`
`November 15, 2018
`
`
`
`Via E-Mail and U.S. Mail
`
`Mr. Nitoj P. Singh
`Dhillon Law Group Inc.
`177 Post Street, Suite 700
`San Francisco, California 94108
`Re: Flex Logix Technologies, Inc. v. Venkat Konda and Konda
`Technologies, Inc.
`
`Writer’s Direct Contact
`(213) 683-9133
`(213) 683-5133 FAX
`steven.perry@mto.com
`Not for Settlement Purposes
`
`Not Confidential
`
`
`Dear Mr. Singh:
`On behalf of Flex Logix Technologies, Inc. (“Flex Logix”), I am writing to
`notify you and your clients in this matter that we have reviewed various patents
`issued to Venkat Konda and assigned to Konda Technologies, Inc. (collectively “the
`Konda Defendants”) and have determined that they are invalid, unenforceable, and
`in any event, not infringed by Flex Logix. The referenced patents are:
`8,269,523 (“the ’523 patent”)
`8,898,611 (“the ’611 patent”)
`9,374,322 (“the ’322 patent”)
`9,529,958 (“the ’958 patent”)
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`Mr. Nitoj P. Singh
`November 15, 2018
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`9,929,977 (“the ’977 patent”)
`10,003,553 (“the ’553 patent”)
`10,050,904 (“the ’904 patent”)
`We address some of the issues with these patents in this letter.
`The ’611, ’958, and ’904 Patents
`The ’611, ’958, and ’904 patents all attempt to claim priority to two
`provisional applications, namely U.S. Provisional Patent Application Nos.
`60/252,603 (“the ’603 provisional application”) and 60/252,609 (“the ’609
`provisional application”). Both the ’603 and the ’609 provisional applications
`appear to have been filed on October 19, 2009.
`The disclosure corresponding to the ’603 provisional application had been
`previously filed as U.S. Provisional Patent Application No. 60/984,724 (“the ’724
`provisional application”) on November 2, 2007. The disclosure corresponding to
`the ’609 provisional application was previously filed as U.S. Provisional Patent
`Application No. 61/018,494 (“the ’494 provisional application”) on January 1, 2008.
`Both the ’494 and ’724 provisional applications were incorporated by
`reference by PCT Application No. US2008/056064, which published on September
`12, 2008 as WO 2008/109756 A1. As a result of the incorporation by reference of
`the ’494 and ’724 provisional applications in WO 2008/109756 A1, the entirety of
`the disclosure in the ’494 and ’724 provisional applications was publicly available
`as of September 12, 2008. See 37 C.F.R. §1.14(a)(iv).
`As a consequence of that publication, the contents of the ’494 and ’724
`provisional applications were public more than a year before the ’603 and ’609
`provisional applications were filed, and WO 2008/109756 A1, the ’494 provisional
`application, and the ’724 provisional application are all prior art with respect to the
`’611, ’958, and ’904 patents. This is true even if the ’611, ’958, and ’904 patents
`are entitled to priority to the ’603 and ’609 provisional applications. Put differently,
`any subject matter claimed in the ’611, ’958, and ’904 patents that is supported by
`the disclosure of those patents was publicly disclosed in WO 2008/109756 A1,
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`Mr. Nitoj P. Singh
`November 15, 2018
`Page 3
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`which includes the disclosures of the ’494 provisional application and the ’724
`provisional application.
`In light of these facts, the Konda Defendants cannot argue in good faith that
`the ’611, ’958, and ’904 patents are valid or enforceable.
`The ’523 Patent
`The ’523 patent derives from U.S. Patent Application No. 12/601,275 (“the
`’275 application”) that claims priority to PCT Application No. US08/064605 (“the
`’605 PCT”), which in turn claims priority to U.S. Provisional Patent Application No.
`60/940,394 (“the ’394 provisional application”). The ’605 PCT was filed on May
`22, 2008. The ’275 application purports to be a national phase entry of the ’605
`PCT under 35 U.S.C. § 371. However, when the ’275 application was filed on
`November 22, 2009, the national filing fee required for a national application under
`35 U.S.C. § 371 was not paid. Instead, the national stage filing fee was paid a
`month later on December 22, 2009, which is after the ’605 PCT expired. Thus, the
`’275 application is not a valid national application derived from the ’605 PCT. In
`addition, Dr. Konda was aware that his late payment of the national stage filing fee
`rendered the ’275 application invalid, and thus he did not comply with his duty of
`candor to the Patent Office. As a result, the ’523 patent is also unenforceable
`because of inequitable conduct.
`Moreover, the ’394 provisional application, to which the ’523 patent purports
`to claim priority, was incorporated by reference in WO 2008/109756 A1. As noted
`above, WO 2008/109756 A1 also incorporated the ’494 and ’724 provisional patent
`applications by reference and was published on September 12, 2008. Because the
`’275 application was not a valid § 371 national stage application derived from the
`’605 PCT, if the submissions corresponding to filing the ’275 application are
`somehow sufficient to constitute a utility patent application filing, the priority date
`for such an application is November 22, 2009 at best. Therefore WO 2008/109756
`A1, which includes the disclosure of the ’394 provisional, is prior art with respect to
`the ’523 patent. In light of these facts, the Konda Defendants cannot argue in good
`faith that the ’523 patent is valid and enforceable.
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`Mr. Nitoj P. Singh
`November 15, 2018
`Page 4
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`The ’322 and ’977 Patents
`All of the claims in the ’322 and ’977 patents recite “rings.” During
`prosecution of these patents, Dr. Konda defined “rings” to include both the feedback
`of forward connecting links to backward connecting links and the feedback of
`backward connecting links to forward connecting links. For example, during the
`prosecution of the application leading to the ’322 patent, Dr. Konda stated:
`
`
`Dr. Konda also stated the following in response to a rejection of the pending
`claims during prosecution of the application leading to the ’322 patent:
`
`
`
`In short, a product that does not include both the feedback of forward
`connecting links to backward connecting links and the feedback of backward
`connecting links to forward connecting links would not include a ring as that term is
`used in the ’322 and ’977 patents. As the Konda Defendants undoubtedly know,
`Flex Logix’s products do not include such rings. The Konda Defendants cannot
`assert in good faith that Flex Logix’s products infringe the ’322 and ’977 patents.
`The ’553 Patent
`The earliest possible priority date for the ’553 patent is September 7, 2011.
`Even assuming that the claims of the ’553 patent are entitled to that September 7,
`2011 priority date, which they are not, WO 2008/109756 A1, which includes the
`entire disclosure of each of the ’494, ’724, and ’394 provisional applications, was
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`Mr. Nitoj P. Singh
`November 15, 2018
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`published September 12, 2008 and is prior art with respect to the subject matter of
`the ’553 patent. The claims of the ’553 patent do not include “rings” as recited in
`the claims of the ’322 and ’977 patents, and the claims of the ’553 patent are very
`similar in scope to the claims of the ’904 patent. As such, the disclosure of WO
`2008/109756 A1 would apply as prior art to the claims of the ’553 patent in the
`same manner that such disclosure applies to the ’904 patent claims. Given these
`facts, the Konda Defendants cannot argue in good faith that the ’553 patent is valid
`or enforceable.
`
`Conclusion
`In light of the foregoing analysis, we renew our demand that the Konda
`Defendants cease their dissemination of false statements on the Kondatech.com
`website and elsewhere that Flex Logix was founded based on “stolen interconnect IP
`from Konda Technologies,” as well as all similar statements. See Complaint at
`¶¶ 13-16.
`In addition, we are through this letter putting the Konda Defendants and their
`counsel on notice that any effort to enforce any of the patents described herein in the
`pending lawsuit or elsewhere against Flex Logix would violate Rule 11 of the
`Federal Rules of Civil Procedure and would trigger the remedies available under
`that rule and under 35 U.S.C. § 285. If such patent claims are asserted, Flex Logix
`intends to seek recovery of all of its attorneys’ fees and costs from the Konda
`Defendants and their counsel. As the Federal Circuit explained in View
`Engineering, Inc. v. Robotic Vision Systems, 208 F.3d 981, 986 (Fed. Cir. 2000), in
`the course of affirming such an award:
`“A patent suit can be an expensive proposition. Defending against
`baseless claims of infringement subjects the alleged infringer to undue
`costs—precisely the scenario Rule 11 contemplates. Performing a pre-
`filing assessment of the basis of each infringement claim is, therefore,
`extremely important. In bringing a claim of infringement, the patent
`holder, if challenged, must be prepared to demonstrate to both the court
`and the alleged infringer exactly why it believed before filing the claim
`that it had a reasonable chance of proving infringement. Failure to do
`so should ordinarily result in the district court expressing its broad
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`MUNGER, TOLLES & OLSON LLP
`
`Mr. Nitoj P. Singh
`November 15, 2018
`Page 6
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`Not for Settlement Purposes
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`discretion in favor of Rule 11 sanctions, at least in the absence of a
`sound excuse or considerable mitigating circumstances."
`
`Flex Logix reserves all rights available to it under Federal and California law.
`
`SMP:ei
`
`40587129.2
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