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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 PGR2020-00260
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`Patent 8,269,523 B2
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`_________
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`PATENT OWNER VENKAT KONDA’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c)
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`IPR2020-00260
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`Paper No. 27
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ......................................................................................... 1
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`II.
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`STATEMENT OF RELIEF REQUESTED ................................................ 1
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`III. LEGAL STANDARDS .................................................................................. 3
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`IV. BASIS FOR RELIEF REQUESTED .......................................................... 4
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`A. The Board’s Decision Rested on Clearly Erroneous Fact Findings based on
`Misrepresentations and Errors by Dr. Baker in His Declaration; the Board
`Misapprehended That “integrated networks” Means “interconnection networks”;
`the Board Overlooked Dr. Konda’s Declaration. .......................................................... 4
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`B. The Board’s Decision Rested on Clearly Erroneous Fact Findings. ............................ 6
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`C. The Board’s Decision is Based on an Erroneous Conclusion of Law. ......................... 9
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`V. CONCLUSION ............................................................................................ 12
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`I.
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`INTRODUCTION
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`Paper No. 27
`PO’s Request for Rehearing
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`In response to the Decision Granting Institution of Inter Partes Review
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`entered August 3, 2020, (Paper 22, hereinafter “Decision”) and pursuant to 37
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`C.F.R. § 42.71(c), Patent Owner Venkat Konda (“Patent Owner”) hereby
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`respectfully requests that the Patent Trial and Appeal Board (“Board”) reconsider
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`its decision granting institution for inter partes review of U.S. Patent No.
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`8,269,523 (“the ‘523 patent”).
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`II. STATEMENT OF RELIEF REQUESTED
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`The Decision ordered review on three grounds: (1) the published PCT
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`Application No. WO 2008/109765 (“the ‘756 PCT”) anticipates Claims 1, 16, 20-
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`22 and 32; (2) the ‘756 PCT renders Obvious Claims 15 and 17; and (3) the ‘756
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`PCT in view of U.S. Patent No. 6,940,308 (“Wong”) renders Obvious Claims 18
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`and 47. Specifically the Board’s Decision relied on three key factors:
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`a)
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`At this preliminary stage, the Board is not persuaded that Dr. Baker’s
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`testimony should be disregarded;
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`b)
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`Relying on Dr. Baker’s testimony the Board determined “that
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`Petitioner has established a reasonable likelihood that it would prevail in showing
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`that the challenged claims in the ‘523 patent are not entitled to the benefit of the
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`May 25, 2007 filing date of Provisional Application No. 60/940,394 (“the ‘394
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`provisional”), or the May 22, 2008 filing date of the PCT Application No.
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`PCT/US2008/064605 (“the ‘605 PCT”);
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`c)
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`The Board stated that once the ‘756 PCT was published on September
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`12, 2008, the ‘394 provisional that is incorporated by reference therein became
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`open to the public for inspection as of September 12, 2008.
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`Patent Owner requests that the Board reconsider its decision to institute inter
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`partes review as to all three grounds on the following bases:
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`a)
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`In light of Dr. Baker’s misrepresentations in his declaration as shown
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`in Patent Owner’s Motion to Exclude (“Motion”), Dr. Baker’s testimony is
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`inadmissible. Dr. Baker does not qualify as a Person of Ordinary Skill In The Art
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`(“POSITA”) as to the “pertinent art” relating to the subject matter claimed in the
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`‘523 Patent. Moreover, the Board overlooked Patent Owner’s declaration given
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`under the penalty of perjury in support of Patent Owner’s Preliminary response
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`(paper 8). Also, this motion is supported by the Declaration of Professor Vipin
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`Chaudhary, Ph.D., Endowed Kranzusch Professor and Inaugural Chair,
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`Department of Computer and Data Sciences, Case School of Engineering, Case
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`Western Reserve University, Cleveland, Ohio (“Dr. Chaudhary”) (Exhibit 2025)
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`and Curriculum Vitae of Dr. Chaudhary (Exhibit 2026) which addresses the
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`Board’s misapprehension in its Decision that “integrated networks” is a relevant
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`Page 2 of 17
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`field, whereas “integrated circuits” and “interconnection networks” is the
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`“pertinent art” and there is no such field as “integrated networks”;
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`b)
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`In light of the misrepresentations and errors in Dr. Baker’s
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`declaration, Dr. Chaudhary’s declaration establishes that the challenged claims in
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`the ‘523 patent are entitled to the benefit of the May 25, 2007 filing date of the
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`‘394 provisional;
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`c)
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`The Board erred in finding the ‘394 provisional incorporated by
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`reference in the ‘756 PCT became open to the public for inspection (i.e., the
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`application alone and not the entire file history) on September 12, 2008 pursuant to
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`37 C.F.R. § 1.14(a)(1)(vi) and 37 C.F.R. § 1.14(c) without a power to inspect, i.e.,
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`the permission of Patent Owner;
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`Therefore, Patent Owner requests that no trial be instituted as to the ‘523
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`patent.
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`III. LEGAL STANDARDS
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R. §
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`42.71 (d). “When rehearing a decision on petition, the panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. § 42.71 (c). “An abuse of discretion
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`occurs where the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is
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`based on an erroneous conclusion of law; (3) rests on clearly erroneous fact
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`findings; or (4) involves a record that contains no evidence on which the Board
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`could rationally base its decision.” Stevens v. Tamai, 366 F.3d 1325, 1329 (Fed.
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`Cir. 2004) (quoting Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334
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`F.3d 1264, 1266-67 (Fed. Cir. 2003)). Here, the Board abused its discretion in
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`instituting inter partes review in this case.
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`IV. BASIS FOR RELIEF REQUESTED
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`A. The Board’s Decision Rested on Clearly Erroneous Fact Findings based on
`Misrepresentations and Errors by Dr. Baker in His Declaration; the Board
`Misapprehended That “integrated networks” Means “interconnection
`networks”; the Board Overlooked Dr. Konda’s Declaration.
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`In Patent Owner’s Preliminary response, Patent Owner argued, based on
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`support in Patent Owner Venkat Konda’s Declaration under the penalty of perjury
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`(Exhibit 2001), that Dr. Baker’s Declaration in support of the Petition presented a
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`flawed definition of a person of ordinary skill in the art (Paper 8 at 6 – 15). It is
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`apparent that the Decision did not consider (or did not give appropriate weight to)
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`Venkat Konda’s Declaration and that the Board completely relied on Dr. Baker’s
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`testimony in the Decision.
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`Patent Owner respectfully submits the Board misapprehended that
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`“integrated networks” is a relevant field in its Decision (Paper 22 at 7). To the
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`contrary, “integrated circuits” and “interconnection networks” are the relevant
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`fields. Patent owner submits that there is no such field as “integrated networks”.
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`Specifically Patent Owner’s preliminary response pointed out that Petitioner
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`defined “networks” as a relevant field for a POSITA, whereas Dr. Baker in his
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`declaration stated his expertise is in “memory devices” (Paper 8 at 6). Therefore,
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`Dr. Baker does not qualify as a POSITA, and his declaration is inadmissible.
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`In the opposition to Patent Owner’s Motion to Exclude Dr. Baker’s
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`testimony in PGR proceedings with respect to a related patent (Exhibit 2018),
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`Petitioner further misrepresented Dr. Baker’s qualifications in the “pertinent art”
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`(Exhibit 2021 at 6-8). In the Patent Owner’s Reply to Petitioner’s Opposition to
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`Patent Owner’s Motion to Exclude Dr. Baker’s testimony, Patent Owner outlined
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`the misrepresentations in Dr. Baker’s Declaration in those PGR Proceedings
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`(Exhibit 2022 at 4-5).
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`Concurrently, Patent Owner is filing his Motion to Exclude Dr. Baker’s
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`testimony in the present IPR case in view of the misrepresentations in Dr. Baker’s
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`Declaration in support of the Petition in this case (Paper 25). Furthermore Patent
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`Owner submits that “interconnection networks” is the relevant field as to the ‘523
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`patent and not memory devices. Dr. Baker misrepresented that he has expertise in
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`“networks” in his declaration (Exhibit 1002). More importantly Dr. Baker has no
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`qualifications in the “pertinent field” since he has no expertise in interconnection
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`networks (Paper 25).
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`Patent Owner respectfully requests the Board to reconsider Venkat Konda’s
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`testimony submitted under the penalty of perjury with Patent Owner’s Preliminary
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`Response (Exhibit 2001) and Patent Owner’s Motion to Exclude (Paper 25),
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`Petitioner’s Opposition that is due in 10 days and Patent Owner’s Reply to
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`Petitioner’s Opposition that is due 5 days later. This motion is also supported by
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`Prof. Vipin Chaudhary Ph.D.’s (“Dr. Chaudhary’s”) Declaration (Exhibit 2025).
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`B. The Board’s Decision Rested on Clearly Erroneous Fact Findings.
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`Due to Dr. Baker’s lack of qualifications in the “pertinent art”, the Board
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`overlooked Dr. Baker’s errors sin the Petition. Relying on Dr. Baker’s testimony,
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`the Board found that the challenged claims in the ‘523 patent are not entitled to the
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`benefit of the May 25, 2007 filing date of the ‘394 provisional or the May 22, 2008
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`filing date of the ‘605 PCT.
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`Patent Owner respectfully requests the Board to reconsider the Decision that
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`the challenged claims in the ‘523 patent are not entitled to the benefit of the May
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`25, 2007 filing date of the ‘394 provisional or the May 22, 2008 filing date of the
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`‘605 PCT. The Board overlooked Dr. Baker’s errors and Patent Owner’s
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`arguments submitted in Patent Owner’s Preliminary response (Paper 8, 15-28) as it
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`appears the Board did not consider Venkat Konda’s Declaration submitted under
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`penalty of perjury (Exhibit 2001).
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`More specifically, Patent Owner requests the Board to reconsider the
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`Decision regarding the named inventor being in possession of the subject
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`matter recited in claim 1 of the ‘523 patent, particularly with respect to “said
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`routing network comprising a plurality of stages y, in each said sub-integrated
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`circuit block, starting from the lowest stage of 1 to the highest stage of y, where
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`y≧1”, for the following reasons which are also supported by Dr. Chaudhary’s
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`Declaration (Exhibit 2025 at ¶¶30-39):
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`Since the ’523 patent discloses VLSI layouts of fully connected generalized
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`multi-stage networks, including a butterfly fat tree network, for broadcast, unicast,
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`and multicast connections using only horizontal and vertical links, a POSITA
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`would have had an understanding at the time of the invention claimed in the ‘523
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`patent of a fully connected butterfly fat tree network, as disclosed in the ‘523
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`patent, having
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` stages in a row (or block), where N is the number of inputs
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`or outputs. Accordingly, for example, there will be one stage when there is one
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`block as illustrated in FIG. 2A1-3 of the priority applications (Ex. 1007, 7:10-21;
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`Ex. 1026, 4:4-15. A POSITA would have understood that when there is one
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`block there are no forward connecting links and no backward connecting links as
`Page 7 of 17
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`illustrated in FIG. 2A3 of the ‘523 patent, which is the smallest butterfly fat tree
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`network (Exhibit 2025 at ¶31).
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`Since claim 1 first recites stages and switches and subsequently recites
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`forward connecting links and backward connecting links, a POSITA would
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`understand that a plurality of forward connecting links are connected from a stage
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`when there is an immediate succeeding stage and a plurality of backward
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`connecting links are connected from a stage when there is an immediate preceding
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`stage. A POSITA would also understand that a plurality of forward connecting
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`links are not connected from a stage when there is no immediate succeeding stage
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`and a plurality of backward connecting links are not connected from a stage when
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`there is no immediate preceding stage. (Exhibit 2025 at ¶¶32-34)
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`A POSITA would understand that the first stage of a butterfly fat tree
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`network has no preceding stage, and so no backward connecting links are
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`connected from the first stage. A POSITA would also understand that the last
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`stage of a butterfly fat tree network has no succeeding stage, and so no forward
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`connecting links are connected from the last stage. Therefore, a POSITA would
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`understand that when there is one stage in a butterfly fat tree network as illustrated
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`in FIG. 2A1-3 of the priority applications, it is the first stage as well as the last
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`stage. Furthermore, the one stage has neither a preceding stage nor a succeeding
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`stage, and so no forward connecting links are connected from the stage and no
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`backward connecting links are connected from the stage. Such an understanding
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`for a POSITA is straight forward. Accordingly no experimentation is needed to
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`understand, let alone undue experimentation. (Exhibit 2025 at ¶¶35-37)
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`Accordingly, a POSITA reviewing the ‘605 PCT and the ‘394
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`Provisional would have understood that the named inventor was in
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`possession of the subject matter recited in claim 1, particularly with respect to
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`“said routing network comprising a plurality of stages y, in each said sub-
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`integrated circuit block, starting from the lowest stage of 1 to the highest stage of
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`y, where y≧1” and that the ‘523 patent is entitled to the benefit of the May 25,
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`2007 filing date of the ‘394 Provisional (Exhibit 2025 at ¶¶38-39).
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`For this reason alone, Patent Owner requests the Board reconsider Grounds
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`1, 2, and 3 in the Petition, and decline to institute inter partes Review of the‘523
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`Patent.
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`C. The Board’s Decision is Based on an Erroneous Conclusion of Law.
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`Pursuant to 37 C.F.R. § 1.14(a)(1)(vi) and 37 C.F.R. § 1.14(c), the
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`application of the then pending ‘394 Provisional was not available for public
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`inspection without a power to inspect, i.e., the permission of Patent Owner.
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`Page 9 of 17
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`On December 26, 2018, Patent Owner visited the United States Patent and
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`Trademark Office (“USPTO”) File Information Unit, Suite 3A20, 2800, South
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`Randolph Street, Arlington, VA 22206 (“FIU”). The officials at the FIU confirmed
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`that without a power to inspect under 37 C.F.R. § 1.14(c), the public cannot
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`obtain access to a pending application under 37 C.F.R. § 1.14(a)(1) as stated in
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`Section IV.B of Paper 8 at 40-44. The officials at the FIU provided the following
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`information:
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`1) Under 37 C.F.R. § 1.14(a)(1)(iv), (Unpublished abandoned applications
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`(including provisional applications) that are identified or relied upon.),
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`abandoned applications can be accessed by the public without written
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`permission of the applicant using USPTO form PTO/SB/68 (Exhibit
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`20271).
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`2) Under 37 C.F.R. § 1.14(a)(1)(iii) (Published pending applications), 37
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`C.F.R. § 1.14(a)(1)(v) (Unpublished pending applications (including
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`provisional applications) whose benefit is claimed), and 37 C.F.R. §
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`1.14(a)(1)(vi) (Unpublished pending applications (including provisional
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`applications) that are incorporated by reference or otherwise identified)
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`1 Exhibit 2027 contains a copy of PTO/SB/68 available at the time
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`(December 26, 2018) and also a copy available as of the filing of this motion.
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`all apply to pending applications (For all these three scenarios, the
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`USPTO does not provide a form like PTO/SB/68) and are available to the
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`public only with a power to inspect, specifically:
`
`a) Under 37 C.F.R. § 1.14(a)(1)(iii) Published pending applications: a
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`copy of the application-as-filed, the file contents of the application, or
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`a specific document in the file of a pending published application may
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`be provided if the applicant grants a power to inspect.
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`b) Under 37 C.F.R. § 1.14(a)(1)(v) (Unpublished pending applications
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`(including provisional applications) whose benefit is claimed): A copy
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`of file contents of an unpublished pending application, the
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`application-as-filed or a specific document in the file of the pending
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`application may be provided if the applicant grants a power to inspect.
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`c) Under 37 C.F.R. § 1.14(a)(1)(vi) (Unpublished pending applications
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`(including provisional applications) that are incorporated by
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`reference or otherwise identified): a copy of the application as
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`originally filed of an unpublished pending application may be
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`provided if the applicant grants a power to inspect. (Only this section
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`is applicable to the current IPR).
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`3) Furthermore, the middle box of the page on form PTO/SB/68 (Exhibit
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`2027) also mentions the same in 2) above about the pending applications
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`that are identified and also clearly states: “A member of the public,
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`acting without a power to inspect, cannot order applications
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`maintained in the IFW system through the FIU.” (Emphasis added.)
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`In Summary, Patent Owner, as confirmed by the FIU, respectfully submits that
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`access to a copy of the ‘394 provisional originally filed, i.e., the application itself,
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`was not available to the public under 37 C.F.R. § 1.14(a)(1)(vi) and (c) for any
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`period after the ‘756 PCT was published on September 12, 2008, because Patent
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`Owner never gave permission to anyone, and no access was granted under 37
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`C.F.R. § 1.14(i). Accordingly, Patent Owner respectfully requests the Board to
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`reconsider the Decision that the disclosure of the ’394 Provisional was prior art as
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`of September 12, 2008 when the ’756 PCT was published.
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`For this additional reason alone, Patent Owner requests that the Board deny
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`Grounds 1, 2, and 3 in the Petition, and decline to institute inter partes review of
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`the ‘523 Patent.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner requests that the Board deny
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`Grounds 1, 2, and 3 in the Petition, and decline to institute inter partes review of
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`the ‘523 Patent.
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`Date: August 10, 2020
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`Paper No. 27
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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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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. §42.24, Patent Owner certifies that the Request for
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`Rehearing under 37 C.F.R. § 42.71(c), filed August 10, 2020, contains 12 pages.
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`
`
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`Dated: August 10, 2020
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`
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`
`
`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
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`Certificates - Page 1 of 17
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on August 10, 2020, the foregoing
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`Request for Rehearing under 37 C.F.R. § 42.71(c) and all associated exhibits were
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`served electronically via e-mail in their entirety on the following counsel of record
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`for Petitioner by email to PH-FlexLogix-Konda-IPR@paulhastings.com
`
`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. Quadeer A. Ahmed (Reg. No. 60,835).
`
`
`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.
`
`
`
`
`
`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
`
`
`Dated: August 10, 2020
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`
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`Certificates - Page 2 of 17
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