[00:00:00] Speaker 02:
We'll hear argument next in number 20-2081, Tyler Research Corporation versus Envacon, Inc., Mr. Slavitt.

[00:00:09] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:12] Speaker 01:
In this case, the District Court improperly abdicated jurisdiction over a case for infringement of a U.S.

[00:00:19] Speaker 01:
patent.

[00:00:20] Speaker 01:
From my research, this has happened only once before by the Northern District of Illinois in Halo Creative and Design versus Comptoir des Indes.

[00:00:30] Speaker 01:
and this court reversed that decision.

[00:00:32] Speaker 01:
In the present case, the district court abused its discretion in at least three respects.

[00:00:39] Speaker 01:
First, the district court abused its discretion by failing to hold defendants to their burden of proof.

[00:00:46] Speaker 01:
Second, the district court abused its discretion by failing to accord the appropriate degree of deference to Tyler's choice of forum.

[00:00:55] Speaker 01:
And third, the district court abused its discretion

[00:00:59] Speaker 01:
by rejecting Tyler's allegations of infringement.

[00:01:03] Speaker 01:
Defendants had the burden of affirmatively proving that the Canadian courts are an adequate forum.

[00:01:09] Speaker 01:
In Piper Aircraft, the Supreme Court has stated that an alternative forum is adequate unless the remedy offered by the other forum is clearly unsatisfactory as when, quote, the alternative forum does not permit litigation of the subject matter of the dispute.

[00:01:26] Speaker 01:
What is the subject matter of this dispute?

[00:01:28] Speaker 01:
it is defendant's infringing and torsious conduct committed in Indiana.

[00:01:34] Speaker 01:
Defendants have never explained how a forum located in Canada could possibly adjudicate Tyler's claim for infringement of a U.S.

[00:01:41] Speaker 01:
patent or for that matter, its tort claims under Indiana law.

[00:01:46] Speaker 02:
What is the theory of infringement in Indiana?

[00:01:49] Speaker 02:
As I take it, these shutoff valves were manufactured in Canada.

[00:01:56] Speaker 02:
and then imported in the United States, and you're claiming that the installation of the shutoff valve in a machine constitutes part of the manufacturer, is that it?

[00:02:08] Speaker 01:
No, that's not exactly correct, Your Honor.

[00:02:10] Speaker 01:
In the present case, we're asserting infringement of claims 4 and 14 of the 053 patent.

[00:02:17] Speaker 01:
And those claims recite shutoff valves that have a specific feature not found in any other claim, namely a latch remotely mounted away from the housing.

[00:02:27] Speaker 01:
Thus, the manufacture of the invention of claims 4 and 14 requires that the latch element must be remotely mounted away from the housing of the shutoff valve.

[00:02:38] Speaker 01:
The shutoff valve and the remotely mounted latches are separately manufactured and they are only brought together for the first time when they are put onto trucks.

[00:02:51] Speaker 02:
I don't see your complaint as saying

[00:02:57] Speaker 01:
Well, I believe in paragraph 41 of the first amended complaint, we alleged that the infringement occurred in Indiana.

[00:03:10] Speaker 01:
What page of the appendix is that?

[00:03:14] Speaker 01:
Your Honor, that is.

[00:03:18] Speaker 04:
JA33.

[00:03:20] Speaker 01:
Thank you, Your Honor.

[00:03:29] Speaker 01:
that the shutoff valve with the remotely mounted latch are brought together when they are installed into trucks.

[00:03:42] Speaker 01:
And therefore, at that moment, that is when the invention of claims 4 and 14, which it is well established principle of patent law that each claim must be considered as defining a separate invention.

[00:03:56] Speaker 04:
So Council, I have a different, this is Judge Moore, I have a different question for you.

[00:04:00] Speaker 04:
So why can't you obtain adequate remuneration for this suit as a whole in Canada given that you can bring a breach of contract cause of action against the patentee for allowing its subsidiary, NVACON, to commit this infringing act?

[00:04:24] Speaker 04:
So the breach of contract

[00:04:25] Speaker 04:
would be the exact same measure of damages as the infringement damages because that's the harm that you suffer directly as a result of the breach.

[00:04:35] Speaker 04:
That action could be fully compensable under Canadian breach of contract law.

[00:04:40] Speaker 04:
So why isn't the district court correct that you have adequate relief in Canada vis-a-vis the breach of contract cause of action against the patentee for allowing its subsidiary to cause this infringement in the U.S.?

[00:04:53] Speaker ?:
?

[00:04:54] Speaker 01:
Your Honor, I wouldn't agree with that conclusion because the breach of contract claim, first of all, could only be brought against the patentee, JKKB Holdings.

[00:05:06] Speaker 01:
And that does nothing to address the infringement committed by NVACON on its owner Bosman in Indiana.

[00:05:13] Speaker 04:
Council, your entire remedy for the breach of contract is they allowed infringement when they promised you the exclusive right to manufacture.

[00:05:25] Speaker 04:
They allowed someone else to manufacture.

[00:05:28] Speaker 04:
So your measure of damages, your only measure of damages in fact,

[00:05:33] Speaker 04:
is the damage you suffered by virtue of them permitting the infringement to occur.

[00:05:39] Speaker 04:
That measure of damages would be identical dollar for dollar to what you would otherwise get for infringement.

[00:05:46] Speaker 04:
You wouldn't be permitted double recovery if you were made whole through the infringement claim against NVACON in the United States

[00:05:54] Speaker 04:
Your then breach of contract action in Canada would have no damages because you would no longer have been damaged because you would have been made whole by the infringement cause of action.

[00:06:04] Speaker 04:
Likewise, if you're made whole through the breach of contract, you're not entitled to double recovery for infringement.

[00:06:10] Speaker 04:
You can't get both.

[00:06:12] Speaker 04:
you can only get one that will make you whole.

[00:06:16] Speaker 04:
So why isn't the breach of contract under those circumstances in Canada sufficient?

[00:06:20] Speaker 04:
And I'll tell you, this argument was clearly raised repeatedly in this case, and you never addressed it in your brief.

[00:06:28] Speaker 01:
Your Honor, the infringement is an intrinsically territorial activity, and that the infringement by Bosman and by Envacon, committed in Indiana,

[00:06:42] Speaker 01:
is separately compensable.

[00:06:45] Speaker 01:
And to the extent that Tyler is seeking compensation from three defendants, that it is entitled to bring an action against these three defendants, and it may well be that it may not be recoverable against JKKB.

[00:07:01] Speaker 01:
It's entitled to sue all of the infringers and to seek, and the compensation may, for that matter, be only recoverable against NVACON or Bosman

[00:07:12] Speaker 03:
But, counsel, what in the license agreement even gives you the right to seek damages?

[00:07:19] Speaker 03:
The license agreement simply says you have the exclusive right to manufacture, but it's not a full assignment of all rights.

[00:07:28] Speaker 01:
Well, that's true, Your Honor, but as this Court has said in Morrow v. Microsoft, parties that hold the exclusionary rights under a patent

[00:07:37] Speaker 01:
who are often identified as exclusive licensees because of the grant of an exclusive license.

[00:07:45] Speaker 03:
But in that case, there was a far broader grant of rights that included the right to seek damages, the right to sue.

[00:07:52] Speaker 03:
None of that is in this license agreement.

[00:07:56] Speaker 01:
But that opinion states that because the grant of an exclusive license to make, use, or sell the patented invention carries with it the right to prevent others from practicing the invention.

[00:08:07] Speaker 03:
So that's what I'm saying.

[00:08:10] Speaker 03:
That's very different from getting damages.

[00:08:13] Speaker 03:
So even if you had the right to prevent others from practicing the invention under the license agreement, which I think is questionable, but even if you had that right, how would you have a right to seek damages?

[00:08:28] Speaker 01:
Well, that's a different issue in terms of proving the quantum of damages.

[00:08:33] Speaker 01:
But the fact that... No, I'm not talking about the quantum.

[00:08:35] Speaker 03:
I'm not talking about the quantum.

[00:08:36] Speaker 03:
I'm talking about even the right to seek damages.

[00:08:41] Speaker 01:
Your Honor, we would submit that that is carried with the exclusive right that has been granted under the exclusive license.

[00:08:50] Speaker 01:
The exclusive right to manufacture these shutoff valves carries with it the right to enforce that.

[00:08:57] Speaker 01:
That right may require the joiner of the patentee, but in this case, the patentee is joined as a party.

[00:09:07] Speaker 01:
So that issue is not relevant here.

[00:09:11] Speaker 02:
The fact is that... Could I ask you a somewhat different question coming back to the question I asked you earlier about paragraph 41 of the complaint, which relies on this Bozeman affidavit?

[00:09:27] Speaker 02:
which, as I see it, specifically says that in paragraph 11 on page appendix 180, NVACON has never manufactured the shutoff valve anywhere in the United States.

[00:09:44] Speaker 02:
How is that consistent with your notion that there was manufacturing in the United States?

[00:09:51] Speaker 01:
Well, Your Honor, all that does is it presents a factual dispute

[00:09:55] Speaker 01:
that while Tyler is saying that manufactured of the invention of claims 4 and 14 occurred in the United States, Bosman is... I'm not understanding.

[00:10:05] Speaker 02:
This is the very affidavit that you cited in the complaint to support the notion that manufacturing took place in the United States.

[00:10:23] Speaker 01:
Just a moment, Your Honor.

[00:10:30] Speaker 02:
That after they went on 180, it says it's never manufactured in the United States.

[00:10:34] Speaker 02:
Then in paragraph 14, it says it's installed the shutoff valves into customers' products.

[00:10:41] Speaker 01:
Right, but the installation of the shutoff valve with a remote latch is the point at which the remote latch and the shutoff valve are joined together.

[00:10:52] Speaker 02:
But what about paragraph 11?

[00:10:54] Speaker 02:
He says immigrants never manufactured in the United States.

[00:10:58] Speaker 02:
How does that support a claim that they infringe the patent by manufacturing in the United States?

[00:11:04] Speaker 01:
Well, Your Honor, first of all, the allegation in the complaint is that they have manufactured in the United States.

[00:11:12] Speaker 01:
They have yet to answer the complaint.

[00:11:14] Speaker 01:
They have yet to even join that.

[00:11:15] Speaker 01:
And to the extent that they would deny that,

[00:11:18] Speaker 01:
That would be a factual dispute.

[00:11:19] Speaker 03:
Counsel, an allegation that on its face is inconsistent with your other allegations doesn't have to be accepted by the court.

[00:11:27] Speaker 03:
I mean, your license agreement only says you have the right to manufacture shutoff valves.

[00:11:32] Speaker 03:
It doesn't say you have the right to practice a particular provision of a particular patent, since the patent didn't even exist at the time that you signed the license agreement.

[00:11:43] Speaker 03:
It just says shutoff valves.

[00:11:45] Speaker 01:
Right.

[00:11:46] Speaker 01:
But in paragraph 41 of the complaint, we assert that the incorporation and installation by Envicon of shutoff valves constitutes manufacture.

[00:11:57] Speaker 01:
That's the allegation that we have made.

[00:12:00] Speaker 01:
And in ruling on this motion, the court disregarded that allegation.

[00:12:05] Speaker 01:
And even if Bosman contested that allegation, then it's a disputed fact.

[00:12:10] Speaker 01:
And what

[00:12:11] Speaker 01:
The district court then did is it construed the facts.

[00:12:15] Speaker 03:
The court said the court didn't disregard that allegation that the court accepted that allegation but says as a matter of law that doesn't constitute manufacturing of shutoff valves.

[00:12:30] Speaker 01:
If I may just answer that question, the shutoff valves of claims four and 14 require the remotely mounted latch and that does not occur until

[00:12:41] Speaker 01:
the incorporation and installation of the shut-off valve.

[00:12:44] Speaker 03:
Okay, but you will agree with me, will you not, that there were no claims at the time, there were no claims at all at the time you were granted the right to manufacture shut-off valves, right?

[00:12:56] Speaker 03:
Well, but that, right, but... So the answer's yes?

[00:13:01] Speaker 01:
Yes, but the assertion of the complaint was certainly at a time when the patent had issued and that the grant

[00:13:07] Speaker 01:
of the exclusive right to manufacture became a right under the patent when the patent issued.

[00:13:16] Speaker 02:
Okay.

[00:13:17] Speaker 02:
Are there other questions for Mr. Slavitt?

[00:13:21] Speaker 02:
Okay.

[00:13:21] Speaker 02:
Hearing none, we'll give you two minutes for a bottle and we'll hear from Mr. Gantz.

[00:13:30] Speaker 00:
Good morning.

[00:13:31] Speaker 00:
My name is Bill Gantz and I represent the defendant, Annapolis, in this matter.

[00:13:37] Speaker 00:
On the subject of the forum nonconvenience motion, I think quite clearly the court has focused its questions on the discretion of the district court.

[00:13:47] Speaker 00:
And there's been very little argument here that any of the findings of fact or the conclusions made by the district court judge were clearly erroneous.

[00:13:57] Speaker 00:
In the lower court, only three arguments were even raised by TRC in one paragraph, which is at JA 74.

[00:14:06] Speaker 00:
Two of those arguments I think the district court handily dealt with and properly dealt with.

[00:14:12] Speaker 03:
How do you respond to the reliance on HALO?

[00:14:17] Speaker 00:
Well, I don't believe HALO has ever been cited in this proceeding for starters.

[00:14:24] Speaker 00:
That doesn't mean it's not the law, right?

[00:14:29] Speaker 00:
Of course, but I don't believe anyone has cited or made any arguments based on HALO.

[00:14:34] Speaker 02:
It's a little astonishing that you didn't cite it, since it seems to be the most relevant case that we have on forum nonconvenience.

[00:14:44] Speaker 02:
You're familiar with the case, right?

[00:14:47] Speaker 00:
I have.

[00:14:48] Speaker 00:
I can't say I'm highly conversant with the case, your honor.

[00:14:51] Speaker 00:
I do understand it came out of the district.

[00:14:54] Speaker 00:
in Illinois.

[00:14:56] Speaker 00:
I'm sorry, I'm not conversant with the facts of that case.

[00:14:59] Speaker 02:
Mr. Slavitt, under our rules, you're obligated, if you're going to mention a case that's not cited in the briefs in oral argument, to provide a copy to Mr. Gantz in advance.

[00:15:09] Speaker 02:
And you didn't apparently do that.

[00:15:11] Speaker 02:
That's not compliant with our rules.

[00:15:16] Speaker 00:
Yeah.

[00:15:16] Speaker 00:
So in terms of the observation of the court regarding the allegations of paragraph 41,

[00:15:24] Speaker 00:
It bears mentioning that this was an amended complaint and it was supposed to fix the problems which we raised on our first motion to dismiss.

[00:15:32] Speaker 00:
And in particular, they came back in their amended complaint and said that the infringement occurred because there were these installation of shutoff valves having remote latches.

[00:15:43] Speaker 00:
Well, the important, one of the important paragraphs of the declaration of Mr. Kieran Bozeman at JA83 is paragraph 18.

[00:15:54] Speaker 00:
when he specifies that Mbicon has never manufactured or sold shutoff valves having the remote latches in the United States.

[00:16:04] Speaker 00:
And that's the critical problem that the plaintiff here never contradicted this affidavit.

[00:16:10] Speaker 00:
And the district court was entitled to rely upon this, particularly where the court asked.

[00:16:17] Speaker 04:
Council, you pointed us to Appendix Page 83 claiming it was the Bozeman Declaration and was conclusive.

[00:16:23] Speaker 04:
Page 83 is not the Bozeman Declaration.

[00:16:26] Speaker 04:
So can you figure out what page and what paragraph number you want to look at?

[00:16:31] Speaker 00:
I'm sorry.

[00:16:32] Speaker 00:
I must have been using a different... Page 180, I think, isn't it?

[00:16:40] Speaker 00:
Yes, we had more than one version of the joint appendix file, Your Honor.

[00:16:44] Speaker 00:
I apologize.

[00:16:45] Speaker 00:
It is the... That's the declaration from March 29, 2019.

[00:16:55] Speaker 00:
There's also, I'm referring to the declaration of June 14th, 2019, which was attached to our motion to dismiss the amended complaint.

[00:17:08] Speaker 04:
But where is that?

[00:17:18] Speaker 00:
I'm digging for it, Your Honor.

[00:17:20] Speaker 02:
Hold on.

[00:17:34] Speaker 02:
What's the date of it?

[00:17:36] Speaker 00:
It is June 14th, 2019.

[00:17:39] Speaker 02:
I think it's a 244.

[00:17:51] Speaker 00:
That is correct, your honor.

[00:17:54] Speaker 00:
So paragraph 18 is where we address the specific allegation regarding the remote shutoff valves.

[00:18:00] Speaker 00:
And that was never contradicted.

[00:18:02] Speaker 00:
Another important thing is just as a matter of common sense, installation of a part has never been determined to be manufacturing, which is the only right that the plaintiffs ever could have conceivably claimed as a manufacturing right.

[00:18:19] Speaker 00:
So the district court was properly focused on whether or not there had been any installation

[00:18:24] Speaker 00:
in the District of Indiana.

[00:18:26] Speaker 04:
A council in paragraph 18, after it says we never manufacture or sold them, it then says, well, we did create one or two demonstration samples in Edmonton.

[00:18:39] Speaker 04:
What does that mean?

[00:18:40] Speaker 04:
That means it did it in Canada only, but it never did it in Indiana?

[00:18:45] Speaker 00:
Yeah.

[00:18:46] Speaker 00:
They were only one or two demonstration samples manufactured or created in Edmonton, Canada, but they were never

[00:18:54] Speaker 00:
resulting in a commercialized product and they were never sold to anyone, including the United States.

[00:19:00] Speaker 02:
So I think Mr. Kieran was... Was there infringement in the United States, but maybe in Canada?

[00:19:07] Speaker 00:
Well, I mean, there was never any sale to a customer even in Canada, but, you know, if there's infringement in Canada, that has no bearing on whether there's either standing or a right to sue in the United States, because that doesn't bear on infringement in

[00:19:24] Speaker 00:
in Canada, in the United States.

[00:19:29] Speaker 03:
Do you think that the appellant was given the exclusive right to manufacture shutoff valves with remote latches anywhere?

[00:19:43] Speaker 00:
I don't know that that's clear, Your Honor, because as it's been pointed out, this 1999 agreement, which actually is not between TRC and the patentee,

[00:19:53] Speaker 00:
between two individuals, there was no patent in existence at the time.

[00:19:58] Speaker 00:
So in our view, the plaintiff here is a bear licensee with a contractual.

[00:20:05] Speaker 04:
Where is that agreement?

[00:20:13] Speaker 00:
The agreement is attached as a JA48, I think.

[00:20:21] Speaker 00:
Yeah, it's attached as an exhibit to the

[00:20:25] Speaker 03:
J.A.

[00:20:25] Speaker 03:
48.

[00:20:28] Speaker 03:
Actually, 49.

[00:20:32] Speaker 00:
Yes.

[00:20:32] Speaker 00:
So, I mean, this is a two-page agreement, basically, a one-page agreement.

[00:20:38] Speaker 00:
It doesn't, it's not between the patentee.

[00:20:42] Speaker 00:
It doesn't relate to the patent itself.

[00:20:45] Speaker 00:
It just says the parties will.

[00:20:46] Speaker 04:
Time out.

[00:20:47] Speaker 04:
So, it relates to the inventor.

[00:20:49] Speaker 04:
Correct.

[00:20:50] Speaker 04:
And it specifically says the agreement

[00:20:54] Speaker 04:
includes any patent rights of the licensors, who is the inventor, in reference to the shutoff valve's design and development.

[00:21:04] Speaker 04:
So I don't understand.

[00:21:05] Speaker 04:
Are you alleging that this particular patent is not... Are you alleging either that Mr. Bozeman is not the inventor of this patent, or that this patent doesn't pertain to shutoff valves, or somehow is not... No, no.

[00:21:24] Speaker 00:
This agreement in 1999 is an agreement between Tyler and Mr. Krupula and Mr. Boseman, who are the enlisted inventors on the patent which ultimately was issued to JKKB.

[00:21:37] Speaker 00:
What we are arguing in particular in our supplemental briefs is that this particular, the scope of the rights here that are granted, if any, to the TRC does not confer statutory standing because they're not

[00:21:53] Speaker 00:
They're not a patentee, they're not an assignee, and they're not an exclusive licensee.

[00:21:58] Speaker 04:
But counsel, statutory standing isn't a jurisdictional question, is it?

[00:22:04] Speaker 04:
Well... I'll give you a hint.

[00:22:05] Speaker 04:
The Supreme Court's spoken on this.

[00:22:07] Speaker 04:
So statutory standing isn't really jurisdictional, is it?

[00:22:11] Speaker 00:
Article 3 constitutes... Yes.

[00:22:15] Speaker 00:
Lexmark, as applied to this case, would indicate that the lack of statutory standing is not an Article 3 jurisdictional.

[00:22:22] Speaker 00:
Right.

[00:22:23] Speaker 04:
So we have to address constitutional standing because that is in fact jurisdictional, the Article 3 type.

[00:22:30] Speaker 04:
We don't have a choice.

[00:22:31] Speaker 04:
But if they surpass the constitutional standing hurdle of just injury in fact, then we move on to the forum nonconvenience argument and decide whether or not the district court erred theirs.

[00:22:44] Speaker 04:
Is that procedurally right?

[00:22:46] Speaker 04:
I mean, I don't know why we would suddenly reach a question of statutory standing.

[00:22:52] Speaker 00:
Well, this court can actually reach the issue of statutory standing on a de novo basis, as indicated by field turf and the mentor case.

[00:23:03] Speaker 00:
That wasn't your question on the supplemental question, but both parties ended up briefing the subject of statutory standing.

[00:23:11] Speaker 00:
But in terms of what type of license this is and responding to your question, Your Honor, is that we would submit that this is not a patent license of any kind.

[00:23:20] Speaker 00:
Wait, wait, wait.

[00:23:21] Speaker 02:
The WIAV case makes clear that an exclusive right to manufacture, which wouldn't extend to the defendant here, which would exclude the defendant, is the kind of license that gives right to sue.

[00:23:42] Speaker 00:
Well, Your Honor, the YF case involved a licensee which had the

[00:23:49] Speaker 00:
exclusionary rights to make, use, and sell, as well as an express right to sue.

[00:23:56] Speaker 00:
So that particular licensee was an exclusive licensee.

[00:24:03] Speaker 00:
This case is more like textile productions versus meat in which you have an exclusive supplier with a bear license.

[00:24:10] Speaker 00:
They would not have standing to sue on that type of license even if the patentee were joined.

[00:24:16] Speaker 00:
And that's the type of license we would submit that is represented by this 1999 agreement.

[00:24:22] Speaker 03:
Okay, I'm sorry.

[00:24:26] Speaker 03:
This is Judge O'Malley.

[00:24:28] Speaker 03:
Your point with respect to what the license covers is also relevant to your mootness argument, which is Article III issue, right?

[00:24:38] Speaker 00:
Yes, and the reason for that is that the only right here is to manufacture.

[00:24:43] Speaker 00:
There's no right to sue.

[00:24:45] Speaker 00:
There's no right to license.

[00:24:47] Speaker 00:
There's not even a right to enforce.

[00:24:49] Speaker 00:
But if you do want to imply that this party at best

[00:24:53] Speaker 00:
had the right to enforce the patent, that implies a right only to seek an injunction.

[00:24:59] Speaker 00:
And that certainly expired when this patent expired.

[00:25:02] Speaker 04:
Council, I see a significant problem with your argument.

[00:25:05] Speaker 04:
You say the only thing they got was the right to manufacture.

[00:25:09] Speaker 04:
That's not true.

[00:25:10] Speaker 04:
They got the exclusive right to manufacture.

[00:25:13] Speaker 04:
And that's a really big difference, because what the patent owner, or in this case, the inventors, are promising for their future patent is that no one else

[00:25:22] Speaker 04:
will be allowed to manufacture it, only you.

[00:25:24] Speaker 00:
Well, the exclusive right to manufacture, even if that is granted by this agreement, is still not a sufficient right to do anything other than seek an injunction.

[00:25:40] Speaker 00:
If they did have that one step.

[00:25:43] Speaker 02:
Wait, what case suggests that?

[00:25:45] Speaker 02:
I mean, that would mean that an exclusive licensee normally

[00:25:52] Speaker 02:
wouldn't be able to sue for damages and could only get an injunction.

[00:25:55] Speaker 02:
That's not right under the cases.

[00:25:58] Speaker 00:
Well, I'm responding to the hypothetical, but there's not a case that cited that indicates that a party such as this with one particular right and that is only the right to make can actually bring any type of lawsuit as a patent plaintiff.

[00:26:15] Speaker 02:
WIAV says if you have the right to exclude the defendant, you have the right to sue.

[00:26:21] Speaker 00:
Well, but the licensee in the YF case, Your Honor, had all of the rights.

[00:26:27] Speaker 00:
It had the right to make, use, and sell, and to sue, which makes it a lot like a lot of the other cases, which found that the parties were actual exclusive licensees.

[00:26:38] Speaker 00:
And then the issue was whether or not they had to join the patentee.

[00:26:42] Speaker 00:
But we would submit there is not a case that suggests that a party like this that at best has the right to make

[00:26:51] Speaker 00:
and nothing else.

[00:26:52] Speaker 04:
You've got to stop saying, at best, the right to make.

[00:26:54] Speaker 04:
They have the exclusive right to make.

[00:26:56] Speaker 04:
A patent doesn't grant people the right to make something.

[00:26:59] Speaker 04:
It grants them the right to exclude others from making something.

[00:27:06] Speaker 00:
Well, Your Honor, the understanding here is that they have an exclusive right to make, as stated in this agreement, and that doesn't rise to the level to give them any type of

[00:27:18] Speaker 00:
right under the Patent Act to actually seek damages for patent infringement.

[00:27:23] Speaker 00:
And in fact, that the right to sue is separate from the exclusion rights is also kind of demonstrated by the Moro case and the Propat case.

[00:27:34] Speaker 00:
And the lack of any express right to do anything with this right, we would submit, would bar them from seeking any type of relief, but certainly not damages.

[00:27:46] Speaker 00:
They have no actual damages

[00:27:48] Speaker 00:
patent damages.

[00:27:50] Speaker 04:
Isn't it clear that when you transfer the right to sue, that results in the exclusive licensee being allowed to bring suit in its name alone.

[00:28:03] Speaker 04:
When you don't transfer the right to sue but are otherwise an exclusive licensee, you have to just join the patentee to ensure there aren't multiple potential suits.

[00:28:13] Speaker 04:
So isn't that the only difference under our case law that transferring the right to sue results in?

[00:28:23] Speaker 00:
No, Your Honor, and that's because it depends on whether or not the plaintiff is a bear licensee or an exclusive licensee with sufficient rights to sue without the named plaintiff.

[00:28:39] Speaker 00:
even a party that's a bear licensee, such as the plaintiff in textile productions versus me, they had a contractual.

[00:28:45] Speaker 04:
Council, assume that this is an exclusive licensee because they are.

[00:28:51] Speaker 04:
So just assume it.

[00:28:52] Speaker 04:
If you want to pretend it's a hypothetical, go ahead.

[00:28:54] Speaker 04:
It's not a hypothetical, but you can pretend it's so.

[00:28:57] Speaker 04:
So assume that these people are an exclusive licensee.

[00:28:59] Speaker 04:
Now, under our law, assuming they are an exclusive licensee,

[00:29:04] Speaker 04:
Isn't the conveyance of the right to sue, isn't the only impact of that, whether you can sue in your name alone or whether you must join the patentee to your suit?

[00:29:15] Speaker 00:
I don't think so, Your Honor, because in the Moro case in particular, both the party that had the right to sue and the holder of the exclusionary rights were actually joined.

[00:29:27] Speaker 00:
And that wasn't... Because they sued the patentee in that case.

[00:29:31] Speaker 04:
They sued the patentee in Moro.

[00:29:34] Speaker 00:
But the inclusion of them as a party in the case didn't give the plaintiff in that case statutory standing to sue because the right to sue was divorced from the right to make, use, and sell.

[00:29:52] Speaker 00:
And here we also have that.

[00:29:54] Speaker 00:
The same thing happened in the Propat case, a plaintiff with the right to license,

[00:30:00] Speaker 00:
and the right to sue, but no exclusionary rights and no right to assign, which is here, lack standing to sue even if the patentee were joined.

[00:30:09] Speaker 00:
So that's the crux of the matter here is that the only right alleged here is an exclusive right to manufacture the patented article.

[00:30:18] Speaker 00:
And that's just not sufficient to confer any type of statutory standing based on this agreement.

[00:30:24] Speaker 02:
Okay.

[00:30:25] Speaker 02:
Unless my colleagues have further questions for Mr. Gantz, I think we're

[00:30:30] Speaker 02:
finished with your argument.

[00:30:32] Speaker 02:
Hearing none, Mr. Slavich, you have two minutes.

[00:30:35] Speaker 01:
Thank you, Your Honor.

[00:30:36] Speaker 01:
I need to make a couple of points here.

[00:30:39] Speaker 01:
Defendants' Council asserted that Bosman's declaration went uncontested, and that is not true.

[00:30:44] Speaker 01:
At page 166 of the Joint Appendix is the first page of a several-page declaration of Jonathan Tyler, in which he explains how the latch

[00:30:57] Speaker 01:
how the shutoff valves work and the latch release mechanism when it is installed for operation constitutes manufacture on the site.

[00:31:09] Speaker 01:
So that, again, that point that the defendant's made was not correct.

[00:31:14] Speaker 01:
Tyler is not a bear licensee as the court has recognized.

[00:31:17] Speaker 01:
It is the exclusive licensee of the right to manufacture.

[00:31:21] Speaker 01:
And defendant counsel's assertion that the right

[00:31:26] Speaker 01:
that Tyler has only the right to seek an injunction and not damages is an assertion that is made without any support in the supplemental brief.

[00:31:35] Speaker 01:
There's no case law associated with that assertion.

[00:31:40] Speaker 01:
And the final point I'd like to make is that the exclusive right to make as one of the sticks in the bundle of rights that a patent carries is sufficient to entitle Tyler to assert the law to bring the lawsuit

[00:31:56] Speaker 01:
albeit with the patentee joined as a party.

[00:31:59] Speaker 01:
And in this case, JKKB, the patentee, is joined as a party.

[00:32:05] Speaker 01:
So the final point I'd just like to make is that the standard to be applied in foreign nonconvenience analyses is that the trial in the chosen form would have to establish oppressiveness and vexation to a defendant out of all proportion to plaintiff's convenience.

[00:32:24] Speaker 01:
And those words are found nowhere in the district court's opinion.

[00:32:28] Speaker 01:
The district court makes passing reference to a heavy burden, but makes no findings with respect to vexation, oppressiveness, or manifest injustice that would result by proceeding in the District of Indiana.

[00:32:47] Speaker 02:
OK.

[00:32:47] Speaker 02:
Thank you, Mr. Slavitt.

[00:32:48] Speaker 02:
Thank you, Mr. Gantz.

[00:32:49] Speaker 02:
The case is submitted.

[00:32:50] Speaker 02:
That concludes our section for this morning.

[00:32:56] Speaker 00:
The honorable court is adjourned until tomorrow morning at 10 a.m.