`Tel: 571-272-7822
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`Paper 8
`Entered: April 1, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`OREN TECHNOLOGIES, LLC,
`Petitioner Application No. 14/882,973,
`Petitioner
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`v.
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`KENNETH EIDEN, III, BRIAN ANDREW HUNTER,
`MATHEW CARLEY, TIMOTHY STEFAN,
`MARK D’AGOSTINO, and SCOTT D’AGOSTINO,
`Respondent Patent No. 9,758,082 B2,
`Respondent.
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`DER2016-00001
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`
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`Before SALLY C. MEDLEY, JONI Y. CHANG, and JOSIAH C. COCKS,
`Administrative Patent Judges.
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`CHANG, Administrative Patent Judge.
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`
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`ORDER TO SHOW CAUSE
`WHY PETITION SHOULD NOT BE DISMISSED
`37 C.F.R. § 42.71
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`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
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` On October 15, 2015, Petitioner filed a petition (Paper 1) based upon
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`Application No. 14/882,973 (“Petitioner’s ’973 application”) to institute a
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`derivation proceeding under 35 U.S.C. § 135, with respect to Application
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`No. 14/249,420 (“Respondent’s ’420 application”), which has been
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`published as Patent Application Publication No. 2014/0305769 A1
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`(Respondent’s ’769 publication), and issued as Patent No. 9,758,082
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`(“Respondent’s ’082 patent”).
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`35 U.S.C. § 135 (a)(1) (2012) provides, in pertinent part, that
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`“Whenever the Director determines that a petition filed under this subsection
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`demonstrates that the standards for instituting a derivation proceeding are
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`met, the Director may institute a derivation proceeding.” This statute uses
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`language similar to that which was used granting the Director discretion to
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`institute interference proceedings, as found in the prior version of 35 U.S.C.
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`§ 135(a) (2011), which provides that “Whenever an application is made for a
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`patent which, in the opinion of the Director, would interfere with any
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`pending application, or with any unexpired patent, an interference may be
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`declared . . . .” It has long been determined that a party does not have a right
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`to have the Director declare an interference. United States ex rel. Troy
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`Laundry Machinery Co. v. Robertson, 6 F.2d 714, 715 (D.C. Cir. 1925).
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`The Director has stated pertaining to derivation proceedings that:
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`Prior to instituting a proceeding that is both costly and time
`consuming to the parties and the Office, a determination will be
`made to ensure that each party is claiming subject matter that is
`actually patentable but for the potential derivation issue. While
`ordinarily a derivation will not be instituted when none of
`petitioner’s claims are in condition for allowance, the rule does
`not preclude institution in such a situation, and each situation will
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`2
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`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
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`be evaluated on its particular facts. See 35 U.S.C. 135(a), as
`amended.
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`Changes to Implement Derivation Proceedings, 77 Fed. Reg. 56068, 56076
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`(September 11, 2012) (Final Rule).
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`Here, a Final Office Action was entered in Petitioner’s ’973
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`application on July 23, 2019, setting forth a six-month statutory period for
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`reply. Ex. 3001 (Final Office Action). Subsequently, the Office entered a
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`Notice of Abandonment on February 28, 2020, after the six-month statutory
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`period has expired. Ex. 3002 (Notice of Abandonment). Petitioner’s ’973
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`application is abandoned in view of Petitioner’s failure to timely file a
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`proper reply to the Final Office Action. Id. at 2. A brief review of the
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`Office records shows that Petitioner has not filed a continuing application.
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`In Petitioner’s ’973 application, the only claims remained under
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`consideration, claims 7, 9, and 11−18, were finally rejected. Ex. 3001, 3.
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`The Final Office Action indicates that these claims were rejected, for
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`example, under 35 U.S.C. § 103 as being unpatentable over Wietgrefe in
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`view of Bostrom, Krenek, Berryman, and Ohlson, and as being unpatentable
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`over Oren in view of Bostrom, Krenek, Berryman, and Wietgrefe. Id. at 9,
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`15. None of the prior art references relied upon by the examiner is based on
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`Respondent’s ’769 publication or Respondent’s ’082 patent.
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`In addition, the Final Office Action indicates that the effective filing
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`date of claims 7, 9, and 11−18 is October 14, 2015, the actual filing date of
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`Petitioner’s ’973 application. Ex. 3001, 5. The Final Office Action notes
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`that these claims have been amended such that Petitioner’s ’973 application
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`no longer includes a claim copied from or claiming the same invention as
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`any of the original claims of Respondent’s ’420 application. Id. at 9. The
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`3
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`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
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`Final Office Action further notes that Respondent’s original claims were
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`amended such that Respondent’s patent claims are narrower in scope than
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`the original claims, and recite subject matter that is not disclosed or
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`presently claimed in Petitioner’s ’973 application.
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`In view of the particular facts before us, we enter this Order to show
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`cause why the instant Petition should not be dismissed.
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`Accordingly, it is:
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`ORDER
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`ORDERED that Petitioner has 30 days from the date of this Order to
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`show cause why the instant Petition should not be dismissed.
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`FURTHER ORDERED that any response to this Order shall not
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`exceed 15 pages in length.
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`4
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`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
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`For PETITIONER:
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`Jeffrey S. Whittle
`Jason D. Lohr
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`HOGAN LOVELLS US LLP
`jeffrey.whittle@hoganloveUs.com
`jason.lohr@hoganloveHs.com
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`For RESPONDENT:
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`Christopher R. Liro
`Aaron T. Olejniczak
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`ANDRUS INTELLECTUAL PROPERTY LAW, LLP
`chris.liro@andruslaw.com
`aarono@andruslaw.com
`mariem@andruslaw.com
`cathym@andruslaw.com
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`5
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