Board grants first patent derivation trial to Andersen Corp.

Patent derivation proceedings were authorized by the America Invents Act in 2011 to apply to patents filed after March 16, 2013. On March 21, the United States Patent Trials and Appeals Board authorized the first derivation proceeding under the AIA, granted to Andersen Corp., represented by Robins Kaplan.

In every ruling until this one, the PTAB has denied institution of derivation proceedings, which challenge the grant of a new patent, because the petitioner failed to meet either the petition requirements or its evidentiary burden.

“It’s fun to be first,” said Cyrus Morton, chair of the Patent Office Trials Group at Robins.  “We’re also kind of through the looking glass,” because the procedures are brand new.

Who gets the patent?

Morton explained that the AIA changed the American patent law to a “first to file” system. “But you can’t file first if you didn’t invent it. Derivation means you decide who gets the patent,” he said.

Andersen challenged a patent owned by GED Integrated Solutions for a spacer frame to enclose windows and prevent leakage. It asserted that the spacer frame was created by its inventor Sammy Oquendo, who worked with one of Andersen’s existing spacer frames. GED is an Ohio company that manufactures window and door fabrication systems.

Andersen claimed that GED learned of the invention from Oquendo and Andersen and filed a patent application on it. Andersen’s obligation under the AIA was to establish prior conception of the claimed subject matter and communication of that conception to a GED inventor. Proving both those prongs has been the downfall of cases where a derivation proceeding has been denied, Morton said.

“Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is therefore to be applied in practice,” the PTAB board said in its order. “Conception 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,” it said.

Proof of conception must encompass all limitations of the disclosed invention. The petitioner must then show how one or more of the respondent’s challenged claims is the same patentable invention as conceived by the petitioner’s inventor.

Communication was proved when because Oquendo showed GED his spacer frame prototype at a company meeting, and GED proceeded to come out with a new product and filed a patent on it, Morton said. “We proved disclosure through that meeting and emails,” he said.

The petitioner’s evidentiary burden is set forth in 37 C.F.R. § 42.405.

Andersen actually proved that its inventor conceived of 22 different claims that it brought against respondent and thus asserted 22 different derivations, which seemed to catch the PTAB’s attention, but which it decided was not prohibited.

Morton said that the firm’s review of other derivation petitions that had been denied showed that there wasn’t enough detail in them, so it tried to hit every element of every claim. “We figured the derivation would cover every claim so that’s what we did as well as we could for every claim,” he said.

The derivation hearing will be in November, after depositions and briefing, Morton said.