[00:00:03] Speaker 03: The United States Court of Appeals for the Federal Circuit is now open and in session. [00:00:08] Speaker 03: God save the United States in this honorable court. [00:00:14] Speaker 04: Good morning. [00:00:14] Speaker 04: The first case for argument this morning is 192051 ABS Global versus Cytanome LLC. [00:00:23] Speaker 04: Mr. Horowitz, whenever you're ready. [00:00:24] Speaker 00: Thank you, Your Honor, and may it please the court. [00:00:30] Speaker 00: Citonome's red brief raises a threshold jurisdictional question, so I'll start there. [00:00:35] Speaker 00: There's no dispute that this court had jurisdiction when ABS filed its appeal and also when ABS filed its blue brief. [00:00:42] Speaker 00: After all, Citonome had sued ABS on the 161 patent in District Court. [00:00:47] Speaker 00: And we know from Fort James that a determination of non-infringement, even when coupled with the patent owner's disclaimer of any right to appeal, doesn't deprive an Article III court of jurisdiction to resolve any remaining dispute [00:00:59] Speaker 00: or that asserted patent solidity. [00:01:02] Speaker 00: Now, what Cytanome has attempted to do here is exactly what this court rejected in Fort James. [00:01:07] Speaker 00: Wait to see what happens on it, for instance. [00:01:09] Speaker 04: Mr. Horowitz, can I just interrupt you, because time is short. [00:01:13] Speaker 04: I'm a little perplexed by portions of your argument. [00:01:17] Speaker 04: I understand the mootness versus the article freestanding issue. [00:01:22] Speaker 04: But you start off with Friends of the Earth, and you never take us [00:01:29] Speaker 04: through that analysis, which continues by the Supreme Court in Nike versus already. [00:01:33] Speaker 04: You never take us to the point where there's a continuing controversy. [00:01:38] Speaker 04: There's no covenant not to sue an analysis of who's got the burden to show what in the context of mootness. [00:01:47] Speaker 04: Instead, you just turn around and get us to what I think is a fairly unremarkable opinion of this court 15 years ago called Fort James. [00:01:57] Speaker 04: And that deals with the context of a district court proceeding and the retention of the ability to pursue a counterclaim even in the finding of non-infringement. [00:02:08] Speaker 04: That doesn't necessarily, without further analysis, apply to the context of an IPR. [00:02:13] Speaker 04: So you never go quite further where I think you would need to go to at least make an argument to persuade me, at least, on the mootness claim here. [00:02:25] Speaker 00: Let me take those actually in reverse order. [00:02:27] Speaker 00: So on the Fort James point, we actually think that this case is a stronger case for jurisdiction than Fort James, because as you mentioned, Fort James arises in the context of a DJ action for invalidity. [00:02:40] Speaker 00: And this court has made clear, for example, in the consumer watchdog case, that the Article III requirements for jurisdiction are actually relaxed when you have a procedural right to appeal an IPR. [00:02:49] Speaker 00: It wasn't sufficient in consumer watchdog, but this case would require even less of a showing of an injury than was at issue in Fort James. [00:02:56] Speaker 00: But going back to the mootness question, and the question of burden, late law and all of those other cases make clear that the burden would be on the party seeking to deprive the court of jurisdiction to establish that something has changed. [00:03:11] Speaker 00: And in terms of this case versus those cases, this really is essentially a voluntary cessation case in the context of the mootness doctrine. [00:03:20] Speaker 00: ST certainly caused an initial injury by suing us or Cytanome, the child company here, by suing us. [00:03:28] Speaker 00: And Fort James says, that's injury enough and you don't have to question it later. [00:03:31] Speaker 00: But even if you were to look at the mootness analysis, they caused that initial injury. [00:03:38] Speaker 00: And once they saw our blue brief on appeal and saw that the arguments that we were making with respect to validity, they tried to stop. [00:03:46] Speaker 04: That really has little to do with what I think we need to analyze in this case. [00:03:50] Speaker 04: which is under Nike, under Friends of Earth, who's got the burden to do what? [00:03:57] Speaker 04: And I don't think you made any argument in your gray brief about they haven't satisfied their burden because this is not a fulsome covenant not to sue. [00:04:08] Speaker 04: This is just solely a decision not to appeal an infringement case. [00:04:12] Speaker 04: I didn't see any of that analysis because at some point the burden might shift to you. [00:04:18] Speaker 04: in a mootness appeal. [00:04:20] Speaker 04: And we've got no analysis of who's got the burden to show what or why this decision not to appeal was not satisfactory or not sufficiently compelling as would be a broad covenant not to sue. [00:04:34] Speaker 00: So as I say, I think that the Friends of the Earth line of cases makes clear that burden shifts to them. [00:04:39] Speaker 00: As you note, the burden could have shifted back [00:04:41] Speaker 00: A couple of times mentioned the insufficiency on the briefing. [00:04:44] Speaker 00: Largely, that's a function of when the issue was raised and what happened in the course of this appeal. [00:04:50] Speaker 00: And to the extent that the court requires additional briefing on the subject, obviously, we'd be happy to submit it. [00:04:55] Speaker 04: But when you refer to the covenant... Well, I mean, the question is what happens in a case like this. [00:05:00] Speaker 04: I have a vague recollection that I've been involved in an appeal. [00:05:03] Speaker 04: where Gray, having gotten a mootness claim in red, asked to submit additional material in the record, asked for additional time to file a more fulsome response. [00:05:14] Speaker 04: And that didn't happen in this case. [00:05:16] Speaker 04: I mean, why aren't we past that at this stage of the game? [00:05:20] Speaker 00: Well, as I say, Your Honor, I think that Fort James resolved the case on its own. [00:05:24] Speaker 00: And I also think that, as you mentioned, we actually didn't receive a covenant not to sue, as in Fort James. [00:05:29] Speaker 00: We only had the thinnest of disclaimers. [00:05:31] Speaker 00: of an appeal, and this is as against a party, and we point this out in our gray brief, that has repeatedly sued us, including repeated times on the very same patent with respect to the same period. [00:05:41] Speaker 00: So we think that we've met our burden, but as I say, we'd be happy to submit more. [00:05:45] Speaker 00: I do want to mention... Mr. Horowitz? [00:05:46] Speaker 00: Yep. [00:05:46] Speaker 01: Mr. Horowitz, this is Judge Stoll. [00:05:49] Speaker 01: I just want to go back to that burden-approved point for a minute. [00:05:52] Speaker 01: So in Nike, the Supreme Court said, given Nike's demonstration that a covenant encompasses all of the allegedly unlawful conduct, then the burden shifted [00:06:01] Speaker 01: to already to indicate that it has engaged in sufficiently concrete plans to engage in activities not covered by the covenant. [00:06:08] Speaker 01: Now here, there is a disavowal of appeal. [00:06:11] Speaker 01: Do you have any information that shows that you have...that your client has concrete plans to engage in activities not covered by that disclaimer of appeal or disavowal of appeal? [00:06:26] Speaker 00: Uh, well, Your Honor, the [00:06:29] Speaker 00: There was a lot of disputes in the district court about what period of time was covered by the judgment with respect to the other patents. [00:06:37] Speaker 00: Though it's not entirely clear, I suppose, whether Cytanome might be able to continue to sue on conduct. [00:06:44] Speaker 00: We shifted to a new design. [00:06:45] Speaker 00: And so it's possible that Cytanome would make an argument that it could sue us again. [00:06:49] Speaker 00: And as I said, at Cytanome's parent... [00:06:54] Speaker 01: You said you shifted to a new design. [00:06:56] Speaker 01: Was that new design considered in the district court case or not? [00:07:01] Speaker 00: It's the subject of yet another infringement suit that's been separately filed. [00:07:06] Speaker 01: Oh, okay. [00:07:07] Speaker 00: Yeah. [00:07:08] Speaker 00: So we're continuously facing... I think they've sued us twice this year alone, and they've sued us, I think, four or five times in the past on patent infringement. [00:07:15] Speaker 00: So this is a sort of never-ending string. [00:07:18] Speaker 01: I do want to mention that even if... You're saying, can I interrupt you just again to make sure I have clarity? [00:07:22] Speaker 01: So you're saying there's a lawsuit out there right now where you're accused of infringing based on a different product that is not the subject of the disavowal of the appeal of non-infringement. [00:07:33] Speaker 00: Not on this patent. [00:07:34] Speaker 00: We are the subject of a suit on other patents and it is the same part of the machine, but it is not on this patent. [00:07:41] Speaker 00: I do want to note just to be clear that if the court were to disagree with us and determine that the appeal is moot, [00:07:48] Speaker 00: I just want to be clear that the proper disposition would not be to dismiss, but to vacate the challenge portions of the decision below. [00:07:55] Speaker 00: And that's clear from this court's decision in the PPG Industries case cited in... Counsel, counsel, counsel, this is Judge Mort. [00:08:02] Speaker 02: First, you need to slow down. [00:08:04] Speaker 02: You really are going way too fast and you're not giving judges a chance. [00:08:07] Speaker 02: But apart from that, you didn't ask for it. [00:08:11] Speaker 02: In PPG, they asked for it. [00:08:12] Speaker 02: It was relief expressly sought by the parties. [00:08:15] Speaker 02: You had an opportunity to ask to have the judgment below vacated, and you didn't. [00:08:22] Speaker 00: Well, Your Honor, two points. [00:08:24] Speaker 00: First, we did ask for vacater in our brief. [00:08:27] Speaker 00: The second is that... You asked for... [00:08:33] Speaker 02: You asked for vacator on the merits. [00:08:35] Speaker 02: You didn't ask for it with regard to mootness. [00:08:37] Speaker 02: That's an entirely different motion. [00:08:39] Speaker 02: That's like saying I said no jurisdiction, so I get every possible grounds. [00:08:43] Speaker 00: Well, Your Honor, again, we think that there is jurisdiction, but as the court made clear in PPG, when the unilateral activity of the appellee is the reason that jurisdiction has disappeared, it is the just and appropriate course, particularly in a case like this where there are going to be potentially arguments about a stopple down the line. [00:09:01] Speaker 00: not to, not to deprive the appellant of any appeal and also hit the appellant with a possibility of estoppel, but to, as in TPG and as in the Munsingware doctrine in the Supreme Court, um, to vacate the portions of the decision that would have been challenged, because we've been, we would have been deprived of the right to appeal. [00:09:20] Speaker 00: But as I say, I don't think that that's necessary here, because Fort James makes clear that the court has jurisdiction. [00:09:26] Speaker 01: Mr. Horwitz, this is Judge Dole again. [00:09:28] Speaker 01: Now let's say that hypothetically, I don't think your Fort James argument is strong. [00:09:32] Speaker 01: And instead, I want you to focus on whether there's activities and plans of your client that would make it so that this vowel didn't cover future products or current products with respect to this patent and suit. [00:09:50] Speaker 01: Do you have an argument along that line? [00:09:53] Speaker 00: So, we don't have it in the record. [00:09:56] Speaker 00: We do have it in the sense that, as I say, judgment was entered in the case that is the subject of the 161 patent in June. [00:10:06] Speaker 00: There was a transition process sort of worldwide involving the kinds of chips, the kinds of components that are accused here, and that process was not sort of immediate. [00:10:16] Speaker 00: And so, there are arguments about the scope of damages under the other cytonome patents in the district court subject. [00:10:23] Speaker 00: to the public record and you can take judicial notice of them. [00:10:27] Speaker 00: So it is at least conceivable that Cytanome would sue us on the 161 patent with respect to the aspects of the case that sort of post-date the judgment. [00:10:37] Speaker 00: We don't have a specific threat of that suit, but we are concerned, given the history between the parties, the ST and... Counsel, the Supreme Court's Nike case doesn't say, is it possible? [00:10:47] Speaker 02: The question they posed, and this is a direct quote, is could the alleged [00:10:52] Speaker 02: wrongful behavior reasonably be expected to reoccur? [00:10:55] Speaker 02: They're not talking about possibilities in Nike. [00:10:58] Speaker 00: So the allegedly wrongful activity is the use of these chips. [00:11:03] Speaker 00: We're talking in a past tense at this point. [00:11:04] Speaker 00: It has recurred in the sense that we continue to use the chips after the date of the judgment in portions of the world. [00:11:12] Speaker 00: And ST and Cytonym have sought to recover on that use. [00:11:17] Speaker 00: Again, the 161 patent, there was a finding of non-affringement. [00:11:21] Speaker 00: As to the family of patents, they could sue us, again, as to that activity. [00:11:27] Speaker 00: We think that we would have a very strong preclusion argument. [00:11:31] Speaker 02: I think you misunderstand the Supreme Court quote. [00:11:35] Speaker 02: The quote is, that is the question the voluntary cessation doctrine poses. [00:11:42] Speaker 02: Could the allegedly wrongful behavior reasonably be expected to occur? [00:11:45] Speaker 02: You're saying the wrongful behavior is your use of the chips. [00:11:47] Speaker 02: No. [00:11:48] Speaker 02: The Supreme Court's identification of the wrongful behavior is in the cessation. [00:11:53] Speaker 02: It's the allegation of infringement. [00:11:56] Speaker 02: The wrongful behavior could it be reasonably expected to occur? [00:11:58] Speaker 02: Is it reasonable to expect them to sue you again on the same pattern, on the same chip you're making? [00:12:06] Speaker 02: That's what the Supreme Court quote is directed to. [00:12:09] Speaker 00: On the question of whether we think it's reasonable for them to expect them to sue again, I'll point the court to what we mentioned in the gray brief, which is that they have repeatedly sued us on the same patent. [00:12:19] Speaker 00: That is to say, multiple cases involving the same one patent. [00:12:23] Speaker 00: Not this patent, not the 161 patent. [00:12:25] Speaker 00: But the point is that they have a course of conduct that reveals they're suing us repeatedly on the same patent covering the same period of time. [00:12:34] Speaker 00: So we do think it's reasonable to expect that to occur. [00:12:36] Speaker 04: Why didn't you make that argument in gray? [00:12:39] Speaker 04: Why didn't you come in and ask to supplement the record? [00:12:43] Speaker 04: It seems like now you're agreeing with sort of our suggestion that that was the kind of thing that it was necessary for you to at least bring forward. [00:12:53] Speaker 04: So why wasn't that done? [00:12:56] Speaker 04: You didn't think it was necessary? [00:12:59] Speaker 00: respectfully i think that uh... i week we've our position is that the fort james case made this this case easy and there wasn't actually a separate need and the reason is that the supreme court uh... has made clear including in cardinal chemical that there's a public policy in ensuring that patents that are asserted uh... can be challenged on their validity and we made the a i a sanctions decision to channel our validity challenge into the p tab rather than in the district court [00:13:28] Speaker 02: Do you mind if I ask one more question, Chief? [00:13:31] Speaker 02: Please. [00:13:32] Speaker 02: Okay. [00:13:32] Speaker 02: Counsel, why do you think you have standing in this case? [00:13:35] Speaker 02: I understand we're discussing moodness, but I want to know why you think you have standing. [00:13:39] Speaker 00: So standing, obviously, is assessed from the outset. [00:13:42] Speaker 00: And at the time we filed our notice of appeal, we were the subject, we were the defendant in a patent infringement action in which the 161 patent was asserted. [00:13:49] Speaker 00: I don't think that there's any case... No. [00:13:51] Speaker 02: At the time you filed this appeal, didn't we already have a summary judgment decision of no infringement from the district court? [00:13:57] Speaker 00: We had an opinion, but we didn't have judgment. [00:14:00] Speaker 00: And until final judgment is entered, the court could have revisited that decision, could have done any number of things. [00:14:05] Speaker 02: OK, but didn't the court's non-revisiting of it moot standing at that point in time? [00:14:15] Speaker 00: So this court has certainly never held that with respect to a DJ case or an IPR case. [00:14:19] Speaker 00: And the reason is that there's still a live dispute as to infringement until the case is truly final. [00:14:27] Speaker 02: Obviously, but it was, it became truly final, right? [00:14:31] Speaker 02: When they didn't appeal. [00:14:32] Speaker 00: So that was the time to appeal hasn't passed, but I take your point about the disclaimer and that is a mootness question, not a standing question. [00:14:40] Speaker 00: So as to standing, it's straightforward. [00:14:42] Speaker 00: We were the object of an infringement suit as to mootness. [00:14:45] Speaker 00: The Supreme court has made clear that the party shouldn't be able to manipulate the jurisdiction of the federal courts and the judicial process in order to avoid challenges to their conduct or in this case, to a patent. [00:14:56] Speaker 00: And the public policy interest in ensuring that patents that are asserted can be challenged is particularly strong, and it's reflected in the AIA. [00:15:04] Speaker 00: I know that I'm far into my rebuttal time, but I'll reserve whatever I can have. [00:15:08] Speaker 00: Okay. [00:15:08] Speaker 04: Well, we'll do that. [00:15:09] Speaker 04: But I have one for the question, too, and sort of bringing us back to where we started. [00:15:14] Speaker 04: You've made a few or you suggested a few arguments here with regard to why Fort James and carcinochemical, which I don't think you even cited in your brief, [00:15:24] Speaker 04: might compel a similar analytical framework in this context for IPRs. [00:15:31] Speaker 04: But that's not a given. [00:15:33] Speaker 04: That's a hard issue. [00:15:34] Speaker 04: I don't know where one would come out on that. [00:15:37] Speaker 04: But that is an issue that needed to be flushed out, did it not? [00:15:41] Speaker 04: You can't automatically say, because cardinal chemical applies and counterclaims would continue to live in the Fort James circumstance, automatically [00:15:50] Speaker 04: without further analysis, that also applies to IPR proceedings. [00:15:55] Speaker 04: Don't you recognize that's a leap that would have to be analyzed? [00:15:59] Speaker 00: So first, as the Cardinal chemical, I was just mentioning it because it's the basis of the Fort James decision itself. [00:16:04] Speaker 00: So that's what Fort James is turning on. [00:16:08] Speaker 00: We think that, as I say, this is a stronger case than Fort James because of what the court has said about appellate jurisdiction from IPRs. [00:16:15] Speaker 00: But again, this would have been fleshed out differently [00:16:18] Speaker 00: It came earlier in the briefing process. [00:16:20] Speaker 00: So if Cytanome had made the argument about Nike against already, which also isn't in the brief, or otherwise, we could have responded and fully fleshed them out. [00:16:28] Speaker 00: But because Cytanome waited to see our blue brief before filing its disclaimer, it sort of disrupted the ordinary path of the appellate review process. [00:16:38] Speaker 04: Okay. [00:16:39] Speaker 04: Anything else from the panel? [00:16:41] Speaker 04: Members, anything further? [00:16:43] Speaker 04: All right. [00:16:43] Speaker 04: Well, we still have some rebuttal time, and let's hear from Mr. Shaw. [00:16:50] Speaker 03: Thank you. [00:16:53] Speaker 03: May it please the court, Pratik Shah for Appellee, Cydanome ST. [00:16:57] Speaker 03: I will start with the threshold question of Article 3 jurisdiction. [00:17:00] Speaker 03: The sole basis that supported ABS's standing to appeal has vanished. [00:17:05] Speaker 03: In light of the non-infringement ruling in the parallel district court proceeding, as to which Cydanome has categorically disclaimed any appeal, ABS no longer- Yeah, but I'm sure you've read, I'm sure you've read Fred to Earth and Nike already. [00:17:19] Speaker 04: and other cases. [00:17:21] Speaker 04: Why is this not clearly under those cases a moot now at this stage of the game become a mootness question and not the threshold Article 3 question? [00:17:35] Speaker 03: Your Honor, I do agree with you that it does fall under the mootness rubric, but as the Supreme Court and this Court has made clear [00:17:44] Speaker 03: An entity has to show injury in fact throughout the course of the proceeding. [00:17:49] Speaker 03: The fact that whether or not they had injury in fact when they filed the appeal is not enough. [00:17:54] Speaker 03: They have to have it throughout the court. [00:17:56] Speaker 03: So the court loses Article III jurisdiction. [00:17:58] Speaker 03: I agree with you that then becomes a rootness question. [00:18:02] Speaker 03: But right now there is no dispute. [00:18:04] Speaker 03: ABS has not contested, despite ample opportunity to, in its reply brief and hear it argument, that there is no injury in fact right now. [00:18:13] Speaker 03: with respect to the 161 patent, the patented issue. [00:18:17] Speaker 04: Well, don't you have to make a showing? [00:18:19] Speaker 04: I'm sure you're familiar with the Nike case. [00:18:22] Speaker 03: Yes, Your Honor. [00:18:22] Speaker 04: Don't you have to make, I mean, Nike rested on the fact that there was this very, very broad covenant not to sue. [00:18:30] Speaker 04: Yes, Your Honor. [00:18:31] Speaker 04: And analyze that. [00:18:32] Speaker 04: I mean, so don't you have whatever the burden is, and unfortunately that has not been flushed out in any of the briefing, but you have to show something. [00:18:41] Speaker 04: So you're something here is we haven't appealed the finding of non-infringement. [00:18:46] Speaker 04: Right. [00:18:47] Speaker 04: That's your something. [00:18:48] Speaker 04: And you think that that's your burden. [00:18:51] Speaker 04: And now it moves to the other side to establish that they have some continuing recurring injury. [00:18:58] Speaker 04: Exactly. [00:18:58] Speaker 03: Your honor. [00:19:00] Speaker 03: Exactly. [00:19:00] Speaker 03: The sole basis. [00:19:02] Speaker 03: And Mr. Horowitz just said that the sole basis of their standing at the time they filed appeal. [00:19:07] Speaker 03: was at the time they invoked this court's jurisdiction, with our potential appeal of the non-infringement summary judgment in the parallel proceeding, once we categorically disclaim that potential appeal of that non-infringement ruling, that eradicated the only injury in fact. [00:19:28] Speaker 03: So this is not a case like [00:19:30] Speaker 03: Nike, where they had kind of a sprawling set of injury and facts, right? [00:19:35] Speaker 03: Multiple trademark actions, multiple products at issue. [00:19:39] Speaker 03: Here, the only basis was this non-infringement summary judgment and the threat of an appeal. [00:19:45] Speaker 03: Once we took away the threat of that appeal, that is now, there is no injury and fact, and the burden then shifted to them. [00:19:53] Speaker 03: Once we made that argument in our red brief and attached the evidence, [00:19:56] Speaker 03: The argument then shifted, the burden then shifted back to them in their gray brief to come forward with some other basis of injury in fact. [00:20:06] Speaker 04: And this interview, sure. [00:20:08] Speaker 04: If they came up with that for David that said, we've got a production plan and we're planning to come up with, you know, articles, new products that could arguably not, could be colorably different or not. [00:20:23] Speaker 04: Would that be sufficient? [00:20:25] Speaker 03: Your honor, I think it has to show a specific threat. [00:20:29] Speaker 03: And this court has laid it out in detail in the AVX case, which we discussed in our brief. [00:20:35] Speaker 03: And there, just to kind of reorient the court about that case, that was a case where the PTAB challenger brought, invoked this court's jurisdiction and it attached even to its brief. [00:20:48] Speaker 03: a detailed declaration from its general counsel saying, look, we've been in multiple patent battles with the other side. [00:20:56] Speaker 03: There have been four infringement suits. [00:20:59] Speaker 03: We think it's going to happen again because it happened. [00:21:06] Speaker 04: establishing standing in the first instance, or was that a mootness question where standing had existed at one point in time? [00:21:14] Speaker 04: I honestly don't remember. [00:21:15] Speaker 03: Yeah, Your Honor, it is a standing case, but it goes to the question you're asking about what would they have to show to show some injury in fact. [00:21:23] Speaker 03: It was an injury in fact case, and it was at the time of filing, but I think the inquiry, once the burden shifts back to them, is the same. [00:21:30] Speaker 03: That is, can they show some injury in fact based upon the future likelihood [00:21:35] Speaker 03: of an infringement action and AVX lays out the types of the specificity required to show that. [00:21:42] Speaker 03: And even though the AVX appellant attached a declaration from their general counsel laying out in a sworn testimony, all the sorts of things that Mr. Horowitz said at oral argument that look, we have a long history with this company. [00:21:56] Speaker 03: They sue us all the time. [00:21:58] Speaker 03: We think it's going to happen again. [00:21:59] Speaker 03: This court was specific and it said that sort of [00:22:03] Speaker 03: non-specific that the fact and the word Mr. Horowitz used was it's conceivable. [00:22:09] Speaker 03: And this court said the fact that it's conceivable, it might happen, that's not good enough. [00:22:13] Speaker 03: It has to be a specific, articulable, concrete basis to think that there's going to be another suit of infringement. [00:22:21] Speaker 02: They have not offered... If the 90 case makes the standard clear, could the allegedly wrongful behavior, and that wrongful behavior to be clear is definitely, would you sue them again on the same patent? [00:22:32] Speaker 02: The allegedly wrongful behavior reasonably be expected to reoccur. [00:22:37] Speaker 02: I mean, that's right. [00:22:39] Speaker 02: They've got a lot to prove there, right? [00:22:41] Speaker 03: Sure. [00:22:42] Speaker 03: Exactly. [00:22:42] Speaker 03: Your honor. [00:22:43] Speaker 03: They have to show, they have to show some basis. [00:22:45] Speaker 03: Nike makes that clear. [00:22:46] Speaker 03: This court in AVX made that clear. [00:22:48] Speaker 03: This court in J tech, all cases, J tech and AVX, which we cite here. [00:22:53] Speaker 03: They have to have some concrete basis to make it clear. [00:22:56] Speaker 03: They have not presented that basis. [00:22:59] Speaker 01: This is Judge Stoll. [00:23:00] Speaker 01: I think Judge Crouse's hypothetical, though, was saying what if they came forward with a specific redesign and they thought that maybe you would sue them for infringement of that redesign. [00:23:12] Speaker 01: Of course, they haven't done that here, but would that be enough? [00:23:16] Speaker 01: If they had claim charts or something like that and had a specific redesign. [00:23:21] Speaker 03: Sure, your honor. [00:23:22] Speaker 03: It's conceivable that if they came forward with the type of evidence that this court specified in AVX and that I think that you're hypothesizing that they said, look, we've redesigned the chip. [00:23:32] Speaker 03: Here's the claim chart. [00:23:33] Speaker 03: Here's it in potentially infringes on the claims of the patents under the arguments that have been made. [00:23:39] Speaker 03: And they put that in a sworn declaration and they said, we're coming out to [00:23:43] Speaker 03: a market with this product and they established that it was actually a concrete specific articulable risk of infringement, then yes, then maybe it's a much closer case then. [00:23:56] Speaker 03: But they haven't done that here. [00:23:57] Speaker 03: In fact, they've done the opposite. [00:23:59] Speaker 03: Mr. Horowitz referred to, not in the record, but the redesign. [00:24:03] Speaker 03: Well, they used that at trial. [00:24:04] Speaker 03: This was in September. [00:24:05] Speaker 03: They said the redesign avoids the 161 patent. [00:24:10] Speaker 03: That's why they did the redesign. [00:24:12] Speaker 03: So that's why there is no declaration attached to their gray brief that says there's an imminent threat of they told the district court that they've done a redesign that avoids the 161 and that in fact informed our decision not to seek appeal. [00:24:26] Speaker 03: of the 160th. [00:24:26] Speaker 02: Well, counsel, not only is there no declaration of text in their gray brief, none of the arguments he made are in their gray brief either, are they? [00:24:34] Speaker 03: They are not in the gray brief, your honor. [00:24:36] Speaker 02: So he is asserting all of this with no evidentiary support for the first time in oral argument. [00:24:43] Speaker 03: That is correct, your honor. [00:24:46] Speaker 03: And the one thing I will add is that unlike Fort James, we do have a case of this court, albeit it is non-precedential, but it's much more recent. [00:24:55] Speaker 03: and much more on point. [00:24:56] Speaker 03: And this court brought it up in the argument PPG v. Valspar. [00:25:00] Speaker 03: And that's one where, like here, that you had a PTAB challenger that lost in the PTAB. [00:25:06] Speaker 03: It sought appeal in this court. [00:25:08] Speaker 03: Standing was raised in the red brief. [00:25:11] Speaker 03: And then at oral argument, after oral argument, so much later than we did, [00:25:17] Speaker 03: the appellee attached a declaration, a covenant not to sue in that case because the alleged injury was not a potential appeal like here, but about the future risk of an infringement. [00:25:30] Speaker 03: And this court said, look, even though that's tardy and unilateral, Article 3 is Article 3. [00:25:35] Speaker 03: And we can't get around the lack of any injury in fact. [00:25:39] Speaker 03: And it dismissed the appeal as moot. [00:25:41] Speaker 01: Can I just, counsel, counsel, what about, what is your view [00:25:44] Speaker 01: I'm sorry. [00:25:45] Speaker 01: Go ahead. [00:25:49] Speaker 01: What is your view on vacatur and US bank work? [00:25:52] Speaker 01: That is something that happened in PPG as well. [00:25:55] Speaker 03: Yes, Your Honor. [00:25:56] Speaker 03: So one, they haven't asked for that. [00:25:59] Speaker 03: They haven't asked for that relief. [00:26:01] Speaker 03: Two, the other point I would make is that is a discretionary, equitable doctrine. [00:26:06] Speaker 03: And here, the equities are more favorable for us than they were for the appellee in PPG v. Valspar. [00:26:12] Speaker 03: And the reason I say that is this. [00:26:15] Speaker 03: The non-infringement summary judgment happened 15 months ago. [00:26:21] Speaker 03: It happened before they invoked this court's Article III jurisdiction. [00:26:25] Speaker 03: So everyone was on notice at the time they filed their notice of appeal that their sole basis of injury was already the subject of a non-infringement summary judgment determination of non-infringement by the district court. [00:26:41] Speaker 03: And so in the normal case, that's the time for appeal. [00:26:45] Speaker 03: We would have had a final judgment over a year ago. [00:26:48] Speaker 02: Counsel, while I definitely, this is Judge Moore, I definitely agree with you that that is an excellent point and I'm really glad you went right to it. [00:26:56] Speaker 02: What about the fact that you waited until after they filed their blue brief to disavow your right to appeal? [00:27:01] Speaker 03: Sure, Your Honor. [00:27:02] Speaker 03: A couple things. [00:27:03] Speaker 03: One is part of that is for that very reason. [00:27:05] Speaker 03: This was a fluid situation. [00:27:07] Speaker 03: It was entirely possible. [00:27:08] Speaker 03: And in fact, [00:27:09] Speaker 03: We expected that given this was 15 months ago, by the time that we would file our brief, there would actually be a final judgment in the district court. [00:27:18] Speaker 03: It turns out there are other pending claims in the district court. [00:27:22] Speaker 03: And, and even though those ended last September, the court has not yet ruled on the fully briefed Jamal motions. [00:27:29] Speaker 03: So by the time the fact, by the time we came to our red brief, it was clear that we weren't going to have a final judgment. [00:27:35] Speaker 03: And it was also clear that ABS had not alleged any future risk of infringement, either at trial or in its red brief. [00:27:43] Speaker 03: And so that, that pushed us to the point of saying, okay, we no longer have a reason to seek this appeal. [00:27:50] Speaker 03: Uh, and, and, and, and so we represented that to the court, which, which, which should have ended this case right then. [00:27:56] Speaker 02: Um, they were looking at this from an equitable factor consideration, because that's what the vacator analysis requires of us equitable. [00:28:04] Speaker 02: So you've got the non-imprisonment happened 15 months ago. [00:28:07] Speaker 02: They and their camp have, yes, but you then didn't give us what we really needed, i.e. [00:28:13] Speaker 02: a disavowal of appeal until after the blue brief was filed. [00:28:16] Speaker 02: But I would assume your response to that would be, well, that didn't stop them from continuing to pursue the appeal. [00:28:22] Speaker 02: So it's not like if you had given them at an earlier point in time a disavowal, they wouldn't have moved forward because they're arguing to us that that disavowal has no impact on their rights. [00:28:31] Speaker 03: Uh, that's exactly right, your honor. [00:28:34] Speaker 03: And this is not the sort of case like that they can claim surprise. [00:28:37] Speaker 03: Remember in Valspar that, that, uh, covenant not to, uh, to sue an appeal came after oral argument attached to a supplemental brief. [00:28:46] Speaker 03: We did it in our red brief as is done often in standing article three cases in this court. [00:28:52] Speaker 03: We've looked at, we found 13 cases in which a PTAB article three jurisdictional defect has [00:28:59] Speaker 03: has arisen all since 2017, and in half of those, it's raised in the red brief. [00:29:05] Speaker 04: Can I just, because time is short, can I take you back to the Nike case? [00:29:11] Speaker 04: Because I'm not quite clear that we're all on the same page. [00:29:16] Speaker 04: Nike starts out by saying, under our precedence, it was Nike's burden to show that it could not reasonably be expected to resume its enforcement efforts. [00:29:28] Speaker 04: And then it looks to this broad covenant not to sue, which I think, as I understand the case, didn't just deal with the accused designs in that case, but covered all of the existing footwear designs and any colorable imitation. [00:29:47] Speaker 04: So it must be your view that your decision to disclaim your appeal in this case [00:29:54] Speaker 04: was right on par with the broad covenant not just Sue in Nike. [00:30:02] Speaker 04: Is that your position that the two are the same and therefore you have the right to say you satisfied your burden by simply disclaiming the appeal [00:30:14] Speaker 04: And now it's up to ABS to come up with further information. [00:30:18] Speaker 04: Is that what your position is? [00:30:20] Speaker 04: Because there is a difference, is there not, between disclaiming an appeal and the very broad covenant not to sue that the court in Nike says that was sufficient to satisfy Nike's burden. [00:30:32] Speaker 03: Yes, Your Honor, there is a difference. [00:30:34] Speaker 03: But analytically, they're the same. [00:30:36] Speaker 03: And here's the reason why. [00:30:37] Speaker 03: The disclaimer or covenant not to sue has to be coextensive with the asserted injury. [00:30:44] Speaker 03: In Nike, the asserted injury was much broader, the basis for the injury in fact. [00:30:49] Speaker 03: They had a sprawling set of products. [00:30:51] Speaker 03: Nike had sued on some and threatened to sue on a whole lot of others. [00:30:57] Speaker 03: And so in order to defeat that broad basis for an injury in fact, you had to have a commensurately broad covenant not to sue, otherwise it wouldn't actually obviate the injury in fact and render the case moot. [00:31:13] Speaker 03: Here, the basis for the injury and fact that ABS assert is much narrower. [00:31:19] Speaker 03: Their only basis for injury and fact was depending a parallel district court infringement proceeding on which we already have a ruling of non-infringement. [00:31:31] Speaker 03: And so the sole basis for their injury and fact was the prospect of appeal. [00:31:37] Speaker 03: And so here, our categorical disclaimer of that appeal extinguished [00:31:42] Speaker 03: that threat of injury. [00:31:44] Speaker 03: So just as in Nike, we have issued a covenant or a disclaimer that is coextensive with the asserted injury, in fact, and that is the legal test that you would want to apply. [00:31:58] Speaker 03: Of course, it's going to differ case to case as to how broad that disclaimer has to be based upon the nature of the asserted injury, the products, and the actual litigants involved. [00:32:10] Speaker 04: Anything else from my colleagues? [00:32:14] Speaker 04: Okay, thank you. [00:32:16] Speaker 04: Thank you, Your Honors. [00:32:17] Speaker 04: Mr. Horowitz, will we store three minutes for rebuttal? [00:32:23] Speaker 00: Thank you, Your Honor. [00:32:24] Speaker 00: So first, I just want to point out something about Fort James on page 1348, which is that this court said that if, and this is about halfway down the page, a case or controversy adequate to support jurisdiction necessarily exists if the party has been actually charged with infringement [00:32:42] Speaker 00: And it pairs that point again with something right above, which says a post verdict covenant had no effect on the claim for infringement. [00:32:49] Speaker 00: So once you have a claim for infringement, you have injury and the post verdict covenant doesn't get rid of it. [00:32:54] Speaker 00: So that's why we think Fort James applies turning to the, um, the equities here and, uh, and vacant or, but it also bears on chief judge pros and your questions at the end of, uh, my friend's argument. [00:33:06] Speaker 00: We don't just, we don't have a covenant not to sue in this case. [00:33:10] Speaker 00: We have the thinnest of disavowals of appeal. [00:33:13] Speaker 00: In the PPG case, there was a covenant not to sue. [00:33:15] Speaker 00: In Fort James, there was a covenant not to sue. [00:33:17] Speaker 00: They had broad protections. [00:33:19] Speaker 00: We have a repeat asserter of the same patents. [00:33:22] Speaker 00: And this is in the gray brief. [00:33:23] Speaker 00: It's in the record. [00:33:24] Speaker 00: I went slightly beyond the record to respond to the court's questions, but this is in the record. [00:33:27] Speaker 00: We have a party who repeatedly sues us for infringement, including infringement of the same patents. [00:33:32] Speaker 00: They didn't give us a covenant not to sue. [00:33:33] Speaker 00: They gave us the thinnest of disclaimers of an appeal. [00:33:36] Speaker 01: Mr. Horowitz, this is George Stold. [00:33:38] Speaker 01: You have not yet explained why Fort James or Cardinal Chemical applies when they're separate proceedings, and it was not the court that altered, you know, the timing of when the two issues were decided, infringement and validity. [00:33:53] Speaker 01: And this is a different proceeding. [00:33:55] Speaker 01: This is an appeal from an agency, an agency that is not an Article III court. [00:34:01] Speaker 01: So can you address why it is that you think Fort James could apply in the context [00:34:06] Speaker 01: of separate proceedings of a district court in an IPR? [00:34:09] Speaker 00: Yes, Judge Dole. [00:34:10] Speaker 00: At the time we filed our appeal of this case, we invoked the Article III jurisdiction of this court, and at that time we were channeling our invalidity challenge, which the AIA encourages parties to do, through the PTAP and this court's appeal review of that PTAP process. [00:34:26] Speaker 00: And this court has said that the jurisdictional analysis for an appeal from a PTAP is actually more relaxed as compared to the district court context. [00:34:33] Speaker 00: But I want to return, if I can, with my remaining minute to the vaquerter question. [00:34:37] Speaker 00: The equities here strongly favor vaquerter. [00:34:39] Speaker 00: And the reason is because, as I say, we have no protection against a future suit from ST, who has repeatedly sued us, including for the same patent, over and over. [00:34:49] Speaker 00: In light of the estoppel risk that's created by the AIA, and in light of the fact that we're dealing with a repeat player here, even if the court were to conclude that there is no jurisdiction because it's been rendered moot by Cytanome's creative tactics, [00:35:02] Speaker 00: The court should nonetheless vacate to protect ABS against the risk of a future suit where ST comes in and argues that we've been a-stopped. [00:35:10] Speaker 02: Counsel, just for you to file away so that your client knows when and if you lose on mootness today, I'd have affirmed below on anticipation, so you wouldn't have won on that either. [00:35:24] Speaker 00: Well, I hope we have a couple more votes. [00:35:25] Speaker 00: Thank you, Your Honor. [00:35:28] Speaker 04: Thank you. [00:35:29] Speaker 04: We thank both sides, and the case is submitted.