[00:01:01] Speaker 00:
takes time for armies to move.

[00:01:06] Speaker 00:
Our next case is BE Technology versus Facebook, 2018, 2356.

[00:01:11] Speaker 00:
Mr. Weinberg.

[00:01:14] Speaker 05:
Thank you, Your Honors.

[00:01:15] Speaker 05:
How come you didn't bring your own audience?

[00:01:19] Speaker 03:
Well, some folks are still here.

[00:01:22] Speaker 03:
They should really stay, because this case presents

[00:01:27] Speaker 03:
What may flow, I suspect, from the resolution of the appeals that were just argued?

[00:01:31] Speaker 03:
Because this case presents the question of whether a party prevails when a case is declared moot following the cancellation of patent claims.

[00:01:39] Speaker 00:
You're here for $4,400.

[00:01:43] Speaker 03:
That's correct, Your Honor.

[00:01:44] Speaker 00:
To avoid an assessment of $4,400.

[00:01:46] Speaker 03:
That's right, Your Honor.

[00:01:47] Speaker 03:
And Facebook, in its motion to have the case dismissed with prejudice, when it was pursuing $4,000, it informed the district in Tennessee, the Western District of Tennessee, that it needed a dismissal with prejudice so that it could be the prevailing party.

[00:02:08] Speaker 03:
And at Appendix 26, it specifically said,

[00:02:11] Speaker 03:
If you dismiss this case as moot, as B contends it is, we would be deprived our status as prevailing party and would not be able to recover the roughly $4,000 in costs that were incurred in the case.

[00:02:24] Speaker 03:
And when the district court dismissed the case as moot consistent with Judge O'Malley's decision in target training, where it recognized that under Frenesias,

[00:02:35] Speaker 03:
The cancellation of the claim moots the related district court litigation.

[00:02:39] Speaker 00:
We decide cases by three judge panels, not by one judge.

[00:02:44] Speaker 03:
And in that case, Your Honor, the decision of Frenesius and target training, which the court followed, said, indeed, the case is moot.

[00:02:57] Speaker 03:
It's not to be dismissed with prejudice.

[00:03:00] Speaker 03:
And nevertheless, Facebook turned around

[00:03:02] Speaker 03:
despite telling the court that it needed to dismissal with prejudice to be the prevailing party, and told the court that it was, in fact, the prevailing party, despite the mootness.

[00:03:10] Speaker 02:
Well, that mootness discussion in those cases had nothing to do with prevailing party status, right?

[00:03:17] Speaker 03:
That's correct, Your Honor.

[00:03:18] Speaker 02:
OK.

[00:03:20] Speaker 02:
And I don't, you know, when you're a procedure nerd like I am, the case could be worth $0.04, and I wouldn't care.

[00:03:28] Speaker 02:
I'd still be interested.

[00:03:29] Speaker 02:
But it is intriguing that you would put all this time and money into it just as a matter of practicality.

[00:03:38] Speaker 02:
Having said that, even if they thought they needed to dismissal with prejudice, because it's what our old case law used to say and what Buchanan seemed to imply, when you really drill down on Buchanan and you now look at the Supreme Court's decision in CRST, it's clear that you don't need that.

[00:04:00] Speaker 02:
Right?

[00:04:01] Speaker 03:
Well, I think if you look at CRST, CRST confirmed what Buchanan held, which is that there is one standard for the determination of a prevailing party.

[00:04:10] Speaker 03:
And that is the material alteration of the legal relationship of the parties.

[00:04:14] Speaker 02:
Right.

[00:04:14] Speaker 03:
And that change must be marked by judicial implementation.

[00:04:16] Speaker 02:
And Buchanan had to do with whether voluntary action on the part of the defendant was sufficient to create prevailing party status.

[00:04:26] Speaker 02:
Right?

[00:04:27] Speaker 03:
That's right, Judge.

[00:04:28] Speaker 03:
There was a rejection of the catalyst theory in Buchanan.

[00:04:32] Speaker 03:
Catalyst theory is the theory by which a defendant taking unilateral action outside of a court order rendering moot a case could result in the plaintiff being declared the prevailing partner.

[00:04:45] Speaker 02:
Right.

[00:04:46] Speaker 02:
So that was a very narrow rejection of the catalyst theory, right?

[00:04:51] Speaker 03:
Well, that was a sufficient rejection of the catalyst theory such that

[00:04:54] Speaker 03:
cases that follow Buchanan no longer allow for the recovery of costs or fees.

[00:05:00] Speaker 02:
Okay, but CRST says expressly that you don't need a judgment on the merits.

[00:05:07] Speaker 03:
That's correct, Your Honor.

[00:05:09] Speaker 02:
To be a prevailing party.

[00:05:11] Speaker 03:
That's true, and that opens the door for prevailing party status to a wider array of cases.

[00:05:21] Speaker 03:
However, it doesn't.

[00:05:22] Speaker 05:
Cases that we would label non-Murits cases.

[00:05:27] Speaker 03:
Correct, Your Honor.

[00:05:28] Speaker 05:
So we have two categories, and it seems to me that CRST clearly differentiates between two categories.

[00:05:37] Speaker 05:
Murits cases, decisions.

[00:05:40] Speaker 05:
Decisions on Murits cases, decisions on non-Murits cases.

[00:05:47] Speaker 05:
Which category does decision

[00:05:51] Speaker 05:
that's articulated as a mootness decision fall.

[00:05:56] Speaker 05:
Is it a merits decision?

[00:05:59] Speaker 03:
Judge Plager, it is certainly not a merits decision.

[00:06:03] Speaker 04:
Is it a non-merits decision, then?

[00:06:06] Speaker 03:
It is not on the merits, but it's not a decision.

[00:06:08] Speaker 04:
Is it a non-merits decision, then?

[00:06:11] Speaker 03:
It is a non-merits adjudication.

[00:06:14] Speaker 03:
It is, however, not a judicial decision.

[00:06:16] Speaker 05:
It's a third category, Mr. Weinberg.

[00:06:19] Speaker 05:
You have created a third category.

[00:06:21] Speaker 05:
Well, there's merits decisions, there's non-merits decisions, and then there's mootness decisions.

[00:06:29] Speaker 05:
I've looked through all the cases, and you're doing something really unique.

[00:06:36] Speaker 05:
Can you help me understand what the authority for this unique third category is?

[00:06:42] Speaker 03:
I would love to, Your Honor.

[00:06:43] Speaker 03:
So in the context of a prevailing party, CRST confirmed what Buchanan held.

[00:06:51] Speaker 03:
The standard is the standard.

[00:06:52] Speaker 03:
This court in Robinson v. O'Rourke, as well as Rainier, two 2018 cases that followed CRST

[00:06:59] Speaker 03:
both confirmed that the standard for prevailing party is a material alteration of the legal relationship of the parties marked by judicial imprimatur.

[00:07:09] Speaker 03:
Now, CRST indeed states very clearly for defendants is no longer necessary that there be a decision on the merits.

[00:07:17] Speaker 03:
A decision not on the merits is enough, provided, however, we still have the touchstone, which is the language of CRST,

[00:07:26] Speaker 03:
that there is a decision that materially alters the legal relationship of the parties.

[00:07:32] Speaker 05:
Let me ask you your view on this question.

[00:07:34] Speaker 05:
The trial judge in this case dismissed the case.

[00:07:41] Speaker 03:
That's correct.

[00:07:44] Speaker 05:
Was that dismissal conclusive?

[00:07:48] Speaker 03:
It was conclusive insofar as the case was dismissed and it was removed from the docket.

[00:07:52] Speaker 03:
It was not preclusive insofar as it has no preclusive effect.

[00:07:57] Speaker 05:
You think you could go back at any time to that same court and file that same complaint again against Facebook and retry the same case?

[00:08:08] Speaker 03:
I do not.

[00:08:09] Speaker 03:
But I can't do that.

[00:08:11] Speaker 05:
Why can't you?

[00:08:12] Speaker 03:
I'll tell you.

[00:08:13] Speaker 03:
I can't do that because the patent claims were canceled.

[00:08:16] Speaker 03:
It is not because of the mootness dismissal.

[00:08:19] Speaker 05:
Well, wait a minute.

[00:08:20] Speaker 05:
The patent claims being canceled did not decide your case.

[00:08:25] Speaker 05:
What decided your case was the district court, because that's where your case was.

[00:08:31] Speaker 05:
The PTAB with all their marvelous powers, the one thing they don't do is decide district court cases.

[00:08:39] Speaker 05:
Only district judges do that.

[00:08:42] Speaker 05:
And a district judge, I think, would be offended if the district judge

[00:08:46] Speaker 05:
was told, district judge, you don't decide your cases anymore.

[00:08:50] Speaker 05:
They're decided by the Patent Trademark Office.

[00:08:54] Speaker 05:
The district judge decided this case, didn't he?

[00:08:58] Speaker 03:
I disagree, Your Honor.

[00:09:00] Speaker 05:
You don't think the district judge decided the case?

[00:09:03] Speaker 03:
The district judge lost jurisdiction over this case due to intervening moodness.

[00:09:09] Speaker 03:
As this court's decisions in Frenesias and target training hold, there was no

[00:09:15] Speaker 03:
And there was no decision to be made.

[00:09:17] Speaker 05:
Let me test that one further way.

[00:09:19] Speaker 05:
Let's assume, hypothetically, that the district court had said, hm, I see the motion before me telling me that the PTAB has invalidated these claims.

[00:09:36] Speaker 05:
And it looks to me like you no longer have a case or a claim

[00:09:43] Speaker 05:
the other kind of claim, legal claim for which relief can be granted by this court, and therefore I'm dismissing the case.

[00:09:52] Speaker 05:
What result?

[00:09:54] Speaker 05:
Well, if the district court had written that instead of the word moot, would that change the whole thing?

[00:10:01] Speaker 03:
Indeed it would.

[00:10:02] Speaker 03:
If the case had been dismissed with prejudice, as was the case.

[00:10:06] Speaker 05:
No, he simply says, you do no longer have a claim for which this court can grant relief.

[00:10:13] Speaker 05:
That's what the rules provide him to say.

[00:10:16] Speaker 05:
Had he said that instead of moot, it'd be a whole different thing.

[00:10:22] Speaker 05:
Is that what you're telling me?

[00:10:23] Speaker 03:
Your Honor, in that hypothetical, if there is not a adjudication either with prejudice or without prejudice or mood, it would be hard for me to answer the question and say what the effect would be in the decision.

[00:10:42] Speaker 05:
You do agree that this case is over.

[00:10:47] Speaker 03:
Absolutely.

[00:10:48] Speaker 05:
This is the last act I hope.

[00:10:50] Speaker 05:
And you cannot retry it.

[00:10:52] Speaker 03:
It cannot be asserted.

[00:10:54] Speaker 03:
There are no longer claims that were asserted.

[00:10:58] Speaker 03:
And you cannot retry it, right?

[00:11:00] Speaker 03:
Well, it had never been tried, so it can't be tried, whether it's retried or not.

[00:11:04] Speaker 05:
Well, you cannot reassert the cause of action.

[00:11:10] Speaker 05:
You no longer have a cause of action that this court can give relief for.

[00:11:16] Speaker 00:
Because you are a prevailing party.

[00:11:21] Speaker 03:
Well, we did not prevail, although if you look at the position that Facebook's taking, its position is such that the decision in Buchanan should have been a decision for the defendant.

[00:11:38] Speaker 03:
The party that was not seeking prevailing party status in Buchanan was the

[00:11:45] Speaker 03:
The party who was seeking prevailing party status in Buchanan was the plaintiff.

[00:11:48] Speaker 03:
The plaintiff filed a lawsuit to change the impact on its old age homes.

[00:11:57] Speaker 02:
Right.

[00:11:57] Speaker 02:
And they said that a defendant's voluntary act that then effectively moots the case is not enough to give prevailing party status to the plaintiff.

[00:12:06] Speaker 02:
That's right.

[00:12:08] Speaker 02:
that putting aside a defendant's voluntary act, any time there's a finding of mootness, there can be no prevailing party?

[00:12:16] Speaker 03:
That's right, Your Honor.

[00:12:17] Speaker 03:
And what I would point the court to is footnote six of the Rice Services v. United States case.

[00:12:23] Speaker 03:
And that was a Federal Circuit case from 2007 in which the plaintiff attempted to rely on a catalyst-like theory.

[00:12:31] Speaker 02:
But that was before CRST, right?

[00:12:34] Speaker 03:
It was.

[00:12:34] Speaker 03:
But what I'll point to is footnote six in which it says that

[00:12:38] Speaker 03:
The court writes, obviously, if the case was moved, then the dismissal order had no effect on the party's legal relationship.

[00:12:46] Speaker 03:
It did not confer upon Rice prevailing party status.

[00:12:50] Speaker 03:
And the CRST case, albeit after Buckhannon, it confirmed that the touchstone of the prevailing party standard

[00:12:59] Speaker 03:
is the material alteration.

[00:13:01] Speaker 02:
Right.

[00:13:01] Speaker 02:
So how is this not a material alteration of the party's status when the mootness finding, which has the effect of dismissing the case, in a case where there can be no further action against the defendant?

[00:13:19] Speaker 05:
Your cause of action is terminated, right?

[00:13:22] Speaker 03:
That's right, Your Honor.

[00:13:24] Speaker 03:
But it's not the mootness decision

[00:13:26] Speaker 03:
that did that.

[00:13:27] Speaker 05:
Well, what if the judge said it's moot?

[00:13:29] Speaker 05:
Who did it then?

[00:13:30] Speaker 03:
The mootest decision was simply a reaction to the cancellation of the claims.

[00:13:36] Speaker 03:
It was the cancellation of the claims by the director in response to the affirmance of the Microsoft petition that resulted in the termination.

[00:13:46] Speaker 05:
Let me give you a state and see if you agree with it.

[00:13:48] Speaker 05:
Success in the PTAB is not success in district court and does not involve a judicial decision altering the legal relationship of the parties.

[00:13:59] Speaker 05:
Do you agree with that?

[00:14:00] Speaker 03:
I do.

[00:14:01] Speaker 05:
You should.

[00:14:02] Speaker 05:
You wrote it.

[00:14:03] Speaker 05:
Let me read another sentence.

[00:14:05] Speaker 05:
The ultimate question is whether appellees should be considered prevailing parties in the federal court action

[00:14:11] Speaker 05:
a prerequisite to eligibility for attorney fees under section 1988.

[00:14:16] Speaker 05:
That's a quote from some other case.

[00:14:20] Speaker 05:
You do agree that the district judge made a final judgment in your case.

[00:14:28] Speaker 05:
Did he make a final judgment in your case?

[00:14:32] Speaker 03:
There is a judgment in the case.

[00:14:34] Speaker 03:
Did he make a final judgment in your case?

[00:14:36] Speaker 03:
The judge entered judgment.

[00:14:39] Speaker 03:
He made no decision.

[00:14:40] Speaker 03:
Did he enter a final judgment in your case?

[00:14:43] Speaker 03:
He did enter a final judgment.

[00:14:45] Speaker 05:
And what's the effect of that judgment to terminate your cause of action?

[00:14:51] Speaker 03:
No, Your Honor.

[00:14:52] Speaker 03:
The cause of action was terminated when the case became moot.

[00:14:57] Speaker 05:
Success in the PTAB is not success in district court and does not involve a judicial decision altering the legal relationship of the parties.

[00:15:06] Speaker 05:
So the PTAB was not success in the district court.

[00:15:10] Speaker 05:
Somebody had success in the district court.

[00:15:12] Speaker 05:
This is most strange.

[00:15:13] Speaker 03:
I submit that nobody had success in the district court.

[00:15:16] Speaker 03:
That in the context of a moot case,

[00:15:19] Speaker 03:
There is neither a prevailing party, whether it's the plaintiff or the defendant, as Justice Scalia wrote in the concurring opinion of the Buck-Hannon case.

[00:15:29] Speaker 03:
You may say that Facebook prevailed, and I have no doubt that their celebration was better than B.E.'

[00:15:36] Speaker 03:
's celebration.

[00:15:39] Speaker 03:
But there is no prevailing party in the lawsuit.

[00:15:42] Speaker 03:
And that's Justice Scalia in the Buchanan concurrence.

[00:15:45] Speaker 05:
Well, the question whether there's a prevailing party in the lawsuit is a conclusion that we can arrive at.

[00:15:50] Speaker 05:
But first, we have to decide who won in the district court.

[00:15:55] Speaker 05:
And your answer is, nobody won in the district court.

[00:15:59] Speaker 05:
They won in the PTAB.

[00:16:01] Speaker 03:
Well, I wouldn't say that Facebook won because Microsoft won and Facebook's petition was dismissed.

[00:16:07] Speaker 03:
But nobody won in the district court.

[00:16:10] Speaker 03:
I agree with your honor.

[00:16:11] Speaker 00:
Counsel, your time is just up.

[00:16:14] Speaker 00:
We'll give you two minutes for rebuttal time, but we'll hear from Ms.

[00:16:18] Speaker 00:
Terrell.

[00:16:19] Speaker 03:
Thank you, Your Honors.

[00:16:25] Speaker 01:
Thank you, Your Honors.

[00:16:27] Speaker 01:
As an initial matter, Facebook absolutely prevailed in the district court.

[00:16:32] Speaker 01:
The PTAP action would not have existed but for the district court case brought against Facebook by appellant.

[00:16:40] Speaker 01:
Facebook pursued its invalidity challenge at the PTAB.

[00:16:44] Speaker 01:
Facebook received a final written decision from the PTAB invalidating all of the claims that were asserted by appellant against Facebook at the district court.

[00:16:57] Speaker 01:
Now, appellant seems to be trying to draw a distinction about the later procedural history for those PTAB final written decisions and the fact that this court

[00:17:09] Speaker 01:
had to look at three final written decisions and ultimately decided and upheld the invalidity challenge that had been brought by Microsoft.

[00:17:17] Speaker 01:
And in so doing, did not need to consider the final written decision that was obtained by Facebook.

[00:17:24] Speaker 01:
But the bottom line is that final written decision, it still stands.

[00:17:28] Speaker 01:
It wasn't vacated.

[00:17:29] Speaker 01:
This court didn't need to take the time to go through the analysis again because the patent had been invalidated three different ways.

[00:17:38] Speaker 01:
And this court was able to uphold the first of those ways and not waste its time.

[00:17:43] Speaker 02:
But you do have a little bit of an uphill battle here, because there are no cases directly on point, correct?

[00:17:50] Speaker 01:
I agree, Your Honor.

[00:17:51] Speaker 01:
There are no cases directly on point.

[00:17:52] Speaker 01:
And you thought you needed something more from this judge.

[00:17:56] Speaker 01:
Well, Your Honor, when we went in front of the judge in 2017, we did not yet have the benefit of your decision in Rainier.

[00:18:03] Speaker 01:
And this court in Rainier,

[00:18:05] Speaker 01:
embraced CRST as the law for when we are determining the issue of whether a defendant is a prevailing party.

[00:18:12] Speaker 01:
And this court in Rainier reiterated the standard that CRST had put forward.

[00:18:19] Speaker 05:
CRST doesn't decide this case.

[00:18:22] Speaker 05:
What CRST tells us is it doesn't need to be a merits decision.

[00:18:27] Speaker 05:
It can be a non-merits decision.

[00:18:29] Speaker 05:
Now, the argument in this case is there's a third category.

[00:18:32] Speaker 05:
There's a mootness category.

[00:18:34] Speaker 05:
I'm not sure I understand that argument, as you could tell from my pathology with your colleague.

[00:18:42] Speaker 05:
You do need some sort of dispositive disposition at the district court.

[00:18:49] Speaker 01:
Absolutely, Your Honor.

[00:18:49] Speaker 05:
And there wasn't one in this case.

[00:18:51] Speaker 01:
Well, I would argue we did get one here.

[00:18:53] Speaker 01:
The district court judge sat down and wrote a six-page order in which he analyzed the impact of the PTAP final run decision of the invalidity of appellant's claims

[00:19:03] Speaker 01:
on the case at the district court.

[00:19:06] Speaker 01:
And Facebook had brought its initial motion asking for a certain type of dismissal.

[00:19:11] Speaker 01:
But the bottom line was, as the Supreme Court cautioned us in CRST, we need to apply our common sense, we were asking for a disposal that would allow us to seek our costs.

[00:19:23] Speaker 02:
But really, more technically, this should have been a 12b judgment, basically saying they no longer have a

[00:19:32] Speaker 02:
a claim upon which they would be entitled to relief.

[00:19:35] Speaker 02:
Yeah.

[00:19:36] Speaker 05:
Isn't that right?

[00:19:38] Speaker 01:
Which would be a final decision on the merits.

[00:19:40] Speaker 01:
And it would be a final decision.

[00:19:42] Speaker 05:
That's no more a final decision than saying, oh dear, this case is moot because there are no valid claims.

[00:19:48] Speaker 05:
This is another way of saying there are no valid claims.

[00:19:52] Speaker 01:
That's right, Your Honor, which means that their cause of action was extinguished, and it was extinguished

[00:19:57] Speaker 01:
due to Facebook's action, due to Facebook's invalidating of their patents.

[00:20:01] Speaker 02:
I mean, clearly, a 12b determination, as it relates to failure to state a claim, is on the merits.

[00:20:08] Speaker 02:
But as it relates to the question of whether a mootness determination is on the merits, so in terms of the three categories that Judge Plegger is pointing out, you don't have any case law that would say it's a merits determination, right?

[00:20:23] Speaker 01:
No, Your Honor.

[00:20:24] Speaker 01:
Although, I mean, I would direct the court

[00:20:26] Speaker 01:
the Supreme Court's decision in CRST in which it listed some different types of claims that could result in a defendant being a prevailing party.

[00:20:34] Speaker 01:
And one of them was mootness.

[00:20:37] Speaker 05:
Renear is an important decision in this world, because it clearly moves us out of the merits question, and what is a merits and what isn't a merits.

[00:20:48] Speaker 05:
But I'm not sure it moves us all the way to decide that a judgment

[00:20:55] Speaker 05:
based on mootness is the same thing as a judgment in which as

[00:21:03] Speaker 05:
Judge O'Malley, I think, correctly points out the proper disposition in these cases ought to be the simple 12b dismissal.

[00:21:12] Speaker 05:
You no longer have a cause of action for which relief can be granted.

[00:21:16] Speaker 05:
That's what the rules are for.

[00:21:20] Speaker 05:
They use the wrong words.

[00:21:22] Speaker 05:
Now, we ordinarily, I think, my colleagues might or might not agree with me, but I think they would, we ordinarily don't review

[00:21:31] Speaker 05:
decisions, we reviewed judgments.

[00:21:34] Speaker 05:
And the judgment in this case was, you win.

[00:21:38] Speaker 01:
Absolutely, Your Honor.

[00:21:39] Speaker 05:
What's wrong with that?

[00:21:42] Speaker 01:
Well, you have to look at the change in the legal status of the parties.

[00:21:46] Speaker 01:
And that's what CRST and that's what Rainier direct us to do.

[00:21:50] Speaker 01:
You have to look at whether the plaintiff was successful in their claim or whether the defendant successfully rebuffed that claim, which is what happened here.

[00:21:59] Speaker 01:
And as the Supreme Court said in CRST, we need to look at it through a common sense lens.

[00:22:04] Speaker 01:
We have a situation where there was an attempt by the appellant to change the legal status between the parties to make Facebook a defendant, to make Facebook an infringer.

[00:22:13] Speaker 05:
So you think this was a dispositive decision by the district judge?

[00:22:21] Speaker 05:
Your Honor, it certainly was a decision that was... To answer my question, do you think the judge gave a dispositive decision in this case?

[00:22:31] Speaker 01:
I would argue yes, Your Honor.

[00:22:33] Speaker 05:
How would you deal with the case in which your petition to the PTAP goes to the PTAP, the PTAP Institute's review, as they did here, but before a

[00:22:49] Speaker 05:
The final written decision is issued.

[00:22:53] Speaker 05:
The plaintiff voluntarily dismisses the suit.

[00:22:59] Speaker 05:
And the trial judge says, oh, OK, suit dismissed.

[00:23:04] Speaker 05:
You're out of here.

[00:23:06] Speaker 05:
Is that a dispositive disposition from your viewpoint?

[00:23:09] Speaker 05:
Would you be entitled to attorneys fees?

[00:23:15] Speaker 01:
Well, on the issue of costs under Rule 54.

[00:23:18] Speaker 05:
Would you be entitled to costs?

[00:23:20] Speaker 01:
Your Honor, that's certainly a harder case, right?

[00:23:21] Speaker 01:
We're talking about someone with their hand in the cookie jar, but they haven't yet touched the cookie.

[00:23:28] Speaker 01:
What we are dealing with here is Facebook being forced to deal with a case in district court.

[00:23:36] Speaker 05:
My children would never agree to that hypothetical.

[00:23:41] Speaker 01:
Go ahead.

[00:23:41] Speaker 01:
Facebook incurred costs in dealing with this case in district court.

[00:23:45] Speaker 01:
Facebook took the dispute to the P-Tab.

[00:23:48] Speaker 01:
Facebook came back with a clear victory from the P-Tab, presented this to the district court.

[00:23:53] Speaker 01:
And at this point, the goal of awarding costs is to try and put Facebook at least somewhat in the position that it would have been, but for this lawsuit.

[00:24:03] Speaker 02:
If you had had Rainier, or as we used to refer to it, and I thought was correct, Rainier, but either way, if you had had that case before you had filed your motion,

[00:24:14] Speaker 02:
How would you have formulated your request?

[00:24:17] Speaker 01:
Sure, Your Honor.

[00:24:18] Speaker 01:
I think that we would have recognized that the specific request for dismissal with prejudice was unnecessary, that it is simply that Buchanan does not tell us what we need to do, that we can look at CRST, that we can say the bottom line here is a claim was extinguished.

[00:24:39] Speaker 01:
It may never be brought again.

[00:24:40] Speaker 01:
They may never sue Facebook.

[00:24:42] Speaker 02:
So would you have filed your motion under 12B instead of 12C?

[00:24:47] Speaker 01:
I'm not sure that that would matter, Your Honor.

[00:24:54] Speaker 01:
The bottom line being that the finality of the decision, these claims may not be asserted against Facebook again.

[00:25:04] Speaker 01:
That extinguishing of the claims, that is what this should turn on.

[00:25:10] Speaker 01:
So substance over form, a little bit.

[00:25:14] Speaker 01:
Absolutely, Your Honor.

[00:25:15] Speaker 01:
And I think that as the courts have iterated on this, as you see from Buchanan to CRST to Ranieri, you see that there is an iteration on what is the exact mechanism for this.

[00:25:28] Speaker 01:
And CRST ultimately counseling us that we need to not put form over substance, that we need to apply our common sense, that we need to look

[00:25:38] Speaker 01:
you know, whether a plaintiff was successful in changing the legal relationship.

[00:25:42] Speaker 01:
And here, clearly, the plaintiff was not.

[00:25:47] Speaker 01:
Unless the court has any further questions, I can rest on my argument.

[00:25:50] Speaker 00:
Thank you, counsel.

[00:25:51] Speaker 00:
Thank you for your time.

[00:25:52] Speaker 00:
Mr. Weinberg has two minutes for rebuttal.

[00:25:57] Speaker 03:
Thank you, your honor.

[00:25:57] Speaker 03:
I want to go back to what matters here.

[00:26:03] Speaker 03:
And what matters is the scope of a federal court's jurisdiction.

[00:26:08] Speaker 03:
And footnote six of Rice's services.

[00:26:10] Speaker 05:
Which federal court are we talking about?

[00:26:12] Speaker 03:
Federal district courts.

[00:26:13] Speaker 03:
OK, good.

[00:26:16] Speaker 03:
Footnote six cites North Carolina v. Rice.

[00:26:18] Speaker 03:
I don't know why everything is Rice in this case.

[00:26:19] Speaker 03:
But in that case, the Supreme Court has held that it has frequently been reported that federal courts are without power to decide questions that cannot affect the rights of litigants in the case before them.

[00:26:33] Speaker 05:
This is the Rice case.

[00:26:34] Speaker 03:
That is the footnote 6 from Rice Services.

[00:26:37] Speaker 03:
What year was that?

[00:26:38] Speaker 03:
2007.

[00:26:39] Speaker 03:
And it's citing... It's a little early, isn't it?

[00:26:43] Speaker 03:
Well, it's before CRST, but I don't think it matters because CRST makes clear that for defendants, decisions not on the merits can result in

[00:26:55] Speaker 03:
prevailing party status, provided, however, there is still the basics.

[00:27:00] Speaker 03:
You need a decision that materially alters the legal relationship of the parties, and there must be judicial and premature.

[00:27:07] Speaker 03:
So you need a judicial decision.

[00:27:09] Speaker 03:
What Rice Services says, as well as RFR Industries, also cited in our brief, another federal case, those cases hold that certain decisions, although they're non-merits, do not change materially.

[00:27:24] Speaker 03:
But don't change at all the legal relationship of the parties.

[00:27:28] Speaker 03:
And the basics of Article III jurisdiction provide that courts can't decide cases where there's no case or controversy.

[00:27:38] Speaker 03:
So when there's intervening moodness, as there was in this case, Judge McCullough was deprived jurisdiction.

[00:27:45] Speaker 03:
His judgment, labeled judgment on the piece of paper, uploaded through ECF.

[00:27:51] Speaker 03:
It wasn't a decision.

[00:27:52] Speaker 03:
He didn't resolve anything.

[00:27:54] Speaker 03:
He had no power to resolve anything.

[00:27:57] Speaker 03:
And that's already v Nike.

[00:27:59] Speaker 03:
That's North Carolina v Rice.

[00:28:03] Speaker 05:
I've been told by a very diligent law clerk that West now says Rice is no longer good law.

[00:28:10] Speaker 05:
Isn't that weird?

[00:28:11] Speaker 03:
I think it is weird, because I think the statement that Rice Services has here

[00:28:17] Speaker 03:
doesn't turn on whether there's a merits decision or a non-merits decision.

[00:28:21] Speaker 03:
It simply turns on whether or not there was a material alteration of the legal relationship.

[00:28:28] Speaker 03:
And that's the standard.

[00:28:28] Speaker 05:
And you think there was no material alteration in your legal world?

[00:28:33] Speaker 03:
There was no material alteration resulting from the mootness dismissal.

[00:28:38] Speaker 03:
There certainly has been a material alteration.