[00:00:00] Speaker 03:
1795 Dexcom Inc.

[00:00:01] Speaker 03:
versus Abbott Diabetes Care Inc.

[00:00:40] Speaker 04:
Good morning.

[00:00:42] Speaker 04:
May it please the Court, William Adams, for DEXCOM.

[00:00:45] Speaker 04:
The District Court wrongly declined to enter a preliminary injunction requiring Abbott to withdraw its IPR petitions that it filed in violation of the party's forum selection clause.

[00:00:57] Speaker 04:
Abbott invoked the forum selection clause to force DEXCOM to litigate its infringement claims over the asserted patents in Delaware, and then it turned around

[00:01:05] Speaker 03:
and at the same time pursuit challenges to validity as to those same patents in the p tap this court has already did we talk about the problem of success that is whether the forum selection clause really does apply here uh... so you agree that the forum selection clause has to have the same interpretation for the covenant period and for the post covenant period

[00:01:31] Speaker 04:
uh... no your honor uh... over the forms of the form selection clause does not apply uh... to the covenant period the covenant period uh... is uh... which expired in uh... march of two thousand one uh... had no challenge provision that's an f one and f two it's set up six uh... set up exceptions in f three and f four for a second form selection clause didn't apply during the covenant

[00:01:54] Speaker 04:
That's correct, Your Honor, because section F3, which is at page appendix 346, allows for IPR proceedings during the, it allows only if one side violates the no-challenge version.

[00:02:13] Speaker 04:
So F1 and F2 are the baseline.

[00:02:15] Speaker 04:
There should be no challenges.

[00:02:16] Speaker 00:
We're familiar with that.

[00:02:18] Speaker 00:
You're familiar with that?

[00:02:19] Speaker 00:
Very familiar.

[00:02:20] Speaker 00:
But wait a minute, he wants to ask you another question.

[00:02:22] Speaker 03:
So what is it in the forum selection clause language that says it doesn't apply during the covenant period?

[00:02:28] Speaker 04:
There's nothing in the forum selection clause itself which doesn't say it applies in the provision.

[00:02:34] Speaker 04:
The way the district court actually ultimately read this was to say that F3 and F4... Okay, but forget about F3 and F4 for the moment.

[00:02:44] Speaker 03:
The forum selection clause on its face applies both during the covenant period and after

[00:02:51] Speaker 04:
Yes, there's nothing in the Forum Selection Clause itself which carves out or differentiates between the Covenant Period and the Non-Covenant Period.

[00:02:58] Speaker 03:
So then in terms of interpreting the Forum Selection Clause, it seems to me it has to have the same meaning during the Covenant Period and afterwards.

[00:03:07] Speaker 03:
And if that's true, it is also clear

[00:03:11] Speaker 03:
from the language of the provisions of the contract that during the covenant period, IPRs are permissible under certain circumstances, which seems to me necessarily to imply that the forum selection clause is not dealing with IPRs.

[00:03:31] Speaker 04:
respectfully noted respectfully no your honor the form selection clause does specify that all disputes arising out of the agreement shelby uh... shelby file in the district of delaware and this court uh... in the nip-on-shin-yap in the common period is clear that under some circumstances uh... i'd be yours can be maintained

[00:03:58] Speaker 04:
Yes, Your Honor.

[00:03:59] Speaker 04:
And it's also clear that's in F3.

[00:04:01] Speaker 04:
F4 also does provide that certain other disputes, including post-grant review proceedings, could be filed under F4.

[00:04:14] Speaker 04:
But that would be, obviously, those could only be in front of the PTAB.

[00:04:17] Speaker 04:
And it's very clear that could happen during the covenant period.

[00:04:21] Speaker 04:
So the form selection clause in J1

[00:04:23] Speaker 04:
doesn't cover those, doesn't cover those proceedings.

[00:04:26] Speaker 04:
Otherwise, there'd be no way to file PGRs during the course consistent with the Forum Selection Clause.

[00:04:32] Speaker 04:
So they're separate.

[00:04:33] Speaker 04:
The Forum Selection Clause is what kicks in.

[00:04:35] Speaker 04:
So the baseline is F1 and F2.

[00:04:38] Speaker 04:
There shouldn't be any litigation during the Covenant period.

[00:04:39] Speaker 04:
Nothing should be happening.

[00:04:40] Speaker 00:
Wait, wait, hang on.

[00:04:42] Speaker 00:
I'm not sure that's right.

[00:04:44] Speaker 00:
It says during the covenant period, there's no challenge to any patent or patent application.

[00:04:49] Speaker 00:
But there could be other litigation, right?

[00:04:52] Speaker 04:
Well, there could be other litigation.

[00:04:53] Speaker 04:
I think maybe it's F5 does allow for continuing the challenges that were preexisting the settlement license.

[00:05:01] Speaker 00:
But I'm just saying, are you saying that the only kind of litigation that can occur under a license agreement is just challenges to patents and patent applications?

[00:05:12] Speaker 04:
Well, just to be clear, there's subsection D, which precedes, which is also the covenant not to sue.

[00:05:19] Speaker 04:
And it's broader even than the no challenge provision in section J1.

[00:05:25] Speaker 04:
So the parties did not

[00:05:27] Speaker 04:
sort of envisioned that there would be no litigation that would trigger the forum selection clause during the covenant period.

[00:05:38] Speaker 04:
That's ultimately what the district court concludes.

[00:05:40] Speaker 03:
I'm sorry?

[00:05:41] Speaker 03:
I'm sorry, Your Honor?

[00:05:43] Speaker 03:
So they contemplated that the forum selection clause would apply during the covenant period.

[00:05:49] Speaker 04:
uh... no your honor the parties con so the party's contemplated that the form selection clause would kick in after the covenant period expires what's the basis because you have to read uh... section uh... it's at at what section out and section and and section j section f one f two says there's no challenges that's the baseline what if somebody violates that and files a challenge and that's why i have one selection clause applied to that

[00:06:17] Speaker 04:
uh... you know that's where i think it says you could bring uh... plot you could bring a challenge anywhere you want to get out of you of uh... of f three and f or f three is that sort of all of the rock once at one and a few are violated someone at one party reaches up one and a few that three allows uh... the other party to bring uh...

[00:06:40] Speaker 04:
you know, other challenges that it would like.

[00:06:44] Speaker 04:
And it's not constrained by the forum selection clause.

[00:06:49] Speaker 02:
What if the other party violated the covenant?

[00:06:53] Speaker 02:
Wouldn't the party trying to seek to enforce the agreement have a cause of action?

[00:06:57] Speaker 02:
Where would they file that?

[00:06:59] Speaker 02:
Anywhere they want?

[00:07:00] Speaker 04:
They would file it.

[00:07:02] Speaker 04:
Our view is that they could file it wherever they wanted to.

[00:07:05] Speaker 04:
And I think that if you look at the Forum Selection Clause, everyone's consented to Delaware.

[00:07:10] Speaker 03:
Let's assume that we reject your concern, and we conclude that the Forum Selection Clause necessarily applies during the Covenant period also.

[00:07:19] Speaker 03:
Let's make that assumption.

[00:07:21] Speaker 03:
Under those circumstances, it is clear, is it not, that the Forum Selection Clause doesn't bar IPRs?

[00:07:29] Speaker 04:
No, Your Honor.

[00:07:30] Speaker 04:
The Forum Selection Clause would still bar IPRs if you're looking at it on its terms because it directs that all disputes rising out of the agreement shall be filed in Delaware.

[00:07:42] Speaker 03:
It permits IPRs during the Covenant period under certain circumstances, right?

[00:07:48] Speaker 04:
I thought we were accepting that if we accepted that the Forum Selection Clause applies during the Covenant period,

[00:07:53] Speaker 04:
and applies outside the government is going to come into the only way interpret form selection was is that it doesn't cover i'd be ours respectfully i disagree your honor because it before selection clause requires that all disputes arising out of relating to the agreement which includes validity under the of of of parents must be published in delaware just addressing the only exception here you are not dresser question

[00:08:21] Speaker 03:
We have assumed for the moment that the form selection clause applies during the covenant period.

[00:08:27] Speaker 03:
Yes.

[00:08:27] Speaker 03:
And yet, during the covenant period, the contract explicitly says that under some circumstances, IPRs are permitted.

[00:08:35] Speaker 03:
Therefore, IPRs cannot be inconsistent with the form selection clause.

[00:08:41] Speaker 04:
I disagree, Your Honor, because you have to still read to the extent permitted.

[00:08:46] Speaker 04:
If you read this all, obviously I disagree with your premise that F3 and F4 allow, I'm sorry, that F3 allows for IPR proceedings.

[00:08:56] Speaker 04:
But if you do think that F3 allows for IPR proceedings,

[00:09:02] Speaker 04:
if you don't get for such a cause doesn't apply during that period we think that you also have to look back to the law of the case applied that's the assumption that you can't you understand your review look back to the law of the case the law of the case here is that on this in the western district of texas you want to talk about other things and what i want to talk about which is probably not used so the way we read these provisions

[00:09:33] Speaker 04:
is that the F3 and F4, they apply only during the covenant period, which expired in 2021.

[00:09:43] Speaker 04:
That is what the district court ultimately concluded.

[00:09:47] Speaker 03:
That's what the district court ultimately concluded.

[00:09:49] Speaker 03:
If the forum selection clause applies during the covenant period, then bringing in IPR is not inconsistent with the forum selection process.

[00:09:57] Speaker 02:
You honor, but the reason- The way you're arguing your case suggests that the forum selection clause applies one way during the covenant period and one way after the covenant period.

[00:10:10] Speaker 02:
but there's nothing in the form selection clause that says that.

[00:10:13] Speaker 04:
We don't think that the form selection clause does not kick in until after the covenant period and that's because of the default.

[00:10:24] Speaker 00:
Do you agree that F3 is not limited to proceedings at the PTO?

[00:10:30] Speaker 04:
F3 is

[00:10:34] Speaker 04:
That's correct.

[00:10:34] Speaker 04:
It's not limited to proceedings of the PTO, Your Honor.

[00:10:36] Speaker 04:
That's correct.

[00:10:37] Speaker 00:
Do you agree that the first sentence of the choice of forum says that the United States District Court for the District of Delaware shall have exclusive jurisdiction over any dispute arising from or under or relating to this agreement, right?

[00:10:55] Speaker 00:
It doesn't say, you know, except for what's said in F3, right?

[00:10:58] Speaker 00:
That's right, Your Honor.

[00:11:00] Speaker 00:
So if somebody were to file a suit under F3 during the covenant period,

[00:11:04] Speaker 00:
And they wanted to file it in district court.

[00:11:06] Speaker 00:
Wouldn't they be limited to Delaware?

[00:11:08] Speaker 04:
That's correct.

[00:11:09] Speaker 04:
That's correct, Your Honor.

[00:11:11] Speaker 04:
That is correct.

[00:11:12] Speaker 04:
But I think you can harmonize F3 with this and say during both the covenant period and the post covenant period that

[00:11:21] Speaker 04:
challenges have to be uh... filed in the district of delaware we had a very jenner's interpretation archer archer pictures was because i said it was right you could have after he will not write your proceedings during the during the covenant period you can apply uh... uh... you can talk to you for the choice of law provision to that every division we'd still win because now in the post-covenant world and there's no uh... permission uh... to have an i can't see in the district court of texas

[00:11:50] Speaker 04:
applied this form selection clause to preclude, to insist that our

[00:11:55] Speaker 04:
uh... infringement claims on the same time go to delaware and so now we have a situation contrary to what happened in i've been in this court's this is in the nippon uh... nippon shinaku and texas instruments where there is a divide between the challenges uh... as to validity and child and and and infringement is that one has to be in the district of delaware and the other has to be and uh...

[00:12:22] Speaker 04:
isn't so limited.

[00:12:24] Speaker 04:
And respectfully, that's not what the parties envisioned in this agreement.

[00:12:29] Speaker 04:
It was either channeling all or nothing post covenant period to the district court.

[00:12:35] Speaker 04:
Now, of course, we didn't think that any of these patents were not licensed.

[00:12:39] Speaker 03:
That was- That's back to Judge Hughes' question.

[00:12:41] Speaker 03:
You're trying to give a different interpretation to the forum selection clause during the covenant period and after the covenant period.

[00:12:48] Speaker 03:
Correct?

[00:12:49] Speaker 04:
we think that i i i i i i i i i i i i i i i i i i i i i i i

[00:13:03] Speaker 04:
i think that's what i heard you do i think there's nothing is there's nothing expressed in the uh... tax of the of the uh... of the uh... form selection clause the differentiates between the current period and i think that's that that's actually correct if anything we had the most jet we had a more generous view of uh... f three which will allow for uh... i think everything but let's apply

[00:13:23] Speaker 04:
F, let's apply the Forum Selection Clause to the F3.

[00:13:29] Speaker 04:
And in that world, all disputes related to the agreement have to go to the District of Delaware.

[00:13:39] Speaker 00:
Still, what you're arguing, you can't have it both ways.

[00:13:42] Speaker 00:
You seem to be saying that it did apply during the Forum Selection Clause.

[00:13:48] Speaker 00:
The Forum Selection Clause did apply during the Covenant period.

[00:13:52] Speaker 00:
but then it didn't.

[00:13:53] Speaker 00:
That's very confusing.

[00:13:55] Speaker 04:
I'm sorry.

[00:13:56] Speaker 04:
I'm saying either interpretation leads to their alternate interpretations, which both would allow for a determination of likelihood of success.

[00:14:07] Speaker 04:
Either the form selection clause doesn't apply due to F3, which is during the covenant period.

[00:14:14] Speaker 04:
Or if it does apply, it means that only those challenges that are in F3 had to go to the district of Delaware.

[00:14:19] Speaker 03:
I don't believe this party's intended.

[00:14:21] Speaker 03:
that district court litigation doesn't have to be brought in Delaware during the Covenant theory.

[00:14:27] Speaker 03:
How could that be?

[00:14:30] Speaker 04:
Our view was that they're read independently, that the F-1 and F-2...

[00:14:38] Speaker 04:
well there might not be personal jurisdiction, obviously there are limits on where it could be brought consistent with other principles of law.

[00:14:44] Speaker 04:
But our view is, and the district court ultimately found, that Abbott's textual arguments failed.

[00:14:52] Speaker 04:
Just to sort of recap, Abbott presented two textual arguments on the merits.

[00:14:56] Speaker 04:
The first argument was whether IPRs relate to the agreement within the forum selection clause.

[00:15:01] Speaker 04:
The district court agreed with us.

[00:15:02] Speaker 04:
IPRs relate to the agreement within the meaning of the forum selection clause.

[00:15:06] Speaker 04:
That's at Appendix 1419.

[00:15:08] Speaker 04:
And then the second argument that Abbott made was the challenge clauses permitted the IPRs.

[00:15:15] Speaker 04:
And the district court rejects that argument as well at Appendix 1494 to 1495.

[00:15:21] Speaker 04:
The only thing the district court relied upon was its

[00:15:26] Speaker 04:
sort of late breaking inter late breaking interpretation that the forum selection clause couldn't apply because the IPR couldn't be brought in Delaware but that was wrong as a matter of law because it misread what the dispute is the dispute that's subject to the forum selection clause.

[00:15:41] Speaker 04:
is the challenges to validity.

[00:15:43] Speaker 04:
We know under Nippon Shinaku and Texas Instruments that that means, and this court's decision in Dodo case, that that means that validity challenges are also channeled into the Forum Selection Clause.

[00:15:56] Speaker 04:
And the district court didn't have any response to that.

[00:15:59] Speaker 04:
And so ultimately,

[00:16:00] Speaker 02:
Don't we have to look at the language of each form selection clause because the language in these cases differs dramatically.

[00:16:08] Speaker 02:
At least one of those cases specifically includes or references administer tribunals.

[00:16:16] Speaker 04:
uh... yes or that's an or have that here that's that's right there's no administrative tribunal language but what's new but the texas instruments general protect and don't okay flying with uh... languages all talk about disputes arising out of our connection with or rising under a license agreement and the language of those uh... the the for such a positive those three cases is materially identical to the to the selection for inflation was here

[00:16:41] Speaker 02:
I suspect they don't have these provisions that allow IPRs to go forward during part of the licensing agreement.

[00:16:48] Speaker 02:
Which then begs the question of whether you intended to allow IPRs

[00:16:58] Speaker 02:
under this licensing agreement, rather than funneling all two cases to Delaware?

[00:17:04] Speaker 04:
Yeah, no.

[00:17:05] Speaker 04:
The language of the forum selection clauses in those cases does not answer the interplay between the F3 and F4 and the forum selection clause in this case.

[00:17:13] Speaker 04:
But I do think the best way to read all of these together

[00:17:17] Speaker 04:
is to either treat them separately, saying F3 is an all gloves are off sort of situation, you breach, we can do whatever we want, or if you're not buying that, which it seems like you're not, then to apply the Forum Selection Clause, the first line of the Forum Selection Clause, to preclude the IPRs in the F3 world.

[00:17:38] Speaker 03:
If it was so clear in reading this agreement that IPRs could not be brought before the PTO, consistent with the Forum Selection Clause, how come it took you months to discover that and to make a request for a preliminary injunction?

[00:17:58] Speaker 04:
we think we filed at a reasonable time, such that we filed before institution of the IPRs and so that our motion for a preliminary injunction was... There was a lot of work that happened at the...

[00:18:10] Speaker 04:
uh... at the agency in connection with institution but there was no additional work done by abit after i've found its petitions uh... there was nothing that it didn't so the the art that this court's cases and your sister service cases look at the reason that there was a passage of time was there any difference to the asserted harm or was there prejudice my question is if it was so clear why wouldn't you object to the i p r city outside

[00:18:37] Speaker 03:
How many months was it between the filing of the IPR and your objection to it?

[00:18:44] Speaker 04:
There was five months between the filing of the IPR and our objection and an additional month until we filed a claim, alleged breach, and there's an additional month until we... Why did it take you five months?

[00:18:54] Speaker 04:
Your Honor, we don't think that we needed to file any earlier than we did because it was teed up in time for institution.

[00:18:59] Speaker 04:
Remember, the harm here, the key harm here is loss of our... Didn't you file all the opposition papers on the merits?

[00:19:07] Speaker 02:
as to why i'd be arson the institute we did file papers we get out there i would you waste your time and money did not if you thought it should be going forward at all ultimately had it there was that was that that's just not the if you look at uh... uh... the decisions in the arbitration context as an as an analogy uh... the courts are really asking about what is going on in those cases that legal process and uh... when did you file it did you file your

[00:19:36] Speaker 02:
your paper saying this shouldn't go forward simultaneously with your defense on the merits?

[00:19:42] Speaker 02:
Because that would make sense to me.

[00:19:43] Speaker 02:
But I thought it was you filed your opposition on the merits and went forward with the petition process, and then later in the game said, oh, no, this shouldn't go.

[00:19:55] Speaker 04:
So in August of 2022, we filed the preliminary patent-owner response, which is obviously in opposition to institution.

[00:20:02] Speaker 04:
And as I was trying to say, in the analogous context, I think, of arbitration disputes, courts have held that filing a motion to dismiss does not preclude the later filing of a motion to compel because- It's not a question of preclusion.

[00:20:15] Speaker 03:
It's a question of looking at this and

[00:20:18] Speaker 04:
applying some common sense to it if you thought that the farm selection clause barred this it's inexplicable which you didn't raise that at the outset and you waited five months to raise it respectfully on a shirt we have filed earlier absolutely we could have filed on day one but i don't think this court should be respectfully should be setting a precedent that encourages litigants to run to court to try to get a preliminary to try to get a preliminary injunction

[00:20:42] Speaker 04:
The case law says you should look to see the reason for the passage of time.

[00:20:46] Speaker 04:
Was there any indifference to the asserted harm?

[00:20:48] Speaker 03:
You didn't necessarily have to ask for the preliminary injunction.

[00:20:51] Speaker 03:
You could have just filed a pleading before the PTO saying this is not permissible because of the forum selection clause.

[00:20:58] Speaker 03:
You didn't even do that.

[00:21:00] Speaker 00:
but no you are but we didn't reason why you didn't do it is because you also have this alternative position that you don't think it actually applies because you don't think the license applies?

[00:21:09] Speaker 04:
initially at that time there was uncertainty for some portion of that time there was uncertainty as to whether the patents were actually licensed or actually licensed patents the district

[00:21:19] Speaker 04:
of Texas in transferring the case, then made the determination that the asserted patents are subject to the Forum Selection Clause.

[00:21:28] Speaker 04:
And we accept that for the present motion.

[00:21:32] Speaker 04:
and for this appeal is law of the case.

[00:21:35] Speaker 04:
And so there was some uncertainty during that period as to whether the form selection clause would apply to these license patents.

[00:21:41] Speaker 04:
But that's law of the case.

[00:21:43] Speaker 04:
But the issue is, Your Honor, yes, we could have filed earlier.

[00:21:45] Speaker 04:
But we didn't have to.

[00:21:47] Speaker 04:
And we think it was prudent to wait to have the motion teed up for when there's institution.

[00:21:51] Speaker 04:
Because if, in fact, these IPRs had not been instituted, then there would have been no preliminary injunction, no need for a preliminary injunction.

[00:21:57] Speaker 04:
The harm would have abated.

[00:21:59] Speaker 04:
And most importantly, the harm here

[00:22:01] Speaker 04:
is the different burdens of proof.

[00:22:02] Speaker 04:
It's ultimately, obviously, a completely compelling evidence standard in the district court, a lower preponderance standard at the PTAB.

[00:22:10] Speaker 02:
I don't think the PTAB would agree with you.

[00:22:11] Speaker 02:
If they'd gone through all this work and instituted it, and then you got a preliminary injunction against them, and you never asked them to dismiss in the first place, I think they'd be pretty upset about that.

[00:22:21] Speaker 04:
Well, respectfully, Your Honor, this court has repeated, at least on two occasions in Nippon-Shinaku,

[00:22:27] Speaker 04:
and in Dodo's case has required parties to withdraw their IPR petitions and to seek to terminate the proceedings, even after institution, to respect the party's bargains.

[00:22:40] Speaker 04:
The Supreme Court in Atlantic Marine says that it gives paramount importance to the party's agreement to select their form.

[00:22:48] Speaker 03:
So those cases in which there was a delay in raising the issue?

[00:22:51] Speaker 04:
I'm sorry, Your Honor, I missed the first one.

[00:22:53] Speaker 03:
Were those NIFA?

[00:22:54] Speaker 03:
And in other cases, were those cases in which there was a five-month delay in raising the issue?

[00:22:59] Speaker 04:
No, there was no issue of delay in either of those cases.

[00:23:04] Speaker 04:
But then, again here, it's not just the passage of time that is critical as a matter of law.

[00:23:09] Speaker 04:
What's critical as a matter of law is whether there was an indifference to the asserted harm.

[00:23:13] Speaker 04:
There was no indifference on Dexcom's part to the asserted harm because we were actively resisting institution of the IPRs.

[00:23:20] Speaker 04:
And if the IPRs had not been instituted, there would be no harm

[00:23:24] Speaker 04:
from applying the differential standards of review.

[00:23:27] Speaker 04:
And secondly, there was no prejudice to Abbott.

[00:23:30] Speaker 04:
Abbott filed its petitions, did no further work until institution.

[00:23:35] Speaker 04:
And meanwhile, in the district court, infringement and validity cases were state.

[00:23:40] Speaker 04:
So under the- I think we're about out of time.

[00:23:43] Speaker 04:
We'll wait over.

[00:23:44] Speaker 03:
We'll give you two minutes.

[00:23:48] Speaker 03:
Thank you.

[00:23:49] Speaker 03:
Mr. Wilcox.

[00:23:54] Speaker 01:
Thank you, Judge Dyken.

[00:23:55] Speaker 01:
May it please the court.

[00:23:57] Speaker 01:
I think the court's questions are hitting on exactly the key problem with DEXCOM's position, which is that the Forum Selection Clause on Appendix 353, by its terms, applies the same during the Covenant period and after the Covenant period, which means that DEXCOM's interpretation sets up an irreconcilable conflict

[00:24:15] Speaker 01:
between the forum selection clause and the challenge clauses in F3 and F4.

[00:24:19] Speaker 01:
Because under DEXCOM's view, the forum selection clause would bar IPRs when under the challenge clauses, they're expressly permitted.

[00:24:28] Speaker 01:
This court is supposed to interpret contracts so that they are read in harmony and there's no conflict between the provisions.

[00:24:35] Speaker 02:
So is this kind of specific language and your specific interpretation of this language

[00:24:40] Speaker 02:
why this case is different from Nippon and our other cases that find that form selection clauses, fairly broad ones, can prohibit IPRs as well, even without mentioning them.

[00:24:54] Speaker 01:
Yes, Judge Hughes.

[00:24:55] Speaker 01:
There is no challenge clause like the challenge clause here in those cases.

[00:24:59] Speaker 01:
And the other difference between this case and those cases is the, to the extent permitted by law language that the district court focused on in its later ruling in Appendix 1630,

[00:25:08] Speaker 01:
which also didn't exist in those cases.

[00:25:11] Speaker 01:
So between that, to the extent permitted by law language, which IPRs are not allowed to be filed in the District of Delaware, and under Supreme Court cases like oil states, it's not simply the same dispute being filed in a different forum, the very reason IPRs don't violate Article III or the Seventh Amendment is because they're fundamentally different disputes with different historical analogs.

[00:25:32] Speaker 01:
So for that reason alone, the forum selection clause wouldn't apply.

[00:25:35] Speaker 01:
But you know that's right because of the challenge clauses.

[00:25:38] Speaker 01:
And you have to reconcile the forum selection clause with those challenge provisions to read the contract in harmony.

[00:25:44] Speaker 02:
What if this contract didn't have any of these references?

[00:25:48] Speaker 02:
I think there are enough three or four to IPRs or post-credit reviews.

[00:25:53] Speaker 02:
And we still just had the same language.

[00:25:55] Speaker 02:
Would it preclude an IPR under our precedent?

[00:26:00] Speaker 01:
It wouldn't, Your Honor.

[00:26:02] Speaker 01:
Again, those cases, Dodo case and Nippon, did not have this to the extent permitted by law language.

[00:26:08] Speaker 00:
What if we don't agree with the to extent permitted by law analysis, and we don't think that that alone mandates that IPRs can be followed?

[00:26:18] Speaker 01:
Well, I think you still would need to interpret the contract as a whole and try and reconcile it with the challenge clauses.

[00:26:24] Speaker 01:
And I think that how you can get there.

[00:26:25] Speaker 00:
If you add that with Judge Hughes' type of categories is where he says there is not, F4 doesn't exist.

[00:26:32] Speaker 01:
Yeah, if F3 and F4 don't exist, and to the extent permitted by law language doesn't exist, I'm left.

[00:26:37] Speaker 00:
No, no, it exists.

[00:26:38] Speaker 00:
Oh, it exists?

[00:26:38] Speaker 00:
But we don't read it the way the district court did.

[00:26:41] Speaker 01:
But you don't read it the way the district court did.

[00:26:42] Speaker 01:
Yeah.

[00:26:43] Speaker 01:
I'm left with only one argument at that point, Judge Stoll, which is in Dodo Case, the reason why that contract, which had language like this, the dispute arose under or related to the agreement was because Dodo Case was using the IPR to challenge whether it had ongoing royalty obligations.

[00:27:02] Speaker 01:
So the IPR is definitely related to the agreement because the entire purpose of the IPR was to get rid of the royalty obligation.

[00:27:10] Speaker 01:
Here Abbott has no royalty obligations under the party's agreement.

[00:27:14] Speaker 01:
So there will be no change in the party's rights and responsibilities under the agreement.

[00:27:20] Speaker 01:
by the outcome of the IPRs.

[00:27:22] Speaker 01:
And we know, because DEXCOM has never mentioned the forum selection clause to the PTAB, that there's not going to be any decision by the PTAB about anything relating to the license.

[00:27:32] Speaker 01:
So this case is distinguishable for that reason as well.

[00:27:35] Speaker 01:
So I think we have multiple roads to victory, whether you look at the challenge clauses, to the extent permitted by law language, or just the factual differences between this case and Dodo case, which suggests why there would be a difference in how you read

[00:27:46] Speaker 01:
related to language, whether it applies to the specific circumstances here as opposed to the circumstances in Dodo case.

[00:27:53] Speaker 03:
So we have a jury verdict now in the Delaware case?

[00:27:58] Speaker 01:
Correct, Judge.

[00:27:59] Speaker 03:
There is a jury verdict.

[00:28:00] Speaker 03:
And what was the result of that?

[00:28:03] Speaker 03:
Some patents were licensed, some weren't?

[00:28:06] Speaker 01:
Yes, so only two patents were an issue at the trial.

[00:28:10] Speaker 01:
One of them is a patent for which the PTAB did not institute review, so it's not really relevant to this case.

[00:28:17] Speaker 01:
And then there was one patent that was a patent that is an issue in the PTAB.

[00:28:22] Speaker 01:
It was found that one claim of that patent is licensed.

[00:28:24] Speaker 01:
The one claim we asked the jury to find was licensed.

[00:28:27] Speaker 01:
For the other three patents that are at issue in the PTAB, because of pretrial rulings by the district court, there's no dispute at this point, at least pending an appeal, that they are not licensed.

[00:28:37] Speaker 01:
And that wasn't an issue that the jury was asked to resolve because it was taken care of by the district court on summary judgment in its interpretation of a different provision of the contract and whether it applies an obviousness standard or an obviousness type double patenting standard.

[00:28:51] Speaker 01:
So that's the current status of the case.

[00:28:53] Speaker 01:
And not only that, but of course the district court has definitively ruled that DEXCOM loses on the merits of its contract interpretation issue, which also is a change in circumstances from when this appeal was first filed.

[00:29:06] Speaker 01:
But let me also just briefly touch on the delay point, Judge Dyke.

[00:29:11] Speaker 01:
In these court's cases, as my friend the other side noted, Nippon, Dodo case, and others, there wasn't any type of delay like we have here.

[00:29:18] Speaker 01:
In Napan, the party came and sought a preliminary injunction within three weeks of the IPRs being filed.

[00:29:24] Speaker 01:
In Dodo case, it was a month.

[00:29:26] Speaker 01:
In Texas Instruments, it was seven days.

[00:29:28] Speaker 01:
And the reason the parties act so quickly is because the harm that the preliminary injunction is supposed to rectify when you have a forum selection clause is the harm from being forced to litigate in multiple forums at once and being forced to litigate in a forum that you didn't choose to litigate in.

[00:29:45] Speaker 01:
So if Dexcom really thought that there was a problem here, it was suffering the harm immediately.

[00:29:50] Speaker 00:
But what it did is... Can I ask you, is the hypothetical thinking about the irreparable harm by delaying it then shows that in fact you weren't harmed, you may have even embraced that other forum?

[00:30:01] Speaker 00:
Is that what the argument is?

[00:30:03] Speaker 01:
that dexcom embraced that other forum.

[00:30:06] Speaker 01:
It's the argument that they embrace the forum, and it's an argument that it shows that they aren't suffering the type of irreparable harm that you would expect for a party that needs a preliminary injunction.

[00:30:16] Speaker 00:
They don't view it as a harm.

[00:30:17] Speaker 01:
Yeah, they don't view it as a harm.

[00:30:19] Speaker 01:
And that seems to be what courts have done in cases like Bethune-Cookman,

[00:30:22] Speaker 01:
It's what this court has recognized may be a reason to find no irreparable harm in decisions like hybrid tech, where this court said a delay may be so significant in the district court's discretion as to preclude a determination of irreparable harm.

[00:30:36] Speaker 01:
And this court said the same thing in polymer technologies, where it said this kind of delay, where you are suffering the harm that you care about, but you're not taking any action, negates a finding of irreparable harm.

[00:30:47] Speaker 01:
Now, they say the real harm is a different burden of proof.

[00:30:51] Speaker 01:
This court hasn't recognized that as a harm in either Dodo case or Nippon.

[00:30:55] Speaker 01:
And they didn't need a preliminary injunction to get ahead of that harm because the trial in this case was scheduled for July of 2023, which is when it actually happened.

[00:31:04] Speaker 01:
The IPR decisions aren't coming down until October or November.

[00:31:08] Speaker 01:
So if that's the harm they were worried about, what they should have done is litigated in the district court without seeking a preliminary injunction at all.

[00:31:15] Speaker 01:
If they had won, they would have been able to move for a permanent injunction.

[00:31:19] Speaker 01:
It would have been in place before the IPR proceedings wrapped up.

[00:31:23] Speaker 01:
Now, what I think they might say is, well,

[00:31:26] Speaker 01:
But the PTAB's less likely to dismiss, even if Abbott asks them to, once there's been an institution decision.

[00:31:32] Speaker 01:
But that, again, actually just goes to their delay.

[00:31:35] Speaker 01:
Because by waiting six months, they didn't even seek a PI until the very week that the PTAB was going to issue its institution decisions anyway.

[00:31:43] Speaker 01:
So there was no way, by the time they filed their IPR motions, or sorry, their PI motions, that there was going to be a decision before institution.

[00:31:52] Speaker 01:
So what they did is they showed indifference by filing 385 pages of briefing, spanning 75,000 words, without saying a word to the PTAB about irreparable harm.

[00:32:02] Speaker 01:
So this court could affirm for that reason alone, as this court recognized in hybrid tech, as the Third Circuit recognized in cases like Lannon, and as many other courts have recognized.

[00:32:13] Speaker 01:
But it can also affirm for the reasons that we've discussed, because the district court's contract interpretation is right, so there's no likelihood of success.

[00:32:20] Speaker 01:
The court has further questions.

[00:32:22] Speaker 01:
I welcome them.

[00:32:23] Speaker 01:
Otherwise, I appreciate the court's time.

[00:32:26] Speaker 03:
Okay.

[00:32:26] Speaker 03:
Thank you.

[00:32:29] Speaker 03:
Mr. Adams, you've got two minutes.

[00:32:32] Speaker 04:
Thank you, Your Honor.

[00:32:33] Speaker 04:
Again, just back to the likelihood of success and reading the

[00:32:37] Speaker 04:
provisions together, I would suggest that F3 and F4 are specific hard outs.

[00:32:41] Speaker 04:
It's their specific governance circumstances during the covenant period, not outside the covenant period.

[00:32:49] Speaker 04:
And that's different.

[00:32:49] Speaker 04:
The specific governs the general.

[00:32:51] Speaker 04:
The general is the forum selection clause.

[00:32:52] Speaker 04:
But if you don't agree with me on that, there's nothing in F3 that says that IPR shall be permitted.

[00:33:01] Speaker 04:
There's clearly an F4, which talks about time limits and things like that, that

[00:33:05] Speaker 04:
you must allow that are permitted to be filed.

[00:33:08] Speaker 04:
F3 you can harmonize with my interpretation.

[00:33:12] Speaker 00:
How did you argue that F3 allows filing of IPRs?

[00:33:16] Speaker 04:
That was our position that in the covenant period all gloves are off, F3 would allow for IPRs.

[00:33:22] Speaker 00:
So F3 relates to IPRs as well as district workplaces.

[00:33:26] Speaker 00:
I just want to make sure.

[00:33:28] Speaker 04:
Yes, that was our position.

[00:33:29] Speaker 04:
But I think you can also, if you don't agree with that, I would apply the first section, first sentence of the forum selection clause.

[00:33:37] Speaker 04:
That would bar, under our interpretation, would bar all IPRs.

[00:33:41] Speaker 04:
Our view is generous toward IPRs under F3.

[00:33:44] Speaker 04:
could bar all IPRs by applying the formal selection clause.

[00:33:47] Speaker 04:
And then F4 would just be a carve out because it's dealing with time limits.

[00:33:51] Speaker 03:
But the definition of challenge includes IPRs, right?

[00:33:55] Speaker 04:
Yes.

[00:33:56] Speaker 04:
The challenge clause does prohibit IPRs in F1.

[00:33:59] Speaker 04:
and that's it exactly right again so that it is that it doesn't general at the first interpretation or you can harmonize them if there's any ambiguity you can still you can still harmonize them to the extent permitted by law language is referring is referred to the speech that can't possibly be brought in the district of delaware that's like challenges to four to uh...

[00:34:17] Speaker 04:
To foreign patents, the district court found that at Appendix 18, Note 8.

[00:34:22] Speaker 04:
And then on the delay, the key point, and it's from the Polymer case, is whether any delay or passage of time negates the irreparable harm.

[00:34:30] Speaker 04:
There's no negation of the irreparable harm here, because the harm to us is the application of the lower standard of proof.

[00:34:37] Speaker 04:
That happens at the end of the case.

[00:34:39] Speaker 04:
That hasn't happened yet.

[00:34:40] Speaker 04:
And so we respectfully suggest that we were prudent in waiting until the eve of the institution and not rushing to court immediately upon filing the petitions.

[00:34:49] Speaker 03:
Thank you very much.