Federal Circuit IP

Sanho v. Kaijet

Published September 21, 2024

Case No. 23-1336, Precedential, (Fed. Cir. July 31, 2024)

Dyk, Clevenger, Stoll

Facts/Background:

  • November 17 – December 8, 2016: Inventor offers to sell HyperDrive to Sanho, Sanho orders and tenders payment. No evidence HyperDrives delivered.
  • December 13, 2016: Effective filing date of US 2018/0165053 (Kuo).
  • April 27, 2017: Parent of US 10,572,429 filed (patent at issue).
  • In a later IPR, ‘429 patent is held to be obvious in part over Kuo.

Issue: Did the conduct from November 17 – December 8, 2016 qualify for the 35 U.S.C. § 102(b)(2)(B) safe harbor, to disqualify Kuo as prior art?

Holding: No, the specific conduct here does not qualify for the exception.

Analysis:

  • The exception includes the further term “publicly” whereas when referring to normal prior art disclosures § 102 use just the word “disclosure.” “Publicly” must mean something more is needed.
  • “Publicly disclosed” should be interpreted to promote the public policy goal of the patent bargain.

Takeaways:

  • The Federal Circuit refuses to decide the extent of what is necessary for something to be a “public disclosure.”
  • The § 102(b)(1)(B)/(b)(2)(B) exceptions are unreliable, don’t count on them.
  • This case may be a candidate for rehearing, the district court refused to consider some additional more extensive disclosures of the technology prior to Kuo’s filing date.