Derivation: Possession versus Conception

Author:  Anthony A. Hartmann
Editor: Michael J. McCabe II

The Patent Trial and Appeal Board (PTAB) denied three petitions to institute derivation proceedings, sought by Catapult Innovations against three patent applications assigned to adidas AG, finding that Catapult failed to establish a prior “conception.” DER2014-00002, Paper 19 (July 18, 2014); DER2014-00005, Paper 13 (July 18, 2014); DER2014-00006, Paper 19 (July 18, 2014). Catapult’s derivation petitions were the first to be filed under 37 C.F.R. § 42.405. To date, no derivation proceedings have been instituted.

While U.S. patent law is now a first-inventor-to-file system, derivation proceedings under the American Invents Act (AIA) provide a mechanism to ensure that the first person to file a patent application is actually the true inventor. Here, Catapult alleged that adidas AG’s patent application claims were derived from a two-day presentation and demonstration of an athletic activity monitoring system made to AWSE, a wholly-owned subsidiary of adidas AG.

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Got Demonstrative Exhibits?

Author: Justin E. Loffredo
Editor: Adriana L. Burgy

During oral argument, demonstrative exhibits can be a useful tool to direct the judges to key arguments and points of rebuttal. As specified in the Trial Practice Guide, the Board prohibits the presentation of new evidence in demonstratives. Recent Board orders further detail that prohibition.

For example, the Board in CBS Interactive Inc. v. Helferich Patent Licensing (IPR2013-00033) (Paper 118) (Oct. 23, 2013) proscribed petitioner and patent owner from using any of their demonstrative slides because many, though not all, were non-compliant. The Board’s specific guidance on the appropriate content of demonstrative exhibits included: (1) there is no new evidence or new arguments in demonstratives; (2) there is no proper basis for presenting “written text setting for various statements, characterizations, and assertions” as demonstrative exhibits; and (3) the burden is on the party presenting the demonstrative slide that it does not present new argument or new evidence.

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How Patent Owners Can Increase Their Odds: Lessons Learned From Recent IPR Decisions

Author: P. Raymond Chen
Editor: Eric P. Raciti

IPR proceedings are a risky proposition for patent owners. Statistics provided by the USPTO show that, as of August 2, 2014, the Board has upheld only 30% of the claims challenged in all completed IPR proceedings. In four recent cases (IPR2013-00133, IPR2013-00139, IPR2013-00137, and IPR2013-00138), however, the Patent Owner successfully defended all of its claims. We analyzed these IPRs to identify what approaches patent owners might use to increase their chances of success.

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