[00:00:36] Speaker 02:
The next argue case is number 17, 1976, Henry Verhoef, Mr. Loom.

[00:00:48] Speaker 02:
Proceed.

[00:00:49] Speaker 01:
Your honors, if it may please the court.

[00:00:51] Speaker 01:
My name is Thomas Loom and I represent the appellate, Jeff Verhoef, in this appeal.

[00:00:57] Speaker 01:
We are all here today because Mr. Verhoef believes that he alone is the sole original and first inventor

[00:01:04] Speaker 01:
of the invention set forth in his patent application filed on December 16, 2011, entitled Dog Mobility Device.

[00:01:13] Speaker 03:
Isn't it clear that the figure eight loop was key to the invention and that the veterinarian contributed it?

[00:01:23] Speaker 01:
I'm a little bit hard of hearing, isn't it?

[00:01:25] Speaker 01:
I'm sorry.

[00:01:25] Speaker 03:
Isn't it clear that a key factor, certainly a necessary claim limitation, was the figure eight loop?

[00:01:34] Speaker 03:
And that the veterinarian contributed that.

[00:01:38] Speaker 01:
It is true that the veterinarian, Dr. Alicia Lam, made a suggestion.

[00:01:43] Speaker 01:
And then that suggestion was the figure loop.

[00:01:45] Speaker 01:
And that figure loop is an essential and key part of the claim combination.

[00:01:52] Speaker 03:
Therefore, as they perhaps determined originally, there was a joint invention.

[00:01:56] Speaker 03:
That application fell abandoned.

[00:01:58] Speaker 03:
That's true.

[00:01:58] Speaker 03:
That is correct.

[00:02:00] Speaker 03:
And he refiled it in his own name.

[00:02:03] Speaker 03:
And since it was a joint invention, he did not, under 102F, invent the claim subject matter.

[00:02:10] Speaker 01:
Well, that's why we're here.

[00:02:12] Speaker 01:
That's what we're trying to kind of resolve.

[00:02:13] Speaker 01:
That's what we're trying to get to the bottom of, is whether or not he is the true inventor, or whether or not this alleged co-inventor or alleged collaborator is an inventor.

[00:02:24] Speaker 01:
And I'm here to tell a story.

[00:02:25] Speaker 01:
I'm here to tell Mr. Verhof's story about how he came and how he created invention and how it was

[00:02:32] Speaker 01:
clandestinely taken from him, how he was misinformed about the law.

[00:02:37] Speaker 01:
And how he became more appreciative of the law.

[00:02:40] Speaker 01:
And that's why we're here.

[00:02:41] Speaker 01:
That's what we're trying to get resolved today.

[00:02:44] Speaker 01:
So I'm going to continue with my script here.

[00:02:47] Speaker 01:
And I'm happy to entertain any questions.

[00:02:49] Speaker 01:
But we agree that Dr. Lamb made a significant contribution.

[00:02:56] Speaker 01:
Mr. Vorhoff was consulting with her.

[00:02:58] Speaker 01:
His dog, Riley, had surgery.

[00:03:01] Speaker 01:
had a degenerative canine myelopathy, which is a very insidious and cruel disease that was afflicting his dog.

[00:03:09] Speaker 01:
And so based on the advice of his surgeon, he went to visit Dr. Lam to consult with her.

[00:03:15] Speaker 01:
And he had a nine-week therapy session for the dog over nine weeks, and he paid $895 for this.

[00:03:26] Speaker 02:
To understand why you're here, you're asking us to act like a

[00:03:31] Speaker 02:
Board of Interferences with these two different patent applications?

[00:03:37] Speaker 02:
No, we don't think that their application has... You're asking us to decide, since interferences were abolished, do we know which of these two applications was filed?

[00:03:48] Speaker 02:
First, I gather that the idea of resolving this debate through some sort of joint invention is not available.

[00:03:58] Speaker 02:
What are you asking?

[00:04:00] Speaker 02:
of this court.

[00:04:01] Speaker 01:
We're asking this court to declare Mr. Vorhoff to be the sole and true and original inventor of his invention.

[00:04:07] Speaker 02:
But he's already agreed that as far as the figure eight configuration was concerned, that was not his idea.

[00:04:14] Speaker 01:
That's correct.

[00:04:16] Speaker 01:
It wasn't his idea.

[00:04:18] Speaker 01:
That idea was given to him.

[00:04:20] Speaker 02:
But it's there in his specification.

[00:04:23] Speaker 02:
That you're asking us to declare... It's in the specification.

[00:04:25] Speaker 01:
The Palu contribution is in the specification.

[00:04:28] Speaker 01:
And we agree that that idea was given to someone else, as in all inventions.

[00:04:35] Speaker 01:
There are no claim combination where somebody had... All inventors take limitation in elements from others.

[00:04:42] Speaker 01:
That's the essence of inventions.

[00:04:44] Speaker 01:
He did nothing else.

[00:04:46] Speaker 01:
He had the entire reduction to practice of the invention.

[00:04:49] Speaker 01:
He was in the process of reducing his invention to practice.

[00:04:54] Speaker 01:
stereotypically, she blurted out an idea and he adopted it.

[00:04:58] Speaker 01:
That's what happened here.

[00:05:01] Speaker 01:
She gave an idea.

[00:05:03] Speaker 01:
She said that, hey, why don't you try figure eight?

[00:05:05] Speaker 01:
And he did.

[00:05:05] Speaker 01:
And so we don't believe, he doesn't believe, and that's why we're here.

[00:05:10] Speaker 01:
He doesn't believe that that rises to the high level of being an inventor.

[00:05:15] Speaker 01:
That just the mere suggestion of an idea that was freely given, freely given idea, just because you give an idea doesn't or shouldn't

[00:05:25] Speaker 01:
provide you a high status of being an inventor.

[00:05:28] Speaker 01:
Particularly, she had nothing to do with the reduction of practice.

[00:05:32] Speaker 01:
And there's no evidence that she did anything more than provide a suggestion.

[00:05:37] Speaker 01:
We don't think that her contribution is significant.

[00:05:41] Speaker 01:
We think it's insignificant when you look at the infection as a whole.

[00:05:46] Speaker 01:
That's why we're here.

[00:05:48] Speaker 01:
So you're right.

[00:05:49] Speaker 01:
She made that.

[00:05:51] Speaker 01:
And I think that the Patent Office said it was the

[00:05:55] Speaker 01:
piece that solved the puzzle in a long-ago case that, to my knowledge, still hasn't been overturned, is this Morse v. Porter.

[00:06:03] Speaker 01:
And they say it was the key that unlocked the problem.

[00:06:05] Speaker 01:
And we agree with that case.

[00:06:08] Speaker 01:
We want this court to adopt that case and have that as a safe harbor under the law of inventorship.

[00:06:15] Speaker 01:
We think it would add clarity to the law.

[00:06:19] Speaker 01:
He could have hired Dr. Lam as an employee.

[00:06:21] Speaker 01:
He could have had a formal employment agreement, and there would be a different result here.

[00:06:27] Speaker 01:
And that doesn't seem fair.

[00:06:28] Speaker 01:
It doesn't seem that we could have a contract, and then somehow that's going to affect the quality of an inventor.

[00:06:34] Speaker 01:
Either you're an inventor or you're not an inventor.

[00:06:36] Speaker 01:
So the question before the court is, what is an inventor?

[00:06:41] Speaker 01:
That's what we're trying to settle.

[00:06:45] Speaker 01:
He believes that he's the sole original and first inventor.

[00:06:48] Speaker 01:
It is true.

[00:06:48] Speaker 01:
He first filed a patent application that named him as joint inventor.

[00:06:52] Speaker 01:
Because the reason he did so, and it's in his declaration, is because she agreed to pay for the patenting cost, and he thought that she was going to help him with the marketing of the invention.

[00:07:01] Speaker 01:
That's what he thought.

[00:07:03] Speaker 01:
He was misinformed about the law.

[00:07:05] Speaker 01:
He came to my offices.

[00:07:07] Speaker 01:
I informed him about the law.

[00:07:08] Speaker 01:
I told him about Morse v. Porter.

[00:07:11] Speaker 01:
It's an important case.

[00:07:12] Speaker 01:
It's cited throughout the NPEP.

[00:07:14] Speaker 01:
Lots of patent attorneys in the patent bar rely on this case.

[00:07:18] Speaker 01:
And it says that if you maintain intellectual domination and control over the work of making the invention, that you're this whole inventor.

[00:07:28] Speaker 01:
That's what that case stands for.

[00:07:30] Speaker 01:
Now, it's true.

[00:07:31] Speaker 01:
It's a 1965 case.

[00:07:33] Speaker 01:
And they're finners, per se.

[00:07:34] Speaker 01:
But it hasn't been expressly overruled.

[00:07:37] Speaker 01:
If that's what we're going to do, we can do that.

[00:07:39] Speaker 01:
And it will add clarity to the law.

[00:07:41] Speaker 01:
Because the law is not settled.

[00:07:43] Speaker 01:
It's not settled in this area.

[00:07:47] Speaker 01:
If we don't have clarity in the law, as a patent attorney, whenever I draft a patent application and I specify a type of polymer or things like that, am I an inventor?

[00:07:55] Speaker 01:
I contribute it.

[00:07:57] Speaker 01:
Is this my idea?

[00:07:58] Speaker 01:
I don't think so.

[00:08:00] Speaker 01:
I view my client as maintaining intellectual domination and control over the process of making inventions.

[00:08:06] Speaker 01:
This is an important case.

[00:08:09] Speaker 01:
We also think a public policy,

[00:08:13] Speaker 01:
You know, to hold otherwise, to deprive Mr. Vorhoff of his invention has a chilling effect on the free flow of ideas.

[00:08:24] Speaker 01:
We want inventors, prospective inventors, to solicit the ideas from others.

[00:08:30] Speaker 01:
You want the free flow of ideas.

[00:08:32] Speaker 01:
You don't want fear of losing his patent rights because I, you know, trying to solve a problem, hey, do you have a good suggestion?

[00:08:39] Speaker 01:
You're my friend, you're my consultant, somebody I think I can trust.

[00:08:44] Speaker 01:
You know, can you help me solve the problem?

[00:08:46] Speaker 01:
Well, if we don't declare him to be the inventor, I have to tell all my clients and the patent bar, well, hey, do things in secrecy.

[00:08:56] Speaker 01:
Don't try to solve problems.

[00:08:58] Speaker 01:
This is an important case.

[00:09:00] Speaker 01:
We want the free flow of ideas.

[00:09:02] Speaker 01:
We want people to solve problems.

[00:09:04] Speaker 01:
We want to advance the technological arts.

[00:09:07] Speaker 01:
We don't want to just stymie inventors because

[00:09:09] Speaker 01:
Somebody, hey, try this.

[00:09:11] Speaker 01:
She had no idea that it was going to work.

[00:09:14] Speaker 01:
She had nothing to do with reductive practice.

[00:09:16] Speaker 02:
So explain, if you would, so these two patent applications are filed on the same day.

[00:09:22] Speaker 02:
Exactly.

[00:09:23] Speaker 02:
Was the purpose to conduct some sort of derivation proceeding?

[00:09:30] Speaker 01:
No.

[00:09:30] Speaker 02:
Or to get the office to decide between them?

[00:09:34] Speaker 01:
It's just the way that it happened.

[00:09:36] Speaker 01:
There was background.

[00:09:38] Speaker 01:
to put things in contacts.

[00:09:40] Speaker 01:
You know, again, to get back to my story, or I should say Mr. Ferho's story, he went to the veterinarian clinic.

[00:09:47] Speaker 01:
They had a prior arc device that was known as the Beco Brace.

[00:09:52] Speaker 01:
OK?

[00:09:53] Speaker 01:
And they tried that.

[00:09:54] Speaker 01:
They put his dog, who had this insidious canine myelopathy disease, in this underwater treadmill.

[00:10:00] Speaker 01:
And they put the prior arc device on him.

[00:10:02] Speaker 01:
But it didn't solve the problem.

[00:10:03] Speaker 01:
He still had this nut clean.

[00:10:05] Speaker 02:
So you're saying it was pure chance

[00:10:08] Speaker 02:
that these two just about identical applications were filed the same day with different inventors?

[00:10:15] Speaker 01:
I won't say it was pure chance.

[00:10:17] Speaker 01:
What happened in his way of background is that after meeting with Dr. Lam in her clinic, and this is all in the declaration that he swore out, he developed a new and improved dog mobility device.

[00:10:32] Speaker 01:
And he decided that he wanted to patent it.

[00:10:35] Speaker 01:
So he came and saw a patent attorney.

[00:10:37] Speaker 01:
But at that time, he's not informed of the law.

[00:10:40] Speaker 01:
Dr. Lam told him that, look, I'm going to help with the marketing.

[00:10:43] Speaker 01:
I'll pay for the patent cost.

[00:10:45] Speaker 01:
To him, he doesn't know the law.

[00:10:47] Speaker 01:
He thought that seemed reasonable.

[00:10:48] Speaker 01:
I'll include her as an inventor.

[00:10:50] Speaker 01:
They filed a patent application together.

[00:10:53] Speaker 01:
They contemplated a business relationship.

[00:10:57] Speaker 01:
But it quickly soured him.

[00:10:58] Speaker 01:
She loyered up the 21 document formation agreements, all these things that spooked him.

[00:11:04] Speaker 01:
He came and saw me and said, what am I going to do?

[00:11:07] Speaker 01:
Well, explain to me what happened.

[00:11:10] Speaker 01:
It's a story.

[00:11:11] Speaker 01:
I went and saw the veterinarian.

[00:11:13] Speaker 01:
Had this big problem, trying to kind of solve it.

[00:11:15] Speaker 01:
So he took the Prior Art device and he decided he could improve upon it.

[00:11:20] Speaker 01:
Okay?

[00:11:20] Speaker 01:
And that's how he came up with this invention.

[00:11:22] Speaker 01:
He made an improvement.

[00:11:23] Speaker 01:
And the improvement, he identified the problem.

[00:11:26] Speaker 01:
So the problem with the Prior Art device is that it only, it only assisted with the forward movement of the dog's hind leg.

[00:11:32] Speaker 01:
It didn't assist with the upward movement of the dog's toes.

[00:11:36] Speaker 01:
And he realized that during one of these treatment sessions.

[00:11:41] Speaker 01:
And he said to the veterinarian, there has to be a way to connect it to the toes.

[00:11:46] Speaker 01:
If we can connect it to the toes, we can solve the problem.

[00:11:50] Speaker 01:
And she took a dog collar and put it in a loop and said, maybe try this.

[00:11:55] Speaker 01:
And so he did that.

[00:11:57] Speaker 01:
He went and tried it.

[00:11:59] Speaker 01:
And through trial and error, building different prototypes,

[00:12:03] Speaker 01:
He eventually achieved actual reduction to practice.

[00:12:07] Speaker 01:
That's what happened.

[00:12:09] Speaker 01:
And so they filed in October, a couple months prior, they filed a joint application together and they both swore that they were joint vendors.

[00:12:19] Speaker 01:
They're, they're lay people.

[00:12:20] Speaker 01:
They don't know the law and mentorship.

[00:12:22] Speaker 01:
It seemed reasonable to them at the time based on their limited understanding of the law.

[00:12:28] Speaker 01:
Again, Mr. Verhoef came into my office.

[00:12:31] Speaker 01:
There's a problem here.

[00:12:32] Speaker 01:
He told me the story, and I told him that there's this case, Morsky-Porter, cited in the MPEP.

[00:12:41] Speaker 01:
Lots of practitioners rely on this that says that if you maintain intellectual domination control over the work of making the invention, you're the sole inventor, notwithstanding the fact that somebody gave you a hired consultant, a friend, an employee gave you a useful suggestion.

[00:13:01] Speaker 01:
So it's an old case.

[00:13:03] Speaker 01:
But if that's not the law, I'd like to know.

[00:13:06] Speaker 01:
That's why we're here.

[00:13:07] Speaker 01:
We need to either put that case to rest and say that it's not good law, or we need to make a safe harbor and say that, hey, if you're an inventor and somebody freely gives you an idea, you could incorporate it into your invention.

[00:13:22] Speaker 01:
And that's how most inventions are made.

[00:13:25] Speaker 01:
People don't think of every single limitation of their claims.

[00:13:29] Speaker 01:
They always are taking other ideas from other people.

[00:13:32] Speaker 01:
That's the essence of invention is creating something new.

[00:13:35] Speaker 01:
And you're always borrowing, you know, from the things that are out there.

[00:13:40] Speaker 01:
And that's exactly what the situation we have here.

[00:13:43] Speaker 01:
So it's true.

[00:13:45] Speaker 01:
The pot loop is a critical feature.

[00:13:48] Speaker 01:
But it's not the invention.

[00:13:50] Speaker 01:
And there's nothing in the record that shows that she had an invention, Dr. Lamb.

[00:13:55] Speaker 01:
All she did, all the evidence shows is that she gave a suggestion.

[00:14:00] Speaker 01:
The invention, the inventor process, as in the record, is entirely attributable to Mr. Verhoeff.

[00:14:09] Speaker 01:
I see I'm running a little bit low on time.

[00:14:11] Speaker 02:
Yes, you are.

[00:14:12] Speaker 02:
Let's hear from the other side, and we'll save the rest of your time.

[00:14:15] Speaker 01:
OK, thank you.

[00:14:23] Speaker 02:
Ms.

[00:14:24] Speaker 02:
Schoenfeld.

[00:14:25] Speaker 00:
May it please the court, this is a clear-cut case of joint inventorship.

[00:14:29] Speaker 00:
The PTO is not trying to take away Mr. Bierhoff's patent or discount his contribution.

[00:14:35] Speaker 00:
The PTO is merely trying to ascertain... That's not the question.

[00:14:38] Speaker 02:
I don't understand what the office is doing in making an inventorship decision.

[00:14:46] Speaker 02:
We've abolished interferences so that priority is no longer available to determine.

[00:14:54] Speaker 02:
This is not a derivation proceeding.

[00:14:57] Speaker 02:
What is it?

[00:14:58] Speaker 00:
It is a 102F rejection.

[00:15:00] Speaker 02:
The statute requires... 102F, but it's not prior art because it's got the same date.

[00:15:06] Speaker 00:
Well, based on the earlier application that was filed jointly and the two applications which were filed on the same date, the PTO made the determination that the correct inventorship was not stated on patent application.

[00:15:23] Speaker 02:
Why is the office deciding this inventorship issue?

[00:15:29] Speaker 02:
On what basis?

[00:15:32] Speaker 02:
Again, it's not an interference because there aren't interferences.

[00:15:35] Speaker 02:
It's not a derivation proceeding, although perhaps it should be, to resolve a dispute.

[00:15:45] Speaker 02:
We're asked to decide who the inventor is.

[00:15:51] Speaker 02:
Why is the office issuing a rejection as

[00:15:58] Speaker 02:
you're only a joint vendor.

[00:16:02] Speaker 02:
And it wasn't prior art.

[00:16:03] Speaker 02:
So it can't be based on prior art.

[00:16:05] Speaker 02:
It's based on some new theory to me.

[00:16:09] Speaker 02:
What is the theory behind this action?

[00:16:17] Speaker 00:
As I said, it's a 102F rejection.

[00:16:20] Speaker 00:
So 102F says that a person can only file a patent application if the correct inventorship is

[00:16:28] Speaker 00:
named if they are the true inventor of the patent.

[00:16:32] Speaker 02:
So you're telling me that the office inquires into the correct inventorship of what is obliged to inquire as to every patent application is filed, or what?

[00:16:47] Speaker 00:
So when an application is filed, the inventors file a declaration which states that they are the true inventors.

[00:16:55] Speaker 00:
And here, in this case,

[00:16:57] Speaker 02:
Everyone files such a declaration.

[00:17:00] Speaker 02:
You're saying there's an obligation on the office to investigate every such declaration or any such declaration without conducting either what was an interference or a derivation proceeding, which was a carefully worked out theory as to the sort of inventorship question which is consigned to the office.

[00:17:26] Speaker 02:
Only derivation.

[00:17:28] Speaker 02:
Nothing else.

[00:17:29] Speaker 00:
Correct.

[00:17:30] Speaker 00:
So the office is not obligated to conduct an analysis, but here the office had compelling evidence, which Mr. Verhoff himself brought to the attention of the office.

[00:17:42] Speaker 00:
He alerted to the office during prosecution of an identical application.

[00:17:46] Speaker 00:
When the office saw that someone had filed an identical application, when the office saw that a joint application had been filed together with Dr. Lam and Mr. Varhoff.

[00:17:57] Speaker 02:
Why does that entitle the examiner to say, no, I prefer this inventor over this inventor?

[00:18:07] Speaker 00:
The office is not preferring one inventor over the other.

[00:18:10] Speaker 00:
The office is saying that the inventorship was not correct when filed in violation of 102F, which requires that only the true inventor of the application is entitled to a patent.

[00:18:25] Speaker 02:
But the office did not suggest correcting inventorship or any change.

[00:18:31] Speaker 02:
They said school's out.

[00:18:33] Speaker 02:
You can't have the patent.

[00:18:36] Speaker 00:
Great.

[00:18:36] Speaker 00:
So 102F provides that a person shall be entitled to the patent unless he himself, he himself did not himself invent the subject matter sought to be patent.

[00:18:45] Speaker 00:
So here, Mr. Barhoff did not himself invent the subject matter.

[00:18:49] Speaker 02:
They didn't know who invented what.

[00:18:50] Speaker 02:
They had no evidence.

[00:18:52] Speaker 02:
They conducted no proceeding, neither a derivation proceeding nor an old fashioned interference.

[00:19:00] Speaker 02:
They just said that there's an issue here.

[00:19:04] Speaker 02:
And since there's an issue,

[00:19:05] Speaker 02:
You can't have the patent.

[00:19:07] Speaker 03:
Right.

[00:19:08] Speaker 03:
Is it your argument that Mr. Verhoff, out of his own mouth, said that the inventive entity consisting of he alone did not invent the subject matter?

[00:19:21] Speaker 00:
Right.

[00:19:22] Speaker 00:
As I said, Mr. Verhoff himself presented the Patent Office with the evidence within his declaration, which he admitted that someone else conceived of the Paul Louvre in his own

[00:19:37] Speaker 00:
flagging of the PTO to the other application, he himself admitted that he wasn't the correct inventor.

[00:19:44] Speaker 00:
And I mean, the PTO, there is an inventorship correction which could take place if that was what he wanted to do.

[00:19:51] Speaker 00:
The PTO isn't obligated to correct the inventorship for the application.

[00:19:56] Speaker 03:
You're saying that he had remedies.

[00:19:58] Speaker 00:
Correct.

[00:19:59] Speaker 03:
He could have filed to add her as an inventor.

[00:20:05] Speaker 00:
Right, or he could have done, as he previously had done, he could have abandoned his application and filed another application jointly, which they had already done and contemplated.

[00:20:14] Speaker 00:
So.

[00:20:15] Speaker 03:
Now, in terms of the timing of this application, were interferences still possible?

[00:20:30] Speaker 00:
This application filed in.

[00:20:32] Speaker 00:
In 2011, so it is pre-AIA, so there were still derivation proceedings and there could have been, you know, the office could have gone that route, but here it wasn't a question of

[00:20:48] Speaker 00:
deciding the priority, the question was that based on the facts provided by Mr. Vorhoff, he was not the sole inventor.

[00:20:55] Speaker 03:
In other words, it wasn't a question of who did it first.

[00:20:58] Speaker 00:
Right.

[00:20:58] Speaker 03:
It's a question of whether he was the sole inventor or whether it was a joint inventive entity and he could have added her.

[00:21:11] Speaker 00:
Correct.

[00:21:11] Speaker 00:
And he did, in fact, when he originally filed his application, he did add her.

[00:21:15] Speaker 00:
They filed declarations stating that they were both inventors.

[00:21:19] Speaker 00:
They filed an application together saying that they were joint inventors, and Mr. Lou later abandoned that application.

[00:21:30] Speaker 00:
But the question here is, is he a sole inventor, not a question of derivation or priority?

[00:21:38] Speaker 02:
Well, there's a more fundamental question

[00:21:40] Speaker 02:
as to conducting an appropriate proceeding at which information is deduced.

[00:21:46] Speaker 02:
If this was before the AIA, then an interference would have been available.

[00:21:52] Speaker 02:
And with the knowledge and information that there was a similar or identical pending application, and if it were not before the AIA, then we have the successor provision

[00:22:09] Speaker 02:
which is also designed to provide a formal structure of not hypothesis, but of bringing out the facts of inventorship.

[00:22:21] Speaker 02:
Instead, it seems to me that it's very curious just to reject an application for having the wrong inventor without doing anything to ascertain how, with the law, we know that people can

[00:22:37] Speaker 02:
make suggestions.

[00:22:39] Speaker 02:
There's also a question of what's in the claims and what isn't.

[00:22:43] Speaker 02:
The original structure I gather was a commercial product.

[00:22:47] Speaker 02:
Maybe those people are inventors.

[00:22:50] Speaker 02:
Maybe the dog had a role in this.

[00:22:57] Speaker 02:
It's really curious to me to see this kind of total rejection

[00:23:06] Speaker 02:
of the application because there is a question, say a legitimate question about inventorship instead of all of the other ways that over the decades have tried to figure out inventorship.

[00:23:23] Speaker 00:
Right, well the case, the Panou case, which

[00:23:26] Speaker 00:
the PTO relies on to talk about how a contribution just needs to be significant.

[00:23:32] Speaker 00:
That case was brought under invalidity under 102F, but that was also 102F issue.

[00:23:40] Speaker 02:
102F was the basis for the interference practice until interferences were canceled.

[00:23:49] Speaker 02:
But if this application is subject to the grandfathering, then 102F

[00:23:55] Speaker 02:
is the basis for declaring an interference, not saying, I reject your application.

[00:24:02] Speaker 00:
Right.

[00:24:02] Speaker 00:
But the Panou case also talks about invalidity under 1 and 2f because of determining if someone is a sole or joint inventor.

[00:24:12] Speaker 00:
So this is a slightly different procedure where it is talking about sole versus.

[00:24:17] Speaker 02:
With no proceeding, no formality, no evidence from the other side.

[00:24:24] Speaker 00:
Um, Mr. Verhoff did provide declaration evidence and he had the opportunity to provide as much evidence as he can.

[00:24:31] Speaker 00:
I mean, here the facts are not in dispute.

[00:24:33] Speaker 02:
But an interference was a contested proceeding, providing for evidence.

[00:24:41] Speaker 02:
The successor derivation proceeding, which perhaps doesn't apply, also provides for evidence, not saying there's a problem here and this is how I decided.

[00:24:57] Speaker 00:
The evidence and the facts are not in dispute.

[00:25:00] Speaker 00:
Everyone agrees on what happened.

[00:25:03] Speaker 00:
Everyone agrees that Dr. Lam conceived of the figure eight loop and that conception is part of inventorship.

[00:25:12] Speaker 02:
Everyone agrees?

[00:25:13] Speaker 02:
Did she agree?

[00:25:14] Speaker 02:
Did she testify?

[00:25:16] Speaker 00:
Well, she, by filing a joint application and signing a declaration and then later filing her own application, agrees that she

[00:25:26] Speaker 00:
was a joint inventor of the application.

[00:25:29] Speaker 03:
What's the status of her application?

[00:25:30] Speaker 00:
Her application was abandoned.

[00:25:33] Speaker 00:
She did not respond to a rejection.

[00:25:36] Speaker 00:
It actually was rejected under a different art than Mr. Bearhouse.

[00:25:40] Speaker 00:
But her application is currently abandoned.

[00:25:44] Speaker 00:
And the last point I wanted to make was about the Morse case, which is an interference

[00:25:51] Speaker 00:
And in that case, it wasn't a determination of sole inventorship or joint inventorship.

[00:25:55] Speaker 00:
The board in that case actually said that the inventors might be joint inventors.

[00:26:02] Speaker 00:
But that wasn't what they were determining.

[00:26:04] Speaker 00:
They were determining the interference proceeding.

[00:26:09] Speaker 00:
So the Morris case also doesn't stand for the proposition that if you maintain intellectual domination, you are guaranteed to be a sole inventor.

[00:26:18] Speaker 00:
It only says that maintaining intellectual domination may lead to

[00:26:24] Speaker 00:
you know, depending on the facts.

[00:26:25] Speaker 00:
And here the board found that Mr. Verhoff didn't maintain intellectual domination.

[00:26:29] Speaker 02:
So it's not that... Was Morrison interference?

[00:26:32] Speaker 00:
It's an interference case by the board.

[00:26:34] Speaker 03:
By the board?

[00:26:35] Speaker 00:
Yes.

[00:26:35] Speaker 03:
Not binding on us?

[00:26:37] Speaker 00:
Not binding on you, that's correct.

[00:26:39] Speaker 00:
But since Mr. Verhoff, or Mr. Leopold addressed it, I just wanted to point out that the board did address it and found that

[00:26:48] Speaker 00:
Mr. Baerhoff did not maintain intellectual domination and the facts of that case are distinguishable over it, and it doesn't say that maintaining intellectual domination guarantees that you can be a sole inventor.

[00:27:02] Speaker 00:
Unless there are further questions, I'll yield the remaining of my time.

[00:27:19] Speaker 01:
Thank you, Your Honors.

[00:27:22] Speaker 01:
First thing I'd like to clarify is to go back in history and talk about the joint application that was filed in October of 2011.

[00:27:29] Speaker 01:
And at that time, both Dr. Lamb and Mr. Vorhoff swore out a declaration saying that they were joint inventors.

[00:27:37] Speaker 01:
And that was their understanding.

[00:27:41] Speaker 01:
A couple months later, Mr. Vorhoff, who had control of that application, abandoned that application

[00:27:47] Speaker 01:
and filed his own application, this is the December 16th date, and he swore out an application, or a declaration, you know, attesting that he was, believes that he's the sole inventor.

[00:27:57] Speaker 01:
He sits here today, he still believes he's the sole inventor.

[00:28:00] Speaker 01:
And on that exact same day, Dr. Lamb similarly filed the exact same application that she got from Mr. Verhoff, happened to be on the same day, and she swore out a declaration that she was the sole inventor.

[00:28:15] Speaker 01:
They both had earlier said that they were joint inventors, but then later said that they were sole inventors.

[00:28:21] Speaker 01:
Now, I can't speak to Dr. Lamb on why she did that.

[00:28:24] Speaker 01:
I can only speculate.

[00:28:26] Speaker 01:
But the reason that Mr. Vorhoff followed the invention, the application in his own name, is because he became better informed of the law.

[00:28:34] Speaker 01:
And he does believe that this, you know, more speed porter, maybe not controlling on this court, but it was a wise decision.

[00:28:41] Speaker 01:
And it is very analogous to this case.

[00:28:44] Speaker 01:
In fact, we think that the fact pattern is most similar to this case.

[00:28:47] Speaker 01:
And in that case, you had a prospective inventor adopt the idea of someone else.

[00:28:54] Speaker 01:
And the court held that you can adopt an idea if it's freely suggested to you by a friend, a hired consultant.

[00:29:03] Speaker 01:
We think that she was a hired consultant or somebody that you know.

[00:29:09] Speaker 01:
And so we think that this case is most like that.

[00:29:12] Speaker 01:
We also think that it would be bad public policy to deprive him of his invention.

[00:29:18] Speaker 01:
I mean, it's true.

[00:29:19] Speaker 01:
He could go back and correct it, but he won't, because that's not what he believes.

[00:29:24] Speaker 01:
But presumably, he could add her as an inventor, and there would be a draconian result.

[00:29:30] Speaker 01:
Because we know that as joint inventors, they can both exploit the invention.

[00:29:34] Speaker 01:
And there's no remedy for him.

[00:29:37] Speaker 01:
Because under Pat law, unlike copyright law, both inventors

[00:29:41] Speaker 01:
are free to exploit and commercialize the invention.

[00:29:43] Speaker 01:
So it's important to him that he be the sole inventor.

[00:29:47] Speaker 01:
So that's kind of why we're here.

[00:29:49] Speaker 01:
And we think that this is an important case.

[00:29:51] Speaker 01:
And I encourage you to look at our research closely.

[00:29:54] Speaker 01:
And we're right.

[00:29:56] Speaker 01:
The facts aren't really in dispute.

[00:29:58] Speaker 01:
And the law is pretty well settled.

[00:30:01] Speaker 01:
But it's the question here is, should he be deprived of his invention because he made a mistake and filed his joint inventors when he later became informed of the law

[00:30:12] Speaker 01:
and believes himself to be a soul inventor, set forth the reasons in a declaration, and wants to get his patent rights as he believes he's entitled to.

[00:30:21] Speaker 02:
OK.

[00:30:24] Speaker 02:
Yes, we have the argument.

[00:30:25] Speaker 01:
OK.

[00:30:26] Speaker 01:
If there's any further questions.

[00:30:29] Speaker 02:
I think we're OK.

[00:30:31] Speaker 02:
Thank you very much.

[00:30:31] Speaker 02:
Thank you both.

[00:30:32] Speaker 02:
The case is taken under submission.

[00:30:34] Speaker 02:
That concludes our arguments for this morning.

[00:30:38] Speaker ?:
All right.