[00:00:02] Speaker 01:
Cabo Solutions versus Kingston Technology, 2021, 1834.

[00:00:10] Speaker 01:
Good morning, Mr. Polanco.

[00:00:11] Speaker 05:
Good morning, Your Honors, and may it please the court, Michael Polanco, and Christian Richardson on behalf of Kingston Technology.

[00:00:20] Speaker 05:
Before starting, I just wanted to thank the court and the court staff for allowing me to appear virtually today.

[00:00:26] Speaker 05:
I was very much looking forward to appearing in person before, Your Honors,

[00:00:31] Speaker 05:
I was unable to do so due to a COVID incident and I truly appreciate the court accommodating me so that I was still able to present for Kingston in this format.

[00:00:41] Speaker 05:
Your Honours, this appeal raises four main issues, two on liability and two on damages.

[00:00:48] Speaker 05:
I'd like to spend my time this morning focusing on one of the liability issues and two damages.

[00:00:54] Speaker 05:
And I'll start with a liability issue that is a legal issue and one that is dispositive of not only this appeal, but of the entire case.

[00:01:03] Speaker 05:
And that's the district court's redrafting of the claim term, pivoting the case with respect to the main memory, flash memory, main body.

[00:01:14] Speaker 05:
The district court deceded its narrow and limited power to correct claims by enacting a wholesale modification of the claim language.

[00:01:23] Speaker 05:
substituting the claim term case with the term cover.

[00:01:27] Speaker 05:
Now, Your Honor, there is no dispute in this case that case and cover are distinct and separate components, as described in the patent.

[00:01:35] Speaker 05:
And this was not a permissible correction, but instead a fundamental redrafting of the claims.

[00:01:41] Speaker 01:
But counsel, if one looks at the patent, we see many

[00:01:48] Speaker 01:
instances where it's clear that the cover is rotatable.

[00:01:55] Speaker 01:
And isn't that the same as pivoting, rotating?

[00:02:02] Speaker 01:
And so it seems fairly clear from looking at the patent specification that it wasn't an inadvertent error.

[00:02:12] Speaker 05:
A few points in response, Your Honor.

[00:02:15] Speaker 05:
Yes, we acknowledge that in the patent, the preferred embodiments show the cover, pivoting or rotating.

[00:02:23] Speaker 05:
Of course, the patent is not limited to its preferred embodiments.

[00:02:26] Speaker 05:
But even putting that aside, just look at what the court said in its NOVO decision.

[00:02:30] Speaker 05:
The court there said that the district courts, courts generally, are only permitted to correct obvious and minor errors.

[00:02:40] Speaker 05:
So I think your honor's point goes to whether the error, the reported error is obvious.

[00:02:47] Speaker 05:
We would argue it's not.

[00:02:48] Speaker 05:
But even if it were, it's not a minor error.

[00:02:52] Speaker 05:
This is a wholesale modification, taking one structural component and replacing it with another.

[00:02:57] Speaker 05:
That's beyond what this court has permitted in any case that has come before it.

[00:03:02] Speaker 04:
Well, why isn't it?

[00:03:04] Speaker 04:
This is Judge Prouse.

[00:03:05] Speaker 04:
Why isn't it minor in the sense that if it's obvious,

[00:03:09] Speaker 04:
And therefore, every person would have read this and understood that they meant cover and not case.

[00:03:15] Speaker 04:
Why doesn't that make it a minor change?

[00:03:18] Speaker 04:
It seems to me one could arguably say that those two standards, minor and obvious, kind of go together and complement each other.

[00:03:25] Speaker 04:
So minor in the abstract, I don't know.

[00:03:29] Speaker 04:
But minor, once you establish that this was obvious on the face of the patent, that this was obviously what they meant, then why isn't that sufficient to say it meets the minor test as well?

[00:03:43] Speaker 05:
A few points in response to that, Judge Price.

[00:03:45] Speaker 05:
First, we would argue that obvious and minor are separate requirements.

[00:03:49] Speaker 05:
But even if they are related, as your honor knows, we should look at what the PTAB did here.

[00:03:55] Speaker 05:
What the PTAB did, when Pablo went to the PTAB during IPR and asked for a certificate of correction, the PTAB denied it.

[00:04:03] Speaker 05:
And the reason, I think, is very important.

[00:04:05] Speaker 05:
They said that the correction would result in a, quote, moving target.

[00:04:10] Speaker 05:
So what the board recognized is that this change would

[00:04:15] Speaker 05:
fundamentally change what the patent covered and what it claims.

[00:04:20] Speaker 04:
Well, I think, actually, can I just ask for clarification?

[00:04:22] Speaker 04:
Did they say it would result in a moving target, or it could result in a moving target?

[00:04:27] Speaker 04:
I don't know if that's a dispositive difference, but I think you said would, and I think they said could.

[00:04:32] Speaker 05:
I think you're right on that, Judge Gross.

[00:04:34] Speaker 05:
I think they said it could result in a moving target.

[00:04:37] Speaker 05:
It could lead to a moving target.

[00:04:39] Speaker 05:
This is Appendix 1.1.

[00:04:41] Speaker 04:
And what does that mean to you?

[00:04:42] Speaker 04:
What do you understand that to mean that it could result in a moving target?

[00:04:47] Speaker 05:
What we understand that to mean is, I'm sorry, I didn't mean to cut you off, Judge Gross.

[00:04:52] Speaker 04:
No, I was done.

[00:04:53] Speaker 04:
Thank you.

[00:04:54] Speaker 05:
We understand that to mean that the board recognized that this was not

[00:04:59] Speaker 05:
minor change.

[00:05:00] Speaker 05:
This was a change that would substantively impact what the claims covered.

[00:05:06] Speaker 05:
And I think something that's important to hear.

[00:05:07] Speaker 02:
We don't have any analysis to that, right?

[00:05:10] Speaker 02:
I mean, we're speculating a little bit.

[00:05:12] Speaker 02:
I mean, if you're pointing us to this patent board decision for its persuasive authority, because that's all it could possibly be for, there's just not a lot there.

[00:05:24] Speaker 02:
So I understand what you're trying to use with the patent board decision, but because there really is no there there in terms of analysis for us to be persuaded by, I'm afraid you're on your own or you have to find something else to analogize to give us some way of thinking through this on why

[00:05:49] Speaker 02:
What is very apparent to me is an obvious clerical error, and that the correction is likewise very obvious based on reading this very short three and a half column written description of a rather straightforward invention.

[00:06:04] Speaker 02:
why, nevertheless, this type of error is a major one, not a minor one.

[00:06:11] Speaker 02:
And it's so significant that we should understand this judicial correction doctrine as barring this kind of substitution of one word for another.

[00:06:23] Speaker 05:
Thank you for that, Judge Chen.

[00:06:25] Speaker 05:
And a few points in response.

[00:06:26] Speaker 05:
The first is that you suggested that we have to sort of breed tea leaves with the board's

[00:06:34] Speaker 05:
rejection of the certificate of correction request.

[00:06:37] Speaker 05:
What I would point to is the no-vote decision, which sets out the standard for judicial correction, says that correction is not proper if prosecution history suggests a different interpretation.

[00:06:51] Speaker 05:
So I think, at the very least, what we have in the board's rejection of the claim correction request is a suggestion that a correction is not proper.

[00:07:01] Speaker 05:
And we even read it to suggest that the correction

[00:07:06] Speaker 02:
Let's assume for the moment that Novo is really trying to get at the dialogue between the patent examiner and the patent applicant in the original prosecution that led to the grant of this patent, and whether there was something there to glean from whether there was an understanding there between the relevant parties, the applicant and the examiner, on what is the meaning and scope of this claim.

[00:07:32] Speaker 02:
And if you look at the ex parte quail action, you will see that the examiner was talking about how he was going to or she was going to allow these claims because of this unique feature of having a hinge element on the case and then another hinge element on the cover where the two hinge elements of the case and cover are cooperating with each other.

[00:07:56] Speaker 02:
You know, it doesn't expressly say, and therefore, for rotating the cover around the case.

[00:08:02] Speaker 02:
But it doesn't take a lot of dots to connect that the examiner was contemplating this, in his or her view, a unique arrangement of a cover that was hingedly coupled to the case for rotating.

[00:08:22] Speaker 05:
And Your Honor, we appreciate that the

[00:08:26] Speaker 05:
Prosecution history has to be looked at in criticality.

[00:08:29] Speaker 05:
The IPR becomes a part of that prosecution history.

[00:08:33] Speaker 05:
So we don't believe it's only relevant to look at what happened in the original back and forth between the examiner and the applicant.

[00:08:39] Speaker 05:
We cited the A-list case for that proposition.

[00:08:42] Speaker 05:
I don't believe, I'll let Pablo speak when they get up, I don't believe they disputed that that becomes a part of the prosecution history that therefore is relevant.

[00:08:51] Speaker 05:
Your honor suggested that it doesn't take a lot of dots to connect what the examiner said and claims the issue.

[00:08:57] Speaker 05:
I submit that it takes even less dots to connect what the board said in IPR, and it's understanding that this would have been a major change.

[00:09:06] Speaker 05:
And one thing I want to point out to your honor is what's in the NPEP, because that is what I understand the board would have been applying when it received the certificate of correction.

[00:09:18] Speaker 05:
What the NPEP says on this point

[00:09:20] Speaker 05:
Of course, it's not binding on this court, but I think it's helpful.

[00:09:24] Speaker 05:
This is at section 1481.

[00:09:25] Speaker 05:
It says that a change is not of the minor character required for the issuance of the certificate of correction if it would, and this is a quote, materially affect the scope or meaning of the patent.

[00:09:40] Speaker 05:
And we submit that clearly here, the change that was entered by the district court changed the scope and the meaning of the patent.

[00:09:50] Speaker 01:
Counsel, you wanted to talk about damages as well.

[00:09:56] Speaker 05:
Yes, Your Honor, and thank you for that.

[00:09:57] Speaker 05:
I'll move on to the first of the two damages points, which is the disclosure of the total accused product revenue by Pavo during trial.

[00:10:09] Speaker 05:
In unilater, this court was clear that disclosure of total revenue to a jury can skew the damages horizon

[00:10:17] Speaker 05:
Once that figure has, once that tax has been let out of the bag, it can never be put back in.

[00:10:22] Speaker 05:
Cases like power integrations and laser dynamics say that quote revenue only serves to make the patentee's profit damages amount as your modest buying comparison.

[00:10:33] Speaker 02:
Mr. Belanco, is it your understanding of our law that any reference to total revenue generated by the defendants is

[00:10:45] Speaker 02:
just automatic prejudicial error that requires a new trial?

[00:10:50] Speaker 05:
No, that's not our position.

[00:10:52] Speaker 02:
We recognize that.

[00:10:52] Speaker 02:
So there has to be some context consideration.

[00:10:57] Speaker 05:
There is context that must be considered.

[00:10:59] Speaker 05:
And the context here demonstrates that it was a problem.

[00:11:02] Speaker 05:
And what I mean by that is there are certain cases, and I believe that CSIRO is one, where the proffered damages theory relies on total accused revenue.

[00:11:13] Speaker 05:
There's no way to

[00:11:14] Speaker 05:
shield the jury from hearing that.

[00:11:16] Speaker 05:
The theory is based on that, and they must hear it.

[00:11:19] Speaker 05:
That simply was not the case here.

[00:11:22] Speaker 04:
But am I misreading?

[00:11:23] Speaker 04:
This is Judge Proce.

[00:11:24] Speaker 04:
Sorry to interrupt.

[00:11:25] Speaker 04:
But couldn't the jury, given the evidence that was on the record, have figured out the total sales revenue?

[00:11:34] Speaker 05:
Yes, Your Honor.

[00:11:35] Speaker 05:
The jury could have pieced it together

[00:11:38] Speaker 05:
different spreadsheets, but the way that Pavel presented the total revenue figure during his opening statement in particular was truly troublesome.

[00:11:49] Speaker 05:
And I'll just quote from the opening statement.

[00:11:51] Speaker 04:
And you didn't object, right?

[00:11:52] Speaker 04:
You didn't object to the opening statement, right?

[00:11:55] Speaker 05:
No, Your Honor, we certainly did.

[00:11:57] Speaker 05:
So before the opening statement, the

[00:12:01] Speaker 05:
Pablo has submitted a demonstrative that it was going to use in its opening that included the total revenue.

[00:12:09] Speaker 05:
We objected to that.

[00:12:10] Speaker 05:
There was a hearing before opening on that in which Judge Staton said the Pablo can't use the slide, but they're free to state the figure.

[00:12:22] Speaker 05:
And actually, Judge Staten said that three different times.

[00:12:25] Speaker 05:
She said, I'm not going to limit you.

[00:12:27] Speaker 05:
This is an appendix 2008084.

[00:12:31] Speaker 05:
And in particular, the pin site for what Judge Staten said was 20084, line 21 until the next page, line 6.

[00:12:45] Speaker 05:
And so we objected.

[00:12:46] Speaker 05:
We pointed out a unilock.

[00:12:47] Speaker 05:
We said this is inappropriate.

[00:12:49] Speaker 05:
Going back to Judge Chen's question, it was not related at all to the damages model that was used by Pavo.

[00:12:59] Speaker 05:
And it should have been excluded.

[00:13:01] Speaker 01:
There's another point you wanted to make on damages.

[00:13:05] Speaker 05:
And I will quickly, Your Honor, because here I made my rebuttal time.

[00:13:08] Speaker 05:
And that is IP media and Pavo's expert use of that agreement

[00:13:16] Speaker 05:
Your honors, that agreement was for a term of one sec per unit.

[00:13:20] Speaker 05:
That was the payment term.

[00:13:22] Speaker 05:
Georgia Pacific Factor 1 says that you must use the royalties received by a prior licensee if you're going to use that methodology.

[00:13:30] Speaker 05:
Mr. Berkman didn't do that.

[00:13:32] Speaker 05:
He used a representation that was not a payment term.

[00:13:35] Speaker 05:
And we would say that that was a methodological error that also did not apportion it for that reason.

[00:13:43] Speaker 02:
Just one real quick question on willfulness.

[00:13:46] Speaker 02:
I don't think your theory of why there's no willfulness that you raised on appeal was a theory that you raised below.

[00:13:55] Speaker 02:
Is there a pin site that you can point me to that shows me that the theory that because there was a judicial correction required here as a matter of law, there couldn't possibly be willful infringement?

[00:14:08] Speaker 02:
Where did you argue that below?

[00:14:10] Speaker 05:
I can, Your Honor.

[00:14:15] Speaker 05:
And this is at Appendix 1477.

[00:14:19] Speaker 05:
We made that argument for why there should have been no finding of willfulness by the jury.

[00:14:24] Speaker 05:
We then also argued it in our enhancement brief that there should be no enhancement for willfulness.

[00:14:30] Speaker 05:
That brief did not actually make it into the appendix.

[00:14:33] Speaker 05:
But you can see in the court's order, and this is at Appendix 1629, the court acknowledges the argument was made and then rejects it.

[00:14:44] Speaker 01:
We will give you your full three minutes of rebuttal back.

[00:14:48] Speaker 05:
Thank you, Your Honor.

[00:14:49] Speaker 01:
Mr. Wang.

[00:14:52] Speaker 00:
Good morning, Your Honors.

[00:14:53] Speaker 00:
May it please the court?

[00:14:55] Speaker 00:
The district court was right in correcting the claims.

[00:14:58] Speaker 00:
The point of the invention is a pivoting cover.

[00:15:00] Speaker 00:
And correcting the claims from case to cover was self-evident from the claims and consistent with the specification in the prosecution history.

[00:15:08] Speaker 04:
OK, so where does this fit in our case law?

[00:15:11] Speaker 04:
It's not a typographical error, right?

[00:15:13] Speaker 04:
Are you saying this is a clerical error?

[00:15:17] Speaker 00:
Your Honor, I would contend that it's both a clerical error and typographical error and consistent with this court's Novo line of cases.

[00:15:24] Speaker 00:
I know Novo didn't correct the claim in that case, but Ultimax is a very good case for this particular issue.

[00:15:32] Speaker 02:
That's the comma, right?

[00:15:33] Speaker 00:
Yes, that is the comma, dealing with chemical compounds.

[00:15:37] Speaker 00:
Kingston tries to dismiss the Ultimax cases just involving a comma, but it is a chemical compound case where commas make a very big deal, and they are different components.

[00:15:48] Speaker 00:
Ultimax is really insightful in this case because the Ultimax patent actually involved two certificates of correction, and it was one of those certificates that actually injected the error into the claims.

[00:15:59] Speaker 00:
Nevertheless, this court held that judicial correction was appropriate because the error and the correction was obvious.

[00:16:06] Speaker 00:
And the same thing applies in this case.

[00:16:08] Speaker 00:
Ultimax makes very clear that notwithstanding an amendment, not even withstanding a certificate of correction, that it is within the court's authority to make a correction to an obvious error.

[00:16:19] Speaker 00:
And it certainly was an obvious error in this case.

[00:16:22] Speaker 00:
The claims themselves are self-evident that there was a mistake here.

[00:16:25] Speaker 04:
Well, did you have an opportunity, or did you think that you were obviously aware of this error for a long time?

[00:16:30] Speaker 04:
Because it's so obvious.

[00:16:31] Speaker 04:
Everyone who had read the patent would have known that it was an error, right?

[00:16:35] Speaker 04:
So wasn't there an opportunity for you before, even this board proceeding, to come in for a certificate of correction?

[00:16:43] Speaker 04:
Your Honor, isn't there some obligation on you all to try to correct it and clean it up?

[00:16:48] Speaker 04:
Obviously, we could have avoided all of this.

[00:16:52] Speaker 00:
I think that's right, Your Honor.

[00:16:53] Speaker 00:
And we didn't understand the error until we became involved with the case, which was many years later.

[00:17:00] Speaker 00:
But that sort of policy concern is, in some respects, that war with the Essex case and the Novo line of cases

[00:17:08] Speaker 00:
which recognized that it is appropriate for courts to make corrections in certain circumstances, and that there are good reasons for not forcing a patentee to use the PTO as the only alternative.

[00:17:22] Speaker 00:
Because the PTO obviously is prospective only, and that is a significant difference to the term of the patent and the potential damages, and it would have had that effect in this case.

[00:17:32] Speaker 00:
And also forcing the PTO, forcing the patentee to go to the PTO,

[00:17:36] Speaker 00:
It delays proceedings, and it multiplies proceedings.

[00:17:41] Speaker 04:
OK, so here you were at the board.

[00:17:43] Speaker 04:
And the board said, what term did the board use that it would have been a moving target?

[00:17:51] Speaker 04:
What does that mean?

[00:17:51] Speaker 04:
A moving target suggests that there is something significant or substantive.

[00:17:56] Speaker 04:
This is less than minor.

[00:17:58] Speaker 04:
Because if it was just minor, why would the board have viewed it as a potential moving target?

[00:18:05] Speaker 04:
And they wouldn't say that about a typo, I don't think, or a comma.

[00:18:10] Speaker 00:
Your Honor, I think that there is a lot of speculation as to what the board's statement means.

[00:18:15] Speaker 00:
Did it mean moving target in the sense that the substance and merits were going to change, or did it mean a moving target just because of the circumstances and the timing of the proceedings?

[00:18:24] Speaker 01:
Yes, wasn't it a timing issue?

[00:18:26] Speaker 00:
Yes, Your Honor.

[00:18:27] Speaker 00:
And I think that is the fairest reading of the board's reaction to this, was that they acknowledged that the timing was not great for this request, coming two months before the oral hearing.

[00:18:39] Speaker 00:
And so I think Kingston is really just packing too much into the board's decision.

[00:18:43] Speaker 00:
Nor could the board really even do the required analysis.

[00:18:47] Speaker 00:
Their analysis is different than the NOVO analysis for judicial correction.

[00:18:51] Speaker 00:
So really, there's really nothing we can take away from the board's decision in denying that certificate of correction.

[00:18:57] Speaker 04:
Let me ask you about Judge Chenray's the willfulness.

[00:19:00] Speaker 04:
Let's assume, hypothetically, not this case, but if there were an alleged infringer who looked at the patent, saw this

[00:19:09] Speaker 04:
you know, cover versus case thing, and said and put in writing, well, this is not an error, but this is what the patent says.

[00:19:19] Speaker 04:
And therefore, we don't think we're at risk for infringement, because this is what the patent says.

[00:19:24] Speaker 04:
And it doesn't make any sense, just like kind of Shep America.

[00:19:28] Speaker 04:
What impact would that have on willfulness?

[00:19:32] Speaker 04:
Is it your view that if we were to conclude here that this was just a minor change or an obvious change, that that would also absolutely just black letter law not affect or interfere with the willfulness finding under any circumstances?

[00:19:47] Speaker 00:
So, Your Honor, I think that is a very interesting question.

[00:19:52] Speaker 00:
First, I think that here, because it is an obvious error, that there is nothing that immunizes Kingston from a willful infringement verdict, which is what happened here.

[00:20:03] Speaker 00:
Now, if the record where that Kingston actually had

[00:20:07] Speaker 00:
documentation or evidence that it did review the patent, saw that it was an error, believed it was an error that could be corrected, then perhaps there would be no basis for the willful infringement finding.

[00:20:18] Speaker 00:
But that was not the record here.

[00:20:19] Speaker 04:
Wait, if they saw the error and thought that the error could be corrected, there would be no basis for willfulness finding?

[00:20:25] Speaker 00:
Your Honor, I meant to say if they saw the error and believed it could not be corrected, then they may have the evidence to

[00:20:33] Speaker 00:
reverse or not be found in willful infringement.

[00:20:37] Speaker 04:
But how could that be if your view is correct?

[00:20:40] Speaker 04:
If it's so obvious, if you want us to conclude that it was so obvious that anyone looking at the face of the patent would have known what it said, then how would it get even

[00:20:50] Speaker 04:
If they didn't have their eyes open right, but if we were to conclude that this is so obvious, then how would that dislodge a willful thing, even if in good faith we're right?

[00:21:03] Speaker 04:
They looked at it.

[00:21:04] Speaker 04:
They said, this doesn't make any sense.

[00:21:05] Speaker 04:
We're not worried about this patent infringement.

[00:21:08] Speaker 04:
It's giving me a problem, because I think the two are in tension.

[00:21:12] Speaker 00:
Well, Your Honor, I think that in a certain circumstance where it is so obvious, they may still be found willfully infringing.

[00:21:22] Speaker 00:
However, there is a subjective element to willfulness, right?

[00:21:26] Speaker 00:
What did the alleged infringer really believe?

[00:21:29] Speaker 00:
And so I can't rule out that there might be a situation where a jury would say they can't be found willfully infringing.

[00:21:35] Speaker 04:
And it wouldn't be kind of willful blindness?

[00:21:37] Speaker 04:
It was the conclusion that it's obvious?

[00:21:39] Speaker 00:
That's the position we would take as the plaintiff certainly, Your Honor.

[00:21:43] Speaker 00:
The record here is not that.

[00:21:45] Speaker 02:
Maybe there are shades of obvious.

[00:21:48] Speaker 02:
There's super, super obvious.

[00:21:50] Speaker 02:
And then there's qualifies over the bar obvious, but still maybe a little bit of a closer question of whether it ought to, by the court, be deemed obvious.

[00:22:01] Speaker 00:
Your Honor, I think it's a really interesting hypothetical.

[00:22:04] Speaker 00:
I don't know the right answer.

[00:22:05] Speaker 00:
I do think that this is something that would be best served by putting to the jury in those instances.

[00:22:11] Speaker 02:
Is there something you can do to help us understand what kind of principled thinking we should have when it comes to identifying or characterizing whether an error is of a minor sort versus

[00:22:26] Speaker 02:
that other kind that is just too significant or major or substantive that it shouldn't be amenable to judicial correction?

[00:22:37] Speaker 00:
Your Honor, I would simply just rely on the NOVO line of cases.

[00:22:42] Speaker 00:
It sets out the test, whether there's reasonable debate based on it.

[00:22:45] Speaker 00:
Right.

[00:22:45] Speaker 02:
But that doesn't really tell us very much so far.

[00:22:48] Speaker 02:
And so we have you here.

[00:22:50] Speaker 02:
You've been thinking about this appeal quite a bit.

[00:22:52] Speaker 02:
So we need a little help from you.

[00:22:56] Speaker 02:
At one point, we've already said under NOVO that the type of correction has to be beyond a reasonable debate, and the error has to be obvious.

[00:23:08] Speaker 02:
But we've also said it has to be an obvious minor typographical or clerical error.

[00:23:14] Speaker 02:
And so the question is, is there

[00:23:17] Speaker 02:
when you have a circumstance that maybe in one sense the correction looks small, maybe substituting one word for another word, but then it has such a dramatic alteration to the overall claim scope that it then becomes questionable whether it's fair to call it a correction that's just a mere minor one.

[00:23:44] Speaker 00:
Your Honor, maybe I see it a bit differently.

[00:23:48] Speaker 00:
I think that when the courts apply the no vote test,

[00:23:51] Speaker 00:
and they determine that the intrinsic record makes it very clear that there is an error there and makes it very clear what the correction is, then as a result, that correction is deemed minor and not a major change.

[00:24:05] Speaker 00:
If there's some doubt about how it should be corrected, potentially there are alternative possible corrections, then it becomes something that cannot be changed.

[00:24:16] Speaker 00:
in that particular circumstance, it's considered major, then so be it.

[00:24:20] Speaker 00:
But I really think it's the application of the no-vote test.

[00:24:24] Speaker 04:
Well, what about Chef America?

[00:24:26] Speaker 00:
Yes, so Kingston relies on Chef America and Hamanetics for the principle that courts don't redraft claims, whether that be to save it from invalidity or to make it operable.

[00:24:38] Speaker 00:
But that is very different than the situation we're facing here, as recognized by Essex and other cases, where if there is an obvious error in the claims.

[00:24:47] Speaker 04:
Wasn't the error in Chef America as obvious come under the rubric of obvious?

[00:24:53] Speaker 00:
Well, Your Honor, actually, so Chef America, it was obvious that that was what the patentee intended the claim to say.

[00:25:02] Speaker 00:
And there was nothing inconsistent in the claim language or in the specification or in the prosecution history that suggested a different interpretation, nothing that supported what the patentee was proposing in that case.

[00:25:15] Speaker 00:
And so Chef America,

[00:25:16] Speaker 00:
said the claims here are unambiguous, and it expressly distinguished Czech America from the judicial correction cases, and even cited Novo.

[00:25:26] Speaker 00:
And the major distinction there was that in Czech America, there was no ambiguity about the claim, and there was nothing inconsistent with the record.

[00:25:33] Speaker 02:
And the patent owner didn't seek judicial correction.

[00:25:36] Speaker 00:
That's right.

[00:25:37] Speaker 00:
And Chef America, the court there, expressly stated the patentee here didn't seek correction at the PTO or the district court, or even assert that this language was an error.

[00:25:47] Speaker 00:
The problem was simply that in practice, it led to dough that would be burnt to a crisp.

[00:25:56] Speaker 00:
Nevertheless, that's what the claim said, and there was nothing inconsistent with that in the intrinsic record.

[00:26:01] Speaker 04:
Is there a difference?

[00:26:02] Speaker 04:
Is there a legal distinction between seeking judicial correction or just making the same exact arguments that you make in Novo, but putting it under the rubric of claim construction or something else and not judicial correction?

[00:26:19] Speaker 04:
I mean, why would that make a difference?

[00:26:22] Speaker 00:
Maybe the analysis at the end of the day is the same, Your Honor.

[00:26:25] Speaker 00:
But by not asking for judicial correction, it's a bit of a tell that you didn't consider this or you don't view this as an inadvertent matter.

[00:26:33] Speaker 04:
Well, I want to say the same thing about you not having gone to the board beforehand or at some point back to the Patent Office and saying you had plenty of time years beforehand and saying we need a correction on this.

[00:26:46] Speaker 04:
I guess I'm just not understanding why seeking a judicial correction

[00:26:51] Speaker 04:
not having gone back to the board or PTO for a correction somehow counts for you as opposed to what happened in Chef America.

[00:27:01] Speaker 01:
Is that something a potential infringer could do?

[00:27:04] Speaker 01:
Go back to the Patent Office and correct it?

[00:27:09] Speaker 04:
I'm not sure if it would.

[00:27:11] Speaker 04:
No, I meant the Patent Owner.

[00:27:13] Speaker 00:
Yes, the patent owner could, of course, go back to the patent office and request a certificate of correction.

[00:27:19] Speaker 00:
But with that, there are significant downsides.

[00:27:23] Speaker 00:
The patent office only does perspective, and so you'd be giving a lot of the damages period away.

[00:27:28] Speaker 02:
Is there anything in the case law that suggests there's a forfeiture component to judicial correction or a certificate of correction avenue back to the PTO where

[00:27:38] Speaker 02:
If you've waited too long and it's been out there for so long with this mistake, this error, this defect, it's just too stale for you to try to save it at the end of the day.

[00:27:52] Speaker 00:
Your Honor, I'm not aware of any case or any authority that suggests that.

[00:27:59] Speaker 04:
But wait a minute.

[00:27:59] Speaker 04:
But you just suggested, and you know these patent procedures better than I probably.

[00:28:03] Speaker 04:
But if you had gone to the, there was a disincentive for you to go to the PTO and get a correction sooner rather than later, because then your rights would be limited just being prospective.

[00:28:15] Speaker 04:
So there's a significant advantage

[00:28:17] Speaker 04:
to waiting and getting a judicial correction of an obvious error because of that disincentive, I guess.

[00:28:25] Speaker 00:
Your Honor, there's nothing in the record that suggests that the patency here sat on its rights and for purposes of avoiding it.

[00:28:33] Speaker 04:
No, but is that right as a matter of the way the process works?

[00:28:36] Speaker 04:
You suggested it.

[00:28:38] Speaker 00:
No, Your Honor, I think you're right.

[00:28:40] Speaker 00:
I mean, there are significant drawbacks that people are aware of if you seek a certificate of correction at the PTO.

[00:28:47] Speaker 00:
But there is no authority that I'm aware of that says that there's some sort of time limit.

[00:28:53] Speaker 00:
I can only point you back to the Ultimax case, where in that case, there were not one but two certificates of correction.

[00:28:58] Speaker 00:
And yet, when this issue finally surfaced at the court, they still made the judicial correction because the error was obvious.

[00:29:06] Speaker 04:
And sometimes- Well, why would the board have the PTO?

[00:29:09] Speaker 04:
I mean, do we have cases on that?

[00:29:10] Speaker 04:
That if you get a certificate of correction at the patent office, it only applies prospectively.

[00:29:15] Speaker 04:
In other words, retroactively, there's no correction in the uncorrected patent stand for purposes of damages or whatever.

[00:29:22] Speaker 00:
Your honor, Novo discusses that actually and acknowledges that the PTO correction is just perspective only.

[00:29:28] Speaker 00:
And it did that because it was discussing the difference between the avenue of PTO correction versus judicial correction.

[00:29:36] Speaker 00:
And also acknowledge that Congress in enacting those statutes

[00:29:40] Speaker 00:
didn't overrule Essex or mean to take away the authority of the court's judicial correct.

[00:29:44] Speaker 00:
Well, OK.

[00:29:44] Speaker 04:
Well, I'm just asking you hypothetically.

[00:29:47] Speaker 04:
Obviously, none of this is written by Congress.

[00:29:50] Speaker 04:
It's judicial.

[00:29:51] Speaker 04:
But if Congress were to look at this, would there be a basis for which Congress would distinguish between those two corrections and make one so much more

[00:30:02] Speaker 04:
and arguably broader if you seek judicial correction than if you go to the PTO.

[00:30:09] Speaker 04:
Can you think of a policy reason, the courts, that the Congress would have distinguished between those two?

[00:30:15] Speaker 00:
Your Honor, I can't, but I can tell you that Congress has looked at that.

[00:30:21] Speaker 00:
And when it enacted section 255,

[00:30:25] Speaker 00:
Essex was already on the books.

[00:30:27] Speaker 00:
And Novo acknowledged, looking through that legislative history, that there was nothing that indicated that Congress intended to change it.

[00:30:34] Speaker 00:
One thing I think that is important for judicial correction is it sort of acknowledges this principle that to err is human and to forgive divine.

[00:30:42] Speaker 00:
And when you are looking at an error, oftentimes what you see is being confused by what your brain expects.

[00:30:49] Speaker 00:
And that happens because your brain is expecting what it understands and what it intends.

[00:30:54] Speaker 00:
And that, I think, is consistent with what happened in this record.

[00:30:58] Speaker 00:
Everyone understood what the claim was meant to cover.

[00:31:02] Speaker 00:
And they didn't catch this error, unfortunately, until much later.

[00:31:05] Speaker 00:
And no case law precludes that later judicial correction by Judge Staten.

[00:31:12] Speaker 02:
I know you're out of your time, but could you just

[00:31:15] Speaker 02:
explain and distinguish away the Rembrandt opinion, where this court found there was no judicial correction that was going to be allowed there to permit the addition of the transmitter section term into the claim.

[00:31:32] Speaker 00:
In that case, Your Honor, the claim was written.

[00:31:36] Speaker 02:
You called it a substantively significant change or something like that.

[00:31:40] Speaker 00:
That's right.

[00:31:41] Speaker 00:
And the claim was written as an apparatus.

[00:31:45] Speaker 00:
The problematic limitation was a method step at the end.

[00:31:49] Speaker 00:
The patentee had proposed correcting it or adding the language that would make that last limitation consistent with the apparatus claim itself.

[00:32:02] Speaker 00:
There's not much analysis, unfortunately, in that Rembrandt decision.

[00:32:07] Speaker 00:
It simply really just adopts the district court's determination that that was not supported by the record.

[00:32:12] Speaker 00:
So how do you distinguish it then?

[00:32:15] Speaker 00:
I think the result was that there was nothing in the intrinsic record that supported that correction.

[00:32:24] Speaker 00:
Everything in the intrinsic record suggested that that was what it was intended.

[00:32:28] Speaker 00:
And I think that's the distinction between many of these cases, Your Honor.

[00:32:34] Speaker 00:
Is it obvious from the intrinsic record that there was an error in what the correction should be?

[00:32:39] Speaker 00:
And if so, the courts have the power to correct.

[00:32:44] Speaker 00:
Your Honor, I know I'm way past my time.

[00:32:46] Speaker 04:
Could I just, I was just, with permission from the residing officer, just take a, please take a minute and just respond to the revenue, the sales revenue point that your colleague was making.

[00:32:56] Speaker 00:
Yes, Your Honor, so.

[00:32:57] Speaker 04:
Because we have cases that make that a no-no, right?

[00:33:00] Speaker 00:
That is the Unilock case, Your Honor, and there are cases that acknowledge that certain references to information like that are acceptable, like the Vectura case and Sincor.

[00:33:12] Speaker 00:
In this instance, there are two main points to that.

[00:33:15] Speaker 00:
One is that we know

[00:33:17] Speaker 00:
The record suggests that they were not unfairly prejudiced by these three isolated statements to the revenue.

[00:33:23] Speaker 00:
The record suggests that they weren't unfairly prejudiced because they didn't ask for a curative instruction, even though Judge Staton specifically told them, if you want me to add anything to the instructions, I'll do so.

[00:33:34] Speaker 00:
And yet, they didn't take her up on that.

[00:33:36] Speaker 00:
She did instruct them on the proper role of the jury in determining the value.

[00:33:42] Speaker 00:
And Kingston never filed a 50A or 50B motion on this issue, nor did they ask for a new trial on this issue.

[00:33:49] Speaker 00:
In taking that approach, they really deprived Judge Staton of the opportunity to consider the issue fully, to determine if there was a way to ameliorate it, and deprived this court of the full record had she done that.

[00:34:01] Speaker 00:
Now, going to the statements themselves, Your Honor, these are three isolated statements, two statements made in opening.

[00:34:07] Speaker 00:
The initial statement was made in the context of rebutting their argument that their non-infringing alternatives would sell just as well.

[00:34:15] Speaker 00:
And just a mere minutes after that, I made the second statement.

[00:34:18] Speaker 00:
And of course, the jury was told that opening statements are not evidence.

[00:34:21] Speaker 00:
The third statement was made by Mr. Bergman, also in the context of rebutting their non-infringing arguments, non-infringing alternatives arguments.

[00:34:29] Speaker 04:
I don't want to labor it.

[00:34:31] Speaker 00:
Sure, Your Honor.

[00:34:32] Speaker 00:
If I may conclude, Judge Lurie.

[00:34:35] Speaker 01:
Conclude, yes.

[00:34:37] Speaker 00:
Yes, thank you, Your Honor.

[00:34:38] Speaker 00:
So Judge Staton's rulings were correct.

[00:34:40] Speaker 00:
And her imagine of this case should be lauded, not derided, as Kingston does in the briefs.

[00:34:44] Speaker 00:
The correction here was obvious.

[00:34:46] Speaker 00:
Kingston's machinations are divorced from the intrinsic record and purely flawed, extrinsic evidence.

[00:34:52] Speaker 00:
And the damages decisions of Judge Staton were not an abuse of discretion.

[00:34:57] Speaker 01:
Thank you, Your Honors.

[00:34:58] Speaker 01:
Thank you, Mr. Wang.

[00:35:00] Speaker 01:
Mr. Belanco.

[00:35:03] Speaker 01:
You may take five minutes for a bottle.

[00:35:09] Speaker 05:
Thank you, Your Honor.

[00:35:11] Speaker 05:
Your Honors, I want to go to a few things that were raised by Mr. Wang in his judicial correction argument.

[00:35:19] Speaker 05:
One thing that Judge Price, you announced a few questions asking whether Pavo and his predecessors had had an opportunity before to address this reported error.

[00:35:30] Speaker 05:
They certainly did.

[00:35:32] Speaker 05:
And what's telling is right after the patent issued in 2006, Tavo's predecessor sought and received a certificate of correction that corrected nine different errors or reported errors in the patent.

[00:35:46] Speaker 05:
So Tavo's predecessor had the ability to actually exercise that ability.

[00:35:52] Speaker 05:
And it either didn't recognize or chose not to.

[00:35:56] Speaker 05:
I don't want to resign motive to address this cover case

[00:36:01] Speaker 05:
issue.

[00:36:02] Speaker 05:
So we have that.

[00:36:04] Speaker 05:
Also, I agree, Judge Prost, with your suggestion that whether or not the patentee frames their request as one for judicial correction should not control the court's analysis.

[00:36:21] Speaker 05:
We don't believe that's what happened in Chef America.

[00:36:23] Speaker 05:
But even putting that aside, in Hamanetics,

[00:36:26] Speaker 05:
it was acknowledged by the patentee that there was a potential error in the claims.

[00:36:32] Speaker 01:
Could this change have been remedied by a reissue application?

[00:36:41] Speaker 05:
I'm not sure that it could have, Your Honor.

[00:36:45] Speaker 05:
I believe that, well.

[00:36:46] Speaker 01:
Claiming more or less than he had a right to claim?

[00:36:50] Speaker 01:
But then wouldn't there have been intervening rights?

[00:36:54] Speaker 05:
I believe that that would have been the case, your honor, because this changed the scope of the patent.

[00:36:59] Speaker 05:
And so any reissue would have had intervening rights for what was not covered before that was then covered by the broader reissued patent.

[00:37:08] Speaker 05:
And again, going back to what the office looks at, when it looks at a correction under 255, it does not permit a correction for anything that would materially affect the scope

[00:37:23] Speaker 05:
meaning of the patent.

[00:37:24] Speaker 05:
I think it's significant because Mr. Wang pointed to Novo.

[00:37:27] Speaker 05:
He said that Mayo didn't mean to upset any of the law that had been put in place by Essex, but what Novo recognizes

[00:37:35] Speaker 05:
and says quite clearly is that the office's power to correct claims is greater than that of the district court.

[00:37:42] Speaker 02:
What about the Supreme Court's Essex opinion itself from 100 years ago, where there was a judicial correction there that did alter the scope of the claim, and it changed the limitation for a lift edge for that heel insert

[00:38:02] Speaker 02:
to require a rear lift edge or something like that.

[00:38:11] Speaker 02:
And so therefore, it did alter the scope of the claim in a structural sense.

[00:38:17] Speaker 05:
And Your Honor, what I would argue is the extent it altered the scope of the claims, it made it narrower.

[00:38:23] Speaker 05:
It specified that it wasn't just the upper part of the heel lift.

[00:38:27] Speaker 05:
It was the rear upper part.

[00:38:29] Speaker 05:
I think there had been a dispute between the parties as to whether the side would clarify.

[00:38:33] Speaker 05:
So it made the plane narrower, if anything.

[00:38:35] Speaker 05:
And we see that also in the other cases.

[00:38:37] Speaker 02:
Why wouldn't that be broadening, actually, where only the rear portion of the edge needed to be above a certain plane as opposed to the entire edge?

[00:38:52] Speaker 05:
I'm not sure I'd write it that way.

[00:38:55] Speaker 05:
could have read on either the side or the rear before and did the correction and altered the scope so that it was only the rear.

[00:39:03] Speaker 05:
But one thing I did want to

[00:39:04] Speaker 05:
go back to was the Rembrandt case that was brought up by your owners and the argument.

[00:39:09] Speaker 05:
Don't think that there's a distinction there.

[00:39:11] Speaker 05:
And what's important about Rembrandt is actually how it characterizes Ultimax, a case that Tyler relies on quite heavily.

[00:39:18] Speaker 05:
And what the applicant or the patentee sought to do in Rembrandt was add a limitation into the independent claims

[00:39:27] Speaker 05:
And the court distinguished open acts and said, simply adding in a comma is different than this, which is a fundamental redraft.

[00:39:34] Speaker 05:
We would argue the same is true here.

[00:39:36] Speaker 05:
There was a redraft by changing the structural makeup of the claim limitation.

[00:39:42] Speaker 05:
And to close, Your Honors, I would like to just end on this point, which is that there's been discussion about what Pablo could have done, what he couldn't have done, what would have been obvious to Kingston to not, what the patent office said.

[00:39:56] Speaker 05:
We would submit that.

[00:39:57] Speaker 05:
to the extent there's any ambiguity or disagreement on the record, that should fall on Pavel and his predecessors.

[00:40:05] Speaker 05:
They were the ones who were at liberty to seek correction, to draft the claims in the initial state, and that should not fall on Kingston, and certainly not as it comes to willfulness, to be found as a willful infringer of a claim that, as literally drafted, there does be Kingston did not set it.

[00:40:24] Speaker 05:
With that, Your Honor, I appreciate you for the time, and thank you very much.

[00:40:29] Speaker 01:
Thank you, counsel.

[00:40:30] Speaker 01:
We appreciate the arguments of both counsel, and the case is taken under submission.