Attorneys Yirga, Pinchak, and Smart Prevail in First Ever Derivation Proceeding Instituted by the U.S. Patent Trial and Appeal Board

Subsequent to a trial on the merits, the United States Patent Trial and Appeal Board (PTAB) ruled in favor of patentee GED Integrated Solutions, Inc. (GED) in the first ever derivation proceeding to be instituted since the 2011 America Invents Act (AIA). Andersen Corporation v. GED Integrated Solutions, Inc., DER2017-00007. The PTAB found that the claimed subject matter of the patent-at-issue was not derived from petitioner Andersen Corporation (Andersen). Patentee GED was represented by John Yirga, Co-Chair of the Tarolli firm’s Patent and Trademark Office Trials and Litigation Group, along with his partners George Pinchak and Samantha Smart. The patent-at-issue in the derivation proceeding involved a novel spacer frame for an insulated glass unit of the type used in multiple pane glass windows and doors. The patent-in-suit was prepared and prosecuted by Mr. Yirga. In recounting the PTAB decision, Mr. Yirga commented; “[a]fter extended discovery, briefing, and a trial, we knew the PTAB would come to the right decision, the facts and law were clearly on our side. The [PTAB’s] order confirms that GED’s engineers are the originators…[of the patented technology] and that they did not derive that technology from an outside individual, contrary to the Andersen’s initial allegations.” LAW 360 quoting Yirga in its March 2019 publication.

The AIA changed the rule for priority from a first-to-invent to a first-to-file system, using derivation proceedings to determine whether a patent was derived by a party other than the patent owner. The Tarolli Litigation Group has successfully been representing clients before the PTAB, the Trademark Trial and Appeal Board (TTAB), various U.S. district courts, and the U.S. Court of Appeals for the Federal Circuit for many years.

Two additional derivation petitions were subsequently filed by Andersen relating to a divisional patent application and a continuation patent application, respectively, of the patent-in-suit. The Tarolli Litigation Group also represented GED in those proceedings. In the second case, the petition was denied by the PTAB based upon GED’s successful assertion that Andersen’s petition was untimely, given the statute of limitation requirements of derivation proceedings. Andersen Corporation v. GED Integrated Solutions, Inc., DER2018-00008 and DER2019-00003 (see Order Denying Institution, January 22, 2019). In the third case, the petition was withdrawn by Andersen prior to the PTAB’s institution decision. Andersen appealed the PTAB decisions in the first and second derivation cases to the Court of Appeals for the Federal Circuit. Ultimately, Andersen withdrew both appeals prior to a decision on the appeals by the Federal Circuit. Andersen Corporation v. GED Integrated Solutions, Inc., Fed. Cir. Appeal No. 19-1907 and Fed. Cir. Appeal No. 19-1695.

The Tarolli Litigation Group of Yirga, Pinchak, and Smart are intellectual property attorneys registered to practice before the United States Patent and Trademark Office and are admitted to practice before the Court of Appeals for the Federal Circuit and a number of U.S. district courts. Each member of the Litigation Group has extensive experience in preparing and prosecuting patents and trademark applications, both in the U.S. and abroad.

Additionally, each member of the Group is an experienced litigator having appeared in various U.S. district courts, the Court of Appeals for the Federal Circuit, the PTAB and the TTAB. Being both prosecuting attorneys and seasoned litigators, the Tarolli Litigation Group is uniquely positioned to both obtain and, if necessary, enforce U.S. patents, trademarks, and copyrights for U.S. and international clients. If you have any interest in procuring and/or enforcing your intellectual property rights, the Tarolli Litigation Group can be reached by email at jyirga@tarolli.com, gpinchak@tarolli.com, and ssmart@tarolli.com.