[00:00:04] Speaker 02:
The next case for argument is 191045, ANSA technology versus motion.

[00:00:56] Speaker 02:
I think we're ready to go.

[00:01:00] Speaker 01:
Mr. Springer, good morning.

[00:01:01] Speaker 01:
Good morning, Your Honors, and may it please the court, Colby Springer, for the appellant, Anza Technology.

[00:01:07] Speaker 01:
The United States District Court for the District of Colorado erred in dismissing Anza Technology's Second Amendment Complaint under Federal Rule 12b6.

[00:01:16] Speaker 02:
Mr. Springer, before you get into the merits of your argument, I'd like to have your views as to what the standard of review is.

[00:01:24] Speaker 02:
Now, in your brief,

[00:01:25] Speaker 02:
You talked about the standard of review as being de novo because this is a 12b6 dismissal.

[00:01:30] Speaker 02:
Correct, Your Honor.

[00:01:31] Speaker 02:
But the way other courts have looked at this, and I think probably the correct way to look at it is not to say that, well, it's a 12b6 dismissal, and therefore that's the end of the matter, but rather to say what we're talking about is a question of whether relation back under Rule 15C is permitted or not.

[00:01:49] Speaker 02:
And that is, it seems to me, not the same question as to whether

[00:01:54] Speaker 02:
dismissal under 12b6 is appropriate.

[00:01:57] Speaker 02:
So looking specifically at the relation back issue, what do you think is the right way for us to look at this, de novo or to give some degree of discretion to the district court?

[00:02:09] Speaker 01:
So as we said in our brief, this is a 12b6 motion.

[00:02:13] Speaker 02:
I understand that.

[00:02:14] Speaker 02:
I really think that that argument misses the point, the point being that

[00:02:20] Speaker 02:
This is a relation back issue that we have to focus on.

[00:02:23] Speaker 02:
And it's the relation back component of the dismissal that matters.

[00:02:28] Speaker 02:
Even if there had been no dismissal, the dismissal only occurred because of the statute of limitations problem.

[00:02:33] Speaker 02:
If there had been no statute of limitations problem and it had just been restricting your proof to less than you would like, then we would be focusing entirely on the relation back issue.

[00:02:45] Speaker 02:
So I think the 12b6 standard review is a red herring.

[00:02:48] Speaker 02:
So what do you think about the right way to look at a 15c relation back issue?

[00:02:56] Speaker 01:
So I respectfully disagree that it's a red herring.

[00:02:58] Speaker 01:
I understand you do.

[00:02:59] Speaker 01:
So let's move on.

[00:03:00] Speaker 01:
With respect to the 15c issue, I think you can still incorporate that issue and that consideration into the context of the motion to dismiss as a whole.

[00:03:08] Speaker 01:
But let's say, for the sake of argument, that we do apply a Rule 15 standard of abuse and discretion.

[00:03:14] Speaker 01:
And again, as was identified in the appellee's brief, I believe that's the incorrect standard with respect to the appellee's brief.

[00:03:19] Speaker 02:
OK, why is it incorrect?

[00:03:21] Speaker 01:
Because we're not looking at whether the case law cited and relied upon by the appellee with respect to the application of Rule 15C, none of those concern a motion to dismiss for starters.

[00:03:32] Speaker 01:
And for second,

[00:03:33] Speaker 01:
They all concerned whether it was proper to deny, the cases relied upon, relied upon whether it was proper to deny leave for motion to amend.

[00:03:41] Speaker 01:
Leave to amend was expressly granted by the District Court of Colorado.

[00:03:45] Speaker 01:
So in that sense, I don't believe the abusive discretion standard is appropriate.

[00:03:49] Speaker 01:
Notwithstanding that, let's say the court here says today, you say Judge Bryson here today, we're adopting an abusive discretion standard.

[00:03:56] Speaker 01:
We still believe, ANSA still believes that the record is very clear

[00:03:59] Speaker 01:
that an abuse of discretion and clear error did occur.

[00:04:03] Speaker 01:
So regardless of which standards you apply, and again we obviously believe it's the de novo review standard, but even if you were to apply the more stringent abuse of discretion, we believe that the factual record indicates clear error by the district court below.

[00:04:17] Speaker 02:
In that context, could I ask one other preliminary question?

[00:04:21] Speaker 02:
I think this really goes to the merits, and that is

[00:04:24] Speaker 02:
In the initial complaint where you raised the 927, I guess, you concluded and told the district court that that claim was non-liable.

[00:04:40] Speaker 02:
What was the reason that your claims under the 927, in your view, failed?

[00:04:47] Speaker 01:
It wasn't so much an issue that the claim failed.

[00:04:50] Speaker 01:
It was during the course of a mediation.

[00:04:52] Speaker 01:
So the case was filed in the Easter District of California.

[00:04:56] Speaker 01:
An original motion to dismiss was filed and transferred to Colorado.

[00:04:59] Speaker 01:
And prior to the District Court in Colorado considering the motion to dismiss that came over with it from California, parties went to mediation.

[00:05:07] Speaker 01:
During the course of mediation, a declaration was provided.

[00:05:10] Speaker 02:
We're familiar with all that.

[00:05:12] Speaker 02:
And so in that context, that declaration... What was it about the declaration or any other circumstances that led you to believe that you could not prove

[00:05:19] Speaker 01:
infringement under the 927 it was less an issue of we could not prove infringement of the 927 it was the Evidence or the the admissions made in the course of that declaration?

[00:05:30] Speaker 01:
Opened up the case wide open for these other two patents and made it a clear-cut case that we fought Quite frankly the part hands of thought the case could proceed immediately to summary judgment based on largely those admissions alone those admissions were so stark that

[00:05:43] Speaker 01:
and so black and white that, quite frankly, the contention was that Mushkin had provided answer with a better case than existed under the context of the 927.

[00:05:52] Speaker 02:
But presumably you could have left the 927 in the case and just added the others, but you chose not to do that.

[00:05:57] Speaker 01:
We chose not to do that.

[00:05:58] Speaker 02:
And my question is why?

[00:05:58] Speaker 01:
Because the case made it much easier with the 864 and the 479.

[00:06:02] Speaker 02:
Did the fact that the 927

[00:06:09] Speaker 02:
refers to a chip flip chip bonding tool in the claim.

[00:06:14] Speaker 02:
Did that influence your decision not to pursue the 927?

[00:06:19] Speaker 01:
It made it easier.

[00:06:19] Speaker 01:
This goes back to, again, the declaration and the statements in the declaration.

[00:06:23] Speaker 01:
Again, and keep in mind, this declaration was provided in the context of mediation.

[00:06:26] Speaker 01:
And then again, after the facts, what felt outside the scope of any 408 discussion.

[00:06:31] Speaker 01:
This declaration was, quite frankly, the only evidence of record.

[00:06:34] Speaker 01:
Keep in mind there was no discovery of any sort conducted in the district court proceeding, nor is there any opportunity to cross-examine the declarant of that declaration.

[00:06:43] Speaker 01:
So taking that declaration at its word

[00:06:46] Speaker 01:
That declaration unequivocally stated and again taking it at work with no cross-examination It said we don't do any sort of flip-chip bonding or utilize any flip-chip bonding techniques Here's what we do do and based on what they said.

[00:06:58] Speaker 01:
Here's what we do do.

[00:06:59] Speaker 01:
That's why we said, okay Okay, let's go.

[00:07:01] Speaker 01:
Let's go to the eight six four and the four seven.

[00:07:03] Speaker 02:
Okay.

[00:07:03] Speaker 01:
Thank you so with that in mind

[00:07:08] Speaker 01:
And I think that you raised an interesting point, Your Honor.

[00:07:10] Speaker 01:
The issue here is the patents and what they cover, because this goes to part and parcel in the whole issue of relation back.

[00:07:17] Speaker 01:
These are not flip chip versus wire bonding patents.

[00:07:21] Speaker 01:
These are dissipative tool patents.

[00:07:24] Speaker 01:
ANSA did not invent flip chip bonders.

[00:07:26] Speaker 01:
ANSA did not invent wire bonders.

[00:07:29] Speaker 01:
ANSA invented

[00:07:31] Speaker 01:
dissipative tooltips that could be used in various form factors.

[00:07:34] Speaker 01:
They invented dissipative tooltips that could be used in a flip chip bonder or could be used in a wire bonder.

[00:07:40] Speaker 02:
Yes, but here's where I have a problem with the relation back theory.

[00:07:48] Speaker 02:
And it relates to the flip chip.

[00:07:49] Speaker 02:
If it's true that we look to the nature of the conduct, occurrences, and transactions as the rule requires,

[00:07:58] Speaker 02:
Isn't it important that the initial patent claim that you relied on in your original complaint was directed to a flip-chip bonding tool, i.e.

[00:08:13] Speaker 02:
the use of this particular tip in a flip-chip bonding tool?

[00:08:18] Speaker 01:
I think when you look at the transaction in occurrence, you look at the product that was accused of infringement.

[00:08:23] Speaker 01:
And keep in mind that the allegation of infringement in the original complaint, as well as in the later second amendment complaint, was under the context of 271G, which concerns a product made by a method.

[00:08:34] Speaker 01:
And in that context, the product that was accused in the original complaint, as well as in the later complaint, concerned packaged ICs and PCBs, integrated circuits.

[00:08:44] Speaker 02:
But if it's true, if it's true that the company wasn't bringing in anything that was used in flip chip bonding,

[00:08:53] Speaker 02:
then presumably there would be no such products.

[00:08:56] Speaker 01:
Presumably, but you're also making a presumption on the basis of a factual record that does not exist.

[00:09:01] Speaker 01:
There was no discovery.

[00:09:02] Speaker 01:
And I think this goes back, Judge Bryson, to your original question of what standard do we use?

[00:09:07] Speaker 01:
And that's why we believe the NOVO is appropriate here, because keep in mind, we're dealing with the dismissal of a complaint at the pleading stage.

[00:09:14] Speaker 01:
And when you look at a motion under 12b6, you're required to look at the four corners of the complaint.

[00:09:20] Speaker 01:
You cannot look beyond the four corners of the complaint, but for changing that complaint into a motion for summary judgment.

[00:09:26] Speaker 01:
And while Mushkin's motion sought to do that, the court declined to do so and address the case specifically on the issue of 12b6.

[00:09:35] Speaker 01:
So if you look at the context of the complaint itself and nothing but the complaint, we contend that part and parcel under the District Court of Minnesota's 2001 man decision was clearly met.

[00:09:46] Speaker 01:
So consider this.

[00:09:48] Speaker 01:
The invention, again, is dissipative bonding tooltips with certain dissipative qualities.

[00:09:52] Speaker 01:
Again, not bonders.

[00:09:54] Speaker 01:
This was evident not only in the claim language,

[00:09:56] Speaker 01:
the claims that were asserted in the original complaint as well as the amended complaint all of those being method claims or at least including method claims and those were identified at the outset but the specification to discusses the invention of being dissipated bonding tooltips for example if you look in the 927 at column 3 line 54 column 1 line 10 and 65 of the 479 in column 2 line 8

[00:10:21] Speaker 01:
The 864 those all refer to the invention as these dissipated bonding tooltips to be clear the 927 involves a use case of a flip chip bonding tooltip in the context of flip chip bonding But it is the invention remains the flip chip bonding tooltip also consider the fact that each of those patents that are asserted that 927 the 479 the 864

[00:10:45] Speaker 01:
all sought to overcome the issue of electrostatic discharge.

[00:10:48] Speaker 02:
You said the invention remains a flip-chip bonding tool tip?

[00:10:52] Speaker 01:
No, the invention remains... That's what you said, I believe.

[00:10:54] Speaker 01:
I'm sorry, if I said that, I misspoke.

[00:10:55] Speaker 01:
The invention remains a dissipative bonding tool tip.

[00:10:59] Speaker 02:
Right, but the invention that's described, or claimed, in the 927 is a flip-chip bonding tool with such a tip.

[00:11:06] Speaker 02:
You're looking, again, you're looking... I'm looking at the claim you asserted.

[00:11:10] Speaker 01:
Correct, claim 16.

[00:11:11] Speaker 01:
And if you're looking at the preamble, it does involve... 14.

[00:11:14] Speaker 02:
14 is what I'm looking at.

[00:11:15] Speaker 02:
14 is the one you asserted, right?

[00:11:18] Speaker 02:
I'm sorry.

[00:11:19] Speaker 02:
You gave up on 16.

[00:11:20] Speaker 01:
No, that's not correct.

[00:11:22] Speaker 01:
So if you look at the original complaint, claim 16 was asserted.

[00:11:25] Speaker 02:
Right, but in the infringement contentions, my recollection is that you gave up on 16.

[00:11:30] Speaker 02:
assert 16 in the infringement contentions.

[00:11:33] Speaker 01:
Isn't that correct?

[00:11:33] Speaker 01:
Two issues here, Your Honor.

[00:11:34] Speaker 02:
Well, but let's make sure that's correct or not.

[00:11:36] Speaker 01:
So to answer your question directly, the infringement contentions at issue did not address claim 16.

[00:11:41] Speaker 01:
OK.

[00:11:41] Speaker 01:
So yes.

[00:11:42] Speaker 01:
But those claim infringement contentions by the court's own characterization were informal.

[00:11:48] Speaker 01:
And the court says that on page... I'm sorry?

[00:11:50] Speaker 01:
Informal.

[00:11:51] Speaker 01:
And the court characterizes in that on page 12 of its own order.

[00:11:55] Speaker 01:
Informal infringement contentions.

[00:11:57] Speaker 01:
Those informal infringement contentions were produced

[00:11:59] Speaker 01:
in advance of a court-ordered settlement conference.

[00:12:02] Speaker 01:
In addition to that, again, this is a motion under 12b6.

[00:12:07] Speaker 01:
So regardless of whether the infringement contentions were formal or informal, whatever the court may have meant by that, the fact of the matter is a Rule 12 motion only allows you to consider what is in the complaint or the document specifically integrated thereto.

[00:12:20] Speaker 01:
For example, the patents.

[00:12:21] Speaker 01:
And those infringement contentions were not a part of the complaint.

[00:12:24] Speaker 01:
not referenced by the complaint, not referenced or incorporated by the patents.

[00:12:30] Speaker 01:
But the complaint itself specifically recited claim 16.

[00:12:34] Speaker 02:
All right.

[00:12:36] Speaker 01:
Go ahead.

[00:12:36] Speaker 01:
So if you take that in mind, each of those patents also seek to overcome the issue of electrostatic discharge.

[00:12:41] Speaker 01:
There's also the issue of overlapping inventors, common prior art that can readily be seen on the face of the patents, common examiners, a common family tree with a common base provisional even.

[00:12:52] Speaker 01:
And the 927 patent itself is subject to a terminal disclaimer with respect to the 864 and the 479 patents.

[00:12:59] Speaker 01:
So it's hard to believe that these patents that are bonded together, for lack of a better term, in perpetuity, by way of a terminal disclaimer, cannot be considered, quote unquote, part and parcel of one another.

[00:13:10] Speaker 01:
And in that sense, what does part and parcel even mean?

[00:13:13] Speaker 01:
And the court, we believe, looking at the Mann decision, and again, there's no real directive from the federal circuit on this,

[00:13:18] Speaker 01:
But if you look specifically at the man decision, part and parcel, part by its own definition means a piece of.

[00:13:25] Speaker 01:
It's not entirety and parcel, it's part.

[00:13:27] Speaker 01:
So less than a whole.

[00:13:29] Speaker 01:
Parcel means an integrated component.

[00:13:31] Speaker 01:
So there's no requirement of identicality or 100% overlap.

[00:13:36] Speaker 01:
It's a very subjective standard at the very least.

[00:13:40] Speaker 02:
I think I know your answer to this, but in your, again, the infringement contentions, you

[00:13:48] Speaker 02:
It appears do not assert 271G, but assert 271A, at least reading the language about manufacturers and so forth in the infringement contingent.

[00:14:01] Speaker 02:
But you again would say, I take it, that those were informal infringement contingents.

[00:14:05] Speaker 02:
You have to look back to the complaint, which does assert 271A and 271G.

[00:14:10] Speaker 01:
That is correct.

[00:14:11] Speaker 02:
And therefore, the fact that the second amended complaint relies entirely on 271G is not a departure from

[00:14:18] Speaker 02:
The original complaint?

[00:14:19] Speaker 01:
That is correct.

[00:14:20] Speaker 01:
The original complaint as well as the second amended complaint both made an infringement accusation under 271G.

[00:14:26] Speaker 01:
The original and the amended complaint with respect to each of the three patents, all asserted method claims, all under the context of 271G.

[00:14:33] Speaker 01:
The original and the amended complaint all asserted infringement of products sold by Mushkin under the context is 271G, those products again being encapsulated ICs and PCBs.

[00:14:47] Speaker 01:
The district court as well made an incorrect conclusion in its application of part and parcel.

[00:14:51] Speaker 01:
And this goes back to the reference I made to Identicality saying, well, there's a slight variation between the original complaint, the products accused, and the second amended complaint.

[00:14:59] Speaker 01:
That's not true.

[00:15:00] Speaker 01:
The accused product is, was, and remains those ICs and PCBs.

[00:15:06] Speaker 01:
Now, while specific brand names were identified, keep in mind, brand names don't infringe a patent.

[00:15:11] Speaker 01:
It's the product underlying it.

[00:15:13] Speaker 01:
And the product underlying it are those, again, ICs and PCBs.

[00:15:17] Speaker 01:
And if you look at the language of the complaint as well, as well as the second amendment complaint, those brand names were not identified exclusively.

[00:15:23] Speaker 01:
They were inclusive at the very least.

[00:15:27] Speaker 02:
The 2 products that are brand names that you added in the 2nd, amended complaint.

[00:15:33] Speaker 02:
Do those represent different products or are they simply different names for the same product?

[00:15:38] Speaker 01:
It's unresolved to some degree in the sense that there was, again, no discovery.

[00:15:46] Speaker 01:
So the assertions and, again, the informal infringement contention were based on a public record that was sketchy at best and involved, quite frankly, a lot of use of the way back machine.

[00:15:56] Speaker 01:
So the information available because these product sales did end in April 2012 was limited.

[00:16:01] Speaker 01:
And I see I've run out of time, but if I may finish the answer to your question.

[00:16:05] Speaker 01:
The issue does remain that the accused product remained the same.

[00:16:08] Speaker 01:
There was overlap of the brands.

[00:16:10] Speaker 01:
Certain brands were dropped between the original complaint and the Second Amendment complaint.

[00:16:14] Speaker 01:
But again, it was specifically identified with respect to those accusations being inclusive, not inclusive.

[00:16:21] Speaker 01:
So for the court to impose this identicality requirement, I think, is an overly stringent application of part and parcel, whatever that may ultimately mean, but also in the context of Rule 15C.

[00:16:40] Speaker 00:
May it please the court.

[00:16:41] Speaker 00:
Scott Hemingway for Appellee, Mushkin, Judge Bryson.

[00:16:46] Speaker 00:
I think you asked a lot of the same questions I was going to cover.

[00:16:51] Speaker 00:
You have a lot of the same grounds that I was going to cover.

[00:16:54] Speaker 02:
Can you start by telling us what the right standard of review is?

[00:16:57] Speaker 02:
And I have to say that while I was critical of your opposing counsel for relying on 12b6,

[00:17:03] Speaker 02:
I thought that your references to the Datascope and Fromson cases where it was not helpful because it didn't really grapple with the relation back standard of review, which a number of courts have talked about, but nobody cited any of those decisions, or at least one didn't cite many of them.

[00:17:20] Speaker 00:
So with respect to, I believe it is the abuse or discretion standard, Your Honor.

[00:17:26] Speaker 02:
This is a- You are familiar with, at this point perhaps,

[00:17:33] Speaker 02:
There are a lot of cases that have said the contrary, that have said it's de novo.

[00:17:40] Speaker 00:
For rule 15C?

[00:17:41] Speaker 02:
For rule 15C determinations.

[00:17:43] Speaker 00:
I didn't find any of those cases, Your Honor.

[00:17:46] Speaker 00:
So I cited those cases that I found, which indicated that you should give some discretion on relation back.

[00:17:55] Speaker 02:
Did you find any that actually relate to relation back, as opposed to Datascope and Fromson?

[00:18:01] Speaker 00:
I was aware that I was I believe those are as relevant as I found your honor so and but I think the the issue as far as whether it's a 12b issue or rule 15 issue is resolved almost by the question presented the question presented in this appeal is says it's a rule 15 issue it's relation back issue it's not a sufficiency of the allocations issue and

[00:18:27] Speaker 00:
If it's a 12b6 issue, and we look at the sufficiency of the allegations, then it would be a do-no vote.

[00:18:35] Speaker 00:
But I found the cases on abuse of discretion that I thought were relevant, Your Honor.

[00:18:41] Speaker 00:
And I apologize if I didn't get as much case evidence.

[00:18:49] Speaker 00:
Well, that's all right.

[00:18:50] Speaker 00:
We'll sort it out.

[00:18:53] Speaker 00:
But go ahead.

[00:18:55] Speaker 00:
The dilemma, I think, that ANSA has put itself into is that during the hearing on the first amended complaint, they acknowledged that their claims against Mushkin under the 927 pat were non-viable.

[00:19:08] Speaker 00:
And then they filed a second amended complaint, and they've indicated that those are the same claims that they had before, that there's identity or substantial similarity.

[00:19:22] Speaker 00:
If that's the case, then those are equally non-viable, as they acknowledge the 927 patent claims were.

[00:19:30] Speaker 00:
And if they're not the same, if there's some differences there, then they have a real issue with relation back.

[00:19:38] Speaker 02:
Do you think, as your opposing counsel has asserted, that the

[00:19:44] Speaker 02:
infringement contentions being designated as informal are not binding as effectively amending the complaints.

[00:19:53] Speaker 02:
Not at all, Your Honor.

[00:19:54] Speaker 00:
Those were not listed as informal.

[00:19:57] Speaker 00:
They were not indicated to be informal.

[00:20:00] Speaker 00:
We asked for those from the Court, and the Court instructed them to comply with the District of Colorado's

[00:20:08] Speaker 00:
contention requirements and those were served and signed by council and those were as much discovery as We relied on when we presented the declaration that said You've given up on 271g on the 927 patent.

[00:20:24] Speaker 00:
You only asserted 271 a you've given up on claims 16 You're only asserting claims 1 and 14

[00:20:32] Speaker 00:
And that's what you've given us charts on.

[00:20:34] Speaker 00:
That's what the contentions say.

[00:20:36] Speaker 00:
We're relying on that.

[00:20:37] Speaker 00:
Here's a declaration that says we can't infringe 271A, because we never had a bonding piece of equipment.

[00:20:45] Speaker 00:
We never had a bonding system to infringe the 271A claim.

[00:20:51] Speaker 00:
And after that mediation and they had the evidence before it, they acknowledged that the first amended

[00:21:01] Speaker 00:
the hearing on the motion to dismiss the first amended complaint, that those claims that were remaining in the case, not the 271G, not claim 16, but only claim 114 and claim 271A, at that first amended, the motion to dismiss the first amended complaint, they acknowledge those are not viable.

[00:21:23] Speaker 00:
There's no infringement there.

[00:21:25] Speaker 00:
And then the court did grant them leave to go ahead and file a second amended complaint.

[00:21:32] Speaker 00:
But that placed the burden on us to file a motion to dismiss.

[00:21:36] Speaker 02:
Well, of course, that could have been, assuming that the use of the term non-viable was intended to mean that they were effectively conceding lack of infringement.

[00:21:49] Speaker 02:
That could have been because of the fact that it, at that point, claimed 14.

[00:21:55] Speaker 02:
But post the infringement contingents was the only remaining claim, if you assume that the infringement contingents are binding.

[00:22:02] Speaker 02:
then that claim did have language requiring that it be in a flip-chip bonding system.

[00:22:09] Speaker 02:
And if it's true that none of your products were flip-chip bonding systems, then presumably that would be a reason for nonviability.

[00:22:18] Speaker 02:
But that wouldn't necessarily mean that the products themselves were not, and the patent claims were not part and parcel of the same conduct

[00:22:29] Speaker 02:
transactions or occurrences as is required by Rule 15.

[00:22:32] Speaker 00:
So the issue here is we didn't just say we didn't have a flip, we don't have a flip chip bonder, therefore we don't infringe the 927.

[00:22:43] Speaker 00:
We said we didn't have a bonder.

[00:22:44] Speaker 00:
We didn't bond anything.

[00:22:45] Speaker 00:
No, but that's where the 271-G argument comes in.

[00:22:49] Speaker 00:
That's correct.

[00:22:49] Speaker 00:
Right.

[00:22:49] Speaker 02:
But what it looks to me like the cases say when they look at whether this is conduct, transactions or occurrences,

[00:22:58] Speaker 02:
is they look at the underlying conduct.

[00:23:01] Speaker 02:
And the underlying conduct here has to do with the tips of these bonding devices and whether they operate in a certain way.

[00:23:14] Speaker 02:
Why aren't all of these claims then part of the same underlying conduct?

[00:23:20] Speaker 00:
Well, first of all, the flip chip

[00:23:23] Speaker 00:
claim limitations that were added during the continuation parts applications that were added years after the the newly asserted patent claims are going to be were filed so you have a flip chip

[00:23:39] Speaker 00:
You have a solder ball limitation that's added by CIPs.

[00:23:45] Speaker 00:
This is new matter.

[00:23:46] Speaker 00:
This is entirely new matter that was added much subsequent to the other two patents.

[00:23:52] Speaker 00:
So it's much down the line.

[00:23:54] Speaker 00:
And it's different technology.

[00:23:56] Speaker 00:
And in this instance, the initial complaints were saying that you, Mushkin, you're doing that bonding.

[00:24:07] Speaker 00:
You're doing the bonding.

[00:24:08] Speaker 00:
under 271A.

[00:24:10] Speaker 00:
You have a system and you're doing it.

[00:24:13] Speaker 00:
And then on the second complaint they filed, after that first one was dismissed under the acknowledgement of non-viability, the second one came in and said, there's wire bonding that's going on here.

[00:24:30] Speaker 00:
It's not flip chip.

[00:24:31] Speaker 00:
There's no flipping around the chip and bonding it to a substrate.

[00:24:35] Speaker 00:
There's just simply wire bonding that's going on.

[00:24:38] Speaker 00:
And Michigan, you're not doing it.

[00:24:41] Speaker 00:
It's some upstream manufacturer that's doing it.

[00:24:43] Speaker 00:
So it's a change of theory.

[00:24:46] Speaker 02:
But there's a lot of cases under Rule 15C that say you can change your theory, and you still get relation back, as long as the underlying conduct was the same.

[00:24:57] Speaker 00:
Yeah, but in this instance, the conduct, the party doing the bonding is totally different.

[00:25:03] Speaker 00:
And the type of bonding is totally different.

[00:25:06] Speaker 02:
But it's still infringement, just infringement on a different theory.

[00:25:10] Speaker 00:
No, I respectfully disagree.

[00:25:12] Speaker 00:
It would require entirely different evidence.

[00:25:15] Speaker 00:
It would require evidence of what Micron or some other supplier, how they were doing their wire bonding, which has nothing to do with the prior patent claims and the prior allegations in the case.

[00:25:29] Speaker 00:
And also, as you noted,

[00:25:31] Speaker 00:
there are additional products that they added to the case.

[00:25:34] Speaker 00:
And there were products that they took out.

[00:25:36] Speaker 00:
There was only one third of the products remained in the case that were even part of the first one.

[00:25:46] Speaker 02:
Well, the prints they take out seem to me to be irrelevant.

[00:25:49] Speaker 02:
You're always free to just drop some of your claims.

[00:25:52] Speaker 02:
So it's really only the two products they add that matter, right?

[00:25:55] Speaker 00:
Well, that's still a difference, Your Honor.

[00:25:57] Speaker 00:
It's a difference, but a much less.

[00:25:58] Speaker 00:
It's going to be some different evidence.

[00:26:00] Speaker 00:
And not only that, but it's going to be evidence.

[00:26:02] Speaker 00:
We're going to have to find out how Micron or how Toshiba or how somebody else bonded these products.

[00:26:10] Speaker 00:
And our sole involvement in the infringement is simply an acquisition.

[00:26:17] Speaker 00:
We're in the stream of commerce.

[00:26:19] Speaker 00:
So that was what was part of the second complaint.

[00:26:24] Speaker 00:
Not that we're doing any bonding activity, not that we have any bonding activity, not that we're practicing methods or really conducting anything in the Process Patent Act other than the acquisition and subsequent sale of a product that they indicate was upstream by some other supplier who was bonded according to their method.

[00:26:47] Speaker 00:
And that's much different than the claim that they had initially asserted against us, that is, Mushkin, that we had a system and we were using a system to bond something.

[00:27:01] Speaker 00:
And that's going to require a significant amount of different discovery and different evidence and different parties involved.

[00:27:18] Speaker 00:
The Calzone-Europa case dealt with copyrights.

[00:27:24] Speaker 00:
But it did have some interesting bootstrap language that I thought, if you allow stale claims to be bootstrapped onto fresh claims, then it's going to nullify the statute of limitations.

[00:27:39] Speaker 00:
And I think that actually goes one step further is that,

[00:27:44] Speaker 00:
In this case, ANSA is bootstrapping stale claims onto non-viable claims.

[00:27:50] Speaker 00:
And that's their attempt to nullify the statute of limitations.

[00:27:54] Speaker 00:
Is that your honor?

[00:27:58] Speaker 00:
If there's no other questions.

[00:28:08] Speaker 02:
We have a sharp disagreement about the nature of the infringement contentions.

[00:28:14] Speaker 02:
You shed some light on this because your opposing counsel says that your characterization of the infringement contentions as merely informal and sort of an aid to mediation is inaccurate.

[00:28:27] Speaker 01:
I think the court need to go no further than look specifically at the court's order at page 12.

[00:28:31] Speaker 01:
The court itself characterized these as quote.

[00:28:35] Speaker 02:
Which order and what?

[00:28:36] Speaker 01:
It's on page 12 of the appendix, Your Honor, and the district court specifically states

[00:28:42] Speaker 01:
that those contentions were, quote, informal infringement contentions.

[00:28:48] Speaker 01:
That is the court's characterization, not mine.

[00:28:51] Speaker 01:
And if you look at the course of the record with respect to that.

[00:28:54] Speaker 01:
Can you tell me we're on the page?

[00:28:56] Speaker 01:
I'm on page four.

[00:28:57] Speaker 01:
Sure.

[00:28:57] Speaker 01:
Give me one second, Your Honor.

[00:28:59] Speaker 01:
If you look, it's five lines up from the conclusion section, far left-hand side.

[00:29:05] Speaker 01:
This is especially true given that answers, quote, informal infringement contentions, unquote.

[00:29:13] Speaker 01:
But if the district court is going to rely on those infringement contentions, be they informal or otherwise, but in this case specifically identified as informal contentions prepared in the context of moving into a court-ordered mediation, the court cannot rely on those informal infringement contentions for a motion under 12b6.

[00:29:31] Speaker 01:
The court would have needed

[00:29:32] Speaker 01:
to convert the motion into a summary judgment motion, which it did not do despite a request in the actual motion from Mushkin.

[00:29:41] Speaker 01:
The court clearly indicates throughout its order that this is a motion to dismiss under Rule 12b6 and nothing more.

[00:29:48] Speaker 01:
And again, that's why we contend or ANSA contends this imposes the application of the de novo standard of review.

[00:29:56] Speaker 02:
But the whole motion, the reason that it's dismissed is because

[00:30:02] Speaker 02:
the statute of limitation wipes out your claims altogether.

[00:30:05] Speaker 02:
If the denial of relation back had reduced your infringement time to one day, there wouldn't have been a motion to dismiss.

[00:30:18] Speaker 02:
But we would still have to review what the district court did with respect to the relation back under

[00:30:25] Speaker 02:
a standard that pertained to the relation back doctrine, right?

[00:30:29] Speaker 01:
And it's in its contention regardless.

[00:30:31] Speaker 02:
Isn't that true?

[00:30:32] Speaker 01:
Yes, you do have to look at the factual record.

[00:30:34] Speaker 02:
And that isn't the 12b6 standard.

[00:30:38] Speaker 01:
Well, I mean, this is why, again, this is Court A called it a close call and B lamented the lack of clear guidance.

[00:30:44] Speaker 01:
And this is why this case is before you today.

[00:30:46] Speaker 01:
But in that context, again, let's say we use the more stringent abuse of discretion standard.

[00:30:51] Speaker 01:
The factual record is very clear.

[00:30:54] Speaker 01:
These are dissipative bonding tool patents that have a very specific dissipative pattern.

[00:30:59] Speaker 01:
If you look at the claim language of each of these patents, they all recite some variation of a dissipative material having resistance low enough to prevent a discharge of a charge to a device being bonded

[00:31:11] Speaker 01:
and high enough to stop current flow to damage the device.

[00:31:13] Speaker 01:
Now, there's variations amongst the three, but that is a common thread amongst all three patents, evidencing that these are clearly dissipative tool patents that may be used in different form factors.

[00:31:24] Speaker 01:
But they still go back to the same underlying conduct transaction.

[00:31:29] Speaker 01:
The sale of infringing product, PCB and ICB products, which, again, remain the same in the original complaint, as well as the Second Amendment complaint,

[00:31:38] Speaker 01:
And that accusation of infringement under 271G, which again remained in the original complaint as well as the Second Amendment complaint, are all still there.

[00:31:47] Speaker 01:
All these what ifs or hypotheticals that the appellee raises, they concern discovery that did not happen.

[00:31:54] Speaker 01:
They may or may not be true.

[00:31:55] Speaker 01:
I can't sit here and tell you one way or the other because discovery never commenced.

[00:31:59] Speaker 01:
And that, again, goes back to the consideration of the motion under 12b6, the four corners of the document, because that is, quite frankly, all the court had to rely upon and all the court should have relied upon in considering its order before.

[00:32:13] Speaker 01:
Going back more specifically with respect to that transaction and occurrence,

[00:32:17] Speaker 01:
The transaction occurrence, I think, that is not allowed or is prohibited is when you change the entire theory altogether.

[00:32:25] Speaker 01:
And again, 271-G was there on day one, and 271-G was there on the day the case was dismissed.

[00:32:30] Speaker 02:
Assuming the infringement contentions didn't wipe it out.

[00:32:33] Speaker 01:
Assuming the infringement contentions didn't wipe it out, which we contend the infringement contentions cannot be considered.

[00:32:37] Speaker 01:
But that issue aside, if you look at a case like Coroti Collier, that was a case that started off as a patent case and then later sought to bring in an antitrust claim.

[00:32:47] Speaker 01:
And that is the type of a theory of the type of allegation that 15C says, no, that's not the same transaction or occurrence.

[00:32:55] Speaker 01:
These were patent infringement claims alleging infringement of ANSA's dissipative tooltip bonding patents with respect to Mushkin's packaged ICs and PCBs.

[00:33:05] Speaker 02:
I have just one more quick question.

[00:33:06] Speaker 02:
And that is, you're correct that the district court referred to the infringement contentions as informal.

[00:33:15] Speaker 02:
in the very sentence in which the district court did that, the district court attached weight to the fact that in those informal infringement contentions, you dropped claim 16 and considered that as binding.

[00:33:30] Speaker 02:
So what are we to make of the fact that the district court concluded that the infringement contentions had the effect of narrowing the

[00:33:40] Speaker 01:
I think that at the very least, Your Honor, gives rise to your clear error.

[00:33:45] Speaker 01:
Let's assume you want to apply your higher burden of proof with an abuse of discretion.

[00:33:49] Speaker 01:
This was a 12b6 motion.

[00:33:51] Speaker 01:
And even if we apply a higher standard, abuse of discretion, the court cannot look beyond the four corners of the complaint.

[00:33:59] Speaker 01:
The case law from the Federal Circuit to the Supreme Court as well as the District Court and the Tenth Circuit is crystal clear.

[00:34:05] Speaker 01:
It must look to the pleadings.

[00:34:06] Speaker 01:
And the reason it must look to and only to the pleadings is discovery never commenced.

[00:34:11] Speaker 01:
You cannot be making factual determinations or conclusions based on a factual record that, quite frankly, does not exist.

[00:34:19] Speaker 01:
Thank you.