[00:00:00] Speaker 02: Today is two zero one seven dash one nine three four, Polyzen versus Radioguy. [00:00:06] Speaker 02: Joseph Zito, please proceed. [00:00:16] Speaker 01: Good morning, Your Honors. [00:00:17] Speaker 01: I'm Joseph Zito and with me is Luis Oliveira, counsel for the appellant Polyzen. [00:00:26] Speaker 01: I guess I'd like to start [00:00:28] Speaker 01: by again setting the context this appeal is over the ownership issue of two patents from two different cases that were consolidated into one case and the confusion comes from the courts conflating a product which is shown on appendix 126 which is a balloon and a design for a balloon with [00:00:57] Speaker 01: a patent which has much broader technology, much broader claims, and many other embodiments that protects a much wider range of intellectual property. [00:01:11] Speaker 04: The court-based... Is there any difference between the two patents on this issue? [00:01:17] Speaker 01: There is difference in the claims of the two patents, the disclosure of the patents. [00:01:20] Speaker 04: But the issue isn't any different across the two patents? [00:01:23] Speaker 01: The issue is not different. [00:01:24] Speaker 04: Do these patents claim [00:01:27] Speaker 04: Do they have the design for the radiodyne product in them? [00:01:31] Speaker 01: Yes, one of the embodiments. [00:01:33] Speaker 04: Isn't that the problem? [00:01:35] Speaker 04: I mean, the problem is if a patent claims something owned by two owners, even if one owner only owns a very small part of it, they both jointly own the patent. [00:01:49] Speaker 04: Isn't that the law? [00:01:51] Speaker 01: If there was ownership of the underlying intellectual property, that would be correct. [00:01:57] Speaker 04: But the specific agreement says the Radiodyne product is the specific design. [00:02:05] Speaker 04: And your friend on the other side, his client still owns that. [00:02:10] Speaker 04: He owns the design of that product, which is part of your patent. [00:02:16] Speaker 01: But you can own it. [00:02:18] Speaker 01: That's where we differ. [00:02:19] Speaker 04: It doesn't mean that he owns your IP that may have to be used in making that product. [00:02:27] Speaker 04: but he owns that specific design. [00:02:29] Speaker 04: And once you claim that specific design as part of your patent, haven't you written a patent that has two owners? [00:02:38] Speaker 01: No, I don't believe that's correct because I don't believe that design is the same thing as the intellectual property. [00:02:44] Speaker 01: You can have a manufacturer, let's take a manufacturer of a laptop. [00:02:50] Speaker 01: You can ask that manufacturer to design you a very special version, customized version. [00:02:54] Speaker 01: You may own the design of that customized version, [00:02:57] Speaker 01: And that manufacturer can't sell it to anybody else. [00:03:00] Speaker 01: But you can't then go claim all of the underlying technology. [00:03:04] Speaker 01: You only get, again, this was a company that wanted to sell a product that couldn't make a product. [00:03:15] Speaker 01: And they went to Polyzone. [00:03:16] Speaker 01: I went to Polyzone and said, hey, can you make us a balloon? [00:03:18] Speaker 01: Sure. [00:03:19] Speaker 04: I get that. [00:03:19] Speaker 04: But the problem is you've written their product into your patent. [00:03:24] Speaker 04: you claim as part of the patent their design, which they own. [00:03:28] Speaker 04: And when there are two different owners in one patent, you could have written this patent not to claim their design. [00:03:35] Speaker 04: And then you wouldn't have had a problem. [00:03:36] Speaker 01: But the agreement separates the design from the ownership of the underlying intellectual property. [00:03:42] Speaker 04: But that doesn't matter. [00:03:43] Speaker 04: They're not claiming they own your underlying intellectual property. [00:03:47] Speaker 04: They're claiming that by owning the Radiodyne product, they own that design, which is part of the patent, and therefore they're a co-owner of the patent. [00:03:56] Speaker 04: They're not saying they own the rest of the IP in that patent. [00:03:59] Speaker 04: They're saying they own that. [00:04:01] Speaker 04: And as part of that, they're a co-owner, which means you can't sue them. [00:04:06] Speaker 04: That's our case law, isn't it? [00:04:09] Speaker 04: When a patent claims IP owned by two different parties, both parties are owners. [00:04:15] Speaker 01: If the IP is owned by both parties, but the agreement separates the IP from the design. [00:04:20] Speaker 01: You're saying the design is not IP, but of course it's IP. [00:04:23] Speaker 04: It's a specific embodiment of IP. [00:04:30] Speaker 04: I get that you think, and you probably are right, that in order to make that specific design, they have to use your IP. [00:04:37] Speaker 04: But that doesn't mean the actual design itself is not intellectual property also. [00:04:42] Speaker 01: The contract specifically states that they needed licenses to the intellectual property. [00:04:48] Speaker 04: I don't see how any of this matters. [00:04:51] Speaker 04: It's not about your IP. [00:04:53] Speaker 04: They're not claiming ownership of your IP. [00:04:55] Speaker 04: They're claiming ownership of the specific design. [00:04:58] Speaker 04: It may be, and it seemingly is, that that design can't be produced without your IP. [00:05:03] Speaker 04: But you don't own that design, right? [00:05:06] Speaker 04: You're not claiming any ownership rights in that design, are you? [00:05:11] Speaker 04: I mean, you do now because you're also a joint owner of the patent. [00:05:14] Speaker 01: Right. [00:05:14] Speaker 01: And we're claiming that. [00:05:16] Speaker 04: in order for them to have the rights that they got on the contract to sell that design doesn't make it but it i don't think that's a matter to me one job whether they can sell or they have to license or or the light it's as soon as you put their design which they own under the clear terms of this agreement in your patent you make them a joint-owner that's the case all i mean i don't understand how you get around that case all this i mean you wrote about that because of parties to [00:05:46] Speaker 01: a patent to a contract can assign ownership of a design without assigning ownership of the intellectual property to that design. [00:05:55] Speaker 04: You can assign ownership of the design if you owned it in the beginning, but you never own this design. [00:06:02] Speaker 04: It's their design. [00:06:03] Speaker 04: You agreed it was their design all along. [00:06:06] Speaker 04: This is not a question of you trying to partially assign part of the patent or them trying to claim a partial assignment. [00:06:12] Speaker 04: They've always owned this design. [00:06:14] Speaker 01: The design did not exist until Polyzen created it. [00:06:18] Speaker 04: Radeon did not come with a design for a... Yes, but you agreed they owned it, that it's their design. [00:06:24] Speaker 03: This is not a design that... You came up with the idea of a bulging distal end for the balloon. [00:06:29] Speaker 01: A different company named Medrad already had a balloon that bulged, same shape. [00:06:34] Speaker 01: But you're not claiming Polyzen, right? [00:06:37] Speaker 03: Polyzen came up with the intellectual property... With the processing technology involved in making the end product. [00:06:44] Speaker 03: Right. [00:06:44] Speaker 03: But I think you've also acknowledged through your briefing all the way through that it was Radiodyne that came up with the actual design of the product. [00:06:54] Speaker 03: And then it was your side's job to figure out an interesting way to manufacture, through processing technology, a working version of that end product. [00:07:05] Speaker 03: And so what we have here is a contract where each side is agreeing that the other side [00:07:14] Speaker 03: gets to retain all rights to their technology that's contributed to manufacturing this product. [00:07:23] Speaker 03: Radiodyne gets the design. [00:07:25] Speaker 03: You get the whatever processing methods that you come up with in making that end product. [00:07:33] Speaker 03: Now you win ahead without telling the other side, filing a patent application, that goes to what? [00:07:40] Speaker 03: A bunch of things, but it definitely includes [00:07:43] Speaker 03: a series of claims for the actual end product, which you agreed in the contract would be those rights to that end product are reserved with radiodyne. [00:07:54] Speaker 03: So in that sense, the contract doesn't help you. [00:07:57] Speaker 03: The contract keeps everybody's intellectual property rights separate from the other party. [00:08:04] Speaker 03: And by you writing claims that are directed to arguably [00:08:08] Speaker 03: your technology as well as the other side's technology, you've created a situation where you're now both co-owners under the contract as well as under patent law. [00:08:20] Speaker 03: I think that's the point here and that's why it sounds like Judge Hughes sees no way out for you. [00:08:30] Speaker 01: If you look at it from your direction, which is right, the design that Radiodyne brought was the outside shape of the product. [00:08:37] Speaker 01: The patent doesn't cover the outside shape of the product. [00:08:41] Speaker 01: The patent covers what you've talked about as the process for achieving that shape by taking three layers of material and welding them in a certain manner. [00:08:50] Speaker 01: The design of the product that Radiodyne brought, that the contract contemplates, is a product having this final exterior shape. [00:08:59] Speaker 01: The intellectual property, the patent, covers taking three layers of material to create that shape. [00:09:05] Speaker 01: And so what the contract agreed was [00:09:08] Speaker 01: that radion would own that final shape, and PolyZen couldn't make that shape for anybody else, and Radion had to buy the manufactured product from PolyZen. [00:09:20] Speaker 01: And then there was the out. [00:09:21] Speaker 01: Does the patent have that final shape in it? [00:09:24] Speaker 01: No, the patent shows that final shape is one of the embodiments. [00:09:27] Speaker 01: That's correct. [00:09:27] Speaker 04: So you're claiming that final shape as an embodiment? [00:09:30] Speaker 04: We're claiming the... The patent claims the final shape, which is what they own. [00:09:36] Speaker 01: The patent claims [00:09:37] Speaker 01: attaching three layers together to make a number of shapes. [00:09:41] Speaker 04: Well, I've never seen a patent that has an embodiment that you're not actually claiming when you call it an embodiment of the claims. [00:09:47] Speaker 01: Well, there's the figure six embodiment that's in there that's not actually covered in the claims. [00:09:58] Speaker 04: But do they relate to the claims or are they examples of a prior art? [00:10:02] Speaker 04: I mean, if you put this as an embodiment of one of the claims, you're claiming that as an embodiment. [00:10:07] Speaker 01: Yes, you could make that shape using the claims. [00:10:11] Speaker 01: You could make that shape. [00:10:12] Speaker 01: If somebody else made the shape, you would sue them for infringement. [00:10:17] Speaker 01: Absolutely not if they did not use three layers to make it. [00:10:20] Speaker 01: Prior Art has the same shape, Med-Rad Balloon. [00:10:23] Speaker 01: It does it with a different, completely different methods. [00:10:25] Speaker 01: One layer. [00:10:26] Speaker 04: Well, that's because they don't have... Three layers. [00:10:29] Speaker 04: That's because they're not infringing the entire patent. [00:10:31] Speaker 04: But it doesn't mean that you haven't claimed this as an embodiment of the patent, does it? [00:10:37] Speaker 01: It's a claim that says take a first layer, second layer, and a third layer. [00:10:44] Speaker 01: So the first claim says... And result in this shape. [00:10:47] Speaker 01: Attach them together to result in a desired shape, not specifically this... And an example is... What are you talking about, a desired shape? [00:10:54] Speaker 03: The claim says medical balloon device, right? [00:10:58] Speaker 03: Correct. [00:10:58] Speaker 03: This is for the product, not the process, but for the product. [00:11:04] Speaker 03: For example, claim two. [00:11:05] Speaker 03: So that the distal portion of the third layer bulges upwardly upon impulsion. [00:11:12] Speaker 03: That's the bulging distal portion design of radiodyne. [00:11:23] Speaker 01: It does cover the radiodyne, but it's not only covering the radiodyne. [00:11:30] Speaker 01: You could have many other shapes of balloons that have a distal bulge. [00:11:35] Speaker 01: Claim one. [00:11:38] Speaker 01: And claim one, it's of the 845, which is the medical device. [00:11:49] Speaker 01: There is no distal bulge. [00:11:52] Speaker 01: And claims, I think, 678, which I highlighted in the brief, it's to a completely different device. [00:12:02] Speaker 03: Because it's not... Is that the relevant inquiry or is the relevant inquiry whether there are any claims that are covered by and at least and certainly directed to the bulging distal portion and clearly there are claims two, three, four, etc. [00:12:17] Speaker 03: that have the bulging distal portion. [00:12:19] Speaker 01: But the claims don't claim a final shape, which is, again, Radiodyne proved one very specific final shape. [00:12:28] Speaker 01: You can make that shape using this pattern, but you can make many other shapes. [00:12:32] Speaker 01: And none of the claims are specifically constrained to this particular shape. [00:12:38] Speaker 01: That if you took Bradydyne's balloon and put another bulge on it or put a fourth layer on it, it would still infringe, but it would not be the design. [00:12:49] Speaker 01: So the patent doesn't, there are claims which, which the design would infringe, but the patent isn't the design. [00:12:59] Speaker 01: The patent doesn't say this is a final shape. [00:13:01] Speaker 01: It's not a patent. [00:13:02] Speaker 01: Not a design patent. [00:13:03] Speaker 01: Not a patent on a final shape. [00:13:05] Speaker 01: It's a patent on a way of welding three layers together to get, or multiple layers together, to get any desired shape. [00:13:14] Speaker 01: And in some desired shapes, you have a distal bulge. [00:13:16] Speaker 01: In some desired shapes, you have an arcuate curve, which is completely different for heart massage. [00:13:20] Speaker 01: In other shapes, you have a pillow shape for supporting organs during surgery. [00:13:24] Speaker 01: There's lots of different shapes. [00:13:26] Speaker 01: And claim one covers all those shapes. [00:13:30] Speaker 01: And claim two covers radiodyne shapes. [00:13:32] Speaker 01: Claim two covered. [00:13:33] Speaker 01: Claim one covered. [00:13:34] Speaker 01: Claim two covered. [00:13:35] Speaker 03: Claim two captures the specific design that Radiodyne came up with. [00:13:43] Speaker 01: But it's not the design that's being patented. [00:13:45] Speaker 01: It's the method. [00:13:47] Speaker 01: It's the manufacturing. [00:13:48] Speaker 01: It's the taking three layers to achieve a design. [00:13:51] Speaker 02: Mr. Zito, you're willing to rebuttal time. [00:13:53] Speaker 02: Do you want to save any? [00:13:55] Speaker 01: I'll save some rebuttal time. [00:13:59] Speaker 02: Mr. Johnson? [00:14:14] Speaker 00: May it please the court, Chris Johnson, representing Radiodyne. [00:14:18] Speaker 00: Your Honor, this appeal concerns three issues. [00:14:20] Speaker 00: First, it's undisputed that Radiodyne owns Radiodyne product and design under the DCA. [00:14:26] Speaker 00: Second, it's undisputed that the patents in suit include Radiodyne product and design within their scope. [00:14:32] Speaker 00: And then third, under straightforward application of a lucidity gateway, Radiodyne is at least a co-owner of the patents in suit. [00:14:39] Speaker 02: When you say it's clear that the patent covers the Radiodyne design, what do you mean? [00:14:45] Speaker 00: Which claim? [00:14:47] Speaker 00: For the 497 patent, your honor, claims 2, 3, and 5, and an 8, 4, 5 patent claims 9 and 11. [00:14:53] Speaker 02: But isn't it true? [00:14:54] Speaker 02: What is the portion of claim 2, which is a dependent claim on claim 1? [00:15:01] Speaker 02: Did the radiodyne design have a first thermoplastic film layer? [00:15:08] Speaker 00: Yes, the radiodyne design is the three-layer [00:15:11] Speaker 00: medical balloon device with an inflated state distal bulge? [00:15:13] Speaker 02: I guess Mr. Zito was claiming that it was just the shape. [00:15:18] Speaker 02: Radiodyne's contribution was simply the shape, where the bulge was. [00:15:24] Speaker 02: Did Radiodyne bring to the table and participate in the invention of the layering of the film in order to come up with this product? [00:15:34] Speaker 00: So Radiodyne did come to Polyzen and say, I want an inflated state distal bulge medical balloon device. [00:15:41] Speaker 00: It was Polyzen that said, we can achieve that with three layers. [00:15:45] Speaker 00: But as the court was asking Mr. Zito, the contract says Radydyne owns the design. [00:15:50] Speaker 00: And the design is more than the shape. [00:15:51] Speaker 00: The design is the structure, the materials, the form of the balloon. [00:15:58] Speaker 00: All of that is part of the design. [00:16:00] Speaker 00: And if you look at the drawing Mr. Zito was referencing on A126, that is the three-layered balloon device with an inflated state dystopology. [00:16:07] Speaker 00: That is Radydyne product. [00:16:09] Speaker 00: That is the design. [00:16:10] Speaker 00: that the parties agreed radiodyne owned. [00:16:12] Speaker 00: And that has to be given meaning, as Judge Hughes was alluding to. [00:16:15] Speaker 00: Of course that includes the IP that is that design. [00:16:17] Speaker 00: That is what radiodyne owns. [00:16:19] Speaker 00: And ownership of that. [00:16:21] Speaker 04: But they didn't mean to transfer ownership of their underlying IP, about the three-layer and stuff, to you. [00:16:31] Speaker 04: They still own that, right? [00:16:32] Speaker 00: If they had a patent that had already issued before they'd signed the DCA that was to a three-layer technology, [00:16:38] Speaker 00: That would be polysense under the contract, I agree. [00:16:41] Speaker 02: But right now it's not, because you're a co-owner of the patent, so you now own all their stuff, and they also own all of your stuff. [00:16:47] Speaker 00: That is correct, because this was not a pre-issued patent that falls into Pope and Waterman, whereas there was an attempt to divide up ownership post-issuance. [00:16:58] Speaker 00: This case is within Lucent. [00:16:59] Speaker 00: Before the patent issued, the parties agreed Radine owned the design. [00:17:03] Speaker 00: And then once one claim of the patent is to that design, [00:17:08] Speaker 00: then we have co-ownership of the entire patent by both parties. [00:17:11] Speaker 04: What if they had written a patent that included their technology in all other shapes except the Radiodyne product? [00:17:18] Speaker 04: There's no mention of it distal and bulge or whatever it is. [00:17:22] Speaker 04: Would you still own their underlying technology because of disagreement or in that case would they have [00:17:29] Speaker 04: kept the rights to everything, and there just wouldn't be a patent on the distal end bulge. [00:17:35] Speaker 00: You are correct, Radydyne would not be claiming ownership of it. [00:17:38] Speaker 00: If they had drafted the patent to avoid claiming Radydyne Design, if that had been excluded from all the claims, Radydyne would not have an ownership interest in that patent. [00:17:47] Speaker 00: What if the patent had just claimed one in it? [00:17:52] Speaker 00: I believe Radydyne would be a co-owner of that patent, because that would include the Radydyne Design within the scope [00:17:57] Speaker 00: Why? [00:17:58] Speaker 02: It doesn't have the distal portion bulging upward upon inflation. [00:18:04] Speaker 02: Why would Radiodyne be a co-owner of Just Claim One? [00:18:08] Speaker 00: Because that patent, within its scope, includes the design, as Mr. Ezzito alluded to. [00:18:15] Speaker 00: He considers it an embodiment of that patent. [00:18:17] Speaker 00: And once we have part of the scope of that patent, [00:18:20] Speaker 02: Because something's an embodiment of a patent doesn't mean it's claimed. [00:18:24] Speaker 02: There's a million embodiments and a million different patents that aren't claimed by a particular patent. [00:18:28] Speaker 02: That's why you end up having lots of divisionals, right? [00:18:31] Speaker 02: You know, people claim one embodiment and one patent and then pursue a different embodiment and a different patent. [00:18:35] Speaker 00: I agree, Your Honor. [00:18:37] Speaker 02: So just because it's a disclosed embodiment in the spec doesn't mean it is what's claimed. [00:18:41] Speaker 00: I was working under the assumption that the question was, if the claim included within its scope, the radiodyne design, [00:18:49] Speaker 02: No, I think Judge Chen asked you, what if claim one is the only claim in the patent? [00:18:53] Speaker 02: Is your argument that includes the radiodyne design? [00:18:56] Speaker 00: My argument is that includes the radiodyne design. [00:18:57] Speaker 02: Why? [00:18:58] Speaker 00: Because that claim is broader than, but includes the radiodyne design. [00:19:04] Speaker 00: It's not specific to the radiodyne design, but it does include it. [00:19:07] Speaker 00: But I think the court is correct that the patents we have in front of us here, if we look at claims two, three, and five that are specific to [00:19:15] Speaker 00: a three-layer balloon with the inflated state. [00:19:17] Speaker 03: That's what I'm wondering. [00:19:19] Speaker 03: This is all hypothetical, obviously, because patents don't just have claim one. [00:19:25] Speaker 03: But if it was claim one, do we have any case law that has explained that [00:19:33] Speaker 03: How do we understand, how do we determine whether a purported inventor truly was an inventor for a specific claim or maybe a co-inventor for a specific claim of a patent? [00:19:47] Speaker 03: I mean, this case is an easier case because it specifically calls out the particular embodiment that radiodyne envisioned. [00:19:56] Speaker 03: But do we have any case law that is more like [00:20:00] Speaker 03: the hypothetical of just claim one, where we've said as long as there is some very broad claim that is claiming subject matter so broadly that it does in fact encompass the embodiment conceived of by this other purported inventor, that is good enough to make that purported inventor a co-inventor of this patent and therefore [00:20:26] Speaker 03: a co-owner of that patent upon its issuance. [00:20:30] Speaker 03: Do we have any case law that's gone that far and said as long as a claim encompasses a particular embodiment by somebody else, that somebody else gets to be deemed a co-inventor? [00:20:42] Speaker 00: I haven't seen any cases with that factual scenario. [00:20:46] Speaker 00: But using the inventorship analogy, I would say, for example, if two parties come together and write a patent that says, claim one, A and B, and [00:20:55] Speaker 00: A came from one party and B came from the other party, I would say they would both be co-owners of that patent. [00:21:00] Speaker 00: If you look, usually we do our inventorship analysis on a limitation by limitation basis. [00:21:05] Speaker 00: So if one of those limitations was within the scope or is to the design, then that would seem analogous. [00:21:12] Speaker 00: That would result in the co-ownership of the whole. [00:21:17] Speaker 03: What if somebody, two companies came up and collaborated on a car together? [00:21:24] Speaker 03: And party B came up with a very interesting novel new braking system. [00:21:30] Speaker 03: And then the other party came up with a way to make the car all electric. [00:21:36] Speaker 03: And then the claims are for an all electric car. [00:21:39] Speaker 03: It's completely silent on the braking system. [00:21:43] Speaker 03: Is the guy that came up with the braking system a co-inventor of that claim that is directed only to [00:21:53] Speaker 03: an all-electric car. [00:21:55] Speaker 03: Because that claim is so broad, it covers an all-electric car with any kind of braking system, including the braking system that was invented by the other guy. [00:22:05] Speaker 00: So under that factual center, I would say no, Your Honor. [00:22:07] Speaker 00: However, if those parties had entered into a contract before the patent issue that said, we agree that we will jointly own any car, any IP that covers the car we developed [00:22:18] Speaker 02: Wait, does this contract say that we re-rule jointly-owned IP? [00:22:22] Speaker 00: No, it does not. [00:22:22] Speaker 00: I was addressing the hypothetical here. [00:22:24] Speaker 00: And it does not say jointly-owned, Your Honor. [00:22:25] Speaker 00: I agree. [00:22:27] Speaker 02: Please continue. [00:22:28] Speaker 00: Sorry. [00:22:28] Speaker 00: No, I was not trying to argue that. [00:22:31] Speaker 00: But in the hypothetical, it doesn't matter if it said jointly-owned or the brake inventor will co-own or will own. [00:22:39] Speaker 00: Then if they had an issue that covered his braking system within the scope of the claim to a car, [00:22:46] Speaker 00: I think then he would have an argument that he would be a co-owner of that patent. [00:22:50] Speaker 00: But I think on the inventorship, just because of a broader patent issue, that does not give him an ownership. [00:22:55] Speaker 02: Can I just be clear? [00:22:56] Speaker 02: I mean, the case in front of us has to do with standing. [00:22:59] Speaker 00: That is correct. [00:23:00] Speaker 02: It doesn't have to do with ownership. [00:23:01] Speaker 02: This isn't a PTO correction of inventorship on a patent case. [00:23:06] Speaker 02: Now, we may make a holding that through collateral estoppel or through race judicata or something will allow you to [00:23:15] Speaker 02: direct to file some motion with the PTO to direct them to change the inventorship, but we're not actually deciding ownership technically, right? [00:23:24] Speaker 02: We're deciding whether you are a co-inventor and therefore can't be sued. [00:23:30] Speaker 00: I believe you are deciding whether the district court was correct in that under the DCA, there is co-ownership of the patents in suit. [00:23:39] Speaker 00: And then the legal repercussion of that co-ownership holding [00:23:43] Speaker 00: is there is no standing for Paulisen to bring us back. [00:23:45] Speaker 02: See, here's the problem. [00:23:46] Speaker 02: I'm just having a little bit of trouble with this co-ownership concept. [00:23:50] Speaker 02: Because what you really are arguing is somebody on our end should have been listed as an inventor, right? [00:23:57] Speaker 00: I don't believe so, Your Honor. [00:23:58] Speaker 00: I believe we have made that argument. [00:23:59] Speaker 00: That is a separate argument. [00:24:01] Speaker 00: But our argument is based on the contract. [00:24:02] Speaker 00: The contract says we own the design. [00:24:04] Speaker 00: And the claims include? [00:24:06] Speaker 02: The contract says you own the design. [00:24:07] Speaker 00: That is correct. [00:24:08] Speaker 02: And it says they own their tech. [00:24:10] Speaker 00: That is correct. [00:24:11] Speaker 02: Now they've filed a patent, which has at least one claim that combines the two. [00:24:18] Speaker 00: That is correct. [00:24:19] Speaker 00: And then we're in Lucent v. Gateway. [00:24:21] Speaker 02: You own your design. [00:24:22] Speaker 02: How does that mean you own the patent? [00:24:25] Speaker 00: Because we own the design, that subject matter. [00:24:29] Speaker 00: And then once that subject matter was included within the patent, after the post issuance patent, then we're in Lucent v. Gateway. [00:24:36] Speaker 00: And the result is co-ownership. [00:24:38] Speaker 00: It's the co-mingling. [00:24:39] Speaker 00: of something owned by Radydyne. [00:24:41] Speaker 02: I don't think you're right. [00:24:42] Speaker 02: The patent is a distinct legal right from the design. [00:24:45] Speaker 02: You own the design. [00:24:47] Speaker 02: I don't think that means you own a patent. [00:24:49] Speaker 02: It might mean they can't get a patent on your design, or if they get a patent, you need to be listed as a co-inventor. [00:24:55] Speaker 02: But I don't understand how you owning a design means you own a patent somebody else files on that design. [00:25:01] Speaker 00: I believe it's through the contract that we are a co-owner. [00:25:03] Speaker 00: I believe, I mean... But how? [00:25:05] Speaker 02: You own the design. [00:25:06] Speaker 02: Nothing in the contract talks about patent rights. [00:25:09] Speaker 00: Because the parties agreed. [00:25:12] Speaker 02: Are you going to pay them half of the prosecution fees since you now think you own part of the patent? [00:25:17] Speaker 02: They sought a different property right than just your design. [00:25:22] Speaker 02: They sought a patent on that design. [00:25:25] Speaker 02: It cost them money to obtain that separate and distinct property right from what's discussed in this claim. [00:25:31] Speaker 02: I'm struggling. [00:25:32] Speaker 02: Look, I'll tell you right now. [00:25:35] Speaker 02: You're a co-inventor, or whatever it means. [00:25:37] Speaker 02: They don't have standing. [00:25:38] Speaker 02: But I don't know how to write this and explain it, because I don't see how you're a, quote, co-owner of the patent. [00:25:45] Speaker 02: I don't see anything in this contract that talks about ownership of patent rights. [00:25:50] Speaker 02: I see that they have tried to obtain a patent partially covering your design, which is improper under our precedent related to inventorship. [00:25:58] Speaker 02: If you contribute to the inventorship of any one claim, the conception of any one claim, you're a co-inventor. [00:26:06] Speaker 02: And so I get ultimately that because somebody within your company is a co-inventor, they can't assert a patent against you. [00:26:13] Speaker 02: I get that part, but I just don't, I don't know how it makes you magically a co-owner. [00:26:19] Speaker 02: I don't know what that means. [00:26:20] Speaker 00: I believe I would direct the court to Lucent P. Gateway, because in that case, Lucent argued the issue there was whether something was new work or existing work. [00:26:30] Speaker 00: And there was a date that began, new work is the state going forward. [00:26:36] Speaker 00: And so the issue was, I'll use the example from the claim two in that case, which was the modified discrete cosine transform, the MDCT. [00:26:45] Speaker 00: The issue was, when did the MDCT become part of the work on the audio coder? [00:26:51] Speaker 00: And Lucent argued, MDCTs were known in the prior art. [00:26:54] Speaker 00: That wasn't an inventive contribution. [00:26:57] Speaker 00: Fraunhofer can't be a co-owner because they didn't contribute anything to the invention. [00:27:01] Speaker 00: And this court said, no, we're not looking at invention. [00:27:04] Speaker 00: We're looking at the contract. [00:27:05] Speaker 00: The contract says new work as of this date. [00:27:08] Speaker 00: And the record was very clear. [00:27:10] Speaker 00: So it's a JMAW. [00:27:11] Speaker 00: The MDCT work was done after that date. [00:27:15] Speaker 00: Therefore, Fraunhofer was a co-owner, because the MDCT was new work, and new work was jointly owned. [00:27:22] Speaker 00: And once they were co-mingled existing work. [00:27:24] Speaker 02: There is no joint ownership here. [00:27:26] Speaker 02: That contract specified joint ownership. [00:27:30] Speaker 02: There is no specification of joint ownership here. [00:27:33] Speaker 02: They stole your design. [00:27:35] Speaker 02: and tried to get some sort of exclusive rights to it. [00:27:38] Speaker 02: Totally agree. [00:27:39] Speaker 02: Not proper. [00:27:40] Speaker 02: They don't get to do that. [00:27:40] Speaker 02: And then they certainly don't get to turn around and then assert it against you. [00:27:43] Speaker 02: I'm with you. [00:27:44] Speaker 02: But I don't see how that makes you a co-owner on the property that they got. [00:27:48] Speaker 02: They shouldn't have that property. [00:27:50] Speaker 02: Or they should only have that property if your name is added to it as a co-inventor. [00:27:53] Speaker 02: That's why we have the correction of inventorship portion, both in courts and in the PTO. [00:27:59] Speaker 02: But I don't see how you're magically a co-owner absent adding an inventor's name onto the patent. [00:28:05] Speaker 00: Again, I would direct the court to lose the V Gateway, because the subject matter of the design is owned by Radydine. [00:28:12] Speaker 00: And then Polyzen sought a patent that included that design within its scope. [00:28:16] Speaker 02: But that contract said any intellectual property rights would be jointly owned. [00:28:23] Speaker 00: Right, but remember. [00:28:23] Speaker 02: I'm the one here that says this. [00:28:24] Speaker 02: They stole your thing. [00:28:26] Speaker 02: OK, so suppose that they stole entirely your design. [00:28:31] Speaker 02: Suppose that you came to them with a design, 100% yours, none of it was theirs. [00:28:36] Speaker 02: You came to them with a design, you showed it to them, and you just asked them, can you mass produce this for us? [00:28:40] Speaker 02: They're just one of these importers or something that is going to mass produce, they're going to machine the product for you. [00:28:46] Speaker 02: No ingenuity involved whatsoever. [00:28:48] Speaker 02: You come to them with a diet and say, can you machine the product? [00:28:50] Speaker 02: They say yes. [00:28:52] Speaker 02: They turn around and file a patent on that whole design. [00:28:55] Speaker 02: They are not the inventor at all. [00:28:57] Speaker 02: Do you think you own [00:29:00] Speaker 02: that patent? [00:29:03] Speaker 02: Or do you think that patent is invalid for failure to identify correct ownership, or that alternatively, ownership should be replaced with your company's name? [00:29:11] Speaker 02: But do you actually think you own the patent that they pursued under my hypothetical? [00:29:16] Speaker 00: Absent some order or proceeding that would find that because of the incorrect inventorship or something? [00:29:22] Speaker 00: No, I don't think so. [00:29:23] Speaker 00: I don't think the issue here is the contract. [00:29:25] Speaker 00: And I want to go back to Lucent Vigateway really quickly, where I think it doesn't matter that Lucent says join ownership. [00:29:30] Speaker 00: Lucent's contract in that case says existing work will remain the property of AT&T. [00:29:35] Speaker 00: AT&T's existing work will remain the property of AT&T. [00:29:38] Speaker 00: The result of this court's holding in that case is that Fraunhofer is a co-owner of existing AT&T work. [00:29:45] Speaker 00: So it didn't matter whether it was jointly owned or Fraunhofer only. [00:29:50] Speaker 00: As long as there was commingling of something that Fraunhofer had an ownership interest in and AT&T had an ownership interest in, we had joint ownership. [00:29:58] Speaker 00: It's the same thing here. [00:29:59] Speaker 00: ownership of the design and a patent that includes the design. [00:30:03] Speaker 00: If the patent includes more, then we have co-ownership. [00:30:06] Speaker 02: All right, your time is up, so let's have Mr. Zeta with his rebuttal time. [00:30:10] Speaker 02: To make the time equal, add one minute to his rebuttal time, please. [00:30:15] Speaker 01: I wanted to clear up the co-inventorship thing, because I think that's important here. [00:30:20] Speaker 01: It goes back to the design shape. [00:30:23] Speaker 01: Radiodyne said copy the prior art medrad balloon that has a distal bulge and a flat portion. [00:30:28] Speaker 01: They didn't add anything as far as inventorship. [00:30:32] Speaker 01: Because not only radiodyne, but I'll direct you to appendix pages 13, 25, 26, 27, and 28, 29, and 30, which show previous polyzen rectal balloons with distal bulges. [00:30:48] Speaker 01: Rectal balloon distal bulge was in the prior art [00:30:51] Speaker 01: by Medrad, by Polyzen, Polyzen's prior devices. [00:30:56] Speaker 01: Polyzen made these, it was in the prior art. [00:30:59] Speaker 01: You couldn't get a patent on the shape. [00:31:01] Speaker 01: This isn't a patent on the shape, it isn't a patent on the design. [00:31:04] Speaker 01: It's a patent on using three layers to create a prior art shape. [00:31:09] Speaker 01: So there's no contribution of inventorship. [00:31:11] Speaker 01: And the claims, what I'm hearing here is that if the claims specifically disclaimed any bulge, [00:31:18] Speaker 01: then radiodyne would have no problem. [00:31:20] Speaker 01: Polyzene would own the whole thing. [00:31:21] Speaker 01: But then that patent wouldn't cover their device. [00:31:26] Speaker 01: Claim 1 covers a wide range of balloons. [00:31:29] Speaker 01: Claim 2 covers a wide range of balloons, but they have to include a distal bulge. [00:31:33] Speaker 01: Claim 2 does not cover the shape of the radiodyne balloon. [00:31:37] Speaker 01: It's not limited to that shape. [00:31:39] Speaker 01: It's not a balloon of that shape. [00:31:43] Speaker 04: You say it doesn't cover that, but maybe so it's not limited to it. [00:31:46] Speaker 01: Correct. [00:31:47] Speaker 01: It doesn't cover it. [00:31:49] Speaker 04: If it doesn't cover it, then it's not included. [00:31:51] Speaker 04: But then you say it's not limited to you, which sounds like it's included but covers other things, which isn't. [00:31:57] Speaker 01: OK. [00:31:58] Speaker 01: It's both at the same time. [00:32:00] Speaker 01: It doesn't cover the shape, because the shape's in the prior art, even in Pauli's own work. [00:32:04] Speaker 01: It's in the prior art. [00:32:05] Speaker 01: So if you have a balloon of that shape, it does not infringe. [00:32:09] Speaker 01: If, however, the balloon of that shape, or a different shape, [00:32:13] Speaker 01: or that shape with a distal bulge and a bulge over here. [00:32:16] Speaker 01: If that balloon of a different shape or the same shape has three layers attached inside in a manner claimed, then it infringes, which is why this is not a patent to the design. [00:32:28] Speaker 01: It's not a patent to the shape. [00:32:30] Speaker 01: You can have the radionine shape and you can have a different shape or a modified radionine shape. [00:32:36] Speaker 01: If it's got the right internals, it infringes. [00:32:38] Speaker 01: If it has the wrong internals, it doesn't infringe. [00:32:40] Speaker 03: What does internals mean? [00:32:42] Speaker 01: There has to be more than one layer. [00:32:46] Speaker 01: This is a single-layer balloon. [00:32:47] Speaker 01: The layers have to be attached in a manner, as described. [00:32:51] Speaker 01: Proximal this, medial that. [00:32:53] Speaker 01: There's different ways that the layer. [00:32:56] Speaker 01: Because the prior art balloons. [00:32:58] Speaker 03: Maybe both sides contributed something to the elements that are reciting the claim to. [00:33:07] Speaker 03: No, the prior art. [00:33:08] Speaker 03: Which side came to you with the idea of the bulging discipline? [00:33:13] Speaker 03: You came for, no, they came to you with it. [00:33:16] Speaker 03: You didn't go independently find a Med-Rab thing on your own. [00:33:19] Speaker 03: They were the ones that came to you saying, hey, manufacturer guy, I want you to make this kind of balloon with this particular design. [00:33:30] Speaker 03: And I want it to be commercially feasible. [00:33:33] Speaker 03: And then it was your side that came up with the idea of, OK, in order for this to work, [00:33:39] Speaker 03: we're going to do multiple layers, and we know how to do that. [00:33:42] Speaker 03: And so now you want us to make it with this particular end shape, and we will do that. [00:33:48] Speaker 03: Correct. [00:33:48] Speaker 03: So both sides contributed something that ends up getting recited in claim two, claim three, claim five. [00:33:56] Speaker 01: It could serve as something to the product, but not to the patent, because Polyzen already made balloons with distal bulges. [00:34:03] Speaker 01: And Polyzen couldn't sell them this shape, because they sell it to another customer. [00:34:07] Speaker 01: Polyzen couldn't sell them [00:34:08] Speaker 01: this shape, because they sell it to a different customer, Rady and I wanted their own shape, their own design. [00:34:13] Speaker 01: They said, okay, the shape, the design, that will only sell to you. [00:34:17] Speaker 01: The stuff inside, which the patent covers, is ours. [00:34:22] Speaker 01: And that's what the contract says. [00:34:23] Speaker 01: Didn't assign any ownership anyway. [00:34:26] Speaker 02: Okay, time's up. [00:34:27] Speaker 02: I thank both counsel. [00:34:28] Speaker 02: The case is taken under submission. [00:34:29] Speaker 01: Thank you.