From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Trials
`Modi, Naveen; Venkat Konda; Anderson, Paul M.; FlexLogix-Konda-IPR
`Trials
`RE: Requesting Board"s authorization to withdraw Patent Owner’s Contingent Motion to Amend in IPR2020-
`00260 & -00261
`Friday, February 19, 2021 3:56:44 PM
`
`Counsel,
`
`Patent Owner is authorized to file, in each proceeding, a motion to withdraw the motion to amend. The
`motions are due no later than February 26, 2021, and must not exceed 5 pages. Petitioner is authorized to
`file an opposition to each motion. The oppositions are due one week after Patent Owner’s motions are
`filed, and must not exceed five pages.
`
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Modi, Naveen <naveenmodi@paulhastings.com>
`Sent: Friday, February 19, 2021 11:14 AM
`To: Trials <Trials@USPTO.GOV>; Venkat Konda <venkat@kondatech.com>; Anderson, Paul M.
`<paulanderson@paulhastings.com>; FlexLogix-Konda-IPR <PH-FlexLogix-Konda-
`IPR@paulhastings.com>
`Subject: RE: Requesting Board's authorization to withdraw Patent Owner’s Contingent Motion to
`Amend in IPR2020-00260 & -00261
`
`Petitioner opposes Patent Owner’s request to withdraw the Motions to Amend as such withdrawal
`would lead to an inefficient use of Petitioner’s and the PTO’s resources. As the Board is aware,
`Patent Owner has already filed a reissue application with respect to the ’523 patent, and given the
`stage of the present IPR proceedings and the record established thus far, it would be more efficient
`for the Board to resolve the issues in these proceedings. As is evident, Patent Owner does not like
`the preliminary guidance provided by the Board in response to his Motions to Amend and is
`attempting to avoid an adverse ruling on his Motions.
`
`If the Board decides to allow the withdrawal of the Motions to Amend, Petitioner requests leave to
`file a motion for fees or any other relief that the Board deems appropriate. See 37 C.F.R. § 42.12
`(stating that “The Board may impose a sanction against a party for misconduct, including . . .
`[e]ngaging in dilatory tactics [and] [a]ny other improper use of the proceeding, including actions that
`harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding”).
`
`Respectfully,
`Naveen Modi
`
`

`

`Counsel for Petitioner Flex Logix
`
`Naveen Modi
`Partner & Global Vice Chair of IP
`Paul Hastings LLP
`(202) 551-1990
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, February 18, 2021 3:39 PM
`To: Venkat Konda <venkat@kondatech.com>; Modi, Naveen <naveenmodi@paulhastings.com>;
`Anderson, Paul M. <paulanderson@paulhastings.com>; FlexLogix-Konda-IPR <PH-FlexLogix-Konda-
`IPR@paulhastings.com>
`Cc: Trials <Trials@USPTO.GOV>
`Subject: [EXT] RE: Requesting Board's authorization to withdraw Patent Owner’s Contingent Motion
`to Amend in IPR2020-00260 & -00261
`
`Counsel,
`
`
`The Board requests that Petitioner advise as to whether it opposes Patent Owner’s request to withdraw
`the motions to amend.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Venkat Konda <venkat@kondatech.com>
`Sent: Thursday, February 18, 2021 3:26 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Venkat Konda <venkat@kondatech.com>
`Subject: Re: Requesting Board's authorization to withdraw Patent Owner’s Contingent Motion to
`Amend in IPR2020-00260 & -00261
`
`
`
`On Mon, Feb 15, 2021 at 11:52 PM Venkat Konda <venkat@kondatech.com> wrote:
`
`As the Board is aware, Patent Owner filed Patent Owner's contingent Motion to
`Amend under 37 C.F.R. § 42.121 on October 26, 2020. Petitioner submitted its
`Opposition to PO's contingent Motion to Amend on January 19, 2021. Patent
`Owner appreciates the Preliminary Guidance provided by the Board regarding the
`
`

`

`Patent Owner's contingent Motion to Amend (same guidance for both the
`proceedings) last week on February 11, 2021.
`
`For the following reasons, Patent Owner respectfully requests the Board's
`authorization for Patent Owner to withdraw his contingent Motion to Amend. (That
`is, Patent Owner neither intends to pursue the Motion to Amend nor intends to file a
`Revised Motion to Amend. The reasons for withdrawal of Patent Owner’s
`contingent Motion to Amend include:
`1. The Board's Preliminary Guidance stated that the Patent Owner is not
`allowed to amend the unchallenged claims 8-10, 12-14, 19, 23-31, 33-46
`and 48 in either of the proceedings.
`2. The Board denied the concurrently filed petition IRP2020-00262 Under U.S.C.
`§ 325(d), i.e., the challenged claims 1, 20-22 under § 102 as being anticipated
`by US Patent # 6,940,308 ("Wong") and claims 15-18, 32, 47 under § 103 as
`obvious over Wong. PO's contingent Motion to Amend narrows claim 1 (i.e.,
`substitute contingent claim 49) where it is amended by replacing y >=1 with y
`> 1. However, Petitioner in its opposition nevertheless argues that claim 49 is
`anticipated by Wong. See, pages 20-28 of Petitioner's Opposition to Motion to
`Amend.
`In light of the guidance provided in the Notice Regarding Options for Amendments
`by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial
`Proceeding (April 2019), since Patent Owner is not allowed to amend dependent
`claims 8-10, 12-14, 19, 23-31, 33-46 and 48 in these IPR proceedings or add
`additional claims, Patent Owner intends not to pursue his contingent Motion to
`Amend.
`1. Accordingly, Patent Owner respectfully requests the Board's authorization for
`Patent Owner to withdraw his contingent Motion to Amend in both the
`proceedings.
`
`
`Patent owner requests the Board’s prompt attention to this matter. Should the
`Board desire to have a call to discuss this issue, Patent Owner will provide both
`Patent Owner and Petitioner's available dates to have the call at the Board’s
`convenience.
`
`Very Respectfully,
`Venkat Konda
`Pro Se Patent owner
`
`
`
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