[00:00:00] Speaker 04:
So we will hear argument next in case number 241201, escape XIP against Google.

[00:00:10] Speaker 04:
Whenever you're ready, Mr. Raimi.

[00:00:25] Speaker 00:
Good morning, Your Honors.

[00:00:26] Speaker 00:
Bill Raimi for appellate escape XIP.

[00:00:28] Speaker 00:
If it pleases the court, may I begin?

[00:00:31] Speaker 00:
Escapex seeks reversal of a sanction under section 285 and a sanction under section 1927.

[00:00:39] Speaker 00:
But before I get into my argument, I wanted to kind of frame the appeal.

[00:00:43] Speaker 00:
I think it's appropriate.

[00:00:45] Speaker 00:
We are only here today because another court found the claims of the 113 patent ineligible at the 12b6 stage on January 24, 2023.

[00:00:54] Speaker 00:
And after deciding not to appeal, Escapex could only get Google to dismiss this case

[00:00:59] Speaker 00:
if it dismissed with prejudice.

[00:01:01] Speaker 00:
That allowed Google to file its Section 285 motion.

[00:01:05] Speaker 00:
Prior to that, Google did not file a motion to dismiss whether under patent eligibility or otherwise for failure to state a claim.

[00:01:13] Speaker 00:
Rather, Google answered the second amended complaint on October 17, 2022.

[00:01:19] Speaker 00:
After Google answered, EscapeTech was ready to test the merits of its claim.

[00:01:23] Speaker 00:
However, the finding in New York changed that.

[00:01:25] Speaker 00:
When in a few short weeks after deciding not to be allowed to that month that we looked at the matter and decided not to come to this course acting for reversal, that dismissal, Escapex sought to dismiss the case.

[00:01:37] Speaker 02:
I think, though, it's pretty selective to say that's the only reason we're here.

[00:01:42] Speaker 02:
You had a pattern of not being responsive to Google in this case.

[00:01:47] Speaker 02:
They reached out to you about whether the case was in the right court or should be transferred.

[00:01:52] Speaker 02:
No response.

[00:01:54] Speaker 02:
They pointed out things that they thought were incorrect in your complaint, seemingly showing a lack of any diligence in pre-suit investigation, which they couldn't put in a 12b6 because they had to accept as true what you alleged, even though, evidently, they knew and thought you should know it's not true.

[00:02:13] Speaker 02:
No response.

[00:02:15] Speaker 02:
Aren't those the beginnings of why we're here?

[00:02:19] Speaker 00:
Your Honor, I actually don't think so.

[00:02:20] Speaker 00:
I think we were responsible.

[00:02:21] Speaker 00:
We amended our complaint twice.

[00:02:23] Speaker 00:
This is the second minute complaint they answered.

[00:02:25] Speaker 02:
Did you respond to their inquiries about whether you thought you were in the right venue?

[00:02:31] Speaker 00:
I personally had, whether they were in the right venue, it was based on convenience is what they were transferring.

[00:02:36] Speaker 00:
Was there any response?

[00:02:37] Speaker 00:
Yes, we'd actually talked to them originally about that briefly.

[00:02:40] Speaker 00:
And I did have a conversation with Mr. Banner myself.

[00:02:43] Speaker 02:
So when they suggest to us that there was no response whatsoever, that's incorrect?

[00:02:49] Speaker 00:
That's incorrect.

[00:02:49] Speaker 00:
There was constant communications back and forth.

[00:02:52] Speaker 00:
We didn't write a formal response on the motion of transfer.

[00:02:55] Speaker 00:
We looked at the matter at that point, Your Honor, and said the expense in fighting it was too much.

[00:03:00] Speaker 00:
We were thinking we probably would lose on the motion of transfer.

[00:03:02] Speaker 00:
There were, I think, 24 exhibits with it.

[00:03:05] Speaker 00:
And so we decided not to oppose it.

[00:03:07] Speaker 00:
And then we actually filed, I can't remember the exact date, but I think it was 16 or 17 days after they filed the motion to transfer a notice of non-opposition.

[00:03:17] Speaker 02:
So we have an informal agreement.

[00:03:19] Speaker 02:
When they point out that it seems you've done no pre-suit investigation because you don't understand their products and the timing of when they were released, did you respond to that?

[00:03:29] Speaker 00:
Yes, we amended the complaint for a response for that.

[00:03:31] Speaker 00:
And we actually have put that forward.

[00:03:35] Speaker 00:
That's in your honor.

[00:03:35] Speaker 00:
If you would look at the appendix.

[00:03:38] Speaker 02:
I'm familiar with the amended complaint.

[00:03:40] Speaker 02:
But was there any informal response to indicate that you were considering what they were raising with you?

[00:03:47] Speaker 00:
Just in brief phone conversations with Mr. Banner, that's all we had.

[00:03:51] Speaker 00:
We didn't do any substantive response at that time.

[00:03:53] Speaker 00:
We merely went and amended our complaints.

[00:03:55] Speaker 00:
Well, I guess the issue that we see with the infringement allegations, it's kind of like if you have a shift on the fly for a four-wheel drive.

[00:04:04] Speaker 00:
Four-wheel drives have existed for a long time on cars, just like auto ad may have existed for a long time with Google's product, the YouTube music product.

[00:04:12] Speaker 00:
But when they added that artist-specific application, that was what we didn't find.

[00:04:17] Speaker 00:
up until after the priority date for the 113 patent.

[00:04:20] Speaker 00:
That's what we added in to our infringement allegations and the second amended point to make sure that that was very clear.

[00:04:25] Speaker 00:
And if the actual appendix points out and was submitted by Google, our diligence on this exact point at appendix 0235 through 0236, when we showed that the auto add features when it started and when it ended, what we could find with the Wayback Machine

[00:04:46] Speaker 00:
So we put exactly into our complaint what we alleged was when the way that machine said the auto add feature with the features we were accusing of infringing existed.

[00:04:59] Speaker 00:
We have that, actually it starts on 0233.

[00:05:05] Speaker 00:
And then it goes into the next day, the 0235, and we talk about how we're showing when that was added and then when it ended and when it stopped.

[00:05:14] Speaker 04:
So it was there for six years.

[00:05:17] Speaker 04:
I think I would like to understand this better.

[00:05:21] Speaker 04:
What are you saying that this shows?

[00:05:23] Speaker 00:
Yes, Your Honor.

[00:05:23] Speaker 00:
So if you look at 0235, Your Honor, what we did here is because the allegation by Google was that, oh, auto ad existed.

[00:05:35] Speaker 00:
before the priority date of the 113 patent.

[00:05:37] Speaker 00:
So our technical resources went back, and they went to the Wayback Machine.

[00:05:41] Speaker 00:
And the earliest point where we could find an artist-specific application for the auto-add feature was shown on this slide, 0235.

[00:05:49] Speaker 04:
I'm sorry.

[00:05:50] Speaker 04:
Where does it say this is the earliest we could find?

[00:05:58] Speaker 00:
OK.

[00:05:58] Speaker 00:
I'm sorry.

[00:05:59] Speaker 00:
0234.

[00:06:00] Speaker 00:
It says start of auto-add feature.

[00:06:02] Speaker 00:
My apologies, Your Honor.

[00:06:04] Speaker 00:
And you see that on the red?

[00:06:07] Speaker 04:
Well, this is not in color.

[00:06:09] Speaker 04:
This is not in color.

[00:06:10] Speaker 00:
OK, my apologies, Your Honor.

[00:06:12] Speaker 00:
It says Google's YouTube video.

[00:06:14] Speaker 04:
Yeah, and I see start of auto ad feature.

[00:06:16] Speaker 04:
I don't know who wrote those words, where they come from, what's behind them.

[00:06:21] Speaker 00:
OK, these are in our infringement contingent that we submitted to them.

[00:06:24] Speaker 00:
So this is what we're alleging proves our case.

[00:06:26] Speaker 00:
This is what we're saying.

[00:06:27] Speaker 00:
These are allegations of infringement that we submit to them.

[00:06:29] Speaker 00:
If we go back, Your Honor, and we look,

[00:06:34] Speaker 01:
So so we're supposed to understand this start of auto ad feature this phrase means that you think this is where was it?

[00:06:41] Speaker 01:
This is the earliest you could find Yes, sir.

[00:06:44] Speaker 00:
That was in our infringement contention these if you go back to oh two one four this that you can see this what this is We were actually just then looking at claim 14.

[00:06:53] Speaker 00:
We've actually done the same thing for claim one So this is how we tried to address it that's an appendix

[00:07:02] Speaker 00:
And there, if you go to appendix 0221, Your Honors, it says timeline analysis.

[00:07:08] Speaker 00:
And so that's where we start our timeline analysis of when the auto-add feature was added that we could find.

[00:07:15] Speaker 00:
And that's how we put this into our infringement content to try to give evidence to Google that we had looked at this issue, Your Honor.

[00:07:26] Speaker 00:
But overall, if I could go back to the argument, I think if we go to looking

[00:07:34] Speaker 00:
So the Park Inn Theaters versus Perkins Test, it was a side of Octane Fitness.

[00:07:39] Speaker 00:
We're looking for some sort of bad faith or some sort of grossly unfairness in here.

[00:07:43] Speaker 00:
And that we just don't find in this case.

[00:07:45] Speaker 00:
This is a case where it existed for a few short months on the docket.

[00:07:49] Speaker 00:
dismissed because a court in New York, Judge Furman, found the patent invalid under 101.

[00:07:53] Speaker 00:
And after we looked at it, we dismissed the case with Google.

[00:07:57] Speaker 00:
And then they filed the motion for fees.

[00:07:59] Speaker 02:
Talk about that, because the record seems pretty clear.

[00:08:01] Speaker 02:
You dismissed, represented to the district court, that you had their consent, that they wouldn't seek fees.

[00:08:06] Speaker 02:
And that was all false.

[00:08:08] Speaker 00:
So that's an interesting point.

[00:08:09] Speaker 00:
And I have gone back and talked to my California counsel, did file that.

[00:08:14] Speaker 00:
So that was a communication from another attorney in my office, Jeff Kubiak, with Mr. Barron.

[00:08:19] Speaker 00:
And he came to the agreement that the case was going to be dismissed.

[00:08:23] Speaker 00:
He thought he had the agreement of Mr. Barron to dismiss with prejudice.

[00:08:27] Speaker 00:
And that was a simple mistake.

[00:08:29] Speaker 00:
I can't find anything other than that.

[00:08:31] Speaker 00:
He swears to this day that he had an agreement to dismiss with prejudice.

[00:08:35] Speaker 02:
Why not explain that to the district court when you filed the supplemental stipulation of dismissal?

[00:08:41] Speaker 02:
Pardon me?

[00:08:43] Speaker 02:
I'm sorry, I didn't.

[00:08:44] Speaker 02:
You file a supplemental dismissal stipulation without explaining what the error was in the first one, the error being that you represented something that was not true.

[00:08:55] Speaker 02:
Why not explain that to the district court at that time?

[00:08:59] Speaker 00:
In retrospect, I think we would.

[00:09:01] Speaker 00:
But it was just said that we were trying to get done quickly because Mr. Barron had contacted us for Google's attorney and had said that they needed the case dismissed because they were going to start incurring fees.

[00:09:10] Speaker 00:
I think they had to prepare for some motion or something about seven or eight days later.

[00:09:15] Speaker 00:
So that was the onus for us to get the case dismissed.

[00:09:18] Speaker 00:
It wasn't done anything intentional.

[00:09:20] Speaker 00:
It was within a day that Ms.

[00:09:22] Speaker 00:
Colerough had filed the corrected notice of dismissal.

[00:09:26] Speaker 00:
It was a pure accident.

[00:09:28] Speaker 04:
When it came time for the fees motion, the first fees motion, the 285 fees motion, what did you say in response to the arguments made by Google for why this was exceptional?

[00:09:45] Speaker 04:
I'm going to start at what, to my mind, is the very, very small thing of the mistaken stipulation.

[00:09:54] Speaker 04:
First, what did you say about that?

[00:09:57] Speaker 00:
That was a mistake in stipulations.

[00:09:59] Speaker 04:
It wasn't... Did you say in your response to the 285... I'm not interested at the moment in anything that happened before the 285 motion, okay?

[00:10:08] Speaker 04:
So I'm just talking about they file a 285 motion, you file a response.

[00:10:14] Speaker 04:
Remind me, please, what you said about...

[00:10:18] Speaker 04:
I'm sorry, I do want to ask about the stipulation question, but not because I think it's the big deal.

[00:10:25] Speaker 04:
I just want an answer to the question.

[00:10:27] Speaker 04:
What did you say about the mistake in stipulation?

[00:10:29] Speaker 00:
We submitted, Mrs. Coller has submitted a declaration explaining that it was a mistake.

[00:10:33] Speaker 04:
Okay.

[00:10:34] Speaker 04:
Now, on the big issue.

[00:10:36] Speaker 04:
Yes, sir.

[00:10:39] Speaker 00:
Our 285 response was limited to showing that our infringement claims showed that the auto-add feature was added after the priority date for the 113 patent.

[00:10:54] Speaker 00:
The feature we were accused of infringing

[00:10:57] Speaker 00:
So we were tied to an infringement, which necessarily included validity, because if it were pretty big.

[00:11:01] Speaker 04:
Can you show me where in your opposition to the 285 motion you provided some evidence or argument about how the auto-add feature changed between the 2014 priority date and later?

[00:11:26] Speaker 00:
Yes, your honor, the second.

[00:11:39] Speaker 00:
Your honor, during the break, I'll get you that exact site of where it came from, the record.

[00:11:42] Speaker 00:
I don't have it with me right now.

[00:11:46] Speaker 04:
Just so you know how I'm thinking about it right now, this seems to me the crucial issue that you later

[00:11:56] Speaker 04:
In response to the motion, no, I'm sorry, in filing your motion to amend the judgment, put in some new evidence, right?

[00:12:03] Speaker 04:
Two declarations, one of your CEO and one of the technical resource.

[00:12:11] Speaker 04:
That was not in front of the judge at the time the judge was deciding the 285 issue.

[00:12:17] Speaker 04:
And I want to understand what was in front of the judge on the 285 motion

[00:12:23] Speaker 04:
on the crucial question of pre-suit investigation.

[00:12:27] Speaker 00:
And it was issues about infringement, Your Honor, and I don't have the site to the motion right now, but I can get that from the record site.

[00:12:35] Speaker 00:
I'm in my rebuttal.

[00:12:36] Speaker 00:
If you don't mind, I'd like to just touch one thing real quick, and then I'll sit down, Your Honor, and just touch briefly on the 1927 sanctions.

[00:12:46] Speaker 00:
And I would just like to say that for a section 1927 sanction to be

[00:12:52] Speaker 00:
Appropriate in California the Ninth Circuit You don't just it doesn't just have to be reckless.

[00:12:57] Speaker 00:
It has to be reckless and then it has to be the Shoot what I'm trying to say Has to be frivolous that would the pilot has to be frivolous so here when the judge did find reckless I'll give you that but there was no frivolous finding the fruit and that for we know from Caputo first tungsten 96 fed fourth 1111 it tells us at page 1155 and

[00:13:18] Speaker 00:
that for frivolous arguments for the purpose of 1927 sanctions are ones that are baseless and made without reasonable and competent inquiry, are made up of legal and factual contingent so weak as to constitute.

[00:13:30] Speaker 02:
So the 1927 finding relates to your 59E motion, correct?

[00:13:33] Speaker 00:
Yes, Your Honor.

[00:13:34] Speaker 02:
How could it be anything other than frivolous to claim that these declarations are newly discovered evidence?

[00:13:39] Speaker 00:
Your Honor, I'll get into it.

[00:13:40] Speaker 00:
I can get that in my rebuttal when I get back.

[00:13:42] Speaker 02:
But I cited it in the brief.

[00:13:44] Speaker 00:
OK, yes, Your Honor.

[00:13:45] Speaker 00:
So as we cited in our brief,

[00:13:49] Speaker 00:
The Ninth Circuit has used a test with new evidence, committed clear or initial or manifestly unjust, or an intervening change in control of the law.

[00:13:57] Speaker 00:
And then Google's own letter cited the case that said there may be other highly unusual circumstances that weren't too reconsideration.

[00:14:03] Speaker 02:
But I understood your argument in the 59E.

[00:14:05] Speaker 02:
But correct me if I'm wrong, was, hey, Judge, we have newly discovered evidence.

[00:14:10] Speaker 02:
Was that not the grounds that you contended allowed you to move under 59E?

[00:14:16] Speaker 00:
That was manifestly unjust and newly discovered evidence.

[00:14:19] Speaker 01:
Where did you say manifestly unjust in your opposition?

[00:14:23] Speaker 00:
I think it was the case law that said it.

[00:14:25] Speaker 00:
I'm not sure that we specifically pointed that out.

[00:14:28] Speaker 00:
But this is what we're moving on from their own litigate that they sent out.

[00:14:31] Speaker 02:
How could it be newly discovered evidence?

[00:14:35] Speaker 02:
It was declarations from your own client and maybe an employee.

[00:14:41] Speaker 00:
Yes, Your Honor.

[00:14:42] Speaker 00:
Going back to the standard for the, how you can do it, Section 1927, those were made with competent inquiry.

[00:14:48] Speaker 00:
The judge did deny the 1590.

[00:14:50] Speaker 00:
That doesn't make it sanctionable to counsel.

[00:14:53] Speaker 01:
How, the question though is this.

[00:14:54] Speaker 01:
I mean, obviously you can't say it was newly discovered because you're saying that it pre-existed because it was

[00:15:03] Speaker 01:
before the suit was filed.

[00:15:04] Speaker 01:
So it seems like it's a very difficult question to answer, but you need to answer it.

[00:15:09] Speaker 01:
How could it be newly discovered?

[00:15:11] Speaker 00:
It was newly discovered.

[00:15:12] Speaker 00:
We hadn't developed that evidence to give to the court.

[00:15:16] Speaker 00:
We hadn't developed it.

[00:15:17] Speaker 00:
And that's what we mean by that.

[00:15:20] Speaker 01:
You had not yet taken the time to get the declaration statements.

[00:15:24] Speaker 00:
We went from the root of attacking it from.

[00:15:27] Speaker 00:
We looked at the infringement point of view, identified from the technical resource,

[00:15:31] Speaker 00:
that the auto add feature wasn't added until after the priority date for the 113 patent.

[00:15:36] Speaker 00:
That's how we made sure that we had a valid infringement claim under view engineering to have satisfied our rule 11 basis.

[00:15:44] Speaker 00:
That's how we wanted it.

[00:15:45] Speaker 00:
I think I'm over my time.

[00:15:47] Speaker 00:
Can I come back and say a quick two minute rebuttal after this?

[00:15:50] Speaker 00:
Yes.

[00:15:51] Speaker 00:
Thank you very much, John.

[00:16:07] Speaker 03:
Your honor, may it please the court, Jonathan Tietz for Google, with me is Dan Bagatell, co-counsel.

[00:16:13] Speaker 03:
I want to start by just addressing three points in the reply brief that we didn't get to address in briefing.

[00:16:20] Speaker 03:
The first of them is a statement by Escapex that we admitted that there was a pre-priority date product and a post-priority date product, and that the features differed.

[00:16:29] Speaker 03:
I don't think there's any reasonable way to read our rent brief to say that, but I want to note that clearly.

[00:16:34] Speaker 04:
What's the second point?

[00:16:36] Speaker 03:
The second point is there's a new statement that the YouTube music was discontinued and rebranded as YouTube video.

[00:16:43] Speaker 03:
That's not true.

[00:16:44] Speaker 03:
In fact, the original URL in the first set in the mix and match theory of contentions, that URL still works.

[00:16:50] Speaker 03:
They're separate products, and they do separate things.

[00:16:52] Speaker 03:
What's the third point?

[00:16:53] Speaker 03:
The third point is the argument that they didn't waive the manifest injustice argument.

[00:16:58] Speaker 03:
I don't think I need to belabor that.

[00:17:00] Speaker 03:
But even in the reply brief, they only cite what they've said in the 1927 briefing.

[00:17:05] Speaker 03:
Those are the three points I wanted to address.

[00:17:07] Speaker 04:
So can you get to, I think what I, at least I'm interested in something Mr. Ramey said about the preliminary, the infringement contention, what was it, 235, 216, what were the pages?

[00:17:24] Speaker 03:
234 to 236, that's just the range.

[00:17:27] Speaker 03:
Right.

[00:17:27] Speaker 04:
So this was, was this attached to the second amended complaint?

[00:17:35] Speaker 03:
No, these were infringement contentions.

[00:17:37] Speaker 03:
OK, the chart is the same as the chart that was attached to the second amended complaint.

[00:17:41] Speaker 03:
That's true.

[00:17:42] Speaker 03:
The start of auto add feature, that part is different.

[00:17:46] Speaker 03:
That new comment's different.

[00:17:48] Speaker 03:
I think an important context bit to note here is that these are infringement contentions that were served in October.

[00:17:54] Speaker 03:
So it was actually before Google's letter saying, look, auto add predates

[00:17:59] Speaker 04:
Here's what I'm trying to get at.

[00:18:01] Speaker 04:
It seems to me the core of this, the core of what actually seems strong, is the pre-suit investigation point.

[00:18:16] Speaker 04:
And I'm trying to understand whether there were, before the motion to amend proceeding, whether there were

[00:18:28] Speaker 04:
arguments or evidence asserted that we had reason to think that the accused auto ad feature post-dated the priority date and therefore would not invalidate the patent if, yes.

[00:18:49] Speaker 03:
Absolutely not.

[00:18:50] Speaker 04:
So what about this?

[00:18:52] Speaker 03:
This is the start of the AutoAd feature itself.

[00:18:56] Speaker 03:
That's their assertion that that's the start of the AutoAd feature itself, but Google had shown that in fact the feature was far before

[00:19:05] Speaker 03:
this date was at least a year before.

[00:19:07] Speaker 04:
So I guess just trying to understand this language, start of auto add feature.

[00:19:12] Speaker 04:
This is not start of a feature in auto add or start of auto add, parenthesis, which is the feature as a unitary thing, which is obviously a very different position.

[00:19:27] Speaker 03:
That would be the second one, Your Honor.

[00:19:29] Speaker 03:
The feature itself, auto add as itself.

[00:19:31] Speaker 03:
This URL

[00:19:34] Speaker 03:
There's a screenshot from it on the next page.

[00:19:36] Speaker 03:
And this is YouTube's guide to how to use AutoAd as a whole when managing a playlist.

[00:19:43] Speaker 04:
So this could not be understood as asserting that there was a artist-specific feature within AutoAd that this date in 2015 was the start of.

[00:20:02] Speaker 03:
There's no reasonable way to understand this argument to mean that.

[00:20:08] Speaker 04:
Well, why is that?

[00:20:09] Speaker 03:
Why is that?

[00:20:10] Speaker 03:
In addition to the point that Escapics didn't argue that at appendix 433 or 429, which are the relevant parts of the 285 briefing, what they say in appendix 234, 235, and 236 itself just relates to playlists as a whole.

[00:20:27] Speaker 03:
It doesn't say anything about artist-specific application.

[00:20:30] Speaker 03:
It's just about this feature as a whole.

[00:20:32] Speaker 03:
In fact, if you turn back, Your Honor, to the claim chart that precedes this, that's an appendix 230 for claim 27, for instance.

[00:20:42] Speaker 03:
The claim mapping is pretty much the same across the patents.

[00:20:46] Speaker 03:
This auto-add feature that they're pointing to corresponds to the same screenshot as present in a limitation on appendix 231, for instance, that talks about one or more commands to specify a change, et cetera.

[00:21:01] Speaker 03:
a whole broader set of things than this narrow artist-specific application feature that they're focusing on now on appeal.

[00:21:14] Speaker 03:
If they had made the argument below, it would have been easy to rebut.

[00:21:18] Speaker 03:
And I think it also would have been in the judge's discretion to address it.

[00:21:25] Speaker 03:
I want to respond to just five quick points that the council made.

[00:21:30] Speaker 03:
The first is about this conversation about the transfer motion.

[00:21:33] Speaker 03:
I think the important point there, the first important point is that there's nothing in this record and nothing was said about that in response at 285.

[00:21:41] Speaker 03:
But the other point is, I think I heard counsel said, and forgive me if I'm wrong, that escapex noted it's not opposition to transfer.

[00:21:48] Speaker 03:
It was Google that noted escapex is not opposition once the deadline had come and passed.

[00:21:53] Speaker 03:
The other point I want to respond to

[00:21:56] Speaker 04:
Were the fees that were awarded, did the fees that were awarded include fees for work done on the transfer motion?

[00:22:08] Speaker 03:
I believe they did as part of the whole exceptional case.

[00:22:12] Speaker 03:
That's a question of fee amount, of course, and that's not at issue on appeal, the fee amount anymore.

[00:22:19] Speaker 03:
The other point I want to respond to was that

[00:22:24] Speaker 04:
I'm sorry, I don't remember this part.

[00:22:27] Speaker 04:
The district court gave you substantially less than you asked for, right?

[00:22:32] Speaker 04:
Yes.

[00:22:33] Speaker 04:
And did the district judge say, he must have said, here are the parts that I'm not going to give you?

[00:22:42] Speaker 03:
I should go for that.

[00:22:44] Speaker 03:
Google got a haircut on the 1927 award.

[00:22:47] Speaker 03:
On a 285 award, the district judge found the amount facially very reasonable and even thought that we were effectively showing mercy.

[00:22:54] Speaker 03:
So the amount was reasonable.

[00:22:56] Speaker 04:
285 is everything.

[00:22:58] Speaker 04:
And presumably, I mean, you don't happen to remember whether you asked for fees on the work in preparing the transfer motion.

[00:23:10] Speaker 03:
I don't happen to remember.

[00:23:11] Speaker 03:
I don't think it's certainly not in the appendix.

[00:23:13] Speaker 04:
And would any of that?

[00:23:15] Speaker 04:
I'm sorry.

[00:23:15] Speaker 04:
This stuff matters to me.

[00:23:16] Speaker 04:
So would any of that work have been unnecessary if they had agreed to the transfer?

[00:23:32] Speaker 04:
Yes.

[00:23:32] Speaker 04:
I assume most of the work for the transfer motion went into preparing the motion itself.

[00:23:39] Speaker 03:
Preparing the motion and supporting evidence to it.

[00:23:42] Speaker 03:
Yes, because there could have been a stipulation, there could have been a voluntary dismissal and refiling.

[00:23:46] Speaker 04:
So delay in responding to the motion, essentially all of the work on the transfer motion has been done by then.

[00:23:53] Speaker 03:
Yes.

[00:23:53] Speaker 04:
So is there a finding that the transfer was, that filing in the original form was itself unreasonable?

[00:24:03] Speaker 03:
I don't think, no, there was not a finding on that.

[00:24:06] Speaker 03:
And actually, I should clarify that not all the work had been done by the point of non-opposition because the transfer point had been raised, for instance, in Google's November 7th letter.

[00:24:16] Speaker 03:
And it was previewed.

[00:24:18] Speaker 03:
And escapex, I've heard say,

[00:24:21] Speaker 03:
had a conversation about this.

[00:24:23] Speaker 03:
So there were points at which, given the clearly more convenient Northern District of California venue in this case, that additional work could have been averted, but was not.

[00:24:32] Speaker 03:
And there was simply not a position taken, as is clear in this record.

[00:24:37] Speaker 02:
So would the timeline show that Google contacted EscapeX about transferring venue before you had completed work on your motion to transfer?

[00:24:51] Speaker 03:
That is more in the weeds than I know, Your Honor.

[00:24:53] Speaker 03:
Sure.

[00:24:53] Speaker 03:
What the record shows on that?

[00:24:55] Speaker 03:
The record, I believe, shows that that transfer happened.

[00:24:58] Speaker 03:
Now, I'm just saying, Escapex has alluded to additional things that are not in this record.

[00:25:05] Speaker 03:
And so that's my presentation on that point.

[00:25:06] Speaker 02:
Right.

[00:25:06] Speaker 02:
And one was the brief phone responses.

[00:25:08] Speaker 02:
I think you've just told us there's no record.

[00:25:10] Speaker 02:
Yes, there's no record of that.

[00:25:12] Speaker 02:
How about this?

[00:25:13] Speaker 02:
I think it was suggested today that they did get consent to file the stipulation of dismissal.

[00:25:21] Speaker 02:
Is there anything in the record on that?

[00:25:23] Speaker 03:
There's nothing in the record of that, Your Honor, at all.

[00:25:27] Speaker 03:
And then that would have been a prime thing to have said.

[00:25:30] Speaker 03:
I think that still wouldn't have gone far enough, because it doesn't address why Kate Lazarus' signature would have been addressed.

[00:25:36] Speaker 03:
But I think the important point is not in the record.

[00:25:38] Speaker 02:
And why, if at all, is it important that the stipulation of dismissal was filed without consent from Google?

[00:25:47] Speaker 03:
Well, for one thing, it misrepresents to the public what Google is willing to agree and in what circumstances it caused more work, because Google had to reach out and ask for this to be withdrawn.

[00:25:58] Speaker 03:
to ask that it be withdrawn with an explanation to say this isn't something that Google said and then changed its own mind on, which the simple withdrawal leaves open.

[00:26:07] Speaker 03:
So it increases the work and then it also of course implicates the duty of candor to the court before the Northern District of California.

[00:26:19] Speaker 03:
The other

[00:26:21] Speaker 03:
Point I want to just address is this first shred of defense of the newly discovered evidence standard and that the evidence wasn't developed.

[00:26:29] Speaker 03:
There's a case that's pretty close to this actually in the case that's cited among the parties and that's coastal transfer.

[00:26:35] Speaker 03:
That's a case from 1987 in which similar claim was made about the evidence that the expert relied on wasn't developed until after.

[00:26:45] Speaker 03:
That was a frivolous argument then, and it was frivolous to insist it was newly discovered evidence on appeal.

[00:26:53] Speaker 02:
And is that authority that you pointed out to escape acts when they filed the 59E motion?

[00:27:00] Speaker 02:
There was some informal communication in the record on that motion, I think.

[00:27:04] Speaker 03:
It's cited in the authorities.

[00:27:06] Speaker 03:
It says the same thing as school district number 1J, which was the case that we cited in the letter to escape X and that the district court relied on.

[00:27:15] Speaker 03:
And it follows the logic of Exxon, which put it on five, which was also cited in the letter to escape X and which the district court relied on.

[00:27:23] Speaker 02:
And you gave us supplemental authority about another district court sanctioned decision related to the same firm, I believe.

[00:27:31] Speaker 02:
What, if any, is the significance of that supplemental development?

[00:27:36] Speaker 03:
The primary point in the supplemental authority letter, Your Honor, is to the line of notion that this case is unusual in a district court's approach.

[00:27:46] Speaker 03:
Other district courts are following the same approach in other circuits under similar circumstances.

[00:27:51] Speaker 03:
And that's the main thing.

[00:27:52] Speaker 03:
That case doesn't involve the same patents.

[00:27:54] Speaker 03:
As this case, it does happen to involve the same parties.

[00:27:58] Speaker 04:
Thank you.

[00:27:58] Speaker 04:
Can I just understand a little bit better the

[00:28:05] Speaker 04:
Insufficiency of pre-suit investigation essentially is the basis for saying the suit was quite irresponsibly filed.

[00:28:19] Speaker 04:
Does that depend, and I don't remember, just tell me whether the district court said

[00:28:27] Speaker 04:
The basis for my finding this irresponsible filing is that if you had done a pre-suit investigation, you would have discovered that the thing you accused had priority.

[00:28:42] Speaker 04:
Or was it independently that the thing you accused just cannot conceivably be viewed as artist-specific?

[00:28:54] Speaker 03:
What the district court said is that a basic online search would have revealed that this feature did predate.

[00:28:59] Speaker 03:
So it was a simple set of steps.

[00:29:02] Speaker 03:
This actually parallels Thermal Life, I think, except it's a little bit easier of a pre-suit investigation that would have had to have been done than in the Thermal Life case that the parties rely on.

[00:29:12] Speaker 03:
Because that case said you could have easily tested these products, and you would have known upon testing that these claim limitations would have been met.

[00:29:21] Speaker 03:
This, the district court concludes,

[00:29:23] Speaker 03:
a basic online search would have revealed that this feature, the one that you accused, predated the patent.

[00:29:31] Speaker 04:
So I thought I was remembering correctly that the basis for this was an irresponsibly filed lawsuit was that if you had done an investigation, you would have discovered that the thing you accused had priority, which

[00:29:44] Speaker 04:
places, to my mind, right at the center of this question of interpreting this start of auto-add feature in the allegations.

[00:29:57] Speaker 04:
Did the district court explore that?

[00:29:58] Speaker 04:
Did the other side, in responding to 285, point to this and say,

[00:30:07] Speaker 04:
What we meant here was that we looked and found that the earliest appearance of a particular feature inside AutoAd was post-priority.

[00:30:26] Speaker 03:
No, Your Honor.

[00:30:27] Speaker 03:
They did not say that.

[00:30:28] Speaker 03:
And I think probably the reason why is when they later did explain what they had done,

[00:30:34] Speaker 03:
The story there from their witnesses was that, well, we knew that the feature predated.

[00:30:39] Speaker 04:
So there would have been... I think you probably understand by now that it is incredibly important to my thinking on this what one means by feature.

[00:30:49] Speaker 04:
So when you just used the word, did you mean feature equals auto-add?

[00:30:55] Speaker 03:
Yes.

[00:30:56] Speaker 04:
That's obviously not what I'm interested in.

[00:30:58] Speaker 03:
Okay.

[00:31:00] Speaker 04:
They say there was a feature that appeared in Autoad after the prior application.

[00:31:05] Speaker 03:
They are a specific application.

[00:31:07] Speaker 03:
That simply didn't come up.

[00:31:09] Speaker 03:
And they don't say later in the rule 59E briefing, but that certainly did not come up at 285.

[00:31:16] Speaker 03:
OK.

[00:31:18] Speaker 03:
Of course, no further questions.

[00:31:19] Speaker 03:
I would ask that court-affirmed.

[00:31:33] Speaker 00:
Briefly just start you had asked me for Support I apologize it was right for me.

[00:31:38] Speaker 00:
I didn't get it out before for when we brought this up if you go to appendix oh four to seven throw four to nine we do in fact in the response to the motion for fees Bring up that it is this artist specific application.

[00:31:52] Speaker 00:
We're looking for in that specifically appendix oh four to eight so quite in contrast what you just heard from my colleague on the other side and

[00:32:00] Speaker 00:
This was our point of differentiation, right in the middle of the paragraph.

[00:32:03] Speaker 00:
It's, pardon me, California, so we have line numbers.

[00:32:06] Speaker 00:
That's line 17 through 20 of that page 0428.

[00:32:09] Speaker 01:
I'm sorry, did you say 0248?

[00:32:11] Speaker 01:
I'm sorry.

[00:32:13] Speaker 00:
If I did, I meant 0428, Your Honor.

[00:32:16] Speaker 00:
0428.

[00:32:16] Speaker 00:
I'm sorry, if I said 0248, I apologize.

[00:32:19] Speaker 00:
But I meant 0428.

[00:32:21] Speaker 04:
And which lines on page 428 do you want us to look at?

[00:32:24] Speaker 00:
Yes, it starts with paragraph 15 through 20, but it's right there towards the end.

[00:32:28] Speaker 00:
says Google argue to support that YouTube is not an art specific application.

[00:32:32] Speaker 00:
And that was our point of differentiation.

[00:32:35] Speaker 00:
So they recognize, even at that time, that that was our point of differentiation.

[00:32:39] Speaker 00:
So for them to say that we didn't talk about that at all, that's the whole point.

[00:32:43] Speaker 00:
But that was our diligence.

[00:32:44] Speaker 00:
That's what we say did not exist until after the priority date for the 113 patent.

[00:32:53] Speaker 00:
And I will say that the briefing

[00:32:55] Speaker 00:
did point to new evidence.

[00:32:58] Speaker 00:
But we cited to the case that's Google has cited us in the letter.

[00:33:00] Speaker 00:
We were trying to say that the circumstances of how this appeal came about, that the district court judge, that all the findings are made in the motion for fees stage rather than in the merit stage, that the disability was filed, and that the Ninth Circuit, under the Keegan case, doesn't allow 1927 sanctions on initial pleadings.

[00:33:21] Speaker 00:
That we were trying to say these were all

[00:33:23] Speaker 00:
Circumstances that were odd that would allow us to file a motion for a to modify the judgment it's a Specifically they're listed in the brief and I don't have to go through and I apologize for that But thank you very much for your time.

[00:33:37] Speaker 04:
Thank you.

[00:33:38] Speaker 04:
Thanks to all counsel cases submitted