[00:00:00] Speaker 01:
for argument this morning is 22-188 for Wisconsin Alumni Research Foundation versus Mr. Chu.

[00:00:08] Speaker 01:
Good morning.

[00:00:09] Speaker 01:
Please proceed.

[00:00:11] Speaker 04:
Good morning.

[00:00:12] Speaker 04:
Morgan Chu for the Wisconsin Alumni Research Foundation.

[00:00:16] Speaker 04:
With me is my colleague to my right, Amy Proctor, and to her right, Stephanie Adamani, who is the general counsel of WARP.

[00:00:28] Speaker 04:
I want to start with Warf 2.

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There should not be any claim preclusion because the issue in the first case has to be the same as the issue in the second case.

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The first case we were sought to add the newer Apple processors, A9 and 10.

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Apple objected, opposed, and they were six.

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Can I ask you just to get one fact straight?

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Do you now agree or accept that with respect to the claim limitations

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that are relevant for infringement, the A9, A10 processor is materially the same as the A7, A8.

[00:01:18] Speaker 04:
We do not.

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What happened is there was just a tiny bit of discovery in WARF II.

[00:01:27] Speaker 02:
Right.

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I know that this was once a subject

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of some uncertainty.

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I don't quite remember in your briefs here disputing that any longer.

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We now have the software, and we have a declaration from somebody from Apple that at least asserts they are relevantly the same.

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It includes excerpts of code, which I'm afraid I cannot read, so I can't tell.

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I don't see anything to the contrary.

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And in particular, I don't see contrary assertions in your blue or gray brief.

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Maybe I've missed them.

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In our opening brief, I think at about page 47 and surrounding, we make a reference to it's mostly one paragraph in the district court's opinion.

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And where the district court said there was undisputed evidence that things were the same.

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And I can cite the portions of the record where we hotly dispute it.

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An example is Appendix 13067, which is an Apple document that shows a prediction table that uniquely identifies the load instructions that would cause the misspeculation.

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There are other citations to the record.

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I'm sorry.

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I guess I'm just trying to get one that there's a lot going on in this case.

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It's enormously confusing.

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There are a variety of doctrines in play about a problem that can be described at a common sense and high level of generality where that common sense description of what's going on does not on its own resolve how to

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does not point to a single solution.

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So we're talking about very specific doctrines that involve competing policies and themes.

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One of the facts that is relevant sometimes for issue preclusion, that's sometimes relevant for claim preclusion,

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sometimes relevant for, let's call it, for Kessler, whatever that may be, is the material identity or difference of the product in case two and the product in case one.

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And I'm just trying to, I took from your briefs

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that none of the arguments being made said, we still think that the relevant code in the A9, A10 is different with respect to infringement from the relevant code in the A7, A8, and A8 plus.

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If I can explain.

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We don't know.

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And the reason is, aside from having an opportunity to look at some code, there was no other discovery.

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Can you point to me something in either your blue or gray brief that says it is still a open and contested issue whether the A9, A10 software module has the same features that were found

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with respect to the A7, A8 to be not literally infringing.

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And this right that this will be?

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Yes.

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Yes.

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I think I understand your Honor's question.

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At the top of page 47 of the opening brief, the issue actually being discussed there is claim vitiation.

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But what the district court said

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It based its holding on claim initiation, which it raised to its fonte, on the, quote, undisputed evidence about the LSD predictor.

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The very next sentence, but Wharf has consistently disputed this finding, and the record establishes that it is, in fact, disputed.

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I need to add to that.

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what the state of discovery in WARF II was.

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If I may, Your Honor, we did have an opportunity to review some source code.

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We had no written discovery, interrogatories, other document productions of any kind.

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We did not take any fact depositions.

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There were no expert reports.

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There were no expert

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depositions.

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And then all of the activity in Wharf 2 was stayed pending appeal.

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So we did see that declaration that Apple submitted when the case went back to the district court without additional discovery.

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It was a declaration that was conclusory.

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Can I just ask, and then I will leave you alone on this topic.

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So the document at 13067 is a document from 2011.

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It could not possibly have been talking about A9, A10, could it?

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Let's see.

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I thought that didn't come up until, I don't know, 2015 or 2016?

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Let me get the versions of the product.

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Bad windstorm names.

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I can't keep track of them.

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Yes, right, right, right.

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So the trial

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was in 2015, October.

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We were permitted to.

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And just before trial, you tried to get the A9A10 into the case.

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Oh, actually earlier.

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Well, somewhat before trial.

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OK.

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But we did.

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2014, maybe?

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No.

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I don't remember the exact date.

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But what's relevant here, before the trial, we did file what we call for shorthand.

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2014 is when the discovery motions were presented.

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So at that point, I guess, A9, A10 were enough in process, but only

[00:08:02] Speaker 04:
Well, here's what the play was before the district court.

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Earlier than when we filed the complaint for Wharf 2, we wanted to add A9 and 10 to Wharf 1.

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And as I mentioned earlier, that was opposed by Apple, and they were successful.

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There was some passage of time, but it's still before the trial in Wharf 1

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which was, I believe, October 2015.

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I guess I'm just getting back to this point.

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And I'm sorry it takes so long.

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But it's sort of foundational for how to think about everything else.

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You cited a document from 2011 about how software works.

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I don't understand how that document could be about the point that I'm getting at, which is whether the A910 software works differently in a relevant respect from the A7A8.

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I understand that.

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And I think my main point is we didn't have an opportunity to take normal discovery because, aside from what I've already mentioned, discovery was completely stayed.

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So we can't agree with the conclusory allegation in a declaration from 2019.

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And we want the opportunity to test that.

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And this is pretty important.

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We're not asking to go back on literal infringement.

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We are only asking in both Warf 2 and Warf 1 to have an opportunity to try doctrine of equivalence.

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We certainly didn't have the opportunity to do that in Warf 2.

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And we didn't do that.

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I'm sorry.

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You did have an opportunity to do it.

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You just decided it wasn't worth the cost

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Apple introducing a recent patent of its own?

[00:09:57] Speaker 04:
I may have misspoken.

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In my sentence, I intended to state, in Warf 2, we had no opportunity to try doctrine of equivalence, or for that matter, literal infringement.

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It never went to trial.

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All the discovery was stayed.

[00:10:16] Speaker 04:
Warf 1, let me address that, because I think it's an important question you're asking about.

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Wharf 1 is parallel to this court's decision in the Exxon versus Lubrizol case.

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In Exxon, the plaintiff Exxon pleads literal and doctrinal equivalence infringement and litigates the case with that.

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So too here in Wharf 1.

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Let me just tell you how I'm thinking about Exxon so you can address what's in my mind.

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Exxon involved a situation that I think is different from this.

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In Exxon 1, the district court gave Exxon the claim construction it asked for.

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And Exxon 1 in footnote number 5 in Exxon 1 says, at that point, the question of literal infringement was, and I think I'm quoting correctly, essentially uncontested.

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And so in Exxon 2, this court says, in a relatively brief section about the abandonment issue after it discussed the mandate issue, said that the doctrine of equivalence issue became moot

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once the district court granted Exxon the claim construction.

[00:11:34] Speaker 02:
We don't have that.

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We have a situation in which it's perfectly clear that although on appeal, we did in fact change the claim construction by making the choice that at trial was

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presented as a dispute between the two sides about the scope of the language of the claim construction language, but not as a claim construction dispute.

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So it was very much not moot, not pointless for you in wharf one trial to have presented your equivalence case in a way that it was utterly pointless because completely unnecessary, no possibility of being necessary.

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in Exxon 1?

[00:12:20] Speaker 04:
My understanding of Exxon 1 is there was a claim construction contested where the court's claim construction would allow a jury to make a finding of infringement.

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Otherwise, it could have been decided on a motion before trial or during trial or at the close of evidence.

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So, too, in Wharf 1, there was a claim construction by the court

[00:12:47] Speaker 04:
which allowed the jury to find infringement, literal infringement.

[00:12:52] Speaker 03:
When you say there was a claim construction in Wharf 1 by the district court, you just mean the plain and ordinary meaning.

[00:12:57] Speaker 04:
Yes.

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Construction.

[00:12:58] Speaker 04:
Yes.

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The district court did say, but did not put into a jury instruction, the word single, that the prediction would be associated with a single load instruction.

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But it was plain and ordinary.

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Right, but then it appears that the parties had different conceptions of what the plain and ordinary meaning of particular was.

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That's true.

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That's why Powell's expert report had an understanding of particular that ultimately matched up with what this court ruled the plain and ordinary meaning of particular is.

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Is that right?

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There are a couple pieces there.

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In Wharf 1, the two parties had different interpretations applied to the evidence as to what plain and ordinary meant.

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In the Exxon case, there was also a difference because the issue of infringement ended up going to the jury.

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In both cases, the plaintiff could prevail before the jury on literal infringement.

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In Wharf 1,

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wharf plaintiff withdrew the doctrine of equivalence.

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In the Exxon case, the plaintiff Exxon withdrew the doctrine of equivalence.

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There's an argument about whether the withdrawal in wharf one was tactical or strategic, but so too in Exxon.

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They could have gone to trial on the doctrine of equivalence.

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They chose not to.

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So presumably, it's a tactical or strategic decision at trial.

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I realize I'm taking up more than my share of time, but just the point that

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that I guess I'm inclined to read Exxon more narrowly as in the end dependent on Exxon 2's use of the word moot linking to Exxon 1 footnote number 5's statement that once the claim construction asked

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for by Exxon was given by the district court, the question of literal infringement was essentially uncontested.

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Maybe that could have been therefore a ground for a JMAW motion of infringement, but that's not the point.

[00:15:24] Speaker 02:
That doesn't mean that there was a kind of

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a significant dispute to which an equivalence case would be relevant at the trial.

[00:15:35] Speaker 02:
There wasn't an exon.

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There was here because of the different conceptions of what plain and ordinary meaning.

[00:15:41] Speaker 04:
I think what's important is that the issue of literal infringement

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was decided by the jury under the trial court's claim constructions.

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The jury presumably could have decided the case either way.

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In both cases, there was a finding of literal infringement.

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In both cases on appeal, this court applied a new claim construction to the evidence and found that literal infringement could not be possible.

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And in Exxon, Exxon went back to the district court and said, we would like to try the case on doctrinal equivalence.

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District court said no.

[00:16:19] Speaker 04:
Exxon goes back on appeal and says, we ought to be able to try doctrine of equivalence.

[00:16:27] Speaker 04:
This court on the second appeal says yes.

[00:16:30] Speaker 04:
So too in the Wharf case.

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We lost before this court on a new application of claim construction applied to the evidence where this court found no reasonable jury could find literal infringement.

[00:16:45] Speaker 03:
Just so I understand, is it your view that

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Under Exxon, there's really no way for a plaintiff to abandon a doctrine of equivalence theory in a first litigation that would waive the DOE in a subsequent litigation.

[00:17:05] Speaker 04:
I could think of ways where a plaintiff could say, I hear by way forever, or some other set of facts.

[00:17:14] Speaker 04:
But they're very parallel with the Exxon case.

[00:17:20] Speaker 04:
And there were arguments in Exxon case.

[00:17:22] Speaker 03:
There's something a little different here, though.

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One could argue that what happened here between the parties was that there was a bargain for exchange in the fourth one when it came to

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maybe giving up the DOE theory in exchange for Apple not introducing its recently granted patent.

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And in that way, there's something different and a little more calculated than just choosing to withdraw DOE once a favorable claim construction was given in a markman order.

[00:17:57] Speaker 04:
So I agree with that basic outline.

[00:18:01] Speaker 04:
But in both cases, the plaintiff was making, I'll call it a tactical decision, for whatever reason, not to pursue DOE.

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In both cases, the plaintiffs, Exxon and Wharf, thought they had a claim construction where they could prove literal infringement.

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and in both cases this court ended up reversing saying there's no literal infringement it can only be DOE.

[00:18:26] Speaker 01:
I want to go back before my colleagues go off perhaps on other issues just to Judge Toronto's first point because I think it will come back to us in terms of whether the products are similar.

[00:18:40] Speaker 01:
So you pointed to your blue brief but on your gray brief pages 29 to 30

[00:18:46] Speaker 01:
I understood you to say, when you're talking at the top of 30, brought a quote, this is a statement made by Apple, not Wharf.

[00:18:58] Speaker 01:
It is also not inconsistent with Wharf's position.

[00:19:02] Speaker 01:
And we're talking about a statement that they are not colorfully different.

[00:19:09] Speaker 01:
So I understood.

[00:19:11] Speaker 01:
That's why I've gone through this whole case, understanding that there was no dispute between the parties about whether or not the products were colorably different.

[00:19:19] Speaker 04:
Well, maybe that was not as clearly worded as statement.

[00:19:26] Speaker 04:
But saying something is not inconsistent isn't saying that one agrees.

[00:19:33] Speaker 04:
This is a...

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This is a discussion in the prior page about whether there are or aren't differences.

[00:19:42] Speaker 04:
And it's for literal infringement.

[00:19:45] Speaker 04:
In the Wharf opening brief at page 27, I think there's a clearer statement.

[00:19:57] Speaker 02:
The statement there was an insufficient basis in the record for such a finding?

[00:20:01] Speaker 04:
Yes.

[00:20:01] Speaker 02:
Right.

[00:20:03] Speaker 02:
As far as I could tell, you never made anything more of that.

[00:20:06] Speaker 02:
I mean, it's one thing to say there's an insufficient basis in the record for that finding and then say, so it is our position that that remains a contested issue, and you must conduct your analysis both of reopening of Orph 1 and of

[00:20:24] Speaker 02:
We haven't even gotten to the really hard stuff, the Warp 2 case.

[00:20:28] Speaker 04:
Your Honor, I may have missed it.

[00:20:30] Speaker 04:
And when you were referring to that, were you referring to the earlier pages we were discussing?

[00:20:35] Speaker 02:
No, no, no, the way, page 27.

[00:20:37] Speaker 04:
Yes.

[00:20:39] Speaker 04:
You're at the top?

[00:20:41] Speaker 02:
Right.

[00:20:41] Speaker 04:
OK.

[00:20:42] Speaker 02:
The district court can make an assertion for which there's an insufficient basis of the record, which then goes essentially undisputed on appeal, and then you're stopped with it.

[00:20:54] Speaker 04:
If I could just frame what the issue is that's being discussed here.

[00:20:57] Speaker 04:
The district court made a finding based on judicial estoppel.

[00:21:02] Speaker 04:
The first requirement of judicial estoppel must be that a party's later position in the second case

[00:21:09] Speaker 04:
must be clearly inconsistent with its earlier position.

[00:21:14] Speaker 04:
Wharf never agreed not to assert DOE under this court's new controlling construction, which occurred three years later.

[00:21:24] Speaker 04:
That's an exact parallel with the Exxon case.

[00:21:29] Speaker 04:
This court, on appeal in the Exxon case, second appeal, it said, how can we hold Exxon to a claim construction that this court created anew on the first case?

[00:21:43] Speaker 01:
But you're talking about the Wharf two products now, not the Wharf one.

[00:21:51] Speaker 04:
In terms of judicial estoppel,

[00:21:56] Speaker 04:
Yes, that's right.

[00:21:59] Speaker 04:
And I think it's being applied, was applied by the district court basically to conclude you're out of luck.

[00:22:08] Speaker 04:
You had an opportunity in the first case.

[00:22:11] Speaker 04:
And what we're saying is judicial estoppel cannot apply because the legal position was not clearly inconsistent because

[00:22:25] Speaker 04:
The controlling claim construction was three years later.

[00:22:28] Speaker 01:
But when you agreed in war for one to.

[00:22:33] Speaker 01:
eliminate, avoid DOE.

[00:22:36] Speaker 01:
You did so before you had a jury verdict.

[00:22:38] Speaker 01:
So you didn't know what the claim construction, how this issue was going to come out, and what the claim construction might actually be by the federal circuit.

[00:22:47] Speaker 01:
So you didn't preserve your right under this claim construction or under what we think this claim construction is.

[00:22:53] Speaker 01:
You gave it up for a very explicit purpose.

[00:22:56] Speaker 01:
And that was the purpose that served you well.

[00:22:58] Speaker 01:
And you made a trade-off in the war for one.

[00:23:01] Speaker 01:
So your Warf 1 concession and submission and agreement had nothing to do with, I mean, you thought one thing, the other side thought something else, and the Federal Circuit did with whatever we did.

[00:23:15] Speaker 01:
But your concession with regard to DOE wasn't predicated on any of that.

[00:23:19] Speaker 01:
Nobody knew how it was going to turn out.

[00:23:21] Speaker 04:
It actually was predicated, knowing that there was a claim construction by the district court

[00:23:27] Speaker 04:
that would be consistent with the finding of literal infringement.

[00:23:32] Speaker 04:
That was the exact situation in Exxon.

[00:23:35] Speaker 04:
We did give it up before the case went to the jury.

[00:23:38] Speaker 04:
That was the exact situation in Exxon.

[00:23:41] Speaker 04:
In both instances, the plaintiff, I'll call it for tactical reasons, for whatever reason, decided not to pursue the doctrine of equivalence.

[00:23:52] Speaker 04:
It did want to save some time.

[00:23:53] Speaker 01:
Well, we did know why they decided not to.

[00:23:56] Speaker 01:
At least the record indicates they decided not to pursue it because they didn't want Apple to be able to put on the patents that they had.

[00:24:05] Speaker 01:
Seems like, I know both of you read the record a little differently, but it doesn't seem like to me like that points in dispute.

[00:24:12] Speaker 04:
My point about the Exxon case

[00:24:15] Speaker 04:
is we do know from the opinion that DOE was not put before the jury.

[00:24:19] Speaker 04:
It was voluntarily withdrawn.

[00:24:22] Speaker 04:
I'm assuming very good counsel decided for tactical or strategic reasons.

[00:24:28] Speaker 04:
Sometimes it's a matter of simplicity, for closing argument, for the jury instruction, for the verdict form, whatever it is.

[00:24:34] Speaker 04:
There can be tactical reasons to withdraw it.

[00:24:37] Speaker 04:
And I think what you're pointing out is, in addition to having a claim construction consistent with literal infringement in WARF 1, there may have been tactical reasons that WARF had in mind for voluntarily not pursuing DOE.

[00:24:54] Speaker 04:
It doesn't mean, if one follows Exxon, that the DOE issue is extinguished.

[00:25:01] Speaker 04:
if I may save some time for it.

[00:25:04] Speaker 01:
No, don't worry about it.

[00:25:06] Speaker 01:
OK, then I want to be as helpful as possible.

[00:25:08] Speaker 01:
I appreciate it, but don't worry about the time.

[00:25:10] Speaker 01:
Thank you.

[00:25:11] Speaker 02:
So why should we not view the issue

[00:25:20] Speaker 02:
as the issue of infringement.

[00:25:24] Speaker 02:
So that in May of 2022, when the district court in the Wharf 1 case entered a judgment of non-infringement, that creates issue preclusion effect.

[00:25:38] Speaker 02:
Not the 2017 judgment.

[00:25:41] Speaker 02:
maybe not even our 2018 judgment, but the May 2022 judgment entered the same day as the judgment on the Wharf II case.

[00:25:49] Speaker 02:
Why does that not create issue preclusive effect?

[00:25:53] Speaker 02:
And as a shorthand, essentially for the reason that Judge Stark sets out in a couple of paragraphs in his Galderma.

[00:26:00] Speaker 04:
OK, let's see.

[00:26:03] Speaker 04:
Different little pieces there.

[00:26:04] Speaker 04:
Let me see if I can tackle all of them.

[00:26:08] Speaker 04:
If there was to be issue preclusion for Wharf 2 because of the final judgment on the first appeal to this court in Wharf 1, and that that would preclude DOE, the same would hold true in the Exxon case.

[00:26:25] Speaker 04:
Second point.

[00:26:26] Speaker 04:
As Your Honor just said, it relates to issue preclusion.

[00:26:31] Speaker 04:
One of the requirements for issue preclusion is that the issue in the first case and the second case must be identical.

[00:26:40] Speaker 04:
The United States Supreme Court in being the- Right, right.

[00:26:44] Speaker 02:
But look, is it not perfectly clear that there is a line between that one needs to make a distinction?

[00:26:52] Speaker 02:
And the problem is how to make the distinction.

[00:26:54] Speaker 02:
different evidence, different theories in support of a position on the same issue that you don't get a second chance to do.

[00:27:02] Speaker 02:
Different issues, yeah.

[00:27:03] Speaker 02:
For issue preclusion, you do get a second chance.

[00:27:05] Speaker 02:
The question is, why should a DOE case not be on the first

[00:27:12] Speaker 02:
side of that line.

[00:27:13] Speaker 04:
Because the Supreme Court's test on whether the two issues are identical whenever issue preclusion comes up is are the legal standards for those two issues the same?

[00:27:26] Speaker 02:
But the trouble is that as you've just formulated it, you are assuming the answer to the question of whether they are the same issue.

[00:27:35] Speaker 02:
It's absolutely clear

[00:27:37] Speaker 02:
that if the issues involve different elements, facts, it's not clear.

[00:27:47] Speaker 04:
Different legal standards.

[00:27:48] Speaker 02:
Different legal standards.

[00:27:49] Speaker 02:
But that would be equally true of different evidence or theories in support of the same issue.

[00:27:56] Speaker 02:
Discrimination can be proved by words or by circumstantial evidence of intent.

[00:28:03] Speaker 04:
Maybe, but here, and let me go to another piece.

[00:28:08] Speaker 04:
I think you referred to a district court decision, which was conclusory on infringement literally in DOE, later decision by that same district court found completely otherwise with the question of validity, and there is some

[00:28:27] Speaker 04:
connection there and then this court addressing whether a finding of validity or invalidity on certain grounds would extinguish

[00:28:41] Speaker 04:
the validity issues on other grounds, and this court found otherwise.

[00:28:47] Speaker 04:
And I can point you to the point.

[00:28:49] Speaker 01:
No, we appreciate that.

[00:28:50] Speaker 01:
We're talking about infringement.

[00:28:52] Speaker 04:
Yes.

[00:28:53] Speaker 01:
And I'm saying the same is true.

[00:28:54] Speaker 01:
It's a question of infringement.

[00:28:55] Speaker 04:
Yes.

[00:28:55] Speaker 01:
And why

[00:28:58] Speaker 01:
It's not legitimate to consider this the same issue or related enough, that it's a different, perhaps a different argument with respect to whether it's infringement or not.

[00:29:10] Speaker 01:
But why isn't this?

[00:29:12] Speaker 01:
It's clearly different than validity.

[00:29:14] Speaker 01:
Validity isn't going to help you here.

[00:29:16] Speaker 04:
I think you would completely erase the Exxon precedent of this court.

[00:29:22] Speaker 02:
But the Exxon case was a single case.

[00:29:24] Speaker 02:
There was no question of preclusion across cases at all.

[00:29:28] Speaker 02:
This is just what you could do on remand of the very same case.

[00:29:31] Speaker 04:
The reason I'm citing it here is I think the point of the prior question had to do with if infringement has been decided, it's decided for DOE and literal and then on appeal, the first appeal in the Exxon case.

[00:29:49] Speaker 04:
The question was, is it really decided?

[00:29:52] Speaker 04:
Because the only thing literally decided

[00:29:56] Speaker 04:
was literal infringement.

[00:30:00] Speaker 04:
And Exxon said, wait, that doesn't mean I can't go to trial on DOE.

[00:30:06] Speaker 01:
What about Nystrom?

[00:30:07] Speaker 01:
I mean, what about a case like Nystrom, where the parties stipulate to a dismissal that stipulate non-infringement?

[00:30:15] Speaker 01:
Is that broad enough to cover DOE and literal?

[00:30:18] Speaker 01:
When the parties say non-infringement, we agree there's no infringement here?

[00:30:23] Speaker 04:
I'm glad you brought up Nystrom.

[00:30:26] Speaker 04:
And it is different.

[00:30:27] Speaker 04:
And this would be an instance for Judge Chan, which would extinguish the issue.

[00:30:33] Speaker 04:
In Nystrom, the plaintiff had an unfavorable construction.

[00:30:39] Speaker 04:
And it actually moved for summary judgment to be entered against it on infringement.

[00:30:46] Speaker 04:
And the Nystrom court said, well, you made the motion

[00:30:51] Speaker 04:
for summary judgment of infringement against yourself.

[00:30:55] Speaker 04:
And that necessarily embraced both literal and DOE.

[00:31:00] Speaker 04:
Completely different in our particular case, because there was a distinction made between literal and DOE as there was in the Exxon case.

[00:31:10] Speaker 03:
DOE wasn't actually litigated in Nice Trump, though, right?

[00:31:18] Speaker 04:
Yes, it was in the following sense.

[00:31:21] Speaker 04:
the claim construction was adverse to the patent owner.

[00:31:25] Speaker 04:
And the patent owner decided it wanted to take everything up on appeal.

[00:31:29] Speaker 04:
That's why it made a summary judgment motion against its position to get it up on appeal.

[00:31:35] Speaker 04:
So they could have thought to themselves, we still have a DOE case.

[00:31:39] Speaker 04:
They didn't say that.

[00:31:41] Speaker 04:
They didn't separately litigate DOE.

[00:31:43] Speaker 04:
But any reasonable reading when the patent owner makes a summary judgment motion

[00:31:50] Speaker 04:
against its position on infringement, it will embrace both literal and DOE.

[00:31:55] Speaker 04:
Certainly the lawyers would know how to do that.

[00:31:57] Speaker 04:
They did not do that.

[00:31:59] Speaker 04:
It's completely different in Exxon, where a distinction was made.

[00:32:05] Speaker 04:
Fable claim construction in Exxon,

[00:32:07] Speaker 04:
Exxon's counsel, for tactical reasons, decides to withdraw DOE.

[00:32:12] Speaker 04:
It doesn't go to the jury.

[00:32:13] Speaker 04:
They could have brought it to the jury.

[00:32:15] Speaker 04:
So too in war.

[00:32:17] Speaker 04:
There was a claim construction, consistent with infringement.

[00:32:21] Speaker 04:
You can say it's for tactical reasons.

[00:32:23] Speaker 04:
You can say that there were other variables at play, but it doesn't matter.

[00:32:28] Speaker 04:
It was voluntarily withdrawn, and it wasn't decided.

[00:32:35] Speaker 04:
Thank you very much.

[00:32:36] Speaker 02:
I just want to ask one other question.

[00:32:38] Speaker 02:
Oh, sure.

[00:32:38] Speaker 02:
As many as you like.

[00:32:39] Speaker 02:
It's not an entirely well-formed question.

[00:32:41] Speaker 02:
So claim preclusion.

[00:32:47] Speaker 02:
If you go back to the Foster case, which relies on the Young International Trade Commission case, Foster seems to recognize that

[00:33:08] Speaker 02:
A later activity can be the subject of claim preclusion under a no colorable differences standard.

[00:33:21] Speaker 02:
It doesn't have to be the identical thing.

[00:33:24] Speaker 02:
So the analogy here would be, let's assume

[00:33:29] Speaker 02:
which I know you're now disputing, that the A9, A10 are not colorably different from the A7, A8 with respect to infringement.

[00:33:37] Speaker 02:
And then one did a pragmatic analysis, which I think is the term borrowed from the restatement of judgments that we used in our discussion of claim preclusion in simple error, to say the infringement claim

[00:33:53] Speaker 02:
about A-9, A-10 is not materially different from the infringement claim made against the same defendant in Wharf 1.

[00:34:04] Speaker 02:
And so claim preclusion should apply.

[00:34:06] Speaker 02:
Why should it not?

[00:34:08] Speaker 04:
Let me read just a little bit more detail what happened in Wharf 1.

[00:34:13] Speaker 04:
The case is filed in 2014.

[00:34:18] Speaker 04:
Along the way,

[00:34:20] Speaker 04:
The plaintiff worse says, hey, we know A9 and 10 are coming down the pike.

[00:34:26] Speaker 04:
We want to add it.

[00:34:28] Speaker 04:
Apple objects, opposes.

[00:34:30] Speaker 04:
The court not only cited with Apple, it said, I'm drawing a bright line in the sand.

[00:34:35] Speaker 04:
Don't cross that line.

[00:34:37] Speaker 04:
You can't bring A9 or A10 in.

[00:34:40] Speaker 02:
Let me assume that there was no voluntary claim.

[00:34:44] Speaker 02:
Absolutely.

[00:34:45] Speaker 04:
OK, let me jump to the last piece.

[00:34:48] Speaker 04:
Because I think, Your Honor, you're assuming how A9 and A10 operate for relevant purposes.

[00:34:57] Speaker 04:
Aside from what I've already mentioned, we had no ability to test that.

[00:35:00] Speaker 04:
We had no discovery.

[00:35:03] Speaker 04:
If we go back to the district court and are true.

[00:35:06] Speaker 02:
And I'm sorry to do this again.

[00:35:07] Speaker 02:
I want to assume that away.

[00:35:10] Speaker 02:
I know you dispute that.

[00:35:11] Speaker 02:
OK.

[00:35:11] Speaker 02:
Right.

[00:35:12] Speaker 02:
So the question is, why would

[00:35:15] Speaker 02:
claim preclusion not apply on the assumption that these were materially the same.

[00:35:21] Speaker 02:
Is it enough that you did not voluntarily claim split, you tried to get it into the same case and were rebuffed?

[00:35:30] Speaker 02:
Is that a sufficient reason to reject claim preclusion?

[00:35:35] Speaker 04:
Let me take my understanding of your last hypothetical.

[00:35:40] Speaker 04:
If the latter products, A9 and 10,

[00:35:45] Speaker 04:
We dispute it are exactly the same.

[00:35:47] Speaker 04:
We actually don't know, but let me just assume it.

[00:35:50] Speaker 04:
I think that's part of the court's hypothetical question.

[00:35:53] Speaker 04:
Under certain circumstances, could claims for infringement, literal and DOE, be extinguished?

[00:36:02] Speaker 04:
Yes, under some set of circumstances.

[00:36:04] Speaker 04:
But we've assumed things that are really very different from this particular case.

[00:36:10] Speaker 04:
So in your hypothetical, literal and DOE was decided against the patent donor in the first case.

[00:36:19] Speaker 04:
And second, the newer products are absolutely identical.

[00:36:24] Speaker 04:
And in fact, if they came after the judgment, the old Kessler doctrine would have extinguished those claims, the whole point being that if

[00:36:39] Speaker 04:
There are other products, they're exactly the same, that come after a final finding of non-infringement.

[00:36:47] Speaker 04:
The defendant should be free to sell the products, right?

[00:36:50] Speaker 02:
But that's not... Are you accepting that if those were the facts that the Wharf II... accepting all those facts that we could rely on the Kessler Doctrine here?

[00:37:04] Speaker 02:
The reason I ask that is that, as you doubtless know, a few years ago we relied on the Kessler Doctrine and personal web.

[00:37:12] Speaker 02:
The Supreme Court said, hey, this is kind of interesting, asked for the government's views.

[00:37:16] Speaker 02:
The government said this Kessler Doctrine is actually all wrong.

[00:37:19] Speaker 02:
So the ice is a little thin, maybe.

[00:37:22] Speaker 04:
I agree.

[00:37:23] Speaker 04:
I was just giving an example where all the claims might be extinguished, building upon Your Honor's hypothetical.

[00:37:30] Speaker 04:
I think the best view was expressed by Judge O'Malley.

[00:37:35] Speaker 04:
There used to be, for claim preclusion, a mutuality requirement.

[00:37:41] Speaker 04:
that was done away with by the Supreme Court.

[00:37:44] Speaker 04:
So the Kessler doctrine, I think, should no longer exist.

[00:37:49] Speaker 04:
It's unnecessary.

[00:37:51] Speaker 04:
So one only needs to go to either claim preclusion or issue preclusion, and neither should apply here.

[00:38:02] Speaker 01:
Well, in that same SG brief, SG's brief, the SG suggests at least that issue preclusion could cover DOE and literal infringement as one, because it's just infringement based on different evidence or different theories.

[00:38:19] Speaker 01:
So I assume you disagree with that.

[00:38:21] Speaker 04:
Yes, because if that was the case,

[00:38:26] Speaker 04:
The Exxon decision wouldn't stand if there was a final judgment of no literal infringement, and somehow a claim based on DOE gets merged into that.

[00:38:41] Speaker 04:
I could see.

[00:38:41] Speaker 04:
Maybe that could be the state of the law, but that's just not the state of the law.

[00:38:46] Speaker 03:
One last question about the CBSG's brief.

[00:38:50] Speaker 03:
Mm-hmm.

[00:38:51] Speaker 03:
that brief recasts some of our Kessler doctrine cases as being perhaps about issue preclusion.

[00:39:03] Speaker 03:
Do you agree with that?

[00:39:07] Speaker 03:
In other words, is speed track an issue preclusion case?

[00:39:11] Speaker 04:
Yes.

[00:39:11] Speaker 04:
So I would agree with the following.

[00:39:14] Speaker 04:
The Kessler Doctrine was trying to deal with a particular circumstance.

[00:39:18] Speaker 04:
The law has changed.

[00:39:21] Speaker 04:
So the current state of law, I believe, for this case and other cases, is you go to either claim preclusion or issue preclusion, applying the standard doctrines of both of those.

[00:39:37] Speaker 04:
Period.

[00:39:39] Speaker 04:
In other words, Kessler is historical.

[00:39:42] Speaker 04:
There's no need for it anymore with modern claim and issue preclusion.

[00:39:47] Speaker 04:
And I think that's exactly what Judge O'Malley said.

[00:39:52] Speaker 01:
Thank you very much.

[00:40:14] Speaker 05:
May I proceed, Your Honor?

[00:40:15] Speaker 05:
Please.

[00:40:16] Speaker 05:
May I praise the court?

[00:40:17] Speaker 05:
My name is Bill Lay, and together with my partner, Andrew Danforth, I represent Apple.

[00:40:22] Speaker 05:
Let me start with Apple II, and I think identify three fundamental disagreements we have with Warf II.

[00:40:30] Speaker 05:
Warf II.

[00:40:32] Speaker 05:
Three fundamental disagreements we have with representations that were made to you by Warf.

[00:40:39] Speaker 05:
The first is Exxon has nothing to do with preclusion.

[00:40:44] Speaker 05:
Claim preclusion, issue preclusion, or Kessler.

[00:40:47] Speaker 05:
The second is Nystrom was a waiver case, waiver of DOE.

[00:40:52] Speaker 05:
And the court said so explicitly at page 1285 of the opinion.

[00:40:58] Speaker 05:
It uses the word waiver.

[00:41:00] Speaker 05:
Third, to go to Judge Toronto's question at the outset, this is a place where wrenching events from context and their chronological context

[00:41:10] Speaker 05:
can cause misimpressions.

[00:41:13] Speaker 05:
And the context here, the chronological context, is very important.

[00:41:19] Speaker 05:
Mr. Chu refers to the effort to obtain discovery on A9 and A10 early on in the case.

[00:41:26] Speaker 05:
We opposed.

[00:41:27] Speaker 05:
We opposed because Apple had not yet brought its products to market.

[00:41:31] Speaker 05:
When those products came to market during the pendency of the case and before the appeal to this court, there was discovery.

[00:41:40] Speaker 05:
of the technical aspects of the A9 and A10.

[00:41:44] Speaker 05:
The source code for the A9 was produced.

[00:41:47] Speaker 05:
A declaration was produced.

[00:41:50] Speaker 05:
Documents were produced.

[00:41:52] Speaker 05:
None of those documents, incidentally, are the cyclone document that you discussed with Mr. Chu, which refers to an A7 product.

[00:42:00] Speaker 05:
In addition, their expert, and this is in the appendix that the panel has, their expert went and reviewed

[00:42:10] Speaker 05:
the source code.

[00:42:12] Speaker 05:
All of this occurred before the question of, are these products essentially the same, arose.

[00:42:20] Speaker 05:
And based upon those, we suggest it's important to look at what was said after all of that discovery, after source code, after declarations, after review by their experts.

[00:42:32] Speaker 05:
And this is what the district court thought was important.

[00:42:35] Speaker 05:
At page 15062,

[00:42:38] Speaker 05:
Worf said that the A9 and A10 ships infringed because they operate in the same manner as the A7 ship.

[00:42:47] Speaker 05:
At A6010, it says the A7 products were representative of A9, A9X, A10.

[00:42:57] Speaker 05:
At A7005 to 7006, in the post-trial briefing after the jury verdict in Worf, Worf thought

[00:43:08] Speaker 05:
injunctive relief, it sought supplemental damages, and it sought ongoing royalties.

[00:43:14] Speaker 05:
And what does it say?

[00:43:15] Speaker 05:
It said explicitly, after having all of this information, these are the same infringing designs.

[00:43:23] Speaker 05:
Now, it's true at the end what occurred.

[00:43:26] Speaker 05:
was not that the court precluded Worf from bringing the A9 and 10 products in.

[00:43:33] Speaker 05:
In fact, Apple and the court invited Worf to bring the A9 and A10 products in.

[00:43:38] Speaker 02:
Just for what it's worth, I draw a pretty bright line between what happened before the trial on liability and the proof and what happened later.

[00:43:48] Speaker 02:
And what happened later, it seems perfectly clear,

[00:43:51] Speaker 02:
that both parties had some interest in wrapping up the entire dispute in the scope of the ongoing royalty.

[00:44:02] Speaker 02:
At least there's one point of some, I hope it doesn't matter, but the wharf said,

[00:44:12] Speaker 02:
It's more efficient to go up on appeal, leaving these things out, because you may not need to say anything if Apple wins.

[00:44:21] Speaker 02:
In your brief a few times, you translate that into wood, which Whorf did not say.

[00:44:27] Speaker 02:
But the underlying points about whether

[00:44:32] Speaker 02:
I guess I'm particularly interested in.

[00:44:34] Speaker 02:
Where are the best places, I think you said 15062, where you say that after the remedy stage triggered discovery, where Wharf said, we actually now, having looked at the software, think that with respect to coverage by the claim as we see it,

[00:44:58] Speaker 02:
The A-9 and A-10 are the same as the earlier ones.

[00:45:03] Speaker 05:
Your Honor, the answer in part to your question is that during the trial of Wharf 1 and the post trial proceedings of Wharf 1, Wharf 2 discovery on the technical aspects of the case proceeded.

[00:45:18] Speaker 05:
That's why the A-9 was produced.

[00:45:20] Speaker 02:
That's why there's there... You started, I think you read from three statements.

[00:45:28] Speaker 05:
So let me take them.

[00:45:29] Speaker 02:
15062 was, I think, your first.

[00:45:33] Speaker 05:
Yeah, why don't we go to go to your point.

[00:45:34] Speaker 05:
Let's go to the post trial briefing first.

[00:45:36] Speaker 05:
So go to 87005 to 87006.

[00:45:41] Speaker 05:
This is post-verdict.

[00:45:44] Speaker 05:
77005 to 7006.

[00:45:46] Speaker 05:
This is post-verdict.

[00:45:50] Speaker 05:
This is after they've had access to

[00:45:56] Speaker 05:
the A9 source code.

[00:45:58] Speaker 05:
This is in Morph 2.

[00:46:01] Speaker 05:
This is after they had an opportunity to have their expert review it.

[00:46:06] Speaker 05:
And what did they say at 7005 to 7006?

[00:46:10] Speaker 05:
Same infringing design.

[00:46:14] Speaker 02:
Where on the page should I look?

[00:46:17] Speaker 05:
It's right under B. If you go to 7006 on the right-hand side,

[00:46:31] Speaker 01:
Well, I'm looking at 7-0-0-5.

[00:46:33] Speaker 02:
First paragraph under the bold B heading?

[00:46:36] Speaker 01:
Yes.

[00:46:37] Speaker 02:
Is that what you want?

[00:46:38] Speaker 05:
Yes.

[00:46:39] Speaker 05:
All right.

[00:46:40] Speaker 05:
And then, Your Honor, if you go to 7-1-2-9.

[00:46:50] Speaker 05:
I'm sorry, what was the next statement?

[00:46:55] Speaker 05:
This is during the postal briefing again.

[00:46:57] Speaker 05:
And the question is whether the A9 and A10 should simply be brought into the case.

[00:47:04] Speaker 05:
And it says that there is broad agreement between the parties that the A9

[00:47:13] Speaker 05:
A9X, A10 chips are not more than colorably different than the A7, A8, and AX chips with respect to the Q's feature.

[00:47:24] Speaker 05:
So the reason I said that it's important to view these in the order in which they occurred, this discovery, which they now claim they didn't have, is occurring in Warp 2.

[00:47:38] Speaker 05:
at the same time that the WARF-1 trial is proceeding and you move into post-trial proceedings.

[00:47:43] Speaker 05:
As a result of that, the A9 and A10 come to market.

[00:47:48] Speaker 05:
Discovery is allowed on the A9 and A10.

[00:47:50] Speaker 05:
They get the A9 source code.

[00:47:53] Speaker 05:
They have their expert come on multiple occasions to review it.

[00:47:58] Speaker 05:
We then move to the post-trial briefing period.

[00:48:01] Speaker 05:
They get discovery on the A10, which is now in the market.

[00:48:03] Speaker 05:
These are just different generations of the same product.

[00:48:06] Speaker 05:
And now, before this court's decision of Wharf 1, when it's to their interest that these products be identical, they say they are the same.

[00:48:17] Speaker 05:
In fact, from October 13, 2015 until the date of this court's decision, Wharf consistently said they were the same.

[00:48:27] Speaker 05:
They said, operate in the same manner.

[00:48:30] Speaker 05:
That goes to my first citation, Your Honor.

[00:48:32] Speaker 05:
It's at 15062.

[00:48:35] Speaker 05:
They say it again.

[00:48:36] Speaker 02:
And this is even though, at least to my almost completely ignorant eyes, the excerpts of code in your guys' declaration show something different going on in the code.

[00:48:52] Speaker 02:
That's a shift from the A8 into the A9.

[00:48:57] Speaker 02:
But it nevertheless remains true that there's hashing going on.

[00:49:02] Speaker 02:
the number of possible hashes remains substantially lower than the number of possible instructions.

[00:49:09] Speaker 02:
They are therefore that materially indistinguishable.

[00:49:14] Speaker 05:
They are identical in terms of the limitations of the claim.

[00:49:19] Speaker 05:
They're identical in terms of what was found to be non-infringing in WARF 1.

[00:49:24] Speaker 05:
There can only be 4,096 of these different load tags.

[00:49:28] Speaker 05:
There are millions of instructions.

[00:49:30] Speaker 05:
By definition, they have to be tagged to groups of instructions.

[00:49:34] Speaker 05:
The important thing here is the foundation for the representation to you that preclusion should not apply is the idea that these products are not the same.

[00:49:47] Speaker 05:
They are not just substantially similar, they are identical in all material respects.

[00:49:53] Speaker 05:
And you don't have to take our word for it.

[00:49:57] Speaker 02:
I'm sorry.

[00:49:59] Speaker 02:
I came into this argument, I think, as you could probably tell, thinking that actually the premise that we've been talking about a lot now was, in fact, uncontested.

[00:50:08] Speaker 02:
So I want to at least, just speaking for myself, I want to accept the premise that there is no material difference with respect to infringement between A9 and A7, to simplify.

[00:50:22] Speaker 02:
I'm not sure that

[00:50:23] Speaker 02:
that that gets you where you need to get to in Morph 2.

[00:50:31] Speaker 01:
And can I interrupt just to add to that question?

[00:50:33] Speaker 01:
The second point you made was on Nystrom, which has now been recast as an issue of preclusion case.

[00:50:40] Speaker 01:
And you mentioned the word waiver.

[00:50:44] Speaker 01:
I mean, for issue preclusion, you need adjudication of the issue.

[00:50:48] Speaker 01:
I understand most of your argument to be that there was an adjudication of the issue because infringement is infringement is infringement.

[00:50:56] Speaker 01:
But to rest on waiver, as Nystrom did on an issue preclusion question, seems a little odd to me.

[00:51:06] Speaker 05:
No, it's not.

[00:51:08] Speaker 05:
In asking to go to the

[00:51:10] Speaker 05:
Both questions put together.

[00:51:11] Speaker 05:
If you accept the predicate that these products are identical in all material respects, if you take the collection of this court's jurisprudence on claim preclusion, issue preclusion, Chesler, there are different statements made at different points in time on the temporal application of each of the documents.

[00:51:30] Speaker 05:
They're not all consistent.

[00:51:33] Speaker 05:
But if I take Nystrom,

[00:51:35] Speaker 05:
And I take Aspect.

[00:51:37] Speaker 05:
We take them together.

[00:51:38] Speaker 05:
They're both good laws.

[00:51:39] Speaker 05:
We sit here today.

[00:51:41] Speaker 05:
What they say, what Aspect says, is Nystrom was an issue preclusion case.

[00:51:47] Speaker 05:
The issue was infringement.

[00:51:50] Speaker 05:
Infringement was litigated.

[00:51:52] Speaker 05:
The fact that there are independent theories of infringement, and one was waived,

[00:51:59] Speaker 05:
is not relevant to whether it was substantively adjudicated because infringement was.

[00:52:05] Speaker 05:
And to remind the panel, in Wharf 1, the reason that footnote 5 is in the opinion is that when Wharf 1 was briefed to the panel, Apple said in its opening brief, Wharf abandoned the doctrine of equivalence.

[00:52:23] Speaker 05:
When Wharf filed its brief, it did not contest that.

[00:52:27] Speaker 05:
In reply, we pointed out to the panel that they did not contest that they abandoned it and what the reasons for the abandonment were.

[00:52:36] Speaker 05:
And that led to footnote five.

[00:52:39] Speaker 05:
This is, if you actually take Nystrom and Aspect together, the only way that Wharf can escape issue preclusion is if you view

[00:52:50] Speaker 05:
infringement under the doctrine of equivalence and literal infringement is two separate issues, and they're not.

[00:52:58] Speaker 05:
Under B&B, if the same legal standard applies, they're the same issue.

[00:53:03] Speaker 01:
So where does waiver fit into this?

[00:53:05] Speaker 01:
Because waiver is giving me a problem.

[00:53:08] Speaker 01:
What if there were no waiver?

[00:53:10] Speaker 01:
I mean, in Nystrom, they had a stipulation of non-infringement.

[00:53:15] Speaker 01:
We use the word waiver.

[00:53:16] Speaker 01:
I'm not quite sure why we call that a waiver, as opposed to the theory you're giving us now, which is infringement is infringement is infringement.

[00:53:24] Speaker 05:
Your Honor, the question is, was infringement litigated?

[00:53:27] Speaker 05:
So let's assume in Nystrom, rather than there be what they characterize as waiver, they just decided to pursue a little infringement claim, nothing else, right?

[00:53:37] Speaker 05:
They can't come back later and say, oh.

[00:53:39] Speaker 05:
OK, that's what I wanted to be.

[00:53:40] Speaker 05:
No.

[00:53:41] Speaker 05:
So whether it's characterized as waiver, or as Mr. Judy did in answering Judge Shin's question, suggesting it was actually litigated, infringement was actually litigated in the same way it was in Warflan.

[00:53:53] Speaker 05:
So if you take Nystrom and you take Aspect,

[00:53:57] Speaker 05:
The only way to escape issue preclusion is if infringement can be subdivided into two issues.

[00:54:06] Speaker 05:
Well, 271 is the infringement statute.

[00:54:09] Speaker 05:
It refers just to infringement.

[00:54:16] Speaker 02:
Would you make the same argument if the two different kinds of infringement at issue were 271A versus, say, 271C?

[00:54:26] Speaker 05:
I think, to take an example this court has addressed, let's say that one is direct infringement, one's inducement.

[00:54:34] Speaker 05:
Those are different statutes.

[00:54:35] Speaker 05:
They're different types of infringement.

[00:54:38] Speaker 05:
We're talking about the same type of infringement.

[00:54:40] Speaker 05:
And under B&B, the question is, what's the legal standard?

[00:54:44] Speaker 05:
Not what's your theory, not what's your evidence.

[00:54:47] Speaker 05:
The legal standard is, first, 271A perverse to infringement.

[00:54:53] Speaker 05:
How do you prove infringement?

[00:54:54] Speaker 05:
each and every element of the claim.

[00:54:56] Speaker 02:
And you also would not distinguish making and using and selling and offering and importing?

[00:55:04] Speaker 05:
The idea that you could, to go to Judge Post's question, the idea that you could bring a case, claim little infringement by the making, and then come back and say, oh, we lost that, but we

[00:55:16] Speaker 05:
never asserted using.

[00:55:18] Speaker 01:
Well, that's one of the things that the Supreme Court actually explicitly said in Kessler.

[00:55:25] Speaker 01:
They talked about the rationale for that.

[00:55:29] Speaker 05:
So I'm not sure if I fully answered your question, but the answer, I think, is if we step back from all of this, we know three things.

[00:55:39] Speaker 05:
One is these are the same parties.

[00:55:42] Speaker 05:
These are the same patents.

[00:55:45] Speaker 05:
These are the same accused features.

[00:55:47] Speaker 05:
Now, I understand that there's a dispute here.

[00:55:48] Speaker 05:
But I think on this record, when you look at it, there can be really no dispute.

[00:55:53] Speaker 05:
And in fact, the district court expressly found that there was not only no dispute, but that Wharf had been consistent in saying there was no dispute.

[00:56:02] Speaker 01:
But how can it be the same thing if you can get a different result based on these two theories?

[00:56:08] Speaker 05:
No, no.

[00:56:10] Speaker 05:
It's the same feature, Your Honor.

[00:56:11] Speaker 05:
It's the same feature.

[00:56:16] Speaker 01:
But how is the issue actually adjudicated?

[00:56:19] Speaker 05:
The issue of infringement was actually adjudicated in the first case.

[00:56:23] Speaker 03:
There's a different legal standard under Doctrine of Equivalence when you're using the insubstantial differences test versus literal infringement where you're actually looking for an identity of the features between acute products.

[00:56:35] Speaker 05:
No, Your Honor, the standard is still, do you have each and every limitation of the claim, either literally or equivalently?

[00:56:42] Speaker 05:
And that's the standard.

[00:56:44] Speaker 05:
And it's not two different standards.

[00:56:46] Speaker 05:
In fact, as this Court has said, the DOE is an exception to prove a little infringement.

[00:56:52] Speaker 05:
So the standard is the same.

[00:56:54] Speaker 05:
And the best indication is the case they rely upon, B and B. That was a case where there were two different regimes.

[00:57:01] Speaker 05:
One was trademark registration.

[00:57:05] Speaker 05:
trademark infringement.

[00:57:07] Speaker 05:
Actually, the articulated basis for determining likelihood of confusion was different under the case law, but they said, no, they're the same issue.

[00:57:17] Speaker 05:
Infringement is the same issue.

[00:57:18] Speaker 05:
It is as a matter of the statute, and it is as a matter of

[00:57:24] Speaker 05:
the case law.

[00:57:25] Speaker 02:
Do you happen to remember the next level of detail down about the difference between the two bases of the argument for likelihood of confusion?

[00:57:35] Speaker 05:
The answer, Your Honor, is a don't off the top of my head.

[00:57:37] Speaker 05:
I do remember that the opinion itself articulated the fact that they actually found it to be the same issue.

[00:57:47] Speaker 05:
Ultimately.

[00:57:48] Speaker 05:
So to go to your question, if those types of differences at that granular level can make a difference, it would have made a difference there.

[00:57:59] Speaker 05:
The issue here is infringement.

[00:58:01] Speaker 05:
And when you have a case where the issue of infringement was litigated in the first case, where the decision by WARF not to pursue DOE had nothing to do with claim construction,

[00:58:17] Speaker 05:
But as the court says, it's A8 and A9 and A12, and is completely supported by what the court said earlier.

[00:58:27] Speaker 05:
I think it's 15590.

[00:58:29] Speaker 05:
Here's the reason that DOE wasn't pursued.

[00:58:34] Speaker 05:
It was a conscious strategic decision that had nothing to do with claim construction.

[00:58:38] Speaker 05:
If you take the facts that that is why DOE was not pursued,

[00:58:45] Speaker 02:
If you then accept.

[00:58:47] Speaker 02:
Part of the way I think the other side makes the argument would say, well, it has something to do with claim construction.

[00:58:54] Speaker 02:
That is, it's absolutely clear that if the district court back in 2017 had adopted the claim construction we adopted in 2018,

[00:59:05] Speaker 02:
they certainly would have had to go with DOE.

[00:59:09] Speaker 02:
On the other hand, I think it's also right to say that the reason that they withdrew their DOE assertion was not specifically about claim construction, but it's because the premise that they were proceeding on was that they had a claim construction under which they could continue to make their literal infringement document.

[00:59:33] Speaker 05:
Your Honor, the effort to

[00:59:35] Speaker 05:
by Wharf to basically try to fit this within Exxon.

[00:59:41] Speaker 05:
It doesn't work because the reason that Exxon reached the decision to reach was because there was a causal connection.

[00:59:49] Speaker 05:
between the claim construction and the decision that was made in the doctrine of equivalence.

[00:59:54] Speaker 05:
There's no causal connection here.

[00:59:56] Speaker 05:
In fact, it's demonstrated to be the opposite.

[00:59:59] Speaker 05:
That's why in the first appeal, when we said it was abandoned, they didn't object.

[01:00:04] Speaker 05:
We pointed out in reply, and this court had footnote 5.

[01:00:10] Speaker 05:
And the district court has made a finding of waiver, which is subject to an abusive discretion review by this court.

[01:00:19] Speaker 05:
What they're asking you to do is to ignore the reasons that they made the strategic decision to not to forego pursuing the Doctrine of Equivalence.

[01:00:32] Speaker 05:
They're asking you to ignore the explicit reasons the court said at the time.

[01:00:36] Speaker 05:
They're asking you to ignore what the court said post trial.

[01:00:41] Speaker 05:
And then they're asking you to ignore what happened at this court.

[01:00:45] Speaker 05:
That can't be the correct result.

[01:00:48] Speaker 05:
And Exxon doesn't help them because there was a causal connection, for lack of a better term, between the two.

[01:00:58] Speaker 03:
I guess going back to the facts of Exxon, if instead of in the same litigation trying to reassert DOE on remand, the plaintiff there filed a second litigation pursuing a DOE theory,

[01:01:17] Speaker 03:
that it had not pursued in the first litigation, I guess in your view, they would be precluded under issue preclusion.

[01:01:26] Speaker 05:
And Nystrom would tell you they are precluded.

[01:01:28] Speaker 03:
Right.

[01:01:29] Speaker 03:
Nystrom is a difficult case to understand, given how it arguably got patched up by ASPEX, when ASPEX didn't actually go through the analysis of whether the so-called waived DOE theory was, in fact, actually litigated.

[01:01:46] Speaker 03:
So there's some instability in trying to understand how to fit together what Aspects was trying to do to Nystrom.

[01:01:54] Speaker 03:
But just going back to the facts of Exxon and making this alteration to them, in your view, the plaintiff would be barred under issue preclusion if it brought a second case under DOE theory.

[01:02:10] Speaker 05:
Absolutely.

[01:02:11] Speaker 05:
And Exxon has almost that.

[01:02:14] Speaker 03:
that goes against a little bit of some of the reasoning in our Exxon opinion, where we said we're going to let it go and not block the plaintiff from pursuing a DOE theory on remat.

[01:02:27] Speaker 05:
Your Honor, Exxon has, in our view, respectfully, nothing to do with pollution.

[01:02:32] Speaker 05:
It is Nystrom.

[01:02:34] Speaker 05:
I'm making an adjustment to the fact pattern, because now it could bring issue preclusion into play.

[01:02:39] Speaker 05:
And if it did, you'd get to Nystrom.

[01:02:42] Speaker 05:
If we were to posit this hypothetical, you have Nystrom.

[01:02:48] Speaker 05:
Aspect has said that the language in Nystrom that refers to race, judicata, or claim preclusion more accurately should have been issue preclusion.

[01:02:55] Speaker 05:
I think that's a subject of some.

[01:02:58] Speaker 05:
debate, but let's accept that.

[01:02:59] Speaker 05:
Let's accept that because that's the most recent articulation by this court.

[01:03:04] Speaker 05:
It's issue preclusion.

[01:03:07] Speaker 05:
On the critical facts that were found to result in issue preclusion, whether, Your Honor, it's characterized as waive or otherwise, there is nothing to distinguish this case from Nystrom.

[01:03:18] Speaker 05:
So if this court were to write an opinion

[01:03:22] Speaker 05:
It said that issue preclusion and claim preclusion, Kessler, that no preclusion doctrine applies, it would be impossible to reconcile with Nystrom, even if it's interpreted by aspect.

[01:03:36] Speaker 05:
This is not an article I make for rhetorical purposes.

[01:03:39] Speaker 02:
I guess what I keep hearing is an argument that just keeps reducing to the central, I'm just going to call it the Galderma principle, that the question of 271A infringement is a single issue.

[01:03:54] Speaker 02:
Because it is easy to distinguish on the facts, Nystrom from this case.

[01:03:59] Speaker 02:
Nystrom said,

[01:04:02] Speaker 02:
openly, including, we do not think under this claim construction that we can prevail on infringement.

[01:04:14] Speaker 02:
There was no separate abandonment of DOE before it said that about infringement.

[01:04:20] Speaker 02:
Now, your point, I think, just keeps coming back to that's, yes, there's a difference, but it's not a legally relevant difference because infringement is a unitary issue.

[01:04:30] Speaker 05:
Correct.

[01:04:31] Speaker 05:
I mean, I think there are two central facts to the preclusion issues, which are that we think that as a matter of the undisputed record and the district court so found, these products are, in all material respects, the same.

[01:04:46] Speaker 05:
Our product hashes.

[01:04:47] Speaker 05:
It has a group of load tags.

[01:04:50] Speaker 05:
It doesn't have a single one.

[01:04:52] Speaker 02:
This is, I think, a trivial point, and maybe it's inherent.

[01:04:56] Speaker 02:
But in your brief, you just say it hashes.

[01:04:58] Speaker 02:
You need the idea that the number of different hash results is substantially less than the number of instructions.

[01:05:04] Speaker 02:
Your affidavit mentions, but your briefs do not mention.

[01:05:09] Speaker 02:
It's not just that they hash.

[01:05:12] Speaker 05:
They hash, and as a result, when you're hashing at 12, which is what ours do, you have 4,096 possibilities.

[01:05:20] Speaker 05:
That's the same.

[01:05:21] Speaker 05:
And there's no dispute that that's the same.

[01:05:24] Speaker 05:
So really what WARF is asking you to do is to look at all of the different conclusion doctrines and say that when you have the same parties, the same patents, identical feature, and infringement has been adjudicated, you can get a do-over on the doctrine of equivalence.

[01:05:43] Speaker 05:
And you can't, particularly if you've strategically abandoned it for that purpose.

[01:05:50] Speaker 05:
Let me just add one more point on Kessler.

[01:05:52] Speaker 03:
Can I just go back to issue of preclusion?

[01:05:54] Speaker 03:
Sure.

[01:05:54] Speaker 03:
I'm just trying to get a clarification.

[01:05:57] Speaker 03:
Do you feel like you have two separate and independent paths to win on issue of preclusion?

[01:06:04] Speaker 03:
One is Nystrom.

[01:06:05] Speaker 03:
Whatever happened in Nystrom, and you, Federal Circuit, call it issue of preclusion.

[01:06:11] Speaker 03:
Therefore, that kind of waiver amounts to something called actually litigated according to your precedent.

[01:06:20] Speaker 03:
And then alternative two, infringement is infringement.

[01:06:25] Speaker 03:
And so any form of infringement that is litigated, actually litigated, litigates the bottom line infringement question.

[01:06:33] Speaker 03:
Are those two separate things, or is it one thing that is just kind of articulated in different ways?

[01:06:39] Speaker 05:
I think there's an overlap between the two.

[01:06:42] Speaker 05:
And the way I would phrase it is that if we take Nystrom and accept Aspect's interpretation of Nystrom, then the issue that was substantively litigated, which is one of the four requirements, is, in fact, infringement.

[01:07:00] Speaker 05:
It's not its subparts.

[01:07:02] Speaker 05:
It's not making, using, or selling.

[01:07:04] Speaker 05:
It's not little or equivalent.

[01:07:06] Speaker 05:
Given that issue was litigated, it doesn't matter to go to

[01:07:10] Speaker 05:
Judge Post's point about waiver, it doesn't matter why DOE wasn't pursued.

[01:07:16] Speaker 05:
All that matters is there was an opportunity to litigate infringement.

[01:07:19] Speaker 05:
It was litigated all the way through this court, and there was found to be no infringement.

[01:07:24] Speaker 01:
But in our case, it was not litigated.

[01:07:27] Speaker 05:
In our case, it was litigated, Your Honor.

[01:07:29] Speaker 05:
Infringement was litigated.

[01:07:30] Speaker 01:
No, but DOE wasn't.

[01:07:32] Speaker 05:
DOE was, as we've talked about, it was waived.

[01:07:37] Speaker 01:
We're struggling here about what weight we give to the waiver portion of this.

[01:07:46] Speaker 05:
I think, Your Honor, the worst could be a little redundant.

[01:07:48] Speaker 05:
I don't think it matters that it was waived.

[01:07:50] Speaker 05:
Let's say rather than the conscious waiver that you have in the record before you, they just decided not to claim equivalent infringement, which happens all the time at the district courts.

[01:08:02] Speaker 05:
If infringement went to the jury and came back and this court overturned it on the basis it did in Warf 1, infringement was litigated.

[01:08:10] Speaker 01:
And they were briefed more closely.

[01:08:12] Speaker 01:
You can't come back.

[01:08:12] Speaker 05:
So I was trying to correct the record in terms of what happened in Nystrom.

[01:08:18] Speaker 05:
But the fact that it was waived is not what's key.

[01:08:20] Speaker 05:
The fact is that it is a single issue.

[01:08:25] Speaker 05:
I think Judge Stark's opinion in Galdarama wasn't just a passing reference.

[01:08:29] Speaker 05:
I mean, he goes through and talks as a matter of policy and what the preclusion doctrines are intended to get at and why it's a single issue.

[01:08:38] Speaker 05:
And he was correct.

[01:08:41] Speaker 05:
And the SGA's brief,

[01:08:44] Speaker 05:
treats them as a single issue.

[01:08:47] Speaker 01:
Can I just before you get to Kessler I just Judge Toronto I think with Mr. Chu raised the alternative which is claim preclusion assuming that if we you know staying away from Kessler there's a temporal problem for you in claim preclusion but I'm not clear about it because the they filed the complaint before the final judgment what were their sales and stuff going on on the A9 and the A10 before final judgment

[01:09:14] Speaker 05:
So all the A9 and A10 products that are an issue were sold before final judgment.

[01:09:21] Speaker 02:
Because the patent expired.

[01:09:22] Speaker 05:
Because the patent expired.

[01:09:23] Speaker 05:
So that there is claim preclusion, we'd suggest, for any products sold before the case was filed.

[01:09:35] Speaker 01:
Before they went to final judgment.

[01:09:36] Speaker 05:
No, if you just take the filing of the complaint, I don't think we disagree that claim preclusion applies to those products.

[01:09:43] Speaker 03:
I'm a little concerned about how, for infringement, you're saying any theory of infringement gets rolled up once infringement gets litigated.

[01:09:54] Speaker 03:
But we've said that's not true for validity.

[01:09:57] Speaker 03:
And your response to that is, well, there's different sections of validity.

[01:10:01] Speaker 03:
But that sounds overly formalistic to try to say that that's the distinction between validity and infringement.

[01:10:08] Speaker 03:
I mean, if you pursue certain grounds of validity and for whatever reason don't pursue others, we've said, well, you're not.

[01:10:19] Speaker 03:
There's no issue of preclusion for those held back in validity grounds.

[01:10:24] Speaker 05:
I don't think, Your Honor, the court's gone that far.

[01:10:27] Speaker 05:
It depends upon what the invalidity argument is that you're making and what the new argument is that you're making.

[01:10:36] Speaker 05:
Reaching that question, which doesn't present itself on the record, the fact that there are a number of different invalidity provisions, 101, 103, 102, 112, there's one infringement.

[01:10:53] Speaker 05:
There is one infringement statute.

[01:10:56] Speaker 05:
And it says infringement.

[01:10:59] Speaker 05:
And I think Judge Tomano's question is correct.

[01:11:02] Speaker 05:
Could a party assert that there was infringement, either literally or equivalently, by making and then come back and say, oh, wait a minute.

[01:11:13] Speaker 05:
We lost that one.

[01:11:15] Speaker 05:
We have a new idea.

[01:11:16] Speaker 05:
We're going to come back and say you infringed by using.

[01:11:20] Speaker 05:
or by selling?

[01:11:22] Speaker 05:
The answer clearly has to be no.

[01:11:26] Speaker 05:
Those are different theories, and they're different evidence perhaps, but they're the same issue of infringement.

[01:11:34] Speaker 05:
And while the SG has considered or addressed the Kessler and its future, this court has applied Kessler

[01:11:47] Speaker 05:
in circumstances after the elimination of non-mutual defensive collateral estoppel.

[01:11:53] Speaker 05:
And in fact, in Speed Track and MGA, two cases that were raised in the reply, this court applied Kessler to products that were sold, post filing the complaint

[01:12:07] Speaker 05:
prejudgment in precisely the same way it does here.

[01:12:10] Speaker 05:
So Judge, I tend to go back to your question.

[01:12:14] Speaker 05:
If infringement is one issue, they're issue precluded.

[01:12:18] Speaker 05:
If they are, the court somehow concludes there are separate issues governed by different standards, that's precisely what Kessler is intending to cover.

[01:12:28] Speaker 05:
Even Wharf concedes that Kessler covers.

[01:12:30] Speaker 03:
Do you prefer a victory based on issue preclusion than Kessler?

[01:12:34] Speaker 05:
Yes.

[01:12:35] Speaker 05:
But I think that.

[01:12:36] Speaker 05:
The honest answer is, when you look at the record, there's a reason we briefed you, Claim Proclusion, Issue Proclusion, Kessler.

[01:12:45] Speaker 05:
Because all three of the doctrines are supposed to work together.

[01:12:48] Speaker 05:
And in fact, do work together.

[01:12:50] Speaker 05:
And the real question for this panel is, if you step back and you say to yourself that same parties, same patents, identical products, and infringement was tried once to a jury and adjudicated here,

[01:13:06] Speaker 05:
Does these policies and these principles contemplate allowing someone to relitigate the issue again 10 years later?

[01:13:16] Speaker 05:
The answer has to be no.

[01:13:19] Speaker 05:
And I think, however you look at the specifics of Nystrom, when you look at the facts that overlap Nystrom in here, it is virtually impossible to write an opinion that would say the conclusion doesn't apply here, but it did in Nystrom.

[01:13:36] Speaker 01:
Thank you.

[01:13:40] Speaker 01:
Thank you.

[01:13:40] Speaker 01:
Mr. Chu will restore four minutes of rebuttal.

[01:13:45] Speaker 04:
I'll try to address just some, four points.

[01:13:49] Speaker 04:
Mr. Lee cited to the court certain pages, 7005, 15062 as examples, as supposedly

[01:14:03] Speaker 04:
standing for the proposition that WARF was making concessions about A9 and 10 being the same.

[01:14:13] Speaker 04:
We only had limited discovery, but by the dates of those pages, they were in 2014 and 2015, we hadn't seen a single line of source code until 2016.

[01:14:27] Speaker 04:
The statements made and

[01:14:32] Speaker 04:
Post-trial proceedings, whether to wrap things up or not, well, it was resolved not everything was going to be wrapped up, and then discovery was completely stayed.

[01:14:44] Speaker 04:
Second point, there was an argument about footnote five, which said- Footnote five of what?

[01:14:51] Speaker 04:
Of the first Wharf decision by this court about abandoning DOE, right?

[01:14:58] Speaker 04:
It's a short line or two.

[01:15:02] Speaker 04:
Well, that wasn't an issue that was litigated.

[01:15:07] Speaker 04:
That footnote wasn't a decision.

[01:15:12] Speaker 04:
And you could read it in a variety of ways.

[01:15:14] Speaker 04:
You could use abandon.

[01:15:15] Speaker 04:
You could say withdrawn.

[01:15:16] Speaker 04:
One could have said waiver.

[01:15:19] Speaker 04:
But the fact is DOE was withdrawn, didn't go to verdict.

[01:15:25] Speaker 04:
The same was true with respect to exon.

[01:15:30] Speaker 04:
Third point.

[01:15:31] Speaker 04:
There was a discussion that revolved around Nystrom, Golderma, and some other cases.

[01:15:39] Speaker 04:
Golderma is a case where there was a controlling Supreme Court case on issue preclusion, B&B hardware.

[01:15:49] Speaker 04:
It's not cited at all.

[01:15:52] Speaker 04:
It's a very short conclusory discussion.

[01:15:55] Speaker 04:
So we have to go, we today, this court,

[01:15:59] Speaker 04:
needs to go to B&B hardware in thinking about issue preclusion.

[01:16:04] Speaker 04:
And B&B says the first issue in the first case has to be identical to the second.

[01:16:11] Speaker 04:
And the test for whether they're identical is whether the legal standards are the same.

[01:16:16] Speaker 04:
You could think about that in terms of jury instructions.

[01:16:20] Speaker 04:
And if anything, DOE is the opposite of literal.

[01:16:24] Speaker 04:
By definition,

[01:16:26] Speaker 04:
There wouldn't be DOE infringement if there's literal infringement.

[01:16:31] Speaker 04:
So there's no literal infringement.

[01:16:33] Speaker 04:
We accept that from the first appeal.

[01:16:37] Speaker 04:
So DOE has different legal standards.

[01:16:41] Speaker 04:
It assumes, unlike literal infringement, that not all the limitations are met literally.

[01:16:49] Speaker 04:
And it applies an insubstantial difference test or a function way result test.

[01:16:54] Speaker 04:
None of that is relevant for literal infringement.

[01:16:58] Speaker 04:
So the legal standards are different.

[01:17:00] Speaker 04:
There cannot be, under existing case law and the Supreme Court's case law, any issue preclusion.

[01:17:09] Speaker 04:
Now I want to spend just a moment on, there were some questions and statements about technology.

[01:17:16] Speaker 04:
Bear with me for one minute.

[01:17:20] Speaker 04:
This invention is a way to have faster execution of instructions.

[01:17:27] Speaker 04:
And the basis is you could execute a lot of load instructions out of order and speculate that it won't cause a problem.

[01:17:37] Speaker 04:
But it might cause a problem.

[01:17:40] Speaker 04:
And if it causes a problem by a misspeculation, where some information should have been stored before the load instruction was executed, then the computer has to backtrack, redo things, and then it becomes inefficient.

[01:17:53] Speaker 04:
So the invention is a predictor, trying to predict when a particular load instruction

[01:18:03] Speaker 04:
might lead to misspeculation.

[01:18:05] Speaker 04:
So here's how it gets implemented.

[01:18:07] Speaker 04:
And these will be the issues on doctrine of equivalence, which were not fully litigated.

[01:18:15] Speaker 04:
The Apple processors, most processors, have a very limited instruction window.

[01:18:19] Speaker 04:
The entire program may have billions or hundreds of millions of lines of code.

[01:18:24] Speaker 04:
But it has an instruction window that's always changing, always moving, of a few hundred instructions.

[01:18:31] Speaker 04:
That's what's relevant.

[01:18:33] Speaker 04:
This court in the first decision on appeal said, well, it can't be the case that the load tags are

[01:18:43] Speaker 04:
associated with one and only one load instruction, thinking in the abstract about billions of lines of code.

[01:18:51] Speaker 04:
And that's because the names, the nicknames given to each load instruction are 12 bits.

[01:18:58] Speaker 01:
I think I need to bring you to a close.

[01:19:01] Speaker 04:
OK.

[01:19:02] Speaker 04:
If I could just finish in a moment?

[01:19:04] Speaker 04:
Yeah.

[01:19:05] Speaker 04:
What they do is they use these 12-bit names, 4096 different names, for a few hundred instructions, only some of which are load instructions.

[01:19:15] Speaker 04:
And the evidence is that the Apple engineer said, we want something that's going to work as

[01:19:24] Speaker 04:
carefully, precisely, as if it was complete without using all resources.

[01:19:31] Speaker 04:
So they fine-tuned it so that 99.9% of the time, there would be an exact association for the prediction and the associated load instruction.

[01:19:45] Speaker 04:
It was litigated in our work one decision.

[01:19:48] Speaker 03:
Is that right?

[01:19:49] Speaker 04:
It was in the following sense.

[01:19:51] Speaker 04:
In more of one, yes, no, in the following sense.

[01:19:55] Speaker 03:
Seem to recall, we kind of made a ruling that there were millions of load instructors.

[01:19:59] Speaker 03:
Yes.

[01:19:59] Speaker 03:
And just 4,000.

[01:20:00] Speaker 04:
Yes.

[01:20:01] Speaker 04:
And so in a literal sense, for the entire program, this court's conclusion was there was no literal infringement.

[01:20:08] Speaker 04:
But that's why the doctrine of equivalence is relevant.

[01:20:12] Speaker 04:
Thank you.

[01:20:12] Speaker 04:
On both sides, the case is submitted.