The America Invents Act ("AIA") eliminated
interference proceedings for applications having a claim with an
effective filing date on or after March 16, 2013, and created
derivation proceedings for those applications.
A derivation proceeding is a trial proceeding conducted at the
Patent Trial and Appeal Board ("PTAB") to ensure that the
first person to file a patent application is actually the true
inventor of the claimed subject matter.
Derivation Proceedings Generally
In a derivation proceeding, the PTAB determines (i) whether an
inventor named in an earlier-filed application derived the claimed
invention from an inventor named in the petitioner's
application, and (ii) whether the earlier application claiming such
invention was filed without authorization. Accordingly, only an
applicant for a patent may file a petition for a derivation
proceeding. The petition must be filed within one year of the first
publication of a claim to an invention that is the same or
substantially the same as the earlier application's claim to
the invention. Notably, the determination of whether to institute a
derivation proceeding is final and nonappealable. 35 U.S.C. §
135(a).
The petition must set forth with particularity the basis for
finding that an inventor named in an earlier-filed application
derived the claimed invention from the petitioner and must be
supported by substantial evidence. A showing of derivation requires
"both (1) prior conception of the invention by another and (2)
communication of that conception to the patentee that is
'sufficient to enable him to construct and successfully operate
the invention.'" 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). In addition, the petitioner must identify
which application or patent is disputed and provide at least one
affidavit addressing communication of the derived invention and the
lack of authorization for filing the earlier-filed application.
First PTAB Decisions in Derivation Proceedings
To date,1 six derivation petitions have been filed
with the PTAB. Of those, three have been denied, see Catapult
Innovations PTY Ltd. v. adidas AG, DER2014-00002,
DER2014-00005, DER2014-00006 (July 18, 2014), 2and the
other three are still pending.3 The PTAB denied
Catapult's petitions to institute derivation proceedings
directed to three of adidas AG's patent applications.
In these decisions, the PTAB applied the jurisprudence on the
substantive law of derivation of invention as it existed prior to
the enactment of the AIA. Accordingly, the PTAB explained that to
prove derivation, a petitioner has to show prior conception and
that it has "at least one claim that is (i) the same or
substantially the same as the respondent's claimed invention,
and (ii) the same or substantially the same as the invention
disclosed to the respondent." Respondent's claims
considered to be a derived invention are those that are shown to be
drawn to the same or substantially the same invention as the
disclosed invention. Further, "[c]onception must be proved by
corroborating evidence which shows that the inventor disclosed to
others his completed thought expressed in such clear terms as to
enable those skilled in the art to make the invention."
Accordingly, if a petitioner "identifies one of its own claims
as defining or representing that invention disclosed to an inventor
of the other party, then petitioner has to establish corroborated
conception of that claimed invention, as well as corroborated
communication of that conception."
The adidas AG applications related to an activity-monitoring
system that facilitates live monitoring of a plurality of
individuals. Catipult's arguments were based on technical
disclosures allegedly made by the founder and CEO of Catipult to
adidas in a two-day presentation and demonstration.
To prove derivation, there are three separate relationships that
must be analyzed to determine whether they meet the "same or
substantially the same" requirement: (i) a "two-way"
analysis between the petitioner's claim and the
respondent's claim; (ii) a "one-way" analysis from
the petitioner's claim to the invention disclosed to the
respondent; and (iii) a "one-way" analysis from invention
disclosed to the respondent to the respondent's claim.
In this case, the PTAB found that Catapult satisfied the
"two-way" test and the "one-way" test from the
invention disclosed to respondent to the respondent's claim.
However, the PTAB determined that Catapult failed to identify the
invention disclosed to the respondent and show that the same
disclosed invention was the same or substantially the same as
respondent's claim. That is, the PTAB concluded that Catapult
failed to show a consistent disclosed invention in the
"one-way" analysis from the petitioner's claim to the
disclosed invention and in the "one-way" analysis from
the disclosed invention to the respondent's claim.
Catapult argued that the invention disclosed to the respondent was
all the information communicated over the two-day presentation and
demonstration, which the PTAB accepted. However, the PTAB found
that Catapult did not identify any of its own claims as being the
same or substantially the same as all of this communicated
information. Accordingly, Catapult should have defined the
invention disclosed to adidas in a manner such that it was the same
or substantially the same as one of Catapult's claims.
Independent of the above analysis, the PTAB observed that, while
Catapult demonstrated that its inventors had possession of the
subject matter of the technical disclosures communicated to adidas,
it did not establish that its inventors had a conception of the
subject matter communicated to adidas prior to the communication.
The PTAB explained that "[d]erivation is about prior
'conception' and communication of the prior
'conception,' and not about prior possession and
communication of the prior 'possession.'" Indeed,
"[i]t is unfounded to assume that one who had an invention in
his or her possession must have conceived of the invention and be
the source or origin of that invention." Here, proof of prior
conception was missing entirely from the petitions and testimony.
For this additional reason, the PTAB denied Catapult's
petitions to institute derivation proceedings directed to claims of
adidas's applications because they did not meet the threshold
showing of presenting substantial evidence, which if unrebutted,
would support the assertion of derivation.
Practice Tips
The Catapult cases emphasized a few things that are
important to note going forward.
First of all, the jurisprudence on the substantive law of
derivation of invention as it existed prior to the enactment of the
AIA is still applicable. Thus, it remains essential to provide
evidence of prior conception by the petitioner and communication of
that conception to the respondent as well as corroboration of both
the conception and the communication.
In addition, it is important to carefully define the invention
disclosed to the respondent and show that it is the same or
substantially the same as the respondent's claim. The lessons
learned from these initial decisions provide substantial guidance,
but it will be important to continue to monitor the evolution of
derivation proceedings before the PTAB as more decisions are
issued.
Footnotes
1 As of November 24, 2014.
2 While these are three separate decisions, they are essentially
identical and any differences are not material to the discussion
here. As a result, this article will focus on DER2014-00002, but
the analysis applies to all three decisions.
3 Derivation proceedings are kept confidential until reviewed by a
PTAB judge. As a result, the citations for the three currently
pending petitions are unavailable at this time.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.