[00:00:00] Speaker 02:
Our last case this morning is Fortress Iron versus Digger Specialties, 2024-2313.

[00:00:07] Speaker 02:
Mr. Storm.

[00:00:08] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:15] Speaker 01:
It's been a quick morning.

[00:00:16] Speaker 01:
Good for all of us.

[00:00:20] Speaker 01:
The primary issue in this case is whether Section 256B permits a court to correct inventorship.

[00:00:28] Speaker 01:
When the record is clear,

[00:00:29] Speaker 01:
that there's no dispute regarding that a particular individual is a co-inventor, and the assiny, fortress, wants to add that individual.

[00:00:40] Speaker 01:
The reason that this issue comes up is because the individual we're talking about is a Chinese native who we cannot find.

[00:00:48] Speaker 01:
He worked on the project that led to the Patent World Invention in the early days to 2012, 2013.

[00:00:56] Speaker 01:
And by the time this issue arose, he had ceased his employment with the company YD that provided quality control for Fortress.

[00:01:05] Speaker 01:
So when the information came to light that he needed to be added as a co-inventor, we were not able to find him.

[00:01:13] Speaker 02:
He didn't consent, and he didn't appear at a hearing.

[00:01:17] Speaker 02:
No.

[00:01:18] Speaker 02:
So he didn't comply with the statute.

[00:01:23] Speaker 01:
No, I disagree, Your Honor.

[00:01:24] Speaker 01:
The statute says that the hearing has to be with notice to parties concerned.

[00:01:29] Speaker 01:
And the question is whether Mr. Wong is a party concerned when the result of the hearing would be adding him as an inventor.

[00:01:38] Speaker 01:
If we were able to find him, of course, we would be able to use 256A.

[00:01:43] Speaker 02:
But the inventor has to be concerned.

[00:01:45] Speaker 02:
In any question of inventorship, the inventor's testimony is critical.

[00:01:52] Speaker 01:
Not necessarily.

[00:01:53] Speaker 01:
Number one, in this case, there's no factual question whatsoever that Mr. Wong is a co-inventor.

[00:02:01] Speaker 01:
So the testimony that he would provide has already been satisfied by testimony in the record that he is a co-inventor.

[00:02:09] Speaker 01:
And the cases that deal with this do not necessarily require that named inventors always appear.

[00:02:20] Speaker 01:
So if you go through the cases that have been cited, for example, in the Iowa State.

[00:02:34] Speaker 02:
Is there any case in which the inventor simply didn't respond, didn't consent, wasn't reached?

[00:02:45] Speaker 01:
We did not find any case where the inventor before this, where the inventor could not be found.

[00:02:51] Speaker 01:
And I think, as you'll know on the record, Mr. Wong has been added as a co-inventor to continuation applications.

[00:02:57] Speaker 02:
In other words, there's no precedent in your favor?

[00:03:00] Speaker 01:
I don't think there's any precedent against us either.

[00:03:02] Speaker 02:
A case of first impression?

[00:03:05] Speaker 01:
I think it's a case of first impression.

[00:03:06] Speaker 01:
If you look at 256A and 256B, well, we all know that the purpose of 256A is remedial.

[00:03:14] Speaker 01:
It's intended to preserve patents where there is a question about inventorship.

[00:03:19] Speaker 01:
256A applies when all the parties can file the right paperwork with the patent office.

[00:03:27] Speaker 01:
We can't use 256A because the procedures established by the commissioner require an actual signature from each individual that's involved.

[00:03:37] Speaker 01:
Since we can't get Mr. Huang's signature, we can't use 256A.

[00:03:41] Speaker 01:
256B, in basically all the cases that we can find, deal with disputes where

[00:03:48] Speaker 01:
There are parties with rights, and another party wants to come in and either strike an inventor or add an inventor or do both, where the ownership or the rights between the parties shifts.

[00:04:01] Speaker 01:
And that's really a due process question.

[00:04:03] Speaker 01:
So we propose that the terminology in 256B, the parties concerned,

[00:04:10] Speaker 01:
should be understood from a due process perspective, that the entities that need notice and that need to have an opportunity to participate in the hearing are those who would have an adverse result if they don't participate.

[00:04:24] Speaker 01:
For example, lose assignment to a patent because their inventors are taken off the patent, or gain rights.

[00:04:33] Speaker 01:
The Chu case is one where the professor was going to gain reputational and potentially were royalty

[00:04:39] Speaker 01:
In this case, Mr. Wong doesn't currently know that he's a co-inventor because we haven't been able to find him to inform it, but his status will be improved.

[00:04:51] Speaker 01:
Fortress' status will stay the same.

[00:04:53] Speaker 01:
There'll be the assignee of the patents.

[00:04:55] Speaker 01:
Mr. Wong's status will be improved based on an undisputed factual record.

[00:05:00] Speaker 01:
There's no due process dispute here between Wong that we can't find

[00:05:07] Speaker 01:
and the named inventors or the Asani fortress.

[00:05:11] Speaker 01:
And that's in part shown by the fact that there were actually two people in China that we identified as previously unnamed co-inventors, Mr. Wang, that we're here for today, and Mr. Alfonso Lin.

[00:05:28] Speaker 01:
Mr. Lin is also associated with YD, worked with fortress in finalizing the invention.

[00:05:36] Speaker 01:
And when these facts came out and they were investigated, Fortress is trying to do the right thing here.

[00:05:43] Speaker 01:
We're trying to recognize the contributions of the people who worked on the project.

[00:05:46] Speaker 02:
You want us to read into the statute the qualification that provided that there's no dispute that the individual is an inventor.

[00:05:57] Speaker 01:
That's not the way I would suggest that you read your opinion, that you would interpret the phrase, parties concerned,

[00:06:05] Speaker 01:
as partings who have a due process concern, where they would lose assignment, gain rights, lose rights, and that there's a dispute about that.

[00:06:14] Speaker 02:
Does that add clarity?

[00:06:16] Speaker 01:
I believe that it does.

[00:06:17] Speaker 01:
And of course, this is in some sense a one-off situation, because if we could find him, we would use 256A.

[00:06:27] Speaker 02:
And if there is a dispute... Maybe it's not a one-off situation.

[00:06:30] Speaker 02:
There are a lot of Chinese-American inventors

[00:06:34] Speaker 02:
will go back to China and may not respond.

[00:06:40] Speaker 01:
Well, as far as we could tell, this is the first that makes it a case of first impressions the first time.

[00:06:44] Speaker 01:
And I would point out that this Chinese inventor did his work in China.

[00:06:49] Speaker 01:
He's a Chinese native that worked with the Chinese factories, never was in America.

[00:06:55] Speaker 01:
So we think that the

[00:06:57] Speaker 01:
The phrase parties concerned should be interpreted be one where there is a dispute and the parties who are parties to that dispute.

[00:07:05] Speaker 03:
I mean, it sounds like you want us to reinterpret parties concerned to be parties that may be adversely impacted.

[00:07:14] Speaker 01:
Adversely impacted, depending on how the result of that hearing came out.

[00:07:18] Speaker 03:
But I mean, if that's what Congress meant, that's what they would have said.

[00:07:22] Speaker 03:
I don't see how it's logically possible that an unnamed inventor is not a party concerned with the inventorship correction.

[00:07:35] Speaker 03:
He may not be adversely impacted if it's corrected in his favor, but he's certainly concerned in the kind of general meaning of that term.

[00:07:45] Speaker 01:
Well, I think we're hypothesizing something from somebody we don't know about.

[00:07:49] Speaker 01:
But I think the party's concern phrase invokes this concern with the result.

[00:07:54] Speaker 01:
And here, he will just be benefited.

[00:07:56] Speaker 01:
I mean, he will be better off.

[00:07:56] Speaker 03:
Well, that's still concern with the result.

[00:07:58] Speaker 03:
It's a benefit, but it's concern.

[00:08:01] Speaker 03:
That's why it sounds to me like you're asking for a reinterpretation of concern to some kind of, as you say, due process requirement for people that might be adversely impacted.

[00:08:14] Speaker 01:
The people that the court would need to hear from to determine, for example, frequently this arises where somebody asserts that there's an unnamed co-inventor and the party that currently owns the patent and does not have that person's name on it doesn't want them added because it would change the ownership.

[00:08:33] Speaker 01:
It will change the nature of the situation.

[00:08:36] Speaker 01:
Consequently, that is a due process type concern.

[00:08:39] Speaker 01:
And I think that it's not reinterpreting parties concerned to treat it as something where there's a dispute.

[00:08:44] Speaker 01:
Because 256A deals with a situation where there's not a dispute and the parties can be found.

[00:08:50] Speaker 01:
256B generally deals with a situation where there is a dispute.

[00:08:56] Speaker 03:
And the parties to... Maybe this guy doesn't want his name out into the patent.

[00:09:01] Speaker 01:
That's a hypothetical that is not supported by the facts, because the facts that we have is that he participated in it.

[00:09:08] Speaker 03:
Well, we don't know either way, because you can't find him.

[00:09:11] Speaker 01:
No, we don't know either way, because we can't find him.

[00:09:13] Speaker 01:
But I think you could still understand the statute to be dealing with something where the parties that need to be involved are ones that have a stake in the outcome.

[00:09:24] Speaker 01:
And being added, I guess I would say I'm not so sure that

[00:09:30] Speaker 01:
true inventor has a right not to be named.

[00:09:34] Speaker 03:
I mean, if he shows up... If he doesn't think he's a true inventor, maybe he doesn't want to be on the patent.

[00:09:40] Speaker 01:
Well, the evidence is to the contrary.

[00:09:42] Speaker 03:
The evidence you have so far, he may come in and say that evidence is wrong.

[00:09:48] Speaker 03:
I didn't do any of that stuff.

[00:09:50] Speaker 03:
Well, you know, there's... Look, I'm not trying to place that.

[00:09:54] Speaker 03:
I find it very troubling that

[00:09:57] Speaker 03:
that there's no way to correct this because you can't find him.

[00:10:03] Speaker 03:
And it means that the patent is invalid.

[00:10:05] Speaker 03:
But the statute says what the statute says.

[00:10:08] Speaker 03:
And I just find it very, very difficult to suggest that party concern for inventorship questions doesn't include an unnamed inventor, even if it would work in his favor.

[00:10:24] Speaker 01:
Well, I would encourage you to look at the cases recited, because when they get to this question, it is definitely not clear in the decisions that all the people that you're talking about now actually participated in the hearing.

[00:10:38] Speaker 01:
Because the people that participated are the ones who were concerned with the outcome.

[00:10:42] Speaker 01:
That's why it's parties concerned in the statute.

[00:10:45] Speaker 01:
And I'm into my rebuttal.

[00:10:47] Speaker 01:
I'll just say quickly, I do think the 101 question will have to be addressed if you

[00:10:52] Speaker 01:
affirm the 256 construction.

[00:10:56] Speaker 01:
The question is, does perfect inventorship flow from 101?

[00:10:59] Speaker 01:
I don't think the statutory construction gets you there.

[00:11:03] Speaker 01:
If it's not in 101, whereas in the Constitution, if it's in the Constitution, that's going to impact the interpretation of the AIA in a lot ways more than just this case.

[00:11:13] Speaker 01:
But I will save the rest of my time for the follow-up.

[00:11:16] Speaker 02:
We will save it for you, Mr. Picki.

[00:11:25] Speaker 00:
Good morning, Your Honors.

[00:11:26] Speaker 00:
I may please the court.

[00:11:28] Speaker 00:
I'll begin by addressing the 256B issue.

[00:11:31] Speaker 00:
And in particular, I want to address Judge Hughes's concern.

[00:11:35] Speaker 00:
There is a way to remedy this potential issue of a missing inventor who cannot be found.

[00:11:42] Speaker 00:
That's the reissue proceeding under Section 251, which is one of the many things that Fortress did not do.

[00:11:52] Speaker 00:
And the record is replete with things that Fortress did not do in this case.

[00:11:55] Speaker 03:
Can they do a reissue proceeding naming him without his participation?

[00:12:00] Speaker 00:
I understand that the patent office procedures would allow that.

[00:12:03] Speaker 00:
For a substitute declaration in a reissue proceeding, it is akin to effectively continued prosecution.

[00:12:10] Speaker 02:
But only if he is not, in fact, an inventor.

[00:12:14] Speaker 02:
You can't reissue a patent omitting someone who is believed to be an inventor.

[00:12:22] Speaker 00:
They could seek reissue, arguably, Your Honor.

[00:12:26] Speaker 00:
This is untested and hypothetical.

[00:12:28] Speaker 00:
But the Patent Office procedures and the statute allow for- That's enough.

[00:12:32] Speaker 02:
The issue isn't before us.

[00:12:34] Speaker 00:
Correct.

[00:12:34] Speaker 00:
But to Judge Hughes's question, there is a remedy.

[00:12:38] Speaker 00:
That is our position, which is this is not a situation where Fortress or someone who has an omitted inventor who cannot be found, they are not left without a remedy under the Patent Act.

[00:12:50] Speaker 02:
What's the harm?

[00:12:54] Speaker 02:
Adding that.

[00:12:57] Speaker 02:
Apparently, there's not a dispute that he was an inventor.

[00:13:01] Speaker 00:
So let me be clear about the there is no dispute.

[00:13:05] Speaker 00:
The litigants to the matter do not dispute it.

[00:13:09] Speaker 00:
We do not know what Mr. Wong's position is.

[00:13:12] Speaker 00:
We do not know that's the whole purpose behind the statue, to give notice so that the parties concerned can come in, Your Honor,

[00:13:20] Speaker 00:
and tell us what it is they believe.

[00:13:23] Speaker 00:
And so the harm is we don't have the evidence.

[00:13:26] Speaker 00:
The litigants here agree.

[00:13:28] Speaker 00:
But that's not what the statute requires.

[00:13:30] Speaker 00:
And Fortress is asking for a radical reinterpretation of 256b, which we agree, Your Honor, would occur usually in contested proceedings.

[00:13:42] Speaker 00:
every single case, Your Honor, including Judge Laura, your decision in Chao.

[00:13:48] Speaker 00:
All of those cases are in the context of contested proceeding, meaning we know there's a contest involving the inventors.

[00:13:57] Speaker 00:
Here, we don't know if there's a contest.

[00:13:59] Speaker 00:
So arguably, 256B is being applied.

[00:14:02] Speaker 00:
They're trying to apply it prematurely.

[00:14:05] Speaker 00:
Because if they could give notice and there was agreement, they would use 256A and go to the office and correct the record.

[00:14:12] Speaker 00:
But they didn't do that here.

[00:14:13] Speaker 00:
And so they are asking this court for a rewrite of 256b.

[00:14:19] Speaker 00:
That rewrite is against both the plain language of the statute and the cases that they rely on are cases that are about standing, that simply don't apply.

[00:14:29] Speaker 00:
Those cases actually support Digger's position.

[00:14:32] Speaker 00:
For example, in Chao, Your Honor, you noted that regardless of Ms.

[00:14:38] Speaker 02:
Taustin.

[00:14:41] Speaker 02:
It wasn't my decision at law.

[00:14:43] Speaker 00:
Well, in this court's decision, which your author penned, it was noted that regardless of Ms.

[00:14:50] Speaker 00:
Chow's standing, whether she had a financial interest, a reputation, whatever her interest was, you noted she was still a party concerned within the meaning of Section 256B.

[00:15:03] Speaker 00:
And again, despite the fact that Fortress's brief is replete

[00:15:10] Speaker 00:
replete with statements that the parties agree, the parties agree.

[00:15:13] Speaker 00:
It is the litigants who have looked at based on the record, which is quite slim, I will note, but based on that record that Mr. Wong should be named.

[00:15:23] Speaker 00:
But we still do not know Mr. Wong's position.

[00:15:27] Speaker 02:
Do you agree that there's no case on point either way?

[00:15:34] Speaker 00:
As to the specific scenario of an omitted inventor who cannot be found where the party has attempted to invoke section 256B, I agree that there is no case that is on point with respect to that.

[00:15:47] Speaker 00:
I think the case law in general supports the position that a party concerned under 256B includes an omitted inventor.

[00:16:01] Speaker 00:
just briefly address the question of the invalidity and the issue that Fortress has raised.

[00:16:10] Speaker 00:
And again, here, I think Fortress's request is a bold one.

[00:16:14] Speaker 00:
It asks this court to make a ruling that would upend a invalidity offense that is part of the fabric of our patent laws.

[00:16:25] Speaker 00:
First, if you look at 256B itself, the very statute that they tried to invoke is

[00:16:31] Speaker 00:
is what they call, what everyone calls, a savings clause.

[00:16:34] Speaker 00:
We wouldn't need savings clauses.

[00:16:35] Speaker 00:
We wouldn't need 256B.

[00:16:36] Speaker 00:
We wouldn't need 116 if there wasn't an issue to be saved.

[00:16:42] Speaker 00:
So I think you can look at that itself.

[00:16:45] Speaker 00:
Second, the requirement to name all inventors the perfect inventorship requirement, that existed long before 102F.

[00:16:55] Speaker 00:
In the Pano decision, again, Judge Laurie, that you wrote, you go through the history

[00:17:00] Speaker 00:
of the perfect inventorship requirement, as it existed long before 1952 when 102F came into, was enacted.

[00:17:11] Speaker 00:
That same requirement exists after 102F was appealed.

[00:17:15] Speaker 00:
And we also have cited in our brief at page 38 statements by those who were actually involved in passage of the AIA confirming that 102F did not upend the perfect inventorship requirement

[00:17:29] Speaker 00:
And then, again, we have this requirement does spring from the Constitution.

[00:17:36] Speaker 00:
This court in genera noticed that.

[00:17:42] Speaker 00:
Judge Prost, their citing to Panu made the tie between the Constitution and the requirement to properly name inventors.

[00:17:50] Speaker 00:
And then finally, section 101 provides support to find that if proper inventors are not named, the patent is invalid.

[00:17:58] Speaker 00:
And that section has remained unchanged since the initial patent act in 1790.

[00:18:04] Speaker 00:
Fortress has no basis to set aside this requirement that is, again, part of the fabric of our patent system.

[00:18:12] Speaker 00:
And Digger thus respectfully requests that the court affirm.

[00:18:16] Speaker 02:
And I'll cede the remainder of my time unless there's questions.

[00:18:20] Speaker 02:
Mr. Storm has rebuttal time.

[00:18:24] Speaker 01:
Thank you, Your Honor.

[00:18:25] Speaker 01:
Just several quick points.

[00:18:27] Speaker 01:
The comment about reissue being a way to do this.

[00:18:30] Speaker 01:
We could file a reissue and file the paperwork not having Mr. Wong's signature, get his name added to the reissue patent, go through the proceedings to do that.

[00:18:41] Speaker 01:
That illustrates the point that parties' concerns don't include Wong because the patent officers do provide a way to get him on there, and the court has the power to do it because he's not a party concerned with this outcome here.

[00:18:53] Speaker 01:
The answer is clear.

[00:18:55] Speaker 01:
And you don't need to reinterpret the statute.

[00:18:57] Speaker 01:
This is one where there's no dispute that he should be added.

[00:19:01] Speaker 01:
And interpreting 256, which is supposed to be a savings clause, to not allow correction here, I think, does violence to the purpose of 256, number one.

[00:19:13] Speaker 01:
Number two, the Janssen case, which you both cited, just was illustrative.

[00:19:17] Speaker 01:
Because there's a statement in several cases that parties concerned are omitted Oventers and Assanese.

[00:19:25] Speaker 01:
But in the Janssen case, they added inventors who had participated in the trial, but there's no indication they participated in a hearing.

[00:19:32] Speaker 01:
And if you affirm that litany, where you're going to have to have actual inventors every time, yada, yada, it's going to be more cumbersome than the cases themselves reflect.

[00:19:44] Speaker 01:
They reflect this due process, parties who actually concerned perspective.

[00:19:50] Speaker 01:
With all due respect, we're not asking to upend centuries of patent law.

[00:19:55] Speaker 01:
What we have said is that 101 alone doesn't carry the weight of perfect inventorship.

[00:20:02] Speaker 01:
And we've made a distinction, I think a very clear distinction in our brief, between perfect inventorship, which we all kind of knew from 102F law, and the law before the 1952 Act, and the actual scope of 101.

[00:20:15] Speaker 01:
101 has long been understood to be subject matter.

[00:20:19] Speaker 01:
is the subject matter of patentable inventions.

[00:20:22] Speaker 01:
And it starts with the word whoever.

[00:20:24] Speaker 01:
But it focuses on what is the subject matter.

[00:20:27] Speaker 01:
There are other provisions of the law, 115, 116, and even 256, which provide an avenue and a method whereby true inventors can and should be identified.

[00:20:39] Speaker 01:
But 101, as a basis for invalidity, doesn't really withstand statutory scrutiny.

[00:20:45] Speaker 01:
We are not upending centuries of law.

[00:20:47] Speaker 01:
We're asking for a proper, careful construction of 101 on that point.

[00:20:52] Speaker 01:
And if it flows from the Constitution, it doesn't need to be in 101.

[00:20:55] Speaker 01:
It flows from the Constitution.

[00:20:56] Speaker 01:
And I think holding that the Constitution requires true inventorship will be a problem for the AIA.

[00:21:04] Speaker 01:
If you have any questions, I'm happy to address them.

[00:21:07] Speaker 02:
Thank you to both counsel.

[00:21:08] Speaker 02:
The case is submitted.