[00:00:00] Speaker 04:
Okay, the next argued case this morning is number 21, 2244.

[00:00:06] Speaker 04:
Plastic Art Packaging Incorporated against Premium Waters Incorporated.

[00:00:12] Speaker 04:
Mr. Dillon, when you're ready.

[00:00:14] Speaker 00:
Good morning.

[00:00:15] Speaker 04:
Okay, Mr. Dillon, proceed.

[00:00:18] Speaker 00:
Good morning, and may it please the court.

[00:00:21] Speaker 00:
This case is before the court on a grant of summary judgment of invalidity for 12 patents.

[00:00:26] Speaker 00:
Those 12 patents are presumed to have correctly named the inventors named on the patents, Mr. Morgan and Mr. Dar.

[00:00:35] Speaker 00:
To overcome that presumption, the challenger needs to come forward with clear and convincing evidence that the inventorship is incorrect, and on summary judgment, that evidence needs to be undisputed.

[00:00:47] Speaker 00:
Here, the evidence regarding the co-inventorship defense was greatly disputed.

[00:00:54] Speaker 00:
And I'd like to focus on two aspects of that.

[00:00:57] Speaker 00:
The first is with regards to the independent evidence that was submitted by PlastaPak that the inventors independently created these inventions without any input from Mr. Falzoni.

[00:01:11] Speaker 00:
That evidence includes the depositions of Mr. Dahr and Mr. Morgan, where they identified themselves as the ones who conceived of these inventions in March and April of 2006.

[00:01:24] Speaker 00:
That evidence also includes their inventor notes that describe the invention and talk about how they came up with neck finishes as small as .25 inches, how they went through and designed an engineering drawing of .436 inches, and how that .580 number came from a measurement that Mr. Morgan made related to the consumer acceptability.

[00:01:45] Speaker 00:
That is substantial evidence that if a jury were to credit, as it should, and as the court was required to on summary judgment, would be a reasonable basis for the jury to conclude that inventorship was correct, that Mr. Falzoni was not a co-inventor, and that Premium Waters had not met its burden to establish with clear and convincing evidence that the inventorship on these patents was correct.

[00:02:07] Speaker 00:
The second category of evidence relates to their challenge.

[00:02:11] Speaker 00:
They allege that Mr. Falzoni, nine months before the conception of these inventions, provided a 3D file to Mr. Dahr.

[00:02:21] Speaker 00:
And that 3D file contained what they characterized as two inventions of Mr. Falzoni.

[00:02:27] Speaker 00:
One of the inventions was alleged to be a discontinuous tamper evident formation.

[00:02:31] Speaker 00:
The other was a neck finish with a height of 0.580 inches.

[00:02:36] Speaker 00:
Their allegation was that Mr. Dahr stole those inventions from Mr. Falzoni and used them nine months later in the work that he did with Mr. Morgan to come up with the inventions that are claimed in these 12 patents.

[00:02:51] Speaker 00:
The facts related to those two alleged inventions by Mr. Falzoni were heavily disputed in the summary judgment record.

[00:02:59] Speaker 02:
Let me ask you, right from the first page of the red brief,

[00:03:05] Speaker 02:
Premium Water says all 12 assertive patents depict one of DAR's drawings of Falzone's design, ML27 design, and refer to the drawing as an embodiment of the invention.

[00:03:19] Speaker 02:
Isn't that true and isn't that enough to be clear and convincing evidence that Mr. Falzone should have been listed as an inventor?

[00:03:26] Speaker 00:
Figure 6 is in each of the 12 patents, Your Honor.

[00:03:29] Speaker 00:
Figure 6 is Mr. Dahr's drawing that was based on work he did with Mr. Falzoni of an ML27 figure.

[00:03:39] Speaker 00:
It is not what is claimed in the patents.

[00:03:42] Speaker 02:
But the patents describe it as an embodiment of the invention of all 12 patents.

[00:03:49] Speaker 00:
Figure 6 is listed as an embodiment of the invention.

[00:03:52] Speaker 00:
But it is not a claimed embodiment in any of these patents.

[00:03:57] Speaker 00:
And what matters is the claims.

[00:03:59] Speaker 00:
What is included in there for, if you look at the description of figure 6, is that it is a depiction

[00:04:05] Speaker 00:
of the vented threading of a carbonated soft drink finish.

[00:04:12] Speaker 00:
That's what's referred to, is to show that the inventions that were invented by Mr. Dar and Mr. Morgan, they also viewed that it could work with a very well-known vented threading.

[00:04:24] Speaker 00:
They put as an illustration of that a drawing that Mr. Dar did himself.

[00:04:29] Speaker 00:
And although that drawing was done as part of the ML27 project, that drawing itself is not a claimed embodiment of any of- Why not?

[00:04:39] Speaker 03:
Why is it not?

[00:04:40] Speaker 03:
You keep saying that it's not even claimed embodiment.

[00:04:42] Speaker 03:
I want to hear why not.

[00:04:44] Speaker 00:
Because the claims in every one of these patents are directed to the dimensions of the neck finish.

[00:04:49] Speaker 00:
And Figure 6 does not have any dimensions.

[00:04:51] Speaker 00:
We know from the origin of Figure 6 that it is a figure that is 0.631 or 0.641 inches.

[00:04:57] Speaker 03:
According to Mr. Darer, Mr. Darer received the drawing

[00:05:02] Speaker 03:
For Mr. Falzoni, he made an embodiment, and it was 0.6.

[00:05:07] Speaker 03:
What did you say?

[00:05:08] Speaker 00:
He made three drawings, Your Honor.

[00:05:10] Speaker 00:
The first one was 0.591, which is taller than any claimed embodiment.

[00:05:15] Speaker 00:
OK.

[00:05:15] Speaker 00:
He then had to increase it because it didn't work, first to 0.631 and then to 0.641 inches.

[00:05:21] Speaker 00:
There was never a single embodiment of the ML27 finish worked on by Mr. Dahr and Mr. Falzoni.

[00:05:28] Speaker 00:
that ever practiced any of the claims in any of these 12 patents.

[00:05:32] Speaker 03:
Your view is that that at least raises a genuine issue of material.

[00:05:35] Speaker 00:
Yes, Your Honor.

[00:05:36] Speaker 03:
What about our case law that says that a person, to be an inventor, has to make a significant contribution.

[00:05:43] Speaker 03:
But it could be a building block that results in a claim limitation.

[00:05:48] Speaker 03:
It doesn't have to be a claim limitation itself.

[00:05:51] Speaker 03:
In other words, why isn't it

[00:05:53] Speaker 03:
Why isn't what Mr. Falzoni provided a building block, even if it doesn't necessarily have a measurement that falls within the claim limitation?

[00:06:03] Speaker 00:
for two reasons.

[00:06:05] Speaker 00:
One is because that was a separate project and we know what occurred in that project.

[00:06:10] Speaker 00:
The testimony is that that project only got taller.

[00:06:13] Speaker 00:
So it wasn't a building block to getting a smaller neck finish.

[00:06:16] Speaker 00:
It started with a neck finish that was taller than any claimed embodiment in any of the 12 patents and it continued to increase because it didn't work.

[00:06:24] Speaker 00:
And when they finished the project, it was at 0.641, well above the claim.

[00:06:29] Speaker 00:
So it was not a building block, at least as a dispute of fact.

[00:06:32] Speaker 00:
And the second thing is the evidence from the independent invention story by Dahr and Morgan is that the way they came up with their invention was through a completely different approach and a different drawing.

[00:06:44] Speaker 00:
It's the drawing that's depicted in figures one through five.

[00:06:47] Speaker 00:
It's a much smaller drawing, and it's not based on the ML-27 neck finish.

[00:06:52] Speaker 00:
That is a 0.436 inch drawing.

[00:06:56] Speaker 00:
That's what the patents were directed to.

[00:06:58] Speaker 00:
And so although it's possible that somebody could contribute towards something that's a building block to eventually get to the invention, that didn't occur here.

[00:07:06] Speaker 00:
That's not what Dahr and Morgan testified.

[00:07:08] Speaker 00:
They said they came up with this on their own.

[00:07:11] Speaker 00:
And that testimony on summary judgment has to be credited.

[00:07:14] Speaker 00:
It's possible a jury might disagree with them.

[00:07:16] Speaker 00:
But on summary judgment, Dahr and Morgan said, we worked on this alone.

[00:07:20] Speaker 00:
This is our invention.

[00:07:22] Speaker 00:
And for summary judgment purposes, that should be sufficient.

[00:07:25] Speaker 02:
My question may be essentially the same as Judge Stoll's, but the district court said at A-28, there's no doubt that the image, I think it's the 3D image, contributed significantly to the conception of a complete neck finish.

[00:07:41] Speaker 02:
The district court clearly said that.

[00:07:43] Speaker 02:
Isn't that enough to constitute clear and convincing evidence of inventorship?

[00:07:49] Speaker 00:
What the court found there was its acceptance of the Premia Waters evidence.

[00:07:56] Speaker 00:
But that doesn't take into consideration the evidence that Plastipak put into the record that refuted that.

[00:08:02] Speaker 00:
The court said it led to the conception of a complete neck finish.

[00:08:05] Speaker 00:
We don't dispute that.

[00:08:06] Speaker 00:
The complete neck finish was the 0.591 neck finish, the ML-27 neck finish, that Mr. Dahr made in June of 2005

[00:08:17] Speaker 00:
working with Mr. Falzoni.

[00:08:19] Speaker 00:
That wasn't complete neck finish, but not one that practices any of these claims.

[00:08:24] Speaker 00:
And that's the issue, is that the ML-27 was undoubtedly a separate project.

[00:08:28] Speaker 00:
There was collaboration between SOCME and Plastipac related to that particular neck finish.

[00:08:36] Speaker 00:
But that neck finish never resulted in anything that practiced even one of the asserted claims.

[00:08:43] Speaker 00:
There's a separate project.

[00:08:44] Speaker 00:
And if our evidence is believed, which it must be on summary judgment, Dar and Morgan came up with a separate neck finish.

[00:08:51] Speaker 00:
And that neck finish is the one that led to the claims that are in each of the 12 patents.

[00:08:57] Speaker 03:
What about the other claims, the claims that have a neck finish height of 0.5 or less, and the allegation that what Mr. Falzarni contributed was a discontinuous TEF?

[00:09:09] Speaker 00:
Your Honor, two aspects of that.

[00:09:10] Speaker 00:
One is their allegation in their brief, their summary judgment brief, was that Mr. Falzoni was the inventor of the discontinuous tamper evident formation.

[00:09:19] Speaker 00:
And the record proved that that wasn't so.

[00:09:22] Speaker 00:
We put in patents from 50 years ago showing that the discontinuous tamper evident formation was well known in the record.

[00:09:31] Speaker 00:
We also put in the examiner's record showing that it was found in the prior art.

[00:09:36] Speaker 00:
And we put in a patent from Mr. Dahr from seven years before this collaboration showing that Mr. Dahr also knew about DTEFS because it had it in his own patent.

[00:09:43] Speaker 00:
So this wasn't something he learned from Mr. Falzoni.

[00:09:46] Speaker 00:
Moreover, Mr. Falzoni at his deposition admitted that he did not contribute to claims of .50 or to 2.3 grams.

[00:09:56] Speaker 00:
So the claims, for example, if you looked at the 299 patent, the independent claim is a neck finish with a .50 neck finish weighing 2.3 grams.

[00:10:05] Speaker 00:
Mr. Falzone has said he didn't provide any information on that.

[00:10:08] Speaker 00:
The only allegation is, with regards to the 299 patent, is in dependent claim 6, it claims the net finish of claim 1 wherein the tamper evident formation is discontinuous.

[00:10:22] Speaker 00:
That's the only basis for their motion, is this discontinuous tamper evident formation for the 299 patent and four others that we note in our brief.

[00:10:30] Speaker 00:
And our issue here is that that wasn't a novel contribution.

[00:10:33] Speaker 00:
And this court's case law is very clear that with regards to an inventor cannot be an inventor by contributing the state of the art or what's known in the prior art.

[00:10:42] Speaker 00:
And here where DTAFs were known for 50 years and Mr. Dahr knew about it, that could not be a contribution to make him an inventor with regards to those vibe patents.

[00:10:51] Speaker 00:
The claims control.

[00:10:52] Speaker 00:
And here, the district court didn't look at the individual claims of these 12 patents to see what elements in there were contributed by Mr. Falzoni, even if we credited their testimony.

[00:11:03] Speaker 00:
With regards to the DTEF, the DTEF was not a novel invention.

[00:11:07] Speaker 00:
And with regards to those claims that were directed to the 0.580X dimension, those were highly disputed.

[00:11:15] Speaker 00:
And the record on that is that we had submitted an expert testimony showing that there was no X dimension of .580.

[00:11:22] Speaker 00:
And more critically, we submitted the drawing that Mr. Dahr made on the same day he received that file.

[00:11:28] Speaker 00:
He didn't understand that to be a .580 or less neck finish because he created that same day a neck finish that was taller, .591, than any claimed embodiment.

[00:11:39] Speaker 00:
And never in any of the work that he did with Mr. Falzone did he ever result in a neck finish that satisfied any of these claims.

[00:11:48] Speaker 00:
I see I'm well into my rebuttal time.

[00:11:50] Speaker 00:
If there are any questions, I'm happy to answer them.

[00:11:52] Speaker 00:
Otherwise, I will look forward to responding to the comments.

[00:11:57] Speaker 04:
To be sure I understand, is it clear that Mr. Falzone had his own patent or patent application on the specific structure that he disposed

[00:12:10] Speaker 00:
Yes, your honor.

[00:12:11] Speaker 00:
Yes, your honor.

[00:12:12] Speaker 00:
Mr. Falzoni filed his own patent claims related to the unique closure and the neck interlocking structure.

[00:12:19] Speaker 00:
And he has never made a claim to be an inventor of any of the PlastaPak patents.

[00:12:26] Speaker 04:
OK.

[00:12:28] Speaker 04:
Any more questions for counsel at the moment?

[00:12:30] Speaker 02:
No.

[00:12:31] Speaker 02:
No.

[00:12:31] Speaker 04:
All right.

[00:12:32] Speaker 04:
Let's hear it from the other side.

[00:12:35] Speaker 04:
Mr. Kostakos.

[00:12:37] Speaker 01:
Thank you, Your Honors.

[00:12:38] Speaker 01:
May it please the court.

[00:12:40] Speaker 01:
Although inventorship can be a highly factual inquiry, the material facts here

[00:12:44] Speaker 01:
are not in dispute.

[00:12:45] Speaker 01:
There's no dispute that Mr. Falzone sent the 3D model to Mr. Dar.

[00:12:51] Speaker 01:
There's no dispute that the email that went along with that 3D model, the June 13th email, said the model was of a neck finish.

[00:12:59] Speaker 01:
The email said it had a neck support ring, which everyone agrees is the same thing.

[00:13:03] Speaker 03:
Do you agree, though, that there is a dispute about the neck finish height of that file?

[00:13:09] Speaker 03:
I mean, there's evidence, of course, that Mr. Falzone, during the litigation, measured it, and got something below 0.58.

[00:13:20] Speaker 03:
But there's also evidence that, at the time that the file was exchanged, Mr. Dahr implemented it, and it was more than 0.58.

[00:13:29] Speaker 03:
So isn't that enough, at least, to create a genuine issue of material fact?

[00:13:34] Speaker 01:
I don't think so, Your Honor, because what happened was Mr. Falzoni sent a model which had a lower point for the neck support ring.

[00:13:42] Speaker 01:
And he specifically said the point below the neck support ring is left undefined.

[00:13:46] Speaker 03:
There is no neck support ring.

[00:13:49] Speaker 01:
Well, there is the top surface, and there's a side surface, and there's a point where that changes.

[00:13:53] Speaker 03:
He estimated where he thought it would be.

[00:13:54] Speaker 03:
But you agree, though, that there wasn't a neck support finish, right?

[00:13:58] Speaker 01:
Well, I mean, it has two of the three surfaces that a neck support ring would have.

[00:14:04] Speaker 01:
And the email specifically said there's a neck support ring.

[00:14:07] Speaker 01:
And he measured it during his deposition.

[00:14:09] Speaker 03:
I think during his deposition, he agreed that there wasn't a neck support ring.

[00:14:14] Speaker 01:
No, I don't think so.

[00:14:15] Speaker 01:
I think he said there was one.

[00:14:16] Speaker 01:
He said there was no lower surface of a neck support ring.

[00:14:20] Speaker 01:
And there's no dispute about that.

[00:14:21] Speaker 01:
We don't say there's a lower surface.

[00:14:23] Speaker 02:
He agreed on cross-examination that there was no lower point to the neck support, correct?

[00:14:31] Speaker 01:
Well, he said that his interpretation was it was where he measured it, the 14.304.

[00:14:36] Speaker 01:
That's where he said he thought the lower point of it was.

[00:14:41] Speaker 01:
A normal neck support ring is about a millimeter in thickness.

[00:14:45] Speaker 01:
And Mr. Brandow, their expert, said the very same thing in his expert report.

[00:14:51] Speaker 02:
But there's a dispute about where the bottom of that would have been and what the X measurement would be.

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

[00:15:01] Speaker 02:
Could we agree that any reasonable juror would have to find that the measurement that Mr. Falzoni did in his deposition is the only measurement possible here?

[00:15:13] Speaker 01:
Well, I think what he said was 14.304 is my interpretation.

[00:15:17] Speaker 01:
It could be slightly larger.

[00:15:19] Speaker 01:
But even accounting for it being larger, he said, it would still be under 0.58 because he said it could be 14.6 millimeters or 14.7 millimeters, both of which are under 0.58.

[00:15:31] Speaker 01:
I think the fact that Mr. Dahr later increased the size does not diminish the fact that Mr. Falzoni sent a model that had a lower neck support ring that was lower than 0.58.

[00:15:44] Speaker 01:
So the fact that Mr. Dar had one that he said, for his particular process, and Mr. Falzoni said, sometimes you need to make it thicker because of the process that you're using to blow mold these things.

[00:15:55] Speaker 01:
And so Mr. Dar made one that was larger.

[00:15:57] Speaker 01:
But that doesn't diminish, I don't think, the disclosure that Mr. Falzoni made to Mr. Dar.

[00:16:02] Speaker 02:
Well, but you don't have to think that.

[00:16:05] Speaker 02:
But why doesn't this go to a jury to weigh all the evidence and decide what they think?

[00:16:10] Speaker 01:
Well, because it's not as though someone submitted some disputed evidence saying, I interpret this 3D model differently than you do.

[00:16:17] Speaker 01:
There is no testimony from Mr. Dahr.

[00:16:20] Speaker 01:
All we have is a drawing that somebody did.

[00:16:22] Speaker 01:
We don't even really know if it was Mr. Dahr.

[00:16:24] Speaker 01:
It was sent by Mr. Dahr.

[00:16:25] Speaker 01:
Presumably somebody at Plastopac did a drawing.

[00:16:27] Speaker 02:
But that doesn't- On essentially the same day that they received the 3D model.

[00:16:31] Speaker 01:
On essentially the same day.

[00:16:32] Speaker 01:
But I don't think Mr. Dahr's or whoever's drawing could be interpreted to say, this is my interpretation of your 3D model.

[00:16:42] Speaker 01:
It was his changing of the neck support ring that was disclosed in the 3D model.

[00:16:48] Speaker 01:
So I just don't think it diminishes the disclosure that Mr. Falzone made to Mr. Dahr in that 3D model.

[00:17:00] Speaker 01:
They never put in any evidence whatsoever for Mr. Dahr.

[00:17:03] Speaker 01:
after the Sakmi evidence came out.

[00:17:05] Speaker 01:
They never put in a declaration saying, I didn't take anything from Sakmi.

[00:17:09] Speaker 01:
They didn't put a deposition in saying, I didn't take anything.

[00:17:11] Speaker 02:
What about the evidence of independent invention?

[00:17:16] Speaker 02:
That's in the record, isn't it?

[00:17:17] Speaker 01:
Well, there is testimony from Mr. Dar before the Sakmi evidence came out.

[00:17:22] Speaker 02:
It's in the record, right?

[00:17:24] Speaker 01:
It is in the record.

[00:17:25] Speaker 01:
There, he said, nobody had ever tried to make one smaller than what was then the prevailing size, which was 0.67.

[00:17:31] Speaker 01:
And I didn't know of anybody doing it in Europe.

[00:17:33] Speaker 01:
Well, it turns out that it's undisputed now that that testimony is not true.

[00:17:38] Speaker 03:
Right?

[00:17:39] Speaker 03:
OK, go ahead.

[00:17:40] Speaker 03:
Sorry.

[00:17:41] Speaker 02:
I mean, it's not true that nobody was doing it.

[00:17:44] Speaker 02:
But it's not undisputed.

[00:17:45] Speaker 02:
The credibility of everything Mr. Dahr said prior to you developing the SACME evidence, that is in dispute.

[00:17:53] Speaker 02:
You may say certain points of it are not in dispute, but they're not conceding that all of it was wrong, are they?

[00:18:00] Speaker 01:
Not everything that Mr. Dahr said before Sakmi came to light is wrong, surely.

[00:18:05] Speaker 01:
But his whole story about how he came up with this in January of 2006 without having known about anyone ever trying to make anything smaller, that is clearly wrong.

[00:18:16] Speaker 01:
Because we know from the record that he and Sakmi were working on this project starting in June of 2005, going all the way through March of 2006 during the supposed time

[00:18:28] Speaker 01:
when they were coming up with their invention was one the time when they were trying to work out an exclusive deal for the ML-27.

[00:18:34] Speaker 02:
Do you agree that in this posture, the district court was required to draw all reasonable inferences in favor of Plastipak?

[00:18:42] Speaker 01:
Of course.

[00:18:42] Speaker 01:
Yeah, that's what the case law says.

[00:18:44] Speaker 01:
I don't disagree with that.

[00:18:45] Speaker 02:
Can you identify even a single inference that the judge drew in favor of Plastipak?

[00:18:51] Speaker 01:
Well, I think what the court's conclusion, I think, was

[00:18:56] Speaker 01:
that PlastaPak did not submit any evidence in response to the SACME allegations.

[00:19:02] Speaker 01:
So they didn't put anything in disputing the interpretation of the 3D model, nothing from their inventor, nothing from their expert.

[00:19:09] Speaker 01:
All they have is this drawing from Dick Dahr, which is not, I don't think, an interpretation of the 3D model.

[00:19:17] Speaker 01:
It's just his own version of a neck support ring.

[00:19:21] Speaker 01:
There's no one who came in and said, you know, I look at this 3D model and I interpret it differently.

[00:19:26] Speaker 01:
That evidence is not in the record.

[00:19:28] Speaker 01:
It's completely one-sided.

[00:19:29] Speaker 01:
It's all

[00:19:31] Speaker 01:
on our side and Mr. Falzone's testimony about what the 3D model discloses.

[00:19:36] Speaker 01:
There's no competing interpretation of that.

[00:19:39] Speaker 01:
So I don't think that there was an inference that the district court didn't draw.

[00:19:43] Speaker 01:
I think he was looking at the evidence that Plastipak submitted, which was basically, they say it's all disputed, but all they really did is say, we disputed.

[00:19:52] Speaker 03:
What about the testimony where, again, going back to this, this is the Falzoni deposition testimony, where he says, we cannot say that there was an unmistakable, that that was mistakenly surface height, or something like that.

[00:20:06] Speaker 01:
Sorry to get that last word.

[00:20:07] Speaker 03:
The quote where he says, we cannot say that there was the unmistakably surface height, in response to the questions about where the next finish would end.

[00:20:19] Speaker 01:
Well, yeah, what he said was, my measurement is 14.304.

[00:20:27] Speaker 01:
But if it has a slightly larger radius, it could be 14.6 or 14.7.

[00:20:32] Speaker 01:
That's what he said, all of which would be under 0.58.

[00:20:35] Speaker 01:
There was no dispute about that whatsoever.

[00:20:38] Speaker 01:
No one put in anything saying, I interpret this model differently.

[00:20:42] Speaker 01:
So all we have is Falzoni's testimony, all of which says it's under 0.58.

[00:20:49] Speaker 01:
We also have the, I'm sorry, Your Honor.

[00:20:54] Speaker 04:
I was just clearing my throat.

[00:20:56] Speaker 04:
I didn't want to interrupt your sentence.

[00:20:58] Speaker 04:
But now that I have interrupted, let me ask you a hypothetical.

[00:21:03] Speaker 04:
Let's say that Dahr is just thumbing through the prior art.

[00:21:09] Speaker 04:
And it comes upon Falzani's patent application, which discloses and describes

[00:21:18] Speaker 04:
the particular structure.

[00:21:20] Speaker 04:
And so Dar thinks, oh, that's very interesting.

[00:21:24] Speaker 04:
That fits in with my larger design.

[00:21:28] Speaker 04:
And as one of his three components, he uses what he found in the prior art.

[00:21:36] Speaker 04:
Would that make the author of that prior art reference a joint inventor?

[00:21:44] Speaker 01:
I think the case law is pretty clear there needs to be some collaboration.

[00:21:47] Speaker 01:
between the parties for someone to be a joint inventor.

[00:21:51] Speaker 01:
But here we have that, of course.

[00:21:52] Speaker 04:
Well, so let's say that we're right.

[00:21:54] Speaker 04:
The next step, that is, that Dahr doesn't find this in the prior art.

[00:22:00] Speaker 04:
It comes in the mail, unsolicited, or even because the parties knew each other, but thinking about collaborating.

[00:22:11] Speaker 04:
At what stage, what is the transition

[00:22:16] Speaker 04:
between this unsolicited suggestion that is appreciated by Dahr.

[00:22:23] Speaker 04:
It's useful.

[00:22:25] Speaker 04:
And so he uses it as part of his larger invention, which includes other components.

[00:22:34] Speaker 04:
Where is the line at which the source of that information, which is, in a sense, prior art?

[00:22:44] Speaker 04:
Dahr doesn't say that he invented that step.

[00:22:47] Speaker 04:
We're not talking about whether Falzalli might have a case for infringement or whatever.

[00:22:53] Speaker 04:
That's not what we're talking about.

[00:22:55] Speaker 04:
We're talking about this multi-component claim that Dahr has written, which includes information that came unsolicited from outside, which may or may not

[00:23:15] Speaker 04:
have been previously published.

[00:23:18] Speaker 01:
OK, well, I want to distinguish, Your Honor, between the hypothetical and the real world.

[00:23:22] Speaker 01:
Because your hypothetical is an unsolicited thing in the mail, right?

[00:23:28] Speaker 01:
You've never heard of this guy before.

[00:23:30] Speaker 04:
Well, since something you found was in the pack, yes.

[00:23:34] Speaker 01:
Right, but that's not what happened here.

[00:23:35] Speaker 01:
I mean, here we have evidence that Sakmi and Plastapak were working together even before the ML-27 was sent to them.

[00:23:45] Speaker 01:
And the email, the June 13th email says, Mr. Scudelari asked me to send this to you.

[00:23:51] Speaker 01:
And then, not only that, they continued working with each other after that.

[00:23:55] Speaker 01:
So there was quite a bit of collaboration.

[00:23:57] Speaker 01:
So I don't think we need to, for this particular case, figure out where the dividing line is between unsolicited solicitation, unsolicited invention that you use or looking at something in the prior.

[00:24:09] Speaker 01:
That's not what happened here at all.

[00:24:10] Speaker 04:
And you mentioned the multi- That's a really, this is really quite a difficult question.

[00:24:15] Speaker 04:
Because nobody says that they were working together in order to develop what Falzone came up with.

[00:24:25] Speaker 04:
Is that right?

[00:24:26] Speaker 01:
Well, Falzone came up with his ML-27 first.

[00:24:30] Speaker 01:
That's right.

[00:24:31] Speaker 01:
And that's the model that he sent to Mr. Dahr was a model of his ML-27 neck finish.

[00:24:38] Speaker 01:
That's right.

[00:24:39] Speaker 01:
And then they continued to work together to try to commercialize that.

[00:24:42] Speaker 01:
And then that is what we believe Mr. Dahr filed as his patent application.

[00:24:48] Speaker 01:
It looks exactly the same.

[00:24:51] Speaker 04:
But he didn't file on the Falcone invention.

[00:24:53] Speaker 04:
He filed on a multi-component structure of which one component was what he had received from, let's accept one component, was what he received from Falcone.

[00:25:09] Speaker 01:
Well, I'm glad you said that.

[00:25:11] Speaker 04:
Falsoni better of the entire enlarged structure?

[00:25:17] Speaker 01:
Yeah, I'm glad you said multi-component, because the 3D model has every component, right?

[00:25:22] Speaker 01:
It has the threads.

[00:25:24] Speaker 01:
It has the tamper evident formation, a discontinuous tamper evident formation.

[00:25:28] Speaker 04:
And it has- It's just not a dispute.

[00:25:30] Speaker 04:
Yeah, well, so- That's priori.

[00:25:32] Speaker 04:
But those, the discontinuous threads and so on, they're in the priori.

[00:25:37] Speaker 04:
In a sense, what Falsoni produced

[00:25:40] Speaker 04:
was also prior art, in that it came from outside, that these inventors didn't create it.

[00:25:49] Speaker 04:
But they used it as they used the prior art.

[00:25:54] Speaker 04:
Let's accept that.

[00:25:56] Speaker 04:
Does that make the source of prior art a joint inventor?

[00:26:01] Speaker 01:
Well, in this particular instance, it does, because they were working together.

[00:26:04] Speaker 01:
So it was joint.

[00:26:06] Speaker 01:
And I think that the submission that Mr. Falzoni made to Mr. Dahr had every element of the invention.

[00:26:14] Speaker 01:
It also looks exactly like what's in Figure 6, which has the discontinuous beads.

[00:26:21] Speaker 01:
And it has the means for showing tamper evidence, which is also in some of the claims.

[00:26:28] Speaker 01:
It is identical.

[00:26:29] Speaker 01:
What they did, they took the drawing from the 3D model, they put it in their own internal drawings, and the district court pointed out how those internal drawings said ML27 right on them.

[00:26:41] Speaker 01:
Then they took those internal drawings, they put them in the patent application, and that's what they claimed.

[00:26:47] Speaker 04:
And none of that is in dispute.

[00:26:50] Speaker 04:
When they made Dara a drawing inventor of the Valsante device, which is

[00:26:57] Speaker 04:
two of the three components?

[00:26:59] Speaker 01:
Well, we're not arguing that Dahr is a joint inventor of Falzoni's invention, but we are arguing.

[00:27:06] Speaker 04:
No, I'm looking at the theological consequence of what we're saying, where people who know each other, and we're discussing collaboration, and so on, where whatever information you receive unrestricted, no

[00:27:25] Speaker 04:
secrecy, no non-confidentiality probably already published is also part of the larger invention.

[00:27:36] Speaker 04:
It seems to me that the implications of such a ruling would be extraordinary in terms of people who collaborate in various areas.

[00:27:50] Speaker 01:
Well, here, remember, and I'm going over my time here, but they were working together before the June 13th email on other projects.

[00:27:58] Speaker 04:
They were discussing commercial collaboration.

[00:28:02] Speaker 04:
Is that right?

[00:28:03] Speaker 04:
They were working together as scientists, as engineers, to improve the product.

[00:28:12] Speaker 01:
Coming up with different designs, exactly.

[00:28:14] Speaker 01:
And there was some collaborative activity ahead of time.

[00:28:18] Speaker 01:
It wasn't as though this just came out of the blue.

[00:28:20] Speaker 01:
from Mr. Falzone, and he did say in his email, please keep it.

[00:28:24] Speaker 04:
There was nothing in the record, does I recall, about collaboration and the development of the technology, just talking about what do we do in the future?

[00:28:38] Speaker 04:
Is that right?

[00:28:39] Speaker 01:
Well, talk about developing them.

[00:28:41] Speaker 01:
Remember, there was another project called the TOTS project, which has a snap cap that didn't have threads.

[00:28:47] Speaker 01:
That was before the ML27.

[00:28:48] Speaker 01:
There was some discussion, I think, in the record of the ML27, that there was a discussion of the ML27.

[00:28:55] Speaker 01:
But the first time that PlastiPak actually saw the ML27 was when Mr. Falzoni sent that 3D model that had all the dimensions in it to Mr. Dahr.

[00:29:06] Speaker 03:
I have one question.

[00:29:08] Speaker 03:
You said several times that the ML-27 has every element in the claim.

[00:29:13] Speaker 03:
I think that's a bit of an overstatement, because it certainly doesn't have the support flange.

[00:29:17] Speaker 03:
I just want to make sure you agree with that, right?

[00:29:20] Speaker 01:
I don't agree with that, Your Honor.

[00:29:23] Speaker 01:
And here's why.

[00:29:25] Speaker 01:
There were two things that were sent at once.

[00:29:26] Speaker 01:
There was the email, and there was the 3D model.

[00:29:30] Speaker 01:
I agree with you, of course, that the 3D model only has the top surface and the side surface of the support ring.

[00:29:36] Speaker 01:
OK, that's true, and I'm not disputing that.

[00:29:38] Speaker 03:
Mr. Falzone left it up to Mr. Darrow to decide where to put the support surface, right?

[00:29:43] Speaker 01:
Well, what he said, and then his email.

[00:29:46] Speaker 01:
So his email, I think, is important.

[00:29:47] Speaker 01:
The email says it has a neck support ring.

[00:29:49] Speaker 01:
And then it says the portion under the neck support ring has been left undefined, so you can change it at your ease.

[00:29:56] Speaker 03:
But there wasn't a support ring shown in the figure, right?

[00:30:00] Speaker 01:
There were the two surfaces, and it has the corner, which is corner 32 is identified in the patent as the corner.

[00:30:06] Speaker 03:
So it's your view that undisputedly there's a support flange in the figure that was sent?

[00:30:12] Speaker 03:
Yes.

[00:30:12] Speaker 01:
And what it said was the part under the support ring is left undefined.

[00:30:15] Speaker 01:
Remember, what's under the support ring is the tube that is used to form the bottle.

[00:30:21] Speaker 01:
So you can change that however you want to make whatever, if you're going to make a 500 milliliter or a 20 ounce or whatever kind of size bottle you want to make.

[00:30:28] Speaker 01:
They said you can change the part under the support ring.

[00:30:31] Speaker 01:
It has both corners.

[00:30:32] Speaker 01:
And it has that point.

[00:30:33] Speaker 01:
If you look at figure five of the patent, there's a point 32, which is identified as the corner where the vertical surface of the support ring turns into the under surface.

[00:30:42] Speaker 01:
And I agree with you.

[00:30:43] Speaker 03:
Your adversary disagrees with you, right?

[00:30:45] Speaker 03:
And they've taken the position factually that what you're saying is not true.

[00:30:49] Speaker 03:
And I don't understand why that doesn't raise a genuine issue of material fact.

[00:30:53] Speaker 01:
Well, because it's just attorney argument.

[00:30:56] Speaker 01:
That's just attorney argument.

[00:30:58] Speaker 01:
The only evidence in the record is Mr. Falzoni's testimony and the 3D model.

[00:31:02] Speaker 01:
No, and also the figure itself.

[00:31:04] Speaker 01:
Of course, of course the 3D model.

[00:31:05] Speaker 01:
And like I said, we're not saying that it shows a lower support surface, a lower surface of the support flange, but it does have the corner.

[00:31:16] Speaker 02:
Can I just ask, on the discontinuous tamper evident formation, what is your position?

[00:31:23] Speaker 02:
Is it that Mr. Falzone is the inventor of it, or that it was the prior art?

[00:31:28] Speaker 02:
He was the inventor of it, yes.

[00:31:30] Speaker 02:
So what about these patents from 50 years ago that appear to show a discontinuous TEA?

[00:31:35] Speaker 01:
Yeah, so it's attorney argument, right?

[00:31:38] Speaker 01:
They didn't put in any evidence about that and what the context of those patents were.

[00:31:42] Speaker 01:
They just threw a bunch of patents in front of them.

[00:31:44] Speaker 01:
of the court and said.

[00:31:45] Speaker 01:
Patents are evidence, are they not?

[00:31:47] Speaker 01:
Patents are evidence, but they have to be admissible evidence.

[00:31:49] Speaker 01:
Would that have been sufficient to just put patents in front of a jury and say, that's an issue of fact or sufficient evidence on which a jury could have found?

[00:32:00] Speaker 03:
It wasn't in front of the jury, right?

[00:32:02] Speaker 01:
No, but.

[00:32:02] Speaker 03:
It was the judge to determine whether summary judgment was appropriate.

[00:32:05] Speaker 01:
Yes, but the question is, was it sufficient for a jury to have returned a verdict in their favor?

[00:32:09] Speaker 01:
And my point is, I don't think just putting patents in by itself, just like

[00:32:13] Speaker 01:
in an obviousness argument.

[00:32:14] Speaker 01:
You can't just put patents in and argue as an attorney.

[00:32:18] Speaker 02:
But in any event.

[00:32:19] Speaker 02:
Isn't it a genuine dispute of fact, I think a material fact, as to whether Mr. Felzoni is the inventor of a discontinuous TEF?

[00:32:28] Speaker 01:
But it's a discontinuous TEF in the context of the shorter neck ring.

[00:32:32] Speaker 01:
But isn't it a fact dispute?

[00:32:35] Speaker 01:
Well, I don't think the test isn't whether the discontinuous

[00:32:41] Speaker 01:
support ring, or excuse me, tamper evidence formation by itself is new.

[00:32:45] Speaker 01:
The question is, did Mr. Falzoni make a not insignificant contribution to those claims that include the tamper evidence?

[00:32:55] Speaker 02:
If it's been in the prior, or for 50 years, then that would go to at least a weighing of the evidence as to whether it's significant contribution or insignificant contribution, wouldn't it?

[00:33:09] Speaker 01:
Well, I don't think that there was any evidence that this particular type of, in this particular context, was in the prior.

[00:33:15] Speaker 02:
Wasn't there evidence that Mr. Falzone himself told some group, I didn't invent this, it's nothing novel?

[00:33:21] Speaker 01:
Well, that was hearsay.

[00:33:24] Speaker 01:
There's some hearsay documents that they put in.

[00:33:27] Speaker 01:
Was there an admissibility determination already?

[00:33:29] Speaker 01:
No, there was no determination by the district court on that point.

[00:33:33] Speaker 02:
But it is, at least, in the record, whether admissible or not.

[00:33:36] Speaker 01:
Yes, it is.

[00:33:36] Speaker 01:
He said something to that.

[00:33:37] Speaker 02:
Yes, of course, I agree with that.

[00:33:39] Speaker 01:
And the documents, they're a little bit mysterious, because right before that, he says, we filed our own patent application.

[00:33:46] Speaker 01:
So you can't use it.

[00:33:47] Speaker 01:
But then he says something to the statement that you're quoting.

[00:33:50] Speaker 01:
So that is in the record.

[00:33:52] Speaker 01:
We don't think it's admissible, because it's hearsay, as we pointed out.

[00:33:56] Speaker 01:
They didn't ask any questions about it.

[00:33:58] Speaker 01:
So the point is that the discontinuous

[00:34:03] Speaker 01:
tamper evident formation is something that was disclosed as part of the 3D model.

[00:34:09] Speaker 01:
The identical formation is something that they put in their patent.

[00:34:13] Speaker 01:
That figure 6 looks exactly like the 3D model.

[00:34:16] Speaker 02:
Is there a dispute now as to whether the figure 6 embodiment is within the scope of any of these claims?

[00:34:23] Speaker 01:
I don't think so.

[00:34:24] Speaker 01:
I can't think of any possible basis on which figure 6 would not be covered.

[00:34:31] Speaker 02:
Well, the argument seems to be figure 6 doesn't expressly show any dimensions.

[00:34:36] Speaker 02:
None of the figures show dimensions.

[00:34:37] Speaker 02:
So then how do we know if figure 6 is within the scope of the claims, those patents, at least, that have dimensions for the x dimension?

[00:34:46] Speaker 01:
It's the only figure that has a tamper evident formation.

[00:34:50] Speaker 01:
And tamper evident formation is there's no dispute that's claimed.

[00:34:54] Speaker 01:
So it is the only embodiment that has that.

[00:34:57] Speaker 01:
It says it's an embodiment of the invention.

[00:34:59] Speaker 01:
If you look at the specification of the patent, there's nothing to suggest that Figure 6 is not covered by the claims.

[00:35:07] Speaker 01:
The figures all just show different finishes.

[00:35:11] Speaker 01:
And then the discussion in the patent, the specification, just talks about dimensions.

[00:35:16] Speaker 01:
attach them to particular figures.

[00:35:20] Speaker 01:
And so there's nothing, there's no basis whatsoever, in my view at least, for finding that Figure 6 is not covered by some of the claims.

[00:35:30] Speaker 01:
Certainly it's covered, I think, by the discontinuous tamper evident formation claims.

[00:35:37] Speaker 01:
Can I make one final point on the discontinu- I'm sorry, I know I'm way over, and that is,

[00:35:41] Speaker 01:
There is the case law on means plus function elements.

[00:35:46] Speaker 01:
And the case law, I think, is pretty clear that the inventor of an embodiment that is the subject of a means plus function element is a joint inventor of those claims.

[00:35:56] Speaker 01:
And several of the claims call for means

[00:35:59] Speaker 01:
showing tamper evidence or words to that effect.

[00:36:02] Speaker 01:
There's no real dispute that the particular embodiment that is shown.

[00:36:06] Speaker 03:
Just to make sure, I don't remember that being something that was discussed by the district court or that was teased out at all for us to consider today.

[00:36:17] Speaker 01:
I don't think it was discussed at that level.

[00:36:18] Speaker 01:
He certainly talks about means plus function elements.

[00:36:20] Speaker 01:
I mean, he talks about some of the claims being means plus function elements.

[00:36:23] Speaker 01:
But he doesn't, I don't think, cite Ethicon and the other cases

[00:36:29] Speaker 01:
stand for that proposition.

[00:36:31] Speaker 01:
I agree with you.

[00:36:35] Speaker 03:
Okay, any more questions?

[00:36:37] Speaker 03:
No, thank you.

[00:36:38] Speaker 01:
No, thank you.

[00:36:39] Speaker 01:
Thank you.

[00:36:41] Speaker 04:
Thank you, Council.

[00:36:42] Speaker 04:
We'll hear a rebuttal for Mr. Dillon.

[00:36:45] Speaker 00:
I'd like to start by the question of whether there was evidence disputing their interpretation of the 3D file.

[00:36:51] Speaker 00:
And I would point the court to the expert report of Mr. Brandow, cited at pages 7752 of the appendix, as well as 7754, where Mr.

[00:37:04] Speaker 00:
Brandow, in looking at the file, says the 3D images do not show a neck finish with the support flange and thus do not have any gauge points that would correspond to an X dimension.

[00:37:14] Speaker 00:
Again, the X dimension is the one that's measured to the lower surface of the support flange.

[00:37:19] Speaker 00:
In addition to his expert report, he was deposed by Mr. Kostakis, and during his deposition at pages 947, he says,

[00:37:27] Speaker 00:
The IGS, which is a similar file to the 3D file that is before the court, does not have a support flange.

[00:37:35] Speaker 00:
It has a top of a support flange.

[00:37:37] Speaker 00:
Would you agree with that?

[00:37:38] Speaker 00:
That's the question for Mr. Kostakis.

[00:37:40] Speaker 00:
The expert says, no.

[00:37:42] Speaker 00:
OK, what would you call that structure?

[00:37:43] Speaker 00:
It is an undefined structure.

[00:37:46] Speaker 00:
He similarly says later in his deposition at page appendix 980,

[00:37:51] Speaker 00:
And so if we go and look at this drawing that we looked at before, will you agree that the part underneath the support ring has been left undefined?

[00:38:00] Speaker 00:
Answer, there is no support ring.

[00:38:02] Speaker 00:
Question, and explain what you mean by that.

[00:38:05] Speaker 00:
Answer, well, there's no support ring.

[00:38:07] Speaker 00:
There is at least a question of fact regarding the interpretation of that 3D file based on our expert's testimony, which was not cited or considered in the court's opinion.

[00:38:17] Speaker 00:
I would also point the court to the attention of Mr. Dahr's 0.591 drawing.

[00:38:22] Speaker 00:
Although he was not deposed with regards to the Sofmi stuff, and that deposition is not part of this record, his drawing that he made the same day he received the file is.

[00:38:32] Speaker 00:
And reasonable inferences can be drawn and must be drawn in summary judgment in favor of Plastopac.

[00:38:37] Speaker 00:
It doesn't diminish the disclosure.

[00:38:40] Speaker 00:
And the reason here is, for conception, what matters is how Mr. Dahr understood the file.

[00:38:46] Speaker 00:
What did he learn from looking at that file?

[00:38:49] Speaker 00:
It's possible that others would reach Mr. Kostakis's conclusion that it disclosed a neck finish below .580.

[00:38:55] Speaker 00:
Mr. Falzone certainly testified that way.

[00:38:57] Speaker 00:
But what we know from Dar is the same day he created a neck finish that was 0.591, that's his understanding.

[00:39:04] Speaker 00:
And since the question is what was conveyed to Mr. Dar, that is relevant evidence that a jury could use to find that there is not clear and convincing evidence of misjoinder.

[00:39:14] Speaker 00:
The last point I would like to turn back to is figures.

[00:39:16] Speaker 00:
And I mentioned before Figure 6.

[00:39:18] Speaker 00:
And I want to point the court to Appendix Site 140, which is taken from the 299 patent.

[00:39:25] Speaker 00:
Two points.

[00:39:26] Speaker 00:
First of all, there are tamper-evident formations depicted in other figures of the patent.

[00:39:32] Speaker 00:
You can certainly see one in Figure 1 and Figure 2 as well.

[00:39:36] Speaker 00:
They are not discontinuous.

[00:39:38] Speaker 00:
You can see it in figure three and also figure four.

[00:39:41] Speaker 00:
So figure six is not the only depiction of a tamper evident formation and the language on column four at lines four

[00:39:48] Speaker 00:
to eat on page 140 describes what figure six is.

[00:39:53] Speaker 00:
It illustrates a perspective view of an upper neck portion of a preform or a container according to another embodiment.

[00:40:01] Speaker 00:
As illustrated in the figure, the neck may include threading of the type that is commonly employed

[00:40:08] Speaker 00:
in connection with containers for holding carbonated contents.

[00:40:12] Speaker 00:
That was the reason for including Figure 6 to show the vented threats.

[00:40:16] Speaker 00:
The final point I would make with regards to the means plus function, there was no claim construction done in regards to that.

[00:40:21] Speaker 00:
So at least that would be a reason for remanding.

[00:40:23] Speaker 00:
Please ask the court to recognize the genuine disputes of material fact, to reverse the decision, and remand it for trial.

[00:40:29] Speaker 00:
Thank you for your time.

[00:40:32] Speaker 03:
Any more questions for Mr. Dillman?

[00:40:34] Speaker 03:
No, thank you.

[00:40:35] Speaker 00:
No questions.

[00:40:37] Speaker 04:
Okay, thank you.

[00:40:38] Speaker 04:
My thanks to both counsels.

[00:40:40] Speaker 04:
This case is taken under submission.