Case: 22-1162 Document: 29 Page: 1 Filed: 05/06/2022
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`VENKAT KONDA,
`Appellant
`
`v.
`
`FLEX LOGIX TECHNOLOGIES, INC.,
`Appellee
`______________________
`
`2022-1162, 2022-1163
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00260, IPR2020-00261.
`______________________
`
`Decided: May 6, 2022
`______________________
`
`VENKAT KONDA, San Jose, CA, pro se.
`
`
` NAVEEN MODI, Paul Hastings LLP, Washington, DC,
`for appellee.
` Also represented by STEPHEN BLAKE
`KINNAIRD, JOSEPH PALYS; PAUL ANDERSON, Houston, TX.
` ______________________
`
`Before TARANTO, CLEVENGER, and CHEN, Circuit Judges.
`PER CURIAM.
`
`

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`Case: 22-1162 Document: 29 Page: 2 Filed: 05/06/2022
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`KONDA v. FLEX LOGIX TECHNOLOGIES, INC.
`
`Venkat Konda owns U.S. Patent No. 8,269,523, titled
`“VLSI Layouts of Fully Connected Generalized Networks.”
`SAppx. 49. Flex Logix Technologies, Inc. challenged vari-
`ous claims of the ’523 patent in two inter partes reviews in
`the Patent and Trademark Office (PTO). For all challenged
`claims, Flex Logix asserted unpatentability based on the
`teachings of a provisional application filed by Konda,
`which, Flex Logix argued, was public prior art because it
`was incorporated by reference into a public, prior-art appli-
`cation filed publicly by Konda pursuant to the Patent Co-
`operation Treaty (PCT). The PTO’s Patent Trial and
`Appeal Board, in its consolidated final written decision in
`the reviews it instituted, ruled, in agreement with Flex
`Logix, that the provisional application and PCT application
`were public prior art that rendered all challenged claims
`unpatentable for either anticipation or obviousness. Flex
`Logix Technologies, Inc. v. Konda, Nos. IPR2020-00260,
`IPR2020-00261, 2021 WL 3265741 (P.T.A.B. July 29,
`2021).
`Mr. Konda appeals, presenting only the issue of
`whether the provisional application (containing essential
`relied-on teachings) was public. Specifically, he contends
`that the PTO keeps provisional applications confidential,
`that he did not waive the confidential status, and that the
`provisional application therefore was not publicly available
`and could not be prior art. We reject Mr. Konda’s conten-
`tion, and we therefore affirm the Board’s decision.
`I
`The ’523 patent, one of many patents Mr. Konda has
`sought and obtained, issued from U.S. Patent Application
`Serial No. 12/601,275, which was filed on November 22,
`2009, as the national phase entry of PCT Application
`No. PCT/US2008/064605 (’605 PCT), itself filed eighteen
`months earlier, on May 22, 2008. The ’275 application
`claims priority back to Provisional Application No.
`60/940,394 (’394 provisional), filed on May 25, 2007.
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`Case: 22-1162 Document: 29 Page: 3 Filed: 05/06/2022
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`KONDA v. FLEX LOGIX TECHNOLOGIES, INC.
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`3
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`In December 2019, Flex Logix filed two petitions for in-
`ter partes reviews—one addressing claims 1, 15–18, 20–22,
`32, and 47 of the ’523 patent, the other addressing claims
`2–7 and 11. In its petitions, Flex Logix argued that the
`earliest effective filing date of the ’523 patent was the filing
`date of the ’275 application itself, November 22, 2009. Spe-
`cifically, Flex Logix argued that the chain of priority could
`not reach back further under 35 U.S.C. § 120 to the ’605
`PCT (2008) and the ’394 provisional (2007) because the
`claims of the ’523 patent were not sufficiently supported by
`those two earlier filings under the standards of § 120. Be-
`cause the Board eventually agreed with that argument and
`determined that the ’523 patent’s effective date is Novem-
`ber 22, 2009, Flex Logic, 2021 WL 3265741, at *8, and Mr.
`Konda does not challenge that determination on appeal, we
`hereafter treat the November 22, 2009 effective date as set-
`tled.
`Based on that effective date, Flex Logix argued in its
`petitions that one of Mr. Konda’s earlier patent applica-
`tions, PCT Publication No. WO 2008/109756 A1 (’756 PCT),
`which was published September 12, 2008, is prior art and
`disclosed or suggested the limitations of every challenged
`claim. The ’756 PCT expressly incorporates the entirety of
`the ’394 provisional by reference. ’756 PCT, p. 2, lines 14–
`17. Flex Logix’s unpatentability arguments depended in
`part on the ’394 provisional incorporated into the ’756 PCT.
`In response, Mr. Konda argued, among other things,
`that the ’394 provisional could not be prior art because un-
`published provisional applications are kept in confidence
`by the Office in the absence of the applicant’s consent and
`he had never consented to making it available to the public.
`Mr. Konda relied on a portion of 37 C.F.R. § 1.14(a)(1)(vi)
`stating that: “The Office will not provide access to the pa-
`per file of a pending application, except as provided in par-
`agraph (c) . . . of this section.” Paragraph (c) provides that
`a person may access a pending application if the inventor,
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`Case: 22-1162 Document: 29 Page: 4 Filed: 05/06/2022
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`KONDA v. FLEX LOGIX TECHNOLOGIES, INC.
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`or other authorized person, provides written authorization.
`37 C.F.R. § 1.14(c).
`In July 2021, the Board issued a final written decision
`and held all challenged claims unpatentable. Flex Logix,
`2021 WL 3265741, at *1. The Board, after determining
`that the effective filing date of the ’523 patent is November
`22, 2009, held that the ’756 PCT, published more than a
`year earlier (September 12, 2008), was prior art under 35
`U.S.C. § 102(b) (pre-America Invents Act version). Id. at
`*8. As the ’756 PCT incorporates by reference the entirety
`of the ’394 provisional, the Board determined that “the ’394
`Provisional became publicly available as of the date the
`’756 PCT published.” Id. at *9. “Therefore, the ’394 Provi-
`sional is prior art by virtue of the fact that it became pub-
`licly available due to its incorporation into the ’756 PCT,
`and in addition is prior art because it is part of the ’756
`PCT itself.” Id.
`The Board rejected Mr. Konda’s argument based on 37
`C.F.R. § 1.14(a)(1)(vi) and (c) that the ’394 provisional was
`not available to the public. Section 1.14(a)(1)(vi) provides:
`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 . . . an international publication of an interna-
`tional application under PCT Article 21(2) . . . .
`The Office will not provide access to the paper file
`of a pending application, except as provided in par-
`agraph (c) or (i) of this section.
`last sentence of
`The Board explained
`that
`the
`§ 1.14(a)(1)(vi)—on which Mr. Konda relied—is directed
`solely to the file history, i.e., paper file, of the unpublished
`application and does not preclude access to the application
`itself, which, under the preceding sentence, is public if in-
`corporated in a PCT application. Flex Logix, 2021 WL
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`KONDA v. FLEX LOGIX TECHNOLOGIES, INC.
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`3265741, at *9. The Board then determined that the ’756
`PCT, including the incorporated ’394 provisional, disclosed
`or suggested all limitations of the challenged claims. Id. at
`*9–13.
`The Board subsequently denied Mr. Konda’s requests
`for rehearing. It reiterated that under 37 C.F.R.
`§ 1.14(a)(1)(vi), a person who makes a written request and
`pays the appropriate fee “may be provided” “[a] copy of the
`application as originally filed” of a provisional application
`like the ’394 provisional. SAppx. 39 (quoting 37 C.F.R.
`§ 1.14(a)(1)(vi)). The Board also noted that the Manual of
`Patent Examining Procedure (MPEP) reflected this princi-
`ple. Id. (quoting MPEP § 103(III) (8th ed., Rev. 7, July
`2008)). The Board concluded that a copy of the ’394 provi-
`sional “as originally filed” became available as of the pub-
`lication of the ’756 PCT, regardless of Mr. Konda’s personal
`consent. SAppx. 39–40.
`Mr. Konda timely appeals. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A).
`
`II
`We review the Board’s legal conclusions de novo and its
`factual determinations for substantial-evidence support.
`In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).
`“Whether an asserted anticipatory document qualifies as a
`‘printed publication’ under [35 U.S.C.] § 102 is a legal con-
`clusion based on underlying factual determinations.” Id.
`(quoting Cooper Cameron Corp. v. Kvaerner Oilfield Prods.,
`Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002)). A “printed pub-
`lication” under the applicable version of § 102(b) must have
`been publicly available at the pertinent time, and that re-
`quirement is met if the document was “disseminated or
`otherwise made available to the extent that persons inter-
`ested and ordinarily skilled in the subject matter or art ex-
`ercising reasonable diligence, [could have] locate[d] it.”
`Kyocera Wireless Corp. v. Int’l. Trade Comm’n, 545 F.3d
`1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v.
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`Case: 22-1162 Document: 29 Page: 6 Filed: 05/06/2022
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`KONDA v. FLEX LOGIX TECHNOLOGIES, INC.
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`Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed.
`Cir. 2008)).
`On appeal, Mr. Konda challenges only the Board’s de-
`termination that the ’394 provisional was publicly availa-
`ble, citing 35 U.S.C. § 122, 37 C.F.R. §1.14(a)(1)(vi) and (c),
`and MPEP § 103(VII). Appellant Inf. Br. 2–3. With regard
`to the statute, he has not meaningfully argued in this
`court, and did not meaningfully argue to the Board, that
`the regulation is unauthorized by or contrary to 35 U.S.C.
`§ 122. And we agree with the Board that the regulation is
`determinative and that it made the ’394 provisional acces-
`sible to the public.
`Section 1.14(a) of 37 C.F.R., quoted above, provides
`that a person may, upon written request and payment of a
`fee, have access to a copy of an unpublished pending appli-
`cation “as originally filed” if that unpublished pending ap-
`plication was
`incorporated by
`reference
`into an
`international patent application published in accordance
`with PCT Article 21(2). It is undisputed that the ’756 PCT
`was such an international patent application and that it
`incorporated the ’394 provisional by reference. That lan-
`guage clearly supports the Board’s conclusion here that the
`’394 provisional was publicly accessible. And a contrary
`result is not supported by the next sentence of the regula-
`tion (on which Mr. Konda relies). That sentence provides
`that an inventor’s written authorization is required for pro-
`vision of access to the “paper file,” but the regulation
`clearly distinguishes the “paper file” (i.e., the whole file his-
`tory) from the “application as originally filed.” Under the
`language of § 1.14(a)(1)(vi), therefore, the ’394 provisional
`as originally filed was accessible without Mr. Konda’s writ-
`ten authorization in the incorporation-by-reference circum-
`stance delineated, while the complete file history was not.
`For similar reasons, Mr. Konda’s reliance on the MPEP
`is unavailing. Mr. Konda relies on language in MPEP
`§ 103(VII) which, at the time the ’756 PCT was published,
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`Case: 22-1162 Document: 29 Page: 7 Filed: 05/06/2022
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`KONDA v. FLEX LOGIX TECHNOLOGIES, INC.
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`stated that access to provisional applications “will only be
`given to parties with written authority from a named in-
`ventor, the assignee of record, or the attorney or agent of
`record.” MPEP § 103(VII) (8th ed., Rev. 7, July 2008). As
`an initial matter, however, the MPEP “does not have the
`force of law.” Natural Alternatives Int’l, Inc. v. Iancu, 904
`F.3d 1375, 1382 (Fed. Cir. 2018) (quoting Molins PLC v.
`Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995)). In
`any event, the cited MPEP section further stated that pro-
`visional applications were “also available in the same man-
`ner as any other application,” MPEP § 103(VII) (8 ed., Rev.
`7, July 2008), thereby permitting the access authorized un-
`der 37 C.F.R. § 1.14(a)(1)(vi). Indeed, the MPEP directly
`addressed § 1.14(a)(1)(vi), explaining that “the incorpora-
`tion 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) (cleaned up). Under
`the MPEP, then, the ’394 provisional application became
`publicly available when the ’756 PCT was published.
`Mr. Konda’s remaining argument—that an employee
`at the Office “confirmed on the phone” that provisional ap-
`plications are confidential without written authorization—
`was raised for the first time on rehearing to the Board and
`is therefore forfeited. See 37 C.F.R. § 42.71(d); SAppx. 376–
`77, 392–93. Mr. Konda does not dispute that, if the ’394
`provisional was publicly available, then the Board properly
`considered it as prior art.
`
`III
`For the foregoing reasons, we affirm the Board’s com-
`bined final written decision.
`The parties shall bear their own costs.
`AFFIRMED
`
`