KONDA v. FLEX LOGIX TECHNOLOGIES, INC.

Flex Logix challenged various claims of Konda’s U.S. Patent No. 8,269,523, titled “VLSI Layouts of Fully Connected Generalized Networks” in two inter partes reviews. For all challenged claims, Flex asserted unpatentability based on the teachings of a provisional application filed by Konda, which, Flex argued, was public prior art because it was incorporated by reference into a public, prior-art application filed publicly by Konda pursuant to the Patent Cooperation Treaty (PCT). The Board agreed and found all challenged claims unpatentable for either anticipation or obviousness. Konda appealed, presenting only the issue of whether the provisional application (containing essential relied-on teachings) was public. Specifically, Konda 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.  In this non-precedential opinion, the CAFC finds that under the language of 37 C.F.R. 1.14(a)(1)(vi), Konda’s provisional as originally filed was accessible without Konda’s written authorization. The CAFC also rejects Konda’s argument that MPEP § 103(VII), which states 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, because: 1) the MPEP does not have the force of law; and 2) the MPEP, referring to § 1.14(a)(1)(vi), explains that “the incorporation by reference of a pending application in an 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.” Accordingly, the CAFC affirms the Board’s decision.

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