- 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 - Tencent Technology (Shenzhen) Co. Ltd. v. Yogesh RathodInstitution deniedPTAB · Jun 27, 2022 · DER2022-00002 · APJ Michael R Zecher · DER · Institution
The Board denied institution because Tencent did not make a sufficient showing that the named inventors conceived the invention allegedly communicated to Rathod.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding.” 35 U.S.C. § 135(a)(1). We have authority to institute a derivation proceeding on behalf of the Director. 37 C.F.R. § 42.408(a). The threshold showing for institution of a derivation proceeding is whether the petition demonstrates substantial evidence that, if unrebutted, would support a determination of derivation. See 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c).1 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 the reasons set forth below, we conclude” slip op. at 2
- BurdenDenied
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6 To the extent Tencent expects us to scour the preliminary record to unearth supporting evidence of prior conception, we decline to do so. It is well-settled that Tencent is “master of its complaint.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). We are constrained by the arguments and evidence presented and developed in Tencent’s Petition, and we are not” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“6 We recognize that Tencent contends that the ’265 patent and the three applications in its priority chain lack sufficient written description support for the claimed invention. Pet. 17–28. We need not reach Tencent’s arguments that the three applications in the priority chain of the ’265 patent lack sufficient written description support for the claimed invention because, as we explain above, Tencent does not demonstrate that the named inventors in the ’371 application conceived, at any time, the inventions purportedly communicated to Mr. Rathod.” slip op. at 13
- Expert testimonyNot reached
“is devoid of any explanation of the circumstances surrounding conception of the invention by the three named inventors of the ’371 application. Most notably, Tencent does not provide supporting testimony from any of the three named inventors or, for that matter, from any other parties that could corroborate the alleged conception. Indeed, the word “conception” does not appear in Tencent’s Petition at all. See Pet. Put simply, Tencent fails to provide any meaningful information regarding the work done by each of the three named inventors that resulted in conception of the invention covered by the pending claims of the ’371 application. Absent some evidence in the record, such as testimony from the three named inventors together with corroborating evidence showing there was formation in the mind of the named inventors of a definite and permanent idea of the complete and operative invention, Tencent has not demonstrated prior conception.6” slip op. at 13
§ 112 disclosurePatents in suitUS 10,990,265 - 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
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.