Trials@uspto.gov
`571-272-7822
`
`
`Paper 40
`Entered: February 11, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLEX LOGIX TECHNOLOGIES, INC.,
`Petitioner,
`v.
`VENKAT KONDA,
`Patent Owner.
`____________
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B21
`____________
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTIONS TO AMEND
`
`
`
`
`
`
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`1 This Preliminary Guidance addresses issues that are common to both cases. The
`parties are not authorized to use this style heading for any subsequent papers.
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`I. INTRODUCTION
`On August 3, 2020, we instituted trial as to claims 1, 15–18, 20–22, 32, and
`
`47 (“the challenged claims”) of U.S. Patent No. 8,269,523 B2 (“the ’523 patent,”
`Ex. 1001) in IPR2020-00260 (“the 260 IPR”), and as to claims 2–7 and 11 of
`the ’523 patent in IPR2020-00261 (“the 261 IPR”). IPR2020-00260, Paper 22
`(“260 Decision”); IPR2020-00261, Paper 22 (“261 Decision”). After institution,
`Patent Owner filed a Motion to Amend in each proceeding. IPR2020-00260,
`Paper 34 (“260 Motion” or “260 Mot.”); IPR2020-00261, Paper 35 (“261 Motion”
`or “261 Mot.”). Should we find in a Final Written Decision that the challenged
`claims are unpatentable, Patent Owner proposes replacing original claims 1–48
`with substitute claims 49–96. 260 Mot. 1–4; 261 Mot. 1–4. Petitioner filed an
`Opposition to the Motion in each proceeding. IPR2020-00260, Paper 37 (“260
`Opposition” or “ 260 Opp.”); IPR2020-00261, Paper 38 (“261 Opposition” or “261
`Opp.”).
`In the Motions, Patent Owner requested that we provide preliminary
`guidance concerning the Motions in accordance with the Board’s pilot program
`concerning motion to amend practice and procedures. 260 Mot. 2; 261 Mot. 2; see
`also Notice Regarding a New Pilot Program Concerning Motion to Amend
`Practice and Procedures in Trial Proceedings under the America Invents Act before
`the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (Mar. 15, 2019) (providing
`a patent owner with the option to receive preliminary guidance from the Board on
`its motion to amend) (“Notice”). We have considered Patent Owner’s Motions and
`Petitioner’s Oppositions.
`In this Preliminary Guidance, we provide information indicating our initial,
`preliminary, non-binding views on whether Patent Owner has shown a reasonable
`likelihood that it has satisfied the statutory and regulatory requirements associated
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`with filing a motion to amend in an inter partes review and whether Petitioner (or
`the record) establishes a reasonable likelihood that the substitute claims are
`unpatentable. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121; Lectrosonics, Inc. v
`Zaxcom, Inc., IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential); see
`also Notice, 84 Fed. Reg. at 9,497 (“The preliminary guidance . . . provides
`preliminary, non-binding guidance from the Board to the parties about the [motion
`to amend].”).
`For purposes of this Preliminary Guidance, we focus on the proposed
`substitute claims, and specifically on the amendments proposed in the Motions.
`See Notice, 84 Fed. Reg. at 9,497. We do not address the patentability of the
`originally challenged claims. Id. Moreover, in formulating our preliminary views
`on the Motions and Oppositions, we have not considered the parties’ other
`substantive papers on the underlying merits of Petitioner’s challenges. We
`emphasize that the views expressed in this Preliminary Guidance are subject to
`change upon consideration of the complete record, including any revision to the
`Motions filed by Patent Owner. Thus, this Preliminary Guidance is not binding on
`the Board when rendering a final written decision. See id. at 9,500.
`II. PRELIMINARY GUIDANCE
`As a threshold matter, we note that although claims 1–7, 11, 15–18, 20–22,
`32, and 47 are the only claims challenged in these proceedings, Patent Owner
`proposes substitute claims 49–96 to replace original claims 1–48. 260 Mot. 1; 261
`Mot. 1. Petitioner contends the Motions are defective because they propose
`substitute claims for unchallenged claims, which is not permitted by 35 U.S.C.
`§ 316(d), and that the Motions should be denied for this reason alone. 260 Opp. 2–
`3 (citing Apple Inc. v. Uniloc 2017 LLC, IPR2018-01092, Paper 25 at 45 (Dec. 13,
`2019)); 261 Opp. 2–3. Section 316(d) states that a patent owner may file one
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`motion to “[c]ancel any challenged claim” or “[f]or each challenged claim,
`propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d) (emphasis
`added). Thus, we consider the Motions only with respect to proposed substitute
`claims 49–55, 59, 63–66, 68–70, 80, and 95, which correspond to challenged
`claims 1–7, 11, 15–18, 20–22, 32, and 47. See Apple, IPR2018-01092, Paper 25 at
`45 (denying the patent owner’s motion to amend with respect to non-challenged
`claims and granting the motion as to the challenged claims).
`A. Statutory and Regulatory Requirements
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record, it appears that Patent Owner has not shown a reasonable
`likelihood that it has satisfied the statutory and regulatory requirements associated
`with filing a motion to amend.
`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute claims?
`(35 U.S.C. § 316(d)(1)(B))
`Yes. As we are only considering proposed substitute claims 49–55, 59,
`63–66, 68–70, 80, and 95, Patent Owner proposes no more than one
`substitute claim for each challenged claim. Thus, Patent Owner proposes
`a reasonable number of substitute claims.
`
`2. Respond to Ground of Unpatentability
`Do the Motions respond to a ground of unpatentability involved in the
`trial? (37 C.F.R. § 42.121(a)(2)(i))
`Yes. In the Decisions, we instituted on the grounds that: original claims
`1–7, 16, 20–22, and 32 were anticipated under 35 U.S.C. § 102 by
`Published PCT Application No. WO 2008/109756 (“the ’756 PCT,”
`Ex. 1009); original claims 15 and 17 were unpatentable under 35 U.S.C.
`§ 103 over the ’756 PCT; and original claims 11, 18, and 47 were
`unpatentable under 35 U.S.C. § 103 over the ’756 PCT and U.S. Patent
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`No. 6,940,308 B2 (“Wong,” Ex. 1008). 260 Decision 6, 29; 261 Decision
`6, 25. As part of the Decisions, we determined that the ’756 PCT qualified
`as prior art because Petitioner had established a reasonable likelihood that
`it would prevail in showing that the challenged claims of the ’523 patent
`are not entitled to the benefit of its priority applications because the “said
`routing network comprising a plurality of stages y, in each said sub-
`integrated circuit block, starting from the lowest stage of 1 to the highest
`stage of y, where y≥1” limitation of claim 1 lacks written description
`support in the priority applications when y=1. 260 Mot. 9–15; 261 Mot.
`9–15.
`In the Motions, Patent Owner contends its “contingent amendment amends
`claim 1 by replacing y≥1 with y>1,” so that “the case y = 1 is deleted.”
`260 Mot. 7; 261 Mot. 7. Patent Owner further contends that, with its
`amendment, the proposed substitute claims are entitled to the benefit of the
`’523 patent’s priority applications, and, as a result, the ’756 PCT is not
`prior art to the ’523 patent. Id. We conclude that Patent Owner’s Motions
`respond to at least one ground of unpatentability.
`
`3. Scope of Amended Claims
`Does the amendment seek to enlarge the scope of the claims? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`No. Proposed substitute independent claim 49 recites “a plurality of stages
`y . . . where y>1,” as compared to “a plurality of stages y . . . where y≥1”
`as recited in original independent claim 1. Thus, proposed substitute claim
`49 is narrower than original claim 1. Proposed substitute claims 50–55,
`59, 63–66, 68–70, 80, and 95 include at least the narrowing limitation of
`proposed substitute claim 49. Petitioner does not argue otherwise. See
`generally 260 Opp.; 261 Opp.
`
`4. New Matter
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii))
`Yes. On this record, and having considered the parties’ contentions, we
`preliminarily find that Patent Owner has not identified sufficient written
`description support for the proposed substitute claims. As such, it does
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`not appear, at this stage, that Patent Owner has satisfied its burden of
`establishing that the amendment does not introduce new matter.
`As correctly identified by Patent Owner, the ’523 patent issued from U.S.
`Application No. 12/601,275 (“the ’275 application,” Ex. 1004, 160–267).
`260 Mot. 9; 261 Mot. 9. As also correctly indicated by Patent Owner, the
`’523 patent is a national stage application of PCT Application No.
`PCT/US08/64605 (“the ’605 PCT application,” Ex. 1007), which in turn
`claims priority to U.S. Provisional Application No. 60/940,394 (“the ’394
`provisional application,” Ex. 1026, 1–47, 52–89). 260 Mot. 9; 261 Mot. 9.
`In its Motions, Patent Owner correctly cites to all three applications, but
`uses a single block citation to each application as support for each
`proposed substitute claim. 260 Mot. 10–16; 261 Mot. 10–16. For
`example, for proposed substitute claim 49, Patent Owner cites the entire
`portion of the ’275 application from page 173, line 23 to page 199, line 19,
`which spans over 25 pages of the ’275 patent application. Id. at 10. Patent
`Owner includes similar block citations to the ’605 PCT application and
`the ’394 provisional application. Id. We agree with Petitioner’s
`contention that such a citation “leaves it to the Board . . . to parse the claim
`and wade through numerous pages of specification for something that
`might be interpreted as support for . . . the claim.” 260 Opp. 1; 261 Opp.
`1; see, e.g., B.E. Tech., L.L.C. v. Google, Inc., No. 2015-1827, 2016 WL
`6803057, at *7 (Fed. Cir. Nov. 17, 2017) (burden of production not met by
`“a string citation to eighteen different pages of the [challenged] patent’s
`original specification, without explaining how those various pages
`supported each of the proposed substitute limitations”).
`We acknowledge that Patent Owner has not yet had the opportunity to
`respond to the contention that Patent Owner has not identified sufficient
`written description support for the proposed substitute claims. Patent
`Owner will have the opportunity to do so in its reply to Petitioner’s
`Opposition (or in a revised motion) in each proceeding. Further, in the
`event of a revised motion, we advise Patent Owner to more clearly explain
`where each limitation of each proposed substitute claim finds support in
`the respective cited portion of the ’275 patent application, the ’605 PCT
`application, and the ’394 provisional application.
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`B. Patentability
`For the reasons discussed below, at this stage of the proceeding, and based
`on the current record,2 it appears that Petitioner (or the record) has shown a
`reasonable likelihood that proposed substitute claims 49–55, 59, 63–66, 68–70, 80,
`and 95 are unpatentable.
`
`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
`
`35 U.S.C. § 112(b) – Indefiniteness
`Yes. On the current record, it appears that Petitioner has established a
`reasonable likelihood that proposed substitute claims 49–55, 59, 63–66,
`68–70, 80, and 95 fail to comply with the definiteness requirement of 35
`U.S.C. § 112(b).
`Proposed substitute claim 49 recites the term “plurality” in several
`contexts:
`• “a plurality of sub-integrated circuit blocks”;
`• “a plurality of inlet links and a plurality of outlet links”;
`• “a plurality of stages y, . . . where y>1”;
`• “a plurality of switches”;
`• “a plurality of forward connecting links”;
`• “a plurality of backward connecting links”;
`• “a plurality [of] straight links in said forward connecting links”;
`• “a plurality [of] cross links in said forward connecting links”;
`• “a plurality of straight links in said backward connecting links”; and
`• “a plurality of cross links in said backward connecting links”.
`260 Mot. at Appx. 3–5; 261 Mot. 3 at Appx. 3–5. We agree with
`Petitioner that the ordinary meaning of “plurality” is two or more. 260
`Opp. 8–9 (citing Ex. 1053, 955; Dayco Prods., Inc. v. Total Containment,
`Inc., 258 F.3d 1317, 1327–28 (Fed. Cir. 2001)); 261 Opp. 8–9. However,
`
`
`2 We express no view on the patentability of original claims 1–7, 11, 15–18, 20–
`22, 32, and 47 in this Preliminary Guidance. Instead, we focus on limitations
`added to those claims in Patent Owner’s Motions to Amend.
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`we also agree with Petitioner that the language of original claim 1 of the
`’523 patent demonstrates an interpretation of “plurality” as allowing for
`only one, as claim 1 recites “a plurality of stages y, . . . where y≥1.” 260
`Opp. 8; 261 Opp. 8. Further, the language of proposed substitute claim 49
`itself (i.e., “a plurality of stages y, . . . where y>1,”) also raises a question
`as to the interpretation of “plurality,” because if “plurality” is interpreted
`at “two or more,” the language “y>1” appears to be superfluous. This
`question is compounded by the usage of the term “plurality” in the other
`contexts identified above.
`Thus, on the current record, it appears that Petitioner would be reasonably
`likely to show that a person of ordinary skill in the art would not have
`been able to ascertain the scope of proposed substitute claim 49 (and
`proposed substitute claims 50–55, 59, 63–66, 68–70, 80, and 95 depending
`from it) with reasonable certainty in light of the usage of the term
`“plurality” within claim 49. See Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898, 901 (2014). In light of this, we do not reach Petitioner’s
`other indefiniteness arguments at this time.
`We acknowledge that Patent Owner has not yet had the opportunity to
`respond to Petitioner’s contention that proposed substitute claims 49–55,
`59, 63–66, 68–70, 80, and 95 are indefinite. Patent Owner will have the
`opportunity to do so in its reply to Petitioner’s Opposition (or in a revised
`motion) in each proceeding.
`35 U.S.C. § 112(a) – Written Description
`No. On the current record, it appears that Petitioner has not established a
`reasonable likelihood that proposed substitute claims 49 (and claims 50–
`55, 59, 63–66, 68–70, 80, and 95 that depend therefrom) fail to comply
`with the written description requirement of 35 U.S.C. § 112(a).
`Petitioner contends the terms “plurality,” “sub-integrated circuit block,”
`“said plurality of outlet links of each said sub-integrated circuit block are
`directly connected to said inlet links of said switches of its corresponding
`lowest stage of 1,” and “each said plurality of sub-integrated circuit blocks
`comprising same number of said stages and said switches in each stage,”
`as recited in proposed substitute claim 49, do not find adequate written
`description support in the specification of the ’523 patent. 260 Opp. 14–
`18; 261 Opp. 14–18. For each of the aforementioned terms, Petitioner
`contends that Patent Owner’s expert testified that a person of ordinary skill
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`in the art would have understood the meaning of each term to be broader
`than what is actually disclosed in the specification of the ’523 patent. Id.
`Thus, as argued by Petitioner, the full scope of proposed substitute claim
`49 does not have adequate written description support. Id.
`Each of the aforementioned terms of proposed substitute claim 49 are also
`recited in original claim 1. See Ex. 1001, 35:22–36:14. Neither party has
`offered an explicit construction of any term of the original claims, nor
`have we provided an explicit construction of any of the original claim
`terms. 260 Decision 9; 261 Decision 9.
`Petitioner’s contentions focus on the testimony of Patent Owner’s expert
`as to the meaning of each term as would have been understood by a person
`of ordinary skill in the art. However, Petitioner’s contentions do not
`appear to specifically address whether the disclosure of the ’523 patent
`supports the interpretation of Patent Owner’s expert as argued by
`Petitioner. Thus, the cited portions of Patent Owner’s expert testimony, by
`themselves, are insufficient to establish that each of the aforementioned
`terms of proposed substitute claim 49 should be construed as broadly as
`Petitioner contends. Because Petitioner has not established that the
`aforementioned terms of proposed substitute claim 49 are to be construed
`as broadly as Petitioner contends, Petitioner has also not established, on
`this record, a reasonable likelihood that proposed substitute claim 49 (and
`claims 50–55, 59, 63–66, 68–70, 80, and 95 that depend therefrom) lacks
`adequate written description support.
`35 U.S.C. § 112(a) – Enablement
`No. On the current record, it appears that Petitioner has not established a
`reasonable likelihood that proposed substitute claims 49–55, 59, 63–66,
`68–70, 80, and 95 fail to comply with the enablement requirement of 35
`U.S.C. § 112(a).
`Petitioner contends that because there is no written description support for
`proposed substitute claim 49, there is no disclosure that would enable a
`skilled artisan “to realize an integrated circuit device having the features
`of” proposed substitute claim 49 “without undue experimentation,” and,
`therefore, proposed substitute claim 49 is also not enabled. 260 Opp. 18–
`19; 261 Opp. 18–19. For the same reasons as to why Petitioner has not
`established a reasonable likelihood that proposed substitute claim 49 lacks
`adequate written description support, Petitioner has also not established,
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`on this record, a reasonable likelihood that proposed substitute claim 49,
`and claims 50–55, 59, 63–66, 68–70, 80, and 95 that depend therefrom, are
`not enabled.
`35 U.S.C. § 102/103 – Anticipation/Obviousness
`Yes. On the current record, it appears that Petitioner has established a
`reasonable likelihood that proposed substitute claims 49–55, 59, 63–66,
`68–70, 80, and 95 are either anticipated under 35 U.S.C. §102 or
`unpatentable under 35 U.S.C. §103 as obvious.
`Petitioner contends proposed substitute claims 49–55, 59, 63–66, 68–70,
`80, and 95 are either anticipated under 35 U.S.C. §102 or unpatentable
`under 35 U.S.C. §103 as obvious based on two sets of unpatentability
`grounds: the set of unpatentability grounds that the Board instituted on in
`the Decision (260 Decision 6, 29; 261 Decision 6, 29); and an alternate set
`of unpatentability grounds. 260 Opp. 19–30; 261 Opp. 19–30. We
`address both sets of unpatentability grounds in turn.
`Instituted Grounds: Anticipation By the ’756 PCT; Obviousness Over the
`’756 PCT; Obviousness Over the ’756 PCT and Wong
`We agree with Petitioner that Patent Owner, at this stage and on this
`record, has not identified sufficient written description support for the
`proposed substitute claims. 260 Opp. 19; 261 Opp. 19. Thus, we also
`agree with Petitioner that, at this stage, the proposed substitute claims are
`not entitled to the priority date of the priority applications of the ’523
`patent, and, as such, the ’756 PCT is prior art with respect to the proposed
`substitute claims. Id. We further agree with Petitioner that the
`modification to claim 1 in proposed substitute claim 49 (“y>1” instead of
`“y≥1”) does not substantially impact Petitioner’s mapping of the ’756 PCT
`and Wong to the original challenged claims, as the ’756 PCT, by way of
`its incorporation of the ’394 provisional application, discloses a network
`with a number of stages (y) equal to five, and thus, discloses “a plurality of
`stages y. . . where y>1,” as recited in substitute claim 49. 260 Opp. 19–20;
`261 Opp. 19–20; see 260 Decision 16, 18; 261 Decision 16, 18. Thus, on
`the current record, it appears that Petitioner has established a reasonable
`likelihood that: proposed substitute claims 49–55, 64, 68–70, and 80 are
`anticipated under 35 U.S.C. § 102 by the ’756 PCT; proposed substitute
`claims 63 and 65 are unpatentable under 35 U.S.C. § 103 over the ’756
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`PCT; and proposed substitute claims 59, 66, and 95 are unpatentable under
`35 U.S.C. § 103 over the ’756 PCT and Wong.
`Alternate Grounds: Anticipation By Wong; Obviousness Over Wong
`Petitioner alternatively contends that proposed substitute claims 49 and
`68–70 are anticipated by Wong, and proposed substitute claims 63–66, 80,
`and 95 would have been obvious in view of Wong. 260 Opp. 20, 28.
`With respect to proposed substitute claims 49 and 68–70, Petitioner lists
`each element of each respective claim along with an explanation as to why
`Wong allegedly teaches each element, with reference to annotated versions
`of Wong’s Figures 13A and 13B, and to various cited portions of Wong.
`Id. at 20–28. With respect to proposed substitute claims 63–66, 80, and
`95, Petitioner lists each element of each respective claim along with an
`explanation as to why each claim would have been obvious in light of the
`disclosure of Wong, and various cited portions of Wong. Id. at 28–30.
`We have reviewed Petitioner’s contentions as well as the supporting
`evidence, and, on the current record, it appears that Petitioner has
`established a reasonable likelihood that proposed substitute claims 49 and
`68–70 are anticipated under 35 U.S.C. § 102 by Wong, and proposed
`substitute claims 63–66, 80, and 95 are unpatentable over 35 U.S.C. § 103
`over Wong.
`We acknowledge that Patent Owner has not yet had the opportunity to
`respond to Petitioner’s contention that proposed substitute claims 49–55,
`59, 63–66, 68–70, 80, and 95 are either anticipated under 35 U.S.C. §102
`or unpatentable under 35 U.S.C. §103 as obvious. Patent Owner will have
`the opportunity to do so in its reply to Petitioner’s Opposition (or in a
`revised motion) in each proceeding.
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`For PETITIONER:
`Naveen Modi
`Joseph Palys
`Paul Anderson
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`paulanderson@paulhastings.com
`arvindjairam@paulhastings.com
`
`For PATENT OWNER:
`
`Venkat Konda
`Venkat@kondatech.com
`
`
`
`
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