[00:00:00] Speaker ?: I'm sorry. [00:00:40] Speaker 00: Okay. [00:00:40] Speaker 00: The next argued case is number 16-2309, Advanced Video Technologies Against HTC Corporation. [00:00:49] Speaker 00: Mr. Morris. [00:00:52] Speaker 03: Thank you, Judge Newman. [00:00:53] Speaker 03: May it please the court? [00:00:54] Speaker 03: I'm Robert Morris on behalf of ABD. [00:00:57] Speaker 03: The district court's dismissal of the complaint below failed to recognize that Vivian's son was never a co-owner of the 788 patent. [00:01:08] Speaker 03: She never had any rights in her own name. [00:01:11] Speaker 03: Her rights, if any, were governed by the employment agreement that she signed when she was with InfoChimp. [00:01:17] Speaker 05: Well, I mean, the court specifically found that the employment agreement was an agreement to assign in the future and not an actual assignment at the time. [00:01:27] Speaker 05: So when you say the court failed to recognize it, the court recognized that that was your argument, but disagreed with you on that reading of the contract. [00:01:37] Speaker 03: The Vivian Sun had entitled, in her name only, the rights. [00:01:45] Speaker 03: The employment agreement itself, as the district court acknowledged, Vivian Sun held all of the rights, any right, title, and interest to the patent on behalf of the company. [00:01:56] Speaker 03: So the company was the beneficiary. [00:01:58] Speaker 05: Right, but the company never sued to enforce her employment agreement. [00:02:02] Speaker 05: In other words, to require her to make the assignment that she promised to make. [00:02:08] Speaker 05: Right? [00:02:09] Speaker 03: I acknowledge that. [00:02:11] Speaker 03: That's correct. [00:02:11] Speaker 03: They never sued her to enforce that. [00:02:13] Speaker 00: But the district judge actually put significant weight on the fact that, and I gather that the inventor was not joined as an involuntary party plaintiff or defendant. [00:02:30] Speaker 00: In this case, either way, I can [00:02:34] Speaker 00: imagine without knowing that the trial judge wondered. [00:02:37] Speaker 00: Maybe there were intervening events that weren't brought out. [00:02:42] Speaker 00: But what struck me was that the district judge in the court's opinion remarked that there had been no action taken to compel assignment. [00:02:55] Speaker 03: I understand that point, Your Honor. [00:02:58] Speaker 03: Under California law, because Vivian's son held it [00:03:03] Speaker 03: held any and all title rights and interests on behalf of her company, on behalf of the company. [00:03:09] Speaker 03: That was the language that's acknowledged by the district court in the opinion. [00:03:13] Speaker 03: Under California law, Vivian Shun could never be named as a plaintiff. [00:03:21] Speaker 03: Under California law, as a trustee holding it on behalf of a company, if she filed suit for patent infringement, it would have to be in the name of the company. [00:03:30] Speaker 03: And we have those same rights. [00:03:32] Speaker 05: But what was the purpose of the trust? [00:03:34] Speaker 05: Was the purpose of the trust to assure that she would execute the assignment that was required? [00:03:40] Speaker 03: The purpose of the trust was to ensure that the company would always retain all the rights to any intellectual property that was developed by any employees during the time of their employ. [00:03:53] Speaker 03: I mean, the employment agreement, if you read the agreement the way the district court construed it, [00:03:59] Speaker 03: then the employment agreement basically says, all of our employees, we're going to pay for you to develop technology, and if we don't sue you and you refuse to sign the agreement, you can sue us for patent infringement. [00:04:12] Speaker 04: No, the employment agreement can express the statement that the assignment. [00:04:20] Speaker 04: Here we have an employment agreement that provides for an assignment in the future. [00:04:28] Speaker 04: You know, you promised sometime in the future to assign. [00:04:32] Speaker 04: But you can't have an employment agreement where the assignment is immediate. [00:04:36] Speaker 03: Well, you can, but that wasn't the case here. [00:04:37] Speaker 03: Well, that's the problem. [00:04:39] Speaker 03: But the case here, as the district court acknowledged, the district court went out of its way on Appendix 17. [00:04:58] Speaker 03: the district court's opinion. [00:05:01] Speaker 03: The district court says, if by signing the employment agreement, Sun was assigning away her rights to the invention, she would not need to hold them in trust for anyone. [00:05:12] Speaker 03: She would have already given them away. [00:05:14] Speaker 03: But the contract language plainly contemplates Sun would keep title to the inventions, albeit for the benefit of her employer. [00:05:22] Speaker 03: until such time as she executed the assignment. [00:05:25] Speaker 04: But counsel, would you just say that she'd keep title to it? [00:05:29] Speaker 04: Even if it's for the benefit of the employer, she keeps title. [00:05:32] Speaker 04: The title still resides in her name. [00:05:37] Speaker 03: The title definitely resides in her name, but under California law, because it's to the benefit of the employer, she cannot sue under her own name. [00:05:45] Speaker 05: Well, that's a different question. [00:05:47] Speaker 05: And she couldn't have sued the company anyway, because the company would have had a shop right in her inventions if it was done during the course and scope of her employment. [00:05:57] Speaker 05: But there's a different question of whether or not she needs to be a party to a suit that chooses to sue a third party. [00:06:10] Speaker 03: She has no rights. [00:06:15] Speaker 03: In the employment agreement further on in the employment agreement 2E, she gave a present quit claim of any right to sign. [00:06:25] Speaker 03: I hereby, hereby was magic language, according to Judge McMahon, I hereby waive and quit claim to the company any and all claims of any nature whatsoever, which I now, and this is at appendix 260, [00:06:42] Speaker 03: or may hereafter have of infringement of any pass. [00:06:46] Speaker 03: She doesn't have the right to sue. [00:06:48] Speaker 00: But what troubled the district judge seems to have been that no action was taken to perfect that, to enforce the employment agreement. [00:07:00] Speaker 00: That instead this court, in an infringement suit, was being asked to enforce an employment agreement involving [00:07:10] Speaker 00: employee, a person, an inventor who was not before the court. [00:07:16] Speaker 00: What I take from the opinion that was written was that this was a troubling factor that no action had been taken to enforce the assignment. [00:07:28] Speaker 00: That this trial judge was being asked to assume it was assigned. [00:07:33] Speaker 03: The trial court was, we never asked the trial court to assume that it was assigned. [00:07:38] Speaker 03: All of those arguments were put forth by defendants. [00:07:41] Speaker 03: Defendants built this house of cards that said that plaintiffs were trying to say that the trust was somehow in an assignment, and we've never asserted that. [00:07:50] Speaker 05: All right. [00:07:51] Speaker 05: Well, she actually did say your primary argument is the trust argument, which is... And so she went on to address that, correct? [00:07:59] Speaker 02: No, she never addressed the trust argument. [00:08:02] Speaker 05: What do you mean she never addressed the trust argument? [00:08:04] Speaker 05: She does. [00:08:05] Speaker 05: She specifically does. [00:08:06] Speaker 05: And she talks about the trust and the implications of the trust. [00:08:10] Speaker 05: And part of the problem is that trust creates, yes, equitable title in the company, but legal title remains with the trustee, correct? [00:08:22] Speaker 03: Yes. [00:08:22] Speaker 05: And you have to have those with legal title as parties to an infringement proceeding. [00:08:30] Speaker 03: But according to California law, she can't be a party. [00:08:33] Speaker 03: According to California law, if you are a trustee, [00:08:37] Speaker 03: You have to sue on behalf, you have to sue in the name of the beneficiary. [00:08:41] Speaker 03: She can't sue in her own name based on California law. [00:08:44] Speaker 03: This is a California agreement. [00:08:48] Speaker 03: InfoChips was the beneficiary originally. [00:08:51] Speaker 03: ABC became the beneficiary later. [00:08:53] Speaker 03: She can't be named as a plaintiff in the lawsuit. [00:08:58] Speaker 03: That would be wrong under the law, under California law, because she was a trustee. [00:09:05] Speaker 05: purpose of the trust was to allow her to sue in your name, in the company's name? [00:09:10] Speaker 03: No. [00:09:11] Speaker 03: If you look at the agreement the way that Judge McMahon wants to look at it, the quit claim can never come into being. [00:09:18] Speaker 03: Because according to Judge McMahon, the only way the quit claim comes into being is after she already has signed the assignment, in which case there are no rights to quit claims. [00:09:27] Speaker 03: If you look at the agreement the way it is. [00:09:30] Speaker 05: Well, it does say assigned here under. [00:09:32] Speaker 05: I mean, it's not like the judge didn't have a basis for what she was saying. [00:09:37] Speaker 03: But that renders that provision and that it's black letter contract. [00:09:42] Speaker 03: Well, you can't do that. [00:09:44] Speaker 03: That provision could absolutely never come into play according to that construction. [00:09:49] Speaker 03: If she made the assignment, it would. [00:09:51] Speaker 03: Well, then there's nothing to quit claiming. [00:09:53] Speaker 03: If she made the assignment, she gave away all the rights. [00:09:56] Speaker 05: Well, you can't have a contract that has belt and suspenders in it? [00:10:02] Speaker 03: You can have a contract to do anything you want. [00:10:05] Speaker 03: This is not one of those contracts. [00:10:07] Speaker 03: This is an employment agreement in the world of technology in Silicon Valley. [00:10:12] Speaker 03: The company itself is trying to protect all of its intellectual property. [00:10:15] Speaker 03: So it has its employees come in. [00:10:17] Speaker 03: They sign an assignment. [00:10:18] Speaker 05: Well, we've seen a ton of these employment agreements, and a lot of them are written a lot more clearly than this. [00:10:25] Speaker 05: So, I mean, for you to say that this, we should just assume because it comes out of Silicon Valley that it was done in a way that effectuated what you want it to do, it shouldn't be the end of the inquiry. [00:10:37] Speaker 02: I guess I'm not trying to say that, Your Honor. [00:10:39] Speaker 03: If that's what you imply, I apologize with all due respect. [00:10:42] Speaker 03: I'm not trying to say that. [00:10:44] Speaker 03: But if you look at the agreement... Well, Counsel, we do see [00:10:47] Speaker 04: We do see a lot of agreements dealing with assignment of interest to PANs. [00:10:53] Speaker 04: And the problem with this agreement, at least with, you know, in regards to your argument, is that this is a promise to a site. [00:11:04] Speaker 04: She promised to a site, and as she breaches that promise, in other words, she said, I'll do this in the future, but no one ever got around to doing it. [00:11:14] Speaker 04: And the way to perfect that is to have suitor for a breach [00:11:18] Speaker 04: of that promise. [00:11:20] Speaker 04: Now you have a judgment. [00:11:21] Speaker 04: Now you're all set to go. [00:11:23] Speaker 03: Well, we understand that. [00:11:24] Speaker 03: But with a graphic provincial standing, it's really a question of, is there any threat of suit by anybody else? [00:11:30] Speaker 03: Do the defendants have to worry about getting sued by anybody else? [00:11:33] Speaker 03: And the answer is no. [00:11:35] Speaker 03: Biffy and someone can't sue them. [00:11:37] Speaker 03: No one else can sue them. [00:11:38] Speaker 03: If you take that one third interest by itself, there is no doubt that no one else can file suit against them. [00:11:46] Speaker 03: We have 100% of the rights that exist today to file suit under the 788 patent. [00:11:55] Speaker 03: The employment agreement starts off with you sign the employment agreement. [00:12:01] Speaker 03: You could claim the right to ever sue for patent infringement of anything you ever develop while you work here. [00:12:09] Speaker 03: Then you start to work there. [00:12:11] Speaker 03: You can't hold anything in trust that you haven't invented. [00:12:14] Speaker 03: Then you come up with a conception. [00:12:15] Speaker 03: You haven't gotten in-house or outside counsel. [00:12:18] Speaker 03: You haven't prepared a patent application. [00:12:20] Speaker 03: You haven't done anything yet. [00:12:22] Speaker 03: So now you're holding it in trust on behalf of the company. [00:12:25] Speaker 03: Patent application gets filed. [00:12:26] Speaker 03: It's still in trust. [00:12:28] Speaker 03: Somebody puts the documents in front of you to sign. [00:12:30] Speaker 03: Vivian soon refused to sign. [00:12:32] Speaker 03: You're still holding it in trust on behalf of the company. [00:12:35] Speaker 04: You would need her consent. [00:12:37] Speaker 04: She would have to sign on to any lawsuit. [00:12:42] Speaker 04: Even if this went into a trust, she would [00:12:44] Speaker 04: All that means is the trust is holding this on her behalf. [00:12:48] Speaker 04: She still hasn't... Not on her behalf. [00:12:50] Speaker 03: The plain language of the employment agreement says on behalf of the company, and that is acknowledged by Judge McMahon on page 17. [00:12:58] Speaker 04: Okay, but still, if the company wished to sue, then she'd have to sign off on that. [00:13:07] Speaker 03: The company doesn't exist. [00:13:12] Speaker 03: She has no power [00:13:14] Speaker 03: on behalf of the company to do anything at that point in time. [00:13:17] Speaker 03: And she doesn't, just because the company is eventually dissolved, she then doesn't get the right in her own name to go file lawsuits or to control what happens to the intellectual property, to the assets of the company. [00:13:30] Speaker 00: Yes, you're right. [00:13:30] Speaker 00: I agree with what you're saying. [00:13:32] Speaker 00: But I'm still taken with this district court, said, or I just perfect your title. [00:13:40] Speaker 00: She didn't decide it. [00:13:42] Speaker 00: She refused to assign it. [00:13:43] Speaker 00: Sewer, joiner, something or other, rather than leave it unassigned with all of the ancient rules that inventors own their inventions unless they assign them. [00:13:57] Speaker 00: So she's agreed to assign it, but she hasn't fulfilled that promise. [00:14:02] Speaker 00: And this leaves a gap that this district judge looks to be, as if correctly, thought needed to be filled [00:14:13] Speaker 00: rather than asking this court to, that court, the district court or this court to, we'll never mind, we'll assign it on your behalf. [00:14:22] Speaker 03: We're not seeking any assignment. [00:14:24] Speaker 03: We didn't seek any assignment from the district court. [00:14:26] Speaker 03: We didn't seek any assignment here. [00:14:28] Speaker 03: We have 100% of the existing rights to sue under the agreement. [00:14:33] Speaker 03: She quit claimed all of her rights. [00:14:35] Speaker 03: Once she did that, she could never sue. [00:14:38] Speaker 03: The right to sue was gone. [00:14:40] Speaker 03: She disavowed it. [00:14:41] Speaker 03: I'm not saying she assigned it to anybody, but she disavowed it. [00:14:45] Speaker 03: She didn't have it anymore. [00:14:47] Speaker 05: On what grounds did she refuse to assign when she had an appointment agreement that said she would? [00:14:53] Speaker 05: On what grounds did she refuse to assign when she had an appointment agreement that said she would? [00:14:58] Speaker 03: We have no idea, Your Honor. [00:14:59] Speaker 03: We don't know the facts. [00:15:01] Speaker 03: Nobody ever took her deposition. [00:15:04] Speaker 03: My understanding is various people tried to contact her on both sides. [00:15:09] Speaker 05: Did you try to involuntarily join her? [00:15:14] Speaker 03: I wasn't a part of the case at the point in time when any of... No, I mean when you filed this case, did you try to join her under Rule 19? [00:15:23] Speaker 03: No, we did not try to join her under Rule 19. [00:15:26] Speaker 00: Okay, let's hear from the other side. [00:15:28] Speaker 00: We'll save you rebuttal time. [00:15:34] Speaker 00: Ms. [00:15:34] Speaker 01: Keith. [00:15:36] Speaker 01: Good morning, Your Honors. [00:15:37] Speaker 01: Heidi Keith on behalf of the Appellate. [00:15:40] Speaker 01: I think Your Honor has hit the nail squarely on the head with what the issue is, which is whether or not legal title ever was assigned from Ms. [00:15:50] Speaker 01: Xun to anyone. [00:15:52] Speaker 01: And she simply did not. [00:15:54] Speaker 00: Well, I don't know why she couldn't have been joined in this suit as an involuntary plaintiff or defendant. [00:16:01] Speaker 00: It's very peculiar. [00:16:04] Speaker 01: It never happened, Your Honor. [00:16:05] Speaker 01: There we go. [00:16:07] Speaker 05: Our STC decision. [00:16:09] Speaker 05: From which Judge Newman and I both dissented, said that you can't do that, right? [00:16:15] Speaker 05: Right. [00:16:15] Speaker 05: So we were missing two judges, including Judge Raina, who was accused of who knows where that might end up if one tried it again. [00:16:21] Speaker 00: Well, maybe, but the facts are also somewhat different. [00:16:25] Speaker 00: It is, but still looking at what this district judge held, it's inconceivable to me that there's no remedy. [00:16:34] Speaker 00: But as to what that remedy might be is the question. [00:16:38] Speaker 01: Well, it seems to me, Your Honor, that the remedy would have been for the appellant here to have attempted, back when the breach first occurred, to enforce the agreement. [00:16:50] Speaker 01: And in fact, this Court has noted in numerous other cases that that is the proper thing to do, is to actually bring suit in order to enforce the agreement. [00:16:58] Speaker 04: One of the cases regents... Why wouldn't the quitclaim provision just render all of that future activities superfluous? [00:17:06] Speaker 01: So the first point, Your Honor, is we have to look very carefully at the language of the quit claim itself. [00:17:10] Speaker 01: And the language of the quit claim says that it only comes into being on any application assigned here under. [00:17:19] Speaker 01: So the language is on appendix 260. [00:17:21] Speaker 01: I hereby waive and quit claim to the company any and all claims of any nature whatsoever which I now or may hereafter have. [00:17:30] Speaker 01: infringement of any patents, copyrights, or mask words resulting from any such application assigned here under to the company. [00:17:38] Speaker 04: Nothing was caught. [00:17:39] Speaker 04: Just looking at that, any such application assigned here under, and I focus on the words assigned here under early, but then I got to thinking, well, is it talking about the company who gets the assigned title? [00:17:57] Speaker 04: assigned to your under, or does it have to be, in other words, from his son? [00:18:03] Speaker 01: I believe it does have to be from Ms. [00:18:04] Speaker 01: Yun. [00:18:04] Speaker 01: In fact, if you read the entire section... But that's not entirely clear. [00:18:09] Speaker 01: To me, the reasoning, the thing that makes it work together, and the only thing that allows all of the provisions to kind of come together, is that Ms. [00:18:17] Speaker 01: Yun is under section 2B, holding legal title in trust for the company, and says she will [00:18:25] Speaker 01: assign. [00:18:27] Speaker 01: I have assigned, not a present assignment here under, but I will assign to the company all of my right and interest. [00:18:33] Speaker 00: It didn't exist, so you can't assign something that didn't exist? [00:18:37] Speaker 01: That's part of it. [00:18:38] Speaker 01: You can't assign. [00:18:39] Speaker 01: You can, though, assign a future interest. [00:18:41] Speaker 01: And in fact, there's numerous cases that talk specifically about... That's what I mean. [00:18:46] Speaker 04: So now if we have a pen that's assigned to the company... It says, we'll assign... [00:18:50] Speaker 01: which she did not do. [00:18:52] Speaker 01: She never assigned, so there is no assignment. [00:18:55] Speaker 01: I will assign, but she didn't do it. [00:18:58] Speaker 01: Had she assigned, had she assigned the patent, then the quit claim would kick in. [00:19:04] Speaker 01: And I think the reasoning for that, if we look to, for example, the Crown Die case, which talks about you can't just have a naked right to sue. [00:19:13] Speaker 01: You have to make sure that you have all of the rights together. [00:19:16] Speaker 01: If Ms. [00:19:17] Speaker 01: Tion, for example, if the patent had issued, [00:19:20] Speaker 01: And Ms. [00:19:20] Speaker 01: Yeun had assigned, say, three years later. [00:19:23] Speaker 01: There would be three years of infringement sitting there for which the company would not have rights under the assignment because the assignment just goes from that day forward. [00:19:34] Speaker 01: Therefore, the quit claim would kick in to make sure that the company now, by virtue of the assignment coupled with the quit claim, has rights over the entire period. [00:19:43] Speaker 01: So I think that the only reason the quit claim even existed here was, in essence, to fill the gap [00:19:49] Speaker 01: that crown die would otherwise have said exists based on a later assignment. [00:19:54] Speaker 01: And so I think that that's how they work together. [00:19:56] Speaker 01: And it reinforces the notion that this is all about a future assignment, the will assign language. [00:20:04] Speaker 05: The part that bothers me the most and the part that I struggled with the most here is the trust. [00:20:10] Speaker 05: If it is in trust, and it's still held in trust theoretically to this day, why [00:20:18] Speaker 05: isn't that, and the trust did say that it was for the benefit of not just the company, but its successors or assigns. [00:20:25] Speaker 05: Why isn't the trust enough? [00:20:27] Speaker 01: Well, under California law, the trustee, under California law, when a trust is created, the rights are split into legal rights and equitable rights. [00:20:37] Speaker 01: The legal rights maintain themselves with the trustee. [00:20:42] Speaker 01: The equitable rights are maintained with the beneficiary. [00:20:45] Speaker 01: Here, it's not enough. [00:20:46] Speaker 01: to simply say, well, the beneficiary has equitable rights. [00:20:51] Speaker 01: They have to obtain the legal rights in order to file the lawsuit. [00:20:55] Speaker 01: That's black letter law. [00:20:57] Speaker 01: And the legal rights have not been passed over. [00:20:59] Speaker 01: And that we look to. [00:21:00] Speaker 05: So that even if, for instance, our STC case said that you couldn't involuntarily join a co-owner, you might be able to involuntarily join a trustee. [00:21:12] Speaker 01: Potentially, though, I would still say no, because the trustee, it's the same idea that there's legal title there. [00:21:20] Speaker 01: And so if that case were to kick in, you can't involuntarily join someone who does have their legal rights in the past. [00:21:29] Speaker 05: But they're not seeking to enjoin her. [00:21:34] Speaker 05: If they have equitable rights in the past, just like a licensee, [00:21:38] Speaker 05: Why couldn't they enforce the patent? [00:21:40] Speaker 01: Because again, we don't have all co-owners present. [00:21:44] Speaker 01: And so if we look to the, sorry, there's cases that specifically talk about the notion that you have to have all co-owners present. [00:21:53] Speaker 01: The bioengineering and a series of other cases that are all cited in our briefs talk about the fact that you have to have all co-owners. [00:22:00] Speaker 01: Ms. [00:22:00] Speaker 01: Yuen currently is a co-owner because she retains the legal rights [00:22:06] Speaker 01: in the patty because they've never been assigned. [00:22:09] Speaker 00: It's inconceivable that a person who goes through all of these standard formalities can then just dig in and say, I'm not going to sign. [00:22:18] Speaker 00: So what, in your view, would be the next step for someone who finds that there's this recalcitrant employee? [00:22:28] Speaker 01: To me, Your Honor, the next step would have been [00:22:32] Speaker 01: a lawsuit for breach of the employment agreement in order to enforce the assignment. [00:22:37] Speaker 01: And that's exactly what happened. [00:22:39] Speaker 00: That's what the district judge said as well. [00:22:41] Speaker 01: And it's exactly what happened in, for example, the Regents of University of New Mexico versus Knight case. [00:22:47] Speaker 01: In that case, the Regents had a series of patent applications that had been assigned, and then a series of continuation and part applications were filed, and the inventors refused to assign. [00:22:59] Speaker 01: And so the Regents brought suit. [00:23:00] Speaker 01: to enforce the assignment. [00:23:03] Speaker 01: And the board there, the court, did hold that, in fact, the employment agreement did say that they had an obligation to assign and found that they had been in breach of their agreement and forced them to assign their rights. [00:23:17] Speaker 01: That's what should have happened here. [00:23:19] Speaker 01: They knew about this breach way back when they first asked Ms. [00:23:24] Speaker 01: Xun to sign and she refused to sign. [00:23:27] Speaker 01: So in the record, what we have is that not only [00:23:30] Speaker 01: Did they understand that she had not signed, even though they believed that she was supposed to? [00:23:34] Speaker 01: They actually sent a office manager. [00:23:40] Speaker 01: This is at A276. [00:23:41] Speaker 01: Mr. Cortez, the office manager, was sent to obtain her signature. [00:23:45] Speaker 01: She did not sign. [00:23:46] Speaker 01: Right then, at that point, and this is back in 1995, I believe, maybe 1995, as soon as she didn't sign, in 1995, there was a breach of the employment agreement. [00:23:58] Speaker 01: And in California law, they had four years to sue for breach of the employment agreement in order to perfect the title and make sure that it all worked going forward. [00:24:07] Speaker 01: They may have been able to say that perhaps it wasn't until they actually recorded the assignment, which happened just a little bit later in 1996 with the blank that didn't have her name on it. [00:24:17] Speaker 01: And that happened in the record at filing the assignment at A283. [00:24:22] Speaker 01: You can see that there's no signature from her. [00:24:26] Speaker 01: They could have sued for breach of the employment agreement. [00:24:29] Speaker 01: They had four years under California law to do so. [00:24:31] Speaker 00: So they didn't do it. [00:24:32] Speaker 00: So here's a new owner. [00:24:33] Speaker 00: You're saying that that statute of limitations ran and it's over. [00:24:38] Speaker 00: And there's no way of obliging her to resign. [00:24:43] Speaker 01: Under these facts, I do believe that that is the case. [00:24:46] Speaker 01: It was the obligation of the original owner to perfect the title. [00:24:51] Speaker 01: They had a contract with her. [00:24:52] Speaker 01: The contract was breached. [00:24:54] Speaker 01: She didn't, if in fact there was a breach. [00:24:57] Speaker 01: That's the other only thing that I'd like to point out is here, we know they didn't sue. [00:25:01] Speaker 01: And in fact, it's unopposed that they didn't sue. [00:25:05] Speaker 01: We don't know why. [00:25:06] Speaker 01: There may be another agreement out there somewhere that hasn't been produced that says that there's no ability for them to sue because there's no breach of the contract. [00:25:14] Speaker 01: We simply don't know. [00:25:15] Speaker 01: But under the facts of the case as they exist, legal title was never passed from Mishun, and Mishun is not in this case. [00:25:25] Speaker 01: And therefore, the court correctly dismissed the case. [00:25:29] Speaker 01: And one of the problems that we have is typically that we don't know why she wasn't sued. [00:25:33] Speaker 01: But the fact is she wasn't. [00:25:35] Speaker 01: She was never brought into this case. [00:25:39] Speaker 01: And therefore, she as a co-owner is necessary to the case. [00:25:44] Speaker 01: And she's sitting out there, not a party to the case. [00:25:46] Speaker 05: Do you think that the trust still exists today, or do you think it expired with the expiration of the employment agreement, or the statute of limitations relating to the employment agreement? [00:25:58] Speaker 01: I honestly don't know. [00:25:59] Speaker 00: Which is not a co-owner. [00:26:02] Speaker 00: If the trust exists, unless there's some other limitations period we don't know about, then she wouldn't have the opportunity to dispose of this right. [00:26:17] Speaker 01: I'm not sure I agree with that, Your Honor. [00:26:18] Speaker 01: I actually do think that the trust probably still exists. [00:26:22] Speaker 01: I just don't have a legal site for you that even though the employment agreement is [00:26:26] Speaker 01: is out there and not being enforced because InfoChips doesn't exist. [00:26:33] Speaker 01: I think it probably does still exist, in which case she is still the legal owner under the trust. [00:26:39] Speaker 01: If, for instance, we did have an occasion where the trust was dissolved, the rights would go back to Ms. [00:26:45] Speaker 01: Xun, because as the inventor, rights vest with the inventor. [00:26:49] Speaker 01: So I don't think there's any opportunity that even if the trust were to have been dissolved, that doesn't mean that it goes down to InfoChips or anyone else. [00:26:56] Speaker 01: It goes back to Ms. [00:26:57] Speaker 01: Xun as the inventor with whom there was never an assignment. [00:27:02] Speaker 01: And so the rights would still best with her that way. [00:27:05] Speaker 00: An inventor with an explicit obligation to assign. [00:27:09] Speaker 00: Which she did not do. [00:27:11] Speaker 00: Which she did not do, but the obligation nevertheless existed. [00:27:15] Speaker 01: The obligation did exist, but she did not do it. [00:27:18] Speaker 01: There was no assignment made. [00:27:20] Speaker 01: There was no written assignment made of that. [00:27:24] Speaker 00: I wonder what that means. [00:27:25] Speaker 00: I'm not so sure that it's so clear cut. [00:27:28] Speaker 01: I think we have to look though at the fact that because the rights vest with the inventor in the first instance, it's very clear that we have to have a written assignment and the written assignment can be made presently. [00:27:41] Speaker 01: They chose not to use present language in the contract that they had with her for whatever reason. [00:27:47] Speaker 01: They said will assign. [00:27:48] Speaker 01: And then the fact that they did not enforce that agreement with her means that the rights have remained with her. [00:27:55] Speaker 01: Maybe. [00:27:56] Speaker 01: And we simply don't know. [00:27:57] Speaker 00: Maybe that hasn't been decided. [00:27:59] Speaker 00: We have no idea what rights remain with her. [00:28:02] Speaker 00: These patents have expired. [00:28:04] Speaker 00: Isn't that right? [00:28:04] Speaker 01: That's correct, Your Honor. [00:28:06] Speaker 01: That's correct. [00:28:07] Speaker 01: But I still think that based on the record, as we know it, she may have had an obligation [00:28:13] Speaker 01: to assign, sorry, there was a contract that had language in it that says that there was an obligation to assign. [00:28:19] Speaker 01: We know that there was no enforcement of that agreement. [00:28:22] Speaker 01: We don't know whether or not there was a subsequent agreement between Ms. [00:28:25] Speaker 01: Xun and Mr. Wu or anyone else that, for example, changed those rights. [00:28:30] Speaker 01: And that's one of the reasons that we have to have a written assignment. [00:28:34] Speaker 01: It can't just be, oh, and somewhere somebody did a handshake and it all worked out. [00:28:40] Speaker 01: Well, that's by statute, yes. [00:28:41] Speaker 01: By statute. [00:28:42] Speaker 01: And I think the reasoning for that is so that everyone knows who needs to be a party to these suits so that it only happens one time. [00:28:49] Speaker 01: And here, under the clear record, there has been no assignment made from Ms. [00:28:56] Speaker 01: Shun, either as an individual or as the trustee, holding the legal right to the patent. [00:29:02] Speaker 01: And therefore, she remains a co-owner. [00:29:05] Speaker 00: Maybe it was equitably transferred. [00:29:08] Speaker 00: I don't think that there's any... [00:29:10] Speaker 00: On its face, she violated the agreement. [00:29:13] Speaker 00: On its face. [00:29:14] Speaker 00: But I don't believe what we... The only reason I hesitate... Any excuse. [00:29:18] Speaker 00: I agree. [00:29:19] Speaker 00: Who knows what else came into play. [00:29:22] Speaker 00: But on its face, all that there is in the record and no one has put in anything else is that she promised that I will do this. [00:29:30] Speaker 00: And when the time came, she said, go away. [00:29:32] Speaker 01: I agree with you, Your Honor. [00:29:34] Speaker 01: And yet... [00:29:35] Speaker 01: They then, anyone then at that point, whether it be Infochips, Wu, ABC, at that point, had the ability to sue for enforcement of the contract to make her do the assignment, and they did not. [00:29:48] Speaker 01: And it does beg the question, why not? [00:29:50] Speaker 01: Maybe there's something else that they know that we don't about whether or not the rights had changed. [00:29:56] Speaker 01: All we know is that legal title never passed from Ms. [00:30:01] Speaker 01: Xun, either as an individual or as a trustee, [00:30:05] Speaker 01: to anyone else, and therefore she is a proper co-owner, and the suit can't progress without her. [00:30:10] Speaker 01: And that's why the district court dismissed with prejudice. [00:30:13] Speaker 00: They had also... You can't act on an equitable title? [00:30:17] Speaker 00: I think you can, under the appropriate circumstances. [00:30:21] Speaker 01: Under the appropriate circumstances where perhaps you are seeking only equitable relief, I think Your Honor might be right, but when you're... When you're talking about equitable title, why would that affect the relief? [00:30:32] Speaker 00: Because in order to, so what Crown Die made very clear. [00:30:35] Speaker 00: Anyway, if you're looking for an injunction, that's equitable relief. [00:30:38] Speaker 00: So maybe that's not an obstacle. [00:30:41] Speaker 01: I think had there only been seeking of an injunction, that hypothetically might have been something that we could have argued or briefed. [00:30:49] Speaker 01: And I would argue that in that case, maybe if they disclaimed all, if appellant here disclaimed all [00:30:56] Speaker 01: rights to any legal remedy, i.e. [00:30:58] Speaker 01: any money whatsoever, we might be having a different discussion. [00:31:02] Speaker 01: But that's not what's being sought here. [00:31:03] Speaker 01: And that's exactly what was happening in the die case. [00:31:07] Speaker 01: Because in the die case, there was a native right to sue given. [00:31:10] Speaker 01: And they said that if you're going to look for damages going into the past, you have to have a legal title, not just the equitable title that was transferred, but full legal title. [00:31:20] Speaker 05: And that's what we said in Abraxas, too, right? [00:31:22] Speaker 01: That's correct, Your Honor. [00:31:23] Speaker 01: And that was the same in the practice. [00:31:25] Speaker 01: So they specifically distinguished between legal and equitable and said in order to gain damages and sue, you have to have legal title. [00:31:33] Speaker 04: OK, any more questions? [00:31:34] Speaker 04: I have a question. [00:31:35] Speaker 04: Yes, please. [00:31:36] Speaker 04: On the pit claim provision, on the language where it ends, or mask works resulting from, and then it says any such application assigned here under, let's say instead of that, it said resulting from my employment. [00:31:56] Speaker 04: Would that, would that be an effective quit claim in your, in your view? [00:32:02] Speaker 01: If they had replaced the language from any such application assigned here under to from any thing that happens in my employment with the company. [00:32:12] Speaker 01: I think that might have. [00:32:13] Speaker 01: I haven't had time to think it all the way through, but I think it might happen. [00:32:17] Speaker 01: It's because the language here is very specific. [00:32:20] Speaker 04: My, my experience with quit claim deeds is that they're very difficult to get out of. [00:32:25] Speaker 04: And this language here, this last language to me is just not entirely clear. [00:32:32] Speaker 04: I mean, I can work for a company and I can give up all rights on patents that the company acquires under an assignment with another company. [00:32:46] Speaker 04: And the company says, just to make sure that there's no problems here, let's get a quick claim deed from Judge Arena. [00:32:53] Speaker 01: And I think if they did the quitclaim deed in language that said, and I hereby quitclaim any rights I had under anything that had my name on it, you might be right, but they didn't clearly said... Now, let's go back now that we got that straightened out. [00:33:07] Speaker 04: Let's go back and look at the language, any such application assigned here under to the company. [00:33:13] Speaker 04: Is that really only referring to the assignments made [00:33:20] Speaker 04: you know, under the employment agreement? [00:33:23] Speaker 01: I believe that it is, because it's within the exact same section called Retaining and Assigning Inventions and Original Works, of which the second paragraph specifically describes what she needs to do to assign those works. [00:33:37] Speaker 01: And so I absolutely believe that they're linked together. [00:33:40] Speaker 01: And it's not a broader category. [00:33:42] Speaker 01: It's follows, the paragraph follows immediately, like not immediately thereafter, I think it's three paragraphs later. [00:33:48] Speaker 01: but specifically talking about assignments to that technology. [00:33:53] Speaker 01: And I think that refers directly back up to those that will be assigned. [00:33:57] Speaker 01: If nothing gets assigned, the quit claim doesn't kick in. [00:34:01] Speaker 01: They could have written it differently. [00:34:02] Speaker 01: They didn't. [00:34:03] Speaker 01: And by virtue of saying that the quit claim will apply to applications assigned here under to the company, it's acknowledging that if there is no assignment, there's no quit claim. [00:34:14] Speaker 04: Who wrote the agreement? [00:34:15] Speaker 04: Who wrote the agreement? [00:34:17] Speaker 04: Do we know? [00:34:18] Speaker 04: I don't know. [00:34:20] Speaker 01: The answer is I don't know, but if you look at the last page of the agreement, it's actually countersigned by Mr. Wu, who actually is one of the other inventors, who then took all of the other, you know, tried to buy all the rights of the info chips as it was going under. [00:34:38] Speaker 01: And so here I would think that an ambiguity would have to be construed against Mr. Wu. [00:34:44] Speaker 01: Right. [00:34:44] Speaker 01: so that he knew, because he knew what was happening. [00:34:47] Speaker 01: And then just one other thing that I'd add to your honor is that the contemporaneous facts of what else was happening at the time, which we actually know from the New Mexico Regents versus Knight case, are a very good place to look in order to figure out what's going on with the contract. [00:35:01] Speaker 01: When Mr. Wu attempted to bring Ms. [00:35:05] Speaker 01: Xun into the prosecution, he couldn't get her to sign, and he had to bring her into the prosecution. [00:35:10] Speaker 01: There are two boxes that you can actually check. [00:35:14] Speaker 01: on the form of whether or not you're bringing somebody in who has assigned their rights or someone who has agreed to assign in the future. [00:35:24] Speaker 01: And he checked the box for agreeing to assign. [00:35:26] Speaker 01: That's an argument we make in our papers. [00:35:30] Speaker 01: And so that's contemporaneous evidence that Mr. Sun himself realized that no assignment had been made, that their rights didn't already [00:35:38] Speaker 01: within his company. [00:35:39] Speaker 00: He was trying to get her to sign, and when she didn't sign... Well, because the invention hadn't been made when she became an employee, so this was the agreement to assign my inventions, which by definition were a future act. [00:35:54] Speaker 01: I agree with that, Your Honor, but what I'm talking about is at the point where the applications are being filed, the inventions do exist. [00:36:02] Speaker 00: So Mr. Wu gave the plain reading to [00:36:06] Speaker 00: the employment agreement, which said, I agree to assign. [00:36:09] Speaker 00: And she says, well, all right, but I'm not going to sign anything. [00:36:14] Speaker 01: Correct. [00:36:15] Speaker 01: And that pulls us right back to the fact that he knew that she still had to assign, that it was a future assignment, and that the future assignment hadn't been perfected. [00:36:25] Speaker 01: He also then, when he checked the box, he didn't say, and I already have all the rights. [00:36:29] Speaker 01: Because if you believe Appellant's argument, he didn't have to, because he already had all the rights. [00:36:34] Speaker 01: It was already all there with the employment agreement. [00:36:36] Speaker 01: he would have checked the box D that says, I already have everything that I need to have. [00:36:41] Speaker 01: And so you could just go forward without. [00:36:42] Speaker 01: Instead, he attached the box that says, I know that we still need to finish that off. [00:36:47] Speaker 01: I'm just using that as further example of the fact that the reading of the quit claim as being something in the future is supported by the contemporaneous actions of parties. [00:36:57] Speaker 00: Well, the patent didn't exist. [00:36:59] Speaker 00: So that in terms of an existing property right, [00:37:04] Speaker 00: All of this is, in a sense, perspective. [00:37:07] Speaker 01: But at the time, the things I'm talking about being contemporaneous, the patent did exist at that point. [00:37:12] Speaker 01: The application existed. [00:37:14] Speaker 01: I apologize, you're correct. [00:37:15] Speaker 01: The application existed. [00:37:16] Speaker 01: And what he checked is saying that the application... And who received the application? [00:37:21] Speaker 01: I'm sorry? [00:37:22] Speaker 04: Who received the rights to the application? [00:37:25] Speaker 01: the rights to the application vest in the inventors unless they have assigned their rights and so by when the assignment was recorded in the assignment so in the quick claim provision where it says application assigned here under under the contemporary facts to whom was the application assigned here under she did not assign to anyone so she retained the rights herself and the quick claim didn't kick in no was it assigned to the other inventors? [00:37:52] Speaker 01: so the other inventors [00:37:54] Speaker 01: Wu and Li did assign the application to the company, and that's recorded at A283. [00:38:05] Speaker 01: And they did an assignment after the fact. [00:38:09] Speaker 01: Correct. [00:38:09] Speaker 01: They actually affected a real assignment. [00:38:12] Speaker 05: If the agreement was such that they had all assigned as of the point in time when they were hired, they wouldn't have had to execute those later assignments. [00:38:19] Speaker 01: That's exactly correct. [00:38:20] Speaker 01: And the fact that they were trying to get Mishun to sign [00:38:23] Speaker 01: and they acknowledge that they needed to get her to sign and therefore had to go without her is contemporaneous evidence that supports the reading that the quick claim does not kick in at all until there's an assignment and no assignment was made. [00:38:39] Speaker 01: An assignment from her. [00:38:41] Speaker 01: An assignment from her. [00:38:42] Speaker 04: That's what you're saying, but that doesn't say this. [00:38:44] Speaker 01: But I think that's what it does say, Your Honor. [00:38:46] Speaker 04: Well, you want us to read into some words here and acknowledge [00:38:50] Speaker 04: where within the overall structure of the employment agreement, the quit claim provision. [00:38:56] Speaker 04: But the quit claim is a pretty strong language. [00:38:59] Speaker 04: And it does say, I hereby waive a quit claim to the company, any and all claims. [00:39:05] Speaker 04: And it goes on. [00:39:07] Speaker 04: It ends up by saying, I sign here under. [00:39:09] Speaker 04: And everyone's argued that this means sometime in the future. [00:39:13] Speaker 04: It relates to a potential assignment. [00:39:17] Speaker 04: As soon as the application was made and the panel was granted, or the application was granted, the quit claim could have kicked in at that point. [00:39:26] Speaker 01: I disagree. [00:39:26] Speaker 01: Nothing else has to happen. [00:39:28] Speaker 01: No, I disagree. [00:39:29] Speaker 01: It cannot kick in until an assignment has been made. [00:39:31] Speaker 04: And I think, in fact, Your Honor... It cannot have to be the assignment from her. [00:39:35] Speaker 01: I want it because the quick claim is about her. [00:39:39] Speaker 01: It's about what happens to her rights as an employee. [00:39:43] Speaker 01: It's all about her. [00:39:44] Speaker 04: Yeah, but the assignment of the application doesn't have to be just about her. [00:39:50] Speaker 01: Well, it does. [00:39:50] Speaker 01: Every inventor has their own United Rights in the application. [00:39:55] Speaker 04: And in order for the company to... But at the time she signed this, there was no application. [00:40:01] Speaker 01: because it talked about what she was going to if she assigned it. [00:40:04] Speaker 04: And she said, I hereby quitclaim of anything, any patent that is assigned. [00:40:11] Speaker 04: And I'm saying, why can't that be? [00:40:12] Speaker 04: It does say to the company, assignable, but it doesn't say from whom. [00:40:17] Speaker 04: So it seems to me this quitclaim provision can be read to mean any patents or any type of interests that [00:40:27] Speaker 04: that this company acquires, I hereby quit claim. [00:40:31] Speaker 01: No, I disagree, Your Honor. [00:40:32] Speaker 01: And again, it's because you have to look at the very specific language. [00:40:35] Speaker 01: As you yourself pointed out, quit claims are very tough things. [00:40:39] Speaker 01: They're broad and they're hard to get out of. [00:40:41] Speaker 01: And so I think what this language is saying- They're binding. [00:40:43] Speaker 04: They're binding the minute you make it. [00:40:46] Speaker 01: When you make it. [00:40:47] Speaker 01: And what this is saying is, we're not going to make it. [00:40:49] Speaker 01: We're not going to have the quit claim come into being until there's an assignment of rights. [00:40:56] Speaker 04: Then it should have said as of and such time that but it doesn't say that it she gave up her rights immediately without exception and And it goes back to the interpretation. [00:41:08] Speaker 04: I think of the words such application assigned here under to the company, but we don't know It seems to me as it could refer to to all Including mine everything I give up I won't sue you company if you get a patent [00:41:25] Speaker 04: in the future that even I have nothing to do with, I'm not a named inventor, I still won't claim any type of interest in that. [00:41:32] Speaker 01: As long as it's an application that's been assigned to the company, that's the problem. [00:41:36] Speaker 01: You have to give the language meaning. [00:41:39] Speaker 01: I hereby waive any rights that I have in any application assigned to the company. [00:41:44] Speaker 01: Assigned here under, meaning assigned under that particular employee. [00:41:48] Speaker 01: That's exactly correct. [00:41:49] Speaker 01: And so it has to do with what she's assigning because it's assigned here under. [00:41:54] Speaker 01: anything that's ever assigned, no matter what, no matter how, if that were the case, they wouldn't have said, assigned here under. [00:42:01] Speaker 01: They would have just said, to any rights that the company may have. [00:42:04] Speaker 01: And so I think you have to give meaning and weight to assigned here under. [00:42:09] Speaker 01: And therefore, the quit claim doesn't even kick in until an assignment's been made. [00:42:13] Speaker 01: And we know that she never made such an assignment. [00:42:16] Speaker 00: OK, good. [00:42:18] Speaker 00: Thank you very much, Roger. [00:42:21] Speaker 00: OK, Mr. Morris. [00:42:24] Speaker 03: My adversary just said you have to give the language meaning. [00:42:33] Speaker 03: To give the language meaning according to the way she views a good claim, it can never have any meaning. [00:42:38] Speaker 03: It just can't. [00:42:39] Speaker 05: Well, she just explained how it could have meaning. [00:42:41] Speaker 05: It could have meaning for a period of time if, in fact, the patent issued and the assignment didn't occur until later because our case law says that it's at the point of the assignment that [00:42:52] Speaker 05: the rights of the employer kick in and so therefore she could be quick claiming anything that occurred prior to the actual date of the actual assignment. [00:43:02] Speaker 05: Right? [00:43:07] Speaker 03: Is your hypothetical that she signed the assignment after the patent issues and is this some intervening period? [00:43:13] Speaker 00: Yeah. [00:43:15] Speaker 05: I mean, you would have loved it if she assigned it at any point in time, right? [00:43:21] Speaker 05: I mean, that's what our case law specifically says. [00:43:23] Speaker 03: Sure, but the decision is a tale of two ways to construe words. [00:43:29] Speaker 05: When you're looking at... Well, what could a signed here under possibly mean other than under the terms of that particular employment agreement? [00:43:38] Speaker 03: The terms assigned here under are used multiple times in the employment agreement. [00:43:42] Speaker 05: Right, but it all relates to that agreement, right? [00:43:46] Speaker 05: So the quit claim doesn't get you anything more than [00:43:50] Speaker 05: your argument that the assignment was effective as of the date of employment? [00:43:56] Speaker 03: Yeah. [00:43:57] Speaker 03: I mean, I hereby waive is earlier in the court's decision, hereby is magic language. [00:44:06] Speaker 03: And the district court chastises AVT essentially with regard to will assign. [00:44:11] Speaker 03: Right. [00:44:12] Speaker 05: She's waiving it as of that point in time, but only as to something that's ultimately assigned under the employment agreement. [00:44:20] Speaker 03: I respectfully disagree. [00:44:25] Speaker 03: It's a present quit claim. [00:44:27] Speaker 03: The quit claim is a quit claim. [00:44:28] Speaker 03: You can't get it back. [00:44:30] Speaker 03: It's not saying, I hear by quit claim, but we're not going to hear by anything until some future date and some future time. [00:44:38] Speaker 03: I hear by quit claim any intellectual property that gets developed as part of my employment with the company. [00:44:46] Speaker 05: But that's not what it says. [00:44:48] Speaker 05: There's lots of things that could have changed the position you're in. [00:44:51] Speaker 05: One is a better written contract. [00:44:53] Speaker 05: Another is a lawsuit to enforce any of these agreements. [00:44:56] Speaker 05: A third possibly would have been an effort to try to involuntarily join on the theory that she's a trustee. [00:45:02] Speaker 05: But you didn't do any of that. [00:45:04] Speaker 03: We couldn't voluntarily join her in her name. [00:45:07] Speaker 03: I mean... Why not? [00:45:09] Speaker 03: California law says we can't. [00:45:11] Speaker 03: California law says that [00:45:13] Speaker 03: A trustee cannot file any lawsuit. [00:45:16] Speaker 00: The joiner is the inventor, not as a trustee. [00:45:19] Speaker 03: Excuse me? [00:45:20] Speaker 03: I'm sorry, Your Honor. [00:45:23] Speaker 03: I didn't hear what you said. [00:45:26] Speaker 00: The joiner is not as a trustee. [00:45:28] Speaker 00: The joiner is the inventor, not as the beneficiary of the trustee. [00:45:33] Speaker 05: The person with legal title. [00:45:36] Speaker 00: A person with some arguable claim to quiet the title. [00:45:42] Speaker 00: This seems to be what the district judge had in mind when she mentioned the things that she said weren't done. [00:45:50] Speaker 03: I mean, the district judge had anything in the district judge's mind to get rid of the case because... No, you keep saying all that. [00:45:58] Speaker 05: I mean, yes, I know that that earlier opinion was inappropriate. [00:46:02] Speaker 05: There was language in there that was totally unnecessary. [00:46:06] Speaker 05: Having said that, this opinion, you can't say she just gave it the back of her hand. [00:46:10] Speaker 05: She very carefully walked through every single one of your arguments. [00:46:15] Speaker 03: And in some instances, when it's convenient for her, and when she's talking about the trust and she's talking about will assign, she sarcastically says, oh, you can't do both of those at the same time. [00:46:25] Speaker 03: And therefore, I find that will assign has to be future so that she can hold everything in trust. [00:46:31] Speaker 03: The quit claim's the same kind of thing. [00:46:32] Speaker 03: It's the same kind of language. [00:46:34] Speaker 03: You can't quit claim something you don't have. [00:46:37] Speaker 03: With regard to the trust, the trust is the trust and the court acknowledges the trust. [00:46:42] Speaker 03: You know, in the world of patent law, if you have an exclusive license, if you get an exclusive license, the patentee doesn't have to be joined. [00:46:49] Speaker 05: So if you think the trust will exist, you could sue her for breach of her fiduciary obligations as trustee, right? [00:46:56] Speaker 03: The rights to the quit claim and the rights under the trust or the rights to the quit claim got rid of the ability to sue. [00:47:06] Speaker 03: We went to the receiver. [00:47:07] Speaker 03: We went to the Delaware court. [00:47:11] Speaker 05: But all the receiver said is, I give you everything that they might have had. [00:47:15] Speaker 05: He didn't make a determination as to what that was. [00:47:19] Speaker 05: I mean, I could give you everything that Judge Raina has in terms of his interest in this patent, and that gives you nothing, right? [00:47:25] Speaker 03: That would give me nothing. [00:47:27] Speaker 03: Judge Raina doesn't have any interest in this. [00:47:30] Speaker 03: But what the receiver did was the receiver went [00:47:32] Speaker 03: and did an independent investigation to see if anybody had any claims against the company. [00:47:38] Speaker 03: I mean, there was some discussion when my adversary was up here talking about basically because the company was dissolved, what would happen, whether the rights would revert to the inventor. [00:47:51] Speaker 03: I mean, that's simply not the law. [00:47:53] Speaker 03: She can't be the ultimate beneficiary just because the company's dissolved. [00:47:57] Speaker 03: And when we deal with [00:48:00] Speaker 03: credential standing, we're dealing with substantial rights, all the substantial rights. [00:48:04] Speaker 03: ABT has all the substantial rights. [00:48:07] Speaker 03: No matter how you look at it, no one else can file a suit. [00:48:11] Speaker 03: The defendants are not at risk of getting sued by anyone else. [00:48:15] Speaker 03: We have all of the substantial rights. [00:48:17] Speaker 03: And that's what the case law consistently talks about. [00:48:20] Speaker 03: If you're dealing with the arachnid cases, they're basically simple cases that says you didn't get all the inventors to sign. [00:48:26] Speaker 03: There aren't provisions of trust. [00:48:28] Speaker 03: There's not provisions of quit claim. [00:48:30] Speaker 03: In this instance, Vivian Shun has no rights under California law. [00:48:34] Speaker 03: She can't be named as a plaintiff. [00:48:37] Speaker 03: And so if we joined AVC, who we got the rights from through everything else, it's the same situation. [00:48:46] Speaker 03: It's the same set of defendants. [00:48:49] Speaker 03: I mean, it's the same parties who are asserting the patent. [00:48:52] Speaker 03: The defendants have no risk of getting sued by anyone else. [00:48:55] Speaker 03: And that's the whole basis of credential standing. [00:48:57] Speaker 03: It's not statutory. [00:49:00] Speaker 03: It's the risk of being sued by multiple parties. [00:49:05] Speaker 03: The system doesn't work if a defendant goes through all the expense of a lawsuit against someone, and then they get sued all over again by somebody else. [00:49:13] Speaker 03: The insured can't sue them. [00:49:16] Speaker 03: She can't sue them on her own behalf. [00:49:17] Speaker 03: She can't sue them on behalf of ABC. [00:49:19] Speaker 03: ABC is a dissolved corporation. [00:49:21] Speaker 03: InfoChips is a dissolved corporation. [00:49:23] Speaker 05: Well, we may have discussed those concepts about the danger of a defendant facing multiple lawsuits. [00:49:30] Speaker 05: Our case law is very, very clear that that's simply one purpose behind our hard and fast rule that you have to have legal title. [00:49:38] Speaker 03: Right. [00:49:38] Speaker 03: And what my adversary wants you to do is they want you to look at this as it's a black and white test. [00:49:43] Speaker 03: If you don't have all the co-inventors, you're out. [00:49:46] Speaker 03: And this court has consistently said sometimes that's the rule and sometimes it's not. [00:49:51] Speaker 05: No. [00:49:52] Speaker 05: The only time it's not the rule is when all rights have been transferred to a licensee. [00:50:01] Speaker 05: And in those circumstances, it has to be all substantial rights. [00:50:05] Speaker 05: And here the court found that the transfer hadn't actually yet occurred. [00:50:10] Speaker 03: And there are lots of cases that say if you have all of the rights to sue for patent infringement, you have all the rights. [00:50:18] Speaker 03: she quit claimed her rights to InfoChips when she signed the employment agreement. [00:50:23] Speaker 03: When she signed her employment agreement, that employment agreement went through the LMS bankruptcy to AVC. [00:50:30] Speaker 03: We got all the rights from AVC that they had. [00:50:34] Speaker 03: And so when the receiver assigned the rights to the other two inventors, and they assigned the rights that AVC had, they had the rights that were quit claimed to AVC through InfoChips. [00:50:47] Speaker 03: Therefore, we had all the substantial rights. [00:50:49] Speaker 03: We had all the rights to sue. [00:50:52] Speaker 03: And that's all we need. [00:50:56] Speaker 00: OK. [00:50:56] Speaker 02: Thank you very much. [00:50:58] Speaker 00: All right. [00:50:59] Speaker 00: Thank you both. [00:51:00] Speaker 00: We'll take this under advisement. [00:51:02] Speaker 00: That concludes the arguments for this session. [00:51:06] Speaker 02: All rise.