[00:00:00] Speaker 02:
Our second case this morning is number 23, 1715, Jizang Super Lighting Electronic Appliance versus CH Lighting Technology.

[00:00:11] Speaker 02:
OK, Mr. Lamkin.

[00:00:12] Speaker 05:
Thank you, and may it please the court.

[00:00:14] Speaker 05:
I would like to focus on two errors today.

[00:00:17] Speaker 05:
The first was the erroneous grant of JMAW mid-trial on two patents.

[00:00:22] Speaker 05:
And second is the admission of the damages that's been for Ms.

[00:00:25] Speaker 05:
Kindler.

[00:00:26] Speaker 05:
I'd like to begin with damages, because whatever the other complexities of this case, the damages estimate contravenes this court's precedent.

[00:00:34] Speaker 05:
The plaintiff's expert proposed a royalty that exceeded for one, anyone of three patents, that exceeded the royalty that plaintiff ever received for the entirety of its 261 patent portfolio.

[00:00:48] Speaker 05:
And that was contrary to Weiland, MLC, and Omega, which have a clear requirement when experts rely on a

[00:00:55] Speaker 05:
prior licenses that cover a range of patents, a large number of them, they must, and I'm quoting, address the extent to which the other patents, patents other than the ones being asserted, contributed to the prior royalty.

[00:01:06] Speaker 05:
But Ms.

[00:01:06] Speaker 05:
Kindler didn't do that at all here.

[00:01:08] Speaker 05:
For the Lanera license, which was 261 patents, none of them asserted in this case, there was no analysis whatsoever about how much of the other 257 licenses contributed to the royalty.

[00:01:20] Speaker 05:
For the TCP license, she said that 14

[00:01:23] Speaker 05:
licenses, the 14 patents drove that license in the NTCP, but then only one of them had issue here, and never had determined how much the other 13 licenses contributed.

[00:01:35] Speaker 05:
And yet came up and told the jury, give Super more than

[00:01:40] Speaker 05:
Super had ever received for its entire portfolio for just any one of these three.

[00:01:43] Speaker 00:
Did she say that the other two asserted patents here are somehow technically comparable to some of those listed 14 patents?

[00:01:52] Speaker 05:
So there is a statement in there that she said that they were similar to.

[00:01:56] Speaker 05:
But the question isn't, are they similar to?

[00:01:58] Speaker 05:
The question is, did the other patents contribute to the value?

[00:02:01] Speaker 05:
And unless they didn't contribute to the value, you can't count 100% of the 261 patents.

[00:02:06] Speaker 05:
All of it, all royalty.

[00:02:09] Speaker 05:
towards any one of three patents here.

[00:02:12] Speaker 05:
And I think this is actually much worse than Weiland.

[00:02:15] Speaker 05:
Because at least in Weiland, the expert said it was one of six patents that drove the prior license.

[00:02:22] Speaker 05:
And one of them is asserted here.

[00:02:23] Speaker 05:
And he therefore gave a 25% discount to account for the other five patents.

[00:02:27] Speaker 05:
But this court reversed anyway and said, look, you haven't explained why the other five patents are only worth 25%.

[00:02:33] Speaker 00:
Can there be circumstances where

[00:02:36] Speaker 00:
You're licensing a 261 patent portfolio, but you, the licensee, really only care about 14 of them.

[00:02:46] Speaker 00:
And in the negotiation process, the patent owner says, you know, let me just go ahead and give you a license on everything, even though

[00:02:57] Speaker 00:
you don't really care about the remaining, I don't know, 247 patents.

[00:03:03] Speaker 05:
I think that type of apportionment is what an expert would want to do.

[00:03:06] Speaker 05:
Say, oh, I have determined that only 14 out of these 260 drive the negotiation.

[00:03:11] Speaker 05:
And they contribute to the entirety of the value.

[00:03:14] Speaker 05:
But what we have here is 14 that supposedly drove the negotiation, but only one of them is asserted here.

[00:03:20] Speaker 05:
And there's no analysis of how much value the other 13 gave.

[00:03:24] Speaker 05:
And I think that's, you know,

[00:03:26] Speaker 05:
it can't be right when the 25% discount is enough, then instead you discount and you actually increase the value to give three times the royalty in one of the prior licenses and one and a half times the royalty in the other prior license.

[00:03:39] Speaker 05:
And in this case, it actually turns out the royalty was 40% of CH Lighting's total profit, not the profit attributable to the infringement, 40% of its total profit on every sale.

[00:03:52] Speaker 05:
And for what?

[00:03:52] Speaker 05:
And that's at page appendix 10772.

[00:03:55] Speaker 05:
and appendix 10000125.

[00:03:58] Speaker 05:
That's from their own expert, by the way.

[00:04:00] Speaker 05:
And for what?

[00:04:02] Speaker 05:
For taking a light strip, the LED strip, and disposing it directly on the tube, having diffusion film.

[00:04:09] Speaker 05:
Or for, as Super would describe it, for having an electric shock system that, rather than staying off and checking to see if it's properly installed, will briefly turn on and shock the individual installing it, and then turn it on.

[00:04:21] Speaker 05:
For that, 40% of profit doesn't make sense.

[00:04:24] Speaker 05:
It is even apart from the requirements of the wireline.

[00:04:27] Speaker 05:
That's the type of thing that's sort of the monstrous and excessive type of royalty that simply cannot stand.

[00:04:33] Speaker 02:
I think maybe you should turn to the on-sale bar issues, unless there are further questions about the damages.

[00:04:39] Speaker 02:
Yes, yes, certainly.

[00:04:40] Speaker 02:
So we think that the- It seems to me that you're relying primarily on the exclusion of two

[00:04:48] Speaker 02:
documents or set of documents that would prove that the tubes were on sale.

[00:04:59] Speaker 02:
One of them is DX 41 and the other one is the safe light documents, right?

[00:05:06] Speaker 05:
Yes.

[00:05:07] Speaker 05:
With a correction, we think what did come in was sufficient, because he pointed specifically to the fact that a Felix spec sheet had a 2014 date, and he pointed specifically to it as he had clear in light of day a copyright on the CreeTube that was also 2014.

[00:05:21] Speaker 05:
But yes, I think there would have been much more evidence.

[00:05:23] Speaker 05:
but for the exclusion of GX 41 and the Max Light documents.

[00:05:27] Speaker 05:
That's correct.

[00:05:28] Speaker 05:
If I turn to the GX 41 first, if Judge Light is interested in that.

[00:05:33] Speaker 02:
Yeah.

[00:05:34] Speaker 02:
What I'd like to hear, it seems to me that there's this discussion about wattage, which I frankly don't understand.

[00:05:41] Speaker 02:
Because as I read the record, your expert testified that the Phillips II that was

[00:05:52] Speaker 02:
reconstructed or deconstructed by super met the claim limitation so it wouldn't make any difference.

[00:06:00] Speaker 02:
It might have been a different wattage from the other tubes.

[00:06:03] Speaker 05:
I think that's exactly right.

[00:06:05] Speaker 05:
First I want to make clear that if you look at page

[00:06:08] Speaker 05:
11,258.

[00:06:09] Speaker 05:
This is his expert report.

[00:06:11] Speaker 05:
It's in volume four, because we have way too many volumes here.

[00:06:15] Speaker 05:
11,258?

[00:06:15] Speaker 05:
Yes, 11,258.

[00:06:18] Speaker 05:
This is the expert report, and this is the Phillips tube.

[00:06:21] Speaker 05:
And so he's in this picture right here.

[00:06:24] Speaker 05:
Which Phillips tube?

[00:06:25] Speaker 05:
The TLD 14.5 watt Instafit.

[00:06:28] Speaker 02:
This is the 14 watt?

[00:06:30] Speaker 05:
Yeah, it's 14.5 watts.

[00:06:31] Speaker 05:
Right there in his expert report.

[00:06:32] Speaker 05:
And this image is an image from

[00:06:35] Speaker 05:
DX41, the super teardown, showing that they had possession of it.

[00:06:39] Speaker 05:
And so he's saying, look, they had possession of this very bull, the 14.5 watt.

[00:06:44] Speaker 05:
We have it in their documents.

[00:06:45] Speaker 05:
And if you look at the Bates number there, that Bates number corresponds exactly to DX41, which is on page 20,069 and 20,071.

[00:06:54] Speaker 05:
So he's saying this very teardown, this very bull, is invalidating.

[00:06:59] Speaker 05:
And you can tell because it says, one, on paragraph 1193, he says, I understand it was in Penta's possession.

[00:07:05] Speaker 05:
And in paragraph 1194, the last carryover sentence to the next page, the Phillips Instafit LEDT8 tubes demonstrate that the material claimed in at least 41 and 43 of the early step patent and claims 1, 2, 29, and 30 of the 125 patent was not novel or non-obvious.

[00:07:20] Speaker 05:
So he's not saying this is inequitable conduct.

[00:07:22] Speaker 05:
He's saying it existed because you had it this very tube, and this very tube is invalidating.

[00:07:28] Speaker 05:
But even if there were a difference in wattage, one in some elsewhere's report was 16.5 watts, and this one is 14.5 watts,

[00:07:34] Speaker 05:
That wouldn't make this irrelevant.

[00:07:36] Speaker 05:
They're from the same series.

[00:07:37] Speaker 05:
And there's been no explanation why a tube point.

[00:07:40] Speaker 00:
I'm getting confused.

[00:07:41] Speaker 00:
I feel like there's two different arguments potentially going on here.

[00:07:45] Speaker 00:
One is, can we just get this slide in to be admissible for consideration?

[00:07:50] Speaker 00:
Because this particular teardown of a particular tube is a very, very close cousin to the tube that we actually want to rely on to invalidate a bunch of claims.

[00:08:03] Speaker 00:
Then there's a second argument, which is, well, maybe the tube that was actually torn down and discussed in this slide itself is invalidating a bunch of claims.

[00:08:14] Speaker 00:
I think that's right.

[00:08:15] Speaker 00:
Which argument or arguments are you actually relying on?

[00:08:20] Speaker 00:
Because to be honest, when I looked at your blue and gray brief, I didn't see you making the latter argument.

[00:08:28] Speaker 00:
focusing on stressing and exclusively contemplating the idea that please let us get this slide in because it's a very, very close cousin of the two we actually want to rely on.

[00:08:41] Speaker 00:
And so we think it's highly relevant to the other two not torn down that we want to rely on for invalidity.

[00:08:48] Speaker 05:
Right.

[00:08:48] Speaker 05:
And I think we understand that because this is the actual to be disclosed and relied on in it.

[00:08:53] Speaker 05:
But if you take a look at the record, we very clearly made below.

[00:08:55] Speaker 00:
I'm talking about.

[00:08:57] Speaker 00:
for the purposes of appeals.

[00:08:59] Speaker 05:
We're making both arguments here.

[00:09:00] Speaker 00:
I know, but I only saw one.

[00:09:02] Speaker 00:
So help me.

[00:09:03] Speaker 00:
Did you really make two here on appeal?

[00:09:05] Speaker 05:
I think both arguments are there, because we say that any differences are immaterial, and that wattage can't make a difference.

[00:09:12] Speaker 05:
And truthfully, the difference in wattage, that's a difference in ballast, and I can explain it.

[00:09:18] Speaker 00:
I know, but it's still product x and product y. Even if it's product x and x prime, they're still two different products.

[00:09:27] Speaker 05:
Both arguments are fair, because the exact same one is included in the notion that any differences are immaterial.

[00:09:33] Speaker 05:
But at the very least, any differences are immaterial, because the expert said, I can look at the schematic, and I can tell you it's the same product, or at least the same series.

[00:09:43] Speaker 05:
And how does the wattage affect whether or not the strip is disposed on the inter-circumferential service?

[00:09:51] Speaker 05:
And there's diffusion film.

[00:09:52] Speaker 05:
It just doesn't make a difference.

[00:09:54] Speaker 05:
And if the expert's willing to so testify, I don't understand how you could possibly exclude this evidence.

[00:10:00] Speaker 05:
The judge originally said it was for inequitable conduct only.

[00:10:03] Speaker 05:
But it's in our report for non-obviousness.

[00:10:06] Speaker 05:
It's in our report for it was already on sale.

[00:10:08] Speaker 05:
It's not thought about in inequitable conduct.

[00:10:10] Speaker 05:
Right there, those two paragraphs are, it was available.

[00:10:14] Speaker 00:
Did you say to the judge below, we need this line?

[00:10:18] Speaker 00:
Don't be confused.

[00:10:20] Speaker 00:
Judge, you think this product that got torn down is different from the product we want to rely on.

[00:10:26] Speaker 00:
But actually, this very product that got torn down, we want to rely on it for invalidity purposes.

[00:10:32] Speaker 00:
See our expert report.

[00:10:35] Speaker 05:
Page 10217 of the appendix, page 74, lines 20 and 25.

[00:10:41] Speaker 05:
For example, the DX41 document we talked about throughout this trial shows that the prior art tubes were on sale.

[00:10:47] Speaker 05:
Court asks, these specific products answer, certainly, the series.

[00:10:52] Speaker 05:
And in one case, our expert believed it was the same product, Your Honor.

[00:10:55] Speaker 05:
The same product, Your Honor.

[00:10:57] Speaker 05:
So if they're not kissing cousins, they're identical.

[00:11:01] Speaker 05:
And so these should have been admitted.

[00:11:02] Speaker 05:
And it's an abuse of, remember, relevance is actually a very low standard.

[00:11:06] Speaker 05:
Does it tend to make something more likely than not?

[00:11:09] Speaker 05:
Does it tend to make it more likely?

[00:11:11] Speaker 05:
If they want to cross-examine and say this is the 14.5 watt, there's only a 16 watt that you have in your possession in your pictures, that's fine.

[00:11:19] Speaker 05:
But does it make it more likely that the 16.5 watt in the same series is on sale?

[00:11:25] Speaker 05:
When Super was in possession of a 14.5 watt version in the same series, it absolutely does.

[00:11:31] Speaker 05:
It's clearly relevant, and it's an abuse of discretion to exclude it.

[00:11:34] Speaker 02:
Well, let's talk about the safe flight dock.

[00:11:36] Speaker 02:
Yes.

[00:11:37] Speaker 02:
The judge seemed to exclude these on the ground that you hadn't listed them when you listed the witness who was going to testify about them.

[00:11:46] Speaker 02:
I guess ultimately that would have been Marsh.

[00:11:48] Speaker 02:
Yes, so the ground which seems to be problematic because there's no requirement in the rules or any standing order requiring such listing but Applying a non-existent rule your honor is an abuse of discretion So it's an especially clear abuse of discretion here because if I could turn the court to page 2

[00:12:07] Speaker 05:
I keep pointing to documents.

[00:12:08] Speaker 05:
But if you take a look at what Super did, and we cite this on page 41 of our brief, Super's own disclosure just simply says that we'll provide witnesses to authenticate documents, but doesn't say specifically which witness will authenticate which document.

[00:12:22] Speaker 05:
It's simply not a requirement.

[00:12:23] Speaker 05:
And on page 43 of our brief, we cite a Northern District of Texas case, which lists a lot of other cases showing it's just regular practice, at least in the Fifth Circuit, that you can say, a corporate representative.

[00:12:35] Speaker 05:
You don't have to go further and give the corporate representative's name.

[00:12:38] Speaker 05:
And that's exactly what Mr. Ryan was saying.

[00:12:40] Speaker 02:
OK, so accepting that, but looking at the judge's discussion of this, and it covers a couple of pages in the appendix,

[00:12:48] Speaker 02:
He also seems concerned that the safe flight documents don't show on sale.

[00:12:52] Speaker 02:
Am I correct about that?

[00:12:54] Speaker 05:
I think he may have been concerned about how clear they were.

[00:12:58] Speaker 05:
But the safe flight document, the spec sheet that we were talking about there, actually has a date on it.

[00:13:06] Speaker 05:
And it shows the date is in 2014, not 2015.

[00:13:09] Speaker 02:
But there's no evidence in the record about its dissemination to people who might accept the offer, right?

[00:13:18] Speaker 05:
No, I don't think we had evidence of that.

[00:13:20] Speaker 05:
But there were a bunch of documents.

[00:13:21] Speaker 05:
This is just one of multiple documents that might show this.

[00:13:25] Speaker 05:
And in the end, the expert would be able to say, yes, this is the type of spec sheet.

[00:13:28] Speaker 05:
And it's a revised version of the spec sheet.

[00:13:30] Speaker 05:
This is the type of spec sheet that shows that something is on sale.

[00:13:34] Speaker 05:
But every single of our MaxLite documents, not just that one spec sheet,

[00:13:37] Speaker 05:
Every Max Light document we had was excluded based on an erroneous rule that somehow we had to identify by name the individual who would authenticate them, a rule that wasn't applied to Super.

[00:13:49] Speaker 05:
And so simply applying a non-existent rule, unevenly between the parties, that's an abuse of discretion.

[00:13:54] Speaker 05:
The district court didn't say it wouldn't have been different anyway.

[00:13:57] Speaker 05:
It would have been a harmless error.

[00:13:59] Speaker 05:
He simply said, I'm going to exclude it.

[00:14:01] Speaker 05:
And once it was excluded, decided that we didn't have enough evidence, notwithstanding the fact

[00:14:06] Speaker 05:
that our expert actually pointed to a Phillips spec sheet with a 2014 date on it, that our expert pointed to a 2014 copyright.

[00:14:13] Speaker 05:
This all would have been sufficient standing alone, but it's especially problematic when the district court, based on an erroneous view of the law, excluded our witness from authenticating the documents and therefore the jury seeing

[00:14:27] Speaker 05:
These documents, which would show that these items were on sale before the critical date.

[00:14:34] Speaker 05:
If the court has no further questions, I'll reserve the remainder of my time for a vote.

[00:14:37] Speaker 02:
OK, we'll give you two minutes.

[00:14:39] Speaker 05:
Thank you so much.

[00:14:47] Speaker 02:
Mr. Bernstein?

[00:14:57] Speaker 04:
Your honors, good morning.

[00:14:58] Speaker 02:
May I please the court?

[00:15:00] Speaker 02:
You might start off where we just left off on the exclusion of these documents, the DX-41 and the SafeLight documents.

[00:15:09] Speaker 02:
The MaxLight documents.

[00:15:10] Speaker 02:
MaxLight, sorry.

[00:15:11] Speaker 04:
So the opposing counsel mentioned and relied on what Dr. Levy said in his expert report.

[00:15:22] Speaker 04:
And the reference to the Phillips tube, there's no discussion of that at trial.

[00:15:28] Speaker 04:
All he did at trial.

[00:15:30] Speaker 02:
How could he do it when the document was excluded?

[00:15:33] Speaker 04:
Yes.

[00:15:34] Speaker 04:
So all he said with respect to at the beginning of his analysis of the prior art on each of the tubes, he gave a one-sentence statement saying, I reviewed the documents and here's, I have determined that there's prior art.

[00:15:48] Speaker 04:
So I want to start there, but I'll go to his actual expert report because, Your Honor, that's what he said in his actual expert report as well.

[00:15:56] Speaker 04:
He gave a one-sentence,

[00:15:58] Speaker 04:
at Paragraph 1004, 1006.

[00:15:59] Speaker 04:
What page are you on?

[00:16:03] Speaker 04:
This is his expert report that starts at 10876, Your Honor, and it's Paragraph 1004, 1006, and 1008.

[00:16:25] Speaker 04:
Appendix 10876, that's where his expert report starts.

[00:16:30] Speaker 02:
This is volume three.

[00:16:36] Speaker 04:
10876.

[00:16:39] Speaker 01:
Yeah, that's the first page of the report.

[00:16:44] Speaker 04:
Right.

[00:16:44] Speaker 04:
So I'll find it, Your Honor.

[00:16:47] Speaker 04:
It's paragraphs 1004, 1006, and 1008 of his report.

[00:16:53] Speaker 04:
I apologize.

[00:16:55] Speaker 02:
This is volume four.

[00:16:57] Speaker 02:
Yes.

[00:17:01] Speaker 04:
You said paragraph 1004?

[00:17:03] Speaker 04:
1004, 1006, and 1008.

[00:17:06] Speaker 04:
OK, that's on JA 11200.

[00:17:17] Speaker 04:
And so in his expert report, he had the same one sentence conclusion about the prior art.

[00:17:24] Speaker 04:
There's no analysis that he did on how any of the references actually, or any of the documents actually showed that the references were on sale in any way.

[00:17:37] Speaker 04:
He had a conclusory opinion in his expert report.

[00:17:40] Speaker 02:
No, he says with respect to DX 41 in the expert report, he says one,

[00:17:45] Speaker 02:
I've analyzed the Phillips tube that's discussed in DX 41, and I find that it satisfies all the claim limitations.

[00:17:55] Speaker 02:
And then he also says that the fact that Super possessed

[00:18:01] Speaker 02:
of the two and was deconstructing, it shows that it was on sale, right?

[00:18:05] Speaker 02:
He says those things.

[00:18:06] Speaker 04:
So not in his invalidity part of his report.

[00:18:09] Speaker 04:
That's in his inequitable conduct.

[00:18:11] Speaker 04:
He's assessing materiality when he made the statements.

[00:18:14] Speaker 04:
The statements that Mr. Lamkin made are in the context of inequitable conduct and materiality.

[00:18:21] Speaker 04:
When he was discussing in his report what was actually on sale and why it was on sale, he did not refer to this document.

[00:18:29] Speaker 04:
And Judge Albright, that's part of the reason why Judge Albright excluded the document as being related solely to inequitable conduct.

[00:18:38] Speaker 02:
Well, show me again where the part you're saying he limited his discussion on sale bar.

[00:18:46] Speaker 02:
What's 11?

[00:18:48] Speaker 04:
That's 1182 through 88.

[00:18:49] Speaker 04:
That's the paragraph numbers in the report.

[00:18:55] Speaker 04:
8?

[00:18:56] Speaker 04:
Yes, 1182 to 1188.

[00:18:59] Speaker 02:
I'm sorry, what page of the appendix?

[00:19:09] Speaker 01:
It could be JA-11255.

[00:19:17] Speaker 01:
So these paragraph numbers are about the Cree tubes, is that right?

[00:19:21] Speaker 01:
That's correct.

[00:19:35] Speaker 02:
I mean, here on page 11, 257, he's talking about the Phillips tube.

[00:19:41] Speaker 02:
And he says, Plank was in possession of the tube.

[00:19:44] Speaker 02:
And elsewhere, he says that that tube satisfied the claim limitation.

[00:19:49] Speaker 02:
I mean, this is paragraph 11, page 9, is directly addressing that tube, right?

[00:19:57] Speaker 04:
It is, but it's not in the context of invalidity.

[00:20:01] Speaker 04:
It's not the invalidity section of his expert report.

[00:20:03] Speaker 02:
Well, but it says he's just disclosed or render obvious all the limitations.

[00:20:08] Speaker 04:
I mean, it does.

[00:20:09] Speaker 04:
I don't dispute that it does, Your Honor.

[00:20:12] Speaker 04:
The point was, and I think that part of the reason why Judge Albright ruled the way he did is because this is not in the invalidity section of the expert report.

[00:20:22] Speaker 02:
Whether it's in that section or not, he's saying that it renders it invalid.

[00:20:28] Speaker 04:
So yes, Your Honor, that is accurate.

[00:20:31] Speaker 04:
But again, an expert is tied to what he says in his expert report.

[00:20:36] Speaker 04:
And if he, in establishing whether something is on sale or not, his opinion in his report is not based on the document.

[00:20:43] Speaker 04:
It wasn't.

[00:20:45] Speaker 04:
Judge Albright didn't abuse his discretion by precluding the expert from using a document in a different way.

[00:20:51] Speaker 00:
But let's go back to the basis for why the judge excluded the match light.

[00:20:58] Speaker 00:
documents.

[00:20:59] Speaker 00:
It was because he thought that it was unfair to not have pre-identified the corporate representative that was going to authenticate the documents.

[00:21:13] Speaker 04:
Is that right?

[00:21:14] Speaker 04:
So Judge Albright never actually excluded the Max Light documents?

[00:21:20] Speaker 00:
Right.

[00:21:21] Speaker 00:
He excluded Eric Marsh, who was going to testify as the corporate executive for Max Light to

[00:21:28] Speaker 00:
prove up that these documents are max-light documents.

[00:21:32] Speaker 04:
Correct.

[00:21:32] Speaker 04:
He put, just to be clear, Judge Albrecht did say that CH lighting, the appellants, could use anything referenced in the expert report, could be used, and they could attempt to get the documents into evidence.

[00:21:46] Speaker 02:
Okay, but his ground was wrong.

[00:21:49] Speaker 02:
In excluding the max-light documents, he said

[00:21:52] Speaker 02:
I'm excluding them because you didn't list them in advance.

[00:21:54] Speaker 02:
That's just wrong, right?

[00:21:56] Speaker 04:
I respectfully disagree, Your Honor.

[00:21:59] Speaker 04:
OK, why?

[00:22:00] Speaker 04:
Because rule 26A, at least your initial disclosure requirements, if you have a witness that has information, a specific witness or a party that has information about the prior art or documents related to the prior art, you have to identify that person.

[00:22:21] Speaker 04:
I mean, otherwise, we did.

[00:22:23] Speaker 02:
They identified Marsh as the person who was going to testify.

[00:22:26] Speaker 04:
I mean, a week before trial.

[00:22:28] Speaker 02:
They didn't do it in discovery.

[00:22:29] Speaker 02:
Well, that was because you knew that there was going to be a witness testifying on authentication, right?

[00:22:37] Speaker 04:
Absolutely not.

[00:22:38] Speaker 04:
Because when we got the witness list from CH Lighting, from the appellants, a month before trial when we got the witness list, Mr. Behetti was on that.

[00:22:50] Speaker 04:
will testify by deposition, not live.

[00:22:54] Speaker 04:
Mr. Behetti was never going to authenticate anything.

[00:22:59] Speaker 04:
They also put on this random witness, like Max Lake representative, will test or may testify live or by deposition.

[00:23:06] Speaker 04:
And so Mr. Behetti.

[00:23:09] Speaker 02:
So your theory is that not that they had to list the documents, but that they had to identify that there was going to be an authentication witness?

[00:23:20] Speaker 04:
Well, I think there's two things.

[00:23:22] Speaker 02:
I mean, it is clear, right, that there's no requirement of listing the documents that are going to be authenticated.

[00:23:27] Speaker 02:
That's correct, right?

[00:23:29] Speaker 04:
Yes, no.

[00:23:31] Speaker 04:
Yes.

[00:23:31] Speaker 04:
No, there's no requirement just to list the specific documents that are going to be authenticated.

[00:23:38] Speaker 02:
Okay, so to the extent that he said that, he's wrong, right?

[00:23:41] Speaker 04:
Yes, Your Honor, I don't think that is what Judge Albright said.

[00:23:46] Speaker 04:
I think that what Judge Albright meant is you have to identify somewhere that a witness is going to be testifying.

[00:23:57] Speaker 02:
Where's the ruling?

[00:24:31] Speaker 03:
So this is at Appendix 00068.

[00:24:36] Speaker 02:
What's that in volume one?

[00:24:38] Speaker 03:
Volume one, Your Honor.

[00:24:51] Speaker 04:
And this is where Judge Albright, I mean, the ruling was that they never provided us notice that Mr. DeEste.

[00:24:57] Speaker 02:
OK, where are you on the page?

[00:25:01] Speaker 02:
What are we looking at here?

[00:25:03] Speaker 02:
This is the post trial motions really?

[00:25:07] Speaker 04:
This is his order.

[00:25:08] Speaker 02:
On post trial motions?

[00:25:10] Speaker 02:
Correct.

[00:25:10] Speaker 02:
Okay, so where does he say this?

[00:25:42] Speaker 04:
This is the second point.

[00:25:45] Speaker 04:
At the bottom of the page, defendants conceded on October 27 that they failed to provide notice of plaintiffs during discovery that Mr. Behiti would be authenticating max life documents.

[00:26:02] Speaker 00:
Right.

[00:26:03] Speaker 00:
And then on the following page, it says, defendants argue that disclosing a corporate representative is sufficient to the notice requirements.

[00:26:11] Speaker 00:
and that even if it were not proper, a late disclosed witness should not be excluded if the late disclosure is substantially justified or is harmless.

[00:26:18] Speaker 00:
Upon consideration of the party's arguments, the applicable law, the court finds the defendant's arguments unpersuasive and not sufficient to warrant a new trial period.

[00:26:27] Speaker 00:
No explanation.

[00:26:29] Speaker 04:
Right.

[00:26:29] Speaker 04:
But I mean, I think there was an accident.

[00:26:32] Speaker 04:
I mean, just from a district court judge standpoint, I mean,

[00:26:38] Speaker 04:
From my standpoint, how do I know during discovery to ask a witness about certain documents if they had said?

[00:26:45] Speaker 02:
You ask an interrogatory.

[00:26:46] Speaker 04:
Which documents are you relying on?

[00:26:50] Speaker 04:
But we took the deposition of Mr. Rahidi.

[00:26:56] Speaker 04:
At least the way I was always taught, Your Honor, is that if you're going to rely on a witness to testify about something at trial, you identify that witness in the topics

[00:27:06] Speaker 04:
in your initial disclosures or your supplemental initial disclosures.

[00:27:10] Speaker 00:
I think I heard Mr. Lamkin earlier say that Supers pre-trial disclosures also did not identify which witnesses would authenticate which documents.

[00:27:19] Speaker 04:
Our initial disclosures on the issues of infringement or invention, I mean, our initial disclosures did identify that.

[00:27:27] Speaker 00:
How about other things?

[00:27:30] Speaker 04:
Yes, I mean there was never any complaint that we didn't identify with enough specificity for them to take the deposition of our witnesses.

[00:27:39] Speaker 02:
His ruling doesn't have to do with the failure to identify people for deposition.

[00:27:45] Speaker 02:
He's saying that in listing your trial witnesses, you have to say which documents they're going to cover and that there's no such requirement.

[00:27:52] Speaker 02:
You just list a witness.

[00:27:53] Speaker 02:
He didn't require the substance of the witness's testimony to be listed in some pre-trial order.

[00:28:00] Speaker 02:
He could have, but he didn't.

[00:28:01] Speaker 04:
Yeah, I agree, Your Honor.

[00:28:03] Speaker 04:
That is not in his rules.

[00:28:05] Speaker 04:
But there is a requirement.

[00:28:06] Speaker 04:
You can't just have a witness testify a trial without providing proper notice of what the witness is going to testify on.

[00:28:14] Speaker 02:
What case says that?

[00:28:17] Speaker 04:
Again, I would go to Rule 26A.

[00:28:19] Speaker 02:
It's about discovery, not about trial.

[00:28:22] Speaker 04:
But it's certainly not an abuse of discretion for Judge Albright to say, I'm not going to let someone the day before or a week before trial just add on a witness when it's never been disclosed before that this witness was going to be testifying on the topic you wanted to testify on.

[00:28:39] Speaker 04:
It had nothing to do with Diwali or anything else.

[00:28:42] Speaker 04:
Your honor.

[00:28:43] Speaker 04:
And just, if I could, the max-like documents, there was a lack of specificity.

[00:28:48] Speaker 04:
There always has as to what these documents actually show.

[00:28:53] Speaker 04:
The 2014 document that was referenced, like, it's preliminary.

[00:28:58] Speaker 04:
It says it hasn't been shown to this court because on its face it says preliminary.

[00:29:03] Speaker 04:
The other specification sheet they talk about says it's the- That wasn't the argument for excluding them, though.

[00:29:10] Speaker 04:
right?

[00:29:10] Speaker 04:
Well, it does go, I think your honor asked what these documents were about.

[00:29:15] Speaker 02:
Okay, but you didn't argue below that the documents should be excluded because they weren't probative, because they were marked preliminary, correct?

[00:29:23] Speaker 04:
No, we didn't.

[00:29:24] Speaker 04:
We didn't.

[00:29:25] Speaker 04:
I mean, our argument that we made below is that they had

[00:29:30] Speaker 04:
actually, they didn't attempt to actually move these into the record at trial.

[00:29:35] Speaker 04:
They didn't use them as a demonstrative at trial.

[00:29:37] Speaker 04:
They don't actually show, or in any way, in the expert report or anywhere else, they don't show that these specific max-leg tubes were actually on

[00:29:47] Speaker 04:
Sale and that that goes to DX 41 the tubes and DX 41 the wattage actually is critical not to meeting the limitations your honor But it's extremely critical to whether the actual tubes they rely on We're actually on sale because it's if the wattage was different.

[00:30:06] Speaker 02:
I think it's tube a to be They also had they had testimony or proposed testimony the expert report

[00:30:13] Speaker 02:
that the 14 watt tubes met the claim limitations, right?

[00:30:17] Speaker 04:
So yes, met the claim limitations.

[00:30:20] Speaker 04:
No, had nothing to do with actually showing that the specific tube in DX41, maybe that was on sale.

[00:30:28] Speaker 04:
It is not.

[00:30:29] Speaker 04:
It doesn't show that the tubes they relied on in the litigate case were on sale.

[00:30:33] Speaker 04:
In no way does it.

[00:30:36] Speaker 02:
We'll give you a couple of minutes to address the damages issue if you want to do that.

[00:30:40] Speaker 04:
So with respect to damages, I think

[00:30:46] Speaker 04:
This is not a case where there were 150 agreements, or there's decades of history, or there's, frankly, a lot of evidence.

[00:30:58] Speaker 04:
There was a limited universe of evidence.

[00:31:01] Speaker 02:
But you put in an expert witness who, by her own admission, wasn't a technical expert and had no knowledge of the relative valuation of the patents and the license agreements.

[00:31:15] Speaker 02:
So that seems to be a problem, because the expert's not qualified to testify about that.

[00:31:21] Speaker 04:
So she did say that she relied on, this is volume two, appendix 101, 21, 54 through 55.

[00:31:31] Speaker 04:
She did say that she relied on a document that identified the 145.

[00:31:35] Speaker 04:
140 patents and other patents related to the 540 and 125.

[00:31:41] Speaker 04:
And she did testify that she relied on our technical expert, Dr. Don Dredd.

[00:31:49] Speaker 04:
But you didn't put him on, right?

[00:31:54] Speaker 04:
She's allowed to rely on the... No.

[00:31:58] Speaker 02:
You're not allowed to rely on fact witness testimony without putting the fact witness testimony into evidence.

[00:32:05] Speaker 04:
Okay, Your Honor, it's not like she just took, I mean, their argument is that she didn't actually apportion it.

[00:32:14] Speaker 04:
I mean, there's testimony that she did.

[00:32:17] Speaker 04:
She took into account that there was a portfolio.

[00:32:19] Speaker 04:
She took into account that

[00:32:21] Speaker 04:
There were only certain patents were actually at issue in the case.

[00:32:30] Speaker 04:
I mean, she did do that.

[00:32:31] Speaker 04:
And what she said is there are other things that weren't.

[00:32:34] Speaker 04:
I mean, their issue is the result.

[00:32:36] Speaker 04:
primarily, she did say that, look, there's fierce competition that basically superlighting at the hypothetical negotiation is not going to treat CH lighting the same way that it did TCP.

[00:32:51] Speaker 04:
No way.

[00:32:51] Speaker 04:
And that is pushing up the royalty rating.

[00:32:55] Speaker 00:
What does pushing up even mean?

[00:32:57] Speaker 00:
I mean, the whole point here is you need to do some kind of sound economic translation of,

[00:33:04] Speaker 00:
the previous license to account for all the differences that exist with the current situation.

[00:33:12] Speaker 00:
And just saying pushing up doesn't really seem very economically sound to me in terms of trying to make that translation.

[00:33:21] Speaker 04:
Yeah, so my word, I apologize, your honor.

[00:33:24] Speaker 00:
That's fine.

[00:33:24] Speaker 00:
But in substance, that's kind of what she basically was saying.

[00:33:29] Speaker 00:
And that was her analysis.

[00:33:32] Speaker 00:
I mean, we would kind of hope a PhD in economics would be doing this kind of analysis that would

[00:33:39] Speaker 00:
be doing something a little bit more quantitative and mathematical and sophisticated, and that's not what we see here at all.

[00:33:48] Speaker 04:
Yeah, I think in some cases that's possible, but here again, we had two agreements, both sides agreed that they were at a certain level comparable.

[00:33:58] Speaker 04:
There was limited testimony on benefits and commercial success and other things,

[00:34:05] Speaker 04:
I mean, both experts looked at this small universe of evidence.

[00:34:09] Speaker 04:
Both experts were cross-examined.

[00:34:11] Speaker 04:
And it went to the jury.

[00:34:12] Speaker 04:
The jury was instructed on damages law.

[00:34:15] Speaker 00:
But there is a gatekeeping function that the district court must engage in here.

[00:34:20] Speaker 00:
And in order to ensure that there's some baseline level of reliability in the methodology,

[00:34:30] Speaker 00:
even determined whether there is a methodology.

[00:34:34] Speaker 00:
And here it feels, I don't know, based more on instinct than anything else.

[00:34:43] Speaker 04:
Yeah, so I don't think there's any requirement in the law yet that you have to say, I'm going to increase $0.20 for this or decrease $0.15 for that.

[00:34:55] Speaker 04:
I mean, in this particular case, there wasn't a history or evidence, and frankly, neither expert

[00:35:02] Speaker 04:
I understand that damaging was my burden.

[00:35:06] Speaker 04:
But I think with a limited set of evidence.

[00:35:09] Speaker 00:
Was there any testimony to the effect of we've tried to undertake a more rigorous economic-based analysis here, but the universe of available facts are so limited that

[00:35:29] Speaker 00:
For better or for worse, I'm compelled to actually just use this

[00:35:33] Speaker 00:
for now, what we'll call the pushing up, pushing down approach to trying to do the translation, because there literally is nothing better available under the circumstances.

[00:35:45] Speaker 00:
Is there anything like that?

[00:35:47] Speaker 04:
There's not that.

[00:35:48] Speaker 04:
I mean, what there is is that you review all the evidence.

[00:35:51] Speaker 00:
The disturbing thing is when experts seem to use this pushing up, pushing down approach as a matter of first resort rather than as a matter of last resort,

[00:36:02] Speaker 00:
And that's the concern that I have with cases like this.

[00:36:15] Speaker 00:
What is the status of the parallel PTO proceedings?

[00:36:19] Speaker 00:
I think there are some, right?

[00:36:21] Speaker 04:
On a 540 patent, it's effectively over, if not over, the re-examination certificates issued with the claim still valid.

[00:36:32] Speaker 04:
125 is still at the PTAB.

[00:36:37] Speaker 04:
Currently, the claims have been found invalid.

[00:36:39] Speaker 04:
We're requesting reconsideration there.

[00:36:43] Speaker 04:
To the board panel?

[00:36:44] Speaker 04:
To the board panel.

[00:36:45] Speaker 04:
And then if we don't resolve that, we'll be filing something with this court.

[00:36:51] Speaker 00:
OK.

[00:36:52] Speaker 00:
And are there any IPRs?

[00:36:54] Speaker 04:
There's nothing right now, Your Honor.

[00:36:56] Speaker 00:
No current litigation either.

[00:36:58] Speaker 00:
Okay, so it's just the one way exam for the 125?

[00:37:01] Speaker 00:
The 125, yes.

[00:37:02] Speaker 00:
Okay, thanks.

[00:37:05] Speaker 02:
Okay, I think we're out of time.

[00:37:07] Speaker 02:
Thank you, Mr. Mernstein.

[00:37:08] Speaker 02:
Mr. Lampe, you have two minutes.

[00:37:23] Speaker 05:
Thank you.

[00:37:24] Speaker 05:
I think I'd like to start with the evidence regarding the Phillips tube at trial, which I believe my opposing counsel mentioned.

[00:37:30] Speaker 05:
I'd like to just point out on page 10,186 of the appendix, he testified in response on cross, said, I particularly called out the Phillips tube from the product specification sheet in my expert report that was dated 2014.

[00:37:42] Speaker 05:
So he gave the date to the jury of the Phillips spec sheet.

[00:37:45] Speaker 05:
If you turn to the expert report, which I believe my colleague said doesn't have a date,

[00:37:49] Speaker 05:
If you look at page 11,229, there's the Phillips spec sheet.

[00:37:53] Speaker 05:
And it says, specification sheet dated November 28, 2014.

[00:37:57] Speaker 05:
So the Phillips sheet has a date.

[00:37:59] Speaker 05:
It's on sale at that time.

[00:38:01] Speaker 05:
I believe my colleague said that this was all related to inequitable conduct only.

[00:38:06] Speaker 05:
But the expert report defines that, because if you look at page 11,258, paragraph 1194, he says that,

[00:38:16] Speaker 05:
This shows that it was not novel and not non-obvious.

[00:38:25] Speaker 05:
That's not inequitable conduct.

[00:38:26] Speaker 05:
Not novel, non-obvious.

[00:38:28] Speaker 05:
That's invalidity.

[00:38:29] Speaker 00:
But it wasn't officially in the section of his report that was about inequitable conduct, right?

[00:38:35] Speaker 05:
It is in that section.

[00:38:36] Speaker 05:
But he is saying flat out that it is not novel and non-obvious.

[00:38:40] Speaker 00:
And for some strange reason, he didn't repeat that same statement in the invalidity section of his report.

[00:38:45] Speaker 05:
He did not.

[00:38:46] Speaker 05:
But the district court understood, if you look at page 69, the district court understood that he was talking about that this showed that the tubes were excellent.

[00:38:54] Speaker 05:
So if you look.

[00:38:55] Speaker 05:
The court says, and this is page 10,115, but the fact that they were in possession shows that the parts were extant.

[00:39:03] Speaker 05:
The existence is what this proves.

[00:39:04] Speaker 05:
And the date of that teardown is, I can't tell whether it's 5-8 or 8-5, but it's in 2014 before the critical date of 2016.

[00:39:13] Speaker 05:
It shows that these tubes were

[00:39:16] Speaker 05:
Virtually identical tubes were in Super's possession before the critical date, before the priority date.

[00:39:22] Speaker 05:
And they tend to show invalidity for that reason.

[00:39:24] Speaker 00:
The opposing counsel said that their pretrial disclosures actually did identify the witnesses that would authenticate a particular document.

[00:39:35] Speaker 00:
So maybe you were wrong?

[00:39:38] Speaker 05:
No, I don't think I'm wrong about that.

[00:39:40] Speaker 05:
I think 21,322 is the page.

[00:39:45] Speaker 05:
And if you look at that, it says that they have the right to call any witnesses necessary to prove up any document or things such as authenticating.

[00:39:53] Speaker 05:
Any witness.

[00:39:54] Speaker 05:
It doesn't say we're going to give this witness to authenticate this document.

[00:39:57] Speaker 05:
They have the right to call any witnesses necessary to prove up any document or things such as authenticating.

[00:40:02] Speaker 05:
If that's good enough, certainly what we did was good enough.

[00:40:04] Speaker 05:
But the bottom line is there isn't a rule that says you must identify in advance which documents, which witness will authenticate.

[00:40:12] Speaker 05:
And when you have a corporate witness, under Texas practice, it's absolutely normal to say, I will use a corporate witness, a corporate representative.

[00:40:22] Speaker 05:
We pointed out on page 43 of our brief,

[00:40:24] Speaker 05:
We put it on page 41 of our brief, and I have not heard a response yet.

[00:40:27] Speaker 05:
To apply a non-existent rule unevenly to the parties, that's an abuse of discretion.

[00:40:31] Speaker 00:
Sorry, just one last question about damages.

[00:40:32] Speaker 00:
Let's assume that this record really is the universe of available information to do a rational calculation for damages here.

[00:40:41] Speaker 00:
What, in your view, could they have done specifically that they did not do that would get to a more precise damages calculation?

[00:40:51] Speaker 05:
Well, I think that the university can actually look at the patents and figure out whether or not that, and to what degree they're overlapping.

[00:40:57] Speaker 05:
But even apart from that, the push-up, push-down, there's just no basis for saying that the push-up is roughly equivalent to the push-down.

[00:41:03] Speaker 05:
And the push-ups are completely wrong.

[00:41:05] Speaker 00:
I know your criticisms.

[00:41:06] Speaker 00:
I'm trying to figure out, well, what was it that they actually should have done under the circumstances here that they did not do?

[00:41:13] Speaker 05:
Look at the patents and determine whether or not the patents that aren't asserted add value beyond the patents.

[00:41:20] Speaker 05:
that are asserted, and that simply wasn't done.

[00:41:23] Speaker 05:
And you don't have to do it with that mathematical precision, but it has to be done so you know what you're counterbalancing.

[00:41:29] Speaker 05:
You can't say that the pile of gold over there counterbalances the pile of feathers here without knowing the size of the pile of gold or the size of the pile of feathers.

[00:41:37] Speaker 05:
And all the counterbalancing here is actually completely irrational.

[00:41:41] Speaker 05:
One of the arguments is, oh, it counterbalances because the prices of these tubes, the LED tubes, were declining over time.

[00:41:47] Speaker 05:
But our hypothetical negotiations, 2018, they have a license in 2016.

[00:41:51] Speaker 05:
They have a license in 2021.

[00:41:54] Speaker 05:
So you might expect that the royalty would be somewhere between the 2016 and the 2021 because prices are declining.

[00:42:00] Speaker 05:
But instead, they come up with a royalty that is three times the 2016 royalty, about that.

[00:42:05] Speaker 05:
and one and a half times the 2021 royalty.

[00:42:07] Speaker 05:
That's just patently irrational, trying to say, well, we'll move it up because the two prices were declining.

[00:42:12] Speaker 05:
In fact, the fact that two prices- You're a competitor, though.

[00:42:15] Speaker 05:
Pardon?

[00:42:15] Speaker 05:
You're a competitor, not a customer.

[00:42:17] Speaker 05:
So that doesn't really work either, Your Honor, because first, TCP was also a competitor.

[00:42:23] Speaker 05:
Our co-defendant, Elliot, who I'm representing here, is not a competitor.

[00:42:28] Speaker 05:
Elliot is a distributor.

[00:42:30] Speaker 05:
Elliot's paying the same royalty that CH Lighting is paying.

[00:42:33] Speaker 05:
That just can't add up.

[00:42:34] Speaker 05:
And even if you're going to say, oh, it's a competitor, then you're going to have to say, well, the competitor moves it up by something commensurate, by some degree compared to what the other 257 patents.

[00:42:45] Speaker 05:
Do we have any evidence that somehow the fact that we're a competitor offsets 257 patents?

[00:42:50] Speaker 05:
No, we just have a push up, push down.

[00:42:53] Speaker 05:
It's simply not the type of analysis that's sufficient under this court's decision in YLAN.

[00:42:59] Speaker 05:
It's not any good under MLC.

[00:43:00] Speaker 05:
And it's not very good, any good under Omega.

[00:43:03] Speaker 05:
If the court has no further questions.

[00:43:05] Speaker 02:
OK, I think we're done.

[00:43:06] Speaker 02:
Thank you.

[00:43:07] Speaker 02:
Thank you.

[00:43:07] Speaker 02:
Go on.

[00:43:07] Speaker 02:
Thank you.

[00:43:08] Speaker 02:
Thank both counsels.

[00:43:09] Speaker 02:
The case is submitted.