[00:00:00] Speaker 04:
an issue that officials have specifically disclaimed on three separate pages.

[00:00:05] Speaker 02:
But look, you need enurement for your reduction to practice, right?

[00:00:12] Speaker 02:
And so there must be enurement to someone who did something.

[00:00:18] Speaker 02:
And isn't that the shortcoming that the board found in your argument that you didn't prove the conception of Chiraf with respect to this invention?

[00:00:30] Speaker 04:
With respect, Your Honor, that goes directly to the issue of what constituted the actual reduction of practice in this case.

[00:00:38] Speaker 04:
It is our position that the actual reduction of practice was the testing to determine if the invention would work for its intended purpose.

[00:00:46] Speaker 04:
And that testing was conducted by Mr. Girard, when persons working in his direction, got inside.

[00:00:54] Speaker 04:
And that was demonstrated in the test results.

[00:00:58] Speaker 06:
But don't you still have to show that you invented the product that was tested to meet the test for reduction of practice?

[00:01:12] Speaker 04:
Your honor, in this situation where conception was not challenged or explicitly stated by the petitioner, the conception is not at issue.

[00:01:22] Speaker 06:
The conception of the patented invention, but in order to ante date the other reference, you have to prove two things.

[00:01:29] Speaker 06:
You have to prove that you invented it at a prior point in time and that you either tested or used it for its proper purposes, right?

[00:01:37] Speaker 06:
That's the test for reduction in practice.

[00:01:40] Speaker 04:
So part of that is that when you're showing the reduction to practice at a prior point in time You're the one that invented it at that part of point in time Part of that actual reduction to practice is

[00:02:07] Speaker 06:
still is that you constructed an embodiment or invented it or otherwise somebody did it at your direction, isn't it?

[00:02:18] Speaker 04:
But your failure is, at least in the board's view, is that you didn't show that you constructed that embodiment.

[00:02:36] Speaker 06:
You think you don't have to show to anti-data reference that you constructed the embodiment.

[00:02:45] Speaker 04:
It's not, I'm not sure why you keep saying no challenge to conception.

[00:02:52] Speaker 06:
It's your burden of proof on anti-dating the other reference.

[00:02:57] Speaker 06:
It's not their burden to disprove it.

[00:02:59] Speaker 06:
Right?

[00:03:00] Speaker 06:
Well, even when you're trying to say that the obviousness reference they brought forward, you've anti-dated it because you invented something before that.

[00:03:18] Speaker 06:
I don't want to get tied up into it because I don't think it matters whether we call it burden of proof or production here.

[00:03:22] Speaker 06:
But when we're talking about you pointing out an earlier reduction to practice, isn't it your burden on that?

[00:03:30] Speaker 04:
Your Honor, if I were to establish an actual regression of practice.

[00:03:34] Speaker 06:
Part of which is you invented the embodiment and then used it or otherwise tested it.

[00:03:41] Speaker 04:
Your Honor, in this case, there was no need to go into conception.

[00:03:45] Speaker 04:
There was no challenge.

[00:03:47] Speaker 04:
There had never been a challenge or an allegation that there was derivation, that anybody with Mr. Shroff was the actual inventor.

[00:03:56] Speaker 04:
So it simply wasn't at issue.

[00:04:00] Speaker 04:
And it was only because the former, perhaps believing that the deduction of practice constituted the assembly of the PCP board, which it did not, that they turned it into some of those pieces.

[00:04:11] Speaker 04:
But it still wasn't an actual reduction of practice, because it did not establish that the device would work for its intended purpose.

[00:04:18] Speaker 04:
It was a complex electronic device that required screwing, and that it would work for its intended purpose.

[00:04:25] Speaker 04:
Wait, so let me ask you this hypothetical.

[00:04:43] Speaker 06:
So suppose you and a competitor are working on this item at the same time.

[00:04:52] Speaker 06:
and you all are doing all your testings and you hear that somebody else has done this and you go out and somehow procure the same prototype they have and come in and test it.

[00:05:04] Speaker 04:
Does that mean you reduced it to practice?

[00:05:10] Speaker 06:
Because you have to show that you constructed that embodiment at the prior point in time I think what is troubling me here, and I get what you're saying I think this is a very close and difficult case, but you know you get the benefit of the the patent date for constructing this or for

[00:05:39] Speaker 06:
creating this invention but in order to predate it you can't just say we had it in our possession you have to show that you invented it prior to that date and give us specific evidence and the board found that evidence to be insufficient as the Supreme Court instructs us in

[00:06:06] Speaker 05:
supposed to be a Goodyear dental vulcanite, as cited in the party's briefs.

[00:06:12] Speaker 06:
And to raise an issue of conception... So, let me, let me... Yes, sir.

[00:06:15] Speaker 06:
...make it clear.

[00:06:15] Speaker 06:
When you say they didn't give the proper weight to the board, to the declaration on the Shershrott, now you're talking about, we're reviewing this under a substantial evidence standard.

[00:06:26] Speaker 05:
No, Your Honor.

[00:06:27] Speaker 05:
Our position is that they

[00:06:29] Speaker 05:
should never have gone into the issue of conception, because the issue of conception wasn't appropriately in front of this board.

[00:06:37] Speaker 06:
Isn't that inherently a part of the reduction to practice analysis?

[00:06:41] Speaker 06:
You don't just show that it was used by the patentee prior to the priority date.

[00:06:45] Speaker 06:
You have to show that you somehow invented it.

[00:06:50] Speaker 06:
You constructed an embodiment that embodied the patent.

[00:06:55] Speaker 05:
Your honor, it is more than just constructing an embodiment.

[00:06:58] Speaker 05:
It's showing that you tested it to determine that it would work for its intended purpose.

[00:07:01] Speaker 06:
Look, there's no doubt you tested it.

[00:07:02] Speaker 06:
I mean, that's right.

[00:07:03] Speaker 06:
If that was your only test, that you had possession of a device that did this patent and you tested it, I think your November whatever tests are sufficient.

[00:07:14] Speaker 06:
But I don't think that's all the tests.

[00:07:15] Speaker 06:
I think the second part of the test in our precedent is to show

[00:07:19] Speaker 06:
that you're responsible for constructing that embodiment in order to get the benefit of that earlier priority date.

[00:07:26] Speaker 05:
With due respect, Your Honor, it is our position that the actual reduction of practice by the testing with conception not being challenged in this case was sufficient to establish Mr. Sherratt's entitlement to the earlier priority date, especially in a case like this where the petitioner

[00:07:46] Speaker 05:
would have been expected to raise the issue of conception, and in three separate incidents, twice at the hearing and once in their pleadings, said specifically, conception is not at issue in this proceeding.

[00:07:58] Speaker 05:
The board did more than merely step into the shoes of the petitioner here.

[00:08:02] Speaker 05:
The board put on a new pair of shoes and adopted arguments that had been rejected by the petitioner.

[00:08:10] Speaker 05:
And therein lies the fault.

[00:08:11] Speaker 05:
And furthermore, Your Honor, there is a

[00:08:15] Speaker 05:
The theme of error, which we believe runs through the board's decision and also the office's briefing, which is that there was an actual reduction of practice by the construction of the PCB layout by concept electronic.

[00:08:28] Speaker 05:
That was not an actual reduction of practice.

[00:08:31] Speaker 05:
That was a construction of a printed circuit board putting together components in accordance with the instructions provided by Mr. Chirot.

[00:08:40] Speaker 05:
But even

[00:08:41] Speaker 05:
If they came from someone else, that would not constitute an actual reduction practice, because there's no showing it.

[00:08:46] Speaker 02:
Yes, Your Honor.

[00:08:46] Speaker 02:
Is this a problem that there's no corroboration of Sherratt's role in the instructions that were passed to see?

[00:08:57] Speaker 05:
Your Honor, with respect, that was the board's conclusion, but we disagree.

[00:09:01] Speaker 05:
We believe that there was sufficient corroboration to establish Mr. Sherratt's role with respect to the conception of particularly

[00:09:09] Speaker 05:
in light of this court's most recent, albeit non-presidential, decision of Intellectual Ventures II versus Motorola Mobility and the appropriate use of the rule of reason in this type of analysis.

[00:09:21] Speaker 00:
Is it possible to narrow the issue?

[00:09:25] Speaker 00:
It looked as if nobody disputed that the reduction to practice took place.

[00:09:30] Speaker 00:
The question was whether or not it inured to this applicant.

[00:09:34] Speaker 00:
Is that right?

[00:09:35] Speaker 00:
Because of the

[00:09:37] Speaker 00:
difficulty of the chain of the emails and the report going back and forth and what the revision three as compared with the earlier revision and so on.

[00:09:52] Speaker 00:
Was there a question as to the fact as to what was reduced to practice or only whether it, whether this applicant, this inventor got the benefit of it?

[00:10:04] Speaker 05:
With respect, Your Honor, there certainly was contested evidence regarding what was actually reduced to practice.

[00:10:11] Speaker 05:
The position of NSC technology was that the pages of the test report that discussed the binary port to the control circuit, in this case the PIC processor modulating the antenna of the inductive circuit, established a reduction to practice.

[00:10:25] Speaker 05:
The reduction to practice being a method claim

[00:10:30] Speaker 05:
that you had to show you had binary ports on the control circuit that were otherwise modulating.

[00:10:35] Speaker 05:
And the particular pieces that did that would not be particularly relevant.

[00:10:39] Speaker 05:
The annulment issue only arises because of the board's suesponte assertion of the conception issue, which was not briefed by the parties and wasn't appropriately before the board in the opinion of NFCT.

[00:10:54] Speaker 00:
Was it explored before the board that I think at least it was established?

[00:10:59] Speaker 00:
that there are different standards for interference priority and rule 131 priority.

[00:11:07] Speaker 00:
Is that a distinction that you wish to draw here?

[00:11:11] Speaker 05:
That is a distinction, Your Honor, and that is a distinction we drew, particularly in the briefing relying on Your Honor's concurrence in the Laurel Fairchild case.

[00:11:19] Speaker 05:
And our position there is simply that the rule 131 and the law on antedating a reference is more appropriately

[00:11:26] Speaker 05:
applied than the interference rules and the highly detailed interference rules.

[00:11:31] Speaker 05:
And while it is true that 131 is not one of the specifically incorporated statutory provisions, neither are the interference provisions.

[00:11:40] Speaker 05:
And we would suggest that the court and the board be guided by, frankly, a rule of reason analysis as to which way to go.

[00:11:47] Speaker 05:
But it is not an interference proceeding.

[00:11:51] Speaker 00:
Okay.

[00:11:51] Speaker 00:
Let's hear from the office.

[00:12:04] Speaker 00:
Mr. McNeese.

[00:12:05] Speaker 01:
May it please the Court.

[00:12:07] Speaker 01:
The Board correctly recognized here that when the argument of actual reduction to practice is predicated on some third-party activity, the issue of the normant comes into play.

[00:12:18] Speaker 01:
And particularly here, I would be.

[00:12:19] Speaker 00:
But nobody disputed that that activity took place.

[00:12:23] Speaker 00:
Nobody seemed to dispute when it took place.

[00:12:27] Speaker 00:
I gather there may have been some question as to what was done when.

[00:12:31] Speaker 00:
Is that right?

[00:12:32] Speaker 01:
The dispute wasn't so much who did what or even when.

[00:12:36] Speaker 01:
The question was, well, a little bit of who did what, and more particularly, to take it broadly, act reduction to practice requires the prototype, an actual physical thing that then gets tested.

[00:12:48] Speaker 01:
There's no dispute that the testing here was not done by Concept Electronique, the fabricator.

[00:12:53] Speaker 01:
The testing that was relied upon below by NFCT was done by NFCT.

[00:12:57] Speaker 00:
But isn't the law clear that an inventor can

[00:13:01] Speaker 00:
somebody or request someone else to conduct tests on his behalf?

[00:13:05] Speaker 01:
Well, they could, but that's not the third-party issue here.

[00:13:09] Speaker 01:
This is not an issue like, for example, in Cooper Technologies.

[00:13:12] Speaker 00:
Well, that's the question of Enormen, isn't it?

[00:13:15] Speaker 01:
Enormen is the general concept of somebody else has done something and I need to rely on the benefit of that activity.

[00:13:20] Speaker 01:
So Enormen is a general legal concept.

[00:13:22] Speaker 01:
It's a fact-specific application of it.

[00:13:24] Speaker 01:
In Cooper, it was

[00:13:26] Speaker 01:
Goldfarb had done some testing, and Cooper needed to rely on that particular testing.

[00:13:30] Speaker 02:
But the board's opinion here relied on a lack of corroboration?

[00:13:34] Speaker 01:
Correct.

[00:13:34] Speaker 02:
Now, if one has an interference, A versus B, each one is contending for priority.

[00:13:43] Speaker 02:
And A says, I did it, and B says, I did it.

[00:13:48] Speaker 02:
And so there needs to be corroboration.

[00:13:51] Speaker 02:
Here there isn't another party contending for ownership.

[00:13:56] Speaker 02:
The second party, the contractor, isn't claiming ownership.

[00:14:00] Speaker 02:
Obviously, someone conceived this.

[00:14:05] Speaker 02:
There's evidence that Sherratt did.

[00:14:08] Speaker 02:
There's a patent issued in Sherratt's name.

[00:14:11] Speaker 02:
And why should we require the same amount of corroboration

[00:14:17] Speaker 02:
in this case, when there isn't any opponent contending for inventorship as there is in an interference?

[00:14:25] Speaker 01:
Well, I think the reason why is this situation is more akin to an interference.

[00:14:29] Speaker 01:
I see to there isn't two parties attempting to claim the same invention.

[00:14:33] Speaker 01:
But this is also not the scenario in the ex parte situation where rule 131 applies.

[00:14:38] Speaker 01:
And you have the language of rule 131 that says an inventor can file a declaration saying actual reduction of practice or a conception followed by diligence to reduction to practice.

[00:14:47] Speaker 01:
So we're definitely not in that world.

[00:14:49] Speaker 01:
We are more in the world a la Perfect Surgical, where this court said in the context of the AIA that principles of 102G apply.

[00:14:56] Speaker 01:
And that's consistent with what this court has said in patent infringement, which would be more analogous as well.

[00:15:01] Speaker 01:
In that scenario, you don't have two parties attempting to establish that they or the other gets to claim the invention.

[00:15:07] Speaker 01:
You have one party that's claimed an invention and then another that is, in essence, trying to avoid it.

[00:15:11] Speaker 01:
So the principles of 102G apply there.

[00:15:14] Speaker 01:
This court made clear.

[00:15:15] Speaker 00:
But all I have to show is reduction of practice under 131.

[00:15:20] Speaker 00:
Isn't that right?

[00:15:22] Speaker 00:
Or else conception and diligence.

[00:15:24] Speaker 00:
You don't even have to show an actual reduction of practice.

[00:15:28] Speaker 01:
Well, part of the reason for that, Your Honor, is in a typical 131 scenario, it's the inventor who has reduced it to practice.

[00:15:33] Speaker 00:
And when we say that, we mean- Why isn't this a simple 131?

[00:15:37] Speaker 00:
scenario they're just saying I did this work I reduced this to practice I hired these people they built the board before the effective date of the reference without going into whether if it's the same invention how whether 131 serves or not because that's a very curious situation it seems to me

[00:15:59] Speaker 01:
Well, leaving aside the fact that rule 131 by regulation does not apply in an AIA context.

[00:16:04] Speaker 00:
There's no interference, so what else do you have?

[00:16:07] Speaker 01:
Well, I have the law of this court under perfect surgical that says the law of 102G applies in the AIA context.

[00:16:13] Speaker 01:
And what we also have is the law of this court where it says the law of 102G, in essence, crosses proceedings, including patent infringement.

[00:16:19] Speaker 01:
And what we also have is the board.

[00:16:20] Speaker 00:
And we also have the law of this court which says that the rules are different for 131 and interference priority.

[00:16:27] Speaker 01:
Well, we have, there is the discussions in Laurel Fairchild and in Raymore and Echo Meyer, if I'm getting that correctly, that does recognize that there is a distinction between the two scenarios.

[00:16:38] Speaker 01:
But the distinctions between the two scenarios largely derives from the ex parte versus adversarial nature.

[00:16:43] Speaker 02:
But look, who else invented it?

[00:16:46] Speaker 02:
Sherrod invented it.

[00:16:47] Speaker 01:
Well, what the board explained was, at appendix pages 23 to 25, why it was inquiring into Conception.

[00:16:53] Speaker 01:
It said, at the first full paragraph on appendix 24,

[00:16:56] Speaker 01:
Quote, if a person conceives of an invention and proceeds himself or herself actually to reduce that invention to practice, the actual reduction to practice is sufficient evidence of conception, at least as of the date of the actual reduction to practice.

[00:17:10] Speaker 01:
Problem here is we have a crucial step in the theory of actual reduction to practice that was not done by Sherat.

[00:17:17] Speaker 01:
Everybody agrees it was done by concept electronique, who is a third party.

[00:17:21] Speaker 01:
That moves us outside the realm of, in essence, assumed conception,

[00:17:25] Speaker 01:
And conception becomes relevant.

[00:17:26] Speaker 01:
That's what this court said in Cooper.

[00:17:28] Speaker 01:
That's what this court said in Genentech.

[00:17:30] Speaker 02:
So... And doesn't the conception arise from Sherratt having sent it to the contractor?

[00:17:34] Speaker 02:
Well, part of... Sent what he did?

[00:17:37] Speaker 01:
Part of his theory of conception, if you look at the patent owner response, where they argued about conception at pages, appendix pages 265 to 266, Sherratt explains, or I should say, NFTT argued, relying on Sherratt's declaration,

[00:17:53] Speaker 01:
That inside was working on it.

[00:17:54] Speaker 01:
Inside Technologies is where Sherott worked.

[00:17:56] Speaker 01:
They were working on the developing the product or the item inside.

[00:18:01] Speaker 01:
And they got to a point where they said, all right, we're ready to make a prototype.

[00:18:04] Speaker 01:
So we commissioned Concept Electronique to generate the PCB layouts.

[00:18:09] Speaker 01:
They generated the layouts.

[00:18:10] Speaker 01:
They sent it to us approval.

[00:18:11] Speaker 01:
The layout is crucial.

[00:18:14] Speaker 01:
It shows, quote, a number of important features of the M20H1 design.

[00:18:18] Speaker 01:
Concept Electronique makes the prototype.

[00:18:20] Speaker 01:
Now we're on page 266.

[00:18:23] Speaker 01:
They sent it to us.

[00:18:24] Speaker 01:
We tested that prototype.

[00:18:26] Speaker 06:
So that is why the board is... Why isn't that test date alone sufficient for a reduction to practice?

[00:18:33] Speaker 01:
Why isn't the test date?

[00:18:35] Speaker 06:
There's a November test date where they... And I understand there may have been some disagreements about whether it actually did the patent or not, but that never was reached.

[00:18:44] Speaker 06:
So let's assume it did.

[00:18:46] Speaker 06:
Why isn't that enough?

[00:18:47] Speaker 06:
because it's testing.

[00:18:49] Speaker 06:
This is not an instance where the testing is by the third party, right?

[00:18:51] Speaker 06:
It's testing by the third party.

[00:18:53] Speaker 06:
That is correct.

[00:18:54] Speaker 06:
So when the patentee has in possession the device that was at least partially constructed at its instruction, and it tests it and embodies the patent, why isn't that significant to at least give that November date priority?

[00:19:09] Speaker 01:
Potentially, it could be.

[00:19:10] Speaker 01:
What the board found was that there were discrepancies in gaps in the evidence as to what was actually tested and what they got back from concept electronique.

[00:19:18] Speaker 01:
This is at pages, appendix 29 to 30.

[00:19:20] Speaker 06:
So in your view, this is really just a failure or proof case.

[00:19:23] Speaker 06:
There's not, I mean, as far as I can tell, there's not any real dispute about who invented this, the product that issued this patent.

[00:19:33] Speaker 06:
But you just think that they didn't show enough evidence to get an earlier priority date.

[00:19:37] Speaker 01:
It is perhaps a fine line.

[00:19:38] Speaker 01:
Because the board did not, and this goes back to the question about.

[00:19:41] Speaker 06:
That might be an easier result to accept if all we had was

[00:19:48] Speaker 06:
the instructions and they fabricated it and they got it back.

[00:19:51] Speaker 06:
But when they actually have it, they did more programming on it and they tested it and putting aside disputes about whether it embodied the patent, they had it.

[00:20:00] Speaker 06:
That seems to me pretty close to a reduction in practice.

[00:20:02] Speaker 01:
Well, again, the problem here we have is that prototype.

[00:20:06] Speaker 01:
which is a crucial part of the reduction to practice theory is not there.

[00:20:09] Speaker 01:
So there needs to be some evidence that what's reflected in that prototype reflects the invention that they conceived of.

[00:20:14] Speaker 00:
You're talking about the difference between the revision two and the revision three?

[00:20:17] Speaker 01:
That's part of it, Your Honor.

[00:20:18] Speaker 01:
That's part of the gap.

[00:20:19] Speaker 00:
But then all they would have is diligence.

[00:20:21] Speaker 00:
Eventually it came up with what's embodied in the application.

[00:20:25] Speaker 00:
So even if there were changes between revision two and revision three, that wouldn't affect

[00:20:32] Speaker 00:
the continuity, would it?

[00:20:34] Speaker 01:
Well, two things, Your Honor.

[00:20:35] Speaker 01:
They didn't actually rely on the date of the testing.

[00:20:37] Speaker 01:
They relied on the November 98 date.

[00:20:40] Speaker 01:
They didn't actually get into the subsequent date of the date of February 1998.

[00:20:47] Speaker 00:
But you just said that there were discrepancies.

[00:20:50] Speaker 00:
So you want us to look at the difference between what might have happened in that period.

[00:20:58] Speaker 01:
Is that right?

[00:20:59] Speaker 01:
Well, not so much.

[00:20:59] Speaker 01:
The reason why that's relevant, Your Honor,

[00:21:02] Speaker 01:
per Judge Hughes's question about whether the testing could be relevant evidence of actual reduction to practice.

[00:21:07] Speaker 01:
That wasn't a theory that they relied upon below.

[00:21:09] Speaker 01:
And then you have these problems of what they perhaps that date could have been.

[00:21:15] Speaker 01:
It's not a theory that was explored below.

[00:21:18] Speaker 01:
We do have these evidentiary discrepancies that the board cited between exhibit 2012 as the test report.

[00:21:24] Speaker 00:
But does it matter when there is, I think, an unchallenged reasonable continuity of effort?

[00:21:32] Speaker 01:
Well, again, there was no argument about diligence in this case.

[00:21:37] Speaker 01:
So it's not an issue that the board reached or explored.

[00:21:40] Speaker 00:
So why do we care what was in revision two?

[00:21:43] Speaker 01:
Well, the reason we care about revision two is because that's for, and it was actually revision three, exhibit 2013, which was the wiring confirmation diagram that NFCT relied upon below to demonstrate that what was tested was what they had actually came up with before they asked Concept Electronique to fabricate.

[00:22:02] Speaker 01:
And the problem you had is you have these differing numbers.

[00:22:04] Speaker 01:
You have on the facts diagram asking Concept Electronique to make the prototype that has M2O210H.

[00:22:12] Speaker 01:
Then you have on the test report, it actually has M210H2.

[00:22:16] Speaker 01:
And then you have on the wiring testing, which comes later, revision three, and it's two months after the testing of the fabrication.

[00:22:23] Speaker 01:
So you have all these sort of discrepancies.

[00:22:25] Speaker 01:
And what are they actually working on?

[00:22:27] Speaker 01:
Is it always the same thing?

[00:22:28] Speaker 01:
Has it been modified?

[00:22:30] Speaker 01:
And that's important here because, again, the theory of reduction to practice here was based on the prototype that Concept Electron EEC made.

[00:22:36] Speaker 01:
So if there was further messing around with it, that was, A, not a theory that they relied upon, and, B, it speaks to whether or not their theory of actual reduction to practice was sufficiently proven and corroborated.

[00:22:48] Speaker 01:
And there's one other thing that I think is important to remember here, which is the board sort of found two related but separate problems with the evidence here.

[00:22:56] Speaker 01:
At appendix pages 26 to 30,

[00:22:58] Speaker 01:
The board found insufficient corroborative evidence of conception prior to November 1998, which was the date that NFCT advanced.

[00:23:05] Speaker 01:
Then at pages 30 to 31, they found sort of additionally that there was insufficient evidence that concept electronic fabricated the design provided by the inventor.

[00:23:14] Speaker 01:
They're related because part of the theory of relief here for NFCT was based on what they had concept electronic do.

[00:23:21] Speaker 02:
But that's corroboration, isn't it?

[00:23:23] Speaker 01:
That is, the first one.

[00:23:25] Speaker 02:
Question of corroboration.

[00:23:26] Speaker 01:
It is a question which is a rule of reason analysis.

[00:23:29] Speaker 01:
And for the reasons we've explained in our board, in our brief, the board went through each piece of evidence and said, look, here's the problem I have with it.

[00:23:36] Speaker 01:
I've got notebooks that aren't signed or witnessed.

[00:23:40] Speaker 01:
I've got inventor testimony that's not corroborated by anybody but the inventor's notebooks.

[00:23:44] Speaker 02:
But you don't have a competitor here.

[00:23:47] Speaker 02:
You don't have anyone else.

[00:23:48] Speaker 01:
That is correct, Your Honor.

[00:23:50] Speaker 02:
And Sherrod isn't someone from nowhere.

[00:23:52] Speaker 02:
He was an involved party.

[00:23:54] Speaker 02:
It's not the principal party.

[00:23:56] Speaker 02:
And a named inventor.

[00:23:58] Speaker 01:
He is a named inventor, Your Honor.

[00:23:59] Speaker 01:
And it's not to say that his testimony isn't relevant or can't be considered.

[00:24:03] Speaker 01:
The problem with it is, when it is the inventor, it needs to be corroborated.

[00:24:07] Speaker 01:
This court recognized imperfect surgical.

[00:24:09] Speaker 06:
I know the notebooks are not dated the way you want them to, but why do they need to be dated?

[00:24:18] Speaker 06:
The rule of reason just looks at the whole picture of the evidence to suggest that

[00:24:23] Speaker 06:
the inventor's testimony is corroborated.

[00:24:27] Speaker 06:
And it seems like there was sufficient evidence on the record to show here's instructions he gave to the contractor, here's the back and forth, here's his notebooks, there were emails and the like.

[00:24:37] Speaker 06:
And the whole picture given together seems to suggest that they were working on what he told them to do and that it ultimately ended up in a working prototype that ampliates the reference.

[00:24:48] Speaker 01:
Well, respectfully, Your Honor, I mean, for example, the reason why we need the notebooks to be dated, signed, witnessed, somebody that can testify as to when Sherratt made them is because they're Sherratt's notebooks.

[00:24:58] Speaker 01:
So NFCT is trying to use Sherratt's notebooks to corroborate Sherratt's testimony.

[00:25:04] Speaker 01:
And so there's got to be some independent verification, because then otherwise he's just bootstrapping his own testimony.

[00:25:10] Speaker 01:
And this Court explained, for example, in NTP, that that kind of activity

[00:25:15] Speaker 01:
was not sufficient enough under the law.

[00:25:18] Speaker 06:
Well, aren't the notebooks sufficient to show what he was working on?

[00:25:21] Speaker 06:
Right, but we don't know... And then the emails back and forth, which are dated, are sufficient to show the time period.

[00:25:26] Speaker 01:
I confess, I'm not sure... I know there's the fact sheet from... Maybe that's what I'm... Okay, I was gonna say, I'm not aware of any emails.

[00:25:35] Speaker 01:
Part of the problem we have as well, Your Honor, is we don't know exactly what

[00:25:39] Speaker 01:
NFCT sent to Concept Electronique or what they sent back.

[00:25:42] Speaker 01:
We just have the facts cover sheet.

[00:25:43] Speaker 01:
This was something the board explained at appendix page 29.

[00:25:47] Speaker 01:
We don't know what it is that NFCT was giving Concept Electronique or what, other than sending back the prototype, what Concept Electronique was communicating back to them.

[00:25:58] Speaker 01:
So maybe independently one of these problems wouldn't be sufficient enough to reach the conclusion that the board reached.

[00:26:03] Speaker 01:
But you've got four or five of these things.

[00:26:05] Speaker 01:
And they add on and they add on.

[00:26:06] Speaker 01:
And under the rule of reason, the board said, I just don't have sufficient corroborated evidence for you to demonstrate your actual reduction of practice.

[00:26:14] Speaker 02:
Therefore, who gets the patent?

[00:26:17] Speaker 01:
Well, exactly.

[00:26:18] Speaker 01:
I mean, you're right.

[00:26:19] Speaker 01:
This is not an interference.

[00:26:21] Speaker 01:
It's not like the PTO is going to walk out the door with a patent.

[00:26:24] Speaker 01:
But the reason why we care, and I think the reason why Perfect Surgical recognized that the law of 102G applies is we are in the more adversarial setting akin to patent infringement.

[00:26:33] Speaker 01:
And that law of 102G is what should apply.

[00:26:36] Speaker 00:
Well, you know, two things that maybe the office considered, maybe not.

[00:26:43] Speaker 00:
One is here we have a situation, a possible conflict that might have involved itself in an interference.

[00:26:51] Speaker 00:
So here we go back to rule 131 to look for conception, reduction of practice, priority, issues that were eliminated.

[00:27:02] Speaker 00:
in the interference context.

[00:27:05] Speaker 00:
Difficult questions, which brings me to an even tougher question.

[00:27:09] Speaker 00:
What in the world is the office doing in this case?

[00:27:14] Speaker 00:
The petitioner withdrew, refuses to defend its win.

[00:27:19] Speaker 00:
The district court case was dismissed.

[00:27:22] Speaker 00:
It's over.

[00:27:25] Speaker 00:
What is the interest of the office in this conflict?

[00:27:29] Speaker 00:
There's no Article 3 conflict.

[00:27:32] Speaker 00:
between the office and this applicant.

[00:27:36] Speaker 00:
There's no, even if the office prevails and there's an estoppel, it only affects this Petitioner who's already withdrawn.

[00:27:46] Speaker 00:
Why is the office squandering its time and talent in this debate after the Petitioner withdrew?

[00:28:00] Speaker 00:
can be interpreted as saying anything the office wants to do, they can do.

[00:28:06] Speaker 00:
I doubt very much that when the director was authorized to intervene, that meant in anything that anybody felt like intervening in, but in a situation where you were defending some jurisdictional issue.

[00:28:23] Speaker 00:
Here we have a expensive, heavily contested contest, appeal continuing.

[00:28:31] Speaker 00:
Withdrawn in the district court, nobody seems to care except the office.

[00:28:37] Speaker 00:
Why should it matter?

[00:28:40] Speaker 01:
The office cares because in large part this was a challenge to the procedures of the office.

[00:28:45] Speaker 01:
And the office has an interest in assuring that its board and the manner in which the board is applying the AIA receives at least a counterpoint consideration.

[00:28:56] Speaker 01:
And this court, in many instances in which cases where the petitioner has dropped out, has asked the PTO to participate or whether we will participate.

[00:29:03] Speaker 01:
Now, admittedly, we do not have an order like that in this case.

[00:29:06] Speaker 01:
But the director has exercised her statutory authority to participate in the appeal.

[00:29:11] Speaker 01:
And that is largely why.

[00:29:13] Speaker 01:
It is to protect the integrity of the US PTO office's proceedings and the statute.

[00:29:19] Speaker 00:
OK.

[00:29:20] Speaker 00:
We'll see.

[00:29:21] Speaker 00:
Thank you.

[00:29:22] Speaker 01:
Thank you, Your Honor.

[00:29:31] Speaker 00:
Mr. Hector.

[00:29:33] Speaker 05:
Thank you, Your Honor.

[00:29:35] Speaker 05:
Three points, if it might, Your Honor.

[00:29:37] Speaker 05:
First off, we think it's important to note that enurement typically focuses on the relationship between the parties and not on what was actually communicated.

[00:29:47] Speaker 05:
And that is primarily because enurement typically involves whether or not the appreciation of the

[00:29:55] Speaker 05:
benefits obtained or whether or not the knowledge that it would work for its intended purpose is what is going to inure back to the inventor.

[00:30:03] Speaker 05:
Rarely, if ever, does inurement seem to involve who made the prototype that was ultimately tested and resulted in an actual reduction of practice.

[00:30:13] Speaker 05:
In this case, there was prima facie evidence of conception that was never contested.

[00:30:20] Speaker 03:
But you're not relying on a theory of conception and due diligence, are you?

[00:30:24] Speaker 05:
No, Your Honor, because we have an actual reduction of practice.

[00:30:27] Speaker 05:
Unlike perfect surgical, for example, there's not an issue of due diligence with a reduction of practice after the critical date.

[00:30:34] Speaker 05:
Critical date post-dates the documents, the events, the testing, everything in this case.

[00:30:43] Speaker 05:
So due diligence, we believe, is not a relevant consideration.

[00:30:48] Speaker 05:
We also point that there is no substantial evidence or any evidence of any kind

[00:30:53] Speaker 05:
that anybody else but Mr. Chirac conceived of the invention.

[00:30:57] Speaker 05:
And while we recognize that there are some discrepancies in the evidence, discrepancies that one might realistically expect when one is looking at an invention made in France 17 years ago from people who are no longer employed by the company, we believe that a close analysis of the evidence under the appropriate rule of reason shows that

[00:31:19] Speaker 05:
Mr. Sherratt, in persons working on his direction, had an actual reduction of practice in November 1998.

[00:31:26] Speaker 05:
And therefore, the Sears reference is not prior art.

[00:31:28] Speaker 05:
And that the board, when it introduced the issues of conception and endearment, ran afoul of this court's direction and exceeded its authority.

[00:31:39] Speaker 05:
Because as the court stated in Magnum Oil IIs, that authority is not so broad that it allows the PTO to raise, address, and decide on patentability theories

[00:31:49] Speaker 05:
never presented by the petitioner.

[00:31:51] Speaker 05:
That's particularly true in a case like this, where not only the petitioner never raised them, but they explicitly disavowed them on multiple occasions.

[00:32:02] Speaker 00:
Any more questions?

[00:32:04] Speaker 00:
Thank you.

[00:32:05] Speaker 00:
Thank you both.

[00:32:05] Speaker 00:
Case is taken under submission.