[00:00:02] Speaker 04:
The next order of your case is number 221001, Mosaic Brands Incorporated against Ridgewall LLC.

[00:00:11] Speaker 04:
Mr. Lobin, you're ready.

[00:00:15] Speaker 03:
Good morning, Your Honor and Your Honors.

[00:00:20] Speaker 03:
If I may take my mask off.

[00:00:23] Speaker 03:
Stephen Lobin here.

[00:00:24] Speaker 03:
Yes.

[00:00:25] Speaker 03:
Yes, good morning.

[00:00:27] Speaker 03:
So this case has many issues.

[00:00:30] Speaker 03:
And I want to address all of them.

[00:00:31] Speaker 03:
But particularly, since I received an email from the court a day or so ago, I want to address those issues first.

[00:00:41] Speaker 03:
But before I do that, I want to share.

[00:00:43] Speaker 04:
That relates to the cross appeal, does it not?

[00:00:46] Speaker 04:
The finality?

[00:00:48] Speaker 04:
Proceed in whatever order you're prepared to proceed in.

[00:00:51] Speaker 03:
Thank you, Your Honor.

[00:00:52] Speaker 03:
Thank you.

[00:00:53] Speaker 03:
Before I get into the law and the issues very quickly, I want to show the court what the products at issue in this case are.

[00:01:01] Speaker 03:
This is what's called a smart wallet.

[00:01:04] Speaker 03:
And it has elastic lips on the outer edges to keep the cards that one places inside, credit cards, for example.

[00:01:14] Speaker 03:
And then there's a clip on the back of it where money can be slid into.

[00:01:17] Speaker 03:
And it's just a more sleek form of a wallet

[00:01:22] Speaker 03:
things that most men in particular, I suppose, keep in a wallet, which would be cash and credit cards.

[00:01:28] Speaker 03:
So it's very sleek.

[00:01:29] Speaker 01:
On the issue of inequitable conduct, which is yours, what's the status of the inequitable conduct claim?

[00:01:38] Speaker 01:
I assume it's not disposed of, correct?

[00:01:41] Speaker 03:
Correct.

[00:01:42] Speaker 03:
And to address Judge Newman as well as Judge Post's question, the inequitable conduct issue is one that we appealed.

[00:01:50] Speaker 03:
Summary judgment motion was filed.

[00:01:51] Speaker 03:
The court denied it.

[00:01:52] Speaker 03:
It did not find intent as a matter of summary judgment.

[00:01:58] Speaker 03:
The invalidity

[00:02:00] Speaker 03:
was confirmed of the opponent's rigid patent on summary judgment.

[00:02:05] Speaker 03:
So therefore, the court did not reach the inequitable conduct issue before entering final judgment, because the patent was deemed invalid.

[00:02:12] Speaker 03:
So therefore, there was no practical reason to address inequitable conduct.

[00:02:16] Speaker 01:
This is so confusing to me.

[00:02:18] Speaker 01:
Is the inequitable conduct issue still alive in the district court?

[00:02:22] Speaker 03:
It is.

[00:02:23] Speaker 01:
And it is alive how?

[00:02:24] Speaker 01:
He granted summary judgment.

[00:02:26] Speaker 01:
of no inequitable conduct, right?

[00:02:32] Speaker 01:
No.

[00:02:34] Speaker 01:
He denied your motion for summary judgment of inequitable conduct.

[00:02:37] Speaker 01:
How is that appealable?

[00:02:39] Speaker 01:
Just as a run of the mine case that we have, the issue is still alive.

[00:02:44] Speaker 01:
How on earth is that appealable?

[00:02:45] Speaker 03:
Correct, Your Honor.

[00:02:46] Speaker 03:
You're absolutely right.

[00:02:48] Speaker 01:
You appealed it.

[00:02:49] Speaker 01:
So are you confessing error?

[00:02:51] Speaker 01:
Are you withdrawing that?

[00:02:53] Speaker 01:
What's going on?

[00:02:54] Speaker 03:
Well, we filed the notice of appeal before such time as the court addressed the fees issues after final judgment.

[00:03:01] Speaker 03:
The court deferred to this court to address the invalidity issue before it addressed the inequitable conduct issue as it relates to 285 fee shifting.

[00:03:12] Speaker 03:
So the court

[00:03:13] Speaker 03:
said that issue is going to be stayed.

[00:03:15] Speaker 03:
We'll wait to hear from the federal court.

[00:03:16] Speaker 01:
So there's been no disposition of the inequitable conduct.

[00:03:19] Speaker 01:
They denied summary judgment, but it's still a live issue.

[00:03:23] Speaker 01:
Is he going to have a bench trial on it?

[00:03:26] Speaker 03:
Well, that's yet to be seen, but we appealed the issue because we believe we were entitled to summary judgment of inequitable conduct.

[00:03:32] Speaker 01:
And you think that's appropriate basis for an appealing when they deny summary judgment of inequitable conduct and the remains because there's a factual dispute remaining, you get to appeal that?

[00:03:45] Speaker 03:
Well, we believe that because that issue is so simple and because our opponent, Ridge, has not argued that it's not appealable, they've waived that issue.

[00:03:53] Speaker 03:
And so we believe that it can be addressed here today.

[00:03:56] Speaker 03:
But I'm not going to stand here before you, Your Honor, and argue to you that it's a regular course of business.

[00:04:03] Speaker 03:
I know that denials of summary judgment typically are not subjects of appeals.

[00:04:09] Speaker 03:
because the district court hasn't spoken finally on the issue.

[00:04:12] Speaker 03:
And here, the district court has not spoken finally on the issue.

[00:04:15] Speaker 03:
So I'm not going to say that there's precedent ad nauseam supporting this court addressing inaugural conduct as it's currently framed.

[00:04:24] Speaker 01:
However, I'm not looking for precedent ad nauseam.

[00:04:28] Speaker 01:
I'm looking for any precedent, and I don't think there is any.

[00:04:31] Speaker 03:
Well, we approach this court today because Ridge has not raised that issue.

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

[00:04:37] Speaker 03:
We're here on appeal.

[00:04:38] Speaker 03:
I got the email.

[00:04:39] Speaker 03:
I did my research.

[00:04:40] Speaker 03:
And I haven't found any precedent.

[00:04:42] Speaker 01:
OK.

[00:04:42] Speaker 01:
So if you're in agreement that it's not properly before us, what if any impact, in your view, does that have on the question of whether or not we've got a final judgment at all, if we expect to end all of these issues?

[00:04:55] Speaker 03:
Right.

[00:04:55] Speaker 03:
And that was the second question posed by the court.

[00:04:58] Speaker 03:
And so there the issue is, in my mind,

[00:05:01] Speaker 03:
And again, I didn't find any cases on point.

[00:05:05] Speaker 03:
But the issue is, is there a preclusion of any final judgment whatsoever on any of the issues?

[00:05:10] Speaker 03:
Because we've got many.

[00:05:11] Speaker 03:
Or is it just preclusive as the inevitable conduct issue?

[00:05:17] Speaker 01:
That's my question.

[00:05:18] Speaker 03:
And I submit, as to the latter question we've discussed, as to the former question,

[00:05:26] Speaker 03:
I don't have an opinion on that, honestly.

[00:05:28] Speaker 03:
And I'm not going to sit here and tell you that I have authority for that total conclusion.

[00:05:33] Speaker 02:
Let me ask you this.

[00:05:34] Speaker 02:
Sorry to interrupt, but inequitable conduct, was it just an affirmative defense that you raised, or was it a counterclaim?

[00:05:40] Speaker 02:
it was an affirmative defense all right and uh... i think the district court initially denied it has moved once you prevail on anticipation correct correct and then you ask for reconsideration because he said we're going to file a two eighty five motion and we think if there's an equitable conduct then this may be probative of whether we prevail on our fees much is that right it's a and that's what led to whatever the district court said about an equitable contact right

[00:06:10] Speaker 04:
I think that's it.

[00:06:13] Speaker 04:
Excuse me, Judge Stark.

[00:06:14] Speaker 02:
I'm sorry.

[00:06:14] Speaker 02:
You go ahead, please, Judge Newell.

[00:06:17] Speaker 04:
Well, what struck me is the district court appeared to recognize that it was irrelevant whether there was inequitable conduct unless there was an attorney fee issue, which would then flow after this court determined the merits of the rest of the case.

[00:06:37] Speaker 04:
And I believe the district court

[00:06:39] Speaker 04:
made a statement to that effect, and that that was the reason that he wasn't drawing into the extreme detail.

[00:06:47] Speaker 04:
After all, it was quite contesting as to whether there was inequitable conduct.

[00:06:52] Speaker 04:
Is that a fair statement of how it worked out?

[00:06:55] Speaker 03:
Yes, Your Honor.

[00:06:56] Speaker 03:
I think the district court was being deferential to this court because it had finally decided, as a matter of summary judgment, anticipation.

[00:07:03] Speaker 03:
And so there was no reason.

[00:07:05] Speaker 03:
The patent's already invalid, so there's no reason to make it unenforceable, too.

[00:07:09] Speaker 03:
And then the court recognized that, assuming that anticipation summary judgment

[00:07:16] Speaker 03:
is affirmed on appeal, then we would come back and address the fees issues.

[00:07:22] Speaker 03:
But I think the court was being especially deferential.

[00:07:24] Speaker 03:
Typically, the fees issue would be finally decided.

[00:07:28] Speaker 03:
And in that would be a determination, up or down, on a natural conduct.

[00:07:32] Speaker 03:
And then that issue would then be a subsequent appeal, which probably would end up being consolidated here.

[00:07:37] Speaker 03:
And we'd be here talking about all issues as a matter of final judgment.

[00:07:41] Speaker 03:
But we're not.

[00:07:42] Speaker 03:
We're not in that position.

[00:07:44] Speaker 03:
We're not in that procedural posture.

[00:07:46] Speaker 03:
But I know that the appellee has not raised that issue.

[00:07:50] Speaker 03:
And our view is that they waived that issue, although maybe it's not a matter.

[00:07:54] Speaker 01:
What's the matter for the court?

[00:07:56] Speaker 01:
To be waived.

[00:07:57] Speaker 03:
Correct.

[00:07:58] Speaker 03:
As a matter of jurisdiction.

[00:07:59] Speaker 01:
Judge Stark.

[00:08:00] Speaker 02:
Just wanted to make clear, the only reason that you are seeking a finding of inequitable conduct, though, is to inform your 285 motion, which currently stands denied without prejudice.

[00:08:11] Speaker 02:
Is that right?

[00:08:12] Speaker 03:
correct however if for some reason the summary judgment of anticipation is reversed or vacated and we're back before the district court on the issue of

[00:08:24] Speaker 03:
invalidity slash unenforceability, which in my mind are two separate issues, then obviously it remains as an affirmative defense on the merits.

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

[00:08:32] Speaker 02:
But is there any reason why those two shouldn't go forward together if you were not to prevail on the anticipation issue in this court?

[00:08:41] Speaker 02:
Why would we step in and decide inequitable conduct when the district court denied summary judgment on it?

[00:08:49] Speaker 03:
I think, per my discussion with Judge Prost, that we don't take a strong position on that issue because, frankly, we can live with it either way.

[00:08:59] Speaker 03:
It's a little messy.

[00:09:01] Speaker 03:
And going back and forth to the district court in Los Angeles to hear, I enjoy coming to DC.

[00:09:08] Speaker 01:
Can I ask you just, I don't want to get too much in the weeds, but I really do have an issue that seems unsettled.

[00:09:15] Speaker 01:
The district court dealt with that initially.

[00:09:17] Speaker 01:
His instinct was to say this is moot because they prevailed on invalidity.

[00:09:22] Speaker 01:
And it is certainly true that in our case law, where you have counterclaims of invalidity and inequitable conduct, then the inequitable conduct lives because it's your avenue towards potentially getting attorney's fees.

[00:09:38] Speaker 03:
That's right.

[00:09:39] Speaker 01:
In this case, I haven't found the smoking gun case, but it seems to me that result may be a bit different when we're talking about, as Judge Stark pointed out, affirmative defenses.

[00:09:51] Speaker 01:
Because if you raise invalidity, anticipation, and inequitable conduct as affirmative defenses, and the judge says,

[00:09:59] Speaker 01:
we're going to find anticipation.

[00:10:02] Speaker 01:
It's not clear to me that as in a premier defense, that issue just doesn't die and fall away as opposed to if it were a counterplane.

[00:10:12] Speaker 01:
Do you have anything to enlighten us on your view of that question?

[00:10:18] Speaker 03:
As I stated a little bit ago, and frankly, given what your comment is and Judge Stark's question, I'm not 100% sure we didn't plead it as a counterclaim, but I could be staying correct.

[00:10:29] Speaker 03:
Obviously, it's in the record, whether it was an affirmative offense simply or a counterclaim as well.

[00:10:35] Speaker 01:
But the issue- Well, we didn't see it as a counterclaim.

[00:10:37] Speaker 02:
Yeah, I didn't see it as a counterclaim.

[00:10:39] Speaker 03:
But the issue seems to be one of the merits of the case versus the post-judgment fee-shifting motion.

[00:10:45] Speaker 03:
So as to the merits of the case, certainly an invalid patent need not be deemed procured through inequitable conduct.

[00:10:53] Speaker 03:
It's already invalid.

[00:10:54] Speaker 03:
But then as a matter of fee-shifting, perhaps,

[00:10:57] Speaker 03:
that inequitable conduct then becomes relevant again, because it was in the case as an affirmative defense.

[00:11:02] Speaker 03:
It can be argued on the fee-shifting motion.

[00:11:05] Speaker 01:
I mean, that's the question I have.

[00:11:07] Speaker 01:
Let me just move you on a little bit.

[00:11:09] Speaker 01:
And I don't want to cross over to the cross appeal right now.

[00:11:12] Speaker 01:
But on the matter of anticipation, the other reason that inequitable conduct, our case law says,

[00:11:19] Speaker 01:
you get to hold onto it as a counterclaim is not just for attorney's fees.

[00:11:23] Speaker 01:
I think it's because inequitable conduct gets rid of the entire patent and not just the claims that are in dispute.

[00:11:30] Speaker 01:
One of the many odd things about this case is that the district court opinion and you all talk about the anticipation and the invalidity of the patent, not about any particular claims.

[00:11:45] Speaker 01:
What is going on here?

[00:11:46] Speaker 03:
And that brings me to the anticipation issue, which is subject to the cross-appeal.

[00:11:51] Speaker 03:
But we got summary judgment of anticipation.

[00:11:54] Speaker 03:
At the district court level, as well as here, Ridge waived any issue about whether the prior art meets the claims of the patent.

[00:12:04] Speaker 03:
That issue of correspondence, if you will, was waived.

[00:12:08] Speaker 01:
They didn't argue that.

[00:12:09] Speaker 01:
We've got this odd appeal here, because we've got two different patents going on at the same time, which are typically severed.

[00:12:15] Speaker 01:
Sure.

[00:12:16] Speaker 01:
But on the 808, which is the anticipatory thing, what claims were asserted?

[00:12:22] Speaker 01:
Weren't there particular claims that were asserted?

[00:12:25] Speaker 03:
Yes.

[00:12:25] Speaker 01:
And so if you have claims one through five that are asserted, and the defense is anticipation,

[00:12:33] Speaker 01:
It goes to the claims, not to the patent in its entirety, right?

[00:12:37] Speaker 03:
And quoting the district court, the district court agreed that Ridge waived its arguments by, quote, not disputing that... Waived its arguments about what?

[00:12:45] Speaker 01:
That they were defending the entire patent?

[00:12:47] Speaker 01:
That the patent in its entirety goes down?

[00:12:50] Speaker 01:
Correct.

[00:12:51] Speaker 03:
They waved the argument about whether the prior art product meets each limitation of the patent, each limitation in all claims, all asserted claims.

[00:13:00] Speaker 03:
So the correspondence issue about which element of which claim is satisfied by which part of the prior art, that was off the table because they waved that out.

[00:13:07] Speaker 01:
Yeah, but is there a way?

[00:13:09] Speaker 01:
I mean, you assert in infringement certain claims, and somebody asserts anticipation.

[00:13:16] Speaker 01:
What's on the table are the claims that are being asserted.

[00:13:22] Speaker 01:
Here, they did something different, right?

[00:13:25] Speaker 03:
Because they need not address an issue that was waived.

[00:13:30] Speaker 03:
OK.

[00:13:31] Speaker 02:
Let me ask you about claim construction.

[00:13:32] Speaker 02:
I think we'll get to anticipation on the cross appeal.

[00:13:35] Speaker 02:
But you're the one that's appealing claim construction in your patent, correct?

[00:13:39] Speaker 02:
Yes.

[00:13:40] Speaker 02:
So on this point as to whether LIF is limited to plastic material, it seems like pretty strong statements in the abstract and then in column one.

[00:13:51] Speaker 02:
Something to the effect of the device of the present invention is constructed of excludable plastic materials, right?

[00:13:58] Speaker 02:
Consistent with our case law isn't that well here that it's limited to plastic so we cited Continental circuits be Intel to avoid

[00:14:07] Speaker 03:
improperly importing limitations into the claims, the cardinal's sin.

[00:14:10] Speaker 03:
It's important to keep in mind the purpose of the specification are to teach and enable those of skill in the art about the best moment.

[00:14:17] Speaker 02:
What's the purpose of saying in two different places the product is plastic?

[00:14:23] Speaker 03:
because we're talking about the specification, need make clear what the best mode is.

[00:14:28] Speaker 03:
And that language, in our view, specifies the best mode, whereas the LIPS limitation is stated in the claims in a manner which, obviously, they could be formed of all sorts of materials.

[00:14:43] Speaker 03:
And the material issue, what it's made of, was not a focus of the patent.

[00:14:48] Speaker 03:
The construction and the ability for something to

[00:14:51] Speaker 03:
Form a chamber that is compressing what's inside it so it can hold it securely was the issue, not the material that it's made of.

[00:14:58] Speaker 01:
Well, you may say that's the issue, but don't we have cases that are clear on that?

[00:15:02] Speaker 01:
Lumineira, more recently Candlesuit.

[00:15:06] Speaker 01:
that say that statements just like the ones you have in your specification, talking about the present invention, not the preferred embodiment.

[00:15:14] Speaker 01:
Clearly, our caseload is clear.

[00:15:16] Speaker 01:
You can't limit it to the preferred embodiment.

[00:15:18] Speaker 01:
But statements such as the ones you have there, describing it as plastic, are sufficient to say that this is sort of lexicography or a definitional thing, right?

[00:15:33] Speaker 03:
So no, our position would be that the language in the specification, including that cited by Judge Stark, is language about the invention, not of the unequivocality required by the case law for a disclaimer.

[00:15:47] Speaker 03:
Now, obviously any patent can talk only about one embodiment, right?

[00:15:53] Speaker 03:
And the claims then define the invention and whether or not other than one embodiment is talked about.

[00:15:58] Speaker 01:
Well, they can talk about one embodiment, but not when you say in the spec.

[00:16:01] Speaker 01:
You're the author of the spec.

[00:16:02] Speaker 01:
When you say the invention is plastic, that's not an embodiment.

[00:16:08] Speaker 01:
We read these every day.

[00:16:10] Speaker 01:
We know what it means to say this is the preferred embodiment, or this is an embodiment, and this is what is in the embodiment.

[00:16:17] Speaker 01:
This language is not that language, right?

[00:16:20] Speaker 03:
Well, we believe that it is because it talks about the invention, and the invention is described in specification in its best mode.

[00:16:30] Speaker 03:
It doesn't say the invention is limited to or the invention must have.

[00:16:35] Speaker 01:
I'm sorry to interrupt, but can you cite us any case in which the language in the spec says the present invention is yadada?

[00:16:42] Speaker 01:
And we have construed that to be, well, it's just the best mode, so we're not taking it as a definitional or as a cross-the-board meaning of the limits of the invention.

[00:16:52] Speaker 03:
I think that the cases that were cited in our brief, including the Continental Circuits case, makes that distinction.

[00:16:58] Speaker 03:
And I think that's important here, especially when the patent talks about only one embodiment, the best mode.

[00:17:05] Speaker 03:
And the claims, the important distinction between the specification and the claims, every patent lawyer knows, describe that preferred embodiment.

[00:17:12] Speaker 03:
You get to the claims.

[00:17:13] Speaker 03:
You get to choose your language.

[00:17:15] Speaker 03:
And that language shouldn't be limited unless it's clear.

[00:17:18] Speaker 03:
And we submit that the language cited in the specification is not a clear disavowal.

[00:17:23] Speaker 03:
And that would be our position on claim destruction.

[00:17:25] Speaker 02:
Can I just ask, if you were to prevail on this plastic point, and we modified the construction not to be limited to plastic, is that enough for you to have an infringement claim

[00:17:37] Speaker 03:
yes so that that that's all that's bar that it was the limitation to plastic that led you to concede you couldn't prove infringement yes now we argue varying thickness as well right but you're saying you don't need that in order to show infringement i don't believe so but we think it was there as well that's why we included in our appeal because the ridge has agreed that the plain ordinary meaning applies

[00:18:01] Speaker 03:
to that claim.

[00:18:02] Speaker 03:
And the district court elaborated further unnecessarily about what that plain, ordinary meaning should be.

[00:18:09] Speaker 03:
And we think that that should not be part of the official claim constructions.

[00:18:13] Speaker 03:
And perhaps I'm over.

[00:18:15] Speaker 03:
So if I could reserve me.

[00:18:17] Speaker 04:
Let's proceed to the other points as well, because we spent a fair amount of time in equitable conduct.

[00:18:25] Speaker ?:
With my colleague?

[00:18:28] Speaker ?:
The other points that you want to raise,

[00:18:30] Speaker 04:
at this stage of your argument, or do you want to leave them for your cross-appeal?

[00:18:38] Speaker 03:
I think, out of deference to my colleague, I'll leave them for if the court will indulge me with a couple minutes on rebuttal.

[00:18:47] Speaker 04:
OK.

[00:18:47] Speaker 03:
Thank you.

[00:18:48] Speaker 04:
All right.

[00:18:48] Speaker 04:
Good.

[00:18:49] Speaker 04:
Thank you.

[00:18:51] Speaker 04:
Thank you.

[00:18:51] Speaker 04:
So we'll hear from the other side.

[00:19:01] Speaker 06:
Good morning, Your Honors, and may it please the Court.

[00:19:03] Speaker 06:
My name is Benjamin Weed, and I represent Ridge Wallet in these appeals.

[00:19:08] Speaker 06:
Your Honor, is the court below aired by granting summary judgment of anticipation of the 808 patent?

[00:19:14] Speaker 01:
Well, that's your cross appeal.

[00:19:16] Speaker 01:
So can we just get involved in responding to what your friend said?

[00:19:21] Speaker 01:
Can we start with inequitable conduct?

[00:19:24] Speaker 01:
He seems to concede that the appeal of the denial of a motion for summary judgment is arguably not properly before us.

[00:19:33] Speaker 01:
Do you have any comments on that point?

[00:19:35] Speaker 06:
I think I would agree with one caveat, which is that the final judgment here is a little bit strange because it does indicate perhaps partial summary judgment of materiality.

[00:19:45] Speaker 06:
So if we look at the final judgment, which is- Yeah, I'm aware of that.

[00:19:48] Speaker 01:
Yeah, but can you have partial?

[00:19:49] Speaker 01:
So does that matter?

[00:19:50] Speaker 01:
I mean, you can't split up inequitable conduct to intent on one hand and materiality on the other and appeal them separately.

[00:20:00] Speaker 01:
I've never seen that happen.

[00:20:01] Speaker 06:
I agree.

[00:20:02] Speaker 06:
And I think the final judgment at its heart makes a finding on the issue of liability for infringement.

[00:20:07] Speaker 06:
not on the issue of whether there was inequitable conduct or invalidity or non-infringement, for example.

[00:20:12] Speaker 06:
The judge below resolved the issue of whether or not there was liability.

[00:20:15] Speaker 06:
And he did so by finding anticipation.

[00:20:18] Speaker 06:
And so the inequitable conduct ruling is essentially surplus to the ultimate judgment that there is no liability.

[00:20:23] Speaker 06:
And that's the thing we are appealing, is the judgment of no liability here.

[00:20:27] Speaker 06:
And I think you are correct, Judge Starrick, that there is no counterclaim for inequitable conduct.

[00:20:32] Speaker 06:
They are all just affirmative defenses.

[00:20:34] Speaker 01:
So do you think there's anything to the argument?

[00:20:37] Speaker 01:
I mean, I know our cases say, as a counterclaim, inequitable conduct lives on.

[00:20:43] Speaker 01:
But when it's an affirmative defense, I actually don't know the answer to this.

[00:20:48] Speaker 01:
But if it's an affirmative defense, and let's assume you prevail on the anticipation, the patent goes down in anticipation, do you think that changes the result otherwise, which is that the

[00:21:01] Speaker 01:
right for attorney fees and all this stuff remains?

[00:21:05] Speaker 06:
Well, certainly it will affect the attorney fee motion, because if this court reverses the anticipation finding, I think that's a basis for the fee motion.

[00:21:12] Speaker 06:
And we would have to go back and litigate the issue of invalidity then at some kind of a fact finding, whether it's a trial or more motion practice.

[00:21:19] Speaker 06:
And then ultimately the other affirmative defenses of non-infringement and inequitable conduct, which ultimately may be a part of a fee motion.

[00:21:26] Speaker 06:
But if we reverse here on anticipation, we have to go back and litigate the issue of whether there's liability.

[00:21:32] Speaker 01:
OK, so before we get into the anticipation thing, just you want to respond to your friend's discussion with Judge Stark about infringement, and namely the claim construction.

[00:21:44] Speaker 01:
And so what is your response to his argument that this language on the present invention is just a description of the best mode, and therefore is not any kind of a disavowal of the psychography or whatever you want to call it?

[00:21:57] Speaker 06:
I think we, like the lower court, agree with it.

[00:21:59] Speaker 06:
It seems like the questions that were asked before, that the language is unequivocal in the specification.

[00:22:04] Speaker 06:
It says, it talks about the device of the present invention.

[00:22:07] Speaker 06:
And at other parts of the specification, the drafters chose to describe embodiments of the invention.

[00:22:12] Speaker 06:
They didn't always limit the disclosure to the device of the present invention.

[00:22:16] Speaker 06:
But in column one, which is appendix page nine, there is unequivocal the device of the present invention language.

[00:22:22] Speaker 06:
And we think the judge got it absolutely correct below.

[00:22:24] Speaker 02:
Let me ask you about further down, though, in column one, under the brief summary of the invention.

[00:22:29] Speaker 02:
There's a list of the desirable features of the invention.

[00:22:32] Speaker 02:
And it says, for example, that it's desirable to provide a money clipping card holder that is inexpensive to construct, and that is lightweight, durable, and comfortable.

[00:22:45] Speaker 02:
But then it comes to what it's made of.

[00:22:49] Speaker 02:
And it says it's desirable to provide a holder that maybe, maybe, not is.

[00:22:54] Speaker 02:
may be constructed of an injectable plastic material that has desired rigidity and flexibility to perform its desired duties.

[00:23:02] Speaker 02:
Wouldn't a person of skill in the art notice the difference between is and may be and determine that the the plastic is not necessarily a requirement?

[00:23:11] Speaker 06:
Well, I think that's where we have to look very carefully at the language in the specification because what you just read is different from the language in column one at line 22

[00:23:20] Speaker 06:
where the specs says the device of the present invention is constructed of extrudable plastic materials that can be joined and it goes on.

[00:23:28] Speaker 06:
So in that passage the patentee is saying this is what it's constructed of.

[00:23:32] Speaker 06:
There are some benefits that are discussed of other aspects of plastic materials, but I think governing the present invention language in the top of column one is what applies here, because they are telling the public that when you're looking at our invention, our invention is a cardholder construction of it.

[00:23:48] Speaker 02:
So then how do you square it, though, with what it says around line 47 that it may be constructed of an injectable plastic material?

[00:23:56] Speaker 06:
Well, again, that's where I think the language is slightly different in column one from what you're reading lower down in column one, because in the top of column one, it talks about extrudable plastic material.

[00:24:05] Speaker 06:
It says, extrudable plastic materials that can be joined to produce a smooth exterior surface.

[00:24:11] Speaker 06:
And then further down, it's talking about it may be desirable to have injectable plastic material.

[00:24:15] Speaker 06:
So it is different discussion.

[00:24:16] Speaker 02:
So it has to be extrudable plastic, but it doesn't have to be injectable plastic.

[00:24:20] Speaker 06:
Correct.

[00:24:20] Speaker 06:
Correct.

[00:24:20] Speaker 06:
Correct.

[00:24:21] Speaker 06:
And I don't think the May language alters the fact that in the background of the invention,

[00:24:26] Speaker 06:
The patentee tells us exactly what the invention is, at least in part.

[00:24:30] Speaker 02:
I don't expect you to.

[00:24:34] Speaker 04:
I heard you say you don't think the claim language altered it.

[00:24:37] Speaker 04:
Doesn't the claim language control where they put this limitation in the claim in order to avoid the prior harm?

[00:24:46] Speaker 04:
Doesn't that resolve any generality in the specification?

[00:24:52] Speaker 06:
I'm sorry, Judge.

[00:24:52] Speaker 06:
I may have misspoken.

[00:24:53] Speaker 06:
What I meant to say was the word may, M-A-Y,

[00:24:56] Speaker 06:
in column one does not control or alter the fact that earlier in column one, we've already been told what the invention is.

[00:25:03] Speaker 06:
So the permissive language later on doesn't affect the mandatory the invention is language higher up in column one.

[00:25:11] Speaker 04:
Well, it may or may not depends on what is ultimately limited in the claim and whatever discussion in the prosecution history was relevant to the plastic composition

[00:25:24] Speaker 04:
seems to me was a significant factor.

[00:25:28] Speaker 04:
I also gather that that helps your position, but it doesn't hurt it.

[00:25:34] Speaker 04:
But to be sure that we have it straight.

[00:25:36] Speaker 06:
Correct.

[00:25:37] Speaker 06:
Yeah, I think the claim language talks about a lip.

[00:25:39] Speaker 06:
The noun in the claim is a lip.

[00:25:41] Speaker 06:
And the construction was that the lip has to be made of this language from column one, line 22 and 23, which is the invention language.

[00:25:48] Speaker 06:
The claim construction doesn't delve into the permissive May language, M-A-Y, further down column one.

[00:25:54] Speaker 01:
Do you have any response to Judge Stark's question to your friend about, we've got two claim construction issues here.

[00:26:03] Speaker 01:
And his view, I know it remains to be adjudicated if, in fact, we were to do that.

[00:26:08] Speaker 01:
But is there anything on the record that suggests that he has to win on both in order to secure infringement?

[00:26:15] Speaker 06:
There really isn't.

[00:26:16] Speaker 06:
I mean, there was a fair bit of claim complaint amendment practice below where the judge kept finding that the

[00:26:21] Speaker 06:
Complaint for Pat infringement didn't state a claim I think we were on the third amended complaint by the time we got a complaint that allowed us to go forward So there is some question I believe in the judge's mind below as to whether or not infringement can be proved But ultimately he found that there were plausible allegations Our contention of course is that we have not infringement arguments based on both constructions, but there hasn't been a fact-finding on that issue yet

[00:26:43] Speaker 01:
If you're ready to move to anticipation, you're cross-schooled.

[00:26:47] Speaker 01:
Can I start off with the question I asked your friend, which is about what is going on here?

[00:26:51] Speaker 01:
Because typically, anticipation deals with claims that are asserted and not with the patent in its entirety, even covering claims that aren't asserted in this infringement.

[00:27:00] Speaker 06:
Right.

[00:27:00] Speaker 06:
And I went back and looked in response to your question.

[00:27:02] Speaker 06:
And at appendix 289 and 90, which is the motion for summary judgment of invalidity, we see in that portion of the record

[00:27:12] Speaker 01:
You said appendix 289?

[00:27:14] Speaker 06:
Correct, 289 and 290.

[00:27:16] Speaker 06:
And again, this is an excerpt from the motion for summary judgment that was ultimately granted, and then reconsideration was heard.

[00:27:23] Speaker 06:
But as you can see here, in the bottom of 289 at line 21 and carrying over into the top of 290, there are specific claims that are challenged here, and not all the claims were challenged.

[00:27:35] Speaker 06:
And I wasn't trial counsel, but my understanding is that not all of the claims were being asserted from the 808 patent.

[00:27:41] Speaker 06:
So I think what happened here is summary judgment was filed as to the asserted claims.

[00:27:46] Speaker 06:
The judge granted the summary judgment motion without a lot of analysis of the claim language itself.

[00:27:53] Speaker 06:
And I think he got a little bit broad with his orders, because the challenge was to the asserted claims of the 808 patent.

[00:28:00] Speaker 06:
So I think the order and the final judgment might just be a little bit overbroad.

[00:28:03] Speaker 06:
But the motion practice was directed to particular claims.

[00:28:07] Speaker 02:
OK.

[00:28:07] Speaker 02:
Now, in the district court, your side did not dispute, I think, that Mosaic's product embodied each element of your patent.

[00:28:17] Speaker 02:
Isn't that correct?

[00:28:18] Speaker 02:
And aren't you stuck with that on appeal?

[00:28:20] Speaker 06:
So it's true that we didn't get in and on a claim by claim basis say this element is not met.

[00:28:24] Speaker 06:
That is true that below that was not the approach.

[00:28:26] Speaker 06:
The approach below was to focus on

[00:28:28] Speaker 06:
We have a prior art product that's being asserted against the claims and there's a smattering of evidence and it doesn't raise to the level of clear and convincing evidence that a particular product.

[00:28:37] Speaker 06:
was on sale in the prior time frame that met the claim hours.

[00:28:41] Speaker 01:
So let's talk about that.

[00:28:42] Speaker 01:
We've got the invoices.

[00:28:44] Speaker 01:
We've got somebody authenticating that these are invoices and there's a product.

[00:28:48] Speaker 01:
So why isn't that sufficient for at least shifting to you something other than attorney argument, raising a question as to the authenticity

[00:29:02] Speaker 01:
of those invoices.

[00:29:03] Speaker 01:
I mean, these invoices are distributed.

[00:29:05] Speaker 01:
They're used as a basis for damages calculations and cases and so forth.

[00:29:10] Speaker 01:
Your view, as I understand it, is this wasn't enough for summary judgment.

[00:29:19] Speaker 01:
Why not?

[00:29:20] Speaker 06:
Well, Your Honor, I think this is where we get back to cases like the core wireless case, which talk about sort of the extremity of granting summary judgment of invalidity and especially invalidity for anticipation.

[00:29:31] Speaker 06:
And so our arguments below were we have these invoices.

[00:29:34] Speaker 06:
They were authenticated by the witness for the patent challenging entity.

[00:29:39] Speaker 06:
And all the invoices say is sale of several SMC2 wallets to a golf course in Florida.

[00:29:45] Speaker 06:
And as we pointed out throughout the briefing below and here in our red brief at I think 23 to 28,

[00:29:51] Speaker 06:
There's a lot of discrepancy about the pictures.

[00:29:54] Speaker 06:
So sometimes we have photographs of black products that don't have a money clip.

[00:29:57] Speaker 06:
Sometimes they are silver products that do have a money clip.

[00:30:00] Speaker 06:
The backgrounds of the photos are different colors from the claim charts to the declarations.

[00:30:05] Speaker 01:
I don't know, so is your point that you don't know from the invoices what the product was?

[00:30:10] Speaker 01:
Exactly, exactly.

[00:30:11] Speaker 01:
But I thought the, where were the invoices in the, I'm sorry, could you give me the appendix?

[00:30:24] Speaker 01:
Oh, here they are.

[00:30:26] Speaker 01:
Is it 322?

[00:30:27] Speaker 01:
It sounds right.

[00:30:29] Speaker 01:
OK.

[00:30:29] Speaker 01:
And maybe refer to the smart money flip.

[00:30:32] Speaker 01:
And in the district court's decision, he says that you don't dispute that SMCII meets each limitation.

[00:30:43] Speaker 01:
So I took from that that you weren't disputing that these invoices dealt with the product that we're talking about.

[00:30:50] Speaker 01:
You're just, I guess, disputing whether or not they're real invoices?

[00:30:55] Speaker 06:
No, I don't think that's right.

[00:30:55] Speaker 06:
We did dispute whether the invoices dealt with the product that was at issue.

[00:30:59] Speaker 06:
We didn't dispute below that there are pictures of a product whose features meet the limitations.

[00:31:07] Speaker 06:
We didn't dispute that below.

[00:31:09] Speaker 06:
And obviously, we have briefing about cases like the Zenith case that we believe show that that's not

[00:31:13] Speaker 06:
of importance here because they still have to carry a burden.

[00:31:16] Speaker 06:
But our primary dispute below was, look, we have a lot of different things that are called the SMC2.

[00:31:21] Speaker 06:
We have these hand drawings that are over several different days of different embodiments of something they call the SMC2.

[00:31:26] Speaker 06:
We just don't know what it is that was being sold, allegedly, to these golf courses when the invoices talk about Smart Money Clip 2.

[00:31:35] Speaker 06:
We don't know if it's a thing that meets the claims or not.

[00:31:37] Speaker 06:
The point is they didn't establish, by clear and convincing evidence,

[00:31:41] Speaker 06:
that the very thing that was sold is the thing that they charted against the claims.

[00:31:46] Speaker 02:
What evidence did your side put in the record to dispute any of that?

[00:31:53] Speaker 02:
Is it enough to defeat summary judgment just to say we don't believe the other side's evidence?

[00:31:58] Speaker 06:
Candidly, I think so, Your Honor.

[00:31:59] Speaker 06:
I think, again, the Zenith case that I mentioned a moment ago says, essentially, where there's

[00:32:04] Speaker 06:
on the part of a movement on an issue where they bear the burden, we don't have to come forward with counter evidence.

[00:32:09] Speaker 02:
What if we think that a reasonable juror could find that Mosaic's evidence is clear and convincing, just that they don't have to find that?

[00:32:20] Speaker 02:
Where would that leave us?

[00:32:21] Speaker 06:
I don't think that results in entitlement to judgment as a matter of law at this point.

[00:32:24] Speaker 06:
I think on summary judgment, it would still be inappropriate to grant summary judgment on that basis.

[00:32:29] Speaker 06:
It may very well be that the jury finds that way.

[00:32:31] Speaker 06:
It may very well be that after trial,

[00:32:33] Speaker 06:
some kind of judgment as a matter of law post trial would be appropriate.

[00:32:37] Speaker 06:
But I don't think summary judgment would be appropriate in that.

[00:32:39] Speaker 06:
You didn't move for summary judgment of no anticipation, did you?

[00:32:41] Speaker 06:
We did not.

[00:32:42] Speaker 01:
And did you depose, did you bring forward any witnesses?

[00:32:46] Speaker 01:
Did you depose Mr. Kaminsky or anybody else on the other side?

[00:32:51] Speaker 06:
We deposed Mr. Kaminsky and his testimony and also Mia Kaminsky's testimony, who is the CEO, are sprinkled throughout the record.

[00:32:58] Speaker 06:
Again, I wasn't trial counsel, but I believe discovery was only open for limited purposes.

[00:33:02] Speaker 01:
Okay, so you deposed him.

[00:33:05] Speaker 01:
Anything that you glean, I didn't see any citations in your brief to suggest why, what he said was sketchy enough so that it creates a legitimate matter of dispute or fact.

[00:33:17] Speaker 06:
Well, for example, I don't remember if it was Mr. Kaminsky or Ms.

[00:33:19] Speaker 06:
Kaminsky, but one of them said,

[00:33:21] Speaker 06:
Whatever documents we have from the 2011 to 19 timeframe were destroyed.

[00:33:25] Speaker 06:
So we're destroyed.

[00:33:27] Speaker 06:
So there is a there is a gap in documentation in time.

[00:33:30] Speaker 01:
Well, wait a minute.

[00:33:30] Speaker 01:
We've got these invoices in the record.

[00:33:32] Speaker 06:
Right.

[00:33:33] Speaker 06:
And that's my point, is that there are these documents that do exist, and then there's a whole swath of documents that no longer exist.

[00:33:38] Speaker 06:
I think that's evidence that there's a question as to the credibility of these documents that do exist in the record.

[00:33:43] Speaker 01:
I don't understand.

[00:33:43] Speaker 01:
What did you ask Mr. Chisholm?

[00:33:45] Speaker 01:
What creates a disputed fact because he said what?

[00:33:49] Speaker 01:
He said these are the invoices that were sent in 2011, right?

[00:33:53] Speaker 01:
Right.

[00:33:54] Speaker 01:
OK.

[00:33:55] Speaker 01:
in your cross-examination of that witness that suggests that there's a factual dispute about that?

[00:34:01] Speaker 06:
He certainly is consistent that the SMC2 product they use for invalidity is the thing that was being sold to these golf courses.

[00:34:07] Speaker 06:
That's what he says.

[00:34:08] Speaker 01:
OK, that's what he says.

[00:34:10] Speaker 01:
And you couldn't get him to not say that.

[00:34:12] Speaker 01:
So presumably, if it goes to trial, you've already had the ability to cross-examine him.

[00:34:17] Speaker 01:
What beyond attorney argument do you have?

[00:34:20] Speaker 01:
I mean, did you offer up any witnesses

[00:34:23] Speaker 01:
like the people that were billed to this or whatever so they could say they never saw it?

[00:34:28] Speaker 01:
Was there anything that you offered?

[00:34:31] Speaker 01:
And if you didn't, then why isn't this sufficient to at least shift the burden of production, never the burden of persuasion, to you all to at least come up with something?

[00:34:42] Speaker 01:
You cross-examined him.

[00:34:43] Speaker 01:
You could have deposed your own witnesses.

[00:34:46] Speaker 01:
What is there that makes it sufficient to defeat summary judgment?

[00:34:49] Speaker 06:
And again, that's where I have to take a bit of an issue with your premise and plead a little bit of ignorance, too, because I don't think we got into discovery below to the point where we could have subpoenaed, for example, these golf courses or subpoenaed people who might have bought a product that was sold by

[00:35:03] Speaker 01:
Stores to the golf course is to say yeah, that was it what I bought or it wasn't We just didn't have the opportunity below to get to that you're not the opportunity to say we wanted to pose these people I don't I don't think we were in full-on fact discovery below Well you don't you think it's relevant if you made the request because if you have the ability to make the request you didn't isn't the onus on you and

[00:35:25] Speaker 06:
Well, again, I think the point of the briefing below in here is that those kinds of issues are issues that are plausible issues that would be uncovered if discovery progressed.

[00:35:34] Speaker 06:
And so that's why you're articulating all the reasons why summary judgment wasn't appropriate at the stage it was granted.

[00:35:39] Speaker 01:
But typically, wouldn't invoices and somebody authenticating them, as you say, not falling apart on cross-examination saying, yes, these are invoices.

[00:35:47] Speaker 01:
This material was sent.

[00:35:49] Speaker 01:
Isn't that sufficient unless you come up with some reason

[00:35:53] Speaker 01:
I mean, they can't, as a matter of their initial burden, have to not just submit invoices for the record that they say are accurate, but also bring in the customers and 14 other people to say these are actual invoices, right?

[00:36:06] Speaker 06:
No, I agree.

[00:36:07] Speaker 06:
But I think it would be a different situation if there was no question that what was being referred to as a smart money clip 2 is the thing that is being charted against the prior art.

[00:36:17] Speaker 06:
And so again, our approach below was, here are all the problems with the various pieces of evidence you're using to show me what Smart Money Clip 2 was.

[00:36:25] Speaker 06:
So there's discussions about, like I said, the black versus the silver, the ones with the clip versus without the clip.

[00:36:30] Speaker 06:
There's just different pictures, different drawings, different data documents about what.

[00:36:35] Speaker 01:
And you had the chance to cross-examine Kaminsky.

[00:36:38] Speaker 01:
So I'm sorry.

[00:36:39] Speaker 01:
Tell me again what question he raised, where you sort of

[00:36:44] Speaker 01:
There's a hole in his testimony that leads you to say, we don't know what the smart money clip in the invoice was?

[00:36:52] Speaker 06:
Well, you can look, I think, even at, in our brief, we cite to his declaration.

[00:36:57] Speaker 01:
OK.

[00:36:57] Speaker 01:
Well, why don't you give me the site to his declaration?

[00:37:00] Speaker 01:
That would be great.

[00:37:00] Speaker 06:
Yeah, so if you look at page 26 of our first brief, our red brief.

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

[00:37:05] Speaker 01:
Well, why don't you just give me the site to the appendix?

[00:37:07] Speaker 06:
It's appendix 294.

[00:37:08] Speaker 06:
OK.

[00:37:12] Speaker 06:
And are you there?

[00:37:14] Speaker 06:
I'm here.

[00:37:15] Speaker 06:
OK.

[00:37:15] Speaker 06:
And there, Mr. Kaminsky says, the SMC 2 design has remained relatively unchanged since 2011.

[00:37:23] Speaker 06:
So even his own testimony prepared for purposes of supporting a motion.

[00:37:26] Speaker 01:
Where are you talking?

[00:37:27] Speaker 01:
I'm looking at number 6 on 294, and it says, yes, SMCI had the same design from 2011 to the present.

[00:37:35] Speaker 02:
Can I make sure that I've got the right?

[00:37:37] Speaker 02:
You did.

[00:37:37] Speaker 02:
You were talking about paragraph 3.

[00:37:41] Speaker 06:
Paragraph 3, appendix page 294.

[00:37:46] Speaker 01:
And paragraph three says, the design has remained relatively unchanged.

[00:37:53] Speaker 01:
So you're saying because he said relatively unchanged, did you cross-examine him and say, what do you mean by that?

[00:38:01] Speaker 01:
What is the difference?

[00:38:02] Speaker 01:
What is the change?

[00:38:03] Speaker 06:
I don't think on this declaration we cross-examined him, because this was the one in support of summary judgment.

[00:38:08] Speaker 06:
But my point is, even on the declaration he prepared,

[00:38:13] Speaker 06:
for the summary judgment motion, he can't say unequivocally that it did not change, which confirms what I was talking about before, where there's discrepancies in the evidence about what SMC2 is or was at a particular point in time.

[00:38:27] Speaker 06:
And those discrepancies are the ones that flow through to the invoices, where even if they are true invoices and something called Smart Money Clip 2 was sold to a golf course, we don't know what it looked like, because even Mr. Kaminsky can't say it was always the same thing.

[00:38:41] Speaker 01:
OK, and can you look at 724 of the appendix?

[00:38:44] Speaker 01:
Because this is just a court's analysis.

[00:38:46] Speaker 01:
So what does he mean?

[00:38:48] Speaker 01:
This is on the second full paragraph where he says, defendant does not dispute that the SMCI double I meets each limitation, but instead respond that plaintiff did not offer sufficient evidence to corroborate his self-serving testimony.

[00:39:04] Speaker 01:
that it was not.

[00:39:06] Speaker 01:
Doesn't that sound like the district court at least didn't understand you to be disputing what the product was or whether it was different?

[00:39:16] Speaker 06:
The way I read that is the district court saying, you didn't tell me that the picture in the chart, one of the pictures in the chart, doesn't meet the limitation.

[00:39:24] Speaker 06:
And again, looking at the claim chart picture, there are a smattering of pictures about what the contention is for invalidity.

[00:39:29] Speaker 06:
I think this is part of the problem, too.

[00:39:32] Speaker 06:
You recall from our brief, that chart started out as a combination obviousness and anticipation chart.

[00:39:37] Speaker 06:
And it never changed.

[00:39:38] Speaker 06:
So an obviousness theory was ultimately not pursued.

[00:39:41] Speaker 06:
But there is a single claim chart that has a bunch of different pictures in it.

[00:39:44] Speaker 06:
There's discussions about products called the SMC Lite, for example.

[00:39:48] Speaker 06:
And the point that we make to the district court below, and the way I read him to understand that is, we can't tell what the SMC 2 is.

[00:39:55] Speaker 06:
We're not saying that the feature in the claim is not shown somewhere in the picture.

[00:39:59] Speaker 06:
But for purposes of opposing this motion, there is not clear and convincing evidence that a thing called the SMC2, which was prior art, had all the features in the claim, which is what you need for anticipation.

[00:40:10] Speaker 01:
Can I take you back before?

[00:40:13] Speaker 01:
We get down to sort of where we started a few minutes ago, which is the fact that the judge said the whole patent goes on anticipation, even though there were only claims like that.

[00:40:26] Speaker 01:
Given that in your appeal, you haven't challenged that.

[00:40:30] Speaker 01:
You've challenged whether or not there should be summary judgment of anticipation because of lack of corroboration.

[00:40:35] Speaker 01:
But you have not explicitly challenged

[00:40:37] Speaker 01:
the scope of that award, i.e., the whole patent versus the claims.

[00:40:42] Speaker 01:
Is there a waiver, therefore, on your part for us to tell the judge, if we were to tell the judge anything, that it was too broad?

[00:40:53] Speaker 06:
I would say no for a couple of reasons.

[00:40:55] Speaker 06:
Number one, we do have in our briefing an argument that they can't meet the channel means element of the independent claim.

[00:41:02] Speaker 06:
And so if that is true, if the court finds there's a question of fact as to whether or not the channel means limitation is met, because there was no analysis under the 112F construction that is now true.

[00:41:12] Speaker 00:
OK, but let's assume we're not buying that 112F issue.

[00:41:14] Speaker 00:
Let's assume we're not buying it.

[00:41:16] Speaker 06:
So my other response to that would be there was no counterclaim of invalidity.

[00:41:20] Speaker 06:
And so the judge's ruling at most is that there's no liability for infringement.

[00:41:24] Speaker 06:
He found essentially that there was a good defense of invalidity.

[00:41:27] Speaker 06:
But there's not a mechanism below where he has the power to actually invalidate any claims, because there is no counterclaim for invalidity.

[00:41:34] Speaker 01:
OK.

[00:41:35] Speaker 01:
And the tricky thing in this case, which is making all of our heads explode, is that that's different and inequitable conduct, where the whole patent would blow up.

[00:41:44] Speaker 01:
The whole patent?

[00:41:46] Speaker 01:
Well, I don't know, even if it's an affirmative

[00:41:47] Speaker 01:
of defense did not account for playing.

[00:41:50] Speaker 01:
I don't know.

[00:41:51] Speaker 06:
I don't know.

[00:41:51] Speaker 06:
Yeah, I think inequitable conduct, the law of inequitable conduct says you have to kind of look at how bad the conduct was when you're going to look at the scope of the impact of the inequitable conduct.

[00:41:59] Speaker 06:
So there's a lot more there.

[00:42:00] Speaker 06:
I think that underscores the fact we haven't done all the briefing on that issue yet.

[00:42:04] Speaker 06:
But again, I would come back to there's only defenses here.

[00:42:06] Speaker 06:
It's defenses to the allegations of infringement.

[00:42:08] Speaker 06:
And that's what the judge was saying.

[00:42:11] Speaker 02:
You said discovery was limited.

[00:42:15] Speaker 02:
Will we see an order somewhere in the district court docket that indicated you didn't get all the discovery you wanted?

[00:42:21] Speaker 06:
I'm not sure there's an order.

[00:42:22] Speaker 06:
I know that there are in the docket requests to take certain discovery as part of the briefing process.

[00:42:28] Speaker 06:
So at various times, the parties went to the court and said, hey, I'd like to take this discovery for purposes of

[00:42:33] Speaker 06:
Briefing that's going on here.

[00:42:35] Speaker 06:
I'm not sure there's an affirmative order that says discovery is limited.

[00:42:38] Speaker 02:
I do think it's 26 I'm sorry.

[00:42:39] Speaker 06:
Well, we see that those requests were denied No, no, they were granted the request and I believe they were all for party discovery It was always for a deposition and I take it then you did not oppose summary judgment of anticipation on the grounds that you had not had adequate Discovery did you that was I don't think that was part of our briefing We just we just said that the evidence that's here isn't enough to carry the clear and convincing burden to establish that something called SMC to its priority

[00:43:07] Speaker 06:
If the panel has no further questions, I'm up.

[00:43:11] Speaker 04:
Any more questions for counsel at the moment?

[00:43:12] Speaker 04:
No, thank you.

[00:43:13] Speaker 04:
I know that you have a little time, depending on what we hear in response from Mr. Laughlin.

[00:43:21] Speaker 05:
OK, thank you.

[00:43:35] Speaker 03:
Thank you, Your Honor.

[00:43:37] Speaker 03:
And I'll take whatever time the court gives me, but I have about a minute's worth of quick points to make.

[00:43:44] Speaker 04:
First on the discovery.

[00:43:46] Speaker 04:
Tell us what you need to tell us.

[00:43:48] Speaker 03:
Sure, sure.

[00:43:49] Speaker 03:
Thank you, Your Honor.

[00:43:51] Speaker 03:
Recognizing that my colleague was not at the trial court, he was not in the case during the trial court proceedings, there was full discovery.

[00:43:59] Speaker 03:
Discovery was wide open.

[00:44:00] Speaker 03:
Third party discovery was permitted.

[00:44:01] Speaker 03:
There was no what we used to call Rule 56F motion during the summary judgment proceedings.

[00:44:06] Speaker 03:
So there was no limit on defendant, defendant in this case, below was defendant, their ability to take full discovery.

[00:44:15] Speaker 01:
So what is your view on the, this is on anticipation, I don't want to interrupt you if you want to go to something else first, but that the burden was on them, that you put on enough so that the burden shifted to them to come up with something to say why the voices were not, and what about what your friend points to as the

[00:44:35] Speaker 01:
so-called arguably squishy language in the deposition so that we didn't really know what product was involved in these invoices.

[00:44:45] Speaker 01:
What say you to that?

[00:44:47] Speaker 03:
Well, correct.

[00:44:47] Speaker 03:
So as cases normally proceed before district court, full deposition was taken of Mr. Kaminsky, for example.

[00:44:55] Speaker 03:
Thereafter, discovery closed.

[00:44:57] Speaker 03:
uh... they took the deposition obviously of Mr. Kaminsky who was my client so thereafter discovery closed we filed a summary judgment motion and the evidence for Mr. Kaminsky was presented by us in the form of a declaration not deposition testimony right much cleaner it's much more sensible for the court so then the burden and that declaration was replete with authenticating everything invoices images of the product testimony of the history of the product so there was historical testimony corroboration out there you know what

[00:45:27] Speaker 03:
And of course, we would submit that the burden was in on them to come forward with some equivocal testimony from the prior deposition or some Rule 56F, we need some third parties in here, or something.

[00:45:38] Speaker 03:
They didn't do that.

[00:45:39] Speaker 03:
They argued that the evidence wasn't perfect.

[00:45:42] Speaker 03:
Well, that's not the standard.

[00:45:43] Speaker 01:
They didn't use the word perfect, right?

[00:45:46] Speaker 03:
Well, as I think the court has referenced, they made a lot of attorney argument about, well, we're not quite sure that this document really lines up with this or that.

[00:45:54] Speaker 03:
But it wasn't any evidence.

[00:45:56] Speaker 03:
It was just attorney arguing.

[00:45:57] Speaker 03:
So that's my word.

[00:45:58] Speaker 03:
They contended it wasn't perfect.

[00:46:00] Speaker 01:
So what did they need to do that they didn't do?

[00:46:02] Speaker 01:
Pardon?

[00:46:03] Speaker 01:
What did they need to do that they did not do?

[00:46:06] Speaker 03:
Well, had I been in their position, I would have opposed summary judgment with testimony from third parties.

[00:46:12] Speaker 03:
Who bought?

[00:46:12] Speaker 03:
Who's on the invoice?

[00:46:13] Speaker 03:
Who bought this product back in 2011?

[00:46:15] Speaker 03:
Let's talk to them.

[00:46:16] Speaker 03:
Let's get their deposition testimony.

[00:46:18] Speaker 03:
Is the invoice fake?

[00:46:19] Speaker 03:
Does that look real to you?

[00:46:21] Speaker 03:
you know any number of things they could have done to undercut with actual evidence the evidence that we submit.

[00:46:26] Speaker 01:
Do you think the trial judge would have necessarily allowed that?

[00:46:28] Speaker 01:
I mean, that's like having a mini trial in connection with the summary judgment motion.

[00:46:32] Speaker 01:
No.

[00:46:33] Speaker 01:
If you start putting in your evidence and you're refuting.

[00:46:35] Speaker 01:
So you think that just the court would have allowed that?

[00:46:38] Speaker 03:
Of course.

[00:46:39] Speaker 03:
That's what summary judgment's all about.

[00:46:41] Speaker 03:
We put forward our evidence showing a

[00:46:44] Speaker 03:
uh... that there's no genuine issue of material fact.

[00:46:48] Speaker 03:
They come back with evidence, not attorney argument, evidence of some material fact.

[00:46:53] Speaker 02:
But what they argued in part was that your client's credibility was an issue of fact that's directly in their brief in opposition to your motion for summary judgment and they said they had the legal argument that you needed independent corroboration but putting that aside they also said I think as a fallback

[00:47:11] Speaker 02:
Not every juror necessarily is going to find that the limited documentation that appears to corroborate your clients is going to amount to clear and convincing evidence.

[00:47:23] Speaker 02:
Where, if at all, did the district court address whether a find or a fact would be compelled to find that your evidence was sufficient to meet your burden?

[00:47:34] Speaker 02:
And wasn't that something the district court had to do?

[00:47:37] Speaker 03:
Well, certainly, the district court's order was very thick, in 10 pages at least, discussing all of the issues, going through every argument that they made, rejecting each one.

[00:47:46] Speaker 03:
saying I don't know if it addressed credibility per se very specifically but certainly the court is in the best position on summary judgment to know whether a credibility issue perhaps that comes up on the stand at trial some answer that was different from something given in the deposition transcript some aha moment where the jury says well this guy isn't believable my question why isn't it enough for the patentee in this instance to say

[00:48:14] Speaker 02:
We think that the credibility of the purported prior art inventor needs to be tested in front of a jury.

[00:48:24] Speaker 02:
It's flimsy evidence.

[00:48:26] Speaker 02:
It's not nearly as much evidence as one would expect if you'd sold this product for 10 years.

[00:48:30] Speaker 02:
Let's put it in front of a jury.

[00:48:32] Speaker 02:
Why is that not enough to defeat summary judgment?

[00:48:35] Speaker 03:
Well, that was their argument.

[00:48:36] Speaker 03:
And it's not enough because the district court rejected.

[00:48:38] Speaker 03:
And the district court is in the best position to know the standard for summary judgment and whether he thinks

[00:48:44] Speaker 02:
that the evidence they presented to- If we think the district court essentially made a credibility finding, doesn't that mean the district court's not supposed to make credibility findings on summary judgment, is it?

[00:48:56] Speaker 03:
Correct.

[00:48:56] Speaker 03:
But unless there is evidence to undermine the credibility of what's stated in the declaration.

[00:49:01] Speaker 03:
The record on summary judgment was declaration from our client, corroborating documents from our client.

[00:49:06] Speaker 02:
And lots of questions about whether that made sense.

[00:49:10] Speaker 03:
Right, attorney arm.

[00:49:11] Speaker 02:
What authority can you point to that says that's not enough to defeat summary judgment in this context?

[00:49:18] Speaker 03:
Well, no authority specifically other than summary judgment requires opposing evidence.

[00:49:24] Speaker 03:
So there has to be something for the district court to say,

[00:49:27] Speaker 03:
that the credibility is an issue of fact for the Trier fact because... There's some reference to some copyright.

[00:49:35] Speaker 02:
Are you familiar with that?

[00:49:37] Speaker 02:
Maybe at a certain point your clients tried to get copyright protection?

[00:49:43] Speaker 03:
It's not ringing a bell on that.

[00:49:47] Speaker 03:
That's the anticipation issue.

[00:49:49] Speaker 03:
Their arguments were the same on an ethical conduct, by the way, where they said, well, he's not credible.

[00:49:53] Speaker 03:
And what he says is anticipatory prior art isn't really anticipatory prior art.

[00:49:59] Speaker 03:
But again, it was just attorney argument.

[00:50:01] Speaker 03:
Now, going quickly to the claim construction issue.

[00:50:07] Speaker 03:
There's a reason this court coined the phrase cardinal sin of claim construction years ago.

[00:50:12] Speaker 03:
And I would just point to the evolution of that case law, which this court knows as well.

[00:50:18] Speaker 01:
I lost what you were saying.

[00:50:19] Speaker 03:
The cardinal sin of claim construction.

[00:50:23] Speaker 03:
And so we submit that that's what's going on here.

[00:50:26] Speaker 03:
Certainly there's language you can pull from the specification to say, well, it's the invention.

[00:50:31] Speaker 03:
But we submit that

[00:50:33] Speaker 03:
The case law from this court is replete, including the control circuits case that we cited in our brief, where the court said over and over again, but in this case at 797, disclosing only one embodiment without more does not result in a clear disavowal of claims code.

[00:50:48] Speaker 03:
Now, one could argue there is more.

[00:50:52] Speaker 03:
But the more, as Judge Stark took my colleague through,

[00:50:58] Speaker 03:
Maybe some of this and some of that.

[00:51:01] Speaker 03:
We submit that.

[00:51:01] Speaker 01:
I don't understand.

[00:51:02] Speaker 01:
You're saying disclosure of one embodiment.

[00:51:06] Speaker 01:
Don't you think when we say one embodiment, it's the spec that calls it an embodiment?

[00:51:12] Speaker 01:
In this instance, there was no reference to this being an embodiment.

[00:51:16] Speaker 01:
In most of these specs, there are things called embodiments.

[00:51:20] Speaker 01:
And of course, we can't limit it to the disclosed embodiments.

[00:51:24] Speaker 01:
But isn't this different?

[00:51:25] Speaker 01:
You meant, well, before you were calling it the best mode, not an embodiment.

[00:51:29] Speaker 03:
Well, it's one embodiment.

[00:51:31] Speaker 03:
So therefore, it is the best mode.

[00:51:33] Speaker 03:
Now, I think that, Your Honor, we would submit that

[00:51:37] Speaker 03:
We don't want to, this court has repeatedly cautioned against form over substance, the language of incantation.

[00:51:44] Speaker 03:
I think this court has repeatedly said, watch out for this cardinal sin of importing limitations from the specification into the claims.

[00:51:52] Speaker 03:
Now, I do agree that patent lawyers need to watch their language, and they need to be on point about it.

[00:51:59] Speaker 03:
Say embody when they mean embodiment.

[00:52:01] Speaker 03:
And don't say the invention when they don't mean the invention is therefore limited to.

[00:52:06] Speaker 03:
But we submit that on balance, looking at the complete record, the district court erred in committing the cardinal sin on the claim to her lips.

[00:52:15] Speaker 03:
And that's what I wanted to say.

[00:52:16] Speaker 04:
To be practical on this, we were talking only about the composition of the lip.

[00:52:24] Speaker 04:
Is that right?

[00:52:25] Speaker 04:
Plastic or the kind of plastic?

[00:52:27] Speaker 04:
Or the plastic against metal?

[00:52:29] Speaker 03:
Correct.

[00:52:30] Speaker 03:
The district court said that it's got to be extrudable or injectable plastic material and took that from the spec into its claim of destruction.

[00:52:41] Speaker 03:
That's what LIPS has to be.

[00:52:43] Speaker 03:
And that's what we oppose as we submit was error.

[00:52:46] Speaker 03:
Finally, very quickly, we didn't talk much about the trade dress issue.

[00:52:50] Speaker 03:
But like Judge Stark just took me on.

[00:52:55] Speaker 01:
I'm sorry.

[00:52:55] Speaker 01:
Are you going to talk about trade dress?

[00:52:57] Speaker 03:
Very quickly.

[00:52:59] Speaker 01:
Well, I'll defer to my colleagues.

[00:53:01] Speaker 01:
But it seems like you're here on rebuttal.

[00:53:03] Speaker 01:
And the other side will not be able to respond to what you say on your main appeal, because they're only going to respond on the cross-appeal.

[00:53:11] Speaker 01:
So I think I'll defer to our presiding judge.

[00:53:14] Speaker 01:
But I don't think it's appropriate for you to raise it here on rebuttal.

[00:53:18] Speaker 03:
Fair enough.

[00:53:19] Speaker 04:
Well, at the risk of overdoing, I'd take a few minutes on trade risks.

[00:53:27] Speaker 04:
seem to be the entire issue is that, well, they just copied our product.

[00:53:33] Speaker 04:
And that some wares or other can't be completely ignored.

[00:53:39] Speaker 04:
So if my colleagues are willing to listen a little more, it takes a couple of minutes on trade risks.

[00:53:46] Speaker 03:
I can be very quick, Your Honor.

[00:53:47] Speaker 03:
I'll try.

[00:53:48] Speaker 03:
Sometimes I say that and then I'm not.

[00:53:50] Speaker 03:
in reference to the discussion I just had with Judge Stark, where he said, well, wait a minute.

[00:53:55] Speaker 03:
Isn't it enough to avoid summary judgment?

[00:53:57] Speaker 03:
Just get something in there and create a question.

[00:54:02] Speaker 03:
Obviously, I disagree on anticipation that that's the case.

[00:54:05] Speaker 03:
But certainly on the trade dress case here, we oppose the motion for summary judgment with detailed declarations, evidence, corroborating documents.

[00:54:14] Speaker 03:
And on one of the three points on the trade dress case that they moved on, non-functionality, secondary meaning, and abandonment, the movement had the burden on abandonment.

[00:54:25] Speaker 03:
They have to show.

[00:54:27] Speaker 03:
on summary judgment that there's no trial or fact that could ever convince a jury that there was not abandonment.

[00:54:34] Speaker 03:
Now, on summary judgment in the light most favorable to the non-movement, look at the evidence we put into the record on not only the abandonment issue, but the

[00:54:45] Speaker 03:
issue of non-functionality and secondary meaning.

[00:54:48] Speaker 03:
And we submit that in accordance with the discussion I just had with Judge Stark, on the trade dress issue, certainly it is the case that we raised many issues of fact, trade dress being one of the most fact-intensive issues that we have in our jurisprudence.

[00:55:04] Speaker 03:
And we submit that the evidence there was at least enough to get a denial of summary judgment.

[00:55:11] Speaker 03:
With no further questions?

[00:55:12] Speaker 03:
Thank you.

[00:55:14] Speaker 04:
Any more questions for counsel?

[00:55:17] Speaker 04:
No, thank you.

[00:55:18] Speaker 04:
All right, then we'll hear from Mr. Weed on the rebuttal time.

[00:55:24] Speaker 04:
And of course, Judge Prost was correct.

[00:55:27] Speaker 04:
The trade dress wasn't raised in the argument in chief.

[00:55:30] Speaker 04:
So if you want to comment on trade dress, we'll hear you.

[00:55:35] Speaker 06:
Understood.

[00:55:35] Speaker 06:
Thank you.

[00:55:38] Speaker 06:
Start briefly again with the 808 patent issue.

[00:55:40] Speaker 06:
And I mentioned the Zenith Electronics case a moment ago.

[00:55:43] Speaker 06:
And I think that case is very instructive, because that case was very, very similar to what happened here.

[00:55:48] Speaker 06:
In that case, a patent challenger essentially said, hey, these patent claims are invalid, because the thing that's being accused of infringement is in the prior art.

[00:55:59] Speaker 06:
And the court ultimately said, no, that's not enough.

[00:56:01] Speaker 06:
You have to tell us why a limitation is met by the prior.

[00:56:04] Speaker 06:
You kind of do this shortcut approach to patenting validity to get to the right result.

[00:56:10] Speaker 06:
And what the court said there in that case at 522 F3rd 1348 is it said, quote, a non-movement need not always provide affidavits or other evidence to defeat a summary judgment motion.

[00:56:23] Speaker 06:
In the Zenith case, just like here, a shortcut was taken to try to prove invalidated.

[00:56:28] Speaker 06:
Here the shortcut was, we're not going to address the claim construction that the court entered, which is now not on appeal, the construction of the 112-6 issue, which I understand the court is aware of.

[00:56:39] Speaker 06:
But the fact of the matter is, the movement here didn't do any analysis of that limitation as was required.

[00:56:45] Speaker 06:
There's no evidence about how a person of ordinary skill in the art would have interpreted the structure or the function.

[00:56:50] Speaker 06:
And that's not trivial because it is a 1-12-6 limitation that will bind my client when it's trying to prove infringement.

[00:56:57] Speaker 06:
And so essentially, allowing the summary judgment of anticipation to stand here is doing what the Zenith Court cautioned against, which was allowing the challenger to shortcut the issue of invalidity in a way where we wouldn't have been able to do the same if we got all the way through and had to prove infringement.

[00:57:12] Speaker 06:
So I do think it's a very important point.

[00:57:14] Speaker 06:
And the Zenith Court tells us we don't always have to come forward with evidence when it's just so facially deficient that it can't carry the burden.

[00:57:22] Speaker 02:
I think the copyright point I was struggling for is at the end of the district court's opinion.

[00:57:27] Speaker 02:
It is.

[00:57:27] Speaker 02:
I just got a footnote.

[00:57:29] Speaker 02:
The court agrees with plaintiff that the alleged publication date of the SMC2 copyright is irrelevant to when it was first sold publicly.

[00:57:37] Speaker 02:
Can you help me on that?

[00:57:38] Speaker 02:
Is there evidence on copyright?

[00:57:40] Speaker 02:
Is that a dispute?

[00:57:41] Speaker 06:
I don't think there's a dispute that the copyright date is what it is.

[00:57:44] Speaker 06:
But part of the evidence developed in this case was, as I mentioned, there was sort of a destruction of documents that occurred

[00:57:49] Speaker 06:
Our client put in declarations detailing Google web searches that he did to try to find out whether Storis or the Smart Money Clip was available for sale during the period of time where the documents didn't exist anymore.

[00:58:02] Speaker 06:
And what he says in his declaration is at 1574 and 1575 of the appendix, he essentially details what he did to try to verify that Storis was in fact out there doing anything.

[00:58:13] Speaker 06:
And so obviously, we have the evidence from Storis about the alleged sales of something called SMC2.

[00:58:19] Speaker 06:
My client, who's in the industry, went out and said, I've never heard of them.

[00:58:22] Speaker 06:
This is strange.

[00:58:23] Speaker 06:
He did Google searches.

[00:58:24] Speaker 06:
He did way back machine searches.

[00:58:26] Speaker 06:
He didn't find any evidence that Storis was out there in the marketplace doing anything.

[00:58:30] Speaker 06:
And so that is evidence, I think, to corroborate Judge Stark's copyright point, which is that there wasn't really anything going on.

[00:58:37] Speaker 06:
in the time period when Stora says it was making prior art sales.

[00:58:41] Speaker 06:
And of course, it's not perfect evidence.

[00:58:42] Speaker 06:
We don't have trial evidence yet.

[00:58:44] Speaker 06:
But the jury certainly could look at what my client did and say, hey, I believe him.

[00:58:48] Speaker 06:
There's nothing on the web.

[00:58:50] Speaker 06:
There's no Google searches.

[00:58:51] Speaker 06:
He's telling you in one of the paragraphs of his declaration, I went to the website where it's currently being sold or where I believe it would have been sold.

[00:58:58] Speaker 06:
And there was no Wayback Machine version of that website until 2019.

[00:59:02] Speaker 06:
So there's evidence there from our client

[00:59:03] Speaker 06:
along the vein of the copyright issue to try to demonstrate that the assertion that SMC2 was being sold prior to the filing of our patent application is not true.

[00:59:12] Speaker 02:
Is this declaration of 1574 from Mr. Kane that was in the record on summary judgment?

[00:59:18] Speaker 06:
That is in opposition to the summary judgment motions, yes.

[00:59:21] Speaker 06:
Thank you.

[00:59:21] Speaker 06:
And I believe in the appendix we provided, I think the excerpts of the motion are just before that document in the appendix.

[00:59:29] Speaker 06:
Aside from that I don't have any further comments either on the trade dress issues or on the on the patent issues unless the panel has questions