[00:00:00] Speaker 03:
Is 2015-2043 Perfect Surgical Technique versus Olympus America.

[00:00:51] Speaker 02:
Mr. Freitas, am I saying your name right?

[00:00:53] Speaker 02:
Freitas.

[00:00:55] Speaker 05:
Yes, Your Honor.

[00:01:02] Speaker 03:
Please proceed.

[00:01:08] Speaker 05:
May it please the Court.

[00:01:11] Speaker 05:
This case involves a dispute about whether during a critical period extending only from February 10 to May 1,

[00:01:19] Speaker 05:
the patent owner prove the exercise of reasonable diligence.

[00:01:23] Speaker 05:
As the cases say, the question is whether the evidence showed a reasonably continuous process toward the constructive reduction of practice through the filing of a patent application.

[00:01:35] Speaker 01:
One of my biggest concerns on this diligence issue is why didn't you submit the doctor's surgery schedule to the court?

[00:01:45] Speaker 05:
The events took place 15 years ago, Your Honor.

[00:01:48] Speaker 05:
The records just weren't available going way back that far.

[00:01:53] Speaker 01:
OK, so he was able to testify that he performed all these surgeries but had no ability to look at his calendar to tell us on what dates he likely performed them?

[00:02:07] Speaker 05:
So given the time period, Your Honor, he wasn't able to provide those sort of details.

[00:02:12] Speaker 05:
However, given his practice since 1980,

[00:02:17] Speaker 05:
He is familiar with what his schedule was during those years, his teaching schedule at two of the leading medical schools, the nature of his practice.

[00:02:25] Speaker 05:
Given his status as a pioneer in some of the fields that he works in,

[00:02:30] Speaker 05:
He's had a very busy practice.

[00:02:33] Speaker 01:
I don't dispute any of that.

[00:02:35] Speaker 01:
And he seems very impressive.

[00:02:36] Speaker 01:
I guess my question is that we've got this problem, that we have case law that says, A, that the burden is on you to show that there was reasonable diligence, conception and reasonable diligence to reduce it to practice, and B, that there has to be corroboration.

[00:02:54] Speaker 01:
And so what did he have to corroborate the claim that 15 years before, he was doing surgery on virtually a daily basis?

[00:03:03] Speaker 05:
Well, one specific piece of evidence that was in the record was his CV demonstrating that over a long period of time, he didn't have this practice.

[00:03:12] Speaker 05:
And also, in the recent case law, it's clear that not every specific detail must be corroborated.

[00:03:19] Speaker 05:
The basics of his practice as a busy surgeon and a professor

[00:03:23] Speaker 05:
were well corroborated simply from the CV, the evidence that wasn't challenged about what he had done.

[00:03:32] Speaker 01:
Did he have anybody at the hospital or anybody that worked with him in that time frame that could have provided information as to, you know, some doctors only do surgeries on Mondays.

[00:03:42] Speaker 01:
Some do them Monday, Wednesday, Friday.

[00:03:44] Speaker 01:
Some do them every day of the week.

[00:03:46] Speaker 01:
Was there anybody that could

[00:03:48] Speaker 01:
talk about the time frames during which he would be actively performing surgeries?

[00:03:52] Speaker 05:
So I don't know the specific answer to your question, Judge O'Malley.

[00:03:55] Speaker 05:
But I believe there would have been someone, a colleague, who had been working with him back then.

[00:04:02] Speaker 05:
So I think there could have been.

[00:04:05] Speaker 05:
But in the context of this case, I don't think that's particularly crucial.

[00:04:09] Speaker 05:
Because what we have is the fact that at the beginning of the critical period, the application was undisputedly in draft.

[00:04:18] Speaker 05:
So what we're looking at is nothing more than the completion of a draft patent application.

[00:04:24] Speaker 05:
The period is modest.

[00:04:26] Speaker 05:
There's no dispute that he was active, that he was working, that he was a busy surgeon.

[00:04:31] Speaker 03:
Well, let's just talk about the period.

[00:04:33] Speaker 03:
The period that the government found the first gap for was February 10th to March 2nd.

[00:04:41] Speaker 03:
And can you tell me precisely

[00:04:45] Speaker 03:
what was happening during that time period.

[00:04:49] Speaker 03:
I understand that March 2nd is when Dr. Nezhat sent comments on the first draft of the patent application.

[00:04:57] Speaker 03:
And I also understand that on January 28th, he received that first draft.

[00:05:05] Speaker 03:
So is there anything that you can point to that was being done between February 10th, which is the day of the 551 being published, the prior art that's at issue?

[00:05:15] Speaker 03:
and March 2nd.

[00:05:16] Speaker 03:
Is there anything that you can point to?

[00:05:18] Speaker 05:
So given that the record does show that on March 2nd the response was delivered, what the record shows is that he was working on the response.

[00:05:27] Speaker 03:
Between January 28th and March 2nd, he was working on.

[00:05:32] Speaker 03:
Do we have in the record, I found the first draft, and I found the second draft, and I found the final application.

[00:05:41] Speaker 03:
uh... do we have anything in here at work which demonstrates to me what his comments were on the first track he said you could be sent comments on the first track inferential your honor it shows by virtue of what changed claims were added drives rather okay so where where can i see what changed so the first draft i think you have your appendix with you i hope the first draft i think is at five eighty two

[00:06:14] Speaker 03:
And the second draft, I think, is of A610.

[00:06:18] Speaker 03:
Can you confirm whether I'm correct about that?

[00:06:41] Speaker 05:
Yes, Your Honor, the cover letter from Attorney Hezlin appears at 579, and then the application follows.

[00:06:50] Speaker 03:
So basically, what Mr. Nezhat would have been doing between January 28th

[00:06:59] Speaker 03:
And March 2nd, you're saying, is putting together comments that are what prompted the changes from the first draft to the second draft.

[00:07:09] Speaker 05:
Yes, Your Honor, except I would point out that the date is actually February 10th.

[00:07:13] Speaker 05:
That's the beginning of the critical period.

[00:07:15] Speaker 03:
That's the beginning of the critical period.

[00:07:16] Speaker 03:
But you don't have any.

[00:07:18] Speaker 03:
He received the first draft on January 28th.

[00:07:23] Speaker 05:
I think actually it was sent on the 29th, Your Honor.

[00:07:26] Speaker 05:
The cover letter is dated the 28th, but I think the record is it was a day later.

[00:07:30] Speaker 03:
Fine.

[00:07:30] Speaker 03:
January 29th.

[00:07:32] Speaker 03:
And he sent comments on March 2nd.

[00:07:34] Speaker 03:
So we know between receiving it and sending comments, he had to be working on those comments.

[00:07:39] Speaker 03:
Yes, Your Honor.

[00:07:39] Speaker 03:
But you don't have anything to tell me for sure he was working on them, for example, between the time period of February 10th and March 2nd, right?

[00:07:47] Speaker 03:
Because maybe he got them all and worked on them all right away.

[00:07:51] Speaker 03:
and then, you know, set it aside and then turned it over to his attorney.

[00:07:54] Speaker 05:
I agree that that's conceivable, Your Honor, but the process described by Dr. Najat and Mr. Hezlin was that there was an ongoing communication between the two.

[00:08:03] Speaker 05:
There were many conversations.

[00:08:04] Speaker 05:
Dr. Najat was a very involved client.

[00:08:06] Speaker 03:
Where does it say there were many conversations during this time period?

[00:08:09] Speaker 05:
It doesn't grow.

[00:08:10] Speaker 05:
Mr. Hezlin's testimony refers to the period, the critical period as a whole, which we submit is the proper stance that should be adopted.

[00:08:18] Speaker 05:
Rather than looking on isolated pockets, the case law requires that the evidence be looked at as a whole.

[00:08:25] Speaker 05:
Therefore, it's dangerous when a focus is placed on a narrow period of time.

[00:08:31] Speaker 05:
The proper stance is to look at the entire critical period.

[00:08:35] Speaker 05:
And that's what Mr. Heslin's testimony addresses, the conversations, the involvement.

[00:08:41] Speaker 05:
Your Honor, you asked a question about where the second draft was.

[00:08:45] Speaker 01:
Let me ask you a hypothetical question.

[00:08:47] Speaker 01:
What if we were looking at a six-month time frame for this back and forth?

[00:08:51] Speaker 01:
I mean, at some point, I understand your argument to be, look, these are both busy people.

[00:08:57] Speaker 01:
The lawyer is doing stuff.

[00:08:58] Speaker 01:
The doctor's doing stuff.

[00:08:59] Speaker 01:
They both have other things they have to do.

[00:09:01] Speaker 01:
So it's still reasonable for them, over a three-month period, to be going back and forth.

[00:09:06] Speaker 01:
Well, at what point does the time frame, in and of itself, become so long that it's unreasonable?

[00:09:11] Speaker 05:
I don't think there's a fixed point, Your Honor.

[00:09:14] Speaker 05:
The basic idea of the cases is that a reasonably continuous process must be shown.

[00:09:20] Speaker 05:
When we have a period as short as this one, it's easier for us to do that.

[00:09:23] Speaker 05:
If the period is lengthened, I agree, Your Honor, that it does get more difficult for the patent owner to make its case.

[00:09:31] Speaker 05:
But we are dealing with this period.

[00:09:34] Speaker 05:
We are dealing with undisputed facts showing that the application existed at the beginning, was changed, and was finalized by May 1.

[00:09:44] Speaker 05:
So working with this period of time, what we end up with is a circumstance where the only plausible conclusion would be that reasonably continuous process did occur.

[00:09:59] Speaker 05:
Now, we have a problem here because the board committed a few errors in the way it looked at the evidence.

[00:10:05] Speaker 05:
First of all, it didn't look at all of the evidence.

[00:10:09] Speaker 05:
It explicitly said, we're not considering what has been done.

[00:10:14] Speaker 01:
It sort of said both, didn't it?

[00:10:16] Speaker 01:
At one point, it said we're looking at all the evidence.

[00:10:18] Speaker 01:
But then at another point, it said, but we're not considering any activity by the lawyer.

[00:10:22] Speaker 05:
Well, I don't think they said they're looking, Your Honor.

[00:10:24] Speaker 05:
What they said is looking at the evidence as a whole.

[00:10:28] Speaker 05:
But the money point they made was they didn't look at what Heslin did.

[00:10:33] Speaker 05:
They said, we need not reach.

[00:10:36] Speaker 03:
So what is the evidence of what Mr. Heslin did?

[00:10:39] Speaker 05:
He was the prosecuting attorney.

[00:10:41] Speaker 05:
He reviewed drafts.

[00:10:42] Speaker 05:
He prepared drafts.

[00:10:43] Speaker 05:
He did all of the things that one would expect a prosecuting attorney to do.

[00:10:48] Speaker 05:
And the point is not to focus on something specific about what he did.

[00:10:53] Speaker 05:
But given that this is a factual inquiry, it's critical.

[00:10:56] Speaker 03:
It's a factual inquiry that we have to give substantial evidence deference to on appeal.

[00:11:00] Speaker 03:
So if we think that there wasn't something wrong with the PTO looking at gaps and saying, during this gap,

[00:11:09] Speaker 03:
Was there any activity?

[00:11:11] Speaker 03:
If we think that that's not wrong, is there anything in the record, is there any evidence that would demonstrate to me that the PTO's failure to consider Mr. Heslin's activities would affect the gap that they identified, the first gap or the third gap, for example, but especially that first gap.

[00:11:30] Speaker 03:
is there any evidence in this record that Mr. Hesslin was doing anything during that period such that, because I agree with you, if I read this opinion

[00:11:40] Speaker 03:
as indicating that the board refused to consider and weigh as part of the evidence what the attorney did during the period, that is troubling under our law.

[00:11:49] Speaker 03:
However, if there is no evidence in the record that the attorney did anything under a gap period, and if I think a gap period is a reasonable way for the PTO to analyze this, then does it matter?

[00:12:00] Speaker 03:
I just want to make sure you understand why I'm asking you this and what I'm asking you.

[00:12:05] Speaker 03:
So is there any evidence that was presented

[00:12:07] Speaker 03:
that Mr. Hesslin was undertaking anything at all related to this prosecution during the gap periods, such that their failure to consider his actions as part of the diligence would be harmless error?

[00:12:23] Speaker 05:
In the final gap period, there clearly is, Your Honor.

[00:12:25] Speaker 05:
The final gap period runs from about April 13 to May 1.

[00:12:30] Speaker 05:
That's when the application was filed.

[00:12:33] Speaker 05:
Obviously, Mr. Hesslin was in control of things then.

[00:12:36] Speaker 05:
He did the final work.

[00:12:38] Speaker 05:
So we know that by not considering that part of the period, we know there's a problem.

[00:12:45] Speaker 01:
Also, Your Honor.

[00:12:46] Speaker 01:
So wasn't that the point that the board was making, that even if we give you that period, that we don't have to consider his activity, because even if we give you that period, there's still these other two periods that the board felt.

[00:12:58] Speaker 01:
There's only two others that had the application in his control, and things didn't happen.

[00:13:04] Speaker 05:
Well, there's only two others, Your Honor.

[00:13:05] Speaker 05:
One's a weekend.

[00:13:06] Speaker 05:
And by the way.

[00:13:07] Speaker 05:
Don't worry about that.

[00:13:08] Speaker 05:
Just talk about the first one.

[00:13:09] Speaker 05:
All right.

[00:13:09] Speaker 05:
So we have the beginning then, and we have the end.

[00:13:12] Speaker 05:
At the end, Hezlin's in control.

[00:13:14] Speaker 03:
But the beginning.

[00:13:15] Speaker 03:
We want to know about the beginning.

[00:13:16] Speaker 03:
That first gap is where we're trying to get you to focus.

[00:13:19] Speaker 05:
So the beginning, Your Honor, is a situation where Dr. Najat is prosecuting his very first patent application.

[00:13:26] Speaker 05:
The evidence for Mr. Hezlin is that Dr. Najat took great pains to carefully study the application, understand it, he had a lot of questions.

[00:13:36] Speaker 05:
It's understandable that during that initial period, Dr. Najat took some time.

[00:13:41] Speaker 05:
And this is corroborated through Mr. Heslin's testimony, that he was involved.

[00:13:46] Speaker 05:
He was careful.

[00:13:47] Speaker 05:
He was thorough.

[00:13:49] Speaker 05:
So it's understandable that during that first period of time, from the 10th to the 2nd, he was studying in the context of his busy schedule.

[00:13:59] Speaker 05:
He was trying to understand.

[00:14:01] Speaker 05:
And by March 2nd, he had his comments for his counsel.

[00:14:05] Speaker 01:
But that evidence, when you say there was evidence, it was only his own testimony, right?

[00:14:08] Speaker 05:
And Mr. Hezlin's testimony that Dr. Nejat was an involved client, actively asking questions, thoroughly reviewing, trying to understand.

[00:14:17] Speaker 05:
Mr. Hezlin testified that Dr. Nejat was so involved that Mr. Hezlin stopped billing him for all of the calls.

[00:14:25] Speaker 05:
He said, at some point, you just can't keep doing that.

[00:14:29] Speaker 05:
So there's no doubt that throughout the period, he was involved.

[00:14:32] Speaker 03:
You are well into your rebuttal time.

[00:14:33] Speaker 03:
Oh, please, go ahead.

[00:14:34] Speaker 00:
I have just one question, Mr. Freda.

[00:14:36] Speaker 00:
This is a procedural.

[00:14:38] Speaker 00:
Assume for the moment that one were to conclude that the board ruled correctly on diligence and ruled correctly on the translation issue, but erred on claim construction.

[00:14:54] Speaker 00:
What would be the thing the court should do under that circumstance?

[00:14:58] Speaker 00:
I know you're not urging all of those things,

[00:15:00] Speaker 00:
Just assume hypothetically that would be a ruling.

[00:15:03] Speaker 05:
Reverse the finding of unpatentability because with the client construction error, then we wouldn't have the problem with JP551.

[00:15:15] Speaker 05:
That would be the result we would advocate.

[00:15:18] Speaker 01:
Stay on this procedural question.

[00:15:20] Speaker 01:
If we were to find that the board applied a wrong legal standard with respect to the diligence question, given that there are underlying fact findings, would the best that you could hope for would be a remand to apply the correct legal standard?

[00:15:38] Speaker 05:
Yes, it would be, Your Honor.

[00:15:39] Speaker 05:
Under that limited scenario where the error was failure to apply the proper standard,

[00:15:45] Speaker 05:
We're not advocating that we'd be entitled to outright reversal should the court rule only on that.

[00:15:52] Speaker 00:
Has there been a ruling on conception here?

[00:15:54] Speaker 00:
No, Your Honor.

[00:15:55] Speaker 00:
So there'd have to be a rule.

[00:15:57] Speaker 00:
If we disagreed with the board on diligence, there would have to be a ruling on conception below, correct?

[00:16:03] Speaker 00:
Yes, there would be, Your Honor.

[00:16:06] Speaker 02:
All right.

[00:16:06] Speaker 02:
Thank you, Mr. Freitas.

[00:16:08] Speaker 02:
Ms.

[00:16:08] Speaker 02:
Fishman?

[00:16:19] Speaker 03:
this is one of you please start with the procedural questions because we want to make sure that we understand what should happen in the various circumstances.

[00:16:27] Speaker 03:
I believe the first one the one that Judge Shaw asked was, what if we affirm on everything except claim construction, then what happens?

[00:16:34] Speaker 04:
So Your Honor, I think it depends on what you decide with respect to claim construction.

[00:16:39] Speaker 04:
And to be clear, we don't think you reach claim construction because any... Stop.

[00:16:44] Speaker 03:
Just answer my question.

[00:16:46] Speaker 04:
If you decide, depending on how you decide claim construction,

[00:16:50] Speaker 04:
if the court were to read in a method of manufacture limitation into the interpretation of... OK, you're talking way too long.

[00:16:58] Speaker 03:
This is such a simple question to answer.

[00:17:00] Speaker 03:
Say we agree with them on passages.

[00:17:02] Speaker 03:
Boom.

[00:17:03] Speaker 03:
Claim construction.

[00:17:04] Speaker 03:
Now, we agree with them on the whole exclusion of passages.

[00:17:07] Speaker 03:
Correct.

[00:17:07] Speaker 03:
Because that's their argument on construction.

[00:17:10] Speaker 03:
So if we agree with that, but yet we affirm on diligence and we affirm on translation, what happens?

[00:17:18] Speaker 03:
What he said, to make it even easier for you, is that JP-551 is now no longer an issue under those circumstances because if we say the claim excludes passages, then JP-551 could not have rendered unpatentable.

[00:17:35] Speaker 04:
I understand, Your Honor.

[00:17:36] Speaker 04:
That's incorrect.

[00:17:37] Speaker 04:
There were no findings that JP-551 was a passage but not a perforation below.

[00:17:42] Speaker 04:
That record was not developed.

[00:17:44] Speaker 04:
What we know is that JP-551 has an opening or a slit.

[00:17:48] Speaker 04:
And under any reasonable construction, whether it's a perforation or a passage, JP-551 should on its face meet the limitation of the claim.

[00:17:56] Speaker 03:
OK, but the board didn't find that, right?

[00:17:58] Speaker 03:
So I guess what we're trying to figure out is if that's the configuration that we end up in, affirming on diligence, affirming on translation, but reversing on claim construction,

[00:18:07] Speaker 03:
then do you agree that the appropriate thing to do is to vacate and remand under those circumstances?

[00:18:11] Speaker 04:
Not necessarily, Your Honor.

[00:18:13] Speaker 03:
No, because- You want us to make a fact finding about whether a slit is the same thing as a perforation, but not a passage?

[00:18:20] Speaker 03:
If there has to be a difference between perforations and passages, you want us to, in the first instance, decide whether a slit is a perforation on the one hand or a passage on the other?

[00:18:31] Speaker 04:
Your Honor, I guess- The tone in my voice should tell you the uncertainty with which I think your answer might fall.

[00:18:36] Speaker 04:
I mean, Your Honor, I think it's proper to remand.

[00:18:38] Speaker 04:
I don't think it's improper to remand.

[00:18:40] Speaker 04:
But from the face of the document itself, assuming there's no other limitation read in to the claim, from the face of the document itself, under any ordinary construction of perforation or passage, JP 551 would satisfy it.

[00:18:55] Speaker 01:
But a passage is gone.

[00:18:58] Speaker 01:
We're assuming passage is gone.

[00:18:59] Speaker 01:
Sure.

[00:19:00] Speaker 01:
So you're saying perforation.

[00:19:01] Speaker 04:
Correct.

[00:19:02] Speaker 01:
Alone.

[00:19:03] Speaker 01:
As the board read what perforations were,

[00:19:06] Speaker 01:
Correct.

[00:19:07] Speaker 01:
That this slit is a perforation.

[00:19:09] Speaker 04:
Correct.

[00:19:09] Speaker 04:
Even PST's own expert conceded in deposition that a perforation is an opening.

[00:19:14] Speaker 04:
As long as a perforation is an opening, JP551 discloses an opening.

[00:19:18] Speaker 00:
But doesn't the board have to make this, if the case went this direction, doesn't the board have to make this determination in the first instance?

[00:19:26] Speaker 00:
Because there has been no finding, the board might well agree with your arguments or might disagree.

[00:19:33] Speaker 00:
But we can't, I don't think we can sit here and say that if a perforation is all that there can be, that what the result is, it has to go back.

[00:19:46] Speaker 04:
I don't disagree that it would be appropriate to remand.

[00:19:49] Speaker 04:
My point is, if it's so clear on its face, I also... But we can't.

[00:19:53] Speaker 00:
But even if it's clear on its face, it has to be clear on its face, I think, to the board.

[00:19:59] Speaker 00:
OK.

[00:20:00] Speaker 03:
OK.

[00:20:01] Speaker 03:
So I think I understand your argument.

[00:20:02] Speaker 03:
But let me just double check one more thing.

[00:20:04] Speaker 03:
My clerk just indicated that there are claims that don't involve the perforation limitation, just to make sure.

[00:20:11] Speaker 03:
So even if we sent it back under perforation,

[00:20:15] Speaker 03:
There are other claims for which, if we were going to affirm what the board did vis-a-vis diligence, then we would be affirming the.

[00:20:23] Speaker 03:
So you would end up with a split decision, right?

[00:20:26] Speaker 03:
We would be affirming the decision on the non-perforation claims, and we would be vacating remanding as to the perforation claims.

[00:20:33] Speaker 04:
So only two of the claims at issue below have the limitation of a perforated jaw.

[00:20:38] Speaker 04:
That's correct.

[00:20:39] Speaker 02:
All right.

[00:20:40] Speaker 04:
And also, I appreciate that you understand our position.

[00:20:44] Speaker 04:
PST raised all sorts of arguments regarding a perforated jaw below, all of which were rejected by the board.

[00:20:50] Speaker 04:
It never raised an argument that a perforation should be limited or that a perforated jaw should be limited by its method of manufacture, which is what they're advocating here.

[00:20:59] Speaker 04:
So in terms of the location of a perforation, whether a perforation can release steam, whether a perforation needs to be located in a particular position on the jaw in order to release steam,

[00:21:10] Speaker 04:
Whether it has to release a vapor layer or just release steam, all of those issues were presented below.

[00:21:15] Speaker 04:
All of those issues were ceded to by their expert in deposition and ultimately the board rejected it based on their own expert's admission finding that the slit of JP551 is capable of releasing steam, therefore it meets the limitation of the perforated jaw.

[00:21:33] Speaker 04:
So in our view, it's waived, but understanding the procedural question your honor has asked.

[00:21:40] Speaker 01:
I thought what he said was it meets the limitation of the perforated draw if you assume that perforations are, that passages are a subset of perforations, which he didn't agree with.

[00:21:55] Speaker 04:
That's one interpretation of the board's final written decision.

[00:21:59] Speaker 04:
Another interpretation of that same passage

[00:22:02] Speaker 04:
is that it was based on their interpretation that as long as some steam is released by the perforated jaw, it satisfies the limitation.

[00:22:10] Speaker 03:
Yeah, but the problem is if we conclude that there is the equivalent of a disclaimer here, if we conclude that the patentee acted as his own lexicographer and said, whatever perforations are, they don't include passages, then the board has to, if we conclude that, which is what they're arguing, then the board has to be wrong.

[00:22:27] Speaker 03:
Because passages would allow steam, and if he has expressly carved passages out,

[00:22:32] Speaker 03:
of what could otherwise be perforations, then the answer can't just be anything that lets steam through is a perforation.

[00:22:40] Speaker 04:
I understand your position.

[00:22:41] Speaker 03:
OK.

[00:22:42] Speaker 03:
So if you don't mind, would you turn to some of these diligence arguments?

[00:22:46] Speaker 04:
Yes, please.

[00:22:47] Speaker 04:
If I could first respond to some of the factual assertions that Mr. Freitas made.

[00:22:52] Speaker 01:
First, can we just get the weekend off the table?

[00:22:54] Speaker 01:
That was silly, right?

[00:22:55] Speaker 04:
It's ridiculous.

[00:22:55] Speaker 04:
And that was not something that we had advocated in our briefing below, but even without the

[00:23:02] Speaker 04:
that period of time.

[00:23:04] Speaker 04:
In a three-month period, there are more than 72 days of unexplained inactivity.

[00:23:11] Speaker 04:
The board focuses on 39 of those days in which the application is in Dr. Najat's hands, not in Mr. Heslin's hands.

[00:23:18] Speaker 04:
That is not disputed.

[00:23:20] Speaker 04:
With respect to the facts your honor Judge O'Malley you had asked about doesn't he need corroboration?

[00:23:27] Speaker 03:
Wait when you see the board focuses on periods when it's in whose hands?

[00:23:30] Speaker 03:
Dr. Nijat's hands.

[00:23:32] Speaker 03:
No, but Mr. Okay, Mr. Heslund, no the third period I understand it to begin when Mr. Heslund sends Dr. Nijat the second draft.

[00:23:42] Speaker 04:
Correct.

[00:23:42] Speaker 03:
Then I understand that period to end

[00:23:45] Speaker 03:
when Mr. Heslin files the patent application.

[00:23:48] Speaker 03:
That is correct.

[00:23:48] Speaker 03:
So your statement, I think, is factually wrong, right?

[00:23:52] Speaker 03:
Because Mr. Nezhat did not file the patent application.

[00:23:56] Speaker 04:
So it appears to correct.

[00:23:57] Speaker 03:
So your statement was factually wrong that the third gap is entirely when the application was in Mr. Nezhat's hands, because the attorney was the one filing the application.

[00:24:07] Speaker 03:
So his actions, prompting filing, licking the envelope closed, putting the stamp on it, whatever happened,

[00:24:13] Speaker 03:
That was the attorney's action.

[00:24:15] Speaker 04:
So the 17 days from April 14th to April 30th, there's no evidence that Dr. Najat ever sent the application back to Mr. Heslin.

[00:24:23] Speaker 03:
Yes, but we know that Mr. Heslin did something because he filed it.

[00:24:26] Speaker 04:
Correct.

[00:24:27] Speaker 04:
On May 1st.

[00:24:29] Speaker 04:
On May 1st.

[00:24:30] Speaker 03:
So I don't understand.

[00:24:32] Speaker 03:
So in order to file something, you've got to lick an envelope.

[00:24:35] Speaker 03:
You've got to put a stamp on it.

[00:24:36] Speaker 03:
You've got to finalize it.

[00:24:36] Speaker 03:
You've got to write a check.

[00:24:38] Speaker 03:
There's all kinds of stuff you've got to do to file a patent application.

[00:24:41] Speaker 04:
I understand that.

[00:24:42] Speaker 04:
But there are no differences that we can see between the second application that was sent.

[00:24:46] Speaker 03:
I agree.

[00:24:47] Speaker 03:
I looked as well.

[00:24:48] Speaker 03:
I worded it right back and forth.

[00:24:49] Speaker 03:
There's no good red line that comes out of it.

[00:24:51] Speaker 03:
So clearly, Mr. Nezhat didn't offer any comments between the second draft and the final application.

[00:24:56] Speaker 04:
And importantly, there's not a single time entry reflected in Mr. Hezlin's records.

[00:25:01] Speaker 04:
for that period April 14th to April 30th.

[00:25:04] Speaker 04:
So your point is, could it have been sent back to Mr. Heslin in the April 14th through 30th period, and it have been in his possession?

[00:25:11] Speaker 03:
No, it has to have been, because we know Mr. Nezhat didn't file the application, correct?

[00:25:17] Speaker 04:
Correct.

[00:25:17] Speaker 04:
On May 1st, Mr. Heslin filed the application.

[00:25:20] Speaker 03:
So we know that Mr. Heslin, the attorney, and that's part of the gap period, right?

[00:25:25] Speaker 04:
No, that's not part of the gap period.

[00:25:26] Speaker 04:
That was my point, Your Honor.

[00:25:28] Speaker 04:
The gap period that the board, actually the board

[00:25:31] Speaker 04:
The gap period is April 14th to April 30th.

[00:25:34] Speaker 04:
Hezlin files on May 1st.

[00:25:36] Speaker 04:
So we don't know what happened exactly.

[00:25:38] Speaker 04:
There's no evidence of any time entry records.

[00:25:41] Speaker 04:
It could be that, I mean, it's all speculation.

[00:25:43] Speaker 04:
Perhaps he just decided to go ahead and file.

[00:25:45] Speaker 04:
Perhaps he had a phone conversation with Dr. Najat saying, do you have any comments?

[00:25:50] Speaker 04:
I want to get this thing on file.

[00:25:51] Speaker 04:
We don't know.

[00:25:52] Speaker 04:
We don't know what happened.

[00:25:53] Speaker 04:
So the inactivity, we're presuming, because nothing was ever sent back, that it was in Dr. Najat's hands, and we don't see any

[00:26:00] Speaker 04:
evidence of activity by Mr. Heslin in that period.

[00:26:03] Speaker 04:
Mr. Heslin has no recollection beyond his time records and his time records reflect no activity.

[00:26:08] Speaker 04:
So of course on May 1st he had to take some steps to do something.

[00:26:12] Speaker 04:
But May 1st isn't included in the 17-day gap after the application was sent to Dr. Najat and before Mr. Heslin filed.

[00:26:20] Speaker 00:
You're saying the days that Mr. Heslin was active as the record supports it don't correspond to the gaps of the board.

[00:26:30] Speaker 04:
That is absolutely correct.

[00:26:32] Speaker 04:
And even days when it was in Mr. Heslin's possession and there was no activity do not correspond to the findings by the board.

[00:26:40] Speaker 04:
So when the board is making its findings about the periods of inactivity, there is evidence in the record that the application was in Dr. Najat's possession.

[00:26:51] Speaker 04:
And that has not been contested by PST.

[00:26:55] Speaker 01:
So is it your position that he would have to show activity every single day?

[00:27:00] Speaker 04:
It is, no, that's not our position.

[00:27:01] Speaker 04:
Our position consistent with this court's precedent is that he would have to account for his time spent on the application essentially every day.

[00:27:10] Speaker 04:
But you don't have to get to the everyday.

[00:27:11] Speaker 01:
I mean, that is your argument.

[00:27:12] Speaker 01:
Because you say Mulder's, I mean, the way you read Mulder is that if he even missed a day or two days, he's done.

[00:27:19] Speaker 04:
But those aren't the facts here.

[00:27:20] Speaker 04:
I don't think we have to get to that extreme.

[00:27:22] Speaker 03:
This court's precedent is that you have to... When you say those aren't the facts, but that does seem to me clearly the way the board was viewing the state of the law, whether it's based on your arguments to them or their own...

[00:27:34] Speaker 03:
reading of Mulder, because they did cite the two-day gap, which was a weekend, and faulted him for not acting on over a weekend on it, and not being able to demonstrate what he did that weekend.

[00:27:46] Speaker 03:
And so the board clearly was thinking even that two-day gap is something about which he has to be accountable.

[00:27:52] Speaker 04:
I think if there's no explanation.

[00:27:54] Speaker 04:
If there's no explanation.

[00:27:56] Speaker 03:
Do you think that if you're prosecuting a patent application, you have to show that you worked over the weekend on it?

[00:28:01] Speaker 04:
But this wasn't Hessel, and this was Dr. Nashot.

[00:28:03] Speaker 04:
Do you think that Dr. Najat has to show that he worked on the prosecution of early days?

[00:28:06] Speaker 03:
I don't personally know.

[00:28:06] Speaker 04:
I don't think a two-day gap in a three-month critical period should be what we rise and fall on.

[00:28:14] Speaker 04:
But those aren't the facts here.

[00:28:15] Speaker 04:
The facts here are there is no, not just no corroboration, there's no direct testimony of any day in the critical period between February 10th and March 2nd when Dr. Najat worked on the application.

[00:28:28] Speaker 04:
Dr. Nujat himself testified that he couldn't recall any specific day or any specific activity in that period.

[00:28:35] Speaker 01:
Well, it is 15 years later.

[00:28:38] Speaker 04:
That may be, but it's also the burden is on the patentee if they want to swear behind prior and to date their invention to come forward with evidence that's specific as to facts and dates.

[00:28:52] Speaker 01:
I appreciate the fact that you don't think it should, that two days over a three-month period should

[00:28:58] Speaker 01:
should be enough to damn the ability to prove that they could swear behind.

[00:29:03] Speaker 01:
But what we're concerned about is that the board seemed to think that.

[00:29:08] Speaker 01:
And the board seemed to think that the law was something different than it appears to be.

[00:29:14] Speaker 01:
And so should we say, well, the board made legal errors, but they're harmless?

[00:29:20] Speaker 04:
I don't I guess I have a different reading the board's decision because I do not see where the board said two days is enough I understand that they point to this period of inactivity, but they look at it collectively and the recitation of Federal Circuit precedent and

[00:29:36] Speaker 04:
seemed on point and the fact of the matter is what we have here is very much like what you see in Kendall versus Searles and in Gould versus Shallow where you've got an inventor who says and abares and even has in those cases other testimonies saying they worked on it continuously or there were no weeks or months that they couldn't show work on it.

[00:29:57] Speaker 04:
There was oral testimony.

[00:29:59] Speaker 04:
But they've never provided any evidence in terms of facts of what was done and on what dates.

[00:30:05] Speaker 04:
There's not a single date between February 10th and March 2nd that Dr. Najat can say that he was working on the patent.

[00:30:11] Speaker 01:
Are inventors allowed to have a life or a career outside of working on the patent?

[00:30:16] Speaker 04:
Of course they are, but they need to be able to explain what it is that they're doing, why it is they set aside the application.

[00:30:22] Speaker 04:
And in cases where they decide to set aside the application because it's not their top priority or focus in life.

[00:30:27] Speaker 03:
But he clearly didn't set aside the application because what we do have from the record is that at the end of that period, he sent comments, because we have what?

[00:30:37] Speaker 03:
Facts, transcibelies, or something.

[00:30:39] Speaker 03:
Some sort of transmission indication that on March 2nd, 1998, he sent comments on the first draft.

[00:30:47] Speaker 03:
Then immediately afterwards, we have Mr. Heslin dictating questions about those comments to him.

[00:30:54] Speaker 03:
So clearly, he was working.

[00:30:56] Speaker 03:
He did produce comments.

[00:30:57] Speaker 03:
We have no idea whether they were one page or 20 pages long.

[00:31:00] Speaker 03:
But we do know that during that period, he produced comments.

[00:31:02] Speaker 03:
So your point is well taken that he can't document on which day he reviewed the application, on which day he drafted the comments.

[00:31:09] Speaker 03:
But we know that during that period, he did them.

[00:31:11] Speaker 03:
So why isn't that enough?

[00:31:13] Speaker 03:
Why does he have to look backwards

[00:31:15] Speaker 03:
to 1998, 18 years ago, when he can establish he did do stuff during that period, why do we force him to say, on which day did you do it?

[00:31:24] Speaker 04:
It's not just on which day did you do it, but what did you do?

[00:31:27] Speaker 04:
We don't know specifically what he did.

[00:31:29] Speaker 03:
Well, we know he produced comments.

[00:31:31] Speaker 03:
We know that those comments caused Mr. Heslin to dictate questions to go back as a follow-up on those.

[00:31:37] Speaker 03:
And what we do know, unlike the period from the second draft to the final application, where there appeared to be a single word change,

[00:31:43] Speaker 03:
We know there was an enormous number of changes between the first and second draft, because I redlined that one too.

[00:31:48] Speaker 03:
So we do know that there were a lot of changes between the first and second draft.

[00:31:53] Speaker 04:
And you're surmising that those changes came directly from Dr. Najat's comments.

[00:31:58] Speaker 04:
We don't know whether it's true.

[00:31:59] Speaker 03:
Mr. Hesslin said that.

[00:32:00] Speaker 03:
That's in the record.

[00:32:01] Speaker 03:
He said some of the changes.

[00:32:02] Speaker 03:
No, in the record, he said that expressly.

[00:32:05] Speaker 03:
That is record evidence that Mr. Nezhat's comments caused him to make changes to the draft.

[00:32:10] Speaker 04:
That's true, but we don't know.

[00:32:11] Speaker 04:
It's true he changed the draft.

[00:32:13] Speaker 04:
We don't know whether all of the changes in the draft were the direct result of Dr. Najat's comments, or also Mr. Heslin, including additional matter.

[00:32:22] Speaker 03:
OK, so you're making very good points about the facts of this case.

[00:32:25] Speaker 03:
But I just want to step up and just question the law for a second.

[00:32:29] Speaker 03:
Yes.

[00:32:32] Speaker 03:
One of your arguments is that you have to be accountable precisely by day and time.

[00:32:37] Speaker 03:
And you find support for that argument in some language in some cases.

[00:32:41] Speaker 03:
But suppose that the facts were the critical period was five days long the start of the Apple critical period you received an application on the fifth day You sent 20 pages of comments to your attorney, but suppose that the man says look I can't tell you which of the five days I did this on I mean I did him over a five-day period you see these are radically different facts than yours but what I'm trying to get at is whether or not really we would ding in at an applicant and

[00:33:07] Speaker 03:
for his inability to tell us upon which day he did it when there is no question he would have done it.

[00:33:12] Speaker 03:
And I know those are not the facts of this case.

[00:33:14] Speaker 03:
So don't worry.

[00:33:15] Speaker 03:
I just want to get at the legal point of, are we really going to hold him accountable for a day and time stamp in circumstances in every case?

[00:33:22] Speaker 04:
Right.

[00:33:23] Speaker 04:
And so legally, precedentially, this court's law is that you can't surmise.

[00:33:30] Speaker 04:
Ireland versus Smith is you can't surmise.

[00:33:33] Speaker 04:
But it's all driven by the public policy of,

[00:33:36] Speaker 04:
Not only do we want to reward inventions and who's first to invent, but we want to encourage the filing of patents because we believe that it's patents that drive innovation, drive industry and the like.

[00:33:48] Speaker 04:
So I think your question in a vacuum is very difficult to answer because if the facts of that case were that on the whole the inventor, the first to invent were diligent and didn't delay patent filing,

[00:34:04] Speaker 04:
and there wasn't an intervening period where somebody else came in and had started, and there was actual activity in a very short period where there was a lack of diligence and there was some reason for it, or you could surmise that they were working away on it.

[00:34:17] Speaker 04:
In your discretion as a judge, you may find that that still advances the public policy balance that the court seeks to set.

[00:34:27] Speaker 04:
Here, the facts are different.

[00:34:29] Speaker 04:
I mean, the facts are different.

[00:34:29] Speaker 03:
You think, as a judge, I have the right to decide cases based on whether I think they advance public policy interests?

[00:34:36] Speaker 04:
I think, as a judge, you have the right, and the board below had the right, as a factual matter, to determine whether or not, on the whole of the evidence, Najat was reasonably diligent.

[00:34:47] Speaker 04:
And in the context of Mulder, it was not reasonable, because the critical period was two days.

[00:34:52] Speaker 03:
No, actually, in the context of Mulder, what the court said in its holding,

[00:34:56] Speaker 03:
was there is no evidence of any activity during a two-month period, not a two-day period, two-month period.

[00:35:02] Speaker 03:
It just so happens that two days of that two-month period were involved in the critical period.

[00:35:06] Speaker 03:
But what they really faulted them for was no evidence of any activity of any kind during two months.

[00:35:12] Speaker 04:
But there are cases, and we cited them in your brief, Your Honor, where

[00:35:15] Speaker 04:
there's a 17-day period or less, and courts rely on a much shorter period of inactivity than you find here to say there is an absence of diligence.

[00:35:25] Speaker 04:
And my point is that... I think we have your argument.

[00:35:27] Speaker 03:
Thank you very much, Ms.

[00:35:28] Speaker 03:
Fishman.

[00:35:28] Speaker 03:
We are way over time.

[00:35:29] Speaker 03:
I went about three and a half minutes over with Ms.

[00:35:33] Speaker 03:
Fishman, so let's equal out the time for Mr. Freitas.

[00:35:38] Speaker 03:
So you can try to...

[00:35:41] Speaker 03:
You don't have to use it all, but if you want to... I'd just like to make two points, Your Honor.

[00:35:46] Speaker 05:
The first is that... We pointed this out in our brief, but Mr. Heslin did explain how his office process worked back then.

[00:35:54] Speaker 05:
And there was often... Eight days in word processing.

[00:35:57] Speaker 03:
Yeah, I know.

[00:35:58] Speaker 05:
That was reality back then.

[00:36:00] Speaker 05:
The other thing is, these are factual inquiries.

[00:36:03] Speaker 05:
And that's why the Board's legal errors are so critical.

[00:36:07] Speaker 05:
The Board adopted the wrong stance.

[00:36:09] Speaker 05:
in looking at the evidence.

[00:36:11] Speaker 05:
It didn't consider it all.

[00:36:12] Speaker 05:
It didn't look at it as a whole.

[00:36:14] Speaker 05:
And that's why we submit it.

[00:36:16] Speaker 03:
Well, so your point, just to make sure that I understand it clearly, your point about Mr. Heslin is Mr. Heslin testified expressly.

[00:36:25] Speaker 03:
And you say this in the gray brief at page five.

[00:36:28] Speaker 03:
Mr. Heslin testified expressly.

[00:36:30] Speaker 03:
that before he could file an application, he would send the final draft to word processing.

[00:36:35] Speaker 03:
And it would routinely take up to eight days for them to get it perfect before he could send it.

[00:36:40] Speaker 03:
And he testified that that was his everyday process.

[00:36:46] Speaker 03:
And so that would explain why, at least for the third gap.

[00:36:50] Speaker 03:
It actually matters if the board refused to consider what Mr. Heslin did and looked only at what Mr. Nezhat did.

[00:36:56] Speaker 03:
That legal error would actually matter.

[00:36:58] Speaker 05:
Yes, Your Honor, along with the other ones.

[00:37:00] Speaker 05:
And we say fundamentally the stance the board took was wrong in two or three critical ways that we pointed out.

[00:37:07] Speaker 05:
We think that it infected the way they looked at the evidence.

[00:37:11] Speaker 05:
It created an unrealistic approach.

[00:37:14] Speaker 03:
And so let me ask you this.

[00:37:15] Speaker 03:
Suppose that the second gap is off the table because it's just truly absurd.

[00:37:20] Speaker 03:
Suppose the third gap is sort of off the table in that Mr. Heslin testified that it would have taken him roughly eight days to process the application for submission and that I find the board erred in refusing to consider Mr. Heslin's activity during those periods.

[00:37:37] Speaker 03:
Suppose that that's the case.

[00:37:39] Speaker 03:
So then we go back to the first

[00:37:41] Speaker 03:
Suppose that I think that you don't have anything on the first gap.

[00:37:44] Speaker 03:
But do you think that I should still vacate and remand, because it's really the board's job in the first instance to consider the entire period overall?

[00:37:51] Speaker 03:
And once they're aware of their errors with regard to gap two and gap three, they could possibly reach a different conclusion on gap one?

[00:37:56] Speaker 05:
Yes, Your Honor.

[00:38:00] Speaker 03:
Anything further?

[00:38:01] Speaker 03:
No, Your Honor.

[00:38:05] Speaker 03:
OK.

[00:38:06] Speaker 03:
OK.

[00:38:06] Speaker 03:
uh... and thank you the cases taken under submission