[00:00:00] Speaker 02:
All right, our next case for argument is 24-1065, Wilson versus Corning.

[00:00:06] Speaker 02:
Council, how do I state your name?

[00:00:08] Speaker 00:
Padmanabha, Your Honor.

[00:00:09] Speaker 02:
Mr. Padmanabha, please proceed.

[00:00:19] Speaker 00:
Thank you, Your Honor.

[00:00:21] Speaker 00:
May it please the court?

[00:00:23] Speaker 00:
Your Honors, Wilson was entitled to a jury trial for two independent reasons.

[00:00:29] Speaker 00:
First, Wilson sought a legal remedy, compensatory damages.

[00:00:35] Speaker 00:
That compensatory claim measured the amount that Wilson would have earned had Corning honored its obligations.

[00:00:44] Speaker 00:
In those calculations, of course, Wilson's damages expert considered Corning's profits because in her expert opinion, any agreement between Corning and Wilson would have involved profit sharing.

[00:00:59] Speaker 00:
Second.

[00:01:00] Speaker 01:
Can I ask you this?

[00:01:01] Speaker 01:
We don't have to reach that question if we determine that the statute of limitations defense was properly allowed, do we?

[00:01:09] Speaker 00:
Yes.

[00:01:11] Speaker 00:
Your Honor, it's not just a matter of whether the statute of limitations defense was properly allowed.

[00:01:15] Speaker 00:
You'd still have to reach this issue because if you find there is a actual legal remedy

[00:01:24] Speaker 00:
then the statute of limitations defense would have been tried to a jury.

[00:01:31] Speaker 00:
So in that instance, the judge is not the right party to try to determine the facts of the statute of limitations defense.

[00:01:38] Speaker 00:
So the threshold question for you is to determine if there is a legal remedy.

[00:01:43] Speaker 03:
Are there any disputed facts with respect to the statute of limitations defense?

[00:01:47] Speaker 00:
Well, Your Honor, so there's two parts to that.

[00:01:50] Speaker 00:
So let me set the stage a little bit and I'll answer that question.

[00:01:53] Speaker 00:
So even on this record, there are disputed facts.

[00:01:56] Speaker 00:
But just so you understand the procedural posture in which this has come in for the statute of limitations.

[00:02:02] Speaker 00:
When the case started, there was no statute of limitations in the case.

[00:02:06] Speaker 00:
And what the judge effectively said was,

[00:02:10] Speaker 00:
If we tried the statute of limitations defense under 15B, he would make the pleadings comport with the record.

[00:02:19] Speaker 00:
And so during the trial, we didn't put in any evidence on the statute of limitations specifically.

[00:02:24] Speaker 03:
So what is the standard of review that we have to apply

[00:02:27] Speaker 03:
to the judge's decision with respect to allowing that statute of limitations defense later?

[00:02:32] Speaker 00:
That would be an abuse of discretion.

[00:02:34] Speaker 00:
But in this case, my main point was going to be that the issue in front of him that he decided was a motion to amend to allow the statute of limitations defense.

[00:02:44] Speaker 00:
What he did was he went one step further.

[00:02:47] Speaker 00:
We have never as a side gotten to argue the substance of the statute of limitations defense.

[00:02:52] Speaker 00:
So we were very careful during trial not to try to put in any evidence on it or and object every chance we got.

[00:03:00] Speaker 00:
And so in the briefing, what we argued about was whether just on the motion to amend.

[00:03:08] Speaker 00:
And there was no substantive argument that we provided on all the bases for why the statute of limitations alone would be applicable.

[00:03:16] Speaker 00:
But even on this record, the facts that are there for fraudulent concealment,

[00:03:23] Speaker 00:
would be one basis to not be able to rule as a matter of law on the statute of limitations.

[00:03:28] Speaker 00:
Another probably easier one to find, which is undisputed, is Corning's own witnesses saying they started the development of the hyperstack in 2008, which falls within the period of the statute of limitations for the breach of contract claim.

[00:03:42] Speaker 00:
And again, that would be another reason why you can't decide the statute of limitations on this record.

[00:03:48] Speaker 00:
You can't decide it as a matter of law.

[00:03:54] Speaker 00:
The other independent reason that Wilson gets a jury trial is that under Minnesota law, unjust enrichment is a legal remedy when the calculation is a remedy for a violation of the Minnesota Trade Secrets Act, and also when it's a remedy for a breach of contract.

[00:04:17] Speaker 00:
Because it's a legal remedy, Wilson, again, is entitled to a jury trial.

[00:04:23] Speaker 00:
And so as for Corning statute of limitations defense, if I'm right that Corning is entitled to a jury trial, then the facts relevant to the statute of limitations should have gone to that same jury.

[00:04:37] Speaker 00:
And the only reason the judge decided those factual disputes here was that there was no jury.

[00:04:42] Speaker 00:
So I'm happy to talk about any of the other issues raised in the briefs, but these three issues alone resolve this appeal.

[00:04:51] Speaker 00:
Now, on that first issue, if you look at the record, and in particular, our attachment of our experts, Wilson's experts, Lidington's report, you will see what is effectively a picture of a but for analysis for reasonable royalty, which clearly is a legal remedy that would entitle us to a jury.

[00:05:18] Speaker 03:
When you're asking us to look at the record, do you want to point us to specific JA pages?

[00:05:23] Speaker 00:
Your Honor, I certainly can.

[00:05:25] Speaker 00:
So Ms.

[00:05:26] Speaker 00:
Levington's report where the compensatory damages is being addressed, I think, starts on page appendix 6484.

[00:05:36] Speaker 00:
And it continues through, I think, 6501.

[00:05:42] Speaker 00:
But the main thing to understand is if you look at that, if you look at her analysis, she does a reasonable royalty analysis under Georgia Pacific.

[00:05:52] Speaker 00:
She looks at actual agreements Corning entered into for this type of a situation.

[00:06:00] Speaker 00:
She looks at actual agreements Wilson entered into for this type of a situation.

[00:06:06] Speaker 00:
She analyzes Corning's internal statements

[00:06:09] Speaker 00:
for how it wanted to have a relationship with Mr. Wilson or Wilson-Wolfe.

[00:06:14] Speaker 00:
And she looks at an actual proposal Wilson made to Corning for this very situation.

[00:06:21] Speaker 00:
Based on all of that, she comes to effectively a profit sharing analysis.

[00:06:27] Speaker 00:
And that reasonable royalty analysis would certainly entitle John Wilson and Wilson-Wolfe to a jury trial.

[00:06:36] Speaker 00:
Now separately, same with the Minnesota statute, if you look at the Czerny case that we cite on pages 13 and 14 of our brief, the Minnesota Supreme Court makes it very clear that for breach of contract, and in this case that's the case the judge applied, that's a compensatory claim even if it's for unjust enrichment.

[00:06:57] Speaker 00:
And so under Minnesota law,

[00:07:00] Speaker 02:
Well, let me ask you why, if we agree with you on the breach of contract that your expert opined a reasonable royalty, not just disgorgement, and therefore it wasn't a purely equitable remedy, it was a legal remedy over which you had a right to a jury trial.

[00:07:17] Speaker 02:
So we agree on all that.

[00:07:19] Speaker 02:
What, if anything, does that do with the misappropriation

[00:07:23] Speaker 02:
claim because the misappropriation claim to me, it seems, is clearly based on disgorgement, which is entirely equitable remedy.

[00:07:31] Speaker 02:
And I don't see an error in the district court's assessments of the statute of limitations on the misappropriation claim.

[00:07:39] Speaker 02:
So let's just answer my specific question, which is, if I agree with you that there's a problem with regard to the breach of contract and that you had a right to a jury trial because you alleged damages that were compensatory in nature

[00:07:52] Speaker 02:
What happens with the misappropriation claim under that articulation?

[00:07:56] Speaker 00:
So there's two bases that the misappropriation claim still goes forward to a jury.

[00:08:02] Speaker 00:
One is the Minnesota Uniform Trade Secrets Act, which defines damages to include unjust enrichment.

[00:08:10] Speaker 00:
And so as such, it's a legal remedy.

[00:08:13] Speaker 00:
Second is that even for misappropriation,

[00:08:18] Speaker 00:
you can still apply the reasonable royalty analysis.

[00:08:22] Speaker 00:
And as such, that would also entitle us to a jury.

[00:08:33] Speaker 00:
Now.

[00:08:34] Speaker 03:
Can you also point us to where in the record there is support for your arguments that you would have been

[00:08:42] Speaker 03:
properly applying with the statute of limitations for both the breach of contract and the trade secret misappropriation claim.

[00:08:49] Speaker 03:
I know that you mentioned a 2008 date, for example.

[00:08:52] Speaker 03:
Can you give me a J.D.

[00:08:53] Speaker 00:
site that would correspond?

[00:09:17] Speaker 00:
Your Honor, I'll give you a site, but just I can describe it for you.

[00:09:21] Speaker 03:
Do you want to give it to me?

[00:09:22] Speaker 03:
I'm assuming I do rebuttal.

[00:09:23] Speaker 03:
Can you give it to me when you get up on rebuttal later?

[00:09:25] Speaker 00:
Yeah.

[00:09:29] Speaker 00:
OK.

[00:09:30] Speaker 00:
But that evidence will show it's Corning's own witnesses confirming that they started the development of the hyperstack product in 2008, which is the period.

[00:09:42] Speaker 00:
That's a period covered by the non-use under the contract.

[00:09:46] Speaker 00:
And so a claim that we filed in 2013 would fall within the six-year statute of limitations.

[00:09:53] Speaker 03:
Are you making a corresponding sort of contention with respect to the trade secret mission appropriation claim, or are you agreeing that that

[00:10:00] Speaker 03:
all outside the statute of limitations.

[00:10:04] Speaker 00:
The misappropriation of trade secrets claim, to be clear, Your Honor, the reason that would be still in the case is for fraudulent concealment.

[00:10:17] Speaker 00:
That there's fraudulent concealment from 2007 to 2009, even in the few facts that came in that we highlight in our brief.

[00:10:26] Speaker 00:
There was a guy, Mr. Beck from Corning, when Wilson first suspected there was a problem, called Mr. Beck at Corning.

[00:10:33] Speaker 00:
Mr. Beck told him he was going to specifically undertake an investigation, put people on that investigation.

[00:10:39] Speaker 00:
Two years later, he called Mr. Wolf and Mr. Wilson and Mr. Beck talked a couple of years later in 2009, and Mr. Beck assured him there was no problem.

[00:10:50] Speaker 00:
So that is just on this bare record, without us putting in any evidence, there's evidence to show there's fact issues on whether fraudulent concealment applies or not.

[00:11:00] Speaker 00:
And if fraudulent concealment is found, the statute is told and the misappropriation of credit secrets have been filed within the statutory period.

[00:11:14] Speaker 03:
And there was obviously a latches defense that was raised.

[00:11:17] Speaker 03:
Do you contend that there are

[00:11:20] Speaker 03:
different facts that would have been presented with respect to that, as opposed to with respect to a statute of limitations defense?

[00:11:26] Speaker 00:
So, Your Honor, the latches defense, I want to be very clear.

[00:11:30] Speaker 00:
So the latches defense was in the case from the beginning.

[00:11:33] Speaker 00:
And our defenses to the latches defense were unclean hands on the part of Corning, the delay was not unreasonable, and there was no prejudice to Corning.

[00:11:46] Speaker 00:
All three defenses fully cover latches

[00:11:49] Speaker 00:
and are only four latches.

[00:11:51] Speaker 00:
They don't apply to the statute of limitations.

[00:11:54] Speaker 00:
The statute of limitations was never in the case.

[00:11:57] Speaker 00:
And so we didn't take on the additional burden of trying to show that there was actually fraud on the part of Corning to have fraudulent concealment.

[00:12:05] Speaker 00:
So when you say are there additional facts, it would be the focus of the presentation.

[00:12:09] Speaker 00:
That's why I started with the procedural posture of how we came into the trial.

[00:12:14] Speaker 00:
and how consistent we were during the trial, objecting to any evidence relating to the statute of limitations, because it was not in the case.

[00:12:22] Speaker 00:
The judge had warned us if we had put it in the case and responded, it would be part of the case.

[00:12:27] Speaker 00:
And so the first instance, it was just simply fighting about whether it was going to be in the case at all.

[00:12:33] Speaker 02:
Counsel, your volunteer rebuttal time, would you like to save some?

[00:12:36] Speaker 00:
Yeah, I would, yeah.

[00:12:37] Speaker 00:
OK.

[00:12:45] Speaker 04:
Good morning, Your Honors and may it please the court.

[00:12:47] Speaker 04:
I'm Linda Koverly for Corning, Incorporated.

[00:12:52] Speaker 04:
Beginning with the statute of limitations defense, there was no prejudice here.

[00:12:57] Speaker 01:
Can we just start with his point that even if there was no abuse of discretion in allowing it, it should have been tried to a jury and not decided by the judge.

[00:13:08] Speaker 04:
So first of all, that's an argument that was not made in the district court.

[00:13:12] Speaker 04:
And I just want to address counsel's point that he didn't have an opportunity to argue the merits of the statute of limitations defense.

[00:13:19] Speaker 04:
That's just not true.

[00:13:21] Speaker 04:
We moved after trial.

[00:13:24] Speaker 04:
We moved several times before.

[00:13:27] Speaker 01:
because this is that's what I really care about is whether this if assuming I find no abuse of discretion whether it was wrong for the judge to decide it so when you moved again to amend the complaint or amend and allow the statute of limitations defense after the trial their opposition didn't say that this should have been tried to the jury if it's allowed it did not your honor and we moved without two motions we filed a 15b motion which is a

[00:13:56] Speaker 04:
which is part of what the judge specifically forecast for counsel before the trial began.

[00:14:02] Speaker 04:
The judge said, consistent with Rule 15B, the court will address

[00:14:08] Speaker 04:
any statutes of limitations, issues, or evidentiary matters that arise.

[00:14:11] Speaker 02:
Okay, Counsel, in your brief to us, in your red brief, I don't remember you saying they waived their now argument in their blue brief that there should have been a jury trial.

[00:14:23] Speaker 04:
We did not read the argument in the blue brief to include that argument.

[00:14:27] Speaker 04:
I'll be honest with you, if you look at the statute, if you look at the statement of issues in the brief,

[00:14:43] Speaker 02:
I mean, page 21 is called Seventh Amendment right to a jury trial.

[00:14:47] Speaker 04:
I understand, and the argument they were making for a jury trial is that the remedy was legal and not applicable.

[00:14:57] Speaker 02:
Page 24 is Wilson-Wolfe's request for reasonable royalties is a request for compensable damages and therefore a legal remedy for which Wilson-Wolfe is entitled to a jury trial.

[00:15:06] Speaker 04:
Yes, they certainly made that argument.

[00:15:07] Speaker 04:
What I didn't see, Your Honor, is the argument that Judge Hughes is referring to.

[00:15:12] Speaker 04:
which is the argument that regardless of whether, that there had to be a jury trial on the statute of limitations independently.

[00:15:21] Speaker 04:
And if you look at the statement of issues, the only argument they raise, they don't take issue here with the fact that the judge resolved the statute of limitations as a matter of law.

[00:15:31] Speaker 04:
The statement of the issue says whether the district court erred in denying a Wilson-Wilford trial by jury on its contract and trade secret claims

[00:15:40] Speaker 04:
even though Wilson-Wolf sought compensatory damages in connection with both claims.

[00:15:44] Speaker 04:
It doesn't mention the statute of limitations.

[00:15:46] Speaker 02:
Okay, well, here's the problem.

[00:15:48] Speaker 02:
So let's start with the complaint for me.

[00:15:50] Speaker 02:
I'll tell you what my problem is.

[00:15:51] Speaker 02:
Let's go to page 5164 of the Complaint Council.

[00:15:55] Speaker 02:
Page 5164.

[00:15:56] Speaker 02:
This is where they lay out their breach of contract claim in their complaint.

[00:16:10] Speaker 02:
Number four, Wilson-Wolfe's breach of contract claims similarly seeks equitable relief, namely disgorgement, and projected revenue through profits, either as restitution damages or an improperly imposed 50-50 profit sharing.

[00:16:26] Speaker 02:
As such, plaintiffs have no right to a jury trial and claim all this.

[00:16:30] Speaker 02:
I'm sorry.

[00:16:30] Speaker 02:
I'm reading from your arguments.

[00:16:32] Speaker 02:
I'm sorry.

[00:16:32] Speaker 02:
Let me go to theirs.

[00:16:33] Speaker 02:
I want to go to theirs.

[00:16:35] Speaker 04:
Your Honor, I think I can

[00:16:36] Speaker 04:
I think I can shortcut this and answer your question directly.

[00:16:40] Speaker 04:
I'm not saying that they did not raise an argument below that they were entitled to a jury trial.

[00:16:45] Speaker 04:
They obviously did.

[00:16:47] Speaker 04:
I'm responding to Judge Hughes' question, which was, did they argue in the district court that the statute of limitations issue itself should be tried to the jury?

[00:16:57] Speaker 04:
And the answer to that question is no.

[00:17:00] Speaker 02:
But they did argue that when you have a jury trial, the jury trial extends to everything.

[00:17:06] Speaker 02:
They argued that.

[00:17:07] Speaker 02:
They did argue that.

[00:17:09] Speaker 02:
Well, that means everything is everything.

[00:17:11] Speaker 01:
They didn't argue that with regards to in opposition to your 15B motion, and they did not argue that in their blue brief to us.

[00:17:19] Speaker 01:
I do see it as a gray brief to us.

[00:17:21] Speaker 04:
I agree with you, and so if I could respond to the question, the issue on the merits as well.

[00:17:25] Speaker 02:
And by the way, the other point... I want you to go with me back to the complaints.

[00:17:29] Speaker 02:
Now, I found the page I wanted to be on.

[00:17:30] Speaker 02:
It's actually Appendix 279.

[00:17:32] Speaker 02:
It is their complaint.

[00:17:34] Speaker 02:
It's paragraph 128.

[00:17:40] Speaker 02:
Corning breached the agreement by filing.

[00:17:43] Speaker 02:
This is their breach of contract, 896 and 347 provisional applications, and by filing utility patents, claiming priority to those.

[00:17:52] Speaker 02:
Well, those utility patents, as their filings show, some of them were filed in 2006.

[00:17:59] Speaker 02:
One of them was filed in 2010.

[00:18:01] Speaker 02:
It's the 572 patent.

[00:18:03] Speaker 02:
The one in 2006 was the 209 patent.

[00:18:06] Speaker 02:
All of those would be a problem for you under the statute of limitations argument.

[00:18:10] Speaker 02:
They made these arguments.

[00:18:11] Speaker 02:
I'm not making these arguments.

[00:18:12] Speaker 04:
They made those allegations.

[00:18:14] Speaker 04:
Yes.

[00:18:14] Speaker 04:
I think you're reading from the complaint.

[00:18:15] Speaker 04:
They made those allegations.

[00:18:17] Speaker 04:
Here's what happened after the complaint.

[00:18:18] Speaker 04:
I'm definitely reading from the complaint.

[00:18:19] Speaker 04:
Right.

[00:18:19] Speaker 04:
Here's what happened after the complaint.

[00:18:21] Speaker 04:
What happened after the complaint is that it became apparent, and the district court held on a summary judgment motion, that the last possible date of infringement was April 2005.

[00:18:34] Speaker 04:
And that's because on April 21st, 2005, all of Wilson's trade secrets became public.

[00:18:43] Speaker 04:
Wilson's own patent application was published to the world on April 2005.

[00:18:49] Speaker 04:
So on summary judgment, before the jury issue was presented to anyone, on summary judgment, the court held that the last possible date of misappropriation was April 21, 2005.

[00:19:01] Speaker 02:
But this is not misappropriation.

[00:19:02] Speaker 02:
This is breach of contract.

[00:19:03] Speaker 04:
So to draw that connection, then, the same exact thing applies to breach of contract because

[00:19:12] Speaker 04:
Again and again in this case, plaintiff conceded, as he had to, that the design that became part of the HyperStat, which is what was launched in the later years, was complete by April 2005.

[00:19:28] Speaker 04:
And if I could read from the record, page 4294 of the trial transcript, quoting Campbell, by the time Wilson's patent was published,

[00:19:41] Speaker 04:
John's insights had already motivated, led to, and contributed to Corning's new progress.

[00:19:47] Speaker 03:
Do we have access to the page you're reading from?

[00:19:50] Speaker 03:
No.

[00:19:51] Speaker 04:
You do.

[00:19:51] Speaker 04:
It's part of the trial transcript, and we will find the... Is it in the joint appendix, is the question?

[00:19:56] Speaker 04:
Yes.

[00:19:56] Speaker 04:
No, it's not.

[00:19:57] Speaker 04:
It is not.

[00:20:00] Speaker 04:
I will also... So what I'm reading from right now, Your Honor, and we can...

[00:20:04] Speaker 04:
provide these to you directly.

[00:20:05] Speaker 02:
I guess I just don't even understand your argument.

[00:20:08] Speaker 02:
Let me just let me just make it simple for you.

[00:20:10] Speaker 02:
They made allegations in their complaint that are within the period and therefore not barred by the statute of limitations.

[00:20:18] Speaker 02:
They said when you filed certain patent applications that constituted a breach of contract, those patent applications were filed

[00:20:26] Speaker 02:
inside the window that would not be covered by the statute of limitations.

[00:20:30] Speaker 02:
The statute of limitations goes back to a certain date.

[00:20:32] Speaker 02:
These are more recent filings.

[00:20:34] Speaker 02:
They allege that those things constitute a breach of contract.

[00:20:37] Speaker 02:
They then allege that the damages they should be entitled to for those breach of contracts was a reasonable royalty, which is a legal remedy.

[00:20:45] Speaker 02:
I don't know.

[00:20:45] Speaker 02:
To me, that means they should have gotten a jury trial on all this.

[00:20:48] Speaker 04:
So I would love to give, there's several answers to what Your Honor just posed, and I would like to answer it very directly.

[00:20:56] Speaker 04:
After the complaint, they gave up those claims.

[00:20:59] Speaker 04:
They gave them up because they had to, because it became apparent.

[00:21:03] Speaker 02:
Show me exactly where they gave the claims up, because I see throughout the briefing them saying, both before the court below and on us on appeal, that the filing of patent applications constituted a breach of contract.

[00:21:15] Speaker 02:
So how am I getting that wrong?

[00:21:18] Speaker 04:
Your Honor, the district court specifically found

[00:21:21] Speaker 04:
that the contract claim accrued in April 2005 because that was the last date.

[00:21:27] Speaker 04:
That was the last breach that Wilson attempted to prove at trial.

[00:21:32] Speaker 02:
That sounds like a question of fact, right?

[00:21:34] Speaker 02:
They alleged.

[00:21:36] Speaker 04:
I don't understand.

[00:21:40] Speaker 04:
So I'd like to separate out the individual issues, Your Honor.

[00:21:43] Speaker 04:
On the statute of limitations issue, by the time we got to trial,

[00:21:47] Speaker 04:
Wilson had stopped saying that there was a new breach in 2008.

[00:21:53] Speaker 04:
And because he couldn't say there was a new breach in 2008, at that point his information was not confidential.

[00:21:59] Speaker 04:
His information was not confidential in 2008.

[00:22:02] Speaker 04:
It was available to the public because it became available on April 21, 2005.

[00:22:07] Speaker 04:
So whatever happened.

[00:22:09] Speaker 02:
How did it become available?

[00:22:10] Speaker 04:
His patent application, which he had filed with the government, published to the world.

[00:22:15] Speaker 04:
his own patent.

[00:22:16] Speaker 04:
The confidential information at issue in this case was contained in a patent application that had been filed and that was provided by Wilson to Corning.

[00:22:27] Speaker 04:
On April 21, 2005, that patent application ceased to be confidential.

[00:22:33] Speaker 04:
It became published to the world.

[00:22:35] Speaker 04:
After that date, there was no obligation under the contract as a matter of law for Corning to not use information.

[00:22:44] Speaker 04:
To step aside, Corning didn't use Wilson's information.

[00:22:48] Speaker 04:
But under the terms of the contract, once the information became public.

[00:22:52] Speaker 02:
So just to make sure I understand your argument.

[00:22:54] Speaker 02:
So you're saying, look, the complaint may have alleged things, which entitled them to a jury trial.

[00:22:59] Speaker 02:
And that's why they actually pled a jury trial, and the judge didn't strike it at that time.

[00:23:03] Speaker 02:
Correct.

[00:23:04] Speaker 02:
The judge only struck the jury trial after these pleadings had ceased to continue to be at issue in the case.

[00:23:14] Speaker 02:
by virtue of the information going public?

[00:23:19] Speaker 04:
Not exactly.

[00:23:19] Speaker 04:
Okay.

[00:23:21] Speaker 04:
The pleadings were the pleadings.

[00:23:22] Speaker 04:
Obviously, they were the pleadings because if the plaintiff had amended their complaint, we would have amended our answer.

[00:23:28] Speaker 02:
My thing was, I looked at this, I'm like, all right, he's got some allegations that include breach of contract that occurred within the period that is not barred by the statute of limitations, and he asked for a jury trial on those things, and he pled damages which are reasonable royalty.

[00:23:43] Speaker 02:
I mean, you're never going to convince me the pleading is not for reasonable royalty.

[00:23:46] Speaker 02:
I read that expert report.

[00:23:48] Speaker 02:
I think that's reasonable royalty.

[00:23:49] Speaker 02:
I think that is a legal remedy that he is seeking, not an equitable remedy.

[00:23:52] Speaker 02:
So upon that, you have no chance with me.

[00:23:54] Speaker 02:
So don't spend any time on that for me anyway.

[00:23:57] Speaker 02:
But so the question is, does he have any claim that isn't barred by the statute of limitations for which that legal remedy is available?

[00:24:04] Speaker 04:
And the answer is no, Your Honor, because by the time we got to the jury motion, first of all, the court applied national presto.

[00:24:15] Speaker 04:
And national presto requires more than a pleading.

[00:24:18] Speaker 04:
National presto in the Eighth Circuit, which is the relevant regional circuit here, requires proof

[00:24:24] Speaker 04:
that a demand for damages or demand for disgorgement actually correspond with damages.

[00:24:31] Speaker 04:
So it's not enough.

[00:24:32] Speaker 04:
According to the Eighth Circuit, which is what binds this decision here, according to the Eighth Circuit, it is not enough as a matter of federal law for a plaintiff to say, oh, I believe

[00:24:45] Speaker 04:
It's a reasonable royalty.

[00:24:46] Speaker 04:
I believe I'm seeking.

[00:24:48] Speaker 04:
I intend to seek compensation.

[00:24:49] Speaker 02:
I think that you're wrong.

[00:24:50] Speaker 02:
I know that Gaitham Circuit applies to patent damages or this kind of damages.

[00:24:54] Speaker 02:
Do they have reasonable royalty?

[00:24:55] Speaker 02:
I guess this is an appropriation.

[00:24:56] Speaker 02:
This is not patent damages.

[00:24:57] Speaker 02:
You're right.

[00:24:57] Speaker 02:
You're right.

[00:24:57] Speaker 02:
It's an appropriation.

[00:24:58] Speaker 02:
This is trade secret damages.

[00:24:59] Speaker 02:
Yeah.

[00:24:59] Speaker 02:
Got it.

[00:24:59] Speaker 02:
And that makes a very big difference.

[00:25:01] Speaker 02:
No, that's OK.

[00:25:02] Speaker 02:
You got me corrected.

[00:25:02] Speaker 04:
That makes a very big difference for one very important reason, which is under the patent law under 284, the court must award at a minimum reasonable royalty.

[00:25:12] Speaker 04:
That is not true under Minnesota trade secret law.

[00:25:15] Speaker 04:
And of course, so we do look to the regional circuit.

[00:25:19] Speaker 02:
Okay, but let's assume I still think you're wrong, and let's assume that I still think those damages are a legal remedy.

[00:25:25] Speaker 02:
Does he not have a right to a jury trial?

[00:25:26] Speaker 04:
He does not, Your Honor, because of the statute of limitations.

[00:25:30] Speaker 01:
Can I ask you this?

[00:25:32] Speaker 01:
Let's assume

[00:25:38] Speaker 01:
there's a it's it's a little I mean I don't understand why the district court didn't just allow you to create deception limitations and try it it would have made this case a lot cleaner but it seems to me your argument is that

[00:25:51] Speaker 01:
at least by the time you got to trial, there was no effort by the plaintiff to prove and act a breach of contract that fell within the statute of limitations period.

[00:26:03] Speaker 01:
And so even if there had been a right to a jury trial on that issue,

[00:26:10] Speaker 01:
because there clearly would have been a right to a jury trial on that issue, that the proof at trial shows that none of those acts would have been within the statute of limitations period and therefore when he granted your motion to dismiss for statute of limitations,

[00:26:28] Speaker 01:
which didn't seem to be opposed on the grounds that that very issue should have been tried in the jury trial because there was no, at most it's harmless air.

[00:26:36] Speaker 01:
I don't think you argued it that way necessarily, but I also did not see in their blue brief an argument that specifically we should have been, even if you allow them to amend that statute of limitations defense should have been tried to the jury trial.

[00:26:51] Speaker 01:
Sure, the overall argument

[00:26:54] Speaker 01:
about a jury trial stays consistent, but I don't see anywhere in the blue brief that says that district court erred and not allowing the sexual limitation defense to go to a jury after the amendment.

[00:27:07] Speaker 04:
I think that's exactly right.

[00:27:09] Speaker 01:
Is that because the undisputed facts are at trial, or at least all the evidence at trial shows whatever that April, whatever date you're talking about, that that's the last possible date for breach

[00:27:23] Speaker 04:
Yes.

[00:27:23] Speaker 01:
And they didn't attempt to prove any breach states after that?

[00:27:26] Speaker 04:
That's correct, because they conceded again and again at trial.

[00:27:29] Speaker 03:
Can you just show us some joint appendix pages that support up what you just indicated in the conversation that you had with Judge Hughes?

[00:27:36] Speaker 03:
I just want to be able to see the support.

[00:27:38] Speaker 04:
Yes, so what I would like to quote for you, and I don't know if the trial transcript is in the joint appendix, my colleague is looking for that right now, but if I could for purposes of right now, could I use the trial transcript pages and I will provide to the court a joint appendix page after the argument.

[00:27:56] Speaker 04:
So page 4294 of the trial transcript, council concedes that by the time the patent was published,

[00:28:07] Speaker 04:
the insights had already moded to, led to, and contributed to Corning's new products.

[00:28:14] Speaker 04:
The quote actually settled on the device design in March or April 2005.

[00:28:20] Speaker 04:
That's page 4295 of the trial transcript.

[00:28:24] Speaker 03:
Can your co-counsel be finding these pages in the joint appendix as you're shouting them out?

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

[00:28:29] Speaker 04:
Yes.

[00:28:30] Speaker 04:
Also, in the pretrial findings and conclusions offered by

[00:28:36] Speaker 04:
Council before trial, they said that in March 20, 2005 is quote, when Corning had settled on the basic design for the device, also paragraph 549 of the pretrial findings and conclusions.

[00:28:53] Speaker 04:
And I quote, and this one is very important, quote, by April 2005, Corning had used Wilson-Wolfe's trade secrets without Wilson's consent

[00:29:05] Speaker 04:
to design Corning's hyperproducts.

[00:29:09] Speaker 04:
Not just the hyperflask, the first product, but also the hyperstack.

[00:29:14] Speaker 04:
It is true, of course, that the hyperstack device was a different version of the same technology.

[00:29:21] Speaker 04:
It was a larger footprint.

[00:29:22] Speaker 04:
But the basic design that Wilson says Corning took from him was for a

[00:29:29] Speaker 04:
particular, a particular multi-flask design.

[00:29:33] Speaker 04:
That design was complete by April 2005.

[00:29:36] Speaker 04:
That was not disputed at trial.

[00:29:38] Speaker 03:
And the reason- So what is your response to the 2008 date?

[00:29:40] Speaker 03:
Just give me that response that opposing counsel was pointing to a 2008 date.

[00:29:44] Speaker 04:
They didn't argue it was a separate breach.

[00:29:46] Speaker 04:
They couldn't.

[00:29:47] Speaker 04:
They couldn't because the contract does not bar the use of information already available to the public.

[00:29:56] Speaker 04:
The judge held that as a matter of law

[00:29:59] Speaker 04:
in its opinion.

[00:30:01] Speaker 04:
The contract did not bar uses after April 2005.

[00:30:05] Speaker 04:
That's why.

[00:30:07] Speaker 02:
Do you know where we can find that?

[00:30:09] Speaker 04:
That holding?

[00:30:10] Speaker 04:
It's Appendix 32 and Footnote 3 on that appendix that is the court's ruling that talks about that interpretation of the contract.

[00:30:25] Speaker 02:
All right, Council, your time is up.

[00:30:27] Speaker 02:
No, no, no more to the anything.

[00:30:28] Speaker 02:
Let's hear from your opposing council.

[00:30:47] Speaker 00:
Page 38 of the blue brief, we actually point out that the court should vacate, this court should vacate the district court's determination on the statute of limitations because we get a jury trial.

[00:30:59] Speaker 00:
It's at the bottom of page 38, it's just a paragraph.

[00:31:04] Speaker 01:
Did you put that in your opposition to the motion to amend?

[00:31:10] Speaker 00:
in our opposition to the motion to amend?

[00:31:13] Speaker 01:
Did you tell the district court that you, even if he allowed you to amend, or allowed them to amend, put in a statute of limitations that it needed to go to a jury?

[00:31:22] Speaker 00:
So, Your Honor, at the time that we were, at the time we argued, so we didn't, oh, I'm sorry, I apologize.

[00:31:27] Speaker 01:
You want to explain, I get it.

[00:31:28] Speaker 01:
Is there a yes or no, and then you can explain.

[00:31:30] Speaker 00:
Okay.

[00:31:31] Speaker 00:
I don't recall specifically saying to the district court, hey, we need to try the statute of limitations to the jury.

[00:31:37] Speaker 02:
Was that because the statute of limitations wasn't actually in the case at that point?

[00:31:41] Speaker 02:
Yes.

[00:31:41] Speaker 02:
Okay.

[00:31:41] Speaker 02:
That seems like a reasonable reason.

[00:31:43] Speaker 00:
That's the only reason.

[00:31:44] Speaker 00:
When they were arguing about getting it in, we were just fighting about whether that should be in.

[00:31:48] Speaker 01:
But no, it's not.

[00:31:49] Speaker 01:
In response to a motion after the trial to amend and say, we want to impose a statute of limitations defense.

[00:31:58] Speaker 01:
I get it.

[00:31:58] Speaker 01:
You didn't have to specifically call it out because it wasn't in the case.

[00:32:02] Speaker 01:
As soon as they asked it to be in the case, did you tell the district court judge,

[00:32:07] Speaker 00:
that even if he allowed it, it had to go to a jury.

[00:32:11] Speaker 00:
Your Honor, we didn't because at that point the jury was struck and we really thought the only thing we were fighting about was whether they still get to amend their pleading to include the statute of limitations.

[00:32:23] Speaker 00:
We thought there was going to be a second effort about what we're going to do for the record for him to decide it.

[00:32:31] Speaker 00:
So let me give you the citations in the record for this 2008 date.

[00:32:35] Speaker 00:
It's from page 23 of our reply brief, but if you look at appendix pages 9523 at its deposition, I mean its trial transcript page 1994 from lines 10 to 19,

[00:32:52] Speaker 00:
It'll say the hyperstats began working 2008.

[00:32:55] Speaker 00:
And then you can also look at appendix pages 10665 to 10666 at pages 3136, line 10, to page 3137, line 10, for the same thing.

[00:33:11] Speaker 03:
What is your direct response to opposing counsel's argument that there was the finding with respect to the 2005 date?

[00:33:16] Speaker 03:
Okay.

[00:33:18] Speaker 00:
That's a great question, Your Honor.

[00:33:20] Speaker 00:
On the 2005 date, let me clarify what happened in the order that opposing counsel is talking about.

[00:33:26] Speaker 00:
The judge made a determination for trade secrets to say, any trade secrets we have, because that application published in April of 2005 were public after 2005, we had to show misappropriation before April 2005 for those trade secrets.

[00:33:44] Speaker 00:
So that's separate.

[00:33:45] Speaker 00:
The contract, very different.

[00:33:48] Speaker 00:
The contract has notice provisions, a lot of other things.

[00:33:51] Speaker 00:
And even after trial, in our post-trial presentation, and one example of that is in APPX 14.025, we argue for breaches using that 2008 date.

[00:34:06] Speaker 00:
And so we've never given up a trial we didn't give it up.

[00:34:09] Speaker 00:
The only reason that 2005 date always sticks with everybody is part of this case is a trade secret case.

[00:34:16] Speaker 00:
The judge did have a ruling on the trade secrets and when they became public.

[00:34:21] Speaker 00:
And so part of what our burden of proof was, was to show misappropriation by corning.

[00:34:27] Speaker 00:
prior to that April 2005 date, as to the trade secret claim.

[00:34:31] Speaker 00:
But as to the contract claim, that April 2005 date is not relevant for that.

[00:34:36] Speaker 00:
And we did have allegations and proof of additional breaches in 2008, which falls within the statutory time period.

[00:34:46] Speaker 02:
Okay, I thank both counsel.

[00:34:47] Speaker 02:
This case is taken under submission.