UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`FLEX LOGIX TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`VENKAT KONDA
`Patent Owner
`
`____________________
`
`Case PGR2019-00042
`Patent No. 10,003,553
`____________________
`
`PETITIONER’S RESPONSE TO AUGUST 19, 2019 ORDER
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`
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`Page 1 of 9 IPR2020-00261
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`VENKAT KONDA EXHIBIT 2015
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`
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`FLEX LOGIX TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`VENKAT KONDA
`Patent Owner
`
`____________________
`
`Case PGR2019-00042
`Patent No. 10,003,553
`____________________
`
`PETITIONER’S RESPONSE TO AUGUST 19, 2019 ORDER
`
`
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`Page 1 of 9 IPR2020-00261
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`VENKAT KONDA EXHIBIT 2015
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`Case PGR2019-00042
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`TABLE OF CONTENTS
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`
`INTRODUCTION ........................................................................................... 1
`I.
`RANKING ....................................................................................................... 1
`II.
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED ....................... 2
`A.
`Each Petition Includes Unique Issues That Merit a Trial ..................... 3
`B.
`The Administrative Procedures Act and Due Process Weigh
`Against Discretionary Denial of Petitions 1, 2, and 3 ........................... 5
`IV. CONCLUSION ................................................................................................ 5
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`i
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`Page 2 of 9 IPR2020-00261
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`VENKAT KONDA EXHIBIT 2015
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`TABLE OF AUTHORITIES
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`Case PGR2019-00042
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` Page(s)
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`Statutes
`35 U.S.C. § 102 .......................................................................................................... 2
`35 U.S.C. § 103 .......................................................................................................... 2
`35 U.S.C. § 112 .............................................................................................. 1, 2, 3, 4
`35 U.S.C. § 314(a) ..................................................................................................... 5
`35 U.S.C. § 325(d) ..................................................................................................... 5
`Administrative Procedures Act .................................................................................. 5
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`ii
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`Page 3 of 9 IPR2020-00261
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`Case PGR2019-00042
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`I.
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`INTRODUCTION
`Petitioner provides this response to the Board’s Order dated August 19, 2019
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`(Paper 9) and requests that the Board institute all three petitions.
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`II. RANKING
`Petitioner concurrently filed three petitions, challenging U.S. Patent No.
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`10,003,553 (“the ’553 patent”): PGR2019-00037 (Paper 1, “Petition 1”), -00040
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`(Paper 1, “Petition 2”), and -00042 (Paper 1, “Petition 3”). While all three petitions
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`are meritorious and justified as explained below, Petitioner requests that the Board
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`consider the petitions in the following order:
`
`Rank Petition Challenged
`Claims
`Petition 1 1-20
`
`1
`
`2
`
`3
`
`Petition 2 1-7, 9-15, and
`17-19
`
`Petition 3 1-7, 9-15, and
`17-19
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`
`
`Grounds
`
`Ground 1: Challenged Claims Are Indefinite
`under §112
`
`Ground 2: Challenged Claims Do Not Satisfy
`Written Description Requirement under
`§112
`
`Ground 3: Challenged Claims Do Not Satisfy
`Enablement Requirement under §112
`
`Ground 1: Challenged Claims Anticipated by
`Wong
`
`Ground 1: Challenged Claims Anticipated by
`Konda ’756 PCT
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`Ground 2: Challenged Claims Obvious over
`Konda ’756 PCT and Wong
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`1
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`Page 4 of 9 IPR2020-00261
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`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED
`At the time of filing of the petitions, the ’553 patent was asserted against
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`Petitioner in Konda Technologies Inc. v. Flex Logix Technologies, Inc., No. 5:18-
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`cv-07581-LHK (N.D. Cal.). Patent Owner (“PO”) has since voluntarily dismissed
`
`this litigation without prejudice. In the litigation, PO asserted that one or more
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`claims of the ’553 patent was infringed. Given PO’s broad assertion of infringement
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`that did not narrow the set of asserted claims in litigation, the current circumstances
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`are consistent with the updated Trial Practice Guide, which states that “the Board
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`recognizes that there may be circumstances in which more than one petition may be
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`necessary, including, for example, when the patent owner has asserted a large
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`number of claims in litigation.” Trial Practice Guide Update (July 2019) at 26.
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`As explained in the petitions and below, the three petitions were filed because
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`the claims are invalid at least under 35 U.S.C. §§ 112, 102, and 103. See Petition 1,
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`1-2; Petition 2, 1-2; Petition 3, 1-2. Petitioner submits that consideration of all three
`
`of the petitions would not be a significant burden given the claims apparent non-
`
`compliance with § 112 (Petition 1) and the clear mapping of the prior art to the
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`claims (Petitions 2-3). As also discussed below, PO’s admissions in the Preliminary
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`Responses simplify the issues that will be contested after institution. For at least
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`these reasons, Petitioner submits that all three petitions should be instituted.
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`2
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`Page 5 of 9 IPR2020-00261
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`A. Each Petition Includes Unique Issues That Merit a Trial
`Petition 1 challenges all twenty claims of the ’553 patent under § 112. The
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`claims are rife with indefiniteness issues, lack written description support, and are
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`not enabled. Petition 1, 1-2. Given the number of claims, the length thereof (totaling
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`about 2,086 words), and the number of grounds under § 112 alone, Petitioner could
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`not have raised both the § 112 grounds and prior art grounds in the same petition.
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`Similarly, the length of the claims and requirement to demonstrate PGR eligibility
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`(See, e.g., Petition 1, 15-29; Petition 2, 17-33; Petition 3, 16-31) prevented Petitioner
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`from combining all the prior art grounds in a single petition.1
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`Petitioner ranks Petition 1 first because the § 112 grounds set forth therein
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`may be dispositive and address all 20 claims. Indeed, there are other pending related
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`
`
` 1
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` PO does not contest that the “flip-flop” recited in claim 9 is never mentioned in the
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`pre-AIA applications to which the ’553 application claims priority. Instead, PO
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`argues that a flip-flop is “an obvious circuit” that is “an equivalent of an SRAM cell
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`or Flash Cell” and that “Controlling/Configuring Switches or Multiplexers by a Flip-
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`flop [as opposed to the disclosed SRAM and Flash cells] is a well-known substitute
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`to a POSITA.” Paper 5, 2, 16-20. Based on this concession, PGR-eligibility is
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`readily apparent, thereby reducing the overall burden on the Board in addressing all
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`of the petitions.
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`3
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`applications with claims under examination with similar § 112 issues. Petition 1,
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`38-39. Resolving the § 112 issues with respect to the ’553 patent may avoid the
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`need to revisit them in future proceedings involving the pending applications.
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`While the § 112 issues of Petition 1 are ranked highest, the prior art grounds
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`set forth in each of Petitions 2 and 3 are equally important for the Board to consider.
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`For example, Wong’s disclosure was not characterized correctly in a related patent
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`application where the Examiner did not have the benefit of expert testimony.
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`Petition 2, 6-7. Thus, Petition 2 warrants institution as the Board should consider
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`Wong’s disclosure as it relates to the challenged claims in Petition 2 in light of the
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`supporting expert testimony. Id. PO has not disputed Petitioner’s analysis of Wong
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`in Petition 2, and Petitioner should be availed the opportunity to further highlight
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`any prior misstatements during trial. See generally PGR2019-00040, Paper 5.
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`Petition 3 relies on disclosure of the ’724 provisional application
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`(incorporated by reference in Konda ’756 PCT) and is premised on the public
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`availability of the ’724 provisional application as of the September 12, 2008
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`publication date of Konda ’756 PCT. Petition 3, 33-35. While PO had the
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`opportunity to narrow the issues and stipulate to the September 12, 2008 public
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`availability date, PO did not do so in its POPR (PGR2019-00042, Paper 6). At a
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`minimum, the Board should institute Petition 3 to confirm the public availability of
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`the ’724 provisional application. Moreover, given PO is the named inventor of the
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`4
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`’724 application, the terminology and figures therein are substantially similar to the
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`concepts covered by the challenged claims. Thus, the Board may expect to expend
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`relatively less resources. The ’724 provisional application’s September 12, 2008
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`public availability date may also be dispositive with respect to invalidating other
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`patents asserted by PO in litigation, thereby conserving the resources the Board, the
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`courts, and the PTO examining corps in related pending patent applications.
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`B.
`
`The Administrative Procedures Act and Due Process
`Weigh Against Discretionary Denial of Petitions 1, 2, and 3
`Given that Petitioner did not have notice before filing that ranking its petitions
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`would be required, both the Administrative Procedures Act and due process weigh
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`against denying institution of any one of these petitions under 35 U.S.C. §§ 314(a)
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`or 325(d). Indeed, the three petitions here do not constitute an abuse of the process
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`because no petitioner has previously filed any petition challenging the ’553 patent
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`and each of Petitions 1-3 is justified. Moreover, had Petitioner been given notice,
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`Petitioner would have had an opportunity to structure its petitions differently.
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`IV. CONCLUSION
`For the reasons given above, the Board should institute all three petitions.
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`Dated: August 26, 2019
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`Respectfully submitted,
`
`By:/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
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`5
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`Page 8 of 9 IPR2020-00261
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 26, 2019, I caused a true and correct copy of
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`the foregoing Petitioner’s Response to August 19, 2019 Order to be served via
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`electronic means on the Patent Owner at the following correspondence address of
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`record:
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`Venkat Konda
`6278 Grand Oak Way
`San Jose, CA 95135
`Venkat@kondatech.com
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`
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`Dated: August 26, 2019
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`Respectfully submitted,
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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`Page 9 of 9 IPR2020-00261
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`VENKAT KONDA EXHIBIT 2015
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