Navigation
What Is Prior Art?
PTAB Affirmed denying exception in § 102(b)(2)(B) (posted 08/09/24)
35 U.S.C. § 102(b)(2): DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. —A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
In Sanho Corp. v. Kaijet Technology Int’l Ltd., the Federal Circuit held that a prior sale of HyperDrive devices by the inventor did not trigger an exception under 35 U.S.C. §(b)(2)(B) against a later-filed patent application from serving as prior art under 35 U.S.C. § 102(a).
Stated the court:
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.
Fed. Cir.: Upholds web document as "publicly available" (posted 04/09/23)
February 1, 2021: In M & K Holdings, Inc., v. Samsung Elecs. Co., 1) the Fed. Cir. upheld a PTAB ruling that a S&K's video compression patent was invalid because prior art documents were available on JTC-VC's public website before the priority date of the patent. The court rejected M&K's argument that a person or ordinary skill in the art could not have located the prior art documents with reasonable diligence because the documents were not prominent and because the structure of JCT-VC's website, which lacked an adequate search function would have made finding the documents prohibitively difficult. Stated the court:
“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.”
Admitted prior art unavailable in IPR (posted 02/10/22)
Section 311(b) of the Patent Act:
Scope. – A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.
In Qualcomm Inc. v. Apple, Inc., the Federal Circuit agreed with Qualcomm that patent owner admissions cannot be used to challenge validity of a patent in an inter partes review and reversed the PTAB on this point. The court rejected Apple's argument that §311(b) permits “the use of any 'prior art'–including AAPA–that is contained in any patent or printed publication, regardless of whether the document itself is prior art, can be used as a basis for a challenge in inter partes review.” The court agreed with both Qualcomm and the PTO that “patents or printed publications” that form the “basis” of a ground for inter partes review must themselves be prior art to the challenged patent, and relied on Supreme Court precedent/dicta to support this conclusion.
Fed. Cir. reverses §112 indefiniteness rejection on basis of intrinsic record (posted 02/01/22)
In Nature Simulation Systems, Inc. v. Autodesk, Inc.,<fc #ff0000>*</fc> a majority of a panel decision authored by Judge Newman holds that the district's “standard of unanswered questions” raised by the claim limitations, which required “that the questions are answered in the claim language, standing alone” is “not the correct standard of law, and is contrary to uniform precedent. Patent claims are viewed and understood in light of the specification, the prosecution history, and other relevant evidence, as 'would have allowed a skilled artisan to know the scope of the claimed invention with reasonable certainty'” (internal citations omitted).
<fc #ff0000>*</fc>This opinion was modified and reissued on 10/17/22 following a petition for rehearing filed by Appellee. This blurb was updated to reflect the updated opinion.
Dissent: Judge Dyk dissented. Dyk argues that:
Judge Dyk dissented, stated that the 'claim language, standing alone' language was “quoted from Autodesk's expert declaration, appears nowhere in the district court's opinion, and forms no part of its decision,” and further, that “the expert himself did not apply an incorrect standard. In searching for a meaning for the term “modified Watson method,” the expert looked not just to the claim language itself, but also to the specification, including the very figures that the majority cites.”
Judge Dyk further explains:
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.”
(Internal citations omitted).
PTAB precedential ruling requires evidence of availability (posted 01/08/20)
In Hulu LLC v. Sound View Innovations LLC, the PTAB issued a precedential ruling for printed publications such as books, at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date.