[00:00:00] Speaker 00:
The next case for argument today is case number 2020-1872, the University of South Florida versus Fujifilm Medical.

[00:00:14] Speaker 00:
Mr. Arts, please proceed.

[00:00:18] Speaker 03:
Thank you, Your Honor.

[00:00:19] Speaker 03:
Good morning.

[00:00:20] Speaker 03:
May it please the court?

[00:00:22] Speaker 03:
The district court wrongly concluded that the exclusive license agreement between the University of South Florida and its research foundation failed to grant any rights in the 937 patent to the foundation at the time the complaint was filed.

[00:00:37] Speaker 03:
In making this finding, the district court failed to consider clear evidence as well as the intent of the parties.

[00:00:44] Speaker 00:
First, the district court failed to... Counsel, before you move into the detailed merits, can you start with the standard of review?

[00:00:52] Speaker 00:
What is the precise standard of review that applies under these circumstances?

[00:00:58] Speaker 00:
Is this rule 12?

[00:01:00] Speaker 00:
Is this summary judgment?

[00:01:01] Speaker 00:
Is this after a bench trial?

[00:01:03] Speaker 00:
And what do you believe is the standard of review that ought to apply here?

[00:01:07] Speaker 03:
Yeah, this is a Rule 12.

[00:01:10] Speaker 03:
It's a question of law, basically whether or not that there is jurisdiction.

[00:01:15] Speaker 03:
As we understand, the standard of review would be de novo, question of law.

[00:01:19] Speaker 03:
There were no factual findings that led to the jurisdictional determination by the court.

[00:01:25] Speaker 00:
When you say there's no factual findings, is it not the case that the questions about the testimony of the 30B6

[00:01:35] Speaker 00:
witness or the absence of the 1997 document and evidence, are those not fact findings or are there no fact findings made at this stage?

[00:01:44] Speaker 00:
If I think they're fact findings, what should the standard of review be?

[00:01:48] Speaker 00:
How does this work?

[00:01:51] Speaker 03:
Well, I don't think that they were factual findings that the court looked at.

[00:01:54] Speaker 03:
The court was evaluating whether or not the University of South Florida Research Foundation had, at least with respect to this issue, whether it had any rights

[00:02:03] Speaker 03:
in the 937 patent and looked at that and determined that they didn't in deciding under rule 12 age to dismiss because it didn't have jurisdiction.

[00:02:12] Speaker 03:
And that's what we're saying is error.

[00:02:15] Speaker 03:
Um, you know, we're asking the court to reverse and look at day novel.

[00:02:22] Speaker 01:
Council, what about the questions, um, about does the license covered patent and suit, when was the license, the non-pro-tunk license executed?

[00:02:32] Speaker 01:
Those are factual issues, right?

[00:02:34] Speaker 03:
Well, as to when the, uh, license agreement was executed, that would be, uh, looking at the evidence.

[00:02:41] Speaker 03:
And then I guess that that would be in of itself a factual issue, but I don't think we're disputing about what the facts are.

[00:02:47] Speaker 03:
It's application of the facts to determine whether or not there was, uh, the district court had jurisdiction, um, because there were rights that the research foundation had to be able to have standing before the court under article three.

[00:03:03] Speaker 01:
Well, didn't the district court say that there is no evidence that the license was executed before the suit was filed?

[00:03:12] Speaker 01:
Or at least made a finding that there wasn't sufficient evidence, right?

[00:03:17] Speaker 03:
The district court found that there was not sufficient evidence or that it hadn't been shown that the exclusive license agreement hadn't been signed before the complaint was filed.

[00:03:26] Speaker 03:
And that's what... Did you challenge that?

[00:03:30] Speaker 03:
We do.

[00:03:31] Speaker 01:
Um, what is your basis for challenging it?

[00:03:34] Speaker 01:
Are you arguing that the district court applied the improper standard?

[00:03:38] Speaker 01:
What is the standard that the district court should apply?

[00:03:41] Speaker 01:
Is it, are we looking for clear error in its factual finding or was it supposed to weigh the facts in your favor?

[00:03:48] Speaker 01:
How does this work?

[00:03:50] Speaker 01:
That's why these questions are important.

[00:03:51] Speaker 03:
Yeah.

[00:03:52] Speaker 03:
I mean, if we're looking at it at the pleading stage, which is essentially what the court did in dismissing it as rule 12, as opposed to summary judgment, then the court has to look at, um, the allegations in a light most favorable to us, which it didn't, um, to the extent that it was making factual.

[00:04:09] Speaker 03:
I'm sorry.

[00:04:10] Speaker 03:
Go ahead.

[00:04:11] Speaker 01:
When you say allegations in the light most favorable to you, those are the allegations in the complaint, right?

[00:04:19] Speaker 01:
Correct.

[00:04:19] Speaker 01:
And, and yes, but that's not to make sure not like for summary judgment.

[00:04:25] Speaker 01:
Um, if a witness were testifying, um, that would provide that evidence that 36 testimony would have to be weighed in favor of the non-living party.

[00:04:37] Speaker 01:
Right.

[00:04:39] Speaker 03:
That's well, that is correct, your honor.

[00:04:41] Speaker 03:
And they did move for some summary judgment and the court elected not to consider this or not to rule on the summary judgment.

[00:04:47] Speaker 03:
And so that dismissed it under rule 12.

[00:04:50] Speaker 01:
Okay.

[00:04:50] Speaker 01:
So under rule 12, do you get the benefit of that same procedure under rule 12?

[00:04:58] Speaker 01:
Am I supposed to look at the deposition testimony and weigh it in your favor or not under rule 12?

[00:05:04] Speaker 01:
I think maybe not, but I want to know what your answer is.

[00:05:08] Speaker 03:
I mean, if we're looking at it under Rule 12, then what the court needs to look at is the allegations in the complaint, similar to what we have in the Lone Star case, where the allegation in the complaint specifically was that the University of South Florida Research Foundation is the owner of the entire right title and interest in and to the 937 patent.

[00:05:37] Speaker 03:
the to the allegations in the complaint that they were the owner of the court ultimately found.

[00:05:42] Speaker 03:
uh... as a matter of of a wall that they were not the owner and that this is where the district court was incorrect because it failed to consider and take into account uh... certain evidence that was before the court that contradicted this determination and definitely showed that the help for the research foundation had white in the nine three seven pat at the time the complaint was filed included the revenue allocation agreement from nineteen ninety seven that expressly granted

[00:06:11] Speaker 03:
an exclusive license to the foundation in the disclosure that corresponded to the 937 patent.

[00:06:18] Speaker 03:
It also failed to consider the 1998 sublicense agreement from the research foundation to a company called MedDetect that acknowledged the foundation's rights and exclusive rights to the technology in the provisional that corresponded to the 937 patent.

[00:06:36] Speaker 03:
And then as well in 2014, a sublicense agreement

[00:06:39] Speaker 03:
where the foundation granted rights to a third party company, IPX Medical, and also acknowledged that the foundation had an exclusive right in the 937 patent in 2014, all of which documentary evidence demonstrates that the foundation had rights, had a right in the 937 patent at the time of the complaint.

[00:07:03] Speaker 03:
And the court's conclusion as a matter of law, if they didn't, is incorrect.

[00:07:10] Speaker 03:
The district court also failed to credit the testimony of the Research Foundation's corporate designee, Ms.

[00:07:17] Speaker 03:
McDevitt, that testified with respect to the exclusive license agreement that was at issue.

[00:07:23] Speaker 03:
And the court found that the exclusive license agreement, which expressly granted

[00:07:29] Speaker 03:
uh... an exclusive license to the foundation from the university of south florida the court found that there was no evidence that that was executed before the complaint was filed the court's basis for that was twofold first that there was no evidence of when it was signed and secondly that it didn't clearly tie or the exclusive license agreement was not clearly tied to the nine three seven patent as we indicated that the

[00:07:58] Speaker 01:
I have a specific question on the topic you're addressing.

[00:08:03] Speaker 01:
Suji Film asserts in their brief at page 22 that the court found Ms.

[00:08:07] Speaker 01:
McDevitt's testimony legally insufficient to prove the date of the non-profit license because she lacked personal knowledge.

[00:08:16] Speaker 01:
And that's where the court addressed that is at page 835.

[00:08:22] Speaker 01:
How do you respond to that specifically?

[00:08:24] Speaker 01:
I mean, she said,

[00:08:25] Speaker 01:
You know, it's my understanding that it was executed before the filing date.

[00:08:33] Speaker 01:
And the court did say that, you know, that was problematic, that she was saying it with my understanding.

[00:08:39] Speaker 01:
How do you respond to that?

[00:08:41] Speaker 01:
I didn't see you address it specifically in your reply brief.

[00:08:44] Speaker 03:
Well, Ms.

[00:08:45] Speaker 03:
McDevitt, thank you, your honor.

[00:08:46] Speaker 03:
Ms.

[00:08:46] Speaker 03:
McDevitt was designated as the foundation 30 B six corporate representative to testify about ownership issues with respect to nine three seven patent.

[00:08:57] Speaker 03:
And that is contained at the appendix at page nine, nine 47 page 12.

[00:09:04] Speaker 03:
uh... were counsel for food g after she was prepared to testify about that particular topic and she said that she was a man he also asked her what she had done to prepare for the deposition and she testified that she is this is also on appendix a nine forty seven

[00:09:20] Speaker 03:
that she had reviewed files related to that issue.

[00:09:23] Speaker 03:
She also spoke to the general counsel at the university, who was also for the foundation, and she also spoke to staff about the documents that she reviewed.

[00:09:34] Speaker 03:
So whether she had personal knowledge, she was testifying as a vice president of the corporation

[00:09:39] Speaker 03:
specifically designated to testify about these issues and was prepared and did prepare to do so.

[00:09:45] Speaker 03:
So I think it's air to attribute some requirement of personal knowledge from some VP of the company who's designated to testify on corporate issues.

[00:09:54] Speaker 02:
Counsel, this is Judge Rana.

[00:09:56] Speaker 02:
How do you respond to Puget Hill's argument regarding the rights that the government had in the patent and the fact that the foundation did not disclose this to the court or

[00:10:09] Speaker 02:
or in this appeal?

[00:10:12] Speaker 03:
Well, first of all, that was by a certificate of correction.

[00:10:16] Speaker 03:
First of all, it's not before this court on appeal.

[00:10:19] Speaker 03:
This was not an issue that was before the record below.

[00:10:22] Speaker 03:
And as they try to infer in their brief, they try to infer that this was something new.

[00:10:27] Speaker 03:
But the certificate of correction was available before they filed their motion for summary judgment.

[00:10:32] Speaker 03:
And they elected not to raise it.

[00:10:35] Speaker 03:
So this is not an issue that should be before this court because they elected not to assert it and it's therefore waived.

[00:10:44] Speaker 03:
But whatever the scope of any rights are are undetermined or not before this court and should not be considered.

[00:10:51] Speaker 02:
But isn't it relevant to the rights that the USF has in the pen?

[00:11:03] Speaker 03:
Well, I think that the ultimate issue in terms of whether or not the exclusive license grants, you know, what right it grants to the foundation is what an issue.

[00:11:15] Speaker 03:
There's not any indication that the government would have any rights over and above or that would interfere with the research foundation's rights under the exclusive license agreement to have full enjoyment of the patent as was contemplated by the parties.

[00:11:35] Speaker 00:
Okay.

[00:11:36] Speaker 00:
Why don't we save the rest of your time for rebuttal, and let's move on to opposing counsel.

[00:11:43] Speaker 04:
Thanks, Your Honor, and may it please the Court.

[00:11:45] Speaker 04:
After alleging for nearly three years that it owned the 937 patent, the Foundation is now trying to prove it is an exclusive licensee with an undated license that does not mention the patent.

[00:12:01] Speaker 04:
The Foundation refuses to produce

[00:12:03] Speaker 04:
the invention disclosure form that it claims connects the license to the patent.

[00:12:10] Speaker 04:
The license purports to be effective retroactively to July 1997, but the foundation offered no evidence of when the license was executed.

[00:12:20] Speaker 00:
Well, wait a minute.

[00:12:21] Speaker 00:
Didn't the 30B6 witness expressly testify that the license was executed in advance of the suit?

[00:12:27] Speaker 04:
No, Your Honor, I don't believe that she did.

[00:12:31] Speaker 04:
She testified as a 30B6 witness, and we know that as a 30B6 witness, she's not required to have personal knowledge.

[00:12:37] Speaker 04:
She testified that it was her understanding that it was executed before, and she then said she did not know when it was executed, but maybe sometime after 2014.

[00:12:47] Speaker 04:
She didn't know when it was executed.

[00:12:51] Speaker 04:
She did not know when it was executed, correct.

[00:12:53] Speaker 00:
So I think the district court... Counsel, don't interrupt me.

[00:12:55] Speaker 00:
She did not know when it was executed, but she did know it was executed.

[00:13:01] Speaker 00:
She said she believed it was executed prior to the lawsuit being filed.

[00:13:06] Speaker 00:
So isn't it possible you don't know a precise date, but you know, it's before such and such a date.

[00:13:14] Speaker 04:
Yes, that's absolutely possible.

[00:13:15] Speaker 04:
Your honor.

[00:13:16] Speaker 04:
I don't believe that the witness testified with personal knowledge that she was

[00:13:21] Speaker 00:
Why does she need to testify with personal knowledge?

[00:13:23] Speaker 00:
A 30B6 isn't a personal knowledge testimony.

[00:13:27] Speaker 00:
It is the knowledge of the company through a particular designated representative.

[00:13:32] Speaker 00:
So her testimony is that the company's position is that its collective knowledge is that it was executed prior to the suit.

[00:13:41] Speaker 00:
Why isn't that evidence that is relevant to this decision?

[00:13:46] Speaker 04:
Well, it may be relevant, Your Honor.

[00:13:49] Speaker 04:
I think that what I would focus on is that here, the foundation has the burden of proof on these issues.

[00:13:57] Speaker 04:
And for them to come forward, and we were at the summary judgment stage, we filed a motion for summary judgment on this issue three years into the case.

[00:14:04] Speaker 04:
And for them to come forward in response to summary judgment, not with the documentation, not with an affidavit from a witness swearing under oath under personal knowledge of the date issue,

[00:14:15] Speaker 04:
but to focus on a 36 deposition testimony that we took that would not be admissible at trial under the federal rule of civil procedure 32A3, I don't think that meets their burden under the case law.

[00:14:31] Speaker 01:
Do you have any case law to support that?

[00:14:33] Speaker 01:
I mean, you're advocating for a per se rule that when a party has a burden to prove some fact on jurisdiction or standing,

[00:14:42] Speaker 01:
that they can't rely on a 30B6 declarant's testimony.

[00:14:46] Speaker 01:
What is your basis for saying that?

[00:14:52] Speaker 04:
Well, I think that at the summary judgment stage, I think it is fair for the court to consider evidence that is submitted that is not directly on personal knowledge.

[00:15:07] Speaker 04:
I think given the vast number of issues and concerns that we have concerning all of the various facts that they were obliged to come forward with personal knowledge.

[00:15:17] Speaker 04:
I was not referring to specific case law.

[00:15:20] Speaker 01:
I understand this is your view, counsel, but I want to know if you have case law you can give me.

[00:15:26] Speaker 04:
I don't have case law that would require a witness to come forward on personal knowledge short of

[00:15:31] Speaker 04:
rule 56 of the rules of civil procedure, which requires that affidavits be presented or other evidence that's, that's an admissible form.

[00:15:38] Speaker 04:
But I do think the court could consider a 36 testimony to where there was a genuine issue of dispute of fact that summary judgment.

[00:15:46] Speaker 00:
Well, I'm sorry, go ahead.

[00:15:48] Speaker 00:
Yeah, go ahead.

[00:15:49] Speaker 00:
Go ahead.

[00:15:50] Speaker 00:
Well, but council, I guess I'm sort of confused.

[00:15:52] Speaker 00:
I understand that you moved for summary judgment and that, you know, this was at the summary judgment stage.

[00:15:57] Speaker 00:
But the court then declined to rule on Sudbury judgment and instead ruled under 12-H.

[00:16:04] Speaker 00:
So at the 12-H stage of the rule 12 motion, aren't we supposed to assume all facts alleged in the complaint in favor of the complainant?

[00:16:16] Speaker 04:
Your Honor, I heard the questioning to my friend as well on that point.

[00:16:21] Speaker 04:
I think when you're at the summary judgment, and I don't have

[00:16:25] Speaker 04:
case law directly on this other than the Supreme Court's decision in Lujan versus Defenders of Wildlife 504 US 555.

[00:16:34] Speaker 04:
There they walked through the different stages where you can make findings and they talked about the pleading stage and then they talk about the summary judgment stage.

[00:16:42] Speaker 00:
Right, and I have it right in front of me and I'll read it to you.

[00:16:45] Speaker 00:
At the pleading stage, general factual allegations of injury resulting from the defendant's conduct may suffice

[00:16:52] Speaker 00:
For on a motion to dismiss, we presume that general allegations embrace those specific facts that are necessary to support the claim.

[00:17:00] Speaker 00:
I mean, it doesn't really matter that you file the summary judgment motion, because that's not the standard under which this district court decided the case.

[00:17:08] Speaker 00:
Instead, he decided under Rule 12 motion, which is a pleading stage proceeding.

[00:17:13] Speaker 00:
So how do I not apply that particular rule to this case, given what the district court chose to do?

[00:17:21] Speaker 04:
And I think the answer to that, Your Honor, is that this was not a 12 motion.

[00:17:26] Speaker 04:
It was not a Rule 12 motion.

[00:17:28] Speaker 04:
It was a Rule 56 motion for summary judgment that the court then decided to address in the context of Rule 12H3, which of course allows the court to dismiss a case where it lacks personal jurisdiction, where it lacks subject matter jurisdiction.

[00:17:41] Speaker 00:
Counsel, I understand that you made a Rule 56 motion, but we're not reviewing a Rule 56 decision.

[00:17:48] Speaker 00:
We are reviewing a Rule 12H decision, so we have to apply whatever standard applies to Rule 12H, not Rule 56.

[00:17:59] Speaker 00:
We don't apply the standard for what you wish he had done.

[00:18:02] Speaker 00:
We apply the standard to what he actually did.

[00:18:06] Speaker 04:
I understand, Your Honor, and respectfully, what I was trying to say was,

[00:18:10] Speaker 04:
the district court in deciding it under Rule 12H3, he considered all the evidence the parties had submitted in connection with the Rule 56 briefing.

[00:18:20] Speaker 04:
I don't believe here the court can give any deference to the allegations in the complaint, where the allegations in the complaint are false, right?

[00:18:29] Speaker 04:
The allegations in the complaint say they own the patent.

[00:18:31] Speaker 04:
We know that to be false based on the same Rule 36 death testimony that they would like to rely on.

[00:18:36] Speaker 04:
So I don't think that given that the evidence was submitted under a Rule 56 motion, even though the court sort of converted that to Rule 12H3, I don't believe you can give any weight to the allegations of the complaint.

[00:18:51] Speaker 04:
Now, if you could and if you had to in your Honor's decision under Rule 12, then you would not have well-pled allegations in this complaint because they are by the other side's own admission false.

[00:19:03] Speaker 01:
Counsel, I have a question for you about that.

[00:19:06] Speaker 01:
Are you taking the position that USFRF doesn't believe it's the owner of the patent by virtue of the fact that it was transferred all substantial rights in the patent?

[00:19:22] Speaker 04:
No, Your Honor.

[00:19:23] Speaker 04:
I think that the Foundation clearly believes and has argued

[00:19:27] Speaker 04:
that they are, in effect, a virtual assignee, as this court has used that term, by virtue of the fact that they believe they received all substantial rights under the patent through the license.

[00:19:39] Speaker 01:
Right.

[00:19:40] Speaker 01:
So isn't that a fair way to read their complaint that they are saying they are the owner of the patent because they were transferred all substantial rights?

[00:19:50] Speaker 01:
Isn't that how I should read the complaint if I'm supposed to read it in their favor?

[00:19:55] Speaker 04:
Well, Your Honor, I don't think it should be read that way.

[00:19:58] Speaker 04:
And that's based on that.

[00:20:01] Speaker 04:
Frankly, it's based on the testimony of their own 36 designee who said that that that that exact language was incorrect and false and that they were not the owner of the patent by way of an assignment.

[00:20:12] Speaker 04:
Instead, they had an exclusive license that that witness did not testify at that deposition about all substantial rights.

[00:20:20] Speaker 04:
So based on the testimony of their own witness, I don't think it can be read that way.

[00:20:24] Speaker 04:
And I think it's appropriate to look to the actual allegations that they're attempting to make in the motion to amend that was submitted, where they attempted to change those allegations to say that they were, in fact, an exclusive licensee with all substantial rights.

[00:20:40] Speaker 02:
With respect to... Yes.

[00:20:44] Speaker 02:
So how do you suggest that we apply and create our case in Shunderman

[00:20:50] Speaker 02:
regarding a reformation of contracts to the agreement here, the Nunk Pro Tunk Agreement.

[00:20:58] Speaker 04:
Yes, Your Honor.

[00:20:59] Speaker 04:
Schwindleman is essentially a unique case, because the standard that this court has articulated is that you cannot cure or create Article III standing by virtue of a Nunk Pro Tunk Agreement that purports to be retroactive to an earlier date before the complaint was filed.

[00:21:19] Speaker 04:
Schwindleman is unique in the sense that it, in some ways, does that.

[00:21:23] Speaker 04:
But if you read Schwindleman, it actually reaffirms that standing cannot be created with a NUNC pro-tunk agreement.

[00:21:30] Speaker 04:
And then they carve out what I think is a slightly different approach with respect to the facts in that case.

[00:21:37] Speaker 04:
And in Schwindleman, there was an earlier agreement

[00:21:40] Speaker 04:
that the court found had been modified by reformation under Minnesota state law.

[00:21:46] Speaker 04:
And they determined that because there was the earlier agreement that was incorrect based on a mutual mistake of the parties, that therefore that later agreement that was entered into by the parties to reform the earlier agreement was not, in fact, a violation of that no-pro-tunk rule for Article 3 standing.

[00:22:05] Speaker 04:
Here, we don't have those facts, Your Honor.

[00:22:08] Speaker 04:
We don't, first of all, we don't have any evidence of a reformation, and that's in part probably because this issue was not raised below by the Foundation.

[00:22:18] Speaker 04:
We don't have anything showing that there was a mutual mistake of the parties.

[00:22:23] Speaker 04:
They point to the revenue allocation agreement suggesting that was the earlier agreement that somehow the license then reformed.

[00:22:31] Speaker 04:
And they don't exactly make the argument completely.

[00:22:34] Speaker 04:
They sort of suggest that there's a reformation here.

[00:22:37] Speaker 04:
But the revenue allocation agreement related to a different invention disclosure that was dated April 1997.

[00:22:43] Speaker 04:
The license references and invention disclosure dated July 1997.

[00:22:49] Speaker 04:
The terms of the license are also substantially different from the terms of that revenue allocation agreement.

[00:22:55] Speaker 04:
And if, in fact, the revenue allocation agreement was all the foundation needed, then you wouldn't have two subsequent assignments, one in 1998 and one in 2002, both of which purport to, you know, extend it and assign different rights than was purportedly conveyed through that revenue allocation agreement.

[00:23:20] Speaker 00:
With respect to... Council, what do we do if we conclude

[00:23:24] Speaker 00:
that the District Court made fact findings relevant to his jurisdictional assessment.

[00:23:31] Speaker 00:
How do we review those?

[00:23:33] Speaker 04:
If the District Court made factual findings that are in dispute, those findings are reviewed for clear error, and that's the Abraxis case.

[00:23:41] Speaker 04:
It's 625 F3rd, 1359, and I'm looking at page 1363.

[00:23:50] Speaker 00:
clear error despite this summary judgment motion that you filed?

[00:23:56] Speaker 04:
Well, Your Honor, Abraxis does not address the unique circumstances in our case.

[00:24:01] Speaker 04:
It makes clear that you're on de novo review and that it makes a note about factual findings that are in dispute being reviewed for clear error.

[00:24:10] Speaker 04:
I actually agree with my friend.

[00:24:12] Speaker 04:
I don't believe there are necessarily facts that were disputed by the parties in the motions that were presented to the district court.

[00:24:20] Speaker 04:
I think what the court actually did was apply those undisputed facts to the law.

[00:24:25] Speaker 00:
I'll tell you, I don't know what to do with the 30B6 testimony because she testified as a 30B6 witness that the document was executed prior to the suit.

[00:24:37] Speaker 00:
And so I just don't know what to do with that.

[00:24:40] Speaker 00:
If I credit that, I reverse.

[00:24:44] Speaker 00:
Why do I not credit that at this stage in the process?

[00:24:49] Speaker 04:
Well, your honor, I don't, as I noted before, I don't believe that that testimony is, is w w has enough certainty.

[00:24:58] Speaker 04:
I agree with the district court on this.

[00:24:59] Speaker 04:
I think he did get it right.

[00:25:00] Speaker 04:
That it just wasn't delivered.

[00:25:02] Speaker 00:
It's not his only comment about the testimony is it wasn't a matter of personal knowledge.

[00:25:09] Speaker 00:
And that, that can't be right.

[00:25:10] Speaker 00:
Cause a 30 B six, uh, deponent doesn't have to testify as to personal knowledge.

[00:25:16] Speaker 00:
They're testifying as to corporate knowledge.

[00:25:19] Speaker 04:
Well, and that's that's that's true.

[00:25:21] Speaker 04:
Your honor, I guess to your comment that if you were to credit it, you have to reverse.

[00:25:26] Speaker 04:
I don't agree with that.

[00:25:27] Speaker 04:
For this reason, there's the second article three issue here article freestanding that is that that is with respect to the scope of the license we have.

[00:25:37] Speaker 00:
an invention disclosure for being wrapped part part of your problem with that and and i look i agree that there's an issue i agree that when uh... somewhat and uh... reserves for themselves both the right to sue and research right it creates a prudential standing problem for the exclusive like to be i i i'm with you you got me already so um... you know but the problem is what what that really just allow for is a vacate in remand to cure that defect

[00:26:04] Speaker 00:
because the patent owner has itself joined lots of other suits, so that defect can be cured relatively easily with a vacate and remand, and they bring in the patent owner, and then everybody needs to be there, right?

[00:26:22] Speaker 04:
Yes, Your Honor, I agree with you.

[00:26:23] Speaker 04:
If the court were to find on the Article III constitutional standing issues,

[00:26:29] Speaker 04:
that the court had both of those wrong, but agreed that the court got the all-substantial right statutory standing issue correct.

[00:26:36] Speaker 00:
When you said both of those wrong, I don't know what you mean by both of them wrong.

[00:26:41] Speaker 00:
They're only constitutional standing.

[00:26:44] Speaker 00:
I only know of one issue, right?

[00:26:46] Speaker 00:
What are both?

[00:26:46] Speaker 00:
What do you mean by both?

[00:26:48] Speaker 04:
Yes, Your Honor.

[00:26:48] Speaker 04:
So there were two issues presented that the district court found they lacked Article III standing on.

[00:26:53] Speaker 04:
The first, well, one of them was the one we talked about with the date.

[00:26:56] Speaker 04:
The second issue is that the license in question does not refer to the 937 patent.

[00:27:03] Speaker 04:
Instead, the license refers to a disclosure, a mentioned disclosure form dated July 97th.

[00:27:10] Speaker 04:
There was no evidence to try that.

[00:27:12] Speaker 00:
I understand that argument.

[00:27:13] Speaker 00:
I'm sorry.

[00:27:13] Speaker 00:
I was, I was just worried you were blending prudential and constitutional standing.

[00:27:17] Speaker 00:
And I understand.

[00:27:18] Speaker 00:
I'm sorry.

[00:27:19] Speaker 00:
I think the judge still has a question for you.

[00:27:21] Speaker 01:
I do.

[00:27:21] Speaker 01:
Thank you.

[00:27:22] Speaker 01:
I, I just was going to ask, I thought that maybe I'm wrong, but I thought the 30 B six witness also addressed the scope of the license and explained that the, you know, that these license by reference to a particular

[00:27:40] Speaker 01:
information disclosure statement was in fact that that information disclosure statement did cover the patent suit.

[00:27:47] Speaker 01:
Is that correct?

[00:27:49] Speaker 04:
Your Honor, that is not precisely correct.

[00:27:52] Speaker 04:
I think there's been some confusion on that point.

[00:27:55] Speaker 04:
The Foundation actually quotes in its brief at ECF page 47.

[00:28:01] Speaker 04:
They quote her testimony and say that she confirmed the connection between the license and the patent.

[00:28:07] Speaker 04:
However, if you look closely, they are quoting the district court's opinion at appendix page 34, which was the district court quoting their own brief.

[00:28:17] Speaker 04:
So that's not obviously evidence.

[00:28:20] Speaker 04:
What the witness actually testified about was not the license that's at issue.

[00:28:26] Speaker 04:
She was testifying about the 2002 assignment, which undoubtedly does reference the 937 patent because it refers to the application number.

[00:28:35] Speaker 04:
The problem is the disclosure form referenced in that document is undated and bears a different title than the one that is actually referred to in the license.

[00:28:46] Speaker 00:
And under the... But doesn't it use the same USF identification number?

[00:28:50] Speaker 04:
It uses a similar number, and there is evidence in the 30B6 purporting to explain the difference in the number, which is the reference to PRC.

[00:28:59] Speaker 04:
I do agree with that, but there are four different documents that arguably refer to four different disclosure forms.

[00:29:05] Speaker 04:
And what is critical here is that under the court's decision in Speedplay, where there was a question about this issue, the court said to support an assertion that one has in fact exclusive rights under a license, the licensee must produce a written instrument documenting the transfer of proprietary rights in the patent.

[00:29:30] Speaker 04:
That has not happened here.

[00:29:32] Speaker 04:
They have a license that refers to a disclosure form.

[00:29:34] Speaker 04:
They refuse to produce the disclosure form because they say it's privileged, and then they want to supposedly point to deposition testimony where the witness discloses what that disclosure form is about that's supposed to be privileged.

[00:29:46] Speaker 04:
That's using the privilege as a sword and a shield.

[00:29:49] Speaker 04:
That's not fair, and that's not how the system is supposed to work at the district court level or any level.

[00:29:56] Speaker 04:
I see that I'm past my time, Your Honors.

[00:29:58] Speaker 04:
I'm happy to answer any additional questions.

[00:30:00] Speaker 00:
I think that we have your argument.

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

[00:30:02] Speaker 00:
Let's have the rebuttal time, please.

[00:30:05] Speaker 00:
How much rebuttal time does council have?

[00:30:09] Speaker 00:
Three minutes and 45 seconds.

[00:30:11] Speaker 00:
Perfect.

[00:30:11] Speaker 00:
Okay.

[00:30:12] Speaker 00:
Thank you very much.

[00:30:12] Speaker 00:
Please proceed.

[00:30:14] Speaker 03:
Yeah.

[00:30:15] Speaker 03:
Thank you.

[00:30:15] Speaker 03:
Just a few points, your honors.

[00:30:16] Speaker 03:
I guess first I want to address the point that there's a question as to whether or not there's testimony in the record tying

[00:30:24] Speaker 03:
this unique disclosure number 97, eight zero one five to the nine three seven patent.

[00:30:29] Speaker 03:
And I refer the court to, um, appendix three 58.

[00:30:34] Speaker 03:
And this is the testimony again of Mrs. Ms.

[00:30:36] Speaker 03:
McDevitt in the earlier case, again, 30 B six, uh, making clear that with reference to 97, eight zero one five, the question is, and that's a reference to nine three seven patent, correct answer, correct.

[00:30:50] Speaker 03:
And as, as counsel did acknowledge, she did testify in her 30 v six deposition that each.

[00:30:57] Speaker 03:
disclosure that the university receives, receive a unique number.

[00:31:02] Speaker 03:
The date, in this case 97, followed sequentially by the number that's uniquely assigned to each disclosure, in this case 015.

[00:31:10] Speaker 03:
There are changes with respect to additions with respect to the suffixes.

[00:31:15] Speaker 03:
For example, PR is added when a provisional application file is opened and C is added when a utility is filed.

[00:31:22] Speaker 03:
So we've got

[00:31:23] Speaker 03:
the exclusive license as well as the revenue allocation agreement that also specifically identify that rights are being conveyed in that disclosure number to the University of South Florida research.

[00:31:35] Speaker 03:
And then we've also got the assignment from the inventors in 2002 that expressly references 97A015PRC.

[00:31:45] Speaker 03:
Again, tying that specific

[00:31:48] Speaker 03:
disclosure number along with the serial number of the application to the 937 patent as being what's transferred.

[00:31:57] Speaker 03:
So there is no dispute, no question in the record that the disclosure, at least in our view, that 978015 corresponds to the 937 patent.

[00:32:08] Speaker 03:
I'd also like to... Yes?

[00:32:10] Speaker 01:
Oh, I just have a quick question.

[00:32:11] Speaker 01:
Opposing counsel said something about how that testimony is relating to a different agreement.

[00:32:17] Speaker 01:
What is your response to that?

[00:32:20] Speaker 03:
Well, at the time that that testimony was being taken, that was the exhibit that was being discussed, but the testimony isn't specific or limited to that agreement.

[00:32:31] Speaker 03:
The testimony is that that reference number corresponds to 937 Patton.

[00:32:37] Speaker 03:
And then the other testimony where she talks and confirms that each disclosure is assigned a unique reference number, makes it clear that if you have that number, that number has to be tied to what ultimately became the 937 patent as corroborated by the revenue allocation agreement, as well as the two licenses that also specifically tie that disclosure number to the 937 patent.

[00:33:05] Speaker 01:
Okay.

[00:33:05] Speaker 01:
Thank you.

[00:33:07] Speaker 03:
Um, and the last thing I would like to address is, is to the extent that the, uh, I agree with the court that to the extent that the court determines that there are not all substantial rights that reside within the university of south Florida research foundation, that this, this, uh, decision should be vacated back for joined or of the university of south Florida.

[00:33:31] Speaker 00:
Oh, I think both cases taken under submission.

[00:33:37] Speaker 00:
The Honorable Court is adjourned until tomorrow morning at 10am.