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The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and this honorable court.

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Morning, counsel.

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The time's set for oral argument in case number 19-1918, in-rate personal web technologies.

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Mr. Sherman, are you ready to proceed?

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Yes, I am, your honor.

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Well, then go ahead.

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The clock is running.

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May it please the court?

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My name is Michael Sherman, counsel for Appellant Personal Web Technologies, LLC.

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There are two issues that I would like to address.

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Point one, as far as application of the Kessler doctrine is concerned in this case, there is a very simple threshold question that this court should answer.

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And that is.

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Mr. Sherman, this is Judge Wallach.

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On page two of the red brief,

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Amazon asserts that PersonalWeb voluntarily dismissed its claims with prejudice after an unfavorable claim construction order.

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I didn't see any mention of an unfavorable claim construction order in either of PersonalWeb's briefs.

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Was there such a claim construction order?

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No, there was not, Your Honor.

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And the best that Amazon does is state on that

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a second sentence of their introduction effectively that it won claim construction that is nowhere supported by the appellate record.

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And Kessler has never been applied by the Federal Circuit without a prior adjudication of non-infringement.

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That did not happen here.

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Ergo, Kessler should not apply.

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This is Judge Toronto.

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Can I ask you a question?

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Why isn't

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the final judgment in the Texas action, which is pursuant to the dismissal with prejudice of a complaint, the entirety of which asserts infringement and adjudication of non-infringement.

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I consented to one, but why is it not a adjudication of non-infringement?

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That essentially, Your Honor, is the syllogism that Amazon constructs, that voluntary dismissal with prejudice is a judgment on the merits and entitled to preclusive effect, and that therefore, dismissal with prejudice is an adjudication of Pat Personnelweb's Pat infringement claims, and thus, Amazon as a party is an adjudicated non-infringer.

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The problem with that, though,

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is that Amazon is reduced to conceding that an adjudication of non-infringement is required under Kessler.

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They're just saying that an adjudicated non-infringer ought not mean what the plain language says it means.

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This would erase the holding the US Supreme Court decision of Lawler versus National Screen Services 1955.

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It would fly in the face of mentor graphics.

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In mentor graphics,

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This court stated, consistent with the Supreme Court's Lawler decision and our decisions in aspects in brain life, we hold that claim preclusion does not bar a patentee from bringing infringement claims for acts of infringement occurring after the final judgment in a previous case.

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And we reverse the grant of summary judgment that claim preclusion barred mentors assertion of the 531 and 176 patents.

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The Kessler application, close quote, the Kessler application

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Following an adjudication of non-infringement means, and I'm quoting from Kessler, this judgment, whether it proceeds upon good reasons or upon bad reasons, whether it was right or wrong, settled finally and everywhere.

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And the Supreme Court in Kessler goes on to say, it's the corresponding duty of Eldred to recognize and yield to that right everywhere and always.

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And so to finish up the answer to that question, finally, everywhere, always, back from 1907, US Supreme Court means what it says, always and forever.

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And as Amazon argues, claim preclusion is the same today as it was at the time of Kessler.

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And so finally, everywhere and always cannot be read consistent with going beyond

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the law or mentor graphics claim preclusion only up through prejudgment and that is how Amazon syllogism falls apart.

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Mr. Sherman, this is Judge Waller.

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On page 28 of the blue brief, personal web says ultimately the entire Texas action was dismissed with prejudice or

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and I'm quoting you, cost slash benefit litigation reasons.

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What does that mean?

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And what shows us what that is in the record?

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Yes.

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What that means is that in the Texas action, the reason for the reservation of rights

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in favor of Amazon on its dismissal with prejudice of its declaratory judgment action for non-infringement was the party's failure to reach an agreement on an acceptable license term.

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That is found in Appendix 735, the Hadley Declaration.

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Amazon wanted, as part of the dismissal of the entire Texas action with prejudice, the right to seek declaratory judgment of non-infringement in the future.

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Hence, I think it's pretty clear that a voluntary dismissal of a non-infringement declaratory judgment action is hardly the prior adjudication of non-infringement required by Kessler.

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But continuing on, the fact is that the dismissal with prejudice being the sole trigger

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As this court, Your Honors, know, there could be many reasons why there's a reason to dismiss an infringement cause of action with prejudice that has nothing to do with non-infringement.

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For example, lack of personal jurisdiction, misidentification of a party leading to dismissal in a new filing because of a lack of understanding of all the underlying transactions.

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or finding out after filing that a third party is the direct infringement, you cannot prove indirect infringement.

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My point being that you can't and shouldn't just look at only whether there's been a dismissal with prejudice, because a dismissal with prejudice alone is just not enough.

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If that were... Mr. Sherman, this is Judge Bryson.

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I have a couple of questions, but the first is, on your point that you're making now,

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You're not arguing, are you, that a dismissal with prejudice, as opposed to a dismissal without prejudice, but a dismissal with prejudice does not terminate the cause of action in the complaint.

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Are you arguing that?

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Absolutely not, Your Honor.

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No, okay.

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So this particular cause of action is over, period.

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You can't, regardless of the reasons for the termination of the

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that the decision was made to consent to a dismissal with prejudice, the cause of action has been extinguished, right?

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Correct.

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Everything pre-judgment over done with.

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Right.

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Okay.

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And the second question is, I assume, both from your briefs and also from the beginning of your argument, that there is a live issue as to infringing activity

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that occurred after the judgment in the Texas Cakes.

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That is correct, is it not?

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Absolutely.

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Okay, good.

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Now, I guess my last question is that Kessler doctrine applies, in your brief you repeatedly say that there has to be an adjudication of non-imprisonment.

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I think it's pretty clear from the cases that it also applies, for example, to an adjudication of invalidity of the patent.

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You would agree with that, would you not?

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Well, if you're having difficulty on that, let me cite you to the speed track case at page 1323 in which it says the Kessler Doctrine bars a patent infringement action against a customer or seller who has previously prevailed.

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against the patentee because of invalidity or non-infringement of the patent.

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So it does sound like we have adopted the broader view as to what sort of reason for the adjudication would be enough to terminate the cause of action and invoke Kessler.

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Would you agree to that?

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Yeah, I mean, I would say that blonder tongue

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And, you know, invalidity, you really don't even need Kessler for that.

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Well, OK.

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But whatever Kessler leads us to conclude, it is triggered by, for example, an adjudication of invalidity as well as non-infringement.

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If it is based

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If it's based on invalidity, perhaps, but I think that what Your Honor is referencing is dicta and not holdings in any of the Federal Circuit cases.

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Okay.

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And I guess where I'm going with this is it, and this I think picks up on Judge Toronto's earlier question.

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I'm wondering whether it isn't the case that when we talk about the scope of Kessler,

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that it's not so much whether there's been an adjudication of non-infringement, rather the question of whether there's been an adjudication of non-liability for infringement.

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And put that way, that would include other reasons that the claim of infringement has been defeated by either invalidity or

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inequitable conduct leading to a finding of unenforceability, all of those presumably would lead to the same conclusion, which is an adjudication of non-liability for infringement.

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Wouldn't that be the better way to put the Kessler, the scope of the Kessler Doctrine?

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Well, I think that the, clearly the Kessler Doctrine is, does require a

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prior adjudication of non-infringement.

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And if the prior... I thought we had already discussed the question of whether it had to be non-infringement, a finding of non-infringement as opposed to, say, a finding of invalidity.

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Your Honor, I would say that in the hypothetical that you're providing, it could apply

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only if the prior judgment extended to post-judgment through some express agreement or an express finding of the court.

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And without that, I think that the... What's your authority for that proposition?

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Finally and everywhere, everywhere and always, in Kessler.

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Is it your position that if a judgment is issued against a party, it's not final and everywhere?

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It is final and everywhere up through the time of the entry of that judgment.

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And the Federal Circuit in brain life made it clear that it would not be

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applying to post-judgment activity.

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Council, one of the points you make on, we're into your rebuttal time, but one of the points you make is apparently you're saying the accused products or processes are not materially different, but it's against a different feature of the same patent.

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Is that correct?

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I would say that our position is that there are major differences between what was accused in the Texas action to the present action, relying on the infringement contentions.

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There's a gigantic difference between the operation and mechanics of multi-part upload in Texas by S3 customers that uploaded very large files versus here.

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Council, those are both part of the same patent, yes?

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They are both part of the same patent.

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However, where the, according from Acumed, where the differences between them, that is the accused devices,

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are merely colorable or unrelated to the limitations in the claim of the patent, in that instance, claim preclusion would not be applied.

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And that's what this circuit has held in Act 1324.

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Council, Brain Life says that claim preclusion bars both allegations that are brought as those as I'm quoting, as well as those that could have been brought.

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And brain life found that.

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You're breaking it up.

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Yeah, I mean, this is as stated, brain life found that, but in AcuMed,

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focusing on the rule about claim splitting, what this court said is a contrary reading would suggest that any cause of action that could have been joined in the original action would be precluded, a point we rejected over four decades ago.

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We're talking here about the rule against claim splitting.

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And I do think it's important that this panel consider not only that acumen statement and

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And they're facts, but the Haitian Republic case.

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So your time has expired.

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I'm going to give you a couple of minutes rebuttals, but you're over now.

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Thank you.

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OK.

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Next council, please.

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This is Dave Haddon for Amazon and the customer defendants.

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Picking up on the last point, the Texas action explicitly accused Amazon S3 as the infringing product.

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This is at Appendix 61.

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The complaint said Amazon has infringed and continues to infringe the assertive patents by its manufacturer, use, sale, importation, and or offer for sale of the following products and services.

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within the personal web patent field, colon, Amazon Simple Storage Service S3, and Amazon ElastiCash, which is another Amazon web storage service.

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So the transaction that defined the cause of action in the first Texas suit was making, using, and selling Amazon S3.

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Nowhere did the Texas complaint mention multi-part upload.

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So what PersonalWeb is telling the court now is exactly the opposite of what it told the Texas court.

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In Texas, PersonalWeb told the court that Amazon S3 was ZQ's product.

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Mr. Haddon, this is Judge Taranto.

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Can I ask you this question?

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Sure.

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It appears to be standard law as to issue preclusion

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that consent judgments don't generate it.

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Um, Supreme court said that at least in passing in Arizona against California, and there's had some support in the restatement second of judgments.

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Um, if claim preclusion is limited by time, why should the Kessler doctrine be read, um, to attach to

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a consent judgment that, as issue preclusion limitation that we just talked about, that I just mentioned, indicates, is not understood to be a resolution of the liability character of the accused product.

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So I think, Your Honor, that this Court sort of answered that question in speed track.

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were noted that Kessler was a necessary supplement to issue and claim preclusion, because without it, and this is quoting, a patent owner could file suit against the manufacturer's customers under any theory or claim not actually litigated against the manufacturer, as long as it challenged only those acts of infringement that post-dated the judgment in the first action.

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And that result would authorize the type of harassment the Supreme Court sought to prevent in Kessler.

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And that's exactly, stepping back, what has happened here, right?

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But the harassment has come in spades.

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Amazon obtained a final judgment in its favor, clearing.

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Mr. Haddon, this is Judge Wallach.

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I just want to interject on that.

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I asked your opposing counsel about the statement in the red break that personal web failed to mention an unfavorable claim construction order.

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And he just sort of glossed that over.

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Is there such an unfavorable claim construction order?

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Yes.

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And just to put this in a little more context, Your Honor, this is not a case that was dismissed from the get-go.

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This case is litigated for two and a half years.

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And after two and a half years, Personal Web, and particularly after Judge Davis's claim construction order,

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did not have a viable enforcement claim.

[00:20:03] Speaker 01:
Wait, wait, wait, stop.

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Your opposing counsel said there was no claim construction order.

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Oh, no.

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Absolutely, Your Honor.

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Absolutely.

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This case, we were in expert, I was counsel Frams on this case.

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We were in expert discovery post claim construction when Personal Web gave up this case.

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And just to kind of

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This notion that this was an economic decision, well, let's look at the economics, right?

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So a person would have sued Amazon, I'm sorry.

[00:20:38] Speaker 01:
Mr., I have one further question.

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What's the record cite to that unfavorable claim construction order?

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That I can't tell you off the top of my head, but I believe that it was cited in,

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I would have to look, John.

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I know there was a claim projection order.

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I know it was cited in the briefing.

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I don't have the appendix page.

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I can try to look during Mr. Sherman's rebuttal.

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But it should not be disputed.

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This case was litigated for two and a half years.

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If we looked at the Eastern District of Texas docket, we would find it there?

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Yes, of course.

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Yes, John.

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And just to kind of close the loop on this, right, there's another appeal pending from this set of MDL cases, where Judge Freeman, subsequent to this Kessler motion, has ruled for summary judgment of non-imprisonment of all the claims.

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And in part, she is following up on the prior claim construction orders in the prior cases, as well as reconsidering additional terms in this case.

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But I just wanted to go back to this argument that somehow this is just a standard procedure that should be allowed under Kessler.

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And it's not, right?

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PersonalWeb had the opportunity to take its best shot against Amazon with its patents in Texas.

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It tried that.

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It litigated for two and a half years.

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It then gave up that case.

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And it gave up, and this is important,

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eight years of potential damages going back to the launch of Amazon S3 in 2006.

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All that it gave up.

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And what did Amazon give up?

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Amazon gave up nothing.

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It didn't pay anything.

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It reserved all of its rights.

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So under Kessler, at that point, Amazon should have the ability to continue its business as it did before it was sued.

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The fact that PersonalWeb gave up its case

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to avoid a trial should not change the fact that Amazon had obtained the right to continue its business that the Supreme Court gave it in Kessler.

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And this is specifically just the S3?

[00:23:08] Speaker 02:
Yes, Your Honor.

[00:23:09] Speaker 02:
Yes, Your Honor.

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Exactly the product that was accused.

[00:23:12] Speaker 04:
This is Judge Bryson again.

[00:23:14] Speaker 04:
To go back to Judge Toronto's earlier question about issue preclusion, it seems to me, and here's what's troubling me about this case.

[00:23:22] Speaker 04:
Your reading of Kessler would extend both issue preclusion in the way that Judge Toronto was referring to as normally not applicable to consent judgment and also claim preclusion in the sense that it would apply a form of claim preclusion under the rubric of Kessler to infringing activities after the judgment in the first case.

[00:23:52] Speaker 04:
even though in Kessler and itself, that was a pretty obvious instance of issue preclusion.

[00:23:59] Speaker 04:
I mean, they didn't call it that.

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And of course, mutuality of estoppel prevented them from applying the traditional doctrines.

[00:24:06] Speaker 04:
But it really, if you look at it in modern terms, it was clearly an application of issue preclusion.

[00:24:13] Speaker 04:
And yet you're asking us to say that this doctrine, which is peculiar to patent law,

[00:24:21] Speaker 04:
should be adopted even though it is not supported by either of the two principle pillars of the law of judgments, issue and claim preclusion.

[00:24:33] Speaker 04:
And given that the Supreme Court has demonstrated to us more than a few times that it is not favorably inclined towards patent-specific rules, and even though Kessler itself can easily be fit into the traditional residue decoder rules,

[00:24:52] Speaker 04:
Why should we extend Kessler beyond the scope of what its particular holding was?

[00:24:59] Speaker 04:
Well, I don't think we are extending it, Your Honor, and I think the... Well, except for with me, if you would, just for purposes of argument.

[00:25:08] Speaker 00:
Sure, sure.

[00:25:09] Speaker 04:
My premise, that Kessler is an issue preclusion case in sum and substance.

[00:25:15] Speaker 04:
So in that sense, you would agree, I think, with Judge Toronto's point, that issue preclusion

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is not arguably present here.

[00:25:26] Speaker 03:
Correct.

[00:25:26] Speaker 03:
I do not dispute that issue... Go ahead.

[00:25:31] Speaker 03:
I'm sorry.

[00:25:32] Speaker 03:
Yeah, so I agree with your honor's premise that issue preclusion does not apply here.

[00:25:38] Speaker 03:
But the Federal Circuit has never limited Kessler to issue preclusion, right?

[00:25:43] Speaker 03:
That was the whole point of brain life.

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Brain life, the method claims were barred under Kessler,

[00:25:50] Speaker 03:
even though the opinion strongly suggests they were in fact infringed, right?

[00:25:54] Speaker 03:
The saving element of the apparatus claims that was the basis for reversing the jury's finding of infringement in the first case were not in the method claims.

[00:26:05] Speaker 03:
So those claims were likely infringed.

[00:26:07] Speaker 03:
There was no determination or issue preclusion that would apply to bar those claims.

[00:26:13] Speaker 03:
What barred the claims was the final judgment, the final judgment in the first case.

[00:26:18] Speaker 03:
Similarly, in SpeedTrack, the doctrine of equivalence claims were never litigated.

[00:26:23] Speaker 03:
Issue preclusion did not apply, but Kessler did.

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And the reason it did was there was a final judgment in the first case.

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And stepping back, I think all of those cases, including Kessler, stand for the proposition that when a supplier clears themselves in a case that is brought by the patentee,

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They should be able to continue their business, including selling the product that was at issue in the first case.

[00:26:51] Speaker 03:
And that's all that's happening here, that all that Amazon is requesting, right?

[00:26:58] Speaker 03:
It was sued, litigated for two and a half years.

[00:27:01] Speaker 03:
It prevailed.

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There was a final judgment.

[00:27:04] Speaker 03:
At that point, Amazon had the right to continue its business as if it had won a trial.

[00:27:09] Speaker 04:
Suppose, Mr. Haddon, that there weren't any customers in this picture and this were just a case

[00:27:15] Speaker 04:
And let's say in which Amazon was using the patented method, not selling it, just using it.

[00:27:24] Speaker 04:
And the infringement action was brought on that basis.

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There had been, as in this case, a prior judgment.

[00:27:30] Speaker 04:
There would be no protection for post-judgment infringement in that case, right?

[00:27:35] Speaker 04:
Because there would be... Correct.

[00:27:37] Speaker 03:
Under plain preclusion... It wouldn't apply.

[00:27:40] Speaker 04:
Right.

[00:27:41] Speaker 04:
So it seems kind of odd that if you introduce customers into the picture, that suddenly the rules change and Amazon gets protection.

[00:27:54] Speaker 04:
That seems a little bit odd.

[00:28:00] Speaker 03:
I don't think it is, Your Honor, because, and particularly this case highlights it.

[00:28:06] Speaker 03:
So you're saying the personal web had its chance

[00:28:09] Speaker 03:
to sue Amazon, and it had its chance to collect all of its damages from Amazon.

[00:28:16] Speaker 03:
And it gave up that opportunity, entered its final judgment with prejudice, giving up its claims.

[00:28:24] Speaker 03:
Now, why four years later should it be able to come back and sue Amazon's customers?

[00:28:31] Speaker 04:
Well, it's also suing Amazon itself, correct?

[00:28:34] Speaker 04:
Not in the specific cases before us, but it is

[00:28:38] Speaker 04:
I gather it is continuing to press against Amazon.

[00:28:42] Speaker 03:
Is there a counterclaim in the DJI action?

[00:28:45] Speaker 03:
There is a counterclaim in the DJI action.

[00:28:48] Speaker 04:
Yeah, right.

[00:28:49] Speaker 04:
So there is a part of this case that's exactly the same, I suppose, in all material respects, as the case that I put hypothetically in which Amazon was making the goods here, in which Amazon is being sued itself

[00:29:07] Speaker 04:
for post-Texas judgment activity, right?

[00:29:12] Speaker 03:
Yes, there is a 10-month period after the final judgment in June 2014 until the patents expired in April of 2015.

[00:29:21] Speaker 04:
It is not covered by... Your argument about Amazons being put in an impossible position by having to defend against post-judgment infringement charges

[00:29:35] Speaker 04:
wouldn't prevail if there were no customers and Amazon was just committing these acts of infringement by itself, right?

[00:29:45] Speaker 03:
That claim would not be barred by claim precretion if there were no customers.

[00:29:50] Speaker 03:
Or Kessler or anything else.

[00:29:52] Speaker 03:
Correct.

[00:29:52] Speaker 03:
Right, okay.

[00:29:53] Speaker 03:
Correct, all right.

[00:29:54] Speaker 03:
Go ahead.

[00:29:55] Speaker 03:
I don't dispute that.

[00:29:56] Speaker 03:
No, so the point is, and I think the policy issue why Kessler should apply in this situation is that

[00:30:05] Speaker 03:
There's no change in the economics that makes personal web's claims more viable against Amazon's customers in 2018 than they were when they gave them up back in 2014.

[00:30:20] Speaker 03:
The only thing that has changed is that personal web has sued instead of Amazon 80 customers who do not have the ability and incentive to defend Amazon's technology.

[00:30:32] Speaker 02:
Can I ask you this, I guess, a pair of questions?

[00:30:39] Speaker 02:
One is, have you looked at anything in legislative history, say, of Congress's various Title 35 enactments since, well, since, say, 50 years ago when Blonder Tongue came down and opened up a world of

[00:31:02] Speaker 02:
non-mutual issue preclusion that offers some illumination about whether Congress has understood there to be a Kessler doctrine that goes beyond issue preclusion.

[00:31:18] Speaker 02:
And the answer may be a simple no, you don't know anything.

[00:31:22] Speaker 02:
And then I'll move to the second question.

[00:31:24] Speaker 03:
And the answer is a simple no, unfortunately, Your Honor.

[00:31:28] Speaker 02:
OK.

[00:31:28] Speaker 02:
So the other question.

[00:31:31] Speaker 02:
Is there anything, this picks up I guess on something Judge Bryson mentioned about the general reasons to be suspicious of patent-specific doctrines.

[00:31:51] Speaker 02:
Is there anything that you can think of that would be textual in Title 35 or any

[00:32:00] Speaker 02:
any offering of an explanation for why there ought to be an additional you can't come back a second time doctrine just to avoid labels for this patent situation that wouldn't exist outside the patent world?

[00:32:21] Speaker 03:
I can't off the top of my head.

[00:32:23] Speaker 03:
I think the policy that I think goes hand in hand with Kessler is the policy that this court has

[00:32:31] Speaker 03:
enumerated many times in Rockstar, Nintendo, et cetera, which is that patent disputes should be decided between the patent holder and the supplier of technology.

[00:32:45] Speaker 03:
And customers should be spared, particularly where the patent holder has already taken a shot against the supplier of the technology and lost.

[00:32:58] Speaker 04:
But if that were true,

[00:33:00] Speaker 04:
This is Judge Bryson.

[00:33:00] Speaker 04:
If that were true, and suppose there were a rule adopted tomorrow by Congress that you may not sue customers, you may only sue the principal here.

[00:33:11] Speaker 04:
If that were true, then if this were an action by a personal web against Amazon only, then it would seem that the doctrine of claim preclusion would say,

[00:33:26] Speaker 04:
Amazon is fully protected up until the date of the judgment in the Texas case and not thereafter.

[00:33:35] Speaker 03:
I agree, Your Honor, but the hypothesis is a little, I think, fictional because we would not be here if Personal Imp could not sue the customers because we're only here because they sued 80 customers.

[00:33:49] Speaker 03:
They didn't choose to come back after Amazon again.

[00:33:52] Speaker 03:
Amazon inserted itself in this case to protect the customers.

[00:33:57] Speaker 03:
So if a person really wanted to go after Amazon, they could have continued their case through trial in Texas and we would have issue preclusion.

[00:34:06] Speaker 03:
They chose not to do that.

[00:34:08] Speaker 03:
They walked away, they dismissed with prejudice, they accepted the judgment.

[00:34:12] Speaker 03:
We're only back here now because they sued 80 customers to try to get some nuisance settlements after their patents expired.

[00:34:22] Speaker 04:
Could I ask you just one more question?

[00:34:23] Speaker 04:
I'm sorry I've taken up too much of your time.

[00:34:26] Speaker 04:
But if there were, had been in the Texas case, a license for $1

[00:34:38] Speaker 04:
that personal web gave to Amazon.

[00:34:43] Speaker 04:
Would that, in your view, change the outcome of this case?

[00:34:48] Speaker 03:
It could.

[00:34:49] Speaker 03:
I think it's important, particularly, you know, Mentor Graphics has nothing to do with this case, right?

[00:34:55] Speaker 03:
Amazon did not retain its right under Kessler or otherwise to continue its business because it took a license.

[00:35:05] Speaker 03:
It retained its rights because personal web's cause of action was dismissed with prejudice, right?

[00:35:13] Speaker 03:
So at that point, Amazon was free to go about its business.

[00:35:18] Speaker 03:
not because it took a license, but because it defeated that claim.

[00:35:28] Speaker 01:
Okay.

[00:35:29] Speaker 01:
Any further questions?

[00:35:32] Speaker 02:
No.

[00:35:33] Speaker 01:
Okay, thank you, counsel.

[00:35:36] Speaker 00:
Thank you.

[00:35:37] Speaker 01:
Two minutes for rebuttal.

[00:35:40] Speaker 00:
Thank you, your honor.

[00:35:41] Speaker 00:
Your honor, there are three points that I think deserve to be made here.

[00:35:45] Speaker 00:
Counsel indicated he couldn't tell you off the top of his head about the adverse claim construction order.

[00:35:53] Speaker 00:
The fact is that there was no unfavorable claim construction order in Texas.

[00:35:59] Speaker 00:
There's nothing in the record about it.

[00:36:01] Speaker 00:
In the present case below, in fact, Amazon argued the claim construction from the court in Texas should be adopted that was opposite of the Texas claim construction.

[00:36:15] Speaker 00:
OK?

[00:36:16] Speaker 00:
And so there was a claim construction.

[00:36:20] Speaker 00:
There's nothing in the record suggesting it was unfavorable.

[00:36:23] Speaker 00:
Second, with respect to the dismissal of the declaratory judgment action.

[00:36:31] Speaker 01:
Are you representing to the court that that was a favorable claim construction for your client?

[00:36:38] Speaker 00:
I'm representing that it was a claim construction.

[00:36:41] Speaker 00:
It had all sorts of twists and turns.

[00:36:44] Speaker 00:
But the determination, as set forth in the record on the appendix, 735 to Hadley Declaration, the decision that was made was an economic decision because of damages.

[00:36:58] Speaker 00:
Because for those reasons, this was not a claim construction, to my knowledge, that established non-infringement.

[00:37:09] Speaker 00:
With respect to the dismissal point that

[00:37:14] Speaker 00:
the panel and council spent some time on.

[00:37:18] Speaker 00:
Amazon had a counterclaim in the Texas action.

[00:37:22] Speaker 00:
It sought a declaration of non-infringement.

[00:37:25] Speaker 00:
They gave it up.

[00:37:27] Speaker 00:
They dismissed it.

[00:37:28] Speaker 00:
They had the absolute right under FRCP 41A sub 2 to maintain it.

[00:37:35] Speaker 00:
But they gave it, they reserved their rights

[00:37:38] Speaker 00:
And that's presumably why we are here.

[00:37:42] Speaker 00:
So they didn't win on non-infringement below.

[00:37:45] Speaker 00:
And then my third and last point is that... You can wrap it up.

[00:37:55] Speaker 00:
Thank you.

[00:37:56] Speaker 00:
Permissible jointer is not co-extensive with a cousin of claim preclusion.

[00:38:03] Speaker 00:
The Haitian Republic case states

[00:38:05] Speaker 00:
From 1894, one of the tests laid down for the purpose of determining whether or not causes of action should be joined is whether the evidence necessary to prove one cause of action would establish the other.

[00:38:20] Speaker 00:
And that's not the case here because evidence would be completely different because the infringement contentions are completely different and there's different accusations of different aspects of the device.

[00:38:33] Speaker 00:
It's download versus upload.

[00:38:35] Speaker 00:
Thank you very much.

[00:38:37] Speaker 01:
Thank you.

[00:38:38] Speaker 01:
This matter will be submitted