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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 RESPONSE UNDER 37 C.F.R. § 42.120
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`IPR2020-00260
`Patent 8,269,523
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`Paper No. 33
`Patent Owner’s Response
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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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`BACKGROUND ............................................................................................ 4
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`A. The ‘523 Patent ................................................................................................................. 4
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`III. PETITIONER’S EXPERT WITNESS DR. BAKER IS NOT
`QUALIFIED IN THE PERTINENT ART AND HIS DECLARATION
`CARRIES NO WEIGHT .............................................................................. 5
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`IV. U.S. PROVISIONAL PATENT APPLICATION SERIAL NO.
`60/940,394 (THE “ ‘394 PROVISIONAL APPLICATION”) WHICH
`WAS INCORPORATED BY REFERENCE IN PCT PUBLICATION
`NO. WO 2018/109756 A1 (THE “KONDA ‘756 PCT”) IS NOT PRIOR
`ART TO THE ‘523 PATENT WHICH CLAIMS PRIORTITY TO THE
`‘394 PROVISIONAL APPLICATION ........................................................ 9
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`A. The Effective Filing date of the ‘523 Patent is indeed its earliest claimed priority
`date, i.e. May 25, 2007....................................................................................................... 9
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`B. The Konda ‘756 PCT Publication is Not Prior Art to the ‘523 Patent ...................... 13
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`V. CLAIM CONSTRUCTION ........................................................................ 21
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`VI. CONCLUSION ............................................................................................ 21
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`Page ii of 26
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`I.
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`INTRODUCTION
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`Paper No. 33
`Patent Owner’s Response
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`Patent Owner Venkat Konda (“Patent Owner” or “PO”) submits this Patent
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`Owner’s Response pursuant to 37 C.F.R. § 42.120 in opposition to the petition for
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`inter partes review (“IPR”) IPR2020-00260 filed by Flex Logix Technologies Inc.
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`(“Flex Logix” or “Petitioner”) regarding claims 1, 15-18, 20-22, 32 and 47 (the
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`“Challenged Claims”) of U.S. Patent No. 8,269,523 (Ex. 1001, the “‘523 Patent”)
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`on December 16, 2019 Paper 1 (“Petition”). Patent Owner previously filed a
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`Preliminary Response to the Petition on May 6, 2020 after the due date was
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`extended by the Patent Trial and Appeal Board (“Board”) due to the COVID-19
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`Pandemic in response to PO’s request. On August 3, 2020, the Board instituted this
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`IPR1.
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`In response to the Decision Granting Institution of IPR entered August 3,
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`2020 (Paper 22) and pursuant to 37 C.F.R. § 42.71(c), on August 10, 2020 Patent
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`Owner submitted a Request for Rehearing and Exhibits 2025-2027 for the Board to
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`reconsider its decision granting institution of the IPR. On September 16, 2020, the
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`1 In addition to this IPR, the Board instituted another IPR2020-00261 based
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`on a petition concurrently filed by the same Petitioner on the ‘523 Patent. Patent
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`Owner indicates to the Board that the same Patent Owner’s Response is submitted
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`in both proceedings, i.e. IPR2020-00260 and IPR2020-00261.
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`Board denied Patent Owner’s Request for Rehearing and ordered Patent Owner to
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`either withdraw or request the Board to consider Exhibits 2025-2027 in Patent
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`Owner Responses.
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`On September 23, 2020, Patent Owner sent an email to the Board stating that
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`Patent Owner intended to file Patent Owner’s Response relying on Exhibits 2025-
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`2027, as well as a Contingent Motion to Amend, and requesting the Board for the
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`mandatory conference call. In response, the Board issued an order stating: “Based
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`on the information provided by Patent Owner, we determine that a conference call
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`is not necessary, and the conference requirement is deemed satisfied.” (Paper 32)
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`Furthermore in an email response, the Board confirmed that Patent Owner satisfied
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`the Board’s order to advise that Patent Owner intended to rely on Exhibits 2025–
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`2027 in connection with Patent Owner’s Responses.
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`This Patent Owner’s Response is supported by the Declaration of Professor
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`Vipin 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)2. Dr. Chaudhary’s
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`declaration establishes that the Challenged Claims in the ‘523 Patent are entitled to
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`the benefit of the May 25, 2007 filing date of the ‘394 Provisional application.
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`Accordingly, since the ‘523 Patent is entitled to the priority date of May 25, 2007,
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`the publication of Konda ‘756 PCT on September 12, 2008, i.e. more than 15
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`months after May 25, 2007 is irrelevant. For this reason alone, the grounds 1, 2,
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`and 3 in the Petition are not valid.
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`Furthermore, the ‘394 Provisional application incorporated by reference in
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`the Konda ‘756 PCT was not open to the public for inspection on September 12,
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`2008 pursuant to 37 C.F.R. § 1.14(a)(1)(vi) and 37 C.F.R. § 1.14(c) without a
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`power to inspect granted by Patent Owner. Therefore, the Konda ‘756 PCT does
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`not qualify as prior art to the ‘523 Patent. Also, for this reason alone, the instituted
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`2 Patent Owner submitted Exhibits 2025-2027 in support of PO’s Request for
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`Rehearing. In the Board decision of denial of PO’s Request for Rehearing, the
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`Board ordered that “Patent Owner shall advise the Board whether it intends to rely
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`on Exhibits 2025–2027 in connection with its Patent Owner Responses.” Patent
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`Owner satisfied this requirement that he intends to rely on Exhibits 2025–2027 in
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`connection with its Patent Owner Responses, as approved by the Board’s email
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`(Exhibit 2028).
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`grounds 1, 2, and 3 in the Petition are not valid. Therefore, Patent Owner requests
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`that the Board deny Grounds 1, 2, and 3 in the Petition.
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`II. BACKGROUND
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`The ‘523 Patent along with several other families of patents and patent
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`applications incorporated by reference in their entirety in the ‘523 Patent disclose
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`layouts for integrated circuits including Field Programmable Gate Arrays
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`(“FPGAs”) comprising 2D-Mesh-like 2D layouts for multi-stage networks such as
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`Benes Networks, Butterfly Fat Tree networks and various other multi-stage
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`networks with isomorphic transformations, having 2D-layouts as simple as those of
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`2D-Mesh networks so that all the wires are horizontal or vertical. This layout is
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`based on alternate vertical and horizontal wires and replicability of the partial
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`multi-stage network corresponding to each computational block of an FPGA
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`regardless of the size of the FPGA.
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`A. The ‘523 Patent
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`Petitioner sought inter partes review of claims 1, 15-18, 20-22, 32 and 47 of
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`the ‘523 Patent. The ‘523 Patent (Ex. 1001) issued from patent application No.
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`12/601,275 (the “‘275 application”) (Ex. 1004) filed on November 22, 2009. (The
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`‘523 Patent has only one independent claim, i.e. Claim 1.) The ‘523 Patent is a
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`national stage application of international application PCT Application No.
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`PCT/US2008/064605 (the “‘605 PCT application”) (Ex. 1007), filed May 22, 2008
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`which in turn is a continuation-in-part and claims priority to U.S. Provisional
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`Patent Application Serial No. 60/940,394, filed May 25, 2007 (the “‘394
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`provisional application”) (Ex. 1026). No new subject matter was added to the
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`specification of the ‘275 application which issued as the ‘523 Patent. Thus, the
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`effective filing date of the ‘523 Patent is the earliest application for which priority
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`was claimed, namely, May 25, 2007.
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`III. PETITIONER’S EXPERT WITNESS DR. BAKER IS NOT
`QUALIFIED IN THE PERTINENT ART AND DR. BAKER’S
`DECLARATION CARRIES NO WEIGHT
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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).
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`Specifically, Patent Owner’s Preliminary Response pointed out that
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`Petitioner defined “networks” as a relevant field for a POSITA, whereas Dr. Baker
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`in his declaration stated his expertise is in “memory devices” (Paper 8 at 6).
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`Therefore, Dr. Baker does not qualify as a POSITA, and his declaration is
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`incompetent and should be accorded no weight.
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`In its opposition to Patent Owner’s Motion to Exclude Dr. Baker’s testimony
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`in PGR proceedings with respect to a related patent (Exhibit 2018), Petitioner
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`further misrepresented Dr. Baker’s qualifications in the “pertinent art” (Exhibit
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`2021 at 6-8). In Patent Owner’s Reply to Petitioner’s Opposition to Patent Owner’s
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`Motion to Exclude Dr. Baker’s testimony, Patent Owner outlined the
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`misrepresentations in Dr. Baker’s Declaration in those PGR Proceedings (Exhibit
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`2022 at 4-5).
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`On August 10, 2020, Patent Owner filed a Motion to Exclude Dr. Baker’s
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`testimony in the present IPR in view of the misrepresentations in Dr. Baker’s
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`Declaration in support of the Petition in this case (Paper 25). Notably, Petitioner
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`did not, and evidently cannot, redeem itself as it did not submit supplemental
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`evidence pursuant to 37 C.F.R. § 42.64(b)(2) by the due date of August 24, 2020.
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`Patent Owner submits that “interconnection networks” is the relevant field
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`as to the ‘523 Patent and not memory devices. Dr. Baker represented that he has
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`expertise in “networks” in his declaration (Exhibit 1002). Importantly, however,
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`Dr. Baker has no qualifications in the “pertinent field” since he has no expertise in
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`interconnection networks (Paper 25). Moreover, Patent Owner respectfully submits
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`that there is no such field as “integrated networks” as stated in the Board’s
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`Decision (Paper 22 at 7). To the contrary, “integrated circuits” and
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`“interconnection networks” are the relevant fields. This Patent Owner’s Response
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`is supported by Dr. Chaudhary’s Declaration (Exhibit 2025) which establishes that
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`“integrated networks” is not a relevant field, whereas “integrated circuits”
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`comprising “interconnection networks” is the “pertinent art” and, in fact, there is
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`no such field as “integrated networks”.
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`In summary, Petitioner filed its Petition with the support of
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`misrepresentations and errors in Dr. Baker’s testimony under the penalty of
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`perjury, with disregard of the following:
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`a. Dr. Baker ignored the straightforward fact that the USPTO Examiner
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`allowed Claim 1 as amended after the first Office Action in patent
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`application No. 12/601,275, which issued as the ‘523 patent, on May 8,
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`2012, particularly with respect to “said routing network comprising a
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`plurality of stages y, in each said sub-integrated circuit block, starting
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`from the lowest stage of 1 to the highest stage of y, where y≧1”.
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`b. Dr. Baker ignored the straightforward fact that: “A POSITA would
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`understand that the first stage of a butterfly fat tree network has no
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`preceding stage, and so no backward connecting links are connected from
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`the first stage. A POSITA would also understand that the last stage of a
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`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
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`POSITA would understand that when there is one stage in a butterfly fat
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`tree network as illustrated in FIG. 2A1-3 of the priority applications, it is
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`the first stage as well as the last stage. Furthermore, the one stage has
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`neither a preceding stage nor a succeeding stage, and so no forward
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`connecting links are connected from the stage and no backward
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`connecting links are connected from the stage. Such an understanding
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`for a POSITA is straight forward. Accordingly no experimentation is
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`needed to understand, let alone undue experimentation. (Exhibit 2025 at
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`¶¶35-37)”.
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`c. As a consequence, Dr. Baker ignored the straightforward fact that “a
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`POSITA reviewing the ‘605 PCT and the ‘394 Provisional would
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`have understood that the named inventor was in possession of the
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`subject matter recited in claim 1, particularly with respect to “said
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`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
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`stage of y, where y≧1” and that the ‘523 patent is entitled to the benefit
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`of the May 25, 2007 filing date of the ‘394 Provisional (Exhibit 2025 at
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`¶¶38-39).”
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`Therefore, Patent Owner submits that Dr. Baker does not qualify as an
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`expert in the pertinent art and his declaration carries no weight.
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`IV. U.S. PROVISIONAL PATENT APPLICATION SERIAL NO.
`60/940,394 (THE “ ‘394 PROVISIONAL APPLICATION”) WHICH
`WAS INCORPORATED BY REFERENCE IN PCT PUBLICATION
`NO. WO 2018/109756 A1 (THE “KONDA ‘756 PCT”) IS NOT PRIOR
`ART TO THE ‘523 PATENT WHICH CLAIMS PRIORTITY TO THE
`‘394 PROVISIONAL APPLICATION
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`
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`A. The Effective Filing date of the ‘523 Patent is indeed its earliest claimed
`priority date, i.e. May 25, 2007
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`Petitioner alleges that the amendment made after the first Office Action in
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`the ‘275 application on May 8, 2012 (Ex. 1004, 39) 1) lacks written description
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`support in priority applications (Paper 1, 6) and broadened with the respective the
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`number of stages (Paper 1, 8) and 2) lacks enablement in priority applications
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`(Paper 1, 17). Petitioner and Dr. Bakers’ arguments are flawed.
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`Patent Owner submits that the named inventor was in possession of the
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`subject matter recited in claim 1 of the ‘523 Patent, particularly with respect
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`to “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”, for the following reasons which are also supported by Dr.
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`Chaudhary’s Declaration (Exhibit 2025 at ¶¶30-39).
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`Page 9 of 25
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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
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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 have
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`understood 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 have understood that a plurality of forward
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`connecting links are not connected from a stage when there is no immediate
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`succeeding stage, and a plurality of backward connecting links are not connected
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`from a stage when there is no immediate preceding stage. (Exhibit 2025 at ¶¶32-
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`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 straightforward. Accordingly, no experimentation is needed to
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`understand, let alone undue experimentation. (Exhibit 2025 at ¶¶35-37.)
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`Therefore, a POSITA reviewing the ‘605 PCT and the ‘394 Provisional
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`Application 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 Application (Exhibit 2025 at ¶¶38-39).
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`Secondly, in accord with Dr. Chaudhary’s declaration, the USPTO
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`Examiner, after the interview between the Examiner and Venkat Konda on April
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`30, 2012 in the ‘275 application filed on May 8, 2012 (Ex. 1004, 39), allowed
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`Claim 1 particularly including “said routing network comprising a plurality of
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`stages y, in each said sub-integrated circuit block, starting from the lowest stage of
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`1 to the highest stage of y, where y≧1.” (Ex. 1004 at 57). Thus, the Examiner
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`clearly examined and allowed Claim 1 with the limitation y=1.
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`Also, since Claim1 is the only independent claim in the ‘523 Patent, and
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`because Petitioner’s arguments as to Claim 1are flawed as described in the
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`foregoing discussion, Petitioner’s arguments as to all dependent claims which
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`depend from Claim 1, namely, the remaining Challenged Claims 15-18, 20-22, 32,
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`and 47, are also flawed.
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`In summary, as supported by Dr. Chaudhary’s Declaration (Exhibit 2025),
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`Petitioner’s arguments that the amendment in reply to the first Office Action in the
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`‘275 application filed on May 8, 2012 (Ex. 1004, 39) 1) lacks written description
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`support in claimed priority applications (Paper 1, 6) and broadened the number of
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`stages (Paper 1, 8) and 2) lack enablement in the claimed priority applications
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`(Paper 1, 17) are absolutely flawed. Accordingly, the effective filing date of the
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`‘523 Patent is the filing date of earliest priority application, which is the ‘394
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`Provisional Application, which is May 25, 2007.
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`Therefore, the Konda ‘756 PCT which was published on September 12,
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`2008, i.e. more than 15 months after May 25, 2007, is not prior art to the ‘523
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`patent. For this reason alone, the instituted Grounds 1, 2, and 3 are not valid and do
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`not render unpatentable claims 1-48 of the ’523 patent. Accordingly, Patent Owner
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`requests that the Board deny Grounds 1, 2, and 3 in the Petition.
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`B. The Konda ‘756 PCT Publication is Not Prior Art to the ‘523 Patent
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`Petitioner incorrectly contends that the Konda ‘756 PCT is prior art with
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`respect to the ‘523 Patent. To the contrary, the Konda ‘756 PCT is not prior art
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`with respect to the ‘523 Patent. Although the Konda ‘756 PCT incorporated by
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`reference the ‘394 Provisional Application and was published on September 12,
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`2008 as Petitioner points out in its Petition, the ‘394 Provisional Application did
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`not become available to the public as of the publication date as Petitioner contends.
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`The pertinent Patent Rules effective at the time are as follows:
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`37 C.F.R. § 1.14(a)(1)(vi) reads, in pertinent part:
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`(vi) Unpublished pending applications (including provisional applications)
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`that are incorporated by reference or otherwise identified. A copy of the
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`application as originally filed of an unpublished pending application may be
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`provided to any person, upon written request and payment of the appropriate fee
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`(§ 1.19(b)), if the application is incorporated by reference or otherwise identified in
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`a U.S. patent, a statutory invention registration, a U.S. patent application
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`publication, or an international patent application publication that was published in
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`accordance with PCT Article 21(2). The Office will not provide access to the
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`paper file of a pending application, except as provided in paragraph (c) or (i)
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`of this section. (Emphasis added.)
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`37 C.F.R. § 1.14(c) reads:
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`(c) Power to inspect a pending or abandoned application. Access to an
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`application may be provided to any person if the application file is available,
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`and the application contains written authority (e.g., a power to inspect)
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`granting access to such person. The written authority must be signed by:
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`(1) An applicant;
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`(2) An attorney or agent of record;
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`(3) An authorized official of an assignee of record (made of record
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`pursuant to § 3.71 of this chapter); or
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`(4) A registered attorney or agent named in the papers
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`accompanying the application papers filed under § 1.53 or the national stage
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`documents filed under § 1.495, if an executed oath or declaration pursuant to
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`§ 1.63 or § 1.497 has not been filed. (Emphasis added.)
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`Additionally, 37 C.F.R. § 1.14(i) reads:
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`(i) Access or copies in other circumstances. The Office, either sua sponte or
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`on petition, may also provide access or copies of all or part of an application if
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`necessary to carry out an Act of Congress or if warranted by other special
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`circumstances. Any petition by a member of the public seeking access to, or copies
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`of, all or part of any pending or abandoned application preserved in confidence
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`pursuant to paragraph (a) of this section, or any related papers, must include:
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`(1) The fee set forth in § 1.17(g); and
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`(2) A showing that access to the application is necessary to carry out an
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`Act of Congress or that special circumstances exist which warrant Petitioner
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`being granted access to all or part of the application. (Emphasis added.)
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`Thus, in accordance with the applicable Patent Rules, the ‘394 Provisional
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`Application was not available to the public under 37 C.F.R. § 1.14(a)(1)(vi) and
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`(c) for any period after the Konda ‘756 PCT was published on September 12, 2008,
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`because the ‘394 Provisional Application was pending, and Patent Owner never
`
`gave permission to anyone and no access was granted under 37 C.F.R. § 1.14(i).
`
`Petitioner’s argument is fatally flawed: the ‘394 Provisional Application
`
`was not in fact available to the public as of September 12, 2008 as Petitioner
`
`contends. Petitioner failed to consider the last sentence of the Patent Rule which
`
`refers to 37 C.F.R. § 1.14(c):
`
`(c) Power to inspect a pending or abandoned application. Access to an
`
`application may be provided to any person if the application file is available,
`
`and the application contains written authority (e.g., a power to inspect)
`
`granting access to such person.
`
`Patent Owner never gave such permission to anyone. Therefore, the Konda
`
`‘756 PCT is not prior art to the ‘523 Patent. The ‘394 Provisional Application was
`
`not referenced in the USPTO Public PAIR Database until the ‘275 application was
`
`published on February 17, 2011.
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`Page 16 of 25
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`Patent Owner’s Response
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`In addition, 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 provisional
`
`applications) whose benefit is claimed), and 37 C.F.R. § 1.14(a)(1)(vi)
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`(Unpublished pending applications (including provisional applications) that are
`
`incorporated by reference or otherwise identified) all apply to pending
`
`applications and all of these Patent Rules contain as the last line the following
`
`language:
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`The Office will not provide access to the paper file of a pending
`
`application, except as provided in paragraph (c) or (i) of this section.
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`(Emphasis added.)
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`In contrast, 37 C.F.R. § 1.14(a)(1)(iv) (Unpublished abandoned applications
`
`(including provisional applications) that are identified or relied upon.) does not
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`have such a clause. Accordingly, only abandoned applications which are
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`identified can be accessed by the public without written permission of the
`
`applicant. However, the ‘394 Provisional Application was pending, i.e., not
`
`abandoned. Therefore, the ‘394 Provisional Application is not prior art to the ‘523
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`Patent. In fact, the ‘523 Patent claims priority to the then pending ‘394 Provisional
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`Application as identified by the Office on the face of the issued ‘523 Patent.
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`Page 17 of 25
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`Paper No. 33
`Patent Owner’s Response
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`Since Patent Owner never gave permission to anyone to inspect the ‘394
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`Provisional Application and since the ‘394 Provisional Application was not
`
`referenced in the USPTO Public PAIR Database until the ‘275 application was
`
`published on February 17, 2011, the ‘394 Provisional Application is not prior art to
`
`the ‘523 Patent.
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`Furthermore, on December 26, 2018, Patent Owner visited the United States
`
`Patent and Trademark Office (“USPTO”) File Information Unit, Suite 3A20, 2800,
`
`South Randolph Street, Arlington, VA 22206 (“FIU”). The officials at the FIU
`
`confirmed that without a power to inspect under 37 C.F.R. § 1.14(c), the public
`
`cannot obtain access a pending application under 37 C.F.R. § 1.14(a)(1). The
`
`officials at the FIU provided the following information:
`
`1) Under 37 C.F.R. § 1.14(a)(1)(iv), (Unpublished abandoned applications
`
`(including provisional applications) that are identified or relied upon.),
`
`abandoned applications can be accessed by the public without written
`
`permission of the applicant using USPTO form PTO/SB/68 (Exhibit
`
`20273).
`
`
`3 Exhibit 2027 contains a copy of PTO/SB/68 available at the time
`
`(December 26, 2018) and also a copy available as of the filing of this Response.
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`Page 18 of 25
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`Patent Owner’s Response
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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
`
`provisional applications) whose benefit is claimed), and 37 C.F.R. §
`
`1.14(a)(1)(vi) (Unpublished pending applications (including provisional
`
`applications) that are incorporated by reference or otherwise identified)
`
`all apply to pending applications4 and are available to the public only
`
`with a power to inspect, specifically:
`
`a) Under 37 C.F.R. § 1.14(a)(1)(iii) Published pending applications: a
`
`copy of the application-as-filed, the file contents of the application, or
`
`a specific document in the file of a pending published application may
`
`be provided if the applicant grants a power to inspect.
`
`b) Under 37 C.F.R. § 1.14(a)(1)(v) (Unpublished pending applications
`
`(including provisional applications) whose benefit is claimed): A copy
`
`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
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`inspect.
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`4 For all these three scenarios, the USPTO does not provide a form like
`PTO/SB/68.
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`Page 19 of 25
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`c) Under 37 C.F.R. § 1.14(a)(1)(vi) (Unpublished pending applications
`
`(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 is applicable to the current IPR).
`
`3) Furthermore, the middle box of the page 1 form PTO/SB/68 (Exhibit
`
`2027) also mentions the same language in 2), above, about pending
`
`applications that are identified and also clearly states: “A member of the
`
`public, 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 confirmed with the FIU that access to the pending
`
`‘394 Provisional Application was not available to the public under 37 C.F.R. §
`
`1.14(a)(1)(vi) and (c) for any period after the Konda ‘756 PCT was published on
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`September 12, 2008, because Patent Owner never gave permission to anyone, and
`
`no access was granted under 37 C.F.R. § 1.14(i). Accordingly, Patent Owner
`
`respectfully submits that the disclosure of the ’394 Provisional Application was
`
`not prior art as of September 12, 2008 when the Konda ’756 PCT was published.
`
`Therefore, the Konda ‘756 PCT does not qualify as prior art to the ‘523 Patent.
`
`For this reason alone, the instituted Grounds 1, 2, and 3 are not valid and do not
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`Page 20 of 25
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`render unpatentable claims 1-48 of the ‘523 Patent. Accordingly, Patent Owner
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`requests that the Board deny Grounds 1, 2, and 3 in the Petition.
`
`V. CLAIM CONSTRUCTION
`
`Since Petitioner submitted that for purposes of this proceeding, no term requires
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`construction, Patent Owner reserves his rights at this time to contest any claim
`
`construction position that may be asserted by Petitioner at a later time.
`
`VI. CONCLUSION
`
`Dr. Chaudhary’s Declaration establishes that the Challenged Claims in the
`
`‘523 Patent are entitled to the benefit of the May 25, 2007 filing date of the ‘394
`
`Provisional Application. The Konda ‘756 PCT published on September 12, 2008
`
`which incorporated by reference the pending ‘394 Provisional Application is not
`
`prior art to the ‘523 Patent. Accordingly, Patent Owner submits that the instituted
`
`Grounds 1, 2, and 3 are not valid and do not render unpatentable Claims 1-48 of
`
`the ’523 Patent. Therefore, Patent Owner requests confirmation of the patentability
`
`of the claims.
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`
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`Dated: October 26, 2020
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`Respectfully submitted,
`
`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
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`Page 21 of 25
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`6278 Grand Oak Way
`San Jose, CA 95135
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`Patent Owner’s Response
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. §42.24, Patent Owner certifies that Patent Owner’s
`
`Response under 37 C.F.R. § 42.120, filed October 26, 2020, contains 21 pages and
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`4,632 words, per computer generated information.
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`
`
`
`Dated: October 26, 2020
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`
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`
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`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
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`Certificates - Page 1 of 25
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`IPR2020-0
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