Catapult Innovations Pty Ltd.v.adidas AG

Patent Trial and Appeal Board

Jul 18, 2014

13077494 (P.T.A.B. Jul. 18, 2014)

Trials@uspto.gov Paper 19
571-272-7822 Date: July 18, 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 13/077,494,
Respondent.
____________

Case DER2014-00002
____________

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

LEE, Administrative Patent Judge.

DECISION
Denying Institution of Derivation Proceeding
35 U.S.C. § 135(a)

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Introduction
Petitioner (“Catapult”) filed, on November 4, 2013, a petition under
35 U.S.C. § 135(a) to institute a derivation proceeding directed to claims 1–20, 22–
25, 29–31, and 40–51 of Respondent’s (“adidas AG”) Application 13/077,494
(“the adidas AG ’494 application”), and on November 21, 2013, a revised petition
(Paper 7, “Rev. Pet.”). The adidas AG ’494 application was published as Pub. No.
US 2012/0254934 A1 on October 4, 2012 (Ex. 1011). Catapult is involved on the
basis of its Application 14/045,954 (“the Catapult application”). Shaun Holthouse
is the sole named inventor on the Catapult application.
Catapult moved to be accorded an earlier filing date for its Petition.
Paper 4. The motion was granted and the Petition was accorded the filing date of
October 4, 2013. Paper 11. Catapult has filed two other derivation Petitions based
on the same Catapult application, directed to two other applications of adidas AG,
in Catapult Innovations Pty Ltd v. adidas AG, DER2014-00005 and Catapult
Innovations Pty Ltd v. adidas AG, DER2014-00006.
No claim of the adidas AG ’494 application has been allowed by the
Examiner. Paper 16. In an amendment dated June 27, 2013, adidas AG amended
certain claims including independent claims 1, 19, 40, and 51. In an Order issued
April 29, 2014 (Paper 17), we suspended prosecution of both the Catapult
application and the adidas AG ’494 application, to consider whether to institute a
derivation proceeding.
The threshold showing for institution of a derivation proceeding is whether
the petition demonstrates substantial evidence, which if unrebutted, would support
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the assertion of derivation.
1
35 U.S.C. § 135(a); 37 C.F.R. § 42.405(c). Once a
derivation proceeding has been instituted, the standard of proof for establishing
that a challenged claim constitutes a derived invention is by a preponderance of the
evidence. 37 C.F.R. § 42.1(d). For reasons discussed below, Catapult’s Petition to
institute a derivation proceeding is denied.
Discussion
A. The Applicable Law
Although a derivation proceeding is a creation of the Leahy-Smith America
Invents Act (“AIA”), Public Law No. 112-29, § 3(i),
2
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, we apply the
jurisprudence which developed in that context, including the case law of the U.S.
Court of Appeals for the Federal Circuit and the U.S. Court of Customs and Patent
Appeals.
Under the AIA, a petitioner must show that the respondent, without
authorization, filed an application claiming such derived invention. 35 U.S.C.
§ 135(a); 37 C.F.R. § 42.405(b)(2). A derivation petition with respect to an
invention that is the same or substantially the same as a claim contained in a patent
issued on an earlier application, or contained in an earlier application when
published or deemed published under section 35 U.S.C. § 122(b), must be filed
during the 1-year period following the date on which the patent containing such

1
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).
2
Leahy-Smith America Invents Technical Corrections Act, Public Law No. 112-
274, § 1(e)(1), (k)(1).

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claim was granted or the earlier application containing such claim was published,
whichever is earlier.
3
35 U.S.C. § 135(a).
To prove derivation, the party asserting derivation must establish prior
conception of the claimed subject matter 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). “‘There can be no derivation without prior
conception on the part of the party alleging derivation.’” Davis v. Reddy, 620 F.2d
885, 889 (CCPA 1980) (quoting Egnot v. Looker, 387 F.2d 680, 687 (CCPA
1967)). A charge of derivation addresses originality—who invented the subject
matter at issue. Price, 988 F.2d at 1191.
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 therefore 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). “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. A rule of
reason applies to determining whether the inventor’s testimony has been
corroborated. Price, 988 F.2d at 1194. “The rule of reason, however, does not
dispense with the requirement for some evidence of independent corroboration.”
Coleman, 754 F.2d at 360.

3
Catapult’s derivation Petition was timely filed. It was accorded a filing date of
October 4, 2013 (Paper 11), which is within one year of the date of publication of
the adidas AG ’494 application on October 4, 2012, as Pub. No. US 2012/0254934
A1.
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Thus, the showing of prior conception and communication need be made for
an invention disclosed to an inventor of the other party. Any challenged claim
which the petitioner demonstrates is “the same or substantially the same” as the
disclosed invention constitutes a derived invention.
4
See 37 C.F.R.
§ 42.405(b)(3)(i). Proof of conception must encompass all limitations of the
disclosed 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, 620 F.2d at 889.
If the petitioner identifies one of its own claims as defining or representing
that invention disclosed to an inventor of the other party, then petitioner has to
establish corroborated conception of that claimed invention, as well as
corroborated communication of that conception. Assuming that corroborated
conception and communication both are established, the petitioner would be able
to regard as a derived invention those challenged claims of the respondent which
are shown by the petitioner to be drawn to the same or substantially the same
invention as the disclosed invention. That question is evaluated in the direction
from the disclosed invention to each challenged claim.
Per 37 C.F.R. § 42.405(a)(2), a petitioner also 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. If the petitioner selects one of its own claims as the “invention
disclosed to the respondent,” the selection itself can be relied on as satisfying the
requirement of 37 C.F.R. § 42.405(a)(2)(ii).

4
“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.
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B. The Allegedly Derived Invention
Catapult alleges that claims 1–20, 22–25, 29–31, and 40–51 of the adidas
AG ’494 application as published are drawn to a derived invention. Independent
claims 1, 19, 40, and 51 in the adidas AG ’494 application, as published in Pub.
No. US 2012/0254934 A1, are reproduced below:
1. A system for monitoring a plurality of individuals engaged in
an activity, the system comprising:

a base station;

a plurality of individual monitors configured to communicate
wirelessly with the base station;

a plurality of sensors, each sensor in communication with an
individual monitor, each configured to be coupled to an individual,
and each configured to sense a characteristic of the individual and to
transmit, during the activity, data indicative of the characteristic to the
individual monitor; and

a group monitoring device configured to communicate
wirelessly with the base station,

wherein each individual monitor is configured to transmit,
during the activity, the data to the base station,

wherein the base station is configured to receive the data and to
transmit, during the activity, a metric based on the data to the group
monitoring device, and

wherein the group monitoring device is configured to display a
representation of the metric.

19. A system for monitoring a plurality of individuals engaged in
an activity, the system comprising:

a base station;
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a plurality of individual monitors configured to communicate
wirelessly with the base station;

a plurality of sensors, each sensor in communication with an
individual monitor, each configured to be coupled to the individual,
and each configured to sense a characteristic of the individual; and

a group monitoring device configured to communicate
wirelessly with the base station.

40. A method for facilitating monitoring of a plurality of
individuals engaged in an activity, the method comprising:

receiving, at a first individual monitoring device, first data
indicative of a characteristic of a first individual during an athletic
activity of the first individual and a second individual, wherein the
first individual monitoring device is coupled to the first individual;

receiving, at a second individual monitoring device, second data
indicative of a characteristic of the second individual during the
athletic activity, wherein the second individual monitoring device is
coupled to the second individual;

transmitting the first data and the second data wirelessly to a
base station during the athletic activity;

determining, at the base station, a metric of the first individual
and a metric of the second individual, based on the first data and the
second data, respectively;

transmitting the metric of the first individual and the metric of
the second individual wirelessly to a group monitoring device during
the athletic activity; and

displaying a representation of the metrics on the group
monitoring device,

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wherein the group monitoring device is portable relative to the
base station.

51. A system for monitoring a plurality of individuals engaged in
an activity at an activity site, the system comprising:

a portable base station;

a plurality of individual monitors configured to communicate
with the base station, each individual monitor being portable with
respect to the base station;

a plurality of sensors, each sensor in communication with an
individual monitor, each configured to be coupled to the individual,
and each configured to sense a characteristic of the individual and to
transmit, during the activity, data indicative of the characteristic to the
individual monitor; and

a group monitoring device in communication with the base
station and portable with respect to the base station,

wherein each individual monitor is configured to transmit,
during the activity, the data to the base station,

wherein the base station is configured to receive the data and to
transmit, during the activity, a metric based on the data to the group
monitoring device,

wherein the group monitoring device is configured to display a
representation of the metric, and

wherein the base station is portable with respect to the activity
site.

Ex. 1011, 19–21.
The Field of the Invention portion of the adidas AG ’494 application, as
published, states that the invention generally relates to an activity monitoring
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system, and in particular, to an athletic activity monitoring system that facilitates
live monitoring of a plurality of individuals. Ex. 1011 ¶ 0002. The Background
Art portion of the adidas AG ’494 application, as published, provides that to
monitor an athletic activity, a trainer typically gathers information about the
participants in the athletic activity by viewing the athletic activity from the
sidelines of a sports field, and thus the information gathered is typically limited by
what is observed by the trainer from the sidelines. Ex. 1011 ¶ 0005.
The Summary of the Invention portion of the adidas AG ’494 application, as
published, describes gathering information about participants in an athletic activity
without observation by a trainer on the sidelines. In part, it states:
In another exemplary embodiment, a method for facilitating
monitoring of a plurality of individuals engaged in an athletic activity
includes receiving, at a first individual monitoring device, first data
indicative of a characteristic of a first individual during an athletic
activity of the first individual and a second individual, wherein the
first individual monitoring device is coupled to the first individual,
receiving, at a second individual monitoring device, second data
indicative of a characteristic of the second individual during the
athletic activity, wherein the second individual monitoring device is
coupled to the second individual, transmitting the first data and the
second data wirelessly to a base station during the activity,
determining, at the base station, a metric of the first individual and a
metric of the second individual, based on the first data and the second
data, respectively, transmitting the metric of the first individual and
the metric of the second individual wirelessly to a group monitoring
device during the athletic activity, and displaying a representation of
the metrics on the group monitoring device, wherein the group
monitoring device is portable relative to the base station.

Ex. 1011 ¶ 0010.

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C. Catapult’s Analysis
1. What was disclosed
Catapult’s arguments are based on technical disclosure made by
Mr. Holthouse, the founder and current Chief Executive Officer of Catapult,
to adidas Wearable Sports Electronics of Wilmington, Delaware (“AWSE”),
in a two-day presentation and demonstration that occurred on October 19–
20, 2010, in Wilmington, Delaware. Rev. Pet. 6–11. Catapult relies on the
declaration testimony of Mr. Holthouse (Ex. 1012), as well as the
declaration testimony of Luke Millar (Ex. 1020), who accompanied
Mr. Holthouse on the trip to Wilmington, Delaware, and who has been
Global Manager of Direct and Distributor Sales for Catapult since June 2010
(Ex. 1020 ¶¶ 3, 6).
5

According to the testimony of Mr. Holthouse (Ex. 1012 ¶ 10), AWSE
is a wholly owned subsidiary of adidas AG, and in attendance at the two-day
presentation and demonstration in Wilmington, Delaware, for AWSE were
Qaizar Hassonjee, Meg Susan Burich, Roger Armitage, and Marcus
Strecker, whom Mr. Holthouse collectively refers to as “the Adidas Team”
(Ex. 1012 ¶ 16). Mr. Holthouse testifies that he gave a live demonstration
on the afternoon of October 19, 2010, at the football field of West Chester
University, and that Qaizar Hassonjee of AWSE arranged for the
participation of several athletes at the demonstration. Ex. 1012 ¶ 18.
Mr. Holthouse also testifies that he provided two presentations to the Adidas
Team. Ex. 1012 ¶ 16.

5
The declarations of Mr. Holthouse and Mr. Millar refer to Exhibits SH1 through
SH19. Pages ii–iv in Catapult’s Revised Petition include a conversion formula to
identify Exhibits SH1 through SH19 as Exhibits 1013 through 1019.
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Neither Catapult’s Revised Petition nor the declarations of
Mr. Holthouse and Mr. Millar specifically define “an invention” that was
disclosed to AWSE. No application claim of Catapult was identified as
constituting or representing that disclosed invention, and the Revised
Petition does not identify what subset of all the technical information
provided to AWSE on October 19–20, 2010, constitutes an “invention” of
Mr. Holthouse, the sole named-inventor on the Catapult application.
Instead, the Revised Petition and the declarations all focus on the totality of
the technical information that was provided to AWSE. The record,
therefore, shows that Catapult regards the entire collection of information
disclosed to AWSE as its “invention disclosed to the respondent” under
37 C.F.R. § 42.405(b)(3)(i).
In particular, Mr. Holthouse testifies that the system he demonstrated
at Wilmington, Delaware, to AWSE is referred to by Catapult as the
“minimaxX” system, and the software accompanying it is referred to as the
“LoganPlus” software. Ex. 1012 ¶ 13. In his declaration, Mr. Holthouse
refers to the minimaxX system and the LoganPlus software collectively as
the “Catapult System.” Id.
Mr. Holthouse testifies that he, along with Mr. Millar, made full
disclosure of the Catapult System, including both hardware and software
functionality, to the Adidas Team through the presentations and in
answering questions during the presentations and demonstrations. Ex. 1012
¶ 17. Mr. Holthouse further testifies that as a part of the demonstration of
the Catapult System, individual monitors were assigned to participating
athletes, and the Adidas Team saw the function of the software, as illustrated
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in the presentations, demonstrated during the time at the football field.
Ex. 1012 ¶ 18.
Mr. Holthouse testifies that the details of the Catapult System demonstrated
to the Adidas Team were described in a manual produced in February 2009 for
version 4.3 of the LoganPlus software, and in a help supplement for the LoganPlus
software produced in November 2008. Ex. 1012 ¶ 19. That, however, does not
mean everything in the manual or the help supplement was demonstrated to the
Adidas Team. Nonetheless, the testimony of Mr. Holthouse was specific as to
what features and functionalities of the Catapult System were disclosed to the
Adidas Team.
Paragraph 20 of the declaration of Mr. Holthouse (Ex. 1012) describes some
of the disclosed features and functionalities and is reproduced below:
20. During the presentations and demonstrations on the 19
th
and
20
th
October 2010, I, along with Luke Millar, disclosed to the Adidas
Team the following features and functionalities of the Catapult
System:

a) A completely portable system for monitoring a plurality of
individuals engaged in a sporting activity. (Ex. SH8, p. 5; Ex. SH10,
p. 5) This system included:

 A portable base station which included a computer and
wireless antennae for receiving and transmitting data
during the activity; (Ex. SH8, p. 5; Ex. SH10, pp. 56–57)

 A plurality of individual participant monitors, each
carried on the person of each individual and being
capable of bi directional wireless communication with
the base station during the activity; (Ex. SH8, pp. 2, 5;
Ex. SH10, pp. 5–10)

 A plurality of sensors either included in each said
participant monitor or on each said individual, and in
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communication there with, each sensor being capable of
sensing a physiological or activity parameter of the
individual; (Ex. SH8, pp. 2, 19; Ex. SH10, pp. 5, 10, 89–
94)

 Each individual monitor transmitting data, relating to
parameters sensed by the sensors, to the base station;
(Ex. SH10, pp. 56–57)

 Software in the base station computer programmed to
receive data from the individual participant monitors uses
algorithms to convert the sensor signals into parameters
or metrics relating to physiological measurements of the
individual wearing the participant monitors or
movements and impacts of the individual wearing the
participant monitors; (Ex. SH8, p.5; Ex. SH10, pp. 5, 12–
82) and

 A group monitoring device communicating wirelessly
with the base station to receive and display the
parameters and/or metrics during the activity. (Ex.
SH10, p. 56; Ex. SH11)

b) The participant monitors were the same as those provided by
Catapult to its customers, and their design and functionality
conformed with the data loggers disclosed in catapult’s U.S. Patent
No. 7,715,982 (Ex. SH2) and U.S. Patent No. 8,036,826 (Ex. SH3).
the sensors included one or more of 3 dimensional accelerometers,
3 dimensional gyrometers, magnetometers, GPS sensors, heart rate
monitors. The participant monitors incorporated a processor which
calculated metrics from the sensed data. (Ex. SH8 pp. 2, 5, 19;
Ex. SH10, pp. 5–10, 89–94)

c) The parameters and metrics transmitted to the group monitors
relate to one or more of heart rate, location, orientation, speed,
distance travelled, acceleration and direction of travel of the
individual or to a measurement derived from one or more of said
parameters, such as player load which is a measure of energy
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expended or impacts from player collisions. (Ex. SH8, pp. 10–18, 20–
21; Ex. SH10, pp. 37–40)

d) The software was capable of showing graphically the time spent by
the participant in moving at slow, moderate, and high speeds, the
distance and path travelled on the playing ground during any desired
time interval as well as heart rate. (Ex. SH8, pp. 10–18, 20–21;
Ex. SH10, pp. 40–45)

e) The software enabled a coach (or other person) to set upper and
lower limits for one or more parameters or metrics so that an alert is
triggered on the group monitoring device if the data transmitted falls
outside of the limits. (Ex. SH8, pp. 22–23; Ex. SH10, pp. 52–66)

f) The software also enabled video of the playing activity to be
synchronized with the parameters and metrics graphically displayed
on the base station computer or the group monitoring devices. The
video feed could be synchronized on the base station or the group
monitoring device and transmitted to the web server from the base
station computer. (Ex. SH8, pp. 28–29; Ex. SH10, pp. 80–82)

g) The base station computer software and the group monitor
software enabled saving of data and accessing of stored data for
display on the group monitoring device. This data could be uploaded
to or down loaded from a web server running the system software.
(Ex. SH10, pp. 7, 19)

h) The base station consisted of a laptop or portable computer
connected to antenna for wirelessly sending and receiving data to and
from the individual monitors and the group monitoring devices. Also
connected to the base station computer was a portable docking station
able to dock a plurality of individual monitors and enable the base
station computer to communicate with the individual monitors and
down load data from them. The portable docking station included a
battery to enable charging of the batteries in the individual monitors.
(Ex. SH8, pp. 2, 5; Ex. SH10, pp. 5–10, 56–57)

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Paragraphs 21 and 22 of the declaration of Mr. Holthouse (Ex. 1012)
describe still further additional features and functionalities allegedly disclosed to
the Adidas Team on October 19
th
and 20
th
, 2010, but their contents need not be
reproduced here.
The above-noted testimony of Mr. Holthouse is corroborated by the
testimony of Mr. Millar. Mr. Millar testifies that he and Mr. Holthouse conducted
two presentations of the Catapult System, as well as a live demonstration with the
participation of several athletes, to the Adidas Team. Ex. 1020 ¶ 6. Moreover,
with regard to the features and functionalities of the Catapult System disclosed to
the Adidas Team, the testimony of Mr. Millar in paragraphs 9–11 of the Millar
declaration (Ex. 1020) is essentially the same as the testimony of Mr. Holthouse in
paragraphs 20–22 of the Holthouse declaration (Ex. 1012).
2. Challenged claims being the same or
substantially the same as a disclosed invention
Catapult provides a claim chart identifying, for each feature of every
challenged claim, the evidence that it was disclosed by Mr. Holthouse to the
Adidas Team on October 19–20, 2010. Rev. Pet. 11–28. Catapult evidently does
not rely on an assertion of obviousness of any challenged claim based on what was
disclosed to the Adidas Team. Instead, Catapult’s apparent position is that each
feature of every challenged claim actually was disclosed to the Adidas Team in the
presentation and demonstration that occurred on October 19–20, 2010. We have
reviewed the challenged claims, including corresponding amendments made after
publication of the adidas AG ’494 application, if any, and the evidence referred to
in the claim chart provided by Catapult. We determine that substantial evidence
supports a conclusion that each challenged claim is directed to an invention that is
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the same or substantially the same as an invention disclosed by Catapult, through
Mr. Holthouse and Mr. Millar, to the Adidas Team on October 19–20, 2010.
3. Catapult’s at least one qualifying claim
As noted above, per 37 C.F.R. § 42.405(a)(2), a petitioner must have 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. Based on the syntax of the language of the rule, we read both
requirements as directed to the same claim of the petitioner. Thus, the one claim of
petitioner must be both (i) the same or substantially the same as a claimed
invention of the respondent, and (ii) the same or substantially the same as the
invention disclosed to the respondent.
To ensure that the petitioner and the respondent are claiming patentably
indistinct inventions, the determination of “same or substantially the same,”
between the at least one claim of the petitioner and a claimed invention of the
respondent, is a two-way analysis. That analysis can be performed on a claim of
the petitioner and any challenged claim of the respondent. On the other hand, a
two-way analysis is not necessary for the determination of “same or substantially
the same” between the at least one claim of petitioner and the invention disclosed
to the respondent. Instead, that is determined one-way, in the direction from the
petitioner’s claim to the invention disclosed to the respondent.
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In summary, the three “same or substantially the same” inquiries between
the petitioner’s claim (“P”), the respondent’s claimed invention (“R”), and the
invention disclosed to the respondent (“D”) are illustrated by the following
diagram:

The illustration shows the relationship of P and D and R with each other. The
directions of the arrows connecting P and R, P and D, and D and R indicate
whether the associated “same or substantially the same” analysis is one-way or
two-way, and if one-way, in which direction.
Catapult’s claim 29 potentially may serve as a qualifying claim. Substantial
evidence supports a conclusion that it is the same or substantially the same as
claim 40 of the adidas AG ’494 application, as amended. The two claims read
essentially the same. Moreover, based on the comparisons provided through the
claim chart in Catapult’s Revised Petition, focusing on how a disclosed invention
meets every feature of challenged claim 40, substantial evidence supports a
conclusion that claim 29 of the Catapult application is the same or substantially the
same as an invention disclosed to adidas AG.
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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.
4. Filing of the adidas AG ’494 application not authorized by Holthouse
Substantial evidence supports Catapult’s assertion that the filing of the
adidas ’494 application was unauthorized by Mr. Holthouse. Mr. Holthouse
testifies that he did not authorize filing of the adidas AG ’494 application,
published as Pub. No. US 2012/0254934 A1. Ex. 1012 ¶ 34.
5. Arguments and evidence missing from the Revised Petition
As we noted in Section A above, to prove derivation, the party asserting
derivation must establish prior conception of the claimed subject matter and
communication of that conception to an inventor of the other party. Cooper,
154 F.3d at 1332; Price, 988 F.2d at 1190; Hedgewick, 497 F.2d at 908. There can
be no derivation without prior conception on the part of the party alleging
derivation. Davis, 620 F.2d at 889; Egnot, 387 F.2d at 687. A charge of derivation
addresses originality—who invented the subject matter at issue. Price, 988 F.2d at
1191. Derivation is about prior “conception” and communication of the prior
“conception,” and not about prior possession and communication of the prior
“possession.”
Possession indicates little, if anything, about originality of invention. One
who possessed the invention might have acquired it from someone else. It is
unfounded to assume that one who had an invention in his or her possession must
have conceived of the invention and be the source or origin of that invention.
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Catapult’s Revised Petition presents argument and evidence of prior
“possession” and communication of the prior possession, instead of argument and
evidence of prior “conception” and communication of that prior conception. The
latter, not the former, is required for showing derivation of invention. In that
regard, note that the Statement of Facts portion of Catapult’s Revised Petition is
titled: “Prior Possession and Disclosure of the Invention.” Rev. Pet. 6. The
concept of prior “conception” by Mr. Holthouse of the invention disclosed to the
Adidas Team is missing entirely from Mr. Holthouse’s testimony and not
addressed by the Revised Petition.
In his declaration (Ex. 1012), Mr. Holthouse does not assert that he
“conceived” of any of the features and functionalities disclosed to the Adidas
Team on October 19–20, 2010, much less “conceived” an invention which includes
all such disclosed features and functionalities. The testimony of Mr. Holthouse
does not support an assertion of invention by Mr. Holthouse with regard to what
was disclosed to the Adidas Team. The declaration of Mr. Millar is no different.
Mr. Millar’s testimony does not corroborate any “conception” of invention by
Mr. Holthouse. The testimony of the two witnesses is concerned only with
possession and communication, not “conception” of a disclosed invention.
D. Conclusion
Based on the evidence and arguments presented by Catapult, and for the
reasons discussed above, substantial evidence, unrebutted, does not support a
conclusion that any one of the challenged claims of adidas AG constitutes a
derived invention. Upon resumption of prosecution, nothing precludes an
examiner from considering whether the presentation and demonstration that
occurred on October 19–20, 2010, in Wilmington, Delaware, constitute prior art
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that render any claim of Application 14/045,954 or any claim of Application
13/077,494 unpatentable, because we have not made such a determination.
E. Order
It is
ORDERED that Catapult’s Revised Petition to institute a derivation
proceeding directed to claims 1–20, 22–25, 29–31, and 40–51 of the adidas AG
’494 application is denied;
FURTHER ORDERED that we do not institute a derivation proceeding, for
trial, with respect to any claim of the adidas AG ’494 application;
FURTHER ORDERED that the suspension of prosecution of Catapult’s
Application 14/045,954, and of the adidas AG ’494 application, as ordered on
April 29, 2014 (Paper 17), is herein lifted;
FURTHER ORDERED that jurisdiction over Application 14/045,954 and
jurisdiction over Application 13/077,494 are herein returned to the examiners in
charge of examination of the respective applications; and
FURTHER ORDERED that a copy of this decision will be placed in the
respective files of Application 14/045,954 and Application 13/077,494.

Case DER2014-00002
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21

For Petitioner:
David Morse
Brian Belles
david.morse@thebellesgroup.com
brian.belles@thebellesgroup.com

For Respondent:
David Cornwell
Mark Rygiel
davidc-PTAB@skgf.com
mrygiel-PTAB@skgf.com