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

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

[00:00:03] Speaker 00:
We are very fortunate today to have with us Chief Judge Goldberg from the Eastern District of Pennsylvania, who's sitting by designation.

[00:00:13] Speaker 00:
So welcome to the court.

[00:00:15] Speaker 05:
Thank you for having me.

[00:00:16] Speaker 00:
Very happy to have you here.

[00:00:19] Speaker 00:
We have four cases on the docket today, three of which will be argued.

[00:00:25] Speaker 00:
Our first case is Global Health Solutions v. Sellner, appeal number 23-2009.

[00:00:34] Speaker 00:
Mr. England, when you're ready, please proceed.

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

[00:00:39] Speaker 01:
Will the clock move to 12?

[00:00:41] Speaker 00:
When it gets to your rebuttal time, it will go yellow, I believe.

[00:00:46] Speaker 00:
Yes.

[00:00:46] Speaker 00:
All right.

[00:00:47] Speaker 00:
Thank you, Your Honor.

[00:00:49] Speaker 01:
may please the court my name is john england and i'm here on behalf of appellant global health solutions for GHS this case arises out of the first time the board found that a derivation petitioner actually established their case of conception by the petitioner's inventor and communication of the inventor to the responded appellate here and that is important today because the board implicitly found that the GHS's inventor actually conceived of the invention as of the time february 14 he communicated it to the other party

[00:01:19] Speaker 01:
Now at issue today is actually Pelley's affirmative defense of prior independent conception, and the board's legal findings surrounding that.

[00:01:29] Speaker 01:
And predominantly at issue is the lack of independent cooperation.

[00:01:33] Speaker 01:
Now I will first address petition's independent affirmative defense, and then I'll move to the other argument of joint inventorship.

[00:01:43] Speaker 00:
I wanted to ask you about corroboration.

[00:01:46] Speaker 00:
You're alleging that the testimony of, let me make sure I got her name right, Miss Corbin, does not corroborate the emails that were sent on February 14, 2004, I think.

[00:02:05] Speaker 00:
And one question I have is, is that really what should be corroborated under our case law

[00:02:13] Speaker 00:
What I thought needed to be corroborated was the inventor's testimony.

[00:02:19] Speaker 00:
So the inventor's testimony, Mr. Selmer's testimony of his conception of the invention, needs to be corroborated by independent evidence under our case law.

[00:02:32] Speaker 00:
What case law stands for the proposition that emails that purportedly corroborate an inventor's conception testimony have to be corroborated?

[00:02:43] Speaker 01:
Well, we cited the case law that goes back to, I believe it is, the most pertinent is Heinz the, sorry, Your Honor.

[00:03:02] Speaker 01:
Rees v. Hurst, where it's talking about the actual, there's actual, we're trying to corroborate the actual evidence that's supporting the inventors testimony.

[00:03:11] Speaker 01:
Now the idea is not only that we're relying exclusively on the testimony to corroborate the emails,

[00:03:17] Speaker 01:
is that the emails alone are only the inventor's testimony.

[00:03:21] Speaker 01:
We're produced by the inventor, or the alleged inventor in this case, which is Appelli.

[00:03:25] Speaker 01:
And it's whether or not we can actually rely on his own testimony and his own statement of the facts about whether those emails were actually authenticated and are actually representative of what happened back in 2014.

[00:03:38] Speaker 00:
When you say authenticated, now you didn't dispute authentication before the PTAB, right?

[00:03:45] Speaker 01:
That is correct, Your Honor.

[00:03:46] Speaker 01:
And I do not dispute authentication today, because we're not talking about authentication.

[00:03:49] Speaker 01:
We are trying to distinguish authentication from corroboration.

[00:03:53] Speaker 01:
Authentication is just someone saying that a document actually existed in its fact.

[00:03:57] Speaker 01:
This is about the sufficiency of the issue of corroboration, which is really to prevent fraud.

[00:04:03] Speaker 00:
I understand.

[00:04:04] Speaker 00:
I'm just trying to figure out what has to be corroborated.

[00:04:07] Speaker 00:
So what is your best case for saying

[00:04:11] Speaker 00:
Let's say, for example, an analogy would be that inventor testifies, and then there's an inventor notebook.

[00:04:16] Speaker 00:
And you're saying the inventor notebook has to be itself corroborated.

[00:04:20] Speaker 00:
Here, you're saying the inventor testified, and these emails that have a different date than his current litigation testimony, that those aren't sufficient to corroborate.

[00:04:33] Speaker 00:
They're part of his testimony, even though they're dated years earlier.

[00:04:36] Speaker 00:
What is your best case for that?

[00:04:39] Speaker 01:
The best case we've cited for this is Reese V. Hurst.

[00:04:42] Speaker 01:
That's the CCPA case talking about Inventor's Notebooks, which I believe the emails would be most analogous to.

[00:04:48] Speaker 01:
Because right now we're talking about emails that were reportedly sent by the inventor to an unknown third party.

[00:04:53] Speaker 01:
The inventor's testimony is the only one that actually identifies who that unknown third party is based upon the true date of the email.

[00:05:00] Speaker 01:
Ms.

[00:05:00] Speaker 01:
Corbin's testimony cannot actually authenticate or articulate any facts surrounding

[00:05:06] Speaker 01:
who received the emails.

[00:05:07] Speaker 01:
So the email went from Sellner Respondent Party to an unknown email address that was never corroborated by anybody else or put forth by any other testimony.

[00:05:17] Speaker 02:
So we ultimately, where the board applies the rule of reason, why isn't this just a fact scenario under the rule of reason?

[00:05:27] Speaker 02:
That is, Sellner says he conceived of it at such and such a date.

[00:05:33] Speaker 02:
he comes forward with evidence that purports to be contemporaneous with that conception and the board evaluates that as well as your competing evidence and decides

[00:05:48] Speaker 02:
As a legal matter, it could be corroborating because it's not his testimony.

[00:05:52] Speaker 02:
It's a document.

[00:05:55] Speaker 02:
And the board evaluates it in the context of the full record and says, under the rule of reason, we're persuaded that this is sufficient corroboration of his testimony.

[00:06:04] Speaker 02:
Why should we not analyze it that way?

[00:06:06] Speaker 01:
Well, I believe that I look at the document not as an independent document, but as an actual document prepared by the inventor

[00:06:13] Speaker 01:
that has not been seen or heard by anybody other than... Which document, the email?

[00:06:17] Speaker 01:
I'm talking about the emails of February 14th was prepared by the inventor.

[00:06:21] Speaker 01:
No other parties corroborated ever seeing those emails.

[00:06:24] Speaker 01:
No other parties actually ever testified of seeing those emails.

[00:06:26] Speaker 01:
The best evidence we have is the inventor Seller's own testimony concerning the emails and Ms.

[00:06:32] Speaker 01:
Corbin's testimony in 2022, eight years after the fact, that she, at the direction of the inventor, printed out certain emails in an account directed by the inventor.

[00:06:40] Speaker 02:
But do we have a case that says if the

[00:06:43] Speaker 02:
purported corroborating documentary evidence is evidence of the inventor, as a matter of law, it cannot be sufficient under the rule of reason.

[00:06:54] Speaker 01:
I would not go so far as a bright-line rule under the rule of reason that in and of itself cannot be evidence of invention.

[00:07:01] Speaker 01:
But when you look at the totality of the rule of reason in this case, the entire rule of reason analysis is predicated on a document that was only found by the inventor, allegedly sent by the inventor.

[00:07:13] Speaker 01:
And there's no one else who can actually testify contemporaneous to the fact of what actually was contained in the document.

[00:07:18] Speaker 02:
Of course, here it's funny because the person who allegedly received it is Mr. Burnham, who is the other purported inventor.

[00:07:27] Speaker 02:
And we don't have independent corroboration of whether he really didn't receive it.

[00:07:31] Speaker 02:
the board had to decide if they thought he received it or not.

[00:07:35] Speaker 01:
Well, that is one factual determination that makes this case a little bit more distinguished than other cases.

[00:07:39] Speaker 01:
So in this case, the board actually found that Mr. Burnham, GHS's inventor, conceived of his invention as of a few minutes after the email was sent.

[00:07:49] Speaker 01:
And implicit in that factual determination by the board is that it was not received by Mr. Burnham before he made his conception, because otherwise he would not have been able to make his conception

[00:07:59] Speaker 01:
after the moment of derivation.

[00:08:01] Speaker 01:
Now, that has not been appealed.

[00:08:03] Speaker 01:
And that is a factual finding by the board that's not being challenged here today.

[00:08:07] Speaker 01:
Now, beyond that, the other issue is that in this case alone, there is no other evidence in the rule of reason that this email communication was actually between the two parties.

[00:08:19] Speaker 05:
You're not saying that the emails are fabricated, are you?

[00:08:23] Speaker 01:
We are not saying the emails are fabricated.

[00:08:24] Speaker 01:
What we are saying is that it is an affirmative defense, and that makes that Selner has the burden of persuasion and production to produce the evidence that actually supports these emails.

[00:08:34] Speaker 01:
And he did not meet his burden of producing corroborating evidence of this email other than the isolated testimony of Ms.

[00:08:43] Speaker 01:
Corbin.

[00:08:44] Speaker 01:
For example, he chose not to seek an affidavit from AOL to establish that these emails were actually truly authenticated

[00:08:52] Speaker 01:
as of the date he allegedly sent them, which is critical to the derivation proceeding.

[00:08:55] Speaker 01:
It's not only that the emails were actually sent.

[00:08:59] Speaker 01:
It's that the emails were sent to others, which bears on his burden of corroboration.

[00:09:03] Speaker 01:
And there's no evidence that he actually sent it to others, which would be provided by AOL.

[00:09:08] Speaker 05:
Couldn't Burnham have asked for Sellner's computer in discovery and gotten an expert to review, to test the veracity of the emails?

[00:09:21] Speaker 01:
The proceeding would allow Burnham to seek additional discovery to try to find that evidence.

[00:09:28] Speaker 01:
But that's not a discovery by right.

[00:09:29] Speaker 01:
It would have been had to be requested.

[00:09:31] Speaker 01:
And also, it was never Burnham's affirmative duty to actually negate the authenticity of those emails.

[00:09:37] Speaker 01:
It was Sellner's burden to prove that they were real.

[00:09:39] Speaker 01:
Now, what Sellner could have done is done, for example, an affidavit for AOL.

[00:09:44] Speaker 01:
Or it could have shown other emails to or from that email address, which was never produced in this case.

[00:09:49] Speaker 00:
So in this case, I was just going to ask.

[00:09:51] Speaker 00:
I mean, in this case, we do have a finding by the board under the rule of reason that there was sufficient corroboration.

[00:10:00] Speaker 00:
So we only review that for substantial evidence, right?

[00:10:03] Speaker 01:
That is correct, Your Honor.

[00:10:06] Speaker 01:
Yes, that is correct, Your Honor.

[00:10:07] Speaker 00:
And so why isn't there substantial evidence?

[00:10:10] Speaker 00:
I mean, it feels like you're arguing this as if we review this de novo.

[00:10:16] Speaker 01:
Yes, I'm not trying to argue this to no one.

[00:10:18] Speaker 01:
I'm trying to argue that the rule of reason analysis is predicated on a document that we are not certain what the document actually said in 2014 besides for the inventor's testimony.

[00:10:29] Speaker 01:
If you look at everything going forward in this case, you're looking at events that occurred in 2014 between two inventors that were communicating.

[00:10:38] Speaker 01:
In 2022, this email was produced by

[00:10:43] Speaker 01:
by Sellers counsel's law clerk who authenticated that she obtained it from Sellers' email account and that in 2022 that Sellers' email account faithfully reproduced this document.

[00:10:56] Speaker 01:
There is no evidence in this case other than Sellers' testimony of who actually wrote the email, what the storage conditions were, how the email is actually... In undertaking the substantial evidence review, may we consider

[00:11:10] Speaker 02:
This email that I think without dispute was sent from Mr. Burnham to the daughter of Mr. Sellner, calling him an inventor of the magic goo.

[00:11:21] Speaker 02:
And may we also consider the fact, as the board pointed out, that the email that Mr. Burnham sent is largely verbatim

[00:11:33] Speaker 02:
of the email that he had received earlier that same day from Mr. Sellner.

[00:11:38] Speaker 02:
Can we consider those facts in our substantial evidence review?

[00:11:42] Speaker 01:
The rule of reason requires you to consider all facts that involve the mentorship.

[00:11:47] Speaker 01:
But I do want to address those two communications.

[00:11:50] Speaker 01:
First, the second point you raised, Judge Stark, which is about the similarity between the documents

[00:11:57] Speaker 01:
is directly contradictory to the board finding that Burnham individually conceived of the invention before.

[00:12:02] Speaker 01:
That would imply that he had not actually received the email, at least from Sellner.

[00:12:07] Speaker 01:
And therefore, the similarity of the documents doesn't actually inform one that Sellner actually disclosed the document to him.

[00:12:13] Speaker 01:
Otherwise, it would be contradicted by their finding that he conceived of the document.

[00:12:17] Speaker 01:
The second issue is the magic goo email, and that doesn't actually disclose what was being invented.

[00:12:24] Speaker 01:
The magic goo email does describe a general invention, but it does not identify what the invention was, whether it was a composition, whether it was a method, what it was doing.

[00:12:34] Speaker 01:
And it also is a lay person testifying about what inventorship is, and that shouldn't be giving very much credence.

[00:12:43] Speaker 01:
Before my time expires, I do want to touch on joint inventorship, which is an issue that is wrapped up in this prior independent conception to some extent.

[00:12:53] Speaker 01:
Now, the petitioner raised that based upon this February 7th email from Burnham to Sellner that joint inventorship should be considered because Sellner contributed at least the idea of... Do you know what the board's authority is for

[00:13:11] Speaker 00:
determining inventorship in a derivation proceeding?

[00:13:14] Speaker 00:
For example, is the only basis on which the board at the PTO could correct inventorship would be based on a finding of derivation?

[00:13:25] Speaker 00:
Or are you suggesting that they can make an independent determination of whether the petitioner contributed to at least one claim, one element of one claim?

[00:13:38] Speaker 01:
Under the statute 35 USC 135 B, I do believe that the board is permitted to actually correct inventorship, not with a determination of derivation.

[00:13:50] Speaker 00:
It just says inappropriate circumstances.

[00:13:52] Speaker 01:
I was going to say the first sentence talks about what the derivation proceeding is, and then it says inappropriate circumstances.

[00:13:57] Speaker 01:
It is permitted to correct inventorship.

[00:13:59] Speaker 00:
Do you agree that there is no other statute that gives the PTO the ability to correct inventorship like that, other than I guess there's

[00:14:08] Speaker 00:
there is authority to correct inventorship when it just orders the PTO to do so, or all the parties agree and the assignees agree.

[00:14:18] Speaker 01:
Within the context of derivation, I believe this is the sole statute that would be applicable.

[00:14:23] Speaker 02:
And unless I missed something, your whole showing for joint inventorship was one sentence in the petition.

[00:14:33] Speaker 02:
No separate filing, no separate motion, no argument,

[00:14:37] Speaker 02:
But if there's more, where would I find it?

[00:14:40] Speaker 01:
You would find it in the initial petition that requests relief.

[00:14:42] Speaker 01:
One sentence.

[00:14:43] Speaker 01:
Because.

[00:14:44] Speaker 01:
Correct.

[00:14:44] Speaker 01:
Just one sentence.

[00:14:45] Speaker 01:
I understand, Your Honor.

[00:14:46] Speaker 01:
But because it was instituted upon stolen eventorship, and it was never raised again as another issue in the case.

[00:14:53] Speaker 01:
That's why.

[00:14:54] Speaker 01:
Oh, I'm sorry.

[00:14:55] Speaker 02:
Are there not regulations that require a request for correction of eventorship to be made by a paper separate from the petition?

[00:15:05] Speaker 01:
The board was willing to analyze correction of inventorship under Selner's request to correct inventorship, and that's found in the final written decision.

[00:15:14] Speaker 01:
I do not understand why, since the board was willing to entertain that argument, what petition would be required to actually file a separate paper.

[00:15:22] Speaker 05:
Should we entertain the inventorship argument?

[00:15:26] Speaker 01:
I do not believe that the board has put forth sufficient facts for this court to actually make an initial determination on joint inventorship.

[00:15:36] Speaker 01:
And I think that it's required to have a remand for the board to assess that.

[00:15:40] Speaker 01:
And with that, I was going to reserve the rest of my time for rebuttal.

[00:15:44] Speaker 00:
OK.

[00:15:44] Speaker 00:
Thank you.

[00:15:45] Speaker 01:
Thank you, Your Honors.

[00:15:46] Speaker 00:
Because we asked you some questions, I'm going to reinstate your rebuttal time.

[00:15:51] Speaker 00:
But Mr. Handel, could you please come?

[00:16:40] Speaker 04:
Good morning, Your Honors.

[00:16:41] Speaker 00:
Good morning.

[00:16:54] Speaker 04:
I think the evidence viewed as a whole more than satisfies the standard for a preponderance of the evidence.

[00:17:04] Speaker 04:
And very quickly, the board found Dr. Sellers, February 14, 2014,

[00:17:10] Speaker 04:
12 22 p.m.

[00:17:12] Speaker 04:
email to evidence a complete conception in the context of Selma's January 21 email with the critical top of the claim temperature range disclosed in terms of its optical characteristics and its physical consistency as confirmed by petitioners expert died.

[00:17:34] Speaker 04:
Burnham's admission of Selma's inventorship to Melissa

[00:17:40] Speaker 04:
And of course, stolen his testimony on the January 20th batch as corroborated by the declaration of my law clerk.

[00:17:56] Speaker 04:
The objection with respect to eight years is not correct.

[00:18:08] Speaker 04:
Information in the emails was contemporaneous.

[00:18:12] Speaker 04:
Emails are... The sense talk about the time difference really stems from the barbed wire case reliability.

[00:18:24] Speaker 04:
If there's been a long time, it's not reliable.

[00:18:27] Speaker 04:
Here we've got a machine recording that's absolute 100%, the eight years is irrelevant.

[00:18:34] Speaker 04:
It was pulled off the email.

[00:18:36] Speaker 04:
And it's completely accurate.

[00:18:39] Speaker 04:
There's no question there.

[00:18:40] Speaker 04:
So it's a buggy-whip argument in a space shuttle world.

[00:18:48] Speaker 02:
Could you have, counsel, could you?

[00:18:50] Speaker 02:
Can you?

[00:18:52] Speaker 02:
Counsel, excuse me for interrupting.

[00:18:56] Speaker 02:
Could you have subpoenaed or somehow gotten discovery directly from AOL?

[00:19:01] Speaker 02:
Why did you choose to use your law clerk?

[00:19:08] Speaker 04:
We looked into it.

[00:19:12] Speaker 04:
It was a very clumsy procedure.

[00:19:15] Speaker 04:
We had Dr. Sellers' testimony about the emails.

[00:19:19] Speaker 04:
We had the AOL documents downloaded.

[00:19:23] Speaker 04:
We felt within the rule of reason it was clear that the emails were real.

[00:19:29] Speaker 04:
There was no contradictory evidence of any sort.

[00:19:33] Speaker 04:
So they stood there alone completely reliable.

[00:19:37] Speaker 04:
And no argument's been made that they're not reliable.

[00:19:40] Speaker 02:
So then what did you think you were corroborating by having your law clerk download the emails?

[00:19:48] Speaker 02:
Was that something necessary or just some additional evidence you decided to try to show?

[00:19:56] Speaker 04:
The emails, and there were a few of them.

[00:20:01] Speaker 04:
Let's talk about that January 21 email.

[00:20:06] Speaker 04:
That email corroborated Selner's testimony that he created the fact on the 20th.

[00:20:16] Speaker 04:
And so that was the corroboration there.

[00:20:22] Speaker 04:
It also corroborated the fact that there was a telephone conference at which Selner disclosed his invention.

[00:20:29] Speaker 04:
It also corroborated Burnham's

[00:20:34] Speaker 00:
email mister and would you say that the uh... emails themselves had to be corroborated i believe uh... dr selma testified that the emails were genuine so their evidence why did you choose to have your law clerk

[00:21:01] Speaker 00:
download the emails and talk about her process.

[00:21:05] Speaker 00:
Was that an attempt to authenticate or corroborate the emails?

[00:21:11] Speaker 04:
Well, they certainly do corroborate the emails, but the reason we did that was because they were contesting that the emails existed.

[00:21:21] Speaker 04:
They were contesting the emails existed and we wanted to prove the resistance, the second way to build the weight of the evidence in our favor.

[00:21:30] Speaker 04:
So it was a matter of belt and suspenders.

[00:21:32] Speaker 04:
I mean, I've been running Patent Lawsuits 50 years.

[00:21:37] Speaker 04:
I never had anybody deny so many emails.

[00:21:42] Speaker 04:
And then they came up with one email, their late February 14 email, which is verbatim our early February 14 email.

[00:21:55] Speaker 04:
And they denied that the February 14 email exists.

[00:21:58] Speaker 04:
And again, we

[00:22:00] Speaker 04:
against these unreasonable denials.

[00:22:03] Speaker 04:
My law clerk downloaded both of the emails and downloaded them with time stamps and attachments and just trying to remove any question, which I think the board thinks we did.

[00:22:17] Speaker 02:
Your friend on the other side, Mr. England.

[00:22:20] Speaker 02:
Mr. England emphasizes

[00:22:23] Speaker 02:
that he reads the board as finding that he met his burden to show derivation.

[00:22:31] Speaker 02:
And the only reason he's on that side of the courtroom is because you also met your burden on affirmative defense.

[00:22:38] Speaker 02:
And I know you have a cross-appealed.

[00:22:40] Speaker 02:
Do you agree with him that the board found that he met all the elements of showing derivation?

[00:22:49] Speaker 02:
Because he's saying there's something illogical about the board's analysis of these emails That it's in tension with the board's clear finding that he would say they made That he's met his burden.

[00:23:01] Speaker 02:
What's your view of whether they found he met his burden?

[00:23:11] Speaker 04:
The board found that the late in the day February 14 email from Burnham

[00:23:18] Speaker 04:
had all the elements of the invention and constituted a communication to my client.

[00:23:27] Speaker 04:
However, Bush found it was late.

[00:23:32] Speaker 04:
It was late because they found that a complete conception was evidenced by the early in the day Selner email.

[00:23:42] Speaker 04:
Now there's been some argument about burdens and whose burden is what and

[00:23:47] Speaker 04:
It seems to me a little confusing what's the arguments being made.

[00:23:54] Speaker 04:
It is the petitioner that has the burden to prove earlier conception and earlier end communication.

[00:24:10] Speaker 04:
The board said the conception was later and the communication was later.

[00:24:17] Speaker 04:
Now, Petitioner has pointed to some language commenting on the lack of evidence in Petitioner's case.

[00:24:30] Speaker 04:
Unremarkable, because there's no evidence until February 14 of anything connected to the invention.

[00:24:40] Speaker 04:
In contrast, Soner shows he's got the temperature range visually and optically on March 21 in the email

[00:24:47] Speaker 04:
string that included admissions from Burnham that Sellner was heeding.

[00:24:55] Speaker 04:
So he's showing elements of the invention, whether or not you agree that it's a complete conception, it might be a little technical, but it's pretty much complete.

[00:25:06] Speaker 04:
And there's later points where he's saying, don't heat it so hot.

[00:25:15] Speaker 04:
The petitioner's inventor

[00:25:17] Speaker 04:
is doing work at 60 degrees.

[00:25:23] Speaker 04:
Weeks before that, Seller disclosed not exceeding the melting point, which the petitioner's expert said was around 45 degrees, as I recall.

[00:25:35] Speaker 04:
So prior to that one email, which sprang, I'm not going to say out of nowhere, it sprang from my client's email.

[00:25:45] Speaker 04:
There was nothing.

[00:25:47] Speaker 04:
at all that Sellner did, in terms of showing a conception, or part of the conception, optically, numerically, or in any way.

[00:25:56] Speaker 04:
Rather, the only numbers show he was at 60 degrees, when the invention says, don't go beyond 45.

[00:26:03] Speaker 04:
And then there's all this confusion about preheating water, which isn't even in the claim.

[00:26:11] Speaker 04:
So it's not surprising that the board says,

[00:26:14] Speaker 04:
There's no evidence.

[00:26:16] Speaker 04:
We've looked at the whole picture.

[00:26:18] Speaker 04:
You put no evidence here, Ms.

[00:26:19] Speaker 04:
Burnham.

[00:26:21] Speaker 04:
Whereas Dr. Selma has all this evidence, optical evidence, consistency evidence, temperature evidence, all of it's before your evidence.

[00:26:31] Speaker 04:
And you haven't showed us anything before that email.

[00:26:34] Speaker 00:
Mr. Handel?

[00:26:35] Speaker 04:
And that's not a burden shot.

[00:26:37] Speaker 00:
So the only issue on appeal is corroboration, right?

[00:26:44] Speaker 00:
There's two issues on appeal.

[00:26:46] Speaker 00:
One is corroboration under the rule of reason.

[00:26:50] Speaker 00:
And the other one is whether the board erred by not saying anything about inventorship.

[00:26:58] Speaker 00:
What is your view on the inventorship argument?

[00:27:04] Speaker 04:
Joint inventorship?

[00:27:06] Speaker 04:
Well, I think the board said quite a bit about inventorship.

[00:27:10] Speaker 00:
Well, specifically, just let me make sure I'm being very specific.

[00:27:15] Speaker 00:
I understand that the appellant here is arguing that the board should have addressed whether Mr. Burnham should have been named as an inventor separate and apart from the derivation proceeding.

[00:27:32] Speaker 00:
Do you see that as something the board should have done?

[00:27:37] Speaker 04:
We have the underlying findings of the board on inventorship.

[00:27:48] Speaker 04:
Dr. Selma had a complete conception of the invention early in the day on the 14th.

[00:28:00] Speaker 03:
Mr. Burnham was late.

[00:28:07] Speaker 04:
The board further found nothing was derived from Mr. Burnham.

[00:28:16] Speaker 04:
The last part of the puzzle is not a puzzle.

[00:28:22] Speaker 04:
Dr. Selden filed first.

[00:28:25] Speaker 02:
I think it's the same concern as Judge Stoll.

[00:28:30] Speaker 02:
As I understand it, GHS

[00:28:35] Speaker 02:
filed a petition seeking two forms of relief.

[00:28:38] Speaker 02:
One, a derivation to basically knock Mr. Sellner out completely.

[00:28:43] Speaker 02:
But in the alternative, if they didn't succeed on that, they wanted Mr. Burnham to be added as a joint inventor on the Sellner applications.

[00:28:55] Speaker 02:
And there is one sentence, I think only one sentence, but one sentence in the petition going to that alternative request.

[00:29:04] Speaker 02:
which seems to parallel an alternative request, by the way, that Mr. Sellner made.

[00:29:09] Speaker 02:
And the board addresses and denies Mr. Sellner's request to be a joint inventor, but never seems to say anything about Burnham's request to be a joint inventor.

[00:29:22] Speaker 02:
And I'm concerned that the board overlooked part of the case that was in front of it.

[00:29:28] Speaker 02:
I don't know what to do about that.

[00:29:34] Speaker 04:
As I recall the sentence, it was in the petition to have the derivation instituted.

[00:29:51] Speaker 04:
And it said, as an additional ground for relief.

[00:29:59] Speaker 02:
Yes.

[00:30:00] Speaker 02:
It's at appendix 343.

[00:30:03] Speaker 02:
If it's helpful, I can read it to you.

[00:30:07] Speaker 04:
And it's unclear to me whether that sentence means as another reason to institute their derivation proceeding.

[00:30:16] Speaker 04:
I think that's what it means.

[00:30:17] Speaker 04:
The petition is a petition institute.

[00:30:23] Speaker 04:
That was the basis for the petition institute.

[00:30:28] Speaker 04:
Then, as you say, nothing ever happened again.

[00:30:32] Speaker 04:
That's pretty much the end of it.

[00:30:37] Speaker 02:
Why should we not remand at minimum and have the board address if Mr. Burnham should be added as a co-inventor on the Selner applications?

[00:30:51] Speaker 04:
I think because the board's factual findings would make a remand meaningless because they found that there was no derivation and they found early in conception

[00:31:02] Speaker 04:
I think it's, I mean, they've already done the factual finding.

[00:31:10] Speaker 04:
This court can look at that.

[00:31:13] Speaker 00:
Mr. Handel, I understand what you're saying.

[00:31:15] Speaker 00:
I understand what you're saying.

[00:31:16] Speaker 00:
You're saying the only thing we'd be remanding for is for the board to dot the I and cross the T. But isn't it their job to do that and not ours, even if it's a foregone conclusion?

[00:31:39] Speaker 04:
I think the factual findings have been made.

[00:31:42] Speaker 05:
I think the proper action is to... Aren't there different standards for derivation and co-inventorship?

[00:31:51] Speaker 05:
My understanding is that there are, but if I'm wrong, explain it to me.

[00:31:58] Speaker 04:
So, as a patent prosecutor and patent examiner in the 60s,

[00:32:08] Speaker 04:
We were always taught when in doubt, add a man's name.

[00:32:16] Speaker 04:
But that's not what we're talking about here.

[00:32:22] Speaker 04:
I think to have co-inventorship, you have to have some evidence that something was derived.

[00:32:33] Speaker 04:
And the court, the board was unequivocal.

[00:32:40] Speaker 04:
It wasn't derived.

[00:32:42] Speaker 04:
Derived doesn't mean in whole.

[00:32:47] Speaker 04:
It means derived.

[00:32:50] Speaker 04:
In whole or in part.

[00:32:52] Speaker 00:
Can I ask you a question?

[00:32:53] Speaker 04:
And if it was derived?

[00:32:55] Speaker 00:
Yeah.

[00:32:56] Speaker 00:
I want to ask you one question, though.

[00:32:58] Speaker 00:
So I understand your position to be that in a derivation proceeding,

[00:33:04] Speaker 00:
the PTO only has authority to change inventorship if there's a finding of derivation.

[00:33:12] Speaker 00:
The PTO does not have authority to determine whether Mr. Burnham contributed at least one element to one claim and determine whether he's a joint inventor separate from its finding of derivation.

[00:33:27] Speaker 00:
That's what I think you're saying, but can you confirm for me whether that's your view?

[00:33:33] Speaker 04:
The PTO authority is to correct inventorship where appropriate.

[00:33:40] Speaker 04:
Where the board has found no derivation, where the board has found an earlier complete conception by Dr. Selmer, any change in inventorship is highly inappropriate.

[00:34:03] Speaker 02:
in violation of the statute.

[00:34:07] Speaker 02:
I don't know how that is correct given that the board made findings about what Burnham did

[00:34:19] Speaker 02:
specifically that he's fully conceived of this invention nine minutes before or after uh... nine minutes after your person after your client uh... i think that's why mister england is emphasizing the board's findings that he met his burden and you don't contest that so that's established in this case if if the if that's correct that the board has found that

[00:34:47] Speaker 02:
Mr. Burnham conceived of everything.

[00:34:49] Speaker 02:
He just did it nine minutes after your client did.

[00:34:53] Speaker 02:
How can we be absolutely certain that if the board looked at the joint inventorship question, it would not possibly conclude that these are joint inventors?

[00:35:17] Speaker 04:
If I understand what was on the board's mind, and assuming that that interpretation of the board's statement is correct, still, if there is no

[00:35:47] Speaker 04:
Derivation by Dr. Sellner.

[00:35:56] Speaker 04:
No derivation at all.

[00:35:57] Speaker 04:
Not even one element was found.

[00:36:04] Speaker 04:
Then that conception is independent and sole.

[00:36:08] Speaker 04:
That's what the board found.

[00:36:10] Speaker 04:
No derivation, early conception.

[00:36:16] Speaker 04:
If Sellner

[00:36:17] Speaker 04:
I'm sorry, Burnham had a conception a half hour later.

[00:36:23] Speaker 04:
It's too late.

[00:36:25] Speaker 04:
And there's no indication that that conception had to do with anything.

[00:36:31] Speaker 04:
It's just that one email sitting there.

[00:36:36] Speaker 04:
I would say, obviously, copy from Dr. Sellers' email a few minutes earlier.

[00:36:40] Speaker 04:
And triggering a conception and understanding by

[00:36:48] Speaker 04:
Mr. Burnham that he never had before.

[00:36:51] Speaker 04:
That's not, that's not co-inventorship.

[00:36:53] Speaker 04:
That's understanding somebody else's complete conception.

[00:37:00] Speaker 00:
Okay.

[00:37:01] Speaker 00:
Thank you very much council.

[00:37:03] Speaker 02:
Thank you.

[00:37:04] Speaker 02:
Thank you.

[00:37:04] Speaker 02:
Thank you.

[00:37:21] Speaker 00:
Mr. Englund, you have three minutes for rebuttal.

[00:37:23] Speaker 01:
Thank you, Your Honor.

[00:37:24] Speaker 01:
I will quickly address the corroboration issue, and then I'll move to the focus of the questions on joint inventorship.

[00:37:29] Speaker 01:
So for corroboration, I first want to go back to the email alone being the only corroborative evidence.

[00:37:36] Speaker 01:
And the issue that this case has is that this email and everything surrounding it is based solely on inventor testimony.

[00:37:42] Speaker 01:
There's no other corroboration.

[00:37:46] Speaker 01:
If this case is upheld from the board, it is essentially viscerate the idea that cooperation must be by an independent witness.

[00:37:52] Speaker 01:
There is no independent witness.

[00:37:54] Speaker 01:
As I elaborated earlier, it was Appellee's burden to produce the evidence sufficient to demonstrate there is an independent witness to corroborate the evidence.

[00:38:03] Speaker 01:
And since they chose not to go to AOL, it was their choice and their burden.

[00:38:06] Speaker 01:
They failed to meet.

[00:38:09] Speaker 01:
Second of all, Appellee discussed briefly the petitioner's

[00:38:15] Speaker 01:
burden to prove.

[00:38:16] Speaker 01:
And the burden to prove is to prove conception and communication prior to a filing of an application.

[00:38:22] Speaker 01:
And that was established undeniably by petitioner as found by the board.

[00:38:26] Speaker 02:
Can you show me where is the best place to see that the board actually found you met your complete burden on derivation?

[00:38:36] Speaker 02:
The board did not address the dependent claims, so.

[00:38:38] Speaker 02:
I mean, your contention is that they found you proved

[00:38:46] Speaker 02:
You proved both the conception and the communication, right?

[00:38:49] Speaker 01:
Yeah, that's Appendix 26, the board's decision.

[00:38:53] Speaker 01:
You can go there where it says that based upon the February 14th email, we proved that, or petitioner proved that fact.

[00:39:00] Speaker 02:
Because it seemed to me that at other points, they said, we don't actually have to decide everything about your burden, particularly the communication, because they're going to go on to find

[00:39:11] Speaker 02:
that there was prior conception by Selner.

[00:39:14] Speaker 02:
Is that an unfair reading of the board's analysis?

[00:39:16] Speaker 01:
I believe the board's analysis read the email in context of Mr. Musen's testimony as a third party independent witness that corroborated the communication was sent as of that time.

[00:39:32] Speaker 01:
But if I could go to joint inventorship,

[00:39:34] Speaker 01:
The issue of the board did not explicitly address the February 7th email, which was initially produced by the petitioner in the petition as the inventive step and as establishing conception.

[00:39:44] Speaker 01:
The board rejected the February 7th email because it went to the disclosed invention and it found the disclosed invention included specific temperatures as part of the method of manufacture.

[00:39:54] Speaker 01:
And so the February 7th email is never considered, or the board never made factual findings on whether that was a material contribution from GHS's inventor to Selner that led to Selner's independence.

[00:40:06] Speaker 00:
Did you argue that it was?

[00:40:08] Speaker 00:
I mean, aside from your argument of derivation, did you argue joint entrepreneurship based on partial contribution?

[00:40:17] Speaker 00:
And where is that in any briefing that you presented to the board, other than that one sentence on page A343?

[00:40:25] Speaker 01:
That was the sole point where it was addressed exclusively in the context of joint inventorship.

[00:40:31] Speaker 01:
The petition initially, and even in the reply, did address the fact that the February 7th email that was communicated to Selner by GHS as an inventor should have been considered as a sole inventorship.

[00:40:44] Speaker 01:
So what about joint inventorship?

[00:40:48] Speaker 00:
I mean, now you're arguing that it should be remanded for the board to consider joint inventorship.

[00:40:53] Speaker 00:
And I'm asking you where, if anywhere, did you argue to the board that anything, including the February 7th email, establishes joint inventorship?

[00:41:04] Speaker 01:
That was solely in the relief requested.

[00:41:06] Speaker 01:
It was solely explicit in the relief requested.

[00:41:08] Speaker 01:
But throughout the petition and the reply, it was addressed that GHS's invention was the first one to contribute heating the PHMB aqueous space to a higher temperature than the benchmark.

[00:41:18] Speaker 00:
Do you have a site for that, where you think that is?

[00:41:21] Speaker 00:
I mean, specifically, again, in the context of saying, even if you find that there's no derivation, you should nonetheless say that Mr. Burnham is adjoining Bennett.

[00:41:34] Speaker 00:
Is that anywhere?

[00:41:36] Speaker 02:
OK.

[00:41:36] Speaker 02:
Sorry, Your Honor.

[00:41:38] Speaker 02:
Yeah.

[00:41:38] Speaker 02:
So given that, I appreciate the candor.

[00:41:41] Speaker 02:
Even if you could have argued that, even if given the board's findings, it's possible that on remand, if we ordered them to do it, maybe they would find that Mr. Burnham was a co-inventor.

[00:41:53] Speaker 02:
You didn't file a separate motion for that.

[00:41:57] Speaker 02:
You have just one sentence in the petition.

[00:41:59] Speaker 02:
It never gets argued again.

[00:42:03] Speaker 02:
And the board finds in the end, too, that there's no derivation, which has some implication, arguably, for whether your client could be a co-inventor.

[00:42:12] Speaker 02:
Why, given all that, should we remand and give you another shot at this?

[00:42:18] Speaker 01:
Well, I'm not explicitly asking for another shot.

[00:42:21] Speaker 01:
It's for the board to fully consider the relief requested, especially identifying the petition.

[00:42:26] Speaker 01:
The reason why it should be remanded for adjudication is because

[00:42:31] Speaker 01:
the statute authorizing derivation specifically says that the correctorship may be corrected at the applications at issue.

[00:42:40] Speaker 00:
But that's only if the parties argue it that way, right?

[00:42:44] Speaker 00:
I mean, we can't say the board erred by not considering something that wasn't put before it, a theory that wasn't presented to it.

[00:42:53] Speaker 01:
Well, it was presented to it in the sense that

[00:42:56] Speaker 01:
It was explicitly identified in the relief requested.

[00:42:59] Speaker 01:
And it was identified that what GHS's inventor actually sent to and disclosed to Selner prior to Selner's February 14th alleged conception.

[00:43:13] Speaker 00:
But that you presented evidence that might lead to a conclusion.

[00:43:17] Speaker 00:
But if you didn't ask for that conclusion, how is the board to know that that was your theory?

[00:43:27] Speaker 01:
Well, I mean, the relief request explicitly asked for that conclusion.

[00:43:30] Speaker 01:
We put forth evidence that supported that relief requested.

[00:43:33] Speaker 00:
Are you referring to the statement on page A343?

[00:43:37] Speaker 01:
Yes, under the relief request.

[00:43:38] Speaker 00:
And that was in the petition for the derivation proceedings?

[00:43:41] Speaker 01:
Yes.

[00:43:42] Speaker 00:
But then there was no request made during the derivation proceedings, right?

[00:43:48] Speaker 00:
It was not repeated, right?

[00:43:50] Speaker 01:
It was not repeated.

[00:43:51] Speaker 01:
Yeah, that's correct, Your Honor.

[00:43:54] Speaker 00:
Thank you.

[00:43:59] Speaker 02:
Thank you.

[00:44:02] Speaker 00:
Thank you.

[00:44:03] Speaker 00:
The case is submitted.

[00:44:04] Speaker 00:
We thank both counsel very much for their arguments today.