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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICHAEL J. SINDONI, JR., owner and Assignee of
`US Patent Appl’n No. 14/834,548,
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`PETITIONER
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`V.
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`FCA US LLC, owner and Assignee of
`US Patent Appl’n No. 14/209,123
`Patent No. 9,067,525 – Issued June 30, 2015
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`RESPONDENT
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`Case No.:______________
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`VIA PRPS
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST US PATENT
`APPLICATION NO. 14/209,123
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`TABLE OF CONTENTS
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`I.
`Introduction
`II. Mandatory Notices under 37 CFR § 42.8
`(1) Real Party-in-Interest
`(2) Related Matters
`(3) Lead and Back-up Counsel
`(4) Service Information
`III. Standing under 37 CFR § 42.402
`IV. Timeliness of the Instant Petition under 37 CFR § 42.403
`V. Derivation Fee under 37 CFR § 42.404
`VI. Statement of Material Facts under 37 CFR § 42.22(c)
`A.
`Initial Development of Invention by Petitioner
`B.
`Communication of Invention to FCA US LLC
`VII. Derivation of Multiple Claims of the ‘123 Application from Petitioner
`A.
`Petitioner’s Claim 1/Respondent’s Claim 1
`B.
`Petitioner’s Claim 2/Respondent’s Claim 3
`C.
`Petitioner’s Claim 3/Respondent’s Claim 4
`D.
`Petitioner’s Claim 4/Respondent’s Claim 5
`E.
`Petitioner’s Claim 5/Respondent’s Claim 6
`F.
`Petitioner’s Claim 6/Respondent’s Claim 7
`G.
`Petitioner’s Claim 7/Respondent’s Claim 8
`H.
`Petitioner’s Claim 8/Respondent’s Claim 9
`I.
`Petitioner’s Claim 9/Respondent’s Claim 10
`J.
`Petitioner’s Claim 10/Respondent’s Claim 11
`K.
`Petitioner’s Claim 11/Respondent’s Claim 12
`L.
`Petitioner’s Provisional Application
`(a) Similarities to Petitioners Specification
`(b) Similarities to Petitioners Drawings
`VIII. Conclusion
`IX. CERTIFICATE OF SERVICE
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`3
`4
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`5
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`5
`6
`6
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`7
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`9
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`10
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`11
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`14
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`19
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`I. Introduction
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`Petitioner Michael J. Sindoni, Jr., (“Sindoni” or “Petitioner”) hereby petitions and
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`respectfully requests that the Patent Trial and Appeal Board institute a derivation proceeding
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`against US Patent Application No. 14/209,123 to Deyan Ninov et al., filed March 13, 2014 and
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`titled “Adjustable loading ramp system for a vehicle” (“the ‘123 application”, submitted
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`herewith as Sindoni Exhibit 1001; authenticated in Declaration of Michael J. Sindoni, Jr.,
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`“Sindoni Dec.” Sindoni Exhibit 1003, ¶ 2) owned by its Assignee, FCA US LLC of Auburn
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`Hills, Michigan (hereinafter “Respondent”).
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`As will be demonstrated below, this invention, which in brief is a ramp system for a
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`pickup truck, was communicated to Respondent by Sindoni before Respondent filed the ‘123
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`application. Petitioner has filed his own patent application, no. 14/834,548, on August 25, 2015,
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`claiming priority to Provisional Application No. 62/043,799, filed on August 29, 2014 (“the ‘548
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`application”, Sindoni Exhibit 1002; authenticated in Sindoni Dec., Sindoni Exhibit 1003, ¶ 3).
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`Sindoni never authorized FCA US LLC to file the ‘123 application or any other application on
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`Sindoni’s invention. At the very least, Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12 of the ‘123
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`application were directly derived from the teachings provided to Respondent by Petitioner, and
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`the remaining claims of the ‘123 application were readily obtainable therefrom.
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`Additionally, Petitioner submits that the patent application filed by Respondent is legally
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`deficient. Two inventors are listed on the Application Data Sheet and Filing Receipt &
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`Assignment as Joseph S Dehnar & Gregory A Howell. The signed Declaration has names listed
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`as Joseph S. Dehnar & Gregory A. Howell. The Declaration should match the Application Data
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`Sheet exactly pursuant to 37 CFR §1.76. Also it appears that Howell did not sign with his middle
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`initial. The Information Disclosure Statement filed and signed off on by the Examiner does not
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`have an application number listed. 37 CFR §1.98 states that the application number must be
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`listed. The Examiner should have required that Respondent correct this, rather than signing off
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`on it. The only time an applicant may omit the application number is when the Information
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`Disclosure Statement is submitted concurrently with the initial application documents, when
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`there is no application number.
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`Pursuant to 37 CFR § 42.22(a)(1), Petitioner respectfully requests that the Board correct
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`the inventorship of the ‘123 application to include Michael J. Sindoni, Jr. (listed on Sindoni’s
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`‘548 application) and/or to delete the inventors currently listed in the ‘123 application by
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`Respondent. Petitioner further respectfully requests that the Assignment of the ‘123 application
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`to FCA US LLC be voided. Petitioner also requests any additional relief the Board deems
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`appropriate.
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`II. Mandatory Notices under 37 CFR § 42.8
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`Pursuant to 37 CFR § 42.8, Petitioner is filing, as part of the instant petition, the
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`following notices.
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`(1) Real Party-in-Interest
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`The real party-in-interest for Petitioner is Michael J. Sindoni, Jr., having an address at
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`2078 Hardin Street, Delanson, NY, 12053.
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`The real party-in-interest for Respondent is believed to be FCA US LLC, having an
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`address at 800 Chrysler Drive East, Auburn Hills, MI, 48326-2757. (FCA US LLC is the
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`Assignee of the ‘123 application)
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`(2) Related Matters
`None.
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`(3) Lead Counsel
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`Lead Counsel: Robert W. Gray, The Gray Law Group Ltd.,
`1431 Opus Place, Suite 110, Downers Grove, IL, 60515
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`(4) Service Information
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`Service of the instant petition is being made via Express Mail and e-mail on the
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`following:
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`(a)
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`The address and attorney of record for the ‘123 application:
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`Attorney Ralph E. Smith
`800 Chrysler Dr.
`CIMS 483-02-19
`Auburn Hills, MI 48326
`Phone: (248) 944-6519
`Fax: (248) 944-6537
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`III. Standing under 37 CFR§ 42.402
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`Petitioner Sindoni is an applicant for patent, namely, US Patent Application No.
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`14/834,548, entitled “Retractable bed ramps with platform for a pickup truck” filed August 25,
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`2015 (“the ‘548 application”, Sindoni Exhibit 1002). As such, Petitioner has standing to file the
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`instant petition. Power of Attorney was granted to the undersigned lead counsel upon the filing
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`of the ‘548 application as reflected in Sindoni Exhibit 1004 (authenticated by Sindoni Dec.,
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`Sindoni Ex. 1003, at ¶ 6).
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`IV. Timeliness of the Instant Petition under 37 CFR § 42.403
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`The “Leahy-Smith America Invents Technical Corrections” was signed into law on
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`January 14, 2013 (Public Law 112-274, at 126 STAT 2456, submitted herewith as Sindoni
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`Exhibit 1005; see Sindoni Dec., Sindoni Ex 1003, at ¶ 4) to correct certain technical defects in
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`the America Invents Act. Section 1, ¶ (k) amends 35 USC § 135(a) and establishes the times for
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`the filing of a petition for a derivation proceeding, as follows:
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`(2) TIME FOR FILING.—A petition under this section with respect to an invention
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`that is the same or substantially the same invention as a claim contained in a patent
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`issued on an earlier application, or contained in an earlier application when published
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`or deemed published under section 122(b), may not be filed unless such petition is
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`filed during the 1-year period following the date on which the patent containing such
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`claim was granted or the earlier application containing such claim was published,
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`whichever is earlier.
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`(Sindoni Exhibit 1005, pages 3-4.) The ‘123 application was not published before issuance of
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`the patent, and the patent was issued on June 30, 2015. Since the instant petition is being filed
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`during the one-year period following June 30, 2015, the instant petition is timely.
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`V. Derivation Fee under 37 CFR § 42.404
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`Petitioner herewith is submitting the $400 fee under 37 CFR § 42.15(c)(1) via the
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`Petitioner’s credit card. No additional fees are believed necessary. Should any additional fees be
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`necessary to maintain this petition and obtain a filing date, the Board is respectfully directed to
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`charge same (or credit any overpayments) to the submitted credit card.
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`VI. Statement of Material Facts under 37 CFR § 42.22(c)
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`A.
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`B.
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`Initial Development of Invention by Petitioner
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`1. At least as early as July 2013, Michael J. Sindoni, Jr., the inventor listed on Petitioner’s
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`‘548 application (Sindoni Ex 1002), conceived of the idea of a ramp system for a pickup
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`truck. (Declaration of Michael J. Sindoni, Jr., Sindoni Ex 1003, at ¶ 5.)
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`2. As early as January 2014, Sindoni had contemplated manufacturing his invention and
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`wanted to continue development of his invention with production and distribution. (Id.)
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`3. Sindoni sought out reputable manufacturers who might begin production under license,
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`but could not find a suitable manufacturer at first. (Id.)
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`Communication of Invention to U.S. Patent Commission
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`4. Details of the invention were communicated to FCA US LLC by Sindoni before FCA US
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`LLC filed the '123 application and before the Sindoni application was filed. (Sindoni
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`Dec., Sindoni Ex. 1003, at ¶ 7.)
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`5. Between July 2013 and September 2013, details of the invention were also
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`communicated to some of Petitioner’s family and friends, specifically John Sindoni
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`(Petitioner’s brother), Janelle Sindoni (Petitioner’s wife), Mike Sindoni (Petitioner’s
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`father), and friends Dan Burke, Mike Altschuler, Mark Kenific, and Joe Vanderlinden.
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`(Sindoni Dec., Sindoni Ex. 1003 at ¶ 9.)
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`6. Details of the invention were communicated to the U.S. Patent Commission, an invention
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`development firm with legal counsel for inventors, on January 26, 2014. (Sindoni Dec.,
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`Sindoni Ex. 1002 at ¶ 10.)
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`VII. Derivation of Multiple Claims of the ‘123 Application from Petitioner
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`Pursuant to 37 CFR § 42.405(a)(2), Petitioner hereby demonstrates that Petitioner has
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`multiple claims that are i) substantially the same as Respondent’s claimed invention and ii)
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`substantially the same as the invention disclosed to Respondent. Specifically, at least
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`Petitioner’s Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, and 11 are substantially the same as Respondent’s
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`Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12, respectively. Moreover, all of Respondent’s Claims
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`1, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12, were derived from the teachings of Petitioner's invention that
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`were provided to Respondent. The remainder of Respondent’s claims were easily derived
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`therefrom by one of ordinary skill in the art once the initial disclosure of the invention was made.
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`Finally, the Petitioner never authorized Respondent to file a patent application on Petitioner’s
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`invention.
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`Furthermore, Petitioner's invention was first filed as a provisional application on
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`August 29, 2014, and assigned Application No. 62/043,799.
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`Both Petitioner’s and Respondent’s claims are relatively straightforward and are to be
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`given their broadest reasonable interpretation, as understood by one of ordinary skill in the art, in
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`light of and consistent with the specification.
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`A.
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`Petitioner’s Claim 1/Respondent’s Claim 1
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`Petitioner’s Claim 1 reads as follows:
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`A ramp system for a pickup truck having a bed and a tailgate, the ramp
`system comprising:
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`(a) a longitudinal bed channel recessed into a floor of the bed, the bed channel defining a
`bottom surface having a longitudinal bed track;
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`(b) a longitudinal tailgate channel recessed into an inner-panel of the
`tailgate, the tailgate channel aligned with the bed channel and defining a
`bottom surface having a longitudinal tailgate track, the inner panel facing
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`the floor of the bed when the tailgate is in a closed position; and
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`(c) a ramp member having a track member, the ramp member configured to be stowed in
`the bed channel in a stowed position and slidable in the bed and tailgate channels from
`the stowed position to a fully deployed position during which the track member moves
`along the respective bed and longitudinal tailgate tracks without having to raise the track
`member out of the respective bed and longitudinal tailgate tracks.
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`Respondent’s Claim 1 reads as follows:
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` A
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` ramp system for a pickup truck having a bed and a tailgate, the ramp
`system comprising:
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`(a) a longitudinal bed channel recessed into a floor of the bed, the bed channel defining
`a bottom surface having a longitudinal bed truck;
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`(b) a longitudinal tailgate channel recessed into an inner-panel of the tailgate, the
`tailgate channel aligned with the bed channel and defining a bottom surface having a
`longitudinal tailgate track, the inner panel facing the floor of the bed when the tailgate
`is in a closed position; and
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`(c) a lateral tailgate track recessed into the inner panel and extending substantially
`transverse to and in communication with the bed and longitudinal tailgate tracks; and
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`(d) a ramp member having a track member, the ramp member configured to be stowed
`in the bed channel in a stowed position and slidable in the bed and tailgate channels
`from the stowed position to a fully deployed position during which the track member
`moves along the respective bed and longitudinal tailgate tracks and into the lateral track
`without having to raise the track member out of the respective bed and longitudinal
`tailgate tracks;
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`wherein upon the track member being received I the lateral adjustable while coupled to
`the tailgate through movement of the track member in the lateral tailgate track.
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`The only difference between the two claims is the Respondent's additional option of "a lateral
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`tailgate track recessed into the inner panel and extending substantially transverse to and in
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`communication with the bed and longitudinal tailgate tracks[,]" and the manner in which the
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`Respondent's ramp member interfaces with the lateral tailgate track.
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`The lateral tailgate track is further described in Respondent's Claim 2, displacing the
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`sequence of claims such that Respondent's Claim 3 is equivalent to Petitioner's Claim 2,
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`Respondent's Claim 4 is equivalent to Petitioner's Claim 3, etc.
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`B.
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`Petitioner’s Claim 2/Respondent’s Claim 3
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`Petitioner’s Claim 2 reads as follows:
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`2. The ramp system of Claim 1, wherein, in the fully deployed position, the
`ramp member extends from the longitudinal tailgate track, at an outer end
`of the tailgate when the tailgate is in an open position, the outer end being
`opposed to an inner end of the tailgate that is adjacent to the floor, at an
`incline to a ground surface.
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`Respondent’s Claim 3 reads as follows:
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`The ramp system of claim 2, wherein, in the fully deployed position, the
`ramp member extends from the lateral tailgate track at the outer end of the
`tailgate at an incline to a ground surface.
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`Respondent’s Claim 3 presents the teachings of aspects of Petitioner’s Claim 2, but in a manner
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`relative to the lateral tailgate track described in Respondent's Claim 2. In both the Respondent's
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`Claim 3 and the Petitioner's Claim 2, a ramp member is described, extending from the outer end
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`of the tailgate at an incline to the ground. This teaching was made clear in Petitioner’s Invention
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`Disclosure (Sindoni Ex 1006).
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`C. Petitioner’s Claim 3/Respondent’s Claim 4
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`Petitioner’s Claim 3 reads as follows:
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`The ramp system of Claim 2, wherein the track member comprises a head
`member pivotably coupled thereto, and wherein the head member comprises an end
`member that is slidably movable in and along the bed track and the longitudinal tailgate
`track.
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`Respondent’s Claim 4 reads as follows:
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`The ramp system of claim 3, wherein the track member comprises a head member
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`pivotably coupled thereto, and wherein the head member comprises an end member that
`is slidably movable in and along the bed track and the longitudinal and lateral tailgate
`tracks.
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`These two claims are substantially identical, differing only in the addition of the Respondent's
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`lateral tailgate track and the manner in which the Respondent's head member interfaces with the
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`lateral tailgate track. With that exception, the elements described in Respondent's Claim 4 were
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`disclosed by, and are supported by the same portion of the Invention Disclosure as outlined
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`above.
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`D. Petitioner’s Claim 4/Respondent’s Claim 5
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`Petitioner’s Claim 4 reads as follows:
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`The ramp system of Claim 1, wherein the bed and longitudinal tailgate
`channels are substantially horizontally aligned when the tailgate is in the
`open position.
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`Respondent’s Claim 5 reads as follows:
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`The ramp system of claim 1, wherein the bed and longitudinal tailgate
`channels are substantially horizontally aligned when the tailgate is in the
`open position.
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`These claims are identical, in that they both provide a pickup truck bed with a tailgate and
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`longitudinal tailgate channels, which are horizontally aligned with the bed when the tailgate is in
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`the open position. This teaching was made clear in Petitioner’s Invention Disclosure (Sindoni Ex
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`1006).
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`E. Petitioner’s Claim 5/Respondent’s Claim 6
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`Petitioner’s Claim 5 reads as follows:
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`The ramp system of Claim 1, wherein a top surface of the ramp members is flush with a
`surface of the floor in the stowed position and during movement through the bed and
`longitudinal tailgate channel.
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`Respondent’s Claim 6 reads as follows:
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`The ramp system of claim 1, wherein a top surface of the ramp member is flush with a
`surface of the floor in the stowed position and during movement through the bed and
`tailgate channels.
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`These claims are also essentially identical. Again, the elements described differ only in an
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`accommodation for the Respondent's lateral tailgate track, with a general reference to "tailgate
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`channels," presumably to include both the longitudinal tailgate tracks and the lateral tailgate
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`track. This teaching was made clear in Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`F. Petitioner’s Claim 6/Respondent’s Claim 7
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`Petitioner’s Claim 6 reads as follows:
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`The ramp system of Claim 5, wherein the top surface of the ramp member
`is a same material as the surface of the bed.
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`Respondent’s Claim 7 reads as follows:
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`The ramp system of claim 6, wherein the top surface of the ramp member
`is a same material as the surface of the floor.
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`Once again, the claims are essentially identical. The reference to a "floor" in Respondent's
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`Claim 7 is clearly a reference to the bed of the pickup truck, as described in Petitioner's Claim 6.
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`This teaching was made clear in Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`G. Petitioner’s Claim 7/Respondent’s Claim 8
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`Petitioner’s Claim 7 reads as follows:
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`The ramp system of Claim 1, wherein the bed and longitudinal tailgate
`tracks are recessed relative to a bottom surface of the bed and tailgate
`channels, respectively, and wherein the track members extend below the
`bottom-surface of the bed and tailgate channels to a slidably engage the
`bed and longitudinal tailgate tracks.
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`Respondent’s Claim 8 reads as follows:
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`The ramp system of claim 1, wherein the bed and longitudinal tailgate
`tracks are recessed relative to a bottom surface of the bed and tailgate
`channels, respectively, and wherein the track members extend below
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`the bottom surface of the bed and tailgate channels to slidably engage
`the bed and longitudinal tailgate tracks.
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`Once again, the claims are essentially identical. In fact, these two claims are identical, word for
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`word. This teaching was made clear in Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`H. Petitioner’s Claim 8/Respondent’s Claim 9
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`Petitioner’s Claim 8 reads as follows:
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`The ramp system of Claim 1, wherein the track member is at a cab-side
`end of the ramp member when the ramp member is in the stowed position,
`the cab-side end opposed to a tailgate side end of the ramp member.
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`Respondent’s Claim 9 reads as follows:
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`The ramp system of claim 1, wherein the track member is at a cab-side
`end of the ramp member when the ramp when the ramp member is in the
`stowed position, the cab-side and opposed to a tailgate side end of the
`ramp member.
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`Once again, the claims are essentially identical. There are minor differences in grammar
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`between Respondent's Claim 9 and Petitioner's Claim 8. This teaching was made clear in
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`Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`I. Petitioner’s Claim 9/Respondent’s Claim 10
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`Petitioner’s Claim 9 reads as follows:
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`The ramp system of Claim 8, wherein the track member is lockable at a
`position along the bed or longitudinal tailgate track or in the fully deployed
`position.
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`Respondent’s Claim 10 reads as follows:
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`The ramp system of claim 9, wherein the track member is lockable at a
`position along the bed, longitudinal tailgate, or lateral tailgate tracks.
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`Respondent's Claim 10 declines to specify that the track member is lockable in the fully
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`deployed position, and makes an accommodation for the Respondent's lateral tailgate track.
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`Aside from these minor details, the the claims are essentially identical once again. This teaching
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`was made clear in Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`J. Petitioner’s Claim 10/Respondent’s Claim 11
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`Petitioner’s Claim 10 reads as follows:
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`The ramp system of Claim 9, wherein the track member is lockable at the
`cab-side end of the ramp member in the stowed position.
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`Respondent’s Claim 11 reads as follows:
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`The ramp system of claim 10, wherein the track member is lockable at the
`cab-side end of the ramp member in the stowed position, and wherein the
`track member is lockable at any position along the lateral tailgate track.
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`Respondent's Claim 11 makes the usual accommodation for Respondent's lateral tailgate track.
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`Aside from this minor detail, the claims are essentially identical once again. This teaching was
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`made clear in Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`K. Petitioner’s Claim 11/Respondent’s Claim 12
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`Petitioner’s Claim 11 reads as follows:
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`The ramp system of Claim 1, wherein the longitudinal bed channel
`comprises a pair of longitudinal bed channels laterally spaced apart,
`wherein the longitudinal tailgate channel comprises a pair of longitudinal
`tailgate channels spaced laterally apart, and wherein the ramp member
`comprises a pair of ramp members.
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`Respondent’s Claim 12 reads as follows:
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`The ramp system of claim 1, wherein the longitudinal bed channel
`comprises a pair of longitudinal bed channels laterally spaced apart,
`wherein the longitudinal tailgate channel comprises a pair of longitudinal
`tailgate channels spaced laterally apart, and wherein the ramp member
`comprises a pair of ramp members.
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`Once again, the claims are essentially identical. In fact, these two claims are identical, word for
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`word. This teaching was made clear in Petitioner’s Invention Disclosure (Sindoni Ex 1006).
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`L. Petitioner’s Provisional Application
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`(a) Similarities to Petitioner’s Specification
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`Petitioner’s provisional Application No. 62/043,799 which was based on the present
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`invention was filed on August 29, 2014 after it was previously disclosed to Respondent. In
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`particular, the Background, Summary, and Description sections of Respondent’s ‘123 application
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`appear to be derived from the Background of the Invention, Summary of The Invention, and
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`Detailed Description of The Invention sections in Petitioner’s Specification.
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`The Petitioner’s Background Of The Invention reads as follows:
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`The invention relates generally to pickup truck equipment and
`accessories, and in particular to retractable bed ramps with a platform
`for a pickup truck. For both work and play, the pickup truck has become
`the most popular type of vehicle in the United States, outselling both
`sedans and sport utility vehicles. A variety of lighter, special-purpose
`vehicles, such as riding lawnmowers, motorcycles, golf carts, and
`all-terrain vehicles (ATVs), have generally been towed behind pickup
`trucks on flatbed trailers, but many owners would prefer to save fuel and
`space in their driveways by carrying these special purpose vehicles directly
`in the bed of the pickup truck. Particularly with the popularity of such
`super duty pickup trucks as the Ford F-350, even certain types of light
`construction equipment, such as a small end loader or excavator, could
`conceivably be carried in the bed. Unfortunately, the conventional tailgate
`configuration would be severely damaged, as well as the bed; and moving
`such vehicles into the bed is impossible without ramps. Certain types of
`ramps have been developed but these are generally unsatisfactory, and do
`nothing to protect the tailgate or the bed from damage. Retractable bed
`ramps with a platform, which are factory installed with either a
`conventional tailgate or a pair of double doors, would resolve these
`problems.
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`The Respondent’s Background section reads as follows:
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`Vehicles having storage beds, e.g. pickup trucks, are capable of storing
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`and transporting large objects. Examples of these large objects include
`recreational vehicles such as all-terrain vehicles (ATVs) and motorcycles.
`These large objects are typically very heavy and are unable to be lifted into
`the storage bed by a single person, e.g. the driver of the vehicle. Loading
`ramps provide for easier loading of these large objects into the storage bed.
`However, conventional telescoping loading ramps, such as those used in
`moving trucks, are not laterally adjustable. Other non-integrated ramp
`systems typically require a user to unload one or more loading ramps from
`the storage bed, attach and position the one or more ramps, and lock the one
`or more ramps into place. The user would then need to repeat this process
`to unlock, detach, and stow the one or more loading ramps. Thus, while
`such conventional loading ramps work for their intended purpose, there
`remains a need for improvement in the relevant art.
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`Respondent’s Background section, like Petitioner’s Background Of The Invention,
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`identifies existing loading ramps for a pickup truck and indicates that they are less than
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`satisfactory. The motorcycles and all-terrain vehicles (ATVs) which are referenced in
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`Petitioner’s Background Of The Invention are referenced in Respondent’s Background section.
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`In the Detailed Description Of The Invention, Petitioner described the “Retractable
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`ramps 11 [which] are provided within the platform 13, and each may be extended by
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`pulling a handle 12 located at the rear end of the ramp 11.” The platform described by
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`Petitioner is the floor of the bed described by Respondent. When extended from within the
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`platform, the retractable ramps would clearly leave longitudinal channels inside the
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`platform, similar to those described in Respondent’s Summary and Description sections.
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`(b) Similarities to Petitioner’s Drawings
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`The drawings accompanying Respondent’s ‘123 application also bear a striking
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`resemblance to Figure 4, a drawing accompanying Petitioner’s provisional application. The
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`location and width of the ramps and longitudinal channels are precisely the same. The angle of
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`the perspective, other than being a mirror image, is almost precisely the same. It is reasonable to
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`infer that Petitioner’s Figure 4 was used as a starting point for all of the drawings accompanying
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`Respondent’s ‘123 application, although it most closely resembles Respondent’s Figure 2.
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`Although Figures 1, 2, and 3 of Petitioner’s provisional application present a different
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`embodiment, wherein the tailgate of the pickup truck is replaced by two doors which swing out
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`laterally, similarities in the central features of the respective drawings are clearly visible. The
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`angle of the perspective is almost precisely the same. The location and width of the ramps and
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`longitudinal channels are precisely the same. The only real distinction in any of the drawings is
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`the lateral bed channel in the drawings accompanying Respondent’s ‘123 application.
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`Figures 5 and 6 in Respondent’s provisional application also show the invention installed
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`in a conventional pickup truck with a tailgate. Respondent’s Figure 5 most closely resembles
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`Respondent’s Figure 5, with both of the ramps fully extended and the ends of the ramps resting
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`on the ground. Respondent’s Figure 6 most closely resembles Respondent’s Figure 8, with one
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`of the ramps fully extended and the ends of the ramp resting on the ground.
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`The most significant difference between the drawings in Respondent’s ‘123 application
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`and Petitioner’s provisional application is Respondent’s lateral channel on the edge of the
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`tailgate. The longitudinal bed channels are exposed and recessed into the bed in Respondent’s
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`‘123 application, while they are contained within the platform in Petitioner’s provisional
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`application. However the width of the ramps, locations of the longitudinal channels, and
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`positions of the ramps when retracted are virtually identical.
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`Petitioner Sindoni conceived of a major advance in the pickup truck equipment field and sought
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`VIII. Conclusion
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`out what he thought was a reputable manufacturer. Petitioner disclosed the invention to
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`Respondent to this end, and Respondent acknowledged receipt of the disclosure. Respondent
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`PETITION TO INSTITUTE A DERIVATION PROCEEDING AGAINST
`US PATENT APPLICATION NO. 14/209,123
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`filed the ‘123 application with claims clearly derived from the disclosure provided to Respondent
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`by Petitioner. At least eleven of the claims and three of the drawings in Respondent’s ‘123
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`application were identical, or virtually identical, to similarly positioned claims in Petitioner’s
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`‘548 application. Since neither of these two applications was published before the other was
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`filed, the most reasonable inference is that Respondent derived its claims from the Petitioner’s
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`Invention Disclosure. Petitioner never authorized Respondent FCA US LLC to file the ‘123
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`application, which filing effectively stealing the invention from Petitioner.
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`Furthermore, Petitioner’s Provisional Application No. 62/043,799 was filed on
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`August 29, 2014, before the filing of Respondent’s ‘123 application. Petitioner’s Provisional
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`Application contained references to certain types of cargo which were repeated in Respondent’s
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`‘123 application. Longitudinal bed channels referenced in R