IPR2020-00260
`Patent 8,269,523
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`Paper No. 15
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FLEX LOGIX TECHNOLOGIES INC.,
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`Petitioner
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`V.
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`VENKAT KONDA,
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`Patent Owner
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`____________
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`Case IPR2020-00260
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`Patent 8,269,523 B2
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Patent 8,269,523
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`Paper No. 15
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FLEX LOGIX TECHNOLOGIES INC.,
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`Petitioner
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`V.
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`VENKAT KONDA,
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`Patent Owner
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`____________
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`Case IPR2020-00260
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`Patent 8,269,523 B2
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`_________
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2020-00260
`Patent 8,269,523
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`Paper No. 15
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`Pursuant to the Board’s Order dated May 28, 2020, Patent Owner submits this
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`Sur-reply to Petitioner’s Reply to Patent Owner’s Preliminary Response. The
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`Board should not institute inter partes review (“IPR”) IPR2020-00260 of U.S.
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`Patent 8,269,523 (“the ‘523 Patent), since Petitioner Flex Logix Technologies Inc.
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`(“Petitioner”) filed its IPR Petition on December 16, 2019, Paper 1 (“Petition”),
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`more than one year after Patent Owner’s reissue application 12/202,067 (“the ‘067
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`application” or “the reissue application”) for the ‘523 patent was filed on
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`November 27, 2018. The sole inventor of the ‘553 Patent, Venkat Konda Ph.D.,
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`also submits his attached declaration in support of this Sur-reply (See, Ex. 2007).
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`Patent Owner filed (See, Ex. 2012) after he learned during Conference call.
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`In October 2018, Petitioner first brought to Patent Owner’s attention and
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`argued, during settlement discussions, that the national stage entry basic national
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`stage fee for the ‘523 Patent was paid one month late. Subsequently Patent Owner,
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`based on the suggestions by Office of PCT Legal, specifically, Attorney Advisor
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`Erin Thomson and her supervisor and Deputy Director, International Patent Legal
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`Administration, USPTO, Richard Cole (“PCT Legal”) and pursuant to 37 C.F.R §
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`1.495(g) (pre AIA) pointed out by PCT Legal, filed the reissue application to
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`rectify the issue. (See, Ex. 2005 at 586, 600). Furthermore PCT Legal confirmed to
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`the Patent Owner that the ‘523 Patent is still valid and enforceable in District Court
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`until a reissue were to issue and the ‘523 Patent were to be surrendered.
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`Page 1 of 6
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`IPR2020-00260
`Patent 8,269,523
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`Paper No. 15
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`Petitioner filed a motion to dismiss Patent Owner’s District Court complaint
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`on January 24, 2019 (See, Ex. 2008) and a second motion to dismiss Patent
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`Owner’s first amended complaint March 18, 2019 (See, Ex. 2009). Patent Owner
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`dismissed his District Court action without prejudice on April 3, 2019. Because
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`Patent Owner was informed that the ‘523 Patent continued in force, he believed
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`that he did not need to inform Petitioner about the reissue application during the
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`District Court proceedings, as the action never went beyond Petitioner’s motions to
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`dismiss, and certainly not to discovery stage.
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`In August 2019, PCT Legal advised Patent Owner that the reissue application
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`was not appropriate, but that a petition for unintentional delay was sufficient to
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`obviate the issue regarding payment of the basic national fee for the ‘523 Patent
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`(See, Ex. 2010). Accordingly, Patent Owner filed a petition on August 8, 2019 to
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`remedy the issue. Petitioner has knowledge of these facts which are in the file
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`history of the ‘553 Patent (See, Ex. 1004 at 1-6). Yet, Petitioner continues its
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`harassment of the Patent Owner, notwithstanding that the Office laid the issue to
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`rest (See, Petition at Footnote 1 at 2) and Petitioner’s Reply (Paper 12 at 1-2).
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`Then, Patent Owner has continued the prosecution of the reissue application
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`by narrowing the claims of the ‘523 Patent. Patent Owner has narrowed the only
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`independent claim by merging claims 1 and 3. All of the remaining dependent
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`claims have either been deleted or merged with one another. Two new independent
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`Page 2 of 6
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`IPR2020-00260
`Patent 8,269,523
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`Paper No. 15
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`claims, namely, Claims 49 and claim 50, have been added, which are distinct from
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`the claims in the ‘523 Patent. More importantly in all claims § 112 issues are fixed.
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`Also, Petitioner misrepresented during the conference call that it came to
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`know about the reissue application only on January 6, 2020 (See, Ex. 1049 at 8)
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`after Patent Owner filed the mandatory notice, whereas in fact Petitioner itself
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`mentioned in the Petition filed on December 16, 2019 that there is a related
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`application claiming priority to the ‘523 Patent in the Petition as follows: “Pending
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`U.S. Application No. 16/202,067 claims priority to the ’275 application, according
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`to the PTO PAIR database.” (See, Paper 1 at 2). Clearly, Petitioner had notice that
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`the ‘067 application is indeed a reissue application, as the PAIR database clearly
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`shows it was available to the Public as it was published in USPTO Official Gazette
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`on January 1, 2019 (See, Ex. 2011 at 3 & 1). Furthermore since Petitioner concedes
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`that there are § 112 issues in the claims of the ‘523 patent (Petition, footnote 5 at
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`25), the reissue application will resolve them as well, so the IPR should be denied.
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`Under Patent Owner’s attached declaration (See, Ex. 2007), he has no intent
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`to withdraw the reissue application under any circumstances and will not use the
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`reissue application as a sword and a shield. Accordingly, Patent Owner requests
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`the Board to deny the institution of the Petition, which will eliminate duplication of
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`effort, avoid wasting the resources of the Office and the parties, avoid the need for
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`further proceedings in District Court, and avoid prejudice to Patent Owner.
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`Page 3 of 6
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`IPR2020-00260
`Patent 8,269,523
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`Date: June 8, 2020
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`Paper No. 15
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`Respectfully submitted,
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`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
`6278 Grand Oak Way
`San Jose, CA 95135
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`Page 4 of 6
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`IPR2020-00260
`Patent 8,269,523
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`Paper No. 15
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and consent of the Petitioner, I certify that
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`on June 8, 2020, a true and correct copy of the foregoing Patent Owner’s Sur-reply
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`to Petitioner’s Reply to Patent Owner’s Preliminary Response and accompanying
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`exhibits were served on counsel of record for Petitioner by email to PH-FlexLogix-
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`Konda-IPR@paulhastings.com
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`Lead counsel:
`Naveen Modi (Reg. No. 46,224),
`Backup counsel:
`1. Joseph E. Palys (Reg. No. 46,508)
`2. Paul M. Anderson (Reg. No. 39,896)
`3. Arvind Jairam (Reg. No. 62,759)
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`Service information:
`Paul Hastings LLP
`875 15th St. N.W.
`Washington, D.C., 20005
`Tel.: 202.551.1700
`Fax: 202.551.1705
`Email: PH-FlexLogix-Konda-IPR@paulhastings.com.
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`Dated: June 8, 2020
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`Respectfully submitted,
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`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
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`Page 5 of 6
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