[00:00:02] Speaker 01: is 21-2316 blue gentian. [00:00:17] Speaker 02: Good morning, Your Honors, and may it please the Court. [00:00:22] Speaker 02: I want to start off with the point, looking at kind of the context, and then dive right into what we believe are some clearly erroneous factual findings that go to this Court's standard of review. [00:00:34] Speaker 02: This case is somewhat unusual for an inventorship dispute. [00:00:37] Speaker 02: If you look at this court's cases, such as Cartier-Q and Dana-Farber, most of the time these allegations of joint inventorship come up because the individuals have been working together for months or maybe a year. [00:00:49] Speaker 02: And there's a question of, well, what came out of that? [00:00:53] Speaker 02: Here's this patent. [00:00:53] Speaker 02: Here's this patent. [00:00:54] Speaker 02: Here we have an alleged aside during a two-hour meeting. [00:00:59] Speaker 02: that has become the basis for six different patents to have their inventorship challenged. [00:01:06] Speaker 02: And I'd like to move from that to the specific findings made by the district court and why those are clearly erroneous. [00:01:13] Speaker 02: So if we move to the district court's opinion, and I'm looking in the appendix here at appendix page 87, [00:01:22] Speaker 02: The appendix, the court starts by analyzing and admitting that it's not looking to doing claim construction. [00:01:30] Speaker 02: So the court comes up with its own idea of what's important in the technology here without doing claim construction. [00:01:36] Speaker 02: And says it's a hose with three features. [00:01:38] Speaker 02: And defines those in the middle of page 87. [00:01:42] Speaker 02: It has to have inner and outer tubes that are connected only at the ends. [00:01:46] Speaker 02: The outer tube has to be made of nylon or polyester. [00:01:50] Speaker 02: And the [00:01:51] Speaker 02: Importantly, the inner tube needs to be elastic and provide biasing force without the need for a spring. [00:01:59] Speaker 02: So those are the three characteristics of that tube. [00:02:01] Speaker 02: But the first finding of fact is very important here. [00:02:04] Speaker 02: So the district court looks at that and says, [00:02:07] Speaker 02: I find that the 836 patent shows that Ragnar, who is the purported inventor... Where are you reading on that page? [00:02:15] Speaker 01: I see the three features. [00:02:17] Speaker 02: Right above the three features, without the engine and plane construction. [00:02:21] Speaker 01: Gotcha. [00:02:22] Speaker 02: Yeah. [00:02:22] Speaker 02: So the court finds that the 836 patent [00:02:24] Speaker 02: And then below the three features, Your Honor says, this prior knowledge corroborates Ragnar's testimony that he was prepared to and did, in fact, communicate this knowledge. [00:02:35] Speaker 02: So this is a key fact finding. [00:02:37] Speaker 02: It's the fact finding that underlies the lead analysis of the court with regard to corroboration. [00:02:44] Speaker 02: But let's look at this. [00:02:46] Speaker 03: Is this your argument that there's not sufficient corroboration of communication of the idea? [00:02:51] Speaker 02: Well, that's certainly one of our arguments, Your Honor, but we also argue that they are clear errors. [00:02:55] Speaker 03: Could you tell us where the clear errors are? [00:02:59] Speaker 02: Yes. [00:03:00] Speaker 02: The 836 patent does not disclose that host. [00:03:03] Speaker 02: So the district court does not cite anything in the 836 patent. [00:03:07] Speaker 02: And if you look at the red brief and their citations, you'll find there's no support there either. [00:03:12] Speaker 02: So in the red brief, page six, [00:03:15] Speaker 02: We have this string of citations. [00:03:18] Speaker 02: This is about three quarters of the way down in the red brief, page six. [00:03:24] Speaker 02: I want to make sure I don't get ahead of everyone, but it says and states that including a metal spring is optional. [00:03:31] Speaker 02: So this is where they run through the three parts. [00:03:34] Speaker 02: There are a lot of citations here, and I don't really have an option but to go through them with you, but none of them support this factual finding. [00:03:42] Speaker 01: Just a side question. [00:03:43] Speaker 01: Of course. [00:03:43] Speaker 01: I don't want to get you off point, but you also mentioned in the context of this claim construction, and I understood one of your arguments to be that the district court here is willing to provide a claim construction. [00:03:54] Speaker 02: That's right, Your Honor. [00:03:55] Speaker 01: You asked for a claim construction. [00:03:57] Speaker 01: You did not provide. [00:03:59] Speaker 01: your own construction of these cases, of these terms, right? [00:04:05] Speaker 02: We actually not only provided constructions, we briefed it. [00:04:09] Speaker 02: Our markman briefs are in the record, Your Honor. [00:04:11] Speaker 02: We had a hearing on it. [00:04:12] Speaker 03: That was for infringement and validity. [00:04:14] Speaker 03: How about for inventorship? [00:04:16] Speaker 02: Well, but some of those terms, as indicated in the briefs, are relevant to inventorship, specifically the claims. [00:04:22] Speaker 04: So if you look at the- I guess the concern we have, perhaps, if I'm interpreting the questions correctly, is that, as I understand it, we never tried to tie together any specifically proposed construction of any specific term and how that proposed construction would actually impact how to think about [00:04:45] Speaker 04: whether or not Ragna is a joint inventor here for these claims. [00:04:49] Speaker 04: So Your Honor, to what extent did that happen? [00:04:51] Speaker 04: I understand there was a markman brief, but here in the context of the joint inventorship fight, where and how did you say, here's what this particular claim term means, here's why you need to understand the claim term to mean this, and why this shows and proves my story that it was all variety and nothing to do with Ragna. [00:05:11] Speaker 02: So Your Honor, so I'll turn you initially to the claim and then walk through. [00:05:14] Speaker 02: So I'll start with the claim language and walk through that, OK? [00:05:18] Speaker 04: Well, my only question is, am I right to say that what I just summarized did not occur below at the district court level? [00:05:27] Speaker 02: I think you're incorrect, Your Honor, respectfully. [00:05:30] Speaker 02: OK, where is it? [00:05:31] Speaker 04: Where could I read some words in the record that says, hey, here's a particular claim limitation in this claim? [00:05:38] Speaker 04: Here's my proposed construction. [00:05:40] Speaker 04: Here's why that proposed construction is correct. [00:05:42] Speaker 04: Here's why that correct proposed construction defeats Ragner's argument that he is a co-inventor of this claim. [00:05:53] Speaker 02: So I would turn you to the post-hearing brief, Gerard. [00:05:56] Speaker 02: And that is in the record at page 6723. [00:05:59] Speaker 04: Which volume is that? [00:06:04] Speaker 02: I believe that is volume two. [00:06:09] Speaker 02: And it's page 6723. [00:06:12] Speaker 02: So if you look at page 6728, which is the next page in the appendix, [00:06:19] Speaker 02: And you look at where we're arguing that Gary Ragnar's teachings to Mr. Berardi were insufficient. [00:06:27] Speaker 02: And we point to the actual claims. [00:06:29] Speaker 02: And specifically, we point to the language in the claims and why those claims require the radial and longitudinal expansion of that inner Alaska. [00:06:41] Speaker 02: And the reason that's important, Your Honor, is because even under the allegations of Mr. Ragnar, [00:06:46] Speaker 02: The inner surgical tube never had water in it, any fluid, so it would not expand radially. [00:06:52] Speaker 02: So we specifically argued, look, the claims, as properly interpreted, require that. [00:06:57] Speaker 02: And so if you're going to determine whether Mr. Ragnar's contribution is significant relative to the claims, you've got to compare the construction of that term to what was discovered. [00:07:10] Speaker 04: But Mr. Ragnar doesn't need to teach every single element of this claim in order to be a joining actor. [00:07:16] Speaker 04: Completely. [00:07:16] Speaker 04: And as I understand it, [00:07:19] Speaker 04: Your side never disputed that the three features that the district court honed in on are, in fact, incorporated in the claim. [00:07:27] Speaker 02: Respectfully, Your Honor, the question under the law, under this court's law, is what was- Can we just get to that question, the point I just asked? [00:07:37] Speaker 04: Your side never disputed that the three points, the three key features that district court honed in on are, in fact, necessary elements to the claims. [00:07:47] Speaker 02: I do not think, actually, that they are necessary elements, Your Honor. [00:07:50] Speaker 04: They're not in the claims? [00:07:51] Speaker 02: They are consistent with the claims. [00:07:53] Speaker 02: None of the claims have this language about without to provide buy-in support. [00:07:58] Speaker 04: I'm confused right now because I don't remember in the briefing you were ever saying. [00:08:03] Speaker 04: The district court botched it because he was looking at [00:08:07] Speaker 04: an inner tube and an outer tube being connected only at the ends and that's not part of my claims that is part of the claim yes that one is how about an outer tube with a fabric cover some of the claims out that others do not okay well then that's in there too well then what about the idea of an inner elastic tube [00:08:25] Speaker 04: inside the hose that provides the biasing force to retract the hose. [00:08:31] Speaker 02: So yes to the extent, to one extent, but no to another. [00:08:35] Speaker 02: There's two parts to what you've just said. [00:08:37] Speaker 04: Okay, I don't remember in the briefing you disputing that that is a feature that's in at least some of the claims of the path. [00:08:45] Speaker 02: So in our blue brief, Your Honor, turn into the blue brief. [00:08:50] Speaker 02: uh... we identified that and uh... before you start telling me a story yes or no yes you did we did identify that we did identify that that feature is not concomitant with the claims because this court's law says you have to be have to get a significant contribution relative to the claim scope [00:09:13] Speaker 02: So if the claim scope is this big, even if the contribution is within this claim scope, the analysis this court requires, you have to compare the contribution to the claim scope. [00:09:24] Speaker 01: So no, we didn't. [00:09:25] Speaker 01: So you're saying that element, nobody should have relied on that because that was irrelevant to this invention? [00:09:31] Speaker 02: We're saying it was insignificant relative to the full scope of the invention. [00:09:36] Speaker 04: Was it an element that [00:09:38] Speaker 04: you relied on during the patent prosecution to distinguish the claims away from the Ragnar 527 patent? [00:09:45] Speaker 02: With regard to one, I believe one of those. [00:09:47] Speaker 02: All three of these features. [00:09:49] Speaker 02: No, you're right. [00:09:50] Speaker 02: I don't believe it's true for all three of these features. [00:09:52] Speaker 02: It is true for one of the features that the fabric is used to distinguish. [00:09:57] Speaker 02: And it's only true for one of the prosecutions. [00:09:59] Speaker 02: So again, we're dealing with six different patents here. [00:10:02] Speaker 02: And so, yeah, if you try to find a little bit here and a little bit there, but that does not mean that for each of these patents, we have the required significant contribution for that patent's claims with regard to Mr. Ragnar's design. [00:10:18] Speaker 01: But you also agree that you don't have to take each of these, and each of these by itself doesn't have to demonstrate a substantial contribution. [00:10:26] Speaker 01: The judge referred to all three, right? [00:10:30] Speaker 02: The judge referred to a tube having all three features. [00:10:34] Speaker 01: Before you run out of time, let me turn you to the design pad. [00:10:40] Speaker 01: struggling with what the invention, the decorative invention, is here. [00:10:46] Speaker 01: And therefore, you're disputing the district court's conclusion. [00:10:50] Speaker 01: But I think he didn't have that much to work with. [00:10:55] Speaker 01: And he, of course, had your client's testimony that, well, this just sort of showed up, and I noticed it. [00:11:02] Speaker 01: And there was no analysis of how he came to this and how he invented it. [00:11:10] Speaker 01: patent that I'm not sure what other than functionality exists in the patent. [00:11:18] Speaker 01: I'm having a hard time figuring out. [00:11:21] Speaker 01: the 681. [00:11:22] Speaker 01: Right. [00:11:23] Speaker 02: So two things there, Your Honor. [00:11:25] Speaker 02: First, Mr. Berardi, who's clearly not a patent attorney, said, my prototype, which is just one embodiment of the various utility patent claims, yeah, it looks like my prototype. [00:11:36] Speaker 02: But the fact that one embodiment looks like this does not mean that it is functional. [00:11:40] Speaker 02: And of course, we didn't have the invalidity of the design patents at issue. [00:11:45] Speaker 04: I mean, design patents are for some, you know, [00:11:50] Speaker 04: contribution to the ornamental arts. [00:11:52] Speaker 02: Yes, Your Honor. [00:11:53] Speaker 04: And what is the contribution to the ornamental arts here? [00:11:57] Speaker 04: Because I see nothing but function here, that this design of the hose is based on just putting the hose together. [00:12:06] Speaker 04: And this is the result you get. [00:12:08] Speaker 04: In fact, that's what Mr. Burr already said in his testimony. [00:12:11] Speaker 02: He said that for his prototype. [00:12:13] Speaker 02: That's right, Your Honor. [00:12:14] Speaker 02: But obviously, you could build a prototype within the scope of the claims in a different way. [00:12:18] Speaker 04: Is there anything ornamental here? [00:12:20] Speaker 04: I would, you know, my first reaction is a hard no. [00:12:26] Speaker 04: I mean, this looks like a misuse of the design patent system. [00:12:29] Speaker 01: Well, it's also what he, I mean, his testimony that Judge Chen just referred to, come up with the idea, that's the way the hose looks. [00:12:36] Speaker 01: And I mean, after the prototypes were made, that's the way it looks as a garden hose. [00:12:41] Speaker 02: That's right. [00:12:42] Speaker 02: And that's why I say, you know, his prototype looked this way. [00:12:44] Speaker 01: OK, and then he got a design patent, an ornamental design that he's invented. [00:12:49] Speaker 02: If there are other ways that you could achieve the utility, yes, Your Honor. [00:12:53] Speaker 02: The look of a particular embodiment can certainly be an ornamental design if there are other ways of achieving the same function that look different. [00:13:02] Speaker 02: And of course, the district court didn't analyze any of this. [00:13:04] Speaker 01: What is this claim about, though? [00:13:06] Speaker 01: What's on this figure? [00:13:09] Speaker 01: Are you claiming there's a bunch of scrunchy stuff here, and each of them, it looks like the soles of shoes, and each of them is a little different in terms of size or shape, just a little. [00:13:20] Speaker 01: So are you relegated and left to this exact design? [00:13:26] Speaker 01: In other words, if there's another scrunchy hose and the designs aren't precisely this way, in terms of number, shape, or size? [00:13:38] Speaker 02: So I can speak generally to this. [00:13:41] Speaker 02: This issue was not on appeal, and I will admit I did not read all the briefing that might have been in play about invalidity below since it did not get involved. [00:13:49] Speaker 01: Well, I'm not talking about invalidity. [00:13:49] Speaker 01: I'm just trying to discern. [00:13:51] Speaker 01: I mean, we have to decide whether he was a co-inventor. [00:13:54] Speaker 01: I want to understand what it is you've invented. [00:13:56] Speaker 02: The rule generally is that we do a claim construction where we say the non-hatched portions of the figure in a design pattern [00:14:03] Speaker 02: The ornamental non-functionally required portions of that are the design. [00:14:09] Speaker 02: And then you look to a person, an ordinary consumer, to see whether or not that ordinary consumer, in comparing that to something else, would find it to be infringed. [00:14:19] Speaker 02: That's the scope of the claim in a design patent. [00:14:21] Speaker 01: And there's no functionality associated with this? [00:14:26] Speaker 02: Functionality does not dictate this look. [00:14:29] Speaker 02: That's what's important in design patents, is whether functionality dictates it. [00:14:31] Speaker 01: What dictates the look? [00:14:33] Speaker 01: I mean, your client just said, I saw it. [00:14:35] Speaker 01: And what dictates the look? [00:14:36] Speaker 01: Is it any creativity on the part of your client as the inventor? [00:14:42] Speaker 02: Yes. [00:14:43] Speaker 02: I mean, he exercised creativity in choosing the particular materials that he used in his embodiment, which are not required by the clients. [00:14:51] Speaker 02: He could have used different materials. [00:14:53] Speaker 02: And those materials, [00:14:55] Speaker 02: when put together, give you a certain look. [00:14:58] Speaker 02: And so it was his work in putting those different materials together to achieve this look that would be the creativity for a design pattern. [00:15:06] Speaker 03: Do you know what is the status of the validity of the design patents in the district court? [00:15:12] Speaker 03: Was there motions pending with respect to invalidity, or? [00:15:14] Speaker 02: I know there were certainly invalidity contentions. [00:15:17] Speaker 02: I don't believe there was a summary judgment motion pending. [00:15:19] Speaker 02: No decision yet. [00:15:20] Speaker 02: And there's certainly no decision on it, Your Honor. [00:15:22] Speaker 03: If you were to prevail on this appeal, would you expect that that invalidity dispute would get resolved in due course? [00:15:29] Speaker 02: Given that there are invalidity contentions, yes, Your Honor. [00:15:32] Speaker 02: I would certainly expect that. [00:15:33] Speaker 03: Can I just ask before we move on? [00:15:36] Speaker 03: I'm not sure if I fully understood your answer to Judge Chan's question about where you articulated the claim construction. [00:15:42] Speaker 03: I've had a chance to glance, but just glance at 67, 28, and 29. [00:15:46] Speaker 03: Do you there actually say what claim term, what the claim construction should be, and what a difference it makes to the inventorship? [00:15:57] Speaker 02: So Your Honor, and I'm looking specifically at footnote two. [00:16:01] Speaker 02: OK. [00:16:01] Speaker 02: And there we do discuss the specific terms in the 9-4-1 patent claims. [00:16:08] Speaker 02: You see in the first sentence, we identify specific terms. [00:16:10] Speaker 03: I see that. [00:16:10] Speaker 02: And then the second position, we compare that to what Mr. Ragnar's testimony was. [00:16:15] Speaker 02: We say, you know, Mr. Ragnar does not even argue he disclosed such a limitation, Mr. Berardian. [00:16:20] Speaker 02: But then we compare it. [00:16:22] Speaker 02: Instead, he argues he disclosed. [00:16:24] Speaker 03: And the Valley Court, when I was talking about, does not... But where does this put the district court on notice that what you're saying is, hey, you need to follow the Federal Circuit's law and construe claims because it makes a difference and here's what our construction is? [00:16:41] Speaker 02: Well, Your Honor, the district court had before it the construction, the proposed constructions of these terms. [00:16:48] Speaker 02: And we compared and said, these constructions, our constructions, don't match this valley court, which was the testimony of Mr. Ragnar. [00:16:57] Speaker 02: So we told the district court, these things are different. [00:17:00] Speaker 03: And the district court never addressed it. [00:17:01] Speaker 03: This ties back to your then pending briefing on claim construction. [00:17:06] Speaker 02: Yes, which does address these terms, Your Honor. [00:17:08] Speaker 04: Although this footnote doesn't actually reference [00:17:11] Speaker 04: that construction? [00:17:12] Speaker 02: Well, I mean, at this time there was no construction, Your Honor. [00:17:16] Speaker 02: There were briefings, and we didn't know exactly what the construction would be. [00:17:19] Speaker 02: But we did identify these are the terms that you need to compare with Mr. Ragnar's testimony, specifically his testimony about the valley cord [00:17:28] Speaker 02: We said, that's not the claimed invention. [00:17:30] Speaker 02: And to analyze that, whatever constructions the district court came up with, which, of course, the district court is independent of the party's proposals, it needed to compare to Mr. Radner's testimony. [00:17:41] Speaker 02: And we pointed to the exact testimony that needed to be compared. [00:17:44] Speaker 02: So I think we did fairly put the district court on notice. [00:17:47] Speaker 01: If the district court had said, in response to claimed construction, I don't think they [00:17:56] Speaker 01: Would you have any basis, would you have a specific basis to say plain and ordinary meaning is inconsistent with what we think the construction should have been and that our construction would result is going to affect the analysis on inventorship of these three elements? [00:18:12] Speaker 02: Yes, Your Honor. [00:18:13] Speaker 02: And that goes to when I talked about the radial expansion requirement and our construction of that. [00:18:19] Speaker 02: And that's, again, it's at the very end of the claim that we put on the inside of the brief. [00:18:24] Speaker 02: So that's the... But where is that here? [00:18:26] Speaker 01: Where are you talking about that here? [00:18:27] Speaker 01: Is that footnote 2? [00:18:29] Speaker 02: So we say in footnote 2, you see where we talk about the expanded condition and it requires the outer fabric to be longer and have a larger radius. [00:18:38] Speaker 02: Do you see that? [00:18:39] Speaker 02: So we were talking about that radial expansion. [00:18:42] Speaker 02: I know I'm way over time, Your Honor. [00:18:45] Speaker 02: I do want to emphasize there's nothing in that 836 patent. [00:18:48] Speaker 02: I couldn't get to it, but that is a clearly erroneous factual finding. [00:18:54] Speaker 02: That 836 patent does not disclose what the district court said. [00:18:57] Speaker 02: I could run through it all, but I know I don't have time. [00:18:59] Speaker 02: So I'll leave it. [00:19:00] Speaker 01: Thank you, Will. [00:19:01] Speaker 01: You'll be under time because we asked you a number of questions. [00:19:03] Speaker 01: We'll restore some of your time. [00:19:06] Speaker 02: Thank you. [00:19:07] Speaker 02: Thank you, Your Honor. [00:19:08] Speaker 00: Good morning, Your Honor. [00:19:10] Speaker 00: May it please the court? [00:19:11] Speaker 00: I'd like to address a few points. [00:19:13] Speaker 00: I guess I'll start with corroboration of communication, as appellants call it, perhaps hit on the collaboration requirement, and then also address the claim construction issues that were raised this morning. [00:19:27] Speaker 00: Starting with the corroboration argument, I heard appellants say that the district court determined corroboration based solely on the 836 patent. [00:19:38] Speaker 00: And while the 836 patent we do contend teaches all three elements, of course, the district court, and you can see this at Appendix 94, ruled not just on the 836 patent, but stated, after considering all pertinent evidence, the court finds that Ragnar's testimony is adequately corroborated, both by physical and circumstantial evidence. [00:19:58] Speaker 00: And then they go on. [00:20:02] Speaker 00: An inventor's testimony while standing alone must be corroborated, whether that corroboration is sufficient is determined under this rule of reason analysis. [00:20:10] Speaker 00: And what that means is you don't need corroboration or independent proof of the fact itself. [00:20:15] Speaker 00: You need something that shows some independent evidence showing that as a whole, the inventor's testimony is credible. [00:20:23] Speaker 00: You don't need an over-the-shoulder observer. [00:20:26] Speaker 00: You don't need corroboration of each particular fact. [00:20:30] Speaker 04: So I understand where you're going. [00:20:33] Speaker 04: So are you now agreeing with the other side that at least as to the legal point of corroboration, Mr. Ragnar needed to prove they have corroborating evidence not only for conception of these three features, but also for communicating those three features to Mr. Berardi? [00:20:56] Speaker 00: I guess what I would say is that I think the brief seemed to hedge on that, so I couldn't tell. [00:21:01] Speaker 00: What was strange to me about the way that the appellants presented it was that they broke the two things, that they broke conception and communication into two separate elements, which is of course the elements that were relevant for price. [00:21:19] Speaker 00: with respect to derivation. [00:21:21] Speaker 00: What we're looking at here is a little bit different. [00:21:23] Speaker 00: I wouldn't disagree that there has to be some sort of collaboration. [00:21:29] Speaker 00: There has to be some way that what Ragnar knew got into the patents of variety. [00:21:34] Speaker 00: And our contention, of course, is that that was communicated by Ragnar at the meeting. [00:21:39] Speaker 00: There were also documents that communicated that information at the meeting. [00:21:43] Speaker 04: But do you agree that [00:21:45] Speaker 04: It would be wrong for a court to rely solely on Mr. Ragnar's own testimony that he, in fact, communicated all these things to Mr. Berardi. [00:21:56] Speaker 00: If there was, well, I would say one thing. [00:21:59] Speaker 00: One, there is not the need for a corroboration or independent proof of every fact itself. [00:22:08] Speaker 00: Two, I would say that we have even direct evidence of the communication of most of these elements for sure. [00:22:15] Speaker 00: I think that the element that's most in question is whether there was corroboration of the elastic tube that provides a retracting force without a spring. [00:22:26] Speaker 00: But if it's helpful to the court, I can go through what the evidence was and what the circumstantial evidence was at the time during the meeting, leading up to the meeting, and including after the meeting, of course, [00:22:37] Speaker 00: when Berardi went out and bought all the material shortly after the meeting to go and build the hose. [00:22:42] Speaker 04: Is your answer to my question yes? [00:22:46] Speaker 04: Mr. Ragnar would need some kind of corroborating evidence to support his assertion that he communicated those features? [00:22:55] Speaker 00: My answer... [00:22:57] Speaker 00: Sorry for interrupting. [00:22:58] Speaker 00: My answer with respect to at least the first two components would be no, only because there was physical evidence at the meeting. [00:23:07] Speaker 00: With respect to the third component, the elastic hose that retracts without the need for a spring, I would say there, there is need for corroboration of Ragnar's testimony about that. [00:23:22] Speaker 01: And was there corroboration? [00:23:24] Speaker 00: There indeed was. [00:23:25] Speaker 00: So there was the 836 patent, of course, leading in. [00:23:27] Speaker 00: There was the meeting itself, where there's agreement about the topics that were discussed, the reason for the meeting. [00:23:35] Speaker 00: Mr. Berardi himself said that Ragnar was free-flowing with information and said that Ragnar talked about the time when Ragnar dusted off his ideas and started making his prototypes. [00:23:47] Speaker 00: Of course, one of those early prototypes was prototype two, which was the prototype that Ragnar says they were talking about when they talked about whether the spring could be removed from that hose. [00:23:58] Speaker 00: And then, of course, going on at the end, we have variety going right out and buying components to make a hose with no spring. [00:24:07] Speaker 00: So again, I think what the case law tells us is that you need an overall assessment of the credibility [00:24:15] Speaker 00: of the proposed inventor's testimony, looking at the evaluation of all permanent evidence so a sound determination of credibility of the alleged inventor's story can be reached. [00:24:25] Speaker 01: Can I ask you? [00:24:27] Speaker 01: Your friend started off by saying that this is an unusual kind of inventorship case, because typically you have two scientists or whatever working together for years, and then it becomes a dispute. [00:24:39] Speaker 01: His suggestion was obviously that makes this case different and weaker. [00:24:44] Speaker 01: I may be reading between the lines or getting a sense for what the district court said. [00:24:48] Speaker 01: I understood he took that and read it the opposite way, where here you have a circumstance where you've got a person skilled in the art who's been working in this field and doing this business for 10, 20 years and developed a business. [00:25:03] Speaker 01: And then on the other hand, you have someone who's just new to the field and not expert. [00:25:10] Speaker 01: he was influenced by that as the alternate scenario to the typical situation. [00:25:16] Speaker 01: Just wondering if you had a comment on that. [00:25:18] Speaker 01: Do you agree that that was sort of the background noise that the district court really felt was somewhat compelling? [00:25:26] Speaker 00: I agree that's surely one of the things that the district court found compelling. [00:25:30] Speaker 00: And I think that we see in [00:25:32] Speaker 00: the cases, for instance, Ethicon and Cardiac AQ, where relative experience of the two potential inventors is something that can be considered in determining whether testimony is corroborated. [00:25:46] Speaker 00: I would disagree with the appellant's argument that this is [00:25:49] Speaker 00: I don't know what percentage of the time a case is like ours and what percentage of the time you have two people working together in a lab for two years. [00:25:58] Speaker 00: But we have, for instance, the Inry Verhof case where there was basically a chance encounter and a brief communication answering a question and that was enough for joint inventorship. [00:26:07] Speaker 00: And that was the case where a named inventor took his dog to the veterinarian [00:26:12] Speaker 00: mentioned a problem with the harness for his dog, and the vet suggested a configuration of a strap that might help. [00:26:18] Speaker 00: And then that information from the vet was incorporated by the dog owners in their patent application. [00:26:26] Speaker 00: And what the court said was that it would be paradoxical to regard Bear Hope as having solely conceived when he admits to appropriating Lamb's freely given idea. [00:26:34] Speaker 01: And before your time runs out, we had a little discussion about the design patent, which is [00:26:41] Speaker 01: a little challenging for all of us. [00:26:43] Speaker 01: So what are your comments? [00:26:44] Speaker 01: I mean, it seems like the district court found co-inventorship here, but relying really on the functional elements. [00:26:54] Speaker 01: And how is that right if, by definition, unless and until we find this patent invalid because it is functional, we've got to assume it is not functional but more fundamental? [00:27:06] Speaker 01: I mean, maybe we do. [00:27:07] Speaker 01: Maybe we don't. [00:27:08] Speaker 01: But let's start with that in terms. [00:27:10] Speaker 00: And there was and is a dispute at the district court about the design patent and whether it's functional. [00:27:17] Speaker 00: But my understanding of what appellants have argued below is that the design patents cover a crumpled look. [00:27:27] Speaker 00: So basically like a scrunchie, right? [00:27:31] Speaker 00: But that's not attached at the end. [00:27:33] Speaker 00: I haven't seen any arguments by them below about how many [00:27:39] Speaker 00: how many pieces of crumple you need to see or some sort of detail like that. [00:27:44] Speaker 01: What about the district court's analysis? [00:27:45] Speaker 01: His analysis dealt with the three elements he was looking at. [00:27:51] Speaker 01: How is that not sort of just incorporating kind of a functional test into what is ostensibly not functional unless and until there's some analysis of this pattern? [00:28:04] Speaker 00: Well, I think the question of separating functionality and the design here, I appreciate that question. [00:28:11] Speaker 00: But I think here what the court was going on and what was presented is the fact that there hasn't been any proposed construction of the design patent by appellants in connection with inventorship below or here. [00:28:29] Speaker 00: But I guess I would say that you could end up [00:28:33] Speaker 00: by chance with some sort of design that has a design element. [00:28:41] Speaker 00: I don't know that the way in which you come to [00:28:46] Speaker 00: Determining a design for a patent is what drives whether you're entitled to the design patent or not. [00:28:52] Speaker 01: Would you say it's fair to say that to the extent the design was conceived of at all, the three Ragnar concepts or elements match the conception described by the named inventor? [00:29:08] Speaker 01: Yes. [00:29:08] Speaker 01: Is that the theory of finding the truth? [00:29:10] Speaker 00: Yes, absolutely. [00:29:11] Speaker 00: So Ragnar contributed the ideas that resulted in Berardi's hose looking [00:29:16] Speaker 00: like the crumpled hose design it was. [00:29:19] Speaker 00: So, you know, Ragner saw, and then, excuse me, at the end, of course, Verardi saw, as you said, what the hose looked like from incorporating those three ideas that Ragner gave him, and it happened to look like, you know, the hose that you see in his videos from after the meeting, and that is the hose that they then say they put into the design patent. [00:29:38] Speaker 03: Can I ask you about claim construction? [00:29:40] Speaker 03: Because I'm not sure I understand what happened here. [00:29:42] Speaker 03: It seems that the appellants repeatedly told the district judge they wanted claim construction for the utility patents. [00:29:52] Speaker 03: And there was a claim construction hearing, not for purposes of inventorship, but some of the terms maybe overlap. [00:30:00] Speaker 03: And then we get to the opinion, and the opinion repeatedly goes out of its way to say, I'm not doing claim construction. [00:30:07] Speaker 03: Is there ever any explanation from the district court as to why it's not doing claim construction? [00:30:13] Speaker 03: And wasn't it legal error to not do claim construction here? [00:30:17] Speaker 00: No, so going into the hearing the judge said that if at the end claim construction was necessary, he would do it. [00:30:24] Speaker 00: So here, given what was argued to him, he determined that it wasn't necessary. [00:30:28] Speaker 03: And what did he tell us about why it was not necessary? [00:30:31] Speaker 00: And I think that if you look at the elements that were contributed by Ragner, Ragner's contributions don't depend on whether he contributed every detail of the invention. [00:30:43] Speaker 03: Does the district court say that? [00:30:46] Speaker 00: I don't think that the district, I don't know if the district court says he doesn't need to have contributed to every element, but that is indeed the rule of joint inventorship. [00:30:55] Speaker 00: If Ragner had contributed every element, then he would be a sole inventor, not a joint inventor. [00:31:00] Speaker 03: Do we know why the district court did not construe the claims? [00:31:04] Speaker 03: As you say, he said he would if he needed to. [00:31:06] Speaker 03: I think he told the parties he'd be heard from further if he needs help. [00:31:11] Speaker 03: And then he very clearly tells us he's not construing the claims. [00:31:15] Speaker 03: But I'm not clear on why that is. [00:31:18] Speaker 00: I guess I don't know it was in the judge's head. [00:31:21] Speaker 00: I would say that either he determined that it wasn't necessary, or, of course, appellants did not put into their post-trial briefing in any clear manner what the claims were that they sought to be construed, how they should be construed, or why that mattered to this. [00:31:34] Speaker 03: Oh, sorry. [00:31:36] Speaker 01: No, but we were pressing your friend on the real probative question, which is, do you [00:31:44] Speaker 01: Is it your view that any of whatever claim constructions were proposed at some place in this proceeding, that there was a demonstration that the difference between those constructions and the one that applied for the district court would have been probative or dispositive of the issue of inventorship? [00:32:05] Speaker 00: No, I don't think there was any showing that those constructions as applied would have [00:32:10] Speaker 00: impacted the ruling on inventorship. [00:32:14] Speaker 01: And maybe if I think there is, I mean, your friend pointed us to footnote two of that document and so forth. [00:32:20] Speaker 01: Is it your view? [00:32:21] Speaker 01: And I don't know. [00:32:23] Speaker 01: Like Judge Stark, I didn't see the district court give us a lot of analysis about that. [00:32:29] Speaker 01: But is it your position, though, that to the extent there were any claim construction disputes, they were not [00:32:36] Speaker 01: probative of the questions of inventorship and the three elements. [00:32:40] Speaker 01: It wouldn't have been result. [00:32:42] Speaker 01: It wouldn't have affected the result or been germane to the result here. [00:32:46] Speaker 00: That's right, Your Honor. [00:32:47] Speaker 00: Let me maybe explain why for a moment. [00:32:48] Speaker 00: I think the appellants that page 26 of their gray brief say something about the court needed to require that the water goes through the inner tube, right? [00:32:58] Speaker 00: It's undisputed that that's how the X-hose worked. [00:33:01] Speaker 00: The district court understood Verardi's patents to be claiming the X-hose. [00:33:05] Speaker 00: And Appendix 53 of the district court's opinion does suggest that he understands that the water goes through the hose. [00:33:11] Speaker 00: Now, what did Ragnar contribute with respect to that? [00:33:14] Speaker 00: The judge didn't even require that Ragnar contribute an inner hose where the water goes through it, despite understanding that the X-hose and the patents that claim the X-hose have water going through it. [00:33:25] Speaker 00: I think there was another, potentially another claim construction issue that [00:33:33] Speaker 00: that the appellants have raised is this question of whether the two tubes are attached only at the ends. [00:33:38] Speaker 00: And indeed, in front of the district court, we can see this at appendix 5557, also at 5559. [00:33:44] Speaker 00: There are photos of this at 9807 to 9809. [00:33:48] Speaker 00: I think the brief might say 9827 to 9829. [00:33:53] Speaker 00: But there, what was displayed to the court was the cover shifting back and forth. [00:33:58] Speaker 00: across the cover of a Ragnar prototype shifting back and forth across that inner elastic layer. [00:34:05] Speaker 00: And then with respect to this question of sort of whether the elastic that Ragnar [00:34:11] Speaker 00: that Ragnar contributed would expand and contract. [00:34:15] Speaker 00: There's also no question about that. [00:34:17] Speaker 00: For instance, there was the prototype that was displayed at the meeting. [00:34:20] Speaker 00: It expanded, it contract. [00:34:23] Speaker 00: There's testimony talking about TPU. [00:34:26] Speaker 00: TPU was the elastic used in Process 17, the diagram shown at the meeting, that it's an extremely good elastic. [00:34:32] Speaker 00: And there's testimony that without the cover, the hose will expand out and blow up like a balloon. [00:34:37] Speaker 00: The whole purpose of that fabric cover [00:34:39] Speaker 00: is to keep that inner elastic tube from blowing up under the pressure of the water. [00:34:45] Speaker 00: I would also contend, frankly, that the Court found that there were three key contributions, any one of those standing alone. [00:34:53] Speaker 00: I disagree with Appellant's assertion that only one or two of these elements made a difference in prosecution. [00:35:00] Speaker 00: The Berardi patents themselves alleged that Ragnar's prior art 527 patent was distinguished because he described using a biasing spring to retract the hose. [00:35:10] Speaker 00: And in addition, the applicant agreed to amend the claims in prosecution to overcome the Ragnar prior art to specify that the outer tube was fabric and that the tubes are unattached to the ends as compared to bonded. [00:35:23] Speaker 00: So any one of these standing alone would be significant, but surely all three of them are. [00:35:28] Speaker 00: Thank you. [00:35:32] Speaker 01: Thank you, Your Honor. [00:35:35] Speaker 02: So my colleague denied that the 836 patent whole finding was totally erroneous, but didn't point to anything in the 836 patent that shows what the district court found. [00:35:49] Speaker 02: The district court found, and it's very clear about what it's finding and why it's important to corroboration, that a tube with these three features [00:35:58] Speaker 02: is disclosed in the 836 pattern. [00:36:00] Speaker 02: It's not. [00:36:01] Speaker 02: And I know they cited many, many passages. [00:36:04] Speaker 04: What about the other items? [00:36:06] Speaker 04: Like, for example, prototype two at a minimum discloses that inner elastic tube that's the biasing force, right? [00:36:17] Speaker 04: And then it also has the ends of the two tubes attached to each other. [00:36:22] Speaker 02: So respectfully, Your Honor. [00:36:23] Speaker 02: And the fabric cover is in all sorts of examples. [00:36:28] Speaker 02: So respectfully, Your Honor, the reason this is important is because on an appeal from a bench finding of this sort, this court looks at the findings. [00:36:36] Speaker 02: And if any of them are clearly erroneous, this court has said, it doesn't reweigh. [00:36:40] Speaker 02: Instead, if there's a clearly erroneous finding, and here it's the lead finding, and it's the only finding where the district court said, this shows both conception and that it was communicated. [00:36:52] Speaker 02: And this finding is clearly erroneous. [00:36:54] Speaker 02: There is nothing in that 836 patent that shows a tube with those three features. [00:37:00] Speaker 02: There are two spots, and they're copy-paste in the 836 patent, and one of them's at the top of column 11. [00:37:07] Speaker 02: They talk about the one situation without a screen. [00:37:10] Speaker 02: And it's where the cover has enough elasticity that you don't need the spring. [00:37:15] Speaker 02: So it is not in the context of separate outer or inner. [00:37:19] Speaker 02: And it is not in the context of having the elastic inner be what causes the spring not to be needed. [00:37:26] Speaker 02: There is simply no disclosure in the 836 patent. [00:37:29] Speaker 02: And the district court relied on it. [00:37:31] Speaker 02: And this court has said that this is not a jury situation where we're just looking for substantial evidence. [00:37:37] Speaker 02: This is a situation where we're reviewing findings of fact and conclusions. [00:37:42] Speaker 02: And here we have a situation where the lead finding of fact and the one that the district court said, this shows corroboration, is clearly erroneous. [00:37:51] Speaker 02: And for that reason, we respectfully request that, at minimum, this court should remand for the district court to reweigh whether the rule of reason that applies to corroboration, where you look at all the evidence, applies. [00:38:07] Speaker 02: The last thing, she mentioned the 836 when she was telling us what the corroboration was. [00:38:12] Speaker 02: She also mentioned the reason for the meeting. [00:38:14] Speaker 02: And I'd like to go straight to that and give you one other citation in the record that I think is important with regard to that. [00:38:20] Speaker 02: And that's at page 7, 4, 3, 2 in the record. [00:38:26] Speaker 02: And this is the business plan, which was submitted and was basically what they were discussing, whether there was going to be an investment in view of this business plan. [00:38:35] Speaker 02: Business plan. [00:38:36] Speaker 02: Sorry, your honor. [00:38:38] Speaker 02: So it's 7432 in the competitive analysis portion, the page of the business plan, the first mention of the micro-host. [00:38:45] Speaker 02: And that's the one that we all know was the focus of this meeting. [00:38:48] Speaker 02: Whether there was an aside or not, this was the focus of the meeting. [00:38:52] Speaker 02: The first sentence says it uses an internal biasing spring and then gives four functions for that spring. [00:38:58] Speaker 02: It extends. [00:38:59] Speaker 02: It retracts, it prevents kinking, and it protects the hose from wear. [00:39:04] Speaker 02: So if anything, the reason for the meeting completely mitigates against any reason why there's corroboration that there was communication of something different. [00:39:15] Speaker 02: Right? [00:39:16] Speaker 02: Ragnar was there to sell his micro hose. [00:39:19] Speaker 02: His micro hose business plan says it's all about the sprint. [00:39:22] Speaker 03: What was said at the meeting just seems fundamentally factual. [00:39:25] Speaker 03: And the district court saw the testimony of all the witnesses. [00:39:28] Speaker 03: How could we possibly find that that's a clear error? [00:39:31] Speaker 03: He made credibility determinations about who was reliable as to what happened at the meeting. [00:39:36] Speaker 03: Are you really asking us to reverse that? [00:39:39] Speaker 02: I'm asking you to find that the finding with regard to the 836 patent was a clear error, and that the district court [00:39:47] Speaker 02: when you reverse a finding with regard to clear error, needs to look at the whole evidence and that this court doesn't reweigh it. [00:39:53] Speaker 02: They send it back to the district court to look at the evidence as a whole and determine whether, given the correction of the clear error, the district court, not this court, would weigh the entirety under the rule of reason and come to a different conclusion or the same conclusion. [00:40:08] Speaker 04: What do you say about the juxtaposition [00:40:12] Speaker 04: Mr. Barati right after the meeting hours after the meeting of running off to Home Depot and making something that looks very much like Mr. Barati's prototype to I understand prototype to did in fact have a wire coil but it seems like Barati who is [00:40:35] Speaker 04: not an engineer like Ragnar went out and made something immediately after the meeting that very much looks like prototype two with an inter-elastic two cord. [00:40:47] Speaker 04: And isn't that enough of a circumstantial evidence to suggest that, yeah, Ragnar did in fact communicate to Variety the idea that you don't necessarily need a wire coil. [00:41:02] Speaker 04: You can just rely on an inter-elastic cord. [00:41:05] Speaker 04: I love prototype 2. [00:41:07] Speaker 02: Your Honor, that may be what the district court decides once it's first, once it reconsiders this issue without the finding of fact that it made. [00:41:17] Speaker 04: But we don't know. [00:41:18] Speaker 04: Well, he describes that right here in the opinion, doesn't he? [00:41:22] Speaker 02: Yes, no. [00:41:22] Speaker 02: I'm not disagreeing, Your Honor, that for the district court, that weighed on the side of corroboration. [00:41:27] Speaker 04: Right. [00:41:28] Speaker 04: I mean, this is at 87 to 88, where he said, this is so interesting that Mr. Verardi's first prototype [00:41:37] Speaker 04: didn't look like the ultimate claimed invention where you had an inner hollow two elastic tube, but it was the very inner elastic cord that was the same thing that Ragnar had in Ragnar's prototype two and the fact that this [00:41:54] Speaker 04: Berardi went and did that hours after the meeting suggests that, yeah, something got communicated about prototype 2 and about the need for, you know, you can do the biasing through an elastic cord. [00:42:07] Speaker 02: You're 100% right. [00:42:08] Speaker 02: That's what the district court said. [00:42:09] Speaker 04: So why can't we just say, well, you know, that's a pure fact finding. [00:42:14] Speaker 04: And it seems like the story fits together. [00:42:16] Speaker 04: And that's corroborating evidence. [00:42:19] Speaker 01: Because you're on it. [00:42:20] Speaker 01: And I'll just add that you pointed us fairly to page 87 and that one paragraph about the 836 being the be-all and end-all and virtually the most important or the only thing the district court relied on. [00:42:33] Speaker 01: But what you and Judge Chen have been talking about follows immediately under a further law. [00:42:39] Speaker 02: They are both important factors for the district court. [00:42:41] Speaker 02: And all I said about this one was it was the lead one. [00:42:44] Speaker 02: It's the first one he talks about. [00:42:46] Speaker 02: So the issue here is whether this court, having found the lead factor that he used to support his conclusion to be, if you do, clearly erroneous, whether this court would then reweigh for corroboration. [00:43:00] Speaker 02: Corroboration is a rule of reason analysis, where you look at the evidence as a whole. [00:43:04] Speaker 02: And we don't know whether the district court [00:43:06] Speaker 03: Looking at the evidence of as a whole Given that it made a clearly erroneous factual finding would come to the same conclusion and this court has said You suggested I think that we have no discretion if we find that lead Finding to be clearly erroneous that we must vacate in remand where have we said that that a single clearly erroneous fact finding would do that and [00:43:29] Speaker 02: So first of all, it's not any fact finding. [00:43:32] Speaker 02: It has to be a fact finding that is linked to the conclusion that's on appeal. [00:43:37] Speaker 02: So if the court had made some error in the background. [00:43:41] Speaker 02: So this one is specifically linked, and that's the last one. [00:43:45] Speaker 02: So what case would say we have to send it back upon finding that? [00:43:51] Speaker 02: I believe it's the case that says you don't reweigh. [00:43:53] Speaker 02: But let me see if I can find that case for you, Your Honor. [00:43:57] Speaker 02: From it cited in your brief? [00:43:59] Speaker 02: I believe it is, yes, Your Honor. [00:44:01] Speaker 01: All right. [00:44:02] Speaker 01: We have five minutes of our time. [00:44:04] Speaker 01: Thank both sides.