[00:00:00] Speaker 01: All right, our next case for argument is 23-1790. [00:00:04] Speaker 01: Steuben Foods versus Shaboya Hoffman Corporation. [00:00:10] Speaker 01: Council, how do I say your name? [00:00:11] Speaker 01: El Shadi. [00:00:12] Speaker 01: Mr. El Shadi, please proceed. [00:00:14] Speaker 04: Good morning, Your Honors, and may it please the Court. [00:00:16] Speaker 04: Cook El Shadi with Barclay Damon on behalf of the Appellant Steuben Foods. [00:00:20] Speaker 04: I'd like to start with the 591 patent. [00:00:22] Speaker 04: And the district court erred in granting judgment as a matter of law of no infringement under the reverse doctrine of equivalence in two primary ways that I'd like to address this morning. [00:00:32] Speaker 04: First, the district court narrowed the principle of operation of the claim's second sterile region to require a continuously sterilized second sterile region. [00:00:40] Speaker 04: In doing so, he essentially limited the claim to preferred embodiment. [00:00:45] Speaker 04: And importantly, he rejected the defendant's attempt to do that at claim construction. [00:00:48] Speaker 04: And so once the district court narrowed the principle of operation of preferred embodiment, it then compared the accused valve to the preferred embodiment to find non-infringement. [00:01:01] Speaker 04: And of course, this court's law is clear that infringement is assessed by comparing the accused device to the properly construed pipe. [00:01:10] Speaker 04: And so by limiting the claim to the preferred embodiment through the reverse document equivalence analysis, the district court erred in granting non-infringement. [00:01:19] Speaker 04: Now, there's a second reason to use the court error in the non-game. [00:01:24] Speaker 01: You've got a pen in one hand and a highlighter in the other, and you're pointing both of them all over the place. [00:01:29] Speaker 01: Lose a ball. [00:01:30] Speaker 01: Sorry, Your Honor. [00:01:32] Speaker 04: As another error the district court made, the district court allowed the defendants to put on a case that, to the jury, assumed that the claim was limited to preferred embodiment. [00:01:44] Speaker 04: And there's testimony from Dr. Glancy where he acknowledged that, in his view, claim 26 was limited to preferred embodiment. [00:01:51] Speaker 04: The district court found that the appellees had carried their burden of production. [00:01:56] Speaker 04: And in order to do that, because they had the burden, the district court had to find that there was [00:02:00] Speaker 04: No basis for the jury to find that it had not carried its burden. [00:02:04] Speaker 04: Now, even assuming that was correct, that they had carried a burden of production in the first place, there was still a question of fact in the battle of the experts on the principle of operation. [00:02:13] Speaker 04: Dr. Glancy, the appellee's expert. [00:02:15] Speaker 00: Council, what's your best case for in your position that our DOE should not succeed? [00:02:22] Speaker 04: Should not succeed? [00:02:23] Speaker 04: I would point, Your Honor, to the SRI case, where it makes clear that the question is the claimed invention. [00:02:31] Speaker 04: And so when we talk about the claimed invention, we're looking at the construed claim. [00:02:36] Speaker 04: And so the district court had rejected the appellee's attempt to narrow the claim to deferred embodiment at claim construction. [00:02:43] Speaker 04: And that was correct. [00:02:44] Speaker 04: It was 100% correct. [00:02:46] Speaker 04: And so to then allow a defendant to nonetheless [00:02:51] Speaker 04: defeat the claim, or excuse me, the infringement claim, with an argument that was essentially rejected, a claim construction would be submitted as error. [00:03:00] Speaker 04: And it would upend a lot of law from this court in that the accused device would be compared to the embodiment and not the claim itself. [00:03:13] Speaker 04: Now, just briefly on the question of the conflicts in the evidence on the principle of operation, Appellee's expert narrowed the claim to the preferred embodiment, whereas Dr. Sharone looked at the claim language and he said that the principle of operation is basically constraining the ballast to serial regions. [00:03:32] Speaker 04: And so the jury was free to choose Dr. Sharonsky over the wall. [00:03:36] Speaker 04: And when they did, the factual conflicts and the evidence between the two principals of operations needed to be drawn in students as a version. [00:03:48] Speaker 04: Before I move on to the next, any other questions on the 591? [00:03:55] Speaker 00: Yeah, I think my colleagues may have some as well, but I'll keep going with you in the meantime. [00:04:00] Speaker 00: What effect, if any, would removing the RDOE defense to infringement have on the damage of security? [00:04:09] Speaker 04: So if Your Honor should agree with the RDOE not being successful, it would be a math problem at that point. [00:04:16] Speaker 04: There were less bottles that were subject to a damages claim. [00:04:20] Speaker 04: Then for the 591, it's compared to the other two patents. [00:04:23] Speaker 01: But damages weren't broken out by patents. [00:04:25] Speaker 01: You got three patents, and then you have a single damage award. [00:04:28] Speaker 01: So wouldn't we have to bake paper man for a new trial on damages? [00:04:32] Speaker 04: I would submit no, Your Honor. [00:04:33] Speaker 04: And the reason is neither side broke out [00:04:36] Speaker 04: damages theory based on a per-patent basis. [00:04:38] Speaker 04: And what Dr. Blackburn had said, actually during Defendants Cross, was that, sorry, did you? [00:04:45] Speaker 01: No, I was going to keep going. [00:04:46] Speaker 04: Yeah, so what Dr. Blackburn had said during Defendants Cross was, for each of the three patents, he had determined that there was not a non-infringing alternative that was available. [00:04:53] Speaker 04: that would have allowed them to recoup any of the profits. [00:04:56] Speaker 04: So in other words, the profits were at risk, regardless of which of the three patents were infringed. [00:05:01] Speaker 01: Oh, this is a really helpful point. [00:05:02] Speaker 01: So you're saying that this case, as entirely presented by both parties, was an all or nothing proposition. [00:05:09] Speaker 01: If any one of the patents are infringed, this is the measure of damages. [00:05:13] Speaker 01: And there would be no need to send it back. [00:05:15] Speaker 04: Yes, ma'am. [00:05:17] Speaker 02: Where was that addressed in? [00:05:20] Speaker 02: any of the briefing or like was it in the J-Mall briefing or? [00:05:25] Speaker 04: The per patent issue? [00:05:27] Speaker 02: Yeah. [00:05:29] Speaker 04: I can't recall if it was in the J-Mall briefing or I know we addressed it in our brief. [00:05:39] Speaker 04: That's page 66 of the blue brief. [00:06:03] Speaker 02: But where did you tell the trial court this? [00:06:09] Speaker 02: That the damages were, you know, didn't need to be apportioned. [00:06:20] Speaker 04: or the trunk worm, sorry? [00:06:22] Speaker 04: Either. [00:06:22] Speaker 04: Either, OK. [00:06:24] Speaker 04: So there was some cross-examination testimony by defendants, actually, of Dr. Blackburn, where he had said that, in his view, and I'll give you the site, in his view, because he looked at each of the three patents, we have a bottle sterilization and bottle fill. [00:06:39] Speaker 04: And so if you want aseptic bottling, you need sterilization, you need filling. [00:06:42] Speaker 04: And so regardless of which of the patents, because some covered sterilization, some covered filling, [00:06:48] Speaker 04: the same profits, Hood's bottling profits, would be at risk because you couldn't do aseptic bottling without it. [00:06:54] Speaker 04: And that was a function of the way the non-infringing alternative case came in, that he wasn't made familiar with a non-infringing alternative that would allow Hood to recoup any portion of its profit, for example, if one pad was infringed but not another. [00:07:08] Speaker 01: All right. [00:07:08] Speaker 01: I'm going to set up that as true because you have 80 minutes, but on the bottle, so you should be timing that site. [00:07:12] Speaker 01: Thank you. [00:07:17] Speaker 04: So quickly on the new trial, it's our position that the district court provided no record. [00:07:21] Speaker 02: Can you move on to the other patents before you move on to the trial? [00:07:24] Speaker 02: Because I think you have some problems with them too. [00:07:27] Speaker 02: Yes. [00:07:28] Speaker 04: Understood, Your Honor. [00:07:29] Speaker 04: So for the 188 patent, the question was whether there was substantial evidence of the way the functions were performed. [00:07:36] Speaker 04: Dr. Sharone, in our view, did address the way. [00:07:38] Speaker 04: He said, if we think about the context of the claim function, this is still involved. [00:07:43] Speaker 04: And what he said was he compared the conveyor plate. [00:07:45] Speaker 02: Is this a means-plus-function claim? [00:07:47] Speaker 02: It is, Your Honor. [00:07:48] Speaker 02: So you're confined to the structure and the patent. [00:07:50] Speaker 04: That's correct. [00:07:51] Speaker 02: And you're trying to get, the structure in your pattern is not the same as theirs. [00:07:56] Speaker 02: It's not the same, but we are... You're trying to get it back through doctrine of equivalence. [00:08:00] Speaker 04: Well, literal equivalence, I guess. [00:08:02] Speaker 04: Yeah. [00:08:06] Speaker 04: So, Dr. Shroud compared the conveyor plate to the neck rippers. [00:08:09] Speaker 04: He said they both hold bottles. [00:08:10] Speaker 04: Whether you hold it by the neck or you hold it by the bottom was an insubstantial difference in the context of filling bottles. [00:08:15] Speaker 04: And again, it's important to put it in the context of the function. [00:08:18] Speaker 04: With respect to the conveyor versus the rotary wheel, Dr. Chiron said that conveyor rotates in an oval around pulleys and it pulls the conveyor plate with it, holding the bottles. [00:08:27] Speaker 04: He compared that to the rotary wheel and said that the way the rotary wheel does that is to spin in a circle with bottles on its circumference. [00:08:34] Speaker 04: And so he did address the way the corresponding acute structures perform the same function. [00:08:40] Speaker 04: To us, it looked like the appellees disagreed, obviously. [00:08:43] Speaker 04: They put in their own evidence on it. [00:08:44] Speaker 04: But the jury cited the student on that. [00:08:46] Speaker 04: And there was substantial evidence of the way it was addressed. [00:08:50] Speaker 04: The district court hung its ruling on its findings that there was no way addressed by Dr. Sharron. [00:09:01] Speaker 04: So the 985 patent, thank you, Your Honor. [00:09:04] Speaker 04: That was not from equivalence. [00:09:06] Speaker 04: The issue there was whether the defendants accused structure, so that is the flow meters and metering pumps, were equivalent to the intermittent addition sterolent to the bottle. [00:09:15] Speaker 01: Dr. Sherwin explained that the function was to... This is this question, intermittent versus continuous, correct? [00:09:21] Speaker 04: Correct. [00:09:22] Speaker 01: Okay, so, you know, for me, layman, just standing back, when you say something's intermittent, that seems different from continuous. [00:09:31] Speaker 01: You know, I know that we don't generally love this binary concept, but intermittent seems different than continuous. [00:09:37] Speaker 01: But then we've got cases like Deer, which says intermittent can have a flow that is so [00:09:44] Speaker 01: famous, that it really kind of is the same as continuous. [00:09:48] Speaker 01: Is that right? [00:09:49] Speaker 01: Correct. [00:09:50] Speaker 01: And so is that your argument? [00:09:51] Speaker 01: That is the argument, yes. [00:09:54] Speaker 02: OK. [00:09:54] Speaker 02: But wait, let me ask you this. [00:09:56] Speaker 02: I thought your device was intermittent. [00:09:58] Speaker 02: The patent is intermittent, that's correct. [00:10:00] Speaker 02: Right, so you're not trying to show the reverse, that theirs is intermittent and you require continuous, but their intermittent is so fast that it really is continuous. [00:10:13] Speaker 02: you have to show their continuous is somehow intermittent. [00:10:19] Speaker 04: The equivalent of intermittent, correct your honor. [00:10:20] Speaker 04: And what Dr. Schroen explained is if you think about the 95 pattern, there's a little spoon digger. [00:10:24] Speaker 04: There's a claim construction here too. [00:10:27] Speaker 04: There is. [00:10:27] Speaker 04: And it was added in a non-continuous manner. [00:10:31] Speaker 00: And it was stipulated to, right, the Paris Green? [00:10:33] Speaker 04: That was a stipulated construction, yes. [00:10:34] Speaker 02: And theirs is not. [00:10:37] Speaker 04: There's his continuous, the way the sterile goes. [00:10:40] Speaker 02: So how can that possibly be equivalent? [00:10:42] Speaker 04: So when you break it down, add it in a non-continuous manner. [00:10:46] Speaker 04: If you think about the 985 patent, it goes up and down very fast, this little spoon dipper. [00:10:50] Speaker 04: So when you look at the embodiment, there's a spoon, it's 0.5 milliliter. [00:10:54] Speaker 04: It goes up and down about every half second. [00:10:55] Speaker 04: And so it's shooting a blast of intermittent sterile into the conduit. [00:11:00] Speaker 04: Dr. Sherald said the function of that was to ensure a properly or to ensure the correct amount of sterilant gets to the bottle so you can have a properly sterilized bottle. [00:11:08] Speaker 04: When you look at the defendant's device, they're flowing continuously, but they are also monitoring a very careful flow of sterilant. [00:11:15] Speaker 04: And so we broke it down further. [00:11:17] Speaker 02: That's the problem. [00:11:18] Speaker 02: You're looking at it from the wrong end. [00:11:21] Speaker 02: It's not whether yours does the same thing as theirs. [00:11:25] Speaker 02: It's whether theirs does the same thing as yours under the same claim construction. [00:11:30] Speaker 02: And so, sure, you've got expert testimony that says this performs the same function. [00:11:35] Speaker 02: You've got expert testimony that you get to the same result, that's sterilized. [00:11:38] Speaker 02: How is it doing in the same way if yours is doing intermittent burst and theirs is doing a continuous burst? [00:11:45] Speaker 04: So I think that's the binary choice. [00:11:47] Speaker 02: No, no. [00:11:49] Speaker 02: Let's just assume sometimes a binary choice can be right. [00:11:52] Speaker 02: OK. [00:11:53] Speaker 02: Right? [00:11:53] Speaker 02: I mean, if your invention was we do this intermittently, then intermittently is part of the claim. [00:12:00] Speaker 02: You put it in there for a reason. [00:12:02] Speaker 02: It has to be assumed to have a doctrinal weight. [00:12:05] Speaker 02: If they don't do it that way, how do they infringe? [00:12:07] Speaker 02: Well, on the doctrinal equivalence. [00:12:09] Speaker 02: But how do you get something back on your doctrinal equivalence that you specifically gave away in the claim? [00:12:15] Speaker 02: Where in the expert's testimony does it say they're continuous? [00:12:19] Speaker 02: is performing in the same way as intermittent. [00:12:25] Speaker 02: You're right on function and result. [00:12:27] Speaker 02: There's no doubt it performs the same function. [00:12:29] Speaker 02: It's sterilizing, and it gets to the same result. [00:12:32] Speaker 02: It's sterilizing at the right level. [00:12:34] Speaker 02: But how is it the same way? [00:12:36] Speaker 04: So what Dr. Sharone said was that to constantly monitor how much, so it's ATPX3107. [00:12:58] Speaker 02: of his subpages? [00:13:00] Speaker 04: 429. [00:13:05] Speaker 04: And he says that line 18, constantly monitor how much sterolent is basically on its way to the bottles. [00:13:11] Speaker 04: And so that's the way... Wait, wait, say that again. [00:13:14] Speaker 04: So constantly, the metering pumps and flow meters constantly monitor how much sterolent is on its way to the bottles. [00:13:21] Speaker 04: And so that is... Whose? [00:13:23] Speaker 04: Whose? [00:13:23] Speaker 04: In the accused machine. [00:13:25] Speaker 02: So what? [00:13:26] Speaker 02: Why does that say this is intermittent? [00:13:29] Speaker 04: It says that the function is the equivalent way of doing it. [00:13:32] Speaker 02: We're not talking about function. [00:13:33] Speaker 02: I already gave you function and result. [00:13:34] Speaker 02: Where does he testify that the way of you doing an intermittent, or their way of doing it continuously, is the same way as you doing it intermittently? [00:13:44] Speaker 02: Because we said over and over again, and it's in doctor and equivalent, that it is element by element, and it is a very high burden to me, and it's very strict, and you have to explain with specific evidence where it performs that [00:14:02] Speaker 02: the structure is doing it in the same way. [00:14:06] Speaker 04: And so the testimony I'm pointing to is Dr. Chiron explaining how the accused machine does it, the way the accused machine does it. [00:14:11] Speaker 04: And then over, if you look at the next page, 3108, QPX 3108, sub 433, excuse me, 19 to 22. [00:14:21] Speaker 04: And he says that both are trying to guarantee the correct amounts to run. [00:14:25] Speaker 02: That's superconclusory. [00:14:27] Speaker 02: That doesn't say this is the same way. [00:14:29] Speaker 02: That said, they're both trying to do. [00:14:31] Speaker 02: If you were pointing to that to say this has the same function or the same result, I might give you that. [00:14:36] Speaker 02: But that doesn't say anything about the fact that continuous operates in the same way as intermittent under this claim instruction. [00:14:46] Speaker 04: The position Dr. Shrum took was that the way was the same. [00:14:50] Speaker 02: Where does he say the way was the same? [00:14:52] Speaker 04: I was trying to point it to you on 3107, the constantly monitoring. [00:14:57] Speaker 02: But that doesn't say this is the same way. [00:14:59] Speaker 02: It basically says it performs the same function or the same result. [00:15:02] Speaker 02: Understood. [00:15:03] Speaker 02: You just don't have enough testimony here to support that. [00:15:05] Speaker 02: If that's my reason, this testimony, that there's no testimony to support way, then the district court's decision on this patent is right. [00:15:14] Speaker 02: Isn't it? [00:15:15] Speaker 04: Yes, if you're going to find insufficient testimony either way, then you're right. [00:15:21] Speaker 01: Yes. [00:15:21] Speaker 01: OK, briefly address the new trial issue, please. [00:15:23] Speaker 01: Yes. [00:15:24] Speaker 01: Sorry, is that OK? [00:15:25] Speaker 00: Yeah, I was going to ask something similar. [00:15:27] Speaker 00: So do that, and then we have a memo. [00:15:29] Speaker 04: OK, so very quickly, I'll try to be quick. [00:15:32] Speaker 04: The district court didn't provide a record for a new trial on involuntary damages. [00:15:37] Speaker 04: When it comes to looking at the opinion, there's just no record there for this court to affirm the basis for the new trial. [00:15:42] Speaker 04: And so, when it comes to validity, though, there was actually a waiver below, and that should extend, we submit, to the new trial request because they were both based on the sufficiency of the evidence. [00:15:52] Speaker 04: And that's the Greenleaf case. [00:15:53] Speaker 04: And so, Appellees didn't really have an explanation other than to say, well, because we argued sufficiency of the evidence, AFORSH URI, we argued against the great rate of the evidence. [00:16:02] Speaker 04: They're really two different standards. [00:16:03] Speaker 04: It's not one satisfies the other. [00:16:05] Speaker 04: One looks at, was there sufficient evidence? [00:16:07] Speaker 04: The other looks at, [00:16:09] Speaker 04: Assuming there is sufficient evidence, do we need a new trial for avoiding a miscarriage of justice? [00:16:13] Speaker 00: But also talk about whether or not there should be a new trial on infringement, depending on how we come out on the G law, on the various counts. [00:16:21] Speaker 04: Well, I think if Your Honors were to reverse the finding of non-infringement, I don't see a basis for a new trial in the district court's opinion on the issue of infringement. [00:16:30] Speaker 04: It seemed to say that if [00:16:32] Speaker 04: there's a reversal, you should give a new trial, but there's never a finding that there would be sufficient evidence, and it would be contrary to the great weight of the evidence, and you have to avoid a miscarriage of justice. [00:16:42] Speaker 04: So it's really a matter of just, they're not being a record on this. [00:16:45] Speaker 01: Okay, but what about damages? [00:16:47] Speaker 01: On the final page of the red brief, I think it's in page 71, they say there would have to be, send this back to the district court for damages, [00:16:56] Speaker 01: at a minimum, I mean that certainly the judicial court gave us no basis in which I can review his decision to grant a neutrality action. [00:17:04] Speaker 01: That's, that's dumb. [00:17:05] Speaker 01: Like there's no basis. [00:17:06] Speaker 01: I can't review nothing, you know, and that's what we have, there's nothing. [00:17:10] Speaker 01: But, you started off by saying if you affirm on any one, because your expert argued basically any one of these would amount to the full verdict on page 71 of their brief, which I thought I'd remember as I just now looked, [00:17:21] Speaker 01: they say no, that you have to send it back, because they made arguments to the district court on damages, which the district court didn't actually address, because he found that infringement. [00:17:34] Speaker 01: So wouldn't we have to send it back for the district? [00:17:36] Speaker 01: Maybe I'm making the new trial damages. [00:17:40] Speaker 01: his decision that there should be one because he gave no basis for it. [00:17:43] Speaker 01: You know, and say, look, you gotta give more explanation at a minimum so we can review it. [00:17:47] Speaker 01: But they suggested that they made arguments one day and just below, which he has yet to address because of the way he did resolve infringement. [00:17:55] Speaker 01: What do you have to say about that? [00:17:57] Speaker 04: So he obviously didn't address it, but I would submit that their chance to explain and provide a record for your honors was in the red brief. [00:18:03] Speaker 04: And what they said was essentially high level that was an apportioned initiative. [00:18:07] Speaker 04: And so they could have presented a record for your honors, but they didn't. [00:18:09] Speaker 04: And so to, well, I guess you're not saying a term, but to vacate the new trial and then have the judge [00:18:15] Speaker 04: explain the reasoning, and then go through a whole new trial. [00:18:18] Speaker 02: How can we possibly, if we find, if we affirm him on one or two, but not all three of his non-incorporated findings, affirm the damages, what is there for us to say that [00:18:34] Speaker 02: that we know that the jury or the judge, as a matter of law, would have found the same damages based upon less than all infringed patterns. [00:18:44] Speaker 04: We did explain in our great brief why we think that's the case. [00:18:48] Speaker 02: I'm talking about labor. [00:18:50] Speaker 02: On their part, very briefly, it's way too late for you two. [00:18:53] Speaker 02: I mean, you made a nod to it as a regular. [00:18:56] Speaker 02: I want to know, really, if any of this was told to the jury and the judge and specifically laid out so we know what the judge would have done in the case of some of the patents we're going to find he was wrong on non-infringement, but maybe some of them we're going to find that he was right. [00:19:16] Speaker 04: So the J-Mall briefing did have damages arguments. [00:19:19] Speaker 04: I can't recall, Your Honor, right now. [00:19:21] Speaker 02: And he didn't talk about any of that. [00:19:22] Speaker 02: So why don't we send it back to him to decide what he needs to do? [00:19:27] Speaker 02: Look, if you win on all three non-interference, it's easy, right? [00:19:31] Speaker 02: We just reinstate the jury very early. [00:19:32] Speaker 02: But if you don't, then why are we trying to sort it out in the first instance of what to do instead of just sending it back to him and say, look, [00:19:39] Speaker 02: You were right on one or two of these, but you're wrong on the other one or two of these. [00:19:45] Speaker 02: You need to figure out if the damages are the same or different. [00:19:50] Speaker 04: Our argument is that there wasn't a record. [00:19:52] Speaker 04: We explained that. [00:19:53] Speaker 04: I thought it was incumbent upon athletes to do it. [00:19:55] Speaker 04: I see your Honor's point. [00:19:56] Speaker 04: If you're not comfortable making findings and don't think there's a record, I think the law we cited is that there should have been a record made, and there wasn't. [00:20:03] Speaker 04: And so after this long litigation to send it back and have them try to figure out the damages, and then if there's a new trial, there's a lot of different permutations that could happen. [00:20:11] Speaker 04: And if your Honor's not comfortable with that, [00:20:13] Speaker 01: Okay, well, we wait to hear your time, officer. [00:20:18] Speaker 01: We have a lot of questions. [00:20:19] Speaker 01: Let's hear from your closing counsel. [00:20:20] Speaker 04: Okay, thank you, Your Honor. [00:20:40] Speaker 03: I appreciate the time. [00:20:41] Speaker 03: May it please the court? [00:20:43] Speaker 03: The jury verdict in this case was fundamentally flawed because Steuben repeatedly elicited fundamentally flawed testimony from its expert on all three of the patterns. [00:20:55] Speaker 01: Did you make some sort of dollar motions on a field of less? [00:20:58] Speaker 01: Because I don't remember that. [00:20:59] Speaker 03: We did not make a Dogbert motion. [00:21:02] Speaker 01: Why don't you just get to reverse that for a little bit, because you're starting out with some generality that seems untethered to the briefs to me. [00:21:08] Speaker 01: So just start with the issues of RD-OE. [00:21:11] Speaker 03: Tell me why the district court judge was correct in granting J-Mall an F. The district court was correct to grant J-Mall on the RD-OE because everything the patent has to say about the second sterile region at issue is found in column 14. [00:21:28] Speaker 03: and which is at appendix 63. [00:21:31] Speaker 03: And at the top of the column, it begins by explaining the problem that the patent is trying to solve. [00:21:37] Speaker 03: The problem is expressed in figures 23 and 24 of the patent, which are reproduced in a number of places, but among other places, on page 52 of the red brief. [00:21:51] Speaker 03: And the key. [00:21:53] Speaker 01: Because the fellows are getting ammo, I know, for their structural equivalence to apply. [00:21:59] Speaker 03: uh... well the the federal circuit has certainly heard cases involved in this court has never affirmed a judgment of non-increment based on the reverse doctrine of equivalence, that's correct. [00:22:13] Speaker 01: And have we, on any occasions, referred to it as something like an anachronistic doctrine that is of limited value? [00:22:22] Speaker 01: These are actually dark holes from the case of the school. [00:22:26] Speaker 03: The court has, from time to time, [00:22:28] Speaker 03: disparage the doctrine, yes. [00:22:30] Speaker 03: But it is a doctrine that is in Supreme Court precedent and that has never been overruled. [00:22:35] Speaker 01: What makes you think so? [00:22:36] Speaker 01: What makes you think that it survived the 1952 patent act? [00:22:41] Speaker 03: Your Honor, I think that it survived the 1952 patent act substantially for the reasons given in Warner Jenkinson. [00:22:48] Speaker 01: But Warner Jenkinson was just addressing direct infringement. [00:22:52] Speaker 01: And this is a defense, not an affirmative proof. [00:22:56] Speaker 01: This is a defense to infringement. [00:22:58] Speaker 03: Well, I think that the Supreme Court's cases on this issue, going back to Graver Tank and even before then to the Westinghouse case, treat [00:23:10] Speaker 03: the two versions of the doctrine that you're referring to as two sides of the same coin, just as... Yes, but then, you know what they did? [00:23:18] Speaker 01: They came along in 1952, and Congress said, you know what, we care if there's human infringement, and they didn't say it had to be literal, so DOA could still be in, and the Supreme Court said it's still in. [00:23:29] Speaker 01: And then they went further and they said, no defenses to infringement that aren't in Title 35 survive. [00:23:38] Speaker 01: All defenses to infringement are in Title 35. [00:23:42] Speaker 01: I don't see the worst doctor for approval is anywhere in Title 35. [00:23:45] Speaker 01: And that's Congress who established you. [00:23:47] Speaker 01: So you do agree with me that Congress could decide to say the first doctrine of good law, which the judge made exception, is no longer good law. [00:23:55] Speaker 01: Congress could do that, couldn't they? [00:23:56] Speaker 03: Congress could certainly pass a statute repealing the reverse doctrine of good law. [00:24:01] Speaker 01: That's true. [00:24:01] Speaker 01: Why should I interpret their statement that all defenses to infringement are now found in Title 35? [00:24:08] Speaker 01: as not having done it, because for a lot of people, it wasn't listed in Bill 35. [00:24:13] Speaker 03: Well, again, as you said in our briefs, I think that the Arrow case makes clear that the 1952 Act did not obliterate all of the judicial losses that were in place for the pre-existing statute. [00:24:25] Speaker 01: The Arrow case doesn't say anything about defenses, does it? [00:24:27] Speaker 01: It's about a formative group of infringement. [00:24:30] Speaker 01: It doesn't say anything about defenses. [00:24:32] Speaker 01: It doesn't say all defenses that were judged may continue to exist. [00:24:36] Speaker 01: It only speaks to the affirmative group, doesn't it? [00:24:40] Speaker 03: I think that the principle underlying the decision, though, Your Honor, is that Congress legislates against the background of judicial decisions. [00:24:46] Speaker 03: And in this case, the judicial decisions for now for more than 100 years in the Supreme Court have recognized the doctrine of equivalence both as an offensive doctrine to expand the scope of claims when they're instituted. [00:24:59] Speaker 00: What do you think our DOE reaches that 35 USC 112 does not? [00:25:06] Speaker 03: you know, it's often there there may well be one 12 issues with these with these plans that are not currently before the court. [00:25:13] Speaker 02: I don't think that you raise this is what's frustrating me. [00:25:16] Speaker 02: This reverse doctrine of equivalence case you've admitted, we have never used to sustain a judgment of non infringement. [00:25:23] Speaker 02: Why did you take the district court out on this limb when you could have gone after this problem with claim construction arguments, 112 arguments, and preserve them and appeal those to us? [00:25:35] Speaker 03: Well, we did make a claim construction argument. [00:25:38] Speaker 03: And we lost on it, but certainly an alternative ground for it. [00:25:43] Speaker 03: And I don't believe we could have cross appealed it because we won below. [00:25:47] Speaker 01: So we would not be expanding the judgment. [00:25:49] Speaker 01: It could be an alternative ground for affirmation. [00:25:51] Speaker 03: We did give you an alternative ground for affirmation. [00:25:53] Speaker 03: It's in the brief, of course. [00:25:54] Speaker 02: What we say is that... Where in your brief does it argue that the district court's claim construction was wrong, or the district court was wrong on 112? [00:26:04] Speaker 03: We have an entire section devoted to the construction starting on page [00:26:11] Speaker 03: 60, 61, 62, 63 about the proper construction of the term. [00:26:18] Speaker 03: So we absolutely preserved the alternative plane construction. [00:26:22] Speaker 03: And we do, of course, think that the district court did not construe the term correctly. [00:26:26] Speaker 03: But we were faced a trial with a construction we had to live with. [00:26:30] Speaker 03: The reverse doctrine of equivalence is, I would submit, a safety valve that applies when you have a broader construction that is justified by the [00:26:38] Speaker 02: the specification, but we certainly think, and the court has the option... Did you put this claim construction argument in your Jamal motion? [00:26:46] Speaker 03: Yes, of course we did, Your Honor. [00:26:47] Speaker 03: And we also put it... Where is it in your Jamal motion? [00:26:51] Speaker 03: In the Jamal motion, I'm going to ask my colleague to get the exact citation to it. [00:26:56] Speaker 03: But importantly, the most important thing is it was in the claim construction [00:27:01] Speaker 03: In fact, let's see, the claim construction is memorialized at appendix 6800-6801 and the post trial brief is appendix 5236, note 4. [00:27:18] Speaker 03: You know, we didn't do a full-throated rehash of the claim construction argument post-trial. [00:27:23] Speaker 02: But I think this isn't... Did he address this in his general opinion, his claim construction issue? [00:27:30] Speaker 02: It's in your brief. [00:27:32] Speaker 02: I obviously missed it. [00:27:33] Speaker 02: There's so many arguments. [00:27:35] Speaker 02: in his brief, and I read it, and I've skipped over it. [00:27:38] Speaker 02: Did he address the claim destruction argument in the Jamal motion? [00:27:41] Speaker 02: Not in the Jamal motion. [00:27:42] Speaker 02: He rested on reverse doctrine. [00:27:44] Speaker 03: No, he construed the claim and indicated no interest in revisiting his construction. [00:27:50] Speaker 03: And so we argued the construction that we were given. [00:27:53] Speaker 03: But I think this is an unusually clear case, Your Honor, where, again, if we go to column 14, [00:27:59] Speaker 03: I really do urge your honors to look at figures 23 and 24 of the patent, because they describe, with uncommon clarity, the problem that the patent is trying to solve. [00:28:07] Speaker 02: The problem is that when- Let's just assume that I am never going to apply reverse documents with the likes. [00:28:13] Speaker 02: Does that mean, based upon this claim for second argument that you say you preserved, we should still send it back to him to look at non-enrichment of that patent under the- [00:28:21] Speaker 03: I actually think that given the record that you have, if you were to construe the claim as we are suggesting, it would not be necessary to remand. [00:28:31] Speaker 03: You could actually affirm because there is no factual basis for finding infringement. [00:28:37] Speaker 03: under the construction that we've proposed. [00:28:40] Speaker 01: So the bottom line is, the claim construction question is a question of law, so there's no reason to send that back. [00:28:44] Speaker 01: We can decide it. [00:28:45] Speaker 01: Correct. [00:28:46] Speaker 01: We can either affirm the claim instruction he adopted, or we could reverse it in your favor, which would result in the same outcome on that path. [00:28:53] Speaker 01: I'll let you know on the next path, because you've got a lot of ground to cover. [00:28:57] Speaker 03: Thank you, Your Honor. [00:28:58] Speaker 03: With regard to the 985 path, [00:29:01] Speaker 01: What happened to 188? [00:29:02] Speaker 01: Did you skip one? [00:29:04] Speaker 03: No, I can take them in whatever order you're looking for. [00:29:08] Speaker 03: So with regard to the 188 patent, so this is a 126 limitation. [00:29:13] Speaker 03: And so there's a bargain that the patentee strikes. [00:29:16] Speaker 03: By using functional claiming, the patentee limits the structures that can be accused of infringement to those disclosed in the specification and their then existing equivalents. [00:29:27] Speaker 03: And so what we have here is the situation where [00:29:31] Speaker 03: They have one rather idiosyncratic set of structures, which is a linear conveyor with a 2x6 conveyor plate that's holding roots. [00:29:50] Speaker 01: the same function, substantially the same way and result. [00:29:54] Speaker 01: And he presented testimony clearly on that. [00:29:56] Speaker 01: So why does that not support a jury ruling? [00:29:59] Speaker 03: Yeah, respectfully, I disagree that he gave testimony on that. [00:30:02] Speaker 03: What he said was not that they do them the same way. [00:30:05] Speaker 03: What he said was, [00:30:06] Speaker 01: All that matters is that you do it the same way. [00:30:14] Speaker 03: He also did not testify to that, Your Honor. [00:30:15] Speaker 03: What he said was, and you will find this at, for example, appendix 3101, 02, and 03, there's a series of questions where he says how you hold the bottles [00:30:25] Speaker 03: doesn't matter. [00:30:26] Speaker 03: Filling the bottles at a rate greater than 100 bottles per minute is all that matters. [00:30:30] Speaker 03: He said the same thing about straight line versus circular motion. [00:30:33] Speaker 03: It doesn't matter how you move them as long as you're going at 100 bottles per minute. [00:30:37] Speaker 03: He says the same for continuous versus intermittent. [00:30:40] Speaker 03: Doesn't matter if it's continuous or intermittent as long as the bottles are going at 100 bottles per minute. [00:30:45] Speaker 03: And that, if accepted, [00:30:47] Speaker 03: would obliterate the very limitations that 112.6 is supposed to put on functional claiming. [00:30:53] Speaker 03: Because what he says is essentially, any structure under the sun that moves at 100 bottles per minute is going to be equivalent to the corresponding structure in the patent. [00:31:02] Speaker 03: And that, if accepted, I think, would make 112.6 a dead letter. [00:31:06] Speaker 03: We have a whole series in the district court, of course, found the undisputed differences in the operation of the systems. [00:31:13] Speaker 03: One of them is linear, one of them is rotational. [00:31:15] Speaker 03: One of them holds the bottles in batches and processes them intermittently. [00:31:19] Speaker 03: The other one moves continuously and holds one bottle at a time. [00:31:23] Speaker 03: The neck rippers are able to accommodate bottles of different sizes. [00:31:26] Speaker 02: And so for us to reverse his non-inflictive finding, we have to determine that all those structural differences are insubstantial. [00:31:35] Speaker 03: Are insubstantial. [00:31:36] Speaker 03: You would have to find that. [00:31:37] Speaker 03: Or you would have to find some testimony supporting a jury conclusion to that. [00:31:41] Speaker 03: And I don't think you're going to be able to find it on this record. [00:31:46] Speaker 02: because his testimony is pretty high level and conclusory that they eventually, they just accomplished the same result. [00:31:55] Speaker 03: He says that the function is moving in a hundred, filling in a hundred bottles per minute and anything that moves at a hundred bottles per minute is going to be equivalent in his view. [00:32:05] Speaker 00: Can you point me to where that is? [00:32:08] Speaker 03: Sorry? [00:32:08] Speaker 00: Can you point me to where in the Phoenix I can find that testimony you're describing? [00:32:11] Speaker 03: Yes, this is 310102 [00:32:22] Speaker 00: And what's the sub page in my number? [00:32:25] Speaker 03: Just one second. [00:32:29] Speaker 01: So for example, what about 406 3101, which is where he just pointed us on 406 line 18. [00:32:38] Speaker 01: This is their expert. [00:32:39] Speaker 01: So these hold it by the neck. [00:32:41] Speaker 01: like that, or the conveying plate and the patents hold it from the bottom. [00:32:46] Speaker 01: Whether you hold it this way or that way, it's not going to limit whether you can achieve 100 bottles per minute of filling. [00:32:53] Speaker 01: So that's why it's insubstantial, whether you hold it from the deck or you hold it from the side. [00:32:58] Speaker 01: So he is saying, isn't he, that, I mean that doesn't just go to result, he's saying it does not matter holding it here or holding it here, [00:33:06] Speaker 01: It's the same thing. [00:33:07] Speaker 01: There's no difference in that way. [00:33:10] Speaker 01: It's not going to result in any different outcome. [00:33:13] Speaker 03: No, but respectfully, Your Honor, I don't think that's right. [00:33:16] Speaker 03: I think what he's saying is, when the question is, [00:33:21] Speaker 03: Is there a substantial or an insubstantial difference between the Q structure and the corresponding structures in the path? [00:33:29] Speaker 03: We have a whole litany. [00:33:30] Speaker 03: It's not just the one. [00:33:31] Speaker 03: We have a whole litany of circular and intermittent and from the top and from the bottom and all of the differences. [00:33:37] Speaker 03: And he has to say, he has to give some testimony that the difference is insubstantial in the way that the function is carried out. [00:33:47] Speaker 03: And what he says instead is, [00:33:49] Speaker 03: Anything that goes 100 bottles per minute is going to be an insubstantial difference in his view. [00:33:55] Speaker 01: See, that's not the function. [00:33:56] Speaker 01: That's the result. [00:33:57] Speaker 01: And that goes to structure. [00:33:58] Speaker 01: That's what 112.6 is all about. [00:34:00] Speaker 01: Do you have the same structure performing the same function? [00:34:03] Speaker 01: Function here is filling. [00:34:03] Speaker 01: It's not 100 bottles a minute. [00:34:05] Speaker 01: Result is 100 bottles a minute. [00:34:07] Speaker 01: That's part of the structural analysis under 112.6. [00:34:10] Speaker 01: That is part of the way in the resolved versions. [00:34:14] Speaker 03: I don't understand. [00:34:15] Speaker 03: Actually, I think that the filling at 100 bottles per minute actually is the stipulated function for this. [00:34:19] Speaker 03: I don't think there was ever an argument made that it was anything other than that. [00:34:23] Speaker 03: But again, I think the point is that when you have structures that are so fundamentally different in so many different ways, this court has repeatedly said that [00:34:32] Speaker 03: in order to cabin the range of equivalence, in order to preserve 112.6 or in the normal equivalence sort of situation, in order to prevent the claim from sort of preserving all elements rules and to have the claim have an invention-defining function, you need to impose limits on this. [00:34:53] Speaker 03: And the court has repeatedly said that linear motion is not equivalent to zero. [00:34:56] Speaker 02: So is your interpretation of these sentences we're looking at the problem with it is he's saying, [00:35:02] Speaker 02: that it doesn't matter which way you hold it, because it all gets to the same 100 bottles per minute. [00:35:11] Speaker 02: And that's the wrong inquiry. [00:35:15] Speaker 02: The inquiry is, are the structures similar enough that they're insubstantial, not whether the structures [00:35:23] Speaker 02: end up with the same result. [00:35:26] Speaker 02: And therefore, the differences are insignificant. [00:35:28] Speaker 03: That's exactly right, Your Honor. [00:35:29] Speaker 03: I agree with that. [00:35:30] Speaker 03: And I think it's even more clear on the next page, 3102, and on page 410, starting at line 12. [00:35:36] Speaker 03: The question is, in the context of filling in 100 bottles a minute or more, 100 bottles or more per minute, does it matter whether the bottles are moving in a straight line or in a circular fashion? [00:35:47] Speaker 03: And he says, no. [00:35:49] Speaker 03: I mean, you know. [00:35:50] Speaker 03: As long as the claim were directed toward new ways of transporting bottles, then maybe they would be substantial. [00:35:56] Speaker 03: But in terms of filling in a rate of 100 bottles per minute, you can do it linearly or rotary. [00:36:00] Speaker 03: But that doesn't answer the question whether, when you do it that way, is it substantially different. [00:36:07] Speaker 03: Exactly right. [00:36:08] Speaker 03: And then the same question goes on. [00:36:11] Speaker 03: On 3103, we have a similar exchange about intermittent versus... When you're out of time, I'd really like you to cover some of your other issues. [00:36:19] Speaker 00: I want to jump into the new trial, because that's... Can we quickly touch on this intermittent versus continuous? [00:36:26] Speaker 00: uh... can you do you wish for us uh... and the trust that i think you know the absence cases particular in terms of how you're thinking it should come out in ninety-five yeah so the e-post case was was different in a couple of respects and i think that the main thing that we have there was the district court [00:36:44] Speaker 03: This court said that the district court had shortcut its analysis. [00:36:48] Speaker 03: So we had a two line back of the hand treatment of the equivalence issue and we had a situation in which there was proper expert testimony in the form of declaration that the district court had failed to consider. [00:37:00] Speaker 03: And so the key differences here are that, first of all, we have a multi-page treatment of the issue that engages with the expert testimony that was offered. [00:37:10] Speaker 03: And the expert testimony that was offered on this point, similar to what we just saw in the 188 patent, was that essentially it doesn't matter whether it's continuous or intermittent. [00:37:21] Speaker 03: All that matters is that the right amount of [00:37:23] Speaker 03: sterile and get to the bottles. [00:37:25] Speaker 03: And I think that the testimony on that issue is even clearer than we have on the 188 patent. [00:37:30] Speaker 03: I would direct the court to appendix 3111 and 3112. [00:37:33] Speaker 03: 3111 at page 446 and 3112 at page 447 of the transcript. [00:37:42] Speaker 03: because what you'll find is that he said that whatever measures the right amount of sterolins is going to be equivalent to the intermittent amount of the intermittent adding of the sterolins to the conduit. [00:37:55] Speaker 01: So he admitted it was continuous and just ignored the difference. [00:37:57] Speaker 03: He admitted it was continuous, and he said, it just doesn't matter if it's continuous or intermittent, they're the same thing. [00:38:03] Speaker 03: And I think in the context of the stipulated claim construction, which says continuous means not intermittent, that's a big stretch. [00:38:10] Speaker 03: And I also think if your honors look at the claim itself, right, the supposed point of invention of the claim is that there is a second supply of sterile air that is continuous. [00:38:21] Speaker 03: to which sterolint is added intermittently rather than continuously. [00:38:25] Speaker 03: And so we have a juxtaposition of the concepts of intermittent and continuous throughout the claim, throughout the stipulated construction, and then what we don't have is him saying [00:38:36] Speaker 03: that that continuous and intermittent or equivalent and it's back on the very portion. [00:38:42] Speaker 01: I think you meant to say. [00:38:50] Speaker 03: Correct. [00:38:51] Speaker 01: I apologize. [00:38:52] Speaker 01: It's hard to keep all these things straight. [00:38:56] Speaker 01: so I should make sure okay I really want you to get on that new trial before you're way out of time so I'd like you to just address I'm in a little trouble I understand the district court's rationale for the new trial on infringement because in parallel is articulation of all his jaywalk motions but he also threw in sort of [00:39:15] Speaker 01: I agree that the district court was exceptionally concise on the reason. [00:39:30] Speaker 03: That's a really plain layer. [00:39:33] Speaker 03: Your honor, I think that [00:39:35] Speaker 03: It's clear from the district court's opinion that the trial was a bit of a mess, that there was confusion. [00:39:41] Speaker 03: We had different kinds. [00:39:42] Speaker 03: We had all kinds of different equivalents. [00:39:43] Speaker 01: Well, he ended up with the Martin, you know me, so I say that's a yes. [00:39:45] Speaker 03: Well, we ended up with lots of different equivalents. [00:39:47] Speaker 03: We ended up with erroneous statements in claim construction about the disclosure dedication doctrine that confused the court. [00:39:54] Speaker 01: You're not helping me. [00:39:55] Speaker 01: Answer the question. [00:39:56] Speaker 03: I think that, Your Honor, if Your Honor has doubts about the basis for the new trial... How could I not have doubts? [00:40:03] Speaker 01: It would be appropriate to... No, how could I not have doubts? [00:40:06] Speaker 03: I agree that there was not an articulated reason on that specific issue, but I think the appropriate thing for the Court to do in that circumstance [00:40:14] Speaker 03: since it is clear that the district court thought that a new trial was appropriate. [00:40:17] Speaker 03: And under Rule 59, the district court has authority, even so as Fonte, to order a new trial in the interest of justice. [00:40:23] Speaker 03: The appropriate thing to do, should any part of it be remanded, would be to send, or should the new trial question still be a live issue after you're on to the end of it. [00:40:32] Speaker 02: I'm just curious why we would have to have a new trial if, let's just assume, [00:40:39] Speaker 02: is not infringement findings in reverse. [00:40:43] Speaker 02: Let's just assume we're going to reverse that REOE. [00:40:46] Speaker 02: I think we'll dig in. [00:40:48] Speaker 02: If we reverse that, why do we need a new trial, though? [00:40:52] Speaker 02: Because you're going to have a finding of infringement. [00:40:57] Speaker 02: And putting aside that claim construction issue that I didn't focus on, let's just assume that we reverse our DOE and sustain the jury verdict and affirm on the other two. [00:41:10] Speaker 02: Why do we need a new trial on everything? [00:41:13] Speaker 02: Why isn't it just send it back to look at damages? [00:41:16] Speaker 03: Well, again, I think that the district court has [00:41:19] Speaker 03: Traditionally granted a new trial on everything. [00:41:22] Speaker 03: He didn't explain any of it Well, but he did explain that he did explain what he thought were the fundamental problems with the infringement case for example That's a different issue. [00:41:30] Speaker 01: Just ignore that. [00:41:31] Speaker 01: I was Ted from the outset. [00:41:33] Speaker 01: He explained that. [00:41:35] Speaker 01: Validity. [00:41:36] Speaker 01: I want to know his validity. [00:41:37] Speaker 01: He held you waived J-Mall on validity. [00:41:40] Speaker 01: Why in the world would I send it back for a new trial? [00:41:42] Speaker 03: Well, because we did, of course, move for invalidity at summary judgment. [00:41:47] Speaker 01: It's not relevant to whether he waived it. [00:41:49] Speaker 03: Well, I think it is relevant to whether he waived it because he, in fact, said when we cited, for example, in fact, I'm not sure that Dupree younger had yet been decided by the Supreme Court, [00:41:59] Speaker 03: But when we said that preserving the issue with summary judgment was enough to preserve it for appeal, he said, yes, I agree. [00:42:06] Speaker 03: That's enough to preserve it for appeal. [00:42:08] Speaker 03: But it's not enough to preserve it for JMAW. [00:42:10] Speaker 03: And so if you want to take up on appeal someday when you have a judgment on appeal, that's fine. [00:42:15] Speaker 03: That set forth in his opinion. [00:42:17] Speaker 03: But you didn't take it up on appeal. [00:42:19] Speaker 03: No, but we didn't have a judgment of validity. [00:42:21] Speaker 03: It's a 54B partial judgment on infringement only. [00:42:24] Speaker 03: So there's nothing to appeal. [00:42:26] Speaker 01: He said, you waved him. [00:42:29] Speaker 01: First off, there is something to appeal. [00:42:30] Speaker 01: The jury found the patent valid, right? [00:42:33] Speaker 03: The jury did find the patent valid. [00:42:35] Speaker 03: All three patents. [00:42:35] Speaker 03: Yes, Your Honor. [00:42:36] Speaker 01: OK. [00:42:36] Speaker 01: So the jury found all three patents valid. [00:42:38] Speaker 01: You moved for J-Mall validity, and he said, you waved that. [00:42:43] Speaker 01: You don't get it. [00:42:44] Speaker 03: Yes, Your Honor. [00:42:46] Speaker 01: Did you appeal that? [00:42:48] Speaker 03: No, because again, there was no judgment. [00:42:53] Speaker 03: There was no basis for us to cross it. [00:42:55] Speaker 02: Yes, there was. [00:43:01] Speaker 02: to re-raise legal questions that were decided at summary judgment. [00:43:05] Speaker 02: Again, this provides an alternative ground for our comments of the district court's opinion because these patents are invalid. [00:43:12] Speaker 02: You would have to put that in your brief. [00:43:14] Speaker 02: I understand there's page limitations, but you get a lot of pages from us. [00:43:19] Speaker 02: There's nothing that would have prevented you from saying, these are alternative grounds for our comments. [00:43:23] Speaker 03: But again, I think that the district court [00:43:26] Speaker 03: entered a 54-B judgment of non-infringement and nothing else. [00:43:31] Speaker 03: So for example, we also have very serious damages arguments involving the entire market value rule, which the district court expressly declined to address and did not rule on. [00:43:42] Speaker 03: So we see it. [00:43:43] Speaker 03: You'll find that at page 27 of the joint calendar. [00:43:45] Speaker 01: Wait. [00:43:45] Speaker 01: You're talking about non-infringement. [00:43:48] Speaker 01: You have counterclaims for a D.J. [00:43:49] Speaker 01: who will end up in this case. [00:43:51] Speaker 01: So are you telling me there's no final judgment here? [00:43:53] Speaker 03: I'm telling you, there's no judgment on the invalidity issue in this case. [00:43:56] Speaker 01: Did you file counterplains? [00:43:58] Speaker 03: Your Honor, I honestly do not recall. [00:44:00] Speaker 03: This case was filed in September of 2010. [00:44:02] Speaker 00: Why was there only a 54B judgment? [00:44:04] Speaker 00: Just kind of backtrack and tell me that. [00:44:07] Speaker 00: Was that something that the parties were requesting? [00:44:09] Speaker 00: Can you just give me more background there? [00:44:11] Speaker 03: You know, I think, Your Honor, that the district court thought [00:44:16] Speaker 03: there was reason for a new trial, that the trial was problematic. [00:44:19] Speaker 03: However, he thought he could resolve the infringement issues as a matter of law, and did that. [00:44:25] Speaker 03: And having done that, did not think it was necessary to go on to consider any of the other matters that were before him. [00:44:33] Speaker 02: I think I'm really baffled now, because if these invalidity claims weren't just somehow defensive to infringement, if there are invalidity counter claims, [00:44:46] Speaker 02: We don't have jurisdiction. [00:44:47] Speaker 02: There's not a final judgment. [00:44:51] Speaker 03: Well, you have jurisdiction under him. [00:44:52] Speaker 01: No, we don't. [00:44:53] Speaker 01: Do you know whether they're counter-mines? [00:44:58] Speaker 04: No, I don't. [00:44:59] Speaker 04: Do you know whether they're counter-mines? [00:45:02] Speaker 04: It doesn't matter what collections they were filed by. [00:45:03] Speaker 04: Should we do it, but not let us? [00:45:04] Speaker 02: Did he certify it under Rule 54B, and we accepted it? [00:45:08] Speaker 02: Or he'd separated it, but it's still, even if he separates it under Rule 54B, we don't have to accept that if it's not a final judgment. [00:45:16] Speaker 02: You can appeal infringement when it's final, all but for the county. [00:45:20] Speaker 01: This is a hot mess. [00:45:22] Speaker 01: And just to be clear, we're going to go back and look into this, and you all should go back and look into this. [00:45:27] Speaker 01: If we feel that it's necessary, we'll request briefing from the parties. [00:45:31] Speaker 01: If we feel we can perfect jurisdiction by going back to the district court and rescinding a conditional dismissal, we will suggest as much so that the whole case doesn't have to start over from scratch. [00:45:43] Speaker 01: So we will all go back and take a look at this. [00:45:45] Speaker 01: If we want more briefing from you, we will ask for it. [00:45:47] Speaker 00: I've got one more question before you sit down. [00:45:51] Speaker 00: Can you address this whole all-or-nothing proposition with respect to damages? [00:45:56] Speaker 00: There was a discussion that Chief Judge Moore had with opposing counsel about that. [00:46:00] Speaker 00: That it would basically be the same when there was a finding of infringement on just one versus multiple patents. [00:46:04] Speaker 00: I want to know what your position is on that. [00:46:06] Speaker 03: So our position is that we raise, as part of our J-Mall briefing, objections to the verdict on damages because, based on the entire market value rule, [00:46:15] Speaker 03: Simply put, this is a very long production line. [00:46:18] Speaker 03: The sterilization and filling of the bottles portion of the line is only a small part of the line. [00:46:22] Speaker 03: You also, for example, have to have sterile food. [00:46:27] Speaker 00: Let's say we only find reversal on, let's say, one pad. [00:46:31] Speaker 00: You can use the hypothetical that Judge Hughes previously provided. [00:46:35] Speaker 00: I want to just understand what would need to happen with respect to damages. [00:46:38] Speaker 03: You would need to remand the case to the district court for the district court to consider in the first instance the damages questions that were presented on J-Mall and whether any sort of remittitor or alteration of the damages verdict would be appropriate, or whether a new trial on damages is also necessary. [00:47:02] Speaker 01: All right. [00:47:05] Speaker 01: There we go. [00:47:06] Speaker 01: How much did he hold before? [00:47:08] Speaker 01: right. [00:47:08] Speaker 01: Six. [00:47:09] Speaker 01: Thank your honor. [00:47:14] Speaker 04: First I want to give you the site but I told you I would give you that APTX three one four six. [00:47:20] Speaker 04: And in that that portion of the testimony of Dr. Blackburn was asked essentially did you for him for a patent and he said is based on the evidence he saw. [00:47:29] Speaker 04: He saw that the full profits were at risk for each of the three patents, and so there was no difference between the patents when it came to that issue. [00:47:36] Speaker 04: So there is some testimony in the record on that, actually from the defendant's profile. [00:47:42] Speaker 04: If I could touch briefly on the claim construction question, the district court got that claim construction 100% correct. [00:47:48] Speaker 04: And we cited, it's at page APPX 6122. [00:47:53] Speaker 04: There were other claims, claims 1 and 16, that were cited continuously sterilized. [00:47:57] Speaker 04: Claims 26 doesn't. [00:47:58] Speaker 04: And so what defendants are saying is that Steuben narrowly defined second stereo region. [00:48:03] Speaker 04: They don't identify disclaimer. [00:48:05] Speaker 04: They don't identify lexicography. [00:48:07] Speaker 04: It was a claim differentiation issue. [00:48:08] Speaker 04: The judge got it correct, 100% correct in our view. [00:48:11] Speaker 04: It's briefed in between their red brief and our gray brief. [00:48:14] Speaker 04: And so we think you'll see that that's a very supportable and correct mental instruction. [00:48:20] Speaker 00: Can you respond on this 54B judging issue that we were discussing with the public counsel, please? [00:48:24] Speaker ?: Yeah. [00:48:26] Speaker 04: Defendants asked for 54B. [00:48:27] Speaker 04: We resisted it. [00:48:29] Speaker 04: They proposed the judgment that was entered. [00:48:31] Speaker 04: My recollection, and again, this wasn't in the briefing, so this is my best recollection, was that we had said that the judgment of validity or no in validity should be included so that they could appeal it, including the waiver. [00:48:43] Speaker 04: They chose not to, so they asked the district court to not put that in the judgment. [00:48:47] Speaker 04: Again, it's my recollection. [00:48:50] Speaker 04: The district court agreed. [00:48:51] Speaker 04: He didn't explain why. [00:48:52] Speaker 04: There was a joint letter that went in, a letter of call. [00:48:55] Speaker 04: But at the end of the day, I would assume if they wanted to appeal that and they wanted to challenge that finding, they could have asked the government or filed a lawsuit, one of the two. [00:49:06] Speaker 04: There is a patent that has stayed below. [00:49:11] Speaker 04: It's an 013 patent. [00:49:12] Speaker 04: We prevailed in a re-exam, so that was part of the reason for the 54B, was there was another patent in this case. [00:49:18] Speaker 02: Are you suggesting that because they didn't put it in the final judgment, that they somehow agreed to dismiss those claims or the like? [00:49:31] Speaker 02: I wasn't. [00:49:33] Speaker 02: I guess you're asking me. [00:49:35] Speaker 02: I think the problem is, whatever that judgment said is not a final judgment if it didn't dispose of the counterclaims. [00:49:45] Speaker 02: Well, I think because it's a 54B judgment, it's a partial judgment that allows... It still has to be a final judgment, and it has to meet the right criteria for a 54B judgment. [00:49:58] Speaker 02: We're gonna get briefing on this. [00:49:59] Speaker 02: Okay, don't waste your time on this. [00:50:01] Speaker 01: Okay, why don't you touch upon your substantial evidence for your 112-6. [00:50:08] Speaker 01: How do you focus on what you think he offered to explain why it's not just identity of function, but why the structures themselves are substantially similar? [00:50:21] Speaker 01: What is the substantial evidence for that? [00:50:23] Speaker 04: So, Dr. Schrodinger explained that they both hold the conveyor plate and the... Oh, sorry. [00:50:28] Speaker 04: APX3101, if that's actually where your honor is looking to hold the council. [00:50:37] Speaker 01: Okay, we're on 3.101, 406? [00:50:39] Speaker 01: 406, correct. [00:50:40] Speaker 04: And so he explained that the conveyor holds the bottles by the bottom, that's the way. [00:50:45] Speaker 04: He explained that the neck gripper holds the bottles by the neck, that's the way. [00:50:48] Speaker 04: And he said in the context of the filling function, and so it's important to remember, it's got to be in the context of the claim function, he's saying the difference between holding a bottle by the bottom and holding it by the neck is insubstantial when we're talking about the function of filling. [00:51:01] Speaker 04: And so what he was doing there was following the IMS case, [00:51:05] Speaker 04: and putting it in the proper context of, we're not talking about a claimed invention that's directed to new ways of moving bottles. [00:51:12] Speaker 01: But this isn't like, for example, function isn't supporting the bottle while it's being filled. [00:51:17] Speaker 01: Because then, holding it from the bottom of the neck, there might be some functional difference. [00:51:21] Speaker 04: Exactly, Your Honor. [00:51:22] Speaker 04: And that's what I think, that's what Dr. Shrone was explaining there in the portions that Mr. Rosen all cited. [00:51:27] Speaker 04: and so we think that there is substantial evidence as we've cited in there. [00:51:32] Speaker 04: I don't necessarily have anything else that I needed to say. [00:51:36] Speaker 01: Excellent. [00:51:37] Speaker 04: Thank you so much.