[00:00:00] Speaker 02:
Dish and Sirius, 2019, 12, 83, and 84.

[00:00:05] Speaker 02:
We're going to hear Mr. Lin for nine minutes and Mr. Vagdasarian for one.

[00:00:19] Speaker 02:
Is that accurate?

[00:00:20] Speaker 02:
That's the current one, Your Honor.

[00:00:21] Speaker 02:
Yes.

[00:00:22] Speaker 02:
All right.

[00:00:28] Speaker 00:
May it please the court?

[00:00:29] Speaker 00:
I'll start with the threshold issue of the prevailing party status of the parties.

[00:00:34] Speaker 00:
Prevailing party status is a substantive question, not a procedural one.

[00:00:38] Speaker 00:
And Dragon and Sirius, on the merits, on the substance, have prevailed and rebuffed Dragon before three tribunals.

[00:00:46] Speaker 00:
So we are the prevailing parties.

[00:00:48] Speaker 00:
After briefing was complete in this case,

[00:00:50] Speaker 00:
This court heard oral arguments and issued a decision in the BE Technologies versus Facebook case.

[00:00:57] Speaker 00:
We filed the notice of supplemental authority.

[00:00:59] Speaker 00:
And we think that the reasoning in BE Technology is applicable here, should be applied here, to find that we are the prevailing parties.

[00:01:08] Speaker 00:
So just like in BE Technology, just like Facebook did there, the parties here, Dish and Sirius, filed IPRs.

[00:01:16] Speaker 00:
We went to the P tab and we succeeded.

[00:01:18] Speaker 00:
And that success at the P tab resolved the case for mootness below.

[00:01:23] Speaker 01:
And you're not trying to argue that the other eight defendants who may not have filed any IPRs, in fact weren't involved in the successful IPRs, would be deemed prevailing parties under that same logic, are you?

[00:01:35] Speaker 00:
I am not currently arguing that.

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

[00:01:36] Speaker 01:
You're only arguing that the party that took the time, effort, and money to successfully challenge the patent through the IPR and who happens to simultaneously be sued should be deemed the prevailing party because they did in the IPR what they

[00:01:51] Speaker 01:
would have or could have or might have had to do in the district court litigation.

[00:01:55] Speaker 00:
Correct.

[00:01:55] Speaker 00:
We've rebuffed.

[00:01:56] Speaker 00:
We've rebuffed their attempt to change.

[00:01:57] Speaker 01:
Yeah, but it's important to me because I wouldn't want BE technology to be read for the proposition that if a patent happens to be invalidated by somebody else in a different district court litigation or in an IPR or something, not the defendant in this litigation, I wouldn't want it to be read for the proposition that that means that the defendant in this litigation who may have done nothing at all is necessarily the prevailing party for that reason.

[00:02:21] Speaker 00:
I think that's our position on it.

[00:02:24] Speaker 00:
Somebody might argue differently later.

[00:02:26] Speaker 00:
But yes, that's correct.

[00:02:29] Speaker 00:
Your Honors, so the court below didn't have BE Technology, obviously, because it just came out.

[00:02:36] Speaker 00:
But under this current state of the law, under BE Technology, we think that the decision can't stand.

[00:02:41] Speaker 00:
The court below agreed that we'd achieved a victory.

[00:02:44] Speaker 00:
But the court said that the PTAB had awarded the victory, and success in a different form is not a basis for an award of attorney's fees.

[00:02:51] Speaker 00:
Ultimately, the district court held the addition serious.

[00:02:54] Speaker 00:
We're not really parties because the district court had not quote awarded actual relief on the merits.

[00:02:58] Speaker 00:
That was wrong.

[00:02:59] Speaker 00:
Actual relief on the merits isn't required and it's not required that it comes from the district court.

[00:03:05] Speaker 01:
I don't see any daylight between this case and VE Tech.

[00:03:07] Speaker 01:
You started by saying the reasoning there should apply.

[00:03:10] Speaker 01:
I mean, aren't we bound?

[00:03:11] Speaker 01:
It's precedent.

[00:03:12] Speaker 01:
Are we bound to follow it?

[00:03:14] Speaker 01:
Is there any distinction that you're aware of?

[00:03:16] Speaker 01:
And they're going to get up and argue.

[00:03:17] Speaker 01:
So if there is, they're going to say it.

[00:03:18] Speaker 01:
So tell me what it is now and respond to it.

[00:03:20] Speaker 00:
I think the distinction that they have raised on all issues in the briefing is that we've won multiple times.

[00:03:27] Speaker 00:
And I think the distinction that they're going to make is that, oh, well, the case below, there was a vacature of the non-infringement decision below.

[00:03:34] Speaker 00:
And that, therefore, for some reason, we don't have a judicial imprimatur from the district court.

[00:03:42] Speaker 01:
I see.

[00:03:43] Speaker 01:
So in BE Tech, there hadn't been a vacate tour of the underlying cases.

[00:03:47] Speaker 00:
Because the case was just stayed, right?

[00:03:50] Speaker 00:
And in some senses, it's sort of evidence of how the complications of the case.

[00:03:54] Speaker 01:
You won twice, and now you're going to get penalized, because they took one of the victories away by vacating it.

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

[00:03:58] Speaker 00:
I mean, I would say we won three times because we also have the judicial imprimatur of this court.

[00:04:03] Speaker 00:
I mean, because our IPR is the one that resolved all of the cases.

[00:04:09] Speaker 01:
Can I, with my colleague's indulgence, can I move you over to this other issue, though?

[00:04:13] Speaker 01:
Because the one thing, see, I mean, you can tell I probably agree with you on everything, but except on the things we've discussed so far.

[00:04:20] Speaker 01:
However, when you start asking for a quantum of attorney's fees related to whatever it is you may have or may not have spent in the IPR proceeding, that's when I start getting a little uncomfortable with your position, because I don't understand.

[00:04:33] Speaker 01:
IPR provisions are not fee shifting.

[00:04:36] Speaker 01:
There is nothing.

[00:04:37] Speaker 01:
in the IPR statute that allows for the collection of attorneys fees.

[00:04:43] Speaker 00:
Will say I think I think that for frivolous cases you could go to the p-tab and you could seek attorney's fees What we're saying?

[00:04:50] Speaker 04:
Oh, that's the point how go to the p-tab we we are not doing that here I'm just saying it you know as a point of reference There's you're arguing that you should be able to get the equivalent of a rule 11 You're arguing that you should be able to get the attorney fees from the p-tab Proceedings in the district court that is what I'm arguing right now.

[00:05:07] Speaker 04:
How can you argue that?

[00:05:08] Speaker 00:
We're arguing that because administrative proceedings that occur parallel with a litigation, if they are useful and necessary to the litigation, if they're replacing things that would have taken in the litigation, those things are recoverable.

[00:05:23] Speaker 00:
And we cited to the PPG case in which this court overturned a district court that had denied fees for reissue proceedings.

[00:05:32] Speaker 00:
So the defendant had to participate in reissue proceedings before the BPAI.

[00:05:37] Speaker 00:
And the district court said that those fees had to be recoverable.

[00:05:42] Speaker 04:
Does the AIA include any provisions that allow for fee shifting in IPRs?

[00:05:51] Speaker 00:
I mean, to the extent that it is a singular patent act, that would be the connection between 285 and the act itself.

[00:06:00] Speaker 04:
My question is, in an IPR, does setting aside the district

[00:06:06] Speaker 04:
litigation here.

[00:06:07] Speaker 00:
Sure.

[00:06:08] Speaker 04:
Is there anything in the AIA that allows a party to recover its attorney fees for participating successfully for prevailing in an IPR?

[00:06:19] Speaker 00:
There's not a prevailing party fee shifting arrangement in the PTAB.

[00:06:24] Speaker 01:
So wouldn't your what the argument you're arguing for now to be able to recover fees in an IPR if you're successful but only if you have a parallel district court proceeding because

[00:06:35] Speaker 01:
You would have to acquiesce that if you only had an IPR, you've got no chance of getting fees.

[00:06:39] Speaker 00:
There would be no district court for me to seek the fees.

[00:06:41] Speaker 01:
Correct.

[00:06:42] Speaker 01:
So wouldn't the rule of law you're asking us for completely contradict the entire IPR scheme?

[00:06:50] Speaker 01:
Because the IPR scheme was meant to reduce litigation.

[00:06:53] Speaker 01:
And if I was a defendant and I filed an IPR, do you know what else I'd also file the same day in every single instance?

[00:06:59] Speaker 01:
A declaratory judgment action.

[00:07:01] Speaker 01:
And then I'd ask the district court to stay it while the IPR was ongoing.

[00:07:05] Speaker 01:
I'd go back to the district court and say, aha, now I want my fees because I'm the prevailing party.

[00:07:10] Speaker 01:
And that federal circuit said, if I have a district court proceeding in a parallel IPR and I succeed in the IPR, I'm the prevailing party.

[00:07:17] Speaker 01:
And you might say, well, the district court can exercise its discretion since you were the filer not to give it to you.

[00:07:21] Speaker 01:
But it doesn't seem like the right rule of law.

[00:07:24] Speaker 01:
That seems like we would be encouraging you to file.

[00:07:26] Speaker 01:
a bunch of unnecessary district court litigations to try to recover fees.

[00:07:30] Speaker 00:
I would actually take the opposite viewpoint.

[00:07:32] Speaker 00:
If we don't allow parties to recover fees that they had to use to go to the PTAB, if I have a really bad case and at the very beginning I know I can file an IPR and I can get rid of the case,

[00:07:44] Speaker 00:
But I know that, yeah, I probably would win at the district court.

[00:07:48] Speaker 00:
If I know that I'm going to have to spend the, what, $750,000 to go all the way through the IPR, what if I stay in district court and I win in district court, I can recover my fees?

[00:07:56] Speaker 00:
I think it actually dissuades people from going to the... Really?

[00:07:59] Speaker 01:
Because no one has yet ever gotten fees and IPRs, and yet IPRs are booming and district court litigation is way down.

[00:08:05] Speaker 01:
So you really think that's what the result is going to be, given that currently it's not the case?

[00:08:10] Speaker 00:
I mean, our position is that we've previously, or this court has previously granted fees under the BPAI.

[00:08:16] Speaker 00:
District courts do it all the time for re-exam, for re-issue.

[00:08:20] Speaker 00:
And the legislative history says that the IPR program or the PTAP program is intended to be a cost-effective alternative.

[00:08:27] Speaker 00:
And that's exactly what we had here.

[00:08:29] Speaker 01:
So PPG is the only case of ours that has ever said anything vaguely like what you're arguing for.

[00:08:35] Speaker 01:
And one of the things that struck me in that PPG case was that it said,

[00:08:40] Speaker 01:
the parties were required to participate in the reissue proceeding, and that requirement is why they awarded fees.

[00:08:49] Speaker 01:
Technically, you and I know there's no requirement to participate in a reissue proceeding.

[00:08:53] Speaker 01:
I can't even understand why the opinion said that, because participation is not required.

[00:08:58] Speaker 01:
Yet the court did hold that.

[00:09:00] Speaker 01:
So why wouldn't I say to the extent that PPG ruled that, consistent with

[00:09:05] Speaker 01:
All of the other cases you've told me about when you can reach into administrative proceedings to obtain fees in a district court litigation for what occurred in administrative proceedings, it's limited to circumstances where there's a determination that your participation in the administrative proceeding was in fact required as PPG expressly held.

[00:09:24] Speaker 01:
Why wouldn't that be the rule?

[00:09:26] Speaker 00:
I think that the reason it shouldn't be the rule is because, as I said, the legislative history says it's supposed to be a cost-effective alternative, and the cases that we've cited talk about where the administrative or the procedures for the administration or the administrative body supplant things or they substitute for things.

[00:09:42] Speaker 00:
that would have taken place in the litigation right so in the in the monolithic powers case we have an itc action and the district court action and the discovery or because discovery was duly usable between the itc and the district court the things that overlapped between the itc and the district court they got fees for that and in this case i mean our ipr things that overlap but that's because you were already doing them in the district court

[00:10:05] Speaker 01:
here you weren't doing those things in the district court the case was stayed so the reason they got him in monolithic is because they were doing it simultaneously in both cases so it was being done in the district court you're asking here for things that were done exclusively not at all pursuant to any district court requirements timing scheduling or anything else but done exclusively in an administrative tribunal but those things and the only case i can find that supports it is ppg and i'll tell you flat out i think it's wrongly decided but

[00:10:33] Speaker 01:
Lucky for me, it says it found that it was required.

[00:10:39] Speaker 00:
Despite the fact that I agree with you that it was not required and therefore that portion of the decision I think is wrong.

[00:10:44] Speaker 01:
Except that's what the panel said, so I don't get to second guess the panel on their rationale.

[00:10:48] Speaker 00:
I agree.

[00:10:50] Speaker 00:
In this case, the case was stayed.

[00:10:53] Speaker 00:
We were subject to estoppel.

[00:10:54] Speaker 00:
So all of the things that we did at the PTAB were things that would have had to take place at the district court, but for our filing the IPR.

[00:11:02] Speaker 00:
We spent money, and my position, we actually saved

[00:11:06] Speaker 00:
a lot of money by filing the IPR.

[00:11:07] Speaker 00:
And that was the position that we told the court when the court offered us a stay, is that we told them what our non-infringed position was.

[00:11:14] Speaker 00:
They refused it.

[00:11:16] Speaker 00:
And the cost-effective, the most cost-efficient way to handle it was to file the IPR.

[00:11:20] Speaker 00:
So that's our concern.

[00:11:20] Speaker 04:
My biggest concern is the American rule and the fact that it says that in ordinary circumstances, attorney fees are not going to be, each party will bear its own attorney fees.

[00:11:31] Speaker 04:
And there's nothing in the AIA that talks about

[00:11:35] Speaker 04:
Shifting fees in IPRs.

[00:11:38] Speaker 04:
That's my biggest concern.

[00:11:39] Speaker 04:
Do you have any response to that other than I guess PPG?

[00:11:45] Speaker 00:
I mean I would say I mean I think PPG and monolithic are both two cases that handle that I think that we've cited to a number of district court cases, but I would also point the court to the It's the wed wed the board of education where it basically sets out This the standard that has been pulled through all these cases where it says that it's something that's both useful and of a type ordinarily necessary in advancing the litigation our position is

[00:12:08] Speaker 00:
that filing the IPR supplants and substitutes for the things that would take place at the litigation, and therefore they should be recognized.

[00:12:14] Speaker 04:
Do you ever think if Congress thought that fees should be shifted, they could have easily included a provision for fee shifting in the AIA?

[00:12:21] Speaker 00:
285 is part of the Patent Act.

[00:12:25] Speaker 04:
It's not part of the proceedings relating to IPRs.

[00:12:29] Speaker 04:
It's about district court actions.

[00:12:31] Speaker 04:
It's not about IPR proceedings.

[00:12:33] Speaker 04:
There are separate statutory provisions for IPR proceedings.

[00:12:38] Speaker 00:
I mean, I agree with that.

[00:12:39] Speaker 00:
But it is all part of the same act.

[00:12:40] Speaker 00:
And we're relying on the court's previous president.

[00:12:43] Speaker 00:
It sounds like I'm not convincing at least two of you.

[00:12:46] Speaker 02:
Counsel, you're well into your rebuttal time.

[00:12:48] Speaker 02:
And one minute of that is going to go to your co-counsel.

[00:12:52] Speaker 02:
So let's hear from your co-counsel.

[00:12:57] Speaker 02:
I will yield my time in light of the thanks question.

[00:12:59] Speaker 02:
That's wise.

[00:13:02] Speaker 02:
We will save the rest of your time.

[00:13:06] Speaker 02:
Mr. Freitas, is it?

[00:13:09] Speaker 02:
Pardon me, Your Honor.

[00:13:09] Speaker 02:
Freitas?

[00:13:10] Speaker 02:
Freitas, Your Honor.

[00:13:11] Speaker 02:
Freitas.

[00:13:13] Speaker 03:
Thank you, Your Honor.

[00:13:14] Speaker 03:
May it please the Court.

[00:13:15] Speaker 03:
Judge Moore, you asked a question about whether BE is controlling and why it might not be.

[00:13:22] Speaker 03:
There's a factual context here that's different.

[00:13:24] Speaker 03:
It wasn't present in BE.

[00:13:26] Speaker 03:
In this case, there were judgments entered and the judgments were vacated.

[00:13:32] Speaker 03:
There's 70 years of Supreme Court precedent

[00:13:35] Speaker 03:
that says what happens when the judgments are vacated.

[00:13:39] Speaker 02:
That was a judgment of non-infringement.

[00:13:42] Speaker 02:
Correct, Your Honor.

[00:13:43] Speaker 02:
Didn't relate to validity.

[00:13:45] Speaker 02:
Pardon me, Your Honor?

[00:13:45] Speaker 02:
Didn't relate to validity.

[00:13:46] Speaker 02:
It did not.

[00:13:48] Speaker 03:
It did not.

[00:13:49] Speaker 03:
But it was the judgment, and I'll address the other part of it in a bit.

[00:13:54] Speaker 03:
The judgments in the district court were vacated pursuant to the Monsignor rule.

[00:14:01] Speaker 03:
what the Supreme Court has said.

[00:14:02] Speaker 01:
Yeah, but how do you reconcile your argument right now with BE Tech?

[00:14:07] Speaker 01:
In BE Tech, we found that they were a prevailing party because they had prevailed in the IPR, and that mooted the district court litigation.

[00:14:17] Speaker 01:
And that's exactly what happened here.

[00:14:19] Speaker 03:
I don't read the case that way, Your Honor.

[00:14:21] Speaker 03:
I think in BE, it was not based on the fact that they had won in the IPR because they hadn't won in the IPR.

[00:14:30] Speaker 03:
the party that was held the prevailing party, won a final decision from the PTAP.

[00:14:36] Speaker 03:
But when Microsoft won in this court, Facebook's petition was ordered dismissed.

[00:14:43] Speaker 03:
Facebook did not stand before this court as a prevailing party on the PTAP side.

[00:14:51] Speaker 03:
And I'll address why it wouldn't matter anyway.

[00:14:52] Speaker 01:
But I don't see how that helps you.

[00:14:56] Speaker 03:
It distinguishes the case.

[00:14:58] Speaker 03:
But back to my point.

[00:15:00] Speaker 01:
Well, it doesn't distinguish the case from this case in a way that helps you.

[00:15:03] Speaker 01:
That's like saying that it was printed on yellow paper, not white paper.

[00:15:06] Speaker 03:
No.

[00:15:07] Speaker 03:
I'll get to that, Your Honor.

[00:15:09] Speaker 03:
The fundamental point that I'm making about how the case is different is there are 70 years of Supreme Court precedent that explains what happens when a judgment is vacated.

[00:15:19] Speaker 01:
No, but honestly, the 70 years of Supreme Court precedent might be great.

[00:15:26] Speaker 01:
But according to your 70 years of Supreme Court precedent, you would tell me BE Tech is wrongly decided, right?

[00:15:33] Speaker 03:
Oh, absolutely, Your Honor.

[00:15:34] Speaker 01:
No doubt.

[00:15:35] Speaker 01:
So I have to follow BE Tech.

[00:15:37] Speaker 01:
I don't have a choice.

[00:15:39] Speaker 01:
It is binding precedent on this panel.

[00:15:41] Speaker 01:
And so since I have to follow BE Tech, your only argument, it seems to me, is to the in-bank court that BE Tech is wrongly decided.

[00:15:48] Speaker 01:
Because you've made no argument to me that BE Tech is distinguishable from this case.

[00:15:53] Speaker 01:
Your only argument to me is BE Tech is wrongly decided, so you shouldn't follow it, because there's 70 years of Supreme Court precedent.

[00:15:59] Speaker 03:
I'm trying to make a different one, Your Honor.

[00:16:02] Speaker 03:
And the argument I'm trying to make is the factual context in this case is different from BE, where we have vacated judgments.

[00:16:10] Speaker 03:
I've made the point, and that's how we're saying it's different.

[00:16:14] Speaker 03:
But of course, yes, we are saying that BE was wrongly decided.

[00:16:19] Speaker 03:
Now, to the other point, Your Honor, the idea that winning in the PTAB is sufficient to make a party a prevailing party in district court, that's inconsistent with the case law that says that prevailing means prevailing in the district court.

[00:16:35] Speaker 03:
This is a question of statutory interpretation of the meaning of the term.

[00:16:40] Speaker 03:
And this court in Brickwood and Ranieri and the Supreme Court in Buchanan and other cases,

[00:16:48] Speaker 03:
has said that that term prevailing party must be construed consistently across the body of the law.

[00:16:55] Speaker 03:
So the question is whether there's room in the meaning of that term to apply to other proceedings.

[00:17:02] Speaker 03:
The cases we've cited say there's not.

[00:17:06] Speaker 01:
Again, just to be clear, this is an argument that BETEC has wrongly decided, correct?

[00:17:10] Speaker 03:
It's not, Your Honor, because we don't read BE as turning on the fact that they won in the PTAB.

[00:17:16] Speaker 03:
And the facts of the case wouldn't support that anyway.

[00:17:18] Speaker 04:
What you're saying is that they won in the PTAB, which in turn caused them to be the prevailing party in the district court case.

[00:17:25] Speaker 04:
You have to look at what happened in the district court case to see whether they prevailed as a result of their efforts in the IPR.

[00:17:31] Speaker 03:
Is that what you're saying?

[00:17:33] Speaker 03:
I read BE differently, Your Honor.

[00:17:34] Speaker 03:
I think, well, first of all, as I said, Facebook did not end up a prevailing party.

[00:17:40] Speaker 03:
in the PTAB proceeding.

[00:17:41] Speaker 04:
The petition was ordered.

[00:17:44] Speaker 04:
That's not the question.

[00:17:45] Speaker 04:
The question isn't whether Facebook was a prevailing party in the IPR proceeding.

[00:17:49] Speaker 04:
The question is whether Facebook was a prevailing party in the district court case.

[00:17:54] Speaker 03:
Yes, of course.

[00:17:54] Speaker 03:
You and I are on the same page.

[00:17:55] Speaker 04:
Yes, of course.

[00:17:56] Speaker 04:
OK?

[00:17:57] Speaker 03:
Yes.

[00:17:57] Speaker 03:
And I think what the court said in BE was simply because the case was dismissed, that was enough to render Facebook a prevailing party.

[00:18:08] Speaker 04:
I think your position is that in this case where the judgment and non-infringement had been vacated, they're not the revealing party, even though ultimately they got the relief that they wanted by having the patent be invalid.

[00:18:25] Speaker 03:
Well, yes, Your Honor.

[00:18:27] Speaker 03:
And there's a long answer to that.

[00:18:29] Speaker 03:
And the answer begins with going back to Buchanan and the requirement of Buchanan

[00:18:34] Speaker 03:
of a material alteration of the legal relationship of the parties.

[00:18:39] Speaker 03:
That didn't occur in district court.

[00:18:42] Speaker 03:
And winning somewhere else outside of the district court proceeding is not sufficient to render one a prevailing party.

[00:18:52] Speaker 03:
So these are the points that we've made.

[00:18:56] Speaker 03:
And the idea that we're simply attacking BE is not quite right.

[00:19:03] Speaker 03:
Certainly we are.

[00:19:05] Speaker 03:
But we think there are some differences.

[00:19:09] Speaker 01:
I still fail to understand your differences, because am I mistaken about the facts?

[00:19:13] Speaker 01:
In BE Tech, the result that Facebook achieved was a dismissal for mootness in light of the IPR proceedings.

[00:19:22] Speaker 01:
Isn't that exactly what occurred here, too, a dismissal?

[00:19:26] Speaker 03:
There actually hasn't been a dismissal.

[00:19:28] Speaker 03:
The case has been terminated as a result of mootness, but there's no formal dismissal.

[00:19:34] Speaker 03:
And in the BE case?

[00:19:36] Speaker 01:
Are you saying then this case is not, we don't have jurisdiction over this case if there hasn't been a final decision?

[00:19:41] Speaker 03:
We're not saying that, Your Honor.

[00:19:42] Speaker 03:
We explained in our brief why we think the orders denying the exceptional case motions are sufficient to give this court jurisdiction.

[00:19:51] Speaker 03:
But there was not a similar order.

[00:19:54] Speaker 03:
But the other point, Your Honor, about what happened, well,

[00:20:00] Speaker 03:
It's some nuance about the Facebook case.

[00:20:03] Speaker 03:
I'd like to turn to the other issue that we've raised.

[00:20:05] Speaker 04:
Let me ask you for a second about CRST.

[00:20:08] Speaker 04:
CRST, which was after Buchanan, that held that a defendant may prevail even if the court's final judgment rejects the plaintiff's claim for a non-merit reason.

[00:20:21] Speaker 04:
And that's defining what a prevailing party is for a non-merits reason.

[00:20:25] Speaker 04:
Why doesn't that apply here?

[00:20:27] Speaker 03:
Because a final judgment for a non-merits reason doesn't include a moodness dismissal.

[00:20:34] Speaker 03:
A moodness dismissal is not a judgment.

[00:20:37] Speaker 03:
It's not a resolution of the case.

[00:20:40] Speaker 03:
It's not a recognition, excuse me, a rejection of anyone's claims.

[00:20:46] Speaker 03:
When a court stands down because of moodness,

[00:20:50] Speaker 03:
It is not resolving the dispute.

[00:20:54] Speaker 03:
But Canon required a judgment.

[00:20:56] Speaker 03:
CRST says it doesn't have to be on the merits.

[00:20:58] Speaker 03:
The point is simple, Your Honor.

[00:21:01] Speaker 03:
It's the difference between winning on the statute of limitations or winning because the contract wasn't breached.

[00:21:07] Speaker 03:
That's all CRST did.

[00:21:11] Speaker 03:
And the idea that by saying we don't need a judgment on the merits, that doesn't mean we don't need a judgment.

[00:21:19] Speaker 03:
It means that the judgment need not be on the merits.

[00:21:25] Speaker 03:
And it's very clear in the key passage on page 1651 in CRST, the requirement for a judgment rejecting the plaintiff's claim.

[00:21:36] Speaker 04:
Didn't the district court dismiss the case in BE Tech as moot?

[00:21:40] Speaker 03:
Yes.

[00:21:41] Speaker 04:
And there, they relied on CRST.

[00:21:43] Speaker 04:
This court relied on CRST.

[00:21:45] Speaker 03:
That's true, Your Honor.

[00:21:49] Speaker 03:
So, but let me turn to the other issue about the scope or the reach of Section 285.

[00:21:56] Speaker 03:
We've argued that the cases show, and there's no reason to doubt them, that Section 285 doesn't apply to lawyers.

[00:22:06] Speaker 03:
We've pointed to a rule that says when lawyers aren't carved in, in statutes of this nature, they're out.

[00:22:15] Speaker 03:
And there's no answer to those cases.

[00:22:17] Speaker 03:
The only argument

[00:22:19] Speaker 03:
that's been made is that because octane points to exceptionality as the only substantive scope provision, that that somehow means that lawyers are in.

[00:22:34] Speaker 03:
Well, that's not enough under the established law.

[00:22:38] Speaker 03:
That's not enough to create an exception to the American rule, which as the Supreme Court noted in the canon and has been noted

[00:22:48] Speaker 03:
in various other places requires explicit statutory authority.

[00:22:54] Speaker 03:
There's no argument by the other side that there is any such authority.

[00:23:01] Speaker 03:
So their position rests entirely on the idea that there's nothing that says lawyers are out.

[00:23:10] Speaker 03:
That's not required.

[00:23:11] Speaker 03:
That's not how the American rule operates.

[00:23:15] Speaker 03:
And it's not how these issues get resolved.

[00:23:17] Speaker 03:
Regarding lawyers.

[00:23:18] Speaker 01:
Confused.

[00:23:19] Speaker 01:
This whole lawyer's thing.

[00:23:21] Speaker 01:
Section 285 says may award reasonable attorney's fees.

[00:23:25] Speaker 01:
I think an attorney is a lawyer.

[00:23:26] Speaker 01:
So what are you talking about?

[00:23:27] Speaker 01:
I'm not following you.

[00:23:29] Speaker 03:
Awarding attorney's fees against a lawyer.

[00:23:33] Speaker 01:
Oh, got it.

[00:23:34] Speaker 01:
This is the jointly and severally liable part.

[00:23:36] Speaker 01:
OK.

[00:23:37] Speaker 03:
So that's the point, Your Honor.

[00:23:39] Speaker 03:
And that's the other issue that's been raised.

[00:23:43] Speaker 03:
And they've not cited any cases.

[00:23:46] Speaker 03:
that say Section 285 applies against lawyers?

[00:23:52] Speaker 01:
And what is it that you have, I'm sorry, that indicates that it can't apply against lawyers?

[00:24:00] Speaker 01:
Because lawyers are, at times, held jointly and separately liable for, for example, Rule 11 violations.

[00:24:07] Speaker 03:
So Rule 11 is very different.

[00:24:09] Speaker 03:
Rule 11, consistent with the requirements of the American rule, spells out that lawyers are responsible.

[00:24:15] Speaker 01:
Okay, well exceptional cases have it court we have awarded and affirmed awards of 285 attorneys fees and exceptional cases when for example There's been extreme litigation misconduct right and sometimes that litigation misconduct is really Orchestrated by counsel.

[00:24:32] Speaker 01:
I mean we've seen it firsthand Are you saying it wouldn't be appropriate in a situation like that for the judge to hold the council jointly and severely liable for the part with the parties for?

[00:24:42] Speaker 01:
Attorneys fees under 285 and that's right your honor

[00:24:45] Speaker 03:
It's likely that in the scenario you've described, the lawyers would be liable under some other rule or statute.

[00:24:52] Speaker 03:
But under Section 285, the liability rests only on the litigant.

[00:24:57] Speaker 01:
Where does it say that?

[00:24:59] Speaker 03:
It doesn't say that, but it doesn't say otherwise.

[00:25:02] Speaker 03:
And as we pointed out in our brief, the rule is that when lawyers are not carved in, they're not in.

[00:25:09] Speaker 03:
So explicit language requiring that.

[00:25:12] Speaker 01:
Rule 11 doesn't carve lawyers in.

[00:25:13] Speaker 03:
I'm sorry?

[00:25:14] Speaker 01:
Rule 11 doesn't carve lawyers in.

[00:25:15] Speaker 03:
It does, Your Honor.

[00:25:16] Speaker 01:
It expressly indicates you can recoup the rule 11 sanctions against counsel.

[00:25:21] Speaker 03:
Yes, Your Honor.

[00:25:22] Speaker 01:
I didn't remember that.

[00:25:23] Speaker 03:
So in rule 11B, it explains how you work through from the violation, and then you work toward who else is responsible.

[00:25:33] Speaker 02:
But it's quite point-specific.

[00:25:34] Speaker 02:
But no fees assessed against attorneys here, correct?

[00:25:38] Speaker 02:
Pardon me, Your Honor?

[00:25:39] Speaker 02:
There were no fees assessed against attorneys here.

[00:25:43] Speaker 02:
They haven't been, but a motion was filed against the lawyers.

[00:25:46] Speaker 04:
But how is the issue right?

[00:25:48] Speaker 04:
Pardon me, Your Honor?

[00:25:49] Speaker 04:
How is the issue right before us now?

[00:25:52] Speaker 04:
The district court didn't address this and didn't award fees against any attorneys.

[00:25:59] Speaker 04:
So how is it that we should address this issue?

[00:26:02] Speaker 04:
It does not seem to me to be right.

[00:26:04] Speaker 03:
Well, it is right in the sense that it's a legal question.

[00:26:08] Speaker 03:
That's what the appellants say.

[00:26:10] Speaker 03:
They say it's a pure question of law and it should be decided.

[00:26:14] Speaker 03:
We've advocated that the judgment in favor of the lawyer and law firm appellees should be affirmed on the alternative ground disclosed by the record that lawyers and law firms are simply not liable under Section 285.

[00:26:31] Speaker 02:
There was no judgment here of non-liability on the part of lawyers, correct?

[00:26:38] Speaker 03:
There was, in the sense that the court denied the motion, but not on the basis that 285 doesn't apply.

[00:26:48] Speaker 03:
So there has not, Judge Stohl, been a ruling from the district court.

[00:26:53] Speaker 03:
But the appellants are arguing the issue should be decided, that it's a question of law.

[00:26:59] Speaker 03:
And we've advocated for affirmance on that alternative ground.

[00:27:05] Speaker 03:
So that's how the issue is before this court.

[00:27:11] Speaker 02:
Anything further?

[00:27:12] Speaker 02:
No, Your Honor.

[00:27:13] Speaker 02:
Thank you, Counsel.

[00:27:18] Speaker 00:
Still in has a little rebuttal time.

[00:27:20] Speaker 00:
I have a little rebuttal time I did want to clarify one thing with respect to our request for fees below We're not just asking for IPR fees or for the fees.

[00:27:28] Speaker 00:
We spent the p-tab We also have will be requesting fees related to the district court litigation as well as the appeals and whatnot So those are still there.

[00:27:37] Speaker 00:
We're not just seeking fees for the IPR that shouldn't guide this court's decision

[00:27:41] Speaker 00:
One other point of clarification is my friend there was speaking about the mootness decision.

[00:27:47] Speaker 00:
The mootness occurred because of our victory at the PTAB and then subsequently this court's own decision affirming the cancellation of the claims.

[00:27:57] Speaker 00:
The mootness, any mootness that occurred is because we also won again.

[00:28:00] Speaker 00:
We can't be said to not be prevailing parties because we won too much.

[00:28:05] Speaker 00:
And then quickly, it's certainly within the court's discretion.

[00:28:09] Speaker 00:
It's our position to decide the issue of joint liability for attorneys under 285.

[00:28:15] Speaker 00:
We've briefed the issue, we've discussed Doctane.

[00:28:17] Speaker 00:
One thing I would like to raise is just we pointed to a similar rule under the Federal Rules of Appellate Procedure 38, which is a similar broadly worded fee shifting statute.

[00:28:28] Speaker 00:
For bad cases, the circuit courts can assess fees.

[00:28:31] Speaker 00:
And this court and many other circuit courts have used that rule, which says nothing about who has to pay the fees to assess sanctions against attorneys.

[00:28:42] Speaker 00:
So this court in Phonometrics 1 did that.

[00:28:45] Speaker 00:
We've cited, too, the Coughlin case.

[00:28:48] Speaker 00:
which lists a number of circuit court cases that have done that.

[00:28:52] Speaker 00:
And, you know, as we look at it, we have two rules, both that broadly deal with fee shifting, neither of which say who has to pay.

[00:29:00] Speaker 00:
And on the one hand, circuit courts have no problem using that to guard the door to prevent bad appeals from coming in.

[00:29:06] Speaker 00:
And we're just saying that in a similar statute under 285, district courts should have the same power.

[00:29:13] Speaker 00:
Unless there are other questions, I'll sit down.

[00:29:14] Speaker 02:
Thank you.

[00:29:14] Speaker 02:
Counsel, the case is submitted.

[00:29:17] Speaker 02:
Thank you.