[00:00:01] Speaker 03:
Next case is dynamic drinkware versus National Graphics 2015-2014.

[00:00:09] Speaker 03:
Mr. McClain, when you're ready.

[00:00:43] Speaker 00:
Good morning, may it please the court, my name is Matthew McLean, the attorney for the petitioner, Ben Aynway Trinkware, counsel Patrick Bergen is also with me today.

[00:00:52] Speaker 00:
Nearly 90 years ago in the Alexander Milburn case, Justice Holmes said that the fundamental rule in patent law is that the patent must be first.

[00:01:04] Speaker 00:
Over the years in cases that have developed since, there's been a pretty clear procedure that

[00:01:10] Speaker 00:
In cases involving patent priority, the junior patentee must come forward with some evidence to ante date a prior invention if it's going to get or to keep a patent.

[00:01:21] Speaker 03:
But you have a challenger here, right?

[00:01:24] Speaker 00:
Yes.

[00:01:25] Speaker 00:
We are the challenger in an IPR.

[00:01:27] Speaker 03:
And you think that the reference you're relying on should have been given the effective date of its provisional application?

[00:01:38] Speaker 00:
I do.

[00:01:38] Speaker 03:
And why didn't you do that?

[00:01:41] Speaker 03:
Why wasn't that your burden to prove?

[00:01:44] Speaker 03:
All of it's on the record.

[00:01:45] Speaker 03:
There didn't need to be any discovery.

[00:01:47] Speaker 03:
No witnesses.

[00:01:48] Speaker 03:
It's just what the patent says in relation to the claims.

[00:01:52] Speaker 00:
Absolutely.

[00:01:53] Speaker 00:
And we've got two ways to get to the same result today.

[00:01:56] Speaker 00:
One, which is board reversal.

[00:02:00] Speaker 00:
One way is a de novo review of the legal application of the burdens of proof.

[00:02:07] Speaker 00:
But a second way then is to also look at the evidence that was presented because we did present that evidence.

[00:02:12] Speaker 00:
to show that the prior patent application was a good reference.

[00:02:18] Speaker 02:
Let me see if we're all on the same page here.

[00:02:22] Speaker 02:
Do you agree that under the governing statutes that you get the date of the provisional for purposes of determining whether the 555 patent is prior art to the 196 patent?

[00:02:40] Speaker 02:
You get that date if, but only if, you can show that the provisional application satisfied all the requirements of 112 paragraph 1 with respect to the claims of the 555 patent.

[00:02:58] Speaker 00:
I don't agree with him.

[00:03:00] Speaker 00:
I think under the statutory rules 102E, 111B8, and 119E1, and this court's determination in Giacomini that a prior art reference, once it's established as a prior art reference, the prior art is entitled to its effective date, which is its provisional

[00:03:18] Speaker 02:
filing application.

[00:03:19] Speaker 02:
Even if the provisional doesn't satisfy 112.1?

[00:03:22] Speaker 00:
I think the presumption is that it is entitled to that effective date, that provisional application date, unless it's not.

[00:03:32] Speaker 00:
Now the question before the board is who's to say that it's not?

[00:03:35] Speaker 00:
And in every other proceeding of this type, a priority proceeding, be it interference,

[00:03:41] Speaker 00:
original prosecution via anticipation.

[00:03:44] Speaker 00:
Once the prior art is put forward, it is always the junior patentee that has the burden to come forward and ante date.

[00:03:51] Speaker 02:
Let's go back.

[00:03:52] Speaker 02:
You said the presumption is.

[00:03:56] Speaker 02:
I take it you don't disagree that ultimately the determination has to be made that the provisional application has to

[00:04:05] Speaker 02:
contain sufficient support for the claims of the, in this case, the 555 patent, right?

[00:04:13] Speaker 02:
I agree with that.

[00:04:14] Speaker 02:
Okay.

[00:04:15] Speaker 02:
Now, when you presented your evidence to the board, as I read the showing that you made, you compared the disclosure of the provisional to the 196 patent, not to the 555 patent.

[00:04:30] Speaker 02:
And then when you put the three columns showing, ultimately, you showed how the provisional disclosure related to the 196 claims and the 196 disclosure, but you never showed the 555 disclosure, but you never showed how the provisional disclosure related to the 555 claims, right?

[00:04:53] Speaker 00:
That is true in a vacuum.

[00:04:55] Speaker 00:
And what we've argued to this body is that, for the mathematicians, we've argued really the transitive property.

[00:05:02] Speaker 02:
Right, but there's something missing from the equation.

[00:05:04] Speaker 02:
I know A equals B equals C, but here we're talking about B, which is the claims of the 555.

[00:05:10] Speaker 02:
And I didn't see B in any of the materials that you showed.

[00:05:13] Speaker 00:
We compared the 196 to the 555.

[00:05:17] Speaker 02:
To the disclosure of the 555, but not to the claims.

[00:05:21] Speaker 02:
I didn't see anything in your three columns that showed the claims.

[00:05:26] Speaker 02:
In any event, the showing that you made to the board originally was simply comparing the 555 provisional and the February 15 provisional

[00:05:39] Speaker 02:
to the 196, not to anything from the 555, right?

[00:05:43] Speaker 00:
That's right.

[00:05:43] Speaker 00:
We compared the 196 to both the provisional and the Raymond patent.

[00:05:50] Speaker 02:
But not in your original showing.

[00:05:51] Speaker 02:
You just compared it to the 196.

[00:05:53] Speaker 00:
In our petition, we did the 196 to the 555 patent.

[00:05:58] Speaker 00:
And then it was presented by the patent owner that we needed to, they thought we had the burden to present the provisional.

[00:06:05] Speaker 02:
But all you said in your petition was, we have a provisional.

[00:06:09] Speaker 02:
you didn't have any proof as to the relationship between the provisional.

[00:06:13] Speaker 02:
Maybe you didn't have to at that point because the reduction to practice issue hadn't come up.

[00:06:18] Speaker 02:
When the reduction to practice issue came up, then you came back probably correctly in terms of timing and you said in your reply, wait a minute, we do have support and you pointed to the relationship between the provisional disclosure

[00:06:37] Speaker 02:
and the 196, but that's not what you needed to do.

[00:06:41] Speaker 02:
And that's all I saw in the reply.

[00:06:42] Speaker 00:
That is what we did.

[00:06:44] Speaker 02:
So why isn't the board correct in saying you dropped the ball?

[00:06:48] Speaker 00:
Well, we think that the board, once we presented the private face of case, that the 555 anticipated, we believe that the 555 under the statutory framework that we gave you,

[00:07:00] Speaker 00:
goes all the way back to its effective date.

[00:07:03] Speaker 00:
And so when the patent owner then, the burden shifted to the patent owner to say no.

[00:07:08] Speaker 00:
It could say we can ante date that provisional application.

[00:07:13] Speaker 00:
It could say we can ante date the utility application and here's why the 555's provisional application is no good.

[00:07:20] Speaker 00:
Or it could come forward and say we don't believe it's prior art for whatever reason.

[00:07:26] Speaker 00:
It doesn't anticipate.

[00:07:27] Speaker 00:
They abandoned the doesn't anticipate argument after the institution decision, and they attempted to swear all the way behind.

[00:07:34] Speaker 00:
In all these other types of patent proceedings, the junior pattee has to swear all the way behind.

[00:07:41] Speaker 00:
At the time we made the petition, the prior references utility application was May 5th.

[00:07:49] Speaker 00:
The provisional application of the 196 patent was June 12th.

[00:07:53] Speaker 00:
So for that time, all we had to do was say there's prior art.

[00:07:56] Speaker 00:
They said, no, no, we're going to end.

[00:07:58] Speaker 00:
We think we can end to date that.

[00:07:59] Speaker 00:
But they could only end to date before May 5th.

[00:08:03] Speaker 00:
So in our brief back, we said, well, sure.

[00:08:07] Speaker 00:
But the provisional application dated February 15th anticipates as well.

[00:08:12] Speaker 00:
And we presented that claim, Chair.

[00:08:15] Speaker 02:
Well, you say anticipates as well.

[00:08:17] Speaker 02:
It's not good enough, I take it, for that

[00:08:20] Speaker 02:
the disclosure of the provisional to anticipate because that's not in itself a patent, at least under 102E and 119B, I guess it is.

[00:08:32] Speaker 02:
E, I'm sorry.

[00:08:33] Speaker 02:
Right?

[00:08:34] Speaker 02:
Right.

[00:08:34] Speaker 02:
So you actually have to tie it to the patent itself, the 555 patent.

[00:08:39] Speaker 00:
And we think the disclosure that we made with the two charts together has accomplished that.

[00:08:46] Speaker ?:
Okay.

[00:08:48] Speaker 00:
where we get, that's assuming the question is answered, that we have that burden.

[00:08:54] Speaker 00:
And under this burden shifting framework, we maintain that the framework and the standard has always been that the junior patentee ought to say, after we put forth the priority, and under JAK and ME, it's assumed to go back to the provisional application date, they ought to come forward and say, no it doesn't.

[00:09:13] Speaker 00:
Here's what's wrong with the written description.

[00:09:15] Speaker 00:
and then we absolutely agree that the burden would return to us.

[00:09:18] Speaker 04:
So your point is that there is some weakness in your charts that you think that doesn't matter because it wasn't your burden to have to even do a chart in the first place as it relates to the provisional?

[00:09:30] Speaker 00:
Right.

[00:09:30] Speaker 00:
Argument one is we think it was their burden.

[00:09:33] Speaker 00:
We don't need a chart if the chart is in fact defective.

[00:09:36] Speaker 00:
But we don't believe the chart's defective.

[00:09:37] Speaker 00:
We think we went

[00:09:38] Speaker 00:
above and beyond the call of duty and did provide enough evidence to the board to make its own conclusion that that written description support exists.

[00:09:47] Speaker 04:
Well, is it possible at this point to tie the provisional to the claims of its patents, the Raymond patent?

[00:09:55] Speaker 00:
Well, I believe we've done it.

[00:09:57] Speaker 00:
If the position is that we haven't done it, we've made the case in our brief that, well, all of those documents are before the patent board.

[00:10:07] Speaker 00:
in the uh... you know i did the the court below so concerned about letting one of those second pat me through that it created the chart i'm not advocating for a bright line rule that the board to do all the work here but the reality is the evidence if we if we do if we presented incorrectly as if this corporate finance

[00:10:29] Speaker 00:
It's there.

[00:10:30] Speaker 00:
It's there for the region.

[00:10:32] Speaker 00:
It's there for the taking.

[00:10:33] Speaker 00:
And what I find to be compelling is we're now, you know, however far down the line I'm standing before you all, they've never said ever once that there isn't written description support in that document.

[00:10:45] Speaker 00:
That has never been their case.

[00:10:46] Speaker 00:
They've never thrown it back and given any indication that that provisional application wouldn't be good enough.

[00:10:53] Speaker 00:
And I think that's compelling.

[00:10:55] Speaker 00:
If this board looks at the Giacomini case and combines it with those statutory references that I gave, we think that effective date for a valid prior art patent ought to be its original application date, barring

[00:11:15] Speaker 00:
some argument to the contrary.

[00:11:17] Speaker 00:
If the patent owner comes forward with evidence and says it's not, then it comes back to us and we have to make the case to convince the board or this body why we're right.

[00:11:26] Speaker 00:
That didn't happen here.

[00:11:29] Speaker 00:
If you put it in the fundamental rule standard of Justice Holmes, it makes a lot of sense that at some point the patent owner would have to say, I'm first because.

[00:11:40] Speaker 03:
however revered Justice Holmes is, that was a long time ago, in another case.

[00:11:48] Speaker 00:
I agree.

[00:11:49] Speaker 00:
But as far as I can tell and read in 90 years, it hasn't stopped being true.

[00:11:55] Speaker 00:
And I think it should have been true for this board, and I think it should have been true in this particular case.

[00:12:04] Speaker 00:
The video tech case is

[00:12:08] Speaker 02:
Let me ask you this.

[00:12:10] Speaker 02:
I looked at the patent claims and I looked at the provisional and one limitation that I didn't see clearly at least supported

[00:12:19] Speaker 02:
between the claims of the Raymond 555 and the provisional was the transparent interior layer.

[00:12:26] Speaker 02:
Did I overlook something in the provisional?

[00:12:29] Speaker 02:
That's in all of the independent claims of the Raymond 555.

[00:12:34] Speaker 00:
I think there is a difference between the Raymond patent and the 196 patent involving that transparent layer.

[00:12:39] Speaker 02:
No, I'm not talking about the 196 now.

[00:12:41] Speaker 02:
I'm talking about the provisional.

[00:12:42] Speaker 02:
My question is going to whether the provisional had all the limitations of the claims of the 555.

[00:12:48] Speaker 02:
I thought that limitation, I didn't see it at least expressly called out in the provisional.

[00:12:55] Speaker 00:
I believe it is in there, but I would also say that no one has ever challenged the written description support.

[00:13:00] Speaker 00:
I believe the issue is fully before the body.

[00:13:04] Speaker 02:
I'm just asking, I'm probing if it was the board's duty to do that investigation since it appears that you didn't point to the relationship between the two in your papers, then aren't you asking the board to do a lot of work where it's not obvious, at least to my read, that there is support for that limitation at least?

[00:13:28] Speaker 00:
Yes, I believe the board can do it.

[00:13:30] Speaker 00:
Yes, I think that body has done it before.

[00:13:34] Speaker 00:
And I think they could arrive at that conclusion.

[00:13:37] Speaker 00:
I believe all the support is there, which is in the claim charts that we did put together, such as they were.

[00:13:43] Speaker 00:
We think we showed it.

[00:13:44] Speaker 00:
We think that the references all carry forward.

[00:13:48] Speaker 03:
We'll save the remainder of your time for a bottle.

[00:13:50] Speaker 00:
Thank you.

[00:13:51] Speaker 03:
Mr. Graves.

[00:13:59] Speaker 01:
Thank you.

[00:14:00] Speaker 01:
Good morning.

[00:14:01] Speaker 01:
May it please the court.

[00:14:03] Speaker 01:
My name is Michael Griggs.

[00:14:04] Speaker 01:
I'm from the Boyle-Fredrickson firm with me and my colleague Sarah Wong.

[00:14:10] Speaker 01:
Judge Bryson hit the nail right on the head.

[00:14:14] Speaker 01:
The showing that needs to be made in order to tie the 555 patent to its provisional is what's outlined in the wartime case.

[00:14:22] Speaker 01:
In particular, there has to be 112 support in the provisional application to show that the 555 patent could have issued on the filing date of the provisional application.

[00:14:31] Speaker 04:
But this presupposes the burden of proof that was properly put on your opponent, right?

[00:14:39] Speaker 01:
Well, the statute 316E says the petitioner bears the burden of proof for proving claims to be unpassable.

[00:14:47] Speaker 04:
uh... pre-supposition but but you have one nineteen e which that that the non-provisional application shall have the same effect after such invention of the file on the date of the provisional application and it doesn't say anything there about whether or not there have to be the the one twelve reported the provisional uh... ultimately have to satisfy that but once you have mandatory language that treats the provisional as the filing date

[00:15:17] Speaker 04:
wouldn't it make sense that we assume the provisional gets that filing date under the statute?

[00:15:23] Speaker 04:
And then you would have to say that no, it shouldn't have been entitled to that filing date.

[00:15:29] Speaker 01:
No, it wouldn't make sense.

[00:15:31] Speaker 01:
As your honor pointed out, 119 explicitly calls for it.

[00:15:34] Speaker 01:
There must be an affirmative showing made that there is 112 support in the provisional in order to be accorded the priority.

[00:15:42] Speaker 04:
What I don't understand is one of the things that bothered me the most about your brief is that I would have thought that the logical argument you would make is, you know what, this whole burden of proofing, it may have been a mistake by the PTAP, but it's harmless because we think the provisional doesn't provide support for the actual Raymond application.

[00:16:03] Speaker 04:
And yet, you never made that argument.

[00:16:06] Speaker 01:
no in part you can't no in in that in part because of the the structure of the i p r in this instance all of the evidence and argument relating to this issue in terms of the effective date of the provisional application was presented in a reply right at the end of the briefing.

[00:16:25] Speaker 04:
I understand that you could have asked to have a supplemental briefing to address that issue couldn't you?

[00:16:32] Speaker 04:
Or even made the harmless error argument to us?

[00:16:36] Speaker 01:
We could have asked for that, but this is more in the alternative grounds for affirmance that we presented in terms of waiver.

[00:16:46] Speaker 01:
We had asked or argued that this should have been a waived issue because it was not presented in the petition.

[00:16:55] Speaker 04:
Yeah, I'm not really buying that because I agree with Judge Bryson that until you raised this reference, until you raised your antidating the reference, if they didn't have the obligation to take it back.

[00:17:11] Speaker 04:
In other words, I don't think the waiver argument is a good one, but I would have thought perhaps an alternative argument that would be more palatable is one that it was harmless error.

[00:17:21] Speaker 01:
Your Honor, we're not disputing that the board was, I mean we agree that the board was correct.

[00:17:28] Speaker 01:
I mean it found that the proper support was not laid out in the manner presented by the petitioner here in the claim charts for precisely the reason that Judge Bryson said, because there is no comparison.

[00:17:39] Speaker 01:
the five-five patent claims to the provisional.

[00:17:41] Speaker 04:
Okay.

[00:17:42] Speaker 04:
My question to you is, you must have looked at it.

[00:17:44] Speaker 04:
If you compare the provisional to the five-five patent claims, is there support?

[00:17:50] Speaker 01:
Your Honor, I have not done that analysis.

[00:17:52] Speaker 01:
We did not do that analysis.

[00:17:54] Speaker 01:
Like I said, we took the position that it was waived.

[00:17:58] Speaker 01:
You know, we did not ask to introduce new evidence because, like I said,

[00:18:03] Speaker 02:
Even preparing for this argument, you haven't ever sat down and looked at the provisional and the 555 and said to yourself, I wonder if there really is support here?

[00:18:14] Speaker 02:
That's what you said to the board in the argument.

[00:18:19] Speaker 02:
You said, they asked you.

[00:18:20] Speaker 02:
You want to talk about whether there actually is support.

[00:18:23] Speaker 02:
And I think you said something like, you know what?

[00:18:25] Speaker 02:
I don't.

[00:18:26] Speaker 02:
That's a quote.

[00:18:28] Speaker 02:
I don't.

[00:18:28] Speaker 02:
I have not really taken a close look at this.

[00:18:33] Speaker 02:
My eyebrows went up when I saw that.

[00:18:36] Speaker 02:
I thought, is he going to rely entirely on procedural argument because he doesn't have a substantive argument, or can it be true that he hasn't really looked at this?

[00:18:49] Speaker 02:
Have you honestly not looked at this question?

[00:18:52] Speaker 01:
That is true, Your Honor.

[00:18:54] Speaker 01:
And I know it's hard to believe that an attorney can refrain from presenting an argument.

[00:18:58] Speaker 01:
But in this instance here, the burden is squarely on the petitioner here.

[00:19:04] Speaker 01:
As patent owner, we could have filed nothing.

[00:19:08] Speaker 04:
But didn't you proceed on the assumption that the 196 was entitled to its provisional application date?

[00:19:14] Speaker 04:
Did you present evidence showing that you were entitled to that provisional date?

[00:19:19] Speaker 01:
No, the evidence that we presented was to an actual reduction of practice.

[00:19:22] Speaker 01:
So we did not involve the 196 provisional.

[00:19:27] Speaker 01:
We presented evidence of actual reduction of practice of the claims, which we were successful on, and the board established... But the date that you were operating from for purposes of the patent claims in the first instance was the date of your provisional, right?

[00:19:42] Speaker 01:
I guess I don't understand the question operating from, the date that we were operating from, in terms of how we were evaluating the... In what you were attempting to... When you first

[00:19:52] Speaker 04:
When your claims were first being considered by the board, right, in terms of what the original filing date was for purposes of their need to annotate it and then you trying to annotate that, you started with the date of your provisional, right, because you presumed that that was the date that the law would allow you.

[00:20:13] Speaker 02:
No, I think that's right.

[00:20:14] Speaker 02:
That's the way I read the record too.

[00:20:16] Speaker 02:
I think you

[00:20:17] Speaker 02:
Your patent, I think, was filed in September of 2007, and you got back to June something with your provisional.

[00:20:26] Speaker 02:
And then they came in with May with their 555

[00:20:31] Speaker 02:
You came back with a reduction to practice in March, March 28th or something, and then they came back with the provisional.

[00:20:37] Speaker 02:
I think that's the way.

[00:20:38] Speaker 02:
Am I wrong in that?

[00:20:39] Speaker 01:
I think that's right.

[00:20:40] Speaker 01:
I think my understanding or recollection of that is a little different.

[00:20:43] Speaker 01:
We never challenged, at least in the preliminary response, we never challenged the dates.

[00:20:50] Speaker 01:
On its face, the Raymond patent was filed before the 196 provisional, so the 555 patent

[00:20:57] Speaker 04:
So the provisional was the date that they were starting, that everybody was starting from for purposes of deciding what they had to be targeting for purposes of anti-dating your patent?

[00:21:09] Speaker 01:
Well, yes.

[00:21:10] Speaker 01:
I mean, in the Raymond patent application, the 555 application was filed before both the 196 provisional and the 196 application.

[00:21:26] Speaker 01:
In terms of the antecedation argument, we first presented that in the response after institution of the trial.

[00:21:40] Speaker 01:
That's when patent owner introduced the evidence relating to swearing behind the Raymond patent.

[00:21:48] Speaker 01:
That is when we have pointed out that the petitioner had not demonstrated in the petition

[00:21:57] Speaker 01:
The 555 patent should be entitled to the provisional application.

[00:22:04] Speaker 01:
After we filed the response, the petitioner filed a reply introducing the charts, reporting to show the support, although as Judge Bryson noted and as the board correctly determined, that was insufficient.

[00:22:17] Speaker 01:
So the board correctly determined that the Raymond patent was not entitled to the provisional date.

[00:22:23] Speaker 01:
When comparing the Raymond patent date,

[00:22:26] Speaker 01:
to the reduction of practice state that we had established.

[00:22:31] Speaker 01:
The board determined that Raymond was not asked to work prior art.

[00:22:35] Speaker 01:
We believe that decision should be affirmed.

[00:22:38] Speaker 01:
I'd also like to point out that this is not a case dispositive issue.

[00:22:43] Speaker 01:
It was presented as that in Helen's initial brief.

[00:22:47] Speaker 01:
However, there was a diligence issue that

[00:22:50] Speaker 01:
was also set forth, and there's also the issue of a contingent motion to amend that was basically denied as moot in view of the board's ruling, until whether or not Raymond Patton is entitled to this provisional application is not a case-disposited issue.

[00:23:11] Speaker 01:
Unless the panel has any other questions for me, I'll conclude my argument.

[00:23:17] Speaker 02:
Let me ask you one question.

[00:23:20] Speaker 02:
having to do with Yamaguchi.

[00:23:22] Speaker 02:
As I read Yamaguchi, the board, at least in that case, seems to think that Wertheim is no longer really, there's not much left of Wertheim.

[00:23:33] Speaker 02:
Do you take issue with that?

[00:23:34] Speaker 02:
I do take issue with that.

[00:23:36] Speaker 01:
And I did get that sense when I read through it, too, that they were emphasizing more this carrying over idea as opposed to the Section 112 support to support the claims.

[00:23:48] Speaker 01:
However,

[00:23:50] Speaker 01:
the applicant in the Yamaguchi case didn't seem to take any issue with that either.

[00:23:56] Speaker 01:
It's unclear as to the factual findings of the examiner if the applicant had conceded that there was the actual support in the claims.

[00:24:03] Speaker 01:
My interpretation or maybe my understanding of the Yamaguchi case is that the 112

[00:24:09] Speaker 01:
aspect of the analysis that must be performed.

[00:24:12] Speaker 01:
It was either not disputed by the applicant or it just was not at issue there.

[00:24:16] Speaker 01:
The focus was instead upon this carrying over, which the board found and determined.

[00:24:25] Speaker 01:
But I agree.

[00:24:26] Speaker 01:
They seem to

[00:24:28] Speaker 01:
to distance themselves from the wartime decision, but then this court in Giacomini, you know, that revives, not revives, but it just confirms that you didn't need the section 112.

[00:24:42] Speaker 01:
And that was post-Yamaguchi?

[00:24:44] Speaker 01:
That was.

[00:24:44] Speaker 01:
That was 2010.

[00:24:44] Speaker 01:
Yamaguchi was 2008.

[00:24:46] Speaker 01:
Okay.

[00:24:48] Speaker 03:
Thank you, Mr. Quiggs.

[00:24:49] Speaker 03:
Thank you.

[00:24:50] Speaker 03:
Mr. McLean has a couple of minutes of rebuttal time.

[00:24:53] Speaker ?:
Thank you.

[00:25:00] Speaker 00:
Let me see if I can speed through and address a few things.

[00:25:04] Speaker 00:
I think the work time case is not helpful here today.

[00:25:08] Speaker 00:
That was a continuation in part and the board there, again the board's doing all the work but the board acknowledged that the continuation didn't have support all the way back to the beginning but it felt like it had to give the first date as the effective date and the error there was

[00:25:24] Speaker 00:
But you acknowledge it doesn't have all the support, so that makes it no good.

[00:25:28] Speaker 00:
Again, the board was doing the work, though.

[00:25:31] Speaker 02:
I find it... But Giacomini is what I believe is a provisional case, wasn't it?

[00:25:39] Speaker 00:
The Giacomini case was an application, and the board put it on Giacomini to come forward to present evidence that

[00:25:49] Speaker 00:
to get behind the effective date of the prior art.

[00:25:53] Speaker 00:
And again, as the secondary, the junior patent application or applicant, that put the burden on them to show we are indeed first and Giacomini couldn't.

[00:26:04] Speaker 00:
I find it very difficult to believe that throughout the history of this case that they've never read

[00:26:09] Speaker 00:
the application, the provisional application arraignment, and I have every reason to believe that if it didn't contain written description support, it would not have kept that a secret.

[00:26:20] Speaker 00:
The issue, one of the issues that they raised in their brief, and I think it is permeated through the case, is this idea that their patent is presumed to be valid under 282, and as we've cited in our reply, that's simply not the case.

[00:26:33] Speaker 00:
We're dealing with patentability and a lower burden of proof, and this idea that they're valid so they get all these

[00:26:39] Speaker 00:
presumptions is not the case, but it is from Mr. Rayner's patent.

[00:26:43] Speaker 02:
There are two different issues here.

[00:26:45] Speaker 02:
One is whether the presumption carries a clear and convincing evidence standard with it, which it does in the case of an issued patent in litigation, versus whether there's a burden of proof on you as the petitioner attacking and challenging the patent, in which case the presumption is not as powerful, but it's still there, right?

[00:27:05] Speaker 02:
if there's a burden of proof on you, that means if you don't prove it to be the contrary, then you lose.

[00:27:11] Speaker 00:
That's the ultimate burden.

[00:27:13] Speaker 00:
I absolutely agree.

[00:27:14] Speaker 00:
But in every other one of these cases, there is a moment where the plaintiff has to come forward with evidence to put it back to us and make the ultimate proof.

[00:27:24] Speaker 00:
They never did so here.

[00:27:25] Speaker 00:
And with respect to the remaining issues, we would concede that there's an amendment issue.

[00:27:31] Speaker 00:
The diligence issue was addressed.

[00:27:32] Speaker 00:
There was discussed a little argument.

[00:27:33] Speaker 00:
There simply wasn't any evidence.

[00:27:35] Speaker 00:
I think this body can conclude the diligence.

[00:27:38] Speaker 00:
That's a dead issue, and it could remain solely for the motion to amend.

[00:27:42] Speaker 02:
But in order to get, let me make sure we're on the same page here.

[00:27:46] Speaker 02:
In order to turn the burden back to them, you have to have made a sufficient showing, let's call it a prima facie showing, a sufficient showing

[00:27:59] Speaker 02:
that you satisfied the 112, paragraph 1, requirements in the provisional, right?

[00:28:06] Speaker 00:
I don't think so.

[00:28:07] Speaker 00:
I think under the statutory law in the Giacomini case, once we establish that Rainman is valid prior ARC, as a patent, it's entitled under 102E, 111, and 119 to its effective date, pending someone making the argument that it's not.

[00:28:22] Speaker 00:
Had they made the argument that it's not, then it would have returned staff.

[00:28:24] Speaker 02:
Well, they did assert that it was not.

[00:28:26] Speaker 02:
Now you're saying they have to actually make the affirmative showing, all you have to do is say we claim the provisional and that's all you have to do?

[00:28:34] Speaker 00:
I think the way the legal framework is set forth, once we put forth the valid prior reference in Raymond, Raymond as a valid patent is entitled to its effective date unless the junior patentee gives the board reason to believe it's not.

[00:28:51] Speaker 00:
They have to come forward with that evidence, they did not, but then it would return to us.

[00:28:55] Speaker 00:
And I think we made the showing we needed to make irrespective.

[00:29:00] Speaker 03:
All right.

[00:29:01] Speaker 03:
Thank you, Mr. McClain.

[00:29:02] Speaker 00:
We'll take your time.

[00:29:06] Speaker 03:
All rise.