[00:00:00] Speaker 03:
The first argued case is Hohenberg Inventions versus Valve Corporation, 2021-22-96, is Israel.

[00:00:14] Speaker 02:
Good morning, Your Honors.

[00:00:15] Speaker 02:
May it please the Court.

[00:00:17] Speaker 02:
Subject to the court's questions, I plan to address two primary issues in the limited time that I have.

[00:00:26] Speaker 02:
Well, it looks like Judge Clevenger may have a question already.

[00:00:31] Speaker 02:
I plan to address the district court's error in failing to find the asserted claims invalid as indefinite, and also the district court's error in denying

[00:00:47] Speaker 02:
the motion for judgment as a matter of law, where there was not substantial evidence in the record, was not substantial evidence to support the jury's verdict of infringement.

[00:01:03] Speaker 02:
First, I think it's helpful just to keep in mind the claim limitation that's at issue here.

[00:01:08] Speaker 02:
It recites each back control, including an elongate member,

[00:01:14] Speaker 02:
So it just says that the member has to be elongate, that it extends substantially the full distance between the top edge and the bottom edge, and that it's inherently resilient and flexible.

[00:01:27] Speaker 03:
Ms.

[00:01:27] Speaker 03:
Israel, when I look at the language that you're talking about and the drawings in the patent, it seems to me they're fairly definite.

[00:01:41] Speaker 03:
And if I had any doubt here, I would

[00:01:44] Speaker 03:
wonder about infringement.

[00:01:47] Speaker 03:
But infringement is a question of fact, and you had a jury verdict here.

[00:01:53] Speaker 03:
That seems to me to be the hill you have to climb.

[00:01:57] Speaker 02:
Well, let me see first if I can tell you why the claims are indefinite, and then I will turn to the infringement issue.

[00:02:05] Speaker 02:
So first, in this patent specification, you've got one example.

[00:02:11] Speaker 02:
You've got one example of these

[00:02:14] Speaker 02:
of what would correspond to an elongate member.

[00:02:18] Speaker 02:
And that's the one example in the spec is the so-called, you've got these paddles that are elongated in shape.

[00:02:28] Speaker 02:
They're at column three, lines 51 to 56 of the patent and shown in figures two and three.

[00:02:33] Speaker 02:
So basically those kind of popsicle stick looking controls that are on the back.

[00:02:41] Speaker 02:
And beyond that, you've got in the file history, you have the Ogata.

[00:02:49] Speaker 02:
There was a distinguished, the applicants distinguished over Ogata at Appendix 1728.

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And Ogata discusses a rotation actuator, and that includes an ellipsoidally shaped head.

[00:03:08] Speaker 02:
And you can see the Ogata reference in that discussion at Appendix 2506.

[00:03:14] Speaker 04:
Which aspect of the limitation are we talking about?

[00:03:20] Speaker 04:
Are we talking about elongate?

[00:03:22] Speaker 02:
So I'm starting with the elongate.

[00:03:23] Speaker 04:
Or about the measurement feature?

[00:03:25] Speaker 02:
Yeah.

[00:03:25] Speaker 02:
I'm starting with the elongate, but I will go to the measurement feature in just a minute.

[00:03:30] Speaker 04:
So then what's your response to Judge Lurie's, the presiding judge's observation

[00:03:37] Speaker 04:
The drawings alone suffice to eradicate any indefinite concern.

[00:03:45] Speaker 02:
Well, we disagree.

[00:03:47] Speaker 02:
This is a case where you've got one example like the interval.

[00:03:50] Speaker 04:
But look at the drawings.

[00:03:52] Speaker 04:
I think the presiding judge said in his view, he thought the drawings doomed your challenge.

[00:04:00] Speaker 04:
Do you understand him to say that?

[00:04:03] Speaker 04:
I did, yes.

[00:04:04] Speaker 04:
Then what's your response?

[00:04:06] Speaker 04:
that the drawings show, I guess we're looking at figure two and figure three are the only figures that, and yes, in the very beginning, it's figures two and three, right?

[00:04:25] Speaker 04:
Right.

[00:04:25] Speaker 04:
That show this long thing looks like a little long hot dog.

[00:04:31] Speaker 02:
It looks like a little long hot dog.

[00:04:33] Speaker 04:
And then in the... And would you agree that by anyone's definition of the term elongate, those two little hot dogs are elongate?

[00:04:46] Speaker 02:
Those two hot dogs, based on it being used... Hot dogs elongate, yes or no?

[00:04:50] Speaker 02:
Hot dogs would be elongate.

[00:04:53] Speaker 04:
Well, I think that's probably what Judge Lurie had in mind.

[00:04:58] Speaker 04:
So is a drawing in a non-design patent sufficient evidence to show deafness?

[00:05:14] Speaker 04:
This is not a design patent case.

[00:05:16] Speaker 02:
No, it's not a design patent case.

[00:05:18] Speaker 02:
And I think what happened here is the issue is elongate, though, is the term of degree.

[00:05:25] Speaker 02:
And so the question isn't,

[00:05:27] Speaker 02:
A hot dog would be elongated.

[00:05:29] Speaker 02:
The question is, what is the zone of uncertainty as to what is not elongated?

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And that's where there needed to be some guidance given.

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There was not reasonable certainty.

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as to objective guidance as to what that term of degree means, how far it extends.

[00:05:49] Speaker 02:
So a hot dog may be elongated.

[00:05:51] Speaker 02:
So what we know from the specification is you've got those paddles shown in Figure 2 that are elongate, and then we know the Ogata actuator is not.

[00:06:01] Speaker 02:
And we don't know what in between is or is not.

[00:06:06] Speaker 04:
The prior reference that you're talking about that was in the IPR was a little button, right, around?

[00:06:12] Speaker 02:
It was, although it has, it's more of a, I think it's closer to actually a joystick little actuator.

[00:06:19] Speaker 04:
From the aspect of the limitation that Neil's calling for the measurement, substantially the full distance between A and B, so where in the patent would be infringer told how you know what the top edge is and what the bottom edge is?

[00:06:40] Speaker 02:
Thank you for asking that question, Judge Clevenger.

[00:06:43] Speaker 02:
I think that you hit on a question that illustrates why we think that that part of the term is indefinite.

[00:06:54] Speaker 02:
It doesn't.

[00:06:55] Speaker 04:
You have to know where the top edge is and the bottom edge is, right?

[00:06:59] Speaker 02:
You have to know where the top edge is and the bottom edge is.

[00:07:01] Speaker 02:
And depending on where you pick a top edge and a bottom edge, unless you know how to measure that, unless you know how to measure what the full distance is, you get to figure it out.

[00:07:09] Speaker 04:
Well, if you know what the top edge is and the bottom edge is, you know how to measure the full distance, even with a yardstick or ruler.

[00:07:18] Speaker 04:
Correct.

[00:07:19] Speaker 04:
But you can measure it.

[00:07:19] Speaker 04:
And then after you measure it, you're going to have to deal with the question of whether or not it is substantially where it shows up in lots and lots of patents.

[00:07:30] Speaker 04:
So my only question is, how do you know where the top and the bottom is?

[00:07:37] Speaker 04:
The written description tells you where the top is.

[00:07:43] Speaker 04:
The top is where the buttons are on top.

[00:07:45] Speaker 04:
And you look at figure one.

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So they'll never tell you where the bottom is.

[00:07:54] Speaker 04:
You have this device that's shaped like this roughly the same way.

[00:07:58] Speaker 04:
So is the bottom somewhere in here or is it over here?

[00:08:06] Speaker 02:
It's not clear.

[00:08:07] Speaker 00:
Why do we have to know where the top and the bottom are?

[00:08:11] Speaker 00:
Isn't it sufficient for a person with a skill in the art to know that the device can be used for the purpose it was designed and claimed for?

[00:08:19] Speaker 00:
That is, just like the elongate member, if people with different sized hands can use at least one of their fingers to operate that back paddle or button,

[00:08:29] Speaker 00:
then it extends sufficiently or substantially the full distance between whatever the top and the bottom is.

[00:08:37] Speaker 00:
What in this record clearly and convincingly holds to the contrary?

[00:08:44] Speaker 02:
So, well, you can look at the declaration of Mr. Desmellek that was submitted in the claim construction and indefiniteness briefing.

[00:08:56] Speaker 00:
And there was a competing declaration from the plaintiff, correct?

[00:09:00] Speaker 02:
Not at that stage.

[00:09:02] Speaker 02:
No, not in the claim construction stage.

[00:09:04] Speaker 02:
His declaration is at appendix 3921 to 24.

[00:09:09] Speaker 00:
So was there only defense expert testimony in the record at the claim construction stage?

[00:09:15] Speaker 02:
Yes, that's my understanding.

[00:09:17] Speaker 00:
And so do we have a subsidiary factual finding with respect to indefiniteness that we review for clear error?

[00:09:24] Speaker 02:
There was no finding made on that.

[00:09:27] Speaker 02:
In fact, if you look at appendix 14, there's a footnote in the order there.

[00:09:40] Speaker 02:
where the court, footnote five, where the court actually said that there had been a motion to strike Mr. Desmelec's declaration and the case had been transferred and the court struck it regarding, it struck the plaintiff's motion as moot and didn't consider the declaration.

[00:10:06] Speaker 00:
Let me ask you this.

[00:10:08] Speaker 00:
You spent a lot of time in the briefing on the full distance basis for indefiniteness, but the term that you actually ask the district court to invalidate as indefinite is the extent, substantially the full distance between the top and the bottom edge.

[00:10:24] Speaker 00:
You never specifically ask just that full distance itself be construed as indefinite.

[00:10:30] Speaker 00:
Is that correct?

[00:10:32] Speaker 02:
Well, we were focusing on the full limitation.

[00:10:35] Speaker 02:
And I think where the issue comes really, where the rubber meets the road, is really what does full distance mean in terms of how do you make that measurement?

[00:10:46] Speaker 00:
So how do you understand this substantially?

[00:10:47] Speaker 00:
It seems like the district court only clearly addressed the substantially portion of the claim term and didn't clearly address the full distance.

[00:10:57] Speaker 00:
Would you agree with that?

[00:10:59] Speaker 02:
Well, the district court did say that it meant, what the court said was it means that the full distance between the, let's see, that it means largely but not necessarily entirely the distance between the top and bottom edges.

[00:11:20] Speaker 02:
But then it didn't address how to measure that and it ignored the evidence that was in the record.

[00:11:27] Speaker 00:
And so did indefiniteness ever come up again at any point in the case in the district court?

[00:11:34] Speaker 02:
Well, yes.

[00:11:35] Speaker 02:
Well, Val did continue to argue the term was indefinite.

[00:11:38] Speaker 02:
You can see that in Appendix 3892.

[00:11:40] Speaker 02:
Which page?

[00:11:41] Speaker 02:
3892.

[00:11:46] Speaker 00:
Did you ever push the district court for a finding on where the top and the bottom are and how to measure the full distance?

[00:11:55] Speaker 02:
Oh, we did that in, I mean, to the extent that we did it in the claim construction briefing, we presented the declaration of Mr. Dismalik that the district court ignored.

[00:12:05] Speaker 00:
Right.

[00:12:06] Speaker 00:
So I guess if you feel the district court ignored the issue you put in front of it and the evidence you put in front of it, did the issue just die there or did it ever come up again?

[00:12:15] Speaker 02:
I'm not aware that the issue was renewed after that.

[00:12:21] Speaker 03:
Counsel, you're into your bottle, Tom.

[00:12:23] Speaker 03:
You can.

[00:12:24] Speaker 03:
Save it or continue as you wish.

[00:12:27] Speaker 02:
Let me take one minute.

[00:12:33] Speaker 02:
So first, by failing to resolve the issue of claim construction,

[00:12:38] Speaker 02:
the district court further erred by submitting an issue on where the court should have made a construction to the jury under 02 micro.

[00:12:51] Speaker 02:
But let me also address the issue of the substantially inherent, substantially

[00:12:58] Speaker 02:
the issue of infringement.

[00:13:00] Speaker 02:
There was no substantial evidence to support the verdict that the alleged... I'll just ask you this on infringement.

[00:13:06] Speaker 00:
Without objection, it seems you all put the accused device in the hands of all the jurors, and your own side argued this is a simple technology.

[00:13:15] Speaker 00:
All you need is the patent and the device that's in your hands.

[00:13:20] Speaker 00:
Doesn't look like anyone asked the jury be instructed.

[00:13:23] Speaker 00:
Don't rely on your own sense impression of the device we put in your hands.

[00:13:28] Speaker 00:
When you argue, here's the device, play with it yourself, and decide infringement, and then you don't like the outcome, how could that not be substantial evidence?

[00:13:44] Speaker 02:
It doesn't support the device itself, the controller itself, and the evidence that was in the record supports what

[00:13:55] Speaker 02:
Ironberg referred to as the elongate members had these ribs behind the ends that were rigid and did not flex.

[00:14:04] Speaker 02:
They took the exact opposite position that they took in the Interparties Review Proceeding with respect to what this term means, because the term requires that the elongate member itself has to be able to be bent or flexed by a load.

[00:14:18] Speaker 02:
And there's nothing in the record to support that.

[00:14:21] Speaker 02:
What the evidence supports is that the ribs were added to prevent flexing, to prevent bending and flexing.

[00:14:34] Speaker 02:
And moreover, I'll save the rest of my time for a bottle, thanks, because I have any left.

[00:14:41] Speaker 03:
We'll give you two minutes back for a bottle.

[00:14:43] Speaker 03:
Thank you.

[00:14:44] Speaker 03:
Mr. Tampkin?

[00:14:48] Speaker 01:
Good morning, your honors.

[00:14:49] Speaker 01:
May it please the court?

[00:14:52] Speaker 01:
I think during Mrs. Rowe's argument, the court addressed the major issues.

[00:14:56] Speaker 01:
And I want to pick up on some of those, but I want to start by just saying something that we all, I think, acknowledge.

[00:15:02] Speaker 01:
This is a simple patent.

[00:15:03] Speaker 01:
As Judge Stark indicated, the jury was able to look at the patents, look at the instructions on claim construction, and ultimately hold the product in its hand.

[00:15:15] Speaker 01:
This was an interesting case.

[00:15:16] Speaker 01:
This was one of the first cases that was tried over Zoom.

[00:15:19] Speaker 01:
And so as a result, all of the jurors actually received an alleged to be infringing product.

[00:15:27] Speaker 01:
They were able to hold it in their hand during the closing arguments

[00:15:31] Speaker 01:
during their deliberations, presumably, as well.

[00:15:33] Speaker 04:
So they got to figure out for themselves what the top is and what the bottom is.

[00:15:37] Speaker 01:
That's exactly right.

[00:15:39] Speaker 04:
And the reality is, it's what is the... Let me just ask you this.

[00:15:43] Speaker 04:
If you were sitting in the jury box or in the jury room and you were talking about what is the top and the bottom, and somebody said, well, let's look at the patent, the patent will tell us.

[00:15:54] Speaker 04:
Patents always tell you clearly what the meets and bounds of invention is.

[00:16:00] Speaker 04:
Will you point to me in the patent where I would learn where the top and the bottom is?

[00:16:06] Speaker 01:
Certainly the top edge is referenced in the specification.

[00:16:10] Speaker 04:
The top edge is the word in the claim, right?

[00:16:13] Speaker 04:
Correct.

[00:16:14] Speaker 04:
So top edge is referenced because they say that's the place where in the patent of things buttons are on the top of it.

[00:16:23] Speaker 01:
Right.

[00:16:24] Speaker 01:
Yeah, so where's the bottom?

[00:16:25] Speaker 01:
The bottom, as the patent describes, the bottom is the opposite of the top, if you will.

[00:16:30] Speaker 01:
And that's sort of common English, which is, if the top's up here, the bottom's down here, it's all for orientation purposes.

[00:16:37] Speaker 04:
And I think there was a... Well, if I'm just looking at this device, the bottom could be either, what, either here or here or someplace in between.

[00:16:44] Speaker 01:
That would be up to the jury.

[00:16:45] Speaker 01:
Or in between.

[00:16:46] Speaker 01:
But the question is not how, what is the top edge?

[00:16:50] Speaker 04:
How did the jury get guided by the patent?

[00:16:52] Speaker 01:
Well, the jury can look at the descriptions in the patent and can look at the drawings in the patent.

[00:16:58] Speaker 01:
And the drawings indicate where the top was, and then certainly would indicate where the bottom edge is.

[00:17:04] Speaker 04:
The drawings indicate that the bottom could be anywhere on the line like this.

[00:17:10] Speaker 01:
Correct.

[00:17:11] Speaker 01:
The bottom could be anywhere on the line like this, and the bottom could change based on

[00:17:15] Speaker 01:
what the configuration of a controller is.

[00:17:20] Speaker 01:
You can have a controller, for example, that would be perfectly rectangular with no change on the bottom.

[00:17:26] Speaker 01:
And that would be very clear where the bottom edge is.

[00:17:30] Speaker 01:
But certainly, the bottom edge is the opposite of the top edge, which was described.

[00:17:35] Speaker 01:
And so I think- I forgot to look.

[00:17:37] Speaker 04:
Did your firm try this case?

[00:17:39] Speaker 04:
No, Your Honor.

[00:17:40] Speaker 01:
OK, somebody else?

[00:17:42] Speaker 00:
Indefinite was decided at the claim construction stage, correct?

[00:17:47] Speaker 01:
No, Your Honor.

[00:17:48] Speaker 01:
It was actually, there was a second motion on indefiniteness, and that's where indefinite was decided.

[00:17:55] Speaker 00:
Are you talking about the judging as a matter of law motion?

[00:17:58] Speaker 01:
No, there was a, I believe a second motion on indefiniteness.

[00:18:02] Speaker 01:
The judge... Yeah, if you can get me an appendix site for that.

[00:18:06] Speaker 01:
We will, while I'm doing that.

[00:18:09] Speaker 01:
I think one of the things that Your Honor raised was what was decided down below.

[00:18:15] Speaker 01:
What was the arguments with respect to indefiniteness?

[00:18:17] Speaker 01:
And at Appendix 11 in the judge's order, the judge made clear what the judge was deciding on indefiniteness.

[00:18:24] Speaker 01:
And particularly, the judge was looking at what does substantially mean and understood that's what the parties were arguing about.

[00:18:31] Speaker 00:
But it seems pretty clear from the brief excerpts that you gave us that the defendant was also arguing that you couldn't tell where the top and the bottom edge were, and so you couldn't tell what the full distance was.

[00:18:43] Speaker 00:
Didn't they argue that?

[00:18:45] Speaker 01:
They argued that to the jury, but they did not argue that necessarily to the judge.

[00:18:49] Speaker 00:
I think it's in their claim construction briefing as well, and they say that you overlooked that argument, and now they say the district court overlooked that argument as well.

[00:18:56] Speaker 01:
Well, I don't think that was really... That was in certainly a part of the claim construction

[00:19:02] Speaker 00:
briefs.

[00:19:02] Speaker 00:
And if you can tell me where the district court ruled on that argument, that would be helpful as well.

[00:19:06] Speaker 01:
I think the district court ruled on indefiniteness at Appendix 11 on the substantially portion.

[00:19:12] Speaker 04:
And that's where the judge... And that does not include a discussion of Tom and Bob.

[00:19:17] Speaker 01:
It does not directly include a discussion.

[00:19:19] Speaker 04:
It doesn't include it, does it?

[00:19:21] Speaker 01:
Well, it discusses the overall term.

[00:19:23] Speaker 01:
It says this is what the term is.

[00:19:25] Speaker 01:
And then it says, and what Valve has argued, what the appellant has argued to the district court was

[00:19:31] Speaker 01:
what does substantially mean, and then the court ruled on that.

[00:19:35] Speaker 04:
The court, I agree... Is there a possibility that the district court didn't rule on a piece of it that Valve was asking to have?

[00:19:43] Speaker 01:
I think you can make the argument that the district court didn't rule on the piece that Valve is arguing now, but that's not necessarily what Valve is... I thought there was something in their claim construction.

[00:19:54] Speaker 04:
briefs about top and bottom and major.

[00:19:56] Speaker 01:
In their claim construction briefs in terms of how to interpret the claim, yes.

[00:20:00] Speaker 01:
But in the supplemental brief regarding indefiniteness, which is Appendix 3873, Judge Stark, that was the second issue.

[00:20:11] Speaker 01:
And that was what was ultimately resolved in that.

[00:20:14] Speaker 00:
That's supplemental briefing on the motion that follows claim construction, you're saying?

[00:20:17] Speaker 00:
I think so.

[00:20:19] Speaker 04:
And that's not in our appendix, those briefs?

[00:20:23] Speaker 01:
I think it is, but I'm not certain.

[00:20:31] Speaker 01:
So going back to the issue that Judge Clevenger raised, you have a top, you have a bottom, and the bottom was understood to be the opposite of the top.

[00:20:40] Speaker 01:
What you're trying to do in claim construction, of course, as Your Honor is aware, is determine from the patent, as Your Honor has asked,

[00:20:47] Speaker 01:
What are these issues?

[00:20:48] Speaker 01:
It's not the question of, when I look at the accused product, do I use that to help interpret the patent?

[00:20:56] Speaker 01:
No.

[00:20:56] Speaker 01:
You look at the patent itself.

[00:20:58] Speaker 01:
And the patent, there's a top edge.

[00:21:00] Speaker 01:
The bottom is the opposite of the top edge.

[00:21:03] Speaker 01:
That was really all that was needed.

[00:21:05] Speaker 01:
And the question of then, is there infringement, is a question for the jury.

[00:21:09] Speaker 01:
As Judge Stark raised, if you have a top.

[00:21:11] Speaker 04:
We have case law on problems that get created when you end up

[00:21:16] Speaker 04:
with claims that require measurements.

[00:21:21] Speaker 04:
And two of those cases were cited against you by your adversary.

[00:21:26] Speaker 04:
You didn't respond to them.

[00:21:29] Speaker 04:
Dow and then another case.

[00:21:36] Speaker 04:
I just was curious.

[00:21:37] Speaker 04:
I mean, we do have the case law in the indefinite area that deals with claims that require measurements.

[00:21:45] Speaker 04:
And the question is, does the POSA know which measurement to use?

[00:21:51] Speaker 01:
If you look at all of those cases, Your Honor, like the Dow case, or I think it's either the Tebow or Takata case.

[00:21:58] Speaker 04:
Yeah, it is.

[00:21:59] Speaker 04:
Well, both those cases were cited front and center by your adversary in their brief, and you didn't respond to them, which suggested to me that you thought maybe they were hard for you to overcome.

[00:22:10] Speaker 01:
I don't think they're hard to overcome.

[00:22:12] Speaker 01:
You didn't even say they were inapplicable.

[00:22:14] Speaker 04:
You just didn't mention them.

[00:22:16] Speaker 01:
I apologize.

[00:22:17] Speaker 01:
I'll say it now.

[00:22:17] Speaker 01:
I don't think they're applicable.

[00:22:19] Speaker 01:
The reason I don't think they're applicable is because those are cases where there was a measurement that was ambiguous or unclear based on the patent itself.

[00:22:30] Speaker 01:
Here, there's no issue with respect to how to measure.

[00:22:33] Speaker 04:
So you agree that a claim that's calling for measurements can produce an indefinite question.

[00:22:40] Speaker 01:
I would have to agree with that, Your Honor.

[00:22:41] Speaker 01:
That's what those cases say.

[00:22:42] Speaker 04:
The question then would be, in our judgment, will this case falls within those two cases that we're talking about or outside of that?

[00:22:50] Speaker 01:
Sure.

[00:22:51] Speaker 01:
That being said, the reality is, here, this is a simple measurement.

[00:22:56] Speaker 01:
This isn't measurement molecular weight or measuring across a tiny particle where scientists try to determine how one measures this.

[00:23:05] Speaker 04:
Well, it's a simple thing, but when you

[00:23:08] Speaker 04:
try to figure out where the flex is, if there is any flex, it's not easy.

[00:23:14] Speaker 01:
Well, it actually is easy in this case because that back panel snaps off and the jury is able to press right on it for the flex point, your honor.

[00:23:25] Speaker 01:
There's a little button right on there that

[00:23:29] Speaker 01:
When you take it apart, you press a little button back there, and the back panel comes off.

[00:23:36] Speaker 01:
And the jury had that in their hands, Your Honor.

[00:23:40] Speaker 01:
And the jury was able to press on the side, press on the elongated member, and make a determination as to whether or not it flexes.

[00:23:50] Speaker 03:
I don't understand how the jury could have done that if they were participating by Zoom.

[00:23:55] Speaker 01:
They are.

[00:23:56] Speaker 01:
Thank you, Your Honor.

[00:23:57] Speaker 01:
I was unclear.

[00:23:58] Speaker 01:
So each of the jurors who was participating by Zoom was sent one of these actual devices.

[00:24:04] Speaker 01:
So they had it in their hands.

[00:24:06] Speaker 01:
They weren't looking at photographs.

[00:24:07] Speaker 01:
They weren't looking at just pictures.

[00:24:08] Speaker 01:
Obviously, they were in terms of what else.

[00:24:10] Speaker 04:
Is there a tape in this video hearing?

[00:24:13] Speaker 04:
I'm sorry?

[00:24:15] Speaker 04:
Zoom.

[00:24:16] Speaker 04:
Is there a tape of all that?

[00:24:17] Speaker 04:
Is all that recorded someplace?

[00:24:19] Speaker 04:
Could I, for example, look?

[00:24:21] Speaker 04:
Were the jurors seen on the Zoom?

[00:24:25] Speaker 04:
doing this.

[00:24:27] Speaker 01:
I don't know if there's a recording of it that has been kept or not.

[00:24:30] Speaker 01:
There's certainly a transcript that we've all seen.

[00:24:32] Speaker 01:
But certainly the jurors had this in their hand to do whatever it is that they were going to do.

[00:24:36] Speaker 01:
There certainly was a description in the trial transcripts of people putting displays and pictures and slides on the screen that would show some of these things as well.

[00:24:48] Speaker 04:
And the argument, I assume now I'm beginning to get it, is that the elongate member is

[00:24:54] Speaker 04:
in this device embedded, which the claim allows it to be, in the infrastructure.

[00:25:00] Speaker 04:
And the elongate member is not anywhere on this.

[00:25:04] Speaker 01:
Well, the elongate members, when the device is in one's hand and is put together, the elongate member is this area over here.

[00:25:13] Speaker 03:
Counsel, do you want to address your cross-appeal?

[00:25:16] Speaker 01:
I do.

[00:25:16] Speaker 01:
Thank you, Your Honor.

[00:25:18] Speaker 01:
Turning to the cross-appeal,

[00:25:22] Speaker 01:
Just like I think that the infringement issues are a jury question, which we all understand and need to be honored.

[00:25:32] Speaker 01:
The jury's verdict in this case also needs to be honored.

[00:25:36] Speaker 01:
Here there was a situation where the jury decided, based on the jury instructions, based on the SRI case that we're required to follow, that you follow the jury and the jury made its ruling.

[00:25:47] Speaker 01:
That ruling, in particular,

[00:25:52] Speaker 01:
it so I can read it, was that defendant engaged in additional conduct manifesting deliberate or reckless disregard of plaintiff's patent rights.

[00:26:03] Speaker 01:
In that case, in order to find that, the jury had to find two different things.

[00:26:06] Speaker 01:
They had to find that there was intentional copying, or there was an unreasonable risk of infringement.

[00:26:14] Speaker 01:
They had to find one of those two things to find that there was willfulness.

[00:26:17] Speaker 01:
And here, there was a jury finding that there was willfulness.

[00:26:21] Speaker 01:
So then we get to what did the judge do with that?

[00:26:24] Speaker 01:
The judge was required to follow the HALO decision.

[00:26:26] Speaker 01:
And the HALO decision says you no longer look at objective recklessness

[00:26:31] Speaker 01:
You look at specifically the subjective intent of what was going on.

[00:26:37] Speaker 01:
And I think in this case, that's what the judge didn't do.

[00:26:40] Speaker 01:
The judge didn't look at the focus on the subjective intent, but really focused, were there reasonable defenses?

[00:26:46] Speaker 01:
Really operated under the old Seagate case.

[00:26:48] Speaker 00:
I ask you a question about willfulness, because there's a dispute over whether the district court erred in denying the judgment as a matter of law of no willfulness as moot.

[00:26:59] Speaker 00:
I'm unclear on how that could be moot.

[00:27:01] Speaker 00:
in part because it created a basis for you to file your motion for enhanced damages.

[00:27:07] Speaker 00:
They say they shouldn't have to live in this world as an adjudicated, willful infringer.

[00:27:13] Speaker 00:
Maybe there'll be bankruptcy consequences.

[00:27:15] Speaker 00:
Didn't the district court have an obligation to assess the sufficiency of the evidence?

[00:27:19] Speaker 01:
I think I would prefer the district court to have done that, but I understand why the judge didn't.

[00:27:24] Speaker 01:
The judge said, I'm going to use my discretion.

[00:27:27] Speaker 01:
Answer the second question first.

[00:27:30] Speaker 00:
the question on enhanced damages, which is the only thing that... But did he have discretion to just deny their challenge to willfulness as moot?

[00:27:38] Speaker 01:
I think otherwise it would be moot, yes.

[00:27:41] Speaker 01:
Their claim that there's a theoretical question as to how a willfulness finding could come about is a pure theoretical question, and so you're asking the judge to answer

[00:27:55] Speaker 01:
a theoretical question that when they they say for instance i think that there could be bankruptcy consequences where it's dischargeable or not why why is that theoretical because it is theoretical because there was no bankruptcy and so at this point it is a theoretical question that's all that it is and so uh... in order to make it live they actually have to be in bankruptcy no i think in order to i think it's a sort of a declaratory judgment test for article three standing as you're taking it

[00:28:24] Speaker 01:
I think it probably is in the reality here, because here there's a question of willfulness.

[00:28:31] Speaker 01:
It was answered.

[00:28:31] Speaker 01:
The judge determined that he did not need to look at the question any further.

[00:28:37] Speaker 04:
Doesn't being branded as a willful infringer have consequences even beyond bankruptcy?

[00:28:44] Speaker 01:
I don't know what those consequences are.

[00:28:46] Speaker 04:
You wouldn't want to be branded that.

[00:28:47] Speaker 04:
Your client wouldn't want to be so branded, right?

[00:28:50] Speaker 01:
I don't know what the consequences are other than a finding of no willfulness.

[00:28:56] Speaker 04:
On your motion, didn't the district court judge in denying the request for enhanced damages say that in its judgment, at least, this is a garden variety case?

[00:29:07] Speaker 01:
And that's why I think the district court judge ignored the HALO decision, because he looked at the defenses.

[00:29:12] Speaker 04:
He looked at, well, they only look at... Was that a fact finding when he says it's a garden variety case?

[00:29:19] Speaker 04:
It seemed to me that if the judge is saying it's a garden variety case, he's also saying that it probably wasn't Will's one print.

[00:29:26] Speaker 01:
I think what it does is it tells us that the judge is looking at the defenses, and he's looking at claims.

[00:29:33] Speaker 04:
When he said that, was that a fact finding or observation or expectation?

[00:29:38] Speaker 01:
I think it was an observation on the overall way that the case was tried, and it was presented in a comment on the defenses.

[00:29:46] Speaker 00:
Before you sit, if I might, on estoppel.

[00:29:49] Speaker 00:
We have a bunch of disputes about estoppel.

[00:29:51] Speaker 00:
I'm concerned about the estoppel of the late discovered grounds as opposed to the non-instituted grounds.

[00:30:01] Speaker 00:
It seems like there is a fact dispute over whether that third party found those references through ordinary diligence or not.

[00:30:10] Speaker 00:
And the district court put the burden of proving that on Valve as the party challenging, as opposed to on you as the party proposing the stop.

[00:30:23] Speaker 00:
Shouldn't the burden be on the party that's making the affirmative defense?

[00:30:27] Speaker 00:
And if we think that's where the burden should be, what do we do?

[00:30:30] Speaker 00:
Do we just have to remand for further fact proceedings?

[00:30:33] Speaker 01:
I think in this case, the judge looked at did Ironberg, did the party,

[00:30:40] Speaker 01:
seeking to apply estoppel, did they come forward with evidence such that it required Valve to rebut that evidence?

[00:30:49] Speaker 01:
And there was evidence, and the judge found that there was evidence, that evidence being there was an expert declaration who said these were findable, and then there was certainly all of the evidence that was put before the PTAB and the IPR.

[00:31:03] Speaker 01:
And so ultimately, the judge looked at that evidence and said, what did Valve come back with?

[00:31:08] Speaker 01:
And Valve didn't come back with anything.

[00:31:10] Speaker 01:
came back with three declarations from the IPR that it had lost on.

[00:31:16] Speaker 01:
And in particular, it came back with these declarations that number one, what it did, well, I guess it was originally was the Ironberg Declaration saying,

[00:31:27] Speaker 01:
These were findable.

[00:31:29] Speaker 00:
Do you think the district court made a fact finding as to what a reasonably diligent searcher for prior art could find?

[00:31:36] Speaker 01:
I think it did, your honor.

[00:31:38] Speaker 00:
And how was he permitted to do that without having a trial?

[00:31:43] Speaker 01:
I think it was based on the evidence presented that this is an estoppel issue.

[00:31:47] Speaker 01:
It's a judge decided issue.

[00:31:50] Speaker 01:
The judge took that evidence.

[00:31:52] Speaker 01:
And there was facts that the judge considered.

[00:31:55] Speaker 01:
And based on those facts, the judge made a ruling.

[00:31:58] Speaker 01:
There's no requirement that there be an evidentiary hearing.

[00:32:01] Speaker 01:
There would be no additional information for there to be an evidentiary hearing on.

[00:32:05] Speaker 01:
And I don't think there was clear error in this case.

[00:32:08] Speaker 03:
Counsel, your time has expired.

[00:32:10] Speaker 03:
But we will give you two minutes for rebuttal, as you had requested, on your cross appeal.

[00:32:17] Speaker 03:
If there was something, we will hear.

[00:32:19] Speaker 03:
to robot.

[00:32:21] Speaker 01:
Understood, Your Honor.

[00:32:21] Speaker 01:
Thank you.

[00:32:22] Speaker 03:
Ms.

[00:32:23] Speaker 03:
Israel will give you four minutes, since Mr. Tampkin has had extra time.

[00:32:32] Speaker 02:
Thank you, Your Honor.

[00:32:33] Speaker 02:
So first, on the

[00:32:35] Speaker 02:
To address Judge Stark's last question on IPR estoppel, I think we have a different view of the evidence that was in the record.

[00:32:46] Speaker 02:
My understanding is that Valve put into the record evidence of what it had done in terms of what Valve's reasonable search was, and there was

[00:33:00] Speaker 02:
There were four declarations and additional information showing what Valve had done.

[00:33:08] Speaker 02:
What Ironberg had included was evidence that a third party had found the same references at a later time.

[00:33:20] Speaker 02:
That does not, they did not make any attempt to show what a skilled searcher exercising reasonable diligence would be expected to discover.

[00:33:28] Speaker 04:
Your adversary said that there were two bases of information that they put in an expert declaration saying that these three references were findable.

[00:33:37] Speaker 04:
That's what I understood your adversary to say.

[00:33:40] Speaker 02:
My understanding of what, I think what they were referring to was a declaration that they had used in the IPR in a

[00:33:48] Speaker 02:
previous terminated IPR proceeding to show why another reference the this at appendix 7387 okay I misspoke there is a they did have a declaration

[00:34:08] Speaker 02:
on Appendix 7387, although that declaration of Mr. Kitchen didn't apply the skilled searcher standard.

[00:34:16] Speaker 02:
I think what it did is just went through the list of the different references and discussed those references briefly.

[00:34:23] Speaker 00:
But not title.

[00:34:24] Speaker 00:
Who has the burden of proof on this issue?

[00:34:25] Speaker 00:
Have we ever addressed that?

[00:34:28] Speaker 02:
This court has not addressed it.

[00:34:29] Speaker 02:
The burden of proof should be on the party asserting estoppel, just like any other estoppel doctrine.

[00:34:35] Speaker 04:
Is it a burden of proof we're talking about, or a burden of going forward with the evidence?

[00:34:40] Speaker 04:
And in this case, your adversary put in some evidence, and they said, hey, these three references have been found.

[00:34:46] Speaker 04:
They're obviously available.

[00:34:49] Speaker 04:
And then, as I understood, the district court was then shifting the burden of going forward to you to say, you better rebut that, or else you're going to lose.

[00:34:59] Speaker 02:
Well, respectfully, Your Honor, I think that the

[00:35:02] Speaker 02:
The parties agreed.

[00:35:03] Speaker 02:
Nobody disputed that the standard the court was applying was the skilled searcher standard, what a skilled searcher exercising reasonable abilities.

[00:35:10] Speaker 04:
I'm just being technical.

[00:35:12] Speaker 04:
We're talking burden of proof.

[00:35:14] Speaker 04:
The burden of proof lies on the challenger here for it right through to the end.

[00:35:19] Speaker 04:
But I understood this to be a case of whether or not the burden shifted, the burden of coming forward with evidence shifted to you.

[00:35:30] Speaker 02:
I think the burden of proof would remain with the party who is trying to assert the doctrine of the sovereign.

[00:35:39] Speaker 04:
And your argument would be the burden should never shift to you under any circumstance.

[00:35:43] Speaker 04:
That's correct.

[00:35:49] Speaker 04:
And what Judge Stark asked the question of your adversary, and I didn't get an answer from him, is what do we do?

[00:35:58] Speaker 04:
If we decide that there was an error here in the shifting of whether it's the burden of proof or the burden of coming forward with evidence to you was error, what do we do?

[00:36:08] Speaker 04:
Do we have to send it back, or can we determine that there is sufficient evidence here of one form or another that means that the error is harmless?

[00:36:17] Speaker 02:
So I think you would have to go back.

[00:36:20] Speaker 02:
The court effectively treated the motion for IPR estoppel like a summary judgment motion and effectively found there was no genuine issue of material fact.

[00:36:32] Speaker 02:
However, it never even addressed the evidence that Valve had presented that said appendix 8457.

[00:36:40] Speaker 02:
I think I have it written down incorrectly.

[00:36:42] Speaker 04:
Well, your evidence, you didn't put any evidence in as to the quality of the search conducted by the other party who found the references.

[00:36:52] Speaker 02:
Nobody put any evidence on that.

[00:36:55] Speaker 04:
That's the only question that's up for grabs on this whole issue.

[00:37:00] Speaker 04:
Because the question is, there are these three prior references that were found in another IPR.

[00:37:05] Speaker 04:
If they were found as a result of extraordinary efforts

[00:37:09] Speaker 04:
efforts, then they would not be unstoppable.

[00:37:12] Speaker 04:
But if they were found as a result of ordinary diligence,

[00:37:17] Speaker 04:
then you would be a stop.

[00:37:19] Speaker 02:
So on that issue, as to how you would prove what a skilled searcher exercising reasonable diligence would be expected to discover, then neither party put in any evidence on what would be reasonable in terms of what the collective minds party found, and what search that they did, and whether it was reasonable.

[00:37:38] Speaker 04:
Isn't that the question?

[00:37:42] Speaker 02:
Well, there was evidence.

[00:37:45] Speaker 04:
If these other three prior references that were found in another IPR, if they were found as a result of ordinary diligence, then they'd be stoppable.

[00:37:59] Speaker 02:
Well, those were found with the IPR.

[00:38:01] Speaker 02:
That IPR was initiated, I believe, after the valves IPRs were already concluded.

[00:38:08] Speaker 02:
So it was at a different time frame.

[00:38:15] Speaker 04:
But you never argued that those references were totally irrelevant for that reason.

[00:38:22] Speaker 02:
We didn't.

[00:38:24] Speaker 02:
Not that they were irrelevant for that reason, but we did put there was evidence, I guess, in the record, again, that the court just never even considered to determine whether state of the matter.

[00:38:33] Speaker 03:
Thank you, counsel.

[00:38:34] Speaker 03:
I think we have your argument, and your time has expired.

[00:38:37] Speaker 03:
And since there was nothing on the cross-appeal issue, Mr. Hampton, I think we have nothing further to hear from you.

[00:38:44] Speaker 00:
Thank you both.

[00:38:46] Speaker 03:
Cases submitted.