Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper No. 31
`Entered: September 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLEX LOGIX TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`VENKAT KONDA,
`Patent Owner.
`____________
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B21
`____________
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing
`of Decisions Granting Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`1 This Decision addresses issues that are the same in both proceedings. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`
`
` Paper No. 31
`Entered: September 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLEX LOGIX TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`VENKAT KONDA,
`Patent Owner.
`____________
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B21
`____________
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing
`of Decisions Granting Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`1 This Decision addresses issues that are the same in both proceedings. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`I. INTRODUCTION
`Venkat Konda (“Patent Owner”) filed Requests for Rehearing, along
`with Exhibits 2025–2027, of our Decisions instituting inter partes review of
`claims 1–7, 11, 15–18, 20–22, 32, and 47 (“the challenged claims”) of U.S.
`Patent No. 8,269,523 B2 (Ex. 1001, “the ’523 patent”) in each of the above-
`identified proceedings.2 For the reasons that follow, Patent Owner’s
`Requests for Rehearing are denied.
`II. ANALYSIS
`A request for rehearing must identify specifically all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.
`37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions,
`has the burden of showing that the Decisions should be modified. Id. When
`rehearing a decision on a petition, the Board reviews the decision for an
`abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a
`decision is based on an erroneous interpretation of the law, if a factual
`finding is not supported by substantial evidence, or if an unreasonable
`judgment is made in weighing relevant factors. In re Gartside,
`203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`In its Rehearing Request, Patent Owner argues that the Board:
`(1) erred in determining that testimony from Petitioner’s declarant,
`Dr. Baker, should not be disregarded (Req. 6–8); (2) erred in determining
`
`
`2 See IPR2020-00260, Papers 22 (“Decision” or “Dec.”) and 26 (“Request”
`or “Req.”) and IPR2020-00261, Papers 22 and 28. Although the analysis
`herein applies to both proceedings, we refer to the papers and exhibits filed
`in IPR2020-00260 for convenience.
`
`
`
`2
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`
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`that the challenged claims are not entitled to claim priority3 to the May 25,
`2007 filing date of the ’394 provisional, or the May 22, 2008 filing date of
`the ’605 PCT (id. at 8–11); and (3) erred in determining that the ’394
`provisional became publicly available as of the date the ’756 PCT4
`published (id. at 11–14).
`We have reviewed Patent Owner’s Request and carefully considered
`the arguments presented. For the following reasons, we are not persuaded
`that we abused our discretion in granting institution of inter partes review of
`the challenged claims of the ’523 patent.
`A. Exhibits 2025–2027
`With the Rehearing Request, Patent Owner submitted Exhibits 2025–
`2027. Exhibit 2025 is a Declaration of Vipin Chaudhary, Ph.D., and Exhibit
`2026 is Dr. Chaudhary’s CV. Exhibit 2027 is a PTO form (highlighted by
`Patent Owner) for requesting access to abandoned applications. As an initial
`matter, we address whether Patent Owner followed the proper procedure for
`admitting Exhibits 2025–2027 into the record in these proceedings.
`Exhibits 2025–2027 were not of record when the Decisions were entered on
`August 3, 2020. Compare Paper 26 (Patent Owner’s exhibit list submitted
`
`
`3 The ’523 patent issued from U.S. Patent Application Serial No. 12/601,275
`(“the ’275 application”), which was filed on November 22, 2009 as the
`national phase entry of PCT Application No. PCT/US2008/064605
`(“the ’605 PCT”), filed on May 22, 2008. Ex. 1001, codes (21), (22);
`Ex. 1004, 150. The ’275 application claims priority to Provisional
`Application No. 60/940,394 (“the ’394 provisional”), which was filed on
`May 25, 2007. Ex. 1001, code (60).
`4 Published PCT Application No. WO 2008/109756, published on
`September 12, 2008.
`
`
`
`3
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`
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`on August 11, 2020) with Paper 19 (Patent Owner’s exhibit list submitted on
`June 11, 2020).
`Rule 42.71(d) permits “[a] party dissatisfied with a decision . . . [to]
`file a single request for rehearing without prior authorization from the
`Board.” 37 C.F.R. § 42.71(d). Although this rule does not explicitly
`address whether the requesting party may also file new evidence with its
`rehearing request, the Consolidated Trial Practice Guide5 is instructive on
`the matter. In discussing the procedures applicable to a request for
`rehearing, the Consolidated Trial Practice Guide highlights the Board’s
`precedential decision in Huawei Device Co., Ltd. v. Optis Cellular Tech.,
`LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019), which states:
`Ideally, a party seeking to admit new evidence with a rehearing
`request would request a conference call with the Board prior to
`filing such a request so that it could argue “good cause” exists
`for admitting new evidence. Alternatively, a party may argue
`“good cause” exists in the rehearing itself.
`Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice
`Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to
`filing the request for rehearing or in the request for rehearing itself, new
`evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).
`Here, Patent Owner did not request a conference call with the Board
`prior to submitting Exhibits 2025–2027 with its Request, nor did Patent
`Owner explain why these exhibits should be admitted in the Request itself.
`See generally Req. 1–12.
`
`
`5 Available at:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`
`4
`
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`Petitioner filed objections to the new exhibits. Paper 28. We note
`that, in response to Petitioner’s objections,, Patent Owner filed a paper titled
`“Patent Owner Venkat Konda’s Supplemental Evidence in Response to
`Petitioner’s Objections to Patent Owner’s Exhibits Pursuant to 37 C.F.R.
`§ 42.64(b)(2).” Paper 30. Although styled as “supplemental evidence,” this
`paper contains no evidence, but instead contains arguments that Patent
`Owner established good cause for the consideration of Exhibits 2025–2027
`on rehearing. See id. at 1–6. This additional argument is not an appropriate
`use of supplemental evidence. Moreover, Patent Owner did not request or
`receive authorization to file additional arguments relating to the
`admissibility of Exhibits 2025–2027 with the Request for Rehearing, and for
`this reason we do not consider those arguments now.
`Therefore, because Patent Owner failed to provide a showing of good
`cause prior to filing the Request or in the Request itself, Exhibits 2025–2027
`are not entitled to consideration. Notwithstanding Patent Owner’s lack of
`compliance with our rules in submitting Exhibits 2025–2027, we do not
`expunge the exhibits. Instead, Patent Owner may either: (1) withdraw
`Exhibits 2025–2027 from the record, or (2) request that we consider Exhibits
`2025–2027 in connection with its Patent Owner Response.
`B. Dr. Baker’s Testimony
`Patent Owner argues that “Dr. Baker’s declaration in support of the
`Petition presented a flawed definition of a person of ordinary skill in the
`art,” and “[i]t is apparent that the Decision did not consider (or did not give
`appropriate weight to) Venkat Konda’s Declaration and that the Board
`completely relied on Dr. Baker’s testimony in the Decision.” Req. 6 (citing
`Paper 8 (“Prelim. Resp.), 6–15). Patent Owner argues that “the Board
`
`5
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`misapprehended that ‘integrated networks’ is a relevant field,’” and, argues
`that, “[t]o the contrary, ‘integrated circuits’ and ‘interconnection networks’
`are the relevant fields.” Id. at 6–7. Patent Owner further argues that the
`Preliminary Response “pointed out that Petitioner defined ‘networks’ as a
`relevant field for a [person of ordinary skill in the art], whereas Dr. Baker in
`his declaration stated his experience is in ‘memory devices,’” and,
`“[t]herefore, Dr. Baker does not qualify as a [person of ordinary skill in the
`art], and his declaration is inadmissible.” Id. at 7 (citing Prelim. Resp. 6)
`(emphasis omitted). According to Patent Owner, “Dr. Baker has no
`qualifications in the ‘pertinent field’ since he has no expertise in
`interconnection networks.” Id. at 7–8 (emphasis omitted).
`Patent Owner has made this argument previously and we addressed it
`in our Decision on Institution. In the Decision, we directly addressed Patent
`Owner’s arguments that Dr. Baker is not qualified to testify in this
`proceeding because he is neither a person of ordinary skill in the art, nor an
`expert in the relevant art. See Dec. 7–8. In particular, we explained that
`there is no requirement “that the expert’s experience perfectly match the
`relevant field, or that the expert is a person of ordinary skill in the art.” Id.
`at 7. We also explained that
`Dr. Baker testifies as to his education and qualifications and
`provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003.
`At this preliminary stage, we cannot say that Dr. Baker’s
`scientific, technical, and other specialized knowledge will not be
`helpful in understanding the evidence. See Fed. R. Evid. 702(a).
`On this record, we are not persuaded that Dr. Baker’s testimony
`should be disregarded.
`Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in
`the art as Patent Owner contends, it does not follow that he is unqualified to
`
`6
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`testify in these proceedings. Nothing was misapprehended or overlooked in
`considering Dr. Baker’s testimony.
`We are also not persuaded that we overlooked the Konda Declaration
`(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda
`Declaration when discussing the experience and qualifications of the named
`inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the
`inventor, however, is just one of several factors that we may consider in
`determining the level of ordinary skill in the art. See Daiichi Sankyo Co.,
`Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six
`factors that “may be considered in determining the level of ordinary skill in
`the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696
`(Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary
`Response, “these factors are merely a guide to determining the level of
`ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d
`at 1256).
`In any event, in the Decision we also considered Petitioner’s and
`Patent Owner’s proposed definitions of the level of ordinary skill in the art,
`noted the differences between them, and stated that “[o]ur determination
`regarding Petitioner’s challenge does not turn on the differences between
`Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our
`evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support
`thereof would have been the same under Petitioner’s and Patent Owner’s
`proposed definitions of the level of ordinary skill in the art. See id. (“[W]e
`note that our conclusions would be same under either definition.”).
`Accordingly, we are not persuaded that we misapprehended or
`overlooked Patent Owner’s arguments or evidence in the Preliminary
`
`7
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`Response. Instead, we evaluated the record and determined that, at this
`stage of the proceeding, it does not support Patent Owner’s argument that we
`should disregard Dr. Baker’s testimony. The parties will have the
`opportunity to further develop the record on these issues during trial, and the
`Board will evaluate the fully-developed record at the close of the evidence.
`C. Effective Filing Date
`Patent Owner next argues that the “Board overlooked Dr. Baker’s
`errors and Patent Owner’s arguments submitted in Patent Owner’s
`Preliminary [R]esponse” in determining that the challenged claims are not
`entitled to the benefit of the filing date of the ’394 provisional or the ’605
`PCT. Req. 6 (citing Prelim. Resp. 15–28). Specifically, Patent Owner
`argues that a person of ordinary skill in the art “would understand that when
`there is one stage in a butterfly fat tree network as illustrated in FIG. 2A1–3
`of the priority applications, it is the first stage as well as the last stage,” and
`“has neither a preceding stage nor a succeeding stage, and so no forward
`connecting links are connected to the stage and no backward connecting
`links are connected from the stage.” Id. at 8–9. Therefore, according to
`Patent Owner, a person of ordinary skill in the art “reviewing the ’605 PCT
`and the ’394 Provisional would have understood that the named inventor
`was in possession of the subject matter recited in claim 1, particularly with
`respect to ‘said routing network comprising a plurality of stages y, in each
`sub-integrated circuit block, starting from the lowest stage of 1 to the highest
`
`stage of y, where y≧1.’” Id. at 9.
`
`In essence, Patent Owner disagrees with our decision on this issue. A
`request for rehearing, however, is not an opportunity to merely disagree with
`the Board’s assessment of the arguments or weighing of the evidence.
`
`8
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`Moreover, in the Decision, we directly addressed Patent Owner’s argument
`with respect to whether the ’394 provisional and ’605 PCT provided support
`for the claim limitation “said routing network comprising a plurality of
`stages y, in each sub-integrated circuit block, starting from the lowest stage
`
`of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular,
`
`we found that
`Patent Owner’s arguments, as we understand them, are directed
`only to the disclosure of a network with only one stage (y=1).
`[Prelim. Resp.] at 15–39. Patent Owner does not address the
`other limitations of claim 1, and does not point to any disclosures
`in the priority applications that describe a sub-integrated circuit
`block with only one stage that also comprises pluralities of
`forward connecting links and backward connecting links as
`required by claim 1.
`Id. Thus, we did not overlook Patent Owner’s arguments, but rather
`evaluated the disclosures in the ’394 provisional and ’605 PCT and
`determined, on the record at this stage of the proceeding, that they do not
`provide sufficient written description support for the challenged claims. The
`parties will have the opportunity to further develop the record on these
`issues during trial, and the Board will evaluate the fully-developed record at
`the close of the evidence.
`D. Public Availability of the ’394 provisional
`Patent Owner argues that we “erred in finding the ’394 provisional
`incorporated by reference in the ’756 PCT became open to the public for
`inspection (i.e., the application alone and not the entire file history) on
`September 12, 2008.” Req. 3. Patent Owner argues that, “without a power
`to inspect under 37 C.F.R. § 1.14(c), the public cannot obtain access to a
`pending application under 37 C.F.R. § 1.14(a)(1) as stated” on pages 40–44
`
`
`
`
`9
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`of the Preliminary Response. Id. at 10 (emphasis omitted). Patent Owner
`argues that “Patent Owner never gave permission to anyone” to access a
`copy of the ’394 provisional, and “no access was granted under 37 C.F.R.
`§ 1.14(i).” Id. at 12.
`In the Decision, we explained that:
`37 C.F.R. § 1.14(a)(1)(vi) provides, in relevant part, that if an
`unpublished application is incorporated by reference in an
`international publication of an international application (such as
`the ’756 PCT), a copy of “the unpublished pending application
`may be provided to any person, upon written request and
`payment of the appropriate fee.” Accordingly, once the ’756
`PCT published, the ’394 provisional that is incorporated by
`reference therein became open to the public for inspection.
`Dec. 15. We also explained that, although § 1.14(a)(1)(vi) also states that
`“[t]he Office will not provide access to the paper file of a pending
`application, except as provided in paragraph (c) or (i) of this section,” that
`sentence “is directed to the entire file history of the unpublished application.
`It does not preclude access to the application alone.” Id. at 16 n.1 (emphasis
`added). Patent Owner’s arguments to the contrary in the Request are
`nothing more than a disagreement with our decision on this issue. A request
`for rehearing, however, is not an opportunity to merely disagree with the
`Board’s assessment of the arguments or weighing of the evidence.
`Accordingly, Patent Owner does not persuade us that we should grant
`a request for rehearing based on our determination regarding the public
`availability of the ’394 provisional.
`III. CONCLUSION
`We have reviewed and considered the arguments in Patent Owner’s
`Requests, and conclude that Patent Owner has not carried its burden of
`
`
`
`
`10
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`demonstrating that we misapprehended or overlooked any matters, and
`therefore abused our discretion, in granting institution of inter partes review
`of the challenged claims of the ’523 patent. 37 C.F.R. § 42.71(d).
`IV. ORDER
`In view of the foregoing, it is:
`ORDERED THAT Patent Owner’s Requests for Rehearing are
`denied; and
`FURTHER ORDERED THAT within twenty days, Patent Owner
`shall advise the Board whether it intends to rely on Exhibits 2025–2027 in
`connection with its Patent Owner Responses, and if not, withdraw the
`exhibits from the record of these cases.
`
`
`
`
`
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`
`11
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`For PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Paul Anderson
`Arvind Jairam
`
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`paulanderson@paulhastings.com
`arvindjairam@paulhastings.com
`
`For PATENT OWNER:
`
`Venkat Konda
`Venkat@kondatech.com
`
`
`
`
`
`12
`
`
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