Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 28, 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
`IPR2020-002621
`Patent 8,269,523 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R.§ 42.5
`
`
`
`
`1 The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 12
`Entered: May 28, 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
`IPR2020-002621
`Patent 8,269,523 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R.§ 42.5
`
`
`
`
`1 The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`
`A telephone conference was held on May 22, 2020 between counsel
`for Petitioner Flex Logix Technologies Inc., pro se Patent Owner Venkat
`Konda, and Judges Medley, Giannetti, and Kokoski. A court reporter was
`on the line, and a copy of the transcript was filed as Exhibit 1049 in each of
`the above-identified proceedings.2 The matters addressed during the call
`included (1) Petitioner’s request for authorization to file a reply to Patent
`Owner’s Preliminary Response; (2) Patent Owner’s objections to evidence
`filed with the Petitions; and (3) Petitioner’s filing of multiple Petitions
`challenging the same patent.
`Petitioner’s Request for Authorization to File a Reply
`Petitioner seeks a reply to address Patent Owner’s arguments
`regarding a pending reissue application that seeks reissue of U.S. Patent
`No. 8,269,523 B2 (“the ’523 patent”), which is the patent challenged in
`these proceedings. Patent Owner opposes Petitioner’s request.
`After considering the parties’ arguments (reflected in the reporter’s
`transcript), we determined that Petitioner did show good cause for a reply to
`address Patent Owner’s position that a denial of each Petition is warranted in
`light of the pending reissue application. Accordingly, we authorized
`Petitioner to file a reply, not to exceed three pages, by June 1, 2020. We
`also authorized Patent Owner to file a sur-reply, not to exceed three pages,
`by June 8, 2020. Patent Owner’s sur-reply is limited to responding to
`arguments made in Petitioner’s reply.
`
`2 This Order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
`2
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`
`During the call, Patent Owner confirmed that he had not notified the
`Central Reexamination Unit that the patent at issue in the pending reissue
`application is the subject of these Petitions. See 37 C.F.R. § 1.178(b) (“In
`any reissue application before the Office, the applicant must call to the
`attention of the Office any prior or concurrent proceedings in which the
`patent (for which reissue is requested) is or was involved, such as
`interferences or trials before the Patent Trial and Appeal Board, reissues,
`reexaminations, or litigations and the results of such proceedings.”). We
`informed Patent Owner that the Board will notify the Central Reexamination
`Unit of these proceedings.
`Patent Owner’s Evidentiary Objections
`On May 20, 2020, Patent Owner filed a paper entitled Patent Owner’s
`Objections to Evidence in each proceeding, in which Patent Owner objects
`to, and asks the Board to exclude, certain exhibits filed with the Petitions.
`We explained to Patent Owner that such evidentiary objections and requests
`to exclude evidence are not authorized at this point of the proceedings, and
`will be expunged from the record of each proceeding. We further explained
`that, pursuant to our rules, objections to evidence submitted during a
`preliminary proceeding (prior to institution of trial) must be served within
`ten business days of the institution of trial. 37 C.F.R. § 42.64(b)(1). We
`advised Patent Owner that the timeline for filing a motion to exclude
`evidence, which is necessary to preserve the objection (see id. § 42.64(c)),
`will be provided in the scheduling order that would accompany a decision to
`institute a trial in any of the proceedings. We also directed Patent Owner to
`
`3
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`our Consolidated Trial Practice Guide3 for guidance on how to challenge the
`admissibility of evidence during trial.
`Multiple Petitions
`On December 16, 2019, Petitioner filed the three Petitions in the
`instant proceedings, each challenging claims of U.S. Patent No. 8,569,523
`B2 (“the ’523 patent”). As the Consolidated Trial Practice Guide notes,
`Board experience demonstrates that one petition should be sufficient to
`challenge the claims of a patent in most situations, and that filing two or
`more petitions against the same patent at the same time “may place a
`substantial and unnecessary burden on the Board and the patent owner and
`could raise fairness, timing, and efficiency concerns.” Consolidated Trial
`Practice Guide, 59. The Board recognizes, however, that there may be some
`situations where more than one petition may be necessary, and, therefore,
`the Consolidated Trial Practice Guide instructs:
`
`To aid the Board in determining whether more than one
`petition is necessary, if a petitioner files two or more petitions
`challenging the same patent, then the petitioner should, in its
`petitions or in a separate paper filed with the petitions, identify:
`(1) a ranking of the petitions in the order in which it wishes the
`Board to consider the merits, if the Board uses its discretion to
`institute any of the petitions, and (2) a succinct explanation of
`the differences between the petitions, why the issues addressed
`by the differences are material, and why the Board should
`exercise its discretion to institute additional petitions if it
`
`
`3 Available at:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`
`4
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`
`identifies one petition that satisfies petitioner’s burden under
`35 U.S.C. § 314.
`Id. at 59–60.
`During the call, Petitioner confirmed that it did not provide this
`information in either the Petitions or in a separate paper filed with the
`Petitions. Accordingly, Petitioner is ordered to submit a Notice within seven
`days of this Order, not to exceed five pages, identifying its ranking of the
`three Petitions in the order in which it wishes the panel to consider the
`merits, providing an explanation of the differences between the Petitions,
`why those differences are material, and explaining why the Board should
`exercise its discretion to consider the additional Petitions, as described in the
`Consolidated Trial Practice Guide. The Board encourages the Petitioner to
`use a table to aid in identifying the similarities and differences between the
`Petitions.
`If he so chooses, Patent Owner may, within seven days of the filing of
`Petitioner’s Notice, provide a Response not to exceed five pages, stating his
`position with respect to any of the differences identified by Petitioner. In
`particular, Patent Owner should explain whether the differences identified
`by Petitioner are material and in dispute. If stating that the reasons are not
`material or in dispute, Patent Owner should clearly provide any necessary
`stipulations.
`Petitioner and Patent Owner are instructed to file the same paper in all
`three proceedings.
`
`5
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`
`Improper Email Communications
`On the day of the conference call, Patent Owner sent two emails to the
`Board containing communications between the parties that occurred prior to
`the conference call. The emails include substantive, off-the-record
`exchanges between the parties regarding their positions with respect to
`Petitioner’s request to file a reply to the Preliminary Response, and Patent
`Owner’s evidentiary objections. Patent Owner’s purpose in sending these
`emails to the Board is unclear.
`Patent Owner’s emails are improper communications with the Board.
`The Trials@uspto.gov mailbox should not be used for substantive
`communications with the Board. See PTAB End to End Technical Issue 2
`(describing the content of emails to Trials@uspto.gov), available at
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/patent-trial-and-appeal-board-end. Such emails are not entered
`into the record, and we do not consider the substantive arguments made
`therein. We direct Patent Owner’s attention to the Consolidated Trial
`Practice Guide for additional guidance regarding email communications
`with the Board, and note that emails to the Board generally should be
`confined to arranging conference calls and for other ministerial, non-
`substantive matters. Consolidated Trial Practice Guide, 9–10.
`We further remind Patent Owner that each party “must act with
`courtesy and decorum in all proceedings before the Board, including in
`interactions with other parties.” 37 C.F.R. § 42.1(c). Patent Owner does not
`exhibit proper decorum in his email communications with Petitioner
`
`6
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`submitted to the Board. We encourage Patent Owner to review the Board’s
`rules and Consolidated Practice Guide, and request Patent Owner refrain
`from such behavior in the future.
`
`It is therefore
`ORDERED that Petitioner is authorized to file a reply to Patent
`Owner’s Preliminary Response in each of the above-referenced proceedings,
`not to exceed three pages, by June 1, 2020;
`FURTHER ORDERED that Patent Owner is authorized to file a sur-
`reply to Petitioner’s Reply in each of the above-referenced proceedings, not
`to exceed three pages and limited to responding to Petitioner’s reply, by
`June 8, 2020;
`FURTHER ORDERED that within seven days of this Order,
`Petitioner shall file a Notice, consistent with the foregoing instructions;
`FURTHER ORDERED that, within seven days of Petitioner’s Notice,
`if he so chooses, Patent Owner may file a Response consistent with the
`foregoing instructions; and
`FURTHER ORDERED that Paper 9 in IPR2020-00260, Paper 10 in
`IPR2020-00261, and Paper 7 in IPR2020-00262 be expunged from the
`record of each proceedings.
`
`
`
`
`
`7
`
`
`
`IPR2020-00260
`IPR2020-00261
`IPR2020-00262
`Patent 8,269,523 B2
`
`
`PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Paul M. Anderson
`Arvind Jairam
`PAUL HASTINGS LLP
`PH-FlexLogix-Konda-IPR@paulhastings.com
`
`
`PATENT OWNER:
`
`Venkat Konda
`Venkat@kondatech.com
`
`
`
`
`
`
`8
`
`
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