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Federal Circuit Affirms PTAB Decision Finding Claims Unpatentable Based On A Patent Application Publication’s Incorporation By Reference Of A Provisional Application
05/17/2022On May 6, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office. Konda v. Flex Logic Techs., Inc., No. 2022-1162, __ F. App’x __ (Fed. Cir. May 6, 2022). The PTAB agreed that a prior art reference rendered unpatentable the challenged claims.
Petitioner Flex Logic filed two petitions for inter partes review, challenging a patent owned by Venkat Konda. In both petitions, Flex Logic asserted that the challenged claims were unpatentable based on teachings of a provisional application filed by Konda, which, per Flex Logic, was public prior art because it was incorporated by reference into a public, prior art application that Konda filed publicly pursuant to the Patent Cooperation Treaty (“PCT”).
Konda argued that the provisional application was not published and therefore not prior art. According to Konda, the Patent Office keeps confidential the filings of provisional applications, he did not waive the confidential status, and thus the provisional application was not publicly available and not prior art to the challenged patent. Konda based his argument on 37 C.F.R. § 1.14(a)(1)(vi), which states: “A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by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.” Paragraph (c) of 37 C.F.R. § 1.14 then limits access, subject to written authorization of the inventor or other authorized person.
The PTAB agreed with Flex Logic that the provisional and PCT applications were public prior art and further found that they rendered all challenged claims unpatentable as being anticipated or obvious. In particular, the PTAB found that once the PCT application was published — which incorporated the provisional application — so too was the provisional application available as public prior art.
On appeal, the CAFC affirmed. As the CAFC noted, 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 application “as originally filed” if that unpublished pending application was incorporated by reference into an international patent application published in accordance with PCT Article 21(2). In the instant case, it is undisputed that the PCT application was such an international patent application and that it incorporated the provisional by reference. According to the CAFC, the regulation’s language clearly supports the PTAB’s conclusion here that the provisional was publicly accessible. Further, the following sentence of the regulation — “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” — does not direct a different result. That sentence provides that an inventor’s written authorization is required for provision of access to the “paper file,” but the regulation clearly distinguishes the “paper file” (i.e., the whole file history) from the “application as originally filed.” Under the language of Section 1.14(a)(1)(vi), the provisional application as originally filed was accessible without Konda’s written authorization in the incorporation-by-reference circumstance delineated, while the complete file history was not.
