Nova Ortho-Med Inc. v. Kratos Enterprises, LLC

• Decision Date: 04 December 2015
• Docket Number: Patent Interference 105,975
• Parties: NOVA ORTHO-MED, INC. (8, 141, 719), Junior Party, v. KRATOS ENTERPRISES, LLC (11/941, 835), Senior Party.
• Court: Patent Trial and Appeal Board

NOVA ORTHO-MED, INC. (8, 141, 719), Junior Party, v. KRATOS ENTERPRISES, LLC (11/941, 835), Senior Party.

Patent Interference No. 105, 975

United States Patent and Trademark Office, Patent Trial and Appeal Board

December 4, 2015

Before RICHARD E. SCHAFER, SALLY GARDNER LANE and HUNG H. BUI Administrative Patent Judges.

PER CURIUM

Judgment - Merits - 37 C.F.R. § 41.127

In a decision issued simultaneously with this judgment, we denied Junior Party Nova's motion on priority (Paper 135) and granted Senior Party Kratos' priority motion (Paper 222). Because Nova did not establish a date of invention prior to Senior Party Kratos' actual reduction to practice, we award a judgment of priority against Nova.

Accordingly it is-

ORDERED that Judgment on priority is entered against Nova for the subject matter of Count 1 (Paper 1, p. 3);

FURTHER ORDERED that Junior Party Nova is not entitled to a patent including the subject matter of Claims 1-2 of Nova's involved Patent 8, 141, 719

FURTHER ORDERED that Claims 1-2 of Nova's involved Patent 8, 141 719 are cancelled (35 U.S.C. § 135(a) (2011));

FURTHER ORDERED that a copy of this judgment shall be entered in the administrative records of each of the involved patent and the involved application;

FURTHER ORDERED that if there is any settlement agreement or related documents which have not been filed, attention is directed to 35 U.S.C. § 135(c) (2011) and 37 C.F.R. § 41.205; and

FURTHER ORDERED that if a party seeks judicial review, the party must file a notice with the Board (37 C.F.R. § 41.8(b)) within seven days of initiating judicial review.

We also direct the parties' attention to Biogen MA, Inc., v Japanese Foundation for Cancer Research, 785 F.3d 648 (Fed. Cir. 2015).

Decision - Priority - 37 C.F.R. § 41.125(a)

SCHAFER, Administrative Patent Judge.

This interference is between Nova Ortho-Med's Patent 8, 141 719 and Kratos Enterprises Application 11/941, 835. The party's respective motions for priority, benefit of the filing dates of earlier applications and Nova's motion to exclude certain Kratos' evidence are before us for decision.

For the reasons detailed below, we hold that Kratos has proved an actual reduction to practice by November 21, 2006, and Nova has not established an earlier date of invention for the subject matter of the count. We also deny Nova's motion to exclude evidence. We therefor enter a judgment awarding priority against Nova in a separate paper.

I.

When this interference was declared, it was treated as an originality proceeding on inventorship. Nova's patent names as inventors Weston S. Hopper, Ronald B. Gaudiano and Henri Baldan. Kratos' Application lists Stephen Nicolopulos, John Gunther and Thomas A. Moeller. The parties assert that they are each entitled to the benefit of the filing date of Application 11/701, 759. That application named Hopper and Nicolopolus as the only inventors. Nicolopolus, however, did not join in the filing, or participate in the prosecution, of the '759 application. At Nova's request, the '759 application was authorized to be prosecuted under 37 C.F.R. § 1.47(a) in the absence of Nicolopolus. Application 11/701, 759, Petition Decision dated September 17, 2007.

Because of the dispute over inventorship, neither party was accorded the benefit of the '759 application. As was noted in the Notice of Declaration:

Both parties claim the benefit of 11/701, 759, filed 2 February 2007, naming Hopper and Nicolopulos as the inventors. This interference appears to be an inventorship (originality) contest. On the record currently before the board, neither party appears to have a superior claim to the '759 application; hence, according benefit to this application would presuppose what must be proved.

Declaration, Paper 1, p. 3, n.3. The Declaration accorded Nova only the March 1, 2010, filing date of the application that matured into its involved patent. Kratos was only accorded the benefit of the November 16, 2007, filing date of its involved '835 application. Declaration, Paper 1, p. 3. Thus, Kratos is the senior party. 37 C.F.R. §§ 41.201 (definition of senior party) and 41.207(a)(1).

During the first phase of the interference, each party requested authorization to file a motion challenging the correctness of its opponent's named inventorship. Both were authorized to file a motion under 35 U.S.C. §§ 102(f) or 102(g)(1) to challenge its opponent's named inventorship. Order Authorizing Motions, Paper 14, pp. 2–3. As noted in that Order

it makes little difference which basis is relied upon because a dispute is over which named inventive entity is the actual inventor is the simplest possibility under § 102(g)(1) because the actual inventor necessarily invented before the non-inventor.

Id. at p. 3, n.3.

Each party filed a motion on inventorship and supporting evidence. Nova's motion requested

a Judgment of Unpatentability under 35 U.S.C. §102(f) of the Kratos '835 application claims should be granted on the ground that the claimed subject matter was not invented by its named inventors.

Nova Motion 2, Paper 28, 16:5–7. Specifically, Nova asserted that the Kratos inventors derived the invention from the disclosure of the invention by Nova to one of Kratos' named inventors, Stephen Nicolopulos. Nova Motion 2, Paper 28, 3:12– 14; 16:1–4. Kratos' motion similarly requested

judgment against NOVA . . . on the ground that NOVA's claims are unpatentable because the inventors named on the NOVA patent (the '719 patent) . . . did not [themselves] invent the subject matter of NOVA's claims that correspond to the count . . . [35 USC § 102(f)] and that NOVA did not first conceive or at all conceive the subject matter sought to be patented [35 USC § 102(g)].

Kratos Motion 1, Paper 41, 2:2–7 (bracketing original).

Both party's inventorship motions were denied. Neither had satisfied its burden of establishing that the opponent's named inventorship was incorrect.^[1] See 37 C.F.R. §§ 41.121(b) and 41.208(b) and Decision on Substantive Motions, Paper 109, pp. 6–22. This interference then moved to the priority phase.^[2] The schedule setting the times for the priority phase informed the parties:

Neither party was successful in meeting its burden to prove either that its opponent derived the invention or that its opponent's named inventorship was incorrect. It is necessary, therefore, to proceed to the priority phase. For this phase of the interference, the inventorship as stated in the oaths of the involved patent and application and any benefit applications is deemed correct.

Order Priority Times, Paper 110, 1:2–8. In other words, the remaining issues relate to priority of invention, i.e., which of the named inventors was first to invent-not inventorship. Because motions for priority asserting entitlement to the benefit of the filing dates of earlier applications were not authorized during the first phase of the interference, the parties were also authorized to file separate motions for the benefit of the filing dates of any parent applications. Order Priority Times, Paper 110, 1:9–12.

II.

The invention claimed by the parties relates to a system used to display merchandise for sale. Both parties embody the invention as a display for walking canes. The system includes a supporting base and a vertical pole attached to the base. The key features of the display are a rotatable hub attached to the pole and a number of separate cane attachment members ("clamshells") that attach to the cane. The hub has a plurality of tapered or cone-shaped openings. The clamshell member is configured to securely hold the cane. The clamshell also has a tapered cone-shaped member that removably mates with the openings of the hub allowing for easy removal of the cane from the display.

Figure 2 from the Nova'719 patent and Figure 1 from the Kratos' '835 application, showing an embodiment of each party's cane display system, are reproduced below:

(IMAGE OMITTD).

We also reproduce Figure 5 from Nova's patent and Figure 8 from the Kratos application showing the respective depictions of the clamshell member with a cone-shaped portion:

(IMAGE OMITTD).

The parties' invention is represented by Count 1-the only count:

The cane carousel display of [Nova Patent] 8, 141, 719 claim 1 or the system of [Kratos Application] 11/941, 835 claim 1.^[3]

Paper 1, p. 3. Each of the above-cited claims, as taken from the parties' respective submissions of annotated claims, ^[4] is reproduced below:

Nova Claim 1:

1. A cane carousel display for display [of] a plurality of canes comprising:

a. a first vertical pole (FIG. 1, numeral 14);

b. a base (FIG. 1, numeral 10) adapted to rest on a horizontal surface and retaining to said first pole in a stationary position relative to said base (FIG. 1, numeral 10);

c. a second stationary vertical pole (FIG. 1, numeral 24);

d. a hub (FIG. 1, numeral 20) having a plurality of openings (FIG. 3, numeral 54), said hub rotatably attached to said first pole (FIG. 1, numeral 14) and rotatably attached to said second pole (FIG. 1, numeral 24);

e. a plurality of clam shell cane holders (FIG. 1, numeral 34) removably retained on said hub (FIG. 1, numeral 22);

f. each of said clam shell cane holders (FIG. 1, numeral 34) including a circular section (FIG. 7, numeral 30), a cone shaped member (FIG. 5, numeral 84) and a center area (FIG. 5, numeral 90);

g. each said circular section (FIG. 7, numeral 30) adapted to retain a cane (FIG. 1, numeral 32); and,

h. each said cone shaped member (FIG. 5, numeral 84) adapted to be removably retained by said hub (FIG. 1, numeral 22).

Nova's Annotated Claims, Paper 45, p. 3.

Kratos Claim 1

1. A system for displaying merchandise, comprising:

(a)a support structure (FIG. 1, numeral 12);

(b)a

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