applications that was a proceeding to determine patentability of dr fish's patent that much word from his provisional application that proceeding he couldn't have made any any claim for co inventor ship in a reexamination  inventor shipwrights he was just it's like taking a prior art reference and saying it's the smith reference just yes or no i want to understand the extent to which your argument relies on depends on actually some degree of collaboration between the parties to a joint invention so suppose that the facts were identical to the facts of this case except there was never a dinner meeting i'll tell you why the eli lilly case that we cited in our brief which cites the care kimberly clark case that case indicates that joint behavior and collaboration can occur where one co inventor builds upon collaboration simply require they know that they're working together i don't think they i don't think they have to know that they're working together they can be in two different facilities in the same company or different companies i don't think collaboration has been construed by this court as actually working together in the context that you wrote that you just described but in this case we do have what is the nature of mr fish's invention because i understand that both his co inventors status what is it that you believe is mr fish's invention as disclosed in that provisional application it's a method of treating symptoms relating to testosterone deficiency in men with a pharmaceutically effective dosage of c so these are not overlapping percentages so why is it represent a lot of gotten the idea from him to take a look at my i'm probably saying all these words wrong but in take a look at clementine it's you know that i know the literature may suggest there are problems with side effects in using it to treat low testosterone problems in men however you know i've had some success in the in his intention in the fifty fifty one to seventy percent range that we use that are at fifty to seventy percent i don't remember the fift seventy percent to seventy percent but then repost came along and after some of their own never realized that there was an invention to be had in the seventy one to one hundred percent range well that is outside of the way you just characterize mr fish's invention so why is he co inventor when they're crap because i think what you're saying your honor goes to the issue of whether mr fish fish would be sold an investor and he's not i think you have to look at the inventive process as a  you have to look at how they got there and how they got there was they filed a provisional application that incorporated dr fish's invention and they said our preferred environment is about fifty percent and then you get your disclosure perhaps incorporated dr fish's invention but not their claims and why isn't this completely identical to every improvement patent that exists i and a bicycle which includes a chain i have a patent on a bicycle you then invent a better chain to be used on bicycles you claim a bicycle with the better chain you're still going to be infringing my basic bicycle patent but yours is an improvement just because i  n here we have a confidential application that was given to reproach before they had any experience in this field at all and it disclosed a concrete solution to a concrete problem treating symptoms relating to testosterone efficiency with but that's already that's already in the prior art and that's exactly why the examiner rejected the original claims of dr fish there's no doubt based on this record that what's already in the prior art is treating low testosterone using clementine now symptoms relating to low those claims and i have to be honest with you i'm glad i don't have to try to figure out the validity of those claims because it's very hard for me to understand i'm not a scientist and we don't have a full record but what the examiner may have been thinking when he disallowed the claim he sought that that allowed the claim by adding the words to treat disorders related to and didn't really substantially narrow the claim a lot it was a very strange addition but that's not the case in front of me so he did get that claim but he didn't get a claim to seventy one to one hundred percent so i guess i don't understand you could go after them for some sort of trade secret misappropriation if they breached a confidentiality agreement maybe a breach of contract action but i don't understand why he gets to be co inventor on what is of actively at best for your client an improvement patent because they use dr fishers provisional as the foundation for their work but that's what all improvement patents but what but they didn't use a public improvement patent to do it they used a confidential provisional but he then got claims on it that's right he got he got claims on it but when you look at it reprocess r and d efforts you can't just take a snapshot in time to when they a claims to to add the words consisting essentially of you have to look at the event or process from the beginning until the end they had no experience no use whatsoever it is your position that the fact that the source of the that the inventor of the predecessor prior non prior art would be a joint invention now that i hope i'm going to actually think when you're drawing in other words i'm trying to see if to go back to my provisional two repros was no different than dr fisher sitting in a room with them for days on end explaining everything that was in the provisional he was at the forefront of the inventive process he was the foundation for them to even them or the article was not published that the distinction or asking us to grow i think the distinction is that this was something confidential that was not in the prior art it was not some patent that they did a patent search on and got and then they tr was already in the prior are right but we're not talking about treating low just offering that's claim one of three sixty this is treating symptoms relating to low testosterone or entered into fishing one of the two patterns that's not the case one of the  about all of testosterone overall no it's not your honor it's about symptoms because you have to look at the agreed upon claim construction of the term treating secondary hypo going to go now those who are in a human male which is and i'll quote it so i don't get it wrong therapeutic or prophylactic management of the human male with low testosterone levels of the human male being with or without at least one related symptom and that last part is with or without right but very but your honor that last part is important because invention is directed to and one of the things it's directed to is ameliorating or preventing the symptoms of low testosterone that's one of the invent the vast parts of it and that's right within that claim construction therapeutic which is part of the construction is ameliorating prophylactic which is part of the construction is preventing and that has to do with symptoms and that's why the end of the construction which says with or without the in this case is far weaker than evidence deemed insufficient by this court in previous cases such as il iley hass and burroughs welcome a ruling and dr officious favor in this case would effectively overrule those cases lower the higher bar this court has overcoming the presumption that the named inventors are the name inventors by clear and convincing evidence and inventors to wait in the weeds while others take risks and make investments only to surface later when the patents appear to be lucrative the judgment should therefore be affirmed for three primary reasons first as judge moore's questioning i think got at phish contributed at most what was already well known in the prior art the description commercially available product clomid copied and pasted in the provisional from its f d a approved label but this court has repeatedly held that contributing what is already known is not a contribution to conception as a matter of law second the contribution falls well short of this court's demanding legal standard for a contribution to conception because nothing in the fish provisional which my friend just clarified is the only alleged contribution at issue here nothing in it suggest the invention of repros which is using the isolated murder would be substance that would be consist of sensually of translation i think the phrase consisting essential means it cannot contain any significant i guess i'm asking the question do you think candidate i respectfully disagree with my friend because i think this court does require collaboration this court has said you don't have to be physically in the same place and you certainly don't have to contribute to  and conception of the entire image and that is all of the claims but there certainly has to be collaboration and there certainly has to be a contribution to the conception of of the invention well supposed and i know that this is had conveyed his provisional application and presumably discussion suppose he had said you know what's interesting about this comet is that that has this unusual disparity between the two enough to trigger joy in mentorship it's basically put them on the trail of something which ended up with a sensually consisting essentially of transfers well that's certainly a closer case than ours but i go back to private they went back they did it this court held that wasn't sufficient as a matter of law because it looked very closely and carefully at the claim and what the claim said was that the aerosolize ing the lispro increase the bioavailability of human human insulin by by twice as much and this court said no it's not enough it's not enough just to make a suggestion or collaboration and so of course i think your case is closer i think under this court's cases i think it's arguable that even in that even under those facts you would not have co inventor ship you might have a better case on collaboration eight here a specific set of the a particular solution to the problem at hand so i think when you look at it from that framework in terms of the conception is there is the river there the the quantum that this court has required in terms of looking at the claims to the extent that i think what your honor may also be getting at is the claim that we've heard my friend has invoked a lot today about a foundation or inspiration i think those things are simply not not enough  any stretch under this court cases to amount to the required content quantum of conception contribution or collaboration i think at most dr fish's provisional inspired mr to to pursue an oral testosterone therapy but not by any stretch do you get to the use of the isolated trans trans isomer to address both the symptoms well i think i think might my point there is that it shows that there were any number of ways from along along the trajectory in the past year that he could in other words there were there were alternatives he could have made think he's correct that when he did he never threatened to sue but it but in my view mind what he did do was even more effective in walling red cross in that he actively encouraged in an e mail he sent he referred to t was an effective encouragement of repressed going forward make is besmirching someone to further build your research you into believing he is therefore not going to pursue any claim against you doesn't at the end of the day so why why in light of all of that does that make his wee anyone who thinks they came up with a solution to a medical issue want to encourage others to attempt to commercialize it and build upon it he's not commercializing it himself so why wouldn't he want to encourage someone else to commercialize it and how in the world does that translate into a will never suit you but certainly and i think on the on the alternative a stoppel holder i would return to judge your honour's questions initially about naming so it's not just the encouragement here there is the span of time which as a just record how does not we're not talk about law just but that is an indicator that can be considered under the then why does encouraging someone to commercialize you were invention because you'd like to see it commercialised especially more in the medical field where it's going to help people how does that translate into and therefore i will sue you because that alternative holding on a stop all of which would only apply to the three sixty padna can resolve this case on both paths that at issue the three sixty and the one eighty five on the inventor ship issue and need not reach a stop at all what is the prejudice given that everyone agrees that the only thing he communicated was what's contained within his provisional application which is a documented writing that is not changing what with the prejudice that your client suffered dr fisher is fading memory but also in the fact that and it's in the record that we use his feeding memory relevant well because it is that the main issue is what was communicated and his documents yes i think that does go to the documents but there is another aspect which is our own fading memory that repros in documents that we could have produced to further confirm in addition to the temper ennius memo talking about the isolation the inventor had no experience and angioplasty and all he did was give the name inventor some general ideas and advice here the situation is reversed repros had no experience in treating symptoms related to testosterone efficiency and dr fisher gave them not just general ideas and advice but a concrete solution to a concrete problem in the provisional now when i first got a chance to speak with your honor's there was some discussion about symptoms versus raising chrystopher own and the repros three sixty and there is agreed upon claim construction include symptoms otherwise that was one of reproaches arguments that well claim want to claim seven are really just same but how could they be the same they'd be redundant claim one says racing levels of low testosterone which were not claiming co inventor ship to which we believe that's in the prior art claimed seven is treating secondary hypogonadism in a human manner and when you look at the difference in claim lyme otherwise the claims are identical and when you look at the difference you claim language and apply the clip claim construction claim seven doesn't cooperate symptoms and clearly claim one of the one of the five and does because it goes to the symptom of wasting and on no council said something about  what constitutes essential it consisting of in terms of the amount of society some or the specification the one eighty five patent in all of the embodiments is very clear the range is seventy one to one hundred trans that's one tick where would you say is the best reference ok this is a fifteen fifty six it's a summary of the invention of the one eighty two and if you can read all of column four and you can read all of column five up until the brief description of the drawings every reference is to