[00:00:00] Speaker 03:
We will begin with case number 201173, implicit against Sonos.

[00:00:08] Speaker 03:
Mr. Romer, whenever you're ready.

[00:00:11] Speaker 01:
May it please the court, Jason Romer on behalf of Appellate Implicit.

[00:00:15] Speaker 01:
This court held an egenera

[00:00:18] Speaker 01:
that under section 256 a patent cannot be invalidated if inventorship can be corrected instead.

[00:00:25] Speaker 01:
Courts have consistently recognized that section 256 is a savings provision, one that has no timing requirement and no diligence requirements.

[00:00:33] Speaker 03:
And it's retroactive to the beginning of the patent.

[00:00:36] Speaker 01:
It is retroactive.

[00:00:37] Speaker 01:
In fact, the board correctly held that on remand with the

[00:00:40] Speaker 01:
256 applies retroactively.

[00:00:42] Speaker 01:
And it applies in general retroactively, not just to section 102f, but to other provisions or ways that a patent can be invalidated as well.

[00:00:52] Speaker 01:
So here, this court remanded for the court to consider the impact of implicitness corrected inventorships.

[00:00:58] Speaker 03:
Can you clarify one thing?

[00:01:00] Speaker 03:
Was the original 2019 board decisions, is that what they are?

[00:01:08] Speaker 03:
That's correct.

[00:01:09] Speaker 03:
Were they vacated?

[00:01:10] Speaker 03:
By any order of this court, where did the, what was the status of the 2019 board decision at the time of the consideration of this question of whether you would be allowed to have the corrected patent considered?

[00:01:32] Speaker 01:
So the board's decisions were ultimately vacated in light of our threats.

[00:01:39] Speaker 01:
Right.

[00:01:39] Speaker 01:
And I believe that that happened.

[00:01:41] Speaker 03:
Right.

[00:01:41] Speaker 03:
But then the Supreme Court vacated our decision, vacating that one.

[00:01:45] Speaker 03:
And I want to understand precisely what happened after that.

[00:01:48] Speaker 01:
That's correct.

[00:01:49] Speaker 01:
So the Supreme Court vacated that and then it came back to this court.

[00:01:53] Speaker 01:
This court reinstated the board's decisions and allowed implicit a short period of time to seek director review before the director.

[00:02:02] Speaker 01:
And that's when implicit filed a certificate of corrections before that director review proceeding took place.

[00:02:10] Speaker 01:
So we presented this issue to the director in our petition for director review.

[00:02:14] Speaker 01:
that inventorship had been corrected and that the board needed to reconsider its validity determinations in light of that corrected inventorship.

[00:02:21] Speaker 03:
So at that time the 2019 board decision was

[00:02:26] Speaker 03:
no longer vacated?

[00:02:28] Speaker 03:
Is that right?

[00:02:30] Speaker 01:
That's correct.

[00:02:30] Speaker 01:
So the Supreme Court granted search were already vacated, as Your Honor said, sent back to this court.

[00:02:38] Speaker 01:
And then the panel of this court reinstated this.

[00:02:42] Speaker 03:
This wasn't at all just idle, what I'm trying to understand.

[00:02:45] Speaker 03:
Because here's what I'm trying to understand.

[00:02:48] Speaker 03:
And I guess this may be a question for everybody here.

[00:02:53] Speaker 03:
Why are we not talking about

[00:02:55] Speaker 03:
this issue in front of us as a mootness issue.

[00:03:00] Speaker 03:
The board's decision about the unpatentability of the claims of the uncorrected patent is a moot point because the PTO has actually corrected it, the patent that's retroactive.

[00:03:15] Speaker 03:
There is no longer an uncorrected patent.

[00:03:21] Speaker 03:
Why are we not talking about this under the rubric of mootness and what we are supposed to do as a court when the decision that's in front of us, the board decision, is moot, or rather the dispute about that decision is moot, whether vacating, whether dismissing, or whatnot?

[00:03:44] Speaker 01:
Your Honor, I agree that this could be handled under the doctrine of mootness, that the decision could be viewed as being moot.

[00:03:52] Speaker 01:
The way that this was presented and argued

[00:03:57] Speaker 01:
when we were first before the Federal Circuit, is that Sonos and the intervener suggested or argued that while the correction was retroactive, that doctrines of judicial estoppel forfeiture and waiver applied so that the decision had no impact, essentially.

[00:04:15] Speaker 03:
Do I remember right?

[00:04:16] Speaker 03:
In that motion practice, you suggested that one reason to give the board an opportunity to address the correction is that

[00:04:27] Speaker 03:
mootness might in fact be at play here?

[00:04:31] Speaker 01:
I believe that's correct your honor I believe that's correct and in fact that that's entirely consistent with what all we understand about section 256 and we've seen this play out with decisions like lending tree and Airbus that we cited in our briefs or even after a jury verdict

[00:04:47] Speaker 01:
this court and mentorship changed while the case was on appeal, this court remanded back to the district court to consider a motion to vacate the previous judgment, recognizing that a fundamental fact had now changed.

[00:04:59] Speaker 03:
So one further, at least for now, question along this line of mootness.

[00:05:05] Speaker 03:
When a matter becomes moot, the kind of norm is the court of appeals dismisses the appeal.

[00:05:17] Speaker 03:
That would not make you happy, right?

[00:05:19] Speaker 03:
Because there would be a standing, which is why I asked you questions about the status of the 2019 final written decision, a standing final written decision holding claims unpatentable.

[00:05:31] Speaker 03:
Sometimes, in addition to dismissing, the appellate court vacates the underlying decision.

[00:05:39] Speaker 03:
That is, according to the Supreme Court in U.S.

[00:05:43] Speaker 03:
Bancorp, Bonheur Mall, a equitable remedy.

[00:05:47] Speaker 03:
Why would you not be disentitled as a matter of equity to that remedy by your delay in having raised the inventorship correction issue?

[00:06:03] Speaker 01:
I think we would be entitled to the equitable remedy of vacancy should the court decide to proceed that way because courts have routinely recognized that inventorship is a complex issue of law, one that involves many underlying factual

[00:06:20] Speaker 01:
components or moving parts.

[00:06:22] Speaker 01:
In this case, it was the board's final written decision that illuminated some of the very issues for us that go to inventorship.

[00:06:29] Speaker 01:
And so we timely entered in, made these corrections once we recognized that the board's final written decision was no longer vacated, that those facts were holding, and that

[00:06:40] Speaker 01:
those facts would influence those very questions of inventorship.

[00:06:45] Speaker 01:
And so we did it still while the proceeding was live and our opportunity for direct review.

[00:06:51] Speaker 01:
and timely made that correction while the proceeding was still before the agency.

[00:06:56] Speaker 01:
And under our threats, we understand and know that the director's review, or at least the option of the director to review the proceeding is, the proceeding's not over, rather, until the director has that opportunity to actually review and you have a duly appointed executive officer that has that final word.

[00:07:15] Speaker 01:
So, I think that's an important point.

[00:07:17] Speaker 01:
And also just, again, we look at the language of Section 256 that's very unique in the patent law, in that a patent shall not be invalidated if a fettership can be corrected.

[00:07:27] Speaker 03:
Sometimes we, at least I find myself, in the position of

[00:07:32] Speaker 03:
Trying to speculate why in a given matter did the party in front of us not raise something earlier and sometimes it's pretty apparent that there would be a downside risk to do that some some kinds of Corrections of perspective only but not this one and I'm I guess I want to understand why this Request to correct the inventorship of

[00:07:59] Speaker 03:
was took so long to get out of the starting gate.

[00:08:04] Speaker 03:
It's not apparent to me what the downside risk to that was.

[00:08:11] Speaker 01:
Your Honor, implicit believed throughout the original proceeding before the board

[00:08:16] Speaker 01:
that the inventorship on the face of the patent was correct, that Mr. Balasani and Mr. Bradley were inventors and that the work of Mr. Carpenter inured to their benefit.

[00:08:27] Speaker 01:
We had submitted testimony to that effect and we believe the documents corroborated that.

[00:08:32] Speaker 05:
Were you using Mr. Carpenter as more of a person assisting with reduction to practice as opposed to viewing him in the concept of being a joint inventor?

[00:08:42] Speaker 01:
That was our initial understanding.

[00:08:44] Speaker 01:
And again, these issues tend to be muddy.

[00:08:48] Speaker 01:
One court acknowledged that ventureship is among the muddiest metaphysical doctrines in the metaphysical world of patent law.

[00:08:56] Speaker 01:
It's complicated.

[00:08:57] Speaker 01:
And at the time, we did believe, based on our best ability to reconstruct what had happened almost 20 years earlier, that the inventorship on the face of the patent was presumptively correct, and that Mr. Carpenter's work inured to their benefit.

[00:09:11] Speaker 01:
Now, when the board made its final decision,

[00:09:13] Speaker 01:
The board made a couple important findings there.

[00:09:16] Speaker 01:
It found that the work of Mr. Carpenter, that his authorship of the document that became the provisional application and his writing of the source code was

[00:09:29] Speaker 01:
not something that entered to the benefit of Mr. Bradley and Mr. Balasinian.

[00:09:34] Speaker 01:
Moreover, the board found that we did not establish that Mr. Balasinian and Mr. Bradley had conceived of the invention earlier and then communicated that conception to Mr. Carpenter.

[00:09:46] Speaker 01:
So in light of the board's final written decision, implicit reassess these important issues and determine that Mr. Carpenter himself must have been a contributor to the conception of the invention it's claimed and corrected the inventorship.

[00:09:59] Speaker 03:
Now... Again, what would have been the downside to filing the correction papers?

[00:10:08] Speaker 03:
I mean, I just always speculate Mr. Carpenter

[00:10:12] Speaker 03:
Refused to sign something to say that he was inventor or mr. Carpenter is no longer affiliated with the company So you'd be splitting the ownership.

[00:10:23] Speaker 03:
Is there is there anything you can tell me about that?

[00:10:27] Speaker 01:
I can tell you that mr. Carpenter.

[00:10:29] Speaker 01:
I believe during the time of this proceeding lived in Australia He wasn't in the United States before the internet era

[00:10:38] Speaker 01:
Again, I just know that he lived in Australia.

[00:10:41] Speaker 01:
But I also know, too, that at the time, there wasn't this is what implicit belief.

[00:10:46] Speaker 01:
They believe that Mr. Carpenter's work simply inured to the benefit of the previously named inventor.

[00:10:51] Speaker 01:
So it wasn't as if they came to that conclusion earlier.

[00:10:55] Speaker 01:
It was really the board's final written decision and those findings there that shed additional light.

[00:11:00] Speaker 05:
But did you wait two years after the final written decision to actually see

[00:11:04] Speaker 05:
The correction, or give me a sense of the timeline, just so I understand the precise timeline.

[00:11:08] Speaker 01:
To answer your question, it was approximately two years.

[00:11:11] Speaker 01:
But I can explain why that shouldn't matter here.

[00:11:15] Speaker 01:
So this all occurred in the backdrop of this court's decision and the Supreme Court's decision in Arthrex.

[00:11:20] Speaker 01:
So for the vast majority of that time, the board's final written decisions were either stood subject to vacatur under this court's Arthrex remedy, or were in fact vacated.

[00:11:31] Speaker 01:
So those very findings that we felt

[00:11:34] Speaker 01:
would heavily influence the inventorship determination, it was unclear what would happen with those findings.

[00:11:40] Speaker 01:
So implicit pursuit of its remedy under our threats, seeking a vacancy of those findings.

[00:11:47] Speaker 01:
And shortly after the Supreme Court made its decision and it had the opportunity for a direct review, today that occurs immediately after the final decision.

[00:11:55] Speaker 01:
But that wasn't the case in 2021, of course.

[00:11:57] Speaker 04:
Counsel, sometimes when a litigant changes its position,

[00:12:04] Speaker 04:
It is aware of that alternative position because of the arguments that are made by its adversary, by the opposing party.

[00:12:15] Speaker 04:
Was there something about Sonis's position that could have led implicit to understand that this was an alternative theory that could have been presented?

[00:12:27] Speaker 01:
I don't think so, Your Honor.

[00:12:30] Speaker 01:
I think any time a party is looking at conception and reduction of practice and annulment, these questions can come up of whether or not someone is part of the conception or their work is merely annulling to the benefit of the inventive entity on the face of the patent.

[00:12:49] Speaker 01:
In this case, implicit belief that that was not the case, that the inventorship on the face of the patent was correct.

[00:12:56] Speaker 01:
I know that my friends Sonost and Intravenor have suggested that we perhaps could have raised this as an alternative argument.

[00:13:04] Speaker 01:
I don't think that's correct.

[00:13:06] Speaker 01:
I think that the board is very clear that it entertains the inventorship in front of them.

[00:13:11] Speaker 01:
On the face of the patent, it doesn't consider alternative inventorships until those have actually been executed.

[00:13:17] Speaker 03:
So actually, on that point, could the board rule that the way a court could, that the inventorship is wrong and order

[00:13:31] Speaker 03:
The director to the way a court can to correct the inventorship.

[00:13:37] Speaker 01:
That's 256 speaks only about courts doing that Your honor, I think that's correct I think that the board does not have the ability to do that and the board has in fact recognized the correction of inventorship is not within its authority in an IPR proceeding but you could get the board to conclude that what that the

[00:13:57] Speaker 03:
that Carpenter was, in fact, an inventor, at least in the alternative, in which case the priority question gets transformed, right?

[00:14:08] Speaker 01:
I don't think we could get the board to make a conclusion like that, actually, Your Honor.

[00:14:12] Speaker 03:
I don't remember in your brief here your saying that it would be relevant to a question about forfeiture, for example, to say, if it were true,

[00:14:26] Speaker 03:
that we didn't wait too long to present this to the board.

[00:14:29] Speaker 03:
We couldn't have presented it to the board.

[00:14:32] Speaker 03:
It's not a board issue.

[00:14:34] Speaker 03:
It becomes a board issue only after you go get the director to do it.

[00:14:42] Speaker 01:
I believe we did point out in our reply brief that we couldn't have raised this as an alternative argument because the board has interpreted its authority as not being able to address inventorship during an IPR proceeding.

[00:14:54] Speaker 01:
Of course,

[00:14:55] Speaker 01:
And plus it didn't know it needed to change its inventorship at the time.

[00:14:58] Speaker 01:
It was really the final written decision that shed light on what the correct inventorship was.

[00:15:02] Speaker 05:
I'm just taking issue with the two years post the final written decision.

[00:15:06] Speaker 05:
So I understand what you're indicating in terms of not being able to raise it during the IPR proceedings and the argument you're making there.

[00:15:14] Speaker 05:
But maybe just give me a sense of why it had to be a whole two years post the final written decision.

[00:15:21] Speaker 01:
Well, Your Honor, again, I think the best answer to that question is the Arthrox decision.

[00:15:26] Speaker 01:
And this inventorship change was so much informed by what came out of the final written decision.

[00:15:33] Speaker 01:
And for this two-year period, we were not sure what the status of those final written decisions would be.

[00:15:37] Speaker 01:
It was possible that they would be vacated and we would be sent back to the board again for another final written decision.

[00:15:44] Speaker 01:
Perhaps the board would come out differently this time.

[00:15:47] Speaker 01:
We simply didn't know.

[00:15:49] Speaker 01:
So implicit pursuit its remedies under our threats to deal with that issue first and then once those final written decisions we knew the Supreme Court's remedy, that's when we made the correction that we did.

[00:16:04] Speaker 03:
Thank you, Your Honor.

[00:16:05] Speaker 03:
Thank you.

[00:16:06] Speaker 03:
I will restore your rebuttal time.

[00:16:08] Speaker 01:
Thank you.

[00:16:20] Speaker 03:
Mr. Richter?

[00:16:22] Speaker 00:
Yes, your honor.

[00:16:23] Speaker 00:
Good morning.

[00:16:25] Speaker 00:
Cole Richter on behalf of Sonos, the athlete.

[00:16:29] Speaker 00:
May it please the court.

[00:16:31] Speaker 00:
This court's limited remand order in 2022 was simple.

[00:16:35] Speaker 00:
It was to allow the board to issue an order addressing what, if any, impact the certificates of correction would have on the final written decisions.

[00:16:43] Speaker 00:
In pursuant to that remand, the board determined that implicit both waived and forfeited

[00:16:48] Speaker 00:
any anidating arguments that it failed to make before the board during the proceeding, including anidating arguments based on a new inventive entity.

[00:16:57] Speaker 00:
Thus, they concluded that the certificates of correction did not have any impact on the final written decisions.

[00:17:02] Speaker 03:
This is not specifically for you, but maybe for the audience.

[00:17:08] Speaker 03:
So the relevant inquiry here is whether a particular piece of prior art, Genesci, predates the invention.

[00:17:21] Speaker 03:
Ordinarily, the invention is the priority date listed on the patent when it was applied for, which in this case is after the Geneski prior art.

[00:17:33] Speaker 03:
But because the patent owner has the right to come in and show that they actually completed the invention before the date on the patent.

[00:17:44] Speaker 03:
And so when you talk about antedating, that's the inquiry.

[00:17:48] Speaker 00:
Exactly right, Your Honor.

[00:17:49] Speaker 00:
Yes, and this was actually a feature of the prior law before the 2012 America Invents Act.

[00:17:55] Speaker 00:
Yes.

[00:17:55] Speaker 00:
So what actually enables patent owners like Implicit to do is provide evidence during the proceeding and say, hey, I actually invented this

[00:18:05] Speaker 03:
invented my patent before the prior art even though I filed it after the prior art and that's exactly what implicit did during this and the whole dispute about whether Carpenter is one of the inventors Matters because if he didn't do his work and he was an inventor until later Wouldn't help if he was an inventor and he completed his work before then that helps them get a priority date and

[00:18:34] Speaker 03:
earlier, but the rules when you're relying on somebody, when you're inventors and you're relying on a non-inventor to complete the process, you understand what I mean by that, there are certain rules and the board said you didn't show that.

[00:18:50] Speaker 03:
So bringing him in as an inventor maybe completely solves their end-to-date problem of you may have arguments to the contrary, but it certainly helps.

[00:19:00] Speaker 00:
Yes, the implicit argument is that it helps.

[00:19:03] Speaker 00:
And there's actually, as Your Honors know, there's extra evidentiary burdens that are incumbent on the patent owner when they try to establish anidating or swear behind corroborating evidence as a necessary element that the patent owner needs to prove.

[00:19:21] Speaker 00:
The board concluded that the patent owner failed to provide corroborating evidence of the conception and failed to show.

[00:19:28] Speaker 03:
But we're not here on that question right now.

[00:19:32] Speaker 03:
So I'm going to let you talk about, let's just call it forfeiture.

[00:19:38] Speaker 03:
I don't think for purposes of today we need to keep going back between waiver and forfeiture.

[00:19:44] Speaker 03:
Forfeiture is just they waited too long to do this.

[00:19:48] Speaker 03:
But can you address my whole

[00:19:51] Speaker 03:
inquiry about mootness, why this is not a properly thought of as the question of the validity of the patent of the uncorrected patent is a moot issue.

[00:20:04] Speaker 03:
So the question is what do we do with this moot case?

[00:20:08] Speaker 03:
Dismiss the appeal, dismiss and vacate the decision or what?

[00:20:12] Speaker 00:
I think mootness is perhaps an alternative reason why this

[00:20:17] Speaker 00:
this panel could dismiss the appeal.

[00:20:20] Speaker 00:
I think dismissal and vacator is not appropriate because Sonos established before the Patent Office that this patent is invalid for Genevsky.

[00:20:33] Speaker 00:
So dismissal and vacator would actually benefit the patent owner when that's not the remedy that was at issue.

[00:20:42] Speaker 00:
It's not the remedy they argued for.

[00:20:44] Speaker 00:
And it would disenfranchise the appellee Sonos.

[00:20:48] Speaker 05:
What is your response to the types of questions I was asking opposing counsel terms of the timeline?

[00:20:54] Speaker 05:
They're indicating that because of like the Arthrax decision and the like

[00:20:59] Speaker 05:
They have an explanation for why they waited two years after the final written decisions to seek correction of inventorship.

[00:21:06] Speaker 05:
Do you have a response to that?

[00:21:07] Speaker 00:
Yeah, as we know, Arthrex was a decision about the constitutionality of the administrative patent law judges, and it affected IPR proceedings.

[00:21:17] Speaker 00:
There are many other matters that the Patent Office handles.

[00:21:22] Speaker 00:
Corrections would be one of them.

[00:21:23] Speaker 00:
The corrections do not go to APJs.

[00:21:26] Speaker 00:
They're handled by other personnel in the patent office.

[00:21:29] Speaker 00:
So the Arthrex decision is no basis to have waited two years to correct these patents.

[00:21:35] Speaker 04:
Do I remember correctly or not whether this litigant in particular had raised an Arthrex argument in their appeal?

[00:21:44] Speaker 00:
Implicit, yes.

[00:21:46] Speaker 00:
When the appeal was initially filed,

[00:21:50] Speaker 00:
Implicit actually filed an opening brief and its own, its lone argument in that brief was an Arthrex argument and then asked for the remedy of vacator or a remand to request a constitutionally appointed.

[00:22:05] Speaker 03:
You said that was its only argument?

[00:22:07] Speaker 00:
That was the only argument Implicit raised in its initial opening brief.

[00:22:12] Speaker 00:
At some point implicit had switched council and the new council had then said actually can you can you please vacate the I want a new remedy the dismissal of the appeal and a vacator of the Decision and that was the remedy that many applicants were asking for at the time was a dismissal of the appeal This court did order that dismissal vacator ordered vacator vacator and yes and

[00:22:40] Speaker 00:
then that's when the decision went up to the Supreme Court, which vacated this court's vacator.

[00:22:48] Speaker 00:
And then the appeal was reinstated.

[00:22:50] Speaker 00:
And this panel allowed implicitly struck the prior briefing, allowed implicit to request direct review, and then file a new opening brief.

[00:23:00] Speaker 00:
So just returning to forfeiture, I think just like

[00:23:04] Speaker 03:
So as part of forfeiture, what is it that you think the board could have done had this year been an argument?

[00:23:16] Speaker 03:
I guess there are two possibilities, right?

[00:23:20] Speaker 03:
An argument that Carpenter was a co-inventor.

[00:23:22] Speaker 03:
The second is what?

[00:23:27] Speaker 03:
By the way, we have already received from, you know, your sister over there, part of the BTO, the director,

[00:23:34] Speaker 03:
a correction Give effect to it Are you suggesting or did the board?

[00:23:42] Speaker 03:
suggest in its forfeiture conclusion that that Implicit could have asked the board to determine that carpenter was a co-inventor

[00:23:52] Speaker 00:
No, I don't think they suggested that.

[00:23:55] Speaker 00:
I think the board said if Implicit had argued that Carpenter was an inventor and demonstrated some ability to correct, like filing the petition to correct, the board could have considered that argument and perhaps would have.

[00:24:12] Speaker 00:
I don't see any reason why

[00:24:15] Speaker 00:
implicit, couldn't have asked for that.

[00:24:17] Speaker 03:
So the thing that was delayed is simply the request to the director to correct under 256?

[00:24:27] Speaker 00:
Yes, and the fact that they did not argue conception reduction to practice under that particular entity.

[00:24:35] Speaker 00:
So there's two reasons.

[00:24:36] Speaker 00:
Yes, they did not ask for the correction in time.

[00:24:41] Speaker 00:
In fact, waited very long, two years after

[00:24:44] Speaker 00:
the proceeding was open.

[00:24:47] Speaker 00:
And then they didn't make the argument during the proceeding.

[00:24:51] Speaker 05:
And that's why it's... Two years after the proceeding concluded in terms of final written decisions you made, right?

[00:24:58] Speaker 00:
Yes, correct.

[00:24:58] Speaker 00:
The final written decisions were September 2019 and the correction was, I think, November of 2021.

[00:25:03] Speaker 04:
What is the basis for saying that they should have asked during the original proceeding

[00:25:10] Speaker 04:
for Mr. Kermeter to be named an inventor?

[00:25:13] Speaker 00:
The basis was that the inventorship is based on all of the evidence that Implicit itself produced.

[00:25:21] Speaker 00:
It's their own evidence.

[00:25:23] Speaker 00:
Nothing that the board did illuminated the inventorship.

[00:25:27] Speaker 00:
The board simply concluded that Implicit did not provide corroborating evidence

[00:25:35] Speaker 00:
showing that Thalesanian and Bradley told Carpenter about the invention.

[00:25:41] Speaker 00:
So implicit is arguing.

[00:25:43] Speaker 04:
Your view is that they should have anticipated that this was a likely outcome, that the board would have made fact findings that would have suggested that Carpenter was an inventor?

[00:25:54] Speaker 00:
I don't think that the correction is appropriately based on what the

[00:26:00] Speaker 00:
what the PTAB found in its final reading decisions, I think they are taking a look at the evidence and saying, well, Mr. Carpenter's name is the only name on the source code, the only name on the Word document.

[00:26:13] Speaker 00:
Therefore, he conceived it.

[00:26:16] Speaker 00:
I think that's what they're saying now.

[00:26:17] Speaker 00:
And if that's what they're saying now, they could have corrected during the proceeding, because it's the same evidence.

[00:26:25] Speaker 03:
And I think you made this clear already, but I make it extra clear.

[00:26:30] Speaker 03:
When you say could have corrected, you don't mean could have simply and only argued to the board that Carpenter was part of the inventive entity.

[00:26:43] Speaker 03:
What you mean is could have gone to the director, got the certificate, then returned to the board and said, look,

[00:26:49] Speaker 03:
This patent now has on it a different group of inventors.

[00:26:55] Speaker 03:
Our issues are therefore changed.

[00:26:57] Speaker 00:
Yes, Your Honor.

[00:26:57] Speaker 00:
I think that's right.

[00:26:59] Speaker 00:
At a minimum, they could have filed the petitions to correct inventorship and then argued to the board, hey, I filed a petition to correct inventorship.

[00:27:09] Speaker 00:
It will be corrected because it's a ministerial task by the patent office.

[00:27:13] Speaker 00:
They're not going to fight me on it.

[00:27:17] Speaker 00:
I would like to argue that the inventive entity is the inventive entity I've asked to correct to.

[00:27:22] Speaker 00:
So at a minimum, they could have done that.

[00:27:24] Speaker 00:
They could have also asked the board to stay the proceedings while the Petitions Office handled the petition to correct.

[00:27:33] Speaker 00:
And then they could have.

[00:27:34] Speaker 03:
Does the board ever do that?

[00:27:36] Speaker 03:
I thought the board and IPRs.

[00:27:39] Speaker 03:
essentially.

[00:27:40] Speaker 03:
It's under a deadline, which it takes very, very seriously.

[00:27:46] Speaker 00:
Yes, a one-year deadline.

[00:27:47] Speaker 00:
There is a provision to allow the board to extend that one-year time period, which I believe it's done in a few remote cases, but if it was an important

[00:27:58] Speaker 00:
feature of the Patenor's argument, it could have at least asked.

[00:28:01] Speaker 00:
The board may not have granted it, or the board may have said, well, why don't you argue both?

[00:28:05] Speaker 00:
And if it's correct, then your argument here will apply.

[00:28:08] Speaker 00:
If it is not correct, your argument here will apply.

[00:28:10] Speaker 03:
And I take it from the way you're making the point.

[00:28:12] Speaker 03:
You don't know of prior

[00:28:17] Speaker 03:
cases where this kind of pattern has actually arisen?

[00:28:23] Speaker 00:
The exact pattern here?

[00:28:25] Speaker 00:
No.

[00:28:25] Speaker 00:
I've never seen a party say, please delay proceedings.

[00:28:29] Speaker 03:
We're going to go to the director for a correction of the mentorship.

[00:28:34] Speaker 00:
I've seen certificates of correction under 255 made during patent office proceedings, but not under 256.

[00:28:43] Speaker 00:
Right.

[00:28:44] Speaker 00:
No.

[00:28:46] Speaker 03:
I think we should hear from the government.

[00:28:50] Speaker 00:
Thank you.

[00:28:51] Speaker 00:
Thank you, Your Honors.

[00:29:02] Speaker 02:
Good morning, Your Honors.

[00:29:03] Speaker 02:
May it please the Court, Rob McBride on behalf of the Intervener and Director of the United States Patent and Trademark Office.

[00:29:10] Speaker 02:
I'd like to point out that

[00:29:11] Speaker 02:
All of the evidence concerning inventorship was in the hands of Implicit when they filed their patent owner response.

[00:29:18] Speaker 02:
So there's no reason that if Implicit had that evidence, they could have requested a petition to correct inventorship at that time.

[00:29:27] Speaker 02:
There's nothing the board did here to change inventorship.

[00:29:31] Speaker 02:
They didn't determine inventorship.

[00:29:32] Speaker 02:
They didn't assess inventorship.

[00:29:34] Speaker 02:
They simply accepted the inventorship that implicit argued, which was based on Bradley and Balasanian as the two inventors, and Guy Carpenter was essentially a pair of hands.

[00:29:45] Speaker 02:
It was their burden to anteate the Geneski reference, to show prior conception by Bradley and Balasanian, and also to show communication of that invention

[00:29:57] Speaker 02:
to Guy Carpenter, they just failed to present sufficient evidence to prove that point.

[00:30:03] Speaker 02:
They just had a declaration from one of the named inventors.

[00:30:06] Speaker 03:
Right, but I'm not quite sure why you're telling us this.

[00:30:09] Speaker 03:
We do not have in front of us any issue about whether, on the original uncorrected inventorship, the board's decision

[00:30:19] Speaker 03:
of unpatentability was incorrect.

[00:30:22] Speaker 03:
Do you agree that that's a moot issue?

[00:30:26] Speaker 02:
I agree that it's not an issue on appeal.

[00:30:28] Speaker 02:
The reason I'm raising it is because Implicit has argued that fact findings made by the board in its final written decision illuminated or shed light on inventorship.

[00:30:41] Speaker 02:
And that's what required their change.

[00:30:43] Speaker 03:
Can you think of any reason, and now I'm thinking of the kinds of questions I was asking your counterpart, would there have been any downside to the patent owner

[00:30:56] Speaker 03:
to say to go and seek the addition of carpenter as an inventor.

[00:31:05] Speaker 03:
If you remember in egenera, there's a reference to one kind of downside that there can sometimes be is a worry about splitting ownership.

[00:31:12] Speaker 03:
It can be disastrous for the patent owner.

[00:31:15] Speaker 03:
Is there anything like that here?

[00:31:18] Speaker 03:
And it seems to me it's helpful to the board's current position if the answer is no.

[00:31:26] Speaker 03:
There was no price to be paid, but I guess I feel like that I don't understand the lay of the land here well enough on that.

[00:31:35] Speaker 02:
I don't think there's any evidence in the record or any reason that implicit has provided why they didn't correct this inventorship earlier.

[00:31:42] Speaker 02:
other than they just point to the board's decision and the fact findings as illuminating inventorship.

[00:31:48] Speaker 02:
And that's the reason they changed inventorship.

[00:31:51] Speaker 05:
But again, the board never- They also are pointing to, though, the interplay with Arthrex as justifying their proposed waiting two years post the final written decision.

[00:32:00] Speaker 05:
So I don't know if you want to speak to that as well.

[00:32:02] Speaker 05:
But that's the additional reason I heard opposing counsel say they.

[00:32:06] Speaker 02:
I heard that as well.

[00:32:06] Speaker 02:
And I don't think there's any reason.

[00:32:08] Speaker 02:
Once that board decision came out, and if it changed inventorship, I don't think it did.

[00:32:13] Speaker 02:
But even if they believed that it did, they should have changed inventorship right then and there.

[00:32:18] Speaker 02:
There's no reason to wait two years

[00:32:20] Speaker 02:
You know, they could have filed a petition with the director to correct inventorship at any time.

[00:32:25] Speaker 02:
They could have done it in 2018 when their patent owner response was due.

[00:32:29] Speaker 02:
They could have done it in 2019 after the board decision.

[00:32:32] Speaker 02:
There's simply no reason to wait until 2021.

[00:32:35] Speaker 04:
What about the fact that the decision either was vacated or might be vacated?

[00:32:41] Speaker 04:
Do you think that has no impact?

[00:32:44] Speaker 02:
That has impact on the decision, but I don't think that impacted their ability to correct inventorship.

[00:32:52] Speaker 04:
Even though the fact findings in the board's opinion were vacated at the time?

[00:32:59] Speaker 02:
Correct.

[00:32:59] Speaker 02:
Even though the fact findings were vacated at the time, that the patent is still in existence and they can correct that inventorship at any time.

[00:33:08] Speaker 02:
I'm not aware of any rule that would have prevented them from changing it.

[00:33:12] Speaker 04:
What about the argument that inventorship is a complex issue and they had the position

[00:33:18] Speaker 04:
They thought that their inventors, the two named inventors originally were sufficient or those were the inventors.

[00:33:25] Speaker 04:
And it wasn't until, I understand you don't think the board's opinion changed anything.

[00:33:31] Speaker 04:
But do you think that there could never be a circumstance where an opinion could change someone's outlook on inventorship?

[00:33:40] Speaker 02:
Certainly there are situations, and Lendingtree and Egenera are good examples, where the deciding tribunal, in that case it was the district court, did something.

[00:33:50] Speaker 02:
There was an intervening change.

[00:33:52] Speaker 02:
In Egenera, it was the change in the scope of the claim because of the district court's claim construction.

[00:33:57] Speaker 02:
It broadened the scope of the claim, which required adding in an inventor.

[00:34:01] Speaker 02:
In the lending tree case, the jury issued a verdict of patent invalidity based on incorrect inventorship.

[00:34:08] Speaker 02:
And that required changing the inventorship to make it correct.

[00:34:14] Speaker 02:
In this case, there's no intervening decision by the PTAB or this court or any tribunal that changed inventorship.

[00:34:21] Speaker 02:
So if they wanted to make this argument, the time to do it would have been in the patent owner response or when it was pending before the board decision.

[00:34:32] Speaker 02:
There's no reason why they couldn't have been able to change it then.

[00:34:37] Speaker 03:
Can I just return one last time to the?

[00:34:42] Speaker 03:
potential mootness framing the final written decision on review here is a decision about a No longer existing and kind of retroactively never actually existed patent namely and in the one without correct the corrective mentorship that suggests to me that

[00:35:05] Speaker 03:
The matter before us is moot.

[00:35:09] Speaker 03:
That is, whether the final written decision is correct or not.

[00:35:14] Speaker 03:
It's about a matter that doesn't even exist anymore.

[00:35:19] Speaker 03:
Why is that not the right way to look at it?

[00:35:21] Speaker 03:
And if so, what is the right remedy?

[00:35:24] Speaker 03:
Dismissal or dismissal plus vacator?

[00:35:28] Speaker 02:
So in reading the cases that involve these corrections of inventorship, like Lending Tree is a good example where the jury found the inventorship was incorrect, this court did not vacate the jury's determination.

[00:35:43] Speaker 02:
In that case, this court remanded for the district court to use this discretion to decide whether it would be equitable to vacate the jury's determination.

[00:35:54] Speaker 02:
So I don't think mootness

[00:35:56] Speaker 02:
is really at play here.

[00:35:58] Speaker 02:
I think the patent still exists.

[00:35:59] Speaker 02:
The inventorship has changed.

[00:36:01] Speaker 02:
But all of the issues that have been decided concerning anticipation and obviousness are still applicable.

[00:36:07] Speaker 02:
I don't think anyone's ever argued that this should be decided on in this case.

[00:36:11] Speaker 03:
Well, I perfectly agree.

[00:36:13] Speaker 03:
Nobody has argued it.

[00:36:15] Speaker 03:
But there is no live issue about any of the obviousness or anticipation issues

[00:36:26] Speaker 03:
here on the assumption, oh, I forget about assumption, on the original uncorrected patent, because that original uncorrected patent is defunct and retroactively defunct.

[00:36:47] Speaker 02:
I'm not sure I have a good answer for you on this question.

[00:36:52] Speaker 02:
I think the proper way to handle it is just to affirm the board's decision and find that they forfeited this argument.

[00:36:59] Speaker 02:
It's just essentially a new argument that they should have raised earlier in forfeiture principles applied to Section 256 Corrections of Inventorship.

[00:37:09] Speaker 02:
And there's no reason not to apply here.

[00:37:12] Speaker 02:
If you look at the Supreme Court's decision in Halbering,

[00:37:14] Speaker 02:
They talked about one of the reasons for foragers to avoid sandbagging, where you have two arguments, you lead with one, you keep one behind you, and then if you lose in your first argument, you raise the second argument and say that the tribunal erred and you have to redo the proceeding.

[00:37:28] Speaker 02:
That's essentially what we have here.

[00:37:30] Speaker 02:
implicit was in possession of all the facts concerning inventorship.

[00:37:35] Speaker 02:
They chose one legal strategy.

[00:37:37] Speaker 02:
If they succeeded in that legal strategy, they probably wouldn't have corrected their inventorship.

[00:37:42] Speaker 02:
It's only because they lost and the board found that they failed to meet their burden of proof and proving conception and communication to Guy Carpenter that they're correcting their inventorship.

[00:37:52] Speaker 02:
And I think that's just classic forfeiture.

[00:37:56] Speaker 03:
OK.

[00:37:56] Speaker 03:
Thank you for your argument.

[00:37:57] Speaker 03:
Thank you.

[00:37:59] Speaker 03:
Where is our timekeeper?

[00:38:02] Speaker 03:
Where's our timekeeper?

[00:38:05] Speaker 03:
Oh, sorry.

[00:38:08] Speaker 03:
Three minutes.

[00:38:09] Speaker 01:
Thank you, Your Honor.

[00:38:11] Speaker 01:
Whether it's under principles of mootness or more along the lines of Lendingtree or Airbus, we believe that this court should vacate the final written decisions here.

[00:38:19] Speaker 01:
And there are a couple of reasons for that.

[00:38:21] Speaker 01:
I think one is the Lendingtree court recognized to let this judgment stand would appear to violate the letter and the spirit of Section 256.

[00:38:30] Speaker 01:
And that's what this court recognized in Lendingtree.

[00:38:32] Speaker 01:
The provision is retroactive and exists precisely for this reason, to prevent these avoidable forfeitures.

[00:38:39] Speaker 01:
It's unique in patent law, but it is a provision that applies retroactively to do this.

[00:38:46] Speaker 01:
And in fact, this is one way in which 256 is very different from its sister provisions in 255 or 254.

[00:38:54] Speaker 01:
In section 255, for example, Certificate of Corrections for Appellant's Mistakes,

[00:38:58] Speaker 01:
Those apply only to the trial of actions for causes thereafter arising, so only prospectively.

[00:39:05] Speaker 01:
But this is fundamentally different, and so I think that warrants a vacatur, given the unique aspects of 256 at play here.

[00:39:15] Speaker 01:
Also, Judge Cunningham, to go back to your question a little bit on the timing,

[00:39:19] Speaker 01:
of this.

[00:39:20] Speaker 01:
I think anytime you add an inventor to a patent, there are complex issues with ownership of the patent and arrangements that need to be worked out there.

[00:39:30] Speaker 01:
So that is always a consideration when you are considering whether or not someone's an inventor or

[00:39:37] Speaker 01:
whether that makes sense.

[00:39:38] Speaker 01:
It's a hurdle to overcome.

[00:39:40] Speaker 03:
And in this situation... Did we have anything in the record explaining that this might be such a thing?

[00:39:46] Speaker 03:
I thought Carpenter worked for the same entity and when the certificate of correction was requested, the documentation which he signed made it clear that the same entity still was the assignee of the thing.

[00:40:04] Speaker 01:
That's correct.

[00:40:05] Speaker 01:
I'm not aware of anything in this record other than to point out that my understanding is that there were contractual arrangements that needed to be made to actually add him to an inventor.

[00:40:15] Speaker 01:
He was no longer affiliated or associated, my understanding, with Implicit as a company at the time.

[00:40:22] Speaker 01:
that this occurred, so it did require some work to do that.

[00:40:26] Speaker 01:
But again, I think the fundamental changes here we saw in Arthrex, again, we were operating in a universe where the final rate decisions were either vacated or subject to vacature, and we could have had a new board

[00:40:39] Speaker 01:
come to a different conclusion on this.

[00:40:41] Speaker 01:
Again, we disagree that we think the final written decisions did shed a lot of light on the inventorship issue, particularly that the board found that we were unable to show that Mr. Balasane and Mr. Bradley had an earlier conception of this invention, one that predated these documents that we know show a reduction of practice of the invention.

[00:41:03] Speaker 01:
So it's hard to imagine a world where that doesn't influence the outcome of this complex legal issue.

[00:41:09] Speaker 05:
In your view, would there be any period of time that would be too late for you to have raised the correction of ownership?

[00:41:15] Speaker 05:
I know that you're contending that two years after the final written decision came out was timely, effectively, but is there any sort of time period that you think would effectively be untimely in terms of waiting to raise it?

[00:41:28] Speaker 01:
So to answer your question, I think the answer is yes, Your Honor.

[00:41:31] Speaker 01:
I think that there are situations where principles of finality do come into play.

[00:41:35] Speaker 01:
If you have

[00:41:37] Speaker 01:
For example, a final judgment at a district court, for example, that could be an issue.

[00:41:43] Speaker 01:
Rule 60 can apply in certain circumstances to allow vacature of final judgments in certain restricted situations, but we don't think it's infinite.

[00:41:54] Speaker 01:
But here, I would point out that this was done at our first opportunity for director review.

[00:42:00] Speaker 01:
And I know that today, that occurs immediately after a final written decision, but at the time, we made the correction at the first opportunity that we had when we knew the final written decisions were in place, they weren't being vacated, and we had an opportunity again to go before the executive agency.

[00:42:19] Speaker 03:
Thank you.

[00:42:21] Speaker 03:
Thanks to all counsel.

[00:42:22] Speaker 03:
The case is submitted.