[00:00:01] Speaker 00:
Good morning, everyone.

[00:00:03] Speaker 00:
The first argued case this morning is number 18-1108, Prism Technologies LLC against Sprint inspections.

[00:00:13] Speaker 00:
Mr. Andre.

[00:00:15] Speaker 02:
May it please the court.

[00:00:19] Speaker 02:
It's undisputed that there were claims that Sprint was found to infringe that were not involved in the T-Mobile trial.

[00:00:28] Speaker 02:
It's undisputed, and I thought that's very much disputed.

[00:00:30] Speaker 02:
That may even be the central dispute.

[00:00:33] Speaker 02:
No, it's undisputed that there were claims, claims seven and 33 were found to be infringed by Sprint.

[00:00:38] Speaker 02:
They were not involved in the T-Mobile trial.

[00:00:40] Speaker 02:
That's undisputed.

[00:00:41] Speaker 02:
Oh, not another one, the trial.

[00:00:43] Speaker 02:
The trial, that's correct.

[00:00:44] Speaker 05:
Yes, right.

[00:00:45] Speaker 02:
And the claims at trial in the T-Mobile case was the only claims that the T-Mobile panel had jurisdictional

[00:00:57] Speaker 02:
because they were asserted as affirmative.

[00:00:59] Speaker 02:
The 101 defense was an affirmative defense.

[00:01:02] Speaker 03:
And that's because of cases like Sandisk and Alcon?

[00:01:05] Speaker 02:
Yes.

[00:01:06] Speaker 02:
And Cardinal Kim, the Supreme Court case, they said once the infringement issue comes out of play, then all the affirmative defenses go moot.

[00:01:17] Speaker 04:
Can you explain the history of how you went from the complaint, which identified certain patents,

[00:01:25] Speaker 04:
to the election of a certain set of claims, I think maybe 20 claims, and then ultimately to the four claims that were litigated at trial.

[00:01:37] Speaker 04:
I didn't see any notice or anything else in the joint appendix that explained how the plaintiff went from those 20 elected claims to ultimately the jury verdict form, which showed four claims had actually been litigated at trial.

[00:01:51] Speaker 02:
It was through stipulation by the parties.

[00:01:54] Speaker 02:
And when we start getting ready for trial, obviously, you have to select which claims you want to go for and which ones you want to drop.

[00:02:03] Speaker 02:
And so in that particular instance, it was stipulation by the parties that we'd only try those claims and dismiss the others and that the parties would not use those dismissals in any advantageous way.

[00:02:15] Speaker 04:
Is that stipulation in the appendix somewhere?

[00:02:17] Speaker 04:
It is not, no.

[00:02:19] Speaker 03:
Are we talking about this case or T-Mobile?

[00:02:21] Speaker 03:
Both.

[00:02:22] Speaker 03:
T-Mobile there were six cases, six claims tried, right?

[00:02:25] Speaker 03:
That's correct.

[00:02:26] Speaker 03:
Four here.

[00:02:26] Speaker 02:
That's correct.

[00:02:27] Speaker 02:
And even the trial before that with AT&T, a similar process was used.

[00:02:32] Speaker 02:
So in this case, because of the four claims in sprint, two of them were not in T-Mobile and there is no affirmative defense against that, those claims still stand valid today under 101.

[00:02:47] Speaker 02:
So if that is what this court finds, then

[00:02:53] Speaker 02:
there's no basis for the district court judge to set aside this court's mandate under Rule 60, because there are still infringed valid claims in the case.

[00:03:04] Speaker 02:
That would be an error.

[00:03:07] Speaker 02:
I also want to talk about the collateral stopple issue.

[00:03:10] Speaker 02:
Collateral stopple is not.

[00:03:12] Speaker 04:
Could you just comment briefly on your opposing counsel's argument that there was a summary judgment decision that found all of those

[00:03:22] Speaker 04:
20 originally elected claims to be valid and patent eligible.

[00:03:27] Speaker 04:
And then their 50B motion referenced basically wanted to revisit that decision, that summary judgment decision by the district court, i.e.

[00:03:39] Speaker 04:
all 20 claims.

[00:03:40] Speaker 04:
And then it appeared that through the federal circuit briefing in the T-Mobile appeal, it appeared that the parties seemed to contemplate that the asserted claims did in fact include

[00:03:52] Speaker 04:
the very claims we're talking about here in this sprint litigation.

[00:03:57] Speaker 02:
The asserted claims in the T-Mobile trial went up on the appeal.

[00:04:04] Speaker 04:
Well, yeah, I know that's your position, but I'm trying to understand, well, would you agree that the Federal Circuit T-Mobile briefs appeared to be talking about the very claims that were in this sprint litigation?

[00:04:18] Speaker 02:
I think it's ambiguous at best.

[00:04:22] Speaker 02:
ambiguous that they were talking about the summary judgment.

[00:04:24] Speaker 04:
Well, at least the claims that were here.

[00:04:27] Speaker 04:
I mean, I can't remember the numbers, exact numbers.

[00:04:30] Speaker 04:
But some of the claims that you're saying survived the T-Mobile litigation, they were at least discussed in the briefs in the T-Mobile appeal.

[00:04:38] Speaker 04:
Is that fair to say?

[00:04:39] Speaker 02:
The claims themselves were not discussed.

[00:04:42] Speaker 02:
The summary judgment finding was discussed.

[00:04:45] Speaker 02:
And the summary judgment finding, the district court found that there were inventive concepts on the independent claims

[00:04:51] Speaker 02:
and further found there had been a concept on the dependent claims.

[00:04:54] Speaker 02:
I made a separate finding of that.

[00:04:56] Speaker 04:
So if I look in the T-Mobile Federal Circuit briefs, I won't find any reference to the two claims that you're saying survived?

[00:05:04] Speaker 02:
No.

[00:05:05] Speaker 02:
You won't see the reference to those specific claims.

[00:05:07] Speaker 02:
It could be asserted claims.

[00:05:10] Speaker 03:
I thought that if you looked at, I think I'm looking at the right pages, but appendix 36708 and 709, which I think is your, yeah,

[00:05:22] Speaker 03:
Yellow brief?

[00:05:24] Speaker 03:
Yes.

[00:05:25] Speaker 03:
Your yellow brief, you do actually refer to the claims here.

[00:05:41] Speaker 03:
As well as other claims that did not go to trial in the T-Mobile trial.

[00:05:50] Speaker 04:
I'm looking at A35094, A35095.

[00:05:54] Speaker 04:
That's your brief, right?

[00:06:04] Speaker 04:
Prism's brief.

[00:06:06] Speaker 04:
In the T-Mobile Federal Circuit Appeal.

[00:06:11] Speaker 04:
Where you identify, among other claims, towards the bottom of A35094, claim 33 of the 345 patent.

[00:06:21] Speaker 04:
besides that the functionality of the authentication server is at least partially distributed to another server.

[00:06:29] Speaker 04:
And then you go to the next page.

[00:06:32] Speaker 04:
In the middle, we talk about, or you talk about how some of these dependent claims, including claim seven of the 155 patent, is something coming from an external device inserted into a reader associated with a client computer or a SIM card.

[00:06:50] Speaker 04:
Getting back to my question, isn't it true that in Prism's brief, in the T-Mobile Federal Circuit Appeal, you identified and discussed the very claims that you're saying weren't part of that appeal?

[00:07:06] Speaker 02:
Yes, it was discussed in the appeal, but during oral argument, Judge Pruce asked if we have jurisdiction over those exact claims that were not subject to the T-Mobile trial.

[00:07:20] Speaker 02:
Those exact claims?

[00:07:22] Speaker 04:
Nobody discussed in the oral argument claim 33 of the 3, 4, 5, and claim 7 of the 1, 5, 5.

[00:07:30] Speaker 02:
What was discussed was would there be jurisdiction?

[00:07:33] Speaker 04:
That's right, right?

[00:07:34] Speaker 04:
That's correct.

[00:07:35] Speaker 04:
OK, so when you say the exact claims were said in the oral argument are not part of the appeal, I don't know if that's really accurate.

[00:07:43] Speaker 02:
Well, I guess what I'm trying to say is when we talk about the asserted claims on the appeal,

[00:07:50] Speaker 02:
Judge Pruce asked, does the court have jurisdiction over the claims because they're affirmative defenses?

[00:07:56] Speaker 02:
The party said, I said, and then T-Mobile counsel said, no, they're only affirmative defenses, not counterclaims.

[00:08:02] Speaker 02:
So in that particular instance, you have to go back to the Cardinal Kim case or several other cases and talk about once those claims are dropped, the affirmative defense is moot.

[00:08:15] Speaker 02:
So it would be akin to us trying to go back and say,

[00:08:20] Speaker 02:
those claims against T-Mobile, we'd like to go back and do a summary and do a appeal on infringement of those.

[00:08:26] Speaker 03:
We dropped them.

[00:08:27] Speaker 03:
Just to reiterate what I've referred to in passing at the beginning, the Sandisk and Alcon principle says, I think in terms, that we do not have jurisdiction over claims where there are no counterclaims that have been dropped by the patent owner along the way to getting to trial.

[00:08:49] Speaker 02:
That's correct.

[00:08:51] Speaker 02:
And that's a principle that we're relying upon.

[00:08:53] Speaker 02:
I do want to talk very briefly about the collateral stopple issue as well, because I think that's an important issue here.

[00:08:59] Speaker 02:
Collateral stopple was not meant to be retroactive.

[00:09:02] Speaker 02:
Collateral stopple, if you look at the Blonder Ton case, it was actually meant to be pled and given notice.

[00:09:10] Speaker 02:
In this case, the case was done.

[00:09:12] Speaker 02:
This case was passed finality.

[00:09:15] Speaker 02:
There is nothing left to do except enforce the judgment.

[00:09:19] Speaker 03:
Well, except a cert petition either was about to be filed or already had been filed.

[00:09:25] Speaker 03:
So it wasn't final in the usual sense, I think, relevant to leaving erroneous judgments in place.

[00:09:37] Speaker 02:
When we went to enforce the judgment when the mandate issued,

[00:09:41] Speaker 02:
I think it was done at that point.

[00:09:43] Speaker 03:
That's the... Right, but as you know, mandates issue even when cert is pending, and so the mandate is really of no significance for finality purposes.

[00:09:52] Speaker 02:
Well, this came up on our issue to enforce the judgment.

[00:09:58] Speaker 02:
The final judgment had been entered, the mandate had issued, and we went in to enforce that judgment and collect the bond that was, the supersedious bond that was out.

[00:10:11] Speaker 02:
The fact that you can go back retroactively and apply collateral stopple is against the very principles that Blonder Tongue and his progeny Mendenhall and others talk about.

[00:10:23] Speaker 02:
In those instances, in every single instance, there are pending litigations.

[00:10:29] Speaker 02:
The cases are pending.

[00:10:29] Speaker 02:
That's in Mendenhall, that's in Blonder Tongue, and every case after that.

[00:10:33] Speaker 02:
We cannot find a single case where collateral stopple was applied retroactively to a case after

[00:10:41] Speaker 02:
a mandate had issued.

[00:10:43] Speaker 02:
We couldn't find anything.

[00:10:44] Speaker 04:
Is there a case that says something to the contrary?

[00:10:47] Speaker 04:
After a mandate issues, you can never, ever, ever use collateral estoppel?

[00:10:52] Speaker 02:
I think Blondetongue is probably the most instructive because there it talked about the purpose of collateral estoppel, the pleading aspect, is to allow the person who's pled against a chance to argue.

[00:11:07] Speaker 02:
We never had due process.

[00:11:08] Speaker 02:
We did not have a chance.

[00:11:10] Speaker 02:
to address the collateral stoffel issue.

[00:11:13] Speaker 02:
It was something that was just thrown at us.

[00:11:15] Speaker 02:
We never had a chance to put together a record on the collateral stoffel.

[00:11:20] Speaker 03:
When they filed their 60B motion, you didn't have a chance to file an opposition to it?

[00:11:27] Speaker 02:
We filed an opposition, of course.

[00:11:29] Speaker 02:
But we couldn't develop a factual record because the case was over.

[00:11:37] Speaker 02:
This is the biggest issue about

[00:11:40] Speaker 02:
trying to apply Clairo-Stoppel retroactively.

[00:11:42] Speaker 02:
Could you imagine if a case two years, you know, you win a case, you could go collect judgment.

[00:11:48] Speaker 02:
Two years later, the patent's found invalid through IPR for other process.

[00:11:52] Speaker 02:
A petitioner could go under rule 60 and say, I'd like to reverse that judgment and get the money back.

[00:11:58] Speaker 02:
You can't go back in time once the case has gotten to the finality.

[00:12:03] Speaker 02:
So I think the application of Clairo-Stoppel doesn't apply.

[00:12:07] Speaker 04:
You're running out of time, but let me just quickly ask.

[00:12:10] Speaker 04:
Hypothetically, if we were to agree with you that the T-Mobile litigation did not invalidate two of the claims that were litigated in your case, would that just call for an outright reversal of the 60B grant?

[00:12:30] Speaker 04:
Yes.

[00:12:30] Speaker 04:
Or would we need to remand it back to the district court to decide whether to reevaluate

[00:12:38] Speaker 04:
or how to re-evaluate Sprint's 60B motion, given that some of the claims that were litigated in this case and that were the basis of the damages verdict, in fact, were invalidated in T-Mobile, assuming we agree that collateral stopple properly applies.

[00:13:00] Speaker 02:
If you agree with collateral stopple and there was exceptional circumstances under the 60B, which I don't have time to address right now, but I'll stay on the papers,

[00:13:07] Speaker 02:
I think reversal would be the appropriate remedy.

[00:13:10] Speaker 02:
Two claims would be standing, valid claims that were found valid and infringed.

[00:13:15] Speaker 02:
So I think a reversal would be the adequate.

[00:13:18] Speaker 04:
And then two claims were invalidated, though.

[00:13:20] Speaker 02:
Yeah, but, you know, the law of- That were found to be infringed.

[00:13:24] Speaker 02:
Yeah.

[00:13:25] Speaker 02:
Two that were found to be valid and infringed, those would support the damages award.

[00:13:32] Speaker 03:
And there was no argument in the 60B motion, as I understand it.

[00:13:35] Speaker 03:
Tell me if this is wrong.

[00:13:37] Speaker 03:
for essentially half a loaf relief, namely, Sprint didn't say, even if some of the four claims at issue here are invalid, then we need a new trial.

[00:13:50] Speaker 02:
That was I in the 60B.

[00:13:53] Speaker 04:
Before you go, your side was part of the PRISM demobile litigation.

[00:13:59] Speaker 04:
Is there a way we can get a copy of that joint stipulation order notifying the trial court about the

[00:14:07] Speaker 04:
whittling down of the elected claims down to whatever it was, six claims that were actually debated at trial.

[00:14:15] Speaker 02:
It may have just been email correspondence between the parties, but we'll get that to you, yes.

[00:14:21] Speaker 00:
Good, thank you, Mr. Andrews.

[00:14:22] Speaker 00:
I'll save you rebuttal time.

[00:14:26] Speaker 00:
Mr. Phillips.

[00:14:33] Speaker 01:
Good morning, Your Honor, as it may please the Court.

[00:14:35] Speaker 01:
Let me start just

[00:14:37] Speaker 01:
quickly on the finality point because it does seem to me that Mendenhall completely answers that particular question.

[00:14:43] Speaker 01:
I mean Mendenhall specifically says that you can raise the collateral estoppel at any time during the during the at any stage of the proceedings and it specifically says absent a final judgment ending the litigation that it's a that it's not final for purposes of the collateral estoppel rule and Mendenhall and therefore we clearly have the additional proceedings going forward

[00:15:04] Speaker 01:
and the district court properly apply rule 60 under those circumstances.

[00:15:07] Speaker 03:
I don't want to dwell on this, but I guess I do want to ask you about this.

[00:15:11] Speaker 03:
It seems to me that your argument doesn't actually feel like a collateral estoppel argument.

[00:15:20] Speaker 03:
Because when I think of collateral estoppel, there has to be the same issue in the two cases.

[00:15:24] Speaker 03:
And the first case resolves an issue, and then it thereby resolves the issue in this case.

[00:15:31] Speaker 03:
And we don't have any validity issue.

[00:15:33] Speaker 03:
So it feels like this is a kind of a patent policy rule that says when a patent is still being pressed, if it has been held invalid elsewhere, it can no longer be pressed.

[00:15:49] Speaker 03:
But that wouldn't really satisfy the fundamental requirements of collateral estoppel.

[00:15:53] Speaker 01:
No, I agree with that.

[00:15:54] Speaker 01:
And I think if you, I mean, blonder tongue has always been thought of as a sort of collateral estoppel case.

[00:15:59] Speaker 01:
But the reality is that what

[00:16:01] Speaker 01:
what grove one of a great clause at the end of was that was that language that would said basically there's a fundamental public policy of the United States that you cannot obtain recompense for a patent that has been declared invalid and that that's an overriding policy and it trumps contractual agreements to the contrary it trumps notions of finality unless you have something where you're at the final proceedings and there is no litigation I guess when it comes to issue preclusion there's no validity issue in your case and sprint right

[00:16:31] Speaker 04:
I mean, for whatever reason, Brent never challenged the validity of the patent.

[00:16:36] Speaker 01:
Right.

[00:16:36] Speaker 01:
So what we're basically arguing, and what Blondertongue, I think, creates the basis for, and what Mendenhall says plainly is, even if you didn't raise the validity issue, you still are entitled to have the validity determined at any stage in the proceedings, and you cannot recover.

[00:16:56] Speaker 01:
The patent holder cannot recover

[00:16:59] Speaker 01:
when the patent has in fact been declared invalid.

[00:17:02] Speaker 03:
I'm not sure if Mendenhall gets you there because as I recall right there were the two cases involved in Mendenhall and one there was a validity issue raised and the other there was essentially a contract which is to say a promise we will be bound by the other thing.

[00:17:16] Speaker 03:
So that seemed to me to fit pretty comfortably within the ordinary standards of issue preclusion.

[00:17:22] Speaker 01:
Nevertheless... But if you look at page 1578, I'll just quote it for you, this court rejected the argument

[00:17:28] Speaker 01:
The Thompson-Hayward could not raise the defense because it had never challenged the validity of the pad in the trial.

[00:17:33] Speaker 01:
So the case of the court relied on him, and it all specifically involved that situation.

[00:17:37] Speaker 01:
And the court embraced that.

[00:17:38] Speaker 03:
But that was also a praise, I'm sorry, a promise case, if I remember right.

[00:17:43] Speaker 03:
They say, we will be bound by whatever is happening in the other cases.

[00:17:46] Speaker 01:
Right, which is essentially what, I mean, in terms of the stipulation.

[00:17:48] Speaker 03:
But there wasn't that here, which makes this unusual.

[00:17:53] Speaker 03:
But I'll take as a given for the rest of this, that if there's even an unraised invalidation, even without validity issues or promises in the second case.

[00:18:06] Speaker 01:
Right, that there is an overriding public policy of not allowing patent holders to extract from patents that have been declared invalid.

[00:18:13] Speaker 03:
So how do we legitimately find that our T-Mobile ruling covered, what, 33 and 7 here?

[00:18:23] Speaker 03:
original Asserted claims were the 20 asserted claims out of the whatever several hundred claims that were in that patent that that's specific and that's where the language asserted claims come from well, no, I don't think it actually does because in T-Mobile's rule 50 be motion It specifically uses the language asserted claims to refer to only the six that were tried

[00:18:48] Speaker 01:
At some points it does, and at some points it doesn't.

[00:18:50] Speaker 01:
Right, but the Rule 50 motion is what we said we were ruling on.

[00:18:54] Speaker 01:
Right, but T-Mobile's Rule 50 motion specifically asks for declaratory judgment of ineligibility as to all of the patents.

[00:19:02] Speaker 01:
And if you look at page 10 of that brief, which is 34-7-30, footnote 8-4, I'm sorry, it says, well, PRISM subsequently narrowed the case at trial.

[00:19:17] Speaker 01:
T-Mobile maintains that all of the claims addressed in its motion are patent and eligible, and then it later says... I'm sorry, what page are you at?

[00:19:25] Speaker 01:
That's 34,730.

[00:19:28] Speaker 01:
I apologize.

[00:19:31] Speaker 01:
Okay, this is your federal circuit brief.

[00:19:34] Speaker 01:
This is T-Mobile's federal circuit brief.

[00:19:37] Speaker 01:
Right, this isn't your 50B motion.

[00:19:40] Speaker 01:
No, but what I'm saying is that for purposes of how this litigation has gone forward,

[00:19:44] Speaker 01:
In the 50B motion, they specifically identify seeking declaratory relief.

[00:19:49] Speaker 01:
And when they get to this court, they cross-appeal, specifically to put the eligibility issues before this.

[00:19:55] Speaker 03:
We don't know that, because they had an attorney's fees appeal.

[00:19:57] Speaker 03:
They needed the cross-appeal for that anyway.

[00:19:59] Speaker 03:
Yeah, but... And lots of people file incorrect and unnecessary cross-appeals.

[00:20:03] Speaker 03:
In that one, it was actually necessary, because they were appealing to the BIOIDs.

[00:20:06] Speaker 01:
Right, but it would also be necessary if you were trying to knock out the remaining claims of the patent, which have been held

[00:20:12] Speaker 01:
But for which there is, in fact, a summary judgment that they are valid as against you.

[00:20:17] Speaker 04:
But wasn't there a colloquy in the oral argument here in the T-Mobile appeal that confirmed that all the validity questions that T-Mobile was advancing was in the context of an affirmative defense and not a counterclaim?

[00:20:30] Speaker 01:
No.

[00:20:31] Speaker 01:
The exchange is very clear.

[00:20:33] Speaker 01:
I don't think she uses words like that.

[00:20:36] Speaker 01:
Judge Laurie.

[00:20:37] Speaker 01:
Or maybe it was Judge Laurie.

[00:20:38] Speaker 01:
It says specifically, refers to 102 and 103, which were, in fact,

[00:20:43] Speaker 01:
defenses as tried throughout the litigation.

[00:20:47] Speaker 01:
There had also been a request for counterclaim as to those.

[00:20:49] Speaker 01:
And so the concern was, having not addressed the counterclaim as to 102 and 103, was there really a final judgment now?

[00:20:58] Speaker 01:
And they said, no, those issues had merged.

[00:21:01] Speaker 01:
But it was always the position of T-Mobile, both before the district court, which is what the district court held in the 60B motion.

[00:21:08] Speaker 01:
But even in the proceedings before this court, T-Mobile consistently said,

[00:21:12] Speaker 01:
We see we cross appeal to challenge the eligibility determination of the district court.

[00:21:17] Speaker 01:
But how can they do that?

[00:21:18] Speaker 03:
Because I think it is actually quite clear that as to 101, there was no counterclaim.

[00:21:24] Speaker 03:
I know you have a little argument, but put that aside.

[00:21:28] Speaker 03:
That was only an affirmative defense.

[00:21:30] Speaker 03:
And then you have cases.

[00:21:32] Speaker 01:
You're going to say as to 101 that there was never a counterclaim?

[00:21:34] Speaker 01:
That's exactly right.

[00:21:35] Speaker 03:
But I mean, I think, if I remember right, all you have is that in the answer to the third amended complaint or second amended complaint, there's a kind of introductory phrase about invalidity that says under section 35 USA 1 and others.

[00:21:56] Speaker 03:
But then the specific counterclaims are only 102 and 103 and 112 maybe also.

[00:22:01] Speaker 01:
Right.

[00:22:01] Speaker 01:
What it says is not 102.

[00:22:03] Speaker 01:
Right, but that's in the answer to the counterclaim.

[00:22:05] Speaker 01:
But when you get to the point where you're talking about in T-Mobile's own description of the post-trial rulings in its brief to this court, it says following trial, T-Mobile renewed its request for declaratory judgment that the asserted claims are patent ineligible, citing to the appendix 39209 and 39215 of the appendix in that case.

[00:22:27] Speaker 04:
So what is that supposed to tell us?

[00:22:29] Speaker 04:
Are you saying that at least it was T-Mobile's

[00:22:32] Speaker 04:
belief, subjective belief that it had, in fact, filed a counterclaim on Section 101 grounds?

[00:22:38] Speaker 01:
Well, I don't know that it's a subjective belief.

[00:22:40] Speaker 01:
I think it actually, it did, in fact, file.

[00:22:43] Speaker 01:
It filed summary judgment that those claims are ineligible for patentability.

[00:22:47] Speaker 01:
It defended it.

[00:22:48] Speaker 01:
It cross-appealed on that basis.

[00:22:51] Speaker 04:
Let me ask it this way.

[00:22:52] Speaker 04:
Is your position that all of the claims in the Sprint case were invalidated in the T-Mobile

[00:23:00] Speaker 04:
contingent on us concluding that there was a counterclaim filed by T-Mobile on Section 101 grounds?

[00:23:08] Speaker 01:
No, I think at the end of the day, it doesn't matter, because I think whether or not this court had jurisdiction.

[00:23:12] Speaker 04:
OK, so let's assume for the moment we don't find or we don't conclude that there was ever a Section 101 invalidity counterclaim in the T-Mobile case.

[00:23:21] Speaker 04:
And the Section 101 invalidity was just an affirmative defense.

[00:23:28] Speaker 04:
Where does that take us?

[00:23:30] Speaker 04:
Given that it appears that what was actually litigated at trial in front of a jury in T-Mobile were a handful of claims that didn't completely encompass all of the claims here litigated in the Sprint case.

[00:23:43] Speaker 01:
But what was actually litigated in this court was, and this is the heading from Prism's brief to this court, the district court found the asserted claims to be patent eligible

[00:23:56] Speaker 01:
And then you go to the two pages, I think, Judge Toronto, you identified, or maybe it was you, Judge Chen, where they specifically- Exactly the same pages appear twice in the joint appendix.

[00:24:05] Speaker 01:
Right, where they defend exactly these provisions as what?

[00:24:09] Speaker 01:
The asserted claims to be patent eligible.

[00:24:12] Speaker 01:
Where's the language that Prism used about the asserted claims?

[00:24:18] Speaker 01:
That's in page 10 and 11 of our brief, Your Honor, in which they say the same- I mean, they quote the exact language.

[00:24:25] Speaker 01:
7 and 37 and say that they each provide very concrete ways that make this concept inventive.

[00:24:38] Speaker 04:
I'm sorry, are you referring to PRISM's T-Mobile Federal Circuit Brief or are you referring to PRISM's T-Mobile Federal Circuit Brief?

[00:24:48] Speaker 04:
If you're talking about the actual claims 33 and 7 that were referenced by a party in the T-Mobile Federal Circuit appeal brief, then that was done by PRISM's brief.

[00:25:06] Speaker 01:
Well, it was done by both.

[00:25:07] Speaker 01:
It was done by both?

[00:25:08] Speaker 01:
Yeah, it was done by T-Mobile as well.

[00:25:11] Speaker 01:
If you look at 35094, that's PRISM's brief.

[00:25:16] Speaker 01:
Right.

[00:25:16] Speaker 01:
Right.

[00:25:16] Speaker 01:
And then T-Mobile's brief.

[00:25:19] Speaker 01:
It's not actually in the joint, that's not in the joint appendix, but obviously the court can take public notice of filing in this case.

[00:25:27] Speaker 01:
But if you look at pages, I apologize, pages 66 and 67, in the T-Mobile brief, raising these issues on its cross appeal specifically says similarly tracking usage data to be applied for building purposes

[00:25:46] Speaker 01:
155 claim 37 is not invented, but rather inherent in any postpaid services to telephone or utilities.

[00:25:54] Speaker 01:
And finally, having an additional piece of generic software, at least one of the functions of Authentic Server adds nothing invented.

[00:26:00] Speaker 01:
So they raised those specific claims in their cross-appeal.

[00:26:05] Speaker 01:
The PRISM didn't challenge it, didn't say you should dismiss that part of the cross-appeal, responded to it in kind, said, absolutely, those are eligible.

[00:26:13] Speaker 01:
The reply brief comes back in and says, no, they're all not eligible.

[00:26:17] Speaker 01:
So there's no question they had a full and fair opportunity in this court.

[00:26:19] Speaker 04:
Here's a hypothetical.

[00:26:21] Speaker 04:
Do the parties have the power to litigate something that had been mooted at the district court level?

[00:26:28] Speaker 04:
I think the answer would be no.

[00:26:29] Speaker 04:
Even if everyone was under the mistaken belief that these claims were still somehow part of the case, that can't control what this court is empowered to adjudicate.

[00:26:42] Speaker 01:
Well, I think for purposes of dealing with this, I mean, this court undeniably adjudicated that, in my mind, undeniably adjudicated that issue.

[00:26:50] Speaker 01:
They never challenged it as being beyond the court's jurisdiction to decide at all.

[00:26:55] Speaker 03:
But our opinion, am I misremembering?

[00:26:58] Speaker 03:
I thought, I guess I remember being struck by the fact that our opinion doesn't say what claims it's adjudicating.

[00:27:05] Speaker 03:
You just can't tell from the opinion.

[00:27:07] Speaker 03:
Is there something in our opinion that actually identifies the claims being adjudicated?

[00:27:13] Speaker 03:
Everybody agrees claim one is representative.

[00:27:15] Speaker 03:
But representative of what?

[00:27:16] Speaker 03:
Of six claims or of 20?

[00:27:18] Speaker 03:
Right.

[00:27:19] Speaker 01:
But if you put it against the context of how the case was litigated to them, and remember, the only basis for the disposition is the cross appeal.

[00:27:31] Speaker 01:
I mean, the case is disposed on the cross appeal.

[00:27:33] Speaker 01:
The only substantive issue in the cross appeal is the eligibility issues that applied as to all of the patents and was litigated as to all of the patents.

[00:27:41] Speaker 01:
It would be passing strange for them to say, all we're going to decide is a cross-appeal as to these two specific points, as to only two of the specific claims under these circumstances, having had a full and fair argument on the basis of the entirety of the claims.

[00:27:56] Speaker 01:
So I don't think there's any question what this panel thought it was deciding.

[00:27:59] Speaker 01:
Whether it had jurisdiction to decide that at this point, I think, is beside the point.

[00:28:03] Speaker 01:
It declared it invalid.

[00:28:05] Speaker 01:
Its judgment is final.

[00:28:07] Speaker 01:
there is no basis for another court's dissimilar basis for the district court for this court the second guess that ruling by the court when it's clearly had the issue before and resolve the issue before and what would make this all particularly anomalous is it is a hundred percent clear that all these twenty claims are patented and eligible well except you didn't make any argument of the sort that said and your only basis for uh... your sixty b motion whether it's blunder tongue or mendenhall which is

[00:28:37] Speaker 03:
That's already been decided.

[00:28:38] Speaker 03:
So we don't have a question where there is a different set of claims here, but logic tells you if those are invalid than these, or you don't have an argument like that.

[00:28:49] Speaker 03:
You just have a, this has been invalidated, so the claims here must be gone, which seems to me to make everything turn on what one can discern was actually held invalid.

[00:29:04] Speaker 03:
And it seemed to me, I guess, that we

[00:29:07] Speaker 03:
did not say, in our opinion, what claims were in front of us.

[00:29:11] Speaker 03:
And what we did say was we're ruling on the cross-appeal from the denial of 50B, and T-Mobile in the 50B says expressly the asserted claims are the six.

[00:29:25] Speaker 03:
So I guess I'm having some trouble getting to the conclusion that

[00:29:33] Speaker 03:
All of the claims at issue here were, in fact, invalidated by this court's rule.

[00:29:39] Speaker 01:
Except that when they talk about the... When the court talked on 34226, when T-Mobile seeks Jamal, it specifically talks about a declaratory judgment in that case on ineligibility of all of the claims therein.

[00:30:03] Speaker 01:
referring specifically to the summary judgment.

[00:30:05] Speaker 01:
Which page are you referring to?

[00:30:07] Speaker 01:
I'm hoping it's 34226.

[00:30:17] Speaker 01:
Does not prevent it from now entering a declaratory judgment of ineligibility.

[00:30:22] Speaker 01:
Requests the court enter judgment that the asserted claims of prison patented suits are ineligible.

[00:30:27] Speaker 03:
But then everything depends on what asserted claims mean.

[00:30:29] Speaker 03:
If you go two pages over to

[00:30:31] Speaker 03:
to, I guess, several pages, four pages over to 34230.

[00:30:39] Speaker 03:
For example, although the inventors testified that the inventive aspect of their patents focused on hardware identifier, et cetera, then instead the asserted claims begin with step of receiving.

[00:30:51] Speaker 03:
So this is, and then what's cited there is exactly the six claims at issue.

[00:30:55] Speaker 03:
TX1, that's the 345 patent, Claim 1,

[00:30:58] Speaker 03:
see also 77 and 87, and then TX2, which is the 155, which is claims 11, 37, and 56.

[00:31:05] Speaker 03:
So they're exactly the six claims that are in the verdict form.

[00:31:11] Speaker 03:
So I guess what I'm thinking is the asserted claims changed over time.

[00:31:17] Speaker 03:
And by the time this was filed, T-Mobile was recognizing there were six of them and not more.

[00:31:24] Speaker 03:
There used to be 25 or something.

[00:31:26] Speaker 01:
But I don't know how you could square it.

[00:31:28] Speaker 01:
I mean, I get that there is confusion as to what asserted claims means, because it has meaning in different contexts.

[00:31:34] Speaker 01:
But I don't see how you get out of the fact that in response to the cross-appeal, seeking to get an affirmance of a declaratory judgment that these are invalid, PRISM specifically, its heading is, the asserted claims are patent eligible.

[00:31:54] Speaker 01:
And that's in response to an argument specifically made by T-Mobile that all of those claims are ineligible.

[00:32:01] Speaker 01:
So at that point, at a minimum, prism understood.

[00:32:04] Speaker 03:
And what you're referring to by the T-Mobile specifically argument is the footnote that says T-Mobile maintains that they're also.

[00:32:11] Speaker 01:
That's part of it.

[00:32:12] Speaker 03:
What else is there?

[00:32:13] Speaker 03:
And then you may have pages from T-Mobile's brief that are not in the joint appendix.

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

[00:32:17] Speaker 01:
And then they say, following trial, T-Mobile renewed its request for declaratory judgment

[00:32:21] Speaker 01:
that the asserted claims are patent and eligible.

[00:32:25] Speaker 01:
And in that, it says, it has consistently, and it said, all of the claims that we raised in the summary judgment.

[00:32:33] Speaker 01:
That was what we understood all along.

[00:32:37] Speaker 01:
Right, 34787 refers to all of the claims therein, referring to the summary judgment motion.

[00:32:44] Speaker 01:
So undeniably, we're bringing in all of those.

[00:32:47] Speaker 01:
Everybody understood that.

[00:32:52] Speaker 01:
And what I was going to say, Judge Toronto, as to how it's anomalous is we know there are two more defendants out there, US Alula and Verizon.

[00:33:01] Speaker 01:
And there is no way that either of them is going to pay a nickel on these claims.

[00:33:05] Speaker 01:
Did they raise 101 defenses?

[00:33:06] Speaker 01:
Yes, I think they have.

[00:33:08] Speaker 01:
It's not a small distinction.

[00:33:10] Speaker 01:
Well, but if they didn't do it before, they will certainly do it now.

[00:33:14] Speaker 01:
And so you're now in a position where absolutely invalid claims, and that nobody can seriously doubt are invalid,

[00:33:21] Speaker 01:
Candidly, and I don't think you can doubt that the panel itself ruled that way in any event.

[00:33:27] Speaker 01:
It's going to be held to say that one party is entitled to $30 million, and nobody else has to pay a penny on that.

[00:33:34] Speaker 01:
That's exactly what Blondertown and Mendenhall say you shouldn't do.

[00:33:39] Speaker 01:
Just, Shin, the one question I want to ask you, or one of the answers that you asked, which is, what do you do if you say, OK, I'm not sure that those two are in or out?

[00:33:46] Speaker 01:
I think it's not in reverse.

[00:33:49] Speaker 01:
You'd send it back to the district court to make another determination of what's the effect of knocking out those that have been, in fact, knocked out, and then determine whether or not it's fair under those circumstances.

[00:34:00] Speaker 04:
How would collateral estoppel, and I'm using that term a little loosely here, apply in this context when we would know that a certain number of the claims, in fact, did survive?

[00:34:13] Speaker 01:
Right.

[00:34:13] Speaker 01:
But we also know that two of those claims are dead on arrival.

[00:34:16] Speaker 01:
And they don't dispute that.

[00:34:17] Speaker 01:
They were tried.

[00:34:19] Speaker 01:
and declared undeniably invalid.

[00:34:24] Speaker 01:
And there's no way with a general verdict to know how the jury came out the way it did.

[00:34:29] Speaker 01:
And the principle of law right from Blondertongue is patent holders should not take a nickel for claims that are invalid.

[00:34:38] Speaker 03:
You happen to know whether the damages case, either the affirmative case by Prism or whatever your defensive case was,

[00:34:49] Speaker 03:
said anything about whether different damages might exist depending on which claims were infringed?

[00:34:56] Speaker 01:
I don't know the answer to that specific question, Your Honor.

[00:34:59] Speaker 01:
But it would seem to me the easiest solution to the problem would be to say what we know is you can't take from the claims that have been declared invalid.

[00:35:06] Speaker 03:
Except this was not part of your 60B motion.

[00:35:10] Speaker 01:
Well, we ask for everything to be, I mean, you could say it's fairly subsumed within the request across the board.

[00:35:16] Speaker 01:
I guess we could just... Yeah, no, I guess we did say in our reply

[00:35:19] Speaker 01:
at 60B and 35081 that you have to reopen the judgment because at least two of the claims have been declared invalid.

[00:35:28] Speaker 01:
So we did, in fact, present that to Your Honor.

[00:35:30] Speaker 00:
Anything else for Mr. Phillips?

[00:35:31] Speaker 04:
Thank you.

[00:35:32] Speaker 00:
Any more questions for Mr. Phillips?

[00:35:35] Speaker 04:
There'd be nothing that would prevent you from just refiling a 60B motion predicated on this new theory that half the claims have been validated and therefore somehow that requires to set aside at least a portion of the damages for it.

[00:35:49] Speaker 04:
Is that right?

[00:35:49] Speaker 01:
If we were to... Yeah, I mean, I guess if you... Well, you'd have to... Yeah, I mean, reverse and presumably... Can I do that?

[00:35:59] Speaker 01:
My bad.

[00:36:01] Speaker 01:
I've been doing this a long time and it never happened to me.

[00:36:04] Speaker 01:
Okay.

[00:36:04] Speaker 01:
Okay, thanks.

[00:36:05] Speaker 00:
Okay.

[00:36:06] Speaker 00:
Good.

[00:36:07] Speaker 00:
Thank you, Mr. Phillips.

[00:36:09] Speaker 00:
Thank you, Your Honor.

[00:36:10] Speaker 00:
We'll start with five extra and we'll see.

[00:36:15] Speaker 00:
Mr. Andre.

[00:36:16] Speaker 02:
Thank you.

[00:36:19] Speaker 02:
The one thing that my friend did not address is the concept that if these are affirmative defenses, and those claims were not tried, and does this court have jurisdiction over those claims?

[00:36:33] Speaker 02:
And I think the answer to that is no.

[00:36:35] Speaker 02:
They're affirmative defenses.

[00:36:38] Speaker 02:
Once we drop those claims and they're not tried, those affirmative defenses become moot.

[00:36:44] Speaker 02:
I also want to talk about, very briefly,

[00:36:47] Speaker 02:
exceptional circumstances.

[00:36:48] Speaker 04:
Just hypothetically, if our opinion in the T-Mobile appeal had in fact called out claims 33 and 7 in the decision in validating them and the others under section 101, then even though you may have some kind of jurisdiction argument given what claims are actually asserted at trial, you wouldn't really be able to have an argument that

[00:37:15] Speaker 04:
we couldn't have meant what we said when we said what we said in the opinion.

[00:37:19] Speaker 04:
Is that fair to say?

[00:37:21] Speaker 02:
It's fair that if this court tells me what the law is, I follow what this court says.

[00:37:26] Speaker 02:
So yeah, that's correct, Judge Chen.

[00:37:29] Speaker 02:
I think that didn't happen, obviously.

[00:37:34] Speaker 02:
The idea that you could go back in time and take away a verdict that they had their bite of the apple, as Judge Toronto talked about, they waived their invalidity.

[00:37:45] Speaker 02:
They didn't bring up the 101 or 102, 103, 112 trial.

[00:37:48] Speaker 02:
They just intentionally dropped those.

[00:37:52] Speaker 03:
I guess it keeps seeming to me that everything here comes down to how we interpret what happened in T-Mobile.

[00:38:01] Speaker 03:
Now it's true that there was not a formal, I don't mean to diminish it by that, formal counterclaim about 101.

[00:38:09] Speaker 03:
On the other hand,

[00:38:13] Speaker 03:
The parties more or less agreed by their actions or their words that the 101 issue that had been decided at summary judgment remained in the case.

[00:38:29] Speaker 03:
Why should we not treat that as a de facto acceptance of what amounts to a counterclaim, even though not formally said, which would then enable their argument to get off and

[00:38:42] Speaker 03:
I didn't, you know, get off to the, go off to the races.

[00:38:46] Speaker 03:
Um, but, um, and then the striking fact is what you said in your briefs in this court in which you discussed not only 33 and one, but a bunch of other claims that were the subject of the summary judgment ruling, but not tried.

[00:39:04] Speaker 02:
Yeah.

[00:39:04] Speaker 02:
I think the briefing on those issues, they were not tried.

[00:39:09] Speaker 02:
They were, uh, meant to put in the inventive concepts.

[00:39:13] Speaker 02:
that were found by the district court judge.

[00:39:16] Speaker 03:
But the inventive concepts that appear only in claims not at issue really shouldn't have been relevant.

[00:39:23] Speaker 03:
The claims certainly were suggesting that they were at issue.

[00:39:28] Speaker 02:
I think maybe that is an advocacy position you take during briefing that it doesn't change the fact that in our initial, our appeal, we appealed the infringement finding of the six claims in T-Mobile.

[00:39:43] Speaker 02:
And we didn't address the other claims that were dropped.

[00:39:47] Speaker 03:
So I think that... Yeah, but you wouldn't have addressed those in yours.

[00:39:51] Speaker 03:
This was probably an unnecessary cross appeal if it was, in fact, only affirmative defenses, but necessary because of the fees questions.

[00:40:01] Speaker 03:
But then the question is, what can one tell from the briefing, in particular, I guess, from your yellow brief, the third round of four rounds, about what you thought was in front of the court?

[00:40:13] Speaker 03:
And your discussion of a whole lot of claims that were not tried, I think, communicates you thought that the 101 issue before this court was not limited to the tried claims.

[00:40:28] Speaker 02:
Well, I think it's hard to go back and think what was in the mind when you were drafting out briefs, because the 101 issue that we thought was inappropriate before the district court, even to some re-judgment standing stage, we said that they did not plead.

[00:40:43] Speaker 02:
the 101 properly, even at the summary judgment.

[00:40:47] Speaker 02:
They didn't have a claim for 101 in the case, not even as an affirmative defense.

[00:40:52] Speaker 02:
That was our briefing down below.

[00:40:54] Speaker 02:
And so when we come up to this court and they bring up on a counterclaim, we do mention all the claims in which the judge referred to, but it doesn't change the fact that it doesn't confer jurisdiction on this court, on the T-Mobile panel, because that was not tried before, you know,

[00:41:12] Speaker 02:
the jury.

[00:41:12] Speaker 03:
Unless we could fairly characterize your action in this court as having effectively accepted that there was a counterclaim, though not formally stated.

[00:41:23] Speaker 02:
Well, then you had to go back to the briefing down below where we actually said that we didn't think they planned it at all, even as an affirmative defense, and the District Court judge disregarded our argument on that point.

[00:41:37] Speaker 02:
With my last few seconds, I do want to just talk about the

[00:41:40] Speaker 02:
the exceptional circumstances that you'd have to find under Rule 60B, and what effect the waiver has on that, the waiver defenses, even if you were to find that there were counterclaims and the claims are invalid.

[00:41:53] Speaker 02:
When you waive the defense, this court in Fisker, Lazar, Louisville Betting, and Broyhill, and the Supreme Court in Ackerman, all found that once you waive that defense, you can't go back and get it back on 60B.

[00:42:08] Speaker 02:
So there's precedent that

[00:42:10] Speaker 02:
Any of those collateral estoppel cases?

[00:42:12] Speaker 02:
I don't think they were.

[00:42:14] Speaker 02:
They were not collateral estoppel per se, but it was on CCB.

[00:42:17] Speaker 02:
If you waive a defense, you can't go back and recover.

[00:42:19] Speaker 02:
They were all claim construction, unenforceability, evidence of infringement, and that type of stuff.

[00:42:27] Speaker 02:
It wasn't collateral estoppel, but it was defenses that the other side waived and intentionally abandoned.

[00:42:33] Speaker 02:
So I don't think there's an exceptional circumstance in this case.

[00:42:38] Speaker 00:
For the questions?

[00:42:40] Speaker 00:
Any more questions?

[00:42:41] Speaker 02:
Thank you very much, Your Honor.

[00:42:42] Speaker 00:
Thank you.

[00:42:42] Speaker 00:
Thank you both.

[00:42:43] Speaker 00:
The case is taken under submission.