[00:00:00] Speaker 02: Thank you for coming. [00:00:03] Speaker 02: And we're ready for the argument in 141475, Speed Track versus Office Speed. [00:00:10] Speaker 02: Mr. Geiser? [00:00:11] Speaker 00: Thank you, Your Honor, and may it please the court. [00:00:14] Speaker 00: Speed Track's lawsuit presents new issues and new claims that have never been resolved in any court. [00:00:20] Speaker 00: Under traditional preclusion analysis, this lawsuit would proceed. [00:00:24] Speaker 00: But under the district court's analysis, [00:00:26] Speaker 00: The speed-track seat is barred under a patent-specific departure from the uniform rules applied in every other circuit. [00:00:32] Speaker 02: Well, what do you mean by new claims? [00:00:34] Speaker 02: Because it's the doctrine of equivalence as opposed to literal infringement? [00:00:37] Speaker 02: Is that what makes it new and different? [00:00:39] Speaker 00: That's what makes it a new issue. [00:00:40] Speaker 00: What makes it a new claim is these are actually seats against different defendants. [00:00:44] Speaker 00: They involve different transactional facts, and these defendants are not in privity with the defendants from the Walmart action. [00:00:50] Speaker 02: Is there anything in the record that would indicate that the product itself is different? [00:00:54] Speaker 00: Well, the software itself is a component of the method that is accused in this case. [00:00:59] Speaker 00: The software is combined with other components, including hardware, software, and data from each of these defendants. [00:01:06] Speaker 00: We're not accusing the software. [00:01:08] Speaker 00: The software in a box does nothing. [00:01:10] Speaker 00: We're accusing the practice of the method, which each defendant does on its own. [00:01:14] Speaker 00: These are independent companies. [00:01:15] Speaker 00: This is uncoordinated activity. [00:01:17] Speaker 00: And it's not the case that just because a defendant happens to use the same software in a way that might look an awful lot like a different defendant's independent use of the same software, that these all devise a single claim. [00:01:30] Speaker 00: That would not form what this court has looked at as a convenient trial unit. [00:01:33] Speaker 01: But didn't the lower court give you an opportunity to establish that any of those differences are actually relevant to the infringement argument? [00:01:42] Speaker 00: Relevant for the infringement for literal infringement. [00:01:45] Speaker 00: But doctrine of equivalence is a completely separate issue. [00:01:48] Speaker 00: And that is one of the components for claim preclusion purposes that the court looks at. [00:01:52] Speaker 00: But it's not the only one. [00:01:53] Speaker 00: Even an acumen that looked at essentially the same standard said it was only one of the factors that the court considers. [00:02:00] Speaker 00: What's really critical here is this is not the same claim. [00:02:03] Speaker 00: This again, these are different defendants. [00:02:05] Speaker 00: It involves different time periods. [00:02:06] Speaker 02: These defendants are doing their own activity in their own way. [00:02:13] Speaker 00: Yes, Your Honor. [00:02:15] Speaker 00: Same cause of action, which I'm sorry, creates confusion in this area. [00:02:19] Speaker 01: Unfortunately, the... Nowhere before the district court or before this court, have you explained what is meaningful for purposes of infringement in terms of any differences in how the software is employed? [00:02:31] Speaker 01: I mean, you can't practice the method without the software, right? [00:02:35] Speaker 00: That's true. [00:02:36] Speaker 00: It's one component of the method. [00:02:38] Speaker 00: But again, that would be relevant if we were asserting a literal infringement claim. [00:02:42] Speaker 00: or proceeding under the doctrine of equivalence, which presents an entirely different issue. [00:02:46] Speaker 01: OK. [00:02:47] Speaker 01: How? [00:02:47] Speaker 01: You're still not answering the question. [00:02:49] Speaker 01: So what is it about the doctrine of equivalence? [00:02:51] Speaker 01: I mean, you're saying that under the doctrine of equivalence, you could use numbers and still in French, right? [00:02:58] Speaker 01: That's correct. [00:03:00] Speaker 01: All right. [00:03:00] Speaker 01: But what else about the other ways that they use the software is meaningful to your claim? [00:03:07] Speaker 00: Their other use of the software is essentially the same as the use of the software in Walmart. [00:03:13] Speaker 00: We can see that. [00:03:14] Speaker 00: But that is not dispositive for claim preclusion, and it's certainly not dispositive for issue preclusion. [00:03:20] Speaker 00: So separating the two issues. [00:03:21] Speaker 00: You first have the claims at issue in Walmart. [00:03:23] Speaker 00: The claims are actually adjudicated. [00:03:26] Speaker 00: They're barred and gone forever under any theory of infringement, literal or equivalent. [00:03:31] Speaker 00: Those claims were adjudicated. [00:03:32] Speaker 00: But the claims at issue in Walmart [00:03:34] Speaker 00: only involved Walmart performing the method. [00:03:37] Speaker 00: Now they were using the same software, but that's only one of the factors that you look at. [00:03:42] Speaker 01: Okay, now I think I understand. [00:03:44] Speaker 01: So your answer is the only reason you say that transactional facts are different is that it's a different person doing it? [00:03:51] Speaker 00: It's a different person at a different time. [00:03:53] Speaker 00: They're using their own hardware, software, and data. [00:03:56] Speaker 01: If you run through... What is relevant about the use of their own hardware, software, and data? [00:04:01] Speaker 01: Do you never answer that question? [00:04:03] Speaker 00: Your Honor, there's nothing relevant that's materially distinguishable with the way that each separate defendant in their own factories, in their own independent way, their own uncoordinated conduct, it might look exactly the same. [00:04:15] Speaker 00: Our contention is that is not dispositive for claim preclusion purposes. [00:04:19] Speaker 00: It's still a different claim because that is only one of the essential factors to look at what Acumen said in determining whether this is the same claim for claim for exclusion purposes. [00:04:29] Speaker 02: And your argument is under the Kessler doctrine that we should just ignore it because it's old? [00:04:35] Speaker 00: Absolutely not, Your Honor. [00:04:36] Speaker 00: Our argument is that brain life misread the Kessler doctrine. [00:04:40] Speaker 00: And we respectfully submit that one way to resolve this case would be to reconsider brain life. [00:04:44] Speaker 02: But we don't need to do that to prevail here. [00:04:48] Speaker 02: we don't need brain life, do we, to respond and dispose of this case? [00:04:53] Speaker 02: This case is closer to what is an MGA in 1987 Federal Circuit opinion. [00:04:58] Speaker 00: I don't believe so. [00:05:00] Speaker 02: Brain life presents sort of a different issue than is presented in this case. [00:05:05] Speaker 02: Even in the absence of brain life, wouldn't this court referring to Kessler and then as relied on by the exit MGA with our opinion in 1987, would we reach [00:05:18] Speaker 02: same results of an affirmance, whether or not brain life existed at all. [00:05:21] Speaker 00: Absolutely not, Your Honor. [00:05:23] Speaker 00: MGA correctly characterized Kessler as an early form of defensive collateral stop, or defensive issue preclusion. [00:05:29] Speaker 00: In our case, the district court correctly rejected issue preclusion. [00:05:32] Speaker 00: They did that because the issue of literal infringement is different than the issue of equivalence infringement. [00:05:38] Speaker 00: And even if you disagree with us on some components of claim preclusion, that only knocks out part of the claims at issue, in this case not the entire case. [00:05:46] Speaker 00: The only way that the district court's judgment can be supported in full is by its reading and what we submit is a misreading of brain life and its misreading of the Kessler Doctrine. [00:05:56] Speaker 01: Well, so what, are you saying, I mean your argument against the Kessler Doctrine is that it's inconsistent with other preclusion analyses. [00:06:07] Speaker 01: But I mean, that's what we recognize in brain life. [00:06:09] Speaker 01: But it's out there. [00:06:10] Speaker 01: I mean, we're not creating a patent-specific rule. [00:06:13] Speaker 01: The Supreme Court created it. [00:06:14] Speaker 00: Your Honor, we emphatically disagree with that. [00:06:16] Speaker 00: I think a proper reading of Kessler shows that this is effectively an anti-suit injunction case. [00:06:21] Speaker 00: It had nothing to do with patents being different. [00:06:23] Speaker 00: It didn't even focus on the word patent in the last two pages of a four-page opinion. [00:06:28] Speaker 00: It looked at the specific harm to the manufacturer in that case to justify this extraordinary remedy of an anti-suit injunction. [00:06:36] Speaker 00: It had to do with a concrete showing that the manufacturer had no adequate remedy to prevent re-litigating these cases, because at the time, the defendant customers couldn't invoke issue preclusion, because we lived in the old world. [00:06:49] Speaker 00: Now, Kessler is obsolete today, precisely because in today's world, customers, such as the defendants in this case, can invoke issue preclusion to bar any legitimate issue that actually was decided and resolved in the earlier case. [00:07:03] Speaker 00: It just so happens that in this case, we have a new issue. [00:07:06] Speaker 00: We have an issue that wasn't resolved in the earlier case, just as the district court held below. [00:07:11] Speaker 01: But are we allowed to overrule the Supreme Court precedent? [00:07:14] Speaker 00: Your Honor, it's not overruling Supreme Court precedent. [00:07:16] Speaker 00: It's actually just cabining into its footprint. [00:07:18] Speaker 00: It's recognizing, as MGA recognized, that Kessler effectively was mimicking defensive collateral stoppals. [00:07:25] Speaker 00: You don't have to overrule Kessler at all. [00:07:28] Speaker 00: You just need to cabinet to what it actually resolved. [00:07:31] Speaker 00: And it did not look to providing extensive preclusion, preclusion beyond issue preclusion, beyond claim preclusion. [00:07:38] Speaker 00: Kessler was rooted in protecting the judgment. [00:07:41] Speaker 00: And it said this repeatedly. [00:07:42] Speaker 00: It says you need to preserve the rights and the judgment. [00:07:45] Speaker 00: You need to prevent the manufacturer's judgment from being destroyed. [00:07:48] Speaker 00: The judgment captures the claims adjudicated in the case and the issues adjudicated in the case. [00:07:54] Speaker 00: The judgment doesn't capture issues that have never been tried in any court and claims that have never been tried in any court. [00:08:00] Speaker 00: That's where we submit the brain life and, respectfully, we think misread Kessler. [00:08:04] Speaker 00: Kessler was not a patent-specific case. [00:08:06] Speaker 00: It had no hook in Title 35. [00:08:08] Speaker 00: It didn't mention patents specifically. [00:08:10] Speaker 00: It violates what today the Supreme Court has called the uniform rules of preclusion. [00:08:14] Speaker 00: Now the rules of preclusion are not uniform. [00:08:17] Speaker 00: It can apply this patent-specific exception just for patent cases. [00:08:21] Speaker 00: Kessler properly understood is an anti-conjunction case. [00:08:24] Speaker 00: It's saying that at the time, because defendants couldn't adequately invoke issue preclusion, which is different today, that the manufacturer needed this really extraordinary remedy. [00:08:35] Speaker 00: That's just not true in today's world. [00:08:36] Speaker 00: And so we're not overruling Kessler. [00:08:38] Speaker 00: We're just saying, read it to say what it did. [00:08:40] Speaker 00: Read it to avoid a conflict with today's preclusion cases in the Supreme Court. [00:08:45] Speaker 00: Because this isn't just filling a gap. [00:08:48] Speaker 00: When the Supreme Court draws a line and says that these cases are protected, they're not precluded, and these cases are precluded, if you move that line, you're not filling a gap. [00:08:56] Speaker 00: You're precluding cases. [00:08:57] Speaker 00: that the Supreme Court says, following fundamental due process interests, should proceed. [00:09:02] Speaker 00: This is actually recalibrating this very fine, careful balance that's supposed to be uniform among all the courts with all cases and every circuit. [00:09:12] Speaker 00: And we submit that right now that isn't true for brain life. [00:09:15] Speaker 00: But this court doesn't need to reconsider brain life to resolve this case. [00:09:19] Speaker 00: Because there are ways to distinguish customer suits, which is what this is. [00:09:23] Speaker 00: This is a very different question than what was decided in brain life. [00:09:26] Speaker 00: This is not a seat against a manufacturer, it's a seat against a customer. [00:09:29] Speaker 02: That's the question that was explicitly... But here, did they try to... Yeah, so what happens is if we were to decide that, then they go back and the judge allows them to intervene and then we're back where we started. [00:09:39] Speaker 00: Well, Your Honor, we don't think the judge should permit them to intervene. [00:09:42] Speaker 00: We think that this would cause delay and prejudice to speed track in exactly the same way. [00:09:46] Speaker 00: that the district court found a lame president. [00:09:48] Speaker 02: Yeah, but let's assume you're wrong about that. [00:09:50] Speaker 02: Let's assume the district court is not persuaded, and she allows them to intervene. [00:09:54] Speaker 02: And we've got a very presumably deferentially likely agree with her. [00:09:59] Speaker 02: So we're back where we started, right? [00:10:01] Speaker 00: It is true that if they do intervene, we'll be back where we started. [00:10:04] Speaker 00: And then either brain life will be front and center, either the full court reconsidered or not. [00:10:10] Speaker 00: But we have a separate reason for distinguishing this case, and that's under the Supreme Court's rubber tire exception. [00:10:15] Speaker 00: rubber tire with a strict limit imposed on Kessler. [00:10:18] Speaker 00: And it said that once a product is being protected, that limited trade right, in a first action, that trade right dissipates, it vanishes once that product is combined with any other components. [00:10:30] Speaker 01: But in that case, it was combined with other components to make the patented product. [00:10:37] Speaker 01: Here, again, you still haven't told us what any, they didn't just say you can combine it with, you know, [00:10:44] Speaker 01: with sugar or shoe horn, they said you have to combine it with other components to actually make the patented product. [00:10:51] Speaker 01: So here you're combining it with other components but you haven't told us how those components relate to practicing the patented method. [00:10:59] Speaker 00: They relate exactly to practicing the patented method. [00:11:02] Speaker 00: What we were saying earlier about essentially the same is just is there a way that they're practicing the method that looks different than the way Walmart practiced the method? [00:11:09] Speaker 00: You can't practice the method just by obtaining the software. [00:11:12] Speaker 00: Each defendant obtains the software. [00:11:14] Speaker 00: They have to install it on their own hardware and software. [00:11:16] Speaker 00: They create category description tables. [00:11:18] Speaker 00: They create file information directories. [00:11:20] Speaker 00: They create search filters. [00:11:21] Speaker 00: None of this exists in the product out of the box. [00:11:24] Speaker 00: Each defendant has to do that on their own. [00:11:26] Speaker 00: That's exactly the same as taking the rubber and rubber tire, combining it with the wires, and making the shape of the wheel. [00:11:32] Speaker 00: It doesn't matter in rubber tire. [00:11:34] Speaker 00: And they said this explicitly. [00:11:35] Speaker 00: The Supreme Court did. [00:11:36] Speaker 00: Even if the tire looks exactly the same in the two suits, the trade right that attaches either to the tire itself or to the rubber as the component does not carry over to protect other defendants, even if they're producing exactly the same tire. [00:11:51] Speaker 00: The Supreme Court said this is right, this trade right, which is limited, and it springs from the decree. [00:11:56] Speaker 02: So again, it's limited. [00:11:57] Speaker 02: I recall the Supreme Court case. [00:11:58] Speaker 02: They just sold the rubber. [00:11:59] Speaker 02: What was patented was the tire. [00:12:01] Speaker 02: And all Goodyear did was sell rubber. [00:12:04] Speaker 02: I'm struggling as Judge O'Malley is with figuring out, it seems to me this case is quite different. [00:12:12] Speaker 00: Your Honor, respectfully, it's not. [00:12:13] Speaker 00: The rubber is exactly the same as the software. [00:12:17] Speaker 00: You take the software to sitting in a box. [00:12:18] Speaker 00: We know from the Supreme Court's Microsoft case, software in a box can't perform a method. [00:12:22] Speaker 00: You have to run it. [00:12:24] Speaker 00: The defendants in this case, each four of them, there's evidence of this in the record, they can't just take the software and look at it. [00:12:29] Speaker 00: They perform the method by activating it on their own hardware using their own software and their own data. [00:12:35] Speaker 00: They have to perform the method. [00:12:37] Speaker 00: This is a method that targets the way that they provide search functionality to their customers. [00:12:42] Speaker 00: They can't perform that functionality without implementing the software exactly the same way that a manufacturer with rubber can't create the tire without combining it with other features. [00:12:52] Speaker 00: It has lost its limited trade right because it's no longer a standalone product. [00:12:57] Speaker 00: And that's really the key. [00:12:58] Speaker 00: And I think that lines us exactly with rubber tire. [00:13:02] Speaker 00: If the court doesn't have further questions, I've seen them eating tire bubbles. [00:13:05] Speaker 02: Why don't we save the rebuttal time? [00:13:07] Speaker 00: Thank you. [00:13:10] Speaker 02: Mr. Bauer. [00:13:11] Speaker 02: Thank you, Your Honor. [00:13:15] Speaker 03: Your Honor, in the Wal-Mart case, this court affirmed that the Indeca software and its customer's use of that software don't infringe. [00:13:25] Speaker 03: You listen to their argument. [00:13:26] Speaker 01: Well, that particular customer's use of the software. [00:13:28] Speaker 03: That particular customer, Indeca's software, you read their brief and they make it sound like these are completely independent of the opponent's briefs. [00:13:37] Speaker 03: You would read it to believe that all the customers are independent. [00:13:41] Speaker 03: He even just got up here and said, they're acting, there's nothing concerted, they're acting totally independently and all of that. [00:13:47] Speaker 03: What INDECA got in the Walmart case was a declaration that its software doesn't infringe. [00:13:55] Speaker 03: And it got a declaration that Walmart's use of that software doesn't infringe. [00:14:00] Speaker 03: And what INDECA sought was a declaration that its customer's use doesn't infringe, literally or under the doctrine of equivalent. [00:14:08] Speaker 03: Those issues were squarely in the Walmart case. [00:14:11] Speaker 01: Well, DOE wasn't squarely in the Walmart case. [00:14:13] Speaker 03: Well, infringement was squarely in the Walmart case. [00:14:15] Speaker 03: But so was Doctor of Equivalency Honor. [00:14:18] Speaker 03: First, Ndeka's declaratory judgment claim asked expressly for a finding of no infringement. [00:14:24] Speaker 03: So let me just, when you say not in the case. [00:14:27] Speaker 01: Well, it was in the case for purposes of race judicata, but it was not actually litigated. [00:14:32] Speaker 03: So if I litigated, you mean, and I don't mean to sound like a lawyer. [00:14:36] Speaker 03: If litigated means the court didn't rule on the substance of the Doctrine of Equivalence. [00:14:41] Speaker 03: The Doctrine of Equivalence was litigated because it was put in in the Declaratory Judgment Action. [00:14:46] Speaker 03: California rules required it to be in the case. [00:14:49] Speaker 03: The California local rules required their infringement contentions to identify the Doctrine of Equivalence. [00:14:55] Speaker 03: So in that sense, it was litigated because it was there. [00:14:58] Speaker 03: And, Your Honor, we need to step back. [00:15:00] Speaker 03: Doctrine of Equivalence isn't a separate theory or an issue. [00:15:04] Speaker 03: It's what the evidence is. [00:15:06] Speaker 03: The issue is infringement. [00:15:07] Speaker 03: You need to go through each claim, and you get to say, I have evidence that the claim literally covers, each element literally covers, or I have evidence that there's, on that element, it's equivalent. [00:15:21] Speaker 03: It's a question of what's the evidence you're putting in. [00:15:24] Speaker 03: It's not a separate theory. [00:15:26] Speaker 03: And they did put in on some elements that they were going to introduce evidence under the doctrine of equivalence. [00:15:32] Speaker 03: If you look at their infringement contentions, [00:15:36] Speaker 03: In the record, Your Honor, that we submitted to the court, the infringement contentions were A968 to 974. [00:15:44] Speaker 03: Unfortunately, in preparing, we didn't put into your appendix the entire infringement contentions. [00:15:50] Speaker 03: They are in the record, so if you wanted to see them. [00:15:53] Speaker 03: But other elements, they did point to the doctrine of equivalence. [00:15:58] Speaker 03: They knew that they had an obligation to put the doctrine of equivalence into this case. [00:16:04] Speaker 03: But what's important under this is for an A968, the infringement contentions, first they point to all versions of the platform. [00:16:16] Speaker 03: This is on page A968. [00:16:18] Speaker 03: They think all versions of the Indeka platform operate in fundamentally the same way. [00:16:23] Speaker 03: So the fact that there's newer versions, irrelevant. [00:16:27] Speaker 03: But more importantly, in terms of the Indeka software, on page A969, [00:16:33] Speaker 03: Here's their infringement contention. [00:16:35] Speaker 03: It's the forged portion of the Endeca software that's accused. [00:16:40] Speaker 03: And then they say Endeca's so-called dimension values are the category descriptions. [00:16:46] Speaker 03: It's what comes out of the software. [00:16:48] Speaker 03: And so your honor keeps asking, what's the difference? [00:16:50] Speaker 03: And I think he just continued, as the software operates, it is identical. [00:16:54] Speaker 03: The district court found essentially the same. [00:16:56] Speaker 03: They don't take issue with that. [00:16:58] Speaker 01: But if it's a method claim that's at issue, the software is only one component, arguably, of that. [00:17:03] Speaker 03: But the elements at issue here are these identical issues. [00:17:07] Speaker 03: What's in 969, the INDECA dimension values, what comes out of the INDECA software, [00:17:14] Speaker 03: where it talks about the forged portion of the Indeka software. [00:17:20] Speaker 03: And then it says Walmart produces it in its computer. [00:17:22] Speaker 03: John, is there a way to think about this? [00:17:23] Speaker 02: Are you reading from the second under A? [00:17:26] Speaker 03: That's right, John. [00:17:29] Speaker 03: So in that first paragraph, it talks about the forged portion of the Indeka software. [00:17:33] Speaker 03: At the end of that first paragraph, it says, Indeka's so-called dimension values are the 360 patents category descriptions. [00:17:44] Speaker 03: And that's what we're talking about, the category descriptions. [00:17:47] Speaker 01: Well, how do you get around the rubber tire? [00:17:53] Speaker 03: Rubber tire isn't this case. [00:17:55] Speaker 03: So first of all, rubber tire isn't an exception to Kessler. [00:17:58] Speaker 03: In rubber tire, they were trying to expand Kessler. [00:18:01] Speaker 01: So rubber tire... I have a hard time with that concept, given that rubber tire expressly says that Kessler is limited to its narrow circumstances. [00:18:13] Speaker 03: It doesn't, I don't think, say it, if you read it, and I know you have, what it says is, at Kessler, I'm not going to, it's semantics, I guess, is it expanding or is it narrowing? [00:18:25] Speaker 03: Kessler, what rubber tire says is, Kessler is limited, is about selling the product. [00:18:34] Speaker 03: And in rubber tire, they were going to the components of rubber. [00:18:38] Speaker 03: And so if you read Kessler, [00:18:40] Speaker 03: Here's exactly the language in Kessler. [00:18:46] Speaker 03: It says, let me just get it, because I had it just out here. [00:19:08] Speaker 03: I'm just not going to... The question becomes... The question in Kessler was about the product itself and the ability to sell the product, the patented product. [00:19:29] Speaker 03: I'm just not getting that quote right in front of me right now, Your Honor. [00:19:33] Speaker 03: But here's what Kessler said. [00:19:35] Speaker 03: It's the customer's right [00:19:37] Speaker 03: to use this technology. [00:19:40] Speaker 03: Our product doesn't infringe. [00:19:42] Speaker 03: That's a fact. [00:19:43] Speaker 03: The Indeka product doesn't infringe. [00:19:45] Speaker 03: A customer's use of that Indeka technology doesn't infringe. [00:19:50] Speaker 03: And you can't simply say, now we're going to go to another customer that's using it exactly the same way. [00:19:57] Speaker 03: This isn't components. [00:19:59] Speaker 03: So your honor, what they're saying is, it's a little bit, think about it, it's like a word processing program, where the patent is on the word processing program. [00:20:06] Speaker 03: And their argument is, you buy a Microsoft word processing program, and the patent covers word processing. [00:20:13] Speaker 03: And you put it on an IBM PC or an Apple PC. [00:20:17] Speaker 03: It's still the software that's running. [00:20:19] Speaker 03: And what they're saying is, if you type something different, the data that comes out is different. [00:20:25] Speaker 03: Because you type a book and you type a case decision. [00:20:28] Speaker 03: So they're saying it has to do with the machine that it's running on and what comes out. [00:20:33] Speaker 03: Well, that's not what the patent is directed to. [00:20:35] Speaker 03: The patent was directed to what the Indeka software does. [00:20:38] Speaker 03: And that was all of the proof they offered in the Walmart case. [00:20:42] Speaker 03: Exactly the proof they offered in the Walmart case. [00:20:44] Speaker 03: And that's exactly what's at issue here. [00:20:47] Speaker 03: Rubber tire went to rubber. [00:20:50] Speaker 03: And if you look at the rubber tire case, [00:20:52] Speaker 03: They say it's the product that is immune from infringement. [00:20:57] Speaker 03: And by the way, that gets to why it doesn't matter if it's the customers that do this. [00:21:01] Speaker 03: Because both in rubber tire and this court, and this is why Tesla is still vibrant today, they're saying it's the thing that doesn't infringe. [00:21:11] Speaker 03: That's why you need a patent-specific or maybe it's an IP-specific [00:21:17] Speaker 03: It's the thing. [00:21:19] Speaker 03: So rubber tire says it's the product that doesn't infringe. [00:21:23] Speaker 03: It doesn't matter who the parties are. [00:21:24] Speaker 01: If it's a limited trade right though, I mean even if the customers are ultimately protected, shouldn't Oracle have had to intervene in the lower court? [00:21:36] Speaker 03: So Yonah Oracle or Indeka intervened in the first case. [00:21:39] Speaker 01: Right. [00:21:40] Speaker 01: Why didn't they intervene in the second case? [00:21:41] Speaker 03: It never got that far. [00:21:42] Speaker 03: There was never even an answer in that case. [00:21:44] Speaker 03: That case was stayed. [00:21:45] Speaker 03: So first, everybody knew Oracle was in that case. [00:21:48] Speaker 03: I'm representing Oracle in those cases. [00:21:52] Speaker 03: They knew. [00:21:52] Speaker 03: Everybody knew. [00:21:53] Speaker 03: The judge knew. [00:21:55] Speaker 03: Everybody knew. [00:21:57] Speaker 01: When you say they knew it was in the case, it didn't actually intervene. [00:22:01] Speaker 03: It wasn't actually in the case. [00:22:02] Speaker 03: It didn't intervene. [00:22:03] Speaker 03: It never got to the stage of an answer. [00:22:06] Speaker 03: The parties moved to stay it. [00:22:08] Speaker 03: Everybody told the court, we're staying this because it's the same technology. [00:22:13] Speaker 03: The first case is going to affect this case. [00:22:16] Speaker 03: Everybody, that's what the court was told. [00:22:18] Speaker 03: Oracle hadn't intervened there. [00:22:20] Speaker 03: When they raped, the customers moved to dismiss and it was allowed. [00:22:26] Speaker 03: The case law supports the customers moving to dismiss. [00:22:29] Speaker 03: They have one case from 1926, a Sixth Circuit case, that was a two to one decision. [00:22:35] Speaker 03: And the dissent, if you read the dissent, you can almost plagiarize it for here. [00:22:39] Speaker 03: But that was the one case they have where they said no. [00:22:42] Speaker 03: Every court since then has said it's a right to the product that the customers could raise. [00:22:48] Speaker 03: But, Your Honor, you don't need to remand to get Oracle. [00:22:51] Speaker 03: You had asked about if we remanded, would the court just let us intervene again, let Oracle intervene again, which he did in the first case. [00:22:58] Speaker 03: You don't need to do that here. [00:22:59] Speaker 03: Oracle sought to intervene in this case after they raised the issue here on appeal. [00:23:04] Speaker 01: and they opposed it and the court kept oracle out. [00:23:21] Speaker 03: Well, I don't know that if Oracle has to be the one seeking the claim, I'm not sure that it needed to intervene first or here. [00:23:28] Speaker 03: I think it's the idea that it's the Oracle that's doing it. [00:23:31] Speaker 03: But Your Honor, when Oracle moved to intervene, here's what they said in their opposition to that. [00:23:37] Speaker 03: Oracle's interests are adequately represented by the existing parties. [00:23:42] Speaker 03: Now, you can't say in opposition to Oracle intervening [00:23:46] Speaker 03: that their interests are adequately represented by the existing parties and then come into this court and say you have to send it back because the existing parties can't raise the issue. [00:23:59] Speaker 03: They can't argue both. [00:24:01] Speaker 03: This is their language. [00:24:03] Speaker 03: Oracle's interests are adequately represented. [00:24:05] Speaker 03: They just don't get to now come in and say Oracle should be in the case. [00:24:08] Speaker 03: Your honor, if you think Oracle should be in the case, you can vacate the order that this court entered, have Oracle in the case, and not have to remand it and ask Judge Hamilton [00:24:19] Speaker 03: for Lee to put Oracle in to file the exact same motion that Judge Hamilton is, there would be no difference in her decision. [00:24:29] Speaker 03: So there's just really, I just don't think you need to remand to ask her, should you allow Oracle in to enter the exact same decision you just found? [00:24:38] Speaker 03: But if you do think Oracle has to be a party, you can allow Oracle in because they've moved to intervene. [00:24:43] Speaker 03: The fact is the case law doesn't require it. [00:24:45] Speaker 03: That's the only difference they can find. [00:24:47] Speaker 01: Your civil procedure is a little bit off, I'm afraid. [00:24:50] Speaker 01: If someone is entitled to a judgment based on a legal theory, they have to obtain that judgment at the lower court level. [00:25:00] Speaker 01: They can't seek to obtain that judgment. [00:25:03] Speaker 01: on appeal, if we find that it only belongs to Oracle. [00:25:08] Speaker 01: The only way we could do that would be to remand for purposes of allowing intervention and then the court re-entering her judgment, if that's what we thought. [00:25:15] Speaker 03: Well, Your Honor, I think if you read the case law, there's no requirement that there's just no reason to have Oracle in here doing this. [00:25:26] Speaker 01: Do you think that there's any difference in the way that the method is practiced from customer to customer? [00:25:34] Speaker 03: There's none. [00:25:35] Speaker 03: None. [00:25:35] Speaker 03: And Judge Hamilton found it's essentially the same, and they just told the court that as to the patent issues, there's no difference. [00:25:42] Speaker 03: As to the patent issues, no difference at all. [00:25:45] Speaker 03: There's none in the record. [00:25:47] Speaker 03: She gave them the opportunity to take discovery. [00:25:49] Speaker 03: They didn't offer any difference that is material. [00:25:53] Speaker 03: And they just told your honors in response to your question that there's no material difference here. [00:25:57] Speaker 01: Do you agree that we should simply find Kessler to be obsolete? [00:26:02] Speaker 03: Kessler's not obsolete at all. [00:26:04] Speaker 03: Kessler fills gaps. [00:26:06] Speaker 03: And what's the gap here? [00:26:08] Speaker 03: If you think that there needs to be, if you believe that the doctrine of equivalence evidenced [00:26:17] Speaker 03: that they didn't put in would create a new issue of infringement, then you have to have Kessler. [00:26:23] Speaker 03: Because what they're saying is any party could litigate literal infringement only, say nothing about doctrine of equivalence, even though California rules require it. [00:26:32] Speaker 03: Their position is the rules require it, they need to say nothing about it, don't mention it, litigate literal infringement, lose. [00:26:40] Speaker 03: And now they can file a new complaint under the doctrine of equivalence. [00:26:44] Speaker 03: In fact, their brief says they could sue Walmart tomorrow and allege doctrine of equivalence for all their subsequent use. [00:26:52] Speaker 03: That's in their brief, footnote 15 I believe. [00:26:56] Speaker 03: The issue is infringement. [00:26:58] Speaker 03: Section 271 is infringement. [00:27:01] Speaker 03: 282 says the defense is non-infringement. [00:27:05] Speaker 03: And the proof is infringement. [00:27:08] Speaker 03: Doctrine of Equivalence is the evidence, the type of evidence you introduce on a specific element. [00:27:15] Speaker 03: The Honor was looking for, I mean this is a patent court so you understand this, but best analogy is reading a contract. [00:27:23] Speaker 03: You offer a contract, you go to court, district court, say I want to interpret the contract, it's Mike, I'm the plaintiff. [00:27:30] Speaker 03: Judge says, you want to put in parole evidence or you want me to read it literally? [00:27:35] Speaker 03: And the plaintiff says, you can read this contract literally, Your Honor, there's no ambiguity. [00:27:39] Speaker 03: Court says, OK, that's your case. [00:27:41] Speaker 03: Turns to the defendant. [00:27:42] Speaker 03: The defendant puts a witness on, offers parole evidence. [00:27:46] Speaker 03: Judge issues a decision saying, based on the evidence, I interpret the contract X. Plaintiff loses. [00:27:52] Speaker 03: Plainest view is they can help file the lawsuit again and say, now we want to offer parole evidence and make another effort to interpret it. [00:28:01] Speaker 03: It's the same thing here. [00:28:02] Speaker 03: They had an obligation to say they wanted to introduce evidence under the doctrine of equivalence. [00:28:08] Speaker 03: Evidence ought to prove infringement. [00:28:12] Speaker 03: Obligation by our DJ action counterclaims obligation under the California law. [00:28:18] Speaker 03: They didn't do it. [00:28:19] Speaker 03: The judge excluded it. [00:28:21] Speaker 03: It was litigated not on the substance but on the procedure. [00:28:25] Speaker 03: This court affirmed, said they can't do it. [00:28:28] Speaker 03: It's no different than any of your other cases here like that where people, brain life, where they dropped them method claims and went to seek [00:28:39] Speaker 03: to file a new lawsuit later. [00:28:43] Speaker 03: Here they dropped the doctrine of equivalence evidence by not offering it, made the decision not to offer it. [00:29:09] Speaker 00: Thank you, Your Honor. [00:29:11] Speaker 00: First, Judge Amali is exactly right. [00:29:13] Speaker 00: You can't defend the judgment saying that a manufacturer could have obtained a very different form of relief below by intervening on appeal. [00:29:20] Speaker 00: And my friend, respectfully, I think you misspoke. [00:29:23] Speaker 00: This was decided on summary judgment motions. [00:29:25] Speaker 00: The motions dismissed were denied. [00:29:26] Speaker 00: This case proceeded for a year below. [00:29:29] Speaker 00: Oracle had every opportunity to intervene if that's what they wanted to do. [00:29:32] Speaker 00: They chose not to do that. [00:29:34] Speaker 00: For doctrine of equivalence, it does not matter what contentions were raised. [00:29:39] Speaker 00: in Walmart. [00:29:40] Speaker 00: It matters what was actually litigated and decided. [00:29:42] Speaker 00: And I think the record is emphatically clear. [00:29:44] Speaker 00: There's no ambiguity that doctrine of equivalence was not litigated or resolved. [00:29:48] Speaker 00: The same district court below also tried the Walmart case. [00:29:51] Speaker 00: This is the very basis for her decision rejecting issue preclusion. [00:29:55] Speaker 00: So I don't think there's any ambiguity there. [00:29:57] Speaker 00: As for whether issue preclusion should apply here, [00:30:01] Speaker 00: I think that my friend's argument can't account for two separate lines of authority in this court. [00:30:05] Speaker 00: The Bayer decision has already said that for preclusion purposes, infringement is not a single umbrella issue. [00:30:11] Speaker 00: I don't know why that would be different when you have literal and equivalence infringement when you have ANDA and a commercial product. [00:30:17] Speaker 00: It's inconsistent with this court's line of authority in the mandate rule context, where it says the scope of the appellate judgment is coterminous with the scope of the issues raised on appeal. [00:30:26] Speaker 00: infringement wasn't treated as a single issue, which is precisely why an appeal about literal infringement didn't resolve questions about equivalence infringement. [00:30:35] Speaker 00: And if you run through the factors in the Restatement Seconds of Judgment, this is Section 27 of the Restatements, this is in our reply brief, you'll see that my friend who hasn't even tried to explain how his theory can account for any of those factors, each points decidedly against him. [00:30:49] Speaker 00: As for Robert Tyer, [00:30:50] Speaker 00: There is no transferable right based on the fact that the software that they're using happens to be the same when they give it to someone else. [00:30:58] Speaker 00: The Q's method is taking the software and implementing it. [00:31:01] Speaker 00: You have to do more than just have the software. [00:31:04] Speaker 00: That's exactly the same as rubber tire, which said it didn't matter if the trade right was in the rubber or the trade right was in the tire. [00:31:10] Speaker 00: It didn't matter if each tire in each suit looked exactly the same. [00:31:13] Speaker 00: So even if it's not essentially the same, exactly the same. [00:31:17] Speaker 00: If you have a different party constructing the same tire, even if it was deemed protected in an earlier suit, it did not matter for purposes of Kessler. [00:31:25] Speaker 00: And it was a strict limitation on Kessler. [00:31:27] Speaker 00: That's what other courts have construed it. [00:31:30] Speaker 00: Rubber tire also was limited to the rights and the decree. [00:31:33] Speaker 00: It said, and this is a quote from rubber tire, it sprang from the decree. [00:31:36] Speaker 00: That's how they describe Kessler. [00:31:38] Speaker 00: An issue that is not resolved in that earlier decree is not an issue bound by that decree. [00:31:43] Speaker 00: And the same with the claim not resolved in that decree. [00:31:46] Speaker 00: It's not bound by the decree. [00:31:48] Speaker 00: This is why my friend's suggestion to read Kessler's authorizing preclusion in this context is not filling a gap. [00:31:56] Speaker 00: It's actually creating a direct split with this court and every other circuit, including the Third Circuit and the Fourth Circuit, at the time where Kessler actually had relevance. [00:32:04] Speaker 00: And one final point with the court's permission. [00:32:09] Speaker 00: Kessler was rooted explicitly in the manufacturer's lack of an alternative legal remedy. [00:32:15] Speaker 00: The reason they lacked an alternative legal remedy is because there was no such thing at the time of non-mutual collateral estoppel. [00:32:21] Speaker 00: That precondition is gone under today's doctrine. [00:32:24] Speaker 00: Without that precondition, Kessler would come out the opposite way today. [00:32:28] Speaker 00: The proper way to read it is his defensive collateral estoppel, which is what this court said in the MGA. [00:32:32] Speaker 01: Thank you. [00:32:33] Speaker 01: We thank the council when the case is submitted. [00:32:35] Speaker 03: That concludes our committee. [00:32:48] Speaker 03: All rise. [00:32:48] Speaker 03: Y'all report, Mr. Chairman. [00:32:51] Speaker 03: The day is today.