expressed d n a from a single individual cell the work that solved this problem was started at a company called quanta life it was largely completed at quanta life but it was patented shortly after a ten  does have this provision where the inventors have to disclose those three months after they leave the company disclose any ip they come up with but that that provision was not actually mitigated is not particularly relevant to the issues this question so we have an agreement that i think you characterize in your reply brief as requiring assignment of quote unquote intellectual property  why isn't the right way to look at this as follows the only there has to be intellectual property which is to say legally protected property in in i d as and  while a and eventual invention is such a thing whether conception or you know completion with with the reduction to practice work that goes into that even if a significant contributor is not itself intellectual property and since what has to is the timing rule is that the intellectual property must exist during the term of employment work that is merely a significant contributor you know way that would justify joint inventor ship  it would be problematically broad unless it were limited as at least here reprint reply brief description does too intellectual property and that limitation is more or less or maybe even  more implicit in the opening phrase of the assignment paragraph about an employee's entire right in the thing so that there has to be some legal cognize ability of a right in that particular idea and you know for which i think intellectual property is a pretty good term so on the assumption that there does have to be intellectual property how does work that merely becomes a significant contributor to a post employment piece of intellectual property qualify you know and this is where i think the principles of joint inventor ship comes significantly into play and i'd like i'd like to add to that into  correct me if my if i'm wrong and i may well be my recollection is that that was the case about a contract that mirrored a statute that said anything conceived in the scope of  project was had to be assigned to the united states and the court said yes this was conceived during the scope of the project i'm not sure that involves kind of  work that is no more than a significant contribution to a later conception let alone complete invention and i think that's the other  in this particular case there was an invention the defendant was hydra nordics in this case the invention was started at the st company and then the limitations were not completed at the nd company and under the means under the contract  the the federal circuit judge laurie ruled that the st company had an ownership interest in the contract and but i would like to get back to joint venture ship principles because i think those those and that was judge mayer's case the court said you know if you interpret the contract you can look to patent principles to guide what is being meant what is what is being understood by the contract and he has joint any individual joint venture if you have multiple inventors which is the case here each inventor does not have to conceive of the entirety of the invention and in fact inventions can happen over time and that is actually codify under the patent that so if you have an inventor that starts an invention let's say inventor a makes significant work on the invention and passes it off to inventor of b nd person even if there's no complete invention once the invention is completed there's no retroactive negation of the earl at how inventions happen if significant work is started if ideas are come up are developed even if they're not finally completed until later the later work doesn't negate the earlier contributions work that you allege and henson by himself moved over and started ten x and then vented everything that's involved in these ten x patents so all we have is inventor a bio read moving over and then inventor at ten x would you still be able to make the same joint inventor ship argument that you're making today you know what they're co inventors are involved understood yes  early a company that would be enough i believe to trigger these contracts because the contracts one tended to protect to the fullest extent intellectual property as judge tonsil pointed out but then we would be in a position where we have to say he somehow self collaborated conceived during the thing and during the term of the project and and the work done in the opinion was all about when was the invention conceived and the answer was during the term of the project but i'm a jew i'm not sure mirror significant contribution that is less than conception is coming from well the issue the issue in that case you want to put up the opinion now is that certainly limitations were not complete trying to find the actual right right that did the court the court said one thing that neither the contract the contract wouldn't allow in order to fulfill its intent because the statute also wouldn't allow is you know adding in a few minor limitations into the claims and but what one has to look at is the you know the common core invention but still that what was conceived well i was i would argue things when i'm looking at the decision and the argument was something argues that the membrane did not constitute conception of the claimed invention because just still thank you for asking that question because i want to make very clear that they penned excite i was talking about the work that was done in two thousand and eleven with absolutely no prior art at the time at the time it was confidential i didn't i didn't i didn't make my question clear i don't know to argument for under a nd a want to believe it was one or two a argument although like i said we lost ok so that so that was then public prior art before finally date but at the time the work was done at the time our joint venture ship principles applied it was not prior art and it was not public domain it was published later and the and then the patents i also want to make clear final point the patents certainly an invalid of the argument in which you relied on the over fifty nine patent as prior art against these three patents is that right correct ok that's all i need to know honor i'm ready to proceed if i may please do thank you and may it please the court i'd like to just jump right into the ownership issue since that's really the sole issue on appeal that's going to rad we would agree that for the purposes of this appeal there's no substantive difference between those employment agreements they both included assignment clauses and in those assignment clauses henson in fact not were obligated to assign their rights in pat and that makes the question it seems to me you you asserted a conclusion to the question that is i think actually at issue why doesn't it include significant contributions to the later ago the issue here is that what connects what by red is claiming is ownership interest in the complete invention and the ten x patent that's what it needs here to find relief from the violation of section three thirty seven is ownership of the patent not ownership of discrete individualized so right while it is absolutely true the plain language of the contract says they are broad enough to cover idea even on possible ideas which i suppose could be a trade secret or something like that the fact that they're broad enough to cover that is immaterial to the ownership rights i read as actually seeking here it's seeking ownership rights in complete question she credited henson's timeline of when conception happens which leads to conception in the january to february of two thousand and thirteen time period which is eight months after and has been noted it was with the help of additional non bio rad inventors notably and i think i heard it again this morning by rad has never actually disputed that conception of the complete invention rewrite these assignment obligations so that they cover quote all possible intellectual property that may arise from incidents that's not work at quite a life or by a rat that is a very different obligation from what's actually written in has never explained what rights are attached unpatentable ideas and of course ownership of an unpalatable idea is not the same thing as ownership of an exam and patented invention which is what we're talking about in this case three found conception of the invention that wasn't the case where there was this idea of partial conception it sounds complete conception what happened in film tech is that this desalination membrane was discovered entirely at one employer but then when it was actually patented in the court's own verbiage some narrow performance limitation essentially how effective the membrane would be desalinating seawater was added and the court position of those narrow performance limitations wasn't sufficient to take it outside of the scope of the assigned cause factually that's not where we're asked year there's been no search and that what was added after the fact was what i'm trying to figure out about film tech if it wouldn't be factually accurate would it to say that the entire claimed invention in that case was in fact conceived of by the inventors when they were at the st company because if in fact the claims didn't fact include those certain performance elements or whatever they were that nesses that were unquestionably not thought of back at the st company is that correct so it means i mean it felt like the opinion seemed to be doing more of well what is the true heart of the invention type of an inquiry in the in the in examining the claim you know doing more of a central claiming analysis rather than a peripheral claiming analysis to try to imagine what what the heart of the invention is and so that's how we'll judge  art right was that was the structure well it did that's certainly true your honor it did look to the point of novelty is one way of sort of focusing on what was important for conception the part i wanted to make a distinction about is i'm not actually sure the film tech opinion ever comes to a conclusion of saying those performance limitations were thought of as a prior company i think the issue is that there was no evidence one way or the other you know if you've got the claims that show these performance limitations and you have i think what it was was evidence showing the structure of the membrane from the prior employee but before you go in for purposes of the opinion that was written by the score it was entirely beside the point where the performance elements were invented slash discovered whether it was that company a or company b is that a fair way to read an opinion i think that's true you why rat does not have an interest in the patents based on an interest in what i read contends are a constituent elements of some of the some of the limitations of the claims that are quote ideas close quote could concede quite a life and i think the answer to that begins with the point the judge drawn to made earlier which is there is no right to something until it exists pressing about how film tech seems to rely on something the last ten conception of claims as written certainly your honor so film text is clear in the sense that it was relying eight is i think quite clear it's a paragraph that starts hydroponics argues that the district court heard as a matter of law by resulting the issue of title to the thirty four or patent according to the patent claims rather than according to the terms of the contract we agree agreement the court's holding is quite clear that the parties by the way physician have no rights to claims two and three as claims two and three because it was conceived after the term of the interpreted to be limited as to assignment or as ownership to what was in fact conceived during the term of the project even therefore to exclude  post project conceptions that were essentially follow on work to what was done during the project but and and i take it your point is the contract language here  is we have to pay attention to the particular contract language here and it's exactly similar similar or similar enough and different enough from the film tack language position had no rights as to those claims and the only reason there was a pro rata interest in the patent was because the planes were all included in the same path but they had no rights to those claims and so that if claims two and three had been in a separate pat by saying let's assume that we think that there's a possibility that a contract here would reach something that would qualify as a significant contribution for join reasonably found that none of these ideas which seem like fairly significant contributions to the health and the combinations in these three patents none of those really were significant contributions because they were all public hypothetical is a perfect hypothetical but nd even if you got past that there was no collaboration between the earlier versions of dr such an often hides and then the later version because this is simply using what's in the prior art in the five mind and then building on it under their theory every prior artist who contributes something would then become a joint venture a matter of another invention made later using gather all of the products are covered by the st two but there is at least one product that's just not covered by the five  moot the issue about the five hundred and thirty or which i may be has it i don't know even whether it has a different expiration date that's i guess the question i don't let me look to see the expiration date one million nucleotides bar code so that you can pack all these different d n a fragments just that piece which is a big piece but nevertheless it's just that piece and the answer i think is still no because because film tech is being governed by a different agreement with which the court relied upon as tracking as you're on a no to a statute different purposes and the holding there was it was entirely conceived during the term of the agreement and therefore governed by  claim in really quite a bit of detail it's not just a hope to do next generation sequencing to isolate single cells it's an actual step by step process to do so and that is the significance of the information set for them three thousand four  droplets single cells bar codes and then ultimately amplifying the material in order to sequence the d n a and counsel for the i t c said that there's nothing a sequence as a barcode for use in the system to isolate a single cell and tracks through the sequence for the express d n a from that single cell so i think the questions retroactively negate the prior work that was done on the contract and i think if if if you know companies that invest in research and have these contracts i think they're entitled to a broad board in force and broad scope of that contract as an employee cannot just leave complete something that was started and then retroactively get out of the contract that they were in before and it is like film tech and it's a little bit like the staff to be rushed case where one inventor out of three worked at roche came up with you know whatever he came up with in our decision a few months ago in the whitewater case that stanford actually is ultimately not a case about employment because khaled ne was essentially part of a contractual relationship between apply but here here they they do and it seems not not to say anymore somewhat worrisome about using language no more precise than the language in this contract to reach inventions conceived after employment worrisome for let's just call them sixty thousand six hundred and whitewater reasons well your hon scientist who temporarily went to see this to do some work for about six months at cedars and learned about p c r see this which was you know cutting edge and new at the time the issue there was a lot of his contribution to the patents was based completed i e reduced to practice until after but that conception was in fact complete i think that's kind of the st half of the sentence the nd half of which you know that the district court on a made two been stayed while the i t c proceeding is underway is that right i believe that's correct and because of the absence of issue preclusion in that case would you still be free to make an argument based on the what is it the april th two thousand and eleven e mail that referred in which sex and says you know ben says let's use beads or something like that and you know way that that you were barred from doing counsel and say the case is submitted and that concludes our session for this morning