Our first case this morning is Schwind versus Miller. You may proceed. Good morning, Your Honors. May it please the court. My name is Jeff Bachrot and along with Robert Schulman, I represent a pellant, Schwind, the judge of Schwind. I'd like to begin by focusing on free facts, which I believe on this record are undisputed. And the first is that when Mr. Schwind became involved, I started working with the Miller party. The device that the Miller party was developing at the time had a reciprocal only motion, and he was hired to actually add a pneumatic component to this reciprocal only device. And it wasn't until later after Mr. Schwind became involved that the idea of adding a rotationally pneumatic motor became put into place. And in the board overlooked this important fact in its decision when it seemed to assume that the tissue cutting device that Mr. Miller party had been developing when they contacted to it had all elements of the count
. It seems to me that to extent I've been through it, Mr. Miller claims that he had the idea whatever in May of 2000 and he told Mr. Schwind to proceed. Mr. Schwind says that that conversation never takes place and that the purchase order demonstrates that he thought up the idea. It bottom, isn't this your classic he said she said? And if that's the case and if that's what we conclude and at the end of the day, I know there's a dispute about what the burden is, but there's no dispute that you have the burden here. So why doesn't that just resolve the problem? Because the test for conception requires the definite and permanent idea of the complete and operative invention and there are critical elements that are lacking in that showing, which is that there is the showing you're saying that the other side was required to make a showing? No, no, but it's undisputed and this is the second undisputed fact I want to get to is that Mr. Schwind was the one who suggested using the Vaintype motor, which is an aspect of the only embodiment disclosed in the patent that covers that the count corresponds to. So Mr. Schwind, this case is about that one embodiment, it's about the rotary motor. There might be one embodiment, but that's not sufficient to get them to the conception of the Cohen's enter, right? It's the only operative rotary motor that can be used. A Vaintype motor is the only one that can be used and it's undisputed that Mr
. Schwind contributed that aspect of it. In addition, he went on to design the hydraulic system shown in figure 10. It's undisputed that he designed that as well. Those are two elements of the count that we believe satisfy the contributing to the conception element that Mr. Schwind was required to prove. Without those, you don't have a complete conception. That's the problem. Well, but there's a distinction between actually contributing to the conception and being hired to implement the conception. Isn't that really all Mr. Schwind was here, hired to implement someone else's conception? We're the case that you had a complete conception beforehand. That would be the hypothetical that you gave. But the problem here is that Miller never had a complete conception
. They lacked the Vaintype motor, they've lacked the operable system or one that would operate a system for actually making a rotary motor and a reciprocal motor work and a tissue cutting device. Without that, the invention doesn't work. I'd like to also focus or turn to the fact that there are three legal errors that I like to focus on. First, in the board's decision, our main point in terms of their legal error was that they failed to apply the correct test for conception. What they did essentially was to ignore that Mr. Schwind's contributions by trying to say that Miller actually conceived the invention first. The problem is that when you apply the test for conception, which requires a definite permanent idea of the complete operative invention, as applied in practice, Miller simply didn't have it. They admitted that Mr. Schwind came up with the Vaintype motor and ultimately came up with figure 10. That's the main error that the board made. In fact, every aspect of their decision. We think that the court need not go into the, he said, she said aspect of it because you can decide this case on the fact that a conception requires a complete operative, an idea of the complete operative invention without Mr
. Schwind's contribution, nobody had it. The second error that the board made was its reliance on the labor's declaration. This confuses the test for obviousness with the test for conception. In Dawson, versus Dawson, this court articulated the fact that conception is not a question of what would have been obvious to a person's ordinary skill in the art, but what was actually in the minds of the co-inventors. Now, one thing we'd like to make clear here is that there is a distinction between the situation where a first inventive entity actually comes up with a complete conception and then a collaborator will add an alternative embodiment to that conception. That alternative embodiment is obvious than that collaborator's contribution will not be sufficient. But we have a different situation here because there never was a conception with Mr. Schwind's actual contribution. You argue that the board, that it's a legal error for the board to have even considered the fact that this was something within the canopy of ordinary skill in the art and it was something essentially off the shelf, almost literally off the shelf, off of his shelf. But isn't it really what the board said was not so much that that's the test, but that it is a factor to consider when you're determining whether or not Mr. Schwind might for his burden of proof of showing his own conception. No, it's not a factor
. It's our position that the conception test is completely distinct from the obviousness test when you're talking about the first conception, the first complete picture of the complete operative invention. So it's not a question of whether you can take apart individual contributions to that initial conception and say that certain contributions within the count are obvious. We don't think that that's the law. So can you point us to what exactly the statement and the board of opinion that you're saying establishes that they slide the wrong test? They, they see the exact quote. They're saying it's legal. They relied on the labest declaration very heavily and what the labest declaration is is to say that Mr. Schwinds, the elements he contributed, they're trying to say would have been obvious. Did Mr. Schwind have any prior experience with biopsy devices? He did not, but when they actually brought him on board to develop the first device that has a reciprocal only, they spent hours teaching him about how this worked. By the time conception occurred for the later device, he was. I also note that the record shows no evidence that Mr. Schwind had any understanding of the benefits of a rotational motion
. I don't think that's the case. Can you show me in the record where he is the one who's initiating the value of a rotational motion here? Well, that's part of this testimony and it's corroborated by the purchase order that he actually purchased that element. And he was the one who actually recognized that a vein type motor is the type that you would need to use in this now. They also had a that could be again as. Jojo Malay suggested an implementation of a conception rather than the conception itself very easily, right? No, it's actually very important to recognize motor isn't that right? If it's the Roatholdman venture under the hype, but if we hypothetically had the named inventors telling Mr. Schwind, we need you to have a reciprocal and rotating motion. Please put this into effect. Would that be the end of your case? No, because you actually need to have the knowledge of using a vein type rotor motor. You have to understand Mr. Schwind was actually well versed in the type of motors that could be used and right off the bat initially he said use the vein type motor. That's the only type that's disclosed in the patent. And there was a report commissioned by Roatholdman or others commissioned by the other party by Roatholdman ventures who looked at the type of rotary motors, rotary specific rotary motors that you could use and found that several of the rotary motors don't work and that vein type was the only one that they recommended
. This publication came out after the patent was already confirmed. Did they say that they recommended that that study say that none of no other rotary motors would work? It said that they either wouldn't be recommended or work or that further investigation was needed. By the way, this report came out after and I think late November after the application that already been filed. Judge Proce has asked you this question, but if you wouldn't mind stating again for me what would be your best evidence to cause us to reverse the fact finding done down below we're not able to contradict their facts unless you've got something really powerful. What is that? It is actually all the evidence that is of record there's the first prototype of the device which clearly shows it had only reciprocal action. All of the previous conception documents that's relied on by Miller during the deposition they admitted that it was only rotational motion. The fact is clearly established and by the way it's not a fact finding problem. It's an analysis problem. The board overlooked the evolving design of the tissue cutter. The fact that it didn't have all elements in place when Mr. Schwint was first contacted. But even at a higher level beside that point you actually need to have a complete and operative conception without Mr
. Schwint's contributions of the Bain type motor and the actual hydro system of figure 10 that didn't occur. In fact really the first complete and operative description within the corroborating document is figure 10 which shows a rotary and a reciprocal pneumatic device connected to a source of pressurized fluid just as required by the count. Without that there is no earlier conception document. And that's admitted by the other side to be Mr. Schwint's contribution. And then the last legal error that we want to point to in the board's opinion and this is all throughout the opinion is that they discounted Mr. Schwint's contribution because there are species of what's recited in the count. What I mean specifically is the count recites a hydrochroed rotary motor. Mr. Schwint came up with a Bain type motor and they falsed Mr. Schwint for not having had the Bain motor recited in the specific count. But that's just clear
. The question is this whether. Well, that's not irrelevant. The claim is broader than just the Bain motor. And the motor doesn't get too very far does it and it seems like you rest a lot of your case on his alleged invention of that aspect of the motor. It's a very typical situation that the conception the conception evidence is a species of what's recited in the count. And in as the converse is US surgical the court made absolutely clear that it's a question of whether the species or what's conceived falls within the scope of the count. And the court was very explicit in stating that and the board got that wrong. I want to save you a little. Yes. Okay. Here's all. May I please the court? My name is Lisa Perizolo and with my colleagues David Kavanaugh and Alan
. I represent the Miller party and the real party and interest. Hologic. The board's conclusion that Mr. Schwint should not be added as a co inventor to the 824 pattern is supported by substantial evidence and should be affirmed. The board properly found that Mr. Schwint failed to prove that he contributed to conception of any element of the claims tissue cutting device. Well, you heard your friend this morning as did we and he relies heavily on the vein motor which is a central part of this invention and figure 10. So what is your response to his arguments? Our response to that, Your Honor, is the vein motor is not specified in the claim the claim says rotary hydraulic motor. And the board carefully looked at the factual evidence regarding conception of the rotary hydraulic motor. But when you say carefully looked at the evidence, I mean there there really isn't anything that says that that the Mark Miller team came up with the concept of a rotary motor. Well, there is your honor. If you look at Mr. Miller's testimony, which is a 901 in the record, Mr. Miller testified that in late May 2000, he decided that the intercanula should not only move reciprocally but rotationally and that he told Mr. Schwint to implement that concept with an air motor. And that rests upon the boards finding they considered separately who came up with the idea of the use of hydraulic motor in this tissue cutting device and there was overwhelming evidence that the Miller party thought of using air motors before they even contacted Mr. Schwint. So the evidence that the board considered had the Miller party who had memos going back as early as March 1998 where they outlined the prototype for their breast system. The number one criteria was a pneumatic foot switch. Right. None of that had any reference to the rotary motor though. At that point. At that point in time, the Miller party was doing testing on breast tissue. They were the ones that had experience in developing biopsy devices and tissue more solution devices
. Miller's testimony, which is a 901 in the record, Mr. Miller testified that in late May 2000, he decided that the intercanula should not only move reciprocally but rotationally and that he told Mr. Schwint to implement that concept with an air motor. And that rests upon the boards finding they considered separately who came up with the idea of the use of hydraulic motor in this tissue cutting device and there was overwhelming evidence that the Miller party thought of using air motors before they even contacted Mr. Schwint. So the evidence that the board considered had the Miller party who had memos going back as early as March 1998 where they outlined the prototype for their breast system. The number one criteria was a pneumatic foot switch. Right. None of that had any reference to the rotary motor though. At that point. At that point in time, the Miller party was doing testing on breast tissue. They were the ones that had experience in developing biopsy devices and tissue more solution devices. They were doing testing and that's what Mr. Miller testified that they determined part of the goal here was to develop a biopsy device that would take appropriate samples for analysis. And Mr. Miller and Mr. Mark, after doing testing, determined that they should have a rotary movement to get larger tissue. January of 2000 and they hired Mr. Schwint in March. Is that correct? Is that timing? Well, but Mr. Miller's testimony on settling on the rotation was May 2000. When did they start protesting on rotation? I don't know when the time I'm not sure when the actual testing on rotation started. They were starting to take tissue samples and breast tissue. There's a memo in the record as of March 1st, 2000 where they use their device
. They were doing testing and that's what Mr. Miller testified that they determined part of the goal here was to develop a biopsy device that would take appropriate samples for analysis. And Mr. Miller and Mr. Mark, after doing testing, determined that they should have a rotary movement to get larger tissue. January of 2000 and they hired Mr. Schwint in March. Is that correct? Is that timing? Well, but Mr. Miller's testimony on settling on the rotation was May 2000. When did they start protesting on rotation? I don't know when the time I'm not sure when the actual testing on rotation started. They were starting to take tissue samples and breast tissue. There's a memo in the record as of March 1st, 2000 where they use their device. I think Dan had only had the reciprocation to take tissue samples. I mean, he was here the other day, but the time I asked about these samples, but by May, Mr. Miller testified he had determined that rotation was needed to get large enough tissue samples. Can I ask you about just the record and the appendix because I had a little trouble navigating with regard. In his declaration, he says that he wrote a status report in May of 2000, promoting a rotating skiing. And the citation is to exhibit 1025 and 1025 is listed in the table of contents, but it says it's found at 82221 and 22 and those pages don't have that on it. Do you know, have you recognized some confusion there in terms of the citation? Well, I think in an effort to not the entire record that's referred to in that index is five binders of documents and I think when the appendix was assembled only the specific record pages that were stated. But this is the critical memo that you cite repeatedly and say this is the key evidence of your, your client's conception. So why isn't it in the appendix? Well, we cited Mr Miller's declaration. I believe, but we're happy to provide the memo. But the board correctly found that there was no evidence that Mr. Schwint contributed to the conception of having a rotary motor in the device
. I think Dan had only had the reciprocation to take tissue samples. I mean, he was here the other day, but the time I asked about these samples, but by May, Mr. Miller testified he had determined that rotation was needed to get large enough tissue samples. Can I ask you about just the record and the appendix because I had a little trouble navigating with regard. In his declaration, he says that he wrote a status report in May of 2000, promoting a rotating skiing. And the citation is to exhibit 1025 and 1025 is listed in the table of contents, but it says it's found at 82221 and 22 and those pages don't have that on it. Do you know, have you recognized some confusion there in terms of the citation? Well, I think in an effort to not the entire record that's referred to in that index is five binders of documents and I think when the appendix was assembled only the specific record pages that were stated. But this is the critical memo that you cite repeatedly and say this is the key evidence of your, your client's conception. So why isn't it in the appendix? Well, we cited Mr Miller's declaration. I believe, but we're happy to provide the memo. But the board correctly found that there was no evidence that Mr. Schwint contributed to the conception of having a rotary motor in the device. And everyone conceits though that figure 10 was drawn up by Mr. Schwint, right? That's correct. And that's the only place where you see any evidence of the, of the pneumatic system and the rotary motor, right? Well, no, there was Mr. Miller's testimony that I mean, the only place in the written description or in the patent itself that you see any evidence. Well, there's reference in the patent to rotation of the device and the specification and the evidence that existed on the rotary motor was Mr. Miller's declaration. There was ample evidence that the whole idea before they even went to Mr. Schwint was to have a device that used an ear motor so it would be compatible with MRI. So the determination by the inventors based on their experience with biases was that they were adding the rotation and they were just going to Mr. Schwint to implement their idea of this device being operated by an air motor. How do you respond to the argument about the Rose Hulman report that said that really only one type would work and it's Mr. Schwint that's pointed you all to the correct type? Well, the Rose Hulman report I don't think says only one type would work and Dr
. And everyone conceits though that figure 10 was drawn up by Mr. Schwint, right? That's correct. And that's the only place where you see any evidence of the, of the pneumatic system and the rotary motor, right? Well, no, there was Mr. Miller's testimony that I mean, the only place in the written description or in the patent itself that you see any evidence. Well, there's reference in the patent to rotation of the device and the specification and the evidence that existed on the rotary motor was Mr. Miller's declaration. There was ample evidence that the whole idea before they even went to Mr. Schwint was to have a device that used an ear motor so it would be compatible with MRI. So the determination by the inventors based on their experience with biases was that they were adding the rotation and they were just going to Mr. Schwint to implement their idea of this device being operated by an air motor. How do you respond to the argument about the Rose Hulman report that said that really only one type would work and it's Mr. Schwint that's pointed you all to the correct type? Well, the Rose Hulman report I don't think says only one type would work and Dr. Labus testified and the board accepted his testimony. He was an expert in the matter that there was nothing unique about Mr. Schwint design of the device that he used off the shelf parts and it was routine and anybody of ordinary scale could have implemented a schematic or diagram of the sort that Mr. Schwint implemented. So but the problem was that your clients weren't a boardier skill in the in the art of pneumatics and rotary motors, correct? Well, I don't think the board found that. In fact, the board I actually found that Mr. Mark had worked for a pneumatic device company and had some experience with the medics. They certainly relied on Mr. Schwint to actually do the circuit design, but there was mention of the ethical in case and that case quite clearly says one of ordinary skill in the art who simply reduce the inventors idea to practice is not necessarily a joint inventor, even if the specification discloses that embodiment to satisfy the best mode of requirement. So here the evidence the board findings that Mark and Miller conceived of the idea to use hydraulics before Mr. Schwint was involved and Mr. Schwint failed to present any evidence that he conceived of the rotary motor was supported by substantial evidence
. Labus testified and the board accepted his testimony. He was an expert in the matter that there was nothing unique about Mr. Schwint design of the device that he used off the shelf parts and it was routine and anybody of ordinary scale could have implemented a schematic or diagram of the sort that Mr. Schwint implemented. So but the problem was that your clients weren't a boardier skill in the in the art of pneumatics and rotary motors, correct? Well, I don't think the board found that. In fact, the board I actually found that Mr. Mark had worked for a pneumatic device company and had some experience with the medics. They certainly relied on Mr. Schwint to actually do the circuit design, but there was mention of the ethical in case and that case quite clearly says one of ordinary skill in the art who simply reduce the inventors idea to practice is not necessarily a joint inventor, even if the specification discloses that embodiment to satisfy the best mode of requirement. So here the evidence the board findings that Mark and Miller conceived of the idea to use hydraulics before Mr. Schwint was involved and Mr. Schwint failed to present any evidence that he conceived of the rotary motor was supported by substantial evidence. And Mr. Schwint also although he argues that his work was needed to demonstrate convent conception. The board was accepted Dr. Labus is a Mr. Labus's testimony that what Mr. Schwint did was routine experimentation, ordinary nothing special was not needed for conception. So the board really considered every aspect of Mr. Schwint's arguments in terms of did he prove that he contributed to conception of these two elements of the device and they were they found he did not and they considered his other arguments that that his vein motor was necessary for conception and found there was no real evidence of the fact that he was not able to do it. So the evidence to prove that particularly in light of Dr. Labus's testimony. Mr. Hancock a pro-mex employee testifies fact finding 26 is pointed out no one at pro-mex could have created the pneumatic circuit that was shown in figures 10 and 11
. And Mr. Schwint also although he argues that his work was needed to demonstrate convent conception. The board was accepted Dr. Labus is a Mr. Labus's testimony that what Mr. Schwint did was routine experimentation, ordinary nothing special was not needed for conception. So the board really considered every aspect of Mr. Schwint's arguments in terms of did he prove that he contributed to conception of these two elements of the device and they were they found he did not and they considered his other arguments that that his vein motor was necessary for conception and found there was no real evidence of the fact that he was not able to do it. So the evidence to prove that particularly in light of Dr. Labus's testimony. Mr. Hancock a pro-mex employee testifies fact finding 26 is pointed out no one at pro-mex could have created the pneumatic circuit that was shown in figures 10 and 11. What's the response to that? I don't think that we reject Mr. Hancock's testimony. I think what Mr. Mark had experienced with pneumatics. I don't think we contend that he could have designed or tried to design the circuit. I think the point was. And then Mr. Labus's testimony went to this issue that they could have gone to any number of people other than Mr. Schwint to get a design of a pneumatic circuit and that that was routine and Dr. Labus went through and said there was nothing out of the ordinary. That circuit design is say engineering feature not an invented feature is correct. It's really just implementation of the idea that the Mark and Miller party had
. What's the response to that? I don't think that we reject Mr. Hancock's testimony. I think what Mr. Mark had experienced with pneumatics. I don't think we contend that he could have designed or tried to design the circuit. I think the point was. And then Mr. Labus's testimony went to this issue that they could have gone to any number of people other than Mr. Schwint to get a design of a pneumatic circuit and that that was routine and Dr. Labus went through and said there was nothing out of the ordinary. That circuit design is say engineering feature not an invented feature is correct. It's really just implementation of the idea that the Mark and Miller party had. Are there any other questions from the panel? Thank you. Here's all. All Fred. Okay. So the reason why the status report from May 2000 isn't in the joint appendices because our opponents haven't cited it in their appellate briefs. They don't rely on it. And that's problem with their case. They're relying on uncorroborated testimony to establish prior conception by Miller party and they don't have it. But again, you know, we'll keep harbing on this, but it's not their birth. They don't have to establish prior conception you do. That's right. But we our burden is to show that we had prior to the patent being filed that we had a contribution to the conception
. Are there any other questions from the panel? Thank you. Here's all. All Fred. Okay. So the reason why the status report from May 2000 isn't in the joint appendices because our opponents haven't cited it in their appellate briefs. They don't rely on it. And that's problem with their case. They're relying on uncorroborated testimony to establish prior conception by Miller party and they don't have it. But again, you know, we'll keep harbing on this, but it's not their birth. They don't have to establish prior conception you do. That's right. But we our burden is to show that we had prior to the patent being filed that we had a contribution to the conception. The board tried to leap around our evidence say even before that Miller party conceived the invention we think that there at least needs to be substantial evidence supporting a complete conception by the Miller party for the board to do that. And that's the problem. We don't have the burden, but there needs to be some evidence otherwise anybody can come in and say since we're the senior party while we invented it first on the Rose Home Adventures report. This is a for a seven four to four seven five says rotary vain mode rotor vain motor is recommended. And it's in do not consider diaphragm may research further oscillating recommended do not use unless post air supplies available impulse turbine do not consider because of limited torque impulse propeller do not consider because of limited torque. This is a port that came out after the patent application was file the vain type rotary motor is the only rotary motor that's disclosed in the application. It's the only one that shown to work. And then finally they've cited at the con and there's a statement and at the con about somebody just does something with ordinary skill to reduce invention to practice that's not inventive, but our point there is you need to have a conception. You have a conception by one party. And when the collaborator comes in and reduces the subtraction practice that doesn't make the collaborator inventor, but there's no complete conception. Then you don't get to that point unless there's further questions. That's all I have
. Thank you very much. Mr. Buckew