`571-272-7822
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`
`
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` Paper No. 60
`Entered: September 24, 2021
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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.
`____________
`
`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.
`
`
`
`DECISION
`Denying Patent Owner’s Requests for Rehearing of
`Final Written Decision Determining All Challenged Claims Unpatentable
`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.
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`I. INTRODUCTION
`Venkat Konda (“Patent Owner”) filed a Request for Rehearing of our
`Final Written Decision2 finding that 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”) are unpatentable.3 As explained below, we have
`considered the arguments presented by Patent Owner in his Request for
`Rehearing, but we discern no reason to modify the Decision. Accordingly,
`we deny Patent Owner’s Request for Rehearing.
`II. STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing that the decision should be modified. 37 C.F.R.
`§ 42.71(d). A request for rehearing “must specifically identify all matters
`the party believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, a
`reply, or a sur-reply.” Id. A request for rehearing, therefore, is not an
`opportunity to merely disagree with the Board’s assessment of the
`arguments or weighing of the evidence, or to present new arguments or
`evidence.
`
`
`2 Petitioner challenged claims 1, 15–18, 20–22, 32, and 47 in IPR2020-
`00260 (Paper 1, 3–4), and claims 2–7 and 11 in IPR2020-00261 (Paper 1, 4).
`We exercised our discretion to issue a single Final Written Decision to be
`entered in both proceedings. IPR2020-00260, Paper 55, 1 n.1; IPR2020-
`00261, Paper 58, 1 n.1.
`3 See IPR2020-00260, Papers 55 (“Decision” or “Dec.”) and 56 (“Request”
`or “Req. Reh’g”); IPR2020-00261, Papers 58 and 59. Although the analysis
`herein applies to both proceedings, we refer to the papers and exhibits filed
`in IPR2020-00260 for convenience.
`
`
`
`2
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`III. ANALYSIS
`In the Decision, we determined that Petitioner demonstrated, by a
`preponderance of the evidence, that: (1) claims 1–7, 16, 20–22, and 32 were
`anticipated by the ’756 PCT;4 (2) claims 11, 15, and 17 would have been
`obvious over the ’756 PCT; and (3) claims 18 and 47 would have been
`obvious over the combined teachings of the ’756 PCT and Wong.5 Dec. 33.
`Petitioner’s challenges largely relied on the disclosures of the ’394
`Provisional,6 which is incorporated by reference in its entirety into the ’756
`PCT. Id. at 21 (citing Paper 1, 20–21; Ex. 1009, 2:14–17). We explained
`that the ’394 Provisional qualifies as prior art to the ’523 patent because
`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 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.
`Therefore, the ’394 Provisional is prior art by virtue of the fact
`that it became publicly available due to its incorporation into
`the ’756 PCT, and in addition it is prior art because it is part of
`the ’756 PCT itself.
`Id. at 21–22 (emphasis added).
`In the Request, Patent Owner argues that we erred in determining that
`the ’394 Provisional was available to the public as of the publication of the
`’756 PCT, and, therefore, qualifies as prior art against the ’523 patent. Req.
`
`
`4 WO 2008/109756, published September 12, 2008 (Ex. 1009).
`5 U.S. Patent No. 6,940,308, issued September 6, 2005 (Ex. 1008).
`6 Provisional App. No. 60/940,394, filed on May 25, 2007 (Ex. 1026).
`
`3
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`Reh’g 1–2. Specifically, Patent Owner argues that the ’394 Provisional,
`which was pending when the ’756 PCT published on September 12, 2008,
`was confidential “[p]ursuant to 35 U.S.C. § 122, 37 C.F.R. § 1.14(a)(1)(vi),
`37 C.F.R. § 1.14(c), and Manual of Patent Examining Procedure (“MPEP”)
`§ 103(VII) (8th ed. 2008),” and could only be accessed if Patent Owner
`granted a power to inspect. Id. at 2.
`To support his position that the ’394 Provisional was not publicly
`available, Patent Owner points to MPEP § 103(VII), which, at the time
`the ’756 PCT was published, stated that access to provisional applications
`“will only be given to parties with written authority from a named inventor,
`the assignee of record, or the attorney or agent of record.” Req. Reh’g 13
`(quoting MPEP § 103(VII) (8th ed. 2008)) (emphasis omitted). Patent
`Owner argues that, in contrast, 37 C.F.R. § 1.14(a)(1)(vi) only provides that
`a copy of a provisional application incorporated by reference or otherwise
`identified “may be provided to any person.” Id. (emphasis added).
`Therefore, Patent Owner argues,
`[t]he ’394 Provisional Application incorporated by reference in
`the ’756 PCT was not open to the public for inspection or to be
`copied on September 12, 2008 (while the ’394 Provisional was
`pending at the time) pursuant to 35 U.S.C § 122, 37 C.F.R.
`§ 1.14(a)(1)(vi), 37 C.F.R. § 1.14(c), and MPEP § 103(VII)
`because a power to inspect had not been granted by Patent
`Owner.
`Id. at 15.
`We are not persuaded by Patent Owner’s arguments. Patent Owner’s
`position that the ’394 Provisional was not available to the public is premised
`on a mistaken understanding of the rules governing access to unpublished
`
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`4
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
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`pending applications that are incorporated by reference into a publication
`like the ’756 PCT.
`Section 1.14(a) of 37 C.F.R. provides several exceptions to the
`general rule that an unpublished patent application will be preserved in
`confidence pursuant to 35 U.S.C. § 122(a). In particular, Section
`1.14(a)(1)(vi) relates to “unpublished pending applications (including
`provisional applications) that are incorporated by reference or otherwise
`identified.” 37 C.F.R. § 1.14(a)(1)(vi) (2008). As of the September 12,
`2008 publication of the ’756 PCT, § 1.14(a)(1)(vi) stated:
`A copy of the application as originally filed of an unpublished
`pending application may be provided to any person, upon
`written request and payment of the appropriate fee (§ 1.19(b)),
`if the application is incorporated by reference or otherwise
`identified in in a U.S. patent, a statutory invention registration,
`a U.S. patent application publication, or an international patent
`application publications that was published in accordance with
`PCT Article 21(2). The Office will not provide access to the
`paper file of a pending application, except as provided in
`paragraph (c) or (i) of this section.
`(Emphasis added). MPEP § 103(III), titled “Unpublished Abandoned and
`Pending Applications (Including Provisional Application) That are
`Identified,” addresses Section 1.14(a)(1)(vi) and explains that “[t]he
`incorporation by reference of a pending application in . . . a published
`international application published in accordance with PCT Article 21(2), . .
`. constitutes special circumstances under 35 U.S.C. 122 warranting that a
`copy of the application-as-filed be provided upon written request . . . .”
`MPEP § 103(III) (8th ed. rev. 7 July 2008) (emphasis added).
`The ’756 PCT is “an international patent application publication that
`was published in accordance with PCT Article 21(2),” and the ’394
`
`5
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`Provisional was an unpublished pending provisional application when
`the ’756 PCT published. Patent Owner does not identify, nor do we find,
`any particular fault in the manner in which the ’394 Provisional was
`incorporated by reference into the ’756 PCT. Accordingly, pursuant to
`37 C.F.R. § 1.14(a)(1)(vi), a copy of the ’394 Provisional application-as-
`filed became available “to any person, upon written request and payment of
`the appropriate fee” as of the publication of the ’756 PCT.
`Patent Owner, however, centers his arguments in the Request around
`MPEP § 103(VII), which is directed to “Access to Provisional
`Applications,” and its statement that “[i]n provisional applications, access or
`certified copies will only be given with written authority from a named
`inventor, the assignee of record, or the attorney or agent of record.” MPEP
`§103(VII) (8th ed. rev. 7 July 2008). In doing so, Patent Owner overlooks
`that MPEP § 103(VII) also explains that “[p]rovisional applications are also
`available in the same manner as any other application,” which includes
`when it is incorporated by reference in another publication as set forth in 37
`C.F.R. § 1.14(a)(1)(vi). Id. (emphasis added). Contrary to Patent Owner’s
`arguments, therefore, the relevant sections of the MPEP support our
`determination that the ’394 Provisional became available to the public, upon
`written request and payment of the appropriate fee, when the ’756 PCT
`published on September 12, 2008.
`Accordingly, Patent Owner has not demonstrated that we erred in
`finding that that the ’394 Provisional was available to the public as of the
`September 12, 2008 publication of the ’756 PCT.
`
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`6
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`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`
`III. CONCLUSION
`We have reviewed and considered the arguments in Patent Owner’s
`Request, and conclude that Patent Owner has not carried his burden of
`demonstrating that we misapprehended or overlooked any matters in finding
`that the challenged claims of the ’523 patent are unpatentable.
`IV. ORDER
`In view of the foregoing, it is
`ORDERED that Patent Owner’s Request for Rehearing 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
`
`
`
`
`7
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