throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: April 1, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OREN TECHNOLOGIES, LLC,
`Petitioner Application No. 14/882,973,
`Petitioner
`
`v.
`
`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.
`
`DER2016-00001
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and JOSIAH C. COCKS,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER TO SHOW CAUSE
`WHY PETITION SHOULD NOT BE DISMISSED
`37 C.F.R. § 42.71
`
`

`

`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
`
`
`
` On October 15, 2015, Petitioner filed a petition (Paper 1) based upon
`
`Application No. 14/882,973 (“Petitioner’s ’973 application”) to institute a
`
`derivation proceeding under 35 U.S.C. § 135, with respect to Application
`
`No. 14/249,420 (“Respondent’s ’420 application”), which has been
`
`published as Patent Application Publication No. 2014/0305769 A1
`
`(Respondent’s ’769 publication), and issued as Patent No. 9,758,082
`
`(“Respondent’s ’082 patent”).
`
`35 U.S.C. § 135 (a)(1) (2012) provides, in pertinent part, that
`
`“Whenever the Director determines that a petition filed under this subsection
`
`demonstrates that the standards for instituting a derivation proceeding are
`
`met, the Director may institute a derivation proceeding.” This statute uses
`
`language similar to that which was used granting the Director discretion to
`
`institute interference proceedings, as found in the prior version of 35 U.S.C.
`
`§ 135(a) (2011), which provides that “Whenever an application is made for a
`
`patent which, in the opinion of the Director, would interfere with any
`
`pending application, or with any unexpired patent, an interference may be
`
`declared . . . .” It has long been determined that a party does not have a right
`
`to have the Director declare an interference. United States ex rel. Troy
`
`Laundry Machinery Co. v. Robertson, 6 F.2d 714, 715 (D.C. Cir. 1925).
`
`The Director has stated pertaining to derivation proceedings that:
`
`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
`
`2
`
`

`

`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
`
`
`be evaluated on its particular facts. See 35 U.S.C. 135(a), as
`amended.
`
`Changes to Implement Derivation Proceedings, 77 Fed. Reg. 56068, 56076
`
`(September 11, 2012) (Final Rule).
`
`Here, a Final Office Action was entered in Petitioner’s ’973
`
`application on July 23, 2019, setting forth a six-month statutory period for
`
`reply. Ex. 3001 (Final Office Action). Subsequently, the Office entered a
`
`Notice of Abandonment on February 28, 2020, after the six-month statutory
`
`period has expired. Ex. 3002 (Notice of Abandonment). Petitioner’s ’973
`
`application is abandoned in view of Petitioner’s failure to timely file a
`
`proper reply to the Final Office Action. Id. at 2. A brief review of the
`
`Office records shows that Petitioner has not filed a continuing application.
`
`In Petitioner’s ’973 application, the only claims remained under
`
`consideration, claims 7, 9, and 11−18, were finally rejected. Ex. 3001, 3.
`
`The Final Office Action indicates that these claims were rejected, for
`
`example, under 35 U.S.C. § 103 as being unpatentable over Wietgrefe in
`
`view of Bostrom, Krenek, Berryman, and Ohlson, and as being unpatentable
`
`over Oren in view of Bostrom, Krenek, Berryman, and Wietgrefe. Id. at 9,
`
`15. None of the prior art references relied upon by the examiner is based on
`
`Respondent’s ’769 publication or Respondent’s ’082 patent.
`
`In addition, the Final Office Action indicates that the effective filing
`
`date of claims 7, 9, and 11−18 is October 14, 2015, the actual filing date of
`
`Petitioner’s ’973 application. Ex. 3001, 5. The Final Office Action notes
`
`that these claims have been amended such that Petitioner’s ’973 application
`
`no longer includes a claim copied from or claiming the same invention as
`
`any of the original claims of Respondent’s ’420 application. Id. at 9. The
`
`3
`
`

`

`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
`
`Final Office Action further notes that Respondent’s original claims were
`
`amended such that Respondent’s patent claims are narrower in scope than
`
`the original claims, and recite subject matter that is not disclosed or
`
`presently claimed in Petitioner’s ’973 application.
`
`In view of the particular facts before us, we enter this Order to show
`
`cause why the instant Petition should not be dismissed.
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Petitioner has 30 days from the date of this Order to
`
`show cause why the instant Petition should not be dismissed.
`
`FURTHER ORDERED that any response to this Order shall not
`
`exceed 15 pages in length.
`
`
`
`4
`
`

`

`DER2016-00001
`Petitioner Application No. 14/882,973
`Respondent Patent No. 9,758,082 B2
`
`For PETITIONER:
`
`Jeffrey S. Whittle
`Jason D. Lohr
`
`HOGAN LOVELLS US LLP
`jeffrey.whittle@hoganloveUs.com
`jason.lohr@hoganloveHs.com
`
`
`For RESPONDENT:
`
`Christopher R. Liro
`Aaron T. Olejniczak
`
`ANDRUS INTELLECTUAL PROPERTY LAW, LLP
`chris.liro@andruslaw.com
`aarono@andruslaw.com
`mariem@andruslaw.com
`cathym@andruslaw.com
`
`
`5
`
`

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