Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper No. 57
`Entered: September 24, 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.
`
`
`
`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.
`
`
`571-272-7822
`
`
`
`
`
`
` Paper No. 57
`Entered: September 24, 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.
`
`
`
`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
`
`
`
`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
`
`
`
`
`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
`
`
`
`
`4
`
`
`
`IPR2020-00260
`IPR2020-00261
`Patent 8,269,523 B2
`
`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
`
`
`
`
`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.
`
`
`
`
`6
`
`
`
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
