Derivation Proceeding DER2017-00007
Petitioner Appln. No. 15/058,862; Respondent Pat. No. 9,428,953 B2
Final Written Decision (March 20, 2019)

Brief summary: In this AIA derivation proceeding, the PTAB found that “Andersen has not demonstrated’ derivation “by a preponderance of the evidence”.

Summary: Andersen requested a derivation proceeding under 35 USC § 135 regarding its ‘862 application relating to window frames, alleging that “an inventor named in the ‘953 patent derived” an invention “recited in claims 1-22 from an inventor named in Andersen’s ‘862 application.” The PTAB’s FWD explains that “[t]o prove derivation, the party asserting derivation must establish (1) prior conception of the claimed subject matter, and (2) communication of that conception to an inventor of the other party” (i.e., “who invented the subject matter at issue”) (Cooper, FC 1993; Hedgewick, CCPA 1974; “Derivation Final Rules”; Davis, CCPA 1967). “Under the AIA,” the FWD explains, “a petitioner must show the respondent, without authorization, filed an application claiming such derived invention” (35 USC § 135(a)(a); 37 CFR § 42.402(b)(2)) by a preponderance of the evidence “because Andersen filed the ‘862 application prior to issuance of the ‘953 patent” (37 CFR §§ 42.400(a); Bruning, FC 1998). And to prove conception of “an invention communicated to an inventor of the other party”, “[a]n inventor ‘must provide independent corroborating evidence in addition to his own statements and documents” (Hahn, CCPA 1981; Coleman, FC 1985 (“[c]onception must be proved by corroborating evidence”); Cumberland, FC 2017 (“must encompass all limitations of the disclosed invention”); 37 CFR § 42.201 (“patentably indistinct…evaluated one-way in the direction from the invention disclosed”); Eaton, FC 2003 (“[t]he communication must be sufficient to enable one of ordinary skill in the art to make the patented invention”); considered under the “rule of reason”). The FWD explains that “[o]ther than the numbering of claim dependencies, claims 60-81 of the ‘862 application are identical to claims 1-22 of the ‘953 patent”. Andersen argued that its inventor (Mr. Oquendo), when an Andersen subsidiary employee, communicated the claimed invention to GED employees, citing “22 different conceptions and corresponding communication[s]”. The PTAB focused on one of the claim limitations, “the ‘stop’-because it is dispositive”, about which GED submitted copy of at least one one of the ‘953 patent’s witnessed notebook pages (reproduced on pp. 36 and 61 of the FWD), which the PTAB determined from the prosecution history was determinative in the allowance of the claims. The PTAB found “no allegation that Mr. Oquendo ever told” the ‘953 inventors about the design (e.g., an “alleged communication was to Mr. McGlinchy, not Mr. Briese, a named inventor of the ‘953 patent…Andersen’s assertion that” McGlinchy “must have passed along unspecified information…is mere speculation”) and that he admitted “that he never mentioned a stop specifically”, the stop is not in Andersen’s prototype, “Andersen’s position is based on an incorrect understanding regarding the existing…design”, and “the timing of events described by the parties support’s GED’s position that the claimed invention was not derived.” Thus, the PTAB found that “Andersen has not demonstrated’ derivation “by a preponderance of the evidence”.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.