[00:00:00] Speaker 02:
...1984, Emrechem Holdings versus Volkswagen Group.

[00:00:46] Speaker 02:
Mr. Bradford, please proceed.

[00:01:01] Speaker 04:
May it please the Court, I'm Michael Bradford up here on behalf of the Premier and Kim Holdings.

[00:01:04] Speaker 04:
And there are two basic issues here on appeal.

[00:01:07] Speaker 04:
The first being that the 558 patent should have been removed as prior art in view of the Campbell Declaration.

[00:01:13] Speaker 04:
Now, inventor declarations can be used in numerous ways in patent cases.

[00:01:18] Speaker 04:
And one of those is to overcome a presumption against the declarator.

[00:01:23] Speaker 04:
So, for example, if you're overcoming a presumption validity, the declaration must meet a clear and convincing standard.

[00:01:31] Speaker 04:
Now, other times, a declaration must only overcome a prima facie case to make a prima facie case evaporate.

[00:01:37] Speaker 04:
And in those cases, a declaration is only required to raise a question material facts.

[00:01:43] Speaker 04:
And the board, in its decision, used an incorrect legal standard in relying on the Woodland and Sand cases.

[00:01:51] Speaker 04:
Rather, in those cases, it required a clear and convincing evidence standard.

[00:01:56] Speaker 04:
Now here, Merricam only had to overcome a prima facie showing that the 558 patent is prior art.

[00:02:02] Speaker 04:
Therefore, Merricam only had to put forward evidence sufficient to raise a question of fact that Campbell and Guth invented the subject matter cited in the 558 patent.

[00:02:11] Speaker 05:
What case is the best authority for you that an inventor can swear away a prior patent by a bare assertion, through a declaration, that he was the inventor of the relevant passages of that prior patent?

[00:02:32] Speaker 04:
Well, as far as the most factually analogous, there are several patent office decisions.

[00:02:39] Speaker 04:
Ex parte Morishita.

[00:02:40] Speaker 04:
Ex parte, ABA.

[00:02:42] Speaker 05:
Okay, let's put those to the side.

[00:02:44] Speaker 05:
Sure.

[00:02:45] Speaker 04:
And so really, the two CCPA cases at issue are Katz and Debon.

[00:02:52] Speaker 04:
And if you look at Debon, for one, it states that an unequivocal declaration by itself, or unequivocal declaration is sufficient to remove a references priority.

[00:03:04] Speaker 05:
Well, we could debate that.

[00:03:05] Speaker 05:
Is there a quote that you have that says that?

[00:03:08] Speaker 05:
An unequivocal, bare assertion by the inventor that he is the inventor of passages 1, 5, 7, and 9 of the prior art patent is his and his own, and so therefore it's not by another?

[00:03:21] Speaker 04:
Well, it doesn't say a bare assertion is sufficient, but it also doesn't say that corroboration is necessary.

[00:03:26] Speaker 05:
Well, it talks about it's an evidence-based inquiry, and based on the record in that case,

[00:03:33] Speaker 05:
the CCPA was satisfied.

[00:03:38] Speaker 04:
And if you look at the record in that case, the Dabon Declaration, it's shown in the case, it says in paragraph A, I submitted, paragraph A says the drawing shows a device.

[00:03:52] Speaker 03:
Attached here too is an exhibit which is a drawing 73-315.

[00:03:55] Speaker 03:
Correct.

[00:03:55] Speaker 05:
Right, so the inventor in Dabon attached

[00:04:02] Speaker 05:
a contemporaneous drawing from back in the day that Mr. de Bon had given to his patent attorney.

[00:04:10] Speaker 04:
But there's also nothing that suggests he created this drawing.

[00:04:15] Speaker 04:
Really, what he's saying is another way of showing this is what I can see.

[00:04:18] Speaker 04:
For example, in a patent application, the specification have words, and it can have a drawing.

[00:04:23] Speaker 03:
But whatever it is, it's something in addition to the affidavit.

[00:04:28] Speaker 03:
The exhibit, right?

[00:04:29] Speaker 04:
It is something.

[00:04:30] Speaker 04:
In addition to words, there's words in the drawing.

[00:04:33] Speaker 04:
There's something.

[00:04:34] Speaker 04:
It is something.

[00:04:35] Speaker 04:
Now, but the in Ray Katz decision has a declaration only.

[00:04:40] Speaker 04:
And there's an important distinction between the Katz and the Bonn.

[00:04:43] Speaker 04:
Now, in the Bonn, they explain.

[00:04:47] Speaker 03:
But then the declaration, you say declaration only, but in Katz, the declaration has something in it.

[00:04:53] Speaker 03:
In addition to talking about what was invented, it talked about these other people

[00:04:57] Speaker 03:
who were on the article were just students or whatever.

[00:05:01] Speaker 03:
So I mean, there's something else other than the declaration insofar as it affected the declarants and vetted contribution.

[00:05:10] Speaker 04:
But the DeBon case doesn't require explanation about the other inventors.

[00:05:16] Speaker 03:
And there's a reason.

[00:05:17] Speaker 03:
But I think what Judge Chen was pointing to is,

[00:05:21] Speaker 03:
We have this case in which we have just the declaration that goes to the question of what part of the joint invention I invented.

[00:05:30] Speaker 03:
Nothing else, nothing.

[00:05:31] Speaker 03:
And I think what Judge Chen was pointing to was in DeVon, there is something else.

[00:05:36] Speaker 03:
We can argue about the significance of it.

[00:05:38] Speaker 03:
It's the exhibit with the drawing.

[00:05:41] Speaker 03:
And in Katz, there is something else, which is

[00:05:44] Speaker 03:
the invader's view of these other people, not invaders, but other people in the article.

[00:05:50] Speaker 03:
So there is something else.

[00:05:54] Speaker 03:
Don't you think it's fair to look at both of those cases as declaration plus cases, as opposed to bare declaration cases?

[00:06:02] Speaker 04:
Well, Your Honor, they're both simply declarations.

[00:06:05] Speaker 03:
No, I understand there is just a declaration, but the evidentiary record

[00:06:11] Speaker 03:
Because I believe that Judge Neese, in both of those cases, has been pointing out this is essentially an evidentiary question.

[00:06:19] Speaker 03:
Right?

[00:06:20] Speaker 04:
Well, I believe, I don't recall what Judge Neese said about it being an evidentiary question.

[00:06:29] Speaker 04:
But the board relied on these cases for asserting that there must be documentary corroboration.

[00:06:36] Speaker 03:
Must be something else.

[00:06:44] Speaker 03:
that the bearer declaration wasn't enough.

[00:06:46] Speaker 03:
There must be something else they talked about.

[00:06:49] Speaker 03:
I think corroboration is a term of art in a way, isn't it?

[00:06:55] Speaker 03:
Corroboration means something else, something else to support what is said by the declarant.

[00:07:02] Speaker 04:
Corroboration, though, is typically, when you think of corroboration, it's an independent showing.

[00:07:08] Speaker 04:
All Devon did was take a drawing and said, I can see this.

[00:07:14] Speaker 04:
Campbell, in the same way as saying, with words, here's what I can see.

[00:07:19] Speaker 04:
I don't see how that's a difference.

[00:07:22] Speaker 05:
I think we're in a quagmire over here on this side of the bench.

[00:07:25] Speaker 05:
We're trying to draw a straight line through all of our case law, not only for this very specific, narrow issue, but as a general matter with the inventorship doctrine.

[00:07:36] Speaker 05:
You understand the law of inventorship doctrine.

[00:07:38] Speaker 05:
And you understand the Supreme Court as, at times,

[00:07:43] Speaker 05:
very old cases, been quite skeptical of an inventor's fair assertion without more as being something that's reliable.

[00:07:51] Speaker 05:
And now we have to look at the scenario we have in front of us here and try to understand the best we can, the meaning of the message through de Bon and Katz.

[00:08:01] Speaker 05:
And both of those talk about how it's an evidentiary-based exercise.

[00:08:05] Speaker 05:
They just do.

[00:08:07] Speaker 05:
And neither of the facts in those cases

[00:08:11] Speaker 05:
can fairly be characterized as just being a bare assertion by an inventor, declaring without any details or any story that he was the one, the true inventor of the passages that he elects to cite as being his own.

[00:08:30] Speaker 05:
There was something more going on in each of those cases.

[00:08:34] Speaker 05:
It just can't be disputed.

[00:08:36] Speaker 05:
And so now we have to ask ourselves, OK, against the backdrop of inventorship law,

[00:08:41] Speaker 05:
which this is a very close cousin of, and the facts of Dubon and Katz, which in each situation, there was something to borrow from Judge Clevinger, bear assertion plus.

[00:08:54] Speaker 05:
It wasn't just the bear assertion itself.

[00:08:56] Speaker 05:
Now we look at your case, and we have the inventor basically saying, me and my co-inventor invented all of these passages, not the other two,

[00:09:09] Speaker 05:
co-inventors listed on that patent.

[00:09:11] Speaker 05:
And full stop period, end of declaration.

[00:09:16] Speaker 04:
But, Your Honor, the MPEP and the patent office in several cases has taken Devon and Katz to mean that an unequivocal declaration by itself is sufficient in very similar circumstances.

[00:09:28] Speaker 05:
Which era of the MPEP do you think controls this case?

[00:09:33] Speaker 05:
I mean, right now we have a current version of the MPEP that's

[00:09:37] Speaker 05:
you know, at least at a minimum an adjustment of what it was back in the 90s.

[00:09:42] Speaker 04:
Well, Your Honor, here 103C was added in 1999.

[00:09:46] Speaker 04:
And in that situation, it removed one of any patent owned by the same entity has been removed as 102E prior order.

[00:09:56] Speaker 04:
So actually, if this application had been filed four years later, we wouldn't even be here on this issue.

[00:10:02] Speaker 04:
So I believe the

[00:10:05] Speaker 04:
Volkswagen and Amir can both agree in their briefs that they believe the mid-90s version of the MPEP would apply.

[00:10:15] Speaker 05:
In any event, even if it did, the briefing on the other side presents a story of why the outcome here by the board is consistent with the MPEP because what is going on here is not something that's disclosed but not claimed, but disclosed and claimed, which the MPEP for whatever reason is elected to

[00:10:36] Speaker 05:
at least at one point in time, find a distinction on.

[00:10:38] Speaker 05:
So I don't know if the MPP or any version of it necessarily helps you.

[00:10:45] Speaker 04:
Well, Your Honor, the disclosed but not claimed, I kind of see it as a separate issue.

[00:10:50] Speaker 04:
But it's pretty clear if you look at the CFR and the cases that are talking about the disclosed but not claimed issue, that they're discussing an instance where there's a first patent that has one claimed invention.

[00:11:04] Speaker 04:
And then if that same claimed invention is then claimed in the second patent, that's an interference type of position.

[00:11:14] Speaker 05:
I'm sorry.

[00:11:15] Speaker 05:
I've got another question.

[00:11:16] Speaker 05:
My understanding of the MPEP provisions were that the agency was trying to make a good faith attempt at interpreting Debon and Katz.

[00:11:29] Speaker 05:
And do we give deference to the agency's interpretation of our own

[00:11:35] Speaker 05:
precedent?

[00:11:36] Speaker 04:
I believe, unless it's contrary to precedent, they do.

[00:11:40] Speaker 04:
But this disclosed but not claimed issue is not discussed in the bonding caps.

[00:11:44] Speaker 05:
So you think the agency, we should give deference to the agency's reading of our own precedent?

[00:11:49] Speaker 04:
Oh, no.

[00:11:49] Speaker 04:
No, you shouldn't give preference.

[00:11:50] Speaker 04:
No.

[00:11:51] Speaker 05:
So I guess what I'm saying is if we were to conclude that there is an interpretation of our own precedent by the PTO through the MPEP that is an incorrect reading of our own precedent,

[00:12:05] Speaker 05:
then that doesn't have any persuasive value at all.

[00:12:09] Speaker 04:
Clearly, the federal circuit would apply.

[00:12:13] Speaker 04:
But I do think it shows how other people have interpreted prior CCPA cases.

[00:12:19] Speaker 04:
So I think it's helpful to see.

[00:12:21] Speaker 04:
And the several patent office cases that have accepted fair declarations, I think that's helpful to see that that's the understanding of what those cases mean.

[00:12:32] Speaker 04:
And it's also important.

[00:12:33] Speaker 04:
The bond and Katz were in a situation of, as I understand it, those were situations in prosecution.

[00:12:44] Speaker 04:
And there was an examiner.

[00:12:47] Speaker 04:
And he didn't have any way to depose or to contradict the testimony at issue.

[00:12:58] Speaker 04:
And there's no presumption of validity.

[00:13:01] Speaker 04:
The patent is issued.

[00:13:02] Speaker 04:
There's presumption of validity.

[00:13:04] Speaker 05:
We're in a case where... This is an IPR, right?

[00:13:08] Speaker 05:
Correct, correct.

[00:13:09] Speaker 05:
I thought this IPR statute says there's no presumption of validity once the patent is brought back into an IPR.

[00:13:15] Speaker 05:
I could be wrong.

[00:13:16] Speaker 05:
I could be wrong on this issue.

[00:13:21] Speaker 04:
But there's definitely not any... There's not any presumption against Americam.

[00:13:30] Speaker 04:
And if you look, the board didn't really rely on the bond in saying there's a documentary corroboration requirement.

[00:13:37] Speaker 04:
What they relied on was woodland and sand cases.

[00:13:39] Speaker 04:
And they used an eight-factor test in woodland and sand for determining to give no weight whatsoever to the Campbell Declaration.

[00:13:52] Speaker 04:
But those cases involved where a alleged infringer was trying to show prior use and invention

[00:13:57] Speaker 04:
to overcome, to invalidate a patent.

[00:14:00] Speaker 04:
So then they had to overcome the presumption of validity.

[00:14:02] Speaker 04:
And in that case, you have to show clear and convincing evidence.

[00:14:07] Speaker 03:
Can't you have a situation where someone's trying to swear behind a records to say, I was earlier conceived and reduced to practice this invention?

[00:14:17] Speaker 03:
And if someone is making that up, they're trying to avoid a piece of prior art being cited against it, right?

[00:14:25] Speaker 03:
Yes.

[00:14:25] Speaker 03:
It would be a similar situation to what we have here.

[00:14:29] Speaker 03:
And the legal standard in that case would be what?

[00:14:33] Speaker 03:
Would it require corroboration, right?

[00:14:37] Speaker 03:
The person who's saying, I believe that I was the prior conception and a prior reduction of practice, and I wrote down my declaration saying why it's so, that declaration wouldn't be worth the paper it was written on without corroboration, correct?

[00:14:54] Speaker 04:
But the conception reduction of practice- I'm just saying, isn't that correct?

[00:14:57] Speaker 04:
I don't know that they're the same issue, because here we're- I'm just saying, wouldn't you require corroboration?

[00:15:04] Speaker 03:
In that sense, of course you would.

[00:15:06] Speaker 03:
Of course you would, right.

[00:15:08] Speaker 03:
So then, and this is, I think, the adversary's argument, why should it be different here?

[00:15:12] Speaker 04:
Well, because here there's a shifting burden production.

[00:15:15] Speaker 03:
No, forget about that.

[00:15:16] Speaker 03:
As a matter of interpreting the law, what we're doing here is trying to decide what buying other means.

[00:15:23] Speaker 03:
How do you go about proving what buying other means?

[00:15:26] Speaker 03:
Is it enough for one person's just declaration to say, hmm, it was mine.

[00:15:30] Speaker 03:
I mean, it was not mine either.

[00:15:33] Speaker 03:
So my question is, why should the standard be different?

[00:15:38] Speaker 03:
The concerns relying on an inventor who has skin in the game, has a stake and whatnot, and maybe it was a long time ago, and those things, there's similar concerns exist.

[00:15:49] Speaker 04:
Well, but all of these cases involved, inventors,

[00:15:53] Speaker 04:
that have skin in the game.

[00:15:55] Speaker 03:
Well, I understand that.

[00:15:57] Speaker 03:
But in all of the skin-in-the-game instances I can think of, we require corroboration.

[00:16:02] Speaker 04:
Well, I mean, here, though, all Campbell's saying is he's presumed to be an inventor of the 558 patent.

[00:16:09] Speaker 03:
And he's just saying... Well, in the joint patent, he's presumed to be the inventor of, well, of all... It's... One claim.

[00:16:16] Speaker 03:
Joint and several.

[00:16:18] Speaker 03:
He's presumed to be the inventor of everything or just only a piece.

[00:16:21] Speaker 04:
And so is everyone else listed on the packet.

[00:16:24] Speaker 04:
So is everybody else.

[00:16:25] Speaker 04:
But they're all presumed to only have invented something.

[00:16:28] Speaker 04:
There's not a presumption they invented everything.

[00:16:30] Speaker 03:
It's hypothetically possible in the 558 case that your client invented stuff that's not in the suit.

[00:16:39] Speaker 03:
And it was somebody else, his co-inventor, invented all the things that are in this suit.

[00:16:43] Speaker 04:
But he swore under oath that he did invent everything in the suit.

[00:16:47] Speaker 04:
And there's nothing to contradict that.

[00:16:48] Speaker 03:
He didn't swear that he didn't invent everything else that's in it.

[00:16:52] Speaker 03:
You can have joint inventors here.

[00:16:53] Speaker 03:
All of them invent everything.

[00:16:55] Speaker 04:
But he said solely.

[00:16:57] Speaker 04:
He said Campbell and Guth solely invented the subject matter.

[00:17:00] Speaker 04:
I mean, he swore under oath.

[00:17:02] Speaker 04:
There's nothing that challenges the veracity of his declaration.

[00:17:05] Speaker 04:
And this is, I've gone over my time.

[00:17:07] Speaker 02:
You want to hear rebuttal time?

[00:17:08] Speaker 02:
Why don't we hear from the other side?

[00:17:09] Speaker 02:
OK.

[00:17:10] Speaker 02:
Ms.

[00:17:11] Speaker 02:
Lynch?

[00:17:11] Speaker 02:
Oh, no.

[00:17:12] Speaker 02:
Who's first?

[00:17:13] Speaker 07:
Mr. Lynch.

[00:17:14] Speaker 07:
Steve Meyer for... Oh, okay.

[00:17:17] Speaker 02:
I'm sorry.

[00:17:17] Speaker 02:
You're just listed in the wrong order on my sheet.

[00:17:19] Speaker 07:
Good morning, Your Honors.

[00:17:20] Speaker 07:
May it please the Court?

[00:17:21] Speaker 07:
I am Stephen Meyer on behalf of Appellee Volkswagen.

[00:17:25] Speaker 07:
The Campbell 558 patent is prima facie prior art to the Challenge 558 patent under Section 102E.

[00:17:33] Speaker 02:
How do you get around Debon and Katz?

[00:17:37] Speaker 07:
I don't get around Debon.

[00:17:39] Speaker 07:
Well, I get around Katz.

[00:17:42] Speaker 07:
Debon is in our favor.

[00:17:44] Speaker 07:
in Dubon.

[00:17:47] Speaker 02:
What was it that the CCPA, I mean we're bound by Dubon and Katz, right?

[00:17:53] Speaker 02:
Yes.

[00:17:54] Speaker 02:
What was it then in Dubon that you think is in your favor?

[00:18:00] Speaker 07:
The court explained that the question of whether appellant is the sole inventor was properly raised by the PTO and it was incumbent on appellant to provide satisfactory evidence

[00:18:12] Speaker 07:
in light of the total circumstances of the case, that the reference reflected these work.

[00:18:19] Speaker 02:
And there... And what was it that the court held satisfied that requirement in DeBond?

[00:18:26] Speaker 07:
It was the declaration itself, plus the drawing that was annexed to that affidavit, to the declaration as a negative.

[00:18:35] Speaker 02:
So, do you have the DeBond case handy?

[00:18:36] Speaker 02:
Can you open it up, please?

[00:18:40] Speaker 07:
Yes.

[00:18:41] Speaker 02:
OK, so the opinion begins, and then you see opinion Roman numeral one right after it.

[00:18:47] Speaker 02:
Tell me when you found where I am so we can follow along with each other.

[00:18:54] Speaker 02:
Yes.

[00:18:55] Speaker 02:
OK, so number one is just general statements.

[00:18:58] Speaker 02:
Number two talks about the board.

[00:19:03] Speaker 02:
Number three, Roman numeral three, all on the same page.

[00:19:08] Speaker 02:
It's a very short opinion, luckily.

[00:19:11] Speaker 02:
is where we really see the discussion of both cats in particular and what is sufficient to establish the sole inventorship.

[00:19:22] Speaker 02:
Following the word opinion, is there any place in the opinion itself that discusses the drawing that was attached?

[00:19:33] Speaker 02:
I'm going to help you out if there isn't.

[00:19:35] Speaker 02:
The word drawing doesn't actually appear, and nor is there a discussion about it.

[00:19:38] Speaker 02:
Instead, following where they discuss cats, they talk about the affidavit and how, in a different case, fascists

[00:19:46] Speaker 02:
The inventor didn't say in the affidavit he clearly both conceived and reduced to practice.

[00:19:51] Speaker 02:
And so the problem with that other affidavit wasn't a lack of corroborating evidence.

[00:19:56] Speaker 02:
It was a lack of a clear assertion in the affidavit itself, which is viewed as evidence.

[00:20:01] Speaker 02:
So nowhere in the opinion of the court do they reference the drawing.

[00:20:05] Speaker 02:
Have I missed anything to your knowledge?

[00:20:07] Speaker 07:
Yes.

[00:20:08] Speaker 07:
What have I missed?

[00:20:10] Speaker 07:
The sentence that states, on the basis of the record here,

[00:20:13] Speaker 07:
which includes appellants on a critical declaration that he conceived anything.

[00:20:19] Speaker 07:
Blah, blah, blah.

[00:20:20] Speaker 02:
But it doesn't mention the drawing, right?

[00:20:21] Speaker 02:
It just says on the base of the record here, which includes this declaration saying he exceeds it.

[00:20:25] Speaker 07:
It includes the record.

[00:20:26] Speaker 07:
So it's based on the record.

[00:20:29] Speaker 02:
Hold on, hold on.

[00:20:30] Speaker 02:
I understand your point.

[00:20:31] Speaker 02:
You're making a generalized statement.

[00:20:32] Speaker 02:
But let's go back a page.

[00:20:33] Speaker 02:
Why don't we look at footnote number five?

[00:20:35] Speaker 02:
And why don't you read footnote number five out loud to us?

[00:20:37] Speaker 02:
I was surprised nobody cited it.

[00:20:39] Speaker 02:
Why don't you read footnote number five out loud?

[00:20:42] Speaker 07:
We do not consider it necessary to include drawing number 73-315.

[00:20:49] Speaker 07:
And as the board explained, the reason that it wasn't included, it wasn't necessary to reproduce the drawing in this opinion.

[00:21:00] Speaker 07:
Not that they're not considering it.

[00:21:02] Speaker 07:
That was addressed in the board's decision in our case.

[00:21:08] Speaker 07:
They explained that the drawing was not included in this opinion, not that it wasn't included in the record.

[00:21:18] Speaker 02:
So when you say, we do not consider it necessary to include drawing number 73-315, help me out, because I don't know the facts as well as you clearly do.

[00:21:29] Speaker 02:
Are you saying that that is a quotation from the board?

[00:21:33] Speaker 07:
No, that is a quote from the court here, the CCPA, explaining that they didn't reproduce the drawing here.

[00:21:41] Speaker 07:
We is the CCPA.

[00:21:42] Speaker 02:
That's what I thought, too.

[00:21:44] Speaker 02:
So when they say, we don't find it necessary to include this drawing,

[00:21:49] Speaker 02:
I should interpret that as a conclusion by you that they didn't think it was necessary to solely reproduce it in the opinion, but it was nonetheless absolutely necessary to the outcome of the opinion, even though after the sentence it says, we do not consider it necessary for who's drawing, they never mention the drawing again anywhere in the opinion or in any portion of the analysis that led them to conclude the affidavit was sufficient on its face.

[00:22:16] Speaker 02:
That's the interpretation you would have me give that sentence.

[00:22:19] Speaker 07:
Yes, the drawing here.

[00:22:22] Speaker 02:
It's never mentioned again after they say we don't need to include it.

[00:22:26] Speaker 07:
The drawing that is shown in the case comes from the patent.

[00:22:29] Speaker 07:
They say that it is the same.

[00:22:32] Speaker 07:
And then they have a footnote that says that they don't include it

[00:22:37] Speaker 07:
It's not necessary.

[00:22:39] Speaker 02:
And then in the entire portion of the analysis of why the affidavit was sufficient, they never mentioned the drama.

[00:22:47] Speaker 02:
Never.

[00:22:47] Speaker 02:
Words don't appear.

[00:22:48] Speaker 02:
And yet I'm supposed to conclude that in the context of a PTO-based proceeding,

[00:22:56] Speaker 02:
where there is actually a presumption of inventorship that attaches based on assertions and declarations that are filed, that when an affidavit is included that articulates portions of things that were invented by one person or another, that's not enough.

[00:23:14] Speaker 02:
Even though in this case, it was clearly enough, and this case never mentions the drawing anywhere.

[00:23:20] Speaker 07:
It does mention the drawing and it mentions the date of this one.

[00:23:23] Speaker 02:
In the background section where it says we don't need to improve.

[00:23:25] Speaker 03:
Do we make anything of the fact that the opinion in quoting the affidavit has a description of what's in the drawing?

[00:23:35] Speaker 07:
Yes, exactly.

[00:23:37] Speaker 03:
The task here too is to exhibit a drawing which illustrates a velocity profile development of a yada yada and a yada yada.

[00:23:43] Speaker 03:
The drawing shows this, that, and the other thing.

[00:23:46] Speaker 03:
yada, yada, yada.

[00:23:49] Speaker 03:
So the opinion of the CCPA contains a description.

[00:23:56] Speaker 07:
Yes.

[00:23:56] Speaker 07:
And that is consistent with what I said earlier and also what the board, in our case, explained.

[00:24:03] Speaker 07:
In the opinion, it says that the drawing wasn't included in the CCPA.

[00:24:08] Speaker 03:
That's in the opinion where we did it.

[00:24:10] Speaker 07:
the opinion that is on appeal.

[00:24:12] Speaker 07:
Yes.

[00:24:13] Speaker 02:
Just to be clear, so I understand the portion of the opinion that Judge Clevenger read isn't actually the opinion, is it?

[00:24:18] Speaker 02:
It is the quotation of the affidavit.

[00:24:21] Speaker 02:
Isn't that right?

[00:24:21] Speaker 02:
It's not the opinion.

[00:24:22] Speaker 02:
The CCPA didn't say that.

[00:24:24] Speaker 02:
Block quoted Mr. DeBond's affidavit and included it in the background section.

[00:24:30] Speaker 02:
I just want to make sure we're all on the same page so I'm not missing anything.

[00:24:34] Speaker 02:
Is that right?

[00:24:35] Speaker 02:
Now, so you think DeBond helps you, then tell me, what about Katz helps you?

[00:24:42] Speaker 07:
Before I address Katz, I would like to point out two other board decisions, the Ethicon case and ex parte Boris Rubinsky, where they reached the same conclusion about DeBond, that DeBond's drawing was the corroborating evidence.

[00:25:01] Speaker 02:
Okay, in Katz, what was the corroborating evidence?

[00:25:04] Speaker 07:
The corroborating evidence was the declaration explaining the work of the students as being authors.

[00:25:12] Speaker 02:
But that's not corroborating evidence, that's just further assertions within the declaration, right?

[00:25:18] Speaker 02:
How is that corroborating evidence?

[00:25:21] Speaker 02:
It's just the declaration itself and every one of those statements is an assertion by the author.

[00:25:26] Speaker 07:
Yes.

[00:25:27] Speaker 07:
But there, the difference is that it's not a patent.

[00:25:31] Speaker 07:
And the CCPA explained that distinction.

[00:25:34] Speaker 07:
In Katz, it was an article.

[00:25:37] Speaker 07:
And the authors are not presumed to be inventors of what is disclosed in there and is said to be anticipatory of the application at issue.

[00:25:47] Speaker 02:
So are you saying, thus, because it's not a patent, but rather a publication, corroboration is not required?

[00:25:53] Speaker 07:
more corroboration is required when you have a patent and you're disputing the named inventorship on the issued patent.

[00:26:04] Speaker 02:
Okay, so I just want to make sure I understand the rule of law that you're asking us to adopt.

[00:26:09] Speaker 02:
If it is a publication with multiple authors,

[00:26:13] Speaker 02:
a declaration alone, with a good story in it, by the author, is sufficient on its face, can be sufficient on its face.

[00:26:21] Speaker 02:
That is what Kat says.

[00:26:22] Speaker 02:
That identical thing would, in your view, not be sufficient if we're talking about a patent, which is the prior audit.

[00:26:28] Speaker 07:
Correct, yes, because there is a presumption of inventorship attaching to the named inventors on the Campbell 558 patent.

[00:26:37] Speaker 07:
And in fact, with respect to... I guess another way of putting it is that

[00:26:42] Speaker 05:
Katz doesn't so clearly say the latter.

[00:26:45] Speaker 05:
I mean, Katz does say the co-authors may not be presumed to be co-inventors merely from the fact of co-authorship.

[00:26:53] Speaker 05:
And so what Katz is telling us is that, at least for articles, and when there are numerous listed co-authors, there shouldn't be a presumption that each co-author is an inventor of every little concept that's

[00:27:12] Speaker 05:
contained in the article.

[00:27:14] Speaker 05:
But Katz doesn't take the next step and say what do we do when it's a series of listed co-inventors for a patent.

[00:27:22] Speaker 05:
There's an implication there that maybe for the patent is attached to certain legal rights and when you have a bunch of listed co-inventors

[00:27:30] Speaker 05:
named on this legal right that maybe there should be a presumption that the default is that they're all share rights in everything that's been invented because they were co-inventors of that.

[00:27:45] Speaker 07:
Yes, in the Hess case there is a presumption of inventorship attaching to the named inventors on a patent and I'd like for consistency I'd like to point out that

[00:27:57] Speaker 07:
This court requires corroboration of oral testimony for joining putative co-inventors under section 256.

[00:28:06] Speaker 07:
Also, for input.

[00:28:06] Speaker 02:
Just so you know, I don't think that's a bad rule of law.

[00:28:10] Speaker 02:
But I'm just wondering if I'm bound by certain earlier cases that establish a slightly different application in this unique context.

[00:28:19] Speaker 02:
And that's what I'm trying to figure out.

[00:28:21] Speaker 02:
I have no problem.

[00:28:23] Speaker 02:
with corroboration as a necessary component and can see the value in it.

[00:28:27] Speaker 02:
So I understand why you're bringing those cases to our attention.

[00:28:30] Speaker 02:
It's just that those contexts are a little different from this one, and I'm bound by everything the CCPA did before, and those cases seem more on point to me than yours.

[00:28:39] Speaker 05:
I'm wondering if you even, to prevail here, do you even need a strong corroboration requirement

[00:28:47] Speaker 05:
for these arrangements where someone's trying to swear away from a reference by claiming that he was the sole inventor of the relevant passages of that prior reference.

[00:29:00] Speaker 05:
Because what happened in Katz and de Bonn, at a minimum, were declarations that were filed that had at least some story attached to it.

[00:29:11] Speaker 05:
And it wasn't more than

[00:29:13] Speaker 05:
It was more than just a conclusory assertion of being an inventor of certain relevant pastures, at least.

[00:29:22] Speaker 05:
Mr. de Bon goes through the story of how he developed this drawing in the early 1970s and then submitted it to his patent attorney, and he describes that in the declaration in efforts to get the first patent, of which he was a co-inventor with someone else.

[00:29:41] Speaker 05:
And then so that's his jumping off point to claim that that relevant part of that earlier patent was really his and his alone.

[00:29:52] Speaker 05:
Same thing with Katz.

[00:29:55] Speaker 05:
Maybe we could debate whether this is a wise move of our precedent to say that a co-author can basically disclaim his co-authors from an article by saying they were just students.

[00:30:10] Speaker 05:
But apparently we said that was good enough.

[00:30:12] Speaker 05:
In any event, in both situations, there's a story contained in the declarations.

[00:30:17] Speaker 05:
In both cases, we have CCPA decisions saying, based on the evidentiary record in the case, these declarations were good enough.

[00:30:25] Speaker 05:
Yes.

[00:30:26] Speaker 07:
And if you look at it from the sufficiency of the evidence standpoint,

[00:30:34] Speaker 07:
Judge McKelvey below assessed the evidence and found that it was insufficient.

[00:30:41] Speaker 07:
That's an evidentiary finding.

[00:30:43] Speaker 07:
And it is.

[00:30:44] Speaker 02:
I'd like to ask you, we don't have much time left, to please turn to whether or not there was notice and comment.

[00:30:50] Speaker 02:
The claim 3, 16, 20.

[00:30:53] Speaker 02:
issue on whether or not it was proper for the board to rely on the Stiles reference for the rejection, ultimately, of those three dependent claims.

[00:31:05] Speaker 07:
Yes.

[00:31:07] Speaker 07:
Stiles was mentioned in our petition, this section.

[00:31:11] Speaker 02:
I've read your petition, and I have it handy here.

[00:31:14] Speaker 02:
So when I look through your petition with regard to Stiles, it is mentioned in the abstract with regard to claim one.

[00:31:23] Speaker 02:
It is never mentioned with regard to claims 3, 16, and 20.

[00:31:28] Speaker 02:
In fact, you provided a very helpful... I and certainly the Patent Office always find it helpful when people give us claim charts because it helps us understand exactly what and what within what you're saying is pertinent.

[00:31:46] Speaker 02:
You provided a claim chart on page 54.

[00:31:49] Speaker 02:
Let's just start with claim 3.

[00:31:50] Speaker 02:
You say that Claim 3 is obvious based on Campbell and Seito, and you actually tell me which portion of Seito you think discloses the carbon dioxide gas.

[00:32:03] Speaker 02:
So do you ever anywhere in your petition mention that Stiles is a reference that could be used to provide missing dependent element from Claim 3, for example?

[00:32:15] Speaker 07:
We included it in the body.

[00:32:17] Speaker 02:
Where?

[00:32:19] Speaker 02:
Because everything I found on it was with regard to claim one only.

[00:32:23] Speaker 02:
So where did you include it for anything other than claim one?

[00:32:28] Speaker 07:
Okay, on page appendix 114.

[00:32:32] Speaker 07:
Yes, I'm there.

[00:32:33] Speaker 07:
Claims one through 14 and 16 through 20 are obvious under section 103A over the combination of Campbell and either Heroda or Sato in view of style.

[00:32:45] Speaker 02:
Yes, that's a general statement.

[00:32:46] Speaker 02:
And then immediately after that, you have a very detailed claim chart that tells me, in particular, which of those four references apply to which of the individual claims.

[00:32:56] Speaker 07:
I would point to the Closeout case.

[00:32:59] Speaker 07:
where it was claims 10, 14, and 17 were instituted.

[00:33:04] Speaker 07:
And claim 10, the claim chart, had no mention of Evans or Wendt.

[00:33:10] Speaker 07:
And claim 14 had the claim chart.

[00:33:12] Speaker 07:
The detailed claim chart had no mention of Wendt.

[00:33:15] Speaker 02:
But that was different because then the institution decision did.

[00:33:18] Speaker 02:
Here, the institution decision doesn't either.

[00:33:20] Speaker 02:
Let's turn to your institution decision in this case.

[00:33:24] Speaker 02:
The institution decision followed your claim chart.

[00:33:28] Speaker 02:
And my problem with the institution decision is on page 21, page 19, 20, and 21 is where it goes through and tells you which claim and which particular references it is instituting on in regard to each of those claims.

[00:33:44] Speaker 07:
Yes.

[00:33:44] Speaker 07:
Now, ground four, which is the order instituting on appendix 177, says claims 1 through 14 and 16 through 20

[00:33:54] Speaker 07:
of the 758 patent is likely unpatentable under section 103 over Campbell, Heroda, Seto, and Stoddard.

[00:34:01] Speaker 05:
Here's the concern that is potentially there for you.

[00:34:05] Speaker 05:
It's that when on the prior pages the board goes through an itemization of all the dependent claims and then cites the specific record locations for supporting the limitations of those dependent claims, for the relevant ones here, 316 and 20,

[00:34:21] Speaker 05:
we don't see any reference to styles.

[00:34:24] Speaker 05:
We see references to CITO.

[00:34:26] Speaker 05:
Then, did you file a petitioner's reply in this case?

[00:34:30] Speaker 05:
Yes.

[00:34:31] Speaker 05:
In your petitioner's reply, did you, for either claims 316 or 20, cite to the styles teaching of water vapor and carbon dioxide?

[00:34:42] Speaker 05:
Or in your petitioner's reply, did you cite exclusively just to CITO for those?

[00:34:46] Speaker 07:
We addressed the arguments that

[00:34:49] Speaker 07:
Americam raised in its opposition.

[00:34:52] Speaker 05:
No, I understand, but can you answer my question?

[00:34:55] Speaker 05:
My question is, for these claims, did you cite to Stiles for teaching these limitations regarding carbon dioxide and water vapor?

[00:35:07] Speaker 07:
No, we did not.

[00:35:08] Speaker 07:
But the board did.

[00:35:09] Speaker 07:
And also, I point out, the question is due process.

[00:35:13] Speaker 07:
they did have due process.

[00:35:15] Speaker 07:
Americam, in its response, said that the combined teachings of Campbell, Oroda, Saito, and Stiles failed to render the challenged claims plural obvious.

[00:35:27] Speaker 07:
So they understood that it applied across the board.

[00:35:31] Speaker 07:
Also.

[00:35:31] Speaker 05:
So then what do we make of the itemization of all the dependent claims that are in the institution decision where the patent board said,

[00:35:42] Speaker 05:
here for each one of these claims, here's the portion of the record presented to us that we are using to match up against the limitations in those defending claims.

[00:35:54] Speaker 07:
Do we dismiss that?

[00:35:57] Speaker 07:
Do we pretend it doesn't exist?

[00:35:58] Speaker 07:
Well, in the Genzyme case, this was expressly addressed.

[00:36:03] Speaker 07:
And there, they said that the final written decision was not limited to

[00:36:09] Speaker 07:
what was pointed to in the institution decision.

[00:36:13] Speaker 07:
And that is at 825 F3rd, 368 to 369.

[00:36:17] Speaker 05:
That's because there was further argument development in the course of the PTAP trial there.

[00:36:26] Speaker 05:
And here, when we look at the course of the PTAP trial here, as far as I know, it's all silent with respect to Stiles'

[00:36:37] Speaker 05:
relevance in terms of these particular deep end claims, 316 and 20.

[00:36:42] Speaker 05:
Is that fair to say?

[00:36:44] Speaker 07:
Okay.

[00:36:45] Speaker 07:
Yes, but what I would like to point out, and this was not addressed in their brief, Stiles says that the generation, I'm sorry, Sato says that the most preferred regeneration gas is hydrogen, which can be diluted by nitrogen.

[00:37:01] Speaker 07:
Stiles says regeneration gas is hydrogen in nitrogen,

[00:37:06] Speaker 07:
both carbon dioxide and water vapor can also be present.

[00:37:11] Speaker 07:
Stiles discloses the same regeneration gas as Sato, but further allows for the inclusion of carbon dioxide and water vapor.

[00:37:20] Speaker 07:
So it's not a switch and swap, not take one element out of Sato and put an element in Stiles.

[00:37:29] Speaker 07:
It is right there.

[00:37:30] Speaker 07:
And this

[00:37:32] Speaker 07:
provision in Stiles that says further includes carbon dioxide and water vapor was in our petition, in the body of our petition.

[00:37:41] Speaker 05:
Yes, but to be fair, again, you didn't rely on that key sentence from Stiles to match up with claims 360 and 20.

[00:37:50] Speaker 05:
You were using Stiles as a basis for

[00:37:53] Speaker 05:
a motivation to combine the primary Campbell reference with Veroda.

[00:37:59] Speaker 07:
The motivation to combine was a separate sentence from Stiles, not the one that says that the regeneration gas can further include carbon dioxide and water vapor.

[00:38:11] Speaker 07:
And in fact, we laid it out and then said further includes.

[00:38:14] Speaker 07:
That sentence was included in the institution decision, and it was also included in the final written decision.

[00:38:22] Speaker 07:
So America can't have... See, here's the problem.

[00:38:24] Speaker 02:
Here's the problem.

[00:38:25] Speaker 02:
When you look at, like, your petition at page 59, when you're talking about claim 17, you point to each of the references that you think contribute, Sato, Hiroto, and Stiles.

[00:38:39] Speaker 02:
And you quote from Stiles, and you say why.

[00:38:41] Speaker 02:
In the institution decision, the board parrots your petition identically with regard to claim 17,

[00:38:50] Speaker 02:
And then, of course, in the patent office's response to all of this, when it discusses claim 17 at page 231 and 232, they go through and explain why Stiles doesn't, in fact, disclose what they think is being disclosed.

[00:39:03] Speaker 02:
Now, the board found against them, ultimately.

[00:39:06] Speaker 02:
But they knew what they were shooting at because your petition cited Stiles for this proposition, the institution decision cited it for that proposition, and then they addressed it.

[00:39:15] Speaker 02:
I guess my problem is you didn't cite Stiles for these other claims in your petition.

[00:39:19] Speaker 02:
The institution decision didn't particularize styles to those claims either.

[00:39:23] Speaker 02:
And then they didn't address them.

[00:39:24] Speaker 02:
And you didn't address them in your response.

[00:39:26] Speaker 02:
And then all of a sudden, the board doesn't find for you in light of Sato.

[00:39:30] Speaker 02:
They find for you on an alternative ground, styles, which feels to me like nobody saw coming.

[00:39:36] Speaker 07:
I'd like to point you to the institution decision at APX.

[00:39:42] Speaker 06:
168 there the board said It's a appendix 168 168 yes, which is page 13 of the institution decision And it reads this is under the header differences between subject matter and claim one and Campbell, correct?

[00:40:03] Speaker 02:
Yes, the header differences between subject matter claim one and Campbell.

[00:40:06] Speaker 02:
Okay, go ahead

[00:40:07] Speaker 07:
Yes.

[00:40:08] Speaker 07:
And it reads, the combined teachings of Campbell, Heroda, and Stiles failed to render the challenged claims obvious.

[00:40:16] Speaker 02:
So the board... I'm sorry.

[00:40:17] Speaker 02:
You said 168.

[00:40:18] Speaker 02:
I'm not... I'm sorry.

[00:40:20] Speaker 02:
Worth you.

[00:40:21] Speaker 07:
I'm sorry.

[00:40:22] Speaker 07:
168.

[00:40:23] Speaker 07:
I read the wrong thing on my notes.

[00:40:24] Speaker 07:
Heroda, Sato, and Stiles likely overcome

[00:40:28] Speaker 07:
any differences between Campbell and the subject matter of claim one of the 758 pattern.

[00:40:34] Speaker 07:
Yet, if you go to the, I'm sorry, if you go to our claim chart, you do not cite styles in claim one.

[00:41:01] Speaker 07:
Now, Stoneless is not cited in the claim chart for claim one, yet.

[00:41:09] Speaker 03:
Isn't this boils right down to a specific arrows for specific targets issue?

[00:41:16] Speaker 03:
I mean, in this process that you're playing,

[00:41:20] Speaker 03:
you have a specific proposition you're trying to establish with a specific target.

[00:41:26] Speaker 03:
That's a target.

[00:41:27] Speaker 03:
You have a specific arrow, i.e.

[00:41:29] Speaker 03:
a prior reference that you're throwing at it.

[00:41:32] Speaker 03:
And what you're saying is that a general arrow is good enough for a specific target.

[00:41:40] Speaker 03:
Does that sound right to you?

[00:41:42] Speaker 03:
That is what they change on.

[00:41:43] Speaker 03:
You could just say, well, Stiles, we cited Stiles.

[00:41:45] Speaker 03:
So whatever Stiles teaches,

[00:41:48] Speaker 03:
The board, the judge, later on should be able to say, well, ooh, I found some things in styles that nobody argued here, and I'm going to render my decision based on that.

[00:42:00] Speaker 07:
The response to that is this is not something that nobody pointed to.

[00:42:04] Speaker 07:
The quote appears in our petition.

[00:42:07] Speaker 03:
But the specific target, the reason why you were using styles, the reason why the board ended up using styles, right?

[00:42:17] Speaker 03:
was not something that you had identified that you thought they should be doing.

[00:42:23] Speaker 07:
We identified that section in general.

[00:42:26] Speaker 07:
In the Genzyme case, it said that the general discussion is sufficient and that the final written decision is not limited to the specific portions of the reference

[00:42:43] Speaker 07:
that is cited or quoted in the institution.

[00:42:47] Speaker 02:
We are way over your time.

[00:42:49] Speaker 02:
I promised the PTO some time, so let's give them a chance.

[00:42:53] Speaker 02:
Thank you, Your Honors.

[00:43:00] Speaker 01:
May it please the board?

[00:43:02] Speaker 05:
Well, can we just start with the notice issue?

[00:43:04] Speaker 01:
Sure, we can start with the notice issue.

[00:43:06] Speaker 01:
So I agree that the Denzyme case, this isn't a case where the board changed references.

[00:43:12] Speaker 01:
This isn't a case where the board suddenly relied on things that it had never cited.

[00:43:17] Speaker 01:
The board cited this in its institution decision.

[00:43:20] Speaker 01:
The petitioner cited this in its petition.

[00:43:23] Speaker 03:
Cited the patent.

[00:43:23] Speaker 03:
Cited the patent.

[00:43:25] Speaker 01:
Cited this exact disclosure that the board ends up relying on.

[00:43:30] Speaker 01:
And the Genzone case in footnote four, they are, they do.

[00:43:34] Speaker 03:
Cited the disclosure for what purpose?

[00:43:36] Speaker 03:
For what composition?

[00:43:38] Speaker 01:
I agree, they didn't specifically tie it to a limitation the way that they did in their claim chart.

[00:43:45] Speaker 01:
So it's not tied, but it is there.

[00:43:47] Speaker 01:
And so American was put on notice that these disclosures were in play.

[00:43:54] Speaker 05:
I guess the question for us is, if you block quote passages from a prior art reference with respect to claim one, and then the board institutes on claim one, but it also institutes on a bunch of dependent claims,

[00:44:09] Speaker 05:
and then doesn't rely on those block quotes from that prior art reference that was relied on for claim one, should we believe that those block quoted passages for claim one should also be a live issue with respect to all these dependent claims where other portions of the record were relied upon for purposes of the institution?

[00:44:36] Speaker 05:
Let's just say that's the way we read the institution decision.

[00:44:39] Speaker 01:
OK, I agree that they are block quotes, but they're specific block quotes.

[00:44:43] Speaker 01:
It's a long patent.

[00:44:45] Speaker 01:
The petitioner picked these out.

[00:44:46] Speaker 05:
I guess maybe it's a hypothetical that I'm asking.

[00:44:50] Speaker 05:
If a passage from a reference is relied upon for grounds of unpatentability for claim one, but it's not ever pointed to or cited for dependent claim 20,

[00:45:06] Speaker 05:
then is the board allowed to use those passages from claim that are relied upon for claim one that just happened to be also useful for claim 20 in a final written decision even though the institution decision doesn't make any reference to those block quoted passages from the reference?

[00:45:29] Speaker 01:
We think so your honor because they are cited as

[00:45:33] Speaker 01:
the patent owner was put on.

[00:45:34] Speaker 02:
Would it be more likely if it was the same element?

[00:45:37] Speaker 02:
The part that's bothering me, Ms.

[00:45:40] Speaker 02:
Lynch, is quite frankly, claim one is what?

[00:45:42] Speaker 02:
Hydrogen.

[00:45:43] Speaker 02:
I'm not going to get them right.

[00:45:45] Speaker 02:
One of them, I think it's three, is carbon dioxide.

[00:45:47] Speaker 02:
One of them is water vapor.

[00:45:49] Speaker 02:
It's not the same element at all.

[00:45:52] Speaker 02:
And so you have a block quote from Stiles in the section saying claim one.

[00:45:57] Speaker 02:
And it happens to include a discussion of both hydrogen, carbon dioxide, and water vapor.

[00:46:03] Speaker 02:
But you're only citing it, and in fact, you italicize it with regard to hydrogen, because that's the element in claim one that it was relevant to.

[00:46:12] Speaker 02:
Why would the petitioner or the patentee be on notice that that reference is also being instituted with regard

[00:46:21] Speaker 02:
claims three is very separate element of carbon dioxide.

[00:46:25] Speaker 02:
If I'm getting them wrong, correct me.

[00:46:27] Speaker 02:
I don't, the facts are not crystal clear in my head, but I think it's carbon dioxide.

[00:46:33] Speaker 02:
So why would the patentee be on notice that this thing you cited, which happens to also say carbon dioxide.

[00:46:39] Speaker 02:
dispute over that, is nonetheless what you're importing into the Claim 3 analysis.

[00:46:44] Speaker 02:
It was the same element.

[00:46:45] Speaker 02:
You know how the same element appears in lots of claims, worded ever so slightly differently sometimes, but it's the same element?

[00:46:52] Speaker 02:
This isn't the same element.

[00:46:53] Speaker 02:
It's a different element.

[00:46:54] Speaker 01:
Because the petitioner picked this out, it clearly discloses it.

[00:46:58] Speaker 01:
AmeriCamp doesn't dispute that it doesn't disclose this.

[00:47:02] Speaker 01:
So they pick out this block quote.

[00:47:03] Speaker 01:
They put it in there.

[00:47:04] Speaker 01:
Maybe it does teach multiple limitations.

[00:47:07] Speaker 01:
They were on notice that

[00:47:09] Speaker 01:
Volkswagen had picked out this block quote.

[00:47:12] Speaker 01:
They thought it was relevant.

[00:47:13] Speaker 01:
The board put it in its institutional decision.

[00:47:14] Speaker 02:
Even though Volkswagen only said it was relevant with regard to claim one, because the entire analysis is under the header of claim one.

[00:47:20] Speaker 02:
So even though in the petition, it's only articulated as relevant to claim one, we should nonetheless assume, because it happens to also read on dependent limitations, that it's nonetheless relevant there.

[00:47:33] Speaker 01:
The heading is for all of the claims.

[00:47:35] Speaker 01:
I don't know why you're saying it's just claim one.

[00:47:37] Speaker 01:
Maybe I'm missing something.

[00:47:40] Speaker 01:
But the section of the petition that it's in begins at 114, and it's for all of the claims.

[00:47:52] Speaker 02:
Oh, I'm sorry.

[00:47:52] Speaker 02:
You're talking about the product?

[00:47:55] Speaker 01:
I'm talking about the text where they put these block quotes in the petition.

[00:48:02] Speaker 01:
And we agree with you that they don't put this in their claim charts.

[00:48:07] Speaker 01:
But it is in the text where they're discussing the disclosures of these, of Hiroto, Sato, and Stiles.

[00:48:22] Speaker 02:
Even though for some of the claims they expressly put Stiles in and for others they don't,

[00:48:29] Speaker 02:
Nonetheless, I should assume it's actually relevant to all the claims.

[00:48:33] Speaker 01:
Well, it's in their general discussion.

[00:48:36] Speaker 01:
Like I said, it's what they selected to talk about.

[00:48:38] Speaker 01:
They have a limited amount of space.

[00:48:40] Speaker 01:
This is what they selected to tell the board about.

[00:48:43] Speaker 01:
The board thought it was important enough to put it in its institution decision.

[00:48:46] Speaker 01:
America doesn't dispute that it teaches it.

[00:48:49] Speaker 02:
I don't know.

[00:48:50] Speaker 02:
But what do you think would be a good rule for patentees in general when confronted in ITRs?

[00:48:57] Speaker 02:
There's a general discussion of some references at the front, but then there's a claim trial.

[00:49:01] Speaker 02:
It goes claim by claim, element by element, identifies these specifics, especially when you're talking obviousness.

[00:49:06] Speaker 02:
Mrs. Lynch, you know there can be 10 references.

[00:49:10] Speaker 02:
And sometimes there's a general statement

[00:49:13] Speaker 02:
Various combinations of these 10 references render all of the claims obvious.

[00:49:17] Speaker 02:
Various combinations.

[00:49:18] Speaker 02:
And then a patentee gets a claim chart.

[00:49:20] Speaker 02:
They got a claim chart from the petition, and they got a claim chart from the board.

[00:49:24] Speaker 02:
And neither of those claim charts use styles at all with regard to specific claims.

[00:49:30] Speaker 02:
And then if the patentee had recognized what you're saying, maybe they should have recognized, you would think you would then see them fighting styles in the petitioner's response after institution, which they don't do.

[00:49:43] Speaker 02:
And if the petitioner did intend to use styles like you thought, you would think you would see them mentioning styles in the briefing after the institution decision.

[00:49:52] Speaker 02:
None of them do, except with regard to claim 17, which is the only claim charted Pearson.

[00:49:58] Speaker 02:
So forget about this case.

[00:50:00] Speaker 02:
As a rule of law, what puts a patentee on notice as to what the board has instituted on?

[00:50:07] Speaker 02:
Do we want to say a generalized statement with some general discussion at the outset or at the end is enough?

[00:50:13] Speaker 02:
When there are claim charts present that go item by item like this?

[00:50:17] Speaker 02:
Is that a burden we want to introduce given, as you recognize, the limited page numbering, the speed with which this process moves forward, and all of that?

[00:50:25] Speaker 02:
I'm not saying these are good claims.

[00:50:27] Speaker 02:
They might not be.

[00:50:29] Speaker 02:
But from a notice standpoint, what should the patentee have done?

[00:50:34] Speaker 01:
Can I answer him?

[00:50:35] Speaker 01:
That's my time.

[00:50:36] Speaker 01:
Don't worry about the time.

[00:50:37] Speaker 02:
You're being very helpful to the court.

[00:50:39] Speaker 01:
I feel like the Genzyme case kind of answered that.

[00:50:42] Speaker 01:
But doesn't nuvasive sort of

[00:50:44] Speaker 01:
But Nubasa was the case, right, where something new came up in the reply.

[00:50:48] Speaker 01:
And the party tried to ask the board if they could put in rebuttal evidence.

[00:50:52] Speaker 01:
And the board said no, right?

[00:50:54] Speaker 01:
So that's what that was about.

[00:50:55] Speaker 02:
Suppose I don't think Genzyme answers this.

[00:50:57] Speaker 02:
Suppose I don't think that.

[00:50:59] Speaker 02:
You tell me from a policy standpoint, what makes good policy here?

[00:51:04] Speaker 01:
So obviously, there has to be notice.

[00:51:08] Speaker 01:
I think notice can be given in different ways.

[00:51:11] Speaker 01:
It doesn't have to be through a claim chart.

[00:51:13] Speaker 01:
Claim charts aren't even required.

[00:51:14] Speaker 02:
They're not required, but when they're given, don't they focus everybody on what the understanding, especially when there's a large number of references and a limited number of pages, doesn't that sort of almost trump everything else in terms of focusing everybody on which references are relevant to which claims?

[00:51:30] Speaker 01:
The board didn't think it trumped everything else here because Volkswagen picked out this disclosure and it clearly teaches it.

[00:51:37] Speaker 01:
So I think you have to look at everything in the petition.

[00:51:40] Speaker 01:
And you know, Genzyme, I know maybe you don't think Genzyme is particularly important, but Genzyme talks about when something is in play.

[00:51:47] Speaker 01:
And I think by quoting those disclosures, they were in play.

[00:51:52] Speaker 02:
And I know you wanted to and were prepared to.

[00:51:54] Speaker 02:
And I'd actually like to hear you, if you don't mind staying a little longer, I would like to hear your thoughts about the first issue that we discussed, which is the issue of corroboration.

[00:52:04] Speaker 01:
Right.

[00:52:05] Speaker 01:
It's our position that, you know, American did the bear put in a naked assertion.

[00:52:12] Speaker 05:
All they did was... What's the agency's articulation of the rule?

[00:52:17] Speaker 01:
The agency's articulation of the rule in the NPEP.

[00:52:20] Speaker 05:
Well, you came prepared today to give us a rule.

[00:52:26] Speaker 05:
What's the rule?

[00:52:27] Speaker 01:
The rule is that something more, and you can see that from the board.

[00:52:31] Speaker 01:
The board didn't necessarily say you have to have a document or you have to have a story.

[00:52:36] Speaker 01:
You can see the board is talking about there has to be something more than this naked assertion.

[00:52:40] Speaker 01:
Basically all they did was take the quotes from Volkswagen's petition and say,

[00:52:47] Speaker 01:
You know, me and Guth solely invented this, and Guth is dead.

[00:52:51] Speaker 01:
So they didn't give any story, any explanation.

[00:52:54] Speaker 01:
They didn't attach any documents.

[00:52:55] Speaker 01:
And I think in Woodland Trust, the court says it's a rare case when there wouldn't be any documents.

[00:53:00] Speaker 01:
They're the owner of the other Campbell 558.

[00:53:03] Speaker 01:
It's hard to believe that they didn't have any.

[00:53:05] Speaker 02:
What about Katz?

[00:53:06] Speaker 02:
Do you agree with the distinction argued by Mr. Meyer that Katz is different because there, there wasn't something more?

[00:53:13] Speaker 02:
There might have been a story, but we can all tell a good story.

[00:53:16] Speaker 02:
If a story is still in a declaration, it's still just a story.

[00:53:19] Speaker 02:
So do you agree with him that stories are okay when it's a publication that you're delineating as between, but definitely not for patents?

[00:53:27] Speaker 02:
Is that the line that you would think is right to draw?

[00:53:29] Speaker 01:
Not necessarily.

[00:53:31] Speaker 01:
I think Kat says definitely the story was enough for a publication.

[00:53:35] Speaker 01:
We do think, based on the MPEP, that when something is claimed, there has to be a higher standard.

[00:53:42] Speaker 01:
And that's why the MPEP says when you're relying on claim subject matter, you have to talk about what those other inventors did.

[00:53:49] Speaker 01:
So we do agree that when the reference is a patent and it's claimed, that there is a higher standard.

[00:53:58] Speaker 01:
But the board didn't say what you necessarily... We're not arguing for a bright line test.

[00:54:03] Speaker 02:
So is your view if it was disclosed in the patent but wasn't part of what was claimed, what they did here would have been sufficient?

[00:54:10] Speaker 01:
Not necessarily.

[00:54:11] Speaker 01:
I wouldn't say that, but at least... Isn't that what the MPEP pretty much concludes?

[00:54:16] Speaker 01:
Well, the MPEP has provisions about disclosed, not claimed.

[00:54:20] Speaker 03:
Which version of the MPEP, if the MPEP were applicable?

[00:54:25] Speaker 03:
and we were required to give it meaning in this decision, which version would we apply?

[00:54:32] Speaker 01:
We think the current version applies because they're putting in the declaration now.

[00:54:36] Speaker 01:
And the MPEP clearly says that if it is... This declaration would fail under the current version?

[00:54:41] Speaker 01:
It would fail.

[00:54:42] Speaker 01:
It also fails under the earlier MPEP provisions as well, because all of those are about... Your position is that the current version applies?

[00:54:49] Speaker 03:
That is... Okay, secondly, in terms of the burdens of

[00:54:55] Speaker 03:
going forward in production as well as the burden of persuasion.

[00:54:58] Speaker 03:
The burden of persuasion here is on the challenger throughout, correct?

[00:55:02] Speaker 03:
Correct.

[00:55:03] Speaker 03:
And in terms of this particular question of buy another,

[00:55:07] Speaker 03:
The fact that the patent that they're trying to serve as a joint patent, the challenger met its burden to shift the burden of production over to the patentee, correct?

[00:55:20] Speaker 03:
Everyone agrees with that?

[00:55:21] Speaker 03:
Correct.

[00:55:23] Speaker 03:
The effect of the board's decision of what you're asking us here to do is to give zero weight to the inventor's affidavit.

[00:55:34] Speaker 03:
Z-Ware weights is not evidence anymore, it's gone.

[00:55:39] Speaker 01:
It didn't meet their burden of production, correct.

[00:55:42] Speaker 03:
It doesn't qualify as evidence.

[00:55:47] Speaker 03:
If it qualifies as evidence in any way, shape or form, right?

[00:55:52] Speaker 01:
It would have to raise a material fact, that's the standard.

[00:55:55] Speaker 03:
Well, raise a material issue of fact.

[00:55:59] Speaker 03:
And so you're saying unexplained, a bare assertion can't meet that test.

[00:56:06] Speaker 03:
I'm just looking for what that rule of law has to be, because we're seeing this in a burden shifting.

[00:56:12] Speaker 03:
In this particular setting, we know that the ultimate burden of persuasion never moves off the challenger.

[00:56:20] Speaker 03:
But as it turns out here, as a result of the operation of the burden of production, the burden of persuasion has shifted.

[00:56:28] Speaker 03:
to the patentee, and he lost.

[00:56:31] Speaker 01:
Well, he didn't satisfy his burden of production.

[00:56:38] Speaker 03:
But in dynamic drinkware, wasn't there an amount of evidence put forward by the patentee to get the ball moved back in the other direction?

[00:56:49] Speaker 03:
Correct, correct.

[00:56:51] Speaker 01:
So it shifted back in dynamic drinkware here.

[00:56:53] Speaker 01:
It never shifted off

[00:56:55] Speaker 01:
the patent owner because their declaration was deficient.

[00:57:00] Speaker 03:
Okay, so if we were to adopt your rule, why wouldn't the correct result be... Well, from your perspective, there's nothing going for the patentee with his declaration, so the game is over.

[00:57:17] Speaker 01:
Correct, he was not able to shift the burden back, the burden of production back.

[00:57:22] Speaker 05:
What is the origin for, I guess, the PTO's position that when something is disclosed but not claimed in a patent, there's some kind of lesser requirement?

[00:57:36] Speaker 05:
I don't even know how to begin to articulate it, but there's some lesser requirement, and then when it's disclosed and claimed, then there's something more required than the situation where it's disclosed but not claimed in a patent?

[00:57:53] Speaker 01:
If you look at the reference patent, the inventor signed an oath saying that they contributed at least some subject matter to at least some of the claims.

[00:58:03] Speaker 01:
And the idea is if someone is going to come in years later and try and rebut that and say, well, I'm the one who claimed claim one, that they need to make more of a showing.

[00:58:15] Speaker 01:
Because there's already oaths on file saying that these four people in this case

[00:58:21] Speaker 01:
claimed something.

[00:58:22] Speaker 01:
So they have to make a showing under the MPEP to show what those other people did as well.

[00:58:28] Speaker 05:
And what's your best authority that you have for making this distinction, whether it's a case or something else?

[00:58:38] Speaker 05:
Precedent?

[00:58:39] Speaker 01:
I think the MPEP just relies on... I don't think it relies on a specific case to say that.

[00:58:46] Speaker 01:
I mean, I think they discussed abound, but I don't think that's exactly what happened with abound.

[00:58:50] Speaker 01:
And can I just point out one sentence in abound, and then I realize I'm so over on time.

[00:58:55] Speaker 01:
But this paragraph that you talked about in fascists, which is the... Yes, cited in de Bonn.

[00:59:02] Speaker 01:
Yes.

[00:59:02] Speaker 01:
So the last sentence says, in contrast, Appellant's declaration here states that he originally conceived the basic equalizer honeycomb section disclosed in the 678 patent

[00:59:13] Speaker 01:
end in drawing 73315.

[00:59:17] Speaker 01:
So I would say that they were, in their opinion, relying on that drawing.

[00:59:21] Speaker 01:
And the concurrence talks about the drawing as well.

[00:59:24] Speaker 01:
It talks about other facts supported by exhibits, which justify the conclusion.

[00:59:29] Speaker 02:
Yeah, but the majority certainly didn't.

[00:59:32] Speaker 02:
I didn't see them as relying on it.

[00:59:33] Speaker 02:
But thank you for pointing that sentence out to me.

[00:59:36] Speaker 01:
If the court has no further questions.

[00:59:38] Speaker 02:
Thank you.

[00:59:40] Speaker 02:
Mr. Bradford, we're going to give you your six minutes of rebuttal time.

[00:59:43] Speaker 02:
We're going to hope we can keep it to that, but they went so far over that if you feel like you really need to stand here longer, at some point I'll make you sit.

[00:59:51] Speaker 04:
Thank you.

[00:59:52] Speaker 04:
I'll do whatever you want me to do.

[00:59:54] Speaker 04:
All right, well, I'll see you later.

[00:59:58] Speaker 04:
No, hold on a second.

[00:59:59] Speaker 04:
But starting with the Campbell DeBon issue, we've discussed this a lot, but I think Kat's

[01:00:08] Speaker 04:
Katz is important.

[01:00:09] Speaker 04:
There's this discussion of this story because there are several co-inventors.

[01:00:14] Speaker 04:
But Katz explains why they wanted to see this story.

[01:00:19] Speaker 04:
They say, what we have in this case is ambiguity created by the printed publication.

[01:00:24] Speaker 04:
The article does not tell us anything about specific inventorship.

[01:00:28] Speaker 04:
So they wanted this declaration to explain an ambiguity.

[01:00:39] Speaker 04:
the CCPA wasn't comfortable with, well, what does it mean to be an author?

[01:00:45] Speaker 04:
The same type of ambiguity clarifications not required in Dubon.

[01:00:50] Speaker 04:
And this wasn't decided because they showed a story.

[01:00:54] Speaker 04:
Cass wasn't decided this way.

[01:00:56] Speaker 04:
It's because they explained an ambiguity.

[01:00:59] Speaker 04:
But in Dubon, they didn't have to explain the same ambiguity because there is

[01:01:05] Speaker 04:
evidence that they are inventors.

[01:01:07] Speaker 05:
I guess when I think about Katz, I'm wondering if you really have two separate hurdles you have to deal with, unlike de Bon.

[01:01:15] Speaker 05:
De Bon, the inventor, was trying to swear away from passages of a patent.

[01:01:20] Speaker 05:
Exactly.

[01:01:21] Speaker 05:
Katz was trying to swear away relevant passages of an article.

[01:01:26] Speaker 05:
And so I saw our opinion, or CCPA's opinion, talk about how when it comes to an article,

[01:01:34] Speaker 05:
we shouldn't be so quick to presume that co-authors are really inventors of all that is contained in an article.

[01:01:43] Speaker 05:
And an article is just a different situation.

[01:01:45] Speaker 05:
And who you designate and label and identify as an author is not the same exercise that one goes through in identifying and labeling someone as a co-inventor for a patent.

[01:01:57] Speaker 05:
And so I guess what I'm wondering is maybe there is something to it.

[01:02:01] Speaker 05:
what the agency is getting at that perhaps in a cat's-like situation the agency or the law shouldn't require something as stringent in terms of trying to swear away the passages of an article compared to when someone is trying to swear away passages of a

[01:02:24] Speaker 05:
legal document like a patent.

[01:02:26] Speaker 05:
What do you... Can you explain what you think about that?

[01:02:30] Speaker 04:
I mean, I think it's actually the opposite.

[01:02:32] Speaker 04:
If Katz was trying to swear behind another patent, I believe they didn't need this extra explanation.

[01:02:42] Speaker 04:
I don't think there's any... DeBond actually states very explicitly that the 678 patent is silent with respect to who invented the Honeycomic section itself.

[01:02:54] Speaker 04:
And we do not presume it is the invention of appellant and null jointly, or either of them.

[01:02:59] Speaker 04:
So there's no presumption that they both invented everything.

[01:03:03] Speaker 04:
And the board's not saying there's some presumption over to come here, or the CCPA.

[01:03:07] Speaker 04:
And what they're saying is there is no presumption.

[01:03:10] Speaker 04:
We just understand he's an inventor.

[01:03:12] Speaker 04:
That's the presumption.

[01:03:14] Speaker 04:
And so he's explaining.

[01:03:16] Speaker 04:
He's just telling us what's in line with that prior explanation.

[01:03:21] Speaker 04:
I'm an inventor.

[01:03:22] Speaker 04:
I'll tell you what I invented.

[01:03:23] Speaker 04:
And there's no contradiction to that.

[01:03:25] Speaker 04:
I think that should surely be enough, especially just to raise a material question of fact.

[01:03:30] Speaker 04:
I mean, cases all the time are found to have material questions of fact based on testimony alone.

[01:03:37] Speaker 04:
So I believe, I don't believe, and the drawing there is not corroboration.

[01:03:43] Speaker 04:
It was put in to show evidence, I believe, of reduction to practice.

[01:03:49] Speaker 04:
But there was a statement, I believe, in the prior discussion

[01:03:53] Speaker 04:
that Devon explained that he developed this drawing, but he doesn't ever say that.

[01:04:00] Speaker 04:
He doesn't say he developed this drawing.

[01:04:01] Speaker 02:
He's putting it in and says... Well, but you think it has to be enough to raise the material question of fact.

[01:04:10] Speaker 02:
What's the difference between that and the PTO saying,

[01:04:14] Speaker 02:
this declaration by an interested party with no corroboration as a matter of fact simply doesn't convince us.

[01:04:22] Speaker 02:
It's almost like this has to be an everything or nothing conclusion.

[01:04:28] Speaker 02:
Could the PTO do that?

[01:04:29] Speaker 02:
Could the PTO say, based on this record and nothing else,

[01:04:33] Speaker 02:
that, you know what, this declaration, while it is evidence, and we consider it to be evidence, it just doesn't convince us.

[01:04:40] Speaker 02:
It's an interested party, many years after the fact, claiming what he invented is co-inventors' dead, so there's nobody to challenge him.

[01:04:49] Speaker 02:
We consider it to be not enough.

[01:04:50] Speaker 02:
Could they have made that fact-finding?

[01:04:52] Speaker 04:
Well, the factors they decided upon, I think they could have made a bit of it wrong.

[01:04:58] Speaker 04:
I'm sorry that came across wrong.

[01:05:00] Speaker 04:
I don't think that would be correct, because it's based on an incorrect set of factors.

[01:05:04] Speaker 04:
The factors they're relying on are from this woodland and sand line of cases.

[01:05:09] Speaker 04:
And there, there was a presumption they had to overcome.

[01:05:12] Speaker 05:
But just to put a finer point on the question from the court, it's that you were saying that this declaration should be considered something that's enough to create a tribal issue or a fact or something like that.

[01:05:27] Speaker 05:
And really, in the end, we're at the end game when the board issues its final written decision.

[01:05:35] Speaker 05:
And it's got to reach a result right there, make a final choice.

[01:05:40] Speaker 05:
And it could say a couple of different things under this scenario.

[01:05:43] Speaker 05:
One is this evidence did not shift the burden, because it's not really evidence of anything.

[01:05:51] Speaker 05:
Or to the extent that it's evidence, it's of such low quality, it's not enough to shift the burden back.

[01:05:57] Speaker 05:
The alternative is to say, we take into account your evidence of this declaration.

[01:06:03] Speaker 05:
And then we go back and look at the prima facie case, that this is good prior art.

[01:06:08] Speaker 05:
And in the end, when we look at all the circumstances here, time has passed, everything else, we make a finding on this record that it's good prior art against these claims.

[01:06:20] Speaker 05:
So it kind of takes away the so-called burden of production shifting framework and just reaches a final conclusion based on everything that everybody's presented in the case on whether or not this reference should be considered a 102E reference.

[01:06:35] Speaker 04:
Well, Your Honor, the way the IPAR proceeding works, after they make their prima facie case, then we have a chance to present our response.

[01:06:47] Speaker 04:
And then they have a chance to put in a reply.

[01:06:49] Speaker 04:
So they have a chance to try to contradict this.

[01:06:53] Speaker 02:
But maybe they don't need to.

[01:06:55] Speaker 02:
Maybe the evidence is of such a weak nature that it doesn't need to be contradicted because the prima facie case alone is enough and that this doesn't overcome it.

[01:07:06] Speaker 04:
And I understand the Patent Office prior decisions maybe not.

[01:07:12] Speaker 04:
the binding in view of Dubon and Cass, but there's several of these cases that explain an unequivocal declaration may not be enough, but it is if it's uncontradicted.

[01:07:23] Speaker 04:
And that's what they say.

[01:07:25] Speaker 04:
And I think it's reasonable for

[01:07:30] Speaker 04:
a patent owner to follow that guidance.

[01:07:33] Speaker 04:
It's repeated in the NPEP.

[01:07:35] Speaker 04:
It's repeated in several places.

[01:07:37] Speaker 04:
And it's, in my opinion, in line with the CATS having an unequivocal declaration.

[01:07:41] Speaker 04:
It doesn't state that, or the bond doesn't state there's documentary corroborations needed.

[01:07:49] Speaker 04:
And the board said, there is no documentary corroboration.

[01:07:54] Speaker 04:
And the board said, well, this isn't an interested inventor.

[01:07:57] Speaker 04:
Well, CATS and the bond are interested inventors.

[01:08:00] Speaker 04:
I mean, all of these cases are interesting inventors.

[01:08:01] Speaker 04:
I mean, why else would they be put forward?

[01:08:04] Speaker 02:
OK, well, we're well over our time.

[01:08:08] Speaker 02:
Do you have a final thought, or are we good to go?

[01:08:09] Speaker 04:
Well, Your Honor, briefly, I think you're correct on the styles issue.

[01:08:21] Speaker 02:
I don't think we need to go down that road right now.

[01:08:23] Speaker 02:
I think we're good.

[01:08:23] Speaker 02:
We have your arguments in your briefs, and I think we're good.

[01:08:26] Speaker 02:
We thank both counsel, or all counsel, for their to patient oral argument.

[01:08:30] Speaker 02:
It was very helpful to the court.

[01:08:31] Speaker 02:
The case is taken under submission.

[01:08:33] Speaker 07:
Thank you.

[01:08:33] Speaker 02:
Our final case for today is 2016-2370.