Legal Case Summary

Panel is pleased to recognize the participation today of Judge James Robertson from the United States District Court for the District of Columbia, sitting with us as a visitor, extra duty, extra devotion to the administration of justice. So we appreciate his presence and participation and his willingness of his court to lend him. The panel has before it a total of six cases. Two of them will be submitted later today on the briefs without oral argument. They are appeal number 07-7104 keel versus Department of Veterans Affairs and appeal number 07-3139 Hudson versus the Department of Health and Human Services. On our fourth case argument list we'll hear argument first in appeal number 06-1571, Adenta GMBH versus Ortho Arm. Mr. Reynolds, good morning. Welcome to you. Please proceed. May I please the court. The panel has required for an anticipation finding for an invalidity finding as anticipated. Look, in jurisdiction, Adenta advised Ortho and American that patent was invalid, stopped paying royalties. There was a threatening letter. And then on top of that we've got the recent Supreme Court decision which is apparently lowered the level for a case of controversy. Why isn't it clear that there's a case of controversy here? Because you're honored, although the metamine and the court's verbalization of the standard in cases like sandists suggest that the bars lowered, the key to this case is that the facts are unusual. They're extremely unique because both the DJ plaintiff, Adenta, and the patent owner, one of the DJ defendants, both were paying royalties to Ortho Arm under the patent

. And as a result, the bolts did to gain by invalidating the patent and the facts throughout the litigation suggest that even if there was declaratory judgment jurisdiction based on the letter, which is the only... Then why didn't one sue the other if they were basically in league together? Because they wanted to put the validity of the patent and issue and invalidating together. And the facts from that point on, from the point of the letter and the final jurisdiction, filing out the DJ actually make that clear. For example, in response, American in its answer to its complaint, it took no position on validity of the patent. It didn't even in its answer say, well, we claim the patent is now. They said, we're neutral. We don't claim any interest in this patent at all. They didn't file any DJ, I mean, I'm sorry, they didn't file the compulsory counter claim of the patent infringement lawsuit or a breach of contract action back against Adenta for these non-human royalties that they suggest have. What are you suggesting that the Metamune test recently announced by the Supreme Court has an exception if it can be discerned that despite the existence of a licensed agreement that somehow there's a lack of sufficient adversity of interest? Absolutely, your honor. And this Court and the Supreme Court say that they're asking adverse legal interests when you look at all the circumstances. So the letter, the fact that they were a licensed or a licensed e is one fact as among this total set of facts. And in Metamune, of course, the licensed or a licensed e did have an adverse legal interest. And there was a counter play for patent infringement as a result of that. Obviously, it wasn't an adverse legal interest because they had a contract and weren't about to be sued

. But they're on opposite sides of contract relationship. One was a licensed or in the true sense of the word and what was a licensed e. In this case, that was not true. The answer where American affirmately stated that it had no legal interest, the fact that American number counter claimed they didn't participate in the litigation at all, at any one of these points. If you believe that at the time of time there was jurisdiction, they didn't show a trial where it defaulted from the first trial that was declared a mistrial. And in the second trial, which this appeal is taken from, the counsel for American at the law. So he showed up because he had been earlier defaulted. He showed that we don't take any position. What about that point that jurisdiction was that that vested if it ever existed in the first place under the totalitarian circumstances? What about the validity of the patent? The invalid of the patent. Yes, Your Honor. Tell us about it. The collaboration argument? Yes. Okay. The second reason we believe reversal is mandated is that the testimony that the dentist's case was found in entirely in the testimony of four witnesses. All interested parties that testified that a bracket like his shown in Exhibit 61, trial exhibit 61 is not a bracket that is allegedly from the trade show. It's just uses a model of what they say was there

. All these witnesses testified that that bracket was at a trade show in 1994. Now, I want to briefly hit on each of those witnesses and explain why they're clearly interested. Hydrogen, DL, and DJ claim, there's no question and there's no argument from a dent that they were interested. Lee Trumberg was American's vice president of R&D. And as I mentioned, American was in the position of wanting this patent validating. Doesn't all this go to credibility and didn't a jury decide that there was on sale bar? No, Your Honor. Because the legal issue of whether oral testimony alone is sufficient to invalid the US patent. So you've got to get to the documents. Well, there's a letter here from a German attorney admitting the fact that the bracket was shown in Exhibition of the United States. But there's nothing about that document that tells you what the bracket is. Well, it didn't his letter attach a proposed US patent application. The proposed application, the best evidence we have of what that application covered were the drawings that eventually found their way into the PISER-4444 patent. And it PISER, Schindel, and the record made clear that's a different bracket than they testified was on display in Florida 1994. So if anything, that kind of thing is..

. I thought the whole thrust of attorney corner's letter was that because we displayed this bracket at a trade show many months ago, we need you or US patent agent to hurry up and immediately file in order to avoid the passage of the one year grace period. And by attaching a proposed US application to be filed, it seemed to me the logic is that in order to beat the one year time limit, it would make no sense to worry about the one year time limit if the bracket that was at the trade show is different from the bracket in the patent application. But there's no way looking at that document you're going to tell what the bracket at the trade show was. Because it's different if anything. Well, I'm relying on the judgment of the German attorney. He obviously had to think that it was the same bracket or there would be no sense in his saying hurry up and file before the 12 months has expired since the trade show. Well, but he wasn't a witness at the trance, we don't know what he was thinking, but witnesses are not interested. I'm referring from what his letter said and what it attached that he had to be thinking that it's the same bracket that was at the trade show that's in the application I'm attaching to my letter. Well, the only thing we have here on a go is the bracket which the witnesses said it was not. Heiser and Schindel specifically testified it's not the same bracket that they saved shown at the trade show. And that's the problem around. Are those the same witnesses that you want to derogate from as being interested? They're named DJ pointers. They're named partners. Heiser and Schindel are the named plaintiffs along with the corporate entity, a vendor that filed the DJ action. And that's what this case comes down to on the validity side is that all you have is the oral testimony of these four witnesses. The documents, if you look at them, many of the documents that were cited by the district court as corroborative don't say anything about Florida at all or don't show any particular back

. And including the letter of Judge Michelle that came from this US Pannatory or came from the German Pannatory, two US Pannatory, I believe is exhibit 24. There's nothing about that document on its face that makes highly probable the oral testimony that was given in court because the oral testimony court was specific. That's the only prior art that is relied on in this case is that this bracket as his like this bracket in exhibit 61, that's what we say was at this trade show in 1994. Let me go back to something you said earlier to be sure I understood you correctly. I thought you said that our case law would require documentary corroboration of oral testimony. Did I hear you correctly? That's right. Where are you getting that? I'm getting that from, well, there's two parts that one is whether it's from interested witnesses or dissident witnesses. Well, I think, well, all right, go ahead. If it's from interested witnesses, the case law is clear that that requires corroboration, okay? I thought you said documentary corroboration. I want to try to get at it, whether oral testimony can corroborate other oral testimony of an interested witness if the corroborating witness who's giving oral testimony is not interested. Exactly. That's the second scenario where you have at least some of the witnesses who are dissident. If you have some of the witnesses, well, we have a holding by Judge Keren that the British salesman, sales guy, Russell, was not interested. And my recollection is that he testified at the trial and gave recollection testimony which, let's assume, for purposes of the question, was corroborative of the testimony of the two inventors? The heat testifying a deposition that was written to add it was a trial. So Judge Keren was not able to make any assessment of his demeanor and that sort of thing that goes to the crash of the testicle power. You're right, Robert

. Judge Keren did that. Finding that has to be reviewed in the term to be clearly your own is I think the fact that he had a long-term business relationship with a NETA, was there exclusive evidence? I understand that if we classify him as also interested, then he can't succeed in corroborating the first witness who's admittedly interested. But if we agree with Judge Keren that Mr. Shaw is not interested, you seem to be suggesting that Shaw's testimony read to the jury, nevertheless has to fail because it's testimony not documented. You're right, Mr. Russell. I'm pardoning Russell. You're out of your nut and I'd like to address that. That is our position. Our position is we've got to get to these documents and assess their sufficiency. The reason is that the law of the Supreme Court in the Barbarian case is still good law. And that finds this is the way it's progeny goes through cases like Finnegan decided by this court that says that oral testimony alone, it's unequivocal, it says that oral testimony alone, whether from interested or disinterest of parties is not enough to invalidate a patent. That's what it says. Now there is some dispute about that because there are cases from this court that in dicta suggest that oral testimony of disinterested parties or witnesses could be used to buttress the testimony of an interested witness. However, there's not a single case that we can find or that identify where that's the holding of the case, where this court found an invalidate, uphold an invalidate, find a case only on oral testimony be it from interested or disinterested witnesses. And the Supreme Court's case in Barbarian wire through it and its progeny in quen case is like Finnegan, Woodland Trust and Lacks Industries still make that good law

. So you've got to get to the documents, as I said. I don't think you can make this decision based on whether it's just on the oral testimony. You get to the documents and I submit your honor that if you look at all these documents, just a point of clarification, it says I have two and 45 seconds left, but I'm in a yellow already. Yeah, that means you're consuming your reserved rebuttal time. Okay, there you are. If you look at these six documents that Judge Kern and the District Court made its decision on, I think you'll find that the identity of this is not even as good as Barbarian case is actually a sample of the piece of barbed wire. And a dentist oral testimony needed to be corroborated by some sort of documentary evidence and none of the documents on which the District Court rely as being corroborated makes highly probable or in most cases even broadly relates to the specific story that was told in court. Therefore, the District Court's validity judgment should be overturned as the jurisdictional fine. Thank you, Mr. Reynolds. You have two minutes on rebuttal, Mr. Fredrickson. Good morning. Good morning. Thank you, Your Honor. Please, the Court

. I'd like to first address the jurisdictional issue. I believe that Judge Kern promptly determined that there was subject matter jurisdiction based on the pre-medium, case law that he was faced with at the time. Did he so determined or did he just act as though he determined it? Well, Your Honor, he did make a decision that he went ahead with it. Well, he went ahead with the Honor. The context is this. As the Court has pointed out, there was no dispute that there was a letter from Adenta to American saying we think this pact is valid or not going to pay any more royalties and a letter back saying that if you breach this license, we're going to sue you. That's undisputed. That was undisputed. Sounds like the case of controversy. And the defendant's position was they didn't say that that that on its face is not a credit case or a controversy, but instead argued as a contrite it's your honor. They never they never came on the box and said there's no case or a controversy. And he said what you're seeing on the face was trumped up by the parties. But on the merits with respect to the possible self interest of all these witnesses, you're pwned to sort of picking it one of the time and trying to cause this as he would probably call it a house of cards to just finally collapse. Would you respond to that please? Certainly. And I think the rule of reason that this Court is articulated as a framework for assessing corroborative evidence of oral testimony. Requiring a consideration of all the evidence that's brought to bear

. And no one piece of evidence needs to be inclusive on its face of demonstrating all the facts necessary proof and participation. Yeah, but what does it need to corroborate? Mr. Reynolds says whatever you want to rely on needs to corroborate that the bracket shown in exhibit 61 and no other bracket is what was displayed at the Orlando Trade Show. You agree with that? Well, I would just like to clarify slightly the record evidence. And that is that exhibit 61 was from the same production lot of brackets as was shown by Mr. Reynolds. I may have misbooked. I wasn't trying to suggest that the particular bracket shown in that exhibit or the similar photograph was the precise actual physical object. But it was a depiction of what the testimony said the bracket shown at the Trade Show was. And that is what ultimately needs to be corroborated. I agree with that. Is there a photograph of Mr. Schem now or Dr. Heiser at the Florida Conference with the bracket? We wouldn't be here. I said that if we had that. Well, what is it? What's the strongest corroboration of that particular assertion? Well, again, I don't think there is a single piece of evidence that I can say

. I'm not trying to limit you to one. I just want you to start with the one you think is the strongest. Then you can add the others. Sure. I'm going to start with the evidence of the communications by Mr. Russell immediately after the Trade Show, which are at service 12 to 16. Now, I will write off the bat that none of those identified described the bracket in the table. But he goes back home, he gets an invitation to convey to Dr. Heiser to talk about his new bracket that was displayed at the show. He's a hot topic. Then in September, just three months later in response to a request from Mr. Russell. Mr. Schendell sends him photographs. The request was send me photographs of the bracket you have because I want to start marketing. I want photographs of the bracket that you had at the show. So I can start marketing my product. I'd like to submit a market in Great Britain. And Mr. Schendell faxed him exhibit 17, which contains photographs that are completely consistent with exhibit 61, which is the exhibit. That's the court pointed out that is a depiction of what do you mean consistent? The same bracket or is the similar bracket? It's the same. That photograph is the same as the brackets that works of the 61. The 61A and 17 are identical. Yes, sir. All right. And then as the court pointed out, we have a pair of patent applications filed, one in Germany in March of 1994, and one of the United States in April of 1995, both filed if the testimony is because of the display of the bracket at the trade show in Orlando in May of 1994. If there are no records of what bracket was shown in Florida, how did Attorney Corner know to write the letter? Was he just guessing? No, you're almost there. At the time there were no records because of the timing of when this dispute came up, we could not locate more complete records that might have contained a depiction of what Mr. Corner had seen at that point in time. Corner wasn't at the trade show, right? No, he was not. So he has to get it from somebody else that the bracket sought to be patented is the same one shown at the Florida trade show. Correct, but nonetheless it's a statement against Interstgrano

. So I can start marketing my product. I'd like to submit a market in Great Britain. And Mr. Schendell faxed him exhibit 17, which contains photographs that are completely consistent with exhibit 61, which is the exhibit. That's the court pointed out that is a depiction of what do you mean consistent? The same bracket or is the similar bracket? It's the same. That photograph is the same as the brackets that works of the 61. The 61A and 17 are identical. Yes, sir. All right. And then as the court pointed out, we have a pair of patent applications filed, one in Germany in March of 1994, and one of the United States in April of 1995, both filed if the testimony is because of the display of the bracket at the trade show in Orlando in May of 1994. If there are no records of what bracket was shown in Florida, how did Attorney Corner know to write the letter? Was he just guessing? No, you're almost there. At the time there were no records because of the timing of when this dispute came up, we could not locate more complete records that might have contained a depiction of what Mr. Corner had seen at that point in time. Corner wasn't at the trade show, right? No, he was not. So he has to get it from somebody else that the bracket sought to be patented is the same one shown at the Florida trade show. Correct, but nonetheless it's a statement against Interstgrano. Why would he make a statement such as that if he didn't believe it and he's speaking on behalf of his clients or other clients in this case? Well, I just see it to me very odd that there were no records at least surviving as to what was shown at the trade show if it was of sufficient concern to the inventors that they had their attorney immediately try to follow up with the US application. Well, I said I would much prefer to have put on a case with a photograph of the Interst in parties dated showing what was actually on display at the... But there really wasn't anything. No brochures, no posters, no photographs, no correspondence, no handouts, no diagrams, nothing. No sales. No sales, that's correct. No invoices. No invoices, that's correct, right? No, sales not required it and no I understand that. I mean there is not a question before this court that identified displayed offered for sale and publicly used a bracket, an orthodont bracket at the Florida conference in 1994. Questions one and two of the special verdict asked that question and pointed out in our materials. The defendant's ortho armed advised US current that they had no issue with the jury's answer to those questions. The only question was what precisely was the substance of the bracket that was displayed at Orlando? The jury wasn't instructed on this question of corroboration at all. I mean there was a word corroboration appears there but the corroboration question wasn't really one of the issues presented at the jury. Is there any particular difference that we should be paying to the jury's verdict because of that? Well the corroboration requirement is I read the court's precedent, it is a test to be applied by the court

. Why would he make a statement such as that if he didn't believe it and he's speaking on behalf of his clients or other clients in this case? Well, I just see it to me very odd that there were no records at least surviving as to what was shown at the trade show if it was of sufficient concern to the inventors that they had their attorney immediately try to follow up with the US application. Well, I said I would much prefer to have put on a case with a photograph of the Interst in parties dated showing what was actually on display at the... But there really wasn't anything. No brochures, no posters, no photographs, no correspondence, no handouts, no diagrams, nothing. No sales. No sales, that's correct. No invoices. No invoices, that's correct, right? No, sales not required it and no I understand that. I mean there is not a question before this court that identified displayed offered for sale and publicly used a bracket, an orthodont bracket at the Florida conference in 1994. Questions one and two of the special verdict asked that question and pointed out in our materials. The defendant's ortho armed advised US current that they had no issue with the jury's answer to those questions. The only question was what precisely was the substance of the bracket that was displayed at Orlando? The jury wasn't instructed on this question of corroboration at all. I mean there was a word corroboration appears there but the corroboration question wasn't really one of the issues presented at the jury. Is there any particular difference that we should be paying to the jury's verdict because of that? Well the corroboration requirement is I read the court's precedent, it is a test to be applied by the court. It is a question of fact however. And the fairly recently in the Medichand versus Relabo case, I've emphasized that that's a finding of fact and also emphasized that where at least in part the court's assessment of the corroboration is based on credibility of witnesses. Well did somebody ask the judge to give an instruction on that point? Well then it would normally be thought to be waive. Even if it would have been a instruction the court would have had to have given. If neither party saw it, it doesn't seem like it's appropriate to complain about it at this late date. I agree with the court and that was better on it. All right, but if I might speak just for a moment about our cross-billionaire on this issue of inequitable conduct. Judge Curran found as a finding of fact that the inventor Dr. John Boudouris said that this represented himself to be the inventor of the subject matter thanks for 47 and 48. Yeah, but he found that it was without deceptive intent. So I recall you'll have to convince us that that was clear error on the evidence before him. I agree with the Toronto understand it is. I failed to understand how the court can find that somebody signed an affidavit saying I am the inventor of the subject matter of these patents. Subject matter that he observed and commented glowingly on the dentist product when he saw the subject matter in a dentist product which is in documented in evidence from Dr. Burr-Zone Hand. This is a great feature having a hole in the aperture of the shutter

. It is a question of fact however. And the fairly recently in the Medichand versus Relabo case, I've emphasized that that's a finding of fact and also emphasized that where at least in part the court's assessment of the corroboration is based on credibility of witnesses. Well did somebody ask the judge to give an instruction on that point? Well then it would normally be thought to be waive. Even if it would have been a instruction the court would have had to have given. If neither party saw it, it doesn't seem like it's appropriate to complain about it at this late date. I agree with the court and that was better on it. All right, but if I might speak just for a moment about our cross-billionaire on this issue of inequitable conduct. Judge Curran found as a finding of fact that the inventor Dr. John Boudouris said that this represented himself to be the inventor of the subject matter thanks for 47 and 48. Yeah, but he found that it was without deceptive intent. So I recall you'll have to convince us that that was clear error on the evidence before him. I agree with the Toronto understand it is. I failed to understand how the court can find that somebody signed an affidavit saying I am the inventor of the subject matter of these patents. Subject matter that he observed and commented glowingly on the dentist product when he saw the subject matter in a dentist product which is in documented in evidence from Dr. Burr-Zone Hand. This is a great feature having a hole in the aperture of the shutter. I failed. This is not a case where he may have truly believed that he was the inventor and turned out to be wrong. This is a case where he saw our product thought it was a great feature and started claims directed to that combination of features and said in the patent office, I invented this. Now, I don't know how you can represent to be the inventor of something that you clearly got from somebody else without an intent to deceive the patent office. There was no effort made by Dr. Burr-Zone to say I really thought of this way back when I just forgot about it. In fact, he admitted that the British patent application which he used to swear behind some other references during prosecution did not include that feature. He pointed to nothing else and said I did invent the subject matter of those patents. This is all your argument. We have findings by a district judge. I'm awfully hard to overcome finding a lack of intent. I understand, but I come back to the... To my view of the case, it is simply inconsistent with his first finding that there was an intentional misrepresentation that I'm the inventor of this subject matter that I first saw in their product with no intent. I appreciate the steepness of the standard and the hill that I'm climbing

. I failed. This is not a case where he may have truly believed that he was the inventor and turned out to be wrong. This is a case where he saw our product thought it was a great feature and started claims directed to that combination of features and said in the patent office, I invented this. Now, I don't know how you can represent to be the inventor of something that you clearly got from somebody else without an intent to deceive the patent office. There was no effort made by Dr. Burr-Zone to say I really thought of this way back when I just forgot about it. In fact, he admitted that the British patent application which he used to swear behind some other references during prosecution did not include that feature. He pointed to nothing else and said I did invent the subject matter of those patents. This is all your argument. We have findings by a district judge. I'm awfully hard to overcome finding a lack of intent. I understand, but I come back to the... To my view of the case, it is simply inconsistent with his first finding that there was an intentional misrepresentation that I'm the inventor of this subject matter that I first saw in their product with no intent. I appreciate the steepness of the standard and the hill that I'm climbing. I just don't see how anybody can reconcile those two findings as being consistent under the fact that this case. They'll leave round of it. That's why I do you run it. So you're really saying that it was a necessary inference that the judge had to draw. Could not lawfully fail to draw an inference of deceptive intent from the circumstance you described. In the circumstances of this case, no. I certainly can consider cases where somebody innocently believes there were an inventor of subject matter and turns out to be wrong. But that is not this case. There is no evidence. We often talk in cases about reasonable inferences and permissible inferences. I think it's rare if ever you're going to find a pellet cord saying there was a mandatory inference that the fact finder must infer X from Y. That's what I think what you're asking us to do. As I said, I recognize the bird night facing and with all the respect I believe, but under this case, under these unique facts, that's warranted. It's still asking. I'm still asking. Now you had one further point on cross appeal, I believe

. I just don't see how anybody can reconcile those two findings as being consistent under the fact that this case. They'll leave round of it. That's why I do you run it. So you're really saying that it was a necessary inference that the judge had to draw. Could not lawfully fail to draw an inference of deceptive intent from the circumstance you described. In the circumstances of this case, no. I certainly can consider cases where somebody innocently believes there were an inventor of subject matter and turns out to be wrong. But that is not this case. There is no evidence. We often talk in cases about reasonable inferences and permissible inferences. I think it's rare if ever you're going to find a pellet cord saying there was a mandatory inference that the fact finder must infer X from Y. That's what I think what you're asking us to do. As I said, I recognize the bird night facing and with all the respect I believe, but under this case, under these unique facts, that's warranted. It's still asking. I'm still asking. Now you had one further point on cross appeal, I believe. No other than the case then should also be found exceptional based on that. This is really the same point. Just a different additional relief. Correct. Clearly, if you don't buy my argument on the one, I see what I see the handwriting on the wall for the second point. We are not deciding right now. We're just asking questions. The two would stand or fall together. I think that's fair to say. Anything further? There's a remainder of my time for any rebuttal. Very well. Thank you. On the cross appeal. On the cross appeal, on the cross appeal. All right, Mr. Reynolds

. No other than the case then should also be found exceptional based on that. This is really the same point. Just a different additional relief. Correct. Clearly, if you don't buy my argument on the one, I see what I see the handwriting on the wall for the second point. We are not deciding right now. We're just asking questions. The two would stand or fall together. I think that's fair to say. Anything further? There's a remainder of my time for any rebuttal. Very well. Thank you. On the cross appeal. On the cross appeal, on the cross appeal. All right, Mr. Reynolds. Thank you. A few brief points. First of all, as on my reply, first on the corroboration issue, it's very important, as I said, to look at these documents. The best evidence that Mr. Frerter's site exhibits 12 through 17. If you look at 12 through 17, if it's 12 through 17, and I have the records, if you like them, there's not one single mention of Florida for a trade show on those documents. There's no way to make a link based on those documents. That's why these documents fail either in that regard, or they don't relate to a specific bracket in some of the other cases. But those documents, he's cited, do not mention Florida or trade show at all. But, counsel, even if they don't mention Florida at all, if there is some corroboration in the testimony of the other witnesses that they were in Florida, they showed something in Florida. Why isn't that corroboration enough for the finding of the district judge? Because there's nothing about those documents that make highly probable order and suggest that the oral testimony is any more likely to be true. So you're still back to just this oral testimony that you have to rely on and out in this pattern. Is the test highly probable or even suggest? I don't know. Okay. My second point, your honor, just quickly as Metanyum speaks to a totality of the circumstances, and that's what I think is different. A single letter doesn't do it, because even though Metanyum may represent a lower environment, one respect would resolutely apprehend you

. Thank you. A few brief points. First of all, as on my reply, first on the corroboration issue, it's very important, as I said, to look at these documents. The best evidence that Mr. Frerter's site exhibits 12 through 17. If you look at 12 through 17, if it's 12 through 17, and I have the records, if you like them, there's not one single mention of Florida for a trade show on those documents. There's no way to make a link based on those documents. That's why these documents fail either in that regard, or they don't relate to a specific bracket in some of the other cases. But those documents, he's cited, do not mention Florida or trade show at all. But, counsel, even if they don't mention Florida at all, if there is some corroboration in the testimony of the other witnesses that they were in Florida, they showed something in Florida. Why isn't that corroboration enough for the finding of the district judge? Because there's nothing about those documents that make highly probable order and suggest that the oral testimony is any more likely to be true. So you're still back to just this oral testimony that you have to rely on and out in this pattern. Is the test highly probable or even suggest? I don't know. Okay. My second point, your honor, just quickly as Metanyum speaks to a totality of the circumstances, and that's what I think is different. A single letter doesn't do it, because even though Metanyum may represent a lower environment, one respect would resolutely apprehend you. We're looking at the totality of the circumstances, and that's just one of the circumstances. In your last 30 seconds, do you want to address the cross appeal? Yes, Your Honor. I just want to say that the judge found there was no deceptive intent. The entire argument by a dentist found it upon Dr. Rudeurich who were moving a dependent claim that related to an aperture. That's the only feature that has been argued. He didn't quote an unquote invent. An isemite, that's a misunderstanding of what inventorship is and what the patent office procedure is. The aperture feature was in dozens of cited references. He just couldn't get back to his British application with respect to that feature. All of the features were supported by his British application. That's why I get to move that claim. Thank you, Your Honor. All right. Thank you, Mr. Riemels

. We're looking at the totality of the circumstances, and that's just one of the circumstances. In your last 30 seconds, do you want to address the cross appeal? Yes, Your Honor. I just want to say that the judge found there was no deceptive intent. The entire argument by a dentist found it upon Dr. Rudeurich who were moving a dependent claim that related to an aperture. That's the only feature that has been argued. He didn't quote an unquote invent. An isemite, that's a misunderstanding of what inventorship is and what the patent office procedure is. The aperture feature was in dozens of cited references. He just couldn't get back to his British application with respect to that feature. All of the features were supported by his British application. That's why I get to move that claim. Thank you, Your Honor. All right. Thank you, Mr. Riemels. Mr. Fredrickson. You're welcome. I don't have any letters on it. Very well. All right. We thank you both, and we will take the appeal and cross appeal under advisement. Thank you, Your Honor.

Panel is pleased to recognize the participation today of Judge James Robertson from the United States District Court for the District of Columbia, sitting with us as a visitor, extra duty, extra devotion to the administration of justice. So we appreciate his presence and participation and his willingness of his court to lend him. The panel has before it a total of six cases. Two of them will be submitted later today on the briefs without oral argument. They are appeal number 07-7104 keel versus Department of Veterans Affairs and appeal number 07-3139 Hudson versus the Department of Health and Human Services. On our fourth case argument list we'll hear argument first in appeal number 06-1571, Adenta GMBH versus Ortho Arm. Mr. Reynolds, good morning. Welcome to you. Please proceed. May I please the court. The panel has required for an anticipation finding for an invalidity finding as anticipated. Look, in jurisdiction, Adenta advised Ortho and American that patent was invalid, stopped paying royalties. There was a threatening letter. And then on top of that we've got the recent Supreme Court decision which is apparently lowered the level for a case of controversy. Why isn't it clear that there's a case of controversy here? Because you're honored, although the metamine and the court's verbalization of the standard in cases like sandists suggest that the bars lowered, the key to this case is that the facts are unusual. They're extremely unique because both the DJ plaintiff, Adenta, and the patent owner, one of the DJ defendants, both were paying royalties to Ortho Arm under the patent. And as a result, the bolts did to gain by invalidating the patent and the facts throughout the litigation suggest that even if there was declaratory judgment jurisdiction based on the letter, which is the only... Then why didn't one sue the other if they were basically in league together? Because they wanted to put the validity of the patent and issue and invalidating together. And the facts from that point on, from the point of the letter and the final jurisdiction, filing out the DJ actually make that clear. For example, in response, American in its answer to its complaint, it took no position on validity of the patent. It didn't even in its answer say, well, we claim the patent is now. They said, we're neutral. We don't claim any interest in this patent at all. They didn't file any DJ, I mean, I'm sorry, they didn't file the compulsory counter claim of the patent infringement lawsuit or a breach of contract action back against Adenta for these non-human royalties that they suggest have. What are you suggesting that the Metamune test recently announced by the Supreme Court has an exception if it can be discerned that despite the existence of a licensed agreement that somehow there's a lack of sufficient adversity of interest? Absolutely, your honor. And this Court and the Supreme Court say that they're asking adverse legal interests when you look at all the circumstances. So the letter, the fact that they were a licensed or a licensed e is one fact as among this total set of facts. And in Metamune, of course, the licensed or a licensed e did have an adverse legal interest. And there was a counter play for patent infringement as a result of that. Obviously, it wasn't an adverse legal interest because they had a contract and weren't about to be sued. But they're on opposite sides of contract relationship. One was a licensed or in the true sense of the word and what was a licensed e. In this case, that was not true. The answer where American affirmately stated that it had no legal interest, the fact that American number counter claimed they didn't participate in the litigation at all, at any one of these points. If you believe that at the time of time there was jurisdiction, they didn't show a trial where it defaulted from the first trial that was declared a mistrial. And in the second trial, which this appeal is taken from, the counsel for American at the law. So he showed up because he had been earlier defaulted. He showed that we don't take any position. What about that point that jurisdiction was that that vested if it ever existed in the first place under the totalitarian circumstances? What about the validity of the patent? The invalid of the patent. Yes, Your Honor. Tell us about it. The collaboration argument? Yes. Okay. The second reason we believe reversal is mandated is that the testimony that the dentist's case was found in entirely in the testimony of four witnesses. All interested parties that testified that a bracket like his shown in Exhibit 61, trial exhibit 61 is not a bracket that is allegedly from the trade show. It's just uses a model of what they say was there. All these witnesses testified that that bracket was at a trade show in 1994. Now, I want to briefly hit on each of those witnesses and explain why they're clearly interested. Hydrogen, DL, and DJ claim, there's no question and there's no argument from a dent that they were interested. Lee Trumberg was American's vice president of R&D. And as I mentioned, American was in the position of wanting this patent validating. Doesn't all this go to credibility and didn't a jury decide that there was on sale bar? No, Your Honor. Because the legal issue of whether oral testimony alone is sufficient to invalid the US patent. So you've got to get to the documents. Well, there's a letter here from a German attorney admitting the fact that the bracket was shown in Exhibition of the United States. But there's nothing about that document that tells you what the bracket is. Well, it didn't his letter attach a proposed US patent application. The proposed application, the best evidence we have of what that application covered were the drawings that eventually found their way into the PISER-4444 patent. And it PISER, Schindel, and the record made clear that's a different bracket than they testified was on display in Florida 1994. So if anything, that kind of thing is... I thought the whole thrust of attorney corner's letter was that because we displayed this bracket at a trade show many months ago, we need you or US patent agent to hurry up and immediately file in order to avoid the passage of the one year grace period. And by attaching a proposed US application to be filed, it seemed to me the logic is that in order to beat the one year time limit, it would make no sense to worry about the one year time limit if the bracket that was at the trade show is different from the bracket in the patent application. But there's no way looking at that document you're going to tell what the bracket at the trade show was. Because it's different if anything. Well, I'm relying on the judgment of the German attorney. He obviously had to think that it was the same bracket or there would be no sense in his saying hurry up and file before the 12 months has expired since the trade show. Well, but he wasn't a witness at the trance, we don't know what he was thinking, but witnesses are not interested. I'm referring from what his letter said and what it attached that he had to be thinking that it's the same bracket that was at the trade show that's in the application I'm attaching to my letter. Well, the only thing we have here on a go is the bracket which the witnesses said it was not. Heiser and Schindel specifically testified it's not the same bracket that they saved shown at the trade show. And that's the problem around. Are those the same witnesses that you want to derogate from as being interested? They're named DJ pointers. They're named partners. Heiser and Schindel are the named plaintiffs along with the corporate entity, a vendor that filed the DJ action. And that's what this case comes down to on the validity side is that all you have is the oral testimony of these four witnesses. The documents, if you look at them, many of the documents that were cited by the district court as corroborative don't say anything about Florida at all or don't show any particular back. And including the letter of Judge Michelle that came from this US Pannatory or came from the German Pannatory, two US Pannatory, I believe is exhibit 24. There's nothing about that document on its face that makes highly probable the oral testimony that was given in court because the oral testimony court was specific. That's the only prior art that is relied on in this case is that this bracket as his like this bracket in exhibit 61, that's what we say was at this trade show in 1994. Let me go back to something you said earlier to be sure I understood you correctly. I thought you said that our case law would require documentary corroboration of oral testimony. Did I hear you correctly? That's right. Where are you getting that? I'm getting that from, well, there's two parts that one is whether it's from interested witnesses or dissident witnesses. Well, I think, well, all right, go ahead. If it's from interested witnesses, the case law is clear that that requires corroboration, okay? I thought you said documentary corroboration. I want to try to get at it, whether oral testimony can corroborate other oral testimony of an interested witness if the corroborating witness who's giving oral testimony is not interested. Exactly. That's the second scenario where you have at least some of the witnesses who are dissident. If you have some of the witnesses, well, we have a holding by Judge Keren that the British salesman, sales guy, Russell, was not interested. And my recollection is that he testified at the trial and gave recollection testimony which, let's assume, for purposes of the question, was corroborative of the testimony of the two inventors? The heat testifying a deposition that was written to add it was a trial. So Judge Keren was not able to make any assessment of his demeanor and that sort of thing that goes to the crash of the testicle power. You're right, Robert. Judge Keren did that. Finding that has to be reviewed in the term to be clearly your own is I think the fact that he had a long-term business relationship with a NETA, was there exclusive evidence? I understand that if we classify him as also interested, then he can't succeed in corroborating the first witness who's admittedly interested. But if we agree with Judge Keren that Mr. Shaw is not interested, you seem to be suggesting that Shaw's testimony read to the jury, nevertheless has to fail because it's testimony not documented. You're right, Mr. Russell. I'm pardoning Russell. You're out of your nut and I'd like to address that. That is our position. Our position is we've got to get to these documents and assess their sufficiency. The reason is that the law of the Supreme Court in the Barbarian case is still good law. And that finds this is the way it's progeny goes through cases like Finnegan decided by this court that says that oral testimony alone, it's unequivocal, it says that oral testimony alone, whether from interested or disinterest of parties is not enough to invalidate a patent. That's what it says. Now there is some dispute about that because there are cases from this court that in dicta suggest that oral testimony of disinterested parties or witnesses could be used to buttress the testimony of an interested witness. However, there's not a single case that we can find or that identify where that's the holding of the case, where this court found an invalidate, uphold an invalidate, find a case only on oral testimony be it from interested or disinterested witnesses. And the Supreme Court's case in Barbarian wire through it and its progeny in quen case is like Finnegan, Woodland Trust and Lacks Industries still make that good law. So you've got to get to the documents, as I said. I don't think you can make this decision based on whether it's just on the oral testimony. You get to the documents and I submit your honor that if you look at all these documents, just a point of clarification, it says I have two and 45 seconds left, but I'm in a yellow already. Yeah, that means you're consuming your reserved rebuttal time. Okay, there you are. If you look at these six documents that Judge Kern and the District Court made its decision on, I think you'll find that the identity of this is not even as good as Barbarian case is actually a sample of the piece of barbed wire. And a dentist oral testimony needed to be corroborated by some sort of documentary evidence and none of the documents on which the District Court rely as being corroborated makes highly probable or in most cases even broadly relates to the specific story that was told in court. Therefore, the District Court's validity judgment should be overturned as the jurisdictional fine. Thank you, Mr. Reynolds. You have two minutes on rebuttal, Mr. Fredrickson. Good morning. Good morning. Thank you, Your Honor. Please, the Court. I'd like to first address the jurisdictional issue. I believe that Judge Kern promptly determined that there was subject matter jurisdiction based on the pre-medium, case law that he was faced with at the time. Did he so determined or did he just act as though he determined it? Well, Your Honor, he did make a decision that he went ahead with it. Well, he went ahead with the Honor. The context is this. As the Court has pointed out, there was no dispute that there was a letter from Adenta to American saying we think this pact is valid or not going to pay any more royalties and a letter back saying that if you breach this license, we're going to sue you. That's undisputed. That was undisputed. Sounds like the case of controversy. And the defendant's position was they didn't say that that that on its face is not a credit case or a controversy, but instead argued as a contrite it's your honor. They never they never came on the box and said there's no case or a controversy. And he said what you're seeing on the face was trumped up by the parties. But on the merits with respect to the possible self interest of all these witnesses, you're pwned to sort of picking it one of the time and trying to cause this as he would probably call it a house of cards to just finally collapse. Would you respond to that please? Certainly. And I think the rule of reason that this Court is articulated as a framework for assessing corroborative evidence of oral testimony. Requiring a consideration of all the evidence that's brought to bear. And no one piece of evidence needs to be inclusive on its face of demonstrating all the facts necessary proof and participation. Yeah, but what does it need to corroborate? Mr. Reynolds says whatever you want to rely on needs to corroborate that the bracket shown in exhibit 61 and no other bracket is what was displayed at the Orlando Trade Show. You agree with that? Well, I would just like to clarify slightly the record evidence. And that is that exhibit 61 was from the same production lot of brackets as was shown by Mr. Reynolds. I may have misbooked. I wasn't trying to suggest that the particular bracket shown in that exhibit or the similar photograph was the precise actual physical object. But it was a depiction of what the testimony said the bracket shown at the Trade Show was. And that is what ultimately needs to be corroborated. I agree with that. Is there a photograph of Mr. Schem now or Dr. Heiser at the Florida Conference with the bracket? We wouldn't be here. I said that if we had that. Well, what is it? What's the strongest corroboration of that particular assertion? Well, again, I don't think there is a single piece of evidence that I can say. I'm not trying to limit you to one. I just want you to start with the one you think is the strongest. Then you can add the others. Sure. I'm going to start with the evidence of the communications by Mr. Russell immediately after the Trade Show, which are at service 12 to 16. Now, I will write off the bat that none of those identified described the bracket in the table. But he goes back home, he gets an invitation to convey to Dr. Heiser to talk about his new bracket that was displayed at the show. He's a hot topic. Then in September, just three months later in response to a request from Mr. Russell. Mr. Schendell sends him photographs. The request was send me photographs of the bracket you have because I want to start marketing. I want photographs of the bracket that you had at the show. So I can start marketing my product. I'd like to submit a market in Great Britain. And Mr. Schendell faxed him exhibit 17, which contains photographs that are completely consistent with exhibit 61, which is the exhibit. That's the court pointed out that is a depiction of what do you mean consistent? The same bracket or is the similar bracket? It's the same. That photograph is the same as the brackets that works of the 61. The 61A and 17 are identical. Yes, sir. All right. And then as the court pointed out, we have a pair of patent applications filed, one in Germany in March of 1994, and one of the United States in April of 1995, both filed if the testimony is because of the display of the bracket at the trade show in Orlando in May of 1994. If there are no records of what bracket was shown in Florida, how did Attorney Corner know to write the letter? Was he just guessing? No, you're almost there. At the time there were no records because of the timing of when this dispute came up, we could not locate more complete records that might have contained a depiction of what Mr. Corner had seen at that point in time. Corner wasn't at the trade show, right? No, he was not. So he has to get it from somebody else that the bracket sought to be patented is the same one shown at the Florida trade show. Correct, but nonetheless it's a statement against Interstgrano. Why would he make a statement such as that if he didn't believe it and he's speaking on behalf of his clients or other clients in this case? Well, I just see it to me very odd that there were no records at least surviving as to what was shown at the trade show if it was of sufficient concern to the inventors that they had their attorney immediately try to follow up with the US application. Well, I said I would much prefer to have put on a case with a photograph of the Interst in parties dated showing what was actually on display at the... But there really wasn't anything. No brochures, no posters, no photographs, no correspondence, no handouts, no diagrams, nothing. No sales. No sales, that's correct. No invoices. No invoices, that's correct, right? No, sales not required it and no I understand that. I mean there is not a question before this court that identified displayed offered for sale and publicly used a bracket, an orthodont bracket at the Florida conference in 1994. Questions one and two of the special verdict asked that question and pointed out in our materials. The defendant's ortho armed advised US current that they had no issue with the jury's answer to those questions. The only question was what precisely was the substance of the bracket that was displayed at Orlando? The jury wasn't instructed on this question of corroboration at all. I mean there was a word corroboration appears there but the corroboration question wasn't really one of the issues presented at the jury. Is there any particular difference that we should be paying to the jury's verdict because of that? Well the corroboration requirement is I read the court's precedent, it is a test to be applied by the court. It is a question of fact however. And the fairly recently in the Medichand versus Relabo case, I've emphasized that that's a finding of fact and also emphasized that where at least in part the court's assessment of the corroboration is based on credibility of witnesses. Well did somebody ask the judge to give an instruction on that point? Well then it would normally be thought to be waive. Even if it would have been a instruction the court would have had to have given. If neither party saw it, it doesn't seem like it's appropriate to complain about it at this late date. I agree with the court and that was better on it. All right, but if I might speak just for a moment about our cross-billionaire on this issue of inequitable conduct. Judge Curran found as a finding of fact that the inventor Dr. John Boudouris said that this represented himself to be the inventor of the subject matter thanks for 47 and 48. Yeah, but he found that it was without deceptive intent. So I recall you'll have to convince us that that was clear error on the evidence before him. I agree with the Toronto understand it is. I failed to understand how the court can find that somebody signed an affidavit saying I am the inventor of the subject matter of these patents. Subject matter that he observed and commented glowingly on the dentist product when he saw the subject matter in a dentist product which is in documented in evidence from Dr. Burr-Zone Hand. This is a great feature having a hole in the aperture of the shutter. I failed. This is not a case where he may have truly believed that he was the inventor and turned out to be wrong. This is a case where he saw our product thought it was a great feature and started claims directed to that combination of features and said in the patent office, I invented this. Now, I don't know how you can represent to be the inventor of something that you clearly got from somebody else without an intent to deceive the patent office. There was no effort made by Dr. Burr-Zone to say I really thought of this way back when I just forgot about it. In fact, he admitted that the British patent application which he used to swear behind some other references during prosecution did not include that feature. He pointed to nothing else and said I did invent the subject matter of those patents. This is all your argument. We have findings by a district judge. I'm awfully hard to overcome finding a lack of intent. I understand, but I come back to the... To my view of the case, it is simply inconsistent with his first finding that there was an intentional misrepresentation that I'm the inventor of this subject matter that I first saw in their product with no intent. I appreciate the steepness of the standard and the hill that I'm climbing. I just don't see how anybody can reconcile those two findings as being consistent under the fact that this case. They'll leave round of it. That's why I do you run it. So you're really saying that it was a necessary inference that the judge had to draw. Could not lawfully fail to draw an inference of deceptive intent from the circumstance you described. In the circumstances of this case, no. I certainly can consider cases where somebody innocently believes there were an inventor of subject matter and turns out to be wrong. But that is not this case. There is no evidence. We often talk in cases about reasonable inferences and permissible inferences. I think it's rare if ever you're going to find a pellet cord saying there was a mandatory inference that the fact finder must infer X from Y. That's what I think what you're asking us to do. As I said, I recognize the bird night facing and with all the respect I believe, but under this case, under these unique facts, that's warranted. It's still asking. I'm still asking. Now you had one further point on cross appeal, I believe. No other than the case then should also be found exceptional based on that. This is really the same point. Just a different additional relief. Correct. Clearly, if you don't buy my argument on the one, I see what I see the handwriting on the wall for the second point. We are not deciding right now. We're just asking questions. The two would stand or fall together. I think that's fair to say. Anything further? There's a remainder of my time for any rebuttal. Very well. Thank you. On the cross appeal. On the cross appeal, on the cross appeal. All right, Mr. Reynolds. Thank you. A few brief points. First of all, as on my reply, first on the corroboration issue, it's very important, as I said, to look at these documents. The best evidence that Mr. Frerter's site exhibits 12 through 17. If you look at 12 through 17, if it's 12 through 17, and I have the records, if you like them, there's not one single mention of Florida for a trade show on those documents. There's no way to make a link based on those documents. That's why these documents fail either in that regard, or they don't relate to a specific bracket in some of the other cases. But those documents, he's cited, do not mention Florida or trade show at all. But, counsel, even if they don't mention Florida at all, if there is some corroboration in the testimony of the other witnesses that they were in Florida, they showed something in Florida. Why isn't that corroboration enough for the finding of the district judge? Because there's nothing about those documents that make highly probable order and suggest that the oral testimony is any more likely to be true. So you're still back to just this oral testimony that you have to rely on and out in this pattern. Is the test highly probable or even suggest? I don't know. Okay. My second point, your honor, just quickly as Metanyum speaks to a totality of the circumstances, and that's what I think is different. A single letter doesn't do it, because even though Metanyum may represent a lower environment, one respect would resolutely apprehend you. We're looking at the totality of the circumstances, and that's just one of the circumstances. In your last 30 seconds, do you want to address the cross appeal? Yes, Your Honor. I just want to say that the judge found there was no deceptive intent. The entire argument by a dentist found it upon Dr. Rudeurich who were moving a dependent claim that related to an aperture. That's the only feature that has been argued. He didn't quote an unquote invent. An isemite, that's a misunderstanding of what inventorship is and what the patent office procedure is. The aperture feature was in dozens of cited references. He just couldn't get back to his British application with respect to that feature. All of the features were supported by his British application. That's why I get to move that claim. Thank you, Your Honor. All right. Thank you, Mr. Riemels. Mr. Fredrickson. You're welcome. I don't have any letters on it. Very well. All right. We thank you both, and we will take the appeal and cross appeal under advisement. Thank you, Your Honor