Catapult Innovations Pty Ltd.v.adidas AG

Patent Trial and Appeal Board

Oct 15, 2014

13543428 (P.T.A.B. Oct. 15, 2014)

Trials@uspto.gov Paper 15
571-272-7822 Entered: October 15, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CATAPULT INNOVATIONS PTY LTD,
Application 14/045,954,
Petitioner,

v.

adidas AG,
Application 13/543,428,
Respondent.
____________

Case DER2014-00005
____________

Before JAMESON LEE, JONI Y. CHANG, and JUSTIN T. ARBES,
Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION
Order Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71
DER2014-00005
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Introduction
On August 17, 2014, Petitioner filed a Request for Rehearing (Paper
14, “Req. Rhg.”) of the Board’s decision denying institution of a derivation
proceeding (Paper 13, “Decision”). According to Petitioner, the decision
represents an abuse of discretion for two reasons (Req. Rhg. 3, 6):
1. Although the Board articulated the law on derivation as requiring
a showing of prior “conception” and communication of the prior
“conception,” not by a showing of prior “possession” and communication
of the prior “possession,” it is well-settled law that conception may be
shown by possession of every feature of the invention; and

2. After concluding that Petitioner met the requirements of 37 C.F.R.
§ 42.405(a)(2), the Board does not state any other statutory or legal basis
for denying Catapult’s Petition.

Discussion
1.
With regard to the first of the above-identified assertions, Petitioner
is incorrect that mere possession of an invention, however obtained, even if
received via another source, constitutes conception of invention. We are
aware of no such authority, and no authority cited by Petitioner supports
Petitioner’s contention. Petitioner cites to this sentence in Coleman v.
Dines, 754 F.2d 353, 359 (Fed. Cir. 1985): “It is settled that in establishing
conception a party must show possession of every feature recited in the
count, and that every limitation of the count must have been known to the
inventor at the time of the alleged conception.” Req. Rhg. 6. The statement
is focused on expressing that every feature must be accounted for, and not
that possession alone is sufficient to demonstrate conception of invention.
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As we stated in the Decision, derivation addresses originality—who
invented the subject matter at issue, not mere possession. Paper 13, 18.
2.
With regard to the second of the above-identified assertions,
Petitioner is incorrect in several respects. First, we did not conclude that
Petitioner satisfied the requirements of 37 C.F.R. § 42.405(a)(2). Rather,
we stated in the Decision, id. at 17:
Regardless of which claim serves as Catapult’s
qualifying claim, however, Catapult failed to identify and keep
a consistent D between the P to D analysis and the D to R
analysis. Catapult evidently regards all communicated
information as the disclosed invention D in the D to R analysis,
but has not identified any of its own claims as being the same
or substantially the same as all of that communicated
information. In this case, the P to D and the D to R analysis
are not aligned.

In the context of 37 C.F.R. § 42.405(a)(2), there is just one disclosed
invention, i.e., “the disclosed invention.” That does not change as one
shifts focus from one of Petitioner’s claims to another or from one of
Respondent’s claims to another. We explained in the Decision how
Petitioner evidently regards the entire collection of communicated
information as its disclosed invention. Paper 13, 10–11. As is noted in the
above-quoted text, Petitioner has not identified any of its own claims as
being the same or substantially the same as all of that communicated
information. Petitioner’s P to D and D to R analysis are not aligned. Also,
we explained that, apart from the requirements of 37 C.F.R. § 42.405(a)(2),
the law on derivation requires a showing of prior conception and
communication of that prior conception. Paper 13, 4, 18–19.
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3.
In its Request for Rehearing, Petitioner argues that the events of
October 19–20, 2010, constitute an actual reduction to practice that was
communicated to adidas Wearable Sports Electronics. Req. Rhg. 6, 7, 9.
The argument, however, is new. Per 37 C.F.R. § 42.71(c), a rehearing
request must identify the place where each matter was previously
addressed. We could not have overlooked an argument that was not
presented. The new argument is not entitled to consideration. In any event,
shifting the issue to “actual reduction to practice” does not help the
Petitioner. That which allegedly is actually made or performed still must be
the invention of Petitioner’s inventor. There is no escaping from the issue
of originality, whether the subject is conception or actual reduction to
practice.
4.
In its Request for Rehearing, Petitioner points to its own involved
application and notes that Shaun Holthouse is the sole named inventor.
Req. Rhg. 6, 8, 9. The declaration of the inventor, filed with the
application, was not relied on in the Petition, and was not included in the
copy of Petitioner’s application, provided by Petitioner in this proceeding
(Ex. 1010). Also, Petitioner’s application has a filing date of October 4,
2013, and does not demonstrate conception of any claimed invention as of
October 19–20, 2010, even without considering the need for independent
corroboration. Finally, because Petitioner, as explained in the Decision,
regards the entirety of the information disclosed on October 19–20, 2010, as
its disclosed invention (Paper 13, 10–11), at issue is conception of that
entire body of information. As we noted in the Decision (Paper 13, 17),
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Petitioner has identified no claim in its application as being the same or
substantially the same as all of that disclosure.
Order
The request is denied.

DER2014-00005
Applications 14/045,954 and 13/543,428

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FOR PETITIONER:

David Morse
Brian Belles
THE BELLES GROUP, P.C.
david.morse@thebellesgroup.com
brian.belles@thebellesgroup.com

FOR PATENT OWNER:

David Cornwell
Mark Rygiel
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
davidc-PTAB@skgf.com
mrygiel-PTAB@skgf.com