[00:00:00] Speaker 03: Our next case for argument is 23-1438, Provisor Technologies versus Weber. [00:00:08] Speaker 03: Mr. Milliken, please proceed when you're ready. [00:00:11] Speaker 02: Thank you, Your Honors. [00:00:12] Speaker 02: May it please the Court. [00:00:14] Speaker 02: There are three issues on appeal, non-infringement of willfulness and damages. [00:00:20] Speaker 02: I think the legal error in the admission of the damages testimony is starkly evident from the briefing. [00:00:25] Speaker 02: If the panel has questions about that issue, I'm certainly happy to address them. [00:00:29] Speaker 02: But otherwise, I'll focus my time today on infringement and willfulness. [00:00:35] Speaker 02: Before I jump into the issues that were briefed, I will quickly address provisor's 28-J response from yesterday. [00:00:43] Speaker 02: The parties are in agreement that this court's ruling in the IPR appeal has obviated our appellate non-infringement argument on the 436 and 812 patents. [00:00:53] Speaker 00: So you accept the liability judgment, the infringement judgment on those two patents? [00:01:01] Speaker 02: Not necessarily, Your Honor, and let me explain why. [00:01:04] Speaker 02: So the other effect of that IPR appeal ruling is to put those patents validity back in play. [00:01:11] Speaker 02: We're on remand for the board now. [00:01:13] Speaker 02: and also potentially to create claim construction issues. [00:01:16] Speaker 02: We don't know how the board is going to decide it, but the landscape with respect to those patents is uncertain now. [00:01:23] Speaker 02: And so, for example, if the patents were ultimately adjudged invalid while this case is still pending, then providers' infringement claims would be moot under Fersenius. [00:01:34] Speaker 02: There would be no cause of action left. [00:01:36] Speaker 03: Yes, but I understood your 28-J letter to move those non-infringement arguments with regard to the two of the three patents. [00:01:43] Speaker 03: Is that not correct? [00:01:45] Speaker 02: The non-infringement argument that we pressed on appeal, yes, Your Honor. [00:01:48] Speaker 02: I acknowledge that is no longer available to us. [00:01:50] Speaker 03: OK, so there was an infringement finding. [00:01:53] Speaker 03: You appealed non-infringement. [00:01:55] Speaker 03: You are now waiving that appeal of non-infringement, correct? [00:01:58] Speaker 02: We're waiving the appeal of non-infringement on the bases that were available to us at the time of the district court decision. [00:02:06] Speaker 02: My point is that if, for example, the PTAB finds these claims unpatentable on remand, then we would have a new argument that we're entitled to relief from judgment under Fresenius if this case is still pending, for example, on damages. [00:02:23] Speaker 02: And so I would submit that the proper- That's all you're trying to preserve. [00:02:27] Speaker 02: There is some chance that there could be a claim construction that the board would issue with respect to a couple of dependent claims that might or might not open up a new non-infringement position for us. [00:02:41] Speaker 02: I think that's pretty speculative at this point. [00:02:43] Speaker 02: But because of the uncertainty, what I'd submit to the court is that the most reasonable path forward is to, and given that we're already requesting vacator of the damages portion of the judgment, [00:02:56] Speaker 02: simply vacate the judgment of the 436 and 812 patents. [00:03:00] Speaker 03: Why would we vacate that? [00:03:02] Speaker 03: There was a judgment of infringement, and you have withdrawn your appeal as to that judgment of infringement with regard to infringement. [00:03:11] Speaker 03: Why would we then vacate that judgment of infringement? [00:03:14] Speaker 03: That makes no sense. [00:03:16] Speaker 02: Because there is precedent for appellate courts to vacate judgments when the factual circumstances underlying [00:03:25] Speaker 02: the judgments have changed. [00:03:27] Speaker 02: And that's what's happened here because we now have a validity challenge to that patent that previously had been decided against us and now is alive again in front of the PTAB. [00:03:39] Speaker 02: I am not disputing that the court has the power to affirm the judgment. [00:03:45] Speaker 02: I acknowledge that the argument we preserved on appeal is foreclosed. [00:03:50] Speaker 02: I am simply saying that the court has the discretion [00:03:53] Speaker 02: to vacate and instruct the district court to assess the impact of the PTAB's ultimate decision, if any, on the proceedings. [00:04:00] Speaker 03: To be clear, you filed a 28-J letter after this all took place. [00:04:04] Speaker 03: Do you mention anywhere in this 28-J letter that you think the proper course of action is for us to vacate the court's infringement determination? [00:04:12] Speaker 03: Because I don't see it. [00:04:13] Speaker 02: No, Your Honor. [00:04:14] Speaker 03: So how did you give them an opportunity to either respond or come prepared to argument to respond to this brand new resolution that you're making for the first time? [00:04:22] Speaker 02: Your honor, I am responding to their suggestion in their 28-J letter that they filed yesterday, two months after ours, that the proper course is to affirm. [00:04:32] Speaker 02: In my view, at the time we filed our original 28-J letter, that was right after the mandate issued in the IPR appeal. [00:04:39] Speaker 02: It was before the remand proceeding started. [00:04:41] Speaker 02: It was before argument in this case had been calendared. [00:04:44] Speaker 02: I think suggesting any particular disposition would have been premature. [00:04:49] Speaker 02: responding to the suggestion from the other side in their own letter that it ferments as the proper course. [00:04:58] Speaker 02: If there are no other questions on that, I'll move on to what was briefed. [00:05:01] Speaker 02: I'll start with non-infringement of the 936 patent. [00:05:05] Speaker 02: It is undisputed that the Smart Loader, as sold to customers, is configured to work in the opposite way to what claim 14 of the 936 patent requires. [00:05:16] Speaker 02: The claim requires that a conveyor advance while it's filling pockets with food. [00:05:24] Speaker 02: In the accused smart loader, the conveyor retracts and lets the food fall down into pockets that are below. [00:05:31] Speaker 02: Now, the 936 patent did have some claims that cover they retract to fill configuration. [00:05:37] Speaker 02: Those claims were found invalid by the PTAB, and that was affirmed by this court. [00:05:42] Speaker 02: So the only ones left are the ones that require advancing to fill. [00:05:46] Speaker 02: And that's the reason they're the only ones left, because the advanced-to-fill configuration was not disclosed in the prior art. [00:05:53] Speaker 02: Now, Proviser doesn't dispute that the smart loader is a retract-to-fill machine, just like the prior art distinguished in the IPR. [00:06:01] Speaker 02: It doesn't dispute that no webber customer has ever used [00:06:05] Speaker 02: the smart loader to advance to fill. [00:06:08] Speaker 02: And there's not even any dispute that Weber customers can't use the smart loader to advance to fill because the parameters that one could allegedly manipulate in order to make it advance to fill are not available to the users. [00:06:22] Speaker 02: You have to be a Weber personnel in order to get into that interface. [00:06:27] Speaker 04: But there is testimony from your adversary's expert about actually getting it to work that way. [00:06:34] Speaker 02: There is testimony from the expert about getting it to advance. [00:06:39] Speaker 02: He did not go so far as to say that he actually made it advance and then fill pockets with food while it was advancing. [00:06:47] Speaker 02: And you don't have to take my word for that. [00:06:49] Speaker 02: Provisor told the district court in post-trial briefing, this is a quote, Dr. Vorst quote, was unable to configure the smart loader to advance to fill because of timing. [00:07:01] Speaker 02: That's at appendix 43386. [00:07:04] Speaker 02: And so it was common ground below that while he was able to adjust some parameters and make the machine advance, he was never able to make it do what the claim actually requires, is advance and then while it's advancing, drop the food into the pockets. [00:07:20] Speaker 02: And that is legally insufficient to show infringement because it's not enough for provisor to show that the machine could be modified to infringe. [00:07:29] Speaker 02: It's got to show that the machine actually does infringe [00:07:33] Speaker 02: when operated in the ordinary course. [00:07:35] Speaker 02: And at the very minimum. [00:07:37] Speaker 04: Although I think this is a quote. [00:07:38] Speaker 04: If you take a look at 4139A, do you rely on the programmabilities of the smart loader to show that it's configured to fill the pockets as plain? [00:07:50] Speaker 04: Yes. [00:07:51] Speaker 04: I mean, I relied on it, and we were able to actually show it working. [00:07:55] Speaker 04: And I know you're drawing a distinction between advancing and advancing to fill. [00:08:02] Speaker 04: But what would you make of this statement? [00:08:04] Speaker 02: That's correct, Your Honor. [00:08:05] Speaker 02: And I read that statement to say only that he was able to make it advance. [00:08:12] Speaker 02: And he admitted on cross-examination that he wasn't actually able to use it to show food product being deposited. [00:08:20] Speaker 02: And then we have the further information that the provisor said to the district court in post-trial briefing he wasn't able to configure it to advance to fill and told the jury in closing argument that Weber, quote, wouldn't let Dr. Vorst reprogram the smart loader to advance to fill. [00:08:37] Speaker 02: And so again, I think it was common ground below that while he was able to configure the machine in some [00:08:44] Speaker 02: pretty vague, unidentified way, he was never able to actually make it do what the claim requires, which is move forward. [00:08:51] Speaker 00: I'm not sure it was a vague or unidentified way. [00:08:56] Speaker 00: demonstrative exhibits show him putting certain numbers in certain parameter boxes, some of the most important ones being the front and the rear, the starting. [00:09:12] Speaker 00: And it would sort of reverse the numbers, and that would reverse the direction. [00:09:18] Speaker 00: Are you making, I guess, really a legal argument that [00:09:24] Speaker 00: In light of the fact that the screens with those parameters were not available to a user, that that would not come within our small number of cases about configuring [00:09:46] Speaker 00: embracing situations where all the user has to do is turn a switch on or the equivalence of turning a switch on, because here the user can't do that. [00:09:56] Speaker 02: I think that under this court's cases on reasonable capability of apparatus claims, that's not legally sufficient. [00:10:03] Speaker 02: Under IMBT, which we cited at page 47 of the blue brief, Telamac is another example. [00:10:09] Speaker 00: And that ground would, if it were correct, can take as an assumption that there's some uncertainty about what Dr. Forrest ended up actually doing, whether the salami was dropping or not. [00:10:24] Speaker 02: It can, Your Honor. [00:10:26] Speaker 02: I think this is an easier case than that, because I read the record to disclose that he was not able to make it drop the salami into the pockets. [00:10:34] Speaker 03: But he says over and over again, he could have done so if he had just been given a little more time. [00:10:41] Speaker 03: And this is a substantial evidence question, jury verdict. [00:10:44] Speaker 03: He says over and over and over again that he would be capable of programming this. [00:10:50] Speaker 03: It has all the parameters. [00:10:51] Speaker 03: He'd just have to put the right numbers in. [00:10:53] Speaker 03: And he says, I just didn't have enough time. [00:10:55] Speaker 03: Basically, they kicked me out. [00:10:57] Speaker 03: And so under a substantial evidence theory, how do we find fault with that? [00:11:04] Speaker 03: We don't go the route Judge Toronto just proposed. [00:11:07] Speaker 02: So two responses to that. [00:11:09] Speaker 02: The first is Judge Toronto's theory, which I agree with, which is that [00:11:14] Speaker 02: Capability is reasonable capability, and if the users can't even do the thing that you're saying is the modification. [00:11:23] Speaker 02: I apologize. [00:11:25] Speaker 02: The second reason is because at a bare minimum, and this is extremely clear from IMDT, [00:11:33] Speaker 02: You've got to show that the thing actually was put in the infringing configuration and actually did what's required by the claim once. [00:11:41] Speaker 02: And that's what we're saying Dr. Vorst didn't do because he said he didn't have time to do it. [00:11:45] Speaker 02: I have a question about that. [00:11:46] Speaker 04: In terms of that, if this is a very important issue, how is it teed up before the district court? [00:11:52] Speaker 04: How were there discovery issues remaining as to this, that there were time issues still? [00:11:59] Speaker 04: Well, so in terms of how it was teed up, we moved for summary judgment of non-enfranchisement of this patent on essentially... But was there any inquiry to the judge as to the process of examining this machine? [00:12:12] Speaker 02: No, there were inspections that took place pre-trial. [00:12:16] Speaker 02: Provisor never raised any complaint or dispute about those inspections. [00:12:21] Speaker 02: The first time that we heard about this alleged inability to have enough time to do the inspection that he needed, [00:12:27] Speaker 02: was at trial and in front of the jury. [00:12:30] Speaker 02: And we think that was an improper sort of putting the discovery process in front of the jury, especially since this issue had never even been previewed before. [00:12:42] Speaker 04: But the point is, the provisor was- So you're saying there was no dispute pre-trial as to the amount of time to look at the machine or how to perform an inspection and what would be permitted? [00:12:54] Speaker 02: That is correct, Your Honor. [00:12:56] Speaker 02: There's nothing, I'm not aware of anything, and there is nothing in the records supporting that there was any kind of dispute about this beforehand. [00:13:03] Speaker 03: Well, I mean, despite the blizzard, you also, this case had lots of fun. [00:13:08] Speaker 03: And it was his birthday. [00:13:11] Speaker 03: Yes, right, exactly. [00:13:13] Speaker 03: Despite the blizzard and the fact that it was his birthday, you did in fact ask, did you ever ask to come back and see it a second time? [00:13:19] Speaker 03: And he said, no. [00:13:20] Speaker 02: which supports the point I'm making which is that this issue. [00:13:26] Speaker 02: I see that I'm into my rebuttal time. [00:13:36] Speaker 02: So Provisor presented two principal categories of willfulness evidence. [00:13:40] Speaker 02: The first was the testimony of its patent lawyer expert, Mr. White. [00:13:46] Speaker 02: Mr. White said that Weber should have sought a landscape search, a background search, a freedom to operate opinion, or had someone analyze the non-infringement or invalidity of these patents. [00:13:58] Speaker 02: That violated 35 USC section 298, which says in no uncertain terms that you cannot rely on the lack of an opinion of counsel to show willful infringement, and you cannot avoid [00:14:11] Speaker 02: Section 298, by simply substituting the word third party for lawyer. [00:14:15] Speaker 02: That cannot be the law. [00:14:17] Speaker 02: It would render the statute. [00:14:18] Speaker 00: If you take out White's testimony, let's assume, because we're running out of time, let's assume there was a 298 violation. [00:14:27] Speaker 00: At a minimum, there would have to be setting aside of the willfulness determination. [00:14:34] Speaker 00: You're asking for JMA of no willfulness, so it must be that without [00:14:39] Speaker 00: without the improper part of White's testimony. [00:14:43] Speaker 00: And I don't know whether you think all of his testimony was improper or whether only some of it, that there wouldn't be enough for a reasonable finding of willfulness. [00:14:52] Speaker 02: Correct. [00:14:52] Speaker 02: I do think all of it was improper. [00:14:54] Speaker 02: I want to be clear first about the relief we're seeking. [00:14:56] Speaker 02: We're seeking at a minimum to vacate the willfulness verdict and send it back for a new trial with no 298 violation. [00:15:04] Speaker 02: But we don't think if you take out the 298 violation that there was substantial evidence [00:15:09] Speaker 02: at all for the willfulness finding and if the court agrees then the proper remedy would be reversal. [00:15:14] Speaker 02: So as to what is left, the remainder of Mr. White's testimony was basically just a narrative of some factual evidence that provisor thought was helpful to it. [00:15:25] Speaker 02: It walked through this patent matrix where some of [00:15:28] Speaker 02: Weber's employees had rated the asserted patents for the three. [00:15:32] Speaker 02: He talked about interrogatory responses and the fact that Weber's admitted date of knowledge had moved early. [00:15:38] Speaker 03: Well, none of that could be excluded under 298, right? [00:15:41] Speaker 02: Oh, I agree. [00:15:42] Speaker 02: This is a separate issue from 298. [00:15:45] Speaker 02: My point is if you take out 298, all we have left is fluff, not the proper subject of expert testimony. [00:15:51] Speaker 03: OK, why don't we save a little time for rebuttal? [00:15:53] Speaker 02: Certainly. [00:15:54] Speaker 03: Thank you, Your Honor. [00:15:54] Speaker 03: Mr. Martin, please proceed. [00:16:06] Speaker 01: So good morning. [00:16:08] Speaker 01: My name is Craig Martin. [00:16:09] Speaker 01: I represent provisor on the appeal. [00:16:12] Speaker 01: We would ask that the appellate court affirm the district court's judgment in all respects. [00:16:19] Speaker 01: With regard to the arguments, I think why don't I focus first on the willfulness, the issue that we just picked off on, and then I'll go to the substantial evidence issue. [00:16:31] Speaker 01: With regard to willfulness, [00:16:34] Speaker 01: There was over, it's a substantial evidence standard, there was overwhelming evidence with regard to the wolf in this case, in this regard. [00:16:44] Speaker 01: The evidence clearly showed that Weber knew about the patents, that many of their senior executives, including their CEO, had rated the patents, had looked at them, had rated them for, they said for relevance. [00:16:58] Speaker 01: We don't really know if that's true or not. [00:17:05] Speaker 00: For this three rating to be evidence of what willfulness requires, you would actually need some evidence that the meaning of that three was, oh my goodness, we are in trouble. [00:17:24] Speaker 00: We think we're doing that. [00:17:26] Speaker 01: Yeah, they testify. [00:17:27] Speaker 00: I don't remember what that means. [00:17:29] Speaker 01: Yeah, their testimony, this particular document that we're talking about, came up late after discovery was produced. [00:17:39] Speaker 01: Their testimony with regard to their witnesses had been that they had never reviewed the patents consistently. [00:17:44] Speaker 01: I mean, about a half a dozen witnesses had testified they had never reviewed them. [00:17:50] Speaker 01: They had given different explanations for what that review actually meant, and they were subject to what I would call rigorous cross-examination at trial. [00:17:59] Speaker 01: So we actually, in terms of credibility contest with regard to what this really meant, there was a live credibility contest. [00:18:06] Speaker 04: But wasn't there also an issue of a query regarding this type of document, and then your adversary had to actually create the document because it was not one in existence? [00:18:17] Speaker 04: I believe at least that might be their argument. [00:18:20] Speaker 04: And as a result, time went by. [00:18:22] Speaker 04: The case evolved. [00:18:23] Speaker 04: And then the witnesses were asked these questions about whether they knew about these patents and their ratings, one, two, three. [00:18:30] Speaker 04: They initially said they didn't know, but then ultimately realized, oh, they had talked about it. [00:18:37] Speaker 04: Is that at all an assessment that you're familiar with? [00:18:41] Speaker 01: I, the, it's a, it's a charitable, charitable read. [00:18:46] Speaker 01: In terms of I'm familiar with the assessment, it's, I don't think it's borne out by the fact. [00:18:50] Speaker 04: Was the document though created for purposes of litigation? [00:18:53] Speaker 01: No, the document was a document that existed in an EIS, ESI database. [00:18:57] Speaker 04: Did your adversary assert that it was created for purposes of litigation? [00:19:00] Speaker 01: No. [00:19:01] Speaker 01: No. [00:19:02] Speaker 01: They basically maintained that it was a document that was maintained by a third party as opposed to them who was beyond their control. [00:19:12] Speaker 01: But it was actually their agent called the Patent Office, I think it was called. [00:19:18] Speaker 01: And so that argument, from a district court perspective or from a discovery perspective, the notion that it was frankly beyond their control was nonsense. [00:19:30] Speaker 01: It was always within their control. [00:19:32] Speaker 01: They did contend that it was privileged, and they lost that contention. [00:19:36] Speaker 04: But as to the substance of it, what is the significance for purposes of this case of giving it a rating and then being aware of these other patents? [00:19:46] Speaker 01: Yeah, so the significance of it, let me tell you, there's two types of awareness that come up. [00:19:53] Speaker 01: One is that document and the fact that there are witnesses who we said lied about it in their depositions. [00:20:01] Speaker 01: um, you know, actually knew about it, right? [00:20:05] Speaker 01: So they lied about it is what we contended in front of the jury. [00:20:09] Speaker 01: Their US CEO who verified. [00:20:12] Speaker 04: Did they lie about it, or did they say they had no recollection of it? [00:20:16] Speaker 01: There were different responses from different of these six or seven witnesses. [00:20:20] Speaker 01: And some were dead on contradictions. [00:20:23] Speaker 04: What was the worst scenario that you have? [00:20:25] Speaker 01: Don't remember. [00:20:26] Speaker 01: But it was good. [00:20:27] Speaker 00: So don't remember doesn't actually always signal something terrible. [00:20:34] Speaker 01: It was good. [00:20:37] Speaker 01: But they also had their US CEO who had verified multiple interrogatories. [00:20:43] Speaker 01: about whether they knew about our patents and when they knew about those patents. [00:20:48] Speaker 01: And those interrogatory responses changed multiple times, six, seven times. [00:20:55] Speaker 03: But all of this goes to the knowledge of the patent. [00:20:58] Speaker 03: So that's not sufficient for willfulness. [00:21:00] Speaker 03: So I don't really see them arguing on appeal that there's no substantial evidence for willfulness because we didn't have knowledge of the patent. [00:21:08] Speaker 03: see that to be the issue on appeal. [00:21:11] Speaker 03: I understand the issue to be on appeal is there isn't evidence to substantiate that we understood we infringed this patent, that our particular product, the smart something or other? [00:21:23] Speaker 03: What is it called? [00:21:24] Speaker 03: Smart loader. [00:21:25] Speaker 03: Smart loader infringes these particular patents. [00:21:28] Speaker 03: I understand that to be their argument. [00:21:30] Speaker 03: Am I mistaken? [00:21:31] Speaker 03: Do you understand them to be arguing on appeal that we didn't even know about the patents and that's why we can't be found? [00:21:36] Speaker 01: But look, I understand that the contention is essentially the empty set with regard to direct testimony of state of mind. [00:21:45] Speaker 01: So direct testimony of state of mind. [00:21:46] Speaker 03: I don't understand anything you just said. [00:21:48] Speaker 03: How about let me ask a question you could say yes or no? [00:21:50] Speaker 01: Sure. [00:21:50] Speaker 03: Do you understand their argument on appeal to be, we didn't know about the fact that this patent existed? [00:21:57] Speaker 01: No, I don't understand that to be their argument. [00:21:59] Speaker 03: So isn't their argument on appeal [00:22:03] Speaker 03: We didn't know that our smart loader infringed this patent. [00:22:10] Speaker 01: I think that that must be their argument on appeal, that they didn't intend, that they were not willful. [00:22:17] Speaker 01: But if you look at the factors and you look at the testimony, the testimony with regard to the trial, there's one expert witness, John White, who testifies about [00:22:28] Speaker 01: the custom and practice with regard to once you have knowledge with respect to a patent, what are the steps that you go through to ensure that you don't go... Yeah, but that's exactly the 298 problem. [00:22:39] Speaker 03: You can't put an expert on the stand that faults them for not getting an opinion. [00:22:43] Speaker 01: No, that's not what his testimony was about. [00:22:45] Speaker 01: His testimony was about in a meticulous way going through the steps that industry competitors go through [00:22:52] Speaker 01: with respect to what they do to investigate, and no mention of legal opinion or anything else, and no mention of what their state of mind was. [00:23:02] Speaker 01: So he goes through the steps that you have to go through in terms of what the investigation should be to avoid infringement. [00:23:09] Speaker 01: And there is no testimony whatsoever that they had ever formed a good faith belief. [00:23:14] Speaker 00: So if you look straight down the standards with regard to it. [00:23:19] Speaker 00: your burden on establishing willfulness. [00:23:22] Speaker 00: So whether or not Mr. White uttered the words, you're urging that the failure to do all of that stuff is a basis for an inference that they, under the willfulness standard, knew or it should have been obvious that they were infringing. [00:23:46] Speaker 01: Well, if you look at the factors in instruction 23, which is at appendix 43, the first is whether they acted consistently with the standards of behavior in the industry. [00:23:58] Speaker 01: And the answer from Mr. White was no, after going through all of those factors. [00:24:05] Speaker 01: Another one is, [00:24:07] Speaker 00: whether they tried. [00:24:08] Speaker 00: And you think that those factors can apply even when the investigations that were not done are routinely done by lawyers? [00:24:21] Speaker 01: They're not routinely done by lawyers. [00:24:24] Speaker 00: Why would that not be a violation of 298, which was enacted after the enumeration of those factors? [00:24:29] Speaker 01: That's not what the evidence was. [00:24:32] Speaker 01: a clear explanation by Mr. White, also by the provisor, US CEO, as to the steps that people go through to avoid infringement. [00:24:40] Speaker 01: There was no mention by either one of them saying that there was no lawyer involved in getting an opinion. [00:24:47] Speaker 01: There was with regard to Weber actually designed around the smart loader. [00:24:54] Speaker 01: Part of the evidence in the case is Weber had changed its source code. [00:25:02] Speaker 01: in response to the related European patent with respect to the smart loader or the configurable loader. [00:25:12] Speaker 01: And that was after all of the US sales. [00:25:16] Speaker 01: In fact, their expert witness, when he testified, testified that he examined the source code, but he didn't know what source code he examined. [00:25:26] Speaker 01: He, in terms of their witnesses, [00:25:31] Speaker 01: as I said, had dissembled and, we think, not told the truth about their knowledge of the patents or what they had done. [00:25:39] Speaker 00: So they- And you think the dissembling as to one thing is a legitimate ground for inferring falsity as to another, namely, the knowledge of infringement as opposed to the knowledge of the patents? [00:25:55] Speaker 00: I don't think it's an unfounded contention. [00:25:57] Speaker 01: I think you can reasonably infer. [00:25:59] Speaker 01: that their conduct with regard to whether they knew about the patents and what they did in response to it was infected the willfulness finding. [00:26:11] Speaker 01: They had no evidence with regard to whether they reasonably believed the patents were valid or invalid. [00:26:18] Speaker 01: They had no evidence with regard to infringement. [00:26:20] Speaker 03: I think we better move you under infringement because we're running out of time. [00:26:23] Speaker 03: And I don't want you guys not have a chance to address infringement. [00:26:26] Speaker 01: OK. [00:26:27] Speaker 01: So with respect to infringement, this is the Vorst issue. [00:26:32] Speaker 01: So I'll try to go through it as quickly as I can. [00:26:35] Speaker 01: With regard to Dr. Vorst, just background, right? [00:26:39] Speaker 01: He's a true expert. [00:26:40] Speaker 03: He's got a... OK, we don't need any of that. [00:26:42] Speaker 03: How about this? [00:26:43] Speaker 03: What does configurable mean? [00:26:46] Speaker 03: So under our case law, if [00:26:48] Speaker 03: A product is sold that is, if the user is able to then utilize it in an infringing way, sort of out of the box or readily, I would say, then there's a problem. [00:27:01] Speaker 03: How does this scenario fit into that box? [00:27:06] Speaker 01: Fits right into the Versat case in that box. [00:27:10] Speaker 01: It is configurable. [00:27:11] Speaker 01: The smart. [00:27:12] Speaker 03: But the only problem, and it's the question that just Toronto asked that's really troubling me as well, is that Dr. Horst said the way that he didn't have a chance to do it, but the way that he would have turned the smart loader into an advanced to fill [00:27:32] Speaker 03: conveyor belt as opposed to a retractable conveyor belt would be by modifying the parameters. [00:27:37] Speaker 03: Why don't you turn to page 93782. [00:27:40] Speaker 03: Those are his four pictures, the photos, the inspection photos from the smart loader, HMI. [00:27:49] Speaker 03: This is what he talks about throughout his testimony. [00:27:52] Speaker 03: It's 93782. [00:27:53] Speaker 03: Do you see those four pictures? [00:28:02] Speaker 01: I think I'm on the same page. [00:28:05] Speaker 03: Yeah. [00:28:05] Speaker 03: OK. [00:28:06] Speaker 03: So those four pictures. [00:28:07] Speaker 03: So here's the problem. [00:28:09] Speaker 03: Only one of those four images, and it's undisputed in this record, having read all of it myself, I can tell you, only one of those four pictures, the bottom right one, it says configurable number of loadings, is actually a screen that a user can gain access to when they are utilizing their smart loader. [00:28:32] Speaker 03: The other three images are hidden and protected, and only a Weber technician or the Weber factory can alter them. [00:28:41] Speaker 03: Prior to delivery, a Weber technician would have to come to your premises to manually change them, but you, the user, can't do that. [00:28:51] Speaker 03: So that's the testimony of record. [00:28:53] Speaker 03: So how is this device therefore configurable such that a user could utilize it in an infringing way when to do so, the user can't gain access at all to the parameter screens that would allow it to do that? [00:29:08] Speaker 01: Well, Your Honor, I think precisely because Dr. Vorst went and did that at his inspection, and he did it [00:29:16] Speaker 01: in the position of a user. [00:29:18] Speaker 03: They gave him access to it. [00:29:20] Speaker 03: They gave him access to these screens. [00:29:22] Speaker 01: The HMI screen is available to the users, to the customers of the product. [00:29:31] Speaker 01: In terms of some of the screens that I think you're pointing at may be behind and you may need a texture person. [00:29:37] Speaker 03: Do you see this screen, configurable rear and front position? [00:29:41] Speaker 03: I do. [00:29:42] Speaker 03: Do you see the screen that says configurable products positions? [00:29:46] Speaker 01: Yes. [00:29:46] Speaker 03: All of the testimony of record is that those screens are not accessible except by a Weber technician or at the Weber factory, which is where you all work. [00:29:56] Speaker 03: And a user cannot gain access to them. [00:29:58] Speaker 03: I can walk you through the testimony if you'd like. [00:30:00] Speaker 03: There's no contrary testimony. [00:30:02] Speaker 01: But the testimony from Dr. Vorst, Your Honor, is that he, using the HMI, [00:30:08] Speaker 01: was able to change a few parameters. [00:30:11] Speaker 03: Those are the screens he said he changed. [00:30:14] Speaker 03: Those are the screens he said he would have to change in order to convert the Webber protract-to-fill device into an advanced-to-fill. [00:30:22] Speaker 03: So if those are the screens that one, according to your expert, has to be able to modify, and if nobody can get to it without being either the Webber factory or having a Webber technician do it, then how is that device configurable by a user to infringe? [00:30:38] Speaker 01: Your Honor, I can only go back to his precise testimony. [00:30:43] Speaker 01: He testified repeatedly that he was able to use the HMI interface to change and reconfigure to an advanced film. [00:30:53] Speaker 04: Did he go step by step to acknowledge this? [00:30:56] Speaker 04: And if you'd like to just, I know we're running out of time, but do you have anything quick you might respond with on that? [00:31:03] Speaker 01: Look, in terms of his testimony and the cross-examination with regard to him, which they had the full and fair opportunity to cross-examine him, his testimony was, I use the HMI screen to easily configure this in an advanced-to-fill mode. [00:31:19] Speaker 01: And that's what he testifies to. [00:31:21] Speaker 01: And nobody cross-examines him and says, you have to go beyond a wall, or you have to have a tech store technician there. [00:31:29] Speaker 01: There's no cross-examination with regard to Dr. Vorst. [00:31:32] Speaker 01: And the evidence is essentially unrebutted in the record. [00:31:36] Speaker 01: So you know. [00:31:38] Speaker 03: When you say it's unrebutted in the record, let's turn to page 41894, which is Dr. Valeri's testimony. [00:31:45] Speaker 03: 41894. [00:31:47] Speaker 03: You're going to have to just take my word for it, because I've tracked it. [00:31:52] Speaker 03: He's talking about that exact exhibit that Dr. Horst used. [00:31:56] Speaker 03: So you're just going to have to take my word for that. [00:31:59] Speaker 03: I don't have it, but I know what you're talking about. [00:32:03] Speaker 03: Okay, well I'll read it to you then. [00:32:06] Speaker 03: Are all these screens available to the West Weber customers? [00:32:08] Speaker 03: No. [00:32:10] Speaker 03: And just which one of these four screens is available to the customer? [00:32:13] Speaker 03: Only the bottom right screen that has the configurable number of loads and some adjustment parameters. [00:32:18] Speaker 03: That's the only one available to a customer of Weber. [00:32:20] Speaker 03: What about the other three screens? [00:32:22] Speaker 03: The other three screens are available to a Weber technician who can then input parameters into those three screens. [00:32:28] Speaker 03: Dr. Horst was suggesting these screens showed during his testimony [00:32:32] Speaker 03: Yes, I believe Dr. Horst implied that the parameters in the screen would generate a certain advanced defeat and result. [00:32:37] Speaker 03: So the parameters in these screens, according to Dr. Horst, would allow this work. [00:32:40] Speaker 03: Yes, that's correct. [00:32:42] Speaker 03: So then it goes through and works through it. [00:32:44] Speaker 03: But what they say here, and unless I'm mistaken, is I think it's actually in the second place too, but this is the one I flagged. [00:32:51] Speaker 03: But what Dr. Valeri says is that three of those four screens that Dr. Horst said one would need to access and modify aren't accessible to a customer at all. [00:33:02] Speaker 01: Yes, so Your Honor, Dr. Valerity, a very nice man. [00:33:06] Speaker 01: However, his testimony was totally irrelevant and discredited. [00:33:11] Speaker 01: The Dr. Valerity was their source code expert. [00:33:15] Speaker 01: Dr. Valerity inspected their source code. [00:33:19] Speaker 01: He did so. [00:33:20] Speaker 01: He didn't know this, by the way, at the time. [00:33:23] Speaker 01: But he did so after they had changed the source code in response to the European Pet 427. [00:33:30] Speaker 01: which was after all of the infringing sales. [00:33:33] Speaker 01: When we asked and cross-examined Dr. Valerity as to what he was looking at with regard to these issues, he had no idea. [00:33:45] Speaker 01: So, Your Honor, in terms of [00:33:48] Speaker 01: The most. [00:33:48] Speaker 03: Where is that? [00:33:49] Speaker 03: Because my problem is I see this evidence, and I see no contrary evidence. [00:33:56] Speaker 03: I see no evidence in this record that these three screens were something that I could pull up on my thermostat, or I could pull up on my phone, or a customer could pull up in their particular location to actually modify the device. [00:34:12] Speaker 01: So the evidence with regard to this is [00:34:17] Speaker 01: Dr. Vorst does an inspection. [00:34:19] Speaker 01: He testifies as to what he's able to access in his inspection, right? [00:34:24] Speaker 01: Where? [00:34:24] Speaker 03: Where's the text man? [00:34:25] Speaker 03: Show me. [00:34:26] Speaker 01: No, generally. [00:34:27] Speaker 01: He doesn't talk about going beyond screens. [00:34:29] Speaker 01: He says, I went to the HMI interface. [00:34:33] Speaker 01: I pushed a few buttons. [00:34:35] Speaker 01: And he talks about which buttons he pushed. [00:34:37] Speaker 01: And then he says, I had it advancing to fill matter. [00:34:41] Speaker 01: So he configures it using the HMI interface. [00:34:46] Speaker 01: testimony, there's no cross-examination about how he has to go through a special screen or go to somebody at tech store. [00:34:53] Speaker 01: Dr. Valerdi, who, and I don't have the, I do somewhere, but the, Dr. Valerdi testifies and he says, you cannot do it. [00:35:06] Speaker 01: You just can't do it. [00:35:07] Speaker 01: I've looked at the source code. [00:35:08] Speaker 01: That doesn't have anything to do with these screens. [00:35:10] Speaker 03: All I'm asking about is the screens. [00:35:11] Speaker 01: But he says you cannot do it. [00:35:13] Speaker 01: On cross-examination, [00:35:15] Speaker 01: Dr. Valerdi admits that he doesn't even know what he was looking at. [00:35:20] Speaker 01: He doesn't know if he was looking at the way this was done with regard to the infringing machines that they had sold prior to the change that they made with regard to the 427 lawsuit. [00:35:32] Speaker 01: He doesn't know if it's afterward. [00:35:34] Speaker 01: And he essentially becomes the credibility null set because he adds nothing to the trial. [00:35:41] Speaker 01: And in fact, [00:35:43] Speaker 04: Well, what is the testimony, though, regarding what's available, for example, to an end user? [00:35:47] Speaker 04: Do you have a specific site that you would like to reference for that? [00:35:50] Speaker 01: There's not a dispute about that at trial. [00:35:53] Speaker 01: There's no dispute with regard to this issue. [00:35:56] Speaker 01: In fact, Dr. Vorst's testimony is not rebutted by Dr. Valerity. [00:36:06] Speaker 01: Their other expert, Dr. Reinholz, on cross-examination says, begins by saying you cannot do it. [00:36:14] Speaker 01: And then on cross-examination, he admits that you can do it. [00:36:19] Speaker 01: And he admits that you can change it on cross-examination. [00:36:22] Speaker 03: Let's turn to page 41403. [00:36:25] Speaker 03: That is in volume two, 41403. [00:36:44] Speaker 03: Let's go to line 24-ish. [00:36:49] Speaker 03: I think this is Dr. Horst's testimony. [00:37:02] Speaker 03: So just like Dr. O'Leary, who said these are not available to the customer, do you see here? [00:37:07] Speaker 03: It was regard to these exact same screens. [00:37:10] Speaker 03: This is the manual PX241, the exact same four screens. [00:37:15] Speaker 03: Your expert says, starting on line 24, yes I do. [00:37:18] Speaker 03: You'll see the configure. [00:37:19] Speaker 03: So I'm going to set this up for you folks. [00:37:21] Speaker 03: So we arrived at the plant. [00:37:23] Speaker 03: We inspected this equipment. [00:37:24] Speaker 03: The Weber folks were very nice. [00:37:26] Speaker 03: They were very polite. [00:37:27] Speaker 03: The only issue I had was when I was trying to inspect this agreement, there were so many lockout screens, I couldn't gain access. [00:37:33] Speaker 03: I had to really kind of pry. [00:37:35] Speaker 03: We were able to get it, but it took up a lot of our time. [00:37:38] Speaker 03: So that was probably the source of frustration for me, because I wanted, I knew this had it, I knew it was in the manual, I knew it was... So, I mean, all these lockout screens. [00:37:48] Speaker 03: The customer couldn't gain access. [00:37:51] Speaker 01: No, he did gain access. [00:37:53] Speaker 01: He says he had to pry. [00:37:55] Speaker 01: He had to go gain access. [00:37:57] Speaker 01: He doesn't say that he had to get a Weber technician to give him access. [00:38:01] Speaker 01: There is no dispute about this that's live at trial. [00:38:06] Speaker 01: He has access. [00:38:08] Speaker 01: He says very specifically that he is able to configure to advance to fill. [00:38:14] Speaker 01: And I appreciate Dr. Valerdi's testimony, but his testimony, as I said, was the empty set, because he didn't know what he was inspecting when he actually inspected it. [00:38:26] Speaker 01: And, you know, he goes out. [00:38:28] Speaker 04: Well, maybe just one more. [00:38:32] Speaker 04: I asked it before, but I'm not sure if I got an answer. [00:38:34] Speaker 04: And it was with respect to the actual end user, not a technician, not someone at the plant. [00:38:40] Speaker 04: But how would this be available to them? [00:38:43] Speaker 01: The end user with regard to the customer? [00:38:45] Speaker 04: Yes, being able to manipulate this. [00:38:48] Speaker 01: They would have the HMI screen that was available, we think, to Dr. Vorst. [00:38:56] Speaker 01: I, with regard to Dr. Valerity, we have no idea what he actually inspected. [00:39:01] Speaker 01: But I will tell you that there was no argument and there is no contention that this was somehow blocked from Dr. Valerity, other than the comment that Chief Judge Moore just pointed out about how he was frustrated because he had to get past a couple of screens. [00:39:18] Speaker 01: Bye. [00:39:18] Speaker 01: OK. [00:39:18] Speaker 03: Thank you, Mr. Martin. [00:39:19] Speaker 03: We're way out of time. [00:39:20] Speaker 03: Mr. Milliken, I'll restore your rebuttal time. [00:39:36] Speaker 02: Thank you, Your Honors. [00:39:37] Speaker 02: I'll pick up with non-infringement. [00:39:38] Speaker 02: Chief Judge Moore, you hit the nail on the head. [00:39:41] Speaker 02: The evidence is uniform that the parameters Dr. Vorst said you would configure to make this machine purportedly advanced to fill are not available to users. [00:39:50] Speaker 02: They are only available to Weber technicians. [00:39:53] Speaker 00: In addition to the record sites that you would... And to Dr. Vorst. [00:39:56] Speaker 02: And to Dr. Vorst when he asked Weber technicians. [00:39:58] Speaker 00: What do you do with that? [00:40:00] Speaker 02: It doesn't matter because [00:40:02] Speaker 02: in order to have infringement for a apparatus capability claim, you've got to show reasonable capability, which means it would infringe without some kind of unforeseen modification in the ordinary course. [00:40:16] Speaker 02: And Weber's customers don't have access to this. [00:40:19] Speaker 03: And in addition... How did Dr. Borst get access to it, ultimately? [00:40:24] Speaker 02: Because Weber's technicians gave him access. [00:40:27] Speaker 03: Is that in the record anywhere? [00:40:31] Speaker 02: quite on the nose, but he says he makes statements like, your honor pointed to one of them, statements like, oh, I really had to pry to get access to these HMI interfaces, and it took a while, but finally they did give me access. [00:40:46] Speaker 00: That's about as close as it gets. [00:40:47] Speaker 00: So we should understand the word pry to be something other than fiddle around just him and his fingers on the screen, but rather [00:40:57] Speaker 00: talk to other people who were there. [00:40:59] Speaker 00: This is at the Weber facility, right? [00:41:01] Speaker 02: That's correct. [00:41:02] Speaker 02: There's actually another site, appendix 41.259 through 60. [00:41:06] Speaker 02: This is at the beginning of Dr. Vorst's testimony, and there he's talking kind of broadly about how he had to ask Weber folks permission and get them to allow him to program the machine in certain ways. [00:41:19] Speaker 02: And in addition to the sites your honor pointed out, appendix 41.904, that's Dr. Valerdi, [00:41:26] Speaker 02: And then appendix 42133, that's Dr. Reinholz. [00:41:31] Speaker 02: That's yet more testimony that these screens were not available to customers. [00:41:34] Speaker 02: What was the last one, 41 what? [00:41:38] Speaker 02: 42133, and that's Dr. Reinholz. [00:41:42] Speaker 02: A brief word about Versata, which my friend mentioned. [00:41:46] Speaker 02: In Versata, the expert actually implemented the infringing functionality without changing the code. [00:41:52] Speaker 02: And then, critically, it was undisputed that customers were going to use the machine in the same way that the expert had. [00:41:59] Speaker 02: That evidence is completely lacking here. [00:42:02] Speaker 02: Two quick words on willfulness. [00:42:04] Speaker 02: The first is, I heard my friend reference a designer round of the Smart Loader. [00:42:10] Speaker 02: there is no evidence in the record that there was a design around with respect to this patent. [00:42:16] Speaker 02: The source code change that was referred to several times, undisputedly, had nothing to do with the machine's ability or lack thereof to advance to fill. [00:42:27] Speaker 02: And there's an implicit concession of this at page 34 through 35, footnote 5 of provisor's red brief. [00:42:36] Speaker 02: Finally, on willfulness, I want to sort of make clear the timeline of the Weffer's knowledge of the patents and the patent matrix, because I think it got a little muddled in my friend's argument. [00:42:49] Speaker 02: As an initial matter, Chief Judge Moore, you're right. [00:42:52] Speaker 02: No dispute. [00:42:52] Speaker 02: We knew about the patents. [00:42:54] Speaker 02: The issue is, did we know we were infringing? [00:42:57] Speaker 02: They asked us in interrogatories, identify your first date of knowledge of the patents. [00:43:02] Speaker 02: By the time depositions started, [00:43:05] Speaker 02: We had conceded knowledge of the patents for the entire damages window for all three patents. [00:43:12] Speaker 02: And then, after that, depositions took place. [00:43:15] Speaker 02: They asked these witnesses questions about, have you seen this patent before? [00:43:19] Speaker 02: And the witnesses said, I don't remember. [00:43:22] Speaker 02: Then there was this discovery fight about whether the patent office matrix was discoverable or not, whether it was privileged. [00:43:31] Speaker 02: We ultimately lost that, but the district court acknowledged that there was case law going both ways. [00:43:35] Speaker 02: But the point I want to leave you with, and I see I'm out of time, but if I may finish my thought. [00:43:40] Speaker 02: The point I want to leave you with is the threes on the patent matrix. [00:43:45] Speaker 02: The only evidence in the record is that all of three means is that the patent is relevant and what relevant means is it's in the same general field that Weber operates in. [00:43:56] Speaker 02: So like it's another patent on a slicer in the case of the 436 or the 812 or it's another patent on a loader in the case of the 936. [00:44:05] Speaker 02: There is no evidence in the record that A3 indicates any knowledge of infringement. [00:44:10] Speaker 02: And so we've asked for the judgment of willfulness of all three patents to be reversed. [00:44:15] Speaker 02: And for the reasons in our briefing and that I stated earlier, the damages judgment be vacated and infringement on the 936 be reversed. [00:44:25] Speaker 03: I thank both counsels for taking under submission.