- 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 - 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 - 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 - 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
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