterate and maintain—Patent Owner is not entitled to any of the requested production—nor
`what Petitioner is willing to voluntarily provide. To this end, we would like to confirm you are still
`interested in the raw data which Syngenta was willing to produce.
`Nevertheless, we note your additional discovery request is not well taken. As you are most likely
`aware, the proposed discovery extends well beyond the scope of what is contemplated for PGRs,
`and such a production would not only be extremely burdensome, but also quite time consuming.
`Furthermore, any such discovery should have been sought with initial disclosure requests.
`Your requested discovery seems more likely to be an improper effort to use Petitioner’s resources,
`create a pretext for additional extensions of time, and increase cost on Petitioner.
`As noted above, we are available for a call on Monday the 16th.
`Regards,
`Toni
`Toni Herbert
`
`PGR2023-00017
`Ex. 3003
`
`

`

`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, October 11, 2023 9:02 AM
`To: Herbert, Toni-Junell <therbert@bakerlaw.com>; Giannelli, Maximilienne
`<Maximilienne.Giannelli@finnegan.com>; Feldstein, Mark <mark.feldstein@finnegan.com>; UPL-
`PGR-FINNEGAN <UPL-PGR-FINNEGAN@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>
`Cc: Bucca, Daniel <dbucca@bakerlaw.com>; Klecyngier, David M. <dklecyngier@bakerlaw.com>;
`Carson, Charles C. <ccarson@bakerlaw.com>; Rick, Michelle <MRick@bakerlaw.com>
`Subject: RE: PGR2023-00017
`Hi Toni,
`Notwithstanding Petitioner’s agreement to produce “field books” identified by its declarant Mr.
`Prates in his deposition on Sept. 20, Petitioner is unduly delaying their production. This is prejudicial
`to Patent Owner as we requested those documents over two weeks ago and there is limited time
`remaining for preparing and filing the Patent Owner Response. Petitioner has cited no basis to
`withhold these documents pending entry of the agreed-upon Protective Order.
`Given Petitioner’s delay and its prior refusal to produce other documents identified by Mr. Prates,
`Patent Owner intends to request leave form the Board to file a motion for additional discovery
`under 37 C.F.R. § 42.51(b)(2). Specifically, Patent Owner will be seek documents sufficient to show:
`(i) all benefits identified by Syngenta of using mancozeb in combination with benzovindiflupyr and
`prothioconazole; (ii) Syngenta’s promotion of and bases for promoting combinations of mancozeb as
`claimed in the ’505 patent, including combinations of mancozeb with MitrionTM (benzovindiflupyr +
`prothioconazole); and (ii) Syngenta’s development and promotion of a ready-mix or tank-mix
`combination product containing mancozeb, benzovindiflupyr, and prothioconazole. To the extent
`Petitioner still has not produced the “field guides,” we will also seek these as additional discovery.
`This evidence is directly related to factual assertions advanced by Petitioner with respect to alleged
`obviousness and/or lack of enablement.
`Accordingly, absent agreement by Petitioner to voluntarily produce all these materials by Friday Oct.
`13, please let us know Petitioner’s availability over the next 3-4 business days for a call with the
`Board. We are also available to meet and confer.
`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, October 10, 2023 6:15 PM
`To: Guerra, Kenneth <Kenneth.Guerra@finnegan.com>; Giannelli, Maximilienne
`<Maximilienne.Giannelli@finnegan.com>; Feldstein, Mark <mark.feldstein@finnegan.com>; UPL-
`PGR-FINNEGAN <UPL-PGR-FINNEGAN@finnegan.com>; Gupta, Raj <Raj.Gupta@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: PGR2023-00017
`EXTERNAL Email:
`Hello Ken,
`As we indicated in our correspondence last Friday, we expect to make a production sometime this
`week. However, unless the Board has entered the Modified Protective Order by then, we will not be
`able to produce internal documents until the terms of the protective order are recognized by the
`Board and enforceable.
`Please recall that although we voluntarily offered to provide “field books” on condition of an agreed
`protective order, we also pointed out that Petitioner is not obligated to provide any of the
`information requested. We further advised that if the Patent Owner wanted additional data from
`“field books”, it should have requested such information well before the deposition of Dr. Prates on
`September 20th, and during the initial disclosure period under 37 C.F.R. 42.51.
`Separately, we have learned that “field books” are not in physical form per se, but are rather an
`electronic database including information not relevant to the Prates Declaration. We intend to
`voluntarily provide the underlying data in the tables of the Prates declaration upon entry of the
`modified protective order.
`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: Friday, October 6, 2023 1:08 PM
`To: Herbert, Toni-Junell <therbert@bakerlaw.com>; Giannelli, Maximilienne
`<Maximilienne.Giannelli@finnegan.com>; Feldstein, Mark <mark.feldstein@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>; Rick, Michelle <MRick@bakerlaw.com>
`Subject: RE: PGR2023-00017
`Hi Toni,
`Thank you for your response. Please provide the field books no later than Tuesday, October 10,
`
`

`

`which will be more than two weeks after our request.
`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, October 6, 2023 7:39 AM
`To: Giannelli, Maximilienne <Maximilienne.Giannelli@finnegan.com>; Feldstein, Mark
`<mark.feldstein@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: PGR2023-00017
`EXTERNAL Email:
`Morning Max,
`We will prepare and submit the modified protective order to the Board today. As for the “field
`books,” we expect to make a production sometime next week.
`Kind regards,
`Toni
`From: Giannelli, Maximilienne <Maximilienne.Giannelli@finnegan.com>
`Sent: Thursday, October 5, 2023 9:00 AM
`To: Herbert, Toni-Junell <therbert@bakerlaw.com>; Feldstein, Mark
`<mark.feldstein@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; Guerra, Kenneth
`<Kenneth.Guerra@finnegan.com>; UPL-PGR-FINNEGAN <UPL-PGR-FINNEGAN@finnegan.com>
`Cc: Carson, Charles C. <ccarson@bakerlaw.com>; Bucca, Daniel <dbucca@bakerlaw.com>;
`Klecyngier, David M. <dklecyngier@bakerlaw.com>; Rick, Michelle <MRick@bakerlaw.com>
`Subject: RE: PGR2023-00017
`Hi Toni,
`Please let us know when we can expect to receive the "field books" identified by Dr, Prates at his
`deposition. We can agree to be bound by the terms of the protective order, as agreed by the parties,
`until it is entered by the Board.
`Regards,
`Max
`From: Giannelli, Maximilienne
`Sent: Tuesday, October 3, 2023 3:19 PM
`To: Herbert, Toni-Junell <therbert@bakerlaw.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>; Bucca, Daniel <dbucca@bakerlaw.com>;
`Klecyngier, David M. <dklecyngier@bakerlaw.com>; EXT-Mrick@bakerlaw.com
`
`

`

`<Mrick@bakerlaw.com>
`Subject: RE: PGR2023-00017
`Toni,
`We have one edit to paragraph 8, shown in redline in the attached draft. Please let us know if you
`have any questions.
`Regards,
`Max
`From: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Sent: Monday, October 2, 2023 12:50 PM
`To: Giannelli, Maximilienne <Maximilienne.Giannelli@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>; Bucca, Daniel <dbucca@bakerlaw.com>;
`Klecyngier, David M. <dklecyngier@bakerlaw.com>; EXT-Mrick@bakerlaw.com
`<Mrick@bakerlaw.com>
`Subject: RE: PGR2023-00017
`EXTERNAL Email:
`Hello Max,
`Attached is a draft protective order; the attached draft is a marked up version based
`on the Model protective order. We look forward to your comments.
`Kind regards,
`Toni
`From: Bucca, Daniel <dbucca@bakerlaw.com>
`Sent: Wednesday, September 27, 2023 3:25 PM
`To: Giannelli, Maximilienne <Maximilienne.Giannelli@finnegan.com>; Herbert, Toni-Junell
`<therbert@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>
`Subject: RE: PGR2023-00017
`Dear Max,
`We are responding to your email below.
`We will not be able to produce the “field books” by today. If you wanted the raw data underlying the
`declaration of Dr. Prates you should have requested that information well before Dr. Prates’
`deposition. Further, UPL noticed the deposition of Dr. Brannen to take place tomorrow. Nowhere in
`your email of Monday did you indicate that you wanted the requested information before Dr.
`Brannen’s deposition. Your email merely asked for our availability for a call this week with the Board.
`We expect Dr. Brannen’s deposition to proceed as noticed.
`Best regards,
`Daniel Bucca, Ph.D.
`
`T +1.202.861.1575
`M +1.703.402.9442
`From: Giannelli, Maximilienne <Maximilienne.Giannelli@finnegan.com>
`Sent: Wednesday, September 27, 2023 9:39 AM
`
`

`

`To: Herbert, Toni-Junell <therbert@bakerlaw.com>; Feldstein, Mark
`<mark.feldstein@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>; Rick, Michelle <MRick@bakerlaw.com>
`Subject: RE: PGR2023-00017
`Toni,
`Thank you for your response. Please let us know when you are available today to discuss. There is
`obviously an issue of timing as we need the materials sufficiently in advance of taking the deposition
`of Dr. Brannen, such that it may need to be rescheduled depending on how soon the materials are
`produced and their volume.
`We can discuss further, but in principle UPL can agree to a modification of the PTAB default
`protective order (Consolidated Trial Practice Guide, Appendix B) that excludes UPL employees from
`access to internal Syngenta information.
`Regards,
`Max
`From: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Sent: Wednesday, September 27, 2023 8:22 AM
`To: Giannelli, Maximilienne <Maximilienne.Giannelli@finnegan.com>; Feldstein, Mark
`<mark.feldstein@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: PGR2023-00017
`EXTERNAL Email:
`Hello Max,
`Although Syngenta disagrees that it is obligated to provide the referenced documents under
`37 C.F.R 42.51(b)(1)(iii), Syngenta is willing to provide copies of the “field books.”
`As for:
`1) any report Syngenta submitted to the Brazilian government;
`2) “materials related to the benefits of using mancozeb in combination with benzovindiflupyr
`and prothioconazole”;
`3) “Syngenta’s bases for promoting combinations with mancozeb and the other claimed
`fungicides (including in combination with Mitrion in Brazil)”; and
`4) “information related to Syngenta’s development or promotion of a ready-mix or tank-mix
`combination product containing benzovindiflupyr, prothioconazole, and mancozeb”
`Syngenta does not agree to provide this material.
`Further, any exchange of Syngenta internal documents would require an agreement on a
`protective order that would exclude UPL from reviewing the internal Syngenta information.
`We are available to meet and confer on the above this week and believe such a call would be
`fruitful.
`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: Giannelli, Maximilienne <Maximilienne.Giannelli@finnegan.com>
`Sent: Monday, September 25, 2023 9:03 AM
`To: Herbert, Toni-Junell <therbert@bakerlaw.com>
`Cc: Feldstein, Mark <mark.feldstein@finnegan.com>; Gupta, Raj <Raj.Gupta@finnegan.com>; UPL-
`PGR-FINNEGAN <UPL-PGR-FINNEGAN@finnegan.com>; Klecyngier, David M.
`<dklecyngier@bakerlaw.com>; Bucca, Daniel <dbucca@bakerlaw.com>; Carson, Charles C.
`<ccarson@bakerlaw.com>
`Subject: PGR2023-00017
`
`[External Email: Use caution when clicking on links or opening attachments.]
`
`Hi Toni,
`In view of the testimony of Dr. Caio Prates, we believe Syngenta is obligated to provide the following
`as routine discovery under 37 CFR s. 42.51(b)(1)(iii):
`• The “field books” containing all the data and assessments that Syngenta performed in relation
`to the trials addressed in Dr. Prates declaration;
`• The report that Syngenta submitted to the Brazilian government that is associated with those
`field books and/or trials;
`• Materials related to the benefits of using mancozeb in combination with benzovindiflupyr and
`prothioconazole;
`• Syngenta’s bases for promoting combinations with mancozeb and the other claimed fungicides
`(including in combination with Mitrion in Brazil); and
`• Information related to Syngenta’s development or promotion of a ready-mix or tank-mix
`combination product containing benzovindiflupyr, prothioconazole, and mancozeb.
`These documents would contradict Syngenta’s assertion that the claimed combinations are obvious,
`did not exhibit any unexpected benefits such as synergy, and/or are not enabled. To the extent that
`Syngenta disagrees that it is obligated to provide these documents, please let us know if Syngenta is
`willing to agree to provide them voluntarily under 37 CFR s. 42.51(b)(2).
`If Syngenta is not willing to comply with these specific and narrow requests, please provide your
`availability for a call this week with the Board. We are available to meet and confer if you believe a
`call would be fruitful.
`Regards,
`Max
`Maximilienne Giannelli, Ph.D.
`Intellectual Property Attorney
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, VA 20190-6023
`work: 571.203.2432 | mobile: 202.286.8587 | fax: 202.408.4400 | max.giannelli@finnegan.com |
`
`

`

`www.finnegan.com
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`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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