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Sanho Corp. v. Kaijet Technology International, Inc.

108 F.4th 1376 (Fed. Cir. 2024)

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Sanho Corp. v. Kaijet Technology International, Inc.

United States Court of Appeals for the Federal Circuit
108 F.4th 1376 (Fed. Cir. 2024)

Facts

In November 2016, the inventor of Kuo, a docking station for connecting multiple devices to end devices like laptops, offered to sell HyperDrive, a device incorporating Kuo, to Sanho Corp. (defendant). On December 6, 2016, Sanho ordered 15,000 HyperDrive units. Although the sale was not confidential, it was not publicized in any way. On December 13, 2016, a patent application was filed for Kuo. In April 2017, Sanho filed a patent application for a docking station that connected multiple devices to a user device like a laptop. Several claims in the resulting patent (the ’429 patent) consisted of combinations relying on Kuo. Kaijet Technology International, Inc. (Kaijet) (plaintiff) challenged those claims, arguing that they were unpatentable as obvious because the Kuo patent application, which predated the ’429 patent application, constituted prior art. Sanho argued that the Kuo application was not prior art because the sale of HyperDrives containing Kuo to Sanho, which occurred before the Kuo application was filed, meant that the inventor had publicly disclosed Kuo, triggering the prior-art exception in 35 U.S.C. § 102(b)(2)(B). The Patent Trial and Appeal Board agreed with Kaijet, holding that the challenged claims in the ’429 patent were unpatentable for obviousness. Sanho appealed to the Federal Circuit.

Rule of Law

Issue

Holding and Reasoning (Dyk, J.)

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