The PTAB instituted its first derivation proceeding on March 21, 2018.1 The institution is in response to Andersen’s Petition to Institute a Derivation Proceeding in Andersen Corp. v. GED Integrated Solutions.2 A derivation proceeding is a trial proceeding conducted at the PTAB to determine whether an inventor named in a patent application derived the claimed invention from an inventor named in the petitioner’s later-filed application without authorization.3 Derivation proceedings apply only to patents and patent applications that are subject to the first-inventor-to-file provisions of the AIA.4 Though derivation proceedings have been available since March 16, 2013, as of today, only 14 petitions to institute derivation proceedings have been filed.5

Andersen filed its Petition to Institute a Derivation Proceeding on December 19, 2016, alleging that GED derived Andersen’s invention related to spacer frames.6,7 Spacer frames are used to separate two panes of glass in insulating glass units (IGUs). Sammy Oquendo, an inventor at Andersen, contends in the Petition that he recognized deficiencies with sealing the IGUs due to a presence of a seam at a corner of the spacer frame assemblies.8 Oquendo testified that he conceived an idea to move the seam away from the corner to correct these deficiencies. According to the Petition, Oquendo developed a prototype of his conceived idea that included a spacer frame unit with the seam offset from the corner. Andersen asserts that Oquendo disclosed his spacer frame invention to certain employees of GED, including Bill Briese, a named inventor of GED’s Patent No. 9,428,953.9 The patent application for GED’s ’953 Patent was filed on May 4, 2015. Andersen’s Patent Application 15/058,862 was later filed on March 2, 2016.

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.10 To prove derivation, the petitioner must show: (1) prior conception of the claimed subject matter; (2) communication of that conception to an inventor of the other party; and (3) that it has at least one claim that is the same or substantially the same as the respondent’s claimed invention and the same or substantially the same as the invention disclosed to the respondent.11 The showing of prior conception and communication must be corroborated.12 In the Andersen case, the PTAB found that Andersen satisfied these requirements and instituted its first derivation proceeding.13

Concerning the prior conception requirement, the PTAB found that the record provided substantial evidence that Andersen conceived the claimed subject matter prior to GED.14 Conception is the formation in the inventor’s mind of a definite and permanent idea of the complete and operative invention, as it is to be practiced.15 The evidence of record for conception includes the following: Oquendo’s testimony describing how he became aware that the IGU seal failures were due to a seam at the spacer frame corner and his idea to move the seam away from the corner; a March 2009 prototype depicting the offset seam location; May/June 2009 CAD drawings illustrating the seam offset from the spacer frame corner; evidence that other individuals witnessed Oquendo’s conception and reduction to practice of his invention; and a detailed mapping of the evidence of record to all features recited in the claims of the ’953 Patent.16 The PTAB held that this evidence, if unrebutted, was sufficient to show Andersen’s prior conception of GED’s claimed subject matter.

Regarding communication of that conception, the PTAB also found that the record provided substantial evidence supporting Andersen’s contention that Oquendo’s allegedly conceived invention was communicated to Briese and others at GED.17 Corroborating evidence must show 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.18 The evidence of record for communication includes the following contentions by Andersen: GED first learned of Oquendo’s invention at a March 2009 symposium, supported by an email from a GED employee to Briese and a Glass Symposium Review; GED received additional details of Oquendo’s invention around June of 2009, supported by an email from Bries to Oqendo and an email from Oquendo to an engineer at Andersen; GED obtained detailed drawings of Oquendo’s invention and knew the invention was complete, supported by a certificate from GED pertaining to the completion of a service training by Oquendo and an email from Briese to Oquendo; and GED marketed Oquendo’s invention at a trade show in 2004, supported by a declaration of an Andersen employee.19 The PTAB held that this evidence, if unrebutted, was sufficient to show communication of Andersen’s alleged conception to GED.

The PTAB further found that Andersen made a sufficient showing for the purposes of instituting a derivation proceeding that at least one claim in its ’862 Application is the same or substantially the same as GED’s claimed invention and the same or substantially the same as the invention disclosed to GED.20 Andersen contends in its Petition that a certain subset of claims in its ’862 Application are identical to all the claims of GED’s ’953 Patent, which the PTAB observed.21 Additionally, as mentioned previously, Andersen provided a detailed mapping of the evidence of record to all features recited in the claims of the ’953 Patent. Thus, because the PTAB concluded that the evidence of record was sufficient to demonstrate, if unrebutted, conception, communication, and at least one same or substantially the same claim, the PTAB instituted the derivation proceeding.

Due to the extensiveness of the record showing conception and communication of Andersen’s invention and the identicality of the claims of Andersen’s ’862 Application and GED’s ’953 Patent, this case is distinguishable from the previous four cases in which the PTAB denied institution of a derivation proceeding. In Shukh v. Lupino et al., the PTAB found that the petitioner did not have at least one claim that is the same or substantially the same as the respondent’s claimed invention or the invention allegedly disclosed to the respondent.22 The petitioner initially relied on certain claims of his Application as meeting this requirement but later canceled those claims in an amendment.23 The petitioner’s amendment led to a Notice of Allowance. Rather than correcting his Application so that it would contain at least one same or substantially the same claim as authorized by the PTAB, the petitioner paid the issue fee.24

In Brockman v. Bainter, the PTAB found that while the petitioner had at least one claim that is the same or substantially the same as the invention the petitioner disclosed to the respondent, the challenged claims were not drawn to the same or substantially the same disclosed invention.25 As an example, one of the respondent’s challenged claims required an actuator that translates between extended and retracted positions, whereas the invention conceived by the petitioner and communicated to the respondent included no such actuator.

In Ethertronics, Inc, v. Nextivity, Inc., the PTAB held that the petitioner failed to satisfy its burden to provide a sufficient showing that the claimed invention, as a whole, was derived from an inventor named in the petitioner’s patent application or that the claimed invention is the same or substantially the same as the invention disclosed to the respondent.26 The petitioner alleged that the respondent derived its inventions set forth in the respondent’s dependent claims.27 However, the petitioner did not claim inventorship of all corresponding independent and intervening claims.28 Thus, the PTAB held that, at best, the petitioner’s arguments and supporting evidence show conception and communication of only one feature of the claimed invention (e.g., the feature in the dependent claims).29

In Sindoni, Jr. v. Ninov et al., the PTAB held that the Petition is not supported by substantial evidence with respect to any challenged claim.30 In regard to the conception requirement, while the petitioner stated in the petition that he “conceived of a major advance in the pickup truck equipment field” and that “this invention, which in brief is a ramp system for a pickup truck, was communicated to Respondent by Petitioner before Respondent filed the ’123 application,” the PTAB stated that neither the Petition nor the petitioner’s declaration set forth any particular feature of the “ramp system for a pickup truck” that the petitioner allegedly conceived.31 Further, the petitioner allegedly failed to provide any corroborating evidence as to communication of his invention to the respondent. While the petitioner provided a document in an exhibit that appears to be signed by the petitioner and a representative of the US Patent Commission, the PTAB stated that the document was not authenticated since it was not addressed in the petitioner’s declaration testimony and the record did not include a declaration from the individual who signed the document on behalf of the US Patent Commission.32 Further, the document contained illustrations that were substantially illegible, and the petitioner failed to provide a replacement copy even though provided an opportunity to do so by the PTAB.33

Practice Tips While it is yet to be seen whether Andersen will prevail in its derivation proceeding,34 this case, in light of the cases denying institution of the derivation proceedings, provides guidance as to what type of evidence, if unrebutted, the PTAB finds sufficient to support a determination of derivation. When attempting to institute a derivation proceeding, the petitioner should focus on providing corroborating evidence. That is, the petition should include evidence of prior conception such as prototypes, computer-aided design drawings, and testimony from others witnessing the conception. In addition, the petition should contain evidence (e.g., emails and declarations) of communication of the conceived invention to the other party. The corroborating evidence should be legible, authenticated, and dated. Further, the petitioner must provide evidence that at least one claim of the petitioner’s patent application is the same or substantially the same as the respondent’s claimed invention and the same or substantially the same as the invention disclosed to the respondent. This may be accomplished in part by providing a mapping of the evidence submitted for conception and communication to the challenged claims. A shortage of legible, corroborating evidence in any of these three areas will prove fatal to the institution, as illustrated in the cases above.