Alston & Bird
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. Voice Tech’s interpretation of the petition was not accepted by the Federal Circuit. The petition used cross-reference tables for these claims that referred back to Unified’s prior arts analysis for claim 1. The Federal Circuit explained that, “the Board did not consider or rely upon a new theory that was absent from the petition”, since the petition indicated, via cross-references, that the prior arts analysis for claim 1 applied equally to the corresponding parts of claims 5 and 7.1001010Secondly, Voice Tech argued the Board misinterpreted the terms in two claim terms. Unified responded by arguing that Voice Tech had forfeited their claim construction arguments because they did not repeat the arguments in Voice Tech’s request for a rehearing before the Board. The Federal Circuit disagreed. 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. Unified won this point. Voice Tech failed “to explain why its proposed construction would alter the Board’s apparentness finding” and failed to show any prejudicial effects resulting from Board 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 Voice Tech’s claim construction arguments. Some of these terms were not covered by the IPR and Voice Tech had never sought a construction. 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 and Clevenger, with Stoll.Kaijet submitted an IPR petition to challenge the majority of claims of a Sanho Patent directed at a port extension device for extending ports on an end-user product, such as a computer laptop. Patent Trial and Appeal Board ruled that all challenged claims were unpatentable because they were obvious. Each obviousness combination included an published U.S. Patent application referred as “Kuo.” Sanho’s argument was based on 35 U.S.C. SS102(b)(2)(B), which provides that a “disclosure shall not be prior art to a claimed invention under
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. The Board concluded that Kuo was prior art and not excluded by SS 102 (b)(2) (B). With Kuo as prior arts, the Board found that all challenged claims were unpatentable. Sanho appealed.[§ 102(a)(2)]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 ruled that “publicly revealed by the inventor” meant that “it’s reasonable to conclude that invention was made public.” It explained that if the subject matter had been kept private, then the inventor wouldn’t have disclosed it 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. The Federal Circuit ruled that the sale relied on by Sanho did not “publicly disclose” the relevant subject matter.
