PTAB launches first derivation trial
Earlier this week, the US Patent Trial and Appeal Board (PTAB) instituted a derivation proceeding for the first-time ever, in a dispute over a window frame patent.
Derivation proceedings became available five years ago, under the America Invents Act, but this is the first time the board has instituted a trial on a derivation proceeding. The proceedings are used to determine whether a patent was derived from the work of someone else.
The PTAB has received numerous petitions for derivation but, up until now, has denied institution in all of them. Some derivation petitions are still pending.
On Wednesday, March 21, the PTAB found that there were sufficient grounds to review whether an employee of window and door manufacturer Andersen was the true inventor of US patent number 9,428,953.
The patent, which covers a spacer frame used in insulated glass windows and the method of its assembly, is owned by GED Integrated Solutions, a company that provides window and door manufacturing equipment.
According to Andersen, its former employee Sammy Oquendo had invented the spacer frame during his time at the company. Andersen is the named applicant on US patent application number 15/058,862.
Andersen claimed that GED learned the invention from Oquendo and filed a patent application on the invention which corresponds to claims in Andersen’s application.
To prove derivation, Andersen needs to establish prior conception of the claimed subject matter and communication of that conception to a GED inventor.
The board agreed with Andersen that there was “substantial evidence” that demonstrates that Oquendo conceived of the invention of each patent claim challenged.
It also concluded that substantial evidence supports Andersen’s argument that each of the challenged claims were conceived by Oqeundo, that each claim was communicated to GED and that the invention was derived from Oquendo.
In its petition, Andersen claimed that Oquendo had disclosed his invention to Bill Briese (a named inventor of the ‘953 patent) and his colleagues, who were employees of GED, at a glass symposium in 2009.
“Andersen has shown sufficiently that it has at least one claim that is the same or substantially the same as GED’s claimed invention, and also that Andersen has at least one claim that is the same or substantially the same as the invention disclosed,” said the board.
Based on these findings, the PTAB instituted trial on the 22 claims raised in the petition.
Cyrus Morton, chair of the patent office trials group at Robins Kaplan and counsel to Andersen, said it's "exciting" to have been involved in the first instituted derivation proceeding.
"After filing 15 months ago, we are pleased to be moving on to the trial phase to prove derivation from Oquendo’s invention,” Morton added.
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