[00:00:00] Speaker 05: We will hear argument next in number 221954, in-line plastics against La Certa. [00:00:09] Speaker 02: Good morning, Your Honors. [00:00:10] Speaker 02: May it please the Court? [00:00:11] Speaker 02: My name is David Silvey. [00:00:12] Speaker 02: I represent the patent holder and appellant here in-line plastics. [00:00:19] Speaker 02: This appeal concerns five patents that are directed to tamper-resistant and tamper-evident containers that are found in households throughout the United States. [00:00:29] Speaker 02: In the limited time I have today, I'd like to address a few of the issues on appeal. [00:00:33] Speaker 02: And I apologize for the scope of the appeal, but it's sort of out of our control. [00:00:39] Speaker 02: This court's long recognized the critical role and powerful influence the district court asserts over juries and patent cases. [00:00:49] Speaker 02: This case exemplifies how a district court's erroneous determinations can have a prejudicial impact on a jury's deliberations. [00:00:59] Speaker 02: The topic I'd like to talk about today is the jury instructions. [00:01:06] Speaker 02: The jury instructions provided by the district court included multiple improper theories tainted. [00:01:13] Speaker 02: And they tainted the jury's verdict, finding all the asserted claims across five patents to be invalid. [00:01:18] Speaker 02: There were three invalidity theories presented. [00:01:23] Speaker 02: The first was written description. [00:01:27] Speaker 02: Despite inline subjections, the judge included a written description in the jury charge. [00:01:35] Speaker 02: We pointed out that a written description defense was never mounted. [00:01:39] Speaker 02: The only mention of written description was in an answer to the complaint or amended answer to the complaint. [00:01:46] Speaker 02: There was nothing in Lacerda's expert reports, nothing in their infringement contentions, and ultimately ended up being no testimony. [00:01:57] Speaker 02: related to written description, or at least directed to written description. [00:02:02] Speaker 02: Yet the charge was allowed to go to the jury. [00:02:05] Speaker 05: Do you remind me what the rationale stated, if one was stated for that? [00:02:10] Speaker 02: There wasn't any rationale stated, Your Honor. [00:02:13] Speaker 02: The dialogue that took place upon our objection in court was that the expert who was on the stand at that point had either testified to it yesterday or will testify to it today. [00:02:27] Speaker 02: And that testimony ultimately never came. [00:02:30] Speaker 02: But there was nothing on the record from the judge other than overruling our objection. [00:02:38] Speaker 02: The second invalidity theory listed concerned indefiniteness. [00:02:43] Speaker 02: And we certainly had a number of challenges along the way to indefiniteness. [00:02:48] Speaker 02: First of all, we had a claim construction [00:02:51] Speaker 02: hearing where indefinite, several terms that were considered indefinite by Lacerda were reviewed. [00:03:00] Speaker 02: Lacerda sought to postpone the determinations of the court at that point in time, but the court said, no, I'm going to go forward and rule that the terms at issue are definite. [00:03:11] Speaker 02: As we approached trial, plaintiff's expert, excuse me, defense expert report listed [00:03:18] Speaker 02: indefiniteness as a challenge with respect to some additional terms. [00:03:24] Speaker 02: Prior to trial, we moved in lemonade to prevent such testimony as being late at this point in time, effectively trying to argue claim construction to the jury. [00:03:37] Speaker 02: But the judge declined to accept our motion and allowed indefiniteness testimony to be presented at trial. [00:03:47] Speaker 05: Further, further complicating, excuse me. [00:03:53] Speaker 05: What was allowed was or was not. [00:03:55] Speaker 05: It was allowed. [00:03:57] Speaker 05: I'm sorry. [00:03:57] Speaker 05: I speak slowly, so you're just going to have to be patient. [00:03:59] Speaker 02: I apologize for that. [00:04:02] Speaker 05: You said that the district judge found something definite at claim construction. [00:04:07] Speaker 05: Now you're talking about a later raising of an issue about indefiniteness. [00:04:11] Speaker 05: Was the later raising of the issue about indefiniteness [00:04:15] Speaker 05: as to the same claim elements that the judge had ruled definite earlier or on different claim elements. [00:04:22] Speaker 02: They were different claim elements, Your Honor. [00:04:24] Speaker 05: And that's what went to the jury, the indefinite charge as to different claim elements than from the elements that the district court during claim construction addressed indefinite. [00:04:37] Speaker 02: Correct, Your Honor. [00:04:38] Speaker 02: And at trial, we had a number of issues, the first being that [00:04:43] Speaker 02: Ultimately, what was presented on indefiniteness was actually not even the indefiniteness argument that was in the expert's report. [00:04:53] Speaker 02: The district court had originally ruled. [00:04:55] Speaker 05: On appeal now, tell me, am I right about this? [00:04:59] Speaker 05: The only challenge you have regarding indefiniteness is that it should not have been given to the jury either or both because it had been forfeited by the other side for not having been timely presented and or because the jury has no business addressing indefiniteness and it must be for the judge. [00:05:22] Speaker 02: Well, I would say there are instances where the jury would look at factual determinations that underpin an indefiniteness analysis. [00:05:29] Speaker 02: But in this instance, we were, one, the timeliness of it, as you suggest, and the other, that they were arguing claim construction to the jury. [00:05:37] Speaker 02: You know, indefiniteness is based on what's [00:05:39] Speaker 02: what's within the patent in this instance, unlike in vomiting. [00:05:42] Speaker 05: Not always. [00:05:43] Speaker 05: It's not always based on what's in the patent. [00:05:47] Speaker 05: Sometimes you have terms where knowledge of skilled artisans, extra patent knowledge about the number of different methodologies for measuring the existence or non-existence. [00:05:59] Speaker 05: Don't worry about time in this case, okay? [00:06:04] Speaker 05: the existence that whether there were different measurement techniques. [00:06:08] Speaker 05: There's a set of cases about that. [00:06:09] Speaker 05: Teva was one, basically. [00:06:12] Speaker 05: And that would involve, at least it would involve factual determinations based on extra patent material. [00:06:20] Speaker 05: I think I understand you saying that that kind of issue could go to a jury. [00:06:24] Speaker 02: Yes. [00:06:25] Speaker 02: Well, that was the issue that was similarly presented in Bombardier, but this is not where we needed to rely on extrinsic materials. [00:06:32] Speaker 05: Why isn't this that? [00:06:34] Speaker 05: Because you would need to know from a skilled artisan where you would be measuring the height from. [00:06:42] Speaker 05: Is it, this is a kind of a height term about the skirt or something? [00:06:48] Speaker 02: Correct. [00:06:48] Speaker 02: But I think what, I guess I would like to tack onto that beyond [00:06:53] Speaker 02: This general question of where would you measure the height, I think the patent itself gives you a pretty good understanding as to how the height of the skirt would be measured. [00:07:03] Speaker 02: But that being said, when you look at the indefiniteness argument that was ultimately presented, it was presented with an underpinning of the accused product, looking at the accused product and saying, we wouldn't know, looking at our product, how you would calculate height. [00:07:20] Speaker 02: To us, that's entirely improper. [00:07:24] Speaker 04: But just to be clear, I don't believe you asked for any kind of O2 micro claim construction before going into trial to get a clarification on whether intrinsic evidence alone could adequately resolve any dispute about the height of the hinge limitation. [00:07:45] Speaker 02: Right. [00:07:45] Speaker 02: No, no. [00:07:46] Speaker 02: We did not, Your Honor. [00:07:48] Speaker 02: In the rationale I would suggest is, again, the argument that ultimately was presented at trial [00:07:54] Speaker 02: a new one to us. [00:07:55] Speaker 02: We had never heard it before. [00:07:56] Speaker 04: There's the timing question, but we give some discretion to judges on what is preserved, what can still be raised in the lead up to a trial. [00:08:08] Speaker 02: It doesn't have to always be presented at the markman for it to be preserved. [00:08:14] Speaker 02: And Your Honor, I absolutely agree with you on this. [00:08:16] Speaker 02: And it wasn't just the first indefiniteness argument, which was not presented at trial, [00:08:23] Speaker 02: My, uh, where I think the rug really lies is that in ultimately a very new indefiniteness argument was presented at trial. [00:08:33] Speaker 02: So it was a second argument that we certainly didn't have proper opportunity to prepare for. [00:08:39] Speaker 02: You know, our expert was had, had to respond, you know, that day as to what this new argument meant. [00:08:48] Speaker 05: And again, it was based on- I do not recall from your blue brief there being a challenge to the introduction of this evidence. [00:08:57] Speaker 02: Oh, absolutely, Your Honor. [00:08:59] Speaker 05: The blue brief says that the district court should be reversed for allowing this evidence to be introduced into the trial. [00:09:10] Speaker 05: When I look at your statement of issues, the only one that mentions indefiniteness has to do with the jury instruction. [00:09:18] Speaker 02: Correct. [00:09:26] Speaker 02: Well, certainly at trial, as I indicated, we objected at A1752 to the indefinite testimony being new testimony. [00:09:36] Speaker 02: We certainly, again, objected to it. [00:09:40] Speaker 05: Well, I'll just say, I didn't ask about what you objected to at trial. [00:09:43] Speaker 05: I asked you about what you appealed. [00:09:46] Speaker 02: Well, it was certainly part of our analysis with respect to the jury instructions that instructing the jury on indefiniteness in view of allowing this testimony was improper, particularly in view of the type of testimony that it was, that it was directed to the accused product and not actually directed to [00:10:05] Speaker 02: what the specification discloses. [00:10:08] Speaker 05: Would the content of the testimony be any different if there had not been a reference to the accused product? [00:10:15] Speaker 05: If it had been simply, I look at this height limitation and I have no idea where to measure from. [00:10:21] Speaker 05: It seems to me in substance, I'm having [00:10:24] Speaker 05: trouble seeing what difference there is, whether you do or don't use the particular reference of the accused product to illustrate why I think a skilled artisan who would not be looking at that product would be uncertain where to measure this thing. [00:10:44] Speaker 02: I think as skilled artists in looking at the patent specification and the drawings where we disclose the hinge curve and the hinge in relationship to the skirt and many of these limitations, right, the height of the hinge is in relation to the skirt. [00:10:58] Speaker 02: These are two structures that run parallel around the perimeter of the container. [00:11:03] Speaker 02: I don't think it's, you know, at least, you know, obviously I've been working with these types of products for years, so for me it didn't seem it was a [00:11:15] Speaker 02: an issue that was ripe for indefiniteness. [00:11:23] Speaker 02: I think the last, if you don't mind I'll move forward, is the jury's instructions on secondary considerations. [00:11:31] Speaker 02: I think they were inadequate in a number of ways, left off factors that we clearly had presented evidence for. [00:11:44] Speaker 05: I'm sorry, which were the factors that you say you presented to the jury? [00:11:51] Speaker 05: And I'm going to get back to what that means, presented to the jury. [00:11:54] Speaker 05: I just want to be concrete. [00:11:57] Speaker 05: Which of the secondary considerations went unmentioned in the jury instruction that you're complaining about? [00:12:04] Speaker 02: So industry praise, copying of others, [00:12:11] Speaker 02: licensing of others. [00:12:15] Speaker 02: We won awards. [00:12:16] Speaker 02: We had letters from clients. [00:12:19] Speaker 02: I'm sorry. [00:12:19] Speaker 05: I think you're repeating yourself because the awards and the clients are... I would call them the industry praise bucket. [00:12:30] Speaker 02: We had testimony relative to failure of others to develop a similar container. [00:12:37] Speaker 02: We had testimony in the record from Lacerda on [00:12:40] Speaker 02: their copying, we had a number of evidentiary, every letters that showed that we had either brought suit or reached out to others about a suit, about copying. [00:12:53] Speaker 02: So we had a vast majority of information. [00:12:56] Speaker 02: And in fact, we had compiled all of that into a response to an interrogatory at the very early stages to make it clear that we believed [00:13:05] Speaker 02: that we had a very compelling case of secondary considerations. [00:13:09] Speaker 02: And a lot of the secondary considerations factors that were left off by the court are factors that go to kind of an independent third party's view. [00:13:17] Speaker 02: We had dramatic commercial success with the product. [00:13:22] Speaker 02: You can challenge that on whether it was marketing and [00:13:25] Speaker 05: and sales and all that. [00:13:31] Speaker 02: The only two that were listed were commercial success and long felt need in the caveat that, you know, unless you felt that [00:13:38] Speaker 02: there was substantial marketing and things undertaken that developed the commercial success. [00:13:44] Speaker 05: So this is not going to be precisely formulated, but much of your evidence would seem to go sort of simultaneously to Longfellow Need commercial success and some of the unmentioned items. [00:14:03] Speaker 05: On the assumption that the jury [00:14:07] Speaker 05: rejected the commercial success and long felt need either on their own terms or as sufficient to support an ultimate conclusion of non-obviousness. [00:14:20] Speaker 05: Why would one think that the failure to mention the other items could have made a reasonable difference? [00:14:33] Speaker 02: Well, again, I'll go to, you know. [00:14:35] Speaker 05: I'm saying I'm not expressing skepticism about the answer to that. [00:14:39] Speaker 05: It seems extremely important to me to know what your answer is to that. [00:14:43] Speaker 02: Well, my answer to that would be almost, if the jury took a look at the instructions, it almost applied to them that they could discount those other factors, that the judge didn't include them in his instructions. [00:14:55] Speaker 02: So while they may have heard testimony throughout. [00:14:57] Speaker 05: Explain to me how those other factors could [00:15:01] Speaker 05: in any reasonable way matter in the mind of somebody, of a jury that is rejecting the factors that were specifically presented to the jury? [00:15:14] Speaker 02: Well, first of all, those factors were, there was no rebuttal to any of those factors, right? [00:15:21] Speaker 02: So the jury only heard from in line with respect to those factors. [00:15:25] Speaker 02: Those factors are awards from an industry or [00:15:31] Speaker 02: evidence of copying. [00:15:32] Speaker 02: And I think they're very meaningful. [00:15:34] Speaker 02: And I think a jury, if not instructed to take those into consideration, wouldn't have inherently looked to those, right? [00:15:43] Speaker 02: They're looking to what the judge specifically listed. [00:15:47] Speaker 02: And so that's why I think they're particularly meaningful. [00:15:49] Speaker 02: The only rebuttal testimony that the jury heard at all with respect to secondary considerations is one [00:15:56] Speaker 02: our witnesses were asked on the stands about the declarations and they just said, isn't one declaration from a board member of Inline and isn't one declaration about commercial success from your director of sales? [00:16:10] Speaker 02: Well, I mean, I certainly would argue who else is going to give a declaration of commercial success other than the director of sales. [00:16:17] Speaker 02: So those two were attacked, at least from a cross standpoint. [00:16:22] Speaker 02: The others stand unrebutted and without attack. [00:16:26] Speaker 02: And so that's why I think it was very important for the jury to be instructed that those things are, are factors to be considered, particularly in, I think, particularly industry praise, right? [00:16:37] Speaker 02: This wasn't, this was an independent packaging association. [00:16:42] Speaker 02: It was at least several awards. [00:16:44] Speaker 02: one for these packages. [00:16:46] Speaker 02: So that's why I feel it was particularly important that the jury be properly instructed. [00:16:51] Speaker 04: The customer letters, were they all submitted to the PTO during the prosecution? [00:16:57] Speaker 02: They were. [00:16:57] Speaker 02: And this is, I think, a point that I guess I neglected to mention. [00:17:01] Speaker 04: Were these letters generated specifically for the prosecution of the patent? [00:17:10] Speaker 04: It wasn't like these letters were already pre-existing and then the patent attorney submitted them to the PTO. [00:17:19] Speaker 04: Is that right? [00:17:20] Speaker 02: Your Honor, now we're going back to 2002-2003 timeframe. [00:17:29] Speaker 02: As being involved in the prosecution, I can say we did not request them to be generated. [00:17:35] Speaker 02: Whether they were generated [00:17:37] Speaker 02: you know, under what manner they were generated, I can't be certain. [00:17:41] Speaker 02: They read somewhat similarly when I was looking at those letters. [00:17:45] Speaker 04: And they were submitted through a declaration by August Lanzetta, right? [00:17:51] Speaker 04: Correct. [00:17:53] Speaker 04: And it's entitled Commercial Success Declaration of August Lanzetta. [00:18:00] Speaker 04: So I guess what I'm trying to understand is it possible that [00:18:05] Speaker 04: What you're terming now as industry praise may have been potentially understood as being part and parcel of your commercial success secondary consideration factor. [00:18:20] Speaker 02: Certainly, I'm not trying to co-mingle them. [00:18:22] Speaker 04: Right. [00:18:23] Speaker 04: Well, not now, you're not. [00:18:25] Speaker 04: I understand that. [00:18:25] Speaker 04: But at least the evidence that was submitted, the prosecution histories that were given to the jury, this declaration says commercial success declaration. [00:18:37] Speaker 04: And submitted with that were all letters. [00:18:40] Speaker 04: And there was testimony from Dr. Casmer during trial that [00:18:48] Speaker 04: talked about these letters from customers, including Del Monte, and was directly asked, so how are these letters relevant to commercial success? [00:18:56] Speaker 04: And then Dr. Casmer explained, well, they're relevant to commercial success because they like these products so much for the features that they have that [00:19:09] Speaker 04: They're willing to pay more for the products to get these features. [00:19:14] Speaker 04: And so in a way, in this record, there is at least some commingling of industry praise and commercial success. [00:19:23] Speaker 04: And maybe I'm trying to be charitable in interpreting what was the district court judge thinking. [00:19:30] Speaker 04: Maybe the district court judge could have potentially been thinking commercial success and industry praise as presented here are already [00:19:39] Speaker 04: kind of it dimmed together to the point where the redundant to say industry praise separate from commercial success. [00:19:48] Speaker 02: Well, perhaps that's what he was thinking, but that's certainly only one kind of component of the multitude of testimony and evidence we provided. [00:19:57] Speaker 02: But I would also say, you know, to answer your question, and I think you're asking like, why would you tack on the letter to the commercial success declaration? [00:20:06] Speaker 02: Which your honor, that was the first commercial success declaration we have subsequently filed in [00:20:11] Speaker 02: in the following patents, a much more detailed and thicker commercial success declaration, which again was not rebutted. [00:20:18] Speaker 02: But I think the letter, that letter in particular kind of goes to Nexus, right? [00:20:23] Speaker 02: It ties the sales to the product. [00:20:27] Speaker 02: The products were marked with the patent number, so there is an essence of presumption of Nexus, but the letter itself is from a customer saying, hey, this is why I believe that these things are [00:20:39] Speaker 02: I think it's a great product and the customer kind of walks through why. [00:20:43] Speaker 02: And I think that in part establishes nexus. [00:20:47] Speaker 05: Can I just ask you, so we have three different jury instructions that are challenged. [00:21:01] Speaker 05: Do you understand the law to be, including whose law, ours or the first circuits, about what we do if we think some of those instructions should not have been given? [00:21:17] Speaker 05: What do we do about the bottom line verdict? [00:21:21] Speaker 05: And there are too many permutations for me to enumerate them. [00:21:24] Speaker 02: I think that's a fair question, your honor. [00:21:26] Speaker 02: I think with all due respect, I do think in terms of whether we had charges that were improper, not the content of the charge, but whether it was proper to charge the jury or not is a matter of first circuit law. [00:21:40] Speaker 02: And I think the first circuit has made it pretty clear that it follows the Baldwin doctrine in almost every instance. [00:21:49] Speaker 02: The rare instance is where there's a reasonableness. [00:21:52] Speaker 02: You can be reasonably sure. [00:21:55] Speaker 02: that the jury went with a charge that was properly supported over a charge that was not properly supported. [00:22:02] Speaker 02: In this instance, I certainly am arguing all three charges were really not proper. [00:22:09] Speaker 02: But with the assumption that you find one is proper, there's still no way of understanding why the jury, which charge, which theory the jury found invalidity under. [00:22:22] Speaker 05: I thought it was agreed by the parties that the indefinite ascent written description dispute and therefore charges applied to only a subset of the claims, not all of them, so that we can be pretty sure, maybe even sure, that the jury having found all the claims invalid must have done so on the basis of obvious. [00:22:49] Speaker 05: because it couldn't have found, I forget how to describe it, the non-skirt claims or something, indefinite or lacking in an adequate description. [00:23:03] Speaker 05: Is that? [00:23:04] Speaker 02: Well, I don't think that's a fair interpretation of certainly how the First Circuit would view this. [00:23:09] Speaker 02: The First Circuit would not [00:23:11] Speaker 02: except, you know... So it recognizes some kind of harmless error doctrine, right? [00:23:17] Speaker 02: Correct. [00:23:17] Speaker 02: In rare circumstances. [00:23:19] Speaker 02: Generally, you know, the case law that's referenced in the brief, both sides briefing, like Davis, there was a curative instruction or at least a clarifying instruction that was given to the jury during deliberations. [00:23:31] Speaker 02: In others, it would really focus on the verdict form. [00:23:34] Speaker 02: Did the verdict form at least outline which claims that the theories applied to? [00:23:40] Speaker 05: So assuming on the assumption, which maybe you want to disagree with, but just assume for me, with me for a minute, that it's clear that the jury found obviousness of at least the nonskirt claims, because that was the only possible basis of validity, of invalidity for those claims. [00:24:08] Speaker 05: You have not made an argument, right? [00:24:12] Speaker 05: That the obviousness issue could differ between the skirt and the non-skirt claims that it's for obviousness. [00:24:24] Speaker 05: The issue is it's all one ball of wax. [00:24:27] Speaker 05: Is that right? [00:24:30] Speaker 02: Well, I guess that's fair, Your Honor. [00:24:34] Speaker 02: I think what the jury was reviewing would be different, right? [00:24:38] Speaker 02: Because we have claims that have the hinge height limitation in them, for example, that are more narrow. [00:24:43] Speaker 02: And now you're suggesting the jury on, say, the broader claims that didn't include those limitations would have found for obviousness. [00:24:50] Speaker 02: with respect to those. [00:24:52] Speaker 02: I would just say what really makes the difference is that we're talking about testimony from an expert. [00:25:00] Speaker 02: The jury was listening to testimony from an expert who really did not go through the four grand factors. [00:25:07] Speaker 02: So there was no rebuttal to [00:25:11] Speaker 02: the obviousness, secondary considerations and non-obviousness. [00:25:15] Speaker 02: So the jury wasn't afforded an opportunity to even hear rebuttal and for us to cross the expert on rebuttal. [00:25:22] Speaker 02: And I think that also, you know, there's a lot about what happened with the obviousness and the secondary considerations that not only, you know, walks into the jury and taints the jury instructions, but it taints the jury's reasonableness review. [00:25:35] Speaker 02: and attains whether the expert should have been permitted in the first place, because it's in complete contradiction to the in-touch case, which says an expert should not be testifying to the ultimate issue, ultimate conclusion of obviousness, if the fourth factor has not been considered. [00:25:55] Speaker 05: Thank you. [00:25:58] Speaker 05: Thank you. [00:26:05] Speaker 01: Good morning, Your Honors. [00:26:06] Speaker 01: May it please the Court? [00:26:08] Speaker 01: I want to start where we ended with the jury instruction on secondary considerations of non-obviousness. [00:26:17] Speaker 01: And I want to go first to the legal question about which court law applies. [00:26:23] Speaker 01: But even if we assume that the First Circuit law applies, the First Circuit applies harmless error generously. [00:26:32] Speaker 01: in this case. [00:26:33] Speaker 01: And it's not the case, as we just heard, that the First Circuit will only uphold a verdict if [00:26:42] Speaker 01: the verdict forms spelled out which theories applied to which claims, that wouldn't be a general verdict form at all. [00:26:48] Speaker 01: So the cases that are cited in the briefing are about general verdict forms where that type of differentiation was not made. [00:26:55] Speaker 01: But here, the jury was instructed and our expert testified that indefiniteness and written description only applied to a subset of claims. [00:27:04] Speaker 01: So even if we're looking to first circuit law, the court can be reasonably sure that what the jury did here was find obviousness of all asserted claims because the jury invalidated all asserted claims. [00:27:16] Speaker 01: And there's no question that they were properly instructed that obviousness applied to all claims and the 112 defenses applied only to the claims that had the hinge height limitation. [00:27:31] Speaker 01: So that's on the general verdict form. [00:27:34] Speaker 01: But going to the instruction on secondary considerations of obviousness specifically, Inline's technical expert only testified as to commercial success and long felt need. [00:27:48] Speaker 01: That testimony is appendix 2024 through 2031. [00:27:54] Speaker 01: So that matches what the district court instructed the jury. [00:28:00] Speaker 01: And although Inline has raised an issue that it may have offered evidence on things like copying and industry praise, if the court looks closely at those appendix citations, one, copying, what they've cited is demand letters that they sent to competitors alleging infringement. [00:28:17] Speaker 01: That's not sufficient under this court's law to establish copying. [00:28:22] Speaker 01: Copying as to Lacerda, [00:28:24] Speaker 01: The jury found that Lacerda didn't infringe. [00:28:26] Speaker 01: So it was certainly reasonable for the jury to find that Lacerda did not copy. [00:28:30] Speaker 05: Was the jury informed, it must have been informed actually, that there was a handful of claims for which the district court had granted summary judgment that Lacerda did infringe, right? [00:28:44] Speaker 05: I don't believe that- The validity of those was presented to the jury. [00:28:50] Speaker 01: Yes. [00:28:53] Speaker 05: You can't use non-infringement by the jury to erase copying as to those claims. [00:29:03] Speaker 01: Even if that's the case, Your Honor, the evidence that was put in as to assert as alleged copying is not sufficient under this court's case law either. [00:29:14] Speaker 01: this evidence was marginal out of the whole focus of the case that they put on as to secondary considerations but also importantly [00:29:25] Speaker 01: Inline did not raise a distinct objection that stated the objection and the ground for the objection when this instruction was given. [00:29:33] Speaker 05: I'd like to put that, unless you have something new to say that you didn't say in your red brief, I was not persuaded by your forfeiture argument on that. [00:29:42] Speaker 05: So I'm really struggling with other things that seem to please me much more on the table. [00:29:49] Speaker 05: So there was industry praise evidence. [00:29:53] Speaker 05: put in these letters and whatnot. [00:29:56] Speaker 05: At least that part of it was the subject, if I remember correctly, of argument in closing by counsel. [00:30:05] Speaker 05: Why does it, why does the absence of expert testimony about that, about industry praise, about the factors other than the two that the judge mentioned. [00:30:22] Speaker 05: justify not mentioning these other considerations that are part of secondary consideration law. [00:30:32] Speaker 01: It's not necessarily your honor that it justifies it, but where, even if you assume that the instruction was wrong, there still needs to be error shown. [00:30:42] Speaker 01: There's still, I'm sorry, there still needs to be prejudice shown. [00:30:46] Speaker 01: And Inline has not made that showing because its evidence on these other points was weak to the point that it cannot be said it would have swayed the jury's verdict on obviousness in light of both the strong evidence of obviousness and that [00:31:03] Speaker 01: most of its evidence on secondary considerations. [00:31:07] Speaker 05: But suppose I thought that on the art side of the obviousness analysis, the so-called prima facie case, that there's no ground for reversal on that, but that that's evidence that could cause genuine debate, reasonable debate. [00:31:26] Speaker 05: So it's not compelling on its face in the way that sometimes means [00:31:32] Speaker 05: secondary considerations clearly could not overcome it. [00:31:36] Speaker 05: And then there are different, within the realm of secondary considerations, the different considerations come with different factual focuses. [00:31:48] Speaker 05: Commercial success may have to do with numbers of sales and market calculations, whereas industry praise [00:31:58] Speaker 05: is much less numerical, but really may matter a lot. [00:32:02] Speaker 05: In fact, it may have come out even before the product was selling in the market for long enough for commercial success even to be measured, but that wouldn't make the different focus industry praise factor weightless. [00:32:19] Speaker 05: I don't know about copying. [00:32:21] Speaker 05: I guess I've been focusing on the industry praise piece of it. [00:32:25] Speaker 05: It's not clear to me on its face why an instruction that said, limit your focus to the commercial, implicitly said limit your focus to the commercial success and what Longfellow Need, is that the other one that was mentioned? [00:32:43] Speaker 05: Yeah. [00:32:44] Speaker 05: Really. [00:32:45] Speaker 05: enables us to say that it was non-prejudicial for the jury not to be told. [00:32:56] Speaker 05: There are other ways of looking at this, you know, human reaction evidence for judging obviousness. [00:33:05] Speaker 01: So the only industry praise evidence I'm aware of that is separate from the commercial success declarations is [00:33:14] Speaker 01: I think, one or two industry awards. [00:33:17] Speaker 01: So our position is that that evidence is not substantial enough to have swayed the jury's verdict. [00:33:24] Speaker 01: And it's in line's burden to show that there was prejudice from the jury not being instructed on those additional secondary consideration factors. [00:33:35] Speaker 05: Prejudice here means that understanding that the argument [00:33:43] Speaker 05: has to be that this could not have swayed a reasonable jury. [00:33:50] Speaker 05: Some standard like that is the prejudice standard, not that you're asking us to say it wouldn't have swayed a jury. [00:34:02] Speaker 01: I believe it's in line's burden to show that it could have changed the jury's verdict on obviousness. [00:34:10] Speaker 01: I believe that's a correct statement of the law. [00:34:13] Speaker 05: And, and you think not because? [00:34:18] Speaker 01: Because the additional evidence beyond commercial success and long felt need was marginal. [00:34:23] Speaker 01: And the jury was instructed on the two secondary considerations that were the main focus of their presentation. [00:34:30] Speaker 05: So I think I'm not quite understanding when you say the additional evidence, um, [00:34:37] Speaker 05: Sounds to me like maybe you're saying each piece of evidence goes in one box or another. [00:34:42] Speaker 05: If it's in the commercial success box, then we're not going to think about it in any of the other boxes. [00:34:47] Speaker 05: I don't think it works like that. [00:34:50] Speaker 01: No, that's not what I'm meaning to suggest, Your Honor. [00:34:53] Speaker 01: I think that most of their secondary considerations, evidence can be characterized as going to commercial success and long felt need. [00:35:03] Speaker 01: But to the extent that they're arguing that they had additional evidence at trial that would not be captured in those two factors and could not fairly be said to fall within that, we heard about industry praise, copying, and licensing. [00:35:20] Speaker 01: And my response is that, one, as I said, I don't think any of the copying evidence rises to the level of what this court has held is sufficient to show copying. [00:35:30] Speaker 01: Licensing, they had one license that was two. [00:35:34] Speaker 01: um, one of their was to a related company in Europe, which is also just goes to that, that evidence that may not have been captured by commercial success and long felt need is marginal and could not have changed the jury's verdict. [00:35:48] Speaker 03: Why couldn't the jury have rejected the commercial success evidence because they thought it, the commercial success was due to marketing and the like. [00:35:58] Speaker 03: But if they'd been properly instructed on industry praise, they might have reconsidered and said, well, even if your commercial success was due to marketing, all this praise also suggests that it was not obvious. [00:36:12] Speaker 03: Why isn't that a plausible explanation of why there's air here? [00:36:17] Speaker 01: It's not plausible based on the evidence that came in at trial. [00:36:21] Speaker 01: Because again, outside of the commercial success declarations that also go to industry praise, [00:36:27] Speaker 01: There was marginal evidence. [00:36:30] Speaker 01: There was a few more. [00:36:31] Speaker 03: That's not really answering my question, I don't think, because I think it's... I'm trying to ask in a different way what Judge Toronto was asking you, which is the same piece of evidence can be considered in two ways. [00:36:43] Speaker 03: Even assuming the jury rejected the commercial success evidence, let's just assume they rejected it because they thought commercial success was due to marketing, they still could have looked at that same evidence and said, well, maybe it didn't drive commercial success, but it definitely shows great industry praise, and that could have contributed to a non-obviousness finding. [00:37:07] Speaker 03: So just because it's evidence rejected for one reason under one factor doesn't mean it's necessarily rejected [00:37:13] Speaker 03: under all factors, does it? [00:37:16] Speaker 03: No, Your Honor, but in this analysis... But how do we know that the jury rejected that evidence showing industry praise under a proper instruction of how industry praise plays into secondary considerations? [00:37:34] Speaker 01: I don't think we need to know whether the jury rejected that evidence because it [00:37:40] Speaker 01: whether the instruction was prejudicial is looked at in the context of the entire trial. [00:37:45] Speaker 01: So it's looked at in the context of what was the evidence of obviousness that was put on, and then what was the evidence of secondary considerations. [00:37:55] Speaker 01: So the jury doesn't have to outright reject the secondary considerations evidence to still find the patents obvious. [00:38:07] Speaker 04: Do you think it was just an oversight by the district court? [00:38:11] Speaker 01: I think it either could have been inadvertence by the district court or the district court conforming the instruction to their expert's testimony that was specifically on. [00:38:22] Speaker 01: commercial success and long felt me. [00:38:24] Speaker 04: Is that permissible to confine the jury instructions to only what the expert testified to when there were other witnesses testifying to these other factors and there was evidence entered into the record about these other factors and at least in the closing argument they talked about commercial success and they appeared to also talk about industry praise. [00:38:49] Speaker 01: No, your honor. [00:38:50] Speaker 01: And I know I don't have one of you on this issue, but that's why this goes back to the need for inline to object distinctly and request a curative instruction, because the way that the record was left, it's not clear from the record what the district court did. [00:39:06] Speaker 01: and why, and raising this as one of seven or eight objections, seven of which were raised the day before in a charge conference. [00:39:12] Speaker 04: It was assumed the objection was good enough to put the judge on notice that there was a gap in the jury's instructions and an opportunity for the judge to therefore cure that gap. [00:39:22] Speaker 04: But for whatever reason, the judge silently just let it go and stuck to the original incomplete instructions. [00:39:33] Speaker 04: So then I guess we get back to this harmless error question. [00:39:38] Speaker 01: Yes, Your Honor. [00:39:39] Speaker 01: Then it would be a harmless error question. [00:39:44] Speaker 05: Can I ask a different aspect of the harmless error question? [00:39:51] Speaker 05: Now, let's assume that the instructional error, or let's focus on the possibility that there is a different instructional error. [00:40:02] Speaker 05: Not the one under 103, but either or both of the two 112. [00:40:07] Speaker 05: instructions. [00:40:08] Speaker 05: Let's start with written description. [00:40:11] Speaker 05: First of all, do you dispute that that instruction should not have been given? [00:40:19] Speaker 01: We do dispute that, Your Honor. [00:40:21] Speaker 01: Their expert did testify briefly as to written description. [00:40:25] Speaker 01: That's at appendix 1090. [00:40:28] Speaker 05: Their expert? [00:40:29] Speaker 01: Yes. [00:40:30] Speaker 01: Yes, that's correct. [00:40:33] Speaker 05: on, this is a defense of yours. [00:40:37] Speaker 05: Did you have, um, evidence and expert support for a lack of adequate written description? [00:40:46] Speaker 01: Yes. [00:40:46] Speaker 01: So sorry for stopping on you, your honor. [00:40:49] Speaker 01: Um, yes, under our expert did testify, um, as to ways in which the, the [00:40:59] Speaker 01: invention in the patents was not understandable to one of skill in the art. [00:41:03] Speaker 01: And although that was in the context of indefiniteness, our position is that that can also support a written description defense because that's part of the written description analysis as well. [00:41:13] Speaker 04: Let's assume that I looked at your expert's testimony and I don't feel one wave of a hint of written description analysis in there, and it's all devoted exclusively to indefiniteness. [00:41:27] Speaker 04: So then in that way, there wasn't an actual case by your side trying to pull down any of the claims on written description. [00:41:40] Speaker 04: So what do we do then? [00:41:44] Speaker 01: That's when the concept that I started with, the First Circuit's application of harmless error generously in situations where there's a general verdict, they will uphold the verdict if any of [00:41:57] Speaker 01: the theories is legally sufficient, I'm sorry, has sufficient evidentiary support as long as they can be reasonably sure that the jury relied on a legally sufficient support theory. [00:42:10] Speaker 04: And then theoretically, I guess to follow through on Judge Toronto's question, [00:42:14] Speaker 04: Let's say this course were to find that there was a problem with the Jury Instructions on 103 because there was a gap in the secondary consideration instructions. [00:42:24] Speaker 04: So there's a problem on 103. [00:42:27] Speaker 04: There's a problem on written description. [00:42:30] Speaker 04: If you wanted to still defend the indefiniteness during instructions, [00:42:41] Speaker 04: That would only address some of the claims, right? [00:42:44] Speaker 04: Not all of the claims. [00:42:45] Speaker 01: That's correct, Your Honor. [00:42:47] Speaker 04: Okay. [00:42:47] Speaker 04: And so what's the defense of permitting indefiniteness to have been a triable issue here? [00:43:00] Speaker 01: Yes. [00:43:00] Speaker 01: So what was raised by Inline Below in a motion in Lemonade was that Lacerda had waived this issue by [00:43:09] Speaker 01: not including it in our invalidity contentions. [00:43:13] Speaker 01: That is not accurate. [00:43:15] Speaker 01: In our first invalidity contention, it was disclosed. [00:43:19] Speaker 01: I can have a minute to find the site. [00:43:23] Speaker 01: That's at appendix 9010. [00:43:26] Speaker 01: And then in later amendments to our contentions, it was carried forward in the non-infringement section of our combined contentions. [00:43:34] Speaker 01: It was also timely disclosed in our experts report and it was not waived solely by us not raising it at. [00:43:43] Speaker 01: Markman. [00:43:43] Speaker 01: So that was the only argument they made below as to why indefiniteness should not come in at trial. [00:43:50] Speaker 04: All of the additional... They made an additional, or at least they're making an additional argument to us that this indefiniteness question is a question of law, and it needs to be resolved by the district court, not by the jury, and therefore it was wrong to submit this issue to the [00:44:07] Speaker 01: Inline is now arguing that it never made that argument to the district court. [00:44:12] Speaker 01: Once it lost the motion in limine, it did not object to the jury being instructed on indefiniteness after the testimony came in. [00:44:21] Speaker 01: And that argument was not raised below. [00:44:23] Speaker 01: So it's forfeited on appeal. [00:44:25] Speaker 01: It's also wrong on the merits where there is a factual dispute about what a person of skill in the art would understand. [00:44:32] Speaker 01: This court has held that it is appropriate to send indefiniteness to the jury and [00:44:37] Speaker 01: That's the case here. [00:44:40] Speaker 01: And the additional argument that was raised that our expert's trial testimony was somehow different from what was in his expert report, that is inaccurate. [00:44:49] Speaker 01: It was also raised for the first time in Inline's reply brief, so double forfeiture, not raised below, not raised in the opening brief, but it's also incorrect. [00:44:59] Speaker 01: Our expert's report did refer to there being two dictionary definitions of the word height [00:45:06] Speaker 01: But that was in the context of saying, no matter which dictionary definition you used, a person of skill in the art would not understand how to measure that hinge height. [00:45:18] Speaker 01: That is the exact opinion he gave at trial. [00:45:21] Speaker 01: those additional arguments. [00:45:23] Speaker 04: What about the Baldwin rule, which is, I believe, if there is a defect in one of the alternate theories, then therefore you can't try to sustain the verdict based on the non-defective theory? [00:45:37] Speaker 01: Yes, so two points, Your Honor. [00:45:39] Speaker 01: One, the Baldwin rule, as applied by the Supreme Court, applies to legally defective theories, not to theories that don't have sufficient evidence, which is what they're arguing. [00:45:50] Speaker 01: with respect to at least written description. [00:45:53] Speaker 01: But the first circuit does apply a version of the Baldwin rule. [00:45:57] Speaker 01: And that's where the concept of can the court be reasonably sure that the jury relied on a theory with adequate evidentiary support. [00:46:06] Speaker 01: And the key here is that all claims were invalidated. [00:46:09] Speaker 01: The only way that the jury could have reached that [00:46:12] Speaker 01: is by finding obviousness, because the other two 112 defenses don't apply to all claims. [00:46:18] Speaker 04: But now the context of my question is not different. [00:46:21] Speaker 04: If we conclude there's a problem with the 103 and there's a problem with the written description, and now we're trying to figure out, is it reasonable to assume that the jury for the hinge height claims found them indefinite rather than obvious? [00:46:43] Speaker 04: then maybe you have a point. [00:46:44] Speaker 04: But I guess the problem right now is I can't see whether that's true or not. [00:47:00] Speaker 03: If we have to send it back on obviousness, we can't reasonably assume the jury found indefiniteness as to the claims it was asserted against, can we? [00:47:12] Speaker 03: I get your argument the other way, that if we find problems with indefiniteness and written description, we could still reasonably assume the jury found obviousness because it related to all of them. [00:47:25] Speaker 03: But if obviousness is out and written description is out, that's parsing it pretty fine to say, well, the jury probably found just those claims indefinite, right? [00:47:37] Speaker 01: Yes. [00:47:38] Speaker 01: I understand why. [00:47:39] Speaker 03: why you would say that would be a more difficult call for the court to make that the jury had relied on a theory with adequate support, but if... I mean, if we're going to send it back for a new trial anyway, why wouldn't we just send it back on all the claims again to be sure that the jury is finding on the right basis? [00:48:00] Speaker 01: Because in indefiniteness, there has been no argument made that the indefiniteness argument was not legally sufficient to support the jury's verdict. [00:48:10] Speaker 01: They didn't request Jamal on that issue on appeal. [00:48:15] Speaker 01: at least as to those claims as to which indefiniteness applies. [00:48:19] Speaker 01: I understand why Your Honor thinks it would be a harder call, but there is legally sufficient evidence in support of those claims and the appeals court tries to give the jury on questions about legal sufficiency of the evidence the benefit of doubt that the jury can make those calls correctly as opposed to a legal defect in a theory, which is not the case here. [00:48:51] Speaker 05: Thank you. [00:48:55] Speaker 05: Three minutes for rebuttal, please. [00:48:59] Speaker 02: Yes, Your Honor. [00:49:00] Speaker 02: Thank you. [00:49:00] Speaker 02: I don't anticipate needing it since we didn't get into the cross appeal on any level. [00:49:08] Speaker 02: So I think our briefing, I think, stands for that in that we think the fact that they're suggesting this was an exceptional case. [00:49:17] Speaker 02: No, no, no. [00:49:18] Speaker 05: The fact that they didn't talk about it [00:49:20] Speaker 02: So the only thing I'll address in rebuttal, Your Honor, is that Judge Hillman ruled the 640 patent was infringed. [00:49:27] Speaker 02: In order to do that, he would have had to review the claims, which included a hinge height limitation. [00:49:33] Speaker 02: And so by virtue of that, I think there's some implication that he had performed his own analysis at that point in time that this limitation was infringed. [00:49:42] Speaker 05: Thank you, Your Honor. [00:49:43] Speaker 05: Thanks to all counsel. [00:49:44] Speaker 05: Case is submitted.