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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 IPR2020-00260
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`Patent 8,269,523 B2
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`_________
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`PATENT OWNER VENKAT KONDA’S REQUEST FOR REHEARING
`FINAL WRITTEN DECISION UNDER 37 C.F.R. § 42.71(c)
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`IPR2020-00260
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`Paper No. 56
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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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`STATEMENT OF RELIEF REQUESTED ................................................ 1
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`III. LEGAL STANDARDS .................................................................................. 2
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`IV. BASIS FOR RELIEF REQUESTED .......................................................... 4
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`A. The Board’s FWD is Based on an Erroneous Conclusion of Law. ............................... 4
`1. At the Time of Publication of the PCT Publication No. WO 2018/109756 A1 (the
`“‘756 PCT”), 35 U.S.C. § 122 - Confidential status of applications; publication of
`patent applications ...................................................................................................... 4
`2. At the Time of Publication of the ‘756 PCT, 37 C.F.R. § 1.14 Preserved
`Unpublished Applications in Confidence Under 35 U.S.C. § 122(a). ..................... 5
`3. At the Time of Publication of the ‘756 PCT, MPEP § 103(VII) Access to
`Provisional Applications ............................................................................................. 6
`4. Since Promulgated in September 1995, 35 U.S.C. § 122 and MPEP § 103(VII)
`Have Remained Relatively Unchanged, Whereas 37 C.F.R. § 1.14 Has Been
`Substantially Amended Four Times .......................................................................... 7
`5. 37 C.F.R § 1.14 in MPEP (6th Ed. 1995) [First Time MPEP § 103(VII)
`Promulgated] ............................................................................................................... 7
`6. 37 C.F.R § 1.14 in MPEP (7th Ed. 1998) [MPEP § 103(VII) Unchanged]............. 9
`7. 37 C.F.R § 1.14 in MPEP (8th Ed. 2001) [MPEP § 103(VII) Unchanged]........... 10
`
`B. U.S. Provisional Patent Application Serial No. 60/940,394 (the “‘394 Provisional”)
`Incorporated by Reference in the ‘756 PCT Is Not Prior Art to the ‘523 Patent
`Which Claims Priority to the Unpublished ‘394 Provisional...................................... 12
`1. The ‘394 Provisional Was Confidential Under 35 U.S.C. § 122, 37 C.F.R. §
`1.14(a)(1) and MPEP § 103(VII) (8th Ed. 2008) on the Date of Publication of the
`‘756 PCT on September 12, 2008, in View of the Following Facts and USPTO
`practice ....................................................................................................................... 12
`2. The Office of Public Records at USPTO Also Confirmed That a Provisional
`Application Will Not Be Given Access or Certified Copies Without Proof of
`Entitlement as Shown in Exhibit 2037 .................................................................... 14
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`V. CONCLUSION ............................................................................................ 15
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`IPR2020-00260
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`I.
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`INTRODUCTION
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`
`
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`Paper No. 56
`PO’s Request for Rehearing FWD
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`Pursuant to 37 C.F.R. § 42.71(c), Patent Owner (“Patent Owner” or “PO”)
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`hereby respectfully requests that the Board reconsider its Final Written Decision in
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`the Inter Partes Review of U.S. Patent No. 8,269,523 (“the ‘523 patent”) entered
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`July 29, 2021, (Paper 55, hereinafter “FWD”).
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`II. STATEMENT OF RELIEF REQUESTED
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`Patent Owner requests relief from the FWD for the reason that the Board
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`abused its discretion in rendering its FWD because its decision was solely based on
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`an erroneous application of the law and therefore justifies Patent Owner's request
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`for review for good cause under 37 C.F.R. § 42.71(c). Specifically, the Board
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`misapprehended in the FWD that once PCT Publication No. WO 2018/109756 A1
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`(the “‘756 PCT”) was published on September 12, 2008, Provisional Application
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`No. 60/940,394 (“the ‘394 Provisional Application”) that is incorporated by
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`reference therein became available to the public for inspection as of September 12,
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`2008 pursuant to 37 C.F.R. § 1.14(a)(1)(vi) and 37 C.F.R. § 1.14(c) without a
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`power to inspect, i.e., the permission of Patent Owner. Specifically the Board erred
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`that “This sentence, however, is directed to the file history (i.e., paper file) of the
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`unpublished application. It does not preclude access to the application alone.” (See,
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`FWD at 22.) To the contrary, the ‘394 Provisional was confidential and not
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`available to the public as of the publication of the ‘756 PCT under applicable law.
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`Therefore, Patent Owner requests that the Board reconsider its FWD in the inter
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`partes review as to all three grounds.
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`The ‘394 Provisional Application incorporated by reference in the ‘756 PCT
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`was not open to the public for inspection on September 12, 2008. The ‘394
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`Provisional Application was pending at the time. Pursuant to 35 U.S.C. § 122, 37
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`C.F.R. § 1.14(a)(1)(vi), 37 C.F.R. § 1.14(c), and Manual of Patent Examining
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`Procedure (“MPEP”) § 103(VII)(8th ed. 2008) the ‘394 Provisional Application
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`was confidential and a power to inspect, which had not been granted by Patent
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`Owner, was required to get access or copies to it. Therefore, the ‘756 PCT does not
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`qualify as prior art to the ‘523 Patent. Accordingly, the instituted Grounds 1, 2, and
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`3 in the Petition are improper under the law applicable at the time, and the Board
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`should reconsider its FWD and deny Grounds 1, 2, and 3 in the Petition.
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`III. LEGAL STANDARDS
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`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R. §
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`42.71(d) “When rehearing a decision on petition, the panel will review the decision
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`for an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion occurs
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`where the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based
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`on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or
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`(4) involves a record that contains no evidence on which the Board could rationally
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`base its decision.” Stevens v. Tamai, 366 F.3d 1325, 1329 (Fed. Cir. 2004) (quoting
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`Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wash., 334 F.3d 1264, 1266-67
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`(Fed. Cir. 2003) (emphasis added). Here, the Board abused its discretion in the
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`FWD in this case is based on an erroneous conclusion of law.
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`Also, in Moaec, Inc. v. Musicip Corporation, 568 F.Supp.2d 978, 982 (W.D.
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`Wis. 2008) the court held: Manual of Patent Examining Procedure, § 201.11(II)(B)
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`(8th ed. 2006). The foreword of the PTO's manual [MPEP] makes it clear that
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`"[t]he Manual does not have the force of law or the force of the rules in Title 37 of
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`the Code of Federal Regulations." However, the frequent use of the Manual by
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`patent lawyers in advising patent applicants and the frequency with which patent
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`examiners cite the Manual when communicating with patent applicants entitles
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`patent applicants "to rely not only on the statutes and Rules of Practice but also on
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`the provisions of the [Manual of Patent Examining Procedure] in the prosecution
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`of [their] patent application." In re Kaghan, 387 F.2d 398, 847-48 (C.C.P.A. 1967).
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`In addition, the PTO's interpretation of the statute is entitled to some level of
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`deference. National Organization of Veterans' Advocates, Inc. v. Secretary of
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`Veterans Affairs, 260 F.3d 1365, 1378-79 (Fed. Cir. 2001) (in context of
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`Department of Veterans Affairs' regulation, informal regulations not carrying force
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`of law still entitled to some deference). Nevertheless, "`the courts are the final
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`authorities on issues of statutory construction. They must reject administrative
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`constructions of the statute, whether reached by adjudication or by rulemaking, that
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`are inconsistent with the statutory mandate or that frustrate the policy that
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`Congress sought to implement.'" Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425 (Fed.
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`Cir. 1988) (quoting FEC v. Democratic Senatorial Campaign Committee, 454 U.S.
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`27, 32 (1981)).
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`IV. BASIS FOR RELIEF REQUESTED
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`A. The Board’s FWD is Based on an Erroneous Conclusion of Law.
`
`1. At the Time of Publication of the PCT Publication No. WO
`2018/109756 A1 (the “‘756 PCT”), 35 U.S.C. § 122 - Confidential
`status of applications; publication of patent applications
`In September 2008, the pertinent statute states, in part, as follows:
`
`35 U.S.C. § 122 - Confidential status of applications; publication of patent
`applications:
`(a) CONFIDENTIALITY.—
`Except as provided in subsection (b), applications for patents shall be kept in
`confidence by the Patent and Trademark Office and no information concerning
`the same given without authority of the applicant or owner unless necessary to
`carry out the provisions of an Act of Congress or in such special circumstances
`as may be determined by the Director.
`(b) PUBLICATION.—
`(1) IN GENERAL.—
`(A) Subject to paragraph (2), each application for a patent shall be
`published, in accordance with procedures determined by the Director,
`promptly after the expiration of a period of 18 months from the earliest
`filing date for which a benefit is sought under this title. At the request of
`the applicant, an application may be published earlier than the end of
`such 18-month period.
` (2) EXCEPTIONS.—
`(A) An application shall not be published if that application is—
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`(i) no longer pending;
`(ii) subject to a secrecy order under section 181 of this title;
`(iii) a provisional application filed under section 111(b) of this title; ….
`(Emphasis added.)
`
`2. At the Time of Publication of the ‘756 PCT, 37 C.F.R. § 1.14
`Preserved Unpublished Applications in Confidence Under 35 U.S.C.
`§ 122(a).
`In September 2008, the pertinent the Code of Fed. Reg. stated, in part, as
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`follows:
`
`37 C.F.R. § 1.14 Patent applications preserved in confidence.
`(a) Confidentiality of patent application information. Patent applications that have
`not been published under 35 U.S.C. 122(b) are generally preserved in confidence
`pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or
`subject matter of an application for patent, including status information, and access
`to the application, will only be given to the public as set forth in § 1.11 or in this
`section.
`(1) Records associated with patent applications (see paragraph (g) for international
`applications) may be available in the following situations:
`(vi) Unpublished pending applications (including provisional applications)
`that are incorporated by reference or otherwise identified. 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 a U.S. patent, a statutory invention registration, a U.S. patent
`application publication, or an international patent application publication
`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 (h) of this section.
`(c) Power to inspect a pending or abandoned application. Access to an application
`may be provided to any person if the application file is available, and the
`application contains written authority (e.g., a power to inspect) granting access
`to such person. The written authority must be signed by:
`(1) An applicant;
`(2) An attorney or agent of record;
`(3) An authorized official of an assignee of record (made of record pursuant to
`§ 3.71 of this chapter); or
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`(4) A registered attorney or agent named in the papers accompanying the
`application papers filed under § 1.53 or the national stage documents filed
`under § 1.495, if an executed oath or declaration pursuant to § 1.63 or § 1.497
`has not been filed.
`(h) Access or copies in other circumstances. The Office, either sua sponte or on
`petition, may also provide access or copies of all or part of an application if
`necessary to carry out an Act of Congress or if warranted by other special
`circumstances. Any petition by a member of the public seeking access to, or copies
`of, all or part of any pending or abandoned application preserved in confidence
`pursuant to paragraph (a) of this section, or any related papers, must include:
`(1) **>The fee set forth in § 1.17(g); and<
`(2) A showing that access to the application is necessary to carry out an Act of
`Congress or that special circumstances exist which warrant petitioner being
`granted access to all or part of the application.
`(Emphasis and double emphasis added.)
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`3. At the Time of Publication of the ‘756 PCT, MPEP § 103(VII) Access
`to Provisional Applications
`In September 2008, the applicable MPEP § 103(VII) (8th ed. 2008) section
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`stated, in part, as follows:
`
`MPEP § 103(VII) Access To Provisional Applications
`In provisional applications, access or certified copies will only be given to parties
`with written authority from a named inventor, the assignee of record, or the
`attorney or agent of record. Since provisional applications do not require an oath
`or declaration, there may be no power of attorney in the application. If there is no
`power of attorney in the provisional application, a certified copy requested by the
`registered attorney or agent named in the papers accompanying the provisional
`application papers will be supplied to the correspondence address of the .
`Provisional applications are also available in the same manner as any other
`application. For example, an application that is relied upon for priority in a U.S.
`patent and is abandoned is available under 37 CFR 1.14(a)(1)(iv) >and, as a result
`may be available through public PAIR<.
`(Emphasis added.)
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`4. Since Promulgated in September 1995, 35 U.S.C. § 122 and MPEP §
`103(VII) Have Remained Relatively Unchanged, Whereas 37 C.F.R.
`§ 1.14 Has Been Substantially Amended Four Times
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` Both 35 U.S.C. § 122 and MPEP § 103(VII) have remained relatively unchanged,
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`while 37 C.F.R. § 1.14 has changed substantially four times in 1) MPEP (6th ed.
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`1995), 2) MPEP (7th ed. 1998, 3) MPEP (8th ed. 2001), and 4) MPEP (8th ed.
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`2004). Specifically, MPEP § 103(VII) has remained relatively unchanged from the
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`6th ed. 1995 till the 8th ed. 2008, which states “In provisional applications, access
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`or certified copies will only be given to parties with written authority from a
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`named inventor, the assignee of record, or the attorney or agent of record.”
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`5. 37 C.F.R § 1.14 in MPEP (6th Ed. 1995) [First Time MPEP §
`103(VII) Promulgated]
`In September 1995, the pertinent Code of Fed. Reg. in-part states as follows:
`
`37 C.F.R. § 1.14 Patent applications preserved in confidence.
`(a) Except as provided in § 1.11(b), pending patent applications are preserved in
`secrecy. No information will be given by the Office respecting the filing by any
`particular person of an application for a patent, the pendency of any particular case
`before it, or the subject matter of any particular application, nor will access be
`given to or copies furnished of any pending application or papers relating thereto,
`without written authority in that particular application from the applicant or his
`assignee or attorney or agent of record, unless the application has been identified
`by serial number in a published patent document or the United States of America
`has been indicated as a Designated State in a published international application, in
`which case status information such as whether it is pending, abandoned or patented
`may be supplied, or unless it shall be necessary to the proper conduct of business
`before the Office or as provided by this part. Where an application has been
`patented, the patent number and issue date may also be supplied.
`(b) Except as provided in § 1.11(b), the abandoned applications are likewise not
`open to public inspection, except that if an application referred to in U.S. patent, or
`in an application in which the applicant has filed an authorization to open the
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`complete application to the public, is abandoned and is available, it may be
`inspected or copies obtained by any person on written request, without notice to
`the applicant.
`(c) Applications for patents which disclose, or which appear to disclose, or which
`purport to disclose, inventions or discoveries relating to atomic energy are reported
`to the Department of Energy, which Department will be given access to such
`applications, but such reporting does not constitute a determination that the subject
`matter of each application so reported is in fact useful or an invention or discovery
`or that such application in fact discloses subject matter in categories specified by
`sections 151(c) and 151(d) of the Atomic Energy Act of 1954, 68 Stat. 919; 42
`U.S.C. 2181 (c) and (d).
`(d) Any decision of the Board of Patent Appeals and Interferences, or any decision
`of the Commissioner on petition, not otherwise open to public inspection shall be
`published or made available for public inspection if: (1) The Commissioner
`believes the decision involves an interpretation of patent laws or regulations that
`would be of important precedent value; and (2) The applicant, or any party
`involved in the interference, does not within two months after being notified of the
`intention to make the decision public, object in writing on the ground that the
`decision discloses a trade secret or other confidential information. If a decision
`discloses such information, the applicant or party shall identify the deletions in the
`text of the decision considered necessary to protect the information. If it is
`considered the entire decision must be withheld from the public to protect such
`information, the applicant or party must explain why. Applicants or parties will be
`given time, not less than twenty days, to request reconsideration and seek court
`review before any portions of decisions are made public over their objection. See §
`2.27 for trademark applications.
`>(e) Any request by a member of the public seeking access to, or copies of, any
`pending or abandoned application preserved in secrecy pursuant to paragraphs (a)
`and (b) of this section, or any papers relating thereto, must: (1) Be in the form of a
`petition and be accompanied by the petition fee set forth in § 1.17(i); or (2) Include
`written authority granting access to the member of the public in that particular
`application from the applicant or the applicant’s assignee or attorney or agent of
`record.< (Note, see § 1.612(a) for access by an interference party to a pending or
`abandoned application.)
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`
`In September 1995, the pertinent Code of Fed. Reg. 37 C.F.R. § 1.14 did not
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`mention anything about provisional applications. MPEP § 103(VII) (6th ed. 1995),
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`was promulgated for the first time and had the same language as noted in Section
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`IV.A.3, above. Accordingly, the MPEP (6th ed. 1995), was consistent with 35
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`U.S.C. § 122 and 37 C.F.R. § 1.14. Thus, according to MPEP § 103(VII) (6th ed.
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`1995), access or certified copies of provisional applications will only be given to
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`parties with written authority from a named inventor, the assignee of record, the
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`attorney or agent of record.
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`6. 37 C.F.R § 1.14 in MPEP (7th Ed. 1998) [MPEP § 103(VII)
`Unchanged]
`In July 1998, the Code of Fed. Reg. was amended, in part, to state as follows:
`
`37 C.F.R. § 1.14 Patent applications preserved in confidence.
`(a) Patent applications are generally preserved in confidence pursuant to 35 U.S.C.
`122. No information will be given concerning the filing, pendency, or subject
`matter of any application for patent, and no access will be given to, or copies
`furnished of, any application or papers relating thereto, except as set forth in this
`section.
`(2) Copies of an application-as-filed may be provided to any person, upon
`written request accompanied by the fee set forth in § 1.19(b)(1), without notice
`to the applicant, if the application is incorporated by reference in a U.S. patent.
`(3) Copies of (upon payment of the fee set forth in § 1.19(b)(2)), and access to,
`an application file wrapper and contents may be provided to any person, upon
`written request, without notice to the applicant, when the application file is
`available and:
`(iii) Written authority in that application from the applicant, the assignee of the
`application, or the attorney or agent of record has been granted; or
`(iv) The application is abandoned, but not if the application is in the file jacket
`of a pending application under § 1.53(d), and is:
` (A) Referred to in a U.S. patent
` (B) Referred to in a U.S. application open to public inspection;
`(C) An application which claims the benefit of the filing date of a U.S.
`application open to public inspection; or
`(D) An application in which the applicant has filed an authorization to lay
`open the complete application to the public.
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`(b) Complete applications (§ 1.51(a)) which are abandoned may be destroyed and
`hence may not be available for access or copies as permitted by paragraph
`(a)(3)(iv) of this section after 20 years from their filing date, except those to which
`particular attention has been called and which have been marked for preservation
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`Once again, 37 C.F.R. § 1.14 as amended in July 1998 did not mention
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`anything about provisional applications. MPEP § 103(VII) (6th ed. 1998) describes
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`the same language as noted in Section IV.A.3 above. Accordingly, the MPEP (6th
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`ed. 1998) is consistent with 35 U.S.C § 122 and 37 C.F.R. § 1.14. Accordingly, the
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`MPEP § 103(VII) (6th ed. 1998) continued to apply “access or certified copies of
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`provisional applications will only be given to parties with written authority from
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`a named inventor, the assignee of record, the attorney or agent of record.”
`
`7. 37 C.F.R § 1.14 in MPEP (8th Ed. 2001) [MPEP § 103(VII)
`Unchanged]
`In August 2001, the pertinent Code of Fed. Reg. was amended in part to
`
`state, as follows:
`
`37 C.F.R. § 1.14 Patent applications preserved in confidence.
`(c) When copies may be supplied. A copy of an application-as-filed or a file
`wrapper and contents may be supplied by the Office to the public, subject to
`paragraph (i) of this section (which addresses international applications), if any of
`the following apply:
`(1) Application-as-filed.
`(i) If a U.S. patent application publication or patent incorporates by
`reference, or includes a specific reference under 35 U.S.C. 119(e) or 120 to,
`a pending or abandoned application, a copy of that application-as-filed may
`be provided to any person upon written request including the fee set forth in
`§ 1.19(b)(1); or
`(ii) If an international application, which designates the U.S. and which has
`been published in accordance with PCT Article 21(2), incorporates by
`reference or claims priority under PCT Article 8 to a pending or abandoned
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`U.S. application, a copy of that application-as-filed may be provided to any
`person upon written request including a showing that the publication of the
`application in accordance with PCT Article 21(2) has occurred and that the
`U.S. was designated, and upon payment of the appropriate fee set forth in §
`1.19(b)(1).
`(2) File wrapper and contents. A copy of the specification, drawings, and all
`papers relating to the file of an abandoned or pending published application
`may be provided to any person upon written request, including the fee set forth
`in § 1.19(b)(2). If a redacted copy of the application was used for the patent
`application publication, the copy of the specification, drawings, and papers may
`be limited to a redacted copy.
`(d) Power to inspect a pending or abandoned application. Access to an application
`may be provided to any person if the application file is available, and the
`application contains written authority (e.g., a power to inspect) granting access to
`such person. The written authority must be signed by:
`(1) An applicant;
`(2) An attorney or agent of record;
`(3) An authorized official of an assignee of record (made of record pursuant to §
`3.71 of this chapter); or
`(4) A registered attorney or agent named in the papers accompanying the
`application papers filed under § 1.53 or the national stage documents filed
`under § 1.494 or § 1.495, if an executed oath or declaration pursuant to § 1.63
`or § 1.497 has not been filed.
`(e) Public access to a pending or abandoned application. Access to an application
`may be provided to any person, subject to paragraph (i) of this section, if a written
`request for access is submitted, the application file is available, and any of the
`following apply:
`(1) The application is open to public inspection pursuant to § 1.11(b); or
`(2) The application is abandoned, it is not within the file jacket of a pending
`application under § 1.53(d), and it is referred to:
`(i) In a U.S. patent application publication or patent;
`(ii) In another U.S. application which is open to public inspection either
`pursuant to § 1.11(b) or paragraph (e)(2)(i) of this section; or
`(iii) In an international application which designates the U.S. and is
`published in accordance with PCT Article 21(2).
`
`Once again, 37 C.F.R §1.14 as amended August 2001 does not mention
`
`anything about provisional applications. MPEP §103(VII) (8th ed. 2001) describes
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`
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`Patent 8,269,523
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`PO’s Request for Rehearing FWD
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`the same language as noted in Section IV.A.3 above. Accordingly, the MPEP (8th
`
`ed. 2001) is consistent with 35 U.S.C. § 122 and 37 C.F.R. § 1.14. Accordingly,
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`the MPEP § 103(VII) (8th ed. 2001) continued to apply “access or certified
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`copies of provisional applications will only be given to parties with written
`
`authority from a named inventor, the assignee of record, the attorney or agent of
`
`record.”
`
`B. U.S. Provisional Patent Application Serial No. 60/940,394 (the “‘394
`Provisional”) Incorporated by Reference in the ‘756 PCT Is Not Prior Art
`to the ‘523 Patent Which Claims Priority to the Unpublished ‘394
`Provisional
`
`1. The ‘394 Provisional Was Confidential Under 35 U.S.C. § 122, 37
`C.F.R. § 1.14(a)(1) and MPEP § 103(VII) (8th Ed. 2008) on the Date
`of Publication of the ‘756 PCT on September 12, 2008, in View of the
`Following Facts and USPTO practice
`
` In MPEP § 103(VII) (6th ed. 1995) it is stated: "In provisional applications,
`
`access or certified copies will only be given to parties with written authority from a
`
`named inventor, the assignee of record, the attorney or agent of record.” Since
`
`provisional applications do not require an oath or declaration, there may be no
`
`power of attorney in the application. If the person requesting a certified copy is not
`
`a named inventor, the assignee of record, the attorney or agent of record, the
`
`requested certified copy will be supplied to the corresponding address of the
`
`provisional application."
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`MPEP § 103(VII) has remained relatively unchanged, even though 37
`
`C.F.R. § 1.14 has been amended four times since 1995 till 2008 namely: 1) MPEP
`
`(6th ed. 1995); 2) MPEP (7th ed. 1998); 3) MPEP (8th ed. 2001); and 4) MPEP
`
`(8th ed. 2004). At the time of publication of the ‘756 PCT (i.e., in September
`
`2008), 37 C.F.R. § 1.14 and MPEP § 103(VII) (8th ed. 2008) were essentially the
`
`same as 37 C.F.R. § 1.14 and MPEP § 103(VII) (8th ed. 2004). Accordingly,
`
`“access or certified copies of provisional applications will only be given to parties
`
`with written authority from a named inventor, the assignee of record, the
`
`attorney or agent of record.”
`
`At the time of publication of the ‘756 PCT, 37 C.F.R. § 1.14 refers to
`
`"(including provisional applications)". However, MPEP §103(VII) in referring to
`
`provisional applications maintains "will only be" in the first sentence. Also MPEP
`
`§ 103(VII) modified the last two lines: “Provisional applications are also available
`
`in the same manner as any other application. For example, an application that is
`
`relied upon for priority in a U.S. patent and is abandoned is available under 37
`
`C.F.R. *>1.14(a)(1)(iv)<.”
`
`Moreover, the language in 37 C.F.R. § 1.14 (a)(1)(vi) “may” does not mean
`
`“must”. It must be noted that MPEP § 103(VII) uses “will only be” which means
`
`“must” compared to 37 C.F.R. § 1.14 (a)(1)(vi) rules. For example, in Moaec, Inc.
`
`v. Musicip Corporation, 568 F.Supp.2d 978, 982 (W.D. Wis. 2008), the court held
`
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`Patent 8,269,523
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`Paper No. 56
`PO’s Request for Rehearing FWD
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`that the MPEP is entitled to due judicial deference in deciding issues regarding the
`
`interpretation of USPTO rules and procedures. In addition to all the details, the
`
`Board should note that the Court ruled: “Because the PTO's interpretation of the §
`
`120 copendency requirement is consistent with the statute and patent applicants are
`
`entitled to rely on it, the interpretation is due judicial deference." The same
`
`rationale should also apply here also.
`
`2. The Office of Public Records at USPTO Also Confirmed That a
`Provisional Application Will Not Be Given Access or Certified
`Copies Without Proof of Entitlement as Shown in Exhibit 2037
`
`The USPTO Office of Public Records also confirmed on the phone at 571-
`
`272-3150, who identified herself as “Michelle”, that access or certified copies to a
`
`provisional application (which is not published and is pending) will not be allowed
`
`without Proof of Entitlement or written authority from a named inventor, the
`
`assignee of record, the attorney or agent of record. She also directed the Patent
`
`Owner to the web site Certifiedcopycenter@USPTO.gov, and then suggested to
`
`login and then click on the “Proof of entitlement” link under the “Unpublished
`
`Patent Documents” menu. Clicking on “Proof of entitlement” opens up a pop-up
`
`window titled “Proof of entitlement” as shown in Exhibit 2037 which redirects to
`
`MPEP §§ 103, 104 specifying:
`
`“Patent applications not previously published are generally preserved in
`confidence and not available to the public. Proof of entitlement is written
`documentation showing that the person making the request has a right to the
`unpublished patent application. For more information, please view the following
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`IPR2020-00260
`Patent 8,269,523
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`sections under Chapter 0100 within the Manual of Patent Examining Procedure
`(MPEP), Ninth Edition, Revision 08.2017, Last Revised January 2018.
`§103 Right of Public to Inspect Patent Files and Some Application Files
`[R07.2015]
`§104 Power to Inspect Application [R-07.2015] “
`(emphasis added.)
`
`
`Therefore, good cause exists for the new evidence (including Exhibit 2037)
`
`submitted in this Request for Rehearing, because the Board’s FWD is based on an
`
`Erroneous Conclusion of Law. (See, 37 C.F.R. § 42.71(c)). The ‘394 Provisional
`
`Application incorporated by reference in th