Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Sanho Corp. v. Kaijet Technology International Limited Inc., Appeal No. 2023-1336 (Fed. Cir. July 31, 2024)
In our Case of the Week, the Federal Circuit held that the private but non-confidential sale of thousands of laptop ports did not count as a “public disclosure” of the inventions embodied therein.
Sanho Corporation owns U.S. Patent No. 10,572,429, concerning a port extension apparatus for extending ports of end-user devices, such as laptops. Kaijet Technology International Limited Inc. filed for inter partes review of the ’429 patent, and challenged most of the claims as obvious. Each obviousness challenge relied on combinations of prior art that included U.S. Patent Application Publication no. 2018/0165053, known as Kuo.
ALSO THIS WEEK
Voice Tech Corp. v. Unified Patents, LLC, Appeal No. 2022-2163 (Fed. Cir. Aug. 1, 2024)
On appeal from an inter partes review, the Court clarified that a party does not forfeit an argument on appeal merely for failing to raise it in a request for rehearing under 37 C.F.R. § 42.71(d). The Patent Trial and Appeal Board had found all challenged claims of Voice Tech’s voice recognition patent invalid as obvious, and Voice Tech argued that the Board had erred in its construction of certain limitations. The Federal Circuit rejected petitioner Unified Patents’ argument that, because Section 42.71(d) requires a requestor to “identify all matters the party believes the Board misapprehended or overlooked” in a final written decision, Voice Tech had forfeited its arguments by failing to include them in that request. Instead, the Court explained that a request for rehearing itself is optional; that the set of matters the Board may have “misapprehended or overlooked” did not necessarily include all matters presented for consideration; and that it would make little sense to find that a party filing an optional request for rehearing must then reiterate all arguments rejected by the Board or risk waiving them on appeal.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.
Jason A. Wrubleski, Shareholder
Contributors: