[00:00:18] Speaker 04:
Next case is South versus the Ohio Willowwood Company, 2013, 1452, 88, 2014, 1147, and 1426.

[00:00:31] Speaker 04:
We will hear from Mr. Lucan when you are ready.

[00:00:38] Speaker 00:
I don't have my water.

[00:00:47] Speaker 04:
I want you to have your water.

[00:01:01] Speaker 00:
I'll get a much more brief without my water.

[00:01:05] Speaker 00:
May it please the court, John Lucan of Dinsmore Chult Cincinnati for the appellant across Telly, Ohio, Willowwood.

[00:01:11] Speaker 00:
As the court can tell from the briefs, there are a number of issues in this case, and I'm going to try to reserve five minutes of my time so that I can address the issues on which I am the cross-appellate.

[00:01:23] Speaker 00:
So I'm going to start with standing and try to work through the issues on which I'm the appellant.

[00:01:28] Speaker 00:
The standing issue, Your Honor, I think is open and shut.

[00:01:31] Speaker 00:
This court's jurisdiction is very clear that an exclusive licensee that doesn't have all substantial rights

[00:01:38] Speaker 00:
does not have standing to sue in its own name, has to have the patent owner there.

[00:01:42] Speaker 00:
At the outset of this case, this is clearly a field of use license.

[00:01:46] Speaker 00:
The patent is this broad, covers all kinds of applications, and this is a field of use, the original license is a field of use license solely for prosthetic devices.

[00:01:57] Speaker 04:
So you're saying the amended license doesn't count?

[00:02:00] Speaker 00:
It does not count.

[00:02:01] Speaker 00:
No, Your Honor.

[00:02:02] Speaker 00:
Patent law is already so much more accommodating in terms of curing prudential standing than anything else that's out there.

[00:02:10] Speaker 00:
In a normal case, one cannot cure prudential standing by doing something later.

[00:02:16] Speaker 00:
But in the Enzo case, where Judge Rich specifically addressed this issue and said you cannot nuke, protunk, amend, you must join the patent owner, I believe Your Honor was concurring on that panel, the court specifically recognized this.

[00:02:33] Speaker 00:
In a normal case in prudential standing, you can't go back and correct after the fact.

[00:02:38] Speaker 00:
You pretty much have to dismiss and start over again if you lack prudential standing.

[00:02:43] Speaker 00:
Because of the unusual situation in patent law that even though the statute doesn't say an exclusive licensee with all substantial rights have standing, this court's jurisprudence has said that you will extend the statute so that they can sue in their own name.

[00:03:00] Speaker 00:
So they're already cut an awful lot of slack.

[00:03:03] Speaker 00:
And in the patent situation, if they bring the suit without all substantial rights, if they don't have standing in their own name, you can add the patent owner throughout the district court proceeding so as to keep the case going with the original parties and have it relate back.

[00:03:23] Speaker 00:
To change that rule now and say, and reverse Enzo, and say that no harm, no foul.

[00:03:29] Speaker 00:
You can modify the contract while the case is pending and have it relate back to the original without doing the number of ways.

[00:03:37] Speaker 04:
Of course, it's a pretty serious matter to throw out a case at this stage of the game.

[00:03:44] Speaker 04:
We've had a jury trial.

[00:03:47] Speaker 04:
We've had a lot of issues.

[00:03:48] Speaker 00:
It certainly is, Your Honor, but it was an Enzo as well.

[00:03:51] Speaker 00:
In Enzo, the case had gone all the way through to the merits, and they had every opportunity as here to do something about it.

[00:03:58] Speaker 00:
That's why I say that no harm, no foul is not a good rule of jurisprudence.

[00:04:03] Speaker 00:
There were ample ways under this court's jurisprudence, they could have changed the contract before they sued.

[00:04:10] Speaker 00:
They could have dismissed and refiled immediately.

[00:04:13] Speaker 00:
They could have added it to district court.

[00:04:15] Speaker 00:
They've still never added it to appellate court.

[00:04:18] Speaker 00:
Although I would suggest, Your Honor, as we pointed out in the briefs, that this court has never allowed adding of the patent owner.

[00:04:24] Speaker 00:
at this level, except where it was sandbagged that it never came up at this level, or the parties never raised it as a mentor when the court raised it to Espante.

[00:04:33] Speaker 00:
So in Enzo, there was the same problem.

[00:04:37] Speaker 00:
Plus, Your Honor, I don't know how clear any of this is from the record, but there is another lawsuit under a continuation patent against my client, which is a narrower patent, for the exact same products during the exact same time period.

[00:04:51] Speaker 00:
So we're going to be litigating whether the same products get us in trouble or not and they've got another suit against three individuals associated with my company for infringing the 109 patents before this court.

[00:05:04] Speaker 01:
Were those suits filed either after the second license agreement or did they join the patentee in them?

[00:05:11] Speaker 00:
One of them was and one of them wasn't and then the one that was filed after they didn't have to join the patentee and the one that was was still before the district court making sure it by involuntary joined her if they want to.

[00:05:25] Speaker 01:
So you agree that had they simply dismissed

[00:05:30] Speaker 01:
and refiled after the second licensing agreement, they would have been okay.

[00:05:35] Speaker 00:
There could be statute of limitations issues, but yes, that is how they can do it.

[00:05:39] Speaker 01:
Well, there would have been statutory damage limitations, not statute of limitations.

[00:05:44] Speaker 01:
Yes, Your Honor, I'm sorry.

[00:05:45] Speaker 01:
That's exactly right.

[00:05:47] Speaker 01:
Your best guess as to why they didn't do exactly that when they filed the supplemental complaint is because they didn't want to lose the ability to go back six years from the date of the first complaint?

[00:05:56] Speaker 00:
I don't think then it would have mattered, Your Honor.

[00:05:57] Speaker 00:
They just weren't playing by the rules that this course has set down.

[00:06:00] Speaker 00:
I think now they may have some issues with that, which is why they sued my individuals to try to preserve that.

[00:06:06] Speaker 00:
But as long as, and this is rebuttal, intervening rights kicks in, that won't even matter because they're only going back to 2011 when the re-exam certificate issued.

[00:06:16] Speaker 00:
So there is a home for this case with the same disputes if this court dismisses.

[00:06:21] Speaker 01:
Are the other cases filed in the same court?

[00:06:24] Speaker 00:
They're in the same district court, one is before the judge down the hall, one is before the same judge.

[00:06:29] Speaker 00:
And I suspect they would be consolidated.

[00:06:31] Speaker 03:
The other side says Enzo is distinguishable because it's

[00:06:36] Speaker 03:
The case about constitutional harm, and here we're really talking about credentials.

[00:06:40] Speaker 00:
It clearly is not.

[00:06:42] Speaker 00:
Constitutional standing is whether you even, I mean there's the three-part test, but it's basically whether you even have an interest that you could be there with the patent owner.

[00:06:50] Speaker 00:
And if you don't, you don't even belong in the courtroom at all.

[00:06:52] Speaker 00:
And it's clear in the end to opinion that Judge Rich is talking about prudential standing.

[00:06:57] Speaker 00:
First of all, he lays out, he doesn't say prudential standing, but he lays out the test.

[00:07:01] Speaker 00:
Do you have all substantial rights?

[00:07:03] Speaker 00:
And all substantial rights is a prudential standing question.

[00:07:06] Speaker 04:
That's basically Waterman versus McKinsey.

[00:07:09] Speaker 04:
And I think the prudential distinction probably came along in the case law later.

[00:07:16] Speaker 00:
I'm not sure exactly.

[00:07:21] Speaker 00:
the Supreme Court cases start to blur together with all the issues we've got here, Your Honor.

[00:07:25] Speaker 00:
But I think that the test of prudential standing as it has evolved in this court is definitely what Judge Rich was working for.

[00:07:32] Speaker 00:
And Judge Rich's suggestion in that same opinion that they could have cured the standing defect in Enzo by adding the patent owner, you cannot cure a constitutional standing defect by adding the patent owner because you don't even belong in the courtroom.

[00:07:45] Speaker 00:
So it's pretty clear from those two things that Enzo was a prudential standing case, and thus it's on point.

[00:07:50] Speaker 01:
If you have an amended complaint and in that amended complaint you add a new claim, like suppose that your first complaint against them, suppose you're the patent owner and your first complaint against them contained two different patents you're suing them for infringement on.

[00:08:06] Speaker 01:
And then they add an amended complaint midway through or partially way through litigation with consent of the district court.

[00:08:13] Speaker 01:
And the amended complaint adds a third entirely new patent to the litigation.

[00:08:20] Speaker 01:
Why doesn't the date of the amended complaint be the date, is the day the lawsuit starts at that point in time, the amended complaint?

[00:08:29] Speaker 00:
Your Honor, I think it, and this has- Because you see the parallel.

[00:08:32] Speaker 01:
Here we have a supplemental complaint that was entered after the licensing problems were cured, the standing problem was cured.

[00:08:41] Speaker 01:
So why doesn't that suffice?

[00:08:44] Speaker 00:
Your Honor, the test for standing is the right, and the rules that permit

[00:08:50] Speaker 00:
amendments and Joinder, specifically Rule 15 in the amendment process, allows you to amend to state additional facts as they existed, but not to state new facts.

[00:09:03] Speaker 00:
For standing purposes, the test is standing as a file.

[00:09:07] Speaker 00:
So I think it's a different set.

[00:09:09] Speaker 01:
For those claims.

[00:09:10] Speaker 01:
So your argument would be

[00:09:11] Speaker 01:
maybe your think we'd be in my example of the whole different claim that being the third thing the amended complaint because you can only consider the jurisdictional facts for that didn't even exist at the time i think i think i follow me i think that's right for jurisdictional purposes the same claim you have to look at the fact that jurisdictional fact that existed they can change their allegations to show you the jurisdictional facts existed but they can't change the fact that i believe that's right you're okay but yet newman greens i think so

[00:09:41] Speaker 00:
If I could, I'd like to move to infelidity.

[00:09:43] Speaker 00:
And the infelidity 102 and 103 issues are closely related.

[00:09:47] Speaker 01:
And you think there's a need to?

[00:09:48] Speaker 01:
I mean, you're arguing standing, right?

[00:09:51] Speaker 01:
If we decide this case the way you want?

[00:09:53] Speaker 00:
If you decide this case on standing, we are going to have to go back and do it again.

[00:09:57] Speaker 00:
And this court does not reach anything else that's going to go on.

[00:10:00] Speaker 00:
But I think I owe it to my client, if I can, to argue the other ones.

[00:10:06] Speaker 00:
You haven't ruled in my favor yet.

[00:10:10] Speaker 00:
On invalidity, there are two references that are at issue here, Hammond and DeBeau, and there is no dispute that DeBeau has everything that's in the 109 claims that are at issue here, except it doesn't have seats gel, it has a polyurethane gel, and Hammond has the seats gel.

[00:10:30] Speaker 00:
This court's cases say that when one Hammond, on page 6 of Hammond, he expressly incorporates De Beaux by reference.

[00:10:37] Speaker 00:
And it's clear that you can do that, and they're treated as one reference.

[00:10:42] Speaker 04:
Don't they both lack the physically interlocked limitation?

[00:10:46] Speaker 00:
No, they don't, Your Honor.

[00:10:47] Speaker 00:
They don't.

[00:10:48] Speaker 00:
De Beaux does show physically interlocked.

[00:10:51] Speaker 00:
If you look at De Beaux's figure 4 and De Beaux's figure 5, which we show in, well, they're in De Beaux, but they're also in both of our briefs.

[00:10:58] Speaker 00:
They both show DeBeau's substrate, which he calls something else, but it's the substrate for Chen 109 purposes.

[00:11:06] Speaker 00:
One of them's a foam, and the other's a fabric.

[00:11:08] Speaker 00:
And you can see the gel is pushed into the interstitial spaces in the foam in Figure 4 of DeBeau.

[00:11:15] Speaker 00:
I think this is on page 10 of our reply brief, and I think it's around 35 of the main brief.

[00:11:21] Speaker 00:
And in Debeaux, he also gives a fabric.

[00:11:25] Speaker 00:
And you can see the fabric threads.

[00:11:26] Speaker 00:
And you can see the gel completely encapsulates.

[00:11:29] Speaker 00:
The little dots are all through.

[00:11:32] Speaker 00:
Debeaux does that.

[00:11:34] Speaker 00:
He's got a thermoset gel.

[00:11:36] Speaker 00:
So he knifes the precursor liquid over the substrate.

[00:11:42] Speaker 00:
And then he applies heat, and he cures the substrate.

[00:11:45] Speaker 00:
So he has a gel that's formed by heat, and his composite

[00:11:50] Speaker 00:
of that gel in the substrate is physically interlocked.

[00:11:54] Speaker 00:
Hammond comes along and says, polyurethane is fine, but CEPES is a lot better, which is the essence of Mr. Chen's claim.

[00:12:02] Speaker 00:
And he goes out of his way to incorporate by reference.

[00:12:06] Speaker 00:
The only question, a debo by reference, the only serious question that could be raised

[00:12:11] Speaker 00:
is whether Hammond is clear enough in telling you how to put the two together.

[00:12:15] Speaker 01:
Just want to make sure you know how our time works.

[00:12:17] Speaker 01:
You're using up your rebuttal time that you had intended to save.

[00:12:19] Speaker 00:
I think so.

[00:12:20] Speaker 00:
And I think I address this in the brief, so I will.

[00:12:25] Speaker 00:
I'll hold the rest for the rebuttal time.

[00:12:30] Speaker 04:
Thank you, Mr. Luke and Mr. Chris Faldy.

[00:12:38] Speaker 04:
And you've got a cross appeal, so you'll want to save a little time for that.

[00:12:42] Speaker 02:
Yes, Your Honor.

[00:12:44] Speaker 02:
We've reserved about one minute for rebuttal.

[00:12:46] Speaker 02:
And we'll be prepared to address these points and the cross appeal points now, Your Honors, if that pleases the court.

[00:12:54] Speaker 02:
Thank you, Your Honor.

[00:12:55] Speaker 02:
As Your Honor knows, my name is Ron Crostaldi.

[00:12:58] Speaker 02:
With the law firm of Shoemaker, Lubb, and Kendrick, I represent the plaintiff cross-appellant Alps South.

[00:13:04] Speaker 02:
We appreciate the opportunity to be here today.

[00:13:07] Speaker 04:
Why isn't there a lack of standing?

[00:13:11] Speaker 04:
First of all, you get Enzo.

[00:13:16] Speaker 04:
Secondly, when I look at this amended license, if it could remedy the defect, I see the grant of rights, 211, assignment of ownership of certain patents, not including this one.

[00:13:33] Speaker 04:
I look at 213, there's a license of certain rights.

[00:13:38] Speaker 04:
The agreement itself distinguishes between ownership, Simon, on the one hand, and a license on the other hand.

[00:13:50] Speaker 04:
You yourself, your client, distinguish between ownership and license.

[00:13:55] Speaker 04:
And this is license.

[00:13:58] Speaker 02:
Sure, Your Honor.

[00:13:59] Speaker 02:
We've asked two questions, one about Enzo and one about the distinction and the agreement.

[00:14:02] Speaker 02:
I'm happy to address both.

[00:14:04] Speaker 02:
Enzo is clearly distinguishable because of the facts in Enzo.

[00:14:07] Speaker 02:
The plaintiffs did not have constitutional standing the date that the complaint was filed in that case.

[00:14:14] Speaker 02:
In our case, we did have constitutional standing.

[00:14:17] Speaker 02:
That's not questioned.

[00:14:18] Speaker 02:
Under Lujan, we met the three elements, and we had constitutional standing.

[00:14:22] Speaker 02:
This issue's been addressed four times below.

[00:14:25] Speaker 02:
In one of the other cases, Judge Kovakovich, the district judge,

[00:14:29] Speaker 02:
a firm standing.

[00:14:30] Speaker 02:
In this case, two different district judges, Judge Covington and Judge Scriven, both affirmed standing.

[00:14:35] Speaker 02:
Did any of them wrestle with EMSA?

[00:14:36] Speaker 02:
Yes, sir.

[00:14:37] Speaker 02:
They all did.

[00:14:38] Speaker 02:
EMSA was an issue that's been raised by Ohio Willowood in all of these cases.

[00:14:43] Speaker 02:
In the EMSA case, factually, the plaint did not have constitutional standing.

[00:14:48] Speaker 02:
That's undisputed because there was nothing in place the date that EMSA filed.

[00:14:53] Speaker 03:
But EMSA doesn't talk about Lujan or doesn't talk about

[00:14:58] Speaker 03:
injury to the plaintiff.

[00:15:01] Speaker 03:
It talks more in terms of existential rights.

[00:15:05] Speaker 02:
Your Honor, you're absolutely correct.

[00:15:07] Speaker 02:
It does not get into a discussion of the distinction.

[00:15:11] Speaker 02:
And it also points out that it accepts the idea that there was an oral license there, right?

[00:15:18] Speaker 02:
You asked two questions, Your Honor.

[00:15:20] Speaker 02:
The first is it doesn't talk at all about prudential standing either.

[00:15:23] Speaker 02:
It just talks about standing in jail.

[00:15:25] Speaker 04:
But isn't it clear that

[00:15:27] Speaker 04:
did have constitutional standing.

[00:15:33] Speaker 04:
They were, well, we talked about Cape Pag or Enzo.

[00:15:37] Speaker 02:
We're talking about, I believe, Enzo, Your Honor.

[00:15:39] Speaker 02:
And in the Enzo case, our position, and we believe it's clear in the case, there was no constitutional standing.

[00:15:46] Speaker 02:
There was no agreement.

[00:15:48] Speaker 02:
Your second question related to, was there some kind of oral agreement?

[00:15:51] Speaker 02:
And generally, the case law, with respect to patents, as Your Honor well knows,

[00:15:54] Speaker 02:
that an assignment needs to be in writing.

[00:15:57] Speaker 02:
And in my understanding, in the Enzo case, there was nothing in writing at the time the suit was filed.

[00:16:02] Speaker 02:
And what they did in the Enzo case, which is different than the facts of this case, very different from the facts in this case, what they did in the Enzo case is they tried to come in and create something where there was absolutely nothing in the beginning.

[00:16:13] Speaker 02:
The case was clear in the International, I'm sorry, Intellectual Property Development, the TCI Cablevision decision of this court, which is 248 Fed 3rd

[00:16:23] Speaker 02:
1333, which is a much more recent case than Enzo discusses the distinctions between prudential and constitutional.

[00:16:31] Speaker 04:
But even if you write on that, when you look at the amended agreement, isn't it clear that there's a distinction between ownership assignment and license?

[00:16:42] Speaker 04:
And this patent falls under the license provision.

[00:16:46] Speaker 02:
Absolutely, Your Honor.

[00:16:47] Speaker 02:
There is a distinction between exclusive licensee and assignee.

[00:16:50] Speaker 02:
That's recognized in the case law.

[00:16:52] Speaker 02:
But I'm not sure, Your Honor, respectfully that that distinction makes a difference in this case because an exclusive licensee with all substantial rights can, in fact, have prudential standing and constitutional standing.

[00:17:04] Speaker 02:
And our position here is that the amended license agreement, even if we didn't have standing, both prudential and constitutional, at the initiation of lawsuit, which we contend that we did, the prudential standing piece was cured when the amended license

[00:17:19] Speaker 02:
was entered into because all substantial rights of an exclusive licensee, there's no question about that an exclusive licensee with all substantial rights has the ability to have prudential standing.

[00:17:29] Speaker 02:
We have all substantial rights and there is a distinction in the law between an assignee and an exclusive licensee, but exclusive licensees as well as assignees both have a prudential standing.

[00:17:40] Speaker 01:
Even if I was willing to

[00:17:44] Speaker 01:
accept your argument that Enzo applies only to constitutional standing, despite the language, it seems to me, doesn't indicate that.

[00:17:50] Speaker 01:
But even if I were willing to, because Judge Rich certainly wrote much broader than simply a focus on constitutional standing issues.

[00:17:58] Speaker 01:
But even if I were to accept that argument,

[00:18:00] Speaker 01:
Well, then you're in a scenario where maybe we're not bound by ENSO, but we have to decide whether the same logic that was used to decide the case in ENSO ought to apply to this case.

[00:18:12] Speaker 01:
And I'm having a difficult time determining how Judge Rich's decision ought not to apply to a circumstance involving prudential standing, especially in light of all of the Supreme Court cases that came

[00:18:30] Speaker 01:
Newman-Green and all the regional circuit cases, press room unions, fields from the Third Circuit, all of which I think are prudential standing cases and say you can't correct defects in actual jurisdiction of fact after the time of the original complaint.

[00:18:47] Speaker 01:
And every one of them was a circumstance just like this, which involved

[00:18:51] Speaker 01:
You just got to go back and do a do-over.

[00:18:53] Speaker 01:
Even though nothing would really be different, you just have to do a do-over because this is an important rule that we're not going to allow to be modified.

[00:19:02] Speaker 02:
I appreciate the point, Your Honor.

[00:19:04] Speaker 02:
Two points.

[00:19:04] Speaker 02:
Enzo, it's factually different, because again, in Enzo, we believe that there was no constitutional standing.

[00:19:11] Speaker 01:
You believe that, but Judge Rich didn't say that.

[00:19:12] Speaker 01:
That wasn't what he based it on.

[00:19:14] Speaker 01:
He didn't make that constitutional standing analysis, and nor did he limit his discussion to the kinds of facts that would pertain to constitutional standing as opposed to prudential standing.

[00:19:23] Speaker 01:
His analysis includes all of those facts.

[00:19:26] Speaker 01:
He wasn't burdened by labels like constitutional and prudential.

[00:19:29] Speaker 01:
He just looked at all the facts,

[00:19:31] Speaker 01:
and said, this doesn't work.

[00:19:33] Speaker 02:
And under all of those facts, we believe that the reason it didn't work is because computational standing didn't exist.

[00:19:39] Speaker 01:
Well, you believe that, but that's not what he said.

[00:19:41] Speaker 01:
So apart from that, even if you were correct, why wouldn't that identical rule, why shouldn't that identical rule apply to a case that you say is based exclusively here on prudential standing?

[00:19:53] Speaker 01:
I don't see any logic that would result in two different rules for us.

[00:19:58] Speaker 02:
Under the intellectual property development case, Your Honor, there is a distinction, again, a Federal Circuit opinion, the distinction being that constitutional standing cannot be cured, prudential standing can be cured, and prudential standing, for instance, could be cured by Joinder, but the case law is very clear that you can cure prudential standing, you don't have to dismiss and start the suit over.

[00:20:20] Speaker 01:
No, and that's an exception on the part of patent law that doesn't exist pretty much in any other field of law.

[00:20:25] Speaker 01:
You can cure this defect in prudential standing by joining the actual right holder.

[00:20:31] Speaker 01:
And so why didn't you do that?

[00:20:33] Speaker 01:
You could have done that at any point and then we wouldn't have to deal with this mess.

[00:20:37] Speaker 01:
Why didn't you do it?

[00:20:38] Speaker 02:
Because we had three different district court judges respectfully who told us that wasn't necessary.

[00:20:41] Speaker 02:
We're happy to join Mr. Chen.

[00:20:43] Speaker 02:
Mr. Chen has given us all rights.

[00:20:47] Speaker 01:
I'm sorry, that is not acceptable.

[00:20:53] Speaker 01:
What was the cost to you of joining him?

[00:20:55] Speaker 01:
There was no cost, right?

[00:20:57] Speaker 01:
You could have avoided this entirely.

[00:20:58] Speaker 01:
Clearly, they thought it was necessary.

[00:21:00] Speaker 01:
Clearly, there was a dispute, whether the district court judge sided with you or not.

[00:21:04] Speaker 01:
Clearly, that resulted in this litigation, that choice to you, and it was a no-cost choice.

[00:21:10] Speaker 02:
It was a choice of Mr. Chen.

[00:21:12] Speaker 02:
Mr. Chen is an independent party, an independent individual, Your Honor, and there would be a cost to Mr. Chen, who's an individual inventor.

[00:21:18] Speaker 02:
He's not associated.

[00:21:19] Speaker 02:
He has a company, but he's the only employee of the company.

[00:21:22] Speaker 02:
There's a cost to Mr. Chen of participating in the litigation.

[00:21:25] Speaker 02:
Mr. Chen's preference was not to participate if he didn't need to.

[00:21:29] Speaker 02:
We believe that he doesn't need to.

[00:21:30] Speaker 02:
We began, this issue came before three different district judges on the same facts, the same parties, the same, and we were told each time we were prepared to,

[00:21:40] Speaker 02:
bring him into the suit if it was absolutely necessary and we were told that it wasn't absolutely necessary.

[00:21:46] Speaker 02:
We're prepared to join him now if necessary.

[00:21:49] Speaker 02:
Rule 19 permits involuntary joiner.

[00:21:51] Speaker 02:
There's a case, the mentor case before this court where this court permitted even on appeal the joiner of a patent inventor and owner

[00:22:03] Speaker 03:
Circumstances are a little different here than the one in Mentor, right?

[00:22:08] Speaker 03:
Yes, sir.

[00:22:08] Speaker 03:
Where the Mentor Court said, this is a rare circumstance.

[00:22:12] Speaker 03:
We're going to condone this or permit this.

[00:22:16] Speaker 02:
Yes, Your Honor.

[00:22:18] Speaker 02:
The facts under Mentor, your point is well taken, are different than the facts here.

[00:22:22] Speaker 02:
But the point is that the Prudential Standing Issue can be cured at any point in litigation.

[00:22:27] Speaker 01:
In only one way.

[00:22:29] Speaker 01:
in only one way.

[00:22:30] Speaker 01:
And you want us to expand the umbrella of ways that prudential standing can be cured.

[00:22:37] Speaker 01:
I mean, that just takes us away from what regional circuits do every day with regard to prudential standing.

[00:22:41] Speaker 01:
We've already done something a little different and unique with regard to patent law.

[00:22:46] Speaker 01:
I mean, you want to move us even further away from the norm.

[00:22:49] Speaker 02:
With respect, Your Honor, I don't think we're asking for what Your Honor is suggesting.

[00:22:54] Speaker 02:
I think what we're asking for is there is no prudential standing issue today.

[00:22:59] Speaker 02:
because the patent agreement was amended.

[00:23:02] Speaker 01:
There is no regional circuit case that you pointed to in your brief and nor could I find any that would support the notion that the prudential standing defect of the type you have here, not owning the property right, can be cured and an amended complaint can then be filed to cure the defect.

[00:23:20] Speaker 01:
In fact, every single case, like I said to you, the Supreme Court's Newman-Green, the Second Circuit's Pressman,

[00:23:25] Speaker 01:
press room unions, the field circuits, the field of the third circuit says that can't happen.

[00:23:31] Speaker 01:
Exactly that scenario.

[00:23:32] Speaker 01:
They're not patent cases.

[00:23:33] Speaker 01:
None of them.

[00:23:34] Speaker 01:
I just don't see why we ought to treat a patent case differently.

[00:23:38] Speaker 01:
And your argument is, well, put, well, we already treat patent cases differently because we allow you to join and thereby cure.

[00:23:43] Speaker 01:
But what you're asking us to do is expand that already disparate treatment that exists for patent cases.

[00:23:49] Speaker 01:
And that I'm finding troubling.

[00:23:51] Speaker 02:
There's two other rationales, Your Honor,

[00:23:54] Speaker 02:
standing in this issue.

[00:23:56] Speaker 02:
First, the courts have held that a licensee who has the ability to sue for past damages on that basis alone has prudential standing.

[00:24:05] Speaker 01:
In our original license agreement, we have... So a field of use, and that is unequivocally on all fours with Pope out of the Supreme Court and International Game Co.

[00:24:13] Speaker 01:
written by Judge Rader back my first year on the bench.

[00:24:17] Speaker 01:
It's on all fours.

[00:24:18] Speaker 01:
It's an identical case.

[00:24:19] Speaker 01:
That case was a field of use.

[00:24:21] Speaker 01:
And that's what you have.

[00:24:22] Speaker 01:
You have rights to bring suit, but only in field of use.

[00:24:24] Speaker 01:
In both of those cases, the Supreme Court's Pope decision like 1897 or 1887 and our international game cult was identically those facts.

[00:24:34] Speaker 02:
And your honor, with respect to the standing issue again, we believe that for the reasons that we've amended this, we would be willing to join Mr. Chan

[00:24:49] Speaker 04:
Coming to the same ground again and again before you come to the minute you want to say for cross-appeal, anything you want to say on other issues?

[00:24:59] Speaker 02:
If I can, if I could move to the absolute intervening rights issue, Your Honor, with respect to the absolute intervening rights issue.

[00:25:05] Speaker 04:
Which is one of your cross-appeal issues.

[00:25:08] Speaker 02:
Yes, sir.

[00:25:10] Speaker 02:
The patent came out of re-examination with essentially two amendments that the district court found to be

[00:25:17] Speaker 02:
issues that caused the patent claim language to be different, substantially different, to cut off damages from that point on.

[00:25:24] Speaker 02:
The two issues were the addition of the words, quote, comprising polystyrene, ethylene, ethylene, propylene, styrene, close quote, which I'll call CEPES, S-E-E-P-S, for the sake of ease here in our argument.

[00:25:38] Speaker 02:
And additionally, the adding of the language, quote, physically interlocked.

[00:25:43] Speaker 02:
The claims five, six, and 12,

[00:25:47] Speaker 02:
which were independent, I'm sorry, were dependent claims, already were limited to CEIBS analysis motion for reconsideration.

[00:25:54] Speaker 02:
We brought that to the attention of the district court, and the district court acknowledged that it may have made an error in that respect.

[00:26:00] Speaker 04:
So you're saying physically interlocking is really no change.

[00:26:04] Speaker 02:
And then the second point is physically interlocking.

[00:26:06] Speaker 02:
It's really no change.

[00:26:07] Speaker 04:
But doesn't that invalidate your patents?

[00:26:10] Speaker 04:
Because that was...

[00:26:13] Speaker 02:
It's no change, Your Honor, because it's inherent.

[00:26:16] Speaker 02:
So what these patents claim are a composite that's heat-reversible, heat-formable.

[00:26:20] Speaker 03:
I guess the question is, what is really the contribution the inventor here made to the art in light of Hammond, which incorporates, by reference, Deveau?

[00:26:31] Speaker 03:
Sure.

[00:26:31] Speaker 03:
Which, together, given that we have to treat that as a single reference, because one incorporated the other by reference, what we have in that combined reference is the seats

[00:26:43] Speaker 02:
polymer gel combined with the substrate.

[00:26:48] Speaker 02:
Respectfully, I don't believe that Hammond and Debeau show that.

[00:26:51] Speaker 02:
They don't show a composite, which is important.

[00:26:53] Speaker 02:
Composite is a key word in these, and a composite formed by heat is physically interlocked.

[00:26:59] Speaker 04:
Physical interlocking is the process by which... But Mr. Lucan says they're necessarily interlocked because they're together.

[00:27:08] Speaker 02:
together doesn't mean interlocked, we would submit your honor.

[00:27:11] Speaker 02:
There were claims construction in this case as to what composite, as to what physically interlocked meant.

[00:27:16] Speaker 02:
And in the claims construction, which are waived for purposes of appeal because they have not been raised on appeal, Judge Scriven defined physically interlocked to be an inherent process whereby the polymer is liquefied, if you will, put in the context of a substrate, cooled down, and physically interlocks with it.

[00:27:35] Speaker 02:
Hammond and Dubow don't show that.

[00:27:37] Speaker 02:
Hammond claims a polymer that can be used as an encapsulant forced around electrical components.

[00:27:43] Speaker 02:
Dubow uses thermoset, not thermoplastic, polymers that are essentially squeezed into a box to perform certain encapsulant-type functions.

[00:27:56] Speaker 02:
The corporation by reference, if Hammond is read carefully, is a description of an encapsulant.

[00:28:02] Speaker 02:
Hammond says specifically,

[00:28:05] Speaker 02:
This can be used as an encapsulant as discussed in, and he references the patent number of the Debeau publication.

[00:28:13] Speaker 04:
As you see, you've consumed your time, but we'll give you a minute back on the cross-appeal on the intervening rights issue, if there's something to respond to.

[00:28:23] Speaker 02:
Thank you, sir.

[00:28:24] Speaker 04:
Thank you all.

[00:28:25] Speaker 04:
Ms.

[00:28:25] Speaker 04:
Tolukin.

[00:28:29] Speaker 00:
Thank you, Your Honor.

[00:28:30] Speaker 00:
Frequently outstanding, there was a suggestion that three different district court judges told them they didn't have to add anybody.

[00:28:36] Speaker 01:
One of the cases is the same judge, and the other case was the one you said that was filed after the day of the amending.

[00:28:44] Speaker 00:
Yes, I think our case went through two judges, and the first judge ruled the contrary.

[00:28:49] Speaker 00:
But when Judge Scriven picked us up Sue Espante,

[00:28:52] Speaker 00:
She thought, contrary to Enzo, that she was dealing with was an issue that this court had never addressed.

[00:28:57] Speaker 00:
And she said, I'm going to go ahead and let this thing be non pro dunce retroactive.

[00:29:01] Speaker 00:
But she pointed out, I can't find any cases to ever let a judge like me do this again.

[00:29:06] Speaker 00:
And she, in that order, strongly urged them to add the patent owner.

[00:29:10] Speaker 00:
So it's not as though they weren't told by the district court that they should follow the rules that this court has been discussing.

[00:29:17] Speaker 00:
A couple of other issues on the cross appeal, Your Honor.

[00:29:19] Speaker 00:
With respect to the intervening rights, that is a claim construction issue.

[00:29:23] Speaker 00:
There's a question of what the claims meant before re-examine, what they meant after re-examine.

[00:29:28] Speaker 00:
With respect to physically interlock, I don't think they can even raise the arguments they're raising here, because the language that they relied on in their opening brief was that formed with heat language.

[00:29:37] Speaker 00:
And as we point out in our response to that, to their opening brief, they originally proposed that formed with heat, as in making the composite form with heat,

[00:29:49] Speaker 00:
involved physically interlocking.

[00:29:51] Speaker 00:
And my predecessor argued that no, it didn't.

[00:29:54] Speaker 00:
It simply requires heat.

[00:29:56] Speaker 00:
And at argument on Markman before the magistrate, they withdrew their proposal that formed by heat requires physically interlocking.

[00:30:06] Speaker 00:
So to come in here today, as they did in their opening brief, and urged Judge Scriven committed error because she construed the opening, the pre-re-exam, formed with heat language,

[00:30:17] Speaker 00:
to mean exactly what they stipulated to is entirely inappropriate.

[00:30:22] Speaker 00:
Their reply brief that we did not get a chance at in the brief shifts grounds completely and it points to the word composite and it pulls out the tronics and says that Mr. Chen was his own lexicographer and when he said composite he meant physically interlock composite and in fact

[00:30:39] Speaker 00:
That one was not even litigated on Markman.

[00:30:42] Speaker 00:
It was a stipulated agreed order that said a composite is what you think it is.

[00:30:47] Speaker 00:
It's a composite.

[00:30:48] Speaker 00:
It's a combination.

[00:30:49] Speaker 00:
It's the plain meaning.

[00:30:51] Speaker 00:
Nothing there about physically interlocking either.

[00:30:54] Speaker 00:
So for them to overcome this intervening rights, they have to convince you that Judge Scriven erred by picking claim constructions on the pertinent terms composite and formed by heat for what the composite does that are the exact opposite

[00:31:10] Speaker 00:
of what they urge themselves below.

[00:31:12] Speaker 00:
Last, and I know we haven't talked about willfulness yet, and we kind of moved right past, but the recent decisions in Halo and Stryker both confirmed that Seagate's two-part test is still in place and valid.

[00:31:25] Speaker 00:
I think I heard that there is an en banc petition filed in Halo.

[00:31:31] Speaker 00:
If the court is going to rethink its Seagate willfulness jurisdiction or jurisprudence in light of the Supreme Court's decisions in the attorney's fees,

[00:31:39] Speaker 00:
We respectfully submit that unless and until on bonk this court overrules Seagate, that the court should follow what it did at Stryker and what it did in Halo, which would mandate, if the court doesn't dismiss on standing, would mandate reversal on willfulness.

[00:31:54] Speaker 00:
Thank you, Your Honor.

[00:31:55] Speaker 04:
Thank you.

[00:31:56] Speaker 04:
Mr. Lucan, Mr. Cristaldi on the cross appeal only.

[00:32:00] Speaker 04:
One minute.

[00:32:03] Speaker 02:
Your Honor, Mr. Lucan mentioned Judge Scriven

[00:32:09] Speaker 02:
claim construction and mentioned that it was before the re-examination.

[00:32:12] Speaker 02:
The claim construction on the phrase physically interlocking was done as part of the summary judgment process and was posted to the re-examination proceeding.

[00:32:22] Speaker 02:
It was specifically because the phrase physically interlocking was now part of the claim and Judge Griffin did rule in that definition

[00:32:31] Speaker 02:
that physical interlocking was an inherent process of cooling down the polymer, I'm sorry, heating up the polymer, putting it in contact with the substrate and cooling it down.

[00:32:40] Speaker 02:
The case also is clear, Your Honors, that when a feature is inherent in the patent, it doesn't change the substance of the patent.

[00:32:50] Speaker 02:
Your Honor, I know it's outside the scope, but there was a statement made that we were strongly urged by the court to add.

[00:32:56] Speaker 02:
That's untrue, Your Honors.

[00:32:59] Speaker 02:
The three judges that Judge Moore, that I referenced earlier, were two judges in this very case.

[00:33:04] Speaker 02:
But the judges had changed.

[00:33:05] Speaker 04:
But that's standing.

[00:33:06] Speaker 04:
That's not across the board.

[00:33:07] Speaker 02:
Yes, sir, Your Honor.

[00:33:08] Speaker 02:
I apologize, Your Honor.

[00:33:08] Speaker 02:
Thank you all.

[00:33:10] Speaker 04:
Thank you.

[00:33:10] Speaker 04:
The case will be taken under submission.