What Is Prior Art?

We are concerned here with the subsection (b)(2)(B) exception, which applies only to prior patent filings by another and provides that such a “disclosure shall not be prior art” if “the subject matter disclosed had . . . been publicly disclosed by the inventor.” [. . .] 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 section 102(b)(2)(B). [. . .]

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 situations in which the invention was “on sale.” [. . .] Sanho’s first problem is that the words “publicly disclosed” are not the same as the word “disclosed.” [. . .] Thus, we reject Sanho’s argument that the plain language of the statute requires Sanho’s preferred result. Rather, it points strongly in the opposite direction. [. . .]

Section 102(b) appears to have as its purpose protection of an inventor who discloses his invention to the public before filing a patent application because the inventor has made his invention available to the public—a major objective of providing patent protection in the first place. [. . .] In light of this purpose, “publicly disclosed by the inventor” must mean that it is reasonable to conclude that the invention was made available to the public. [. . .]

Because Sanho has failed to demonstrate that the private but non-confidential sale of a product allegedly embodying 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.

“The pertinent references in this case, Park and Zhou, were presented at JCT-VC development meetings. The Board found that these meetings were attended by between 200 and 300 interested persons and that the conferees had discussed Park and Zhou at the meetings. The Board also noted that JCT-VC meeting reports summarized the Park and Zhou discussions. Those discussions, the Board found, were conducted without any expectation of confidentiality. . . .”

“The law regarding public accessibility is not as restrictive as M&K suggests–a website's landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence. The Board found that they could have, and that conclusion is supported by substantial evidence.”

“Samsung was not required to show that interested artisans actually accessed Park and Zhou. . . .”

“Samsung was also not required to prove that the oral presentations . . . disclosed the exact material relating to Samsung's obviousness theories in the circumstances of this case.”

The majority relies on the prosecution history as somehow providing clarity to the meaning of the claim language. The majority states that the prosecution history is “significant,” Maj. Op. 15, and implies that the district court erred when it “gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims,” Maj. Op. 17. But the majority does not identify anything in the prosecution history, whether statements by the applicant or by the examiner, that would illuminate the meaning of “modified Watson method” or the language “removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion.”