Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 24
`Date: August 7, 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.
`
`ORDER
`Stay of Reissue Application No. 16/202,067
`37 C.F.R. § 42.3(a); 37 C.F.R. § 4.122(a)
`
`
`1 This Order addresses issues that are common to both cases. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 24
`Date: August 7, 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.
`
`ORDER
`Stay of Reissue Application No. 16/202,067
`37 C.F.R. § 42.3(a); 37 C.F.R. § 4.122(a)
`
`
`1 This Order addresses issues that are common to both cases. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`
`We recently instituted inter partes review as to claims 1, 15–18, 20–
`22, 32, and 47 of U.S. Patent No. 8,269,523 B2 (“the ’523 patent,” Ex. 1001)
`in IPR2020-00260 (Paper 22), and claims 2–7 and 11 in IPR2020-00261
`(Paper 22). On November 27, 2018, Patent Owner filed Reissue Application
`No. 16/202,067 (“the ’067 reissue application,” Ex. 2005) to reissue the ’523
`patent. For the reasons discussed below, we determine that it is appropriate
`to stay the examination of the ’067 reissue application.
`DISCUSSION
`The Director has authority to stay a reissue proceeding pursuant to
`35 U.S.C. § 315(d), which provides:
`(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections
`135(a), 251, and 252, and chapter 30, during the pendency of an
`inter partes review, if another proceeding or matter involving the
`patent is before the Office, the Director may determine the
`manner in which the inter partes review or other proceeding or
`matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.
`37 C.F.R. § 42.122(a) permits the Board to enter an order to effect a stay as
`follows:
`(a) Multiple Proceedings. Where another matter involving the
`patent is before the Office, the Board may during the pendency
`of the inter partes review enter any appropriate order regarding
`the additional matter including providing for the stay, transfer,
`consolidation, or termination of any such matter.
`See also 37 C.F.R. § 42.3 (providing the Board authority to exercise
`exclusive jurisdiction within the Office over an involved application and
`patent during the proceeding).
`
`2
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`
`Office guidance outlines a number of factors that the Board may
`consider in deciding whether to stay a parallel reissue proceeding involving
`the same patent. See Notice Regarding Options for Amendments by Patent
`Owner Through Reissue or Reexamination During a Pending AIA Trial
`Proceeding, 84 Fed. Reg. 16,654, 16,657 (Apr. 22, 2019) (“Notice
`Regarding Amendment Options”). These factors include: (1) whether the
`claims challenged in the AIA proceeding are the same as or depend from
`claims at issue in the reissue proceeding; (2) whether the same grounds of
`unpatentability or the same prior art are at issue in both proceedings;
`(3) whether the concurrent Office proceedings could result in inconsistent
`results; (4) whether amending the claim scope in one proceeding would
`affect the claim scope in the other proceeding; (5) the respective timeline,
`stage, and statutory deadlines of the proceedings; and (6) whether a decision
`in one proceeding would likely simplify issues in the concurrent Office
`proceeding, or render it moot. Id.
`Here, all of the claims challenged in the inter partes review
`proceedings are at issue in the ’067 reissue application. Ex. 2005, 8–32.2 At
`present, the ’067 reissue application has not been examined, and no Office
`Actions have issued. Because the same claims are at issue in these
`proceedings and the ’067 reissue application, allowing concurrent
`examination of the ’067 reissue application would duplicate the efforts of the
`Office as to those overlapping claims, and raises the possibility of
`
`
`2 We refer to the page numbers added to Ex. 2005 by Patent Owner in the
`top-left corner of the page.
`
`3
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`inconsistent results. Both proceedings are at an early stage, but these inter
`partes review proceedings are subject to a statutory deadline that requires a
`final decision be issued within one year of institution, absent a rare
`extension. 35 U.S.C. § 316(a). The examination of the ’067 reissue
`application, on the other hand, is not subject to a specific deadline.
`35 U.S.C. § 251. Moreover, any final written decision in these proceedings
`with respect to the patentability of the challenged claims may simplify the
`issues in the ’067 reissue application.
`The facts here present good cause warranting a stay. See Notice
`Regarding Amendment Options, 84 Fed. Reg. at 16,656 (“Good cause for
`staying a case may exist if, for example, an ongoing AIA proceeding, which
`is subject to statutory deadlines, is addressing the same or overlapping
`claims of a patent at issue in a parallel Office proceeding.”). We also note
`that, although no party has filed a separate motion requesting a stay of
`the ’067 reissue application, in a conference call with the Board held on
`May 22, 2020, Petitioner advocated for stay of the ’067 reissue application,
`and Patent Owner responded to that argument. See Ex. 1049 (conference
`call transcript). In any event, the Board “may impose a stay sua sponte.”
`Notice Regarding Amendment Options, 84 Fed. Reg. at 16,657.
`Based on the facts presented in these proceedings and in the ’067
`reissue application, the Board finds that there is good cause to exercise its
`discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a), and therefore
`orders that the examination of the ’067 reissue application be stayed pending
`the termination or completion of the these proceedings.
`
`4
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`
`ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that examination of Reissue Application No. 16/202,067,
`filed November 27, 2018, is stayed pending the termination or completion of
`IPR2020-00260 and IPR2020-00261; and
`FURTHER ORDERED that all due dates in Reissue Application
`No. 16/202,067 are tolled.
`
`
`
`
`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
`
`
`
`
`
`
`5
`
`
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