Sanho Corp. v. Kaijet Technology International Limited, Inc.

108 F.4th 1376

• Court: Court of Appeals for the Federal Circuit
• Decided: July 31, 2024
• Docket: 23-1336
• Status: Published

Opinion

Case: 23-1336 Document: 44 Page: 1 Filed: 07/31/2024

United States Court of Appeals for the Federal Circuit ______________________

SANHO CORP., Appellant

v.

KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC., Appellee ______________________

2023-1336 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 00886. ______________________

Decided: July 31, 2024 ______________________

DAVID KEELER LUDWIG, Hill, Kertscher & Wharton LLP, Atlanta, GA, argued for appellant. Also represented by STEVEN G. HILL.

RYAN GENTES, Lee & Hayes, PC, Atlanta, GA, argued for appellee. Also represented by R. BRUCE BOWER, JAMES D. STEIN. ______________________

Before DYK, CLEVENGER, and STOLL, Circuit Judges. Case: 23-1336 Document: 44 Page: 2 Filed: 07/31/2024

DYK, Circuit Judge. Appellant Sanho Corporation (“Sanho”) appeals from a final decision of the Patent Trial and Appeal Board (“Board”) finding all challenged claims of U.S. Patent No. 10,572,429 (“the ’429 patent”) unpatentable as obvious. Each obviousness combination included U.S. Patent Appli- cation Publication No. 2018/0165053, known as Kuo. Kuo ordinarily would be prior art because its effective filing date predates the effective filing date of the ’429 patent, save for the exception in 35 U.S.C. § 102(b)(2)(B). The sole issue on appeal is the applicability of the prior art excep- tion in that provision. It provides that “[a] disclosure shall not be prior art to a claimed invention under subsection [102](a)(2) if . . . the subject matter disclosed had, before such subject matter was effectively filed under subsec- tion (a)(2), been publicly disclosed by the inventor.” § 102(b)(2)(B). Sanho argues that, before Kuo’s effective filing date, the inventor of the ’429 patent “publicly disclosed” the rel- evant subject matter of Kuo through the private sale of a product (the HyperDrive) allegedly embodying the claimed invention. We understand the Board to have concluded that this private sale does not qualify for the exemption of section 102(b)(2)(B), and Kuo is prior art. We affirm. BACKGROUND The ’429 patent concerns “[a] port extension apparatus for extending ports of an end-user device,” such as a laptop computer. J.A. 928, at col. 6, ll. 46–47. The specification describes a series of ports and connections as well as a data transmission control module, which together allow devices “to connect to data ports of an end-user device.” J.A. 927, at col. 3, ll. 2–3. This allows for easier connections be- tween, for example, a laptop computer and peripheral de- vices such as a printer. Case: 23-1336 Document: 44 Page: 3 Filed: 07/31/2024

SANHO CORP. v. 3 KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC.

Kaijet Technology International Limited, Inc. (“Kai- jet”) filed a petition for inter partes review challenging most claims of the ’429 patent as obvious. Each obvious- ness ground relied on a combination of prior art that in- cluded Kuo. The relevant portion of Kuo discloses a “control system compris[ing] a main control unit that sup- ports USB Type-C (USB-C) interface specification, [and] an image signal processing unit electrically connected to the main control unit and adapted for receiving a display port signal.” J.A. 1362, ¶ 21 (numerals omitted). Thus, both the ’429 patent and Kuo concern docking stations for con- necting multiple devices to an end user device. In the final written decision, the Board found claims 1– 6 and 13–17 of the ’429 patent unpatentable as obvious, re- lying on Kuo as prior art under section 102(a)(2). Kuo’s ef- fective filing date is December 13, 2016—before the ’429 patent’s priority date of April 27, 2017. The question was whether the patentee was correct in arguing that Kuo is not prior art by virtue of section 102(b)(2)(B) of the Patent Act because the inventor purportedly “publicly disclosed” the relevant subject matter of Kuo through the private sale of a device that incorporated the invention and predated Kuo’s effective filing date. Specifically, Sanho contended that the inventor’s sale of the so-called HyperDrive device constituted a public dis- closure by the inventor of the relevant subject matter in Kuo. Mr. Liao, the inventor of the ’429 patent, offered to sell the HyperDrive to Sanho’s owner on November 17, 2016. After obtaining a HyperDrive sample, Sanho placed an order for 15,000 HyperDrive units on December 6, 2016, that was accepted by Mr. Liao’s company, GoPod Group Ltd. (constituting an actual sale). Sanho made no showing that the sale of the HyperDrive that predated Kuo’s effec- tive filing date was publicized in any way, or that there were any such sales other than the private sale of Hyper- Drives from the inventor to Sanho. There is also nothing in the record to indicate that the order for 15,000 Case: 23-1336 Document: 44 Page: 4 Filed: 07/31/2024

HyperDrives was fulfilled before Kuo’s effective filing date, or what became of those devices. The Board determined that the “Patent Owner fail[ed] to show that the inventor publicly disclosed the subject matter of Kuo before Kuo’s effective filing date.” J.A. 39. 1 Therefore, the Board concluded that “Kuo qualifies as prior art, not excluded under § 102(b)(2)(B).” J.A. 45. The Board found all challenged claims unpatentable over combina- tions that all included Kuo. This appeal followed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 2

1 Before the Board, Sanho also contended that an online “Kickstarter” campaign with descriptions and pho- tographs of the device also constituted a public disclosure. The Board rejected this argument after finding that the ar- ticles and photographs were either published after Kuo’s effective filing date or were insufficiently clear and detailed to disclose the relevant subject matter. That determina- tion was not challenged in Sanho’s opening brief. Although Sanho suggested in its reply brief that Sanho’s owner “pub- licized the sale on Appellant’s Kickstarter website, publish- ing images, videos, and other information,” Appellant’s Reply Br. 10, any argument that the Kickstarter campaign further disclosed the subject matter of the sale is forfeited because it was not raised in the opening brief. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006). 2 Kaijet informed us that Sanho had granted it a cov- enant not to sue on the ’429 patent and that Kaijet “no longer has any commercial interest in the validity of this patent.” Oral Arg. 23:20–52. We consider sua sponte whether the case is moot. See Already, LLC v. Nike, Inc., 568 U.S. 85, 91 (2013). We conclude that it is not. The Board’s final written decision found claims 1–6 and 13–17 Case: 23-1336 Document: 44 Page: 5 Filed: 07/31/2024

SANHO CORP. v. 5 KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC.

DISCUSSION On appeal, Sanho argues that “[t]he Board’s failure to find that the HyperDrive sale to Sanho itself constituted a public disclosure under 35 U.S.C. § 102(b)(2)(B) was legal error.” Appellant Op. Br. 17. In response, Kaijet argues that, even if the HyperDrive embodied the relevant fea- tures of the claimed invention, the sale did not publicly dis- close the relevant subject matter for purposes of section 102(b)(2)(B) because the relevant features of the claimed invention were not sufficiently publicized to render the subject matter “publicly disclosed.” 3 We consider whether a non-confidential but otherwise private sale re- sults in an invention’s subject matter being “publicly dis- closed” for purposes of section 102(b)(2)(B). I “In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), transforming the U.S. patent system

of the ’429 patent unpatentable. Sanho still has a legally cognizable interest in the outcome of the appeal since it could assert the patent against other parties. It is still pos- sible for us to grant relief by remanding or vacating the Board’s decision (assuming Sanho prevails). See Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295, 1301 (Fed. Cir. 2020). 3 Kaijet argues alternatively that, even if the sale was a public disclosure for purposes of the statute, it did not disclose the relevant subject matter of Kuo because Kuo described a single-chipset data transmission control mod- ule and Sanho has failed to demonstrate that the Hyper- Drive disclosed the same configuration. We do not reach this issue, but assume, without deciding, that Sanho is cor- rect that the HyperDrive device embodied the relevant teachings of Kuo that were asserted against the ’429 pa- tent. Case: 23-1336 Document: 44 Page: 6 Filed: 07/31/2024

from a first-to-invent to a first-inventor-to-file system for determining patent priority.” SNIPR Techs. Ltd. v. Rocke- feller Univ., 72 F.4th 1372, 1373 (Fed. Cir. 2023) (citing Pub. L. No. 112–29, 125 Stat. 284 (2011)). In doing so, Con- gress “redefined what constitutes ‘prior art’ against a pa- tent or application” by amending section 102 of the Patent Act. Id. at 1375. Section 102(a)–(b) as revised by the AIA is quoted in Appendix A to this opinion. Under the AIA, whether a reference is prior art is de- termined based on “the effective filing date of the claimed invention,” rather than the date of the invention. 35 U.S.C. § 102(a). Thus, prior art includes other patent applications effectively filed, or other patents issued, before the effective filing date of the patent at issue. Id. § 102(a)(2). Sec- tion 102(a)(1) also defines prior art to include situations in which the claimed invention was “described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” However, Congress provided exceptions for cer- tain references that would otherwise be prior art. These exceptions fit into two broad categories. First, section 102(b) contains two largely parallel ex- ceptions at subsections (b)(1)(A) and (b)(2)(A). The subsec- tion (b)(1)(A) exception applies to disclosures covered by section 102(a)(1) (“described in a printed publication, or in public use, on sale, or otherwise available to the public”) created within one year before patent filing. It provides a prior art exception for a “disclosure” that was either “made by the inventor . . . or by another who obtained the subject matter disclosed directly or indirectly from the inventor.” § 102(b)(1)(A). Thus, for example, a private or public sale by the inventor during the one-year grace period is not prior art. Subsection (b)(1)(A) provides protection only during the one-year grace period. The parallel provision at subsection (b)(2)(A) applies to disclosures covered by sec- tion 102(a)(2) (patent applications filed by another). It pro- vides a prior art exception for “subject matter disclosed” Case: 23-1336 Document: 44 Page: 7 Filed: 07/31/2024

SANHO CORP. v. 7 KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC.

that “was obtained directly or indirectly from the inventor.” § 102(b)(2)(A). Subsection (b)(2)(A) is not limited to disclo- sures in the one-year grace period. Together, subsec- tions (b)(1)(A) and (b)(2)(A) operate in the context of the first-inventor-to-file regime to provide protection for other- wise invalidating disclosures by the patentee or by some- one who obtained the subject matter from the patentee, whether directly or indirectly. These subsections do not in- clude a “publicly disclosed” requirement. Second, section 102(b) contains two provisions directed at disclosures by another (that is, not by the inventor) 4 af- ter the “subject matter disclosed” was “publicly disclosed by the inventor” in subsections (b)(1)(B) and (b)(2)(B). Sub- section (b)(1)(B) refers to activities by the inventor or a third party that would otherwise be invalidating disclo- sures under section 102(a)(1) (“described in a printed pub- lication, or in public use, on sale, or otherwise available to the public”) made within one year of the patent filing, and subsection (b)(2)(B) refers to patent applications by an- other (section 102(a)(2) disclosures) that disclosed the “subject matter [already] disclosed” by the inventor, with- out regard to the one-year time limit. In summary, these provisions except from prior art disclosures that were made after the invention was “publicly disclosed” by the inventor. We are concerned here with the subsection (b)(2)(B) ex- ception, which applies only to prior patent filings by an- other and provides that such a “disclosure shall not be prior art” if “the subject matter disclosed had . . . been publicly disclosed by the inventor.”

4 For simplicity we use the term “inventor” here to cover both the inventor and another who obtained “the sub- ject matter disclosed . . . directly or indirectly from the in- ventor.” § 102(b)(2)(A). Case: 23-1336 Document: 44 Page: 8 Filed: 07/31/2024

II Sanho contends that the phrase “publicly disclosed” in section 102(b)(2)(B) should be construed to include all the “disclosure[s]” described in section 102(a)(1), including sit- uations in which the invention was “on sale.” It points out that under the Supreme Court’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. 123, 132 (2019), a private commercial sale constitutes a disclosure under section 102(a)(1). The issue here is 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 sec- tion 102(b)(2)(B). A We start with the language of the statute. Sec- tion 102(b)(2)(B) excludes “[a] disclosure” from prior art if “the subject matter disclosed had . . . been publicly dis- closed by the inventor” before the prior art’s effective filing date. Sanho contends that the “plain language of 35 U.S.C. § 102 indicates that a product sale is a ‘disclosure,’” includ- ing “[e]ven [s]ales [n]ot [d]isclosed to the [p]ublic.” Appel- lant Op. Br. 17, 18 (emphasis omitted). This is so because, according to Sanho, the plain meaning of “publicly dis- closed” in section 102(b)(2)(B) is the same as “disclosed” and “disclosure” used elsewhere in section 102. Sanho ar- gues that “identical words used in different parts of the same statute are presumed to have the same meaning,” so the term “publicly disclosed” should also include “disclo- sures” (i.e., private sales). Appellant Op. Br. 18 (quoting Merrill Lynch, Pierce, Fenner & Smith Inc. v. Dabit, 547 U.S. 71, 86 (2006)). Sanho’s first problem is that the words “publicly dis- closed” are not the same as the word “disclosed.” The use of the two different phrases—“disclosed” and “publicly dis- closed”—suggests that Congress intended the phrases to have different meanings. “A statute should be construed Case: 23-1336 Document: 44 Page: 9 Filed: 07/31/2024

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so that effect is given to all its provisions, so that no part will be inoperative or superfluous, void or insignificant . . . .” Hibbs v. Winn, 542 U.S. 88, 101 (2004) (alteration in original) (quoting 2A N. Singer, Statutes and Statutory Construction § 46.06, 181–86 (rev. 6th ed. 2000)). We think that the added word, “publicly,” both negates Sanho’s con- sistent usage argument and suggests that the sorts of dis- closures that qualify for the exception in section 102(b)(2)(B) are a narrower subset of “disclosures” (i.e., the disclosures that are “public”). See Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., No. 2016-1284, 2018 WL 1583031, at *4 (Fed. Cir. Jan. 16, 2018) (O’Malley, J., concurring in denial of rehearing en banc) (non-prece- dential) (“If all prior art events—i.e., all ‘disclosures’—re- cited in § 102(a) were already public disclosures, the word ‘publicly’ in § 102(b)(1)(B) would be redundant, and there would be no need for a separate rule for third-party disclo- sures.”). That is, the exception applies only to “disclosures” that result in the subject matter of the invention being “publicly disclosed.” We assume Congress means what it says and says what it means. Here, Congress used two different phrases in two separate provisions. If Congress had intended that the exception for things “publicly disclosed” should be as broad as the invalidating “disclosures” in the immediately preceding subsection, it easily could have said so, either by using the same phrase or by cross-referencing the earlier provision. But it did neither; it instead used a new phrase to define the exceptions. Thus, we reject Sanho’s argument that the plain language of the statute requires Sanho’s pre- ferred result. Rather, it points strongly in the opposite di- rection. B Sanho’s reading is also contrary to the purpose of the exception. Section 102(b) appears to have as its purpose protection of an inventor who discloses his invention to the Case: 23-1336 Document: 44 Page: 10 Filed: 07/31/2024

public before filing a patent application because the inven- tor has made his invention available to the public—a major objective of providing patent protection in the first place. The Supreme Court has described the “patent ‘bargain’” as the grant of a limited term of exclusivity “[i]n exchange for bringing ‘new designs and technologies into the public do- main through disclosure.’” Amgen Inc. v. Sanofi, 598 U.S. 594, 604 (2023) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150, 151 (1989)); see also Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63 (1998) (“[T]he pa- tent system represents a carefully crafted bargain that en- courages both the creation and the public disclosure of new and useful advances in technology, in return for an exclu- sive monopoly for a limited period of time.”). In light of this purpose, “publicly disclosed by the in- ventor” must mean that it is reasonable to conclude that the invention was made available to the public. If the sub- ject matter of the invention were kept private, the inventor would not have disclosed the invention to the public. Sec- tion 102(b)(2)(B) thus works to protect inventors who share their inventions with the public from later disclosures made by others. Animating this exception appears to be the idea that priority should be given to the patentees who make their invention available to the public before a patent application filing by another. See 157 CONG. REC. S1360, S1369 (daily ed. Mar. 8, 2011) (statement of Sen. Jon Kyl). It would also be unfair to deny a patent to the original in- ventor if the inventor published the subject matter of the invention, but another filed a patent application appropri- ating the same subject matter after the inventor’s public disclosure. Sanho’s construction cannot be correct. By isolating the phrase “publicly disclosed” from the purposes of the statutory scheme, Sanho’s reading violates “the cardinal rule that a statute is to be read as a whole.” King v. St. Vincent’s Hosp., 502 U.S. 215, 221 (1991). Case: 23-1336 Document: 44 Page: 11 Filed: 07/31/2024

SANHO CORP. v. 11 KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC.

C Finally, to the extent that legislative history is rele- vant, 5 the legislative history states that “public disclosure” requires that the invention be made available to the public. The floor debate explains that “[w]hether an invention has been made available to the public is the same inquiry that is undertaken under existing law to determine whether a document has become publicly accessible.” 157 CONG. REC. at S1370 (statement of Sen. Jon Kyl) (citing Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009) (holding that a reference was not prior art despite “distribution to a limited number of entities without a legal obligation of confidentiality” because it was not sufficiently publicly accessible)); see also JONATHAN S. MASUR & LISA LARRIMORE OUELLETTE, PATENT LAW 91–92 (1st ed. 2021) (“[P]ost-AIA § 102(b)(1)(B) states that the grace period only applies if the patent applicant publicly disclosed before the other party’s prior art came into existence.”). So too “[u]nder [section 102(b)(1)(B) and 102(b)(2)(B)], if an inventor publicly discloses his invention, no subse- quent disclosure made by anyone, regardless of whether the subsequent discloser obtained the subject matter from the inventor, will constitute prior art.” 157 CONG. REC. at S1369 (statement of Sen. Jon Kyl). These provisions oper- ate to ensure that, if the subject matter is sufficiently dis- closed “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. Id. III Sanho nonetheless argues that the language “publicly disclosed” incorporates earlier judicial interpretation of the

5 In Helsinn we questioned whether the AIA floor de- bates were pertinent to interpretation of the statute. 855 F.3d 1356, 1368 (Fed. Cir. 2017), aff’d, 586 U.S. 123. Case: 23-1336 Document: 44 Page: 12 Filed: 07/31/2024

word “public” in the context of invalidating “public use,” de- spite the lack of any evidence that this was the congres- sional design. According to Sanho, under these cases a public use is a “‘public’ disclosure under 35 U.S.C. § 102(b)(2)(B) so long as the recipient of the device is not subject to secrecy obligations.” Appellant Op. Br. 21. Sanho again ignores the fact that “publicly disclosed” and “public use” are different terms, and that sec- tion 102(a) and section 102(b) serve fundamentally differ- ent purposes. While public disclosure of the features of the invention under section 102(b)(2)(B) could be accomplished through a public disclosure involving a public use, there is no requirement that such a public use necessarily “publicly disclose[s]” the invention. The Supreme Court has been clear that a public commercial use that does not disclose to the public all the features of the invention can still be in- validating prior art under the statute. See, e.g., Helsinn, 586 U.S. at 130 (“[O]ur precedents suggest that a sale or offer of sale need not make an invention available to the public.”). Because there is a difference between a commer- cial public use and a disclosure that puts the public in pos- session of the invention, we will not lightly assume that the new statutory phrase “publicly disclosed” incorporates ex- isting law on the issue of “public use.” Sanho’s misplaced reliance on the Supreme Court’s de- cision in Egbert v. Lippmann makes clear the problems with its theory. That case concerned whether the use of an invention (a modified corset spring) by one person was “a public use within the meaning of the statute.” 104 U.S. 333, 336 (1881). That statute, a precursor to sec- tion 102(a)(1), denied a patent if the invention “had been in public use or on sale with the applicant’s consent or allow- ance” outside the grace period. Act of July 4, 1836, 24 Cong. Ch. 357 § 7, 5 Stat. 119. The case thus concerned the scope of invalidating prior art. It did not hold that an in- validating public use must necessarily “publicly disclose” an invention. Rather, the Court remarked that “some Case: 23-1336 Document: 44 Page: 13 Filed: 07/31/2024

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inventions are by their very character only capable of being used where they cannot be seen or observed by the public eye,” confirming that public use is a distinct concept from public disclosure. Egbert, 104 U.S. at 336. Our cases also do not remotely suggest that the reasons for an expansive view of what constitutes commercial “pub- lic use” would apply with equal force to the exception from prior art for subject matter “publicly disclosed” in sec- tion 102(b)(2)(B). Indeed, our cases suggest the opposite. “The proper test for the public use prong of the [pre-AIA] statutory bar is whether the purported use: (1) was acces- sible to the public; or (2) was commercially exploited.” Invi- trogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1380 (Fed. Cir. 2005) (emphasis added). The latter commercial exploitation rationale is based on limiting the patentee’s monopoly to the term provided by Congress. This concern has nothing to do with the issue here, whether the public has learned the relevant aspects of the invention and whether it is fair to treat a subsequent patent filing by an- other as prior art. See BASF Corp. v. SNF Holding Co., 955 F.3d 958, 967 (Fed. Cir. 2020) (noting that “an inven- tor’s commercial exploitation of [a] secret process squarely implicated the Supreme Court’s rationale for creating the statutory bars” regardless of whether it was “‘publicly’ used” in a literal sense (discussing Metallizing Eng’g Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 520 (2d Cir. 1946))). We see no reason to incorporate the judicial interpreta- tions of “public use” in section 102(a)(1) into the definition of “publicly disclosed” in section 102(b)(2)(B), and therefore reject Sanho’s argument. IV Turning to the facts of this case, we think it is clear that the sale alleged by Sanho did not “publicly disclose” the relevant subject matter. Before the Board, Sanho re- lied on declarations from the inventor and from Sanho’s Case: 23-1336 Document: 44 Page: 14 Filed: 07/31/2024

owner to establish a sale before Kuo’s effective filing date. The inventor testified that, before Kuo’s effective filing date, he communicated with Sanho’s owner on the messag- ing service WeChat and “sent to Sanho via private courier a finished version of the [HyperDrive].” J.A. 6088, ¶ 25. He further testified that “Sanho placed an order for 12,000 gray [HyperDrives] and 3,000 silver [HyperDrives] which was accepted” days before Kuo’s effective filing date. J.A. 6094, ¶ 26. Sanho’s owner provided similar testimony, and added that Sanho “transmitt[ed] payment in the amount of $153,600” for the HyperDrives. J.A. 6105, ¶ 20. There was no testimony concerning whether the order was fulfilled, or what became of the 15,000 HyperDrive devices (if they were ever manufactured). Although there was no confidentiality or nondisclosure agreement, there was no teaching of the features of the invention to others beyond Sanho. On these facts, we do not think it is a close question that the relevant subject matter of the invention, that is, the claimed circuitry allegedly described in Kuo, was “pub- licly disclosed” by the sale. The testimony establishes only that there was a private sale between two individuals ar- ranged via private messages. There is no indication the sale disclosed the inventive subject matter to the public sufficiently for the exception to prior art in sec- tion 102(b)(2)(B) to apply. Nor does Sanho claim that it made a public disclosure of the invention through the Hy- perDrive sale, beyond its statutory construction arguments rejected above. We conclude that the sale of the Hyper- Drive here did not publicly disclose the subject matter re- lied on from Kuo as required by section 102(b)(2)(B). We therefore conclude that the Board did not err in determin- ing that Kuo was prior art. V We have concluded that the sale at issue here did not publicly disclose the relevant subject matter under Case: 23-1336 Document: 44 Page: 15 Filed: 07/31/2024

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section 102(b)(2)(B) because Sanho failed to show that the subject matter of the invention itself was publicly dis- closed. We need not decide exactly what is necessary for demonstrating that a sale publicly disclosed the relevant subject matter, or whether to apply the prevailing standard for when a printed publication is sufficiently publicly ac- cessible to qualify as prior art (see the discussion above of the legislative history). Here, it is sufficient to say that Sanho has made no showing that the sale at issue publicly disclosed the relevant aspects of the invention to the public. All that Sanho has shown is the existence of a private sale of the device. That is clearly not enough to qualify for the exception in section 102(b)(2)(B), even if we assume, see su- pra n.3, that the device did embody the subject matter of the invention. CONCLUSION Because Sanho has failed to demonstrate that the pri- vate but non-confidential sale of a product allegedly embod- ying the invention resulted in the relevant subject matter being “publicly disclosed” under section 102(b)(2)(B), the Board did not err in treating the Kuo reference post-dating that sale as prior art. AFFIRMED COSTS Costs to appellee. Case: 23-1336 Document: 44 Page: 16 Filed: 07/31/2024

APPENDIX A [35 U.S.C.] § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be enti- tled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent is- sued under section 151, or in an application for patent pub- lished or deemed published under section 122(b), in which the patent or application, as the case may be, names an- other inventor and was effectively filed before the effective filing date of the claimed invention. (b) EXCEPTIONS.— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A dis- closure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the in- ventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the sub- ject matter disclosed directly or indirectly from the inventor or a joint inventor. (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— Case: 23-1336 Document: 44 Page: 17 Filed: 07/31/2024

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(A) the subject matter disclosed was obtained di- rectly or indirectly from the inventor or a joint in- ventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsec- tion (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the sub- ject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed in- vention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. . . .