[00:00:02] Speaker 03: Okay. [00:00:04] Speaker 03: We have four argued cases on the docket today, all patent cases from different fora, but each one is a patent case. [00:00:13] Speaker 03: I want to thank the parties and the clerk's office for accommodating the request to start early today, and I especially want to thank my panel members since I was the one behind it. [00:00:28] Speaker 03: But in any event, [00:00:29] Speaker 03: The first case on the docket is Vapour Point v. Moorhead, docket number 15-1801. [00:00:37] Speaker 03: That is an appeal from the District Court in the Southern District of Texas. [00:00:43] Speaker 03: Mr. Ramey, you want two minutes for rebuttal? [00:00:46] Speaker 03: Okay, you may proceed. [00:00:54] Speaker 05: Good morning Judge O'Malley and Judge Stoll. [00:00:56] Speaker 05: My name is Bill Ramey and I represent the appellants, Nana Wicker-Ink, Elliott Moorhead, and Brian Hittman in this appeal. [00:01:03] Speaker 05: And I'd like to reserve two minutes for my rebuttal. [00:01:06] Speaker 05: If I could use the court may I begin? [00:01:07] Speaker 05: Yes. [00:01:08] Speaker 05: The issues in this appeal can be summarized as two main issues. [00:01:12] Speaker 05: Were appellants denied their right to a jury trial an opportunity to be heard on the issues of ownership, including obligation to a sign in their infringement claims? [00:01:21] Speaker 05: We contend that they were. [00:01:22] Speaker 05: And secondly, [00:01:23] Speaker 05: was the district court's determination of inventorship based on clear evidence and we can contend that it was not. [00:01:30] Speaker 03: Let me address the first issue as long as you mentioned that first. [00:01:33] Speaker 03: Yes, sure. [00:01:34] Speaker 03: I'm a little perplexed here because you say that the parties assigned their rights and therefore you can sue them even if they are co-inventors. [00:01:48] Speaker 03: Is that right? [00:01:50] Speaker 05: Yes, sure. [00:01:50] Speaker 05: And we have contentions that there are obligations to assign. [00:01:53] Speaker 03: Okay. [00:01:54] Speaker 03: So, obligations to a sign. [00:01:56] Speaker 03: Now, I've looked at the transcript. [00:01:59] Speaker 03: I also looked at your post-trial motion for a new trial. [00:02:03] Speaker 03: And in each of those, it's clear that everyone agrees there's no writing, no assignment in writing. [00:02:09] Speaker 03: Right? [00:02:10] Speaker 05: There's no signed employment agreement that were, Your Honor, if I may, employment agreements that the parties... I understand that. [00:02:16] Speaker 03: But doesn't Section 261 of the Patent Act require a writing? [00:02:21] Speaker 05: Yes, Your Honor. [00:02:21] Speaker 05: Except in cases where an inventor is hired to do a specific task, such as develop certain technologies was the case here, mainly Matheson and Nathan was brought on to do testing. [00:02:33] Speaker 05: When that's the case, the court can infer an obligation to assign those inventions to the company. [00:02:38] Speaker 03: But that is only to serve as an equitable defense to the company if the company were to be sued for practicing the invention. [00:02:45] Speaker 03: Isn't that true? [00:02:46] Speaker 05: I think it extends beyond the shop right charge. [00:02:48] Speaker 05: My understanding is that there [00:02:49] Speaker 05: is that the court can attach legally an obligation to a sign when there are those facts, when the party was hired either. [00:02:56] Speaker 03: So what do you cite for that proposition, that it actually gives you standing to assert an infringement claim without a written document? [00:03:05] Speaker 05: We cite back to, pardon me, Your Honor, we cite back to... [00:03:14] Speaker 05: The cases we cited in our brief is what we'll stand on, but the obligation to assign was found at A0629 of the appellate record, and there's the case in assignment. [00:03:23] Speaker 05: I'm not actually carrying a site for that. [00:03:26] Speaker 05: When people operate as officers of a company, that's another instance, Your Honor. [00:03:30] Speaker 05: In this case, both Meth, Massathon, and Nathan had positions as officers of the company, and they were actually hired to invent, and they were inventing that subject matter, what was the company's sole product at the time. [00:03:43] Speaker 03: And that's another instance where the courts can't... Well, I'm going to need the case citation because my understanding of the case law is different from yours. [00:03:49] Speaker 03: I mean, we can't just ignore Section 261 that requires a writing. [00:03:53] Speaker 03: The only time that you can have the equitable obligation to a sign is when you are asserting it as an equitable defense. [00:04:02] Speaker 03: Yes, Your Honor, so even if we get... But you haven't been sued for infringement. [00:04:05] Speaker 05: No, Your Honor, we have not. [00:04:07] Speaker 03: Okay, but you understand that there's a distinction between conferring standing on someone [00:04:12] Speaker 03: and actually having the right to assert an equitable defense? [00:04:17] Speaker 05: Yes, Your Honor. [00:04:17] Speaker 05: I understand that there's a difference, and I still maintain that there is an obligation to a sign in the law. [00:04:22] Speaker 05: That that does port over, that the courts can recognize that the person that was hired was operating pursuant to an employment agreement. [00:04:30] Speaker 05: This is Texas Fifth Circuit law, that they're operating pursuant to an employment agreement, that they had an obligation to a sign. [00:04:35] Speaker 05: If they were paid under that law, if they're paid under that contract, if they were operating under that contract carrying business cards, [00:04:43] Speaker 05: performing of that contract, then they were performing according to the terms of that employment agreement. [00:04:47] Speaker 05: And that employment agreement maintained that they had an obligation to assign. [00:04:51] Speaker 05: To go further into the evidence in this case, Your Honors, Nathan, in fact, did sign a prospective hire agreement and only didn't sign the final agreement that was handed to him, the employment agreement. [00:05:02] Speaker 03: He had basically... Was there an assignment of any future [00:05:08] Speaker 03: Inventorship rights in that prospective higher agreement? [00:05:11] Speaker 05: Not specifically, no, Your Honor. [00:05:12] Speaker 05: Not in the state. [00:05:13] Speaker 05: It's the appellants and innovators. [00:05:15] Speaker 03: OK. [00:05:15] Speaker 03: But you would agree then, to the extent that 261 applies, you don't have a writing? [00:05:22] Speaker 05: There is no writing expressed. [00:05:23] Speaker 05: Yes, Your Honor. [00:05:25] Speaker 05: OK. [00:05:25] Speaker 05: OK. [00:05:26] Speaker 05: And to go, if we wanted to go back to where it was in the arguments, it's fundamental that the right to a jury trial is supposed to be a fundamental right and a constitutional right under the Seventh Amendment [00:05:37] Speaker 05: That implies both an opportunity for a jury trial and at least the opportunity to be heard. [00:05:42] Speaker 05: In this particular case, there's no question that NanoVapor pled issues of ownership and obligation to a sign if the party invented it. [00:05:51] Speaker 05: There's no question that that was pled in both the original answer to the first amended complaint and going back to the original answer to the original complaint. [00:06:00] Speaker 05: It appears, I'm sorry, go ahead. [00:06:01] Speaker 04: You're relying on your affirmative defenses. [00:06:04] Speaker 04: that you had when you were talking about you pledded or are you saying that you pledded in the context of infringement? [00:06:10] Speaker 05: We pledded in the context is, regardless of what this court determines on the case of inventorship, there's still an obligation to assign for the company. [00:06:19] Speaker 04: Where's that? [00:06:20] Speaker 04: The obligation to assign comes from... What page in the record are you relying on for that? [00:06:23] Speaker 05: Yes, Your Honor, the obligation to assign comes from... We're going back to the obligation to assign. [00:06:30] Speaker 05: It comes back from A0629. [00:06:33] Speaker 05: Your Honor, as we talk about it there, [00:06:35] Speaker 05: And if we go back to the employment issues, Your Honor, which was not developed by the court. [00:06:45] Speaker 05: It was never brought up for hearing or an opportunity to be heard. [00:06:48] Speaker 05: Those employment issues. [00:06:50] Speaker 03: 0629 is your motion for a new trial. [00:06:54] Speaker 03: So where in the pleadings do you plead an obligation to assign? [00:06:59] Speaker 04: In your fourth amended complaint, the different complaints, [00:07:02] Speaker 04: any of your complaints, which one? [00:07:04] Speaker 05: Well, pardon me, pardon me, Your Honor. [00:07:06] Speaker 05: At A077 is the answer to the original complaint, my apologies. [00:07:10] Speaker 05: And then A00163, paragraph 108 to 117, are where we raise those issues. [00:07:18] Speaker 05: I'm sorry, I'm missing this. [00:07:19] Speaker 05: What was that site again? [00:07:20] Speaker 05: Yes, A0163, Your Honor. [00:07:23] Speaker 05: Paragraph 108 to 117 is the answer to the first amended complaint. [00:07:28] Speaker 05: And then the answer to the original complaint is [00:07:31] Speaker 05: Document A0077, paragraphs 27 and 38. [00:07:36] Speaker 04: Which paragraph are you relying in? [00:07:39] Speaker 05: 115 through 117, permit, Your Honor, of the original answer to the first submitted complaint. [00:07:46] Speaker 05: And then 27 and 38 are where it tracks from in the original answer, so that the issue was brought up. [00:07:53] Speaker 05: The employment issues, if I may, Your Honors, are discussed at A0573, and the record [00:08:00] Speaker 05: there's some evidence brought up on employment issues. [00:08:02] Speaker 05: It wasn't specifically addressed because we read a section 256 hearing where only inventorship was discussed, but there is some record evidence of that at A0573. [00:08:13] Speaker 04: One of the things the district court found was waiver, right, of this issue? [00:08:18] Speaker 04: Yes, Your Honor. [00:08:19] Speaker 04: So looking at page A1481, which is part of the transcript in the [00:08:28] Speaker 04: proceedings before the district court. [00:08:30] Speaker 04: There's a statement there that says this issue is ultimately most likely dispositive to the other issue, now just infringement. [00:08:40] Speaker 04: What did you mean by that? [00:08:41] Speaker 04: This issue is ultimately most likely dispositive? [00:08:44] Speaker 05: Yes, Sharon. [00:08:45] Speaker 05: We assumed that the inventorship determination from the hearing was turned out in favor of Moore had been confirmed as the sole inventor. [00:08:52] Speaker 05: And that's what I meant by that. [00:08:53] Speaker 05: And so I clearly indicated to the court at that point that it wasn't [00:08:58] Speaker 03: No, you said it would most likely be dispositive if the court ruled against you, not in your favor. [00:09:04] Speaker 04: Yes, it's ultimately most likely dispositive at that point if it's decided against NANO-B. [00:09:10] Speaker 05: And then you go on to the next sentence. [00:09:12] Speaker 04: But what did that one sentence mean? [00:09:14] Speaker 05: Yes, Your Honor, the sentence immediately before that starts the negative, the fact that Moorhead was determined not to be an inventor decided against us. [00:09:22] Speaker 03: Then you said that would be dispositive. [00:09:25] Speaker 05: If Moorhead were left onto the patent by a sole inventor, yes, Your Honor, that's exactly what we meant there. [00:09:31] Speaker 05: What? [00:09:31] Speaker 05: Say that again. [00:09:32] Speaker 05: If Moorhead were left on as a sole inventor of the patent, that's exactly what we meant. [00:09:36] Speaker 03: The sentence says if you rule against Moorhead and NanoVapor on their request to be added to the patents, then that would be dispositive, ultimately likely dispositive. [00:09:48] Speaker 05: What the hearing says was the court asked me, what happens if I leave Moorhead on this patent? [00:09:53] Speaker 05: That's what the court's question was to me. [00:09:55] Speaker 05: And my answer back to the court was, if more is left on the patent, then ultimate issues of infringement remain. [00:10:02] Speaker 05: And that's, Your Honor, is A0743. [00:10:07] Speaker 01: Well, we're at day 1481. [00:10:08] Speaker 01: This is the August 2014 scheduling hearing. [00:10:12] Speaker 01: The August 1491. [00:10:13] Speaker 01: The judge was trying to figure out, you know, the parties are trying to encourage her to have a trial on inventorship, and she's trying to figure out [00:10:22] Speaker 01: Well, you want me to do this trial now on just inventorship. [00:10:27] Speaker 01: Is that really going to be the ball of wax, so to speak? [00:10:31] Speaker 01: And this is the moment in time where you say, well, if the inventorship question is, quote unquote, decided against nano vapor, then this inventorship issue is ultimately most likely dispositive of the case. [00:10:46] Speaker 05: Your Honor, yes. [00:10:47] Speaker 05: And ultimately, more has left on the patent. [00:10:49] Speaker 05: And that's what I indicated. [00:10:50] Speaker 05: And if Moorhead were left on the patent, I reiterated this. [00:10:53] Speaker 01: But when it says if it's decided against nanovapor, the way I read that statement is that what that must mean is that Nathan and Matheson successfully established that they are at a minimum co-inventors. [00:11:08] Speaker 01: And so therefore, your lawsuit against them dissolves. [00:11:14] Speaker 05: And, Your Honor, technically, [00:11:17] Speaker 05: what we're referring to, they had also pled for the removal of more head from the patent. [00:11:21] Speaker 05: So if that was what, if they had complete success, then it would have been dispositive as to the inventorship motion. [00:11:26] Speaker 05: We remember that waiver of the right to a jury and opportunity to be heard on an issue is something that's zealously guarded by the court because it's protected by our seventh amendment and it's protected by both our fundamental rights and our constitutional rights. [00:11:39] Speaker 05: And the courts should defer all presumption against a waiver of a right to a jury. [00:11:44] Speaker 05: And in the case where there's a question, [00:11:46] Speaker 05: That inference of evidence, whether or not the court questions whether we were given the court saying that if it was ruled partially against us or completely against us, and we meant if we were removed from the patent, but if this court were determined that if it was only ruled partially against us, I would say that the presumption that we were still denied the right to a jury trial controls, and this court must send this case back for a trial on ownership and infringement. [00:12:10] Speaker 03: But when you filed your motion for a new trial or your multiple motions for new trials, [00:12:15] Speaker 03: All you said was, because you had asserted an affirmative defense of ownership, that you therefore had this right to a trial on ownership. [00:12:25] Speaker 03: But ownership is not an affirmative defense to a 256 action. [00:12:29] Speaker 05: That's correct. [00:12:30] Speaker 05: And I think that the first and second motions stayed in that manner. [00:12:33] Speaker 05: And I believe we tried to correct that in a term that wasn't exactly an affirmative defense, but it was still brought up in the pleadings and with the liberal construction of pleadings. [00:12:41] Speaker 05: What we were saying was, look, [00:12:43] Speaker 05: Even if the inventorship determination comes against us, there's still an obligation to assign here. [00:12:48] Speaker 05: We have an opportunity to be heard on that issue before the court. [00:12:51] Speaker 05: And we weren't given that opportunity. [00:12:53] Speaker 05: We did put into before the courts and the pleading some of the evidence we would have used for obligation to assign to allow the court to judge for itself. [00:13:02] Speaker 05: The district court before it issued final judgment that there was some reason for us to go forward because we didn't take that evidence when we had the chance during discovery. [00:13:11] Speaker 05: But ultimately, the court [00:13:12] Speaker 05: determined that the inventorship hearing was dispositive of ownership, which that's never been the case before. [00:13:19] Speaker 05: The law is clear. [00:13:20] Speaker 03: No, she didn't say it was dispositive of ownership. [00:13:23] Speaker 03: What she said is that you told her that the inventorship hearing was all you wanted and that you would give up on everything else and that you never asserted an ownership claim or made it clear that that was an issue still alive in the case because she never would have gone forward with a 256 hearing in the absence of a full development of the record. [00:13:42] Speaker 05: All I can say is we specifically only dismiss those state law causes of action that the court found shared common core of factual elements with the inventorship claims. [00:13:54] Speaker 05: Those were very specific, about nine common law state causes of action that mirrored the ones brought by the plaintiffs in this action. [00:14:01] Speaker 05: We both simultaneously dismissed those to get to the inventorship here. [00:14:05] Speaker 05: We never, we never [00:14:06] Speaker 05: in any way, filed any writing. [00:14:08] Speaker 05: We never gave up our rights to have a trial or a hearing on the issues of ownership, the ultimate issue of infringement. [00:14:15] Speaker 03: OK. [00:14:15] Speaker 03: You're into your rebuttal. [00:14:17] Speaker 03: We'll give you your full two minutes, but your time is up. [00:14:21] Speaker 05: Thank you, Your Honor. [00:14:27] Speaker 00: May I approach? [00:14:28] Speaker 03: Yes. [00:14:32] Speaker 00: Justice Chan O'Malley, Stoltz. [00:14:34] Speaker 00: Good morning. [00:14:34] Speaker 00: at police the court my name is Jason we just I'm here on behalf of the appellees and the cross opponents in this matter. [00:14:43] Speaker 03: I take it that you agree with your friend on the other side that this that this equitable issue of an obligation to assign it would be sufficient to confer standing because you never argued that it wouldn't be. [00:14:56] Speaker 00: I'm sorry can you repeat the question? [00:14:58] Speaker 03: Okay I mean you did not argue that 261 [00:15:02] Speaker 03: required a written assignment, you never argued that there is no such thing as an equitable ability to confer standing. [00:15:10] Speaker 03: So I assume that means you agree with him. [00:15:12] Speaker 00: We agree that there is no standing and that any assignment would require a writing, and there was not a writing in this case. [00:15:19] Speaker 00: The standing argument that we made relates to the inventorship determination, and from that determination, they had no standing because all of the owners in the patent were not joined as plaintiffs in the suit. [00:15:30] Speaker 00: NanoVapor as the assignee of the 310 patent alone would not have had standing to proceed on an infringement claim against it. [00:15:37] Speaker 03: Well, there is a legal doctrine that addresses the question of an obligation to a sign that flows to employees or officers of companies, and yet you didn't argue that that doctrine wouldn't apply in this case. [00:15:52] Speaker 00: We never got to that point, Your Honor. [00:15:55] Speaker 00: The issues of employment, [00:15:57] Speaker 00: obligations to assign ownership were not heard by the district court. [00:16:02] Speaker 00: They were dismissed and waived. [00:16:08] Speaker 00: Okay. [00:16:08] Speaker 00: And I'm prepared to address that in more detail. [00:16:10] Speaker 00: There were state law claims in this case. [00:16:12] Speaker 00: All of the state law claims were dismissed by agreement of the parties. [00:16:15] Speaker 00: The district court correctly determined that the district court could not proceed on the inventorship claim because of overlapping factual issues with the state law claims, including ownership and assignment, which I think [00:16:26] Speaker 03: Well, she didn't actually refer to those when she said there were overlapping issues. [00:16:31] Speaker 03: She just said there are so many state law claims, there's got to be some overlapping issues. [00:16:36] Speaker 00: I believe that's generally correct. [00:16:38] Speaker 00: There were a number of state law claims, and they all were intermixed with this inventorship question as far as who contributed what, who conceived what, who was doing what during the course of this development process that contributed to the claims in the 3101862 patents. [00:16:53] Speaker 03: Well, Mr. Raimi didn't [00:16:54] Speaker 03: cite us to it. [00:16:56] Speaker 03: His complaint for infringement does include affirmative claim of ownership and it even refers to ownership by assignment or obligation to assign, does it not? [00:17:08] Speaker 00: Correct. [00:17:08] Speaker 00: There were affirmative defenses pled relating to... No, that's not a defense. [00:17:14] Speaker 03: That's in his complaint of infringement, is it not? [00:17:18] Speaker 00: I don't recall that being in his complaint of infringement and I also don't see how [00:17:23] Speaker 00: the ownership obligations with respect to employment and assignment are relevant to the infringement determination. [00:17:31] Speaker 02: Well, don't you have to plead ownership in order to plead an infringement claim? [00:17:35] Speaker 02: I mean, wouldn't that make it relevant? [00:17:37] Speaker 00: I think the ownership is inferred from the face of the patent. [00:17:42] Speaker 00: The assignee named on the patent, in this case, NanoVapor, was bringing the suit. [00:17:47] Speaker 00: So there may be an affirmative allegation. [00:17:49] Speaker 04: On page 253 of the record, paragraph 85, NanoVapor says, as part of its count of infringement of a 310 patent, that it's the owner of the right title and interest in the 310 patent. [00:18:01] Speaker 04: Sure. [00:18:02] Speaker 04: So it does affirmatively claim that. [00:18:04] Speaker 04: OK. [00:18:04] Speaker 04: So how does that change your answer? [00:18:06] Speaker 00: Well, I don't think that that is a defense to the inventorship, which was the only live claim in the case. [00:18:12] Speaker 04: It's not a defense. [00:18:13] Speaker 04: It's a claim of infringement. [00:18:14] Speaker 04: And you have to show you're the owner. [00:18:16] Speaker 03: It's an element of the claim, is it not? [00:18:21] Speaker 00: In the context that it was pled, it's been pled as an element. [00:18:25] Speaker 01: I guess what you have to persuade us of is that the district court was right that somewhere along the way during the course of the proceedings, the other side waived any assertion of ownership of any of [00:18:42] Speaker 01: Nathan and Matheson's rights if Nathan and Matheson were ultimately proven to be co-inventors. [00:18:49] Speaker 01: And the judge said that all parties agreed that, you know, inventorship would be the main event and the final event of the case. [00:18:58] Speaker 01: But what can you point us to, aside from A1481, that helps establish what the district court concluded was a waiver of the ownership angle? [00:19:08] Speaker 00: Sure. [00:19:08] Speaker 00: There are numerous citations in the record similar to the citation that is being referred to, and I have those here if the court would like to hear those. [00:19:16] Speaker 00: I don't know that they necessarily say anything different other than Mr. Ramey's statements on the record that the only claims left would be infringement and ownership going forward. [00:19:33] Speaker 04: But if ownership is part of infringement, then why isn't it enough to say [00:19:38] Speaker 04: The only claim remaining is infringement. [00:19:43] Speaker 00: I just don't see how that's correct because the ownership question that they're arguing is an affirmative obligation of the plaintiffs in this case to assign their rights. [00:19:55] Speaker 00: And they're arguing that as a defense to this entire case. [00:19:58] Speaker 00: What they're saying is it doesn't matter. [00:20:00] Speaker 03: I don't understand when you say they're arguing it as a defense. [00:20:04] Speaker 03: They haven't been sued for infringement, right? [00:20:06] Speaker 00: Correct. [00:20:07] Speaker 00: What they're saying is the inventorship doesn't matter, because at the end of the day, even if Nathan and Matheson are inventors of this patent, they had an obligation to assign any interest they had to NanoVapor. [00:20:18] Speaker 04: They're saying they also seem to have pled it in the terms of their infringement claim. [00:20:21] Speaker 00: I understand that. [00:20:22] Speaker 04: They're saying there's infringement of the 310 patent, and as part of that infringement claim, we are owners of this patent. [00:20:28] Speaker 00: I think that's a totally different context than what [00:20:30] Speaker 00: what they're trying to get a second bite at the apple on the district court, which is to go back and now we argue that they're the owners of this and that Nathan and Matheson have an obligation to assign. [00:20:39] Speaker 03: I mean, even the outdated form 18 required in its, in its very cryptic pleading, a claim of ownership. [00:20:49] Speaker 03: So why isn't that an element of an infringement claim? [00:20:53] Speaker 00: I will concede. [00:20:54] Speaker 00: I'm not arguing that that's not an element of the infringement claim. [00:20:56] Speaker 00: What I'm saying is that in that context, you're not going to take up an affirmative claim with the court that you are not the owner of the patent or that someone else. [00:21:05] Speaker 00: No. [00:21:05] Speaker 03: His affirmative claim is that I'm the owner. [00:21:07] Speaker 00: Correct. [00:21:08] Speaker 03: And that it's the other side that would have to assert the defense that, no, he's not. [00:21:13] Speaker 00: Correct. [00:21:14] Speaker 00: I agree with that. [00:21:15] Speaker 00: And we did not assert that defense in that context. [00:21:18] Speaker 00: What we said is we are inventors of your patent. [00:21:21] Speaker 00: That was our claim under Section 256. [00:21:26] Speaker 03: But inventorship isn't the end of the inquiry, is it? [00:21:28] Speaker 00: I believe it is here, Your Honor. [00:21:30] Speaker 00: I believe after the inventorship was determined, they no longer had standing to pursue their infringement claim as a matter of law. [00:21:37] Speaker 04: But they're claiming that they still have ownership. [00:21:41] Speaker 04: And therefore, because they still have ownership, they can still argue infringement. [00:21:46] Speaker 00: I don't think that they can, because there was no written assignment assigning Matheson and Nathan's rights to Nanobaper or Mr. Moorhead or anyone else. [00:21:55] Speaker 00: And they were determined by the district court to be inventors, which would relate back to their conception of the elements of the claims which they were determined to be inventors of. [00:22:03] Speaker 04: And so your view is that the work for hire doctrine can only be an equitable doctrine that is asserted in response to a claim of infringement. [00:22:10] Speaker 04: And so therefore, they didn't have standing to continue to argue ownership. [00:22:14] Speaker 00: I don't think that's completely my view. [00:22:15] Speaker 00: I think that the work for hire doctrine could be pled in this case and could be pled affirmatively. [00:22:20] Speaker 00: I think to the extent that that was pled here, I think that that was waived and was dismissed as part of the state law claims. [00:22:26] Speaker 00: And it was certainly waived to the extent that there were overlapping factual issues that would have interfered with the right to a jury trial, which the district court correctly, I believe, determined. [00:22:36] Speaker 04: What about the fact that their paper that they submitted to the court [00:22:41] Speaker 04: There are papers saying there's certain non-suitable state law claims. [00:22:44] Speaker 04: There's eight specific claims, but it doesn't say anything about ownership. [00:22:48] Speaker 00: Ownership was never pled as an affirmative cause of action. [00:22:51] Speaker 00: It was pled as an affirmative defense. [00:22:52] Speaker 00: In this context, taking the infringement claim, which we've conceded has an ownership element to it. [00:22:59] Speaker 00: There was not an affirmative state law claim relating to ownership or obligations to a sign other than a breach of contract claim. [00:23:08] Speaker 00: So those claims [00:23:10] Speaker 04: either were, they were either dismissed because the district court said we can't go forward with the inventorship determination because- I think my point, you might have missed my point, which is that they have submitted a specific paper, a pleading, before the court saying these are the specific issues that we are non-suiting. [00:23:27] Speaker 04: It's at page A389 of the record. [00:23:30] Speaker 04: Correct. [00:23:31] Speaker 04: And they didn't include within that list of eight specific [00:23:37] Speaker 04: claims. [00:23:37] Speaker 04: They did not include anything relating to ownership. [00:23:41] Speaker 00: I agree. [00:23:41] Speaker 00: There's not a specific recitation of ownership in that non-suit. [00:23:45] Speaker 00: I won't argue that that's not the case. [00:23:46] Speaker 00: That's correct. [00:23:47] Speaker 04: Okay. [00:23:47] Speaker 04: And so there's no waiver based on that paper. [00:23:50] Speaker 00: Based on that specific non-suit of those claims, there's nothing in there that would create a waiver. [00:23:56] Speaker 00: I do think there's a waiver for other reasons. [00:23:58] Speaker 00: particularly that those overlapping factual issues with those claims would have overlapped with the ownership and obligations to assign. [00:24:06] Speaker 00: Appellants have conceded that in their own briefing and I have those citations as well. [00:24:10] Speaker 00: Further, by participating in a bench trial, which evidentiary hearing, which for all essential purposes in this case was a bench trial, I believe that they did waive those claims because the district court was clear that the proceeding on the inventorship could not proceed until the state law causes of action were removed from the case [00:24:27] Speaker 04: due to overlapping factual inquiries, it would prevent... What do you mean, overlapping factual inquiries between inventorship and ownership? [00:24:35] Speaker 00: Well, that's... I would disagree, Your Honor, and... I just said, what are they? [00:24:39] Speaker 00: What are they? [00:24:40] Speaker 00: Okay, so I will defer to appellants on that. [00:24:44] Speaker 00: In their briefing, they say, no evidence relating solely to another issue was introduced at the Section 256 hearing. [00:24:49] Speaker 00: That's in their principal brief at pages 12 and 13. [00:24:53] Speaker 00: Employment is not an issue relevant solely to the issues of obligation to assign and invention ownership by purchase. [00:24:59] Speaker 00: Employment is relevant to inventorship, such as underlying issues of employee ancillary improvements, experimentation at the direction of another, and joint behavior. [00:25:07] Speaker 00: That's at 13. [00:25:09] Speaker 00: In addition to inventorship, employment status was also relevant to documented missibility and whether certain statements regarding employees were intended to include or included Nathan and Matheson. [00:25:19] Speaker 00: That's at 14. [00:25:20] Speaker 00: So by their own admission, these issues and facts overlapped with each other and required a determination by the district court that would prevent a right to a jury trial, which was the very issue we had in the first place that required dismissal of all of these state law clients. [00:25:32] Speaker 03: So you're basically saying that because he sort of, you're saying he tried to sandbag the judge. [00:25:38] Speaker 03: He said, judge, give me this hearing and you won't have to do anything else other than infringement. [00:25:44] Speaker 03: And then when he says, oh yeah, but by the way, the infringement includes ownership, [00:25:48] Speaker 03: that the judge had the right to say, forget it. [00:25:51] Speaker 00: That's exactly what I'm saying. [00:25:52] Speaker 00: I'm saying that they waived that. [00:25:54] Speaker 00: To the extent they weren't dismissed, those were waived. [00:25:57] Speaker 00: Also, the only live claim we had in the case at that time was infringement. [00:26:01] Speaker 00: So to the extent these were pled as affirmative defenses, there could really only be an affirmative defense to the infringement claim, which I think the judges would agree ownership is not a defense to infringement. [00:26:11] Speaker 00: And further, they did not put any evidence on at the inventorship hearing that would [00:26:16] Speaker 00: substantiate this assignment that doesn't exist. [00:26:19] Speaker 04: What about your briefing at Joint Appendix page 454? [00:26:23] Speaker 04: There's a pleading from you that it makes clear that any issue before the court is not the employment status or ownership, and that's irrelevant to the determination of inventorship. [00:26:39] Speaker 04: I mean, at least what I see here in your own pleading is some language saying to the court, [00:26:45] Speaker 04: Look, just so you know, where this hearing is only going to relate to inventorship, it's not going to relate to ownership. [00:26:51] Speaker 00: I agree. [00:26:52] Speaker 00: I don't dispute that. [00:26:53] Speaker 00: Our position is that this ownership claim is not a defense to the inventorship claim, which was the only live claim that we had. [00:27:01] Speaker 00: So it was either waived, dismissed, or they failed to argue it at some point during the course of the proceedings. [00:27:08] Speaker 00: They definitely had an opportunity to be heard on it. [00:27:11] Speaker 01: The other side is saying about what they conceded or arguably waived at A1481 was a scenario when, if the district court concluded that Moorhead was not a co-inventor at all, and it was only Matheson and Nathan that were proven to be the sole inventors of the patent, then of course, under that scenario, Moorhead and NanoVapor would have no rights, [00:27:41] Speaker 01: to assert infringement. [00:27:44] Speaker 01: But if they were all deemed to be co-inventors, then Nano Vapor would still have some rights. [00:27:50] Speaker 01: And that's what they were trying to make a point of during that hearing. [00:27:58] Speaker 01: What's your response to that? [00:27:59] Speaker 00: I don't think that's accurate. [00:28:00] Speaker 00: I think the record reflects otherwise. [00:28:03] Speaker 00: I think they dismissed the claims. [00:28:05] Speaker 00: Everyone knew that any claim that had an overlapping [00:28:09] Speaker 00: set of facts to the state law claims was gone. [00:28:12] Speaker 00: And that the only thing we were proceeding on was inventorship. [00:28:15] Speaker 01: And the infringement claim is... I guess maybe the response would be, even if Moorhead was found to be not an inventor at all, theoretically, NanoVapor still would have ownership rights if, in fact, there was some obligation to a sign that was [00:28:37] Speaker 01: that was legally binding on Nathan and Matheson, right? [00:28:42] Speaker 01: So I guess what I'm trying to, I'm trying to do a retort to them out loud as I'm thinking out loud, that it doesn't make a difference whether or not Moorhead was proven to be a co-inventor. [00:28:56] Speaker 01: because in their theory of why they would still be an owner would hold true under either scenario because Nathan and Matheson, in their view, had some legal obligation to assign their inventorship rights to nanobabies. [00:29:15] Speaker 00: Perhaps they did, but I don't think that solves their, for the sake of your argument, perhaps let's say they did, but I don't think that solves their standing issue. [00:29:22] Speaker 00: Even if that were true, they still have an issue of standing because Nathan and Matheson were determined by the district court to be inventors and they would have had to have been joined as plaintiffs as all co-owners in a patent right have to be joined in order to create standing. [00:29:35] Speaker 00: So they may have some claim in that context on a go-forward basis, but anything that came before that as to past infringement, [00:29:42] Speaker 00: The assignment wasn't perfected. [00:29:43] Speaker 00: There was no writing. [00:29:44] Speaker 00: They weren't plaintiffs in the suit. [00:29:46] Speaker 00: So I believe that that claim was properly dismissed on that basis. [00:29:49] Speaker 03: Your time is up. [00:29:52] Speaker 03: Two minutes, Mr. Raimi. [00:29:55] Speaker 03: And why don't you answer Judge Chen's point? [00:29:58] Speaker 03: Because I was thinking the same thing. [00:30:00] Speaker 03: Why does it matter if Moorhead was not on the patent as the inventor when [00:30:10] Speaker 03: It's NanoVapor who you claim was the employer. [00:30:14] Speaker 05: What does it matter if Moorhead was not on the patent? [00:30:17] Speaker 05: Because then we couldn't practice as NanoVapor that technology if he wasn't on the patent. [00:30:21] Speaker 03: Well, theoretically you could if you had a shop right that arises out of this obligation that you say to a sign that comes out of common law. [00:30:29] Speaker 05: Yes, Sharon. [00:30:29] Speaker 05: That's the danger we have with this appeal. [00:30:31] Speaker 05: There was not a record developed on the employment issues, on the obligation to a sign, on the very issues you're talking about. [00:30:39] Speaker 05: This is the federal issue. [00:30:41] Speaker 03: But this whole point undercuts your argument that somehow you didn't sandbag the trial court on this. [00:30:48] Speaker 05: I go back, Your Honor, and I look at what the hearing was noticed for. [00:30:51] Speaker 05: There were three motions corrective internship filed, two by defendants, the NanoVapor, and one by the plaintiff, VaporPoint. [00:31:00] Speaker 05: All each of those was directed to a hearing under Section 256. [00:31:04] Speaker 05: The court then sent out a notice of hearing based on the August 29, [00:31:09] Speaker 05: and 14 meeting where it said, we're going to have a 256 hearing on inventorship. [00:31:14] Speaker 05: That was what was noticed by the court. [00:31:16] Speaker 05: So the evidence that was presented at that hearing was for the court to determine inventorship of the pads that issue, that being the nano vapor pads and the vapor point pads. [00:31:27] Speaker 05: That's all that was noticed. [00:31:28] Speaker 05: And that's all that we were given an opportunity to be heard on. [00:31:31] Speaker 05: And because of that, we were denied a right to a jury trial, an opportunity to be heard on those issues. [00:31:37] Speaker 05: That's what we're saying. [00:31:38] Speaker 03: Now, if you were ever sued for infringement by VaporPoint, you would be able to assert this chop right, would you not? [00:31:50] Speaker 03: And have it heard then? [00:31:52] Speaker 05: Not under what they were saying. [00:31:53] Speaker 05: They were saying they were working for themselves. [00:31:55] Speaker 05: If you remember, they were saying there were three people working for themselves. [00:31:56] Speaker 03: Right. [00:31:57] Speaker 05: Well, you'd still have to prove that. [00:31:58] Speaker 03: Yes, Your Honor. [00:31:59] Speaker 03: But it would be a defense at that point that would be assertable, right? [00:32:02] Speaker 05: Yes, Your Honor. [00:32:02] Speaker 05: What we're asserting is that we actually own the baton, so we don't need to get to that point of having a defense. [00:32:08] Speaker 05: But to present an opportunity to be heard on that issue, the record would be fully developed on that issue, and it's not. [00:32:14] Speaker 05: And then we would show that we actually had an obligation to assign for nano-inventory by the period of inventors. [00:32:20] Speaker 05: And the issues we didn't cover today, our inventorship at the record before the court clearly shows the dates of corroboration and everything for the court to render, we think, an appropriate ruling, naming Morehead as the sole inventor, but at least to send this matter back. [00:32:33] Speaker 03: We have that in your briefs. [00:32:35] Speaker 05: Yes, ma'am. [00:32:36] Speaker 03: OK. [00:32:36] Speaker 03: Thank you all very much.