[00:00:20] Speaker 00:
All right next case this morning is number 16-1579 plus Chico's FAS ink versus Claire Mr.. Dixie

[00:00:52] Speaker 02:
May it please the court, counsel?

[00:00:54] Speaker 02:
Good morning, Your Honor.

[00:00:58] Speaker 02:
Your Honor, we're here seeking reversal of the trial court's order on summary judgment after a motion for reconsideration.

[00:01:08] Speaker 02:
The overarching issues here, Your Honor, are inventorship, invalidity, and ultimately, depending on how the court rules, infringement.

[00:01:17] Speaker 02:
Inventorship

[00:01:20] Speaker 00:
How can infringement be for us when she denied summary judgment on the infringement?

[00:01:27] Speaker 02:
Infringement would be for Wink, Your Honor, if the court were to decide.

[00:01:33] Speaker 00:
No, but you can't appeal the denial of summary judgment.

[00:01:37] Speaker 00:
It's not possible.

[00:01:40] Speaker 02:
I'm sorry, Your Honor?

[00:01:41] Speaker 00:
You're trying to appeal the denial of summary judgment on your infringement theory.

[00:01:46] Speaker 00:
You can't appeal the denial of summary judgment.

[00:01:49] Speaker 02:
It depends on how this court rules on inventorship.

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If the court were to find that Johnson is not an inventor, that the district court was wrong.

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You cannot appeal a denial of summary judgment.

[00:02:02] Speaker 00:
It's not an appealable order.

[00:02:03] Speaker 02:
I understand what you're saying, Your Honor.

[00:02:07] Speaker 02:
Go ahead.

[00:02:09] Speaker 02:
What I meant to say, Your Honor, was that the overarching principle here, the anchor issue, is inventorship.

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We filed cross motions or cross motions for summary judgment filed in the trial court.

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Subsumed in those cross motions for summary judgment were issues relating to the design patent and the utility patents.

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The trial court determined that Johnson was an inventor.

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When that trial court did that, she pivoted the entire case into establishing the inventorship of the utility patents and then subsumed the design patents.

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And she also changed the conception date in determining that Johnson was the inventor.

[00:02:55] Speaker 01:
She changed it to January 15.

[00:02:57] Speaker 01:
If we agree with the district court that Johnson was the inventor, what is left in this case for us to decide?

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So if the court agrees Johnson's an inventor, there's still the issue of whether Canadian law governs the contract.

[00:03:11] Speaker 02:
The contract, there was still that issue after her inventorship, where the court

[00:03:16] Speaker 02:
took the contract that was signed in Canada and determined under this contract whether, number one, whether it was- Wait, you're still talking about inventorship though, right?

[00:03:27] Speaker 01:
It's inventorship and then whether she abandoned her path.

[00:03:31] Speaker 01:
That's correct.

[00:03:32] Speaker 01:
I'm sorry, I wasn't clear.

[00:03:34] Speaker 01:
Assume the whole thing the district court's right on, that she was the inventor and she didn't abandon it.

[00:03:39] Speaker 01:
I'm trying to figure out

[00:03:40] Speaker 01:
What are the infringement invalidity things you think are left that we have to decide if we think she was right on Johnson was the inventor and retained her right?

[00:03:51] Speaker 02:
I would still think, Your Honor, there's clarification needed with regard to whether she was the inventor of the design patent or the utility patents.

[00:03:59] Speaker 02:
For example, the design patent, it's nothing more than a combination of a broad... Yeah, but put aside the inventorship questions.

[00:04:05] Speaker 00:
What's left, the answer is,

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There's nothing left with respect to the design patent, but as to the two utility patents, there's still this determination of invalidity based on anticipation, right?

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

[00:04:19] Speaker 00:
Which Claire still has an interest in because she is, under the district court's decision, one of the inventors.

[00:04:28] Speaker 02:
Yes, Your Honor.

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And that anticipation date is critical with regard

[00:04:34] Speaker 02:
I hate to bring it back to inventorship again, but the court acknowledged Clare as a co-inventor, but chose the date of conception as January 15th.

[00:04:45] Speaker 02:
That's just four days after the prior art cited that anticipates the invention.

[00:04:52] Speaker 02:
So that question of fact would remain.

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We would still have to go back to the trial court for a jury to determine

[00:05:00] Speaker 02:
that four days, and the judge changed- I don't understand what you're saying.

[00:05:06] Speaker 02:
Okay.

[00:05:07] Speaker 02:
When the judge determined Johnson was an inventor, she then went to go to determine whether invalidity, this argument of invalidity, whether the notary contour law- Over the contour.

[00:05:20] Speaker 02:
Right.

[00:05:20] Speaker 02:
Anticipated.

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The judge said she accepted Johnson as the inventor, she accepted

[00:05:29] Speaker 02:
Ertl's affidavit saying that they made the bra on January 11, 2008.

[00:05:38] Speaker 02:
Critically missing from that affidavit was any mention that it was made in the U.S.

[00:05:43] Speaker 02:
There's no evidence that Ertl's affidavit establishing January 11, 2008 was made in the U.S.

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The judge then used that date as the anchor date for anticipation.

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Then she looked at Johnson's testimony and said,

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She conceived of the invention at earliest January 15th.

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That can't be correct.

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That absolutely is disputed issue of fact.

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Johnson's own deposition testimony states that the full coverage of the bra was determined in the month of December.

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If you recall, Claire hired Johnson in May 2007.

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In October 2007, she actually started working on it.

[00:06:31] Speaker 00:
They went back and forth between October... I'm sorry, I don't understand the relationship between these two January dates.

[00:06:38] Speaker 00:
She found that the contour bra was conceived of on January 11, 2008.

[00:06:43] Speaker 00:
What does that have to do, and that has to do with anticipation, what does it have to do with inventorship?

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She moved the date of invention forward.

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When she said Claire invented

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But this is the invention of the contour bra.

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This is not the date of the invention of the patented invention here.

[00:07:05] Speaker 02:
No, she says January 11th is the date of the invention of the patented invention.

[00:07:10] Speaker 02:
And January 11th is for the... Where did she say that?

[00:07:17] Speaker 02:
If you're looking at her order doc entry 128, appendix 14, it says, with a priority date of January 11th, 2008 for the contour bra,

[00:07:26] Speaker 02:
and a priority date of January 15, 2008 at the earliest for the invention asserted in the patents at issue.

[00:07:35] Speaker 02:
So the judge moved the date of invention forward based on Johnson's testimony.

[00:07:44] Speaker 02:
Claire says, I invented it well before 2008.

[00:07:47] Speaker 02:
She said, I came up with the idea in 2004, 2005,

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Hired a bra maker in 2000.

[00:07:53] Speaker 00:
Yeah, but it wasn't a complete invention until Johnson made her contribution.

[00:08:00] Speaker 02:
That is an issue of fact.

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Deposition transcripts weren't meant to replace trial room testimony.

[00:08:07] Speaker 02:
And Claire should have a chance.

[00:08:08] Speaker 01:
Well, it's only an issue of fact if there's an actual, genuine issue of material fact in dispute.

[00:08:13] Speaker 01:
Yes, sir.

[00:08:15] Speaker 01:
I don't know what there is.

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I mean, Johnson's testimony is

[00:08:20] Speaker 01:
is that she added all these things that are part of the claims.

[00:08:23] Speaker 01:
What Claire invented didn't even seem to show up in the patent at all, putting fabric between two parts of the bra.

[00:08:30] Speaker 01:
I mean, it's a completely different patent.

[00:08:33] Speaker 02:
Okay.

[00:08:33] Speaker 02:
So then there's the design patent and the utility patents.

[00:08:36] Speaker 02:
In the design patent, there's no mention of anything.

[00:08:39] Speaker 02:
It says a combination of a bra and tank top, which Claire absolutely invented and conceived.

[00:08:45] Speaker 00:
No, no, that's not true because what

[00:08:49] Speaker 00:
Claire invented and conceived was putting the fabric between the two cups and the design patent shows the fabric going all the way across.

[00:08:58] Speaker 02:
That's what a tank top would do.

[00:09:01] Speaker 02:
The argument that the trial court accepted, which I disagree with your honor, is somehow we all agree Claire set a tank top over a bra.

[00:09:12] Speaker 02:
Clearly a tank top would cover the entire bra.

[00:09:16] Speaker 02:
Then, because of Johnson's testimony, the trial court reduced her tank top to an insert.

[00:09:25] Speaker 02:
That's a question of fact.

[00:09:26] Speaker 02:
Who did that?

[00:09:27] Speaker 02:
That was done as a matter of law and that's not correct.

[00:09:30] Speaker 02:
That's a question of fact.

[00:09:32] Speaker 02:
Claire said from day one, I want something like a tank top over a bra.

[00:09:37] Speaker 02:
Clearly the tank top covers the entire bra, covers the cuffs.

[00:09:40] Speaker 00:
No, I don't think it's clear at all.

[00:09:42] Speaker 00:
My understanding of what the district court said

[00:09:45] Speaker 00:
was that what Claire said was put the fabric between the two cups in the shape of a V, whereas the design patent shows the fabric going all the way across.

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And we have a drawing by Johnson showing that goes all the way across, and that that was one of her contributions.

[00:10:05] Speaker 02:
That insert, first of all, Your Honor, was made by a different bra manufacturer than Johnson.

[00:10:13] Speaker 02:
Claire first took the tank top and bra idea to a prior bra maker who came up with that insert.

[00:10:19] Speaker 02:
She was not satisfied.

[00:10:22] Speaker 00:
Where in the record does it show that Claire invented the notion of having the fabric go all the way across?

[00:10:28] Speaker 00:
Show me.

[00:10:29] Speaker 02:
I can tell you just in Johnson's deposition testimony.

[00:10:35] Speaker 02:
Where?

[00:10:44] Speaker 02:
Again, that January 15th date was argued a lot.

[00:10:51] Speaker 02:
In the deposition testimony, appendix 895, page 61 of Johnson's deposition, if you recall, I said that they started actually working on the design version 1, version 2, version 3.

[00:11:11] Speaker 02:
Page 61, line 14.

[00:11:13] Speaker 02:
You'll see the full version by then somewhere between December 15th and January 15th, I had made the decision that I didn't like how it was going to go to production.

[00:11:22] Speaker 02:
Somewhere with the Christmas holidays, I would have created the full cami with the fabric going to the side.

[00:11:29] Speaker 01:
So as a result- I'm sorry, how does that support your contention that Claire created this?

[00:11:34] Speaker 01:
This is Johnson's deposition that she's the one that went to the full cami on the side.

[00:11:40] Speaker 02:
Claire's affidavit?

[00:11:41] Speaker 02:
And Tom Koskina's affidavit states she came up with these things.

[00:11:45] Speaker 02:
Well, why aren't you citing us to those?

[00:11:47] Speaker 02:
What do they say?

[00:11:49] Speaker 02:
We transition from January 15th back to inventorship, Your Honor.

[00:11:53] Speaker 02:
So I just want to clarify.

[00:11:54] Speaker 02:
I just want to show them.

[00:11:55] Speaker 01:
No, I think we're trying to ask you where there's a genuine issue that Claire created the tank top all the way over rather than the insert, not about dates.

[00:12:09] Speaker 02:
that the tank top goes over the entire bra, conceives the concept of the material going over the entire bra, over the cups, I should say.

[00:12:18] Speaker 01:
Right.

[00:12:19] Speaker 01:
So where is your evidence that Claire came up with that idea instead of Johnson?

[00:12:22] Speaker 02:
Her affidavits and her deposition testimony.

[00:12:25] Speaker 02:
Where?

[00:12:26] Speaker 02:
I will find that for you.

[00:12:49] Speaker 02:
There it goes.

[00:12:51] Speaker 02:
Appendix 497.

[00:12:51] Speaker 02:
498.

[00:12:52] Speaker 02:
498?

[00:13:04] Speaker 02:
Well, it's her entire declaration goes through it.

[00:13:06] Speaker 00:
No, no, no.

[00:13:08] Speaker 00:
I want to see where she says that she invented the thing going all the way across as opposed to Johnson's doing it.

[00:13:31] Speaker 02:
Between paragraphs 8 and paragraphs 12, she states that.

[00:13:38] Speaker 02:
Which page is it?

[00:13:39] Speaker 02:
Appendix 500 through 501.

[00:13:44] Speaker 00:
Where's the exact language?

[00:13:45] Speaker 00:
Which paragraph?

[00:13:50] Speaker 02:
I asked Ms.

[00:13:50] Speaker 02:
Johnson if she would help me create an updated prototype.

[00:13:53] Speaker 00:
Which paragraph is this in?

[00:13:54] Speaker 02:
Oh, I'm starting from paragraph 9.

[00:13:59] Speaker 00:
Yeah, OK.

[00:14:04] Speaker 02:
Actually, paragraph 12.

[00:14:05] Speaker 02:
Under our agreement, Ms.

[00:14:06] Speaker 02:
Johnson provided at least two updated prototypes of a cami bra pattern for the cami bra, and she provided under my direction the figures for the design patent applications, which resulted in the U.S.

[00:14:17] Speaker 02:
PAC number D622478.

[00:14:19] Speaker 00:
That's your evidence that Claire invented the fabric going all the way across?

[00:14:28] Speaker 02:
Well, it's in the entirety of her testimony, Your Honor.

[00:14:31] Speaker 00:
No, that doesn't cut it.

[00:14:34] Speaker 00:
Don't come in here and tell us about the entirety of the testimony.

[00:14:39] Speaker 00:
Somebody said, like, pigs hunting for truffles in the forest.

[00:14:43] Speaker 00:
Where is it?

[00:14:46] Speaker 01:
I mean, even this affidavit is inconsistent with what you're saying.

[00:14:50] Speaker 01:
On paragraph 7, which you didn't direct it to, it says,

[00:14:55] Speaker 01:
I took a black bra and asked if he could sew black fabric across the front to create a cami bra.

[00:15:01] Speaker 01:
I mean, that suggests exactly what everybody, or at least the district court, thought she did admit, which was putting fabric between the bra.

[00:15:09] Speaker 02:
None of her testimony relates to limiting cutting a tank top to just the V insert.

[00:15:17] Speaker 01:
I thought you said that's what the prior person made.

[00:15:21] Speaker 01:
And this is the prior person, isn't it?

[00:15:23] Speaker 01:
And it says, I showed him how I wanted it to look, and under my direction, he made it for me.

[00:15:28] Speaker 02:
And she wasn't done.

[00:15:30] Speaker 01:
Yes, but that's what she did.

[00:15:32] Speaker 02:
That's why she went to the next inventor.

[00:15:34] Speaker 01:
But this doesn't say anything about what she told her to do.

[00:15:37] Speaker 01:
The testimony for Ms.

[00:15:38] Speaker 01:
Johnson is that she's the one that came up with the idea.

[00:15:42] Speaker 02:
No.

[00:15:42] Speaker 02:
The testimony, Your Honor, I would assert, is that Ms.

[00:15:45] Speaker 02:
Johnson was answering to Claire, who hired a contractor.

[00:15:50] Speaker 02:
If I hire a contractor, the contractor doesn't tell me what I'm done.

[00:15:55] Speaker 01:
So point us to something in the record where Claire says, I told Ms.

[00:15:59] Speaker 01:
Johnson to put the fabric across the entire bra.

[00:16:05] Speaker 02:
I believe her declaration says that, Your Honor.

[00:16:08] Speaker 02:
And I believe that her instructions and her deposition testimony to Johnson saying that I want a tank top over the bra

[00:16:19] Speaker 02:
covers the material overlay.

[00:16:21] Speaker 02:
If you go to the claims of the patent, the design patent says a combination.

[00:16:24] Speaker 04:
What did she say exactly when you just mentioned her?

[00:16:29] Speaker 04:
She told her, I wanted a tank top over a bra.

[00:16:33] Speaker 04:
Can you point in the record where those exact words are?

[00:16:37] Speaker 02:
The tank top over the bra?

[00:16:40] Speaker 02:
Yeah.

[00:16:40] Speaker 02:
It's in the patent itself.

[00:16:42] Speaker 02:
And in her deposition testimony, I'm way.

[00:16:45] Speaker 00:
Now you've got to answer the question.

[00:16:47] Speaker 02:
OK.

[00:16:57] Speaker 00:
Why don't you see if you can come up with it.

[00:16:59] Speaker 00:
We'll give you two minutes for a bottle.

[00:17:00] Speaker 00:
Thank you.

[00:17:07] Speaker 00:
Mr. Santuri.

[00:17:11] Speaker 03:
May it please the court.

[00:17:15] Speaker 03:
What we have is a relatively straightforward case.

[00:17:18] Speaker 03:
It really turns on testimony directly from the named inventor.

[00:17:23] Speaker 03:
And that's where I'm going to start.

[00:17:25] Speaker 03:
I'm going to start at appendix 834 of the record.

[00:17:29] Speaker 03:
There is testimony from Ms.

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Claire, one of the named inventors.

[00:17:33] Speaker 03:
Is there some aha moment that you had when you came up with the design shown in Exhibit 1, which was the 478 design patent?

[00:17:40] Speaker 03:
With that exact design, she asked, yes, ma'am.

[00:17:43] Speaker 03:
When I was working with a bra maker, OK, who is that?

[00:17:45] Speaker 03:
Her name is Beverly Johnson.

[00:17:48] Speaker 03:
So we're not talking about some vague idea of covering cleavage with fabric or with a bra.

[00:17:54] Speaker 03:
When asked specifically about the design that's in the Pattinson suit, Ms.

[00:17:59] Speaker 03:
Claire was unequivocal.

[00:18:00] Speaker 03:
It wasn't conceived until she was working with the bra maker.

[00:18:05] Speaker 03:
A few pages later in her testimony on page 848 of the appendix, I asked about specific aspects that Miss Johnson contributed.

[00:18:13] Speaker 03:
Did you develop a unique turn under sewing technique?

[00:18:17] Speaker 03:
I did not.

[00:18:18] Speaker 03:
Did you come up with the idea to use a turn under sewing technique for your cami bra?

[00:18:22] Speaker 03:
No.

[00:18:23] Speaker 03:
Do you know what a turn under sewing technique is?

[00:18:25] Speaker 03:
No.

[00:18:26] Speaker 03:
Do you know who came up with the turn under sewing technique in this patent?

[00:18:31] Speaker 03:
That would have been the bra maker.

[00:18:34] Speaker 03:
Later in her deposition, page 856, did Miss Johnson suggest to you that the material covering needed to be molded?

[00:18:42] Speaker 03:
Yes.

[00:18:43] Speaker 03:
Why did the material need to be molding?

[00:18:45] Speaker 03:
I don't mold it.

[00:18:46] Speaker 03:
I don't recall.

[00:18:47] Speaker 03:
Do you know how fabric is molded?

[00:18:48] Speaker 03:
No.

[00:18:48] Speaker 03:
Do you know what it means to be bubble molded?

[00:18:50] Speaker 03:
I don't know.

[00:18:51] Speaker 03:
I haven't seen it.

[00:18:54] Speaker 03:
The deposition testimony was very clear.

[00:18:56] Speaker 03:
When it comes to the details of the patent, to the claimed inventions, Ms.

[00:19:00] Speaker 03:
Clare was straightforward and honest.

[00:19:02] Speaker 03:
Ms.

[00:19:02] Speaker 03:
Johnson contributed various aspects of it.

[00:19:05] Speaker 03:
The appellant has conceded that these aspects of the design go throughout the claims.

[00:19:11] Speaker 04:
What's your bottom line on the invalidity question of both the utility patent and the design patent?

[00:19:17] Speaker 03:
Your Honor, I'm not sure that the court would have standing any longer to continue

[00:19:22] Speaker 03:
that inquiry, I think that once Ms.

[00:19:24] Speaker 03:
Johnson became, once she received an interest by virtue of the inventorship question, both sides reached out and asked her to assign her rights.

[00:19:33] Speaker 03:
She assigned those rights to Chico's.

[00:19:35] Speaker 03:
And so now the owners of the patent are Ms.

[00:19:37] Speaker 03:
Claire and Chico's.

[00:19:40] Speaker 03:
And I don't believe that there would be a dispute between these two parties as to invalidity, because I don't believe current owners can pursue court action as to invalidity.

[00:19:49] Speaker 00:
Well, what are we supposed to do about the invalidity?

[00:19:51] Speaker 00:
There's no finding of invalidity as to the design path, right?

[00:19:54] Speaker 03:
That's correct, Your Honor.

[00:19:55] Speaker 00:
There's anticipation findings with respect to the two utility paths.

[00:19:58] Speaker 03:
Correct, Your Honor.

[00:19:59] Speaker 00:
What are we supposed to do about that?

[00:20:01] Speaker 03:
I think that with respect to those rulings, they're just affirmed because there's no further that this court can go.

[00:20:08] Speaker 03:
Or the invalidity findings are vacated as a result of the loss of standing.

[00:20:15] Speaker 01:
Which?

[00:20:17] Speaker 01:
How can we affirm them if there's no standing for you two to dispute them?

[00:20:21] Speaker 03:
You're probably right, Your Honor.

[00:20:22] Speaker 03:
They probably have to be vacated now that the only parties to the suit are both owners.

[00:20:28] Speaker 04:
A patent owner can't challenge his own lawsuit, his own patent?

[00:20:33] Speaker 03:
I don't know how there would be a case or controversy for the patent owner to challenge his own patent within an Article III court, Your Honor.

[00:20:43] Speaker 04:
Well, what happens if a reputable, say, pharmaceutical manufacturer gets a patent and then learns later to their great horror that the people that prosecuted the patent in the patent office engaged in equitable conduct, lied to the patent office, taken a very fine company, and they say, we don't, that patent has to be unenforceable.

[00:21:07] Speaker 04:
And so they seek to have the patent declared unenforceable for an actual conduct.

[00:21:12] Speaker 03:
I'm not sure that, I don't believe they would be standing to do so.

[00:21:14] Speaker 00:
I think that- Well then why did you raise the issue?

[00:21:17] Speaker 00:
That's your cross-appeal.

[00:21:18] Speaker 03:
No, no, Your Honor.

[00:21:19] Speaker 03:
Our cross-appeal is to unenforceability and only if the court reverses the judge as to invention.

[00:21:25] Speaker 03:
You raised it as to unenforceability.

[00:21:27] Speaker 04:
Yes, Your Honor, but- And if its patent is unenforceable, it's just as good as it being invalid.

[00:21:32] Speaker 03:
That's true, Your Honor, but

[00:21:34] Speaker 04:
As you know, under the case law, if the inequitable conduct was engaged in by, say, for example, Claire, the inequitable conduct ruling stings the innocent co-inventor as well.

[00:21:49] Speaker 03:
That's probably true, but that's why... It is true under the case law.

[00:21:51] Speaker 03:
But that's why our cross-appeal is couched as if there's questions to inventorship.

[00:21:55] Speaker 03:
This court could reverse the judge and find that Johnson isn't an inventor.

[00:21:59] Speaker 04:
But it's not really even a conditional cross-appeal.

[00:22:02] Speaker 04:
It doesn't say you can only reach

[00:22:04] Speaker 04:
It says, we don't need to reach it.

[00:22:19] Speaker 03:
Permission.

[00:22:20] Speaker 03:
I see where the court's going.

[00:22:21] Speaker 03:
Yes, Your Honor, I don't believe the court can reach it if the inventorship rulings and the ruling on the motion to dismiss from the lower court is affirmed.

[00:22:31] Speaker 03:
I don't believe the court can address the invalidity findings and I don't believe the court can deal with inequitable conduct.

[00:22:41] Speaker 00:
And I think that then... But the question is, should we vacate the invalidity findings?

[00:22:54] Speaker 03:
I think that the court has...

[00:23:00] Speaker 03:
I believe that the court made these findings at the same time.

[00:23:03] Speaker 03:
Arguably there was case of controversy at the time that the court made this bulk of findings, both in mentorship and in validity.

[00:23:13] Speaker 03:
But I think now the parties can no longer contest those issues.

[00:23:18] Speaker 03:
And I believe that they can be, that they just are simply vacated.

[00:23:23] Speaker 03:
The parties can't move forward.

[00:23:24] Speaker 03:
I don't believe the parties would be able to move forward on these issues in the future because they have knowledge that the patents are invalid based on the findings of this lower court.

[00:23:33] Speaker 03:
But I don't believe that necessitates a finding of invalidity by this court.

[00:23:37] Speaker 03:
I think that my obligations under rule level would prevent me from continuing to assert that patent knowing of the invalidity based on the evidence in this case.

[00:23:53] Speaker 04:
And proceed with the 256 hearing on invadership?

[00:23:59] Speaker 03:
Your Honor, I suppose the court could do so, but I'm not sure it's... That's where it looked like it was headed.

[00:24:05] Speaker 04:
Right.

[00:24:06] Speaker 04:
And according to your briefs, it looks like you think that Johnson's the sole inventor.

[00:24:11] Speaker 03:
Well, I believe the lower court finding was that Johnson and Clare are both inventors and Casquinas were not.

[00:24:18] Speaker 03:
And I believe that if this court affirms that finding,

[00:24:23] Speaker 03:
then, yes, the 256 hearing, I suppose, could undergo just for the formalities of correcting inventorship on the face of the patent.

[00:24:31] Speaker 03:
But other than that, I don't believe there'd be any further proceedings.

[00:24:33] Speaker 04:
But at that hearing, you could challenge that if you wanted to.

[00:24:35] Speaker 03:
Oh, challenge the funding.

[00:24:39] Speaker 03:
The joint inventorship.

[00:24:41] Speaker 04:
I'm not sure we've... Your brief is replete with statements that led me to believe that you thought that Claire wasn't an inventor at all.

[00:24:50] Speaker 03:
Yes, Your Honor, I don't believe that she's an inventor at all.

[00:24:53] Speaker 03:
However, I think that the lower court found otherwise and we haven't appealed that ruling that she's an inventor.

[00:25:00] Speaker 03:
So I think we're stuck with that finding and I think we'd be a stop from making an argument in a subsequent hearing that the court erred with that finding having not taken it up on appeal in this particular case.

[00:25:18] Speaker 04:
The court has dismissed your declaratory judgment complaint, correct?

[00:25:25] Speaker 04:
Yes, Your Honor.

[00:25:27] Speaker 03:
With prejudice?

[00:25:29] Speaker 03:
Yes, I believe so, Your Honor, because once Chico's

[00:25:33] Speaker 04:
received both the assignment and... Well, that's because, I mean, after the embeddership issue was resolved, the judge said, well, what do you want me to do now, right?

[00:25:44] Speaker 04:
We knew that the infringement counterclaim was out the window.

[00:25:48] Speaker 04:
Correct, Your Honor.

[00:25:49] Speaker 04:
And she said, well, what do you want me to do with your D.J.

[00:25:51] Speaker 04:
complaints?

[00:25:52] Speaker 04:
Correct.

[00:25:53] Speaker 04:
And you said, we don't think there's a case or controversy, so you should dismiss it.

[00:25:58] Speaker 03:
Correct, Your Honor, at the con versus U.S.

[00:26:00] Speaker 03:
Surgical.

[00:26:01] Speaker 03:
It was basically the same fact pattern where once it was a determination of an additional inventor, that inventor provided, I believe in that case, an exclusive license and covenant not to sue.

[00:26:11] Speaker 03:
Here we have an assignment and a covenant not to sue and a release.

[00:26:33] Speaker 00:
You didn't give us, in your appendix to the blue brief, the district court's most recent order.

[00:26:40] Speaker 00:
Your Honor, mine's not the blue brief.

[00:26:42] Speaker 00:
I mean, the blue brief didn't... Well, you in the red brief didn't give it to us either.

[00:26:48] Speaker 03:
I apologize, Your Honor.

[00:26:50] Speaker 03:
The most recent ruling on... She added another order in December.

[00:26:55] Speaker 03:
On Appendix 33, I had Appendix 33, the motion to dismiss with prejudice was granted.

[00:27:02] Speaker 04:
Hold on.

[00:27:04] Speaker 04:
I'm looking at document 140, is that correct?

[00:27:09] Speaker 03:
Document 138 is where she dismissed with prejudice.

[00:27:12] Speaker 04:
139 was your response to the court's request for position.

[00:27:21] Speaker 04:
And then 140, kind of Chico's count one and count two seeking VJ that are dismissed.

[00:27:31] Speaker 00:
Is 140 included in the appendix?

[00:27:33] Speaker 00:
No.

[00:27:35] Speaker 00:
But that's the most recent order I'm talking about.

[00:27:40] Speaker 00:
December 3rd.

[00:27:55] Speaker 04:
What you said was dismissal was appropriate.

[00:27:59] Speaker 04:
You didn't say whether it was with or without prejudice.

[00:28:01] Speaker 04:
She says dismissed, period.

[00:28:04] Speaker 04:
I'm sorry, which order, Your Honor?

[00:28:07] Speaker 04:
December 3rd.

[00:28:08] Speaker 00:
December 3rd.

[00:28:11] Speaker 03:
On December 1st, she dismissed with prejudice.

[00:28:15] Speaker 00:
Yeah, but she keeps entering orders.

[00:28:16] Speaker 00:
There's another order on December 3rd, which isn't in the appendix.

[00:28:22] Speaker 03:
I believe that one was dismissed with prejudice, Your Honor.

[00:28:25] Speaker 04:
It doesn't say so.

[00:28:27] Speaker 04:
I'm looking at it.

[00:28:27] Speaker 04:
I went and dug it up because you didn't have it in the record.

[00:28:31] Speaker 01:
If you're looking in the appendix for it, you're not going to find it because it's not there.

[00:28:35] Speaker 04:
It's not in there.

[00:28:37] Speaker 04:
I'm reading it to you.

[00:28:38] Speaker 04:
OK.

[00:28:39] Speaker 04:
I understand, Your Honor.

[00:28:41] Speaker 04:
She says, now Chico responds it believes these claims should be dismissed as a no longer alive case of controversy that qualifies in the D.J.

[00:28:48] Speaker 04:
Act.

[00:28:49] Speaker 04:
Court agrees and finds claims for non-infringement and validity must be dismissed.

[00:28:55] Speaker 04:
Accordingly, the claim of Chico's

[00:28:57] Speaker 04:
Count one and count two, document 61, seeking DJs of non-infringement invalidity are respectfully dismissed.

[00:29:05] Speaker 04:
Period.

[00:29:08] Speaker 03:
Well, consistent with that, Your Honor, I believe that.

[00:29:10] Speaker 03:
Well, she's already dismissed with prejudice based on in 138.

[00:29:18] Speaker 03:
And a follow on to that was at 140 where she dismissed the claims with respect to infringement and invalidity.

[00:29:26] Speaker 03:
She followed the same logic.

[00:29:28] Speaker 03:
I would view that as dismissed with prejudice.

[00:29:29] Speaker 03:
However, she doesn't explicitly state that in her order.

[00:29:37] Speaker 00:
What about cardinal chemical, which seems to say that where there's a finding of no infringement, you can still go on.

[00:29:44] Speaker 00:
In fact, you still have to go on and decide the invalidity question.

[00:29:50] Speaker 03:
Even why?

[00:29:51] Speaker 00:
I'm not sure that... No, never mind.

[00:29:58] Speaker 03:
If the Court doesn't have any further questions for me, I will cede the rest of my time.

[00:30:03] Speaker 00:
Okay.

[00:30:03] Speaker 00:
Thank you, Mr. Santuri.

[00:30:05] Speaker 00:
Mr. Dixit, we'll give you two minutes.

[00:30:13] Speaker 02:
I apologize for not having this ready, Your Honor, the first time.

[00:30:17] Speaker 02:
So I would direct the Court's attention to Appendix 839-840, where Claire generally speaks about the conception

[00:30:28] Speaker 02:
and specifically with regard to Appendix 840, page 82, her deposition.

[00:30:39] Speaker 02:
Mr. Centuri asks the question, presumably you've worn tank tops over bras long before then, right?

[00:30:45] Speaker 02:
Answer, yes.

[00:30:47] Speaker 02:
Were you trying to?

[00:30:48] Speaker 02:
Did you try to modify, strike that?

[00:30:49] Speaker 02:
In 2005, did you try to create a garment in combination with a tank top and bra?

[00:30:55] Speaker 02:
I agree it's vague.

[00:30:57] Speaker 02:
She goes on to clarify, yes, but I wanted it to be short, not long like a tank top.

[00:31:02] Speaker 02:
So it was, it wasn't just attached, but it was pin it up.

[00:31:07] Speaker 02:
That was the point.

[00:31:09] Speaker 02:
She goes on to further explain that she would cut the tank top and pin it underneath the bra so that she would get the coverage over the bra that she was seeking.

[00:31:21] Speaker 02:
When she went to bra makers is when the bra makers started converting her tank top over a bra to a panel.

[00:31:30] Speaker 02:
She was obviously not satisfied with the panel and went to Johnson and continued working with Johnson through almost most of 2007 and beginning of 2008 until Johnson created ultimately the design that Claire wanted.

[00:31:46] Speaker 02:
which was pulling the fabric up over the cleavage to get the coverage she need, plus the manufacturing.

[00:31:54] Speaker 02:
Remember, Claire wanted several sizes of her bra.

[00:31:58] Speaker 02:
She wanted to create her own line of new manufacturing.

[00:32:01] Speaker 02:
Johnson did nothing more than take prior art, apply it to Claire's idea, and reduce it to practice.

[00:32:09] Speaker 02:
But there is no doubt Claire's idea of the tank top over the bra, which she pinned under,

[00:32:15] Speaker 02:
was the, is the conceived dimension.

[00:32:17] Speaker 02:
And that's what's in the design patent.

[00:32:18] Speaker 02:
That's what the design patent says, a combination of a brassiere and tank top.

[00:32:23] Speaker 02:
Then the utility patents come.

[00:32:26] Speaker 01:
Where does she say she pinned it under?

[00:32:29] Speaker 02:
If you go up to page 83, same appendix 840, what do you mean pin it up?

[00:32:36] Speaker 02:
Pin what up?

[00:32:37] Speaker 02:
Pin the fabric of the tank top up so it was short, not long.

[00:32:41] Speaker 01:
That doesn't say she pinned it under.

[00:32:43] Speaker 01:
It goes on and says, I would have pinned it somewhere.

[00:32:46] Speaker 01:
On the shoulder straps, I don't recall.

[00:32:49] Speaker 01:
She doesn't even remember where she pinned it.

[00:32:52] Speaker 02:
Well, I guess it's fair to assume she means under the bra.

[00:32:59] Speaker 02:
She wouldn't pin it to a shirt.

[00:33:01] Speaker 01:
Well, she didn't even know in her deposition where she pinned it.

[00:33:05] Speaker 01:
Well, Your Honor, that's a question of fact.

[00:33:07] Speaker 01:
Whether the jury believes... How can it be a question of fact when she testified she didn't know where it pinned it?

[00:33:15] Speaker 02:
This is the first deposition she's ever taken in her life.

[00:33:18] Speaker 02:
I would believe that Claire needs to be cut some slack with regard to her memory, being under deposition.

[00:33:25] Speaker 02:
Depositions were not meant to replace trial

[00:33:29] Speaker 01:
courtroom testimony on a witness.

[00:33:31] Speaker 01:
So you still have to create a genuine issue.

[00:33:33] Speaker 01:
If this is it, you don't have it.

[00:33:34] Speaker 01:
Is there someplace else where she says, I actually did come up with the idea of pinning it under the bra, and over all of it?

[00:33:42] Speaker 01:
Because the next paragraph after that goes in and talks about the prototype she created with the other guy who pinned it between you.

[00:33:51] Speaker 02:
And what I believe corroborates Claire's testimony is she wasn't done with the other

[00:33:56] Speaker 02:
If the insert of the bra was such a great idea, if that was the idea or what she was stuck with, why would she continue hiring people?

[00:34:05] Speaker 02:
I mean, that's just a practical question.

[00:34:08] Speaker 02:
If the insert was her idea, she would have been done.

[00:34:12] Speaker 02:
And she clearly wasn't.

[00:34:14] Speaker 00:
OK.

[00:34:14] Speaker 00:
Thank you, Mr. Dixon.

[00:34:15] Speaker 00:
Thank you.

[00:34:16] Speaker 00:
Thank both counsel.

[00:34:17] Speaker 00:
The case is submitted.