[00:00:03] Speaker 00:
We have three cases on the calendar this morning.

[00:00:08] Speaker 00:
We have a case from the district court, two veterans cases, one of which is being submitted on the briefs and will not be argued.

[00:00:19] Speaker 00:
After the first case, we will adjourn briefly and then come back with a slightly altered panel.

[00:00:28] Speaker 00:
Our first case is Cheetah Omni versus

[00:00:33] Speaker 00:
AT&T and Sienna, 2019-12-64.

[00:00:35] Speaker 00:
Mr. Lurie.

[00:00:39] Speaker 05:
Good morning, Your Honors.

[00:00:46] Speaker 05:
Tom Lurie on behalf of GDOMNI.

[00:00:50] Speaker 05:
The court should not imply a license where Fujitsu and Sienna were aware of the 836 patent

[00:00:59] Speaker 05:
and agreed not to license it in the license agreement.

[00:01:04] Speaker 05:
That should be the beginning and the end of the analysis.

[00:01:08] Speaker 05:
As Judge Dyke said in his concurrence in Endo, that's inconsistent with an implied license.

[00:01:17] Speaker 05:
The knowledge of the patent and the choice not to include it expressly in the agreement is inconsistent with an implied license.

[00:01:26] Speaker 02:
I understood, Judge.

[00:01:27] Speaker 02:
it was contingent on the fact that there were negotiations for a particular patent and then ultimately those negotiations failed to yield inclusion of that particular patent into the license.

[00:01:47] Speaker 02:
And I'm curious, is there any evidence of something like that happening here with the 836?

[00:01:55] Speaker 02:
I didn't see anything like that.

[00:01:57] Speaker 02:
Like that mentioned in your blue or gray briefs.

[00:02:00] Speaker 02:
So that made me wonder.

[00:02:03] Speaker 05:
No.

[00:02:04] Speaker 05:
There was no specific discussion of the 836 patent with respect to the license agreements.

[00:02:11] Speaker 05:
The 836 patent was expressly incorporated into the covenants.

[00:02:17] Speaker 05:
And in the Fujitsu case, it was one of the listed patents in the covenants, which were negotiated and signed the same day.

[00:02:25] Speaker 05:
would negotiate at the same time and sign the same day.

[00:02:28] Speaker 05:
So in that sense, it is a patent that was identified and known to the parties and was part of the overall agreement, but not part of the license agreement, if that's what you're focused on.

[00:02:42] Speaker 02:
Yeah.

[00:02:43] Speaker 02:
As to the license agreement, was there some history as to an attempt by CNN Fujitsu to try to

[00:02:55] Speaker 02:
gain a license that was completely comprehensive as to the entire set of optical telecom patents.

[00:03:04] Speaker 02:
And then that didn't work out for them, so they were relegated to this, I guess, one chain of patents.

[00:03:13] Speaker 05:
So essentially, yes.

[00:03:15] Speaker 05:
I'd say the answer is yes.

[00:03:16] Speaker 02:
Essentially, yes.

[00:03:17] Speaker 05:
So can you please explain specifically what you mean by that?

[00:03:22] Speaker 05:
So in those discussions, Sienna and Fujitsu wanted some coverage for the entire telecom portfolio.

[00:03:33] Speaker 05:
And the discussion was we were only going to give you a license for specific patents, but you could have a covenant for the remainder of the portfolio.

[00:03:43] Speaker 01:
Other than the text of the covenant and the text of the licensing agreement, from which I take it you're inferring this, is there any evidence

[00:03:53] Speaker 01:
that was presented to the court as to the negotiation, the history of the negotiations themselves, emails, communications, and so forth.

[00:04:03] Speaker 01:
I didn't see anything in the appendix.

[00:04:04] Speaker 01:
I don't know if there was anything outside of the appendix that was presented to the court.

[00:04:09] Speaker 05:
There was very little.

[00:04:10] Speaker 05:
It was primarily about the question of the clause that had the combination language in it.

[00:04:19] Speaker 05:
And that was presented to the court with respect to this combination issue that was discussed and resolved by the district court, but not with respect to the question Judge Chen asked.

[00:04:31] Speaker 01:
OK.

[00:04:31] Speaker 01:
So when you say there was negotiations to that issue, the issue Judge Chen asked about, you're relying on what, other than the existence of different language in the covenant and the license?

[00:04:45] Speaker 05:
I guess my participation in part, but I know that's not in the record, per se.

[00:04:50] Speaker 01:
No, but you didn't put anything in the record from which we can infer that there were negotiations, an effort to try to include or exclude the 836 explicitly, that did not result in the inclusion or exclusion of the 836.

[00:05:04] Speaker 01:
That's right.

[00:05:05] Speaker 05:
There's nothing in the record except for the agreements themselves to that effect.

[00:05:10] Speaker 05:
OK.

[00:05:11] Speaker 05:
So the important thing is there's not a single case

[00:05:15] Speaker 05:
that holds, that creates an implied license under these facts.

[00:05:19] Speaker 05:
Not one.

[00:05:20] Speaker 05:
But we have the Endo case where, as Judge Chen points out, Judge Dyke's comments were a dissent in part, but the part that we cite is a concurrence actually.

[00:05:35] Speaker 05:
And then there's the case that was discussed in Amp.

[00:05:38] Speaker 00:
Concurrences and dissents are not the law.

[00:05:41] Speaker 05:
That's true.

[00:05:42] Speaker 05:
It was not the basis for the whole thing.

[00:05:44] Speaker 00:
One usually doesn't succeed by citing one judge's opinions.

[00:05:49] Speaker 05:
I agree.

[00:05:49] Speaker 05:
But it's the rationale that's important.

[00:05:51] Speaker 05:
It's not his opinion, but it's his point.

[00:05:54] Speaker 05:
That it's inconsistent with an implied license to say where you know about the patent and you don't include it.

[00:06:00] Speaker 05:
And there's no question, and this is undisputed on this record, that Sienna and Fujitsu were aware of the 836 patent and its history and its importance

[00:06:08] Speaker 05:
Because there was a Verizon lawsuit.

[00:06:10] Speaker 05:
Fujitsu was part of the settlement of the Verizon lawsuit.

[00:06:13] Speaker 05:
They were intimately involved in that lawsuit.

[00:06:16] Speaker 05:
And they knew how important this 836 patent was to this concept of the fiber to the home, fiber to the premises.

[00:06:25] Speaker 00:
I think they could have written a different agreement.

[00:06:30] Speaker 00:
They were settling 714.

[00:06:31] Speaker 00:
925 was a patent.

[00:06:36] Speaker 00:
And 836 has all the same language and was a grandchild.

[00:06:42] Speaker 05:
It does.

[00:06:44] Speaker 05:
Now it discloses several different categories of inventions and each of those different categories of inventions is claimed differently in the various patents.

[00:06:53] Speaker 05:
And so just saying that it has the same disclosure isn't the same thing as saying it discloses a single invention.

[00:07:01] Speaker 05:
And I think that's one of the relevant issues here.

[00:07:04] Speaker 00:
But everything in the 925 patent was claimable in 836.

[00:07:11] Speaker 05:
was claimable in 836.

[00:07:12] Speaker 00:
Because it had the same disclosure.

[00:07:14] Speaker 05:
It's true, but it wasn't claimed.

[00:07:16] Speaker 05:
In fact, if it had all been claimed, there would have been a restriction requirement.

[00:07:19] Speaker 05:
We would have had to file the visionals.

[00:07:21] Speaker 02:
But what do you think is the underlying principle of the rule coming out of General ProTech?

[00:07:27] Speaker 02:
General ProTech basically says, if you get a license on a given patent,

[00:07:34] Speaker 02:
And you as a licensee don't have to worry about any continuations that might spin off of that license patent, given that those continuation patents share the exact same disclosure as the licensed patent.

[00:07:49] Speaker 02:
And so you don't have to worry about being

[00:07:52] Speaker 02:
chased again by this patent owner over any continuations.

[00:07:56] Speaker 02:
So it's not just a focus on claims and claims scope per se with the licensed patent.

[00:08:05] Speaker 02:
It's more about seemingly the shared disclosure that all these different patents have.

[00:08:11] Speaker 02:
So I would... Is that fair to say that's what's coming out of, that's the underlying rationale of why we have the rule that we have in General Protect?

[00:08:20] Speaker 05:
I would say no, and for this reason.

[00:08:23] Speaker 05:
That the rule, first of all, the implied license doctrine is a narrow doctrine.

[00:08:27] Speaker 05:
Several courts have said that.

[00:08:28] Speaker 05:
Nobody's disagreed with that.

[00:08:30] Speaker 05:
General Protect creates a narrow presumption, and that presumption is very specific.

[00:08:36] Speaker 05:
It says if

[00:08:38] Speaker 05:
there's a continuation that issues from a patent that previously has been licensed, then as to certain products, then those products, not the patent, but those products are impliedly licensed.

[00:08:52] Speaker 05:
So it doesn't create a patent license.

[00:08:55] Speaker 02:
It creates a license for specific products, which is important because... Regardless of the fact that the patent disclosure might actually disclose 20 different inventions.

[00:09:06] Speaker 02:
And now the continuation patents are claiming inventions 15, 16, and 17, whereas the licensed patent was perhaps merely claiming invention number one disclosed and the 20 inventions and the shared disclosure, right?

[00:09:21] Speaker 05:
That's true.

[00:09:23] Speaker 05:
And courts have criticized general protect for that problem.

[00:09:27] Speaker 05:
Both AT&T and we agree that if there's a suspicion.

[00:09:30] Speaker 02:
Which courts are those?

[00:09:31] Speaker 02:
I'm sorry?

[00:09:32] Speaker 02:
You said courts have criticized the rule in general protect.

[00:09:35] Speaker 02:
Which courts are those?

[00:09:36] Speaker 05:
Universal Electronics.

[00:09:38] Speaker 05:
It's a Central District of California court case.

[00:09:41] Speaker 05:
Universal Electronics versus Universal Remote Control.

[00:09:45] Speaker 05:
It's Central District of California 2014.

[00:09:48] Speaker 05:
And it starts on page 1074 and continues on to page 1075.

[00:09:56] Speaker 01:
What's the citation, the full citation?

[00:09:59] Speaker 05:
I'm sorry.

[00:09:59] Speaker 05:
34 F sub 3rd, 1061.

[00:10:05] Speaker 05:
And everybody, both sides agree that if this was a divisional case, that the rule would not apply.

[00:10:18] Speaker 05:
And that was a Northern District of Illinois case that said that.

[00:10:21] Speaker 05:
And we cited that.

[00:10:23] Speaker 05:
AT&T said, yeah, that's different because it's divisional.

[00:10:26] Speaker 05:
But that's the point.

[00:10:27] Speaker 05:
Divisionals are created because there are multiple inventions disclosed in a single application.

[00:10:33] Speaker 05:
And if it's only this procedural nicety that the party, the patent owner filed claims that were to two different inventions in the same application and therefore got a restriction requirement and therefore became a divisional, that's the rule.

[00:10:48] Speaker 05:
That elevates form over substance.

[00:10:52] Speaker 05:
The point is, if you have different inventions and different scopes, then that scope is important.

[00:10:59] Speaker 05:
And Transcor made that point.

[00:11:01] Speaker 05:
Endo makes that same point, talking about Transcor, that any implied license has to be limited to the scope of the license, the express license that was granted.

[00:11:12] Speaker 05:
And it's about the claims.

[00:11:13] Speaker 05:
It is about the claims.

[00:11:14] Speaker 05:
And our agreement is about the claims.

[00:11:15] Speaker 05:
But the express license was to certain patents and parents.

[00:11:20] Speaker 05:
Our express license was.

[00:11:22] Speaker 05:
But the licensed products were limited to certain patent claims.

[00:11:26] Speaker 05:
And this is a fairly common way of writing a license agreement, patent license agreement.

[00:11:31] Speaker 05:
Licensed products are only those that infringe the licensed patents.

[00:11:36] Speaker 02:
You express licensed patents.

[00:11:36] Speaker 02:
I'm lost.

[00:11:37] Speaker 02:
I mean, my understanding of general protect is, even if you have an omnibus specification disclosing 20 different inventions, and then you license a patent,

[00:11:50] Speaker 02:
that claims only invention number one, and then you have multiple continuation patents off of that license patent that happen to claim all the other 19 inventions disclosed in that omnibus specification.

[00:12:03] Speaker 02:
Under General ProTech, there's a presumption that there's an implied license for those continuation patents.

[00:12:09] Speaker 02:
Am I misunderstanding General ProTech?

[00:12:12] Speaker 05:
If you're including in that that those

[00:12:15] Speaker 05:
continuations issued after the license agreement?

[00:12:18] Speaker 05:
No, you're not.

[00:12:19] Speaker 05:
But that's a fact.

[00:12:21] Speaker 01:
We're really only focusing on timing.

[00:12:23] Speaker 01:
But the timing is irrelevant.

[00:12:25] Speaker 01:
Well, I understand.

[00:12:25] Speaker 01:
But I was confused, too, when you were going on to discuss the role of claims and the scope of the protected products.

[00:12:38] Speaker 01:
But we're really here.

[00:12:39] Speaker 01:
If this came, put it this way, if the 836

[00:12:43] Speaker 01:
a patent had not issued prior to the agreement in this case, you would basically be out of court.

[00:12:50] Speaker 05:
Well, I would be here arguing that General ProTech was wrongly decided.

[00:12:53] Speaker 05:
Well, OK.

[00:12:54] Speaker 05:
OK.

[00:12:55] Speaker 05:
And understand that General ProTech simply... But that's pretty close to being out of court.

[00:12:58] Speaker 05:
Maybe.

[00:12:58] Speaker 05:
But General ProTech says, we create a presumption from TransCorp.

[00:13:03] Speaker 05:
But when you look at TransCorp, TransCorp was not as broad as the General ProTech presumption.

[00:13:09] Speaker 02:
But then there was also an additional provision in the TransCorp

[00:13:12] Speaker 02:
license that said no license should be presumed for any patents that have already issued as of the effective date of this contract.

[00:13:26] Speaker 02:
So there was that kind of exclusion of any possible implied waivers in Transcor.

[00:13:33] Speaker 02:
You don't have that here.

[00:13:35] Speaker 02:
That's true, but that's also didn't have that in General ProTech.

[00:13:38] Speaker 05:
But that's not dispositive of the issue that General ProTech created the presumption out of that.

[00:13:43] Speaker 02:
I think in the end, you, we are all bound by General ProTech.

[00:13:47] Speaker 02:
So the best you've got right now is the timing question.

[00:13:49] Speaker 02:
I think that's probably the best you have at this point to be focusing your attention on.

[00:13:55] Speaker 05:
Well, that's where I started.

[00:13:57] Speaker 05:
But let me read, and this is from the opinion, not from Judge Dyke's dissent in part.

[00:14:04] Speaker 05:
from endo-pharmaceuticals.

[00:14:06] Speaker 05:
This is page 1377, 746, F3rd, 1371.

[00:14:12] Speaker 05:
We thus recognized, talking about TransCore, we thus recognized the assertion

[00:14:18] Speaker 05:
The assertive patent claims were broader than the license claims.

[00:14:21] Speaker 05:
To avoid a windfall to the licensee, we expressly limited the implied license to the scope of the license claims.

[00:14:28] Speaker 02:
That's what... We're aware of the language in General Protect.

[00:14:33] Speaker 02:
I guess the question is, for our purposes, is it your view

[00:14:39] Speaker 02:
What if CNN Fujitsu were unaware of the already issued 836 patent?

[00:14:44] Speaker 05:
It would be a different case.

[00:14:46] Speaker 05:
You have to create new law in order to capture this fact scenario.

[00:14:51] Speaker 05:
It would be a different case if they weren't aware of it.

[00:14:53] Speaker 05:
I agree with that.

[00:14:54] Speaker 05:
We wouldn't be standing here making the same argument.

[00:14:56] Speaker 02:
So it comes down to their awareness of the 836.

[00:15:00] Speaker 05:
Absolutely.

[00:15:01] Speaker 05:
They knew about it.

[00:15:01] Speaker 05:
They could have included it.

[00:15:02] Speaker 05:
They chose not to.

[00:15:04] Speaker 05:
It was their burden to put it in.

[00:15:05] Speaker 05:
They have the burden of approval.

[00:15:06] Speaker 01:
When you say it's their burden to put it in, now one of the things Judge Dyke points out in his concurrence slash dissent is that the party with greater information, which is the patentee typically, is the party that bears the burden of making sure that the licensing agreement is sufficiently complete to be informative.

[00:15:29] Speaker 01:
Why shouldn't that be the case here as well?

[00:15:31] Speaker 01:
You could have put in something about the 836.

[00:15:35] Speaker 01:
Instead, you're saying it's their burden.

[00:15:36] Speaker 01:
Where do you get the conclusion that it's their burden?

[00:15:40] Speaker 05:
Well, because they're asserting the licensed defense.

[00:15:43] Speaker 05:
Everybody agrees it's not expressly in.

[00:15:45] Speaker 05:
Everybody knows that the 836 patent existed.

[00:15:48] Speaker 01:
But you recognize that Judge Dyke, on whom you've relied, took the opposite position with respect to the burden.

[00:15:56] Speaker 01:
in his dissent.

[00:15:57] Speaker 01:
You know the part of the dissent I'm talking about?

[00:15:59] Speaker 05:
I do know the part of the dissent, but that was a situation where the other side didn't know about the patents that were pending in the patent office at the time and then issued later.

[00:16:10] Speaker 05:
That's a different scenario.

[00:16:11] Speaker 05:
You can't

[00:16:12] Speaker 05:
It's not for us to... We all agree that they knew about the 836 patent.

[00:16:17] Speaker 05:
It's not like we hid that from them.

[00:16:19] Speaker 05:
You're right.

[00:16:19] Speaker 05:
If we had not told them about it, then we would have the burden to stand to say, we had to tell you about it in order for that to be a part of your agreement.

[00:16:28] Speaker 05:
But they knew about it.

[00:16:30] Speaker 05:
If they wanted it in there, they knew how to put it in there.

[00:16:32] Speaker 05:
They put it in the covenants, why couldn't they put it in the license agreement?

[00:16:37] Speaker 00:
Counsel, your time has expired.

[00:16:38] Speaker 00:
We'll give you two minutes for a bottle.

[00:16:40] Speaker 05:
Thank you, Your Honor.

[00:16:42] Speaker 00:
Mr. Jamison.

[00:16:52] Speaker 04:
Thank you, Your Honor.

[00:16:53] Speaker 04:
May it please the Court?

[00:16:55] Speaker 04:
The Court should affirm the District Court's determination of summary judgment that this suit is borrowed by an implied license based on the 836 patent.

[00:17:05] Speaker 04:
When you reviewed these agreements, the intent of the parties was clear.

[00:17:10] Speaker 04:
The language was unambiguous.

[00:17:12] Speaker 04:
that Sienna and Fujitsu were negotiating for complete peace for itself and with respect to its customers such as AT&T, that they would be immune from future litigation on not only the seven enumerated patents that were the subject of the Sienna and Fujitsu litigation, but for any patents that were in those families up and down the chain, if you will.

[00:17:38] Speaker 00:
You're not asserting an express license.

[00:17:41] Speaker 00:
No, no.

[00:17:43] Speaker 04:
And to reflect the intent of the parties and the scope of protection that they were seeking, they used the broadest language that I think you can really come up with in these circumstances.

[00:17:55] Speaker 02:
To cover a chain of applications.

[00:17:57] Speaker 02:
To cover a chain of applications.

[00:17:58] Speaker 02:
A particular line of patents.

[00:18:00] Speaker 02:
I mean, this doesn't cover the entire family of telecom patents.

[00:18:06] Speaker 04:
No.

[00:18:07] Speaker 04:
It covered everything in the chain up and down through the use of

[00:18:12] Speaker 04:
Parents, continuations, continuations and parts, provisionals.

[00:18:17] Speaker 02:
But it didn't cover, for example, siblings or cousins of the patents ensued.

[00:18:24] Speaker 04:
It did not cover them expressly.

[00:18:28] Speaker 04:
But what we know is that- So it could have been clearer.

[00:18:32] Speaker 04:
Huh?

[00:18:32] Speaker 01:
I mean, you were saying it was as clear as it could be made.

[00:18:36] Speaker 01:
It could have been clearer.

[00:18:36] Speaker 01:
You could have been expressly covered, and we wouldn't be here.

[00:18:42] Speaker 01:
kind of surprised and puzzled, really, that competent counsel ended up with four agreements that have got us into court wondering what those agreements, the scope of those agreements really is.

[00:18:55] Speaker 04:
Your Honor, in hindsight, when Cheetah brings a lawsuit three years after the fact against a different entity, a customer, on a certain patent,

[00:19:10] Speaker 04:
It's always easy to go back in time and make the observation that we could have covered that 836 patent expressly.

[00:19:23] Speaker 01:
Wasn't it kind of obvious when the 836 was in the covenants and it was not in the license?

[00:19:30] Speaker 01:
What was the purpose of that distinction?

[00:19:32] Speaker 01:
Presumably somebody thought about that.

[00:19:35] Speaker 04:
The license agreement

[00:19:39] Speaker 04:
covers the seven patents that were at issue, and then the continuations, the continuations in part, that flowed from those patents.

[00:19:51] Speaker 04:
The covenants, as they acknowledge in the gray brief at 11, is a separate agreement with separate rights.

[00:19:59] Speaker 04:
And the covenants not only covered the patents that were the subject of the underlying litigation,

[00:20:08] Speaker 04:
and the patents that were in the family, but the covenant actually extends to different families of patents.

[00:20:14] Speaker 02:
We understand.

[00:20:15] Speaker 02:
We've read the licenses and covenants, so you're describing them and we already know that already.

[00:20:22] Speaker 02:
As I understand the question coming from Judge Bryson is, why is there this discrepancy?

[00:20:26] Speaker 02:
Why is there daylight in terms of the scope of coverage between the covenant not to sue and the licenses when it comes to certain patents, especially the 836?

[00:20:36] Speaker 02:
The 836 is enumerated in at least one of the two covenants not to sue.

[00:20:40] Speaker 02:
Why wasn't it likewise contemplated for express coverage in the licenses?

[00:20:46] Speaker 02:
What is the answer to the why question?

[00:20:48] Speaker 04:
Well, I think with respect to the license agreement, the lie is that the parties, rather than enumerating every patent that could be covered, they used the common vernacular, parents, continuations, continuations in part, in an effort to capture fields of invention.

[00:21:09] Speaker 04:
And the fields of invention that were expressly covered included the 925 patent.

[00:21:17] Speaker 01:
But not the 836.

[00:21:18] Speaker 04:
It does not expressly include the 836.

[00:21:21] Speaker 04:
And I think Judge Bryson, you asked the question, and this really is the timing issue.

[00:21:28] Speaker 04:
The claims of the 836 patent, this is a, and this gets to whose burden is it to articulate what should be in the agreement and what should be out of the agreement.

[00:21:41] Speaker 04:
But the claims of the 836 patent

[00:21:45] Speaker 04:
They could have been appended to the claims of the 925 patent, and the 925 patent claims could have been appended to the 836 patent.

[00:21:53] Speaker 04:
But for whatever reason, CHITA in its prosecution activities, they went about it a different way.

[00:22:00] Speaker 04:
But if the claims of the 836 patent had been appended to the 925 patent, we would be expressly licensed.

[00:22:08] Speaker 04:
It's because of the whole point that the 836

[00:22:12] Speaker 04:
is a continuation of the 925.

[00:22:15] Speaker 04:
And what the parties bargained for was complete peace with respect to fields of invention.

[00:22:20] Speaker 04:
They didn't bargain, contrary to what we heard.

[00:22:23] Speaker 04:
They didn't bargain for peace with respect to patent claims.

[00:22:28] Speaker 01:
Let me ask you this question.

[00:22:29] Speaker 01:
The issue that seems, I think we're all in agreement probably on this, the key issue with respect to the licensing part of this appeal is the question of timing.

[00:22:41] Speaker 01:
General Protect seems to cover the universe of cases involving continuations, which this case involves, in which the patent that's now at issue was not issued until after the agreement.

[00:22:58] Speaker 01:
All right.

[00:22:58] Speaker 01:
This is not such a case.

[00:23:00] Speaker 01:
This is a case in which the patent was issued before the agreement.

[00:23:03] Speaker 01:
So the question is, given that the

[00:23:07] Speaker 01:
gist of the rationale in general protect is you've made an agreement.

[00:23:12] Speaker 01:
You shouldn't be allowed to suddenly pop up with a newly issued patent and say, aha, gotcha, that you're pulling a rabbit out of the hat after the fact.

[00:23:25] Speaker 01:
But the argument made by the other side is this is not a rabbit that's coming out of the hat.

[00:23:29] Speaker 01:
This is a rabbit that's been out of the hat.

[00:23:32] Speaker 01:
And therefore, there's no surprise.

[00:23:34] Speaker 01:
Why is that rationale?

[00:23:36] Speaker 01:
not an appropriate basis for distinguishing between the previously issued patents and the not previously issued patents.

[00:23:47] Speaker 04:
Multiple answers to that question, Judge.

[00:23:51] Speaker 04:
First, in Transcor, the Federal Circuit said that, quote, the timing of patent issuance is of no more relevant to the implied license inquiry than the timing of acquisition.

[00:24:02] Speaker 01:
Well, I think we can all agree that

[00:24:04] Speaker 01:
Regardless of the particular phrases that are used here and there in some of the opinions, there is no opinion of this court that deals with this precise situation.

[00:24:16] Speaker 01:
General protect deals with the not yet issued patent.

[00:24:20] Speaker 01:
This is an already issued patent.

[00:24:22] Speaker 01:
So what is, as a policy matter, the question that we're faced with is why we should extend general protect.

[00:24:30] Speaker 01:
So other than

[00:24:32] Speaker 01:
I know I'm familiar with the language that you quoted.

[00:24:35] Speaker 01:
I'm not persuaded that it is dispositive here.

[00:24:38] Speaker 01:
But give me a policy reason for why the same policies that animated the court in protact apply here.

[00:24:44] Speaker 04:
Your Honor, and this gets to the burden, if you will, that's discussed in both general protact and quite frankly discussed a lot by Judge Dyke in the dissent in endo forma.

[00:24:58] Speaker 04:
And you ask the question about who really is the master of the information, and who really understands the patent portfolio, and who understands where they're going with their patent portfolio.

[00:25:13] Speaker 04:
And there's a clear answer to that.

[00:25:16] Speaker 04:
And that's the licensor.

[00:25:18] Speaker 04:
It's not the licensee.

[00:25:20] Speaker 04:
And for example, if we take Cheetah's argument,

[00:25:26] Speaker 04:
Everybody knew about the Verizon deal, and everybody knew about the 836 patent, and everybody knew that it existed.

[00:25:38] Speaker 04:
If Cheetah intended to sue AT&T, why didn't they exclude AT&T from the license agreement expressly?

[00:25:48] Speaker 04:
They excluded other parties.

[00:25:49] Speaker 04:
They excluded Cisco.

[00:25:51] Speaker 04:
They excluded Tellabs expressly.

[00:25:53] Speaker 04:
They excluded other parties that they were in litigation with.

[00:25:57] Speaker 04:
Parties all the time exclude future litigants from license agreements expressly.

[00:26:04] Speaker 04:
They didn't.

[00:26:05] Speaker 04:
There are no disavowals, no exclusions with respect to the A36 patent or AT&T in any of these agreements.

[00:26:16] Speaker 04:
Interestingly,

[00:26:18] Speaker 04:
The implied license doctrine existed at the time that these agreements were negotiated.

[00:26:23] Speaker 04:
If you look at the Verizon agreement, which they want you to, twice in the Verizon agreement, CHITA has provisions that state that no implied license will be inferred from anything in these agreements.

[00:26:38] Speaker 04:
It's in there twice.

[00:26:40] Speaker 04:
It wasn't the subject of the briefing.

[00:26:47] Speaker 04:
It's in the Verizon Agreement Appendix 776 at paragraphs 3.3 and 8.1c.

[00:26:57] Speaker 04:
They twice have a no implied license reservation of rights or disavowal in the Verizon agreements.

[00:27:04] Speaker 04:
It does not exist in any of these agreements.

[00:27:09] Speaker 04:
Why didn't

[00:27:10] Speaker 04:
Why didn't CHITA expressly exclude the 836 patent if they intended to sue on it in the future?

[00:27:17] Speaker 04:
The point is the entity that knows where they're going down the road, it's not Sienna, it's not Fujitsu, and it's certainly not AT&T, who's not even, you know, obviously at the negotiating table.

[00:27:33] Speaker 04:
It's CHITA.

[00:27:35] Speaker 04:
So all the facts are on the table, and against the backdrop of these facts,

[00:27:40] Speaker 04:
There are no exclusions at all.

[00:27:44] Speaker 04:
And under General ProTech and under endo pharma, the burden was on them.

[00:27:50] Speaker 04:
That's crystal clear.

[00:27:51] Speaker 04:
I mean, I can read all the quotes from you, but I'm sure you're familiar with them.

[00:27:54] Speaker 04:
The burden was on the license or that if it intended to pull back from the scope of an agreement, they needed to say so, do so expressly.

[00:28:04] Speaker 04:
And that's controlling law.

[00:28:06] Speaker 04:
They didn't do it here.

[00:28:09] Speaker 04:
That should be enough to carry the day.

[00:28:17] Speaker 01:
Do you want to talk about the covenant at all?

[00:28:19] Speaker 04:
You know, Your Honor, absent questions from the court will stand on the briefing on the covenant, but I'm happy to answer any questions that you have about it.

[00:28:28] Speaker 04:
I think, you know, well, I'll make the following observations about the covenant.

[00:28:33] Speaker 04:
It is a freestanding agreement.

[00:28:35] Speaker 04:
If you look at the preamble,

[00:28:37] Speaker 04:
The preamble makes clear that it's agreement that's separate and a standalone agreement from the license.

[00:28:46] Speaker 04:
Cheetah acknowledges that in the gray brief.

[00:28:49] Speaker 01:
What did the covenant actually convey, in your view, by way of actual rights that were not already conveyed by the license?

[00:28:57] Speaker 04:
The license agreement dealt with five different families of patents that were at issue in the Sienna and Fujitsu litigation.

[00:29:08] Speaker 04:
The covenant actually gets into other families of patents, and it identifies them expressly.

[00:29:16] Speaker 04:
And so it gave an additional layer of protection with respect to the portfolio.

[00:29:20] Speaker 01:
So the families referred to in the license are different from the families referred to in the covenant?

[00:29:28] Speaker 04:
Well, all of the patents that are covered in the license agreement are also in the covenant, but there are additional patents in the covenant that are not part of... You mean like the 836, except for the fact that you say the 836 was covered by the implied license.

[00:29:45] Speaker 01:
Right, and then there's... So the difference with respect to the 836 is zero as far as you're concerned, because you said, ah, we have an implied license.

[00:29:52] Speaker 04:
Correct.

[00:29:53] Speaker 04:
And then we have the covenant with respect to the 836 as well.

[00:29:56] Speaker 04:
But then there are literally in the covenant, there are other completely unrelated families of telecommunications patents that are covered by the covenant that would not have fallen within the scope of the license agreement.

[00:30:11] Speaker 02:
If the license, when it defines which patents are the licensed patents, didn't begin with

[00:30:20] Speaker 02:
It identifies the license, the litigated patents, the patents in suit.

[00:30:26] Speaker 02:
And then it talks about all parents and continuations and reexaminations.

[00:30:32] Speaker 02:
If it didn't say the word parents, then you wouldn't have an implied license.

[00:30:37] Speaker 02:
Is that right?

[00:30:39] Speaker 02:
Because the only way you get an implied license to the 836 is through the 925.

[00:30:44] Speaker 02:
The 925 was a parent of the 714.

[00:30:49] Speaker 03:
That is correct, Your Honor.

[00:30:52] Speaker 02:
So even though the 836 and the 714 share identical specifications for all intents and purposes, you wouldn't be able to enjoy an implied license in your view.

[00:31:06] Speaker 02:
And it's only through a different patent, a parent patent, that also has the same shared specification

[00:31:13] Speaker 02:
that you get to argue for an implied license.

[00:31:17] Speaker 02:
Yeah, but to be crystal clear.

[00:31:18] Speaker 02:
Is that your understanding of endo, I guess, is what I'm asking.

[00:31:21] Speaker 04:
Yeah.

[00:31:21] Speaker 04:
Well, I mean, to be crystal clear, the use of the word parent, by definition, creates an express license to the 925 patent.

[00:31:32] Speaker 04:
Right.

[00:31:32] Speaker 04:
Because it is a parent of the 714.

[00:31:35] Speaker 02:
Right.

[00:31:35] Speaker 02:
You are relying on an implied license of the 836 through the express license of the 925.

[00:31:43] Speaker 02:
not through an express license of the 714.

[00:31:46] Speaker 03:
That is correct.

[00:31:48] Speaker 02:
And so if you didn't have an express license to the 925, then under ENDO, I assume, there's no way you could argue just by having a license to the 714 that you had an implied license to the 836.

[00:32:02] Speaker 04:
Your Honor, I candidly have not thought about that permutation, but

[00:32:10] Speaker 04:
I mean, the way I understand general protect and the way I understand endo is that if you have an expressly licensed parent and you have a continuation from that, then you have an implied license.

[00:32:25] Speaker 04:
Do you have an implied license from what would they be cousins or sisters or brothers?

[00:32:34] Speaker 04:
Something like that I I first cousin once removed right I I I don't think that's where the case law is yet Thank you counsel has two minutes couple of points I want to respond to Council said that if the 925 patent

[00:33:03] Speaker 05:
had had the claims that are in the 836 patent in it, then we wouldn't be here.

[00:33:09] Speaker 05:
That's wrong.

[00:33:10] Speaker 05:
Because if the 925 patent had those same claims, we would have gotten a restriction requirement from the patent office.

[00:33:16] Speaker 05:
We would have filed a divisional application.

[00:33:18] Speaker 05:
And everybody agrees that that divisional would not be a licensed patent through implication.

[00:33:25] Speaker 05:
And we cited a case in AT&T.

[00:33:28] Speaker 05:
And Sienna commented on the case, it's Cascades AV versus Everts Microsystems 335 F sub 3rd, 1088 from the Northern District of Illinois in 2018.

[00:33:41] Speaker 05:
And this is AT&T's statement trying to distinguish that case.

[00:33:44] Speaker 05:
It says there was no implied license to divisional, emphasizing divisional, patents, which resulted from a finding

[00:33:50] Speaker 05:
that a patent application discloses two or more distinct inventions.

[00:33:54] Speaker 05:
That's where we're at.

[00:33:55] Speaker 05:
We have two or more distinct inventions.

[00:33:57] Speaker 05:
They're claimed separately.

[00:33:58] Speaker 05:
They have nothing to do with each other.

[00:34:00] Speaker 05:
You don't have a divisional here.

[00:34:02] Speaker 05:
We don't, but that's form over substance.

[00:34:05] Speaker 05:
It's divisional in the sense that they're separate inventions.

[00:34:09] Speaker 02:
Maybe it's form over substance to try to make a distinction between divisionals and continuations.

[00:34:14] Speaker 05:
It may be, but at least AT&T and we agree that those are different.

[00:34:18] Speaker 01:
This argument that you're making now about divisionals and so forth, I don't remember this being raised in your brief, was it?

[00:34:25] Speaker 05:
It was.

[00:34:26] Speaker 05:
We cited the Cascades case.

[00:34:27] Speaker 05:
They distinguished it.

[00:34:29] Speaker 05:
We made the point in our opening brief that the 836 patent has these different categories of inventions.

[00:34:38] Speaker 01:
I don't remember you're making an argument that, therefore, that that's why you should win this case.

[00:34:43] Speaker 01:
I mean, you may have made an observation

[00:34:45] Speaker 01:
I didn't see it.

[00:34:47] Speaker 05:
True.

[00:34:47] Speaker 05:
We didn't say that.

[00:34:48] Speaker 05:
But we made the point that it's about the scope of the invention and not about the scope of the disclosure of the application.

[00:34:55] Speaker 05:
Where does General ProTech say that?

[00:34:58] Speaker 01:
That seems to be contrary to General ProTech.

[00:35:00] Speaker 05:
It is contrary to General ProTech, because General ProTech doesn't focus on the claims, which Transport does.

[00:35:05] Speaker 05:
As Endo points out, it's about the claim.

[00:35:08] Speaker 05:
You can't have, otherwise the licensing gets a windfall.

[00:35:11] Speaker 02:
Something you should be arguing to the end bank court, it sounds like.

[00:35:14] Speaker 05:
Don't think so because oh we can overturn general protect.

[00:35:17] Speaker 05:
I don't think I don't think you need to because you can distinguish general protect On the timing issue on the time which brings us back to timing.

[00:35:24] Speaker 05:
That's right issue It's a narrow presumption.

[00:35:26] Speaker 05:
It should not be broadened all right cover every continuation.

[00:35:29] Speaker 05:
Okay.

[00:35:30] Speaker 05:
I see my time's up Thank you.

[00:35:31] Speaker 00:
Thank you counsel.

[00:35:32] Speaker 00:
We will take this on advisement