- PTAB · Mar 30, 2023 · DER2017-00031 · APJ Jameson Lee · DER · Final written decision
Petitioner failed to prove that any of Respondent’s claims 24–36 was derived from Petitioner’s inventor because Respondent proved earlier conception of the disclosed subject matter.
RulingsFinal written decision- BurdenNot shown unpatentable
“Conclusion As explained above, Petitioner’s proven time of conception and communication of the subject matter of “the invention disclosed to the respondent” is “February 14, 2014 4:04:17 PM EST.” Respondent’s proven time of conception of the subject matter of “the invention disclosed to the respondent” is “Feb 14, 2014 12:55 pm.” If Respondent’s time is Eastern Standard Time, then Respondent’s conception precedes Petitioner’s conception and communication by 3 hours and 9 minutes. If Respondent’s time is Pacific Standard Time, it precedes Petitioner’s conception and communication by 9 minutes. Accordingly, Petitioner has not shown that Bradley Burnam conceived of “the invention disclosed to the respondent” prior to Marc Selner’s conception of that same subject matter, and Petitioner has not shown that Bradley Burnam communicated “the invention disclosed to the respondent” to Marc Selner prior to Marc Selner’s conception of the same subject matter. As a result, Petitioner has not proven, by a preponderance of the evidence, that any one of claims 24–36 of Respondent’s Application 15/549,111 is derived from Bradley Burnam. J.” slip op. at 51
- ExcludeNot reached
“We need not decide Respondent’s Motion to Exclude because, even considering all of the evidence Respondent seeks to exclude, Petitioner still does not prevail. Further, Respondent’s reasons for excluding Exhibit 1107 do not address admissibility, but rather implicate the proper weight to give to Marc Selner’s cross-examination testimony. See, e.g, Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014) (Final Written Decision) (“[T]he Board, sitting as a non-jury tribunal . . . is well-positioned to determine and assign appropriate weight to the evidence presented.”). Accordingly, Respondent’s Motion to Exclude is dismissed as moot.” slip op. at 52
- Expert testimonyOther
“testimony. There also is no indication that Brad Meeuwsen possessed or considered all of the evidence that is now before us, in particular Exhibits 2067, 2067A, and 2041. Further, inventorship is a legal question. Univ. of Colorado Found. Inc. v. American Cyanamid Co., 342 F.3d 1298, 1304 (Fed. Cir. 2003). Although Brad Meeuwsen as a fact witness may testify to what he heard or received from Bradley Burnam or Marc Selner, and such testimony would be probative, any testimony from Brad Meeuwsen with regard to the ultimate conclusion of inventorship carries no weight.” slip op. at 44
None - 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 - 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
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.