[00:00:00] Speaker 01: five dash one four two eight Rosebud versus Adobe systems. [00:00:23] Speaker 01: Mr. Chen, please proceed. [00:00:31] Speaker 02: Good morning, Your Honors. [00:00:32] Speaker 02: May it please the Court? [00:00:34] Speaker 02: I'd like to focus on just two issues today. [00:00:36] Speaker 02: The first issue is the statutory interpretation of Section 154D, and specifically whether actual notice under that section requires an affirmative act by the patentee. [00:00:48] Speaker 03: The second issue I'd like to discuss is... Does the District Court require an affirmative act by the patentee? [00:00:52] Speaker 02: The District Court did not. [00:00:53] Speaker 02: The District Court agrees with Rosebud's interpretation of that statute. [00:00:58] Speaker 02: And just to give the court a roadmap, the second issue I'd like to talk about is the sufficiency of Rosebud's evidence to show that actual notice. [00:01:06] Speaker 02: Turning to the first issue, as Your Honor pointed out, the district court actually agreed with Rosebud's interpretation of the statutes. [00:01:13] Speaker 02: When analyzing statutory interpretation, as the court knows, the first step is to look at the language of the statute and see if it's plain and unambiguous. [00:01:21] Speaker 02: And here it's exactly that. [00:01:24] Speaker 02: Section 154D unambiguously focuses on the status of the alleged infringer. [00:01:29] Speaker 02: It doesn't focus on anything that the patentee does, and in fact the relevant portion doesn't mention the patentee at all. [00:01:35] Speaker 02: So of course it doesn't require anything of the patentee. [00:01:40] Speaker 02: Adobe wants to look at the legislative history to support its interpretation, but because the language is so unambiguous it's inappropriate to even look at the history. [00:01:50] Speaker 02: Even if the court looks at it, it actually supports Rosebud's interpretation. [00:01:55] Speaker 02: In Adobe's brief, they cite to a specific portion of the legislative history, specifically in the last sentence, the history talks about two requirements. [00:02:05] Speaker 02: First requirement is that the patent, the published applicant explain what acts are regarded as giving rise to provisional rights. [00:02:13] Speaker 02: And the second requirement is, of course, the affirmative act of the patentee to give notice. [00:02:17] Speaker 01: You agree constructive knowledge is not enough, correct? [00:02:20] Speaker 02: I agree, yes. [00:02:21] Speaker 01: So tell me why or where in this evidence you've raised a question of fact about actual knowledge, assuming that we accept the interpretation given below and the interpretation that you're arguing in favor of. [00:02:35] Speaker 01: Tell me where you've provided proof sufficient to survive summary judgment. [00:02:40] Speaker 02: Sure. [00:02:41] Speaker 02: And yes, this goes to what we felt was the district court's error in finding that what we did show was not sufficient. [00:02:48] Speaker 02: Specifically, and in our brief relied on the SYNCOR case, we feel that the evidence that we presented was very similar to what was presented in that case. [00:02:56] Speaker 02: Specifically, we showed that Adobe had knowledge of a predecessor patent, and specifically factually, during a meeting in 2002, Rosebud told Adobe executives about its first patent application [00:03:10] Speaker 02: And then when that patent issued in 2008, we showed the emails where Rosebud sent Adobe a notice that, you know, we got this patent. [00:03:18] Speaker 02: And in 2009, a similar email was sent. [00:03:21] Speaker 02: And of course, in 2010, the first lawsuit in this series of lawsuits was filed, Rosebud versus Adobe. [00:03:28] Speaker 00: When did the publication occur in this case? [00:03:30] Speaker 00: Was that 2011? [00:03:32] Speaker 02: Yes, the publication of the application that led to the asserted patent in this case, which is the third case. [00:03:39] Speaker 00: So that was several years later. [00:03:41] Speaker 02: Yes, but as shown in SYNCOR, for example, there are emails that were used as circumstantial evidence that came several years before the relevant patent. [00:03:52] Speaker 02: And so that can serve as circumstantial evidence. [00:03:54] Speaker 03: Do you have any evidence that's at all contemporaneous with the publication date? [00:04:02] Speaker 02: I don't believe we have that evidence at that time, at this time, but discovery [00:04:07] Speaker 02: still in that case? [00:04:07] Speaker 03: Well, let's set that aside. [00:04:09] Speaker 03: I mean, you had what you had, and whether you properly promote your discovery issues is a different question. [00:04:16] Speaker 03: But at best, it seems to me that there's a couple-year gap between the latest evidence you point to, none of which has to deal with this application or the publication and the prior course of dealings. [00:04:29] Speaker 03: And why isn't that just a suggestion that Adobe and Rosebud had been in competition [00:04:36] Speaker 03: knew about some patents. [00:04:38] Speaker 03: And then the best inference we could make is that a good lawyer might have told them to go look for this evidence, but there's no indication that anybody actually did. [00:04:49] Speaker 02: Yes, I mean, there is a gap. [00:04:51] Speaker 02: But I guess as similar in SYNCOR, the defendants similarly argue that email evidence that was produced could not act as circumstantial evidence because it was so far before. [00:05:02] Speaker 02: the relevant date, and I think the same reasoning would apply here. [00:05:05] Speaker 02: Yes, the emails are not from 2011, but they still act as circumstantial evidence of what. [00:05:10] Speaker 01: But in SYNCOR, it says the defendants admitted to consistently monitoring SYNCOR's patents. [00:05:19] Speaker 01: We don't have anything like that here. [00:05:20] Speaker 01: You have two emails in 2008 and 2009 that indicate knowledge of your products. [00:05:29] Speaker 01: and you sued them for infringement of parent patents or related patents, but you don't have anything like in SYNCOR where defendants admitted to monitoring SYNCOR patents. [00:05:40] Speaker 01: That's a huge difference between SYNCOR and this case because you don't have any evidence that they were monitoring your patents and certainly not an admission by them. [00:05:50] Speaker 01: All you have is the fact that they had to know at least about a couple of the parent patents because you sued them on them. [00:05:56] Speaker 02: So two responses to that. [00:05:57] Speaker 02: First, we do have evidence that they were monitoring Rosebud's copyrights. [00:06:02] Speaker 02: And second, not all the defendants admitted that they monitored the products of the SYNCOR. [00:06:12] Speaker 02: Specifically, I believe it's on page five of the district court opinion where it talks about a defendant called Delta. [00:06:18] Speaker 02: And the only evidence that was presented for Delta were emails showing [00:06:22] Speaker 02: that the defendant followed products and that their knowledge of a predecessor patent. [00:06:26] Speaker 01: Well, you may be right about the facts, but unfortunately, that's not what the Federal Circuit opinion says. [00:06:31] Speaker 01: And to the extent that I read the Federal Circuit opinion for establishing law about when actual knowledge is sufficiently established to survive a question of fact type analysis, it says defendants. [00:06:46] Speaker 01: It doesn't say any of them didn't. [00:06:47] Speaker 01: It says defendants admitted to monitoring [00:06:51] Speaker 01: And so unfortunately, whether that fact, as you articulated, is true or not, and it was brought out in the district court case, that fact is not articulated in the Federal Circuit opinion. [00:07:02] Speaker 01: And instead, this principle of law is based upon a finding by our court, right or wrong, that defendants had this knowledge and were consistently doing this. [00:07:12] Speaker 01: So you might be right about the true facts of that case. [00:07:16] Speaker 01: But that's not what guides the law. [00:07:18] Speaker 01: What guides the law is what's discussed in the Federal Circuit opinion. [00:07:22] Speaker 02: Yes. [00:07:22] Speaker 02: Well, we don't have an admission from the defendants because we haven't been able to take any depositions. [00:07:27] Speaker 02: All we have is the evidence. [00:07:28] Speaker 01: SYNCOR also shows that at least one of the defendants actually possessed on their own the 190 patent prior to the suit being filed. [00:07:37] Speaker 01: So do you have anything like that here? [00:07:39] Speaker 01: Do you have anything to show that they possessed the [00:07:42] Speaker 01: patent that ultimately issued from the application prior to you suing them or making them aware of it? [00:07:48] Speaker 02: No, we don't have that. [00:07:50] Speaker 03: Essentially, you're asking us to stack an inference on top of an inference that because of the course of litigation and the competitors, you can infer that they would have monitored Rosebud's patent activity. [00:08:08] Speaker 03: And because they would have monitored it, you can affirm [00:08:12] Speaker 03: infer that they would have discovered that. [00:08:14] Speaker 03: But that doesn't seem to be enough to show actual knowledge. [00:08:18] Speaker 03: It seems to be enough to show at best that there might have been, if constructive knowledge was OK, maybe that would meet that standard. [00:08:26] Speaker 03: But it's not even clear whether it would meet that standard. [00:08:29] Speaker 03: You don't have anything that suggests they had actual knowledge. [00:08:36] Speaker 02: Well, we have the evidence that we presented in the brief. [00:08:39] Speaker 02: And I know, Your Honor, [00:08:40] Speaker 02: recognize that you do have to make an inference, but here, I mean... You have to make two inferences, though. [00:08:45] Speaker 03: That's the problem. [00:08:46] Speaker 03: I mean, if you had some evidence, like in SYNCOR, that the company routinely monitored Rosebud's patent applications, then you could make an inference, and a reasonable one probably, that they would have discovered this application. [00:09:01] Speaker 03: But you don't even have any evidence that shows that they continually monitored it. [00:09:06] Speaker 03: You just want us to make that inference because of the course of dealings. [00:09:10] Speaker 03: There's no evidence supporting that inference. [00:09:15] Speaker 02: Well, we think the evidence we presented does show that they consistently followed Rosebud's product, specifically the emails. [00:09:22] Speaker 01: But those emails are two emails from 2008 and 2009. [00:09:26] Speaker 01: And even if those established that they were following the Rosebud products in 2008 and 2009, there's a long time between that and when this patent application is issued. [00:09:35] Speaker 01: And there's nothing. [00:09:36] Speaker 01: There's radio silence. [00:09:38] Speaker 01: in terms of evidence that would establish an inference that they were consistently following these products. [00:09:42] Speaker 02: I'm not talking about the 2008-2009 emails. [00:09:46] Speaker 02: I'm talking about the internal Adobe emails that we pointed to where they talk about downloading and testing out Rosebud software and being concerned about copyright infringements. [00:09:57] Speaker 02: and also even trying to emulate some of Rosebud's software features. [00:10:01] Speaker 02: I mean, the internal Adobe emails are what mainly we're relying on to show the following of Rosebud's products. [00:10:07] Speaker 00: And what are the dates on those? [00:10:09] Speaker 02: Those dates were also before the published application. [00:10:16] Speaker 01: But I assume they're a little later than 08 and 09? [00:10:18] Speaker 01: Is that what you're... If you want to find them on rebuttal, you can do that. [00:10:27] Speaker 01: I want to correct one thing I said. [00:10:30] Speaker 01: My clerk pointed out to me that in sync court actually says some defendants admitted to consistently monitoring. [00:10:36] Speaker 01: So in your favor, you are in fact correct and I misspoke. [00:10:40] Speaker 01: Thank you, Your Honor. [00:10:41] Speaker 01: Yes. [00:10:42] Speaker 01: Some defendants, not all of them. [00:10:43] Speaker 01: The court didn't find all of them did. [00:10:45] Speaker 01: Right. [00:10:46] Speaker 02: Yeah. [00:10:46] Speaker 02: And I think you mentioned that one of the defendants did in fact have possession of the pen. [00:10:50] Speaker 02: And we recognize that. [00:10:51] Speaker 02: But I think the Federal Circuit affirmed with respect to all defendants. [00:10:55] Speaker 02: Of course, if only one defendant had actual possession of it, that shouldn't be. [00:11:02] Speaker 03: Well, then maybe we affirmed improperly to the people that didn't have that evidence. [00:11:08] Speaker 03: But you don't have that evidence either. [00:11:10] Speaker 02: Correct. [00:11:11] Speaker 02: And so that's why I think it's the same situation. [00:11:13] Speaker 03: Well, maybe we were wrong there. [00:11:16] Speaker 02: I think the reasoning in Sinclair was sound. [00:11:21] Speaker 03: Maybe our reasoning was based on the evidence showing actual possession. [00:11:25] Speaker 03: and that some defendants had a specific duty to monitor. [00:11:28] Speaker 03: So the affirm on those people was OK. [00:11:32] Speaker 03: And the other people shouldn't have been affirmed as to. [00:11:35] Speaker 03: It doesn't matter. [00:11:35] Speaker 03: We don't need to argue about the evidence. [00:11:36] Speaker 03: You have what you have. [00:11:38] Speaker 01: Mr. Chen, would you like to save the remainder of your time for rebuttal, or is there anything else you'd like to add right now? [00:11:42] Speaker 02: I think that's all I have right now. [00:11:43] Speaker 02: I'll save the rest of my time for rebuttal. [00:11:45] Speaker 02: Perfect. [00:11:46] Speaker 01: Mr. Bertha. [00:11:51] Speaker 04: Thank you, Honors. [00:11:52] Speaker 04: I have a mic right up for Adobe. [00:11:54] Speaker 04: May it please the court? [00:11:55] Speaker 04: There are two issues here. [00:11:57] Speaker 04: The first is the issue of statutory interpretation. [00:12:00] Speaker 04: However, I'm not certain that this court would need to resolve that issue of statutory interpretation because even under the district court's understanding of what the term actual notice requires, the district court was correct that there is no evidence sufficient to support a finding by a reasonable jury of actual notice assuming that it essentially means actual knowledge by Adobe, the published patent application. [00:12:25] Speaker 04: And so obviously we take the position that action notice requires something more, but setting that aside for the moment, on the issue of actual notice and saying that that is knowledge, that conclusion directly follows from the evidence presented. [00:12:39] Speaker 04: What they relied upon was knowledge of a prior patent standing alone and the knowledge of the specification of that patent that would inform someone of what potential claims could come out of the patent application. [00:12:50] Speaker 01: Well, it wasn't just knowledge of a prior patent. [00:12:52] Speaker 01: It was being sued on that prior patent, right? [00:12:55] Speaker 01: There's certainly a huge difference between a company knowing about a single patent and what behavior a reasonable company and reasonable attorneys would take when they were sued on that patent. [00:13:08] Speaker 04: So yeah, I agree. [00:13:09] Speaker 04: There's two different facts. [00:13:10] Speaker 04: One is... Huge difference. [00:13:11] Speaker 04: Yes. [00:13:12] Speaker 04: There are two different arguments that they ran. [00:13:13] Speaker 04: And I think that there are distinctions between them. [00:13:16] Speaker 04: One is the fact of the knowledge of the specification. [00:13:18] Speaker 04: And I, to the extent that the court is indicating that that's not sufficient, I agree. [00:13:22] Speaker 04: The second piece is the fact of the prior lawsuits. [00:13:25] Speaker 01: And now I realize this bleeds into a constructive knowledge notion, so don't get too worried when I ask you the following question. [00:13:31] Speaker 01: But wouldn't any good attorney, if you were sued on a patent, wouldn't you immediately, probably the first thing you'd do, read the patent. [00:13:42] Speaker 01: But the second thing you would do would be to look to see if there's any related patents. [00:13:46] Speaker 01: I mean, isn't that something [00:13:48] Speaker 01: almost every reasonable attorney would do pretty quickly after being informed about the lawsuit. [00:13:53] Speaker 04: So I think there's two answers to that question. [00:13:56] Speaker 04: The first is, that is something that someone certainly could do, and maybe someone should argue should do. [00:14:03] Speaker 04: But that does not lead to a reasonable inference that more than likely and not in fact lead to. [00:14:08] Speaker 01: OK, I started by saying that most likely bleeds into constructive knowledge, so don't get scared. [00:14:13] Speaker 01: But when you say could do, that's a BS answer. [00:14:16] Speaker 01: I mean, are you telling me that you tell me you? [00:14:19] Speaker 01: And we will consider you a better than average attorney, OK? [00:14:22] Speaker 01: We will not say you're like the average attorney, so you don't have to worry. [00:14:26] Speaker 01: But better than average attorney, are you telling me someone brings you a lawsuit, you're not going to immediately look at the history and related applications of this patent? [00:14:36] Speaker 01: A client brings you, we've just been sued on this patent. [00:14:39] Speaker 01: How quickly after that? [00:14:41] Speaker 04: Let me just answer honestly. [00:14:44] Speaker 04: which is probably the right course. [00:14:46] Speaker 01: Always good. [00:14:49] Speaker 04: It depends on the situation. [00:14:51] Speaker 04: That yes, when you get a patent in, you try and figure out who the plaintiff is, if it's a serious case, what kind of resources you're going to expend on it. [00:14:57] Speaker 04: Then you look at what the patent says. [00:14:59] Speaker 04: You probably look to see if there are prior patents. [00:15:03] Speaker 04: I'm not certain that until you're fairly deep in the process, you would look for a non-issued published patent application that was currently just pending an application. [00:15:12] Speaker 01: Seriously? [00:15:13] Speaker 01: Because if you're going to negotiate a settlement with these people to get your client out from under this, aren't you going to want to ensure that you got everything wrapped up in that settlement? [00:15:20] Speaker 04: I think that's true, Your Honor, but that again goes to the facts of this case. [00:15:23] Speaker 04: The history of the litigation here was first lawsuit on the first patent filed in May of 2010 [00:15:30] Speaker 04: voluntarily dismissed in November of 2010. [00:15:33] Speaker 04: That says nothing about knowledge of the patent application that didn't exist until December of 2011. [00:15:38] Speaker 04: The second lawsuit was filed in September of 2012. [00:15:45] Speaker 04: Here the unrevoted and unchallenged facts are that Adobe's product had been shut down by the beginning of January of 2013. [00:15:54] Speaker 04: So it wasn't the course of the second litigation, it wasn't the resolution of the second litigation, [00:16:00] Speaker 04: a jury would have to find that it was more likely and not that someone between September and the beginning of January, so a space of a little over three months, had to have and thus did look up a published patent application that existed at that time. [00:16:13] Speaker 04: And that is not a reason why it's here. [00:16:15] Speaker 01: So you're saying that even if in normal course when your client is sued, you would look [00:16:20] Speaker 01: You wouldn't keep looking every five minutes and you would have had to look at this precise and very, very narrow period of time near the end of the litigation before you would even have found it. [00:16:28] Speaker 04: No, you would have had to actually look at the very beginning of the litigation because the litigation was filed in September of 2012. [00:16:33] Speaker 04: Because the product was shut down by January of 2013, after that it doesn't matter who knew what because the product was shut down before the patent ever even issued. [00:16:43] Speaker 04: And so the balance of the second litigation was during a time period in which there still can be no provisional rights because the product was unchallengedly not usable past January, I think it's 10th or 16th of 2013. [00:16:57] Speaker 04: And the second lawsuit was filed in September of 2012. [00:17:00] Speaker 04: And so a jury here would have to conclude that on the mere fact of the filing of the second litigation, that means that within three months, someone had to [00:17:11] Speaker 04: look up and then find and then locate and know of a published patent application that hadn't issued as a patent yet. [00:17:18] Speaker 04: And that is not an available reasonable inference. [00:17:20] Speaker 04: Over the entire course of the case, let's say that second case got to claim construction, which it never even did because there was this motion to dismiss for failure to prosecute, then maybe at some point someone will have looked up prosecution history and made an argument from that, which potentially in some case could be [00:17:38] Speaker 04: in some evidence that perhaps combined with others could lead to an inference that you actually knew about the panoply of patents and patent applications that they have. [00:17:47] Speaker 04: But again, that never happened in case two, and certainly didn't happen in the first three months. [00:17:50] Speaker 03: Let's say, hypothetically, the publication was not in 2011. [00:17:53] Speaker 03: It was in 2009. [00:17:56] Speaker 03: And so it was around the same time as these emails. [00:18:01] Speaker 03: It was prior to the first suit and the like. [00:18:04] Speaker 03: If that's the case, if that's a factual case, [00:18:07] Speaker 03: facts most favorably to your friend, wouldn't that create a tribal issue of fact there on actual knowledge? [00:18:15] Speaker 04: Answering frankly, the answer is still no on this evidence just shifting the time period. [00:18:22] Speaker 04: Because when you look, it is a total of eight emails from 2007 that then go silent as of February of 2009. [00:18:30] Speaker 03: But if one of those emails says, after this is published, [00:18:36] Speaker 03: go look and see what Rosebud has pending or has out there, then doesn't that create a tribal issue of fact? [00:18:43] Speaker 04: So that didn't happen in this case. [00:18:47] Speaker 04: There's no reference to other patents ever. [00:18:49] Speaker 04: If there is an email internal to Adobe that says, we just got notice of this patent by Rosebud, we should go ahead and take a look at other things, I think that that is circumstantial evidence [00:19:02] Speaker 04: That would be a far closer question on a tribal issue of fact. [00:19:05] Speaker 04: I'd have to think about it a lot, but I do think that there is things that are circumstantial evidence from which inferences can be wrong. [00:19:12] Speaker 03: That might be closer to SYNCOR. [00:19:14] Speaker 04: I think it is closer to SYNCOR. [00:19:15] Speaker 04: And in SYNCOR, the other issue there is that as it was found, they marked everything. [00:19:20] Speaker 04: They marked it all in their products and their data sheets. [00:19:22] Speaker 04: And the defendants looked at the plaintiff's products and the plaintiff's data sheets. [00:19:27] Speaker 04: And so they're marked there. [00:19:30] Speaker 04: And the defendants are looking at the data sheets. [00:19:32] Speaker 04: I don't think that's a particular leap. [00:19:35] Speaker 04: Here, there is nothing like that. [00:19:36] Speaker 04: First of all, this was only a patent application. [00:19:39] Speaker 04: And no one marks those, although there's some reference in the reply to them now. [00:19:43] Speaker 01: Wait. [00:19:43] Speaker 01: I don't know that you have the facts of SYNCOR, right? [00:19:45] Speaker 01: And maybe I misunderstood you. [00:19:47] Speaker 01: But in SYNCOR, it says, defendants possess data sheets or products marked with SYNCOR's earlier patents, including the 417, to which this claims priority. [00:19:56] Speaker 04: And I probably shouldn't have done this, given your earlier admonition. [00:20:00] Speaker 04: In the lower court's opinion, it says that there was testimony that the plaintiff marked its patents upon issuance on its data sheets and on its products, and that defendants had access to the plaintiff's data sheets and products. [00:20:16] Speaker 04: So I'm sorry, that is from the lower court opinion, not from the Federal Circuit's review of what was in the lower court's opinion. [00:20:29] Speaker 04: So you have a set of emails here from 2007 to 2009. [00:20:32] Speaker 04: And it's not just that there's only those emails. [00:20:37] Speaker 04: It's that the emails go silent by February of 2009. [00:20:40] Speaker 04: And not another peep has ever heard about Rosebud, separate. [00:20:43] Speaker 04: And apart from that, there are two lawsuits. [00:20:45] Speaker 04: But there was a lawsuit in May of 2010 that was voluntarily dismissed in November of 2011, which means by the time the patent publication was published, [00:20:56] Speaker 04: by Rosebud in December of 2011. [00:20:58] Speaker 04: That's about a year after the case, almost three years after anyone's ever mentioned anything about Rosebud. [00:21:05] Speaker 04: And so at that point, there just is no available inference to be made. [00:21:08] Speaker 01: Do you also think that maybe there's a difference between if you're making drawing inferences between published patents and published applications? [00:21:16] Speaker 01: because SYNCOR didn't involve an application, right? [00:21:19] Speaker 01: And I do think that for better or for worse... Certainly people monitor patents more than they monitor applications because claim scope can change considerably through the application process. [00:21:29] Speaker 04: I agree, and I don't mean to bring the practical too much into this, but I think 154D is somewhat exceptional, somewhat unusual, and I believe that most people who are looking at potential infringement issues look to publish patents, not [00:21:43] Speaker 04: patent applications because I'm not certain that this is an issue that comes up particularly that often and so I do think there's a big difference. [00:21:49] Speaker 04: People mark their products with their patents, generally speaking, and that's what people look at to determine whether or not to avoid infringement for willfulness, for purposes of the issue of indirect infringement and other sorts of issues. [00:22:02] Speaker 04: It matters [00:22:03] Speaker 04: that it is a patent, not a patent application. [00:22:05] Speaker 01: Do you want to briefly move on and tell us about your statutory interpretation argument? [00:22:09] Speaker 04: I do in the sense that these sorts of discussions about circumstantial evidence and inferences that can be drawn from them can get, I don't believe in this case, but could get somewhat tangled in some cases. [00:22:21] Speaker 04: And when you look at the language of 154D, the words used are actual notice. [00:22:27] Speaker 04: Now, to me, actual notice is a different word than [00:22:32] Speaker 04: notice, and it's a different word than actual knowledge. [00:22:36] Speaker 04: And you have to decide that actual notice means actual knowledge in order to find what the district court did to say that it doesn't require an affirmative act. [00:22:44] Speaker 01: The statutes and the case law on the word... Yeah, but the statute doesn't use the word knowledge anywhere, right? [00:22:48] Speaker 01: Correct. [00:22:49] Speaker 01: Which is not... Because that would be a much stronger case for you. [00:22:52] Speaker 01: If the statute used knowledge, then it would be a stronger case for you that when they say actual notice as opposed to actual knowledge, they mean something different than actual knowledge. [00:23:00] Speaker 04: So the statute doesn't use the word knowledge anywhere as a distinction with actual notice. [00:23:06] Speaker 04: I think that's correct. [00:23:07] Speaker 04: But the statute also doesn't say that there has to be actual knowledge. [00:23:11] Speaker 04: It says there has to be actual notice. [00:23:13] Speaker 04: And notice is a different word than knowledge and has with it inherently a meaning of an action being given. [00:23:19] Speaker 00: But it doesn't say who the action is by, right? [00:23:22] Speaker 04: Well, it doesn't. [00:23:23] Speaker 04: And so I guess the best that one can get. [00:23:25] Speaker 04: So here's the thing. [00:23:26] Speaker 04: On actual notice, [00:23:28] Speaker 04: I believe there are different statutes that have been interpreted in different ways. [00:23:32] Speaker 04: And so the best you can come to, like the copyright statute has the term actual notice. [00:23:36] Speaker 04: It has been held to require an affirmative act. [00:23:38] Speaker 04: There's this plant protection. [00:23:40] Speaker 03: But in that case, I don't know that statute. [00:23:42] Speaker 03: But in that case, does it use the words or refer to the copyright holder? [00:23:49] Speaker 03: Or does it refer to the accused infringer? [00:23:51] Speaker 03: Because the problem in 154 is it's not phrased in terms of, [00:23:57] Speaker 03: the patentee, it's phrased in terms of the any person, as opposed to the marking statute, which you refer to, which is phrased in terms of the patentee having an obligation. [00:24:08] Speaker 04: So I would disagree with that in part, in that the marking statute does talk about what the patentee has to do with respect to marking, but by the time you get to the notice provisions, it's all in the passive voice. [00:24:21] Speaker 03: Well, let's assume, I don't agree with that interpretation at all, but I think there's a distinction, but it's the copyright one that you're saying [00:24:27] Speaker 03: is an example. [00:24:28] Speaker 03: Does it phrase in terms of what the copyright holder has to say? [00:24:32] Speaker 04: So it says, what it says, and I can't quote it because I didn't write it down, and I apologize, but it is in 17 USC 109. [00:24:38] Speaker 04: It says, upon actual notice or something like that. [00:24:42] Speaker 04: So I don't think it expressly says, but when you follow the chain of the statute, it requires an affirmative act. [00:24:48] Speaker 04: Point being that I'm not certain that the term actual notice or even the use of the passive voice is something that is clear from the face of the statute. [00:24:57] Speaker 04: as a matter of statutory construction. [00:25:00] Speaker 04: And so then the next best place that one could look is the legislative history. [00:25:05] Speaker 01: No, the best place you look is what is the definition of actual notice. [00:25:08] Speaker 01: I mean, we do this all day long, right? [00:25:10] Speaker 01: Interpret statutes. [00:25:11] Speaker 01: And so all of the definitions include knowledge, every one of them, including the ones you quoted to us that you then left out the very next sentence of which that says knowledge, like the Black's Law Dictionary, for example, which says knowledge satisfies the actual notice, actual knowledge. [00:25:27] Speaker 01: You left that sentence out of your definition, and it's the very next sentence in the definition. [00:25:32] Speaker 04: So I apologize for that. [00:25:33] Speaker 04: I don't specifically recall that. [00:25:35] Speaker 04: I do know that blacks, at least at the beginning, talks about active. [00:25:39] Speaker 01: My clerk just said American jurisprudence, not Black's Law Dictionary. [00:25:43] Speaker 04: Yeah, that's right. [00:25:44] Speaker 04: I don't recall leaving that out, but I do know that the two definitions are slightly different. [00:25:48] Speaker 04: Black's Law Dictionary requires an act to be done on the person. [00:25:52] Speaker 04: I think the AMJA one is a little different. [00:25:53] Speaker 01: But how does your definition make any sense? [00:25:55] Speaker 01: Suppose that every person in the company has the patent sitting on their desk, and in fact, they've marked it to high heaven, right? [00:26:02] Speaker 01: You know, all these things. [00:26:03] Speaker 01: And they're exchanging emails about how are we going to get around this patent. [00:26:07] Speaker 01: But it wasn't given to them by the patentee. [00:26:12] Speaker 01: You're going to say they don't have actual notice of the patent? [00:26:15] Speaker 04: Absolutely, in the sense that that's exactly how 287 works. [00:26:20] Speaker 03: But we're not talking about 287, which is phrased in terms of what the patentee has to do. [00:26:24] Speaker 03: We're talking about 154, which is phrased in terms of a person having actual notice. [00:26:32] Speaker 04: I hear what you have said. [00:26:35] Speaker 04: My belief is that 287 uses the passive voice and says, proof that the infringer was notified of the infringement. [00:26:39] Speaker 00: So the statute here says, had actual notice of the published patent application. [00:26:43] Speaker 04: Yes. [00:26:44] Speaker 00: But that's all it says. [00:26:45] Speaker 00: That's correct. [00:26:45] Speaker 00: It doesn't say who has to provide the notice. [00:26:47] Speaker 00: I agree with you. [00:26:49] Speaker 00: Most of the time it would be the patent owner who would provide that notice. [00:26:52] Speaker 00: But it's not limited. [00:26:54] Speaker 00: It doesn't say who has to provide the notice. [00:26:56] Speaker 00: So I don't see how we can read that in. [00:26:57] Speaker 04: I understand. [00:26:59] Speaker 04: And my time is up. [00:27:02] Speaker 04: I think the panel. [00:27:05] Speaker 03: OK. [00:27:05] Speaker 03: OK. [00:27:06] Speaker 04: I don't want to. [00:27:06] Speaker 01: He wants to sit down and not answer. [00:27:08] Speaker 01: No, no. [00:27:10] Speaker 01: I'm sorry. [00:27:10] Speaker 04: I do want to answer your question. [00:27:12] Speaker 04: I don't know. [00:27:12] Speaker 04: I don't want to impose upon the course of time. [00:27:14] Speaker 01: You have a response. [00:27:14] Speaker 04: I totally apologize. [00:27:15] Speaker 04: Yes. [00:27:16] Speaker 04: I agree that it is written in the passive voice. [00:27:19] Speaker 04: But it was quite clear what the intention was. [00:27:22] Speaker 04: And this was passed at a time where how 287 was being read. [00:27:25] Speaker 04: And that's what the commentators were saying at the time. [00:27:27] Speaker 04: I don't think any of that's binding. [00:27:28] Speaker 04: But I do think the legislative history for something that by the mere use of the passive voice makes it at best ambiguous is a place to go. [00:27:36] Speaker 03: How does the passive voice make it ambiguous if the sentence says a person who has actual knowledge is subject to intervening rights? [00:27:46] Speaker 03: I mean, that's very clear, isn't it? [00:27:48] Speaker 03: Yes. [00:27:49] Speaker 03: Well, isn't that what this says? [00:27:50] Speaker 03: It doesn't, because the actual notice is a different word than actual notice. [00:27:53] Speaker 03: Well, no. [00:27:54] Speaker 03: Sorry, I misspoke. [00:27:55] Speaker 03: A person who has actual notice. [00:27:57] Speaker 03: You're saying notice implies that it's being given from somebody. [00:28:02] Speaker 03: OK. [00:28:03] Speaker 03: That's fine. [00:28:04] Speaker 01: Wait. [00:28:04] Speaker 01: No, you don't get to go yet. [00:28:05] Speaker 01: So the Copyright Act apparently, you told us, uses the word actual notice and defines it as notice from the copyright owner. [00:28:14] Speaker 01: But the Copyright Act actually expressly says that. [00:28:17] Speaker 01: It says. [00:28:17] Speaker 01: It does. [00:28:18] Speaker 01: But you didn't tell Judge Hughes that. [00:28:20] Speaker 01: When he was asking you about it, he expressly says the notice has to come from the owner of the copyright. [00:28:25] Speaker 04: Yeah, I could remember the actual language. [00:28:27] Speaker 04: I agree. [00:28:28] Speaker 04: But the term actual notice there. [00:28:31] Speaker 04: I mean, that cuts against your argument. [00:28:32] Speaker 03: I mean, if Congress knows how to use it. [00:28:35] Speaker 03: I was not arguing that copyright was an evidence. [00:28:37] Speaker 03: It's OK. [00:28:37] Speaker 03: We don't need to keep you up here. [00:28:38] Speaker 03: You have a pretty good argument on the facts without your legal argument. [00:28:42] Speaker 01: OK, Judge Chen. [00:28:46] Speaker 01: Please, you have your rebuttal time. [00:28:48] Speaker 01: Please proceed. [00:28:51] Speaker 02: Thank you, Your Honor. [00:28:51] Speaker 02: I took a look at the Adobe internal emails during counsel's argument. [00:28:56] Speaker 02: It looks like the latest one was in 2009, so we're talking about two years from the last email that we have until the published application. [00:29:04] Speaker 02: But again, in SYNCOR, the defendant similarly made an argument that evidence before the issuance of a patent can't satisfy the sufficient evidence standard. [00:29:15] Speaker 02: court found that it did. [00:29:16] Speaker 02: I think with respect to the second case, counsel mentioned that somebody would have to look up related patents at the very beginning of the second lawsuit. [00:29:28] Speaker 02: And I think in our brief recited to a practice guide that said, in general, at the very beginning of a case, you should start to look at related patents. [00:29:35] Speaker 00: When you're looking at actual notice versus constructive notice, how much weight should we give that somebody should have looked up the related patents? [00:29:45] Speaker 02: Right. [00:29:45] Speaker 02: It's a bit confusing because I think there is quite a bit of overlap between constructive notice and what could be considered as circumstantial evidence of actual notice. [00:29:54] Speaker 02: I think it depends on the facts. [00:29:55] Speaker 02: But here, I think given the history of the parties, the court should give greater weight to it. [00:29:59] Speaker 02: I mean, these parties have known each other since 2002. [00:30:03] Speaker 02: There have been two prior lawsuits filed. [00:30:05] Speaker 02: And essentially, what they're saying is that, well, 2014, that's the first time we learned of Rosebud's patents. [00:30:10] Speaker 02: But they've known about it for over a decade. [00:30:13] Speaker 02: I guess the final point that I have is I think counsel tried to distinguish the SYNCOR case based on marking. [00:30:20] Speaker 02: But my understanding of the facts in SYNCOR is that the fact that products were marked was just to show knowledge of predecessor patents. [00:30:27] Speaker 02: And here I don't think there's a dispute that Adobe knew of the predecessor patents. [00:30:32] Speaker 02: So unless the court has any other questions for me, that's all I have. [00:30:35] Speaker 01: Thank you, Mr. Chen. [00:30:36] Speaker 01: Thank both counsel for their argument. [00:30:37] Speaker 01: The case is taken under submission. [00:30:40] Speaker 01: Our final