[00:00:00] Speaker 00:
Good afternoon, your honors.

[00:00:12] Speaker 03:
May it please the court.

[00:00:13] Speaker 03:
Alan Yochelson on behalf of Vinyl Visions.

[00:00:17] Speaker 03:
I'm a student of sports history, so I'm not unmindful that here at Boston College,

[00:00:25] Speaker 03:
most famous moment might have been Doug Flutie's Hail Mary pass against the University of Miami, and I'm grateful that the court put this case on calendar to allow vinyl visions their own version of Hail Mary here at Oral Argument.

[00:00:45] Speaker 03:
That's an interesting opening argument.

[00:00:47] Speaker 04:
Well, we were... I think the problem is you might be going up against deflation gate.

[00:00:53] Speaker 04:
I mean a little more current and possibly on point.

[00:00:58] Speaker 04:
As much as the last case was sort of a lesson for the students about contract law, this is one about civil procedure.

[00:01:04] Speaker 03:
No question, Your Honor.

[00:01:07] Speaker 03:
My prepared statements began with that this case presents several issues that the law students will find important.

[00:01:18] Speaker 03:
First and foremost to get of them is that careless lawyering in the court below will get you an express ticket to the Court of Appeal.

[00:01:28] Speaker 03:
And I make no bones about it.

[00:01:32] Speaker 03:
We wouldn't be here but for the carelessness.

[00:01:36] Speaker 02:
But if you don't have competent evidence, if you don't have cognizable evidence, if you don't have a proper foundation

[00:01:42] Speaker 02:
for the evidence upon which you wish to rely, how can we do anything about it?

[00:01:48] Speaker 03:
Well, and I think that I have given the court two ways to answer that question.

[00:01:54] Speaker 03:
The first way is to agree with vinyl visions, agree with appellant that under Rule 56C that the court could clearly have cured or asked

[00:02:10] Speaker 02:
appellant to cure the defect because but they didn't but you what you have to argue is that they had to the district court had to permit it well

[00:02:22] Speaker 03:
No, I mean, I could argue... Of course they could have.

[00:02:26] Speaker 00:
Nobody's disputing that they had the authority to do that if they thought it was appropriate, but they did not.

[00:02:31] Speaker 03:
Well, and I think that that raises the second lesson that law students need to learn, and that is sometimes the policy underlying the law is just as important as the letter of the law.

[00:02:44] Speaker 02:
And what is the policy... Policy underlying 56F, the sub-provision that requires

[00:02:52] Speaker 02:
that evidence in support or opposing a motion for summary judgment be cognizable under the federal rules of evidence.

[00:03:00] Speaker 03:
I mean, the purpose is obviously that counsel comply with the rules of evidence in submitting.

[00:03:08] Speaker 03:
But more importantly, I think, is that adherence to the rules of evidence is really designed to make sure that when you are nearing the end of these pre-trial litigation that you don't come up and manufacture some evidence to try and slip in at the end

[00:03:27] Speaker 02:
It's also designed to require a foundation.

[00:03:33] Speaker 03:
No question.

[00:03:35] Speaker 02:
It's designed to demonstrate that the witness is percipient, that they have the ability to perceive, that they have the ability to recollect.

[00:03:46] Speaker 02:
And those are all things that, if you're doing it in a summary judgment form, you have to lay out in an affidavit.

[00:03:52] Speaker 03:
It's not there.

[00:03:53] Speaker 03:
I agree.

[00:03:55] Speaker 03:
Well, the information is there.

[00:03:57] Speaker 03:
What's not there in the... It's the confidence.

[00:04:00] Speaker 03:
Well, what's not there in the Dr. Merzer report are the magic words.

[00:04:07] Speaker 03:
This is of my own personal knowledge, and I wouldn't be confident to testify at trial.

[00:04:12] Speaker 04:
What's not there is him swearing under oath.

[00:04:16] Speaker 04:
That's what's not there.

[00:04:17] Speaker 04:
You introduced an expert report that is unsigned, not sworn to.

[00:04:23] Speaker 04:
I mean, look, you seem like an imminently reasonable fellow.

[00:04:27] Speaker 04:
I'm certain you did not make it up.

[00:04:30] Speaker 04:
However, in the absence of sworn testimony by this expert,

[00:04:35] Speaker 04:
You know, maybe that was a draft report that you wrote that he never actually even reviewed.

[00:04:40] Speaker 04:
I mean, I don't actually think that, so we're clear.

[00:04:43] Speaker 03:
I take no responsibility for being involved at the trial level, Your Honor.

[00:04:46] Speaker 04:
Well, even if you were, I'm not suggesting that that's what happened.

[00:04:50] Speaker 04:
But that's the reason that he has to swear under penalty of perjury and sign on the dotted line.

[00:04:55] Speaker 04:
And so here all we have is what purports to be a report by him, an unsigned report.

[00:05:02] Speaker 03:
And it's not counsel's statement.

[00:05:06] Speaker 03:
I understand both of the points, but again, are the rules that tight?

[00:05:14] Speaker 03:
I don't believe the rules are that... Technicality.

[00:05:17] Speaker 00:
I mean, are you putting this in the technicality box?

[00:05:20] Speaker 03:
I'm putting it in the technicality in the sense that if the court had discretion, as it does, and Selutec says...

[00:05:28] Speaker 03:
that at summary judgment, we're looking at the face of the record.

[00:05:34] Speaker 03:
And not everything that you're going to raise in summary judgment needs to be admissible at trial.

[00:05:41] Speaker 00:
And especially here with Dr. Wait, do you think the district court, I thought the argument may have been that the district court should at least allow you a do-over.

[00:05:48] Speaker 00:
Oh, absolutely.

[00:05:50] Speaker 00:
I mean, so now you seem to be arguing something different.

[00:05:52] Speaker 00:
You're saying, are you saying that the district court should have accepted the evidence, even if it wasn't sworn?

[00:05:58] Speaker 00:
No.

[00:05:58] Speaker 00:
Or simply that once she realized this was problematic for you, she should have given you the opportunity to go back and fix it?

[00:06:05] Speaker 03:
Yes.

[00:06:05] Speaker 03:
The latter, Your Honor.

[00:06:09] Speaker 03:
I understand that that's an abuse.

[00:06:11] Speaker 00:
And typically, what happened to me in this case, for me, beyond the fact why you didn't do it right in the first instance, was why you didn't ask for reconsideration.

[00:06:19] Speaker 00:
You know, typically, if you're going to ask for pity by the district court judge, you file a motion for reconsideration.

[00:06:25] Speaker 03:
And all I can say to that, Your Honor, is that the court did not afford oral argument on the summary judgment motion.

[00:06:34] Speaker 03:
So there was no understanding.

[00:06:37] Speaker 03:
And yes, they could have come back with a motion for rehearing.

[00:06:40] Speaker 03:
And if I was controlling the litigation, I would.

[00:06:44] Speaker 03:
But let's move on.

[00:06:45] Speaker 03:
Obviously, it's a tough sell.

[00:06:47] Speaker 03:
I understand that standard of review is the third lesson law students need to understand when they're approaching the court of appeal.

[00:06:54] Speaker 03:
And yes, any evidentiary issue is going to be decided by this court on an abuse of discretion standard.

[00:07:02] Speaker 03:
But again, my argument is

[00:07:04] Speaker 03:
when you match that up with the policy of trial on the merits and you look at the context of... So you're making a rule one argument.

[00:07:16] Speaker 02:
Just speedy determination.

[00:07:21] Speaker 03:
If you would have it that way, your honor, yes.

[00:07:25] Speaker 03:
But let's move beyond that for a second and let's move to the claim construction issue relative to the evidence that was properly in front of the court but was really not considered.

[00:07:38] Speaker 03:
And to me what's noteworthy about my colleague's brief is not what he says but what he doesn't address in his brief.

[00:07:48] Speaker 03:
which is much like the prior case that we just heard this afternoon, the admission from Mr. Ohm himself that the product was functioning and designed to function in the very same way as vinyl vision's function, which is that the workman can tear the

[00:08:13] Speaker 03:
the vinyl trim, the window trim, without the need for specialized tools which sped up the whole process.

[00:08:21] Speaker 03:
That evidence was in the record and was before the court and although Judge Hatter mentions it in his decision,

[00:08:31] Speaker 03:
He really gives it no weight at all and doesn't even mention the evidence that was presented in the claims chart that had to do with the website that E.E.

[00:08:43] Speaker 03:
Pauley maintained, which also presented evidence.

[00:08:48] Speaker 00:
of how it were to construe the claims, it would still reach the same conclusion.

[00:08:53] Speaker 03:
It did say that, but Your Honor, your precedence, say when you're talking about weighing of evidence, which is what this was, in claims construction, how does the court avoid, after there was a presentation and a Markman hearing, how does the court avoid construing the claim?

[00:09:10] Speaker 00:
Well, the district court said also that you never asked, you never argued.

[00:09:17] Speaker 00:
the lack of claim construction was prejudiced to your ability to seek summary judgment.

[00:09:22] Speaker 03:
That's not accurate, Your Honor, and we pointed out in the brief, I think I have the citation here in my notes to the joint appendix.

[00:09:44] Speaker 03:
I won't waste the court's time right now.

[00:09:47] Speaker 03:
I'm trying to ferret that out, but clearly there was that was mentioned in the opposition that Vinal Vision's file to the summary judgment was that they were really being hamstrung by the failure of the court to issue its claim construction ruling.

[00:10:06] Speaker 04:
Apart from the court's failure, your argument about the court's failure to issue claim construction before it ruled on this case, you mentioned the defendant's website

[00:10:16] Speaker 04:
And I was trying to rack my brain.

[00:10:19] Speaker 04:
I thought I remembered the district court says that those websites were also unauthenticated because they were simply included in an attorney declaration.

[00:10:28] Speaker 04:
So while you've got an unsigned report from the expert, you have unauthenticated websites.

[00:10:35] Speaker 04:
I mean, so it seems to me the only evidence that actually met the rules of evidence was the own deposition.

[00:10:42] Speaker 04:
And what the district court found there was that the deposition

[00:10:46] Speaker 04:
of Mr. Ohm only admits or contains discussion of the purpose for adding grooves and didn't establish a prima facie case or go through and admit to all the elements.

[00:10:58] Speaker 04:
So I guess I'm a little confused.

[00:11:02] Speaker 04:
What would you have me take away from Ohm?

[00:11:04] Speaker 04:
Putting aside your claim construction argument, are you telling me the district court was wrong to conclude that the screenshots of the website were unauthenticated?

[00:11:12] Speaker 04:
Are you saying he was wrong or she was wrong in her description of the Ohm testimony?

[00:11:18] Speaker 03:
I can't say the court is wrong that it was unauthenticated, but there was nothing that was contained in the claim chart that came from the website factually that was ever contested either in the court below or before this court.

[00:11:39] Speaker 03:
EE Paul is not contested that the facts that were set forth in that claim chart are anything but true.

[00:11:46] Speaker 03:
And you know, it's really striking to me that in a lot of language, dealing with summary judgment

[00:11:55] Speaker 03:
the court high court has said this is kind of a truth-seeking function we don't grant summary judgment unless in truth we feel there are no triable issues of fact but it's also an adversarial function certainly it is your honor and if this court writes an opinion that puts full measure of the burden on

[00:12:21] Speaker 03:
Appellant's trial counsel, then we'll live with that because that may at least give rise to a different remedy for my client, to be honest and candid with the court.

[00:12:32] Speaker 03:
But absent that, I think if we're talking about truth and this court does grant the or does review de novo summary judgment decisions, I don't think this court can look at the four corners of the joint appendix, including Dr. Merce's report and all of the other evidence, no matter how shabbily it was attempted to be presented and come away feeling that the truth of the matter is that there are no triable issues of fact.

[00:13:01] Speaker 03:
And that's what I think the takeaway is in this Court.

[00:13:06] Speaker 00:
You're into your rebuttal time.

[00:13:07] Speaker 00:
Why don't we save the remainder?

[00:13:08] Speaker 00:
Thank you, Your Honor.

[00:13:18] Speaker 01:
Good afternoon.

[00:13:20] Speaker 01:
May it please the Court.

[00:13:21] Speaker 01:
Andrew Dahlman on behalf of the appellees, Benjamin and Craig Omi.

[00:13:28] Speaker 01:
I think

[00:13:29] Speaker 01:
From my perspective, I think less is more at this point.

[00:13:33] Speaker 01:
I would like to point out that certainly it is Appellee's view that they were not obligated to disprove any elements of

[00:13:44] Speaker 01:
the purported evidence.

[00:13:46] Speaker 00:
Do you think there was no obligation on you to contest the authenticity of any of the matters we've been talking about this morning?

[00:13:55] Speaker 01:
Absolutely we were obligated and we did contest the authenticity of virtually everything that was put before the court.

[00:14:02] Speaker 01:
The only thing that we didn't contest on from an authenticity standpoint was the portions of Craig Omi's testimony that was submitted.

[00:14:13] Speaker 01:
But on that point

[00:14:14] Speaker 01:
It's important to note, and Judge Hatter eludes to it in his opinion, but what is very important to note is only a portion.

[00:14:26] Speaker 01:
So there are multiple citations to Craig Omi's deposition testimony.

[00:14:31] Speaker 01:
Very little of that testimony was actually of record.

[00:14:33] Speaker 01:
Very little of it was attached to Mr. Augustine's declaration.

[00:14:37] Speaker 01:
So of the total pages that are cited,

[00:14:39] Speaker 01:
in the Hankin claim chart only six pages were actually attached to Augustine's declaration.

[00:14:45] Speaker 01:
So there's multiple issues going on here.

[00:14:47] Speaker 01:
There's depot testimony that wasn't submitted and then everything else that was excluded.

[00:14:53] Speaker 04:
What was wrong with the screenshots of the website?

[00:14:57] Speaker 04:
They produced a claim chart and included screenshots of the website matching up and showing how

[00:15:03] Speaker 04:
each of the elements were allegedly demonstrable on the website of the defendants.

[00:15:10] Speaker 04:
So what was wrong with that?

[00:15:12] Speaker 04:
Is it not your website?

[00:15:14] Speaker 04:
Is it your client's website, obviously?

[00:15:17] Speaker 04:
What's the argument there?

[00:15:19] Speaker 01:
The argument is simply from an evidentiary standpoint, it's a, if you're looking at a foundational argument,

[00:15:27] Speaker 01:
Mr. Hankin simply didn't authenticate.

[00:15:29] Speaker 04:
So it wasn't... Mr. Hankin, the attorney.

[00:15:31] Speaker 01:
He's the attorney.

[00:15:32] Speaker 01:
Correct.

[00:15:33] Speaker 04:
So all he would have needed to do would have been to say, on February 12th, I went to the website of the defendants at www.whatever and I printed off these images and these are true and correct as of that date.

[00:15:51] Speaker 01:
Right.

[00:15:52] Speaker 04:
And that would have been sufficient?

[00:15:54] Speaker 04:
Because didn't he basically do that?

[00:15:56] Speaker 04:
I mean, he proffered a declaration under penalty of perjury, which he signed, and he attached these websites and he claimed these were the defendant's websites, right?

[00:16:06] Speaker 01:
That's correct.

[00:16:07] Speaker 01:
He did do that.

[00:16:09] Speaker 04:
So is the failure not saying which date he downloaded them?

[00:16:12] Speaker 01:
I apologize.

[00:16:15] Speaker 02:
He also didn't say the exact time, because a website can vary from moment to moment.

[00:16:19] Speaker 01:
Right, and so we really then

[00:16:21] Speaker 01:
I'm sorry, appellees at that point would be arguing, okay, so let's look at, you know, what are these pages and when were they taken and where did they come from?

[00:16:30] Speaker 01:
So again, that would be shifting the burden to the appellees at that point to try and dispute, you know, what is the foundational basis for this purported evidence?

[00:16:39] Speaker 01:
So could we have gone through and made those arguments and said, no, this isn't a true and correct copy of this page?

[00:16:45] Speaker 01:
Yes, perhaps we could have done that.

[00:16:47] Speaker 01:
But we chose to go the evidentiary route and say there was no foundation for any of this purported evidence.

[00:16:52] Speaker 04:
The only thing he lacked was putting, because I don't think you have to put the time in.

[00:16:56] Speaker 04:
I haven't seen regional circuit opinions that say you have to say what time it is.

[00:17:00] Speaker 04:
So the only thing he lacked in the declaration was putting what day he printed them off from the website.

[00:17:08] Speaker 01:
And that he downloaded them and that they were true and correct.

[00:17:11] Speaker 04:
Because overall we know who knows where he got them.

[00:17:13] Speaker 04:
He got them from someone else and he doesn't actually have first-hand knowledge that they came from.

[00:17:17] Speaker 04:
Is that the potential argument?

[00:17:19] Speaker 01:
Correct, right.

[00:17:20] Speaker 04:
And so I think... So he didn't testify that he downloaded them?

[00:17:25] Speaker 01:
Correct.

[00:17:25] Speaker 04:
Okay, he just attached them to the claim chart?

[00:17:28] Speaker 01:
That's correct.

[00:17:29] Speaker 04:
Because I don't remember actually seeing this in the appendix, so forgive me.

[00:17:34] Speaker 04:
I may be wrong about what's in the appendix, but I didn't remember it, what it said precisely.

[00:17:37] Speaker 01:
No, I think you're a correct judge more.

[00:17:40] Speaker 01:
And I guess even if the court were to consider

[00:17:44] Speaker 01:
sort of a do-over as to certain portions of the Hankin Declaration or the Augustine Declaration.

[00:17:49] Speaker 01:
It's so important to note that there are glaring deficiencies in the claim chart.

[00:17:53] Speaker 01:
There are multiple elements that have no citation to any evidence.

[00:17:58] Speaker 01:
So even if some of the evidence were somehow to come in, there would still be elements that

[00:18:04] Speaker 01:
there was absolutely no citation.

[00:18:06] Speaker 01:
It was purely, it was simply, exactly, Mr. Hankin saying, my client infringes.

[00:18:13] Speaker 01:
And so there, of course it's our view that none of the evidence should come in except for those six pages of Mr. Omi's testimony that were properly attached and authenticated, but even if some of the others.

[00:18:25] Speaker 04:
And you don't dispute that the district court could have allowed them to attempt to cure, right?

[00:18:30] Speaker 04:
The district court under Rule 56

[00:18:32] Speaker 04:
had the ability to allow them to cure when it became apparent through your motion that the evidence they presented wasn't in fact evidence that was able to be submitted to the court?

[00:18:46] Speaker 01:
You're absolutely correct.

[00:18:48] Speaker 01:
The court could have done that.

[00:18:49] Speaker 01:
It's purely discretionary and the the Ninth Circuit case, Carmen versus San Francisco Board of Education, makes very clear

[00:18:58] Speaker 01:
what a district court can and can't and should and shouldn't do and it's discretionary and of course it's abuse of discretion and the court is not obligated to pour through the record.

[00:19:07] Speaker 01:
It's not obligated to do the attorney's work for them.

[00:19:09] Speaker 01:
So yes, Judge Hatter could have done that.

[00:19:13] Speaker 01:
We're glad he didn't do that and certainly he was not obligated to do that.

[00:19:22] Speaker 01:
Thank you.

[00:19:32] Speaker 03:
Perhaps the truth being said today is that appellees are glad Judge Hatter didn't.

[00:19:38] Speaker 03:
take the opportunity to exercise his discretion in that manner because, again, I don't think there is any question but that had the Dr. Merza report had those magic words signed under penalty of perjury and competent to testify at trial, that there was more than sufficient evidence in that report to survive summary judgment.

[00:20:04] Speaker 03:
And when we talk about abuse of discretion,

[00:20:08] Speaker 03:
We have to talk about it in terms of some standard.

[00:20:13] Speaker 03:
And I understand we didn't ask the judge to do this.

[00:20:16] Speaker 03:
But when the judge has so much evidence, incompetent or not, in front of him, that suggests that we have a real controversy.

[00:20:26] Speaker 03:
If it's incompetent.

[00:20:27] Speaker 03:
Well, incompetent because of form, not because of substance.

[00:20:31] Speaker 03:
And that's really what this case is about, is form versus substance.

[00:20:36] Speaker 02:
So you're saying the rules regarding competence of testimony are simply form and not substance.

[00:20:47] Speaker 02:
And for example, if a witness says, well, yeah, I was dead drunk, but despite that, here's my testimony.

[00:20:59] Speaker 02:
That's just a question of foundation.

[00:21:02] Speaker 03:
goes to wait, Your Honor.

[00:21:03] Speaker 03:
If we're at trial, it goes to wait, not to admissibility.

[00:21:08] Speaker 04:
Well, this is a unique situation in our jurisprudence because we, the Federal Circuit, when sitting on a question like what you're raising, are meant to apply Ninth Circuit law, correct?

[00:21:20] Speaker 03:
On evidentiary matters, yes, Your Honor.

[00:21:23] Speaker 04:
And so what about the Ninth Circuit case of Orr versus Bank of America?

[00:21:28] Speaker 04:
I'll be honest, I was pretty surprised

[00:21:32] Speaker 04:
when the Ninth Circuit ruled in this case the way it did.

[00:21:36] Speaker 04:
Are you familiar with the case?

[00:21:38] Speaker 03:
I am not, Your Honor.

[00:21:38] Speaker 03:
I have to be honest with you.

[00:21:40] Speaker 04:
Well, the district court judge in a similar situation on summary judgment ruled against the party saying you didn't present any evidence.

[00:21:50] Speaker 04:
They had submitted a deposition transcript.

[00:21:53] Speaker 04:
They had forgotten to include the first page.

[00:21:56] Speaker 04:
The first page is the one that indicates the reporter, the date of the deposition.

[00:22:01] Speaker 04:
They had all the other pages, but they forgot to submit the first page.

[00:22:06] Speaker 04:
And nobody contested that that was the actual transcript, but the court ruled it was unauthenticated and so excluded it and said therefore you have no evidence on summary judgment and the Ninth Circuit said it wasn't an abuse of discretion to do that.

[00:22:21] Speaker 04:
So it doesn't seem like I get to choose to do what I want here.

[00:22:24] Speaker 04:
I have to put myself standing in the shoes of the Ninth Circuit and they're not too friendly about these things.

[00:22:30] Speaker 03:
Well, and without knowing all of the facts of the other case and what other evidence may or may not have been lacking in the ORA case, I would say that that is an unduly harsh result for a technical violation.

[00:22:48] Speaker 03:
And again, I predominantly do criminal appeals, and I'm always arguing technicalities, because that's what we live on.

[00:22:57] Speaker 04:
But this is a broader- You don't live on your client's innocence?

[00:23:00] Speaker 03:
Your Honor, I've only been that fortunate once in 30 years to have that argument.

[00:23:09] Speaker 02:
Technicality making you innocent.

[00:23:12] Speaker 03:
Well, yes, or technicality excluding the evidence that presumes you're still innocent.

[00:23:17] Speaker 03:
But regardless, I think in this broader context with the policy underlying trial on the merits, it's an unduly harsh result in this case to have somebody's well-thought and well-earned patent

[00:23:35] Speaker 03:
infringed upon and his livelihood severely limited and impacted because of the failings of counsel and the failings of form.

[00:23:49] Speaker 00:
Just curious, have your client asserted its patent against any other person?

[00:23:55] Speaker 03:
Not to my knowledge, Your Honor.

[00:23:58] Speaker 00:
Thank you.