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Patent Owner

AgroFresh Inc.

Petitioner

UPL Ltd.

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UPL Ltd. v. AgroFresh Inc.

IPR2017-01919 | Patent Trial and Appeal Board

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Filed Aug. 8, 2017

Terminated March 6, 2019

Judges Christopher Crumbley, Julia Heaney, and Michelle Ankenbrand

Case Type Inter Partes Review

Status Final Written Decision

Challenged Patent 14/726,004

Patent No. 9,394,216 assignments

Tech Center 1600

Art Unit 1624

Inventors Nazir Mir

Last Updated: 5 months, 3 weeks ago

Filing Date	#	Filing and Exhibits
Entries matching. Show All.
4/2/2024	04-02-2024-Board	Board Other: other court decision 75: Other: other court decision Board Other: Fed Circuit mandate 76: Other: Fed Circuit mandate
1/7/2022	01-07-2022-Board	Board Order: Other 74: Order Denying Request for Director Review
10/26/2021	10-26-2021-Board	Board Order: Other 73: GENERAL ORDER
10/20/2021	10-20-2021-Board	Board Exhibit 3100: Ex. 3100 Director Review Request
10/18/2021	10-18-2021-Patent_Owner	Patent Owner Other (Not for motions) 72: PATENT OWNER'S REQUEST FOR DIRECTOR REVIEW
4/2/2021	04-02-2021-Patent_Owner	Patent Owner Motion 70: JOINT MOTION TO TERMINATE INTER PARTES REVIEW PROCEEDINGS PURSUANT TO 35 U.S.C. �� 317(a) Patent Owner Motion 71: JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. 317(b) Patent Owner Exhibit 2054: Settlement Agreement
5/1/2020	05-01-2020-Board	Board Order 69: GENERAL ORDER
8/8/2019	08-08-2019-Patent_Owner	Event: Notice of Appeal Patent Owner Notice of Appeal 68: Patent Owner's Notice of Appeal
6/6/2019	06-06-2019-Board	Board Order 67: DECISION Patent Owner’s Request for Rehearing 37 C.F.R. §§ 42.71
4/5/2019	04-05-2019-Patent_Owner	Patent Owner Rehearing Request - in re Final Written Decision 66: Patent Owner's Request for Rehearing of Final Written Decision
3/6/2019	03-06-2019-Board	Event: Final Written Decision (All Claims Cancelled) Board Termination Decision Document 64: Final Written Decision Board Order 65: Entry of Default Protective Order and Sealing of Filed Documents
1/15/2019	01-15-2019-Board	Board Hearing Transcript 63: Hearing Transcript
1/4/2019	01-04-2019-Petitioner	Petitioner Exhibit List 62: Petitioner's Updated Exhibit List Petitioner Exhibit 1060: Claim Construction Memorandum Opinion Petitioner Exhibit 1061: Claim Construction Order
11/28/2018	11-28-2018-Petitioner	Petitioner Objection 60: Petitioner's Objections to Patent Owner's Demonstratives
11/28/2018	11-28-2018-Patent_Owner	Patent Owner Objection 61: Patent Owner's Objections to Petitioner¿¿¿s Demonstrative Exhibits
11/21/2018	11-21-2018-Board	Board Order 59: Trial Hearing 37 C.F.R. sec. 42.70
11/19/2018	11-19-2018-Patent_Owner	Patent Owner Reply 58: Patent Owner's Reply in Support of Motion to Exclude Evidence
11/13/2018	11-13-2018-Petitioner	Petitioner Opposition 57: Petitioner's Opposition to Patent Owner's Motion to Exclude
11/9/2018	11-09-2018-Petitioner	Petitioner Exhibit List 56: Petitioner's Updated Exhibit List Petitioner Exhibit 1059: Exhibit 1059
10/29/2018	10-29-2018-Patent_Owner	Patent Owner Motion 52: Patent Owner's Motion to Exclude Evidence Patent Owner Oral Hearing Request 53: Patent Owner's Request for Oral Argument
10/29/2018	10-29-2018-Petitioner	Petitioner Oral Hearing Request 54: Petitioner's Request for Oral Argument Petitioner Exhibit List 55: Petitioner's Updated Exhibit List Petitioner Exhibit 1058: Exhibit 1058
10/16/2018	10-16-2018-Petitioner	Petitioner Objection 51: Petitioner's Objections to Patent Owner's Exhibits
10/9/2018	10-09-2018-Patent_Owner	Patent Owner Reply 47: Patent Owner Sur-Reply (public) Patent Owner Reply 48: Patent Owner Sur-Reply (confidential) Patent Owner Exhibit List 49: Patent Owner's Current Exhibit List Patent Owner Motion 50: Patent Owner's Motion to Seal Patent Owner Exhibit 2052: Decco/UPL Defendants' Opening Claim Construction Brief in AgroFresh Inc. v. Mirtech, Inc., Nazir Mir, Essentiv LLC, Decco U.S. Postharvers, Inc. and Cerexagri d/b/a Decco Post-Harvest, No. 16-662-JFB-FRF (July 25, 2018) Patent Owner Exhibit 2053: Decco/UPL Defendants' Responsive Claim Construction Brief in AgroFresh Inc. v. Mirtech, Inc., Nazir Mir, Essentiv LLC, Decco U.S. Postharvers, Inc. and Cerexagri d/b/a Decco Post-Harvest, No. 16-662-JFB-FRF (August 22, 2018)
9/17/2018	09-17-2018-Patent_Owner	Patent Owner Other (Not for motions) 45: Patent Owner's Revised Mandatory Notices Patent Owner Objection 46: Patent Owner's Objections to Petitioner's Evidence
9/10/2018	09-10-2018-Petitioner	Petitioner Motion 41: Petitioner's Motion to Seal Petitioner Reply 42: Petitioner's Reply to Patent Owner's Response to Petition (Confidential Version) Petitioner Reply 43: Petitioner's Reply to Patent Owner's Response to Petition (Public Version) Petitioner Exhibit List 44: Petitioner's Updated Exhibit List Petitioner Exhibit 1038: Exhibit 1038 Petitioner Exhibit 1047: Exhibit 1047 Petitioner Exhibit 1048: Exhibit 1048 (CONFIDENTIAL) Petitioner Exhibit 1049: Exhibit 1049 (CONFIDENTIAL) Petitioner Exhibit 1050: Exhibit 1050 Petitioner Exhibit 1052: Exhibit 1052 (CONFIDENTIAL) Petitioner Exhibit 1053: Exhibit 1053 (CONFIDENTIAL) Petitioner Exhibit 1054: Exhibit 1054 Petitioner Exhibit 1055: Exhibit 1055 (CONFIDENTIAL) Petitioner Exhibit 1056: Exhibit 1056 (CONFIDENTIAL)
8/27/2018	08-27-2018-Board	Board Order Conduct of Proceeding 40: Conduct of the Proceeding/ Amendment of Scheduling Order
8/10/2018	08-10-2018-Petitioner	Petitioner Notice of Deposition 39: Notice of Deposition of Ann Beaulieu
7/25/2018	07-25-2018-Petitioner	Petitioner Notice of Deposition 38: Notice of Deposition of Krista S. Walton
6/29/2018	06-29-2018-Patent_Owner	Patent Owner Exhibit List 37: Patent Owner's Current Exhibit List
6/15/2018	06-15-2018-Petitioner	Petitioner Objection 36: Petitioner's Objections to Patent Owner's New Exhibits
6/13/2018	06-13-2018-Board	Board Order 35: Order - Denying Patent Owner's Motion to Disqualify Petitioner's Counsel - 37 CFR 42.10
6/8/2018	06-08-2018-Patent_Owner	Patent Owner Response 31: Patent Owner Response (Non-Confidential Version) Patent Owner Response 32: Patent Owner Response (Confidential Version) Patent Owner Exhibit List 33: Patent Owner's Current Exhibit List Patent Owner Motion 34: Patent Owner's Motion to Seal Patent Owner Exhibit 2024: Email of January 29, 2015 from Robert Lynn Oakes to Nazir Mir, with attachment (DECCO-00064551 to DECCO-00064553) Patent Owner Exhibit 2025: License Agreement of June 30, 2016, between MirTech, Inc., and Essentiv LLC (DECCO-00072482 to DECCO-00072495) Patent Owner Exhibit 2026: Email of July 28, 2016, from Robert Lynn Oakes to James Sargent, Timothy Mowry, Chad Christopherson, Shawn Kennedy, Sohail Akhter, Francois Girin, and Nazir Mir with 37-page native attachment (DECCO-00014523) Patent Owner Exhibit 2027: Email Chain of July 7-11, 2016, including Robert Lynn Oakes, James Sargent, and Francois Girin (DECCO-00048149 to DECCO-00048155) Patent Owner Exhibit 2028: Email of January 31, 2015 from Xi Chen to Nazir Mir with attachments (MIR_0048521 to MIR_0048546) Patent Owner Exhibit 2029: Email Chain of January 30, 2015, between Robert Lynn Oakes and Nazir Mir (MIR_0048463 to MIR_0048464) Patent Owner Exhibit 2030: Email Chain of July 8, 2015, including Robert Lynn Oakes and Nazir Mir (MIR_0059945 to MIR_005946) Patent Owner Exhibit 2031: Email of April 15, 2016, from Francois Girin to Shyam Kamdar with attachments (DECCO-00021097 to DECCO-00021105) Patent Owner Exhibit 2033: Email Chain of November 14-15, 2014, including Francois Girin, Nazir Mir, Robert Lynn Oakes, and Sohail Akhter (DECCO-00047310 to DECCO-00047311) Patent Owner Exhibit 2034: Email of January 19, 2015, from Robert Lynn Oakes to Nazir Mir with attachments (MIR_0138032 to MIR_0138063) Patent Owner Exhibit 2036: ¿¿¿Robert Lynn Oakes \| LinkedIn¿¿¿ (May 16, 2018) Patent Owner Exhibit 2037: Candidate Resume: Robert Oakes (DECCO-00072111 to DECCO-00072113) Patent Owner Exhibit 2038: Structures of 1-MCP, Isobutene, 1-butene, and Ethylene Patent Owner Exhibit 2042: S. Chopra et al., ¿¿¿Metal-Organic Frameworks Have Utility in Adsorption and Release of Ethylene and 1-Methylcyclopropene in Fresh Produce Packaging,¿¿¿ Postharvest Biology and Technology 130 (2017) 48-55 (¿¿¿BASF article¿¿¿) Patent Owner Exhibit 2043: U.S. Patent No. 8,802,140 Patent Owner Exhibit 2044: U.S. Patent No. 8,822,382 Patent Owner Exhibit 2045: Declaration of Dr. Ann Beaulieu Patent Owner Exhibit 2046: Transcript of Deposition of Robert Lynn Oakes Patent Owner Exhibit 2047: Transcript of Deposition of Mircea Dinca Patent Owner Exhibit 2048: Decco/UPL Defendants¿¿¿ Initial Invalidity Contentions in AgroFresh Inc. v. Mirtech, Inc., Nazir Mir, Essentiv LLC, Decco U.S. Postharvers, Inc. and Cerexagri d/b/a Decco Post-Harvest, No. 16-662-JFB-FRF (March 21, 2017) Patent Owner Exhibit 2049: Supplemental Declaration of Dr. Krista S. Walton
5/17/2018	05-17-2018-Patent_Owner	Patent Owner Exhibit List 29: Patent Owner's Current Exhibit List Patent Owner Notice of Deposition 30: Notice of Deposition of Robert Lynn Oakes Patent Owner Exhibit 2022: Transcript of Telephonic Hearing Conducted April 25, 2018
5/1/2018	05-01-2018-Board	Board Order Conduct of Proceeding 28: ORDER Conduct of the Proceeding 37 C.F.R. sec 42.5
4/30/2018	04-30-2018-Patent_Owner	Patent Owner Reply 26: Patent Owner's Reply in Support of Its Motion to Disqualify Counsel Patent Owner Exhibit List 27: Patent Owner's Current Exhibit List Patent Owner Exhibit 2021: Email Chain of April 12-16, 2018, including Anand Sharma and Daniel Roland (counsel for Petitioner), Robert MacGill (counsel for Patent Owner), and Glenn Brown (counsel for Mir and MirTech)
4/23/2018	04-23-2018-Patent_Owner	Patent Owner Objection 24: Patent Owner's Objections to Petitioner's Evidence Patent Owner Notice of Deposition 25: Notice of Deposition of Mircea Dinc¿¿ Patent Owner Exhibit 2020: Transcript of Telephonic Hearing Conducted April 16, 2018
4/18/2018	04-18-2018-Board	Board Order Conduct of Proceeding 23: Conduct of the Proceeding 37 C.F.R. sec 42.5
4/16/2018	04-16-2018-Petitioner	Petitioner Motion 19: Petitioner's Motion to Seal Petitioner Opposition 20: Petitioner's Opposition to Patent Owner's Motion to Disqualify Counsel for Petitioner (CONFIDENTIAL VERSION) Petitioner Opposition 21: Petitioner's Opposition to Patent Owner's Motion to Disqualify Counsel for Petitioner (PUBLIC VERSION) Petitioner Notice 22: Petitioner's Updated Exhibit List Petitioner Exhibit 1040: Exhibit 1040 (CONFIDENTIAL) Petitioner Exhibit 1041: Exhibit 1041 (CONFIDENTIAL) Petitioner Exhibit 1042: Exhibit 1042 Petitioner Exhibit 1043: Exhibit 1043 Petitioner Exhibit 1044: Exhibit 1044 (CONFIDENTIAL) Petitioner Exhibit 1045: Exhibit 1045 (CONFIDENTIAL) Petitioner Exhibit 1046: Exhibit 1046
4/12/2018	04-12-2018-Patent_Owner	Patent Owner Other (Not for motions) 18: Patent Owner's Motion List
4/10/2018	04-10-2018-Patent_Owner	Patent Owner Objection 17: Patent Owner's Objections to Petitioner's Evidence
4/2/2018	04-02-2018-Patent_Owner	Patent Owner Motion 15: Patent Owner's Motion to Disqualify Counsel for Petitioner Patent Owner Motion 16: Patent Owner's Motion to Seal Exhibits 2010, 2012-2017 Patent Owner Exhibit 2009: MirTech Defendants¿¿¿ Privilege Log from C.A. No. 16-662-JFB-FRF (D. Del.), March 21, 2018 Patent Owner Exhibit 2010: Decco Defendants¿¿¿ Privilege Log from C.A. No. 16-662-JFB-FRF (D. Del.), March 26, 2018 Patent Owner Exhibit 2011: Email Chain including Email of February 26, 2018 from Eric Fues to the Board and Joshua Larsen Patent Owner Exhibit 2012: Email of March 5, 2018, from Eric Fues to Lynn Tyler; Email of March 1, 2018, from Lynn Tyler to Eric Fues Patent Owner Exhibit 2013: Letter of February 23, 2018, from Frederick Cottrell to Magistrate Judge Sherry R. Fallon Patent Owner Exhibit 2014: Email Chain December 9, 2014, to January 8, 2015, including Robert Lynn Oakes and Francois Girin (DECCO-00024057 to DECCO-00024063) Patent Owner Exhibit 2015: Email Chain January 8-9, 2015, including Robert Lynn Oakes and Nazir Mir (DECCO-00046958 to DECCO-00046959) Patent Owner Exhibit 2016: 2016 Email Chain January 8-9, 2015, including Robert Lynn Oakes and Nazir Mir (DECCO-00046960 to DECCO-00046961) Patent Owner Exhibit 2017: Email of May 12, 2015 from Robert Lynn Oakes to Shyam Kamdar (DECCO-00062157) Patent Owner Exhibit 2018: ABA Comm. on Ethics and Professional Responsibility, Formal Op. 95-395 (July 24, 1995) Patent Owner Exhibit 2019: Default Protective Order
3/23/2018	03-23-2018-Board	Board Order Conduct of Proceeding 13: EXPUNGED Board Order Conduct of Proceeding 14: Conduct of the Proceeding Denying Authorization to File a Motion for Additional Discovery 37 C.F.R. sec(s) 42.5, 42.52(a)
3/21/2018	03-21-2018-Petitioner	Petitioner Objection 11: Petitioner's Objections to Patent Owner's Evidence
3/21/2018	03-21-2018-Patent_Owner	Patent Owner Objection 12: Patent Owner's Objections to Petitioner's Evidence
3/16/2018	03-16-2018-Patent_Owner	Patent Owner Mandatory Notice 10: Patent Owner AgroFresh Inc.'s Revised Mandatory Notices Patent Owner Exhibit 2008: Transcript of Telephonic Hearing Conducted March 15, 2018
3/7/2018	03-07-2018-Board	Event: Petition Institution (Granted) Board Institution Decision 8: Trial Instituted Document Board Order 9: Scheduling Order
2/27/2018	02-27-2018-Board	Board Order 7: ORDER Conduct of the Proceeding
2/20/2018	02-20-2018-Patent_Owner	Patent Owner Exhibit 2007: Transcript of Telephonic Hearing Conducted February 15, 2018
12/13/2017	12-13-2017-Patent_Owner	Event: Preliminary Response Patent Owner Preliminary Response 6: Patent Owner Preliminary Response Patent Owner Exhibit 2003: Oakes Email (PTX-324, No. 16-662-SLR) Patent Owner Exhibit 2004: Press Release (PTX-073, No. 16-662-SLR) Patent Owner Exhibit 2005: Declaration of Dr. Krista S. Walton Patent Owner Exhibit 2006: Declaration of Joshua P. Larsen
10/16/2017	10-16-2017-Patent_Owner	Patent Owner Power of Attorney 4: Power of Attorney from Patent Owner AgroFresh Inc. Patent Owner Mandatory Notice 5: Patent Owner AgroFresh Inc.'s Mandatory Notices Patent Owner Exhibit 2001: Final Consent Judgment Patent Owner Exhibit 2002: Court Opinion
9/13/2017	09-13-2017-Board	Board Notice of Filing Date Accorded to Petition 3: Notice of Accord Filing Date
8/8/2017	08-08-2017-Petitioner	Event: Petition Petitioner Petition 1: Petition for Inter Partes Review Petitioner Power of Attorney 2: Petitioner's Power of Attorney Petitioner Exhibit 1001: Exhibit 1001 Petitioner Exhibit 1002: Exhibit 1002 Petitioner Exhibit 1003: Exhibit 1003 Petitioner Exhibit 1004: Exhibit 1004 Petitioner Exhibit 1005: Exhibit 1005 Petitioner Exhibit 1006: Exhibit 1006 Petitioner Exhibit 1007: Exhibit 1007 Petitioner Exhibit 1008: Exhibit 1008 Petitioner Exhibit 1009: Exhibit 1009 Petitioner Exhibit 1010: Exhibit 1010 Petitioner Exhibit 1011: Exhibit 1011 Petitioner Exhibit 1012: Exhibit 1012 Petitioner Exhibit 1013: Exhibit 1013 Petitioner Exhibit 1014: Exhibit 1014 Petitioner Exhibit 1015: Exhibit 1015 Petitioner Exhibit 1016: Exhibit 1016 Petitioner Exhibit 1018: Exhibit 1018 Petitioner Exhibit 1019: Exhibit 1019 Petitioner Exhibit 1020: Exhibit 1020 Petitioner Exhibit 1021: Exhibit 1021 Petitioner Exhibit 1022: Exhibit 1022 Petitioner Exhibit 1023: Exhibit 1023 Petitioner Exhibit 1024: Exhibit 1024 Petitioner Exhibit 1025: Exhibit 1025

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UPL Ltd. v. AgroFresh Inc.

IPR2017-01919 | Patent Trial and Appeal Board

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