Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. (PTAB) Aug. 1, 2024). Opinion by Chen, joined by Lourie and Cunningham.
Unified filed an IPR petition challenging a Voice Tech patent directed to using voice commands at a mobile device to remotely access and control a computer. The Patent trial and Appeal Board instituted review and issued a Final Written Decision finding all claims unpatentable as obvious over prior art references “Wong” and “Beauregard.” Voice Tech appealed.
Voice Tech first argued that Unified’s IPR petition identified no disclosure in Wong that taught a particular limitation in claims 5 and 7. The Federal Circuit disagreed with Voice Tech’s reading of the petition. For these claims, the petition employed cross-referencing tables that referred to Unified’s prior art analysis for claim 1. The Federal Circuit explained that “the Board in this case did not consider or rely on a new theory absent from the petition” since the petition identified, via cross-reference, that the prior art analysis for claim 1 equally applied to the corresponding portions of claims 5 and 7.
Second, Voice Tech argued that the Board misinterpreted two claim terms. In response, Unified argued that Voice Tech forfeited its claim construction arguments by not repeating the arguments in Voice Tech’s request for rehearing by the Board. The Federal Circuit disagreed with Unified. The court held that “a party’s choice to not re-raise an argument in the party’s request for rehearing to the Board does not, in and of itself, forfeit the argument for review by” the Federal Circuit.
Unified also argued that neither of Voice Tech’s proposed claim constructions would change the outcome of the Board’s patentability analysis. On this point, the Federal Circuit agreed with Unified. Voice Tech failed to explain “why its proposed construction would change the Board’s obviousness finding” and thus failed to show any prejudice resulting from the Board’s constructions. The court thus declined to consider Voice Tech’s claim construction arguments.
Lastly, Voice Tech challenged the substance of the Board’s obviousness findings, raising “implicit” claim construction arguments and disputing various aspects of Wong’s and Beauregard’s teachings. The Federal Circuit rejected the claim construction arguments, certain of which involved terms for which Voice Tech never sought constructions during the IPR. The court rejected the remaining substantive arguments because substantial evidence supported the Board’s findings.
Therefore, the Federal Circuit affirmed the Board’s determination that all claims were unpatentable as obvious.
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Sanho Corp. v. Kaijet Technology International Ltd., Inc., No. 2023-1336 (Fed. Cir. (PTAB) July 31, 2024). Opinion by Dyk, joined by Clevenger and Stoll.
Kaijet filed an IPR petition challenging most claims of a Sanho patent directed to a port extension apparatus for extending ports of an end-user device, such as a laptop computer. The Patent Trial and Appeal Board found all challenged claims unpatentable as obvious. Each obviousness combination included a published U.S. patent application referred to as “Kuo.”
Sanho argued that, before Kuo’s effective filing date, the inventor had “publicly disclosed” the relevant subject matter of Kuo through the private sale of a product allegedly embodying the claimed invention. Sanho based its argument on 35 U.S.C. §102(b)(2)(B), which provides that a “disclosure shall not be prior art to a claimed invention under [§ 102(a)(2)] if … the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor.”
The Board found that the inventor’s private sale did not qualify for that exemption. Thus, the Board determined that “Kuo qualifies as prior art, not excluded by § 102(b)(2)(B).” And with Kuo as prior art, the Board found all challenged claims unpatentable. Sanho appealed.
The question on appeal was “whether a non-confidential but otherwise private sale results in an invention’s subject matter being ‘publicly disclosed’ for purposes of section 102(b)(2)(B).” That question turned on “whether placing something ‘on sale’ in section 102(a)(1) means that the invention embodied by the device sold is necessarily ‘publicly disclosed’ for purposes of section 102(b)(2)(B).”
The Federal Circuit upheld the Board’s interpretation and ruled that Sanho’s reading was contrary to the language of, purpose of, and legislative history for the provision. The court held that “publicly disclosed by the inventor” means that “it is reasonable to conclude that the invention was made available to the public.” The court explained: “If the subject matter of the invention were kept private, the inventor would not have disclosed the invention to the public. Section 102(b)(2)(B) thus works to protect inventors who share their inventions with the public from later disclosures made by others.” The statutory provisions “operate to ensure that, if the subject matter is sufficiently disclosed ‘to the public,’ a patentee will not be prevented from obtaining a patent merely because a third party disclosed what was already publicly disclosed by the inventor.”
Applying these concepts to the facts, the Federal Circuit ruled that the sale relied on by Sanho did not “publicly disclose” the relevant subject matter. It was “a private sale between two individuals,” with “no indication the sale disclosed the inventive subject matter to the public sufficiently for the exception to prior art in section 102(b)(2)(B) to apply.” Thus, Kuo was prior art, and the Board correctly found the challenged claims unpatentable as obvious.
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Unified filed an IPR petition challenging a Voice Tech patent directed to using voice commands at a mobile device to remotely access and control a computer. The Patent trial and Appeal Board instituted review and issued a Final Written Decision finding all claims unpatentable as obvious over prior art references “Wong” and “Beauregard.” Voice Tech appealed.
Voice Tech first argued that Unified’s IPR petition identified no disclosure in Wong that taught a particular limitation in claims 5 and 7. The Federal Circuit disagreed with Voice Tech’s reading of the petition. For these claims, the petition employed cross-referencing tables that referred to Unified’s prior art analysis for claim 1. The Federal Circuit explained that “the Board in this case did not consider or rely on a new theory absent from the petition” since the petition identified, via cross-reference, that the prior art analysis for claim 1 equally applied to the corresponding portions of claims 5 and 7.
Second, Voice Tech argued that the Board misinterpreted two claim terms. In response, Unified argued that Voice Tech forfeited its claim construction arguments by not repeating the arguments in Voice Tech’s request for rehearing by the Board. The Federal Circuit disagreed with Unified. The court held that “a party’s choice to not re-raise an argument in the party’s request for rehearing to the Board does not, in and of itself, forfeit the argument for review by” the Federal Circuit.
Unified also argued that neither of Voice Tech’s proposed claim constructions would change the outcome of the Board’s patentability analysis. On this point, the Federal Circuit agreed with Unified. Voice Tech failed to explain “why its proposed construction would change the Board’s obviousness finding” and thus failed to show any prejudice resulting from the Board’s constructions. The court thus declined to consider Voice Tech’s claim construction arguments.
Lastly, Voice Tech challenged the substance of the Board’s obviousness findings, raising “implicit” claim construction arguments and disputing various aspects of Wong’s and Beauregard’s teachings. The Federal Circuit rejected the claim construction arguments, certain of which involved terms for which Voice Tech never sought constructions during the IPR. The court rejected the remaining substantive arguments because substantial evidence supported the Board’s findings.
Therefore, the Federal Circuit affirmed the Board’s determination that all claims were unpatentable as obvious.
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Sanho Corp. v. Kaijet Technology International Ltd., Inc., No. 2023-1336 (Fed. Cir. (PTAB) July 31, 2024). Opinion by Dyk, joined by Clevenger and Stoll.
Kaijet filed an IPR petition challenging most claims of a Sanho patent directed to a port extension apparatus for extending ports of an end-user device, such as a laptop computer. The Patent Trial and Appeal Board found all challenged claims unpatentable as obvious. Each obviousness combination included a published U.S. patent application referred to as “Kuo.”
Sanho argued that, before Kuo’s effective filing date, the inventor had “publicly disclosed” the relevant subject matter of Kuo through the private sale of a product allegedly embodying the claimed invention. Sanho based its argument on 35 U.S.C. §102(b)(2)(B), which provides that a “disclosure shall not be prior art to a claimed invention under [§ 102(a)(2)] if … the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor.”
The Board found that the inventor’s private sale did not qualify for that exemption. Thus, the Board determined that “Kuo qualifies as prior art, not excluded by § 102(b)(2)(B).” And with Kuo as prior art, the Board found all challenged claims unpatentable. Sanho appealed.
The question on appeal was “whether a non-confidential but otherwise private sale results in an invention’s subject matter being ‘publicly disclosed’ for purposes of section 102(b)(2)(B).” That question turned on “whether placing something ‘on sale’ in section 102(a)(1) means that the invention embodied by the device sold is necessarily ‘publicly disclosed’ for purposes of section 102(b)(2)(B).”
The Federal Circuit upheld the Board’s interpretation and ruled that Sanho’s reading was contrary to the language of, purpose of, and legislative history for the provision. The court held that “publicly disclosed by the inventor” means that “it is reasonable to conclude that the invention was made available to the public.” The court explained: “If the subject matter of the invention were kept private, the inventor would not have disclosed the invention to the public. Section 102(b)(2)(B) thus works to protect inventors who share their inventions with the public from later disclosures made by others.” The statutory provisions “operate to ensure that, if the subject matter is sufficiently disclosed ‘to the public,’ a patentee will not be prevented from obtaining a patent merely because a third party disclosed what was already publicly disclosed by the inventor.”
Applying these concepts to the facts, the Federal Circuit ruled that the sale relied on by Sanho did not “publicly disclose” the relevant subject matter. It was “a private sale between two individuals,” with “no indication the sale disclosed the inventive subject matter to the public sufficiently for the exception to prior art in section 102(b)(2)(B) to apply.” Thus, Kuo was prior art, and the Board correctly found the challenged claims unpatentable as obvious.
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