PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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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 PGR2019-00042
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`Patent 10,003,553 B2
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`_________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICE TO
`AUGUST 19, 2019 BOARD ORDER ON THE CONDUCT OF
`PROCEEDING UNDER 37 C.F.R. § 42.5
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`Page 1 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`Patent 10,003,553
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`Paper No. 12
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`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 10,003,553 B2
`
`_________
`
`
`
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`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICE TO
`AUGUST 19, 2019 BOARD ORDER ON THE CONDUCT OF
`PROCEEDING UNDER 37 C.F.R. § 42.5
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`Page 1 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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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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`THREE PGR PETITIONS ON THE ‘553 PATENT ARE NOT
`NECESSARY ................................................................................................. 1
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`III. CONCLUSION .............................................................................................. 5
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`Page ii of 8
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`Page 2 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`I.
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`INTRODUCTION
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`Paper No. 12
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`On the August 19, 2019 Board Order, Patent Owner submits this same response
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`in all the three proceedings of Post Grant Review of U.S. Patent No. 10,003,553
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`(“the ’553 patent”): PGR2019-00037 (Paper 1, “Petition 1”), PGR2019-00040
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`(Paper 1, “Petition 2”), and PGR2019-00042 (Paper 1, “Petition 3”).
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`II. THREE PGR PETITIONS ON THE ‘553 PATENT ARE NOT
`NECESSARY
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`Patent Owner is confused. As clearly shown in Patent Owner’s Preliminary
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`Responses, the ‘553 patent is PGR-ineligible in view of prior decisions of the
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`Board. Nevertheless, Patent Owner responds as follows.
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`1. In order to avoid duplication of effort by the Board, Patent Owner hereby
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`states that his response to the Board’s August 19, 2019 Order in each of Cases
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`PGR2019-00037, PGR2019-00040, and PGR2019-00042 is identical. Hence, the
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`Board needs to review only one of Patent Owner’s responses filed in the Petitions
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`to glean the Patent Owner’s response to the Board’s August 19, 2019 Order.
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`2. It appears clear that Petitioner to the Board’s August 19, 2019 Order used its
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`responses to delve into the merits of each of the petitions. Patent Owner
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`understands that such a maneuver was inappropriate, since Petitioner was not
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`permitted to respond to Patent Owner’s Preliminary Responses to Petitioner’s
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`Petitions on the issue of purportedly PGR-eligibility. Patent Owner strongly
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`objects to Petitioner’s arguments purporting to support the merits of its Petitions in
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`Page 1 of 8
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`Page 3 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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`its responses to the Board’s August 19, 2019 Order arguing, for example, on page
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`1 that Petitioner “…requests that the Board institute all three petitions” and “…all
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`three petitions are meritorious and justified as explained below….”
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`3. Patent Owner maintains his position that Petitioner’s Petitions should be
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`dismissed because the ‘553 patent which claims priority to pre-AIA applications is
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`clearly PGR-ineligible as fully set forth in Patent Owner’s Preliminary Responses
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`filed on June 26, 2019 in response to Petitioner’s Petitions.
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`4. Nothing in this response by Patent Owner should be considered as an
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`admission or a waiver of any of the substantive responses in Patent Owner’s
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`Preliminary Responses to Petitioner’s Petitions showing PGR-ineligibility.
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`5. Without prejudice to his arguments that the ‘553 patent is PGR-ineligible, in
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`response to Petitioner’s arguments, Patent Owner concurs with Petitioner’s
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`“ranking,” for the reason that if a PGR proceeds, which should not happen due to
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`PGR-ineligibility, it is logical that a review of the claims of the ‘553 patent under
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`35 U.S.C. § 112 (“§ 112 ”) should proceed before any assessment of the validity of
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`the claims were to be undertaken under 35 U.S.C. § 102 (“§ 102 ”) or 35 U.S.C. §
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`103 (“§ 103 ”).
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`For this reason only one Petition is needed, as the claim analysis would inform
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`the novelty and non-obviousness of the claims of the ‘553 patent. However, at
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`most two Petitions would be needed, one to consider the issues under § 112 and the
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`Page 2 of 8
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`Page 4 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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`other to consider §§ 102 and 103 issues. But since an understanding of the claims
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`after a § 112 analysis, including any amendment that would be made by Patent
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`Owner, would be important to analyzing §§ 102 and 103 issues, there should be
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`only one Petition, or at most two Petitions, but certainly not three Petitions. That
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`would be extremely inefficient and costly and should be avoided for the reasons at
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`the core of the Board’s August 19, 2019 Order.
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`6. Patent Owner objects to Petitioner’s contention regarding the Petitions that
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`“…the patent owner has asserted a large number of claims in litigation.”1 See, page
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`2 of Petitioner’s Notices to the Board’s August 19, 2019 Order. Here, there is one
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`patent, the ‘553 patent, only three independent claims, and a total of only 20
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`claims, which required only the basic USPTO application fee when the application
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`for the ‘553 patent was filed. The table on page 1 of Petitioner’s Notices to the
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`Board’s August 19, 2019 Order shows that there are only 20 claims challenged
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`under § 112 and only 17 claims challenged under §§ 102 and/or 103. In fact,
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`Petitioner admits that there are only 20 claims at issue. See, page 3, line 2 of
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`Petitioner’s Notices to the Board’s August 19, 2019 Order (“Petitioner challenges
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`all twenty claims of the ‘553 patent under § 112.”).
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`1 The Petitions were filed while Konda Technologies Inc. v. Flex Logix
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`Technologies, Inc., No. 5:18- cv-07581-LHK (N.D. Cal.) was pending.
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`Page 3 of 8
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`Page 5 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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`7. Petitioner’s outlandish contention on page 2 of Petitioner’s Notices to the
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`Board’s August 19, 2019 Order, that “…PO’s admissions in the Preliminary
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`Responses simplify the issues that will be contested after institution” is pure
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`fantasy. Patent Owner made no “admissions” in his Preliminary Responses.
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`8. Petitioner’s Notices to the Board’s August 19, 2019 Order are wholly
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`inappropriate in making the statement on page 4 that “PO has not disputed
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`Petitioner’s analysis of Wong in Petition 2, and Petitioner should be availed the
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`opportunity to further highlight any prior misstatements during trial.” Petitioner
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`appears to assume that Petitioner has demonstrated PGR-eligibility, which is
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`certainly not the case, and cannot be the case in view of previous decisions by the
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`board on PGR eligibility as clearly shown in Patent Owner’s Preliminary
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`Responses. Any comments by Petitioner regarding the merits are strenuously
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`objected to by Patent Owner2. Similarly, the statement on page 4 of Petitioner’s
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`Notices to the Board’s August 19, 2019 Order, that “While PO had the opportunity
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`to narrow the issues and stipulate to the September 12, 2008 public availability
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`2 In the March 26, 2019 Notice of Filing, on page 1 it was clearly instructed
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`that “The preliminary response is limited to setting forth the reasons why the
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`requested review should not be instituted.” Accordingly Patent Owner limited
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`PO’s Preliminary Responses only to the PGR-ineligibility of the ‘553 patent.
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`Page 4 of 8
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`Page 6 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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`date, PO did not do so in its POPR….,” not only addresses the merits but in so
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`doing concocts an issue that has never previously existed, and which Patent Owner
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`disputes and would not stipulate to.
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`9. Petitioner’s argument that applying the guidelines of the updated Trial
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`Practice Guide would violate the Administrative Procedures Act and deny
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`Petitioner due process is not well-taken. The updated Trial Practice Guide simply
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`adopts a common sense approach that should have been taken by Petitioner in the
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`first place. After all, Petitioner admits it could have undertaken to “structure its
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`petitions differently,” under such a common-sense approach. See, page 5 of
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`Petitioner’s Notices to the Board’s August 19, 2019 Order.
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`III. CONCLUSION
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`In conclusion, all of the supposed reasons argued by Petitioner are unpersuasive
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`to explain why more than one Petition is required. Having more than one Petition
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`would proliferate the number of records in the Office and complicate the filings by
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`the parties and the Office and cut against the grain of the common sense policies
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`embodied in the updated Trial Practice Guide
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`Date: September 3, 2019
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`Page 5 of 8
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`Respectfully submitted,
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`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
`6278 Grand Oak Way
`San Jose, CA 95135
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`Page 7 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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`PGR2019-00042
`Patent 10,003,553
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`Paper No. 12
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4) and consent of the Petitioner, I certify that
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`on September 2, 2019, a true and correct copy of Patent Owner’s Response to
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`Petition’s Notice to the August 19, 2019 Board Order was served on counsel of
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`record for Petitioner by email to PH-FlexLogix-Konda-PGR@paulhastings.com
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`/Venkat Konda/
`Venkat Konda
`Pro Se Counsel
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`Page 6 of 8
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`Page 8 of 8 IPR2020-00262
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`VENKAT KONDA EXHIBIT 2016
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