From:
`To:
`Cc:
`Subject:
`
`Date:
`Attachments:
`
`Suh, Howard S.
`Trials
`Ferri, Lisa M.; Bonner, Amanda Streff; Norton, Gerard P.; Miller, Ryan N.
`RiceTec, Inc. v. BASF SE, PGR2021-00113, PGR2021-00114: Request for authorization to reply to Patent Owner"s
`Preliminary Response
`Wednesday, December 29, 2021 4:45:20 PM
`RE EXT RiceTec Inc. v. BASF SE PGR2021-00113 PGR2021-00114.msg
`EXT RE RiceTec v. BASF Cases PGR2021-00113 PGR2021-00114.msg
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors:
`
`Petitioner RiceTec, Inc. requests authorization to file a reply to Patent Owner’s Preliminary Response
`in the above captioned matters.
`
`The issues upon which Petitioner seeks reply are as follows:
`
`Patent Owner’s statements regarding the relevance of the prosecution history of Petitioner’s
`patent applications while maintaining that the prosecution of BASF applications and patents
`within the same family are irrelevant. See e.g. POPR, PGR2021-00113 at 12-18, n. 5.
`Patent Owner’s statements that possession of the inventions is shown because a POSITA
`reviewing the Mankin PCT and Neuteboom would have a “reasonable expectation of success”
`of arriving at the claimed inventions. See e.g. POPR, PGR2021-00113 at 67, Burgos Decl. at ¶
`40-42, 73-78.
`Patent Owner’s statements that the claimed effective amount ranges of the FOPs herbicides
`are “unimportant” for purposes of practicing the invention and that “no prior art was
`distinguished from and no rejection was overcome on the basis of the claimed effective
`amount ranges of herbicides.” See e.g. POPR, PGR2021-00113 at 74.
`Patent Owner’s statements that RiceTec does not dispute that most of the limitations of the
`challenged claims have written description and enablement support in the priority documents
`and that RiceTec only challenges a “few limitations” identified by Patent Owner in a
`subsequent section of the response. See e.g. POPR, PGR2021-00113 at 24-25, Section VIII.B.
`
`Counsel for Petitioner and counsel for Patent Owner, who are also copied on this email, met and
`conferred on December 29, 2021 and Patent Owner opposes Petitioner’s request for leave to file the
`reply papers.
`
`A copy of the Petitioner’s email to Patent Owner requesting the meet and confer and Patent
`Owner’s response formally opposing Petitioner’s request are attached here.
`
`Petitioner requests a conference call with the Board to seek authorization to file a reply at the
`Board’s convenience. Petitioner and Patent Owner are available for such a call on January 4th or 5th
`PGR2021-00113, -00114
`Ex. 3001
`
`

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`from 2:00 – 5:00 p.m. of next week or at another time more convenient to the Board as it sees fit.
`
`Very best regards,
`
`
`Howard Suh / Counsel for Petitioner (pro hac vice)
`Partner
`Fox Rothschild LLP
`101 Park Ave.
`17th Floor
`New York, NY 10178
`(212) 878-7914 - direct
`(212) 692-0940 - fax
`HSuh@foxrothschild.com
`www.foxrothschild.com
`
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