[00:00:02] Speaker 05:
I think we're ready to go.

[00:00:03] Speaker 05:
I call up Case 19-21-2015, Egenera versus Cisco system.

[00:00:12] Speaker 05:
Mr. Bagotel, whenever you're ready.

[00:00:16] Speaker 01:
Thank you, Chief Judge Broster.

[00:00:17] Speaker 01:
May it please the court?

[00:00:19] Speaker 01:
If I may, I'd like to start with the district court's ruling that judicial estoppel barred Egenera from evoking Section 256B to correct invadership.

[00:00:28] Speaker 01:
That ruling contradicted the plain language of Section 256B.

[00:00:32] Speaker 01:
It has no basis in precedent, and it should be reversed.

[00:00:36] Speaker 05:
Let me ask you.

[00:00:37] Speaker 05:
Your first... I'm interrupting you, please.

[00:00:39] Speaker 05:
This is Sharon Price.

[00:00:41] Speaker 05:
Your first line of attack is that judicial estoppel can never apply.

[00:00:47] Speaker 05:
Am I understanding that correctly?

[00:00:49] Speaker 01:
Not quite.

[00:00:52] Speaker 01:
I would say judicial estoppel can never invalidate a patent where it can be corrected.

[00:00:58] Speaker 01:
I can theoretically imagine some circumstances.

[00:01:01] Speaker 05:
Okay, well let me give you that theoretical circumstance, hypothetically.

[00:01:05] Speaker 05:
What if in this case that it had mattered when you got rid of the inventor during the IPR proceeding, what if getting rid of the inventor, as you did before the PTO, had a dispositive effect in terms of what prior art could be considered and had a dispositive effect

[00:01:27] Speaker 05:
on the proceeding.

[00:01:29] Speaker 05:
Would that not then be sufficient to establish judicial estoppel for the changing of the inventor in a subsequent proceeding?

[00:01:39] Speaker 01:
No, it would not, because the statute is clear.

[00:01:42] Speaker 01:
It says, the error of omitting inventors or naming persons who are non-inventors shall not invalidate the patent in which such error occurred if it can be corrected.

[00:01:52] Speaker 01:
You can't invalidate for misnaming inventors if you can correct instead.

[00:01:56] Speaker 01:
There's just no limit.

[00:01:57] Speaker 01:
There's no time limit, there's no limit to one correction, no exception.

[00:02:00] Speaker 05:
So if you had, if the reason the patent had survived during the claim, these claims had survived during our proceeding, was in fact precisely related to the removal of Schuller, Schuller?

[00:02:14] Speaker 05:
What's his name, what's the name?

[00:02:15] Speaker 05:
Schulter.

[00:02:16] Speaker 05:
Schulter, from the proceeding, then your view is, so you could

[00:02:22] Speaker 05:
get him removed for purposes of that proceeding in order to save the patent from prior art and then bring him back in this case to save the patent for other reasons?

[00:02:36] Speaker 01:
Well, there's one limitation that we haven't talked about, and of course that's inequitable conduct.

[00:02:41] Speaker 01:
If someone deliberately misrepresents something to the PTO, there is a remedy for that, and that's going to be inequitable conduct.

[00:02:49] Speaker 01:
The patent can be declared unenforceable.

[00:02:52] Speaker 01:
as long as you have made an error, that error can be corrected according to the plain language of the statute.

[00:03:02] Speaker 01:
You know, this court's called it a savings provision, and it's repeatedly held that correction is mandatory whenever it's feasible.

[00:03:08] Speaker 01:
Stark says that.

[00:03:09] Speaker 01:
Panou says that.

[00:03:10] Speaker 01:
Lendingtree says that.

[00:03:11] Speaker 01:
No case said otherwise.

[00:03:13] Speaker 02:
Mr. Bagatel, this is Judge Raina.

[00:03:15] Speaker 02:
So reading the statute, Quint, and she uses the word if, if the pen can be corrected.

[00:03:22] Speaker 02:
Give us an example of when it cannot be corrected.

[00:03:27] Speaker 01:
Well, there are a couple of examples where it cannot be corrected.

[00:03:32] Speaker 01:
It's basically when you can't or don't comply with the other requirements of Section 256B.

[00:03:39] Speaker 01:
In the old days, there was a requirement of without deceptive intention.

[00:03:43] Speaker 01:
That's gone after the AIA.

[00:03:44] Speaker 01:
Under the current statute, the court still has to be able to provide notice to and hear from all the parties concerned.

[00:03:50] Speaker 01:
lending tree actually dealt with an interesting circumstance where it might not have been possible.

[00:03:56] Speaker 01:
That was a case in which there had been a jury verdict, but the jury verdict didn't identify who the inventors were.

[00:04:03] Speaker 01:
That was something that the patent owner had waived.

[00:04:06] Speaker 01:
And the court remanded and said it might be impossible to correct in that circumstance because we don't know how to correct.

[00:04:13] Speaker 01:
That's not our case here.

[00:04:15] Speaker 01:
If Mr. Schulter

[00:04:16] Speaker 01:
is an inventor, then he's on, and if he's not an inventor, then he'll be off.

[00:04:26] Speaker 05:
I thought your argument was at least, alternatively at least, more limited in that here you didn't know, there was assumption that this was not a means of plus function claim, and it was sort of a changed circumstance here with the court and this proceeding

[00:04:44] Speaker 05:
suddenly saying this is means plus function, you need to look at the spec and find the structure to support that.

[00:04:50] Speaker 05:
And that's where the necessity of having this inventor involved grew.

[00:04:56] Speaker 05:
Is that a clear statement of the case?

[00:04:59] Speaker 01:
That goes to the first prong of judicial estoppel, which is whether there were inconsistent arguments.

[00:05:06] Speaker 01:
And our position is that we've always argued that Mr. Schulter

[00:05:10] Speaker 01:
Is not an inventor.

[00:05:11] Speaker 01:
We just argued that if the district court disagreed, then the remedy was correction rather than invalidation.

[00:05:16] Speaker 01:
That was a conditional argument in the alternative and in connection with that.

[00:05:19] Speaker 01:
We pointed out that we weren't arguing inconsistent facts.

[00:05:24] Speaker 01:
We were arguing inventorship and that's a legal conclusion based on claim construction, which is itself a legal conclusion and that construction.

[00:05:32] Speaker 01:
changed midway, because no one had ever suggested that this term, logic to modify, was a means plus function construction.

[00:05:41] Speaker 01:
That was an intervening circumstance, and that's a classic justification for a change in position.

[00:05:47] Speaker 01:
But that goes to the first part.

[00:05:48] Speaker 05:
This is whether or not he was an inventor, a fact, which either he is or he is not.

[00:05:56] Speaker 05:
And in one case, I think Mr. Rosenkrantz told us,

[00:05:59] Speaker 05:
In one case you say he is not an inventor, and in another case you say that he is.

[00:06:05] Speaker 05:
How could those two positions not be mutually exclusive, as we understand mutually exclusive?

[00:06:11] Speaker 01:
Well, because inventorship is a legal conclusion that depends on underlying facts and underlying legal issues, including claim construction.

[00:06:23] Speaker 01:
A general determined that Mr. Schulter was not an inventor based on

[00:06:27] Speaker 01:
a plain language construction, which was all that had been asserted to that point.

[00:06:31] Speaker 01:
Cisco had never asserted any kind of means plus function construction.

[00:06:35] Speaker 01:
This whole idea of the VLAN proxy, it just hadn't come up.

[00:06:39] Speaker 01:
It's really a mixed question of law.

[00:06:44] Speaker 01:
It's not a fact.

[00:06:45] Speaker 01:
It is a legal conclusion.

[00:06:48] Speaker 01:
In the Supreme Court cases disability disability is ultimately a conclusion And then you depend it depends on some underlying facts like could you raise your arm over your head this morning?

[00:06:59] Speaker 01:
That what whether you could raise your arm over your head this morning is a fact Inventorship is a legal conclusion that depends on both historical facts and on claim construction in fact claim constructions it defines the scope of the invention that's how

[00:07:14] Speaker 01:
That's why you need to know the claim construction in order to determine whether somebody has substantially contributed to that invention.

[00:07:24] Speaker 02:
This is Judge Raina.

[00:07:26] Speaker 02:
I want to make sure I heard you correctly.

[00:07:28] Speaker 02:
Are you abandoning what I thought was your preliminary argument that Section 256B actions can never be subject to judicial estoppel?

[00:07:38] Speaker 01:
No, all I was trying to get to, my argument is that you cannot use Section 256B to invalidate a patent.

[00:07:47] Speaker 02:
I mean, that is when you, that's your preliminary argument.

[00:07:50] Speaker 01:
Yes, I'm only making a theoretical point that if you had a situation, we have said in our brief, for example, that other equitable doctrines can limit correction of inventorship as long as it's short of...

[00:08:06] Speaker 02:
Just for our purposes and understanding what your position is so that we can deal with it appropriately, you're no longer advancing an argument that section 256B actions can never be subject to judicial estoppel.

[00:08:20] Speaker 01:
If I may explain, the answer is almost never.

[00:08:24] Speaker 01:
And it would be an extremely rare circumstance in which judicial estoppel would not result in invalidation.

[00:08:32] Speaker 01:
And let me just give the example.

[00:08:34] Speaker 01:
It may be far-fetched, but let's say that a person who's not named on a patent is in a divorce proceeding.

[00:08:42] Speaker 01:
And in that divorce proceeding, he says, I was not an inventor on this patent.

[00:08:49] Speaker 01:
It's not part of the marital estate.

[00:08:50] Speaker 01:
I have no interest in this patent.

[00:08:52] Speaker 01:
And then he comes back years later and tries to file a correction of inventorship claim.

[00:08:58] Speaker 01:
He could be judicially stopped, but that would not be a problem under the first sentence of Section 356B.

[00:09:04] Speaker 02:
I understand where you're headed.

[00:09:06] Speaker 02:
I just wanted to clarify the word never.

[00:09:09] Speaker 02:
I mean, you argue that it can never be subject to judicial estoppel.

[00:09:14] Speaker 02:
Now you're saying, well, it can be.

[00:09:16] Speaker 02:
It never can, except for certain circumstances.

[00:09:19] Speaker 01:
No, no, no.

[00:09:20] Speaker 01:
I want to be very clear.

[00:09:22] Speaker 01:
It can never result in invalidation when you can correct.

[00:09:26] Speaker 01:
We are arguing the plain language of 256B.

[00:09:29] Speaker 01:
You cannot invalidate if you can correct.

[00:09:35] Speaker 01:
If you're not trying to invalidate the patent, then that sentence is not triggered.

[00:09:41] Speaker 05:
Let me piggyback on what Judge Raina, I think, is trying to clarify here.

[00:09:45] Speaker 05:
My understanding, tell me if I'm incorrect, yes, that is what your lead argument is.

[00:09:51] Speaker 05:
However, your alternative argument is even assuming judicial estoppel were to be applied, it is not applicable to the circumstances of this case.

[00:10:05] Speaker 02:
Correct.

[00:10:06] Speaker 05:
So you do have an alternative or a fallback position in that regard, right?

[00:10:12] Speaker 01:
We certainly do.

[00:10:13] Speaker 01:
We think you should decide this case based on the plain language of the first sentence of Section 256B.

[00:10:21] Speaker 01:
and that is you can't invalidate because you can correct in these circumstances.

[00:10:26] Speaker 01:
If you disagree and say that judicial estoppel could potentially overcome section 256B, we argue that the district court legally erred and abused its discretion more generally in applying judicial estoppel on these facts.

[00:10:45] Speaker 05:
Okay, let me go back.

[00:10:46] Speaker 01:
And we have made arguments under all three factors

[00:10:48] Speaker 01:
of the New Hampshire versus Maine test in that regard.

[00:10:52] Speaker 01:
But you don't reach those issues if you agree with us about the statutory language.

[00:11:00] Speaker 05:
Can I just ask you another hypothetical?

[00:11:02] Speaker 05:
Assuming we are applying the factors of judicial estoppel and the one we talked about a little bit earlier about how it was almost an unforeseen or intervening event to change the claim construction and get you into means plus function land.

[00:11:19] Speaker 05:
Would that apply if, you know, we all know that in the, at least in the old days, the AIA used a broadest reasonable interpretation and we all knew that Mr. Quartz did not.

[00:11:33] Speaker 05:
Would that not, that would be a different circumstance, would it not, than a means plus function, which you really had arguably no basis for knowing was going to end up being the interpretation.

[00:11:45] Speaker 05:
In other words, people know at the get-go that there are two different standards, the BRI and regular claim construction standards.

[00:11:54] Speaker 05:
Do you understand my question?

[00:11:56] Speaker 01:
Not entirely.

[00:11:57] Speaker 01:
I agree that there could be a broader interpretation and a narrower interpretation.

[00:12:01] Speaker 05:
So can there be a mentorship based on the difference between when you earn BRI land in one place and then you get to change it back again when you're not BRI land?

[00:12:12] Speaker 05:
That would be different than your case.

[00:12:14] Speaker 05:
We had no reason to necessarily anticipate that a means plus function analysis was going to be applied.

[00:12:23] Speaker 01:
That's true, absolutely.

[00:12:24] Speaker 01:
There could be cases in which the BRI would make a difference.

[00:12:31] Speaker 01:
This was a situation where the PTO is supposed to apply 112, that's in Ray Donaldson, an en banc case of this court from 1994 or so.

[00:12:43] Speaker 01:
relied on that.

[00:12:45] Speaker 01:
The only thing we have said about the BRI standards is maybe that explains why Cisco didn't ask for a means plus function construction.

[00:12:53] Speaker 01:
Our only point is that our construction, the plain language construction was certainly reasonable based on everything that had been argued or presented to that date, either in the district court or in the PTAB.

[00:13:10] Speaker 05:
What's left of this case if we were to not apply judicial estoppel here in concluding that the district court abused this question, forget on what basis, goes back?

[00:13:23] Speaker 05:
You haven't done the infringement portion yet on this, right?

[00:13:28] Speaker 01:
That's correct.

[00:13:30] Speaker 01:
Neither infringement or validity of a prior art or inequitable conduct for that matter.

[00:13:36] Speaker 01:
That's right, inequitable conduct.

[00:13:38] Speaker 01:
Yes, left two.

[00:13:39] Speaker 01:
Everything.

[00:13:39] Speaker 01:
I mean, basically, this case was short-circuited as a result of this late rising inventorship issue.

[00:13:48] Speaker 01:
And frankly, it's been somewhat of a windfall.

[00:13:51] Speaker 01:
I mean, what happened in this case was the district court invalidated the entire patent because one inventor who worked for a genera, the same company, contributed to one limitation that appeared in just half of the claims.

[00:14:03] Speaker 01:
That's a pretty stunning result, especially in light of the statute that says you shall un-invalidate when it's correctable.

[00:14:13] Speaker 01:
I think I heard the bell go off, so perhaps I can reserve the rest of my time for rebuttal.

[00:14:18] Speaker 01:
Thank you very much.

[00:14:19] Speaker 05:
We'll hear from Mr. Rosencrantz and reserve your rebuttal.

[00:14:25] Speaker 00:
Thank you, Your Honor.

[00:14:26] Speaker 00:
May it please the court, Josh Rosencrantz representing Cisco.

[00:14:31] Speaker 00:
Your Honor, this case has nothing to do with an innocent inventor who makes a mistaken call on a close and complex issue of inventorship based upon a specific claim construction.

[00:14:44] Speaker 00:
Just look at the findings that the district court made, and I'll cite three or four.

[00:14:49] Speaker 00:
First, at 83 at the top, the court said it, quote, does not credit Schulter's and the other inventor's post hoc protestations on inventorship.

[00:15:01] Speaker 00:
63, note 3, the court said, quote, the court finds unconvincing Schulter's disavowal.

[00:15:10] Speaker 00:
Page 34, note 7, it said this was, quote, unlikely to qualify as a, quote, unintentional deviation from the truth, which means that it was likely to be an intentional untruth.

[00:15:26] Speaker 02:
Then two more, 83.

[00:15:27] Speaker 02:
Mr. Rosenkranz, this is Judge Raina.

[00:15:31] Speaker 02:
Just a quick question.

[00:15:32] Speaker 02:
What's the prejudice here?

[00:15:35] Speaker 02:
How does Cisco harm by this?

[00:15:39] Speaker 00:
Well, Your Honor, the first I would say that unfair advantage under First Circuit law is not a requirement, although it's very powerful.

[00:15:49] Speaker 00:
But the prejudice here is that there's no dispute that the whole point of disavowing soldiers' inventorship

[00:15:57] Speaker 00:
was to claim an earlier priority date for litigation advantage.

[00:16:01] Speaker 00:
Taking Schulter off the patent stripped Cisco of a powerful argument that a genera could not swear behind the prior art.

[00:16:10] Speaker 02:
And worse... Yes, I'm aware that we have inconsistent positions.

[00:16:16] Speaker 02:
But where's the prejudice to you?

[00:16:19] Speaker 00:
Well, that's what I'm saying.

[00:16:20] Speaker 02:
Where's the unfair advantage to you?

[00:16:23] Speaker 00:
The unfair advantage to us was twofold.

[00:16:27] Speaker 00:
that when a genera did this, it took away a powerful argument that we had before both the district court and the PTAP about swearing behind.

[00:16:41] Speaker 00:
And worse, by persuading the PTO to remove Schulter from the patent, a genera secured a judicial presumption that Schulter's omission was valid.

[00:16:52] Speaker 00:
And let me just emphasize

[00:16:53] Speaker 04:
But no practical effect.

[00:16:57] Speaker 04:
But it had no practical effect on you.

[00:16:59] Speaker 05:
I mean, hypothetically, it could have led to that, but the PCO never even instituted on the IPR.

[00:17:06] Speaker 00:
Well, so Your Honor, it had no practical effect before the district court because they got caught in the first circuit.

[00:17:16] Speaker 00:
has been very powerful.

[00:17:17] Speaker 05:
No, but what was the practical effect of removing the inventor in connection with the IPR proceed?

[00:17:25] Speaker 00:
There turned out to have been no effect.

[00:17:29] Speaker 00:
But unfair advantage is about seeking an unfair advantage, not about securing one.

[00:17:36] Speaker 00:
In any judicial estoppel case, it will always be the case that the patentee got caught

[00:17:42] Speaker 00:
If he had not been caught here, if the patentee had not been caught here, they would have had a powerful argument in the district court about inventorship and swearing behind.

[00:17:53] Speaker 03:
What about the fact that the party must have succeeded in persuading a court to accept the earlier position?

[00:18:03] Speaker 03:
How can that possibly apply here, where the PTO never accepted the position on inventorship?

[00:18:14] Speaker 00:
Your Honor, I disagree.

[00:18:16] Speaker 00:
A genera does not dispute that the PTO accepted its prior position on who the inventor was.

[00:18:23] Speaker 00:
The commissioner of patents changed the inventorship.

[00:18:25] Speaker 03:
What I mean is, there was no, I'm going to the same point that Chief Judge Crouse made, but under a different factor, which is that the PTO did not rely on the inventorship in its determination of swearing behind.

[00:18:40] Speaker 03:
Instead, it assumes that the patent owner was unable to swear behind.

[00:18:45] Speaker 03:
and made a determination that the priority didn't disclose the claim elements.

[00:18:51] Speaker 00:
Yes, Your Honor.

[00:18:51] Speaker 00:
I understand the point, Judge Stoll.

[00:18:54] Speaker 00:
And the answer is that the two positions that we or that trigger judicial estoppel was the first use of 256A before the Commissioner of Patents to change inventorship, and then the second use before the district court.

[00:19:11] Speaker 00:
Those were the inconsistent positions, and the PTO accepted the inventorship position.

[00:19:20] Speaker 00:
And I was talking earlier about the findings that the district court made, and I just want to mention that there were two more.

[00:19:29] Speaker 00:
The court called out the, quote, inventor's historical revisionism.

[00:19:35] Speaker 00:
for litigation advantage, that's the page 83, and the second one, the next one is also at 83, and I quote, Smith felt unease over whether what they were doing was right.

[00:19:48] Speaker 00:
Now the questions that the court is getting at go to the various factors, but let's bear in mind that the various factors are all about giving the district court discretion to

[00:20:01] Speaker 00:
figure out whether a party is playing fast and loose with multiple decision makers.

[00:20:06] Speaker 00:
And the district court was uniquely situated to watch a generous positions play out simultaneously before the court, the commissioner of patents, and the PTAB, and then decide whether they were inconsistent in a way that implicated the integrity of the decisions of those three tribunals.

[00:20:29] Speaker 00:
This case was filed in 2016.

[00:20:32] Speaker 00:
A general went to the PTO in 2017 while the case was pending in the district court.

[00:20:39] Speaker 00:
It was all happening while claim construction briefing was underway.

[00:20:44] Speaker 00:
The court heard multiple inventors try to explain why that was a reasonable position and said that it, quote, could not credit their account.

[00:20:54] Speaker 00:
The court in Cisco conducted a whole marketing hearing

[00:20:57] Speaker 00:
without either one of them having any idea that inventorship had already changed.

[00:21:03] Speaker 00:
The court was perfectly justified in saying, in essence, I gave you the opportunity to justify your previous position.

[00:21:10] Speaker 00:
I'm not now going to let you end by asking me to undo the relief that you secured from the PTO.

[00:21:19] Speaker 00:
Under First Circuit law, this court cannot reverse unless it is, quote, left with a definite and firm conviction

[00:21:27] Speaker 00:
that the court below committed a clear error of judgment.

[00:21:31] Speaker 02:
And as Chief Judge Williams pointed out... What about the consideration then, going on to your argument that you're making right now, the Supreme Court in New Hampshire that explained with respect to judicial estoppel that the question is whether a party is seeking to assert an inconsistency that would derive a non-fair advantage or impose a non-fair detriment

[00:21:55] Speaker 02:
You still haven't answered my question.

[00:21:57] Speaker 02:
What's the unfair advantage or the unfair detriment to you?

[00:22:00] Speaker 02:
You got the patents invalidated.

[00:22:03] Speaker 02:
What happened in this case that's unfair?

[00:22:06] Speaker 00:
Well, Your Honor, we got the patents invalidated because of the application of judicial estoppel.

[00:22:12] Speaker 00:
And so you take that out, and we're proceeding with a litigation in which the parties... I think that's what we're looking at as to whether that

[00:22:22] Speaker 02:
that application, the judicial estoppel, was correct or not.

[00:22:25] Speaker 02:
And one of the elements in that question, in deciding that question, is whether a party, the party that's seeking to assert an inconsistent position derives some sort of unfair advantage or it's imposed on you, Cisco, an unfair detriment.

[00:22:42] Speaker 02:
And still, in my mind, having shown that.

[00:22:47] Speaker 00:
Your Honor,

[00:22:48] Speaker 00:
So two answers to that.

[00:22:51] Speaker 00:
First, under First Circuit law, and I'm citing alternative system concepts, and I quote, while it is not a formal element of a claim of judicial estoppel, courts frequently consider that third factor, which is unfair advantage.

[00:23:09] Speaker 00:
And second, First Circuit law is clear that same exact case says

[00:23:14] Speaker 00:
that what triggers judicial estoppel is seeking an unfair advantage, not securing one.

[00:23:23] Speaker 00:
And multiple cases from the First Circuit underscore that.

[00:23:28] Speaker 00:
Again, alternative concepts.

[00:23:30] Speaker 00:
The court says, and I quote, in a prototypical case, judicial estoppel applies when, quote, a party has adopted one position, secured a favorable position, and then taken a contradictory position.

[00:23:44] Speaker 00:
in search of legal advantage.

[00:23:47] Speaker 00:
And then Guay, also in the First Circuit, estoppel applies even though after, quote, the defendants raised the issue of judicial estoppel for the first time.

[00:23:59] Speaker 00:
The plaintiffs, quote, filed in the bankruptcy court a report of unpaid Chapter 11 obligations in which they identified their claims.

[00:24:08] Speaker 00:
In other words, they corrected the unfair advantage.

[00:24:12] Speaker 00:
Securing an unfair advantage is really just circular because the party will never secure the unfair advantage once they are caught and judicial estoppel applies.

[00:24:25] Speaker 05:
Mr. Rosenkrantz, before your time runs out, could I ask you to just briefly address what is Mr. Bagatell's main point, which is judicial estoppel does not apply at all.

[00:24:38] Speaker 05:
in the, or apply, does not apply at all in these circumstances.

[00:24:42] Speaker 05:
And you make an argument in your brief about the strong common law background.

[00:24:47] Speaker 05:
So you want to address that?

[00:24:49] Speaker 00:
Yes, of course, Your Honor.

[00:24:50] Speaker 00:
Let me just, I'll pick up on Chief Judge Prost's hypothetical.

[00:24:54] Speaker 00:
If a general were right about how 256 works, then the statute would override every rule governing litigation, no matter how egregious a party's gamesmanship is.

[00:25:06] Speaker 00:
A genera admits that 256 is not definitive because they say there's always equitable estoppel.

[00:25:13] Speaker 00:
The statute doesn't distinguish between equitable estoppel and judicial estoppel.

[00:25:20] Speaker 00:
Under a genera's view, a patentee could override equitable estoppel, unclean hands, latches, race judicata,

[00:25:29] Speaker 00:
and all the other common law doctrines as long as what they're trying to do is save a patent.

[00:25:36] Speaker 00:
But since a genera admits that 256 is not an all or nothing proposition, it can't possibly claim that judicial estoppel is some particular exception to the long list of common law doctrines against which 256 was adopted.

[00:25:54] Speaker 00:
This court has repeatedly held that petitions or motions under 256 are subject to both equitable estoppel and lashes.

[00:26:04] Speaker 00:
And if anything, this court has rejected a generous one-way ratchet in Stark 1.

[00:26:10] Speaker 00:
And again, by the way, in the Lendingtree case that a generous cites.

[00:26:18] Speaker 00:
I do want to address

[00:26:20] Speaker 00:
One point that was made about the inconsistent positions, and Chief Judge Prost pointed this out, the inconsistency, as I was saying earlier, is in the two opposite uses of Section 256.

[00:26:36] Speaker 00:
A genera first sought to remove Schulter and then tried to use the same statute to add him back.

[00:26:44] Speaker 00:
And again, the district court was the one that was best situated

[00:26:49] Speaker 00:
on an abusive discretion standard.

[00:26:53] Speaker 00:
She would address all of the questions that this court has asked about the acceptance of the prior position, about the inconsistency, about the unfairness.

[00:27:03] Speaker 05:
Yes, but there was a dispute.

[00:27:04] Speaker 05:
The means of function issue only arose in connection with the district court adjudication.

[00:27:11] Speaker 05:
And there's a presumption in our case law, if you don't use the word means, I know Williams tinkered with that a bit.

[00:27:18] Speaker 05:
There's no means plus function.

[00:27:21] Speaker 05:
It's a legal question.

[00:27:22] Speaker 05:
Claims instruction is a legal question.

[00:27:25] Speaker 05:
Why is Mr. Bagatell not correct that this was an unforeseen circumstance?

[00:27:31] Speaker 05:
There was no bad faith.

[00:27:33] Speaker 05:
It wasn't playing fast and loose.

[00:27:34] Speaker 05:
They didn't come to the district court advocating a means plus function position.

[00:27:39] Speaker 05:
But this is what the district court concluded.

[00:27:42] Speaker 05:
And, you know, it was not an easy call.

[00:27:45] Speaker 05:
He had a multi-day trial with respect to these issues.

[00:27:49] Speaker 05:
So why isn't that a circumstance which takes it out of a phrase you use as fast and loose kind of thing?

[00:27:59] Speaker 00:
Well, so the answer, Your Honor, is that if a genera had ever argued to the district court that the claim construction was an intervening change of circumstances, the court would have been well within its discretion to reject the argument for two reasons.

[00:28:14] Speaker 00:
First, if the claim construction order really had been a game changer,

[00:28:19] Speaker 00:
It would have changed the game.

[00:28:21] Speaker 00:
A general would have conceded Schulter's inventorship under that construction and asked the court then and there to change inventorship back.

[00:28:30] Speaker 00:
Instead, it continued to insist that Schulter's removal was proper.

[00:28:35] Speaker 00:
And second, the argument depends on a fiction that the inventors critically examined the claims

[00:28:41] Speaker 00:
and devised a reasonable approach based upon a particular claim construction, but the district court found exactly the opposite.

[00:28:49] Speaker 00:
These are fact findings.

[00:28:51] Speaker 00:
Manca, the CEO, did not say he relied on a particular claim construction.

[00:28:55] Speaker 00:
The rest of the inventors did not even review any relevant documents or, in some cases, did not even form a, quote, independent belief about inventorship when they followed their sworn statements.

[00:29:09] Speaker 00:
Claim construction cannot possibly have played a role in those uninformed filings.

[00:29:15] Speaker 00:
You can't override an equitable determination based on a hypothesis that it would have been reasonable to harbor a view that no one held, no one even claimed they held, and no one said that they ever cared about.

[00:29:29] Speaker 00:
If there are no further questions, let me just pause.

[00:29:35] Speaker 00:
I think that's right.

[00:29:37] Speaker 05:
No further questions.

[00:29:38] Speaker 05:
Thank you very much.

[00:29:39] Speaker 05:
We'll hear from Mr. Bagatow.

[00:29:41] Speaker 00:
Thank you.

[00:29:42] Speaker 00:
I thank the court for its attention.

[00:29:51] Speaker 05:
Mr. Bagatow?

[00:29:53] Speaker 01:
Yes.

[00:29:54] Speaker 01:
If I may, I'd like to respond to several of the points that Mr. Rosencrantz has made.

[00:29:59] Speaker 01:
First of all, he said that there was something

[00:30:02] Speaker 01:
improper about Egenera trying to swear behind and that we were seeking unfair advantage.

[00:30:07] Speaker 01:
The fact of the matter is Peter Schulter, even assuming he was the inventor, he invented before Grosner anyway.

[00:30:14] Speaker 01:
We've explained that at page six of our reply brief.

[00:30:18] Speaker 01:
There was no sort of illicit motive.

[00:30:22] Speaker 01:
Egenera had antedated Grosner no matter what.

[00:30:26] Speaker 01:
The next thing he relies on is the district court's findings.

[00:30:30] Speaker 01:
Basically, it comes down to one

[00:30:32] Speaker 01:
Paragraph at the end of the district court's decision on inventorship in which he says he's not crediting the General witnesses testimony and he uses the word historical revisionism Precipitated by an attempt to swear behind the art.

[00:30:49] Speaker 01:
I'm not exactly sure what he meant by historical revisionism But you know, that's what in a request to correct inventorship is you say you made a mistake in

[00:31:02] Speaker 01:
listing the inventors, and you're trying to change it.

[00:31:04] Speaker 01:
That's what the nature of 256 is.

[00:31:08] Speaker 01:
If he was making a factual finding about Schulter's contributions, we're stuck with that factual finding.

[00:31:14] Speaker 01:
But that just means that we were mistaken when we concluded that he wasn't an inventor.

[00:31:18] Speaker 01:
It doesn't mean we aren't entitled to correct the error.

[00:31:20] Speaker 01:
As to the investigation, he thought we should have been more fulsome before investigating before removing Mr. Schulter.

[00:31:29] Speaker 01:
Well, actually, Mr. Mankus spent a lot of time with other people at Egenerion Lawyers looking at this.

[00:31:35] Speaker 01:
And, you know, they determined that all of the steps that were included in the claims had been invented by September 30th.

[00:31:43] Speaker 01:
It didn't matter what Mr. Schulter had done after that because it appeared on September 30th.

[00:31:50] Speaker 01:
As far as the district court's findings, if Mr. Rosencrantz were correct, the district court would have found this case exceptional.

[00:31:59] Speaker 01:
It didn't.

[00:32:00] Speaker 01:
It denied Cisco's motion for attorney's fees.

[00:32:03] Speaker 01:
The district court did not find that, in general, it engaged in some sort of grand, horrible conspiracy to mislead everybody.

[00:32:10] Speaker 05:
That's just... And these allegations are still interwoven in the inequitable conduct, which has not been reached yet by the court, right?

[00:32:20] Speaker 01:
That's true.

[00:32:21] Speaker 01:
The district court could reach that issue on remand.

[00:32:25] Speaker 01:
There were summary judgment motions pending on a lot of issues, and the district court denied them without prejudice because it focused on this inventorship issue.

[00:32:32] Speaker 01:
And that's what they went to trial on in the space of four weeks over Christmas.

[00:32:36] Speaker 01:
We were told, here's a new trial you're going to be having on this one issue.

[00:32:40] Speaker 01:
And that's why we focused on the trial at that time period.

[00:32:45] Speaker 01:
Mr. Rosencrantz talks about equitable estoppel and latches.

[00:32:52] Speaker 01:
Equitable estoppel and latches.

[00:32:53] Speaker 01:
and judicial estoppel, all of those common law doctrines can be used to determine whether somebody who's seeking a correction of inventorship should be added.

[00:33:03] Speaker 01:
The only limitation we are arguing is that you cannot invalidate the patent in which the error occurred if it can be corrected as provided in section 256.

[00:33:13] Speaker 01:
That is where you have the inconsistency with the statute.

[00:33:17] Speaker 01:
Cisco has relied on Astoria versus Salamino, which actually held that administrative estoppel.

[00:33:23] Speaker 01:
could not apply in those circumstances, even though it was a common law doctrine, and that was well established.

[00:33:29] Speaker 01:
You look at the statute and see whether it implicitly or explicitly is inconsistent with the common law doctrine.

[00:33:35] Speaker 01:
Here, to the extent that judicial estoppel would result in invalidation, it cannot apply.

[00:33:42] Speaker 01:
If it's short of that, it can be an equitable limitation.

[00:33:46] Speaker 01:
There is no inconsistency with this court's equitable estoppel and latches cases.

[00:33:53] Speaker 01:
I think he was speaking about Mr. Manca and whether Mr. Manca relied on a claim construction.

[00:34:00] Speaker 01:
That's actually in his declaration at Appendix 237 and he relied on the plain language, just as Cisco did.

[00:34:08] Speaker 05:
I think we heard the bell.

[00:34:10] Speaker 05:
We thank both sides.

[00:34:12] Speaker 05:
We understand this is an unusual circumstance and we appreciate your cooperation and the case is submitted.

[00:34:18] Speaker 05:
Thank you.