`Paper No. ____
`Filed: March 5, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FLEX LOGIX TECHNOLOGIES, INC.
`Petitioner
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`v.
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`VENKAT KONDA
`Patent Owner
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`Case: IPR2020-00260
`U.S. Patent No. 8,269,523
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO WITHDRAW MOTION TO AMEND
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`II. BACKGROUND ............................................................................................ 1
`III. PO’S MOTION SHOULD BE DENIED ....................................................... 3
`IV. CONCLUSION ............................................................................................... 5
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`ii
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`INTRODUCTION
`Flex Logix Technologies, Inc. (“Petitioner”) submits this opposition to Patent
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`I.
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`Owner’s (“PO’s”) Motion to Withdraw his Motion to Amend (“MTA”). PO should
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`not be allowed to escape an adverse ruling on his MTA and resulting estoppel. PO’s
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`Motion to Withdraw is yet another example of PO’s abuse of process and improper
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`use of judicial resources that has resulted in undue prejudice and unnecessary costs
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`to Petitioner. Ruling on PO’s MTA will ensure efficient use of judicial and
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`Petitioner’s resources, both with respect to PO’s reissue application for U.S. Patent
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`No. 8,269,523 (“the ’523 patent”) as well as other related applications and patents.
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`II. BACKGROUND
`The ’523 patent issued on September 18, 2012. (See Ex. 1001 at 1.) On
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`November 27, 2018, after PO became aware that he had failed to timely pay a fee
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`that led to the ’523 patent, PO filed a reissue application declaring that the ’523
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`patent is “wholly or partially inoperative or invalid” because of his late payment.
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`(Ex. 2005 at 586, 589-590.) Despite knowing the patent was defective, on December
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`17, 2018, PO sued Petitioner alleging infringement of the ’523 patent and four other
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`patents (“the Asserted Patents”). (Ex. 1050 at 1-2, 7-26.) The complaint represented
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`that “[t]he ’523 patent is valid and enforceable” (id. at 8) and “was duly and lawfully
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`issued” (id. at 7). PO did not inform the district court or Petitioner of the reissue
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`application and his representation to the PTO that the ’523 patent was defective.
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`1
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`What’s more, while PO was seeking to amend the claims of the ’523 patent in
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`the reissue application in response to issues raised in litigation and co-pending PGRs
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`involving U.S. Patent 10,003,553 (“the ’553 patent”), as of the May 22, 2020,
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`teleconference with the Board, PO had not informed the reissue examiner of the ’523
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`IPR and ’553 PGRs or the litigation. See PGR2019-00037, -00042 (“the ’553
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`PGRs”); Ex. 1050; Ex. 2005. The Board recognized as much in its May 28, 2020,
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`order, noted that it would notify the examiner of this proceeding (see Paper 11 at 31),
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`and subsequently, sua sponte, stayed the reissue application (see Paper 24).
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`Similar to PO’s conduct above and as far as Petitioner can tell, PO has not
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`informed the examiners of applications related to the ’523 patent, including
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`continuations of the Asserted Patents, of this IPR or the ’553 PGRs even though
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`those applications include similar claim language and are likely to be impacted by
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`determinations in this IPR and the ’553 PGRs. (See, e.g., U.S. Patent Application
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`Nos. 15/859,726, 15/884,911, 15/984,408, 16/029,645, 16/562,450, 16/671,177,
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`16/671,191, 16/671,193, and 17/167,093.) Some of these applications have issued,
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`while others are not accessible to the public or Petitioner.
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`1 The Board also noted PO’s other improper behavior (see Paper 11 at 6-7), which
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`has continued. (See Ex. 1057 (email correspondence) (highlighting added).)
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`2
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`III. PO’s Motion to Withdraw Should Be Denied
`PO’s Motion to Withdraw does not provide any meaningful reason for
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`withdrawal and instead argues the merits of the MTA.2 PO’s argument regarding
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`the MTA being “contingent” such that PO is free to withdraw it at any time is wrong,
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`as “contingent” relates to patentability of the as-issued claims. Even if PO can
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`withdraw his MTA, he should not be allowed to do so for at least three reasons.
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`First, a decision on the MTA, including resolution as to issues raised by the
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`MTA (e.g., whether the prior art discloses certain claim features), ensures that those
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`issues will not have to be revisited during prosecution of the reissue or in any
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`subsequent proceedings involving any resulting patent. The Board and Petitioner
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`have already invested significant resources in addressing the issues raised by the
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`MTA, and resolving those issues here would be more efficient.
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`Second, a decision on the MTA conserves judicial resources with respect to
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`the related patents and pending applications. There is a great deal of overlap between
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`the ’523 patent claim language and that used in PO’s other patents and applications,
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`and therefore determinations made here are likely to have ramifications with respect
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`2 PO’s Motion fails to mention adverse facts, including that the reissue examiner
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`rejected amended claims in the reissue based on Wong. (Ex. 1058, 20-31.)
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`3
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`to those patents and applications. Indeed, PO continues to prosecute such related
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`applications without notifying the examiners of this IPR or the ’553 PGRs. PO’s
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`actions in soon-to-issue application 16/562,450 are representative of PO’s conduct.
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`PO has repeatedly amended the ’450 application without notifying the Examiner of
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`the IPR or ’553 PGRs or any relevant decisions from them. (See, e.g., highlighted
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`portions in Ex. 1055, 511, 517 (“y≥1” stages changed to “y≥2”); id., 529, 533, 536
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`(modifying the specification and drawings in an attempt to include a same-stage
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`cross link feature the Board indicated was not disclosed in the ’553 PGRs).) Indeed,
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`PO has submitted three amendments after allowance in the ’450 application in the
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`last three months (id., 12, 37, 255), including a February 3, 2021 amendment
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`clearly inspired by Petitioner’s filings in this proceeding as it changes “plurality” in
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`the claims to “one or more” (id., 15, 25). What’s more, PO inaccurately stated that
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`the amendments “do not change the scope of the previously allowed claims” (id., 13,
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`30) and paid the issue fee on February 14, 2001 (id., 2-5).
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`Third, letting PO withdraw the MTA will only encourage PO’s conduct,
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`which constitutes an abuse of process and is extremely prejudicial to Petitioner.
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`Indeed, this is not the first time PO has filed a paper and withdrawn it. In the
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`litigation, Petitioner filed a motion to dismiss on the basis that some of the Asserted
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`Patents were necessarily invalid. (Ex. 1056, 11:16-12:5, 13:9-18:9, 21:25-23:24.)
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`In response, PO dismissed the lawsuit without prejudice, presumably to avoid an
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`4
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`adverse ruling on invalidity. PO’s Motion to Withdraw, like its dismissal of the
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`lawsuit, is aimed at avoiding an adverse ruling and resulting estoppel.
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`Given PO’s conduct and as was done by the Board in another IPR (see Paper
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`39, IPR2019-01490), Petitioner requests that the Board order PO to provide a list of
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`any recently-issued patents and pending applications before the Office relating to
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`the ’523 patent and that have claim language similar to what is at issue here. Once
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`PO does so, the Board should consider notifying the examiners in the identified
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`pending applications of this IPR and the ’553 PGRs, the relevant decisions from
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`them, and PO’s conduct (or require that PO to do as much) so that the Office can
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`take appropriate action, including suspension of prosecution of these pending
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`applications until the termination or completion of this IPR and the ’553 PGRs.
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`Finally, contrary to PO’s assertion that there is no basis for fees here,
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`Petitioner requests that the Board consider awarding fees or any other sanctions it
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`deems appropriate given PO’s tactics and abuse of process. See 37 C.F.R. § 42.12
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`(stating that “[t]he Board may impose a sanction against a party for misconduct,
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`including . . . [e]ngaging in dilatory tactics [and] [a]ny other improper use of the
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`proceeding, including actions that harass or cause unnecessary delay or an
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`unnecessary increase in the cost of the proceeding”).
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`IV. CONCLUSION
`For the foregoing reasons, PO’s Motion to Withdraw should be denied.
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`5
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`Dated: March 5, 2021
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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`6
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`Case IPR2020-00260
`Petitioner’s Opposition to Motion to Withdraw
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I caused a true and correct copy of the
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`foregoing Petitioner’s Opposition to Patent Owner’s Motion to Withdraw Motion to
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`Amend and supporting exhibits to be sent by electronic means on March 5, 2021 to
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`the following address of record:
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`<venkat@kondatech.com>
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`Dated: March 5, 2021
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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