Pre-Filing Private Sales Cannot Antedate Prior-Art References Under The § 102(b)(2)(B) "Public Disclosure" Exception

In Sanho Corp. v. Kaijet Technology International Ltd., Inc., No. 23-1336 (Fed. Cir. July 31, 2024), the Federal Circuit affirmed the Patent Trial and Appeal Board's decision that the inventor's pre-filing private sale of a product cannot be used to antedate a prior-art reference under the "public disclosure" exception in 35 U.S.C. § 102(b)(2)(B) (AIA) ("A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention . . . [if] the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor.").

In an inter partes review, the Board found certain claims of Sanho's patent unpatentable for obviousness based on several prior-art combinations, each of which included the Kuo publication. Sanho argued that Kuo is not prior art because the inventor of Sanho's patent privately sold a product called the HyperDrive that purportedly embodied the subject matter disclosed in