Under the pre-AIA first-to-invent regime, interference proceedings were available to contest which of two (or more) parties invented the claimed subject matter first. With the AIA’s shift to a first-to-file regime, interference proceedings have given way to derivative proceedings. Under the AIA, the first party to invent does not necessarily secure the patent, so interference proceedings no longer fit. Instead, derivation proceedings offer an alternate challenge on grounds of originality. Specifically, derivation proceedings allow a patent applicant to challenge earlier applications on the ground that the earlier applicant(s) derived the invention from the petitioning applicant.
Under the AIA §135, the petitioner must set out the basis for finding (i) “that an inventor named in an earlier application derived the claimed invention from an inventor named in in the petitioner’s application” and (ii) “without authorization, the earlier application claiming such invention was filed.” The AIA’s derivation procedure became effective on March 16, 2013.
Around this effective date, practitioners noted that, as a practical matter, it would be some time before derivation proceedings became viable. As time passed, however, derivation petitions began appearing before the Patent Trial and Appeal Board (PTAB), but none were instituted. Two grounds for dismissal have been highlighted: failure to meet the evidentiary burden for conception and/or failure to meet petition requirements of 37 CFR §42.405.
One example of the failure to meet the evidentiary burden for conception is reflected in multiple proceedings brought by Catapult Innovations.  For example, in Catapult Innovations Pty Ltd., v. Adidas Ag.[1], PTAB denied Catapult Innovation’s petition noting that that Catapult Innovations had merely shown possession (and communication of prior possession) and not the required conception (and communication of conception). While such decisions provide some insight into the PTAB’s method of analysis regarding the evidentiary burden, it also serves as an important reminder that conception remains important even in the post-AIA world. While the date of conception might appear irrelevant due to the shift away from first-to-invent, evidence of conception is still crucially important in derivation petitions and proceedings.
In other cases, PTAB denied on grounds of failure to meet the petition requirements. Under 37 CFR §42.405, the petitioner must also show that the petitioner’s invention is the “same or substantially the same” as the respondent’s invention. This can be particularly problematic for petitioners in the case where the respondents have made improvements or modifications. In Brockman v. Bainter[2], PTAB denied the derivation petition in part because petitioner had not accounted for differences in elements and limitations present in respondent’s claims. Note that this problem can also impact the conception discussion, as limitations or features that are unaccounted for in petitioner’s documentation or communications will also negatively impact petitioner’s case (see, e.g., Ethertronics, Inc. v. Nextivity, Inc.).[3]
On March 21, 2018, PTAB instituted the first derivation proceeding in Anderson Corp. v. GED Integrated Sol., Inc.[4] The facts in Anderson are particularly well-suited for a derivation proceeding. Anderson contends that one if its employees, Sammy Oquendo, invented the subject matter in question, but shared his designs with GED. GED subsequently applied for a patent, which Anderson is now challenging.
Anderson succeeded on the issue of conception. PTAB accepted the affidavit by Oquendo, which was supported by evidence in the record. Moreover, Anderson was able to show that Oquendo developed prototypes of the subject matter, which were shared with GED. Contrast Anderson to Catapult Innovations, where Catapult could only show that technical information was conveyed through a presentation. In Catapult Innovations, PTAB found that the presentation merely demonstrated possession, not conception. PTAB clarified that possession does not imply conception, since there are alternative ways to achieve possession without conception. The differing outcomes in Anderson and Catapult Innovation suggest that rigorous documentation of the development process and communications with outside parties remain important to meeting the threshold requirements on conception.
Anderson also succeeded with respect to the petition requirements. Anderson’s strategy in this area is particularly interesting in that, as far as the contested claims were concerned, Anderson filed the exact same claims as GED. Consequently, PTAB spent very little time on “same or substantially the same” analysis, essentially just making the fairly self-explanatory statement that Anderson had shown at least one claim was the “same or substantially similar” to GED’s. Bethany Ford of Baker Botts suggests PTAB’s decision regarding the identical claims means petitioner’s now have an easy option to avoid the hurdle of “same or substantially the same,” if the facts allow. As such, conception is likely to be the main battle ground for future petitions.
As the first case that PTAB has permitted to proceed to a derivation proceeding, Anderson could prove instructive. Given PTAB’s historically unfriendly stance towards petitioners, however, it is still unclear how high the threshold is. Nonetheless, the case should provide interesting insight into how PTAB will approach the merits in a derivation proceeding. In turn, this should provide companies and inventors with more concrete guidance on what types of evidence will be useful on both sides of the derivation proceeding. Oral argument, if requested (and granted), is tentatively scheduled for November 14.
[1] Some PTAB orders denying/instituting derivation proceedings are available on Lexis and/or Westlaw. The orders can also be accessed (for free) through the USPTO website. This particular order can be found by searching “DER2014-00006” as the AIA Review Number.
[2] AIA Review Number DER2016-00002
[3] AIA Review Number DER2016–00021
[4] AIA Review Number.DER2017-00007
Nicholas Lo is a J.D. candidate, 2019, at NYU School of Law.

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