[00:00:05] Speaker 03:
Our third case this morning is number 172107, Imperium IP Holdings versus Samsung.

[00:00:39] Speaker 03:
And Mr. Hall with Freymeyer.

[00:00:47] Speaker 02:
May it please the court?

[00:00:49] Speaker 02:
If the panel simply affirms on the two board decisions that declared unpatentable the claims of the 029 and the 290 that would leave just the 884, I'd like to focus my argument this morning on the jury's finding with respect to the 884.

[00:01:09] Speaker 02:
I'd like to start by emphasizing the instructional error, because I think at the very least, the court is going to have to vacate and remand for a new trial.

[00:01:18] Speaker 02:
Because the court instructed the jury incorrectly, and this is at A-60 is just a quote from the instruction to the jury, Samsung must prove by clear and convincing evidence that prior art must enable a posita to make the invention without undue experimentation.

[00:01:37] Speaker 02:
That is precisely the opposite.

[00:01:39] Speaker 04:
Even if that's wrong, does it matter when Imperium did not even debate whether or not the prior art was enabled?

[00:01:46] Speaker 02:
Absolutely, Your Honor.

[00:01:48] Speaker 02:
Because, well, first of all, I want to say that when we're talking about shifting the burden of proof from one party to another, that is almost per se prejudicial error.

[00:01:58] Speaker 02:
And in fact, the Fifth Circuit has said that.

[00:01:59] Speaker 02:
But if there's nothing to prove, that's what I'm trying to understand.

[00:02:03] Speaker 02:
Because this instruction came at the very end and was unexpected because it is the opposite of what circuit law is on this, that there is a presumption of enablement, we had not put in any testimony about enablement.

[00:02:17] Speaker 02:
In fact, Dr. Nykerk didn't say anything with respect to the without undue experimentation element.

[00:02:24] Speaker 04:
Are you saying you didn't have notice in advance of what the jury instructions were going to be?

[00:02:29] Speaker 02:
No, Your Honor.

[00:02:30] Speaker 02:
It was after our case was already put in.

[00:02:33] Speaker 02:
that we learned, because it was not part of the proposed instructions, the court said, I'm going to give an instruction.

[00:02:39] Speaker 04:
But did you have a jury conference?

[00:02:41] Speaker 02:
There was a jury conference, yes.

[00:02:43] Speaker 04:
And did you explain that issue to the judge?

[00:02:45] Speaker 02:
Well, the jury conference under this judge's practice is off the record.

[00:02:51] Speaker 02:
When the record was put on, we objected and we explained, this is error.

[00:02:56] Speaker 02:
And there's no question, there's been no argument that the challenge was not preserved.

[00:03:01] Speaker 04:
on the record or off the record, did you explain to the judge that not only do you think it's legal error, but if, in fact, you gave that instruction, that you would have tried your case differently?

[00:03:14] Speaker 02:
Your Honor, I was not at the trial, so I don't know the extent of the explanation.

[00:03:18] Speaker 02:
But it is clear that we preserved the argument that this was error.

[00:03:22] Speaker 00:
Can I just address this a little bit?

[00:03:24] Speaker 00:
It seems to me the extremely limited

[00:03:27] Speaker 00:
expert testimony by, is it Dr. Wright on the other side, about this, more or less might have been understood by the jury to make an enablement point.

[00:03:37] Speaker 00:
And they come back and they say in their brief, we absolutely said we don't make an enablement.

[00:03:43] Speaker 00:
So did Imperium say to the jury, we are not contesting enablement?

[00:03:50] Speaker 02:
No, no, Your Honor.

[00:03:51] Speaker 00:
They acknowledge that.

[00:03:54] Speaker 02:
They acknowledge that they didn't contest it in the sense that this court's precedent, because the priority is presumed to be enabled, says that the patentee has to come forward with persuasive evidence, and they acknowledge that they didn't do that.

[00:04:07] Speaker 00:
Let me try to state my... It seems to me you have an awfully good start for this is not harmless in what Dr. Wright said.

[00:04:16] Speaker 00:
Yes.

[00:04:16] Speaker 00:
Possibly that might be overcome.

[00:04:18] Speaker 00:
had they said and stood up in front of the jury and said, by the way, as to Johnson, is that the reference?

[00:04:25] Speaker 00:
As to Johnson, we are not disputing that if it anticipates, it's an enabled anticipation.

[00:04:33] Speaker 00:
No, Your Honor.

[00:04:33] Speaker 03:
They said it to the judge in the post trial motions, right?

[00:04:37] Speaker 02:
In the post trial motions, they say we didn't contest it.

[00:04:41] Speaker 02:
But that's in the post trial motions.

[00:04:43] Speaker 02:
They didn't say that to the jury.

[00:04:44] Speaker 02:
To the jury, as Your Honor notes, Dr. Wright's testimony

[00:04:48] Speaker 02:
And I want to get to this because I don't think he touched Dr. Nykerk's testimony on the substance.

[00:04:53] Speaker 02:
But the only thing that he would have been thought by the jury to be saying is... Johnson doesn't show how to do it.

[00:04:58] Speaker 02:
Johnson doesn't show how to do it, which would have sounded like enablement.

[00:05:01] Speaker 02:
It would have sounded like the without undue experimentation.

[00:05:04] Speaker 02:
And again, Dr. Nykerk didn't address it because we were entitled to the presumption.

[00:05:08] Speaker 04:
But in closing arguments, didn't you say that it's not in dispute and no one objected to that?

[00:05:15] Speaker 02:
In this closing argument, we said that it was enabled, but that's not evidence.

[00:05:21] Speaker 04:
And you said it's not in dispute that it's enabled, and the other side didn't rebut that in their closing.

[00:05:28] Speaker 02:
Your Honor, this is a lawyer argument.

[00:05:30] Speaker 04:
I'm just trying to understand what was said to the jury.

[00:05:32] Speaker 04:
Tell me, is it true that you said to the jury there's no dispute?

[00:05:36] Speaker 02:
I don't believe that he said it's not disputed, Your Honor, but I may be wrong about that.

[00:05:41] Speaker 02:
I know that he said that it's enabled, but that is not

[00:05:45] Speaker 02:
That is not evidence.

[00:05:46] Speaker 02:
And the judge would have instructed the jury that lawyer argument is not evidence.

[00:05:51] Speaker 02:
So there was no evidence on this.

[00:05:53] Speaker 02:
The problem, and again, there's Fifth Circuit law.

[00:05:56] Speaker 02:
There's the Castillo versus Givens case.

[00:05:59] Speaker 02:
It's at 704F, second 181 to 1983 case that says that when you put the burden of persuasion on the wrong party, that is always of major importance.

[00:06:11] Speaker 02:
Not here, it wasn't just switching the burden.

[00:06:15] Speaker 02:
It was switching the burden to Samsung to prove by clear and convincing evidence.

[00:06:20] Speaker 02:
And of course, the standard under heart cell is whether it could have affected the jury's verdict.

[00:06:28] Speaker 02:
When we would put the burden to prove enablement by clear and convincing evidence, and you hadn't heard our expert testify about this, and then a lawyer gets up and says it,

[00:06:39] Speaker 02:
That's not clear and convincing evidence.

[00:06:41] Speaker 02:
It's not evidence at all.

[00:06:42] Speaker 02:
It's certainly not clear and convincing evidence.

[00:06:45] Speaker 02:
And the judge doesn't grapple with this at all, because in the order, the judge actually mischaracterizes the hard cell standard.

[00:06:54] Speaker 02:
He says that we have to show that it must have affected the jury's verdict.

[00:07:02] Speaker 00:
Since the time is short, can I ask you to talk about your potentially case dispositive

[00:07:08] Speaker 00:
Johnson, the evidence and this record from a witness whose credibility was not actually touched under Fifth Circuit law had to be accepted as establishing anticipation.

[00:07:20] Speaker 02:
That's right, Your Honor.

[00:07:21] Speaker 02:
And that's both this court's law and the Fifth Circuit law, that if the expert's testimony is not contested, then the jury can't discredit it, if it's technical.

[00:07:35] Speaker 02:
So the question is whether it was contested.

[00:07:38] Speaker 02:
So we've laid out where Dr. Nykerk, in the claim chart on pages 21 to 23 of our brief, where Dr. Nykerk hit each of the limitations.

[00:07:46] Speaker 03:
I don't think anybody's disputing that his testimony said that all the limitations were satisfied.

[00:07:52] Speaker 02:
And so when Dr. Wright testified, all he said, with respect to other than sort of

[00:07:59] Speaker 02:
sort of dismissing Johnson as well, it's not that much, it's with small part of a bigger patent, which is also irrelevant.

[00:08:05] Speaker 02:
And it uses different terminology.

[00:08:07] Speaker 02:
It uses different terminology, again, irrelevant.

[00:08:10] Speaker 02:
He says, well, there's one paragraph that even mentions Flickr.

[00:08:15] Speaker 02:
That's irrelevant, too.

[00:08:17] Speaker 02:
In that paragraph, there's that little figure that goes along with it.

[00:08:20] Speaker 02:
Dr. Nykerk showed you that little figure.

[00:08:22] Speaker 02:
But that one paragraph of Seventh Sentence, it just talks about you can average light over one cycle

[00:08:28] Speaker 02:
over two cycles of light variation.

[00:08:31] Speaker 02:
Paragraph 16 says that.

[00:08:33] Speaker 02:
That confirms what Dr. Nykirk said, that paragraph 16 says you can vary it over one or two integer multiples.

[00:08:41] Speaker 03:
But Dr. Nykirk didn't rely on paragraph 16.

[00:08:43] Speaker 03:
I think the question is here with respect to Dr. Wright's testimony.

[00:08:47] Speaker 03:
There are two arguments that are made as to what he said.

[00:08:51] Speaker 03:
Your argument is that he never addressed setting and maintenance.

[00:08:57] Speaker 03:
Right.

[00:08:57] Speaker 03:
And their argument is that in that one sentence, I guess, that he did address sending and maintenance.

[00:09:04] Speaker 03:
He didn't address that.

[00:09:05] Speaker 02:
But Your Honor, at most, what he is talking about is paragraph 16.

[00:09:10] Speaker 02:
But notably, Dr. Nykerk's testimony about the setting and maintaining limitations was drawn from figure 13.

[00:09:19] Speaker 02:
And this is at 11-891.

[00:09:21] Speaker 02:
He's describing figure 13.

[00:09:23] Speaker 02:
He says, you know,

[00:09:25] Speaker 02:
when you reach a critical level of dimness, it becomes flat.

[00:09:30] Speaker 02:
So that's one cycle section of shutter speed is maintained one period of the flicker flashing period.

[00:09:37] Speaker 02:
And then when it reaches another critical level of intensity, it jumps up.

[00:09:41] Speaker 02:
It moves straight up to another maintained shutter speed or integration time of two cycles.

[00:09:47] Speaker 02:
So that's where we see adjusting while maintaining, maintaining at one cycle and then adjust directly to two cycles.

[00:09:54] Speaker 02:
He's talking about

[00:09:55] Speaker 02:
Figure 13, again, with respect to claim one, when he talks about the setting, he says, yes, this is on 11899.

[00:10:05] Speaker 02:
You can see that quickly with figure 13, where the shutter speed is flat and the region labeled one cycle, that's an integer multiple of the flicker setting.

[00:10:13] Speaker 02:
And then on 11900, again, with respect to adjusting while maintaining, adjusting while maintaining.

[00:10:22] Speaker 02:
It's very, very easily seen in figure 13.

[00:10:25] Speaker 02:
That's where shutter speed is held.

[00:10:26] Speaker 02:
It's maintained at one cycle.

[00:10:28] Speaker 02:
Then it jumps and is adjusted to two cycles.

[00:10:31] Speaker 02:
This is on page 20 of the blue brief, figure 13.

[00:10:36] Speaker 02:
It is evident in figure 13, and Dr. Wright never touches that because he doesn't discuss Dr. Nykerk's testimony about figure 13.

[00:10:46] Speaker 02:
He only says, with respect to paragraph in column 16,

[00:10:52] Speaker 02:
He confirms what Dr. Nykerk said, which is explicit in that text, that you can average the integration time over one or two cycles, an integral multiple, is what paragraph 16 says, of the periodic intensity of the fluorescent light to eliminate flicker.

[00:11:13] Speaker 02:
That's explicitly what it says.

[00:11:15] Speaker 02:
He acknowledges what it says.

[00:11:17] Speaker 02:
Dr. Nykerk referenced what it says.

[00:11:20] Speaker 02:
But he didn't rely on that for those limitations that they say are missing.

[00:11:23] Speaker 02:
He relied on figure 13.

[00:11:26] Speaker 02:
Dr. Wright says nothing about figure 13.

[00:11:28] Speaker 04:
What about the argument that in cross-examination they brought out that he had a potential conflict or bias because he knew the inventors of Johnson?

[00:11:37] Speaker 04:
What about the fact that they argued that a lot of the statements that your expert were making had holes in them?

[00:11:47] Speaker 04:
I mean, if that's true,

[00:11:49] Speaker 04:
A jury could simply totally disregard an expert.

[00:11:52] Speaker 02:
But it's not true, Your Honor.

[00:11:54] Speaker 02:
They identify that Dr. Nykerk acknowledged that Johnson doesn't use the term integration time.

[00:12:02] Speaker 02:
But Dr. Nykerk did testify, and this is at 11, 890, that integration time and shutter speed are the same.

[00:12:11] Speaker 02:
And in fact, it's notable that Dr. Wright, and this is at A12, 228,

[00:12:16] Speaker 02:
also says shutter speed, I mean integration time.

[00:12:20] Speaker 02:
They're the same thing.

[00:12:21] Speaker 02:
There's nothing, there is no ipsisimus furbus test.

[00:12:25] Speaker 02:
Johnson doesn't have to use the term that the 884 uses to describe shutter speed if it's describing the same concept.

[00:12:34] Speaker 02:
And there is no testimony that he didn't.

[00:12:38] Speaker 02:
And the cross-examination did not establish that he didn't.

[00:12:42] Speaker 00:
I think I had understood Judge O'Malley

[00:12:45] Speaker 00:
to be asking him, maybe I misunderstood about whether there was certain kind of credibility challenges to your expert, independent of the specific things he said about Johnson.

[00:12:58] Speaker 02:
Not simply establishing that the witness knew of one of the inventors doesn't establish that there is any bias there.

[00:13:06] Speaker 02:
What he testified to are what the disclosures of Johnson show.

[00:13:13] Speaker 02:
And when Dr. Wright

[00:13:14] Speaker 04:
was asked- So his relationship with the inventor of Johnson, you can see that that came out.

[00:13:20] Speaker 02:
He acknowledged it himself, yes.

[00:13:22] Speaker 02:
He did, that he had known him.

[00:13:24] Speaker 02:
He was a student at University of Texas.

[00:13:28] Speaker 04:
And were there any other credibility challenges to his testimony?

[00:13:32] Speaker 02:
No, Your Honor.

[00:13:33] Speaker 02:
I think the key is that it's not contested that Dr. Nykerk touched on all of the limitations

[00:13:42] Speaker 02:
And that what they have pointed to as undermining that actually confirms the one thing that Dr. Murch relied on with respect to column 16.

[00:13:51] Speaker 02:
And it doesn't touch what he said about figure 13, which is where he talked about the two limitations that they've suggested right undermined.

[00:13:59] Speaker 02:
But I would like to reserve the remainder of my time.

[00:14:05] Speaker ?:
Thank you.

[00:14:05] Speaker 03:
Mr. Fish?

[00:14:20] Speaker 01:
Good morning, your honors, and may it please the court.

[00:14:23] Speaker 01:
I was at the trial, and I'd like to begin by answering some of the questions that have gone unanswered this morning.

[00:14:28] Speaker 01:
The first relates to the introduction of the enablement jury instruction.

[00:14:33] Speaker 01:
That occurred after the jury charge conference.

[00:14:36] Speaker 01:
This was not anything that was brought up at the jury charge conference.

[00:14:39] Speaker 01:
Therefore, the sum total of Samsung's objection to it can be found on A12312 with the single sentence that it's contrary to law.

[00:14:49] Speaker 01:
What's the matter with the objection?

[00:14:50] Speaker 01:
I'm sorry, Your Honor.

[00:14:51] Speaker 01:
What's the matter with the objection?

[00:14:53] Speaker 01:
What's the matter with the objection is that it doesn't identify what their absolute issue is.

[00:14:57] Speaker 01:
They simply say that that statement is contrary to law.

[00:15:01] Speaker 01:
The statement is not contrary to law.

[00:15:03] Speaker 04:
How do you say it's not contrary to law?

[00:15:05] Speaker 01:
I'm sorry, Your Honor.

[00:15:06] Speaker 04:
How is it not contrary to law?

[00:15:08] Speaker 01:
Because it's not contrary to law because the fundamental statement that there must be enablement exists.

[00:15:14] Speaker 01:
That exists.

[00:15:16] Speaker 01:
What Samsung is really asking for

[00:15:18] Speaker 01:
is a second sentence afterward, Your Honor, that says, but in the case, but in the case of a United States patent, that is presumptively, that is presumed to be enabled.

[00:15:29] Speaker 03:
It's not just that there's something missing in the instruction.

[00:15:32] Speaker 03:
The instruction misstates the law by saying that they have to prove enablement by clearing convincing evidence.

[00:15:37] Speaker 03:
That's what the instruction said, didn't it?

[00:15:40] Speaker 01:
I disagree, Your Honor, but if the court is of the assumption that that is a re-statement.

[00:15:45] Speaker 03:
If the court is of the assumption... Where do we find the instruction?

[00:15:49] Speaker 03:
I'm sorry, Your Honor?

[00:15:50] Speaker 03:
Where's the instruction in the appendix?

[00:15:54] Speaker 03:
I'm confused by the question, sir.

[00:15:55] Speaker 04:
Do you disagree that the court said they had to prove it by clearing convincing evidence or do you disagree that that matters?

[00:16:03] Speaker 01:
No, I believe that they have to prove by clearing convincing evidence that the invention is invalid.

[00:16:11] Speaker 01:
Yeah, but that's not what the question was.

[00:16:13] Speaker 01:
But they have to do it

[00:16:15] Speaker 01:
with something that's enabled.

[00:16:16] Speaker 00:
Where's the instruction that we're talking about?

[00:16:19] Speaker 00:
Do you have a joint appendix citation that we can look at and let's read the words together?

[00:16:24] Speaker 04:
Yes, Your Honor.

[00:16:27] Speaker 04:
I understood your brief.

[00:16:28] Speaker 01:
A1241037.

[00:16:30] Speaker 03:
Which volume is this?

[00:16:32] Speaker 01:
A1241037.

[00:16:44] Speaker 02:
Your Honor, it is quoted by the court in its decision on A-60.

[00:16:49] Speaker 02:
It sets out a quote citing the dot number in pages at the bottom of A-60 for the court's opinion.

[00:16:57] Speaker 04:
Thank you.

[00:17:04] Speaker 03:
It says, SAMHSA must prove by clarity of evidence

[00:17:14] Speaker 03:
that this single item of prior art must enable.

[00:17:18] Speaker 03:
Right?

[00:17:19] Speaker 01:
Correct, Your Honor.

[00:17:20] Speaker 01:
That's what it says.

[00:17:20] Speaker 01:
But I believe that... That's wrong, isn't it?

[00:17:23] Speaker 01:
If the court is of the assumption... Is that wrong or not?

[00:17:26] Speaker 01:
I disagree that it's wrong, Your Honor.

[00:17:28] Speaker 01:
I believe that... That cannot be wrong.

[00:17:30] Speaker 01:
I believe that because the obligation for the proof is on the clear and convincing component, that's where their burden rests, that to prove by clear and convincing evidence, they must use something that is enabled.

[00:17:41] Speaker 01:
Not that they must prove that it's enabled.

[00:17:43] Speaker 01:
They must use something that is enabled.

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

[00:17:54] Speaker 01:
If the court disagrees, obviously we move to the Z4 analysis we've heard about already.

[00:17:59] Speaker 01:
Now, one thing to note, of course, is that Samsung, in its briefing glosses over the first prong of the Z4 analysis, the very significant

[00:18:08] Speaker 01:
that the charge as a whole creates substantial and ineradicable doubt as to how the jury was instructed.

[00:18:15] Speaker 01:
This is one component of a 26-page jury charge, one very small piece that was not yesterday.

[00:18:22] Speaker 00:
I would like to pass that and go to a question that we discussed with your friend on the other side, and at least I was not sure.

[00:18:31] Speaker 00:
In the record, and I don't think this is actually, I'm not sure whether it's in the Joint Appendix, and I want you to focus on the closing argument.

[00:18:39] Speaker 00:
There was a question about whether counsel for Samsung said enablement of Johnson is not an issue and that's undisputed.

[00:18:55] Speaker 00:
Was that statement made?

[00:18:56] Speaker 01:
Yes, in fact, I was at the close.

[00:18:59] Speaker 01:
I gave the closing appearance.

[00:19:00] Speaker 03:
Wait, do you have the transcript in front of you?

[00:19:06] Speaker 01:
He said, Johnson gives extensive details on how to build the system.

[00:19:10] Speaker 01:
You could build it easily.

[00:19:11] Speaker 01:
You could enable it.

[00:19:13] Speaker 01:
Both Johnson and Hashimoto are issued patents.

[00:19:16] Speaker 01:
The patent examiner considered them enabled.

[00:19:18] Speaker 01:
There's no question about that.

[00:19:20] Speaker 01:
They're anticipatory references.

[00:19:22] Speaker 00:
So that doesn't really say that it's undisputed between the parties.

[00:19:26] Speaker 00:
There's no question that the examiner thought that they were enabled.

[00:19:30] Speaker 01:
And there's no question that that was the only evidence or indication that the jury had.

[00:19:35] Speaker 01:
Your Honor had referenced earlier testimony from Dr. Wright as indicating that he was addressing enablement, and he was not.

[00:19:42] Speaker 01:
Enablement is not part of any part of Dr. Wright's expert report.

[00:19:47] Speaker 01:
That excerpt that Samsung has talked about here, Your Honor, was part of a larger continuum of a discussion about the 884 patent and the elements of each of the pieces of the prior art, not whether the prior art was enabled itself.

[00:20:01] Speaker 04:
Had that been a discussion about the prior art being enabled, Samsung could have... Even the trial court pointed to Dr. Wright's testimony and specifically pointed out that Dr. Wright testified that although Johnson mentions the concept of the Flickr List mode, it does not explain how to achieve this mode.

[00:20:20] Speaker 04:
How does that not relate to enablement?

[00:20:23] Speaker 01:
Because the broader context at that point in time, Your Honor, is about the missing elements as it relates to the 884 patent, not to enablement.

[00:20:31] Speaker 01:
Indeed, enablement has never been an issue in this case.

[00:20:35] Speaker 01:
At no point in time, it wasn't mentioned in the opening by either party.

[00:20:38] Speaker 01:
It wasn't mentioned in the close by me at all.

[00:20:41] Speaker 01:
Dr. Wright doesn't use the word enablement.

[00:20:43] Speaker 01:
His expert report doesn't include the concept of enablement.

[00:20:46] Speaker 01:
Had that been a discussion of enablement as it's being cast today by Samsung, Samsung would have stood up.

[00:20:52] Speaker 01:
It would have objected to Dr. Wright speaking outside the scope of his expert report.

[00:20:57] Speaker 01:
It would have asked for a clarification to the jury on the issue.

[00:21:00] Speaker 01:
It would have undoubtedly asked to strike that portion of his testimony.

[00:21:05] Speaker 01:
None of that happened.

[00:21:06] Speaker 01:
The appellate attorneys are casting this as something related to enablement as a concept.

[00:21:13] Speaker 01:
But the trial attorneys at the time understood Phil well in the broader concept that he was speaking directly.

[00:21:18] Speaker 00:
Do I understand that the sequence of events was that at the time

[00:21:23] Speaker 00:
that testimony occurred, they didn't have any idea that there was going to be an instruction of the sort that actually ended up being given.

[00:21:33] Speaker 00:
So why would they stand up and say, there is no enablement issue?

[00:21:36] Speaker 00:
It was, they should have rightly assumed at that point that there wasn't going to be an instruction like this, right?

[00:21:44] Speaker 01:
Because your honor, at that point in time,

[00:21:46] Speaker 01:
Dr. Wright wasn't speaking to enablement.

[00:21:49] Speaker 00:
He was speaking to the idea of... The question is how the jury might have understood him to have been speaking once the judge said what the judge said in the instruction by adding it later in time.

[00:22:02] Speaker 01:
That presupposes that they appreciate that what he has just talked about is enablement.

[00:22:07] Speaker 01:
There has been no dots connected, not by Imperium, not by Imperium's witness.

[00:22:12] Speaker 01:
There has been no dots connected to that statement.

[00:22:15] Speaker 01:
and anything relating to this concept of enablement, which they hear for the first time.

[00:22:20] Speaker 04:
Why didn't you support Samsung's objection?

[00:22:23] Speaker 04:
When they said objection, you're putting the burden on the wrong party, and there is no issue of enablement here.

[00:22:29] Speaker 04:
Why didn't you stand up and say, Your Honor, we're not contesting enablement?

[00:22:33] Speaker 01:
Because their objection wasn't that, Your Honor.

[00:22:35] Speaker 01:
They said it was contrary to law.

[00:22:37] Speaker 01:
And as I've indicated, I don't believe that that statement was contrary to law.

[00:22:42] Speaker 01:
Now, I understand that the court may like the instructor.

[00:22:45] Speaker 03:
I understand, Your Honor, that... You liked the instruction.

[00:22:49] Speaker 03:
You thought the instruction was the right thing to do.

[00:22:51] Speaker 01:
No, Your Honor.

[00:22:53] Speaker 01:
No?

[00:22:53] Speaker 01:
No.

[00:22:54] Speaker 01:
It wasn't an issue for us, one way or the other.

[00:22:57] Speaker 01:
We didn't bring it... No, you're implying nefarious actions that didn't exist, Your Honor.

[00:23:04] Speaker 01:
No.

[00:23:05] Speaker 01:
And that brings us to Z4, which is, what really did this have as an impact?

[00:23:11] Speaker 00:
Would you mind, since time is short, getting to the other

[00:23:14] Speaker 00:
aspect of the 8-4 argument, namely that in the single page in the transcript, I guess it's, yes, 12-218, where Dr. Wright addresses the Johnson reference.

[00:23:32] Speaker 00:
How does that create a issue as to which the jury could reasonably find lack of anticipation?

[00:23:43] Speaker 01:
Of course, Your Honor, Dr. Wright speaks in the ultimate conclusion to the idea that nothing he has seen or heard during the trial has changed his view about the validity of the patents.

[00:23:54] Speaker 01:
That conclusion is sufficient.

[00:23:57] Speaker 01:
That is enough.

[00:23:59] Speaker 01:
But it's even more than enough, because the burden continues to rest the entire time with Samsung.

[00:24:04] Speaker 01:
And contrary to what was said about the cross-examination, at A11994, Dr. Nykerk is in fact

[00:24:13] Speaker 01:
cross-examined.

[00:24:14] Speaker 01:
And not just about this, he's cross-examined multiple times.

[00:24:17] Speaker 03:
Are you agreeing that Dr. Wright didn't rebut the testimony?

[00:24:21] Speaker 03:
I'm sorry.

[00:24:21] Speaker 03:
Are you agreeing that Dr. Wright did not address or rebut Dr. Nightkirk's testimony about Johnson?

[00:24:31] Speaker 01:
No, he did, Your Honor.

[00:24:33] Speaker 01:
He did it twice.

[00:24:34] Speaker 01:
He did it by indicating that there was a difference in language between the two.

[00:24:39] Speaker 01:
And although

[00:24:41] Speaker 01:
Council for the other side has indicated that that's not a difference at all.

[00:24:44] Speaker 01:
The answer is, that's absolutely what the case is about.

[00:24:48] Speaker 01:
Understanding the relationship between the prior art and the claim language.

[00:24:52] Speaker 01:
They're not the same, and he identified that.

[00:24:54] Speaker 00:
You also identified- I'm sorry, but you just shifted to the prior art versus the claims.

[00:25:01] Speaker 00:
On the specific point of whether, what is it called, integration time, is that the phrase, is or is not the same as

[00:25:10] Speaker 00:
the other two terms, shutter or something.

[00:25:14] Speaker 00:
Did you have evidence that said, oh, those are actually quite different?

[00:25:19] Speaker 01:
Dr. Wright's testimony is they're not the same, Your Honor.

[00:25:22] Speaker 00:
Point me to where Dr. Wright said those are in fact different, those have different meanings.

[00:25:29] Speaker 01:
Your Honor, I'm gonna go look for it, but I believe it's A12221.

[00:25:32] Speaker 01:
Oh, that's the same page.

[00:25:35] Speaker 00:
But he didn't say that they were, he just said that the Judd Johnson didn't use

[00:25:40] Speaker 00:
the integration time terminology.

[00:25:44] Speaker 00:
He didn't say that that terminology has a substantively different meaning from the terminology that Johnson did use.

[00:25:51] Speaker 01:
He doesn't need to say that, Your Honor.

[00:25:54] Speaker 01:
No, no.

[00:25:55] Speaker 01:
There are plenty of other bases, by the way, for which this jury could reach a conclusion that the burden had been met.

[00:26:01] Speaker 01:
The burden never shifts.

[00:26:02] Speaker 01:
It's not that the evidence is out there.

[00:26:04] Speaker 01:
And as Judge O'Malley indicated, there is other

[00:26:08] Speaker 01:
cross-examination factors involved in here as well.

[00:26:11] Speaker 04:
What are those?

[00:26:12] Speaker 04:
I see you reference in the brief that he happened to know, or he did know, the Johnson inventors.

[00:26:21] Speaker 04:
What else?

[00:26:22] Speaker 01:
Well, any way he testifies, Your Honor, the demeanor he undertakes in answering the questions, the approach he takes when positing his different opinions, all of that along with the other cross-examination questions

[00:26:34] Speaker 01:
can be used as a corpus for the jurors to understand the witnesses' credibility.

[00:26:39] Speaker 04:
But you didn't really point us to anything like that.

[00:26:41] Speaker 04:
You didn't say, look how obvious it is that he was avoiding a question, or look how he was self-contradictory, or look how he admitted that he didn't have expertise in a particular area.

[00:26:54] Speaker 04:
Those are the kinds of things that usually we see when we say the jury had the right to not believe him at all, even in the absence of contrary testimony.

[00:27:03] Speaker 04:
So what do you point us to?

[00:27:06] Speaker 01:
Your Honor, there are a number of different pieces of art that were testified to during that entire cross-examination.

[00:27:14] Speaker 01:
The responses to any of those could have implicated the veracity of Dr. Nykerk's testimony.

[00:27:21] Speaker 01:
We're seeking to crack open the jury deliberation process here by focusing on the very specific piece of art when, in fact, it's the totality of his cross-examination

[00:27:31] Speaker 01:
that defines him as a witness and his credibility as a witness.

[00:27:35] Speaker 01:
And that needs to remain primary.

[00:27:37] Speaker 01:
But the Star Scientific case makes it clear that the jurors are permitted to evaluate and weigh each witness separately and their credibility separately.

[00:27:46] Speaker 01:
There is no obligation that they adopt wholesale everything he says.

[00:27:50] Speaker 01:
He was challenged.

[00:27:51] Speaker 01:
He was challenged as a witness.

[00:27:53] Speaker 01:
He was challenged on these issues.

[00:27:55] Speaker 01:
Those are bases upon which a credible juror, a legitimate juror, a juror focused on

[00:28:01] Speaker 01:
the evidence can, in fact, reach a conclusion that Dr. Nykerk was inaccurate.

[00:28:09] Speaker 01:
Dr. Nykerk's position was addressed multiple times.

[00:28:13] Speaker 01:
Your Honor, I see you have one minute left.

[00:28:15] Speaker 01:
May I address briefly, if the court will permit, one of Imperium's cross-appeal issues?

[00:28:24] Speaker 01:
I'm happy to continue talking about the issues.

[00:28:27] Speaker 03:
You have a minute left.

[00:28:29] Speaker 03:
You can do whatever you want.

[00:28:32] Speaker 01:
Your honors, with respect to the post-trial running royalty, that is an issue of first impression for this court, the impact of a post-grant proceeding that has been incompleted on the presumption of validity during a reasonable royalty negotiation.

[00:28:52] Speaker 01:
I ask that this court evaluate whether it wants to include the questions of validity or a possible attack on validity

[00:29:02] Speaker 01:
during those components of the negotiation.

[00:29:06] Speaker 01:
What has happened here based on what the lower court has done is that it has indicated that it is including as a factor mitigating against Imperium's royalty rate the ongoing IPR of the 029 patent.

[00:29:22] Speaker 01:
Not only does it apply that as a discount factor to the 029 patent in the hypothetical negotiation, it also applies it

[00:29:29] Speaker 01:
to the 884 patent, which of course was not the subject of the IPR.

[00:29:34] Speaker 03:
Now this is a... I believe Mr. Fish, we're out of time.

[00:29:36] Speaker 03:
Thank you.

[00:29:38] Speaker 03:
I'm sorry?

[00:29:38] Speaker 03:
We're out of time.

[00:29:39] Speaker 03:
Thank you.

[00:29:40] Speaker 01:
Thank you, Your Honor.

[00:29:51] Speaker 02:
Very quickly, Your Honor, if I could, first on the prejudicial nature of shifting the burden from one party to another.

[00:29:58] Speaker 02:
at best because we had not addressed it in our opening.

[00:30:02] Speaker 02:
Dr. Wright certainly made some noises that the jury might have thought went to enablement.

[00:30:07] Speaker 02:
We might have had a jury in equipoise.

[00:30:11] Speaker 02:
This instruction didn't just shift the burden from them to us.

[00:30:15] Speaker 02:
It said that we bore the burden by clear and convincing evidence.

[00:30:19] Speaker 02:
The standard is if it could have affected the outcome, there has to be a new trial.

[00:30:24] Speaker 02:
The court cannot know that it did not affect the outcome.

[00:30:28] Speaker 02:
on that record.

[00:30:29] Speaker 02:
In terms of the actual Jamal motion, the Webster case, which we cite in the yellow brief, I can pull this up, this is a Fifth Circuit case that's cited at page four, stands for a proposition that when juries must decide, they may decide what weight to give expert witnesses, they are not

[00:30:56] Speaker 02:
at liberty to disregard the uncontradicted, unimpeached testimony of an expert witness where the testimony bears on technical questions beyond the competence of the determination.

[00:31:06] Speaker 04:
What's your response to Mr. Fish's argument that we can't assess that in terms of what their credibility assessment might have been unless we look at all of his testimony as a whole.

[00:31:18] Speaker 04:
There could have been other things he said with respect to the other patents that the jury just felt were not credible or that reduced his credibility with respect to anything he said.

[00:31:26] Speaker 02:
Your Honor, I believe that that rule that you've articulated, if that's the rule, means that Webster means nothing.

[00:31:33] Speaker 02:
Because in every trial, the party that won the victory can say, well, we don't know why the jury didn't credit them.

[00:31:43] Speaker 02:
They may have felt that their demeanor was somehow offensive.

[00:31:47] Speaker 02:
Unless you can point to something that impeached or contradicted the expert's testimony, the jury is just not free to disregard it.

[00:31:55] Speaker 02:
But if you were to say that it could be anything that they found about it.

[00:31:58] Speaker 04:
But in Webster, there was really only one issue that the expert was talking about.

[00:32:02] Speaker 04:
It's not a question of where he was discussing multiple patents and that his credibility with respect to those other patents might have affected his credibility here.

[00:32:11] Speaker 02:
Your Honor, they have pointed to nothing other than the simple fact that Dr. Nykerk knew of, one of the many inventors

[00:32:20] Speaker 02:
on the Johnson patent, and that is not a basis for bias.

[00:32:24] Speaker 00:
Is it new of or new?

[00:32:26] Speaker 02:
New of personally?

[00:32:27] Speaker 03:
New of.

[00:32:27] Speaker 03:
Okay, I think we're out of time.

[00:32:31] Speaker 00:
Thank you very much.