[00:00:00] Speaker 01:
All right, our next case for argument today is 21-1024, Shore Incorporated versus Clear One Inc.

[00:00:11] Speaker 01:
Mr. McCorkindale, did I say that right?

[00:00:13] Speaker 01:
That's right.

[00:00:14] Speaker 01:
McCorkindale, please proceed.

[00:00:19] Speaker 00:
Hey, please, the court.

[00:00:21] Speaker 00:
It's great to be back on these historic grounds.

[00:00:23] Speaker 00:
My name is Derek McCorkindale from Finnegan.

[00:00:26] Speaker 00:
We represent Shore Incorporated.

[00:00:28] Speaker 00:
For almost a year, SURE has been under an improper contempt order and installs an expanded injunction.

[00:00:36] Speaker 00:
The contempt order may be reviewed under 1292A, which is now enjoined with its new overbreath, non-infringing mounting configurations of SURE's microphone devices.

[00:00:49] Speaker 02:
Can I just ask?

[00:00:50] Speaker 02:
You said to go over it for a year, but what we know from the record, I think, is the latest is the district court says it's not imposed.

[00:00:58] Speaker 02:
and his order of discovery.

[00:01:00] Speaker 02:
Is the discovery ongoing?

[00:01:03] Speaker 02:
Are you set to go to trial any time?

[00:01:06] Speaker 02:
We're just talking preliminary judging here.

[00:01:08] Speaker 02:
Can you tell us what's going on with this case?

[00:01:11] Speaker 00:
The answer, Your Honor, is yes.

[00:01:13] Speaker 00:
The contempt proceedings are ongoing as distinctions, but the contempt order was entered on September 19th.

[00:01:20] Speaker 02:
And is discovery still ongoing?

[00:01:21] Speaker 02:
Because I thought you would ask for discovery in connection with the contempt order.

[00:01:26] Speaker 02:
So is that still going on?

[00:01:28] Speaker 00:
The papers have been submitted to the judge for consideration at this point on sanctions, Your Honor.

[00:01:35] Speaker 00:
A trial is expected later this year, perhaps in the new year, I believe is the timeline.

[00:01:42] Speaker 00:
And we would seek interlocutory appeal right now of the contempt order because it installs an injunction on the face of it that bans three mounting configurations not previously implicated by the original injunction

[00:01:57] Speaker 00:
And under the case law in energy resources, the pendency of sanctions does not ban or preclude this court from hearing the immediate injunction that has emerged.

[00:02:09] Speaker 01:
Well, my difficulty with your case, and I'll tell you, I don't, if you can't convince me I'm wrong about what I'm about to say, you have no chance of prevailing with me at least, okay?

[00:02:18] Speaker 01:
It's fair.

[00:02:18] Speaker 01:
So the original injunction said that you were prevented from manufacturing, marketing, or selling

[00:02:26] Speaker 01:
the MXA910 in a way that would allow integrators to install it in a drop ceiling mounting configuration.

[00:02:39] Speaker 01:
There is no question the MXA910 could be installed in other than a drop ceiling mounting configuration.

[00:02:47] Speaker 01:
Isn't that correct?

[00:02:49] Speaker 00:
It is correct.

[00:02:50] Speaker 01:
So you had a device that was capable of multiple possible installations, only one of which was covered by the patent, correct?

[00:02:57] Speaker 00:
That is correct.

[00:02:58] Speaker 01:
And you have an injunction against you that prohibits you from making, marketing, or selling the device if it allows integrators to install it in this one configuration, correct?

[00:03:10] Speaker 01:
That is where... That's the injunction, what it says on the face, if it allows integrators to install it in a drop ceiling mounting configuration, correct?

[00:03:19] Speaker 01:
Is that what the injunction says?

[00:03:21] Speaker 00:
No, Your Honor.

[00:03:22] Speaker 01:
The injunction doesn't say allows integrators to install it in a drop ceiling mounting configuration?

[00:03:27] Speaker 01:
I'm reading from the injunction, so I would think the answer would be yes.

[00:03:30] Speaker 00:
Yes, on page 118, 119.

[00:03:32] Speaker 00:
119, yes.

[00:03:36] Speaker 00:
Sure-shell cease manufacturing, marketing and selling the MX-A910 can be used in its drop ceiling mounting configuration.

[00:03:43] Speaker 01:
Including marketing and selling in a way that allows integrators to install it in a drop ceiling mounting configuration, correct?

[00:03:51] Speaker 00:
in a way that encourages or allows integrators to install it.

[00:03:54] Speaker 00:
Right.

[00:03:54] Speaker 01:
Encourages or allows are two different things.

[00:03:56] Speaker 01:
Encouraging is you suggesting they do it.

[00:03:58] Speaker 01:
Allowing is you selling a product capable of being used that way.

[00:04:03] Speaker 01:
And in fact, when you came in under bond, because this is a preliminary injunction, didn't you make it clear that this prohibited all your sales and that the bond they would have to post would be equivalent to that?

[00:04:16] Speaker 00:
Your Honor, the bond was only for the one mounting configuration.

[00:04:21] Speaker 01:
According to... No, the bond was for all possible... You said you would discontinue the MXA910 under the preliminary injunction, isn't that correct?

[00:04:29] Speaker 01:
Even though that product was capable of being used in a way that wouldn't infringe under this injunction, you discontinued it entirely.

[00:04:38] Speaker 00:
Your Honor, we discontinued the MXA910 not because we felt enjoined by it, but because we... Well, you were enjoined by it.

[00:04:45] Speaker 01:
So, whether you felt enjoined by it or not is sort of irrelevant to me.

[00:04:49] Speaker 01:
You were enjoined.

[00:04:50] Speaker 00:
Your Honor, we saw that we were enjoined only under one use of that.

[00:04:54] Speaker 01:
And the MXA910... No, you were enjoined to the extent that this product would allow integrators to install it in a drop mounting configuration.

[00:05:03] Speaker 00:
Your Honor, the after arising claim construction is what introduced the configured for the able to be used, the capable of use, the design to allow that logic entered into the case after the injunction.

[00:05:17] Speaker 03:
I want to go back to the beginning, though, because the injunction says what Judge Moore says.

[00:05:22] Speaker 03:
She's reading from it, OK?

[00:05:24] Speaker 03:
So it says allows.

[00:05:26] Speaker 03:
You then told the judge when you were briefing with respect to the bond that that would prevent you from selling

[00:05:33] Speaker 03:
any version of that product, right?

[00:05:38] Speaker 03:
Your Honor, we... Which is why you asked for a huge bump.

[00:05:42] Speaker 00:
Your Honor, we recognized that there was only one enjoining configuration at that time.

[00:05:46] Speaker 00:
As they clear one, they very clearly said on their face, on the face of the bond papers, that they only thought that the MX-8910 was precluded in one mounting configuration.

[00:05:56] Speaker 00:
They said, quote, the MX-8910 could continue to be sold in its other three mounting configurations.

[00:06:02] Speaker 03:
And you told the judge you're going to make sure that it was only sold in other mounting configurations, right?

[00:06:08] Speaker 00:
That's right.

[00:06:09] Speaker 03:
You specifically represented that to the judge.

[00:06:10] Speaker 00:
That was the encourage and allow part.

[00:06:12] Speaker 00:
We would ensure that that drop ceiling mounted configuration, the only one in the injunction, would no longer be sold or marketed in a way that it could do that.

[00:06:23] Speaker 03:
That allowed it or that encouraged it?

[00:06:25] Speaker 03:
Your only argument really at the contempt is that, well, we didn't really encourage it.

[00:06:31] Speaker 03:
told them not to do it, even though we knew that the infringing way was the easier way to do it, that it was more likely that they would do it in the infringing way, all of that.

[00:06:42] Speaker 03:
The judge made findings of facts with respect to that.

[00:06:45] Speaker 00:
Your Honor, we read the injunction order to be limited to the use in the drop ceiling mounting configuration and that the marketing and selling is in the same clause as the encourage and allow.

[00:06:57] Speaker 00:
Therefore, we knew that we could only market and sell

[00:07:01] Speaker 00:
for the other three configurations and not for the infringing configuration.

[00:07:06] Speaker 01:
I don't understand.

[00:07:07] Speaker 01:
What do you think it means when he says allows integrators to install it in a dry mounted ceiling configuration?

[00:07:13] Speaker 01:
You're selling a product that still allows integrators to install it in a dry mounted ceiling configuration.

[00:07:21] Speaker 00:
Your Honor, it is indisputable that we could mount our apparatus in 100% of ceilings

[00:07:31] Speaker 00:
if properly following the instructions.

[00:07:33] Speaker 00:
We had a fully non-infringing drop ceiling mounted configuration that we were marketing at that point.

[00:07:40] Speaker 01:
Are you talking about the A or the 910?

[00:07:43] Speaker 01:
We're talking about, I was talking about the A, that's why we... Yeah, it could be mounted in a non-infringing way, just like the 910 could have also been mounted in a non-infringing way, correct?

[00:07:55] Speaker 00:
That is correct.

[00:07:56] Speaker 00:
We could mount in

[00:07:58] Speaker 00:
three different configurations that were not touched by this originally.

[00:08:01] Speaker 02:
Just to put one even further, he did a lot of fact-finding and a very clear cohesive opinion that talked about the 15th, 16th of an inch.

[00:08:11] Speaker 02:
And so it wasn't just a clear, it's capable of, but wink, wink, nod, nod, nobody would do it otherwise.

[00:08:17] Speaker 02:
There were many reasons the district court laid out as to why the integrators would

[00:08:25] Speaker 02:
it would be much easier for them, and they would absolutely be inclined, in a practical matter, to go the other way.

[00:08:32] Speaker 02:
Right?

[00:08:34] Speaker 00:
Your Honor, the evidence did not show that integrators were more inclined to do this.

[00:08:40] Speaker 00:
That was a speculation based off one end user who was never enjoined, who knew about the prohibition and did it anyway.

[00:08:46] Speaker 00:
It does not, it did not... You knew about the prohibition?

[00:08:50] Speaker 01:
What prohibition?

[00:08:52] Speaker 00:
The prohibition against

[00:08:53] Speaker 00:
the flush mounting configuration, the loan configuration that was enjoined in the original injunction.

[00:08:58] Speaker 01:
What prohibition?

[00:08:59] Speaker 01:
Did you sell it conditional on it not being installed that way?

[00:09:04] Speaker 01:
Did you have a contract with each end user?

[00:09:07] Speaker 01:
What do you mean prohibition?

[00:09:09] Speaker 00:
Well, we certainly laid out an educational campaign that showed that we were not encouraging or allowing this particular mounting integration.

[00:09:17] Speaker 02:
You were not allowing?

[00:09:19] Speaker 02:
How were you enforcing the not allowing?

[00:09:21] Speaker 02:
Were there some penalties in the contract if they used it in this way?

[00:09:25] Speaker 00:
Well, Your Honor, it would void their warranty for having installed it incorrectly, and we therefore found absolute compliance.

[00:09:33] Speaker 00:
No integrator installed it in an infringing matter that we knew of.

[00:09:38] Speaker 00:
Even at the time of this order, we'll see that there is no integrator installation that is improperly found, that is found to have been improper, rather.

[00:09:46] Speaker 00:
And so there is no evidence on this appeal record

[00:09:52] Speaker 03:
Well, your friend on the other side would say that's not true.

[00:09:54] Speaker 03:
There was at least one that they knew of at the time of the contempt, and that they're now, after they've doing the discovery, are finding a whole bunch more.

[00:10:04] Speaker 00:
Your Honor, the one example that they talk about is Northern Trust.

[00:10:08] Speaker 00:
It is the one example in their What We Know Now section.

[00:10:10] Speaker 00:
And that one example is a case where this works.

[00:10:14] Speaker 00:
The integrator called Schuer and asked whether this was being done correctly.

[00:10:19] Speaker 00:
It's before the project went live.

[00:10:20] Speaker 00:
You can see from the photographs and the records that there were wires everywhere and they called and we corrected that installation and told them the proper way to do it and it is proof that we were policing for this integration.

[00:10:33] Speaker 00:
We were seeking to properly apply it.

[00:10:36] Speaker 02:
There's still ongoing discovery which the district court has not considered in terms of the sanctions to impose.

[00:10:43] Speaker 02:
So we can't do that fact-finding up here in the first instance.

[00:10:46] Speaker 02:
Right?

[00:10:47] Speaker 02:
Absolutely right.

[00:10:48] Speaker 02:
And this is an ongoing proceeding where you've not had any sanctions, no monetary sanctions imposed on you.

[00:10:56] Speaker 02:
We don't know what's going on with Discovery and we're not the fact finders in any event.

[00:11:01] Speaker 02:
So the question is why we're here at this stage of the game trying to resolve I'm not sure what.

[00:11:08] Speaker 00:
Agreed, Your Honor.

[00:11:09] Speaker 00:
There is fact finding continuing as to the sanctions.

[00:11:12] Speaker 00:
We are here asking under 1292A

[00:11:15] Speaker 00:
for the injunction that is currently overbroad and vague.

[00:11:19] Speaker 01:
You shouldn't have appealed the injunction.

[00:11:22] Speaker 01:
You didn't appeal it.

[00:11:23] Speaker 01:
It may have been overbroad when it was written to the extent it used the word allow integrators to do this.

[00:11:29] Speaker 01:
You chose not to appeal.

[00:11:31] Speaker 01:
You're stuck with what you chose not to appeal.

[00:11:33] Speaker 01:
You had a route for appeal that was legitimate.

[00:11:37] Speaker 01:
Now you're coming up on contempt trying to claim there's an interlocutory.

[00:11:41] Speaker 01:
I'll tell you, I think your appeal is pretty close to frivolous.

[00:11:44] Speaker 00:
Your Honor, I

[00:11:45] Speaker 00:
apologize for saying the injunction, I meant the injunction that comes through the contempt order, that new injunction is appealable now, and we didn't do that timely.

[00:11:56] Speaker 00:
It is overbroad as to the three other mounting configurations.

[00:11:58] Speaker 01:
It is vague.

[00:12:01] Speaker 01:
It's appealable.

[00:12:02] Speaker 01:
It's not.

[00:12:02] Speaker 01:
This is an interlocutory request.

[00:12:05] Speaker 01:
You don't have a direct route of appeal.

[00:12:07] Speaker 01:
You could have appealed to TI.

[00:12:09] Speaker 01:
The PI prevented you from selling a product which would allow it to be installed in an infringing way, regardless of your intent, regardless of your encouragement, regardless of your instruction manual, regardless of your warranty.

[00:12:20] Speaker 01:
You did nothing about that.

[00:12:22] Speaker 01:
It didn't appeal that PI.

[00:12:24] Speaker 01:
Then you come up with a product that has the most modest of differences.

[00:12:28] Speaker 01:
You added a couple of languages on the side, but it can still absolutely and easily be installed in the infringing manner, and there's no dispute about that.

[00:12:35] Speaker 01:
It can be.

[00:12:36] Speaker 01:
Thus, you still have a product that allows integrators to install it in a drop ceiling mounting configuration.

[00:12:43] Speaker 01:
Do you have anything further?

[00:12:45] Speaker 00:
Yes, Your Honor.

[00:12:46] Speaker 00:
I would remind the court that the initial injunction is limited to marketing and selling in a way that encourages and allows.

[00:12:56] Speaker 00:
That word allows is what came into the proceedings with an after-rising claims instruction that configured for

[00:13:04] Speaker 00:
The notion that this is a product that, as long as it can perform it, is within the claim, that is entirely from a rewriting of the claim, a post-injunction.

[00:13:16] Speaker 03:
Shouldn't we believe that the district court who entered the injunction is the one who understands best what the scope of the injunction is?

[00:13:25] Speaker 00:
And, Your Honor, the original understanding of this, and especially at the time of the motion for clarification,

[00:13:34] Speaker 00:
was that in the first line of that order is that it enjoined the configuration only, not the product itself, in three other mounting configurations.

[00:13:45] Speaker 00:
We could continue to sell the MXM910 had we chosen to do so.

[00:13:49] Speaker 00:
But we took it off the market as a business decision for a revamping of that product so we could capture again all four mounting configurations in one product.

[00:13:59] Speaker 00:
That was a business choice that we made.

[00:14:02] Speaker 00:
It took us four months, as we told the court it would.

[00:14:04] Speaker 01:
And you just said we wanted to capture all four mounting configurations.

[00:14:08] Speaker 01:
Is that a misstatement by you?

[00:14:09] Speaker 01:
One of the four mounting configurations is the drop ceiling mounting configuration.

[00:14:14] Speaker 00:
Your Honor, if it is moved down three millimeters, it is now, as the court said, indisputably beyond limitation five.

[00:14:22] Speaker 00:
So it was a drop ceiling mounting configuration, just not the flush one.

[00:14:25] Speaker 00:
And so we were able to then sell it again for approximately

[00:14:29] Speaker 00:
that came for this and the other three, which were indisputably not or were carved out of the original injunction.

[00:14:36] Speaker 03:
When you talk about your business decisions, I mean, are we supposed to just ignore everything you did after the court said it was entering the injunction when you scrambled to sell as much as possible and to tell all of your clients to stock up just because the bond wasn't finalized?

[00:14:56] Speaker 00:
Your Honor,

[00:14:57] Speaker 00:
We understood the injunction at that time to only include one mounting configuration.

[00:15:03] Speaker 00:
If our products were being sold for the pole mount or the hard mount or the wire mount, they could still go out from that point on, even before the bond, even after the bond.

[00:15:13] Speaker 03:
If you were so sure that you could keep selling, then why did you tell them all to stock up and to move fast and to stock up on all of this before the bond went into effect?

[00:15:25] Speaker 00:
Your Honor, we understand that integrators typically don't house product for more than one or two months.

[00:15:32] Speaker 00:
They had pending jobs.

[00:15:34] Speaker 00:
We knew that that bond had not gone into effect.

[00:15:36] Speaker 03:
The judge... So you were telling them to stock up on this product.

[00:15:41] Speaker 03:
Your Honor, they were... And if you were sure you could sell the product, why would you tell them to do something they don't normally do?

[00:15:46] Speaker 00:
Well, we knew that we could continue to sell it.

[00:15:49] Speaker 00:
We didn't know that their, you know, we didn't know what their needs were and they were able to continue to buy that product in all three other mountain configurations.

[00:15:57] Speaker 01:
Okay, you're well beyond your time and you've used all your rebuttal time.

[00:16:00] Speaker 01:
We'll restore a little bit of it.

[00:16:01] Speaker 01:
Ms.

[00:16:01] Speaker 01:
Rayburn, please.

[00:16:15] Speaker 04:
May I please report?

[00:16:16] Speaker 04:
This court does not have jurisdiction over this interlocutory appeal because the contempt order at issue merely interpreted the underlying injunction.

[00:16:25] Speaker 04:
There can be no question that the August 2019 injunction order enjoined a specific product in its entirety, and that was the 24-inch version of the MXA 910.

[00:16:38] Speaker 01:
during the bond posting indicated that you understood the injunction to bar any sale of the MSA 910?

[00:16:47] Speaker 04:
Yes, Your Honor.

[00:16:47] Speaker 04:
Clear One's brief on bond clearly states that, quote, to comply with the preliminary injunction order, SHER will have to modify its existing MSA 910 product in a way that it makes it impossible for a customer to install the product flush in a drop ceiling grid.

[00:17:04] Speaker 01:
So your briefing on bond indicates that you understand the word allow in its plain meaning in a way that they would not be able to sell a product that allowed integrators to do that.

[00:17:15] Speaker 04:
Yes, Your Honor.

[00:17:16] Speaker 04:
And there is a lack of clarity in the party's briefing on the MXA 910 products generally.

[00:17:21] Speaker 01:
What did SURE indicate in its briefing on the bond about its belief regarding whether it could continue to sell the MXA 910 in light of the language in the agenda?

[00:17:33] Speaker 04:
Schur told the court that it could not sell the 24-inch MXA910 at all, because Schur, quote, does not control which configuration is used.

[00:17:43] Speaker 04:
And presently, an integrator may use the same MXA910 model in each of the four configurations.

[00:17:49] Speaker 04:
That's at page 6353.

[00:17:51] Speaker 01:
Do you understand that to be inconsistent with the arguments that have been made in this case and today's oral argument?

[00:17:57] Speaker 04:
Yes, Your Honor, very inconsistent.

[00:17:59] Speaker 04:
Me too.

[00:18:01] Speaker 04:
Thank you.

[00:18:02] Speaker 04:
The court's order, in response to both clear ones and Schur's brief, both of which said Schur cannot continue... Don't you agree that they could have appealed this P.I.?

[00:18:13] Speaker 01:
They had a directory to appeal.

[00:18:14] Speaker 01:
If they really had a problem with the word allow in the first instance, they could have appealed it, correct?

[00:18:18] Speaker 04:
I do agree, Your Honor.

[00:18:19] Speaker 01:
And they chose not to, correct?

[00:18:21] Speaker 04:
They chose not to.

[00:18:23] Speaker 04:
And they offered a plan.

[00:18:24] Speaker 04:
They offered a plan.

[00:18:26] Speaker 04:
claim now that they are under an onerous injunction.

[00:18:29] Speaker 04:
But they offered a plan that would allow them to use the three allowed configurations without doing the disallowed mounting configuration.

[00:18:38] Speaker 04:
And that plan was to sell a smaller version of the MXA 910.

[00:18:43] Speaker 04:
A 60 centimeter version of the MXA 910 that they represented to the court would not mount flush because it would fall through.

[00:18:50] Speaker 04:
throughout this entire time.

[00:18:51] Speaker 02:
Would it have been acceptable if Chief Judge Moore suggested to your friend on the other side for them to contractually sort of impose that requirement on the interceptors?

[00:19:02] Speaker 02:
No, Your Honor.

[00:19:02] Speaker 02:
To have some cute punishment or something like that?

[00:19:06] Speaker 02:
Is there some way they could do that?

[00:19:09] Speaker 04:
No, Your Honor, because this record is peppered with them claiming up and down all the time that they do not know how people install and they cannot control how people install.

[00:19:19] Speaker 04:
And that's right there in Schur's responsive bond brief at APPX 6353.

[00:19:25] Speaker 04:
That's why they said they had to take the 24 inch version off the market because they could not control how people were installed.

[00:19:32] Speaker 01:
And the court's order regarding bonds is... Did you file a motion asking us to contemplate whether this brief as written was frivolous as argued given the clear inconsistencies in this brief with

[00:19:43] Speaker 01:
their statement to the district court.

[00:19:45] Speaker 04:
We seriously considered it, Your Honor, but we chose not to.

[00:19:48] Speaker 04:
You can always do it after argument.

[00:19:50] Speaker 04:
Thank you, Your Honor.

[00:19:51] Speaker 04:
Understood.

[00:19:52] Speaker 04:
The court's order regarding the bond amount made very clear that the preliminary injunction acted to enjoin the 24-inch MSA 910.

[00:20:00] Speaker 04:
In that order, the court adopted Schur's plan of taking the 24-inch MSA 910 on the market and only accepted Schur's plan of selling the 60-centimeter MSA 910

[00:20:12] Speaker 04:
upon certain conditions.

[00:20:14] Speaker 03:
What's your response to your friend on the other side when he says that the after arising claim construction was actually a game changer with respect to what allows means?

[00:20:25] Speaker 04:
Well, I think my friend on the other side just said that the after arising claim construction is what gave rise to the word allows in the preliminary injunction, which is not a statement I even know how to respond to.

[00:20:36] Speaker 04:
But the court did not apply an after arising claim construction.

[00:20:41] Speaker 04:
There's simply nothing in the contempt order.

[00:20:43] Speaker 02:
And this is really puzzling if this is included in this case at all.

[00:20:47] Speaker 02:
But what about the argument they're making here on appeal of a contempt order that the claims are indefinite?

[00:20:54] Speaker 02:
Did that show its face for the first time after this claim construction?

[00:20:59] Speaker 02:
Is that the contention here?

[00:21:00] Speaker 02:
Did somehow this claim construction?

[00:21:03] Speaker 02:
I mean, it's an interesting indefinite argument.

[00:21:05] Speaker 02:
I don't know why the briefs are talking about it.

[00:21:09] Speaker 04:
A couple responses to that, Your Honor.

[00:21:11] Speaker 04:
First, Sure did raise indefiniteness arguments in its opposition to the preliminary injunction order.

[00:21:16] Speaker 04:
This is not one of the indefiniteness arguments Sure chose to raise.

[00:21:19] Speaker 04:
Sure could have challenged indefiniteness.

[00:21:21] Speaker 02:
Well, is it their position?

[00:21:22] Speaker 02:
I'm just not familiar enough with the records that went down on claim constriction.

[00:21:25] Speaker 02:
Did this indefiniteness allegation

[00:21:29] Speaker 02:
necessarily arise or likely arise because of the act of claim construction?

[00:21:33] Speaker 04:
No, indefiniteness is indefiniteness, Your Honor.

[00:21:35] Speaker 04:
The indefiniteness argument they're rising is that there is a mixed subject matter claim.

[00:21:40] Speaker 04:
And that's from the claim that their argument is based on the claim specification.

[00:21:45] Speaker 03:
Didn't they argue to the district court during the claim of construction that a construction, that it was indefinite, that it necessarily should be construed to

[00:21:58] Speaker 03:
include user activity?

[00:22:00] Speaker 04:
They did.

[00:22:00] Speaker 04:
You're right.

[00:22:01] Speaker 04:
And so all of this has been argued before any interaction with the preliminary injunction order arose.

[00:22:06] Speaker 04:
This is an indefiniteness argument that they did preview in response to a clear one claim construction.

[00:22:13] Speaker 04:
The court explicitly said that he was not ruling on their indefiniteness argument because indefiniteness had not been raised adequately.

[00:22:21] Speaker 04:
It was clear one claim construction that was being addressed.

[00:22:24] Speaker 04:
But the point is that exact same indefiniteness argument that they previewed during the claim construction, they could have raised in response to the preliminary injunction.

[00:22:32] Speaker 04:
But they didn't.

[00:22:32] Speaker 04:
And they didn't.

[00:22:34] Speaker 04:
And under TEVO, a contempt proceeding does not reopen to reconsideration the legal or factual basis of the order alleged to have been disobeyed.

[00:22:43] Speaker 04:
The preliminary injunction order is based on a finding of definiteness.

[00:22:47] Speaker 04:
And that is not to be disturbed now.

[00:22:50] Speaker 04:
And I do want to respond to the idea

[00:22:52] Speaker 04:
that Schur never thought about how ClearOne's proposed claim construction would work together with the injunction order.

[00:23:00] Speaker 04:
Because it's not true.

[00:23:02] Speaker 04:
During the briefing on bond in this matter, Schur explicitly asked to be allowed to sell the smaller MXA910 60 centimeter product despite the injunction against the 24 inch MXA910 product, arguing that the smaller product was acceptable even under ClearOne's configured to claim construction.

[00:23:20] Speaker 04:
Surethus understood how these orders worked together and could have timely appealed the P.I.

[00:23:26] Speaker 04:
order had it seemed fit to do so.

[00:23:29] Speaker 04:
And that argument is sure-sure reply on bond, which is not currently in this court's record, but I do have copies of it.

[00:23:35] Speaker 04:
It's at entry 586 of the docket in the underlying case.

[00:23:46] Speaker 01:
Okay, anything further?

[00:23:52] Speaker 04:
Yes, Your Honor.

[00:23:53] Speaker 04:
Really?

[00:23:55] Speaker 04:
No, Your Honor.

[00:23:56] Speaker 04:
Thank you.

[00:24:11] Speaker 00:
Your Honor, I read what's Clear One wrote on August 7th.

[00:24:17] Speaker 00:
Sure will be able to continue to sell MXA 910s for use in other configurations.

[00:24:21] Speaker 00:
Accordingly, Sure will not suffer a complete loss of sales of MXA 910s.

[00:24:27] Speaker 00:
That is the opposite of what ClearOne is arguing now, that original injunction was only to one infringing configuration.

[00:24:37] Speaker 00:
The court, in its clarification order, wrote, the opinion granting the preliminary injunction explained that Sure's MXA 910 conference system clearly infringes on ClearOne's patent when used in its drop space mounting configuration.

[00:24:51] Speaker 00:
That did not include the pole mount.

[00:24:54] Speaker 00:
It did not include the wire mount or the hard ceiling mount.

[00:24:58] Speaker 00:
Those could still be sold.

[00:24:59] Speaker 01:
But what about your brief during bonding to the court that said you can't control how people install it.

[00:25:09] Speaker 01:
This injunction is so broad it prevents you from selling the MXA 910 altogether.

[00:25:15] Speaker 01:
That's what you argued your understanding of this injunction was.

[00:25:20] Speaker 00:
Your Honour, we recognize that we would not be able to carve out and stop those mountings in the infringing configuration while we were still selling the product, but it did not at all enter into our consideration that allow and encourage in the marketing and selling context would take the word allow and add that to design to allow and turn this into a configuration limitation.

[00:25:48] Speaker 00:
That was not a part of the original injunction understanding.

[00:25:52] Speaker 00:
The court, when the court in its contempt order described the initial injunction, ten times the court said the enjoined configuration.

[00:26:01] Speaker 00:
It only once said the enjoined MXA 910, but ten other times it said enjoined configuration.

[00:26:06] Speaker 00:
That was in the contempt order.

[00:26:07] Speaker 00:
It understood the prior injunction was limited to one configuration only.

[00:26:13] Speaker 01:
And this court has frequently said that... You said in your brief, clear one suggestion of halting the MXA 910 in one configuration effectively halts sales in all configurations.

[00:26:26] Speaker 01:
That's your characterization of the injunction.

[00:26:29] Speaker 00:
You're right, Your Honor.

[00:26:30] Speaker 00:
We could not know what those downstream integrators were doing, so we chose to take it off the market until we could... Not chose.

[00:26:37] Speaker 01:
Not chose.

[00:26:38] Speaker 01:
You understood the injunction as prohibiting you

[00:26:42] Speaker 01:
from any sales.

[00:26:43] Speaker 01:
This wasn't a choice.

[00:26:45] Speaker 01:
You represented that this was what the injunction caused you to do.

[00:26:49] Speaker 00:
Your Honor, we recognize that the downstream integrators, whom we have very little contact with and no way to see into their activities, would have this available option.

[00:26:59] Speaker 00:
And we needed to take it off until we could mount our education campaign and redesign with the flanges for a proper mounting configuration.

[00:27:07] Speaker 00:
That shows that we were trying to reasonably comply.

[00:27:10] Speaker 01:
Or it shows that you were actually just complying with the injunction.

[00:27:13] Speaker 00:
We were trying to reasonably comply with the injunction as to that one mounting configuration, and thereby we took a hit on all mounting configurations for a period until we could get the new product by December 2019 on the market.

[00:27:24] Speaker 00:
That's what we told the court we would do within days.

[00:27:27] Speaker 00:
We said four months to get this redesign out for all the mounting configurations, again, to be non-infringing.

[00:27:37] Speaker 00:
Your Honor, if there is no other question, we will cede.

[00:27:41] Speaker 01:
Okay, I think those are some of the arguments the case has taken under submission.