[00:00:02] Speaker 01:
The first case for argument this morning is 172507 Tech Global versus Sealant Systems.

[00:00:10] Speaker 01:
Mr. Gibson, whenever you're ready.

[00:00:17] Speaker 02:
Good morning, Your Honor.

[00:00:18] Speaker 02:
May it please the Court, Stan Gibson on behalf of Sealant Systems and ITW Global Tire Repair.

[00:00:25] Speaker 02:
The judgment below should be reversed for several independent reasons, two of which I will focus on today.

[00:00:32] Speaker 02:
The first is the district court erred in denying judgment as a matter of law on the issue of lost profits.

[00:00:39] Speaker 02:
Because in the first instance, that's an issue of law for the court.

[00:00:43] Speaker 02:
And the district court did not analyze properly the capacity issue, because there was no evidence presented by tech on capacity in addition to other problems.

[00:00:52] Speaker 02:
Second, the district court erred in claim construction by not construing the container connecting conduit

[00:00:59] Speaker 02:
in the patent, Claim 26, as a means plus function term, which was discussed during the claim construction hearing.

[00:01:08] Speaker 02:
In addition, there was not substantial.

[00:01:11] Speaker 05:
In the blue brief at 23, SSI contends that, quote, Claim 26 requires that the outer casing connect the container to the compressor, close quote.

[00:01:26] Speaker 05:
I believe that would require a construction that the outer casing rather than the kit is the antecedent of the phrase and the phrase is and additionally comprising a container connecting conduit.

[00:01:41] Speaker 05:
Where in the record below did SSI argue for that construction?

[00:01:46] Speaker 02:
That's a different issue than the means plus function issue, Your Honor.

[00:01:50] Speaker 02:
In the means plus function, the container

[00:01:52] Speaker 02:
The means plus function issue, the container connecting conduit, should be construed as a means plus function term, which is a different point than the outer casing has to be the part that has the connecting conduit.

[00:02:04] Speaker 02:
So there's a difference between claim 1 and claim 26 in that regard.

[00:02:07] Speaker 02:
Claim 1 talks about the kit.

[00:02:10] Speaker 02:
In claim 26, to your honor's point, we were arguing the plain meaning and the fact that there are three separate independent clauses that talk about the kit comprising.

[00:02:22] Speaker 05:
And that the So you're not arguing for any construction?

[00:02:25] Speaker 02:
Not on that issue, Your Honor.

[00:02:26] Speaker 02:
That's just a plain meaning argument, Your Honor, and that there was not substantial evidence to support the jury's finding because the outer casing, in the plain meaning, the outer casing has to be the part that connects the kit or connects the container to the compressor.

[00:02:43] Speaker 02:
And everyone agreed in the court below that the outer casing did not make that connection.

[00:02:48] Speaker 05:
OK.

[00:02:49] Speaker 05:
Regarding admissibility of the IPR,

[00:02:52] Speaker 05:
As I understand the record, despite the court granting SSI's motion to exclude reference to prior proceedings, the district court found that SSI's opening statement with multiple mentions of, quote, prior art that may or may not have been before the PTO likely left a misimpression about the degree to which the PTO, I'm quoting, considered prior art, and that misimpression has to be cured.

[00:03:21] Speaker 05:
by the court to choose a cure of either a jury instruction or on cross-examination, according to the record, you said it probably makes sense to deal with an on-cross examination.

[00:03:34] Speaker 05:
Is that correct?

[00:03:35] Speaker 02:
That is correct, Your Honor.

[00:03:36] Speaker 02:
After being given the choice of either having a stipulation or it being done on cross-examination, the district court had decided that the

[00:03:45] Speaker 02:
There would be a remedy, and there would be a discussion of the IPR, and left it up to- Did you further object during cross-examination?

[00:03:53] Speaker 02:
I don't believe that there was a further objection during cross-examination given the court's prior- But the court had previously decided not to let the IPR evidence in, right?

[00:04:02] Speaker 01:
That's correct, Your Honor, after a motion in Lumine.

[00:04:04] Speaker 01:
And it was only because, in his view, of your discussion of the examination, that that would be allowed, right?

[00:04:13] Speaker 01:
That's correct, Your Honor.

[00:04:15] Speaker 04:
Could I ask you to address the district court's treatment of the Bridgestone reference and the question of whether that is error?

[00:04:25] Speaker 04:
As I understand it, on our initial appeal, I think Judge Wallach and I were both on the original panel, that it was the hose that you identified was in the figure one was hose 54, correct?

[00:04:44] Speaker 02:
That's correct, Your Honor.

[00:04:45] Speaker 04:
And now you are arguing that a different hose, which is labeled 66 in that Figure 1, is the connecting hose, correct?

[00:04:57] Speaker 02:
That is correct, Your Honor.

[00:04:58] Speaker 02:
And we were not permitted to make that argument because the district court interpreted the federal circuits, which Your Honor and Judge Wallach were on the panel, interpreted that ruling as precluding

[00:05:09] Speaker 02:
allowing any argument regarding Bridgestone having an additional hose.

[00:05:13] Speaker 02:
The district court did permit an argument that Bridgestone had a three-way valve but not the additional hose.

[00:05:18] Speaker 05:
Where in the record did you lodge a formal objection to that ruling?

[00:05:23] Speaker 02:
In the, to the ruling on the Bridgestone.

[00:05:26] Speaker 05:
Uh-huh.

[00:05:27] Speaker 02:
There's, there's argument in, on the, there was a motion of limine that was filed by Tech, the plaintiff, in that situation.

[00:05:36] Speaker 02:
That motion of limine was granted over our objection, Your Honor.

[00:05:40] Speaker 04:
And the motion to eliminate prohibited you from relying on hose 66?

[00:05:47] Speaker 02:
Yes, it prohibited us from arguing that Bridgestone had an additional hose at all, regardless of whether that was hose 66 or another hose.

[00:05:56] Speaker 02:
We were not permitted to argue anything about Bridgestone having an additional hose, only that it had a three-way valve.

[00:06:01] Speaker 01:
But the impact of that is...

[00:06:04] Speaker 01:
You have an alternative, a theory that is different than the theory you presented in the first round of appeals, right, with regard to Bridgestone?

[00:06:12] Speaker 01:
That is correct, Your Honor.

[00:06:13] Speaker 01:
And so your view of our earlier opinion is that, of course, you were operating under a different claim construction then, because we flipped the claim construction on direct.

[00:06:24] Speaker 01:
So your view is that you were precluded from arguing the same theory, certainly by the law of the case.

[00:06:32] Speaker 01:
But a different theory involving Bridgestone should have been permitted under our prior opinion.

[00:06:38] Speaker 01:
Is that your argument?

[00:06:39] Speaker 02:
That is our argument and our position.

[00:06:40] Speaker 02:
That's precisely correct, Your Honor.

[00:06:42] Speaker 02:
And that had a serious impact and prejudicial impact on the proceeding below, because we weren't allowed to argue that Bridgestone had that additional hose and the three-way valve, which is all that allowed the 110 patent to issue over the Erickson reference.

[00:06:57] Speaker 02:
And that's something that's not in dispute.

[00:06:58] Speaker 02:
The Erickson reference would have precluded the 110 patent

[00:07:02] Speaker 02:
from issuing other than this three-way valve and additional hose.

[00:07:06] Speaker 01:
So that argument stands independent of the infringement.

[00:07:09] Speaker 01:
In other words, if we were to hypothetically disagree with you on the means plus function issue, so that would essentially be an affirmance of the infringement portion, but sending it back on the validity question.

[00:07:24] Speaker 01:
That is correct, Your Honor.

[00:07:26] Speaker 01:
Going back to the point that Judge Wallach raised, which is what the judge did in terms of allowing the IPR.

[00:07:33] Speaker 01:
So your view was that in the absence of your statement, your discussion of the examination in the opening statement, the judge was satisfied that the prejudicial impact of introducing the IPR outweighed the probative value?

[00:07:51] Speaker 02:
Yes, Your Honor.

[00:07:52] Speaker 02:
My recollection is the judge had agreed with us on a motion to eliminate that the IPR would not be something that could be discussed and used during the case, either in opening or during examination of witnesses.

[00:08:05] Speaker 02:
But in our view, the district court wrongly concluded that the opening statement, which was limited to just talking about the original examination of the patent, somehow opened the door to you.

[00:08:14] Speaker 03:
But why is he not?

[00:08:16] Speaker 01:
Doesn't your opening the door and the opening statement to talking about the original examination, the jury doesn't know there was an OPR.

[00:08:25] Speaker 01:
So your view of how the patent office looked at this patent, in terms of whether or not the prior art was there,

[00:08:34] Speaker 01:
Why wasn't he just correct to say, well, you've done that and that's really only half the issue.

[00:08:42] Speaker 01:
So given that you've opened the door with respect to what was before the patent office and the examination, it's only fair that the other side should sort of cap in that by being able to point out that during the IPR, which wasn't instituted, the prior art reference was before the PTO.

[00:09:02] Speaker 02:
Well, the reason is, Your Honor, is because the opening statement was very limited in terms of looking at what the original examiner had before.

[00:09:09] Speaker 02:
It wasn't talking about anything later.

[00:09:10] Speaker 02:
It was only talking about what the original examination had done.

[00:09:13] Speaker 01:
Yeah, but if the jury doesn't know that there was an IPR later, then one would fearfully conclude that the examination that you're referring to in the opening statement was the beginning and end of the patent office consideration of this matter.

[00:09:28] Speaker 01:
In other words, the patent office never looked at this patent

[00:09:32] Speaker 01:
with this prior art reference, looked at this prior art reference.

[00:09:35] Speaker 01:
So why isn't it just sort of fair or fair enough given our standard of review with respect to what the district court can and cannot do?

[00:09:46] Speaker 02:
I think because of the prejudicial nature of the IPR proceedings themselves, they outweigh any probative value.

[00:09:52] Speaker 02:
The opening statement was very limited, just talking about the original.

[00:09:55] Speaker 04:
The opening statement also was responding to something that the patentee said in its opening statement.

[00:10:00] Speaker 04:
They spent a lot of time talking about the initial examination and how everything was before the examiner, right?

[00:10:07] Speaker 02:
That's correct, Your Honor.

[00:10:09] Speaker 02:
They did talk about how

[00:10:11] Speaker 02:
the patent was allowed and what it was allowed over and those types of things you're on that's correct.

[00:10:16] Speaker 01:
What did they say?

[00:10:17] Speaker 01:
This preceded your opening statement.

[00:10:18] Speaker 01:
They went first.

[00:10:19] Speaker 01:
They did go first.

[00:10:21] Speaker 01:
Did they specifically identify the piece of prior art and say this prior art was before the examiner?

[00:10:27] Speaker 02:
I don't recall if they did that specifically with Erickson.

[00:10:30] Speaker 02:
There were two patents that were before the examiner.

[00:10:33] Speaker 02:
There was Erickson in the initial examination.

[00:10:35] Speaker 02:
There was Erickson and there was the interdynamics patent.

[00:10:38] Speaker 02:
I don't recall if this

[00:10:39] Speaker 02:
exact moment, whether they specifically called out those.

[00:10:42] Speaker 02:
But I think they did, by name, they did say that the patent was allowed because of, they went through the examination, so the patent was allowed because of the three-way valve and the additional hose.

[00:10:52] Speaker 02:
That was their way of saving the patent, was novel.

[00:10:55] Speaker 02:
And in my response in opening, I was discussing that Bridgestone was not before the examiner when it initially allowed the patent, and that was responding to what they had said in their opening.

[00:11:09] Speaker 02:
I did want to spend a little bit of time.

[00:11:11] Speaker 05:
I have some questions for you, actually.

[00:11:13] Speaker 02:
Well, I'm here to answer them.

[00:11:15] Speaker 05:
In its reply brief at 15, SSI says, Tech does not dispute the Tech's counsel compared products during his rebuttal closing argument.

[00:11:29] Speaker 05:
I don't see any such concession.

[00:11:33] Speaker 05:
Tech is clearly arguing that its physical demonstration of the Tech tires kit sealing

[00:11:38] Speaker 05:
container connection to the compressor in its closing rebuttal argument was to rebut how SSI's argument or expert Dr. King misinterpreted the claim language to exclude a key embodiment.

[00:11:55] Speaker 05:
It seems to me that that is misleading to assert the conclusion that it conceded it performed a product to product comparison.

[00:12:05] Speaker 02:
Well, in our view, that's what they're saying.

[00:12:07] Speaker 02:
They're saying we opened the door to it, or that SSI opened the door to the product to product comparison, but they're not saying that they didn't do it.

[00:12:16] Speaker 02:
That's how I interpreted their brief.

[00:12:19] Speaker 02:
And from the record, it's clear that that's what was done in the rebuttal closing.

[00:12:23] Speaker 02:
There was a direct comparison of the tech kit, which I believe we've had transmitted to your honors for review.

[00:12:30] Speaker 02:
It's opened up, and they had that kit

[00:12:33] Speaker 02:
before them and then a picture of the SSI kit, which is also before your honors.

[00:12:40] Speaker 02:
And they compared them to show that they were the same in terms of the connection between the compressor and the container.

[00:12:48] Speaker 02:
And that kind of comparison, that product to product comparison is something that just should not be permitted to do.

[00:12:55] Speaker 02:
We did not open the door to it.

[00:12:56] Speaker 02:
We spent time comparing the SSI kit

[00:13:00] Speaker 02:
and its operation to the claim language and also to a couple of figures in the patent, but never to the tech product itself.

[00:13:08] Speaker 02:
So as I reviewed their brief, what it looks to me like they're saying is that they did do the comparison, but that we opened the door to it.

[00:13:16] Speaker 02:
But there isn't any basis to show that there was any opening of the door.

[00:13:19] Speaker 05:
How can SSI argue that there was no evidence that Tech's kit was a conversional embodiment of the 110 patent, or that no witness ever testified that Tech's kit

[00:13:30] Speaker 05:
practices all the claims of the 110 patent.

[00:13:32] Speaker 05:
That's in your gray brief.

[00:13:34] Speaker 02:
Yes, it is, Your Honor.

[00:13:37] Speaker 02:
The issue there is that there's different independent claims.

[00:13:40] Speaker 02:
There's claim one and claim 26.

[00:13:42] Speaker 02:
Dr. King was asked on questions, is this a commercial embodiment of the, is the TechKit a commercial embodiment of the 110 patent?

[00:13:50] Speaker 02:
He wasn't asked about specific claims and whether it had all the elements in the claims.

[00:13:56] Speaker 02:
And claim one and claim 26 have

[00:13:59] Speaker 02:
can have some differences between the two of them.

[00:14:02] Speaker 02:
And the fact that Claim 26, there's a requirement of the outer casing connecting the compressor to the container.

[00:14:11] Speaker 02:
And they argue, and Tech says that in Claim 1 it has to be the kit.

[00:14:15] Speaker 05:
Well, Claim 1, they showed that... Your expert is, or Tech's expert, Mr. Mariani, testified that Tech's kit is an embodiment of the 110 PET.

[00:14:28] Speaker 05:
stating in part, quote, this is the device that holds the patent.

[00:14:33] Speaker 05:
Do you stand by your claims in briefing that Tech's kit doesn't practice all the claims of the 110 patent?

[00:14:39] Speaker 02:
Well, Mr. Marini wasn't their expert.

[00:14:41] Speaker 02:
That's their inventor.

[00:14:42] Speaker 02:
And I think he's saying holds the patent.

[00:14:45] Speaker 02:
And he's saying that Tech holds the patent.

[00:14:49] Speaker 02:
I don't think there's anywhere where someone went through, claim by claim, element by element, and said, this is what's in the Tech kit.

[00:14:57] Speaker 02:
That was never done.

[00:14:57] Speaker 02:
That was never part of the case.

[00:15:00] Speaker 02:
And that's the issue that just was never presented.

[00:15:04] Speaker 02:
They don't have, Dr. Kazzarouni was their expert.

[00:15:06] Speaker 02:
Dr. Kazzarouni never went through element by element and said, here it is in the one, here's the 110 claim one or claim 26 element by element.

[00:15:15] Speaker 02:
Here's the tech kit and how it practices each of those elements.

[00:15:20] Speaker 02:
Out of my time, I was going to reserve the rest of my time for rebuttal.

[00:15:23] Speaker 01:
Yes.

[00:15:23] Speaker 01:
You have no more time, but we'll restore some rebuttal.

[00:15:26] Speaker ?:
Thanks.

[00:15:44] Speaker 00:
Good morning.

[00:15:44] Speaker 00:
May I please the court?

[00:15:46] Speaker 00:
Dan Jackson for Appellees Tech Global and Tech Corporation.

[00:15:50] Speaker 04:
Could we address this point about the introduction of the IPR into the case?

[00:15:57] Speaker 04:
Yes, sir.

[00:15:58] Speaker 04:
I sent for the opening statements of both sides.

[00:16:01] Speaker 04:
I've got the transcript of that.

[00:16:04] Speaker 04:
And it seems to me that you, not you personally, but your counsel for the patentee spent a good deal of time

[00:16:13] Speaker 04:
in his opening statement, arguing that all the prior art had been before the examiner, that there is a presumption of validity and that the jurors should defer to what the examiner concluded.

[00:16:29] Speaker 04:
And for example, talk about how the patent goes to an expert and he has to study what's already out there at the time.

[00:16:38] Speaker 04:
And he said, the prior art does not disclose or render obvious an additional hose or three-way valve.

[00:16:44] Speaker 04:
And then he said, these additional references do not teach or fairly suggest alone or in combination the invention as claimed here.

[00:16:52] Speaker 04:
So he's affirming that, hey, I've looked at what's out there.

[00:16:56] Speaker 04:
This three-way valve, an additional valve, is new and worthy of protection.

[00:17:01] Speaker 04:
So you, having introduced the initial examination

[00:17:06] Speaker 04:
and said that the examiner considered all the prior art, why isn't it fair game for opposing counsel to say, well, here's some prior art in the initial examination that wasn't considered?

[00:17:20] Speaker 04:
What's improper about that?

[00:17:23] Speaker 00:
First thing that's improper is that the opening arguments by SSI did not just refer to the examiner.

[00:17:32] Speaker 00:
They began by talking about the patent office.

[00:17:35] Speaker 00:
That's a page.

[00:17:36] Speaker 00:
4390 of the appendix.

[00:17:40] Speaker 00:
So it wasn't.

[00:17:43] Speaker 00:
And then after hearing these statements by SSI's counsel, Judge Chabria, and what I would submit is an imminent exercise of discretion, Sue Esponte found that to be misleading and gave SSI options of how to deal with that.

[00:18:03] Speaker 04:
If they'd gone beyond the examiner,

[00:18:05] Speaker 04:
Maybe so, but I don't read their opening statement as going beyond the examiner.

[00:18:10] Speaker 04:
They talk specifically at 249, and he talks about the examiner's view and talks about what's before the examiner.

[00:18:20] Speaker 04:
And we'll talk about a couple of other pieces of prior art that were not before the examiner.

[00:18:24] Speaker 04:
And he says, and there were some of these that weren't before the examiner.

[00:18:28] Speaker 04:
And all of the discussion is about what was before the examiner, the very same issue that you had raised yourself in the opening statement.

[00:18:36] Speaker 00:
But the issue raised in the opening statement was what happened with the basic statements on allowance.

[00:18:45] Speaker 00:
Are you talking about your opening statement?

[00:18:46] Speaker 00:
Yes, sir.

[00:18:47] Speaker 00:
I'm sorry.

[00:18:48] Speaker 00:
As I recall it, the tech opening statement was just referring to the process of how the place was.

[00:18:55] Speaker 04:
And say everything was before the examiner.

[00:18:58] Speaker 04:
And the response to that is, no, everything was not before the examiner.

[00:19:03] Speaker 04:
What's the matter with that?

[00:19:04] Speaker 00:
Well, I'll direct you again to page 4390 of the appendix.

[00:19:09] Speaker 04:
Which page of the transcript is this?

[00:19:13] Speaker 04:
248.

[00:19:14] Speaker 04:
248.

[00:19:15] Speaker 00:
Oh, yes.

[00:19:15] Speaker 00:
That's correct.

[00:19:17] Speaker 00:
Thank you.

[00:19:18] Speaker 00:
OK, so what do you want to direct us to?

[00:19:20] Speaker 00:
So line 16.

[00:19:22] Speaker 00:
Now, the patent office did allow this because it didn't have a piece of prior art that disclosed a three-way valve and the additional hose in figure 7.

[00:19:30] Speaker 00:
That's all that we're looking at.

[00:19:34] Speaker 04:
Okay, but on the prior page, it's perfectly clear that he's talking about the examiner.

[00:19:39] Speaker 04:
He says, and this is all this patent has that wasn't by the examiner's view already in the prior art.

[00:19:47] Speaker 04:
He says, we'll talk about a couple of other pieces of prior art that were not before the examiner.

[00:19:52] Speaker 04:
The context is clear that he's talking about what was before the examiner.

[00:19:56] Speaker 04:
Are you disputing that?

[00:19:58] Speaker 01:
You're not, are you disputing?

[00:20:00] Speaker 01:
What is your point about the sentence?

[00:20:02] Speaker 00:
What is your point about this?

[00:20:03] Speaker 00:
My point is that it's an overstatement to assert that they only talked about the examiner.

[00:20:09] Speaker 00:
I mean, there's a reference to the patent office.

[00:20:11] Speaker 01:
My broader point.

[00:20:13] Speaker 01:
So you think they could have been, your read of this was that they could have been referring to the IPR?

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

[00:20:22] Speaker 00:
So what else would they be referring to?

[00:20:23] Speaker 00:
My reading is that the district court did not abuse discretion by finding that this

[00:20:30] Speaker 00:
was potentially misleading about what was before the patent office.

[00:20:35] Speaker 01:
OK, tell me why.

[00:20:35] Speaker 01:
I mean, you referred us to this sentence.

[00:20:37] Speaker 01:
I'm reading the sentence.

[00:20:39] Speaker 01:
What's misleading about this?

[00:20:42] Speaker 00:
Well, the context is that the patent office did not see all of the references that we're going to be talking about at this trial.

[00:20:52] Speaker 00:
That's what's being said.

[00:20:54] Speaker 00:
And given that the judge had already ruled that there was not going to be

[00:20:59] Speaker 00:
on a motion to eliminate, he agreed with SSI, we're not gonna, we won't go into the PTAB proceedings.

[00:21:07] Speaker 00:
But then given this, the whole Tulsa reference, or sorry, the Bridgestone reference is now in this kind of unclear position of wait, did the patent office see it or not?

[00:21:20] Speaker 00:
And so the district court

[00:21:22] Speaker 00:
gave SSI options about how to deal with it.

[00:21:24] Speaker 00:
They didn't have to.

[00:21:26] Speaker 01:
Are you saying that this is incorrect and that the Bridgestone reference was before the examiner?

[00:21:31] Speaker 01:
Sorry, it was before the patent trial.

[00:21:34] Speaker 00:
It was before the PTAB.

[00:21:36] Speaker 00:
I didn't.

[00:21:36] Speaker 01:
So you're saying that the confusion is that the jury could have construed the statement about what the Patent Office allowed to be talking about an IPR proceeding?

[00:21:48] Speaker 01:
Does the PTAP allow claims?

[00:21:51] Speaker 00:
No, I'm sorry.

[00:21:52] Speaker 00:
What I mean is that the jury could have been confused, not knowing the details of how the proceedings work.

[00:21:58] Speaker 04:
What do you mean not knowing the details?

[00:21:59] Speaker 04:
You had spent quite a bit of time in the opening statement describing exactly what happened in the initial examination and relying on it and saying that the examiner had before the prior art, because the examiner allowed the patent, there should be a presumption, you know, that they have a high hill to climb and so on and so forth.

[00:22:18] Speaker 04:
There's no confusion.

[00:22:19] Speaker 04:
You introduced it yourself.

[00:22:21] Speaker 04:
You specifically and repeatedly told the jury about what happened in the initial examination.

[00:22:27] Speaker 04:
And what I'm having trouble with is when the other side comes in and says, well, that's not quite right.

[00:22:31] Speaker 04:
They didn't have all the prior art before them.

[00:22:34] Speaker 04:
I'm having trouble seeing what's wrong with that.

[00:22:37] Speaker 00:
The inference that the trial court did not abuse its discretion.

[00:22:45] Speaker 05:
Where in the record does the trial court discuss this?

[00:22:48] Speaker 05:
I'm looking for it.

[00:22:50] Speaker 00:
Let me find that, Your Honor.

[00:23:14] Speaker 00:
It's on page 4532.

[00:23:15] Speaker 00:
4532 and after that in the appendix.

[00:23:30] Speaker 00:
which is 389 of the transcript.

[00:23:36] Speaker 04:
So suppose we were disagree with you and say that your opposing counsel in the opening statement was clearly just responding to what you were saying and was addressing the initial examination.

[00:23:49] Speaker 04:
Did the court use its discretion by allowing the IPR evidence to come in?

[00:23:57] Speaker 00:
No, Your Honor.

[00:23:58] Speaker 04:
Why not?

[00:23:59] Speaker 00:
Well, I think for one thing, we have to consider the fact that the trial court gave SSI the option not to have the cross-examination happen that way, but just simply to give an instruction that in PTAP proceedings, the reference at issue was considered.

[00:24:20] Speaker 00:
And so having chosen the cross-examination route, SSI sort of made its own bet.

[00:24:29] Speaker 01:
Yeah, but what difference does that make?

[00:24:32] Speaker 01:
The choice was the same.

[00:24:34] Speaker 01:
The district court had concluded initially that he should not bring the PTAP stuff in.

[00:24:39] Speaker 01:
And it was only based on this statement.

[00:24:45] Speaker 01:
that the PTAP stuff should be allowed.

[00:24:47] Speaker 01:
So what does it matter that he had the choice between cross-examination or allowing a stipulation on the PTAP proceedings?

[00:24:54] Speaker 01:
That's neither here nor there.

[00:24:55] Speaker 01:
The impact is the same, whether or not you're going to let the PTAP stuff in.

[00:25:02] Speaker 00:
Well, I mean, I do think it's relevant that they were given the choice.

[00:25:05] Speaker 00:
The issue is the trial court found this to be, sitting there observing what was going on, the trial court found it to be misleading.

[00:25:13] Speaker 01:
Can I ask you again, that sentence that you were referring to us, is it misleading because you think the jury would have thought that by saying the patent office, the other side was talking about an IPR proceeding?

[00:25:29] Speaker 01:
Is that what was misleading about it?

[00:25:31] Speaker 01:
And that's why we should let the IPR proceeding in?

[00:25:34] Speaker 00:
I'm simply pointing out that the... I just want to know what was misleading about it.

[00:25:39] Speaker 00:
What's misleading, the reason I was pointing to that particular phrase is because

[00:25:43] Speaker 00:
The counsel in their brief repeatedly talks about how they referred only to the examiner.

[00:25:48] Speaker 00:
But the broader point is that the trial court did not abuse its discretion in thinking there might have been misleading to the jury.

[00:25:58] Speaker 00:
Who involved with?

[00:26:02] Speaker 00:
Did you object during that opening statement?

[00:26:08] Speaker 00:
My understanding is that the trial counsel was about to object.

[00:26:13] Speaker 00:
The court beats him to it.

[00:26:16] Speaker 00:
Wait a second.

[00:26:17] Speaker 05:
Where is that?

[00:26:19] Speaker 00:
Well, he was going to bring a motion.

[00:26:21] Speaker 00:
This conversation beginning at 4532, I think, happens in a break with the president of the jury.

[00:26:32] Speaker 00:
No, but during the examination, there's no objection.

[00:26:34] Speaker 00:
The council was about to bring up the issue.

[00:26:36] Speaker 05:
But during the examination, did council object?

[00:26:38] Speaker 05:
You can object during opening statements.

[00:26:42] Speaker 00:
I'm not entirely sure, but I don't believe the counsel objected.

[00:26:44] Speaker 00:
During opening statement, he was going to raise the issue after.

[00:26:48] Speaker 01:
So just again, I'm sorry.

[00:26:50] Speaker 01:
Maybe it's me.

[00:26:51] Speaker 01:
But I'm just trying.

[00:26:52] Speaker 01:
You keep using the word misleading.

[00:26:54] Speaker 01:
So I'm trying.

[00:26:55] Speaker 01:
So the basis for the judge, your understanding of the basis for the judge's exclusion of this, or being troubled by this, is he thinks the jury could have thought that the patent office did allow this because, yadda, yadda.

[00:27:10] Speaker 01:
that that reference the jury could construe as being the PTAP proceeding?

[00:27:15] Speaker 00:
Correct.

[00:27:16] Speaker 00:
I mean, the judge held said that, quote, absent knowledge about the PTO's consideration of the prior and later proceedings, it creates a misimpression.

[00:27:27] Speaker 00:
It leaves a misimpression.

[00:27:28] Speaker 00:
I'm not saying you did it intentionally, but it leaves a misimpression.

[00:27:31] Speaker 00:
So how do you want to deal with that?

[00:27:32] Speaker 01:
OK, can I move you on to the validity question?

[00:27:35] Speaker 01:
Yes, you are.

[00:27:36] Speaker 01:
Not to criticize at all that the magistrate judge was clearly doing his best to try to figure out what we were saying.

[00:27:47] Speaker 01:
The alternative theory presented here in this case is different than the theory that was before our court initially, right?

[00:27:57] Speaker 01:
the validity theory, the obviousness theory, and the use of these prior art references?

[00:28:06] Speaker 00:
I don't think it is significantly different.

[00:28:10] Speaker 00:
Let me point the court to page 42 of the appellant's opening brief.

[00:28:20] Speaker 00:
What's the site on that?

[00:28:23] Speaker 05:
Bluebrief?

[00:28:25] Speaker 00:
Yes.

[00:28:25] Speaker 00:
Oh, OK.

[00:28:26] Speaker 00:
I'm sorry, the opening brief.

[00:28:28] Speaker 00:
SSI is proposing that removing joint hose 66 and the second three-way valve 60 would result in a conventional tire repair kit with a three-way valve 48 and additional hose 54.

[00:28:48] Speaker 00:
This court, and it's the law of the case, held that quote,

[00:28:57] Speaker 00:
Bridgestone does not disclose an additional hose cooperating with the tire because air tube 54 in Bridgestone is not directly connected to the tire as is additional hose 83 in the 110 path.

[00:29:10] Speaker 04:
Okay, so just taking that quote on its face, it's talking about hose 54.

[00:29:15] Speaker 04:
It's not talking about their new theory involving hose 66.

[00:29:28] Speaker 00:
They need two hoses here.

[00:29:30] Speaker 00:
They're referring to additional hose 54 as the number 54 as an additional hose.

[00:29:44] Speaker 04:
That was originally what we were doing.

[00:29:46] Speaker 04:
That we rejected.

[00:29:48] Speaker 04:
And now their theory is different.

[00:29:50] Speaker 04:
Hose 66 is the additional hose.

[00:29:55] Speaker 00:
whether it's the additional, there has to be a primary hose and an additional hose, and they're trying to have an additional hose and the original hose where before there was only one, and they're doing that by

[00:30:10] Speaker 00:
basically trying to take apart the device and saying, if you've got a hose.

[00:30:14] Speaker 00:
Well, they're talking about modifying.

[00:30:15] Speaker 00:
They're talking about modifying it, and there's a hose dangling here.

[00:30:18] Speaker 01:
That could be an additional hose.

[00:30:20] Speaker 01:
Why would our initial opinion have precluded necessarily?

[00:30:24] Speaker 01:
I mean, we rejected their theory, and that was largely based because the theory was based on a claim construction that we rejected.

[00:30:32] Speaker 01:
why would we have necessarily wanted to preclude a different theory that talked about the same piece of prior art, but talked about it would have been obvious to modify this prior art?

[00:30:43] Speaker 01:
So they could say.

[00:30:44] Speaker 01:
I'm not suggesting they're necessarily going to win on that argument.

[00:30:48] Speaker 01:
But why would we have been interested or even thought about precluding some different modification of the prior art reference?

[00:30:58] Speaker 00:
Well, I think it's important to note that the, and this is something that

[00:31:02] Speaker 00:
Judge Wallach raised, this all was dealt with by the district court on emotion and limine.

[00:31:11] Speaker 00:
And I think it's useful to look at that.

[00:31:14] Speaker 00:
It's at page 20 of the appendix, which is also attached to the opening brief, so you can just flip back.

[00:31:25] Speaker 00:
The court said,

[00:31:28] Speaker 00:
To the extent Tech's objection seeks to preclude all reference to Bridgestone, the objection is denied.

[00:31:36] Speaker 00:
The Federal Circuit has addressed certain aspects of Bridgestone and Erickson, both alone and in combination.

[00:31:41] Speaker 00:
If SSI can still use these references in a way that doesn't contradict the Federal Circuit's decision and that presents no other admissibility problems, it may do so.

[00:31:54] Speaker 00:
As far as I know, they did not make a further sort of offer of proof and get into this deal.

[00:31:59] Speaker 00:
We have this argument that they're submitting on appeal that I submit is, I do think it's inconsistent with this court's prior ruling.

[00:32:08] Speaker 00:
But in any event, it's quite clear that the trial court did not say you can't talk about Bridgestone.

[00:32:14] Speaker 04:
He didn't say you can't talk about Bridgestone, but he said you can't rely on Bridgestone for the additional hoax.

[00:32:25] Speaker 05:
SSI tried to raise the question of joint hose 66 being effectively the equivalent of additional hose 83 in the 110.

[00:32:39] Speaker 00:
Did they raise it at?

[00:32:41] Speaker 05:
Before the court, below.

[00:32:44] Speaker 05:
On remand.

[00:32:46] Speaker 00:
My memory is that they raised it.

[00:32:49] Speaker 00:
They tried to bring a summary judgment motion.

[00:32:51] Speaker 00:
The court denied summary judgment.

[00:32:52] Speaker 00:
Then there was this motion eliminating, which we've just read what the ruling was.

[00:32:56] Speaker 00:
And then as far as I'm aware, there wasn't a further sort of here's what we want to say about which is they didn't address the Bridgestone reference.

[00:33:10] Speaker 00:
It didn't come up at trial in this way.

[00:33:15] Speaker 04:
But they raised it in connection with the motion and limine, right, and the summary judgment motion.

[00:33:21] Speaker 04:
Correct.

[00:33:23] Speaker 00:
What I'm saying that the ruling on motion and limine is to say you need to be consistent with the federal circuit.

[00:33:30] Speaker 00:
And among other things, I don't think that saying that the hose 54 and 66 can be, you know, 54 can be taken out, and suddenly that's one of the two hoses you can use.

[00:33:43] Speaker 00:
the court did not find 54 to be cooperating with the tire, precisely because it was an internal hose.

[00:33:52] Speaker 00:
And cooperating with the tire means it's ready to be connected.

[00:33:56] Speaker 00:
And so I do think that there's an inconsistency there.

[00:34:02] Speaker 01:
You have one final point, because your time has elapsed.

[00:34:04] Speaker 00:
Thank you, Your Honor.

[00:34:22] Speaker 00:
I would just address one final point that Judge Wall raised, which is that it is entirely correct that the inventor, Mr. Marini, explained that the text devised practices the patent.

[00:34:43] Speaker 00:
And Dr. King admitted that it embodies the patent and practices the patent.

[00:34:52] Speaker 00:
SSI argues that there wasn't a discussion element by element, but claim 26 was the only claim at issue in the case.

[00:35:05] Speaker 00:
And also the outer casing, which was the particular element of whether it connects the container of sealant to the compressor or not, that was the issue.

[00:35:16] Speaker 00:
Dr. King specifically admitted that that element was part of the

[00:35:20] Speaker 00:
embodying device.

[00:35:21] Speaker 00:
That's at page 4881 of the appendix.

[00:35:30] Speaker 01:
Was there any discussion in your red brief, just one more quick question, about that even if the district court was wrong about allowing you to put on the P tab, that it wasn't prejudicial, it was harmless error?

[00:35:44] Speaker 00:
Yes, Your Honor.

[00:35:44] Speaker 01:
Where is that in the red brief?

[00:35:46] Speaker 01:
I'm trying to look to find it now.

[00:36:24] Speaker 01:
Sorry for the delay.

[00:36:25] Speaker 01:
Sure.

[00:36:26] Speaker 01:
No, this isn't a trick question.

[00:36:27] Speaker 01:
I honestly don't recall whether you made that argument or not.

[00:36:59] Speaker 00:
So in the section of the brief that is discussing the PTF proceedings, we point out under the Kearns case that on page 32, in order to show that the district court abused its discretion

[00:37:29] Speaker 00:
SSI must demonstrate that the exclusion prejudiced its substantial rights.

[00:37:35] Speaker 00:
And part of the issue with the, sorry, Your Honor.

[00:37:43] Speaker 04:
It's not, it's up to you to show that they didn't, that it was harmless error.

[00:37:48] Speaker 04:
The harmless error burden is on you, not on them, right?

[00:37:51] Speaker 00:
Well, part of the harmlessness is that, for example, the Holzhauser reference, which was part of what

[00:37:59] Speaker 00:
was dealt with in the PTAB proceedings is, you know, this is the one where SSI's own expert says it doesn't have the valves that are in the patent.

[00:38:10] Speaker 03:
Wait a second.

[00:38:11] Speaker 03:
This page you're showing us is about Bridgestone.

[00:38:14] Speaker 03:
It's not about the IPRs.

[00:38:20] Speaker 00:
That's right.

[00:38:21] Speaker 00:
It's about Bridgestone.

[00:38:22] Speaker 04:
And then later in that section, would you already mean that the reference to the IPRs was harmless there?

[00:38:29] Speaker 00:
I'm saying that SSI must demonstrate that the exclusion prejudices substantial rights.

[00:38:35] Speaker 00:
The discussion of the SSI's argument about PTAB follows in that same section, but we didn't say there's no demonstration.

[00:38:46] Speaker 00:
But specifically in that part.

[00:38:49] Speaker 04:
We didn't argue harmless error with respect to the PTAB point.

[00:38:53] Speaker 00:
Not explicitly, but it's in that section, and it is their duty to show that.

[00:38:57] Speaker 00:
OK, thank you.

[00:39:13] Speaker 02:
Thank you, Your Honors.

[00:39:14] Speaker 02:
I'll be brief since I didn't use up my time before.

[00:39:17] Speaker 02:
I just would address the points with respect to the Bridgestone reference not being allowed to show the additional hose.

[00:39:23] Speaker 02:
That was one error that was then further compounded with the introduction of the IPRs, which there was no opening of the door to.

[00:39:33] Speaker 02:
The opening statement did just discuss the examiner, and I spare a response to what their opening statement had done.

[00:39:39] Speaker 02:
That in combination prejudiced SSI or sealant systems from having a fair trial.

[00:39:45] Speaker 02:
To have those kinds of significant piece of prior art be precluded from using it to show the additional hoes, and then also have either the court require a stipulation or a jury instruction that is effectively directed that this patent had already been reviewed and found to be valid, or to allow cross-examination, which was the Hobson's choice sealant system was provided, was prejudicial.

[00:40:08] Speaker 02:
in a high degree, because the way that was introduced to the jury meant that the jury was essentially directed and the roller served from analyzing the validity of the 110 pact.

[00:40:20] Speaker 02:
And with that, Your Honors, I will rest.

[00:40:23] Speaker 02:
Thank you.

[00:40:24] Speaker 02:
We thank both sides and the case is submitted.