Paper 9
`Date: November 7, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICHAEL J. SINDONI, JR.,
`Petitioner Application 14/834,548,
`Petitioner,
`
`v.
`
`DEYAN NINOV, JOSEPH S. DEHNER,
`and GREGORY A. HOWELL
`Respondent Patent 9,067,525 B1,1
`Respondent.
`____________
`
`Case DER2016-00003
`____________
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`JAMES T. MOORE, Administrative Patent Judges.
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Institution of Derivation Proceeding
`37 C.F.R. § 42.71
`
`
`
`
`
`1 Issued from Application 14/209,123, filed March 13, 2014.
`
`

`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`I.
`Introduction
`On January 26, 2016, Petitioner filed a derivation petition (“Petition” or
`
`“Pet.”) on the basis of Petitioner’s Application 14/834,548 (“the ’548
`Application”), challenging claims 1–18 in Respondent’s Application 14/209,123
`(“the ’123 Application”).2 Paper 1. However, on June 30, 2015, prior to filing of
`the Petition, Respondent’s ’123 Application issued as U.S. Patent 9,067,525 B1
`(“the ’525 patent”), and claims 1–18 of the ’123 Application issued as claims 1–18
`of the ’525 patent, without change. Also, Petitioner identified Exhibit 1001 as a
`copy of the ’123 Application, even though Exhibit 1001 is a copy of the ’525
`patent. We treat the Petition as directed to the ’525 patent, and regard claims 1–18
`of the ’525 patent as the challenged claims.
`
`For reasons discussed below, we determine that the Petition is not supported
`by substantial evidence with respect to any challenged claim. Accordingly, we
`decline to institute a derivation proceeding. The Petition is denied.
`II.
`Discussion
`A.
`The Applicable Law
`Although a derivation proceeding is a creation of the Leahy-Smith America
`
`Invents Act (“AIA”), Pub. L. No. 112-29, § 3(i), 125 Stat. 284, 289–290
`
`
`2 It is not entirely clear whether Petitioner challenges only claims 1 and 3–12 of the
`’123 Application or all claims 1–18 of the ’123 Application, because Petitioner
`states: “At the very least, Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 12 of the ’123
`application were directly derived from the teachings provided to Respondent by
`petitioner, and the remaining claims of the [’]123 application were readily
`obtainable therefrom.” Pet. 3. We proceed as though Petitioner challenges all
`claims 1–18.
`
`2
`
`
`

`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`(September 16, 2011),3 the charge of derivation of invention as a basis for finally
`refusing application claims and cancelling patent claims had been adjudicated
`under 35 U.S.C § 135(a) as it existed prior to the enactment of AIA. On the
`substantive law of derivation of invention, the Board applies the jurisprudence
`which developed in that context, including the case law of the United States Court
`of Appeals for the Federal Circuit and the United States Court of Customs and
`Patent Appeals. Catapult Innovations Pty Ltd. v. Adidas AG., Case DER2014-
`00002, slip op. at 3 (PTAB July 18, 2014) (Paper 19).
`
`The threshold showing for institution of a derivation proceeding is whether
`the petition demonstrates substantial evidence that, if unrebutted, would support
`the assertion of derivation.4 35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). A
`petitioner must show that the respondent, without authorization, filed an
`application claiming a derived invention. 35 U.S.C. § 135(a); 37 C.F.R.
`§ 42.405(b)(2). The party asserting derivation must establish prior conception of
`an invention and communication of that conception to an inventor of the other
`party. Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek,
`988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908
`(CCPA 1974). The showing of communication must be corroborated. 37 C.F.R.
`§ 42.405(c). Assuming that corroborated conception and communication both are
`established, a petitioner would be able to regard as a derived invention those
`
`
`3 Leahy-Smith America Invents Technical Corrections Act, Pub. L. No. 112-274,
`§ 1(e)(1), (k)(1), 126 Stat. 2456 (Jan. 14, 2013).
`
` Substantial evidence is defined as that which a reasonable person might accept as
`adequate to support a conclusion. Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir.
`2006); see also In re Zurko, 258 F.3d 1379, 1384 (Fed. Cir. 2001).
`
`
` 4
`
`3
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`

`

`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`challenged claims of the respondent that are shown by the petitioner to be “same or
`substantially the same” as petitioner’s disclosed invention, i.e., that which was
`communicated to the respondent.5 See 37 C.F.R. § 42.405(b)(3)(i).
`
`Conception is the formation in the mind of the inventor of a definite and
`permanent idea of the complete and operative invention, as it is to be applied in
`practice. Kridl v. McCormick, 105 F.3d 1446, 1449 (Fed. Cir. 1997); Burroughs
`Wellcome Co. v. Barr Labs. Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994); Coleman v.
`Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). Proof of conception must encompass
`all limitations of the alleged invention. See Singh v. Brake, 222 F.3d 1362, 1367
`(Fed. Cir. 2000); Kridl, 105 F.3d at 1449; Sewall v. Walter, 21 F.3d 411, 415 (Fed.
`Cir. 1994); Coleman, 754 F.2d at 359; Davis v. Reddy, 620 F.2d 885, 889 (CCPA
`1980).
`
`“Conception must be proved by corroborating evidence which shows that
`the inventor disclosed to others his ‘completed thought expressed in such clear
`terms as to enable those skilled in the art’ to make the invention.” Coleman,
`754 F.2d at 359 (quoting Field v. Knowles, 183 F.2d 593, 601 (1950)).
`Corroboration is also required to show communication, like conception. Price,
`988 F.2d at 1196; Davis, 620 F.2d at 889. The purpose of the rule requiring
`corroboration is to prevent fraud, Berry v. Webb, 412 F.2d 261, 266 (CCPA 1969),
`and an inventor “must provide independent corroborating evidence in addition to
`his own statements and documents.” Hahn v. Wong, 892 F.2d 1028, 1032 (Fed.
`Cir. 1989); Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981). In assessing the
`
`
`5 “Same or substantially the same” means patentably indistinct, 37 C.F.R. § 42.401,
`and in this specific context, patentably indistinct is evaluated one-way in the
`direction from the invention disclosed to the respondent to each challenged claim.
`4
`
`
`

`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`sufficiency of independent corroboration, a rule of reason applies. Price, 988 F.2d
`at 1195.
`
`Also applicable to derivation proceedings are regulations in Subpart E of
`Part 42 of Title 37, Code of Federal Regulations. 37 C.F.R. §§ 42.400–412. In
`particular, as noted above, under 37 C.F.R. § 42.405(b)(3)(i), a petitioner has to
`show that each challenged claim is the same or substantially the same as the
`invention disclosed by petitioner to the respondent. And under 37 C.F.R.
`§ 42.405(a)(2), a petitioner has to show that it has at least one claim that is (i) the
`same or substantially the same as the respondent’s claimed invention, and (ii) the
`same or substantially the same as the invention disclosed to the respondent.
`
`B.
`The Alleged Invention – Conception and Communication
`First, Petitioner has not sufficiently specifically identified the features of an
`
`invention that he allegedly conceived. The closest the Petitioner comes to doing
`that are these two statements in the Petition: (1) “Petitioner Sindoni conceived of a
`major advance in the pickup truck equipment field”; and (2) “[T]his invention,
`which in brief is a ramp system for a pickup truck, was communicated to
`Respondent by Sindoni before Respondent filed the ’123 application.” Pet. 3, 16.
`We do not understand the position of Petitioner to be that Mr. Sindoni conceived of
`the very first ramp system for a pickup truck. An Information Disclosure
`Statement submitted by Petitioner during prosecution of the ’548 Application
`identifies three prior art references disclosing a ramp system for a pickup truck,
`i.e., U.S. Patent Nos. 3,976,209; 4,624,619; and 7,445,268. Ex. 3002. Also,
`Petitioner’s ’548 Application generally refers to preexisting ramps for pickup
`trucks and characterizes them as unsatisfactory. Ex. 1002 ¶ 5. Yet, neither the
`Petition nor the Declaration of Mr. Sindoni sets forth any particular feature of the
`
`5
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`

`

`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`“ramp system for a pickup truck” that Petitioner allegedly conceived, much less the
`entirety of what Petitioner has conceived. This deficiency alone dooms the
`Petition, because we do not know what was conceived by Petitioner.
`
`Second, Petitioner has not sufficiently identified the features of any
`invention that he allegedly communicated to Respondent. The closest the
`Petitioner comes to doing that are these two statements in the Petition: (1) “[T]his
`invention, which in brief is a ramp system for a pickup truck, was communicated
`to Respondent by Sindoni before Respondent filed the ’123 application”; and
`“Petitioner disclosed the invention to Respondent to this end, and Respondent
`acknowledged receipt of the disclosure.” Pet. 3, 16. The Petition does not,
`however, point to corroborating evidence of communication or evidence of how
`Respondent has acknowledged receipt of Petitioner’s conceived “invention” at any
`time. The Declaration of Mr. Sindoni, the Petitioner, is no better. Mr. Sindoni
`testifies: “Details of the invention were communicated to FCA US LLC by me
`more than a year before FCA US LLC filed the Chrysler application and more than
`two years before the Sindoni application was filed.” Ex. 1003 ¶ 7 (emphasis
`added). However, Mr. Sindoni in his Declaration nowhere identifies or explains
`the referenced “[d]etails of the invention.”
`
`Submitted by Petitioner as Exhibit 1006 is a document that appears to be
`signed by Mr. Sindoni and a representative of an entity named “U.S. Patent
`Commission,” that pertains to disclosure by Mr. Sindoni of an invention to U.S.
`Patent Commission at some time. But that document has not been addressed in the
`declaration testimony of Mr. Sindoni. Nor is there a declaration from Angela
`Stevens, the individual who signed on behalf of U.S. Patent Commission,
`addressing the document. Thus, it has not been authenticated. Also, although the
`
`6
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`

`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`Petition generally refers to Exhibit 1006 as “Petitioner’s Invention Disclosure,”
`(Pet. 9–14), we do not know specifically what subject matter the Petitioner
`possibly had conceived because the Petitioner makes no averment in that regard.
`Furthermore, the content of Exhibit 1006 has not been explained either in the
`Petition or in the Declaration of Mr. Sindoni. Pages 4 and 5 of Exhibit 1006
`appear to contain technical illustrations but are substantially illegible. On May 3,
`2017, we issued an Order (Paper 7) stating: “[I]f Petitioner can provide a more
`legible copy of the last two pages of Exhibit 1006, then another full copy of
`Exhibit 1006, including the more legible last two pages, shall be filed within two
`weeks of the date of this communication.” Paper 7, 3. Petitioner filed no
`replacement copy of Exhibit 1006. We note also that the signature of Angela
`Stevens, on behalf of U.S. Patent Commission, on page 1 of Exhibit 1006, is
`undated, and Petitioner submitted no declaration of Angela Stevens to substantiate
`and explain her signature, e.g., when she received the document.
`
`In any event, Petitioner makes no explanation as to the relationship, if any,
`between U.S. Patent Commission and Respondent. We decline to assume that they
`are the same entity. Thus, we will not assume communication with U.S. Patent
`Commission is the same as communication with Respondent.
`
`For the foregoing reasons, the Petition is fatally deficient with regard to the
`specifics of what Petitioner conceived and also what Petitioner communicated to
`Respondent prior to filing of Respondent’s ’525 patent. The Petition can be denied
`on this basis alone. We continue below, however, to discuss additional
`deficiencies of the Petition based on the requirements of 37 C.F.R. § 42.405.
`
`
`
`7
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`

`

`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`
`
`C.
`The Requirements Regarding the Claims
`As noted above in the section discussing the applicable law, Petitioner is
`required to show (1) that the challenged claims are drawn to the same or
`substantially the same invention as the invention Petitioner disclosed to
`Respondent, (2) that Petitioner has at least one claim that is the same or
`substantially the same as the Respondent’s claimed invention, and (3) that
`Petitioner has at least one claim that is the same or substantially the same as the
`invention Petitioner disclosed to the Respondent. 37 C.F.R. § 42.405(a)(2),
`37 C.F.R. § 42.405(b)(3)(i). With regard to items (1) and (2), the Petition is
`deficient, as discussed below.
`1.
`Respondent’s Claims as Compared
`
`to the Allegedly Communicated Invention
`Even assuming that Exhibit 1006 were to define the invention that was
`
`communicated by Petitioner to Respondent prior to filing of Respondent’s ’525
`patent6, Petitioner has not sufficiently shown that any challenged claim of
`Respondent is the same or substantially the same as an invention set forth in
`Exhibit 1006. Neither the Petition nor the Declaration of Mr. Sindoni explains the
`document that is Exhibit 1006, much less explains why any challenged claim is the
`same or substantially the same invention as that which is described in Exhibit
`1006. In that regard, all of the limitations of each challenged claim would have
`
`6 Petitioner identified insufficient corroborating evidence to support an assertion
`that the document that is Exhibit 1006 was communicated by Petitioner to an
`inventor of Respondent prior to the filing of Respondent’s application. A showing
`of communication must be corroborated. 37 C.F.R. § 42.405(c). Although Exhibit
`1006 bears the signature of Angela Stevens who signed as “U.S. Patent
`Commission, As Witness,” that signature is undated and the record includes no
`testimony from Angela Stevens. Furthermore, Petitioner also has not explained the
`relationship of U.S. Patent Commission to the Respondent.
`8
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`

`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`have to be accounted for at least in an obviousness analysis based on the
`communicated invention as prior art. The analysis goes in the direction from the
`communicated invention to the challenged claims. Catapult Innovations Pty Ltd.
`v. Adidas AG., Case DER2014-00002, slip op. at 16 (PTAB July 18, 2014) (Paper
`19). The legible portions of Exhibit 1006, on the first three pages thereof, set forth
`only the following description:
`Testimonial Of Invention
`Title of Your Product Concept:
`No title as of yet – It’s a built in truck ramp
`Describe The Idea:
`A ramp that comes standard issue in most pick-up truck. A ramp
`located in the bed of a pick-up, a ramp that slides out over your tailgate
`for easy loading and off loading of machines. (quads, dirt bikes, golf
`carts, riding mowers)
`Describe How It Works:
`It’s a ramp that sits in the bed of your pickup truck when not in use, it
`is locked into place. When you need it, it simply slides out for loading
`or off loading of heavy machinery.
`What makes this idea unique?
`This would be better than having to purchase ramps separately, and
`remembering to have them in your truck when you need them.
`Who would use this invention?
`All outdoorsmen and women. Anyone who hunts, fishes, mows lawns,
`or just loves to spend time outside (camping) with quads or even dirt
`bikes.
`Ex. 1006, 2–3. It is unexplained how the above-reproduced generic disclosure
`would have anticipated or rendered obvious the subject matter of any challenged
`claim. To the extent that we can discern anything from the last two pages of
`Exhibit 1006, nothing of significance is added to the material reproduced above.
`
`9
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`

`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`Based on the content of independent claims 1 and 14 of the ’525 patent, it is
`
`manifestly evident that each challenged claim includes more limitations than a
`lockable ramp located in the bed of a pick-up truck, that slides out over the tailgate.
`We note, especially, the limitations regarding a lateral tailgate track and a track
`member movable into the lateral tailgate track (Respondent’s claim 1), and the
`limitations regarding a lateral closure member track and track members movable
`into the lateral closure member track (Respondent’s claim 14). Respondent’s
`claims 1 and 14 are reproduced below (emphasis added):
`
`1.
`A ramp system for a pickup truck having a bed and a
`tailgate, the ramp system comprising:
`a longitudinal bed channel recessed into a floor of the bed, the
`bed channel defining a bottom surface having a longitudinal
`bed track;
`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;
`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
`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 tailgate track
`without having to raise the track member out of the respective
`bed and longitudinal tailgate tracks;
`wherein upon the track member being received in the lateral
`tailgate track, the ramp member is laterally adjusted while
`
`10
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`

`
`
`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`
`
`coupled to the tailgate through movement of the track member
`in the lateral in the lateral tailgate track.
`14. A vehicle comprising:
`a cargo area having a floor and a closure member moveable
`between an open position and a closed position, the closure
`member having an inner panel facing the cargo floor when in
`the closed position; and
`a ramp system including:
`a pair of longitudinal floor channels recessed into the
`floor of the cargo area and laterally spaced apart
`from each other, the floor channels each defining a
`bottom surface having a longitudinal floor track;
`a pair of longitudinal closure member channels
`recessed into the inner panel, the closure member
`channels aligned with the bed channels and each
`defining a bottom surface having a longitudinal
`closure member track;
`a lateral closure member track recessed into the inner
`panel and extending substantially transverse to and
`in communication with the floor and longitudinal
`closure member tracks;
`a pair of ramp members each having a track member,
`the pair of ramp members configured to be stowed
`in the floor channels in a stowed position and
`slidable in the floor and closure member channels
`from the stowed position to a fully deployed
`position during which the track members move
`along the respective bed and longitudinal closure
`member tracks and into the lateral closure member
`track without having to raise the track members out
`of the respective bed and longitudinal closure
`member tracks;
`wherein upon the track members being received in the
`lateral closure member track, the ramp members
`are laterally adjustable relative to each other while
`
`11
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`

`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`
`
`coupled to the closure member through movement
`of one or more of the track members in the lateral
`closure member track.
`Accordingly, Petitioner has not made a sufficient showing that any of
`
`Respondent’s claims is directed to the same or substantially the same invention as
`that which Petitioner allegedly communicated to Respondent.
`2.
`Respondent’s Claims as
`
`Compared to Petitioner’s Claims
`As noted above, Respondent’s independent claim 1 includes a lateral tailgate
`
`track and a track member movable into the lateral tailgate track, and Respondent’s
`independent claim 14 includes a lateral closure member track and track members
`movable into the lateral closure member track. Claims depending from claim 1
`incorporate the limitations of claim 1, and claims depending from claim 14
`incorporate the limitations of claim 14. None of Petitioner’s claims includes the
`limitations regarding the lateral tailgate track of Respondent’s claims 1–13 or the
`limitations regarding the lateral closure member track of Respondent’s claims 14–
`18. The Petition on pages 7–14 compares Respondent’s claims with Petitioner’s
`claims, but makes no attempt to explain why any of Respondent’s claims would
`have been obvious over any of Petitioner’s claims. Petitioner has not even asserted
`that any of Respondent’s claims would have been obvious over any of Petitioner’s
`claims. The comparison between Respondent’s and Petitioner’s claims involves a
`two-way analysis. Catapult Innovations, slip op. at 16.
`
`As explained above, there are significant deficiencies going in the direction
`from Petitioner’s claims to Respondent’s claims, concerning the lateral tailgate
`track of Respondent’s claims 1–13 and the lateral closure member track of
`Respondent’s claims 14–18. For instance, with regard to the lateral tailgate track
`recited in Respondent’s claim 1, Petitioner simply states:
`12
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`

`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`
`
`The only difference between the two claims [Petitioner’s claim 1 and
`Respondent’s claim 1] is the respondent’s additional option of “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 the manner in which the Respondent’s ramp
`member interfaces with the lateral tailgate track.
`Pet. 8. And with regard to Respondent’s claim 14, Petitioner has not even
`identified the lateral closure member track of Respondent’s claim 14 as a
`difference from Petitioner’s claims. No position is set forth by Petitioner regarding
`obviousness of any claim of Respondent over any claim of Petitioner.
`
`Accordingly, Petitioner has not made a sufficient showing that Petitioner has
`at least one claim that is the same or substantially the same as the subject matter of
`any of Respondent’s claims.
`3.
`Petitioner’s Claims as Compared
`
`to the Allegedly Communicated Invention
`The comparison of Petitioner’s claims to the allegedly communicated
`
`invention involves a one-way analysis going in the direction from a claim of
`Petitioner to the invention allegedly conceived by Petitioner and communicated by
`Petitioner to Respondent. Catapult Innovations, slip op. at 16. Assuming that the
`legible portions of Exhibit 1006, i.e., the first three pages thereof, constitute all of
`the material communicated by Petitioner to Respondent prior to the filing of the
`’525 patent, we are sufficiently satisfied that at least one of Petitioner’s claims is
`directed to the same or substantially the same invention as that which was
`communicated by Petitioner to Respondent. But that does not cure the deficiencies
`with regard to the two other required comparisons discussed above.
`
`
`
`13
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`DER2016-00003
`Petitioner Application 14/834,548
`Respondent Patent 9,067,525 B1
`
`
`
`III.
`Conclusion
`We are not persuaded by Petitioner that substantial evidence supports a
`
`determination that a derivation proceeding should be instituted with respect to any
`claim of the ’525 patent.
`
`
`
`IV. Order
`
`It is
`
`ORDERED that the Petition is denied; and
`
`
`FURTHER ORDERED that no derivation proceeding is instituted on the
`basis of the Petition.
`
`
`
`
`
`
`
`
`
`For Petitioner:
`Robert Gray
`THE GRAY LAW GROUP LTD.
`robert.gray@thegraylawgroup.com
`
`For Respondent:
`Thomas Jurecko
`REMARCK LAW GROUP PLC
`tom@remarck.com
`
`
`
`
`14
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`