Paper No. ____
`Filed: June 1, 2020
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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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`_________________
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`Case IPR2020-00260
`Patent No. 8,269,523
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Filed: June 1, 2020
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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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`_________________
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`Case IPR2020-00260
`Patent No. 8,269,523
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Pursuant to the Board’s order dated May 28, 2020, Petitioner submits this
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`reply to the Preliminary Response in order to address PO’s argument that the Board
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`should not institute a trial here concerning the U.S. Patent 8,269,523 (“the ’523
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`patent”) based on the existence of reissue application 12/202,067 (“the reissue
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`application”) of the ’523 patent. (POPR at 5-6.) Contrary to PO’s assertions, the
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`Board should not deny the petition based on the reissue application as denial on that
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`basis would severely prejudice Petitioner while rewarding PO’s less-than-candid
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`conduct before the PTO and the district court. Instead, institution here will provide
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`an efficient vehicle for resolution of the issues surrounding the ’523 patent as it will
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`avoid duplication of efforts within the PTO, avoid the waste of the PTO and party
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`resources, avoid potentially inconsistent results, and avoid prejudice to Petitioner.
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`On November 27, 2018, after PO became aware that he had failed to timely
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`pay the PCT nationalization fee in 2009 for the application that led to the ’523 patent,
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`PO filed the reissue application declaring that the ’523 patent is “wholly or partially
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`inoperative or invalid” because of his late payment. (Ex. 2005 at 586, 589-590.)1
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`1 While PCT application US/08/64605 expired on November 22, 2009, PO paid the
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`nationalization fee for the application leading to the ’523 patent on December 22,
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`2009, which should not have been possible absent a showing of unavoidable delay.
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`On December 17, 2018, PO sued Petitioner alleging infringement of the ’523 patent.
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`(Ex. 1050 at 1-2, 7-11.) The complaint, which was served on Petitioner January 3,
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`2019, represented that “[t]he ’523 patent is valid and enforceable” (id. at 8) and “was
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`duly and lawfully issued” (id. at 7). PO did not inform the district court or Petitioner
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`that he had filed the reissue application and had represented to the PTO that the ’523
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`patent was defective.
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`While PO dismissed the lawsuit against Petitioner on April 3, 2019 without
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`prejudice, Petitioner was still faced with a one-year time bar based on the complaint
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`filed in December 2018 and served in January 2019. As such, Petitioner filed the
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`present Petition and two related petitions with respect to the ’523 patent on
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`December 16, 2019. While the Petition acknowledges application no 16/202,067
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`(Petition at 2), details of the application, including the fact that it was a reissue
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`application, were not available as the application was inaccessible on PAIR.
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`Petitioner did not become aware that PO had filed a reissue application until the
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`filing of PO’s January 6, 2020 mandatory notices. While PO seeks to amend the
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`claims of the ’523 patent in the reissue proceeding in response to issues raised in
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`(Ex. 1004 at 150; Ex. 2005 at 600, 586.) See 37 C.F.R. § 1.495 (pre AIA); 35 U.S.C.
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`§ 371(d) (pre AIA).
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`2
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`litigation and co-pending PGR proceedings involving U.S. Patent 10,003,553 (“the
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`’553 patent”), as of at least the May 22, 2020, teleconference with the Board, PO did
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`not inform the reissue application examiner of the ’523 IPR and ’553 PGR
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`proceedings or the district court litigation. See PGR2019-00037, -00042; Ex. 1050;
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`Ex. 2005. In fact, the reissue application involves some of the same claims at issue
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`here. (Ex. 2005 at 11-28, 31.) No office action has issued in the reissue proceedings.
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`(See Ex. 2005.)
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`Denial of institution in these IPR proceedings based on the pending reissue
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`application would effectively allow Patent Owner to use the reissue application as a
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`sword and a shield. If the Board were to deny institution, PO could simply drop the
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`reissue application and keep the ’523 patent as is, which would severely prejudice
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`Petitioner as it would be time barred from challenging the ’523 patent in an IPR
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`proceeding. In contrast, institution would allow for the issues surrounding the ’523
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`patent to be adjudicated in an efficient, consistent, and fair manner that minimizes
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`duplication of effort and avoids wasting the resources of the Office and the parties,
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`especially given the overlap between the proceeding here and the reissue application.
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`In fact, if trial is instituted here, as requested by Petitioner, it may be appropriate to
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`stay or consolidate the reissue with the instant proceeding. See 35 U.S.C. § 315(d);
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`37 C.F.R. §42.122(a); 37 C.F.R. § 42.3(a). The parties can discuss those options
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`with the Board after institution, as appropriate.
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`3
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`Dated: June 1, 2020
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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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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`Patent Owner a true and correct copy of the foregoing Petitioner’s Reply to Patent
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`Owner’s Preliminary Response and supporting exhibit by electronic means on June
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`1, 2020, at the following address of record:
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`Venkat Konda <venkat@kondatech.com>
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`Dated: June 1, 2020
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
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` Counsel for Petitioner
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