- Duane Brockman v. Wesley BainterInstitution deniedPTAB · May 11, 2017 · DER2016-00002 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding because the petition did not provide substantial evidence that the challenged claims were the same or substantially the same as the invention conceived and communicated.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature. Claim 6 requires a motor movably mounted to a frame for translation between a retracted position and an extended position, and a control unit that causes both the motor and the anchor member to move from a retracted position to an extended position and from an extended position to a retracted position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such motor and control module, and the Petition does not account for such a feature.” slip op. at 8
- Adverse judgmentAdverse judgmentDenied
“II. Discussion In its Response to the Show Cause Order, Petitioner argues that 35 U.S.C. § 135 does not require a petitioner’s involved application to be maintained after a derivation petition has been filed, that Petitioner’s entire purpose for filing the Petition was for the Board to direct that “the Petitioner be added as a named inventor [in] Respondent[’s] Application,” and that “the Respondent be removed as a named inventor from the Respondent Application.” Paper 6, 1–2. Under the circumstances here, we do not enter adverse judgment against Petitioner for having abandoned the ’929 Application. Hereinafter, we discuss the merits of the Petition for purposes of determining whether a derivation proceeding should be instituted.” slip op. at 2
- BurdenNot shown unpatentable
“required to show (1) that the challenged claims are drawn to the same or substantially the same invention as the invention he disclosed to Respondent, (2) that Petitioner has at least one claim that is the same or substantially the same as the Respondent’s claimed invention, and (3) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to the Respondent. For these requirements, the Petition contains only a general citation to “Ex. 1003; Ex. 1004; Ex. 1005.” Pet. 7–11. As noted above, Exhibit 1003 is a declaration from Petitioner; Exhibit 1004 is a declaration of Tyler Brockman; and Exhibit 1005 is an affidavit of Scott Sproul. None of the testimony from Petitioner, Tyler Brockman, and Scott Sproul, however, addresses the specifics of any claim. With regard to the first requirement, it cannot simply be assumed that the challenged claims are drawn to the same or substantially the same invention as that which Petitioner has conceived and communicated to Respondent. The Petitioner provides no reasoning or analysis in that regard. Several features in the challenged claims demand a meaningful accounting by Petitioner, relative to the invention conceived by Petitioner and communicated by Petitioner to Respondent. Challenged claims 1, 2, and 6 are independent and all other challenged claims depend, directly or indirectly, from one of claims 1, 2, and 6. Claim 1 requires an actuator, mounted to an irrigation tower and separate from the anchor member, that has a retracted position and an extended position. According to claim 1, the anchor member is mounted to the actuator. Also according to claim 1, when the actuator is in its retracted position, the anchor member is retracted above the soil surface, and when the actuator is in its extended position, the anchor member penetrates the soil surface. The invention conceived by Petitioner and as communicated by Petitioner to Respondent, as identified above, however, includes no such actuator. More particularly, lacking from the Petitioner’s conceived and communicated invention is a sufficient disclosure or description of an actuator that, itself, translates between extended and retracted positions, and lacking from the Petition is any reasoning to account for the obviousness of such a feature to one with ordinary skill in the art. Similarly, claim 2 requires a motor, in an actuator, that is slidably mounted to the frame for movement between a retracted position and an extended position. The invention conceived by Petitioner and communicated by Petitioner to Respondent, as identified above, however, includes no such actuator and motor, and the Petition does not account for such a feature.” slip op. at 8
NonePatents in suitUS 9,215,847 - PTAB · Dec 22, 2016 · DER2016-00022 · APJ Joni Y Chang · DER · Order
The Board denied institution because Shukh had no pending claim substantially the same as the Respondents’ claimed invention or the invention allegedly disclosed to them.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“is required to show that the petitioner has at least one claim that is: (1) the same or substantially the same as the respondent’s claimed invention; and (2) the same or substantially the same as the invention disclosed to the respondent. In the instant Petition, Petitioner asserts that claim 19 of Petitioner’s” slip op. at 3
NonePatents in suitUS 9,853,053 - Catapult Innovations Pty Ltd v. Adidas AGRehearing deniedPTAB · Oct 15, 2014 · DER2014-00006 · APJ Jameson Lee · DER · Rehearing
The Board denied Catapult’s rehearing request, leaving in place denial of the derivation petition because Catapult failed to show originality and align its disclosed invention analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“is incorrect that mere possession of an invention, however obtained, even if received via another source, constitutes conception of invention. We are aware of no such authority, and no authority cited by Petitioner supports Petitioner’s contention. Petitioner cites to this sentence in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.” Req. Rhg. 6. The statement is focused on expressing that every feature must be accounted for, and not that possession alone is sufficient to demonstrate conception of invention. As we stated in the Decision, derivation addresses originality—who invented the subject matter at issue, not mere possession. Paper 19, 17.” slip op. at 2
- BurdenDecided for patent owner
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned. In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed invention, i.e., “the disclosed invention.” That does not change as one shifts focus from one of Petitioner’s claims to another or from one of Respondent’s claims to another. We explained in the Decision how Petitioner evidently regards the entire collection of communicated information as its disclosed invention. Paper 19, 10. As is noted in the above-quoted text, Petitioner has not identified any of its own claims as being the same or substantially the same as all of that communicated information. Petitioner’s P to D and D to R analysis are not aligned. Also, we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2), the law on derivation requires a showing of prior conception and communication of that prior conception. Paper 19, 4, 17–18.” slip op. at 3
- Strike new argumentNew argument disregardedDenied
“3. In its Request for Rehearing, Petitioner argues that the events of October 19–20, 2010, constitute an actual reduction to practice that was communicated to adidas Wearable Sports Electronics. Req. Rhg. 7, 9. The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing request must identify the place where each matter was previously addressed. We could not have overlooked an argument that was not presented. The new argument is not entitled to consideration. In any event, shifting the issue to “actual reduction to practice” does not help the Petitioner. That which allegedly is actually made or performed still must be the invention of Petitioner’s inventor. There is no escaping from the issue of originality, whether the subject is conception or actual reduction to practice.” slip op. at 4
NonePatents in suitUS 9,141,759 - Catapult Innovations Pty Ltd v. Adidas AGRehearing deniedPTAB · Oct 15, 2014 · DER2014-00005 · APJ Jameson Lee · DER · Rehearing
The Board denied Catapult’s rehearing request, leaving institution of the derivation proceeding denied because Catapult failed to show aligned derivation analyses or prior conception and communication of its invention.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“is incorrect that mere possession of an invention, however obtained, even if received via another source, constitutes conception of invention. We are aware of no such authority, and no authority cited by Petitioner supports Petitioner’s contention. Petitioner cites to this sentence in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.” Req. Rhg. 6. The statement is focused on expressing that every feature must be accounted for, and not that possession alone is sufficient to demonstrate conception of invention. As we stated in the Decision, derivation addresses originality—who invented the subject matter at issue, not mere possession. Paper 13, 18.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“October 19–20, 2010, constitute an actual reduction to practice that was communicated to adidas Wearable Sports Electronics. Req. Rhg. 6, 7, 9. The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing request must identify the place where each matter was previously addressed. We could not have overlooked an argument that was not presented. The new argument is not entitled to consideration. In any event, shifting the issue to “actual reduction to practice” does not help the Petitioner. That which allegedly is actually made or performed still must be the invention of Petitioner’s inventor. There is no escaping from the issue of originality, whether the subject is conception or actual reduction to practice.” slip op. at 4
- BurdenNot shown unpatentable
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned. In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed invention, i.e., “the disclosed invention.” That does not change as one shifts focus from one of Petitioner’s claims to another or from one of Respondent’s claims to another. We explained in the Decision how Petitioner evidently regards the entire collection of communicated information as its disclosed invention. Paper 13, 10–11. As is noted in the above-quoted text, Petitioner has not identified any of its own claims as being the same or substantially the same as all of that communicated information. Petitioner’s P to D and D to R analysis are not aligned. Also, we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2), the law on derivation requires a showing of prior conception and communication of that prior conception. Paper 13, 4, 18–19.” slip op. at 3
NonePatents in suitUS 9,317,660 - Catapult Innovations Pty Ltd v. Adidas AGRehearing deniedPTAB · Oct 15, 2014 · DER2014-00002 · APJ Jameson Lee · DER · Rehearing
The Board denied Catapult’s request for rehearing of the decision denying institution of a derivation proceeding because its derivation analysis did not identify a consistent disclosed invention and failed to establish originality.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“is incorrect that mere possession of an invention, however obtained, even if received via another source, constitutes conception of invention. We are aware of no such authority, and no authority cited by Petitioner supports Petitioner’s contention. Petitioner cites to this sentence in Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing conception a party must show possession of every feature recited in the count, and that every limitation of the count must have been known to the inventor at the time of the alleged conception.” Req. Rhg. 6. The statement is focused on expressing that every feature must be accounted for, and not that possession alone is sufficient to demonstrate conception of invention. As we stated in the Decision, derivation addresses originality—who invented the subject matter at issue, not mere possession. Paper 19, 18.” slip op. at 2
- Strike new argumentNew argument disregardedDenied
“October 19–20, 2010, constitute an actual reduction to practice that was communicated to adidas Wearable Sports Electronics. Req. Rhg. 7, 9. The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing request must identify the place where each matter was previously addressed. We could not have overlooked an argument that was not presented. The new argument is not entitled to consideration. In any event, shifting the issue to “actual reduction to practice” does not help the Petitioner. That which allegedly is actually made or performed still must be the invention of Petitioner’s inventor. There is no escaping from the issue of originality, whether the subject is conception or actual reduction to practice.” slip op. at 4
- BurdenDecided for patent owner
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned. In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed invention, i.e., “the disclosed invention.” That does not change as one shifts focus from one of Petitioner’s claims to another or from one of Respondent’s claims to another. We explained in the Decision how Petitioner evidently regards the entire collection of communicated information as its disclosed invention. Paper 18, 11. As is noted in the above-quoted text, Petitioner has not identified any of its own claims as being the same or substantially the same as all of that communicated information. Petitioner’s P to D and D to R analysis are not aligned. Also, we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2), the law on derivation requires a showing of prior conception and communication of that prior conception. Paper 18, 4, 18–19.” slip op. at 3
NonePatents in suitUS 9,767,257 - Catapult Innovations Pty Ltd v. Adidas AGInstitution deniedPTAB · Jul 18, 2014 · DER2014-00006 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding for claims 1–10, 12–29, and 31 because the evidence did not support that any challenged claim was derived.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence, which if unrebutted, would support the assertion of derivation.1 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For reasons discussed below, Catapult’s Petition to institute a derivation proceeding is denied.” slip op. at 2
- BurdenDenied
“Regardless of which claim serves as Catapult’s qualifying claim, however, Catapult failed to identify and keep a consistent D between the P to D analysis and the D to R analysis. Catapult evidently regards all communicated information as the disclosed invention D in the D to R analysis, but has not identified any of its own claims as being the same or substantially the same as all of that communicated information. In this case, the P to D and the D to R analysis are not aligned.” slip op. at 16
- Expert testimonyOther
“In his declaration (Ex. 1012), Mr. Holthouse does not assert that he “conceived” of any of the features and functionalities disclosed to the Adidas Team on October 19–20, 2010, much less “conceived” an invention which includes all such disclosed features and functionalities. The testimony of Mr. Holthouse does not support an assertion of invention by Mr. Holthouse with regard to what was disclosed to the Adidas Team. The declaration of Mr. Millar is no different. Mr. Millar’s testimony does not corroborate any “conception” of invention by Mr. Holthouse. The testimony of the two witnesses is concerned only with possession and communication, not “conception” of a disclosed invention.” slip op. at 18
NonePatents in suitUS 9,141,759 - Catapult Innovations Pty Ltd v. Adidas AGInstitution deniedPTAB · Jul 18, 2014 · DER2014-00005 · APJ Jameson Lee · DER · Institution
The Board denied institution of a derivation proceeding for claims 1–16, 18–20, 22–26, and 29–32 because Catapult did not show prior conception and communication of the disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As we noted in Section A above, to prove derivation, the party asserting derivation must establish prior conception of the claimed subject matter and communication of that conception to an inventor of the other party. Cooper, 154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can be no derivation without prior conception on the part of the party alleging derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation addresses originality—who invented the subject matter at issue. Price, 988 F.2d at 1191. Derivation is about prior “conception” and communication of the prior “conception,” and not about prior possession and communication of the prior “possession.”” slip op. at 18
- BurdenDecided for patent owner
“As we noted in Section A above, to prove derivation, the party asserting derivation must establish prior conception of the claimed subject matter and communication of that conception to an inventor of the other party. Cooper, 154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can be no derivation without prior conception on the part of the party alleging derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation addresses originality—who invented the subject matter at issue. Price, 988 F.2d at 1191. Derivation is about prior “conception” and communication of the prior “conception,” and not about prior possession and communication of the prior “possession.”” slip op. at 18
NonePatents in suitUS 9,317,660 - Catapult Innovations Pty Ltd v. Adidas AGInstitution deniedPTAB · Jul 18, 2014 · DER2014-00002 · APJ Jameson Lee · DER · Institution
The Board denied institution because Catapult did not show prior conception and communication of the disclosed invention, as required to establish derivation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence, which if unrebutted, would support the assertion of derivation.1 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). Once a derivation proceeding has been instituted, the standard of proof for establishing that a challenged claim constitutes a derived invention is by a preponderance of the evidence. 37 C.F.R. § 42.1(d). For reasons discussed below, Catapult’s Petition to institute a derivation proceeding is denied.” slip op. at 2
- BurdenDenied
“As we noted in Section A above, to prove derivation, the party asserting derivation must establish prior conception of the claimed subject matter and communication of that conception to an inventor of the other party. Cooper, 154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can be no derivation without prior conception on the part of the party alleging derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation addresses originality—who invented the subject matter at issue. Price, 988 F.2d at 1191. Derivation is about prior “conception” and communication of the prior “conception,” and not about prior possession and communication of the prior “possession.”” slip op. at 18
NonePatents in suitUS 9,767,257
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.