- Arconic Technologies LLC v. Novelis Inc.Rehearing deniedPTAB · May 2, 2022 · DER2018-00004 · APJ James T Moore · DER · Rehearing
The Board denied Arconic’s rehearing request, leaving in place denial of institution because it had not shown sufficiently corroborated prior conception for derivation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party requesting rehearing bears the burden of showing an abuse of discretion, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“documents cited by Petitioner for each of the six steps of claim 22 and explained why they were insufficient to corroborate Mr. Marinelli’s testimony. Id. at 16–22. We concluded that “[s]ubstantial evidence does not support Petitioner’s assertion that its inventors conceived of the inventions allegedly communicated to Respondent’s inventors (i.e., the six-step processes of each of Respondent’s claims)” and denied institution of a derivation proceeding. Id. at 23.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“[w]e are not informed as to which of Mr. Marinelli, Mr. Dennis, and Mr. Shoemaker conceived what portions of the invention of claim 22 or how the three individuals jointly conceived of the recited process. Petitioner provides no explanation as to what the contributions of each individual were (other than that they were all “involved” in the development of the A951 process), the circumstances surrounding those contributions, or even when conception occurred. Indeed, Mr. Marinelli testifies that Petitioner began development of chromium-free aluminum pretreatments that provided the same performance characteristics of a chromate conversion coating in 1992 and that the development work spanned “the next two decades,” but does not explain when during that time he conceived of the process of claim 22 with Mr. Dennis and Mr. Shoemaker. Again, there is no meaningful information provided about what work was done by whom or the circumstances under which the claimed invention was conceived, other than a general assertion that it was Petitioner undertaking the work.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“a trial, a party may file a motion to expunge confidential information from the record.” 37 C.F.R. § 42.56. The Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 21–22, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”), provides: Confidential information that is subject to a protective order ordinarily would become public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a trial. There is an expectation that information will be made public where the existence of the information is referred to in a decision to grant or deny a request to institute a review or is identified in a final written decision following a trial. A party seeking to maintain the confidentiality of information, however, may file a motion to” slip op. at 13
NonePatents in suitUS 11,807,942 - PTAB · Apr 6, 2022 · DER2017-00031 · APJ Jameson Lee · DER · Institution
The Board instituted a derivation proceeding as to Respondent’s claims 24–36, finding sufficient evidence that claims 24–30 and 32–35 matched the disclosed invention.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.5 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). For establishing derivation, a petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974).” slip op. at 4
- BurdenDecided for petitioner
“Exhibits 1026, 1028, 1041, and 1042, constitute sufficient evidence, under the substantial evidence standard, to support Petitioner’s assertion of conception, except for the requirement of independent corroboration. For instance, there is no declaration testimony from any of the recipients of the email communications or people who were copied on those email communications to corroborate those email communications. There is no testimony from anyone at Pro-Tech to corroborate the nature and existence of the signed manufacturing outline that is Exhibit 1042.” slip op. at 9
None - 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 - PTAB · Nov 7, 2017 · DER2016-00003 · APJ Jameson Lee · DER · Institution
The Board denied institution because the petition lacked substantial evidence of derivation for any challenged claim, including sufficient proof of conception, communication, and the required claim comparisons.
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 that, if unrebutted, would support the assertion of derivation.4 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). A petitioner must show that the respondent, without authorization, filed an application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(b)(2). The party asserting derivation must establish prior conception of an invention and communication of that conception to an inventor of the other party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). The showing of communication must be corroborated. 37 C.F.R. § 42.405(c). Assuming that corroborated conception and communication both are established, a petitioner would be able to regard as a derived invention those” slip op. at 3
- BurdenDenied
“B. The Alleged Invention – Conception and Communication First, Petitioner has not sufficiently specifically identified the features of an invention that he allegedly conceived. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “Petitioner Sindoni conceived of a major advance in the pickup truck equipment field”; and (2) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application.” Pet. 3, 16. We do not understand the position of Petitioner to be that Mr. Sindoni conceived of the very first ramp system for a pickup truck. An Information Disclosure Statement submitted by Petitioner during prosecution of the ’548 Application identifies three prior art references disclosing a ramp system for a pickup truck, i.e., U.S. Patent Nos. 3,976,209; 4,624,619; and 7,445,268. Ex. 3002. Also, Petitioner’s ’548 Application generally refers to preexisting ramps for pickup trucks and characterizes them as unsatisfactory. Ex. 1002 ¶ 5. Yet, neither the Petition nor the Declaration of Mr. Sindoni sets forth any particular feature of the “ramp system for a pickup truck” that Petitioner allegedly conceived, much less the entirety of what Petitioner has conceived. This deficiency alone dooms the Petition, because we do not know what was conceived by Petitioner. Second, Petitioner has not sufficiently identified the features of any invention that he allegedly communicated to Respondent. The closest the Petitioner comes to doing that are these two statements in the Petition: (1) “[T]his invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ’123 application”; and “Petitioner disclosed the invention to Respondent to this end, and Respondent acknowledged receipt of the disclosure.” Pet. 3, 16. The Petition does not, however, point to corroborating evidence of communication or evidence of how Respondent has acknowledged receipt of Petitioner’s conceived “invention” at any time. The Declaration of Mr. Sindoni, the Petitioner, is no better. Mr. Sindoni testifies: “Details of the invention were communicated to FCA US LLC by me more than a year before FCA US LLC filed the Chrysler application and more than two years before the Sindoni application was filed.” Ex. 1003 ¶ 7 (emphasis added). However, Mr. Sindoni in his Declaration nowhere identifies or explains the referenced “[d]etails of the invention.” Submitted by Petitioner as Exhibit 1006 is a document that appears to be signed by Mr. Sindoni and a representative of an entity named “U.S. Patent Commission,” that pertains to disclosure by Mr. Sindoni of an invention to U.S. Patent Commission at some time. But that document has not been addressed in the declaration testimony of Mr. Sindoni. Nor is there a declaration from Angela Stevens, the individual who signed on behalf of U.S. Patent Commission, addressing the document. Thus, it has not been authenticated. Also, although the Petition generally refers to Exhibit 1006 as “Petitioner’s Invention Disclosure,” (Pet. 9–14), we do not know specifically what subject matter the Petitioner possibly had conceived because the Petitioner makes no averment in that regard. Furthermore, the content of Exhibit 1006 has not been explained either in the Petition or in the Declaration of Mr. Sindoni. Pages 4 and 5 of Exhibit 1006 appear to contain technical illustrations but are substantially illegible. On May 3, 2017, we issued an Order (Paper 7) stating: “[I]f Petitioner can provide a more legible copy of the last two pages of Exhibit 1006, then another full copy of Exhibit 1006, including the more legible last two pages, shall be filed within two weeks of the date of this communication.” Paper 7, 3. Petitioner filed no replacement copy of Exhibit 1006. We note also that the signature of Angela Stevens, on behalf of U.S. Patent Commission, on page 1 of Exhibit 1006, is undated, and Petitioner submitted no declaration of Angela Stevens to substantiate and explain her signature, e.g., when she received the document. In any event, Petitioner makes no explanation as to the relationship, if any, between U.S. Patent Commission and Respondent. We decline to assume that they are the same entity. Thus, we will not assume communication with U.S. Patent Commission is the same as communication with Respondent. For the foregoing reasons, the Petition is fatally deficient with regard to the” slip op. at 5
NonePatents in suitUS 9,067,525 - 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
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.