[00:00:01] Speaker 03:
The last case for argument is 21-1967, Arendu versus LG Electronics.

[00:00:08] Speaker 03:
I'm going to be ready.

[00:00:25] Speaker 01:
Good morning, Your Honors.

[00:00:27] Speaker 01:
I'm Kemper Deal on behalf of Arendi.

[00:00:29] Speaker 01:
This appeal is about whether Arendi should be allowed to pursue its patent infringement claims against LG's non-Rebel 4 products on the merits.

[00:00:38] Speaker 01:
Those products represent 96% of the LG products that Arendi alleges infringe its 843 patent.

[00:00:47] Speaker 01:
Arendi has sought to pursue its claims against these products in two cases.

[00:00:50] Speaker 01:
But in both cases, the district court precluded it.

[00:00:54] Speaker 01:
These two district court decisions.

[00:00:56] Speaker 04:
I want to ask you a question.

[00:00:57] Speaker 04:
Yes.

[00:00:57] Speaker 04:
I'm looking for case law.

[00:00:59] Speaker 04:
Could you identify for me even a single case in which a party's expert report on infringement of certain products was excluded, but then the court allowed the party to file a second lawsuit in which it could accuse those same products of infringement?

[00:01:17] Speaker 01:
Your Honor, I don't think there's a specific case that has had that exact issue.

[00:01:21] Speaker 01:
But I would refer you to the Acumet decision from this court, where Acumet had sought to bring claims against another set of products in the first case, Acumet 1.

[00:01:31] Speaker 02:
That's factually different from here, right?

[00:01:34] Speaker 02:
Because here, all of LG's products were, in fact, in Orendi 1 through your Section 4A disclosure.

[00:01:43] Speaker 01:
Yes your honor but I would disagree with the premise there that they were properly accused in a rendy one because the district court found an LG argued that they were not and so after the section four disclosures were complete section 4a and section 4c are two parts of the whole.

[00:02:01] Speaker 03:
Acumen is completely distinguishable.

[00:02:03] Speaker 03:
In fact, I think it hurts you because it's so distinguishable.

[00:02:06] Speaker 03:
There, they found that the products were different, which suggests that if the products are not different, you lose.

[00:02:13] Speaker 03:
So what do you refer to when you respond to Judge Chen?

[00:02:18] Speaker 03:
What do you say?

[00:02:19] Speaker 01:
Yes, I'm saying that what was contradictory here was for the district court to conclude in Arendi 1 that these products were not sufficiently accused.

[00:02:27] Speaker 01:
And then in Arendi 2, to find that they were.

[00:02:29] Speaker 03:
We've got the boards.

[00:02:31] Speaker 03:
What are you referring to specifically, the oral hearing here?

[00:02:37] Speaker 03:
What are you referring to what the district court said?

[00:02:40] Speaker 01:
Yes.

[00:02:41] Speaker 01:
I'm referring to what the district court said in Arendt 1 when it concluded that these products had not been sufficiently accused because Arendt had not put- Are you talking about the first, not the one that's just having- Yes.

[00:02:53] Speaker 03:
Okay.

[00:02:53] Speaker 03:
Right.

[00:02:53] Speaker 03:
Give me a page site.

[00:02:54] Speaker 03:
It's in the appendix.

[00:02:56] Speaker 01:
Yes.

[00:02:57] Speaker 01:
So in appendix 1576, the district court agreed that Arendt had not sufficiently disclosed its intent to pursue these claims in the Arendt 1 suit.

[00:03:10] Speaker 04:
Yes.

[00:03:11] Speaker 03:
I was looking at the oral hearing episode.

[00:03:14] Speaker 03:
You're not referring to the oral hearing episode.

[00:03:17] Speaker 03:
You're referring to something else.

[00:03:18] Speaker 04:
You're referring to something in the first case.

[00:03:21] Speaker 04:
It's the oral order at 1577.

[00:03:24] Speaker 04:
That's right.

[00:03:25] Speaker 01:
Yes.

[00:03:25] Speaker 01:
I'm referring to what the court found in the first case, which is contradictory of what it found in the second case.

[00:03:31] Speaker 01:
In the first case, the court said that LG did not have notice that, quote, Arendy was pursuing infringement claims against more than the Rebel 4 product.

[00:03:40] Speaker 04:
And so what it found was that these- It was kind of shorthand, right?

[00:03:44] Speaker 04:
It meant that they didn't have notice of your claim charts.

[00:03:48] Speaker 01:
Right.

[00:03:48] Speaker 04:
They knew which products you were accusing, but they didn't have your allegations as required by the court's rules.

[00:03:56] Speaker 04:
So when the court said notice there, isn't it a little unfair for you to say that meant the products weren't even at issue in the case?

[00:04:03] Speaker 01:
Well, Your Honor, I think you have to think about Section 4 as initial disclosures writ large.

[00:04:07] Speaker 01:
And there are two parts of it.

[00:04:08] Speaker 04:
So wait, but isn't it true?

[00:04:09] Speaker 04:
I mean, do I have the facts right?

[00:04:11] Speaker 04:
I think you identified the products.

[00:04:14] Speaker 04:
And then you had an expert report delineating why those products were accused, what the infringement contentions were.

[00:04:20] Speaker 04:
And I skipped one thing, which was also there's a lot of discovery in all of those products in the interim.

[00:04:26] Speaker 04:
And you're saying that just because no claim charts were provided, that means those products were never an issue in that first case.

[00:04:32] Speaker 04:
And so therefore, you can file a second case.

[00:04:34] Speaker 04:
Is that right?

[00:04:35] Speaker 01:
That's close.

[00:04:35] Speaker 01:
What I'm saying is that the initial accused products list was not binding.

[00:04:40] Speaker 01:
That's something that under Delaware's local rules, the plaintiff has permission to supplement.

[00:04:45] Speaker 04:
Yeah, but you just continued on with it.

[00:04:45] Speaker 04:
You got discovery on it.

[00:04:47] Speaker 04:
And then you had an expert report on it.

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

[00:04:50] Speaker 04:
How can you possibly say they weren't an issue?

[00:04:52] Speaker 04:
And that somehow, because you didn't provide claim charts, the very thing

[00:04:56] Speaker 04:
that you should have provided for your export report not to be dismissed is the thing that allows you to file a second lawsuit.

[00:05:03] Speaker 01:
Well, I'll walk you through the history of what happened in Orem v.

[00:05:05] Speaker 01:
1.

[00:05:05] Speaker 01:
So we filed that accused products list.

[00:05:07] Speaker 01:
And then nine days later, under Section 4C of the Delaware's local standard, we served our infringement contentions.

[00:05:15] Speaker 01:
Those charted one product, the Rebel 4, as an exemplary product of all the products we had named.

[00:05:20] Speaker 01:
That was our position.

[00:05:21] Speaker 01:
LG sent us a letter in April 2019 that said, since you've only charted one product, we believe that only one product is accused here, and you have not

[00:05:31] Speaker 01:
sufficiently accused the other products.

[00:05:34] Speaker 01:
That's in the appendix.

[00:05:36] Speaker 03:
Well, did you ever amend your complaint?

[00:05:38] Speaker 03:
I mean, your view was that the non-Rebel 4 products were in arrendi 1, right?

[00:05:43] Speaker 03:
Did you ever amend your complaint to explicitly remove them?

[00:05:47] Speaker 01:
The complaint was actually in 2012, and that complaint didn't mention these problems.

[00:05:52] Speaker 02:
We're amending the Section 4A disclosures to delete all of those scores of accused products that don't fit within the Rebel 4 category.

[00:05:59] Speaker 01:
There were eight categories of accused products, as I understand.

[00:06:02] Speaker 01:
That's right.

[00:06:03] Speaker 01:
We didn't amend, because we were under the impression that this dispute was not an issue.

[00:06:06] Speaker 01:
So LG sent us that letter in April 2019.

[00:06:08] Speaker 02:
But just following up on the story, OK, so you do your claim chart for the Rebel 4.

[00:06:14] Speaker 02:
And then there's this discussion back and forth about how Rebel 4 is maybe not exactly representative of all 200 accused products.

[00:06:22] Speaker 02:
And so then there was an agreement that there would be eight different categories of accused products.

[00:06:27] Speaker 02:
Rebel 4 being the representative product for category one.

[00:06:31] Speaker 02:
But then you never went forward and did claim charts for the other seven categories.

[00:06:36] Speaker 02:
And I guess the question I have is, why didn't you do that?

[00:06:40] Speaker 01:
Your Honor, at that point, we didn't think there was a live dispute about additional claim charts being necessary.

[00:06:46] Speaker 01:
As part of that representative products agreement that you referenced, LG did not ask for additional claim charts.

[00:06:51] Speaker 01:
It was not mentioned as part of that agreement.

[00:06:54] Speaker 01:
LG never asked you after that?

[00:06:56] Speaker 01:
For claim charts?

[00:06:58] Speaker 01:
They raised it one more time during fact discovery in an interrogatory response.

[00:07:02] Speaker 01:
That was two days before written fact discovery closed.

[00:07:05] Speaker 02:
But just so I understand, the entire premise of identifying eight different categories was because they operated somehow differently.

[00:07:15] Speaker 02:
These categories were somehow distinct from each other.

[00:07:18] Speaker 02:
And all you had done up to that point was a claim chart for the Rebel 4 category.

[00:07:24] Speaker 02:
And the question still comes down to, why didn't you do a claim chart for the other seven categories?

[00:07:29] Speaker 01:
Our position at the time was that they were sufficiently similar that we didn't need to, because the Rebel 4 claim chart did cover them.

[00:07:35] Speaker 01:
OK.

[00:07:36] Speaker 02:
So then that tells me that you were under the impression that all of the accused products were still in play.

[00:07:42] Speaker 02:
And you subjectively, for whatever reason, thought that the Rebel 4 claim chart would be able to cover all 200 accused LG products.

[00:07:52] Speaker 02:
We did, Your Honor.

[00:07:53] Speaker 01:
We did, Your Honor.

[00:07:53] Speaker 01:
And that's because the information about how these products differ is in LG's possession.

[00:07:59] Speaker 01:
That's something that LG knows we do.

[00:08:00] Speaker 02:
And then LG gave you lots of fact discovery, didn't they?

[00:08:03] Speaker 02:
They gave you all the technical documents.

[00:08:05] Speaker 02:
They made a corporate executive available who actually did testify, gave you all the financials on all these different

[00:08:12] Speaker 02:
categories of products and yet you didn't come forward with a claim chart and so by the time fact discovery closed and then you came out with the expert report now asserting all kinds of interesting never before seen infringement theories on several other non-Rebel 4 categories of products

[00:08:32] Speaker 02:
The district court, I think, reasonably found that this was too late to bring this up because you never did claim charts that you were obligated to do under Section 4C.

[00:08:45] Speaker 01:
Well, Your Honor, from our perspective, what happened was LG raised this dispute by the claim charts not being sufficient in April 2019, and then, yes, proceeded to go through all of the full discovery and all of these products.

[00:08:56] Speaker 01:
We didn't think there was still a live issue about that.

[00:08:58] Speaker 01:
They didn't move to compel on it like other defendants did.

[00:09:01] Speaker 01:
They didn't raise it for Rendy until two days before fact discovery closed.

[00:09:06] Speaker 01:
So here we are doing all of this discovery on the non-Rebel 4 products.

[00:09:09] Speaker 01:
There's been no mention of needing additional claim charts on those.

[00:09:13] Speaker 01:
And then two days before written fact discovery closed.

[00:09:15] Speaker 02:
Well, I guess before we finish up with go on and on and on, I think the point that is underscoring all of this is that everybody believed that all of these accused products were in a REN-D1.

[00:09:29] Speaker 02:
By the time you filed your expert report after fact discovery closed, you still believed all the accused products were in a REN-D1.

[00:09:36] Speaker 02:
And so the district court said, these products are all in Rendy 1.

[00:09:41] Speaker 02:
It's just that you failed to fulfill your discovery obligations under Section 4C.

[00:09:47] Speaker 02:
And that's why your expert report is going to be limited and truncated the way it has been.

[00:09:52] Speaker 02:
But nevertheless, all of those products are still in Rendy 1.

[00:09:55] Speaker 02:
So therefore, you can't go running around and erecting Rendy 2 and having to do over.

[00:10:01] Speaker 02:
And I guess at this point, I don't see anything that's wrong with that.

[00:10:05] Speaker 01:
Your Honor, a couple of responses to that.

[00:10:07] Speaker 01:
One, there's no do over here because nothing needs to be redone.

[00:10:10] Speaker 04:
But also, there's a summary judgment motion pending in the case?

[00:10:13] Speaker 01:
Your Honor, LG did.

[00:10:14] Speaker 04:
There was a summary judgment motion pending at the time of your briefing, right?

[00:10:18] Speaker 01:
At the time of our briefing in this case, in Rendy 2, LG filed a motion for summary and judgment of non-infringement in Rendy 1.

[00:10:25] Speaker 01:
And what that was, was it wasn't a motion to determine whether or not the non-rebel foreproducts actually practiced the patent.

[00:10:31] Speaker 01:
It was a no evidence motion.

[00:10:32] Speaker 01:
It tried to convert the court's discovery ruling, which had held that these products weren't sufficiently accused.

[00:10:39] Speaker 01:
And or any could not go forward on them.

[00:10:41] Speaker 01:
That was that was not a dispositive motion.

[00:10:43] Speaker 04:
That was order that was a Ruling that these products had been sufficiently accused to actually go forward to trial on them or any there's a motion for summary judgment of non-infringement on the products in the or any one case and then that was denied Yes Why doesn't that?

[00:11:02] Speaker 04:
additionally show that the or any one products were I mean that the

[00:11:08] Speaker 04:
products at issue in Arendi 2 were in fact at issue in Arendi 1.

[00:11:13] Speaker 01:
Well, what happened there is that was denied without prejudice to this appeal.

[00:11:16] Speaker 01:
And so if the district court really thought, yes, these products are at issue in Rendy 1, and therefore I should take my discovery order and convert it into summary judgment of non-infringement because these products actually are going forward here to a merits judgment, it could have easily vetted that motion.

[00:11:31] Speaker 04:
You're saying that the denial of the summary judgment without prejudice shows that the district court wasn't sure if the same products were at issue in the two cases?

[00:11:40] Speaker 01:
I'm saying it could have banned that motion.

[00:11:42] Speaker 01:
And instead, it deferred to this court to figure out if claim splitting exists here.

[00:11:47] Speaker 01:
And I submit that claim splitting does not exist, because the Rebel 4 products that are actually going to trial in Arendi 1 are different from the non-Rebel 4 products that

[00:11:57] Speaker 03:
Well, that may be true, but as Judge Chen was asking you, whose fault is that?

[00:12:02] Speaker 03:
And why do you get a do-over?

[00:12:04] Speaker 03:
Because you may have dropped the ball, and you can still appeal that to us, and the process is still ongoing on a Rendy 1.

[00:12:12] Speaker 03:
But why does that allow you to file a separate case?

[00:12:17] Speaker 03:
I mean it's one thing I guess and I'm not positive but I assume if you can amend a complaint and in certain circumstances you affirmatively say I'm taking this out and I don't know what the rules are and we don't have a district court opinion on that but how here were you never took this stuff out you maintained it was in

[00:12:36] Speaker 03:
And you're feeling like, well, we may have messed up, arguably, or the district court messed up by making certain procedural arguments.

[00:12:45] Speaker 03:
So now we'll just move forward to get around that and do another case in the meantime.

[00:12:50] Speaker 03:
Isn't that what's happening here?

[00:12:51] Speaker 01:
Well, Your Honor, I would say that there are consequences from what happened here.

[00:12:55] Speaker 01:
And so the district court found that these products weren't sufficiently accused, and we couldn't move forward in Arendi 1.

[00:13:00] Speaker 01:
So we filed Arendi 2 because they're different products.

[00:13:02] Speaker 01:
We could have started out as two different cases at the outset, because LG has told us they're different products when it comes to material.

[00:13:10] Speaker 03:
But what was your position?

[00:13:11] Speaker 01:
Our position was that they were the same, and that we were validly in the first case.

[00:13:16] Speaker 01:
But when the district court ruled that that was not the case, and LG argued that that was not the case because they're different, there was no claim splitting when we filed a new case.

[00:13:24] Speaker 01:
And filing a new case six years after we filed the first case had huge consequences for Arendy because it loses damages from before

[00:13:33] Speaker 03:
Well, I guess it depends on how you frame the issue.

[00:13:35] Speaker 03:
You're saying they were different products.

[00:13:38] Speaker 03:
One could frame the issue as you alleged infringement of all of these products.

[00:13:43] Speaker 03:
And you didn't make enough of an explicit showing with respect to all of the variations in your 4C submission.

[00:13:51] Speaker 03:
So that's a little bit different than saying these were always different products, and we weren't maintaining that they were the same, and yet about.

[00:13:59] Speaker 03:
Right?

[00:14:00] Speaker 01:
Right, Your Honor.

[00:14:00] Speaker 01:
And I think the fundamental problem here is that to say Section 4C is dispositive in a RENDI-1 of whether or not the products were in the case,

[00:14:07] Speaker 01:
Is is one thing you know I think that's probably right that they were the abridgment contentions were not sufficient to accuse the box but then to come to a rending to and look back at her any one and say Oh section 4c wasn't sufficient to put them in the case but section 4a was you've got a page 16 you agreed I think that

[00:14:31] Speaker 04:
The products, I think the court asked, first of all, you don't dispute that in foray.

[00:14:36] Speaker 04:
You accuse every single product that you now want to accuse in this, Orendi 2, correct?

[00:14:40] Speaker 04:
You agree with that.

[00:14:41] Speaker 04:
And the answer is, I agree with that, Your Honor.

[00:14:43] Speaker 04:
So they were all in our section foray disclosures.

[00:14:47] Speaker 04:
I'm just having a little bit of a hard time understanding your point right now that Orendi 2 involved different products.

[00:14:53] Speaker 01:
Yes, they were all accused of the initial Section 4A disclosures in Arendi 1.

[00:14:59] Speaker 04:
Then when we get to the Section 4C disclosures, we charted one product, the Rebel 4, and LG argued... So it's your answer, your argument presented right now saying that actually the different products is based on the fact that

[00:15:11] Speaker 04:
you had only identified and charted out one product in your four seat obligation.

[00:15:16] Speaker 01:
That's right.

[00:15:17] Speaker 01:
And the district court found and LG argued that that only captured that one product.

[00:15:21] Speaker 01:
And the products that represented the rebel four products.

[00:15:23] Speaker 02:
Let's say we affirm here, because we think all of these accused products in Arendi 2 are and still are in Arendi 1.

[00:15:34] Speaker 02:
you'll still be able to make your 4A, 4C argument in any appeal from a Rendy 1, right?

[00:15:41] Speaker 02:
Because as I understand, your theory is no accused product is really, really part of the litigation until after you have submitted your Section 4C claim chart as to those accused products.

[00:15:57] Speaker 02:
So you can just address that issue then in any appeal in a Rendy 1, right?

[00:16:04] Speaker 01:
Your honor, that's theoretically possible.

[00:16:06] Speaker 01:
But I would say that justice delayed is justice denied.

[00:16:09] Speaker 01:
And to go back to a RENDI 1, where there's no assigned judge right now, and to first we'll have to go to trial on the double four products after we get an assigned judge.

[00:16:17] Speaker 01:
That could easily be a year or more.

[00:16:19] Speaker 01:
And then we'll have to appeal that process.

[00:16:22] Speaker 03:
No, but that's not the way the system would work, is it?

[00:16:24] Speaker 03:
I mean, we have plenty of district court appeals, and there are some interim procedural rules where you can't take an interlocutory appeal.

[00:16:32] Speaker 03:
You can't sort of just independently carve those out of the case and move forward on another case because you may have to wait three years for the adjudication of those first issues.

[00:16:42] Speaker 03:
I mean, that's just not the way the rule.

[00:16:44] Speaker 03:
That's not the way things work, right?

[00:16:47] Speaker 01:
Right, I understand what you're saying, that there would be time involved in this process, which is the system.

[00:16:53] Speaker 01:
But this court has the opportunity to allow these claims to move forward now in Arendi 2 by putting that case back on track.

[00:17:01] Speaker 01:
There wasn't claim splitting for the reasons I mentioned, as Judge Chen indicated.

[00:17:07] Speaker 01:
You don't really have pox in a case until they're accused in Section 4C.

[00:17:12] Speaker 02:
I didn't say that.

[00:17:13] Speaker 02:
I was just repeating your words.

[00:17:16] Speaker 01:
Sorry, I didn't mean to put words in your mouth.

[00:17:17] Speaker 01:
Thank you.

[00:17:19] Speaker 01:
We don't agree with that, but go ahead.

[00:17:29] Speaker 01:
This court, as I've said, has the opportunity to put this case back on track in the Arendi 2 litigation.

[00:17:37] Speaker 01:
We don't believe there was claims put in because the trial and the ultimate judgment on level 4 in Arendi 1 will not be claimed proposes as to these products.

[00:17:44] Speaker 01:
And we don't believe that they're actually being litigated to a merits judgment in Arendi 1 because the court held that they weren't sufficiently accused there under the Section 4C disclosures.

[00:17:55] Speaker 01:
So with that, I'll save any remaining time I have for rebuttal.

[00:17:57] Speaker 01:
You don't have any, but we'll restart a couple minutes.

[00:17:59] Speaker 01:
Thank you.

[00:18:06] Speaker 00:
May it please the court, Andy Schwentger on behalf of LG Electronics.

[00:18:11] Speaker 00:
This appeal involves a very narrow issue.

[00:18:15] Speaker 00:
Arendi filed this duplicative lawsuit in an attempt to get around a discovery sanction in Arendi 1.

[00:18:20] Speaker 03:
Let me ask you just though, if they could actually come in at some point, and I'm not sure what point that is, and said, OK, we're going to amend our complaint and our Fortune A, and explicitly remove these non-Rebel 4 products.

[00:18:35] Speaker 03:
Would that have saved them?

[00:18:38] Speaker 03:
In other words, could they then subsequently pursue a new complaint, a different complaint involving those products?

[00:18:46] Speaker 00:
Well, Judge Prost, I think it would depend on how that all played out.

[00:18:50] Speaker 00:
But here, obviously, that's not what happened.

[00:18:52] Speaker 00:
They never amended their complaint or their Section 4A disclosure.

[00:18:56] Speaker 03:
So your view is just as a matter of reality, those claims are still in the case, even though they failed in their fourth C disclosures to explain them in a sufficient degree to be able to reveal them.

[00:19:10] Speaker 00:
Absolutely, Your Honor.

[00:19:10] Speaker 00:
Yes.

[00:19:11] Speaker 02:
Just following up on Judge Prost's question, what

[00:19:16] Speaker 02:
after there was this negotiation of where there was an understanding that all of the accused products fell into one of eight different buckets.

[00:19:25] Speaker 02:
And Rebel Four was the representative product for Bucket One, but then Arendy at that point decided

[00:19:35] Speaker 02:
that it wouldn't want to keep going in this particular litigation to chase after the other seven buckets and then attempted to delete all of those itemized products from its Section 4A disclosures.

[00:19:52] Speaker 02:
Would it, at that point in time, have been free to have filed a new complaint with

[00:19:59] Speaker 02:
accusing one or all of those seven other buckets of accused products?

[00:20:04] Speaker 00:
Well, so Judge Chen, the way that the rules in Delaware work is there are deadlines for submitting these disclosures.

[00:20:12] Speaker 00:
And then if a party wishes to amend the disclosures afterwards, they need to show good cause.

[00:20:18] Speaker 00:
And so there was a deadline in the schedule for Arendi to submit its Section 4A disclosures.

[00:20:26] Speaker 00:
They did that on the deadline.

[00:20:27] Speaker 00:
So if they wanted to amend the Section 4A disclosures after that, they would have had to show good cause under the district courts and the Third Circuit law.

[00:20:39] Speaker 00:
And LG certainly would have opposed to that.

[00:20:42] Speaker 03:
Because LG's- OK, but let's assume it plays out.

[00:20:46] Speaker 03:
And the district court approves the amendment.

[00:20:49] Speaker 03:
So they take these non-rebel products out of this case.

[00:20:55] Speaker 03:
Does that give them a basis for coming in with the rending too?

[00:20:59] Speaker 03:
Different case, but in those circumstances, can they get a do-over?

[00:21:09] Speaker 03:
I mean, I know your position is there's no way that the district court should be granting that kind of motion to amend at that stage, because there's not good cause.

[00:21:17] Speaker 03:
But assuming hypothetically that there is a case in which there is good cause to amend the complaint or the 4A disclosures, in those circumstances, there wouldn't be this claim splitting or whatever problem.

[00:21:30] Speaker 00:
Sure.

[00:21:31] Speaker 00:
I would agree that there are circumstances.

[00:21:33] Speaker 00:
There may be circumstances where, for whatever reason, the district court orders

[00:21:39] Speaker 00:
These products are not in this case.

[00:21:41] Speaker 00:
We're going to set these aside for a different case another day.

[00:21:46] Speaker 00:
That's obviously nothing at all like what happened here.

[00:21:50] Speaker 00:
But there may be circumstances like that.

[00:21:54] Speaker 00:
Although even in that situation, district court judges can stage serial trials.

[00:22:00] Speaker 00:
If there are too many products for one trial, they can hold one trial and then hold another trial later on.

[00:22:08] Speaker 00:
And it's still part of the same case.

[00:22:11] Speaker 03:
Is this the case?

[00:22:11] Speaker 03:
We've had a lot of cases this week.

[00:22:13] Speaker 03:
Is this a case that was filed, like, in 2012?

[00:22:18] Speaker 00:
Yes, Your Honor.

[00:22:18] Speaker 03:
So they're making it.

[00:22:21] Speaker 03:
If they get a RENDI II on all of these products, isn't that going to affect?

[00:22:25] Speaker 03:
I mean, they're going to get six years before 2012 on a RENDI I. Not so for a RENDI II, right?

[00:22:33] Speaker 03:
In terms of the damages bucket we're talking about here, the potential for damages, there's an astronomical difference between the two cases, right?

[00:22:44] Speaker 00:
That is theoretically possible.

[00:22:47] Speaker 00:
I believe the way it played out here was there were products from before 2012 that Arendy identified in their Section 4A disclosures that were not even part of

[00:23:02] Speaker 00:
the expert infringement report.

[00:23:07] Speaker 00:
And so I don't believe the damages base in a RENDI-1 even goes back that far.

[00:23:17] Speaker 03:
Has a new judge been assigned to this case?

[00:23:21] Speaker 03:
I know they did something.

[00:23:23] Speaker 03:
We got a 28-J the other day.

[00:23:25] Speaker 03:
Was a new judge put on this case?

[00:23:28] Speaker 00:
Not yet, Your Honor.

[00:23:30] Speaker 00:
No, it's still pending.

[00:23:33] Speaker 04:
I'd like to ask you the same question I asked your friend on the other side, which is, can you identify or are you aware of a single case in which a party's expert report on infringement was excluded and then thereafter the district court allowed the filing of a second case in order to be able to pursue those accused products?

[00:23:53] Speaker 00:
No, just all.

[00:23:54] Speaker 00:
I'm not aware of any such case.

[00:23:59] Speaker 00:
So anyway, the ultimate issue here is whether the district court abused its discretion.

[00:24:10] Speaker 00:
It was an application of the local rules, an interpretation of the local rules, as well as an interpretation of its own order, all of which this court owes deference to.

[00:24:22] Speaker 00:
There's clearly no abuse of discretion here.

[00:24:25] Speaker 00:
Everything is 100% supported by the procedural history for anyone.

[00:24:31] Speaker 00:
And is there any further question?

[00:24:34] Speaker 02:
Could it be de novo?

[00:24:37] Speaker 02:
What we're simply trying to do is interpret whether these products are still in a RENDI-1 or not.

[00:24:44] Speaker 02:
Not whether what happened in the RENDI-1 was correct or incorrect or an abuse of discretion, but just whether those accused products remain in that first case.

[00:24:59] Speaker 00:
And why wouldn't that be at de novo for us?

[00:25:03] Speaker 00:
Because Judge Chen, that issue hinges on the district court's application of its own local rules and understanding of its prior order in Orndy 1.

[00:25:13] Speaker 00:
And those issues are all reviewed for abuse of discretion.

[00:25:18] Speaker 00:
The Hal Medica case by this court

[00:25:23] Speaker 00:
822 F3rd at 1324 explains that this court defers to the district court when interpreting and enforcing local rules, so as not to frustrate local attempts to manage patent cases according to prescribed guidelines.

[00:25:38] Speaker 04:
So wasn't LG's motion a motion to dismiss under Rule 12B6, which would in turn be reviewed de novo?

[00:25:50] Speaker 00:
12b6 motion would be reviewed de novo, but this is an unusual situation where the ruling hinges on the procedural history of a prior lawsuit.

[00:26:06] Speaker 03:
We may have to give deference, as we do often in obviousness cases or whatever.

[00:26:10] Speaker 03:
There were underlying questions of fact, and we defer to the judge's conclusion on that, but not to the ultimate question.

[00:26:18] Speaker 00:
And the ultimate question of whether a case is duplicative or is barred by claim preclusion, that may be reviewed de novo.

[00:26:31] Speaker 00:
But the underlying issues here are issues that would be given deference to the district court.

[00:26:38] Speaker 00:
Ultimately, at the end of the day, this is a district court managing its DACA.

[00:26:45] Speaker 03:
The sub-question is some of this is Third Circuit law and some of this is our law, right?

[00:26:51] Speaker 00:
Yes, Judge Prost.

[00:26:53] Speaker 00:
Most of the inquiry is Third Circuit law.

[00:26:57] Speaker 00:
The only subsidiary inquiry that we believe is governed by Federal Circuit law is whether the subject matter of two different cases is the same.

[00:27:12] Speaker 00:
And excuse me.

[00:27:15] Speaker 00:
That is, we believe, governed by Federal Circuit law.

[00:27:20] Speaker 02:
And that's de novo, right?

[00:27:24] Speaker 02:
Whether it's the same subject matter in two different cases.

[00:27:27] Speaker 00:
Whether the subject matter is the same as a de novo inquiry.

[00:27:32] Speaker 00:
But again, the subsidiary issues are factual, including, let's see,

[00:27:49] Speaker 02:
I'm just wondering whether these accused products are in Arendi 1 or not.

[00:27:53] Speaker 02:
Not whether the district court abused its discretion in Arendi 1 in determining that they are still in Arendi 1, but just that they haven't been litigated properly by the plaintiff.

[00:28:08] Speaker 00:
The issue is whether the products are in Arendi 1.

[00:28:14] Speaker 00:
I guess that specific question of the district court's view of whether the products are in or out of a RENDI-1, we believe that is an issue that this court should give deference to the district court on.

[00:28:34] Speaker 00:
Unless there are any further questions, I will cvf my time.

[00:28:36] Speaker 03:
Thank you very much.

[00:28:47] Speaker 01:
Thank you, Your Honor.

[00:28:48] Speaker 03:
But actually, I'll give you three or four if you need it, because I have a question about the burden of proof, just if you could speak to the last question we were asking your friend.

[00:28:56] Speaker 01:
Yes, I can start with that.

[00:28:57] Speaker 01:
The standard of review here is de novo for the core question of whether or not these claims are duplicative.

[00:29:03] Speaker 01:
That's a question of federal circuit law.

[00:29:05] Speaker 01:
That's in the brain life case.

[00:29:07] Speaker 01:
It makes clear that whether two claims of patent infringement are identical is a question of federal circuit law.

[00:29:15] Speaker 02:
I guess getting back to the other side point, though, is that to figure out whether these products are in Arendi 1 or not, we have to understand how the local rules operate.

[00:29:29] Speaker 02:
And the district court here, in this Arendi 2, interpreted and applied those local rules.

[00:29:38] Speaker 02:
And doesn't that get a lot of deference?

[00:29:42] Speaker 01:
Well, Your Honor, I would say that what matters is whether the federal circuit, under its law, thinks that these claims were included in Arendt I. And yes, the local rules do dictate a process for that.

[00:29:55] Speaker 01:
And they dictate a two-part process, as we discussed, for A and for C. And the district court found that under Fort C, these products were not accused in Arendt I.

[00:30:04] Speaker 01:
So therefore, there's no claim splitting when you get over to a RENDI-2 because the district court found, applying its local rules, that when the Section 4C disclosures were done, these products weren't actually accused.

[00:30:16] Speaker 01:
I do also want to address the damages point.

[00:30:19] Speaker 01:
There has been a huge consequence of refiling later.

[00:30:23] Speaker 01:
By filing in 2020, damages will only go back to 2014.

[00:30:26] Speaker 01:
As Judge Prust indicated, this case did start in 2012.

[00:30:29] Speaker 01:
So damages from before 2014 for these products are no longer available to our MD.

[00:30:35] Speaker 01:
I also want to go back to the idea that there was a discovery violation here.

[00:30:40] Speaker 01:
The court didn't find that.

[00:30:41] Speaker 01:
The question on the motion to strike in Arendi 1, to strike the expert report, was aren't these products at issue in this case because we didn't think so?

[00:30:50] Speaker 01:
We would be prejudiced.

[00:30:51] Speaker 01:
This is LG's motion.

[00:30:53] Speaker 01:
We would be prejudiced if we had to defend against them here.

[00:30:55] Speaker 01:
And the court said, you're right.

[00:30:57] Speaker 01:
They aren't sufficiently accused in the infringement contentions.

[00:31:00] Speaker 01:
So you would be prejudiced if you had to defend against them here.

[00:31:03] Speaker 01:
They're not actually in this case.

[00:31:05] Speaker 01:
And so what happened to them was to file a rendi to at a huge cost to a rendi of giving up back damages.

[00:31:12] Speaker 01:
But that was not claim splitting when it did that.

[00:31:17] Speaker 01:
And I want to conclude by saying that there's a huge interest in justice here of allowing this valiant patent claim to be litigated on the merits.

[00:31:24] Speaker 01:
This is a patent that this court has seen before and upheld, and Orendi alleges widespread infringement by LG.

[00:31:34] Speaker 01:
The court has made no holding in Arendi 1 that Arendi was forever barred from pursuing these claims on the merits or that it had forfeited or waived these claims.

[00:31:44] Speaker 01:
That's not something that has happened in Arendi 1.

[00:31:46] Speaker 01:
And when LG tried to get that kind of order, the court didn't grant it and deferred to this court to decide first, although these claims are properly in Arendi 2.

[00:31:55] Speaker 01:
If this court is

[00:31:58] Speaker 01:
inclined to affirm the dismissal of a remedy to, I would say that it would be proper to indicate that these claims should be litigated on the merits somewhere and give guidance to the district court that these are legitimate patent claims that should be litigated to a judgment on the merits and they belong somewhere.

[00:32:17] Speaker 03:
Don't you think that we'd be going outside our lane with respect to our jurisdiction over this case?

[00:32:23] Speaker 01:
I think, Your Honor, you'd have to affirm, and you're right, we're in a Rendy 2.

[00:32:29] Speaker 01:
That's the case that's on appeal here.

[00:32:31] Speaker 01:
But I think some guidance to the district court, which is going to be a new judge receiving Rendy 1 for the first time, and that this court has already reviewed a substantial part of the record in that case,

[00:32:41] Speaker 01:
And that's concluded that there is some merit to proceed on the non-operable warplanes.

[00:32:47] Speaker 03:
So if you go forward on a Rendy 1, you'll have an opportunity, belated as it may be, to make whateverish arguments you want to make on the process questions, right?

[00:32:57] Speaker 03:
You've not forfeited those forever.

[00:32:59] Speaker 03:
You can make those arguments in Rendy 1, right?

[00:33:01] Speaker 01:
We can make those arguments in Rendy 1 if this court sends us back there.

[00:33:05] Speaker 03:
Thank you.

[00:33:05] Speaker 03:
We thank both sides.

[00:33:07] Speaker 03:
The case is submitted.