From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Trials
`Scott.McKeown@WolfGreenfield.com; Trials
`: Michael Kane; PGR58032-0005PS1; PGR58032-0003PS1; PGR58032-0004PS1; Charles Steenburg; Oona Johnstone; Jean
`Ge
`RE: PGR2024-00019; PGR2024-00020 & PGR2024-00023
`Wednesday, July 24, 2024 2:02:53 PM
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`Counsel,
`
`From the Board –
`
`Petitioner is authorized to file a 10-page reply to Patent Owner’s preliminary response in the PGR2024-
`00019, -00020, and -00023 proceedings addressing the issues outlined in the email dated July 23, 2024. The
`reply is due within 1 week.
`
`Patent Owner is authorized to file a 10-page sur-reply in response due within 1 week of the filing of
`Petitioner’s reply.
`
`A phone call is not deemed necessary.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Scott.McKeown@WolfGreenfield.com <Scott.McKeown@WolfGreenfield.com>
`Sent: Tuesday, July 23, 2024 5:47 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: : Michael Kane <kane@fr.com>; PGR58032-0005PS1 <PGR58032-0005PS1@fr.com>; PGR58032-0003PS1
`<PGR58032-0003PS1@fr.com>; PGR58032-0004PS1 <PGR58032-0004PS1@fr.com>; Charles Steenburg
`<Charles.Steenburg@WolfGreenfield.com>; Oona Johnstone <Oona.Johnstone@WolfGreenfield.com>; Jean
`Ge <Jean.Ge@wolfgreenfield.com>
`Subject: PGR2024-00019; PGR2024-00020 & PGR2024-00023
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding,
`clicking on links, or opening attachments.
`
`Trials,
`Petitioner seeks authorization for a 12-page Reply to the recently filed Patent Owner Preliminary
`Responses (POPR) in the 00019 and 00020 proceedings; and a 10-page Reply in the 00023 proceeding.
`The Replies will address arguments of the POPRs directed to the appropriate standard of obviousness
`for plant utility patent filings, and the novel and unsettled legal questions presented in the PGR2024-
`00019 and -20 petitions. Petitioner believes good cause exists given the unique issues, and issues of
`first impression presented in each of these proceedings, more specifically:
`
`Patent Owner's position that plant utility obviousness should be conflated to novelty, and the
`
`Exhibit 3002
`
`

`

`impact of the recent en banc decision in LKQ Corp. v. GM Global Tech. Operations LLC, (Fed. Cir.
`May 21, 2024) on that position;
`Patent’s Owner’s contention that Petitioner’s obviousness position would render all new
`commercial maize varieties obvious;
`Patent Owner's reliance on the deposits accompanying the ’803, ’020, and ‘545 patents and the
`relationship of those deposits to the scope of the challenged claims. This includes Patent
`Owner’s attempt to distinguish Ex parte C, 27 USPQ2d 1492 (BPAI 1992).
`Patent Owner's argument in PGR2024-00019 and -20 that the “novel or unsettled legal
`question[s]” identified by Petitioner pursuant to section 324(b) are outside the scope of post-
`grant review.
`Patent Owner strongly opposes Petitioner’s request for a Preliminary Reply for lack of good cause. For
`at least PGR2024-00019 and PGR2024-00020, Petitioner’s requests are untimely. The POPRs in these
`cases were filed almost 4 weeks ago, and, if additional briefing is granted, the Board will have fewer
`than 2 months to prepare and issue two Decisions on Institution. And, although the POPR in
`PGR2024-00023 was filed July 17, there was no reason for Petitioner to have filed its petitions in
`PGR2024-00019, -00020, and -00023 in a serial manner (February, March, and April, respectively).
`The challenged patents are not involved in any co-pending litigation. Granting additional briefing
`under these facts encourages road-mapping. In addition, Patent Owner is currently working on
`another POPR, due on August 22, in another petition filed by Petitioner (PGR2024-00025).
`
`Moreover, Petitioner does not attempt to address why any of Patent Owner’s arguments were
`unforeseeable. Petitioner had plenty of space in its Petitions to address (and did address)
`obviousness, each patent’s corresponding seed deposit, Ex parte C, and § 324(b). Indeed, Petitioner’s
`request for an additional 12 (and 10) pages is excessive, especially considering that each Petition is
`already over 84 pages. The Board is capable of evaluating each party’s arguments on the present
`record without an additional 65+ pages of briefing, which adds significant costs to Patent Owner
`without a commensurate value to the Board.
`
`Finally, Petitioner misstates Patent Owner’s reply about obviousness, asserting erroneously that
`“Patent Owner’s position [is] that plant utility obviousness should be conflated to novelty,” to argue
`that LKQ Corp. (a design patent case) is relevant to the Board’s analysis here. It is not. But, in any
`event, the Board is well equipped to evaluate arguments in view of Federal Circuit caselaw. To the
`extent the Board wishes to have additional briefing on this case, however, Patent Owner submits that
`2 pages for each party would be more than sufficient to address that decision.
`Should a teleconference be deemed necessary, the parties are available Thursday, July 25th @9-11AM
`or 3:30-5PM or Friday July 26th 9-11AM.
`Scott McKeown (Mik-Q-En)
`Shareholder
`Scott.McKeown@wolfgreenfield.com
`202.389.6025
`
`
`
`Wolf, Greenfield & Sacks, P.C.
`BOSTON | NEW YORK | WASHINGTON DC
`wolfgreenfield.com
`
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