Renishaw Plc v. Marposs Societa' Per Azioni and Marposs Corporation
Oral Argument — 10/09/2025 · Case 20-1173 · 42:23
0:00
Judge Taranto
We will begin with case number 2-0-1-1-7-3, implicit against Sonos.
0:07
Mr. Romrell, whenever you're ready.
0:10
Appellant Attorney
May it please the court, Jason Romrell on behalf of Appellate Implicit.
0:15
This court held in e genera that under Section 256, a patent cannot be invalidated if inventorship can be corrected instead.
0:24
And courts have consistently recognized that Section 256 is a savings provision, one that has no timing requirement and no diligence requirements.
0:33
Judge Taranto
And it's retroactive to the beginning of the patent.
0:36
Appellant Attorney
It is retroactive.
0:37
In fact, the court correctly held that on remand, that the 256 applies retroactively.
0:42
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.
0:52
So here, this court remanded.
0:54
It remanded for the court to consider the impact of implicit corrected inventorships.
0:58
Judge Taranto
Can you clarify one thing?
1:02
Was the original 2019 board decisions, is that what they are?
1:07
That's correct.
1:08
Were they vacated by any order of this court?
1:13
Where did the, what was the status of the 2019 board decision at the time of the consideration?
1:24
Of this question of whether you would be allowed to have the corrected patent considered?
1:32
Appellant Attorney
So the board's decisions were ultimately vacated in light of Arthrax.
1:39
Right.
1:39
And I believe that that happened.
1:41
Judge Taranto
Right.
1:41
But then the Supreme Court vacated our decision, vacating that one.
1:45
And I want to understand precisely what happened after that.
1:48
Appellant Attorney
That's correct.
1:48
So the Supreme Court vacated that.
1:51
And then it came back to this court.
1:53
This court reinstated the board's decision.
1:54
And allowed Implicit a short period of time to seek director review before the director.
2:02
And that's when Implicit filed its certificate of corrections before that director review proceeding took place.
2:09
So we presented this issue to the director in our petition for director review that inventorship had been corrected.
2:15
And that the board needed to reconsider its validity determinations in light of that corrected inventorship.
2:21
Judge Taranto
So at that time, the 2019 board decision.
2:24
Was no longer vacated.
2:28
Is that right?
2:29
Appellant Attorney
That's correct.
2:30
So the Supreme Court granted, certiorari vacated, as your honor said, sent back to this court, and then the panel of this court reinstated the decision.
2:42
Judge Taranto
This wasn't at all just idle, what I'm trying to understand.
2:45
Because here's what I'm trying to understand.
2:48
And I guess this may be a question for everybody here.
2:52
Why are we not talking about?
2:54
Okay.
2:54
Why are we not talking about this issue in front of us as a mootness issue?
2:59
The board's decision about the unpatentability of the claims of the uncorrected patent is a moot point.
3:09
Because the PTO has actually corrected it, the patent.
3:14
That's retroactive.
3:15
There is no longer an uncorrected patent.
3:19
And why are we not talking about this under the rubric of,
3:24
mootness and what we are supposed to do as a court when the decision that's in front of us,
3:31
the board decision, is moot, or rather the dispute about that decision is moot,
3:39
whether vacating, whether dismissing, or whatnot.
3:44
Appellant Attorney
Your honor, I agree that this could be handled under the doctrine of mootness,
3:48
that the decision could be viewed as being moot.
3:52
The way that this was presented,
3:53
and argued when we were first before the Federal Circuit,
3:59
is that Sonos and the intervener suggested or argued that
4:04
while the correction was retroactive,
4:07
that doctrines of judicial estoppel, forfeiture, and waiver applied
4:12
so that the decision had no impact, essentially.
4:15
Judge Taranto
Do I remember right, in that motion practice,
4:18
you suggested that one reason to give the board an opportunity to
4:23
address the correction is that mootness might in fact be at play here?
4:30
Appellant Attorney
I believe that's correct, your honor.
4:32
I believe that's correct.
4:33
And in fact, that's entirely consistent with what all we understand about Section 256.
4:39
And we've seen this play out with decisions like LendingTree
4:42
and Airbus that we cited in our briefs,
4:44
where even after a jury verdict,
4:46
this court, and ventureship changed while the case was on appeal,
4:50
this court remanded back to the district court
4:52
to consider a motion to vacate the previous judgment,
4:55
recognizing that a fundamental fact had now changed.
4:58
Judge Taranto
So one further, at least for now, question along this line of mootness.
5:04
When a matter becomes moot,
5:09
the kind of norm is the Court of Appeals dismisses the appeal.
5:16
That would not make you happy, right?
5:19
Because there would be a standing,
5:21
which is why I asked you questions,
5:23
about the status of the 2019 final written decision,
5:26
a standing final written decision holding claims unpatentable.
5:30
Sometimes, in addition to dismissing,
5:33
the appellate court vacates the underlying decision.
5:39
That is, according to the Supreme Court in U.S. Bancorp, Bonnar Mall,
5:44
an equitable remedy.
5:46
Why would you not be disentitled as a matter of equity
5:52
to that remedy by your delay
5:56
in having raised the inventorship correction issue?
6:03
Appellant Attorney
I think we would be entitled to the equitable remedy of vacature
6:06
should the court decide to proceed that way
6:08
because courts have routinely recognized
6:12
that inventorship is a complex issue of law,
6:16
one that involves many underlying factual components or moving parts.
6:21
In this case, it was the board's final written decision
6:24
that illuminated some of the very issues for us that go to inventorship.
6:29
And so we timely entered and made these corrections
6:34
once we recognized that the board's final written decision
6:36
was no longer vacated,
6:38
that those facts were holding,
6:39
and that those facts would influence those very questions of inventorship.
6:45
And so we did it still while the proceeding was live
6:48
in our opportunity for director review.
6:50
And timely made that correction
6:53
while the proceeding was still before the agency.
6:56
And under our threats, we understand and know
6:57
that the director's review,
7:01
or at least the option of the director to review the proceeding,
7:04
the proceeding's not over, rather,
7:07
until the director has that opportunity to actually review.
7:10
And you have a duly appointed executive officer
7:13
that has that final word.
7:15
So I think that's an important point.
7:17
And also just, again, we look at the language of Section 256.
7:20
It's very unique in the patent law,
7:22
in that a patent shall not be invalidated
7:25
if inventorship can be corrected.
7:27
Judge Taranto
Sometimes we, at least I find myself,
7:30
in the position of trying to speculate
7:33
why in a given matter did the party in front of us
7:38
not raise something earlier.
7:39
And sometimes it's pretty apparent
7:41
that there would be a downside risk to do that.
7:43
Some kinds of corrections are prospective only,
7:47
but not this one.
7:49
And I guess I want to understand
7:52
why this request to correct the inventorship
7:58
took so long to get out of the starting gate.
8:04
It's not apparent to me what the downside risk to that was.
8:10
Appellant Attorney
Your Honor, implicitly believed
8:12
throughout the original proceeding before the board
8:16
that the inventorship on the face of the patent was correct.
8:19
That Mr. Balasanian and Mr. Bradley were inventors
8:22
and that the work of Mr. Carpenter
8:23
inured to their benefit.
8:26
We had submitted testimony to that effect
8:29
and we believe the documents corroborated that.
8:32
Judge Cunningham
Were you using Mr. Carpenter
8:34
as more of a person assisting with reduction to practice
8:37
as opposed to viewing him in the concept
8:40
of being a joint inventor?
8:41
Appellant Attorney
That was our initial understanding.
8:44
And again, these issues tend to be muddy.
8:48
One court acknowledged that
8:49
inventorship is among the muddiest metaphysical doctrines
8:53
in the metaphysical world of patent law.
8:55
It's complicated.
8:56
And at the time, we did believe,
8:59
based on our best ability to reconstruct
9:01
what had happened almost 20 years earlier,
9:04
that the inventorship on the face of the patent
9:06
was presumptively correct
9:07
and that Mr. Carpenter's work
9:09
inured to their benefit.
9:10
Now, when the board made its final right decision,
9:13
the board made a couple important findings there.
9:16
It found that the work of Mr. Carpenter,
9:18
that his authorship of the document
9:22
that became the provisional application
9:24
and his writing of the source code
9:29
was not something that inured to the benefit
9:31
of Mr. Bradley and Mr. Balasanian.
9:34
Moreover, the board found that
9:36
we did not establish that
9:39
Mr. Balasanian and Mr. Bradley
9:40
had conceived of the invention earlier
9:42
and then communicated that conception
9:44
to Mr. Carpenter.
9:46
So, in light of the board's opinion,
9:47
the board's final right decision
9:48
implicitly reassessed these important issues
9:51
and determined that Mr. Carpenter himself
9:53
must have been a contributor
9:55
to the conception of the invention
9:57
as claimed and corrected the inventorship.
9:59
Now...
10:00
Judge Taranto
Again, what would have been the downside
10:04
to filing the correction papers?
10:08
I mean, so I can speculate
10:10
Mr. Carpenter refused to sign something
10:15
to say that he was an inventor
10:16
or Mr. Carpenter is no longer affiliated
10:19
with the company,
10:20
so you'd be splitting the ownership.
10:23
Is there anything you can tell me about that?
10:27
Appellant Attorney
I can tell you that Mr. Carpenter,
10:29
I believe, during the time of this proceeding,
10:31
lived in Australia.
10:33
He wasn't in the United States.
10:35
Judge Taranto
That's before the internet era.
10:38
Appellant Attorney
Again, I just know that he lived in Australia,
10:41
but I also know, too, that at the time
10:43
there wasn't...
10:44
This is what implicit believed.
10:46
They believed that Mr. Carpenter's work
10:48
simply inured to the benefit
10:50
of the previously named inventor.
10:51
So it wasn't as if they came to that conclusion earlier.
10:55
It was really the board's final written decision
10:57
and those findings there that shed additional light.
11:00
Judge Cunningham
But did you wait two years
11:01
after the final written decision
11:02
to actually seek the correction?
11:05
Or give me a sense of the timeline
11:06
just so I understand the precise timeline.
11:08
Appellant Attorney
To answer your question,
11:09
it was approximately two years,
11:11
but I can explain why that shouldn't matter here.
11:14
So this all occurred in the backdrop
11:16
of this court's decision
11:18
and the Supreme Court's decision in Arthrex.
11:20
So for the vast majority of that time,
11:22
the board's final written decisions
11:24
were either stood subject to vacature
11:27
under this court's Arthrex remedy
11:28
or were in fact vacated.
11:30
So those very findings that we felt
11:33
would heavily influence
11:35
the inventorship determination,
11:36
it was unclear what would happen
11:39
with those findings.
11:40
So implicit pursued its remedy under Arthrex.
11:45
Seeking a vacature of those findings
11:46
and shortly after the Supreme Court made its decision
11:49
and it had the opportunity for direct review.
11:51
Today, that occurs immediately
11:53
after the final written decision.
11:54
But that wasn't the case in 2021, of course.
11:57
Judge Stoll
Counsel, sometimes when a litigant
12:01
changes its position,
12:04
it is aware of that alternative position
12:08
because of the arguments that are made
12:10
by its adversary, right?
12:12
By the opposing party.
12:14
Was there something about Sonus's position
12:18
that could have led Implicit to understand
12:21
that this was an alternative theory
12:24
that could have been presented?
12:27
Appellant Attorney
I don't think so, Your Honor.
12:29
I think any time a party is looking at
12:33
conception and reduction to practice
12:35
and inurement,
12:36
these questions can come up
12:38
of whether or not someone is part of the conception
12:41
or their work is merely inuring
12:43
to the benefit of the party.
12:44
I don't think so.
12:44
to the benefit of the inventive entity
12:46
on the face of the patent.
12:49
In this case, Implicit believed
12:51
that that was not the case,
12:52
that the inventorship on the face of the patent
12:54
was correct.
12:56
I know that my friends, Sonus and the intervener,
13:00
have suggested that we perhaps could raise this
13:02
as an alternative argument.
13:04
I don't think that's correct.
13:06
I think that the Board is very clear
13:09
that it entertains the inventorship
13:10
in front of it on the face of the patent
13:12
and doesn't consider alternative inventorship.
13:14
It doesn't consider alternative inventorship
13:14
until those have actually been executed.
13:16
Judge Taranto
So actually, on that point,
13:18
could the Board rule that,
13:25
the way a court could,
13:27
that the inventorship is wrong
13:29
and order the Director,
13:32
the way a court can,
13:34
to correct the inventorship?
13:37
256 speaks only about courts doing that.
13:41
Appellant Attorney
Your Honor, I think that's correct.
13:42
I think that the Board
13:44
does not have the ability to do that.
13:46
And the Board has, in fact,
13:47
recognized that correction of inventorship
13:49
is not within its authority in an IPR proceeding.
13:51
Judge Taranto
But you could get the Board to conclude
13:55
that Carpenter was, in fact, an inventor,
14:01
at least in the alternative,
14:03
in which case the priority question
14:06
gets transformed, right?
14:08
Appellant Attorney
I don't think we could get the Board
14:10
to make a conclusion like that, actually, Your Honor.
14:12
I think the issue...
14:13
Judge Taranto
I don't remember in your brief here
14:16
your saying that it would be relevant
14:19
to a question about forfeiture, for example,
14:23
to say, if it were true,
14:25
that we didn't wait too long
14:28
to present this to the Board.
14:29
We couldn't have presented it to the Board.
14:31
It's not a Board issue.
14:33
It becomes a Board issue
14:35
only after you go get the Director to do it.
14:41
Appellant Attorney
I believe we did point out in our reply brief,
14:44
that we couldn't have raised this
14:45
as an alternative argument,
14:46
because the Board has interpreted its authority
14:49
as not being able to address inventorship
14:52
during an IPR proceeding.
14:54
Of course, Implicit didn't know
14:56
it needed to change its inventorship at the time.
14:58
It was really the final written decision
14:59
that shed light on what the correct inventorship should be.
15:02
Judge Cunningham
But I'm still taking issue with the two years
15:04
post the final written decision.
15:06
So I understand what you're indicating
15:08
in terms of not being able to raise it
15:10
during the IPR proceedings
15:12
and the argument you're making there.
15:14
But maybe just give me a sense
15:16
of why it had to be a whole two years
15:18
post the final written decision.
15:21
Appellant Attorney
Well, Your Honor,
15:22
again, I think the best answer to that question
15:25
is the R-thrust decision.
15:26
And this inventorship change was so much informed
15:30
by what came out of the final written decision.
15:32
And for this two-year period,
15:34
we were not sure what the status
15:36
of those final written decisions would be.
15:37
It was possible that they would be vacated
15:40
and we would be sent back to the Board again
15:42
for another final written decision.
15:44
Perhaps the Board would come out differently this time.
15:47
We simply didn't know.
15:49
So Implicit pursued its remedies under R-thrust
15:52
to deal with that issue first.
15:56
And then once those final written decisions
15:57
we knew the Supreme Court's remedy,
15:59
that's when we made the correction that we did.
16:04
Thank you, Your Honor.
16:05
Judge Taranto
Thank you.
16:05
I will restore your rebuttal time.
16:08
Thank you.
16:08
Mr. Richter?
16:21
Appellee Attorney (Sonos)
Yes, Your Honor.
16:22
Good morning.
16:23
Cole Richter on behalf of Sonos, the athlete.
16:28
May it please the Court.
16:30
This Court's limited remand order in 2022 was simple.
16:34
It was to allow the Board to issue an order
16:37
addressing what, if any, impact the certificates of correction
16:40
would have on the final written decisions.
16:42
And pursuant to that remand,
16:44
the Board determined that Implicit both waived
16:46
and forfeited any annotating arguments
16:49
that it failed to make before the Board
16:51
during the proceeding,
16:52
including annotating arguments
16:54
based on a new inventive entity.
16:56
Thus, it concluded that the certificates of correction
16:59
did not have any impact on the final written decisions.
17:02
Judge Taranto
This is not specifically for you,
17:06
but maybe for the audience.
17:08
So the relevant inquiry here
17:11
is whether a particular piece of prior art,
17:14
Janewski, predates the invention.
17:20
So ordinarily, the invention is the priority date listed
17:24
on the patent when it was applied for,
17:27
which in this case is after the Janewski prior art,
17:33
but because the patent owner has the right to come in
17:38
and show that they actually completed the invention
17:41
before the date on the patent.
17:44
And so when you talk about anti-dating,
17:45
that's the inquiry.
17:47
Appellee Attorney (Sonos)
Exactly right, Your Honor, yes.
17:49
And this was actually a feature of the prior law
17:52
before the 2012 American Invention.
17:54
Yes.
17:55
So what actually enables patent owners like Implicit
17:58
to do is provide evidence during the proceeding
18:02
and say, hey, I actually invented this,
18:04
I invented my patent before the prior art
18:07
even though I filed it after the prior art.
18:09
And that's exactly what Implicit did during this proceeding.
18:12
Judge Taranto
And the whole dispute about whether Carpenter
18:15
is one of the inventors matters
18:19
because if he didn't do his work
18:24
and he was an inventor until later,
18:26
it wouldn't help if he was an inventor
18:28
and he completed his work before,
18:31
then that helps them get a priority date earlier.
18:35
But the rules when you're relying on somebody,
18:38
when you're inventors and you're relying on a non-inventor
18:42
to complete the process,
18:44
you understand what I mean by that,
18:45
there are certain rules and the board said
18:48
you didn't show that.
18:50
So bringing him in as an inventor
18:53
maybe completely solves their end-to-date problem of
18:56
you may have arguments to the contrary,
18:58
but it certainly helps.
19:01
Appellee Attorney (Sonos)
Yes, Implicit's argument is that it helps.
19:03
And there's actually, as your honors know,
19:06
there's extra evidentiary burdens
19:08
that are incumbent on the patent owner
19:11
when they try to establish
19:12
annotating or swear behind.
19:15
Corroborating evidence is a necessary element
19:18
that the patent owner needs to prove.
19:20
And here the board concluded
19:22
that the patent owner failed to provide
19:24
corroborating evidence of the conception
19:26
and failed to show...
19:27
Judge Taranto
Right, but we're not here on that question right now.
19:32
So I'm going to let you talk about,
19:36
let's just call it forfeiture.
19:38
I don't think for purposes of today
19:40
we need to keep going back between waiver and forfeiture.
19:45
Forfeiture is just, they waited too long to do this.
19:48
But can you address my whole inquiry
19:51
about mootness,
19:53
why this is not properly thought of
19:56
as the question of the validity of the patent,
20:00
of the uncorrected patent is a moot issue.
20:04
So the question is what do we do with this moot case?
20:08
Dismiss the appeal?
20:09
Dismiss and vacate the decision, or what?
20:11
Appellee Attorney (Sonos)
I think mootness is perhaps an alternative reason
20:16
why this panel could dismiss the appeal.
20:19
I think dismissal,
20:21
and vacater is not appropriate
20:23
because Sonos determined,
20:27
Sonos established before the patent office
20:30
that this patent is invalid for Janewski.
20:33
So dismissal and vacater would actually benefit
20:37
the patent owner when that's not the remedy
20:40
that was at issue.
20:42
It's not the remedy they argued for
20:43
and it would disenfranchise the Apple East Sonos.
20:47
Judge Cunningham
What is your response to the types of questions?
20:51
I was asking opposing counsel in terms of the timeline.
20:54
They're indicating that because of the Arthrex decision
20:57
and the like, they have an explanation
21:00
for why they waited two years
21:02
after the final written decisions
21:03
to seek correction of inventorship.
21:05
Do you have a response to that?
21:07
Appellee Attorney (Sonos)
Yeah, as we know, Arthrex was a decision
21:10
about the constitutionality
21:11
of the administrative patent law judges
21:15
and it affected IPR proceedings.
21:17
There are many other matters
21:20
that the patent office handles.
21:21
Corrections would be one of them.
21:23
The corrections do not go to APJs.
21:26
They're handled by other personnel
21:28
in the patent office.
21:29
So the Arthrex decision is no basis
21:31
to have waited two years
21:33
to correct these patents.
21:35
Judge Stoll
Do I remember correctly or not
21:36
whether this litigant in particular
21:39
had raised an Arthrex argument
21:41
in their appeal?
21:44
Appellee Attorney (Sonos)
Implicit, yes.
21:45
When the appeal was initially filed,
21:50
implicit actually filed,
21:51
with an opening brief
21:52
and its loan argument in that brief
21:56
was an Arthrex argument
21:58
and it asked for the remedy of vacate
22:01
or a remand to request
22:03
a constitutionally appointed...
22:05
Judge Taranto
You said that was its only argument?
22:07
Appellee Attorney (Sonos)
That was the only argument implicit raised
22:08
in its initial opening brief.
22:11
At some point, implicit had switched counsel
22:14
and the new counsel had then said,
22:16
actually, can you please vacate the...
22:19
I want a new remedy.
22:20
The dismissal of the appeal
22:22
in a vacator of the decision.
22:26
And that was the remedy that
22:27
many appellants were asking for at the time
22:29
was a dismissal of the appeal.
22:31
This court did order that dismissal.
22:35
Judge Taranto
Vacator.
22:36
Ordered vacator.
22:37
Vacator, yes.
22:39
Appellee Attorney (Sonos)
And then that's when the decision
22:41
went up to the Supreme Court
22:44
which vacated this court's vacator.
22:47
And then the appeal was reinstated.
22:49
And this panel allowed, implicitly,
22:51
they struck the prior briefing,
22:53
allowed implicit to request direct review
22:56
and then file a new opening brief.
23:00
So just returning to forfeiture,
23:02
I think just like...
23:04
Judge Taranto
So as part of forfeiture,
23:06
what is it that you think the board
23:10
could have done had this been,
23:13
this year being an argument,
23:16
I guess there are two possibilities, right?
23:19
An argument that Carpenter was a co-inventor
23:22
and the second is what?
23:26
By the way, we have already received from,
23:29
you know, your sister over there,
23:31
part of the PTO, the director,
23:34
a correction.
23:36
Give effect to it.
23:38
Are you suggesting or did the board
23:40
suggest in its forfeiture conclusion
23:43
that implicit could have asked the board
23:48
to determine that Carpenter was a co-inventor?
23:52
Appellee Attorney (Sonos)
No, I don't think they suggested that.
23:55
I think the board said if implicit had argued
23:58
that Carpenter was an inventor
23:59
and demonstrated some ability to correct,
24:04
like filing the petition to correct,
24:06
the board could have considered that argument
24:09
and perhaps would have.
24:11
I don't see any reason why implicit
24:15
couldn't have asked for that and couldn't have...
24:17
Judge Taranto
So the thing that was delayed is simply
24:21
the request to the director to correct under 256.
24:26
Appellee Attorney (Sonos)
Yes, and the fact that they did not argue
24:30
conception or reduction to practice
24:32
under that particular entity.
24:34
So that would be a...
24:35
So there's two reasons.
24:36
Yes, they did not correct.
24:38
They did not ask for the correction in time
24:40
and in fact waited very long,
24:42
two years after the proceeding was open.
24:47
And then they didn't make the argument
24:49
during the proceeding.
24:50
And that's why it's...
24:52
Judge Cunningham
Two years after the proceeding concluded
24:55
in terms of final written decisions, right?
24:57
Appellee Attorney (Sonos)
Yes, correct.
24:58
The final written decisions were September 2019
25:00
and the correction was, I think, November of 2021.
25:04
Judge Stoll
What is the basis for saying
25:06
that they should have asked
25:07
during the original proceeding
25:09
for Mr. Carpenter to be named an inventor?
25:12
Appellee Attorney (Sonos)
The basis was that the inventorship
25:17
is based on all of the evidence that implicit
25:19
itself produced.
25:21
It's their own evidence.
25:23
Nothing that the Board did illuminated the inventorship.
25:27
The Board simply concluded that
25:30
implicit did not provide corroborating evidence
25:35
showing that Balasanian and Bradley
25:37
told Carpenter about the invention.
25:40
So implicit is arguing...
25:43
Judge Stoll
Your view is that they should have anticipated
25:45
that this was a likely outcome,
25:47
that the Board would have made fact-finding
25:50
findings that would have suggested
25:51
that Carpenter was an inventor?
25:53
Appellee Attorney (Sonos)
I don't think that the correction
25:55
is appropriately based on
25:58
what the PTAB found in its final written decisions.
26:03
I think they can...
26:04
They're taking a look at the evidence
26:06
and saying, well, Mr. Carpenter's name
26:08
is the only name on the source code,
26:11
the only name on the Word document.
26:13
Therefore, he conceived it.
26:15
I think that's what they're saying now.
26:17
And if that's what they're saying now,
26:19
they could have corrected during the proceeding
26:21
because it's the same evidence.
26:24
Judge Taranto
And just to...
26:26
I think you made this clear already,
26:29
but I'll make it extra clear.
26:30
When you say could have corrected,
26:32
you don't mean could have simply and only
26:37
argued to the Board that Carpenter
26:39
was part of the inventive entity.
26:42
What you mean is could have gone to the director,
26:45
got the certificate,
26:46
then returned to the Board and said,
26:48
look, this patent now has on it
26:52
a different group of inventors.
26:54
Our issues are therefore changed.
26:56
Appellee Attorney (Sonos)
Yes, Your Honor, I think that's right.
26:58
At a minimum, they could have filed
27:01
the petitions to correct inventorship
27:03
and then argued to the Board,
27:05
hey, I filed a petition to correct inventorship.
27:09
It will be corrected because it's a ministerial task
27:11
by the Patent Office.
27:13
They're not going to fight me on it.
27:16
So I would like to argue
27:18
that the inventive entity is the inventive entity
27:20
I've asked to correct to.
27:22
So at a minimum, they could have done that.
27:24
They could have also asked the Board
27:27
to stay the proceedings while the Petitions Office
27:31
handled the petition to correct,
27:33
and then they could have...
27:34
Judge Taranto
Does the Board ever do that?
27:35
I thought the Board and IPRs essentially...
27:40
It's under a deadline,
27:42
which it takes very, very seriously.
27:45
Appellee Attorney (Sonos)
Yes, a one-year deadline.
27:47
There is a provision to allow the Board
27:49
to extend that one-year time period,
27:51
which I believe it's done in a few remote cases,
27:54
but if it was an important feature
27:58
of the Patent Office's argument,
27:59
it could have at least asked.
28:01
The Board may not have granted it,
28:03
or the Board may have said,
28:04
well, why don't you argue both?
28:05
And if it's correct,
28:06
then your argument here will apply.
28:08
If it is not correct,
28:09
your argument here will apply.
28:10
Judge Taranto
And I take it from the way you're making the point.
28:12
You don't know of prior cases
28:17
where this kind of pattern has actually arisen?
28:22
Appellee Attorney (Sonos)
The exact pattern here?
28:24
No, I've never seen a party say,
28:28
Judge Taranto
please delay proceedings.
28:29
We're going to go to the Director
28:30
for a correction of inventorship.
28:33
Appellee Attorney (Sonos)
I've seen certificates of correction under 255
28:38
made during Patent Office proceedings,
28:41
but not under 256.
28:43
Right.
28:44
Judge Taranto
I think we should hear from the government.
28:50
Appellee Attorney (Sonos)
Thank you.
28:51
Thank you, Your Honors.
29:01
Intervenor Attorney (Robert Mcbride)
Good morning, Your Honors.
29:02
May it please the Court,
29:04
Rob McBride on behalf of the intervener
29:06
and Director of the United States
29:07
Patent and Trademark Office.
29:09
I'd like to point out that
29:11
all of the evidence concerning inventorship
29:14
was in the hands of Implicit
29:15
when they filed their patent owner response.
29:17
So there's no reason that
29:19
if Implicit had that evidence,
29:21
they could have requested a petition
29:24
to correct inventorship at that time.
29:27
There's nothing the Board did here
29:28
to change inventorship.
29:30
They didn't determine inventorship.
29:32
They didn't assess inventorship.
29:33
They simply accepted the inventorship
29:36
that Implicit argued,
29:37
which was based on Bradley and Balasanian
29:40
as the two inventors,
29:41
and Guy Carpenter was essentially
29:43
a pair of hands.
29:45
It was their burden
29:46
to antiate the Janewski reference
29:49
to show prior conception
29:51
by Bradley and Balasanian
29:53
and also to show communication
29:55
of that invention to Guy Carpenter.
29:58
They just failed to present
29:59
sufficient evidence to prove that point.
30:03
They just had a declaration
30:04
from one of the named inventors.
30:05
Judge Taranto
Right, but I'm not quite sure
30:06
why you're telling us this.
30:08
We do not have in front of us
30:10
any issue about whether
30:13
on the original uncorrected inventorship
30:17
the Board's decision of unpatentability
30:20
was incorrect.
30:22
Do you agree that that's a moot issue?
30:26
Intervenor Attorney (Robert Mcbride)
I agree that is not an issue on appeal.
30:28
The reason I'm just saying,
30:29
I'm raising it,
30:31
is because Implicit has argued
30:33
that fact findings made by the Board
30:36
in its final written decision
30:37
illuminated or shed light on inventorship
30:40
and that's what required their change.
30:42
Judge Taranto
Can you think of any reason,
30:44
and now I'm thinking of the kinds of questions
30:47
I was asking your counterpart,
30:49
would there have been any downside
30:53
to the patent owner to say,
30:57
to go and seek the addition of Carpenter
31:01
as an inventor?
31:04
If you remember in eGenera
31:06
there's a reference to one kind of downside
31:09
that there can sometimes be
31:10
is a worry about splitting ownership
31:12
which can be disastrous for the patent owner.
31:15
Is there anything like that here?
31:17
It seems to me it's helpful
31:20
to the Board's current position
31:22
if the answer is no,
31:25
that there was no pricing
31:27
to be paid.
31:28
But I guess I feel like
31:30
that I don't understand
31:32
the lay of the land here
31:33
well enough on that.
31:34
Intervenor Attorney (Robert Mcbride)
I don't think there's any evidence
31:36
in the record or any reason
31:38
that Implicit has provided
31:39
why they didn't correct
31:40
this inventorship earlier
31:42
other than they just point
31:43
to the Board's decision
31:44
and the fact findings
31:46
as illuminating inventorship
31:47
and that's the reason
31:49
they changed inventorship.
31:50
But again, the Board...
31:51
Judge Cunningham
They also are pointing to, though,
31:53
the interplay with Arthrex
31:55
as justifying their proposed
31:57
waiting two years
31:59
post the final written decision.
32:00
So I don't know if you want
32:01
to speak to that as well,
32:02
but that's the additional reason
32:03
I heard Opposing Council say they.
32:05
Intervenor Attorney (Robert Mcbride)
I heard that as well
32:06
and I don't think there's any reason
32:08
once that Board decision came out
32:09
and if it changed inventorship,
32:12
I don't think it did,
32:13
but even if they believed
32:14
that it did,
32:15
they should have changed inventorship
32:17
right then and there.
32:18
There's no reason to wait two years.
32:21
You know, they could have filed a petition
32:22
with the Director
32:23
to correct inventorship at any time.
32:25
They could have done it
32:26
in 2018
32:27
when their patent owner response was due.
32:29
They could have done it in 2019
32:30
after the Board decision.
32:32
There's simply no reason to wait
32:34
until 2021.
32:35
Judge Stoll
What about the fact that the decision
32:38
either was vacated
32:39
or might be vacated?
32:41
Do you think that has no impact?
32:44
Intervenor Attorney (Robert Mcbride)
That has impact on the decision,
32:46
but I don't think that impacted
32:47
their ability to correct inventorship.
32:51
Judge Stoll
Even though the fact findings
32:53
in the Board's opinion
32:55
were vacated
32:56
at the time?
32:58
Correct.
32:59
Intervenor Attorney (Robert Mcbride)
Even though the fact findings
33:01
were vacated at the time,
33:03
the patent is still in existence
33:04
and they can correct that inventorship
33:06
at any time.
33:08
I'm not aware of any rule
33:08
that would have prevented them
33:10
from changing it.
33:12
Judge Stoll
What about the argument
33:13
that inventorship is a complex issue
33:16
and they had the position
33:17
they thought that their inventors,
33:20
the two named inventors originally,
33:22
were sufficient
33:23
or those were the inventors
33:25
and it wasn't until,
33:26
I understand you don't think
33:29
the Board's opinion changed anything,
33:30
but do you think that there could
33:32
never be a circumstance
33:33
where an opinion could change
33:37
someone's outlook on inventorship?
33:40
Intervenor Attorney (Robert Mcbride)
Certainly there are situations
33:41
in LendingTree and eGenera
33:44
are good examples
33:45
where the deciding tribunal,
33:47
in that case it was the District Court,
33:49
did something.
33:50
There was an intervening change
33:51
in eGenera.
33:53
It was the change in the scope of the claim
33:55
because of the District Court's
33:56
claim construction.
33:57
It broadened the scope of the claim
33:58
which required adding in an inventor.
34:01
In the LendingTree case,
34:03
the jury issued a verdict
34:04
of patent invalidity
34:06
based on incorrect inventorship
34:08
and that required changing
34:10
the inventorship to make it correct.
34:13
In this case,
34:14
there's no intervening decision
34:15
by the PTAB or this court
34:18
or any tribunal
34:19
that changed inventorship.
34:21
So if they wanted to make this argument,
34:23
the time to do it would have been
34:25
in the patent owner response
34:26
or when it was pending
34:29
before the Board decision.
34:31
There's no reason why they couldn't
34:34
have been able to change it then.
34:36
Judge Taranto
Can I just return one last time
34:40
to the potential mootness framing?
34:44
The final written decision on review here
34:48
is a decision about a no longer existing
34:53
and kind of retroactively
34:55
never actually existed patent,
34:57
namely the one without the correct inventorship.
35:02
That suggests to me that
35:05
the matter before us is moot.
35:08
That is, whether the final written decision
35:11
is correct or not.
35:14
It's about a matter
35:15
that doesn't even exist anymore.
35:18
Why is that not the right way
35:20
to look at it and if so,
35:22
what is the right remedy?
35:23
Dismissal or dismissal plus vacater?
35:28
Intervenor Attorney (Robert Mcbride)
In reading the cases that involve
35:31
these corrections of inventorship,
35:33
like LendingTree is a good example
35:35
where the jury found
35:36
the inventorship was incorrect.
35:38
This court did not vacate
35:40
the jury's determination.
35:43
In that case, this court remanded
35:45
for the district court
35:47
to use this discretion to decide
35:49
whether it would be equitable
35:51
to vacate the jury's determination.
35:53
So I don't think mootness
35:55
is really at play here.
35:58
I think the patent still exists,
35:59
the inventorship has changed,
36:01
but all of the issues that have been decided
36:02
concerning anticipation and obviousness
36:05
are still applicable.
36:06
I don't think anyone's ever argued
36:08
that this should be decided
36:09
on a mootness case.
36:11
Judge Taranto
Well, I perfectly agree
36:13
nobody has argued it.
36:14
But there is no live issue
36:19
about any of the obviousness
36:22
or is there an anticipation
36:24
yes, an anticipation issues
36:25
here on the assumption
36:29
oh, I forget about assumption
36:31
on the original uncorrected patent
36:34
because that original uncorrected patent
36:36
is defunct and retroactively defunct.
36:47
Intervenor Attorney (Robert Mcbride)
I'm not sure I have a good answer
36:49
for you on this mootness question.
36:52
I think the proper way to handle it
36:53
is just to affirm the board's decision
36:55
and find that they forfeited this argument.
36:59
It's just essentially a new argument
37:00
that they should have raised earlier
37:02
in forfeiture principles applied
37:04
to Section 256 Corrections of Inventorship
37:08
and there's no reason not to apply it here.
37:11
If you look at the Supreme Court's decision
37:13
in Halvering, they talked about
37:15
one of the reasons for forfeiture
37:16
is to avoid sandbagging
37:18
where you have two arguments,
37:19
you lead with one,
37:20
you keep one behind you
37:21
and then if you lose in your first argument
37:23
you raise the second argument
37:24
and say that the tribunal erred
37:26
and you have to redo the proceeding.
37:27
That's essentially what we have here.
37:30
Implicit was in possession of all the facts
37:33
concerning inventorship.
37:34
They chose one legal strategy.
37:37
If they succeeded in that legal strategy
37:39
they probably wouldn't have corrected
37:41
their inventorship.
37:42
It's only because they lost
37:43
and the board found that they failed
37:45
to meet their burden of proof
37:46
and proving conception and communication
37:48
to Guy Carpenter
37:50
that they're correcting their inventorship
37:51
and I think that's just classic forfeiture.
37:54
Judge Taranto
Okay. Thank you for your argument.
37:57
Thank you.
37:58
Where's our timekeeper?
38:03
Where's our timekeeper?
38:05
Oh, sorry.
38:07
Three minutes.
38:08
Appellant Attorney
Thank you, Your Honor.
38:10
Whether it's under principles of mootness
38:12
or more along the lines of LendingTree or Airbus,
38:15
we believe that this court should vacate
38:17
the final written decisions here
38:19
and there are a couple of reasons for that.
38:21
I think one is the LendingTree court recognized
38:23
to let this judgment stand
38:25
would appear to violate the letter
38:27
and the spirit of Section 256.
38:30
That's what this court recognized
38:31
in LendingTree.
38:32
The provision is retroactive
38:34
and exists precisely for this reason,
38:36
to prevent these avoidable forfeitures.
38:39
It's unique in patent law,
38:41
but it is a provision that applies retroactively
38:44
to do this.
38:46
And, in fact, this is one way
38:48
in which 256 is very different
38:50
from its sister provisions in 255 or 254.
38:53
In Section 255, for example,
38:55
Certificate of Corrections for Appellant's Mistakes,
38:58
those apply only to the trial of actions
39:00
for causes thereafter arising,
39:04
so only prospectively.
39:05
But this is fundamentally different,
39:07
and so I think that warrants a vacature
39:09
given the unique aspects of 256 at play here.
39:14
Also, Judge Cunningham,
39:16
to go back to your question a little bit
39:17
on the timing of this,
39:19
I think any time you add an inventor to a patent,
39:23
there are complex issues with ownership
39:25
of the patent and arrangements
39:27
that need to be worked out there.
39:29
So that is always a consideration
39:31
when you are considering
39:33
whether or not someone's an inventor
39:34
or whether that makes sense.
39:38
It's a hurdle to overcome.
39:40
And in this situation...
39:42
Judge Taranto
Did we have anything in the record explaining
39:44
that this might be such a thing?
39:46
I thought Carpenter worked for the same entity,
39:49
and when the Certificate of Correction was requested,
39:53
the documentation which he signed
39:56
made it clear that the same entity
39:59
still was the assignee of the thing.
40:04
Appellant Attorney
That's correct.
40:05
That's not an issue, right?
40:06
I'm not aware of anything in this record
40:08
other than to point out that my understanding
40:11
is that there were contractual arrangements
40:13
that needed to be made
40:14
to actually add him to an inventor.
40:15
He was no longer affiliated or associated,
40:19
is my understanding,
40:20
with Implicit as a company at the time
40:22
that this occurred.
40:23
So it did require some work to do that.
40:26
But again, I think the fundamental changes
40:29
here we saw in Arthrex...
40:30
Again, we were operating in a universe
40:32
where the final written decisions
40:35
were either vacated or subject to vacature,
40:37
and we could have had a new board
40:38
come to a different conclusion on this.
40:42
Again, we disagree that we think
40:45
the final written decisions did
40:46
shed a lot of light on the inventorship issue,
40:48
particularly that the board found
40:50
that we were unable to show
40:52
that Mr. Balestaini and Mr. Bradley
40:54
had an earlier conception of this invention,
40:56
one that predated
40:58
these documents that we know show
41:00
a reduction of practice of the invention.
41:03
So it's hard to imagine a world
41:05
where that doesn't influence the outcome
41:07
of this complex legal issue.
41:08
Judge Cunningham
In your view,
41:09
would there be any period of time
41:11
that would be too late
41:13
for you to have raised
41:14
the correction of inventorship?
41:15
I know that you're contending
41:16
that two years after the final written decision
41:20
came out was timely, effectively,
41:22
but is there any sort of time period
41:24
that you think would effectively be untimely
41:27
in terms of waiting to raise it?
41:28
Appellant Attorney
So to answer your question,
41:29
I think the answer is yes, Your Honor.
41:31
I think that there are situations
41:32
where principles of finality do come into play.
41:35
If you have, for example,
41:38
a final judgment at a district court,
41:40
for example, that could be an issue.
41:42
Rule 60 can apply in certain circumstances
41:45
to allow vacature of final judgments
41:48
in certain restricted situations,
41:50
but we don't think it's infinite, Your Honor.
41:54
But here I would point out that
41:56
this was done at our first opportunity
41:59
for director review,
42:00
and I know that today
42:01
that occurs immediately
42:02
after a final written decision,
42:04
but at the time,
42:05
we made the correction
42:06
at the first opportunity that we had,
42:08
and we knew the final written decisions
42:09
were in place.
42:10
They weren't being vacated,
42:12
and we had an opportunity, again,
42:14
to go before the executive agency.
42:19
Judge Taranto
Thank you, Your Honor.
42:20
Thank you.
42:20
Thanks to all counsel.
42:22
The case is submitted.