- Sports Nutrition Research, Ltd. v. Chemi NutraRehearing deniedPTAB · Apr 3, 2020 · DER2013-00001 · APJ Jameson Lee · DER · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner showed no abuse of discretion in finding insufficient evidence of derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). When rehearing a decision on petition, a panel will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d). After considering the Request for Rehearing, we determine that Petitioner has not demonstrated that we abused our discretion in denying institution. For reasons discussed below, we decline to modify the Decision. Accordingly, the Request for Rehearing is denied.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In essence, Petitioner is arguing that a derivation proceeding should always be instituted no matter how deficient is the initial evidence presented by Petitioner in the Petition, because both Petitioner and Respondent can submit evidence after institution of trial. We disagree. In the above-quoted argument, Petitioner is referring to hypothetical evidence “to be” developed during trial. We cannot make a decision on whether to institute trial based on non-existent evidence. We properly reviewed the evidence submitted by Petitioner and determined that that evidence does not meet the substantial evidence standard for instituting a derivation proceeding.” slip op. at 5
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for patent owner
“The constitutional arguments are without merit. The Federal Circuit has held that there is “no constitutional infirmity in [an] institution decision as the statute clearly bestows such authority on the Director pursuant to 35 U.S.C. § 314.” Arthrex, 941 F.3d at 1340. Arthrex’s reasoning likewise applies to derivation proceedings under the AIA. See 35 U.S.C. § 135(a)(1). The Decision will not be vacated. Nor will a new panel be appointed.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“of the MPEP. Paper 17, 4. These authorities, however, articulate general principles and do not support Petitioner’s assertion that the specific wherein clause at issue here represents merely an intended result and thus should not be accorded weight in determining patentability. Indeed, in Hoffer, the Court upheld the district court’s reading of the “whereby clause” at issue there as an actual limitation and not merely an intended result.3 Hoffer, 405 F.3d at 1330. “[W]hen the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.” Id. at 1329.” slip op. at 9
Claim constructionPatents in suitUS 10,869,843 - Andersen CorporationOtherPTAB · Mar 20, 2019 · DER2017-00007 · APJ Justin T Arbes · DER · Final written decision
Andersen did not prove derivation of any invention in claims 1–22 because it did not show that Oquendo communicated the claimed stop spaced away from the corners.
RulingsFinal written decision- BurdenDecided for patent owner
“2. Burden of Proof To prevail in an instituted derivation proceeding, the petitioner must demonstrate that “an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed.” 35 U.S.C. § 135(b). Unlike the statutory provisions governing inter partes review and post-grant review, which specify that a petitioner must prove unpatentability of a claim by a “preponderance of the evidence,” the statutory provision for derivation proceedings does not set forth an evidentiary standard for proving derivation. See 35 U.S.C. §§ 135, 316(e), 326(e). Our rules, however, provide that “[a] derivation proceeding is a trial subject to the procedures set forth in subpart A of this part [i.e., 37 C.F.R. §§ 42.1–42.80],” 37 C.F.R. § 42.400(a), and “[t]he default evidentiary standard [for trial proceedings] is a preponderance of the evidence,” 37 C.F.R. § 42.1(d).5 We apply that standard for purposes of this Decision.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“construed. Andersen argues in its Petition that the term “stop” in all of the claims should be interpreted to mean “[a] physical abutment that prohibits movement of the adjoining structure beyond a predetermined location.” Pet. 9. In the Decision on Institution, based on the record at the time, we preliminarily agreed with and adopted that interpretation, and concluded that no other terms required interpretation. Dec. on Inst. 17–18.” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
- Adverse judgmentOther
“all of the evidence of alleged communication. Taking into account the parties’ arguments and the full record in this proceeding, we conclude that Andersen has not demonstrated that Mr. Oquendo communicated to a named inventor of the ’953 patent a conception of the complete invention recited in claim 1. Specifically, Andersen has not shown that Mr. Oquendo communicated, as part of his spacer frame design, a stop spaced away from the corners. Mr. Oquendo’s testimony regarding such an alleged communication is not corroborated by evidence in the record for all of the reasons explained above. Andersen has not proven derivation of the invention recited in claim 1 by a preponderance of the evidence. E. Alleged Derivation of the Inventions Recited in Claims 2–22 Andersen asserts that Mr. Oquendo conceived of the subject matter of” slip op. at 64
Claim constructionPatents in suitUS 9,428,953
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.