venkat konda

Patent Trials and Appeals Board

Sep 16, 2020

IPR2020-00261 (P.T.A.B. Sep. 16, 2020)

Trials@uspto.gov Paper No. 31
571-272-7822 Entered: September 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FLEX LOGIX TECHNOLOGIES, INC.,
Petitioner,

v.

VENKAT KONDA,
Patent Owner.
____________

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____________

Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Requests for Rehearing
of Decisions Granting Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

1 This Decision addresses issues that are the same in both proceedings. The
parties are not authorized to use this style heading for any subsequent
papers.
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I. INTRODUCTION
Venkat Konda (“Patent Owner”) filed Requests for Rehearing, along
with Exhibits 2025–2027, of our Decisions instituting inter partes review of
claims 1–7, 11, 15–18, 20–22, 32, and 47 (“the challenged claims”) of U.S.
Patent No. 8,269,523 B2 (Ex. 1001, “the ’523 patent”) in each of the above-
identified proceedings.2 For the reasons that follow, Patent Owner’s
Requests for Rehearing are denied.
II. ANALYSIS
A request for rehearing must identify specifically all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.
37 C.F.R. § 42.71(d). Patent Owner, as the party challenging the Decisions,
has the burden of showing that the Decisions should be modified. Id. When
rehearing a decision on a petition, the Board reviews the decision for an
abuse of discretion. Id. § 42.71(c). An abuse of discretion may arise if a
decision is based on an erroneous interpretation of the law, if a factual
finding is not supported by substantial evidence, or if an unreasonable
judgment is made in weighing relevant factors. In re Gartside,
203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
In its Rehearing Request, Patent Owner argues that the Board:
(1) erred in determining that testimony from Petitioner’s declarant,
Dr. Baker, should not be disregarded (Req. 6–8); (2) erred in determining

2 See IPR2020-00260, Papers 22 (“Decision” or “Dec.”) and 26 (“Request”
or “Req.”) and IPR2020-00261, Papers 22 and 28. Although the analysis
herein applies to both proceedings, we refer to the papers and exhibits filed
in IPR2020-00260 for convenience.
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that the challenged claims are not entitled to claim priority3 to the May 25,
2007 filing date of the ’394 provisional, or the May 22, 2008 filing date of
the ’605 PCT (id. at 8–11); and (3) erred in determining that the ’394
provisional became publicly available as of the date the ’756 PCT4
published (id. at 11–14).
We have reviewed Patent Owner’s Request and carefully considered
the arguments presented. For the following reasons, we are not persuaded
that we abused our discretion in granting institution of inter partes review of
the challenged claims of the ’523 patent.
A. Exhibits 2025–2027
With the Rehearing Request, Patent Owner submitted Exhibits 2025–
2027. Exhibit 2025 is a Declaration of Vipin Chaudhary, Ph.D., and Exhibit
2026 is Dr. Chaudhary’s CV. Exhibit 2027 is a PTO form (highlighted by
Patent Owner) for requesting access to abandoned applications. As an initial
matter, we address whether Patent Owner followed the proper procedure for
admitting Exhibits 2025–2027 into the record in these proceedings.
Exhibits 2025–2027 were not of record when the Decisions were entered on
August 3, 2020. Compare Paper 26 (Patent Owner’s exhibit list submitted

3 The ’523 patent issued from U.S. Patent Application Serial No. 12/601,275
(“the ’275 application”), which was filed on November 22, 2009 as the
national phase entry of PCT Application No. PCT/US2008/064605
(“the ’605 PCT”), filed on May 22, 2008. Ex. 1001, codes (21), (22);
Ex. 1004, 150. The ’275 application claims priority to Provisional
Application No. 60/940,394 (“the ’394 provisional”), which was filed on
May 25, 2007. Ex. 1001, code (60).
4 Published PCT Application No. WO 2008/109756, published on
September 12, 2008.
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on August 11, 2020) with Paper 19 (Patent Owner’s exhibit list submitted on
June 11, 2020).
Rule 42.71(d) permits “[a] party dissatisfied with a decision . . . [to]
file a single request for rehearing without prior authorization from the
Board.” 37 C.F.R. § 42.71(d). Although this rule does not explicitly
address whether the requesting party may also file new evidence with its
rehearing request, the Consolidated Trial Practice Guide5 is instructive on
the matter. In discussing the procedures applicable to a request for
rehearing, the Consolidated Trial Practice Guide highlights the Board’s
precedential decision in Huawei Device Co., Ltd. v. Optis Cellular Tech.,
LLC, IPR2018-00816, Paper 19 at 4 (PTAB Jan. 8, 2019), which states:
Ideally, a party seeking to admit new evidence with a rehearing
request would request a conference call with the Board prior to
filing such a request so that it could argue “good cause” exists
for admitting new evidence. Alternatively, a party may argue
“good cause” exists in the rehearing itself.
Consolidated Trial Practice Guide, 90. The Consolidated Trial Practice
Guide goes on to state that “[a]bsent a showing of ‘good cause’ prior to
filing the request for rehearing or in the request for rehearing itself, new
evidence will not be admitted.” Id. (citing Huawei, Paper 19 at 4).
Here, Patent Owner did not request a conference call with the Board
prior to submitting Exhibits 2025–2027 with its Request, nor did Patent
Owner explain why these exhibits should be admitted in the Request itself.
See generally Req. 1–12.

5 Available at:
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
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Petitioner filed objections to the new exhibits. Paper 28. We note
that, in response to Petitioner’s objections,, Patent Owner filed a paper titled
“Patent Owner Venkat Konda’s Supplemental Evidence in Response to
Petitioner’s Objections to Patent Owner’s Exhibits Pursuant to 37 C.F.R.
§ 42.64(b)(2).” Paper 30. Although styled as “supplemental evidence,” this
paper contains no evidence, but instead contains arguments that Patent
Owner established good cause for the consideration of Exhibits 2025–2027
on rehearing. See id. at 1–6. This additional argument is not an appropriate
use of supplemental evidence. Moreover, Patent Owner did not request or
receive authorization to file additional arguments relating to the
admissibility of Exhibits 2025–2027 with the Request for Rehearing, and for
this reason we do not consider those arguments now.
Therefore, because Patent Owner failed to provide a showing of good
cause prior to filing the Request or in the Request itself, Exhibits 2025–2027
are not entitled to consideration. Notwithstanding Patent Owner’s lack of
compliance with our rules in submitting Exhibits 2025–2027, we do not
expunge the exhibits. Instead, Patent Owner may either: (1) withdraw
Exhibits 2025–2027 from the record, or (2) request that we consider Exhibits
2025–2027 in connection with its Patent Owner Response.
B. Dr. Baker’s Testimony
Patent Owner argues that “Dr. Baker’s declaration in support of the
Petition presented a flawed definition of a person of ordinary skill in the
art,” and “[i]t is apparent that the Decision did not consider (or did not give
appropriate weight to) Venkat Konda’s Declaration and that the Board
completely relied on Dr. Baker’s testimony in the Decision.” Req. 6 (citing
Paper 8 (“Prelim. Resp.), 6–15). Patent Owner argues that “the Board
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misapprehended that ‘integrated networks’ is a relevant field,’” and, argues
that, “[t]o the contrary, ‘integrated circuits’ and ‘interconnection networks’
are the relevant fields.” Id. at 6–7. Patent Owner further argues that the
Preliminary Response “pointed out that Petitioner defined ‘networks’ as a
relevant field for a [person of ordinary skill in the art], whereas Dr. Baker in
his declaration stated his experience is in ‘memory devices,’” and,
“[t]herefore, Dr. Baker does not qualify as a [person of ordinary skill in the
art], and his declaration is inadmissible.” Id. at 7 (citing Prelim. Resp. 6)
(emphasis omitted). According to Patent Owner, “Dr. Baker has no
qualifications in the ‘pertinent field’ since he has no expertise in
interconnection networks.” Id. at 7–8 (emphasis omitted).
Patent Owner has made this argument previously and we addressed it
in our Decision on Institution. In the Decision, we directly addressed Patent
Owner’s arguments that Dr. Baker is not qualified to testify in this
proceeding because he is neither a person of ordinary skill in the art, nor an
expert in the relevant art. See Dec. 7–8. In particular, we explained that
there is no requirement “that the expert’s experience perfectly match the
relevant field, or that the expert is a person of ordinary skill in the art.” Id.
at 7. We also explained that
Dr. Baker testifies as to his education and qualifications and
provides his curriculum vitae. See Ex. 1002 ¶¶ 3–12; Ex. 1003.
At this preliminary stage, we cannot say that Dr. Baker’s
scientific, technical, and other specialized knowledge will not be
helpful in understanding the evidence. See Fed. R. Evid. 702(a).
On this record, we are not persuaded that Dr. Baker’s testimony
should be disregarded.
Id. at 8. Therefore, even if Dr. Baker were not a person of ordinary skill in
the art as Patent Owner contends, it does not follow that he is unqualified to
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testify in these proceedings. Nothing was misapprehended or overlooked in
considering Dr. Baker’s testimony.
We are also not persuaded that we overlooked the Konda Declaration
(Ex. 2001). In the Preliminary Response, Patent Owner cited the Konda
Declaration when discussing the experience and qualifications of the named
inventor of the ’523 patent. Prelim. Resp. 8–9. The education level of the
inventor, however, is just one of several factors that we may consider in
determining the level of ordinary skill in the art. See Daiichi Sankyo Co.,
Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (enumerating six
factors that “may be considered in determining the level of ordinary skill in
the art” (quoting Evt’l Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696
(Fed. Cir. 1983))). And, as Patent Owner noted in the Preliminary
Response, “these factors are merely a guide to determining the level of
ordinary skill in the art.” Prelim. Resp. 7–8 (citing Daiichi Sankyo, 501 F.3d
at 1256).
In any event, in the Decision we also considered Petitioner’s and
Patent Owner’s proposed definitions of the level of ordinary skill in the art,
noted the differences between them, and stated that “[o]ur determination
regarding Petitioner’s challenge does not turn on the differences between
Petitioner’s and Patent Owner’s definitions.” Dec. 7. Therefore, our
evaluation of Petitioner’s challenges and Dr. Baker’s testimony in support
thereof would have been the same under Petitioner’s and Patent Owner’s
proposed definitions of the level of ordinary skill in the art. See id. (“[W]e
note that our conclusions would be same under either definition.”).
Accordingly, we are not persuaded that we misapprehended or
overlooked Patent Owner’s arguments or evidence in the Preliminary
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Response. Instead, we evaluated the record and determined that, at this
stage of the proceeding, it does not support Patent Owner’s argument that we
should disregard Dr. Baker’s testimony. The parties will have the
opportunity to further develop the record on these issues during trial, and the
Board will evaluate the fully-developed record at the close of the evidence.
C. Effective Filing Date
Patent Owner next argues that the “Board overlooked Dr. Baker’s
errors and Patent Owner’s arguments submitted in Patent Owner’s
Preliminary [R]esponse” in determining that the challenged claims are not
entitled to the benefit of the filing date of the ’394 provisional or the ’605
PCT. Req. 6 (citing Prelim. Resp. 15–28). Specifically, Patent Owner
argues that a person of ordinary skill in the art “would understand that when
there is one stage in a butterfly fat tree network as illustrated in FIG. 2A1–3
of the priority applications, it is the first stage as well as the last stage,” and
“has neither a preceding stage nor a succeeding stage, and so no forward
connecting links are connected to the stage and no backward connecting
links are connected from the stage.” Id. at 8–9. Therefore, according to
Patent Owner, a person of ordinary skill in the art “reviewing the ’605 PCT
and the ’394 Provisional would have understood that the named inventor
was in possession of the subject matter recited in claim 1, particularly with
respect to ‘said routing network comprising a plurality of stages y, in each
sub-integrated circuit block, starting from the lowest stage of 1 to the highest
stage of y, where y≧1.’” Id. at 9.
In essence, Patent Owner disagrees with our decision on this issue. A
request for rehearing, however, is not an opportunity to merely disagree with
the Board’s assessment of the arguments or weighing of the evidence.
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Moreover, in the Decision, we directly addressed Patent Owner’s argument
with respect to whether the ’394 provisional and ’605 PCT provided support
for the claim limitation “said routing network comprising a plurality of
stages y, in each sub-integrated circuit block, starting from the lowest stage
of 1 to the highest stage of y, where y≧1” when y=1. Dec. 14. In particular,
we found that
Patent Owner’s arguments, as we understand them, are directed
only to the disclosure of a network with only one stage (y=1).
[Prelim. Resp.] at 15–39. Patent Owner does not address the
other limitations of claim 1, and does not point to any disclosures
in the priority applications that describe a sub-integrated circuit
block with only one stage that also comprises pluralities of
forward connecting links and backward connecting links as
required by claim 1.
Id. Thus, we did not overlook Patent Owner’s arguments, but rather
evaluated the disclosures in the ’394 provisional and ’605 PCT and
determined, on the record at this stage of the proceeding, that they do not
provide sufficient written description support for the challenged claims. The
parties will have the opportunity to further develop the record on these
issues during trial, and the Board will evaluate the fully-developed record at
the close of the evidence.
D. Public Availability of the ’394 provisional
Patent Owner argues that we “erred in finding the ’394 provisional
incorporated by reference in the ’756 PCT became open to the public for
inspection (i.e., the application alone and not the entire file history) on
September 12, 2008.” Req. 3. Patent Owner argues that, “without a power
to inspect under 37 C.F.R. § 1.14(c), the public cannot obtain access to a
pending application under 37 C.F.R. § 1.14(a)(1) as stated” on pages 40–44
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of the Preliminary Response. Id. at 10 (emphasis omitted). Patent Owner
argues that “Patent Owner never gave permission to anyone” to access a
copy of the ’394 provisional, and “no access was granted under 37 C.F.R.
§ 1.14(i).” Id. at 12.
In the Decision, we explained that:
37 C.F.R. § 1.14(a)(1)(vi) provides, in relevant part, that if an
unpublished application is incorporated by reference in an
international publication of an international application (such as
the ’756 PCT), a copy of “the unpublished pending application
may be provided to any person, upon written request and
payment of the appropriate fee.” Accordingly, once the ’756
PCT published, the ’394 provisional that is incorporated by
reference therein became open to the public for inspection.
Dec. 15. We also explained that, although § 1.14(a)(1)(vi) also states that
“[t]he Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (i) of this section,” that
sentence “is directed to the entire file history of the unpublished application.
It does not preclude access to the application alone.” Id. at 16 n.1 (emphasis
added). Patent Owner’s arguments to the contrary in the Request are
nothing more than a disagreement with our decision on this issue. A request
for rehearing, however, is not an opportunity to merely disagree with the
Board’s assessment of the arguments or weighing of the evidence.
Accordingly, Patent Owner does not persuade us that we should grant
a request for rehearing based on our determination regarding the public
availability of the ’394 provisional.
III. CONCLUSION
We have reviewed and considered the arguments in Patent Owner’s
Requests, and conclude that Patent Owner has not carried its burden of
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demonstrating that we misapprehended or overlooked any matters, and
therefore abused our discretion, in granting institution of inter partes review
of the challenged claims of the ’523 patent. 37 C.F.R. § 42.71(d).
IV. ORDER
In view of the foregoing, it is:
ORDERED THAT Patent Owner’s Requests for Rehearing are
denied; and
FURTHER ORDERED THAT within twenty days, Patent Owner
shall advise the Board whether it intends to rely on Exhibits 2025–2027 in
connection with its Patent Owner Responses, and if not, withdraw the
exhibits from the record of these cases.

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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