[00:00:00] Speaker 04: For his number 18, 22, 15, Echo Brands LLC versus Adrian Rivera-Minez Enterprises. [00:00:30] Speaker 04: OK, Mr. Delgado. [00:00:34] Speaker 02: Good morning, Your Honors, and may it please the Court. [00:00:36] Speaker 02: Although there are six different issues on appeal, there are three specific ones that I want to speak about this morning for purposes of oral argument. [00:00:45] Speaker 02: And they are as follows. [00:00:46] Speaker 02: The first deals with the claim construction of claim 8 of the 855 patent and whether the district court committed error when it failed to include the preamble as a limitation of claim 8. [00:00:58] Speaker 02: And the second and the third issues will be with respect to the fee awards that the district court awarded during the case. [00:01:04] Speaker 02: Circling back to issue one, we believe that the district court did commit error when it failed to import the limitations of the preamble into the claim eight of the 855 patent. [00:01:15] Speaker 02: The test for that is simply that [00:01:18] Speaker 02: a preamble that is essential. [00:01:21] Speaker 04: But it's not really just a preamble question. [00:01:23] Speaker 04: The language of the claim itself suggests that the beverage brewer is something separate because it talks about a beverage brewing device for use with a single service beverage brewer. [00:01:39] Speaker 02: Your Honor, the claim language uses terms from the beverage brewer device in such a way that it is essential to understand the terms of the claim. [00:01:48] Speaker 02: And in fact, other claim terms cannot be understood without reference to the beverage brewer. [00:01:54] Speaker 02: And that is the test for determining whether or not a preamble is limiting. [00:01:58] Speaker 04: I don't think you're addressing the point I was making. [00:02:02] Speaker 04: And that is that the language of the claim itself talks about for use with. [00:02:10] Speaker 04: the language of the preamble itself for use with it. [00:02:14] Speaker 04: So that would seem to suggest that a brewing device is different from the beverage brewer. [00:02:23] Speaker 02: So I agree that it says for use with, but I don't think the use of that phrase is not dispositive on the issue of whether or not the terms that come from the brewing device are essential or not essential. [00:02:36] Speaker 02: The fact is that without the terms from the brewing device, the terms from the claim itself just do not make sense. [00:02:43] Speaker 04: It certainly suggests that a brewing device is not the brewer itself. [00:02:49] Speaker 02: I don't think so. [00:02:51] Speaker 02: I think if we look to the claim in its entirety and we look at the prosecution history of the child application that came from the 855 patent where the examiner required the rural elements to be in the claim itself indicate that [00:03:07] Speaker 02: brewer elements are necessary for purposes of this claim. [00:03:11] Speaker 02: So let me stay on that point. [00:03:13] Speaker 03: So if you wanted to claim this reusable capsule that you plug into the brewing device separate from the brewing device, how would you claim it? [00:03:24] Speaker 03: You still have to describe what the capsule is, its various structure, and how it's going to work in that brewer, don't you? [00:03:33] Speaker 02: I think you do, but I think you can do that in a way that doesn't incorporate some of the elements. [00:03:37] Speaker 02: For example, when you're talking about outlet probe receptacles, there are ways you can use by talking about the depth of an outlet probe receptacle without referencing the specific parts of the brewer, such as the needle and the specific needle that comes with a single server, a single serve brewer. [00:03:55] Speaker 03: How? [00:03:56] Speaker 03: If the point of this is not a generic [00:04:00] Speaker 03: capsule that can be used with any brewer device, but a specific reusable capsule that can be used with a specific machine, don't you have to describe it with specificity what that machine is and how they fit together? [00:04:14] Speaker 02: Yes, I think you have to describe the machine. [00:04:16] Speaker 02: But again, I don't think you have to use the terms from the machine in such a way that make them indispensable to the understanding of the claim, which, again, is what happened. [00:04:26] Speaker 03: This argument baffles me. [00:04:28] Speaker 03: Is this the reason? [00:04:28] Speaker 03: Is this what the willful infringement issue is based on? [00:04:34] Speaker 03: No, Your Honor. [00:04:36] Speaker 02: I don't think so. [00:04:37] Speaker 02: I think that's a separate issue. [00:04:39] Speaker 03: But I think the- This wasn't your only defense to willful infringement. [00:04:44] Speaker 02: Correct. [00:04:46] Speaker 02: To willful infringement, that is correct. [00:04:47] Speaker 02: We had other defenses to willful infringement. [00:04:50] Speaker 02: This was part and parcel of the fact that we stipulated to direct infringement. [00:04:57] Speaker 02: If the brewer is not a part of the claim, which is what the district court held, we had to stipulate to direct infringement because of the container and the way that the container was claimed. [00:05:09] Speaker 03: It just baffles me how you could argue when everything about the language of this claim is talking about a brewing device as the invention and describes the basic structure function of it and all the like and Only the time it mentions the actual brewers just to say that it's for use with this But it doesn't claim the brewer [00:05:31] Speaker 02: Well, I disagree with that, Your Honor. [00:05:33] Speaker 02: I think if you look at the figures and you look at the specification, the brewer is mentioned throughout. [00:05:37] Speaker 02: And when you look at the child application of the 855 patent, it does claim a brewing system in its entirety. [00:05:44] Speaker 02: It claims the brewer and the capsule. [00:05:47] Speaker 02: And the reason that it does that is because the patent office required them to incorporate the terms from the brewer in order to achieve patentability. [00:05:54] Speaker 03: But this claim doesn't have a system. [00:05:57] Speaker 03: At least the representative one I'm looking at. [00:05:59] Speaker 03: Independent claim 18 Doesn't isn't a system point. [00:06:04] Speaker 02: That's correct But that's only because of a hiccup in the patenting process in other words the child What do you mean? [00:06:09] Speaker 02: It's a hiccup in the path? [00:06:10] Speaker 03: I'm happy to explain that if it was allowed as a single claim to the brewing Device rather than a system claim then that's what we have to look at it [00:06:19] Speaker 02: It was allowed only as a result of having a different examiner than the examiner from the child application. [00:06:25] Speaker 02: And the precedent from this court makes clear that the prosecution history of related patents is important. [00:06:30] Speaker 03: Do you have other arguments in this appeal? [00:06:32] Speaker 02: We do have other arguments, Your Honor, but not with respect to that issue. [00:06:37] Speaker 02: So the second and third issue that I wanted to speak to are the fee awards. [00:06:42] Speaker 02: The second fee award was granted as a result of the district court granting Echo's motion for non-infringement. [00:06:52] Speaker 02: And our position is that the district court's claim construction erred when it claimed that the passageway, or when it construed passageway from the 320 patent to be narrow. [00:07:02] Speaker 02: And that word narrow is contrary to a specific embodiment that is found in the patent. [00:07:10] Speaker 02: And by that, I mean here the 320 patent. [00:07:12] Speaker 04: Yeah, but basically in terms of invalidity, your argument is that a passageway can be just an opening, right? [00:07:28] Speaker 04: Correct. [00:07:29] Speaker 04: Any kind of opening? [00:07:31] Speaker 04: Correct. [00:07:32] Speaker 04: That seems hard. [00:07:33] Speaker 04: It may be that the district court's construction is not correct, but it doesn't seem to me that a passageway is just an opening. [00:07:44] Speaker 02: Your Honor, if the district court's construction is not correct, then a grant of summary judgment based on that construction would not be correct. [00:07:51] Speaker 02: It would have to be reversed and remained. [00:07:53] Speaker 04: Summary judgments reviewed de novo, we're not talking about fact-finding here. [00:07:59] Speaker 02: That's true, but nevertheless, if the construction is incorrect, then it would have to be reversed for further fact-finding. [00:08:05] Speaker 02: Why? [00:08:06] Speaker 04: We can look at the record and see whether under the correct construction, summary judgment was properly granted. [00:08:12] Speaker 02: The district's court's construction of passageway was based on its own interpretation. [00:08:19] Speaker 02: It was not offered by either party. [00:08:21] Speaker 02: And with respect to whether or not it can be only an opening, the patent specification uses the words opening and passageway interchangeably, which is something that Echo admitted in one of its claim construction briefs. [00:08:31] Speaker 02: They moved away from that position here on appeal, but judicial estoppel precludes them from doing that. [00:08:36] Speaker 01: The court, the court construed passageway as a narrow space of some depth or length connecting one place to another. [00:08:45] Speaker 02: The district court, yes, that is it. [00:08:46] Speaker 01: The district court did. [00:08:47] Speaker 01: Yes. [00:08:48] Speaker 01: And is there anything in the specification regarding the required depth or length of a narrow space? [00:08:57] Speaker 02: Your Honor, the only length that is discussed is described in mathematical terms. [00:09:01] Speaker 02: So it describes the length as 5 millimeters wide and having a variable length anywhere from 1 millimeter to 20 millimeters. [00:09:08] Speaker 02: So our position is that by saying narrow, it limits the passageway to the 20 millimeter length, whereas a passageway that has 5 millimeters in width and only 1 millimeter in length is not, by definition, narrow. [00:09:23] Speaker 02: And that's why we believe that that was erroneous. [00:09:26] Speaker 02: The third argument that I'd like to talk about is the fee award with respect to the obviousness determination. [00:09:34] Speaker 02: In other words, that the 320 plan was declared obvious and invalid, and the district court awarded fees in connection with that. [00:09:45] Speaker 02: Echo moved for summary judgment on the issue of obviousness. [00:09:50] Speaker 02: Judge Lasnik denied that motion for summary judgment and said that there was a tribal issue of fact on the issue of obviousness and we had to go to trial. [00:09:58] Speaker 02: So we did go to trial. [00:10:00] Speaker 02: After trial, Judge Donahue, who tried the case, [00:10:03] Speaker 02: issued a fee award on the issue of obviousness, concluding that we didn't put forth a strong enough defense. [00:10:12] Speaker 02: We've cited cases that all stand for a very simple proposition that if your position is strong enough to avoid summary judgment, [00:10:20] Speaker 02: then it cannot possibly be so sanctionable and frivolous as to merit an award on the back end essentially. [00:10:27] Speaker 04: I'm not sure that the cases stand for that proposition. [00:10:30] Speaker 04: They certainly stand for the proposition that the denial of summary judgment is something that needs to be taken into account. [00:10:38] Speaker 04: But which case says that the denial of summary judgment includes a fee award after trial? [00:10:45] Speaker 02: So Your Honor, the checkpoint case says that where there is no misrepresentation, a party can rely on denial of a motion for summary judgment. [00:10:54] Speaker 02: Can rely on, but it doesn't say that this includes a fee award. [00:11:00] Speaker 02: Fair enough. [00:11:02] Speaker 02: A party can rely on a motion, denial of motion for summary judgment, in connection with a fee award. [00:11:08] Speaker 02: But here, the fee award was made without consideration of the denial on the motion for summary judgment. [00:11:15] Speaker 03: And so what do you mean it was made without consideration? [00:11:18] Speaker 03: The judge certainly knew that summary judgment had been denied. [00:11:24] Speaker 02: But there was no analysis of how that denial of summary judgment played into what was presented in trial. [00:11:28] Speaker 02: And keep in mind, there's two different judges here. [00:11:31] Speaker 02: So the award, to the extent that one was. [00:11:34] Speaker 03: Sure, but they're both the trial court judges. [00:11:35] Speaker 03: They get a look at the record. [00:11:37] Speaker 03: They get to make a decision within their discretion. [00:11:39] Speaker 03: And we review it for an abuse of discretion. [00:11:41] Speaker 03: And we assume they knew what happened. [00:11:46] Speaker 02: OK, well, if you make that assumption, certainly within the purview of this court, but again, there was no indication in the order that that actually occurred. [00:11:54] Speaker 04: Did you argue that to him, that there should be no fee award because of the summary judgment denial? [00:12:01] Speaker 02: I believe we did. [00:12:02] Speaker 02: I can't remember specifically if we did or not. [00:12:04] Speaker 02: I apologize, Your Honor. [00:12:06] Speaker 02: You would be well off to be familiar with that. [00:12:11] Speaker 02: When I sit down, I'll look at that again. [00:12:13] Speaker 01: Can you address the issue of the jury instruction? [00:12:16] Speaker 02: Sure. [00:12:16] Speaker 02: I was going to do that in rebuttal, but I can do that now. [00:12:18] Speaker 02: Your Honor, in order for HECO to prevail on its argument that the jury instruction was erroneous, they would have to show that the instruction as a whole failed to capture the law correctly and show harm. [00:12:32] Speaker 02: In this case, we don't think they can show harm for a couple of different reasons. [00:12:35] Speaker 03: Number one, the jury instruction had to address whether the instruction is correct first. [00:12:41] Speaker 02: Sure. [00:12:44] Speaker 03: I mean, I know you pulled it largely from a model jury instruction from the Federal Circuit Bar Association, but it seems a little problematic to me that it's directing part of the standard to the jury to determine whether the jury thinks it's worthy of punishment. [00:13:00] Speaker 03: That seems to me to go to the ultimate question of whether enhanced damages should be awarded, which is what the district court should decide, right? [00:13:09] Speaker 02: I disagree with that. [00:13:11] Speaker 03: You disagree with that? [00:13:13] Speaker 02: I mean, in practice, the district courts have been awarding enhanced damages. [00:13:18] Speaker 03: I think if you look at Felton- I mean, it's not really worth having a discussion with you if you can't read Halo and recognize that the ultimate question of whether enhanced damages is a question for the judge. [00:13:31] Speaker 03: Questions of fact like willful infringement can go to the jury. [00:13:37] Speaker 03: But the ultimate question of whether or not to award enhanced damages is always for the judge, even if he asks for an advisory opinion from the jury. [00:13:47] Speaker 03: Is that not a correct statement of the law? [00:13:49] Speaker 02: Your Honor, I think Halo has to be read in context with Felner. [00:13:52] Speaker ?: Okay. [00:13:53] Speaker 02: And Feltner says that statutory damages, which are punitive in nature, a civil litigant can get a Seventh Amendment jury trial on statutory damages. [00:14:05] Speaker 02: If enhanced damages are there to punish a civil litigant, just as statutory damages would be, then one would surmise that enhanced damages can also be a jury issue. [00:14:18] Speaker 02: To circle back to the question about whether or not the construction was correct, we believe it was because when you look at the words egregious, willful, wanton, malicious, conscious disregard in halo, these all appear together basically in two sentences right next to each other. [00:14:33] Speaker 02: And as a result of that, we believe that there is synonymity between these words. [00:14:37] Speaker 03: But that's only true if the jury gets to decide all of those questions, not if one of them is for the district court. [00:14:44] Speaker 02: No, I think that there can be synonymous without that determination. [00:14:47] Speaker 02: In other words, if willfulness and maliciousness and egregiousness are all synonymous, then all of those can make their way into that. [00:14:52] Speaker 03: And punishment. [00:14:54] Speaker 02: No. [00:14:55] Speaker 03: Because punishment is the sentence that's problematic here. [00:14:58] Speaker 03: Because that seems to me to be the ultimate purpose of enhanced damages, which is to punish the willful infringer. [00:15:05] Speaker 03: And that question, just assume I'm right. [00:15:08] Speaker 03: I'm tired of arguing about this. [00:15:09] Speaker 03: Just assume I'm right, that that question can only be decided by the district court. [00:15:13] Speaker 03: Isn't having that question about punishment in a jury instruction problematic? [00:15:19] Speaker 02: If I assume that you're correct, then yes. [00:15:22] Speaker 02: the worthy of punishment language might be problematic. [00:15:25] Speaker 02: But when we read the entire instruction as a whole, it becomes harmless error, particularly because this court has created it. [00:15:32] Speaker 03: The district court didn't seem to think so. [00:15:35] Speaker 02: I understand that that's what the district court said. [00:15:37] Speaker 02: But when you look at the facts of the entirety. [00:15:39] Speaker 03: Well, that's not our call, right? [00:15:40] Speaker 03: The district court is the entity that has the discretion to determine, in the first instance, whether enhanced damages [00:15:50] Speaker 03: are available, and if he said he could have considered them and might have considered them absent this finding, then that's a call for him to make, not for us to look at the record and substitute our judgment in the first place, is it? [00:16:02] Speaker 02: No, I think this court can determine whether or not, based on the record before it, the error would or not have been harmless. [00:16:09] Speaker 04: Part of your problem here is it seems to me you've got the wrong standard for harmless error in your brief. [00:16:16] Speaker 04: What you argue is that the jury could have [00:16:19] Speaker 04: found that this was not willful. [00:16:24] Speaker 04: And that may be, but that's not sufficient to show harmless error. [00:16:29] Speaker 04: You have to show that the evidence was such that the jury had to find that it was not willful. [00:16:36] Speaker 04: So the whole context of your argument is not correct, it seems to me. [00:16:44] Speaker 02: Well, Your Honor, I respectfully disagree, because if you look at the four factual- Wait, wait, wait. [00:16:49] Speaker 02: You disagree with me about the standard? [00:16:51] Speaker 02: The standard is- No, not on the standard. [00:16:53] Speaker 02: On what the evidence showed. [00:16:54] Speaker 04: OK. [00:16:55] Speaker 04: All right. [00:16:56] Speaker 04: Well, we're out of time here. [00:16:58] Speaker 04: We'll give you two minutes for a model. [00:17:00] Speaker 04: Thank you. [00:17:09] Speaker 04: Let's turn to the willfulness instruction here. [00:17:19] Speaker 04: It does seem to me on the face of it that it allows the jury to find willful infringement if the infringement was deliberate. [00:17:30] Speaker 04: It does allow that to happen. [00:17:35] Speaker 00: your honor you're correct it does say among examples malicious deliberate consciously wrongful or done in bad faith the problem is [00:17:43] Speaker 00: The inclusion of the only the most egregious behavior standard before basically tells the jury that you have to find a heightened form of willfulness, which may or may not include egregiousness. [00:17:55] Speaker 04: I'm not sure that's true because it says only the most egregious forms of behavior, instances of which are deliberate. [00:18:03] Speaker 04: So the jury is told you have to find it's egregious, but deliberate infringement is egregious behavior. [00:18:10] Speaker 04: So it seems to me [00:18:12] Speaker 04: a little hard to read that particular part of the instruction as saying that you have to find it's egregious. [00:18:22] Speaker 04: Really, in the abstract, what it seems to be saying is you have to find it's egregious and deliberate infringement is an example of the kind of egregious behavior we're talking about. [00:18:35] Speaker 00: Your Honor, the problem is when you [00:18:37] Speaker 00: predicate whether a finding of one of these degrees of willfulness on being egregious, you're immediately casting it in the light of a heightened standard. [00:18:46] Speaker 00: This court has long held that willfulness, there's a spectrum of standards. [00:18:49] Speaker 00: It can be as simple as deliberate or intentional, or it can be a heightened standard of malicious or done in bad faith. [00:18:56] Speaker 00: Here, this jury instruction specifically said, [00:18:59] Speaker 00: egregious, which cast in the light of the heightened standard. [00:19:02] Speaker 00: But that's not all. [00:19:03] Speaker 00: Council suggested that this need to be looked at at a whole. [00:19:06] Speaker 00: Well, then, what do you do when you have this additional issue of especially worthy of punishment? [00:19:12] Speaker 00: Because that takes it out of a whole different realm. [00:19:14] Speaker 00: And from the beginning, halo decoupled willfulness, which is a jury instruction looking for the subjective. [00:19:21] Speaker 00: We understand. [00:19:22] Speaker 00: We understand. [00:19:23] Speaker 00: OK, Your Honor. [00:19:24] Speaker 03: Let me ask you this, especially where the punishment line were in there and all we had was the last sentence about reserved for egregious behavior and has that whole list of [00:19:37] Speaker 00: uh... examples which includes merely deliberate would there be a problem here i think there would your honor halo mentioned the word egregious six times never in the context of defining willfulness it was always in the context of what constitutes an exceptional case there's two things here going on we have willfulness subjective intent whether they knew or should have known or acted with reckless disregard [00:20:03] Speaker 00: That's something for the jury to decide. [00:20:05] Speaker 00: When determining an exceptional case, which applies to 284 enhanced damages, which applies to 285, that is the province and always has been of the judge. [00:20:15] Speaker 00: You can't ask the jury to see whether this case stands apart from the others. [00:20:19] Speaker 00: This likely was the jury's first instance of ever seeing the case. [00:20:22] Speaker 00: That's the province of the judge who have seen many cases and to decide, does this case stand out different from others? [00:20:28] Speaker 03: So your view is that last sentence is also problematic, because whether something or not is egregious behavior is a question for the judge as well. [00:20:37] Speaker 00: It is, Your Honor, because then you go back and look at the read factors, the nine different factors, one of which is willfulness. [00:20:44] Speaker 00: Unfortunately, over the years, there has been a many decisions which have caused confusion with the court. [00:20:50] Speaker 00: In 2005, perhaps the best example of that was [00:20:53] Speaker 00: With due respect, that's hard to fathom. [00:21:11] Speaker 00: And what that's led to is that over the years, the courts have used it as a shorthand, district courts, as a shorthand. [00:21:16] Speaker 04: What case do you have from our court after HALO that says that referring to punishment in the jury instruction or egregious behavior in the jury instruction is harmful error? [00:21:30] Speaker 00: So I don't have one that says harmful air, but here's what I have, Your Honor, and I canvassed the cases. [00:21:37] Speaker 00: We have the Western Geico case, which talked about the fact that the patentee need only prove suggestive willfulness alone. [00:21:45] Speaker 00: In other words, it decoupled in that instance, and it was after Halo and spoke to Halo and said you have willfulness, and that's different than enhanced damages. [00:21:54] Speaker 00: And then we have the Arctic Cat case. [00:21:57] Speaker 00: uh... eight seventy six after thirteen fifty in two thousand seventeen where this court explained under halo willfulness can be found when there's a subjective willfulness nowhere in that case did they indicate an express or implied component of egregiousness that's what we have that's all true but i guess what you're saying is that we don't miss it issue first impression as to whether [00:22:21] Speaker 04: including references to punishment and egregious behavior to jury instruction as harmful error. [00:22:27] Speaker 00: I think it is, Your Honor. [00:22:29] Speaker 00: Unfortunately, the imprimatur of the Federal Circuit Bar Association for several years has been used. [00:22:36] Speaker 00: And that's all that we as litigants and courts have to rely upon because we don't have other jurisdictions. [00:22:41] Speaker 00: But here's what the result of that has been. [00:22:43] Speaker 03: Within a span of two months, did you propose a different jury instruction on this issue? [00:22:48] Speaker 00: We did, Your Honor. [00:22:49] Speaker 03: And it didn't include [00:22:50] Speaker 03: It wasn't the Federal Circuit bar. [00:22:53] Speaker 00: It was not. [00:22:54] Speaker 00: We specifically struck out language. [00:22:56] Speaker 00: We started with the Federal Circuit bar, and then the court, we raised the objection, and the court then asked for briefing. [00:23:03] Speaker 04: You originally agreed that the instruction was fine. [00:23:07] Speaker 00: Well, Your Honor, we preserved our objection. [00:23:09] Speaker 00: There's been no question about that. [00:23:11] Speaker 04: The judge allowed you to backtrack and change your position. [00:23:15] Speaker 00: Well, and I want to talk about how significant this is. [00:23:20] Speaker 00: And even if it is an issue of first impressions, one that the court needs to take up. [00:23:24] Speaker 00: We cited in our case the Erickson District Court case from Texas. [00:23:28] Speaker 00: We cited the Ballange case from Delaware. [00:23:32] Speaker 00: And then our case, within the span of two months in 2018, three different courts struggled with this, Judge Payne and the Erickson case. [00:23:40] Speaker 00: at first had an adjury instruction very much like the bar. [00:23:44] Speaker 00: He says, punishment and egregious to find willfulness. [00:23:47] Speaker 00: And then after arctic, he came back and said, all right, I understand now. [00:23:50] Speaker 00: It seems that we do need to decouple willfulness, which is... Okay, but the issue here... [00:23:57] Speaker 04: Why don't you just assume that we're not going to bless this instruction. [00:24:03] Speaker 04: We're not going to say, this is the way to do it. [00:24:05] Speaker 04: The question is whether we need to set aside the jury verdict and have a new trial because there was some language in here which was undesirable. [00:24:15] Speaker 04: Whether we have to define that that's harmful error and start all over again, which courts are reluctant to do. [00:24:22] Speaker 04: That's why there's a formal secure doctrine. [00:24:26] Speaker 00: Yes, Your Honor, but this case is one that mandates this. [00:24:29] Speaker 00: I couldn't probably have drafted facts that are more compelling to show that this was harmful error in this situation. [00:24:36] Speaker 01: You could have if it had happened this way. [00:24:38] Speaker 01: Let's look at the, if you look at the first paragraph of the instruction, and that's the one that contains the wording we're talking about, especially worthy of punishment, reserved for egregious behavior. [00:24:49] Speaker 01: But that's followed by a second paragraph that enumerates different instances, which all of them seem to me to be correct or proper. [00:25:01] Speaker 01: So assuming that there's some prejudicial effect as a result of the first paragraph of instruction number 40, isn't that cured in any way by the second paragraph that sets out a different instruction to the jury? [00:25:18] Speaker 00: I'll be very precise about the answer to your question. [00:25:20] Speaker 00: Is it cured in any way? [00:25:21] Speaker 00: I think that it helps, but do I think that it cures the prejudice caused by the first paragraph's requirement of punishment and egregious conduct? [00:25:30] Speaker 00: No, I do not. [00:25:30] Speaker 01: But that second part is fine, right? [00:25:33] Speaker 01: I mean, that would not be legal there. [00:25:34] Speaker 00: The second part is fine, that's correct, but unfortunately, taking it as a whole, it is legal error because it tells the jury, putting them in the place of the court, you have to compare this to others and find that this is especially egregious and especially worthy of punishment, all things of the providence of the judge. [00:25:50] Speaker 00: And in this case, Your Honor, the district court specifically recognized that if this was bad law, now unfortunately, [00:25:58] Speaker 00: the district court characterized the bar association instruction as law when it isn't. [00:26:03] Speaker 00: It's an attempt by the bar to be helpful. [00:26:06] Speaker 00: But he says, if this is bad, this was not harmless error. [00:26:10] Speaker 00: And we know this. [00:26:11] Speaker 00: We can never get inside the minds of the jury, but here we've gotten about as close as we can. [00:26:15] Speaker 00: The jury, after five and a half hours of deliberation, came back and said, we agree to everything except this one question. [00:26:22] Speaker 00: And we're hung on that, and we have very divergent views. [00:26:25] Speaker 00: And the response to the judge was, go back and read that instruction. [00:26:29] Speaker 00: And when they did, after what was obviously a close call, they came back. [00:26:33] Speaker 00: Well, in this situation, as this court recognized, the standard for harmless error is it's harmless if there's no way that the court or the jury could have found otherwise. [00:26:42] Speaker 00: Here, we know from the jury's own questioning that the jury very much could have found otherwise. [00:26:47] Speaker 04: It was teetering on a razor's edge. [00:26:52] Speaker 04: whether the evidence was sufficient to show willfulness under a correct standard, which is the second part of this instruction. [00:27:01] Speaker 04: We don't know. [00:27:02] Speaker 00: Your Honor, I think as you noted earlier, who is in the best position to ascertain whether or not it was harmless error? [00:27:08] Speaker 00: It seems like the district court judges that actually put forward that instruction. [00:27:12] Speaker 00: And that judge found clearly, if this was wrong, if the statement of the law is wrong, [00:27:17] Speaker 00: then I don't believe it was harmless. [00:27:20] Speaker 00: Moreover, if that was wrong, and this is remanded as it should solely for the determination of willfulness, then it will reconsider at that time the exceptional case for enhanced damages and attorney's fees. [00:27:32] Speaker 00: This is perhaps, as I said, the most classic case, scorched earth litigation. [00:27:37] Speaker 00: All the reasons that the judge looked out for exceptional [00:27:40] Speaker 00: He was teetering on the edge of granting more award of sanctions or enhanced damages, but for this wilfulness finding, because this was based on an inaccurate statement of the law and the jury was teetering on an edge, I don't see how it can be considered harmless. [00:27:56] Speaker 00: And even though the court is loath to remand, in this case, to affirm everything else, which was proper and I'm happy to talk about the other issues that were raised, they seem pretty pedestrian compared to this, [00:28:06] Speaker 00: But this case needs to be remanded for a jury determination of solely willfulness and after that a reassessment by the court within its purview about whether or not it is an exceptional case and further that enhanced damages and additional attorney fees may be warranted in this case of scorched earth litigation by ARM that finally needs to be stopped. [00:28:29] Speaker 01: Counsel, let's go back to the claim construction issue, okay? [00:28:34] Speaker 01: On page 12, this is appendix 12, page 12 we have the district court's opinion. [00:28:40] Speaker 01: And at the very end, the court says, the court finds that one skilled in the art would, in light of the intrinsic evidence, construe passageway as a narrow space of some depth or length, connecting one place to another. [00:28:53] Speaker 01: Where in the intrinsic evidence do we find any reference, if not a limiting requirement, that a passageway be narrow, that there be depth and length to that passageway? [00:29:09] Speaker 00: Your Honor, it's in the patent. [00:29:10] Speaker 00: Look at the figures. [00:29:12] Speaker 00: This is something I want to correct. [00:29:14] Speaker 00: The figures themselves show the difference between an opening, and I'll refer you to the capsule itself, which has a lid. [00:29:20] Speaker 00: There's an opening, which is a flat without depth or length. [00:29:24] Speaker 01: Figure 1 shows only a simple hold. [00:29:27] Speaker 01: It doesn't say narrow, and it doesn't refer to depth. [00:29:31] Speaker 01: Just a hole. [00:29:34] Speaker 00: Right. [00:29:35] Speaker 00: Figure 4, I believe, shows a hole in the top, and it shows the passageway where the needle goes in the bottom, which has depth or length, and it must have depth or length to allow for the needle. [00:29:46] Speaker 00: See, there is a difference in how the terms were used. [00:29:49] Speaker 00: Opening, as this court recognized, was not used the same as passageway. [00:29:54] Speaker 00: and this judge relying on the intrinsic evidence and how it was used where you say an opening in the top which is flat does not have depth versus a passageway. [00:30:03] Speaker 01: Where in the court's opinion does it say that? [00:30:06] Speaker 01: All it says is that it relies on the intrinsic evidence. [00:30:10] Speaker 00: So so I understand if I understand correctly that you're critical of the district court because it didn't refer to figure four which shows that the depth or the length or something that may be the case but it still was present in the the patent that the court looked at just because the patent didn't point to specifically figure so we can work. [00:30:28] Speaker 01: A limitation out of a single embodiment, correct? [00:30:32] Speaker 00: That's correct. [00:30:33] Speaker 00: But every embodiment that they talk about, even when they get down to defining the millimeters, how different it is, every single time they talked about the passageway, they talked about it being configured to receive the needle. [00:30:47] Speaker 00: In other words, something that had depth and length. [00:30:49] Speaker 00: Every time they talked about the opening on top of the lid, [00:30:52] Speaker 00: They did not talk about something with depth or length. [00:30:54] Speaker 00: So they used opening different than passageway. [00:30:57] Speaker 01: Why does the opening to receive the needle have to have some, let's say, narrowness to it or even depth? [00:31:07] Speaker 01: What can it just be like through a wire mesh? [00:31:10] Speaker 00: Well, it has to have depth or length because they say that it prevents the needle from penetrating the brewing material that's inside. [00:31:17] Speaker 00: So in other words, it has to have some kind of a depth to be able to act as an offset before the needle from piercing the contents of this container. [00:31:25] Speaker 00: So that's the difference between that and the opening at the top where the needle is meant to go in and pierce the container. [00:31:32] Speaker 04: The only, if we were to sustain [00:31:36] Speaker 04: the determination of invalidity of these claims. [00:31:40] Speaker 04: This infringement issue only affects the attorney's fees. [00:31:44] Speaker 00: You're right on. [00:31:45] Speaker 00: And that's the other thing. [00:31:46] Speaker 00: Um, the obviousness with the council, just like you did below some is no time dealing with it all because you can't overturn the jury writing of the pieces and the court's ultimate determination. [00:31:56] Speaker 00: The claims are going to be invalid, just like this court Hill last year in the federal circuit about claims five and 18. [00:32:02] Speaker 00: So it's a mood issue, but beyond that, it still does because of the way that they prosecuted those, not withstanding the fact that they should have known that they were invalid. [00:32:10] Speaker 00: This court held that the independent claims were invalid, and they pressed the issue, admittedly, simply to keep the injunction from the ITC alive against our client, precluding them for more than a year. [00:32:22] Speaker 00: They kept that alive all the way to the time of trial. [00:32:25] Speaker 00: They didn't participate in the special jury verdicts. [00:32:28] Speaker 04: They spent a little time. [00:32:36] Speaker 04: Not the fee issue related to infringement. [00:32:39] Speaker 00: Right. [00:32:39] Speaker 00: There are the two fee issues, one related, but they didn't challenge the underlying merits of that. [00:32:43] Speaker 00: They only said it rises or falls with whether or not this court finds that it was not infringement. [00:32:48] Speaker 01: If we were to reverse on this claim construction issue on passageway, what would that do to the civil judgment decisions? [00:32:57] Speaker 00: Well, the claims are still invalid. [00:33:01] Speaker 00: It does nothing with those. [00:33:03] Speaker 00: Because the claims 8 and 19 were still found invalid after trial by the jury. [00:33:10] Speaker 00: And so the issue with respect to the claim fees having to do with obviousness pertains to that. [00:33:16] Speaker 00: This would have no impact. [00:33:17] Speaker 04: It's not like- Obviousness becomes more difficult under the court's construction of passage. [00:33:22] Speaker 04: I'm sorry? [00:33:23] Speaker 04: The obviousness argument becomes more difficult [00:33:27] Speaker 04: not less difficult, depending on the passageway construction? [00:33:31] Speaker 00: Actually not, because the only things that were challenged on the obvious argument were the brewing chamber element and the lid element. [00:33:39] Speaker 00: Passageway was not even an issue with respect to the obviousness. [00:33:42] Speaker 01: But non-infringement on the 320 panel, that was granted based on construction of passageway. [00:33:49] Speaker 00: Correct. [00:33:49] Speaker 00: Non-infringement was based on passageway. [00:33:51] Speaker 01: So if we reverse on the construction, we'd have to reverse on that. [00:33:56] Speaker 01: And the same is true with the 320 patent, attorney fees relating to non-infringement. [00:34:05] Speaker 00: No. [00:34:06] Speaker 00: So to be clear, Your Honor, on the first one, the court denied arms motion for non-infringement because of the passageway issue. [00:34:15] Speaker 00: That's true. [00:34:16] Speaker 00: On obviousness, that's the one that went all the way through trial. [00:34:19] Speaker 00: And the court found there that there was obvious, and then it awarded attorney's fees because of the manner in which it had been pursued, even though it was a meritless case. [00:34:28] Speaker 00: Two different issues. [00:34:31] Speaker 04: OK. [00:34:32] Speaker 04: We seem to be out of time. [00:34:33] Speaker 04: All right. [00:34:34] Speaker 04: Thank you, Your Honor. [00:34:38] Speaker 02: Thank you, Your Honor. [00:34:41] Speaker 02: I realize I went over time, so I'll try to be brief. [00:34:45] Speaker 02: With respect to the question that was raised, what happens if you reverse on the construction of passageway and the 320 patent, as I alluded to before, if you reverse that construction, then the motion for summary judgment that was granted in Echo's favor of non-infringement would also have to be reversed. [00:35:02] Speaker 04: Well, not necessarily. [00:35:05] Speaker 04: The construction was wrong, but still a passageway is not an opening, and the summary judgment record showed only an opening. [00:35:14] Speaker 02: If this court were to substitute a construction of that nature, then I agree with your honor on that. [00:35:20] Speaker 02: Nevertheless, with respect to whether or not a passageway is or is not an opening, at page 16 of our reply brief, we pointed to a couple of different points within the specification that highlight that the words opening and passageway were used interchangeably for the bottom part of the receptacle. [00:35:37] Speaker 02: And those are at column 5, lines 22 through 28, and column 6, lines 53 and 55 of the 320 patent. [00:35:46] Speaker 02: And so there is room there, or not room, but there is wording in the specification that shows that those terms are used interchangeably. [00:35:55] Speaker 04: So we're, show me that again. [00:35:59] Speaker 02: So your honor, in the 320 patent. [00:36:01] Speaker 04: Yep. [00:36:02] Speaker 02: Columns five. [00:36:03] Speaker 04: What page are they? [00:36:05] Speaker 04: Line 22 through 28. [00:36:06] Speaker 04: Page 90. [00:36:07] Speaker 04: 22 to 28. [00:36:17] Speaker 02: Yeah, that doesn't use the word opening there. [00:36:20] Speaker 02: No, and then, right, that's the passageway, and then you compare that to column 6, line 53 to 55. [00:36:37] Speaker 04: But that's a different opening. [00:36:39] Speaker 04: It's not the passageway or opening that we're talking about here, right? [00:36:45] Speaker 02: It's a different figure, but in both cases, it's talking about the... No, but it's an outlet. [00:36:51] Speaker 04: It's a right to allow for the outflow of the beverage. [00:36:56] Speaker 04: That's a different opening or passageway than the one we're talking about here, right? [00:37:01] Speaker 02: Well, if you look at column five, where it talks about pass-a-weighting. [00:37:04] Speaker 04: Well, then I'm going to answer my question. [00:37:05] Speaker 04: Isn't that true? [00:37:06] Speaker 04: In column six, they're not this opening, which you're referring to in lines 54 and following, is a different opening than we're concerned with about the definition of passageway. [00:37:20] Speaker 02: I don't believe it is, Your Honor. [00:37:21] Speaker 02: I think it's ultimately both are referring to the hole at the bottom where the fluid outflows the capsule. [00:37:29] Speaker 01: There's multiple, as we've just seen, there's multiple references to passageway in this pen, but I don't see any of them that a reference to narrowness, depth, or specific length. [00:37:44] Speaker 01: Am I missing something? [00:37:46] Speaker 02: No, Your Honor, that's exactly correct. [00:37:47] Speaker 02: And in fact, when you ask the question, why does it have to be narrow to accept the needle, I would submit that it does not have to be narrow to submit the needle. [00:37:55] Speaker 02: It has to be of a certain width to accept the needle, but it doesn't have to be of a certain length. [00:38:00] Speaker 02: And therefore, it doesn't have to be narrow. [00:38:01] Speaker 02: It could be quite wide and still acceptable. [00:38:05] Speaker 01: I'm calling nine lines. [00:38:09] Speaker 01: Let's say six or seven. [00:38:10] Speaker 01: It says one in the reciprocal has at least one passageway that provides fluid flow from one interior of the receptacle to the exterior. [00:38:20] Speaker 01: And I find similar passages that way, but none of them seem to, none of them do require or even mention marital rest, for example. [00:38:31] Speaker 02: Yes, I think that is correct, Your Honor. [00:38:33] Speaker 01: But what does it matter if we were to reverse on this claim constructed? [00:38:37] Speaker 01: What does that do to the rest of the case? [00:38:39] Speaker 01: It seems to me that your answer to Judge Diakas was that at the end of the day, it doesn't matter. [00:38:45] Speaker 02: Well, no, our position is that if you reverse on that construction, that would lead to a reversal of the grant of summary judgment of non-infringement, which would then lead to vacating the first fee award, because that fee award was granted as a prevailing party. [00:39:01] Speaker 02: And therefore... Does that affect invalidity? [00:39:05] Speaker 02: No, that would not affect invalidity. [00:39:09] Speaker 02: I see that I'm over again. [00:39:09] Speaker 02: Thank you. [00:39:10] Speaker 02: All right. [00:39:10] Speaker 02: Thank you, Mr. Chairman. [00:39:11] Speaker 02: I thank both counsel and cases.