PTAB's First Oral Hearing In A Derivation Proceeding

The PTAB conducted its first oral hearing in a derivation proceeding instituted under 37 C.F.R. § 42.400 et seq.  Andersen Corp. v. GED Integrated Solutions, Inc., DER2017-00007 (Paper 56). We previously discussed this case's institution decision here on the AIA Blog, explaining that the AIA essentially replaced interference proceedings with derivation proceedings and how, in this case, the PTAB instituted 22 separate derivation grounds on spacer frame assemblies for windows. 

The purpose of a derivation proceeding is to determine whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application, and whether the earlier application claiming such invention was filed without authorization. See 35 U.S.C. § 135(a)(1); 37 C.F.R. § 42.405(b)(2). Accordingly, at the hearing, the parties addressed whether the petitioner had conceived of every feature of the copied claims, whether those features were