Ponder Perry v. Batzer Stephen

1. Case Identification

• Patent #: 9,487,171
• Filed: July 20, 2017
• Petitioner(s): Perry Ponder
• Patent Owner(s): Patrick Keith Rogers and Stephen Allen Batzer
• Challenged Claims: All claims, with a focus on independent claims 1, 8, and 18.

2. Patent Overview

• Title: Telescoping Side Under-ride Guard for Sliding Axle Trailer
• Brief Description: The ’171 patent discloses a side underride collision guard system for large trailers, particularly those equipped with a sliding rear axle. The system comprises fixed and adjustable telescoping beam structures designed to prevent smaller vehicles from sliding underneath the trailer during a side-impact collision.

3. Basis for Derivation Proceeding

Ground 1: Derivation of the Claimed Invention under 35 U.S.C. §135

• Core Allegation: Petitioner Perry Ponder alleged that he is the true inventor of the core concepts claimed in the ’171 patent. He asserted that he conceived of the invention and communicated it to the named inventors, Patrick Rogers and Stephen Batzer (Respondents), prior to the filing date of the ’171 patent, and that Respondents filed for the patent without authorization or naming Ponder as an inventor. The petition seeks to initiate a derivation proceeding to correct inventorship.

• Petitioner’s Conception of the Invention:

  • Petitioner, a mechanical engineer and expert witness in trailer-related accidents, stated he identified significant design flaws in conventional side underride guards between 2008 and 2012.
  • By October 2012, Petitioner alleged he had conceived of an improved "X-Brace Design." The key inventive concept of this design was to extend the side guard supports from the guard itself to the opposing end of a trailer's transverse floor support beam.
  • This approach, in contrast to existing "Double-V" designs that attached supports to the middle of the floor beams, was argued to mitigate excessive stress on the trailer floor structure, representing a significant improvement. Petitioner stated he began promoting this design in November 2012 and successfully tested it in the spring of 2013.

• Communication to Respondents:

  • Petitioner alleged a direct channel of communication existed because he and Respondents were retained as co-experts in two separate side underride lawsuits (the "Martin Case" and the "Mooney Case").
  • The petition asserted that during a June 2014 conference call related to the Mooney Case, Petitioner expressed his concerns about the Respondents' "Double-V Design" and fully disclosed the details and advantages of his own "X-Brace Design" to both Respondents and the plaintiff's attorney, Brett McDaniel.

• Corroboration of Conception and Communication:

  • Petitioner provided his own sworn affidavit (Exhibit 3) detailing the timeline of his conception and communication.
  • Crucially, Petitioner submitted a corroborating affidavit from attorney Brett McDaniel (Exhibit 4), who had retained all three individuals as experts. McDaniel’s affidavit affirmed that:
    • Petitioner disclosed the X-Brace Design to Respondents during the June 2014 conference call.
    • Respondents had previously used a "Double-V Design" in their expert reports for the Martin Case but switched to utilizing Petitioner’s "X-Brace Design" in subsequent reports for the Mooney Case after the disclosure.
    • Petitioner had provided McDaniel with design drawings of the X-Brace Design in April 2014, corroborating conception prior to the communication.

• Substantial Identity of Inventions:

  • Petitioner argued that the invention claimed in the ’171 patent is substantially the same as the X-Brace Design he conceived and communicated.
  • The core element of independent claims 1, 8, and 18 of the ’171 patent is the attachment of beam structures via support members to the "opposing ends of said trailer's floor beams." Petitioner asserted this limitation directly and completely captures his inventive X-Brace Design.
  • To further demonstrate this, Petitioner compared the language of the ’171 patent's claims to claim 14 of his own pending application, US Patent Application Serial No. 15/649,243. He argued that claim 14, which recites "diagonal members connecting said guard rails to opposing ends of said trailer's transverse beams," describes the same invention, and that Respondents’ claims merely add other conventional elements (like telescoping structures) around this derived core concept.

4. Relief Requested

• Petitioner requested that the Board institute a derivation proceeding against the ’171 patent.
• Petitioner further requested that the Board correct the inventorship of the ’171 patent to add Perry Ponder as an inventor, thereby reflecting his contribution to the claimed subject matter.