[00:00:00] Speaker 02:
Our next argument for appeal is Ironberg Inventions versus Valve Corporation.

[00:00:05] Speaker 02:
This is a document number 24-2088.

[00:00:11] Speaker 02:
Whenever you're ready, please begin.

[00:00:15] Speaker 02:
Could you state your name for the record?

[00:00:17] Speaker 00:
Yes.

[00:00:18] Speaker 00:
Pat Lujan on behalf of the appellant, Valve Corporation.

[00:00:22] Speaker 00:
Morning, Your Honors.

[00:00:23] Speaker 00:
May it please the Court?

[00:00:27] Speaker 00:
In the previous opinion in this case, this court found that Ironberg had the burden of proving what a skilled searcher conducting a diligent search could have reasonably expected to discover.

[00:00:39] Speaker 00:
And last time around, Ironberg's only evidence was the fact that Collective Minds Gaming, or CMG for short, had filed an IPR petition.

[00:00:48] Speaker 00:
Following remand, there is no new evidence relating to Collective Minds.

[00:00:53] Speaker 00:
Valve had produced evidence of its 2014 search by Landon IP that did not find the Kotkin, Koji, or Raymond references.

[00:01:01] Speaker 00:
And on remand, Valve produced an additional declaration from yet another person who was involved in that 2014 search that further corroborates that the Landon IP search did not find those three references and also further corroborates that the Landon IP search was a dilute search.

[00:01:16] Speaker 02:
Can we go any further?

[00:01:17] Speaker 02:
What do you think is the standard of review here for the district court's estoppel decision?

[00:01:24] Speaker 00:
Well, I think there are issues of law here.

[00:01:26] Speaker 00:
And I think there are also, with de novo review, and there may also be some issues of fact, there would be clear error.

[00:01:32] Speaker 02:
And I think- What would be the fact issues?

[00:01:36] Speaker 00:
Well, it's often, I don't know if this court has actually said it, but other courts have said that the fact of whether or not someone has met the skilled searcher standard is a fact question.

[00:01:48] Speaker 00:
They've certainly said it's fact intensive.

[00:01:50] Speaker 00:
And so that may be a fact issue.

[00:01:53] Speaker 02:
And there are a number of... Isn't that the whole inquiry?

[00:01:57] Speaker 02:
Whether a skilled searcher would have discovered the reference?

[00:02:01] Speaker 00:
I think there are some other inquiries as well.

[00:02:03] Speaker 00:
I do think that's an important inquiry.

[00:02:05] Speaker 00:
Another inquiry is, what does it mean to discover a reference?

[00:02:09] Speaker 00:
That's like a component of the skilled searcher standard.

[00:02:12] Speaker 01:
Is that legal or fact?

[00:02:14] Speaker 00:
I think that would be a legal question.

[00:02:15] Speaker 00:
What is that standard?

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I think another legal question before us is whether the mandate was violated or not.

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And that's the DeNovo review.

[00:02:25] Speaker 00:
Speaking of the discovery standard, I think there's a lot of uncertainty in the district courts about what would satisfy that standard and what wouldn't.

[00:02:34] Speaker 00:
In fact, the guide tech case actually states that the federal circuit has not refined exactly what facts and circumstances qualify as a skilled searcher conducting a diligent search.

[00:02:46] Speaker 01:
It seems like your view is you want us to say that discoverable is satisfied

[00:02:52] Speaker 01:
if you just do some type of, I suppose, reasonable search terms in the right database.

[00:03:01] Speaker 01:
And that's enough to make it.

[00:03:04] Speaker 01:
Actually, I guess that's their view.

[00:03:05] Speaker 01:
Sorry.

[00:03:06] Speaker 01:
You think for it to be discoverable, you have to find it, you have to read it, you have to understand it.

[00:03:12] Speaker 01:
Isn't that right?

[00:03:13] Speaker 00:
At some level, you have to understand that it has some potential relevance to the subject claims.

[00:03:18] Speaker 01:
And if we were to, and I think you've already said you think this is a question of law, how would you have us articulate what the legal rule is for district courts to follow in order to find a reference to be discoverable?

[00:03:32] Speaker 00:
Well, the one that we found in the district court cases so far that made sense to us is the Palomar standard, where they say that discovering a reference requires reading it and understanding its relevance in the context of the claim.

[00:03:43] Speaker 01:
Does that really mean, like, if you

[00:03:47] Speaker 01:
returned, I don't know, thousands of references.

[00:03:50] Speaker 01:
You have to read and understand all of them and figure out their relevance to the claims you're challenging in order to be stopped.

[00:03:58] Speaker 00:
No, I think if there's thousands of references and you have to read them all, I think that's a scorched earth search or close to it.

[00:04:04] Speaker 00:
I think what you need to do is you can use classifications, you can use keyword searching, but you need to narrow it down to a manageable number that you can review and then those ones that are

[00:04:14] Speaker 00:
or the smaller set can be reviewed.

[00:04:17] Speaker 00:
And those are the ones that are found and discovered.

[00:04:19] Speaker 02:
But even professional prior art searchers, they don't sit down with a cup of coffee and read each individual reference that they've located from word one to the final page.

[00:04:31] Speaker 02:
They're quickly scanning individual references.

[00:04:35] Speaker 02:
So that's why I'm following up on Judge Start's question as to what is really the scope and meaning

[00:04:44] Speaker 02:
of reading and understanding each and every reference that is found.

[00:04:48] Speaker 02:
It couldn't possibly mean reading it like reading a newspaper front to back.

[00:04:54] Speaker 02:
No, not at all.

[00:04:55] Speaker 03:
You actually even have to be reading.

[00:04:58] Speaker 03:
I mean, doesn't it just have to be you've limited your search to a universe that

[00:05:06] Speaker 03:
A searcher would normally be expected to find that reference.

[00:05:10] Speaker 03:
Clearly, if you return a search world of 10,000 or a thousand, even 500, I don't see how that's discoverable because you wouldn't expect anybody to sit down.

[00:05:20] Speaker 03:
But if you return a search world of 20.

[00:05:24] Speaker 03:
then are all of those considered to have been discovered?

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Because that's a small enough number that you would expect a competent or a skilled searcher to be able to look through them quickly and recognize their relevance or not.

[00:05:38] Speaker 00:
Yeah, agreed.

[00:05:39] Speaker 00:
And I also agree.

[00:05:40] Speaker 03:
OK, but here's my problem.

[00:05:43] Speaker 03:
How do we draw those lines and create a legal rule that says 20 is enough, but 500 is too much?

[00:05:50] Speaker 03:
And then we start narrowing that.

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Is 100 too much, or is it enough?

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I mean, we have to have some kind of standard.

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And I understand that's all going to be fact-based to a certain extent.

[00:06:01] Speaker 03:
But how do we craft, again, the legal rule that's going to guide the district courts on that?

[00:06:10] Speaker 00:
Well, and I can tell from your questions and from the briefing that that Palomar standard can be read many ways, like a deep voluminous reading or just a scan.

[00:06:19] Speaker 00:
And what we have in mind is, let's just say you have a claim that has three elements, A, B, and C. And the searcher would be quickly scanning each reference once it's down to a manageable number to see.

[00:06:30] Speaker 00:
I mean, surely the searcher would want to see that there was either an A, a B, or a C, or something like it in that reference.

[00:06:36] Speaker 00:
And then, OK, that one looks good.

[00:06:38] Speaker 00:
This one seems out in left field.

[00:06:40] Speaker 00:
So that's the kind of reading, scanning, and understanding, and finding some sort of potential relevance to the claim that we think would be appropriate.

[00:06:49] Speaker 00:
But by contrast, Your Honor, this is the Cardinal IP search report, these two volumes, volumes two and three of the appendix.

[00:07:00] Speaker 00:
well over 20,000 references.

[00:07:02] Speaker 00:
And those are families, so it could be in the hundreds of thousands of references.

[00:07:06] Speaker 00:
And I mean, if this court hasn't, like Gaetek mentioned, if this court hasn't

[00:07:13] Speaker 00:
provided guidance to the district courts about what satisfies the standard.

[00:07:16] Speaker 00:
I don't think this is the poster child case for it, where you've got 20,000 references.

[00:07:20] Speaker 00:
And there's a similar problem, that's the Cardinal IP search, with the way the district court interpreted the Landon IP search, also a pure classification search of unknown size.

[00:07:31] Speaker 01:
And for the- Are you asking us, in this case, to set what the standard is, at least for discoverability?

[00:07:37] Speaker 01:
Or you're saying we don't need to do that because the district court so clearly erred here?

[00:07:42] Speaker 00:
We would appreciate if you did set the standard in this case.

[00:07:46] Speaker 00:
We asked for that in our briefing.

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And we cited the Palomar standard.

[00:07:49] Speaker 00:
But I agree with you all that it needs to be refined somewhat.

[00:07:51] Speaker 01:
OK.

[00:07:52] Speaker 01:
So if we are going to set the standard here, you would have us read the word read as part of the Palomar standard, not to be literally read word for word.

[00:08:01] Speaker 01:
It's just something akin to a quick scan to identify

[00:08:06] Speaker 01:
at least one element of the challenge claim, something like that?

[00:08:09] Speaker 00:
Yeah, maybe not those exact words, but scan sufficient to identify some potential relevance to the claim.

[00:08:19] Speaker 01:
And then the estoppel actually doesn't apply necessarily to just references that are discoverable.

[00:08:27] Speaker 01:
It applies to grounds.

[00:08:29] Speaker 01:
In validity that are raiseable after a skilled searcher does a reasonably diligent search, right?

[00:08:35] Speaker 01:
Precisely.

[00:08:36] Speaker 01:
What if anything would you have us say, let's assume we could agree on what the discoverability test is, do we then need to go on and say something about what is the raiseability test?

[00:08:47] Speaker 01:
What does that mean?

[00:08:48] Speaker 00:
For this case, I don't think you need to.

[00:08:50] Speaker 00:
For one thing, I think that's a lot mercury issue because the grounds can be very different from one another.

[00:08:55] Speaker 00:
Even the two grounds in our case are very different.

[00:08:57] Speaker 00:
three reference combination on the one hand and on the other hand you have a published application that Cites to a provisional that contains additional disclosure that was necessary for the ground and so to have a one-size-fits-all Standard for for discovering a ground seems a little harder to me than for discovering a reference and so I think in this case it's it's so clear from our standpoint that the

[00:09:22] Speaker 00:
individual references, the three we've talked about were not found, that it's sufficient to decide that.

[00:09:27] Speaker 01:
If I'm hearing you correctly, you're saying we don't have to trouble ourselves with what the standard is for grounds being raisable here.

[00:09:34] Speaker 01:
Because you don't think that the references were discoverable here.

[00:09:38] Speaker 01:
Is that your position?

[00:09:39] Speaker 00:
Right.

[00:09:39] Speaker 00:
Of course, if you disagree with that, then maybe we would then encourage you to go.

[00:09:43] Speaker 01:
Do you have anything helpful to say?

[00:09:45] Speaker 01:
Yeah.

[00:09:45] Speaker 01:
If hypothetically we thought that the grounds here or that the references here were discoverable, can you begin to articulate what the legal test would be for whether grounds are razable?

[00:10:01] Speaker 00:
Yeah, I think whether grounds are raiseable would require certainly more than discovering a reference.

[00:10:06] Speaker 00:
And so rather than just a quick scan and seeing that it's potentially relevant, I think there's got to be a line between the standard for discovering a ground and the obviousness concepts that are sometimes conflated with it.

[00:10:25] Speaker 00:
They are very, I think, in some of the briefing and at the district court, I think some of those issues got blurred a little bit.

[00:10:31] Speaker 02:
Did you make what I'll call a backup argument, which would be even if all these different references, Kotkin, Raymond, Koji, were indeed discoverable, there's still a second problem

[00:10:45] Speaker 02:
which is that there's no evidence here that, I don't know, a skilled searcher or someone else or a skilled artisan would have reasonably figured out how to create the very ground that you wanted to assert in this litigation.

[00:11:02] Speaker 02:
I don't recall you making that what I'll call backup argument.

[00:11:06] Speaker 00:
We definitely did for the Kotkin ground, because the district court ruling did not even address the Kotkin provisional, which is necessary to complete the claim charge.

[00:11:18] Speaker 02:
Aside from the Kotkin provisional question, I don't recall you making this other argument that we're now discussing.

[00:11:25] Speaker 00:
Yeah, I think that I don't recall the type of argument that you just described.

[00:11:31] Speaker 00:
Even for the Kotkin code, the Willner

[00:11:35] Speaker 00:
Koji and Raymond Ground.

[00:11:37] Speaker 00:
Raymond is a very different type of reference that's probably a little harder to discover than some of the others because it's brought in for a particular purpose that one skilled in the art would appreciate, a person wearing a skill would appreciate, but a skilled searcher is a different person who doesn't have the same knowledge.

[00:11:52] Speaker 02:
Here's the hypothetical.

[00:11:53] Speaker 02:
What if a searcher who is deemed to be a skilled searcher does a diligent search and then finds

[00:12:04] Speaker 02:
all the references except for Raymond, but finds a perfectly good different reference that is totally interchangeable with Raymond.

[00:12:19] Speaker 02:
And then it turned out in order to find Raymond the searcher had to do a supplemental search.

[00:12:26] Speaker 02:
But would it even matter that Raymond wasn't found if

[00:12:30] Speaker 02:
perfectly excellent stand-in substitute for Raymond had been found in that initial primary search.

[00:12:41] Speaker 02:
In that sense, the need for doing the supplemental search and needing to find that particular Raymond reference needle in the overall haystack of prior art references seems to be kind of unnecessary.

[00:12:57] Speaker 02:
What do you think?

[00:12:58] Speaker 00:
Well, I've found from this case, the devil is in the details.

[00:13:02] Speaker 00:
I mean, you look at these cases, and clearly the supplemental search here was purely to find Raymond.

[00:13:06] Speaker 02:
I know, but right now we're not talking about the facts of this case.

[00:13:09] Speaker 02:
We're talking about my question, not going to something else.

[00:13:12] Speaker 00:
I think the question is the reference that's in the ground.

[00:13:15] Speaker 00:
I guess my gut instinct would be that you wouldn't be a stop just because somebody could find something else that's arguably cumulative.

[00:13:21] Speaker 00:
But I think you'd need to know all the facts on the table

[00:13:25] Speaker 00:
Really make an informed decision on that.

[00:13:28] Speaker 01:
Just a quick question on your mandate rule argument.

[00:13:31] Speaker 01:
I'm not sure if I understand it.

[00:13:33] Speaker 01:
What are you saying the district court got wrong?

[00:13:37] Speaker 00:
Well, that may be two different questions.

[00:13:40] Speaker 00:
But the mandate question has to do with, in the ruling, the court said that there was a deficiency in the record held against Valve.

[00:13:50] Speaker 00:
In the attempt to cure this deficiency, Ms.

[00:13:53] Speaker 00:
Williams' declaration, you know, Cotropia's asserted, you know, all this stuff, that there's a deficiency in the record supposedly from the land and IP search.

[00:14:01] Speaker 00:
And once again, the district court held against Valve, whereas the first time we were here three years ago, there was a hole in the record with respect to collective mines.

[00:14:08] Speaker 01:
I thought the argument.

[00:14:10] Speaker 01:
you were making to us now was that the district court reopened what you considered a settled question about whether some of these references were, in fact, actually found by your pre-petition search.

[00:14:25] Speaker 00:
That's correct.

[00:14:26] Speaker 00:
There's two prongs of our mandate argument.

[00:14:28] Speaker 00:
And that's the other prong is that when it was up here before, the Landon IP search was already of record.

[00:14:34] Speaker 00:
It was discussed during the appeal and this court's ruling.

[00:14:38] Speaker 00:
said that the Landon IP search discovered it's an uncontroverted fact that's never been controverted.

[00:14:44] Speaker 01:
But we did send it back with instructions that the district court should decide whether to reopen discovery and even reevaluate whether there's any relevance, I think, to that pre-petition search.

[00:14:57] Speaker 01:
Didn't all of that make it within the scope of our mandate for the district court to potentially make a factual finding on what you actually found in the pre-petition search?

[00:15:08] Speaker 00:
Well, you're right.

[00:15:10] Speaker 00:
The word was relevance, the relevance of the landed IP search.

[00:15:13] Speaker 00:
The search hasn't changed.

[00:15:14] Speaker 00:
It was done 12 years ago.

[00:15:17] Speaker 00:
There was some modified search strings where the district court got involved and changed some things around that seemed to be reverse engineering the search strings in hindsight as well.

[00:15:27] Speaker 00:
In our impression, that's not part of the relevance of the search.

[00:15:32] Speaker 00:
That's actually going in and trying to kind of change and modify the search strings to get a result when you already know what the target reference is.

[00:15:41] Speaker 02:
Okay, thank you.

[00:15:42] Speaker 02:
Let's hear from the other side.

[00:15:52] Speaker 04:
Good morning, Your Honor.

[00:15:53] Speaker 04:
May it please the court?

[00:15:54] Speaker 04:
My name is Greg Tampkin, and I'm here on behalf of Ironberg Inventions.

[00:15:58] Speaker 02:
Could you start with standard review and tell us if, to the extent there are fact questions, what pieces of this inquiry are questions of fact?

[00:16:07] Speaker 04:
I think that's a great place to start, Your Honor.

[00:16:09] Speaker 04:
This is a clear error standard here.

[00:16:12] Speaker 04:
This court determined the issue, determined that the judge needs to apply the skilled searcher test.

[00:16:21] Speaker 02:
How do they stop them generally?

[00:16:22] Speaker 02:
Is that a question of law?

[00:16:27] Speaker 04:
It can be decided as a matter of law by the court, but it is a question of fact.

[00:16:32] Speaker 04:
Ultimately, the question in this case is what a skilled searcher conducting a reasonably diligent search could be expected to discover.

[00:16:42] Speaker 04:
That's fundamentally a fact question.

[00:16:46] Speaker 04:
If those facts are such that the skilled searcher

[00:16:50] Speaker 04:
could reasonably have been expected to discover the particular references in question, then the matter is decided.

[00:16:58] Speaker 04:
So this is primarily a fact question.

[00:17:02] Speaker 04:
Obviously, I agree that if the skilled searcher test is something different than virtually every court who has considered it has found, then that test fundamentally is a legal question.

[00:17:14] Speaker 04:
But the application of that test is really what happened here.

[00:17:19] Speaker 01:
And I think I may be confused by your answer.

[00:17:21] Speaker 01:
Are you agreeing that there are some questions of law implicated in this appeal that we review de novo?

[00:17:28] Speaker 04:
No.

[00:17:29] Speaker 01:
I am saying that.

[00:17:29] Speaker 01:
What about what is the meaning of discoverability?

[00:17:33] Speaker 01:
of a reference.

[00:17:34] Speaker 01:
That's not a question of law?

[00:17:36] Speaker 04:
Well, that's the skilled searcher test.

[00:17:38] Speaker 04:
And the skilled searcher test, I think, is established.

[00:17:44] Speaker 04:
This court has not actually articulated it.

[00:17:47] Speaker 04:
But I think that skilled searcher test, which is what this court remanded for the judge to apply again, is certainly the legal rubric.

[00:17:58] Speaker 03:
Discovery is not just including it in a 10,000 search result.

[00:18:02] Speaker 03:
You agree with that?

[00:18:05] Speaker 04:
Sometimes, but primarily yes.

[00:18:07] Speaker 04:
I mean, if you search a classification, if you get 10,000 references, I would agree, Your Honor.

[00:18:13] Speaker 02:
Right.

[00:18:13] Speaker 04:
And so, but that's not what the skilled searcher test is.

[00:18:17] Speaker 04:
The skilled searcher test is considering the factual question of what a skilled searcher would find.

[00:18:23] Speaker 04:
There's a lot of ways to do that.

[00:18:25] Speaker 04:
There's classification searches.

[00:18:27] Speaker 04:
There's keyword searches.

[00:18:28] Speaker 04:
There's actually a case, the Boston Scientific case that's mentioned in our brief, which is it was well known in that, the expert testified it was well known in that case that

[00:18:38] Speaker 04:
I think it was a company called Olympus, was very prolific in that area of the prior art.

[00:18:43] Speaker 04:
And in that case, that may be enough to simply search the Olympus references as an assignee.

[00:18:50] Speaker 04:
That may be the way to find it.

[00:18:51] Speaker 04:
A skilled searcher would do a lot of different things.

[00:18:54] Speaker 04:
That's what the factual question is.

[00:18:56] Speaker 04:
And I don't think this court should be saying it's this test or that test.

[00:19:02] Speaker 04:
Rather, the test is already articulated as from this.

[00:19:07] Speaker 04:
Go ahead.

[00:19:08] Speaker 02:
Could we just get to Kotkin?

[00:19:11] Speaker 02:
Sure.

[00:19:11] Speaker 02:
It looked to me that the district court believed that because Kotkin and Koji were found in a couple different subclass classifications, that as a matter of law, therefore, they were discoverable by a skilled searcher doing a diligent search.

[00:19:34] Speaker 02:
And it turns out the size of the pool of references in that combined class subclass was 26,000.

[00:19:42] Speaker 02:
And I think I just heard you say earlier that

[00:19:49] Speaker 02:
10,000 is way too many.

[00:19:51] Speaker 02:
So could you respond to my concern that 26,000 is also too many to say, as a matter of law, any reference located in that 26,000 pool is discoverable?

[00:20:06] Speaker 04:
I think factually that's not what happened, Your Honor.

[00:20:09] Speaker 04:
Certainly, in the classification, there was evidence, I think, for Koji that there was 26,000.

[00:20:14] Speaker 04:
But then there was evidence that the court considered of this keyword search about Kotkin.

[00:20:22] Speaker 04:
Kotkin, there is also separate evidence, but the same searches.

[00:20:26] Speaker 03:
No, no, no, no.

[00:20:27] Speaker 03:
Don't go back to Koji.

[00:20:29] Speaker 03:
Footnote 8 is very explicit about narrowing the Koji searches down.

[00:20:33] Speaker 03:
Where does that narrow the Kotkin search down?

[00:20:36] Speaker 03:
The same searches are available.

[00:20:39] Speaker 03:
Where does the district court say Kotkin was considered and would have been found under the same searches?

[00:20:45] Speaker 03:
I don't think that is explicitly said.

[00:20:48] Speaker 03:
The same searches are... Why isn't that clear error?

[00:20:51] Speaker 03:
We don't know if the district court concluded that Kotkin also would have been found, particularly the provisional, with those same searches.

[00:20:59] Speaker 03:
You say, of course they would have.

[00:21:01] Speaker 03:
But the district court made no factual finding on that whatsoever.

[00:21:05] Speaker 03:
All we know on Kotkin is it was included in the 26,000 group.

[00:21:10] Speaker 03:
This clearly is not good enough.

[00:21:11] Speaker 04:
The district court included the cover page in its finding of Kotkin.

[00:21:17] Speaker 04:
The abstract is contained right there.

[00:21:19] Speaker 04:
The abstract discusses a game controller, which is one of the same terms that the court has.

[00:21:24] Speaker 02:
But hold on a second.

[00:21:25] Speaker 02:
The problem is that, as far as we can tell,

[00:21:29] Speaker 02:
The district court never relied on any whittling down of the classification pool in which Kotkin was present.

[00:21:41] Speaker 02:
Didn't say, well, then you do a certain set of search terms that a skilled searcher reasonably would have used, and voila, now we've really confined down the scope of the pool to just a manageable subset of references.

[00:21:56] Speaker 02:
The district court never said anything like that.

[00:21:59] Speaker 02:
And as far as I can tell, your argument below was never premised on, OK, here's the class subclass.

[00:22:06] Speaker 02:
Now the skilled searcher would have used these particular search terms.

[00:22:11] Speaker 02:
And now we don't have thousands and thousands of references.

[00:22:14] Speaker 02:
We just have maybe dozens and dozens of references.

[00:22:18] Speaker 02:
Am I missing anything here?

[00:22:21] Speaker 04:
I think you are correct with your statement that the argument down below was not necessarily focused on, our argument down below was not necessarily focused on valves references because we couldn't do discovery.

[00:22:39] Speaker 04:
But it was focused on our expert's references that ultimately the judge said, I'm going to start with where this court instructed, which is go back, consider.

[00:22:49] Speaker 04:
I'm sorry.

[00:22:49] Speaker 02:
I just wanted to let you know I didn't quite follow anything you just said right there.

[00:22:53] Speaker 02:
I'm sorry.

[00:22:54] Speaker 02:
But except for the fact that what I said seems to be an accurate reflection of what the district court did and how you argued this below.

[00:23:05] Speaker 04:
We argued primarily based on the searches that were performed by Cardinal IP.

[00:23:13] Speaker 04:
On the classification search, just at that level without actually doing any kind of search.

[00:23:20] Speaker 04:
No, no, no.

[00:23:20] Speaker 04:
We argued on the classification search.

[00:23:23] Speaker 04:
There was a whole series of searches.

[00:23:25] Speaker 04:
We argued on the classification searches, and we argued on the keyword searches.

[00:23:30] Speaker 02:
So for Kotkin, where did you say a skilled searcher would have used

[00:23:34] Speaker 02:
these particular search terms in this particular classification and therefore would have found Kotkin.

[00:23:42] Speaker 04:
Both search 34 as well as search 68.

[00:23:46] Speaker 04:
There were either 11 or 12.

[00:23:49] Speaker 02:
Where did the district court use that?

[00:23:52] Speaker 02:
in its analysis for finding Kotkin discoverable.

[00:23:57] Speaker 04:
The district court did not necessarily say that it was using... Let's assume the district court did not.

[00:24:02] Speaker 02:
Okay.

[00:24:03] Speaker 02:
Okay.

[00:24:03] Speaker 02:
Now where in your briefing below did you say this is how a skilled searcher would have found Kotkin?

[00:24:11] Speaker 02:
not only would have looked at this classification, but then would have performed, would have used this particular set of search terms, and then would have ended up with this particular subset of references in which Kotkin was present.

[00:24:26] Speaker 04:
It was the entire argument with respect to search 33 and 34.

[00:24:29] Speaker 02:
Well, 34 was the citation search.

[00:24:35] Speaker 04:
34 was a classification and a keyword search.

[00:24:37] Speaker 02:
But these are with respect to your cardinal IP.

[00:24:42] Speaker 02:
search, not the Landon IP.

[00:24:44] Speaker 02:
Correct.

[00:24:44] Speaker 02:
And the district court relied on Landon IP, right?

[00:24:48] Speaker 04:
That's correct.

[00:24:49] Speaker 02:
So just talking about Landon IP, as I understand it, you never made an argument about when you look at the Landon IP search for these various 11 classification searches, here are the search terms you would have used, and that's how you get the Kotkin.

[00:25:05] Speaker 02:
I don't believe you made that argument on remand, correct?

[00:25:08] Speaker 04:
I think that is correct.

[00:25:08] Speaker 02:
The arguments were really more about Cardinal IP.

[00:25:11] Speaker 04:
That is correct.

[00:25:12] Speaker 02:
In the Cardinal IP, we know you tried to do a citation search, which

[00:25:18] Speaker 04:
The district court rejected, correct?

[00:25:21] Speaker 04:
That was search number three.

[00:25:22] Speaker 04:
Then we went- 34.

[00:25:23] Speaker 04:
34 was not just a citation search.

[00:25:26] Speaker 04:
It was a keyword search as well.

[00:25:29] Speaker 02:
Is that the supplemental search?

[00:25:31] Speaker 04:
No.

[00:25:32] Speaker 04:
And search 68 is also a classification.

[00:25:35] Speaker 02:
But the search string 34 was premised on using search words gained from the citation search, as I understand it.

[00:25:43] Speaker 04:
That is an assumption that an expert made, but that is not necessarily correct.

[00:25:49] Speaker 04:
And we specifically went back, and that's the Hammeter Declaration.

[00:25:53] Speaker 04:
We specifically went back to make it clear that the search 33 and 34 were date limited.

[00:26:02] Speaker 02:
The point remains is that we're talking apples and oranges right now.

[00:26:06] Speaker 02:
You're talking about Cardinal IP search.

[00:26:08] Speaker 02:
The district court relied on the Landon IP search

[00:26:11] Speaker 02:
The Landon IP search analysis stops at just the classification for Cockkin.

[00:26:20] Speaker 04:
It does stop at it.

[00:26:22] Speaker 04:
We don't know if the judge considered those other references.

[00:26:26] Speaker 03:
So footnote eight on page 13 of the district court's decision, where he talks about how the Koji search was narrowed from 26,000 to a much, much smaller number.

[00:26:42] Speaker 03:
Is that referring to the Landon search?

[00:26:45] Speaker 04:
That is referring to the Landon search.

[00:26:47] Speaker 03:
And it's referring to the, are these keywords, or however you want to say it, searches to narrow Koji down.

[00:26:54] Speaker 03:
That was done in the Landon search for Koji.

[00:26:57] Speaker 04:
Yes, sir.

[00:26:57] Speaker 03:
Was it done in the Landon search for Kotkin?

[00:27:03] Speaker 03:
And did the district court rely on that narrowing for Kotkin?

[00:27:07] Speaker 03:
I don't see it in his opinion.

[00:27:08] Speaker 03:
I don't think it was done for Kotkin.

[00:27:11] Speaker 03:
I think Kotkin is only $26,000.

[00:27:14] Speaker 04:
I don't think it was done for Kotkin in the sense that

[00:27:20] Speaker 04:
And these are the searches.

[00:27:22] Speaker 04:
We don't know what land and IP.

[00:27:24] Speaker 04:
We don't have those search results.

[00:27:26] Speaker 04:
We don't know what they are.

[00:27:28] Speaker 02:
But that's the flaw in the analysis.

[00:27:32] Speaker 02:
And that's why this analysis is incomplete with respect to Kotkin.

[00:27:38] Speaker 03:
This makes clear that Koji would have been found.

[00:27:41] Speaker 03:
And I think you're on firm ground here on Koji.

[00:27:44] Speaker 03:
But we have no idea.

[00:27:46] Speaker 03:
what the analysis for Kotkin is, except he just references them both together.

[00:27:51] Speaker 03:
But there's two separate references.

[00:27:53] Speaker 04:
There are two separate references, I agree.

[00:27:55] Speaker 04:
And the issue is, could those same search terms been applied?

[00:28:00] Speaker 04:
Or is that?

[00:28:02] Speaker 03:
Well, if he had said that, you'd be on much firmer ground if he had said, and the same search terms would have resulted in Kotkin being in a much narrower tool.

[00:28:11] Speaker 03:
We don't know that he made any of those findings.

[00:28:15] Speaker 03:
even if it's a clear error standard, if he didn't make a finding that a skilled searcher would have found Kotkin, then his whole estoppel analysis is flawed.

[00:28:26] Speaker 04:
Well, I don't think the whole estoppel analysis is flawed because he made the finding with respect to the Wilner, Koji, Raymond reference.

[00:28:34] Speaker 03:
But we'll get to Raymond.

[00:28:35] Speaker 03:
You have problems with Raymond, too.

[00:28:37] Speaker 03:
So I don't think you better rely too much on that.

[00:28:41] Speaker 03:
But the Kotkin analysis is flawed.

[00:28:44] Speaker 04:
I don't think the Kotkin analysis is flawed, because there's other way.

[00:28:48] Speaker 04:
Even if you say the judge didn't find it, you can't look at the Kotkin.

[00:28:52] Speaker 04:
Anyone can look at the Kotkin.

[00:28:53] Speaker 03:
No, the judge has to make the finding.

[00:28:55] Speaker 03:
If you're saying that a skilled searcher finding is a factual finding, then the judge has to make it for us to have something to review.

[00:29:02] Speaker 03:
And he absolutely did not say beyond the $26,000 that Kotkin was fined.

[00:29:09] Speaker 03:
That's just clear error.

[00:29:11] Speaker 03:
So when the court can ground it, it has to go back.

[00:29:14] Speaker 04:
I don't think so.

[00:29:15] Speaker 04:
I think there's alternative grounds that this court can find, which is specifically on search 34 or search 68.

[00:29:23] Speaker 01:
Search 68?

[00:29:24] Speaker 01:
On Kotchan and Koji, too, I think the district court seemed to make a finding that in their pre-petition search, they actually did find, must have found, those two references.

[00:29:36] Speaker 01:
Isn't that what the district court says at 813?

[00:29:39] Speaker 01:
I don't know what evidence there is to support that finding.

[00:29:43] Speaker 04:
I think what the court said is a skilled searcher conducting a diligent search at the relevant time reasonably could have been expected to, and likely did, discover both Kotkin and Koji.

[00:29:57] Speaker 01:
Doesn't it go on to say it must have been among the references identified during the March 2014 search?

[00:30:03] Speaker 04:
Must have been on the references because it's in the classification, not that it was found or not found.

[00:30:08] Speaker 01:
It would be clear error to make that finding, since we don't know.

[00:30:12] Speaker 01:
There's no evidence to support that in their March 2014 search they actually did find Kotkin and Koji, correct?

[00:30:20] Speaker 04:
There is no evidence to find that they did find Koji or Kotkin.

[00:30:26] Speaker 04:
And the court did not find that they found Koji.

[00:30:29] Speaker 01:
If it did, that would be clear error.

[00:30:31] Speaker 04:
OK.

[00:30:31] Speaker 04:
I don't know that if it did, that would be.

[00:30:34] Speaker 04:
Well, it's simply irrelevant.

[00:30:36] Speaker 02:
So how about Raymond?

[00:30:37] Speaker 02:
The Raymond reference was found only by doing a supplemental search.

[00:30:43] Speaker 04:
Yes, Your Honor.

[00:30:44] Speaker 02:
And you have a Mr. Hameter that acknowledged that the supplemental search was conducted because a particular reference that you were hunting for had not been found in the primary search.

[00:31:01] Speaker 02:
And so that's why they did the secondary search.

[00:31:04] Speaker 02:
Is that correct?

[00:31:06] Speaker 04:
I don't think that's correct, Your Honor.

[00:31:09] Speaker 02:
Well, isn't that what Mr. Hammeter acknowledged?

[00:31:13] Speaker 04:
Mr. Greening believed that to be the case.

[00:31:16] Speaker 04:
Mr. Greening didn't know.

[00:31:18] Speaker 04:
And there was a supplement.

[00:31:19] Speaker 04:
But the facts are unrefined.

[00:31:22] Speaker 02:
Mr. A7473?

[00:31:22] Speaker 02:
I mean, this is the transcript of Ryan Hammeter.

[00:31:27] Speaker 02:
Is it your understanding that the supplemental search was conducted because there was another reference that had not yet been found?

[00:31:34] Speaker 02:
answer correct I apologize I thought it was that's pretty clear so it wasn't because all the the original search didn't come up with a particular limitation and so we needed to do a supplemental search reference that would match up with that one missing limitation that wasn't the explanation for the supplemental search it was because you put these guys on a mission to find particular references and wouldn't tell him the name of it and so then they

[00:32:03] Speaker 02:
tried to find them, and then in the original search, couldn't find it.

[00:32:07] Speaker 02:
And so you sent them off to do a second search.

[00:32:11] Speaker 04:
Actually, in the original search, they did find it, but that was using the forward and backwards search.

[00:32:17] Speaker 04:
But the point is, Your Honor, that this was considered by the district court as to whether or not a single supplemental search is something that occurs.

[00:32:26] Speaker 04:
And footnote 17 of the court's

[00:32:28] Speaker 02:
But now we have the reason why.

[00:32:30] Speaker 02:
I mean, yes, supplemental searches occur all the time.

[00:32:34] Speaker 02:
But there's a reason why they occur all the time.

[00:32:36] Speaker 02:
And the reason why they occur all the time is because maybe the primary search was inadequate with respect to a particular limitation or something.

[00:32:44] Speaker 02:
Here, it's because not because of that common flaw with the primary search, but it's because you kept them hunting for the Raymond reference.

[00:32:55] Speaker 04:
I don't think that's right, Your Honor.

[00:32:57] Speaker 04:
I think here,

[00:32:58] Speaker 04:
Presumably, Mr. Hamender says it was not found, or he read it.

[00:33:03] Speaker 02:
There's nothing in the record that suggests that the original Grinia search failed to find a prior rock reference that matched up with the flexible, resilient paddle limitation.

[00:33:16] Speaker 02:
There's nothing in the record that suggests that.

[00:33:18] Speaker 04:
Nobody went through and said this is OK.

[00:33:21] Speaker 02:
So that's why it feels a little hindsighty what happened here when you unleashed Mr. Grenier to go out and find a reference to that specific limitation in a supplemental search.

[00:33:38] Speaker 04:
I don't think it's hindsight to do a supplemental search for whatever reason it is.

[00:33:43] Speaker 04:
And this one, the supplemental search,

[00:33:45] Speaker 03:
That can't be true.

[00:33:47] Speaker 03:
If the attorneys come in and say, your search didn't pull up this reference, go do another search that pulls up this reference, that would be wrong, right?

[00:33:56] Speaker 03:
It wouldn't meet the standard.

[00:33:58] Speaker 04:
If an attorney says go find this reference and you didn't find this, that's not what happened.

[00:34:03] Speaker 03:
No, that's not what I'm asking.

[00:34:04] Speaker 03:
If the attorney said, create search terms that's going to find this reference.

[00:34:09] Speaker 04:
Of course, that would be the classic hindsight, but this is a situation where

[00:34:14] Speaker 04:
You need to do a search on the key element of the patent that's new in this case, which is the elongated member that is inherently resilient and flexible.

[00:34:28] Speaker 04:
That's what the search was.

[00:34:29] Speaker 01:
Is there any evidence that here,

[00:34:31] Speaker 01:
A supplemental search would have been conducted that a diligent skilled searcher after doing the 40 hours and returning all the references that were returned by that one, wouldn't have decided I'm done.

[00:34:45] Speaker 01:
What evidence is there that they would have in this case gone on and done more?

[00:34:50] Speaker 04:
The evidence is simply that both Mr. Greening and Mr. Hamader testified that a supplemental search of this nature

[00:34:57] Speaker 04:
is very common, a single supplemental search.

[00:35:00] Speaker 03:
But not that it was actually necessary in this case.

[00:35:04] Speaker 03:
What at least one of them testified is the reason was the prior one didn't locate a reference.

[00:35:12] Speaker 04:
That would be Mr. Hamader, because Mr. Hamader was aware of the type of search that was being done.

[00:35:18] Speaker 04:
But in reality, this is the type of supplemental reference that was done.

[00:35:22] Speaker 04:
There is evidence from the fact that

[00:35:25] Speaker 04:
CMG also did this type of a search.

[00:35:28] Speaker 02:
In this supplemental search, do we know why Mr. Grinia used the search term key?

[00:35:37] Speaker 04:
Well, if you look up at thesaurus, key is a synonym for button, which is, you know, these are video game controllers with buttons.

[00:35:45] Speaker 04:
The other reason, another reason would be that Mr. Grinia testified, you look at, well, sorry.

[00:35:51] Speaker 02:
Was any of this presented to the district court below?

[00:35:55] Speaker 04:
Sure.

[00:35:56] Speaker 02:
Here's why Mr. Greenia used the word key.

[00:36:00] Speaker 02:
It's not because the word key is all over the Raymond reference.

[00:36:04] Speaker 02:
And so we were self-directing ourselves to find the Raymond reference.

[00:36:09] Speaker 02:
It's because a diligent, skilled searcher would have chosen word key for the following reasons.

[00:36:16] Speaker 04:
Mr. Grinia testified through declaration that he would look at the patent and use the key terms in the patent, come up with synonyms.

[00:36:25] Speaker 04:
Wilner is actually a reference in the patent that he would have looked at.

[00:36:30] Speaker 04:
Wilner actually talks about a simulated keyboard, if you will, on the back of a game controller.

[00:36:37] Speaker 04:
So that would be something.

[00:36:38] Speaker 04:
But the testimony was simply, I used the patent and the references on the patent to come up with keywords.

[00:36:46] Speaker 01:
Was the word key used in any search in the initial 40-hour search?

[00:36:54] Speaker 04:
I apologize, Your Honor.

[00:36:55] Speaker 04:
I don't know.

[00:36:57] Speaker 01:
Hypothetically, if I were to agree with the appellant's arguments about error here,

[00:37:05] Speaker 01:
Um, should my vote for a disposition be to vacate and give you another chance to meet your burden or should it be a reversal and say, let's just go to trial on invalidity.

[00:37:18] Speaker 01:
They're not a stopped.

[00:37:20] Speaker 04:
Well, I think there's a couple of things.

[00:37:21] Speaker 04:
First of all, there's the different references that are asserted against different claims.

[00:37:26] Speaker 04:
And so it depends on what the finding is.

[00:37:28] Speaker 01:
I just assume I agreed with them on everything, just to make it simple.

[00:37:32] Speaker 04:
Then I think that the court needs to consider the other references.

[00:37:38] Speaker 04:
Because the court did decide, not other references, other evidence.

[00:37:43] Speaker 04:
The court didn't consider a lot of evidence and said, I don't need to consider the additional Cardinal IP evidence on Kotkin, Koji, et cetera, because I can just consider the

[00:37:55] Speaker 04:
land and IP references.

[00:37:56] Speaker 03:
And so I think that if this court were to reverse and find that there's clear error, then I think... About Raymond, is there any other, if we find that the supplemental search is invalid because of hindsight and because he was directed to do it, is there any evidence, and the district court throughout the other part of the search on Raymond, is there any other evidence

[00:38:22] Speaker 03:
that would support Raymond being discoverable.

[00:38:26] Speaker 04:
The evidence is that Raymond came up in the supplemental search.

[00:38:29] Speaker 03:
Right.

[00:38:30] Speaker 03:
So if we find that is a clear error, then Raymond, at least, has to go forward as a grounds for obviousness.

[00:38:38] Speaker 04:
If Kotkin does it.

[00:38:40] Speaker 03:
Well, Kotkin is separate from Koji Raymond, right?

[00:38:43] Speaker 03:
Right.

[00:38:44] Speaker 03:
So if Raymond's OK that they wouldn't have found Raymond, then they can go forward with the Koji Raymond grounds, can't they?

[00:38:52] Speaker 03:
Kotkin is a different thing.

[00:38:53] Speaker 04:
If this court finds that Kotkin was found.

[00:38:57] Speaker 03:
No, they're two separate grounds.

[00:38:59] Speaker 04:
But they don't cover all the claims.

[00:39:01] Speaker 03:
I understand, but Kotkin is different than Koji Raymond.

[00:39:04] Speaker 03:
So if we reverse on Raymond outright, then at least the claims covered by the Koji Raymond grounds are not as stopped.

[00:39:13] Speaker 03:
Correct.

[00:39:13] Speaker 03:
We still have to deal with Kotkin and whether that's a reverse.

[00:39:16] Speaker 03:
or whether the district court gets another shot at explaining why Kotkin was discoverable.

[00:39:22] Speaker 04:
Correct.

[00:39:22] Speaker 04:
But it would be irrelevant because they covered different claims.

[00:39:25] Speaker 04:
And so there's still infringement of claim four, I think, or claim 18, depending upon how the court finds.

[00:39:32] Speaker 04:
And therefore, there'd be no reason for the court to move forward.

[00:39:36] Speaker 04:
There's already a finding of infringement.

[00:39:38] Speaker 03:
And so if I don't understand that, if they're allowed to move forward

[00:39:43] Speaker 03:
Oh, because some of the claims aren't covered by both.

[00:39:48] Speaker 03:
And the infringement judgment doesn't rest.

[00:39:50] Speaker 03:
It's not a portion between different claims.

[00:39:53] Speaker 03:
It's a general verdict.

[00:39:54] Speaker 03:
Correct, Your Honor.

[00:39:56] Speaker 04:
Correct, Your Honor.

[00:39:57] Speaker 01:
What about the damages?

[00:39:58] Speaker 01:
There's just one overall damages award.

[00:40:02] Speaker 01:
Yes.

[00:40:02] Speaker 01:
Wasn't that problematic?

[00:40:04] Speaker 01:
What's that?

[00:40:05] Speaker 01:
Oh, go ahead.

[00:40:06] Speaker 01:
Sorry.

[00:40:06] Speaker 01:
Isn't that a problem?

[00:40:08] Speaker 01:
If we were, let's say, can we stick to affirming the damages verdict with no further proceedings if it's based on, let's say, five infringement finding or infringement of five claims?

[00:40:25] Speaker 04:
There was no argument that the damages are based on claim 18 versus claim four versus claim seven.

[00:40:33] Speaker 04:
If there's infringement, what are the damages?

[00:40:41] Speaker 02:
Thank you.

[00:40:41] Speaker 00:
Thank you.

[00:40:45] Speaker 00:
If I have any time remaining, it's a couple of quick points.

[00:40:49] Speaker 00:
On that last point, we've addressed this in our brief, but actually all of the claims are in play for both grounds because of the remand.

[00:40:56] Speaker 00:
The court reopened discovery, allowed expert declarations on merits discovery or merits briefing on invalidity, and Ironberg submitted a declaration from a new invalidity expert and covered all claims.

[00:41:11] Speaker 00:
with all grounds.

[00:41:11] Speaker 00:
And so we rebutted that with all claims and all grounds.

[00:41:14] Speaker 00:
So I think that discussion's a moot point.

[00:41:15] Speaker 00:
I think that even if only one of the grounds gets remanded or reversed, that all claims are in play.

[00:41:22] Speaker 02:
There was an argument in the red brief that for an alternative grounds for an affirmance on Kotkin relying on the cardinal IP search and not the Landon IP search.

[00:41:37] Speaker 02:
And I think

[00:41:42] Speaker 02:
The response from you would be, well, Mr. Grenier's search, or at least the citation search, was thrown out with respect to Raymond.

[00:41:51] Speaker 02:
And the logic would necessarily also apply for Kotkin.

[00:41:57] Speaker 02:
But then Mr. Hamader came in with a supplemental declaration saying, well, if I'm Mr. Hamader, I did kind of a

[00:42:09] Speaker 02:
repair job on Mr. Grinia's flawed search and that repair job on the flawed search reveals that yes, you know, once you've correct make the corrections you still find Kotkin.

[00:42:26] Speaker 02:
What's your response to that?

[00:42:28] Speaker 00:
There's a lot of responses to that.

[00:42:30] Speaker 00:
The one that's comprehensive, of all references, it's a fruit of the poisonous tree thing.

[00:42:35] Speaker 00:
There were IDSs filed, information disclosure statements on grandchildren of the 525 patent family.

[00:42:41] Speaker 00:
They brought in Kotkin, Koji, and Raymond.

[00:42:43] Speaker 00:
And Hammeter, all he did was he went back and cut out the references, the prior art references that were found that were dated after the cutoff date.

[00:42:51] Speaker 00:
But those middleman, grandchildren, family members already brought those references in.

[00:42:56] Speaker 00:
You can't cut out, you can't take away all the taint that occurred at the very beginning when he did the forward and backward searching and looked at all the art that wasn't found.

[00:43:04] Speaker 02:
I would think your argument would be this was way out of time.

[00:43:09] Speaker 00:
Oh, yeah.

[00:43:09] Speaker 02:
There was a limited window for anybody to do some limited discovery.

[00:43:15] Speaker 02:
And then what happened here was so late in the briefing that it's outside that window of time to bring in new evidence.

[00:43:27] Speaker 00:
We moved to strike or to get a deposition and were turned down.

[00:43:30] Speaker 00:
One other comment on his second declaration, Hameter's second declaration, based on his second supplemental search he did.

[00:43:37] Speaker 00:
The court took judicial notice of a classification that is not on the face of the Raymond patent.

[00:43:42] Speaker 00:
The court also took judicial notice of the Raymond patent.

[00:43:44] Speaker 00:
There are two different classifications.

[00:43:46] Speaker 00:
And if you look at the supplemental search report, Appendix 6222,

[00:43:52] Speaker 00:
There's no reason why the supplemental search would have searched this H01, H2, 00, 02, 18, 22, if 00 was a superset, like it's equivalent to a wildcard.

[00:44:02] Speaker 00:
It isn't.

[00:44:03] Speaker 00:
So there's a big disconnect in his second declaration on Raymond as well.

[00:44:09] Speaker 00:
OK.

[00:44:10] Speaker 00:
Thank you very much.

[00:44:11] Speaker 00:
The case is submitted.