From: Venkat Konda <venkat@kondatech.com>
`Sent: Monday, March 8, 2021 2:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Anderson, Paul M.
`<paulanderson@paulhastings.com>; FlexLogix-Konda-IPR <PH-FlexLogix-Konda-IPR@paulhastings.com>;
`Venkat Konda <venkat@kondatech.com>
`Subject: IPR2020-00260 & -00261 - Petitioner willful violation of USPTO's
`
`Following up on the Board's authorization, Patent Owner filed PO's Motion to Withdraw
`PO's Contingent Motion to Amend on February 26, 2021. In the Petitioner's Opposition
`to Patent Owner's Motion to Withdraw PO's Contingent Motion to Amend filed on
`March 5, 2021 "March 5, 2021 Petitioner's Opposition to PO's Motion to Withdraw", the
`Exhibit 1058 and the corresponding arguments by Petitioner are improper. Patent
`Owner respectfully requests that the Board expunge Exhibit 1058 and all references
`to Exhibit 1058 in the March 5, 2021 Petitioner's Opposition to PO's Motion to Withdraw:
`
`1. Exhibit 1058 - Office Action, U.S. Reissue Application No. 16/202,067 (Aug.
`17, 2020).
`1. The Board instituted IPR2020-00260 & -261 on August 3, 2020. (See,
`Paper 22.) On August 7, 2020, the Board issued a Stay of Reissue
`Application No. 16/202,067 ("067 Reissue Application"). (See, Paper
`24.) On the same day, the USPTO Examiner issued a "letter of
`suspension - Examiner initiated" stating that the Office stayed the '067
`Reissue Application pending IPR trials. However notwithstanding the
`stay was in place, on August 17, 2020, the USPTO Examiner issued the
`Non-final Office Action in the '067 Reissue Application. On the same
`day, i.e., August 17, 2020, Patent Owner called the USPTO Examiner
`and informed her that the Non-final Office Action was issued in spite of
`the stay of the '067 Reissue Application, and inquired if Patent Owner
`had to respond to the Non-final Office Action within 3 months. The
`USPTO Examiner said the Office erroneously issued the Non-final
`Office Action and said she would call back after speaking to her
`Supervisory Examiner. On the same day, she called back the Patent
`Owner and said the Office was immediately withdrawing the Non-final
`Office Action. Accordingly, on the same day, i.e., August 17, 2020 the
`USPTO sua sponte vacated and expunged the Non-final Office Action
`stating: "A review of the record indicates that the non-final Office Action
`was mailed in error. Accordingly, non-final action that was mailed and
`entered into the file on August 17, 2020 is hereby vacated and
`expunged from the record by being designated "closed" and "not public"
`in the Information File Wrapper ("IFW"). The August 17, 2020 non-final
`Office action will form no part of the record and will not be available to
`the public. This decision will be made of record in the
`reexamination file." (See, the attached "Letter Withdrawing/Vacating
`Office Action & Miscellaneous Internal Document" as filed by USPTO
`Examiner in the '067 Reissue Application Docket on August 17, 2020).
`
`

`

`1. Therefore, Petitioner improperly submitted the vacated and
`expunged Non-final Office Action regarding the '067 Reissue
`Application is a willful violation of USPTO's Rules.
`2. Also, the filing of the Non-final Office Action as Exhibit 1058
`in the March 5, 2021 Petitioner's Opposition to PO's Motion to
`Withdraw directly contradicts the arguments by Petitioner earlier
`that the '067 Reissue Application should be stayed to avoid
`inconsistent results by the Office. Because the '067 Reissue
`Application was stayed by the Board, Petitioner should not be
`permitted to refer to the vacated and expunged Non-final Office
`Action.
`3. If the Non-final Office Action had not been vacated/expunged,
`Patent Owner submits that he would have responded to the
`Office Action within three months of the due date, i.e., by
`November 17, 2020 and successfully overcome any and all
`objections/rejections in that Office Action. Accordingly, the Patent
`Owner would be prejudiced if Petitioner’s use of Exhibit 1058,
`which was vacated/expunged by the USPTO Examiner from the
`record of the Office, is allowed to be entered in the record of the
`present IPRs and given any consideration by the Board..
`
`Accordingly, Patent Owner respectfully requests the Board to expunge Exhibit 1058 and
`the related arguments filed in the March 5, 2021 Petitioner's Opposition to PO's Motion
`to Withdraw.
`
`Petitioner objects to the argumentative nature of Patent Owner’s email to the Board and
`does not agree with the allegations in the email. Exhibit 1058, which is referenced in a
`single sentence in footnote 2 of the Opposition, is directly responsive to Patent Owner’s
`position in the motion to withdraw that the Wong reference is not relevant to claims of
`the ‘523 patent. Whether or not the Examiner in the reissue application withdrew the
`office action (i.e., Ex. 1058) from that proceeding because of the suspension does not
`change the fact that the Examiner recognized the applicability of Wong to the pending
`claims.
`
`Patent owner appreciates the Board’s prompt attention to this matter. Should the Board
`desire to have a call to discuss this issue, Patent Owner and Petitioner can be available
`at the Board’s convenience.
`
`
`Very Respectfully,
`Venkat Konda
`Pro Se Patent Owner
`(408) 472-3273
`
`On Fri, Feb 19, 2021 at 12:56 PM Trials <Trials@uspto.gov> wrote:
`
`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
`
`
`
`
`--
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