Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 54
`Entered: June 28, 2021
`
`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
`Denying Patent Owner’s Request for
`Authorization to File a Motion for Sanctions
`37 C.F.R. § 42.5(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 54
`Entered: June 28, 2021
`
`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
`Denying Patent Owner’s Request for
`Authorization to File a Motion for Sanctions
`37 C.F.R. § 42.5(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
`
`
`
`I. INTRODUCTION
`A telephone conference was held on June 21, 2021 between counsel
`for Petitioner Flex Logix Technologies, Inc., pro se Patent Owner Venkat
`Konda, and Judges Medley, Giannetti, and Kokoski. The purpose of the call
`was to discuss Patent Owner’s request for authorization to file a motion for
`sanctions against Petitioner pursuant to 37 C.F.R. § 42.11(d)(2). For the
`reasons stated below, we deny Patent Owner’s request.
`
`II. BACKGROUND
`We instituted these inter partes reviews on August 3, 2020.2 In
`accordance with the Scheduling Order (Paper 23), Patent Owner filed a
`Patent Owner Response (Paper 33) and a Motion to Amend (Paper 34) in
`each proceeding on October 26, 2020 (Paper 33), and Petitioner filed an
`Opposition to Patent Owner’s Motion to Amend (Paper 37) and a Reply to
`the Patent Owner Response (Paper 38) on January 19, 2021. We issued
`Preliminary Guidance on Patent Owner’s Motion to Amend (Paper 40) on
`February 11, 2021. Patent Owner subsequently filed a Motion to Withdraw
`the Motion to Amend (Paper 41) on February 26, 2021, Petitioner filed an
`Opposition to the Motion to Withdraw (Paper 43) on March 5, 2021, and we
`granted Patent Owner’s Motion to Withdraw the Motion to Amend (Paper
`45) on March 17, 2021. Patent Owner filed a Sur-Reply (Paper 42) on
`March 2, 2021.
`
`
`2 IPR2020-00260, Paper 22; IPR2020-00261, Paper 22. Although the
`analysis herein applies to both proceedings, we refer to the papers and
`exhibits filed in IPR2020-00260 for expediency.
`
`2
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`
`Patent Owner also filed a Motion to Exclude the testimony of
`Petitioner’s declarant R. Jacob Baker, Ph.D., P.E. (Ex. 1002) on April 13,
`2021 (Paper 47), Petitioner filed an Opposition (Paper 50) on April 20, 2021,
`and Patent Owner filed a Reply (Paper 51) on April 27, 2021. Neither party
`requested an oral argument. See Paper 46. The statutory deadline for
`issuing final written decisions in these proceedings is August 3, 2021.
`
`III. DISCUSSION
`We have the authority to “impose sanctions against a party for
`misconduct.” 37 C.F.R. § 42.12. The imposition of sanctions, however, is
`not a routine event. See, e.g., Abrutyn v. Giovanniello, 15 F.3d 1048, 1053
`(Fed. Cir. 1994) (“[A] sanction which may sound the death knell for
`important [patent] rights and interests . . . should be used as a weapon of last,
`rather than first, resort.” (internal quotation marks and citations omitted)).
`The bar for authorizing the filing of a motion for sanctions generally is high.
`See Anderson Corp. v. GED Integrated Solutions, Inc., DER2017-00007,
`Paper 58 at 3 (PTAB Apr. 23, 2019) (Order denying respondent’s request for
`authorization to file a motion for sanctions).
`Patent Owner’s request for authorization to file a motion for sanctions
`against Petitioner relates to the testimony of Petitioner’s declarant,
`Dr. Baker, which Patent Owner contends advances misleading or frivolous
`arguments and misrepresents facts. This is not the first time Patent Owner
`has brought these issues to our attention. Patent Owner’s reasons for
`seeking authorization to file a motion for sanctions are essentially the same
`as the arguments that Patent Owner already presented and developed in the
`
`3
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`Response (Paper 33, 5–9) and Sur-Reply (Paper 42, 3–6), and in the briefing
`on Patent Owner’s Motion to Exclude Dr. Baker’s testimony (Papers 47,
`51). Indeed, Patent Owner’s criticism of Dr. Baker’s opinions goes back to
`the Preliminary Response (Paper 8, 9–14). During the June 21st conference
`call, Patent Owner did not identify any arguments regarding Dr. Baker’s
`testimony that have not already been developed in a number of different
`places in the record.
`Having considered the representations of the parties during the
`conference call, and considering the record in light of those representations,
`we are not persuaded that Patent Owner has demonstrated that the
`circumstances presented here meet the high bar for authorizing the filing of a
`motion for sanctions against Petitioner. We find that Patent Owner’s
`allegations of sanctionable conduct are based mainly on the premise that
`Dr. Baker is not qualified to testify as an expert in these proceedings. See
`Paper 47 (challenging Dr. Baker’s qualifications and alleged
`“misrepresentations” by Petitioner’s counsel and Dr. Baker). Patent
`Owner’s objections to, and criticism of, Dr. Baker’s testimony will be
`addressed in the final written decisions that will be entered no later than
`August 3, 2021. The final written decisions, therefore, will resolve the
`issues Patent Owner seeks to address in its proposed motions.
`Moreover, Patent Owner’s requested sanctions include termination of
`the proceedings. At this late stage, we see no sound reason to entertain a
`motion seeking such a drastic sanction, especially when the merits of
`Petitioner’s challenge will be resolved in final written decisions before the
`
`4
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`parties could fully brief, and the panel could decide, the requested sanctions
`motions.
`
`IV. ORDER
`It is ORDERED that, for the foregoing reasons, Patent Owner’s
`request for authorization to file motions for sanctions in IPR2020-00260 and
`IPR2020-00261 is denied.
`
`
`
`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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