In Konda v. Flex Logix Technologies, Inc.,1 the Federal Circuit held that a provisional application incorporated by reference in a Patent Cooperation Treaty (PCT) application was prior art against the later filed claims of the U.S. patent application when the provisional application failed to provide adequate written description support.
Venkat Konda owned U.S. Patent No. 8,269,523, titled “VLSI Layouts of Fully Connected Generalized Networks.” Flex Logix Technologies, Inc., filed two inter partes reviews (IPRs) against the ’523 patent before the Patent Trial and Appeal Board (Board). Flex Logix argued invalidity in view of a provisional application filed by Mr. Konda asserted to be prior art because it was incorporated by reference into a PCT application also filed by Mr. Konda. The Board agreed with Flex Logix that the provisional application and PCT application were public prior art that anticipated or rendered obvious the claims.
Mr. Konda appealed, submitting only the question of whether the provisional application was publicly available. In particular, Mr. Konda argued that his provisional application was confidential and, therefore, not prior art.2
On appeal, the court rebuffed Mr. Konda’s argument and affirmed the Board’s holding that the provisional application was prior art. The ’523 patent originated from U.S. Patent Application No. 12/601,275 (’275 application), which was filed on November 22, 2009, as a national phase entry of PCT Application No. PCT/US2008/064605 (’605 PCT), filed on May 22, 2008. The ’275 application claimed priority to U.S. Provisional Application No. 60/940,394 (’394 provisional), filed on May 25, 2007.3
Flex Logix submitted two petitions for IPR, one for claims 1, 15–18, 20–22, 32 and 47 of the ’523 patent, and the second for claims 2–7 and 11. Flex Logix argued in the petitions that the earliest priority date for the ’523 patent was the filing date of the ’275 application, i.e., November 22, 2009. In particular, Flex Logix asserted that priority under 35 U.S.C. § 120 could not reach to the ’605 PCT (2008) and the ’394 provisional (2007) because the ’523 patent claims were not supported by those two earlier filings. The Board agreed with Flex Logix and decided that the ’523 patent’s priority date was November 22, 2009, which was not challenged on appeal.4
Based on the unchallenged priority date of November 22, 2009, Flex Logix asserted Mr. Konda’s earlier patent application, PCT Publication No. WO 2008/109756 A1 (’756 PCT), which was published September 12, 2008, was prior art and anticipated or rendered obvious the claims of the ’523 patent.
Mr. Konda countered that the ’394 provisional could not be prior art because unpublished provisional applications are maintained in confidence without the applicant’s consent, and he never consented to disclose the ’394 provisional.
The Board released a final written decision finding all challenged claims unpatentable. The Board determined that the ’756 PCT, published more than a year before, was anticipatory prior art under 35 U.S.C. § 102(b). Since the ’756 PCT incorporated by reference the ’394 provisional application, the Board held that the ’394 provisional application became publicly available as of the publication date of the ’756 PCT. The Board then held the ’394 provisional was prior art because it was publicly available due to its incorporation by reference by the ’756 PCT.5
The Board disagreed with Mr. Konda that the ’394 provisional was not publicly available under Section 1.14(a)(1)(vi), which 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 international application under 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.6
The Board reasoned that the last sentence of § 1.14(a)(1)(vi) related to the paper file of an unpublished patent application and did not prevent access to the application itself, which was publicly available if incorporated by reference in a PCT application. The Board determined that a copy of the ’394 provisional became publicly available as of the publication of the ’756 PCT, irrespective of Mr. Konda’s consent.
Mr. Konda appealed, and the Federal Circuit affirmed. The court explained that a printed publication under § 102(b) must be available such that persons interested and ordinarily skilled in the art using reasonable diligence could find it.7 Mr. Konda contested only the Board’s decision that the ’394 provisional was publicly available, referring to 35 U.S.C. § 122, 37 C.F.R. § 1.14(a)(1)(vi) and (c), and MPEP § 103(VII).
37 C.F.R. § 1.14(a) states, upon written request and payment of a fee, anyone can obtain a copy of an unpublished pending application if it was incorporated by reference in a published international application under PCT Article 21(2).8 Both parties agreed that the ’756 PCT was a published international application under PCT Article 21(2) and that it incorporated by reference the ’394 provisional application. Thus, the court agreed with the Board’s decision that the ’394 provisional was publicly accessible.9
The court also rejected Mr. Konda’s reliance on the language in MPEP § 103(VII), which specified 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.”10The court reasoned that MPEP § 103(VII) explained that provisional applications were “also available in the same manner as any other application,”11 enabling access under 37 C.F.R. § 1.14(a)(1)(vi). Therefore, the court concluded that “the ’394 provisional application was publicly available when the ’756 PCT was published.”12 Accordingly, the court affirmed the Board’s decision that the challenged claims were unpatentable.
The Konda v. Flex Logix Technologies, Inc. decision uncovered a vulnerable aspect of Mr. Konda’s patent/patent infringement claim, i.e., that Mr. Konda’s own prior filings could be used as prior art against his claim. The court, citing federal regulations, held that a provisional application incorporated by reference in a PCT application was prior art as of the publication date of the PCT application. Thus, no new law was created in this case, just the realization that under the regulations, the validity of Mr. Konda’s patent was dubious and ultimately invalid.
Thus, patent litigants should take special care to review the validity of their patents, particularly when there are several patent filings that relate to the same overall invention. Patent owners should be cognizant that it is not unusual to have their own earlier prior art cited against later patent applications, particularly where the later patent application is an improvement on the earlier invention or patent application. Therefore, depending on how an invention evolves over time, there may be situations where it is not possible to avoid an inventor’s own work being cited as prior art against later related inventions. That does not mean, however, that the later invention is not patentable.
Accordingly, patent litigants defending accused infringers should carefully research patent families and related patents/published applications for appropriateness to be used as invalidating prior art. Since Patent Office examiners are charged with reviewing related patents/patent families, this type of invalidity grounds might be better asserted during an IPR, which uses the preponderance of evidence standard, as opposed to the higher clear and convincing standard used by the district courts, where patent invalidity challenges tend to focus more on prior art not considered by the examiner.13
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.
1 Konda v. Flex Logix Techs., Inc., No. 2022-1162, 2022 USPQ2d 437, 2022 WL 1436144 (Fed. Cir. May 06, 2022) (unpublished).
2 Id., slip op. at 1.
3 Id., slip op. at 1.
4 Id., slip op. at 1–2.
5 Id., slip op. at 2 (citing Flex Logix Techs, Inc. v. Konda, Nos. IPR2020-00260, IPR2020-00261, 2021 WL 3265741 at *9 (P.T.A.B. July 29, 2021)).
6 Id., slip op. at 2 (citing 37 C.F.R. § 1.14(a)(1)(vi)).
7 Id., slip op. at 5 (citing Kyocera Wireless Corp. v. Int’l. Trade Comm’n, 545 F.3d 1340, 1350, 89 USPQ2d 1057, 1064 (Fed. Cir. 2008)).
8 Id., slip op. at 6.
9 Id., slip op. at 6.
10 Id., slip op. at 6 (citing MPEP § 103(VII) (8th ed., Rev. 7, July 2008)).
11 Id., slip op. at 7 (citing MPEP § 103(VII) (8th ed., Rev. 7, July 2008)).
12 Id., slip op. at 7.
13 The presumption of validity is codified in 35 U.S.C. § 282 and has been a fixture of U.S. patent law for many years, questioning the wisdom of changing that standard to preponderance of evidence at the Patent Office for contested proceedings. For example, in 1840, Justice Story stated:
The patent was issued under the great seal of the United States, and is signed by the President, and countersigned by the Secretary of State. It is a presumption of law, that all public officers, and especially such high functionaries, perform their proper official duties until the contrary is proved. And where, as in the present case, an act is to be done, or patent granted upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act or granted the patent, is prima facie evidence that the proofs have been regularly made, and were satisfactory.
Philadelphia & Trenton R.R. Co. v. Stimpson, 39 U.S. (14 Pet.) 448, 458–59 (1840) (Story, J.). See also Potter v. Holland, 19 F. Cas. 1160, 1165 (No. 11,330) (C.C.D. Conn. 1858):
The commissioner is entrusted, by law, with the power and duty of granting patents for new and useful inventions. He is authorized to grant a patent only for a new and useful invention or improvement, and it is to be presumed that he has performed his duty, and has not neglected or disregarded it.