## Facts

- Sanho owned U.S. Patent No. 10,572,429, directed to a port extension apparatus (hub/docking station) for an end-user device, using multiple ports and a data transmission control module.
- Kaijet petitioned for inter partes review, asserting obviousness based on combinations that each included a published application to Kuo.
- Kuo’s effective filing date preceded the ’429 patent’s effective filing date, making Kuo prior art under 35 U.S.C. § 102(a)(2) unless an exception applied.
- Sanho argued Kuo should be excluded under 35 U.S.C. § 102(b)(2)(B) because, before Kuo’s effective filing date, the inventor had “publicly disclosed” the relevant subject matter via a private sale of “HyperDrive” units allegedly embodying the invention.
- The PTAB found Sanho failed to show any “public” disclosure; it treated the HyperDrive transaction as a non-public commercial sale without broader dissemination.
- The PTAB issued a final written decision holding all challenged claims unpatentable as obvious; Sanho appealed solely on the § 102(b)(2)(B) issue.

## Issues

1. Whether a private sale of a product allegedly embodying the claimed invention, without additional public dissemination, constitutes a “publicly disclosed” disclosure under 35 U.S.C. § 102(b)(2)(B) that disqualifies a third-party application as prior art under § 102(a)(2).

## Decision

- The Federal Circuit affirmed the PTAB’s final written decision.
- The court held that the HyperDrive private sale did not qualify as a “public[] disclose[ure]” under § 102(b)(2)(B).
- Because the exception did not apply, Kuo remained § 102(a)(2) prior art, and the Board’s obviousness findings based on combinations including Kuo were sustained.

## Legal Principles

- The § 102(b)(2)(B) exception requires a prior inventor-originated disclosure that makes the relevant subject matter publicly accessible before the third party’s effective filing date.
- A non-public, arm’s-length commercial transaction, standing alone, does not satisfy “publicly disclosed,” even if not subject to an express confidentiality obligation.
- To invoke § 102(b)(2)(B), the patent owner must show evidence of actual public dissemination or accessibility of the relevant subject matter (e.g., public demonstrations, publicly available technical materials, or distribution reaching the public).

## Conclusion

The Federal Circuit held that a private sale of an allegedly embodying product, without proof that the relevant technical subject matter became publicly accessible, is not a “publicly disclosed” disclosure under § 102(b)(2)(B); therefore, the third-party reference remained prior art and the PTAB’s obviousness determinations were affirmed.


Sanho Corp. v. Kaijet Tech. Int’l Ltd., 108 F.4th 1376 (Fed. Cir. 2024)