[00:00:02] Speaker 04:
The next case for argument is 15-2083 IGT versus aristocrat technology.

[00:00:39] Speaker 04:
Okay.

[00:00:40] Speaker 04:
Mr. Martara?

[00:00:43] Speaker 03:
Yes, Your Honor.

[00:00:44] Speaker 03:
May it please the Court.

[00:00:46] Speaker 03:
Joe Kamenkao was paid millions of dollars for the work he did at IGT and the inventions he made there.

[00:00:52] Speaker 03:
He then decamped to our main competitor, Aristocrat, where he implemented those same inventions on Aristocrat's machines.

[00:00:58] Speaker 03:
A sign or a stopper is an equitable remedy that prevents Mr. Kamenkao and Aristocrat

[00:01:03] Speaker 03:
from denying liability on any theory that these patents are invalid.

[00:01:07] Speaker 04:
In order to grant a preliminary injunction, a district court has to determine that there's a reputable harm.

[00:01:12] Speaker 04:
There's a potential for reputable harm.

[00:01:13] Speaker 03:
Correct, Your Honor.

[00:01:14] Speaker 04:
In the absence of an IPR, even having been filed, how can a district court conclude that there's a potential for reputable harm?

[00:01:22] Speaker 03:
I think in multiple ways.

[00:01:23] Speaker 03:
The first of which is, of course, the statistics that we reference that the court can take judicial notice of, the rate at which the PTAB cancels.

[00:01:31] Speaker 04:
But let's look first at- Well, the PTAP doesn't have authority to cancel IPRs that haven't been filed, right?

[00:01:36] Speaker 04:
And that's the circumstance the district court was looking at in this case.

[00:01:40] Speaker 04:
So let's leave the statistics on cancellation out, because we're not even talking about an IPR that's been instituted or filed.

[00:01:48] Speaker 03:
At the time we moved, you're correct.

[00:01:49] Speaker 03:
The petitions had not been filed.

[00:01:50] Speaker 03:
They have now been filed.

[00:01:52] Speaker 04:
At the time we moved- OK, but we're reviewing a district court decision on a preliminary injunction that was based on the circumstances that were before her, right?

[00:02:00] Speaker 03:
That's correct, Your Honor.

[00:02:01] Speaker 03:
However, our plea for injunctive relief is not just for a ban on aristocrat filing petitions.

[00:02:07] Speaker 03:
And then once they're filed, we give up.

[00:02:09] Speaker 03:
Our plea for injunctive relief is a plea for them to be enjoined from prosecuting those petitions once filed.

[00:02:17] Speaker 03:
At the time that we moved for our preliminary injunction, yes, the petitions had not been filed.

[00:02:21] Speaker 03:
But aristocrat had said it was going to file them.

[00:02:24] Speaker 03:
And by that, in and of itself, said that they were going to represent to the PTAB

[00:02:29] Speaker 03:
that there was a reasonable likelihood the claims would be canceled.

[00:02:31] Speaker 03:
They've since done so in their petitions.

[00:02:33] Speaker 03:
We can take advantage of that statement by aristocrat to satisfy our burden of irreparable harm for preliminary injunction.

[00:02:41] Speaker 03:
What more need we to do than point to what our opponents say in order to take advantage of the equitable relief of an anti-suit injunction?

[00:02:48] Speaker 01:
But as the chief judge says, you've put several points here.

[00:02:52] Speaker 01:
The filing, the institution, and then the rejection of claims.

[00:02:57] Speaker 01:
None of them had occurred.

[00:02:59] Speaker 01:
As of the time, we must decide this case.

[00:03:03] Speaker 03:
That's true.

[00:03:04] Speaker 03:
But right now, the filings have occurred.

[00:03:06] Speaker 01:
And you don't lose the opportunity to raise this issue.

[00:03:10] Speaker 01:
It can be raised later, if there is institution.

[00:03:13] Speaker 01:
And it claims you have a chance to respond to that issue.

[00:03:17] Speaker 03:
That's correct, Judge Lurie, and we will.

[00:03:19] Speaker 03:
However, I'll point out a couple things.

[00:03:21] Speaker 03:
First, had we waited to move for a preliminary injunction until institution,

[00:03:26] Speaker 03:
My opponent would be here or would be in front of the district court arguing that our delay by itself required denial of our motion for preliminary injunction.

[00:03:35] Speaker 03:
When you're a trailblazer, as we concede we are, it's better to blaze as many trails as possible to see if any of them turn out to be wrong or a dead end.

[00:03:43] Speaker 01:
And that's what we're doing.

[00:03:44] Speaker 01:
Well, maybe as a matter of strategy, it was good that you raised the issue, but that doesn't control what we decide.

[00:03:49] Speaker 03:
No, it does not.

[00:03:50] Speaker 03:
But the district court also denied our plea for injunctive relief on A7

[00:03:54] Speaker 03:
because the district court said it could find no precedent granting this type of injunction.

[00:03:59] Speaker 03:
Not very surprising, given that IPR is relatively new in its ubiquity, even if it's re-examined in the past.

[00:04:06] Speaker 03:
But it's an abuse of discretion to deny a request for injunctive relief, because no one's ever gotten it before, unless 100 people have asked for it and not gotten it, in which case that's persuasive authority.

[00:04:18] Speaker 03:
Virtually no one has asked for this.

[00:04:19] Speaker 04:
Is it an abuse of discretion to deny a grant of a preliminary injunction where the IPR has not even been instituted yet?

[00:04:26] Speaker 03:
Yes, in this case, we're arguing it is because, I say for two reasons.

[00:04:32] Speaker 03:
Number one, as time goes on, given the limited amount of time for the PTAP to decide the IPR, the balance of equities moves in aristocrat's favor as time is limited to resolve a sign or a stop but before that proceeding in the PTAP concludes.

[00:04:46] Speaker 03:
This court may decide.

[00:04:48] Speaker 03:
as a matter of discretion for the district court or for itself, that 12 months is enough time to get a sign or a stopper resolved.

[00:04:55] Speaker 03:
But sitting ex ante, that's not at all clear.

[00:04:58] Speaker 03:
And if this court decides that a sign or a stopper needs more time to be resolved and aristocrat to have its rights of appeals, the right time to move is when we did.

[00:05:05] Speaker 04:
I can fully understand.

[00:05:07] Speaker 04:
I'm not clear on what you're thinking.

[00:05:10] Speaker 04:
they institute an IPR.

[00:05:12] Speaker 04:
And you're assuming that the board will try to resolve the issue of a sign or estoppel?

[00:05:17] Speaker 04:
Is that what you're talking about?

[00:05:18] Speaker 03:
No, not at all.

[00:05:18] Speaker 03:
Our preliminary injunction is premised on the board's refusal to consider the defense of a sign or estoppel in IPRs.

[00:05:26] Speaker 03:
My point is that if we move for a preliminary injunction in the middle of May when the first one of these may institute, that gives the district court approximately 12 months to resolve the preliminary injunction in our favor.

[00:05:37] Speaker 03:
We'll move for consolidation of trial on the merits.

[00:05:40] Speaker 03:
with the preliminary injunction hearing under Rule 65, 12 months to resolve that, and then come here on an expedited appeal for aristocrat to preserve its rights to appeal on that decision before the injunction could fully issue and be confirmed by this court.

[00:05:53] Speaker 03:
That's not that much time.

[00:05:55] Speaker 04:
I appreciate it.

[00:05:57] Speaker 04:
There's some confusion in terms of how this would all work out, even if the board decided to recognize a sign or a stop-off.

[00:06:05] Speaker 04:
Can I just ask you?

[00:06:06] Speaker 04:
We haven't had very many cases involving a sign or stuff.

[00:06:09] Speaker 04:
Well, I'm not sure why that is.

[00:06:11] Speaker 04:
It could be because this is a matter that can be taken of very easily contractually when somebody assigns their patent to someone, right?

[00:06:19] Speaker 04:
But be that as it may, it seems to me that I don't know how complicated the privity questions are in this particular case.

[00:06:27] Speaker 04:
I don't know how many claims are at issue and whether the assertion is that this inventor

[00:06:32] Speaker 04:
work was with respect to all of the infringing products or just some of the infringing products and some of the claims.

[00:06:38] Speaker 04:
Has that been sorted out yet?

[00:06:40] Speaker 03:
Not at all.

[00:06:41] Speaker 04:
The district court only... Well, with the district court, I mean, in order to get a preliminary injunction, you would have to go a lot farther, right?

[00:06:48] Speaker 04:
You would have to establish, one, that there was privity, and two, that the products that are

[00:06:55] Speaker 04:
I'm not even sure how it would work, because we're dealing with products that are being challenged and different claims.

[00:06:59] Speaker 04:
I don't know if some of the claims were at stake or others, right?

[00:07:02] Speaker 04:
So there's a whole lot of work, even if we were to agree that there's some remedy here to be sought in connection with the preliminary injunction, there's a whole lot of work to be done, right?

[00:07:11] Speaker 03:
That's absolutely correct.

[00:07:12] Speaker 03:
That's why we moved when we did.

[00:07:14] Speaker 03:
That's why we moved for expedition of this appeal.

[00:07:16] Speaker 03:
That's why we're here.

[00:07:17] Speaker 04:
So you can't possibly be asking us to

[00:07:19] Speaker 04:
enter a preliminary injunction in this case, right?

[00:07:22] Speaker 03:
No, Your Honor.

[00:07:23] Speaker 03:
What we are asking for is vacater of the denial and a remand with instructions to entertain our motion for a preliminary injunction.

[00:07:31] Speaker 03:
And this court can, of course, take into account the changed circumstances that aristocrat has now filed its petitions.

[00:07:36] Speaker 03:
And the injunctive relief we're now seeking is an injunction against them prosecuting these petitions, an anti-suit injunction.

[00:07:42] Speaker 02:
Let's go back one step.

[00:07:44] Speaker 02:
You file this action.

[00:07:46] Speaker 02:
The district court says, what's all the fuss about?

[00:07:48] Speaker 02:
There's no case of controversy.

[00:07:50] Speaker 02:
This doesn't meet the requirements of a declaratory action.

[00:07:54] Speaker 02:
And you say, well, they're making noise.

[00:07:57] Speaker 02:
As I observe, there was no record evidence of a threat, a specific threat to, let's say, to attack the patent in another forum, that is to go through the IPR.

[00:08:12] Speaker 02:
So it's not hard to see why this trial court

[00:08:18] Speaker 02:
felt that whatever you were asking for was premature, now that they have proceeded with the IPR.

[00:08:25] Speaker 02:
And I assume your theory, without knowing how it would work out in practice, is that estoppel is not an available defense in the PTAP.

[00:08:39] Speaker 02:
And therefore, unless you're in the district court, you will

[00:08:43] Speaker 02:
Is the theory then that you would be barred, you would be precluded from raising the question of estoppel?

[00:08:50] Speaker 03:
There's a lot to unpack in what you said.

[00:08:51] Speaker 03:
Firstly, aristocrat did indicate to us they intended to pursue IPR in our negotiations over the original extension to their time to answer.

[00:08:59] Speaker 03:
And that's why we entered into an IPR moratorium for a few months.

[00:09:02] Speaker 03:
Then in response to our motion for preliminary injunction, they told the court they were going to seek

[00:09:07] Speaker 03:
So at that point, it wasn't speculative.

[00:09:10] Speaker 03:
But then getting to, I think, the more interesting part of your question, the problem that we face is that this court hasn't yet decided what effect a cancellation certificate has on a party in our position, the patentee, against an assigner, where the doctrine of an assigner's double should ordinarily apply.

[00:09:29] Speaker 03:
If the court holds, as aristocrat is arguing right now here and in the district court,

[00:09:34] Speaker 03:
that a cancellation certificate absolutely nullifies our ability to stop aristocrat from arguing invalidity in the district court, then the only remedy we have is to somehow get an injunction before that cancellation certificate.

[00:09:48] Speaker 03:
That's why we did what we did, and that's why we're doing what we're doing.

[00:09:51] Speaker 03:
But to answer your question directly, yes, if IPR is instituted, we will move for another preliminary injunction.

[00:09:57] Speaker 03:
And yes, the district court can consider our arguments.

[00:10:01] Speaker 03:
To be very clear on the record,

[00:10:03] Speaker 03:
It is a premise of our preliminary injunction motion that the PTAB will not hear a sign or a stopple.

[00:10:07] Speaker 03:
We have argued in our patent owner's response in the petitions at issue that the PTAB should reconsider that and should accept a sign or a stopple.

[00:10:15] Speaker 01:
Because we have to cover all our bases.

[00:10:17] Speaker 01:
Well, the PTAB has a statutory provision to interpret, right?

[00:10:20] Speaker 01:
Any potting may file.

[00:10:22] Speaker 01:
And a sign or a stopple is an equitable principle.

[00:10:26] Speaker 01:
Correct.

[00:10:26] Speaker 01:
How does an equitable principle in a statutory enactment, how do they

[00:10:32] Speaker 03:
Well, the PTAB has a statute.

[00:10:36] Speaker 03:
The PTAB can decide, maybe given Chevron deference, may have Chevron deference to decide what can and cannot hear in the course of an IPR.

[00:10:45] Speaker 03:
But to answer your question directly, I'm not sure if the PTAB is being terribly consistent about this.

[00:10:50] Speaker 03:
They talk about invoking judicial estoppel in their opinions, but there is no statute that gives them the ability to invoke the doctrine of judicial estoppel.

[00:10:59] Speaker 03:
The legislation is as against the backdrop of the common law.

[00:11:02] Speaker 03:
And if and when this issue ever comes here from the PTAP, the argument will be made that a statute that is utterly silent on equitable defense that says a person may file does not answer the question of whether equitable defenses are available.

[00:11:16] Speaker 03:
However, I want to note for you, Judge Lurie, that question may never get here because of the second question presented at Quozo and the idea that a sign or a stopper may be an institution-level decision.

[00:11:26] Speaker 03:
If the PTAP, if this court's precedents are maintained, in quotes of question two, and the PTAP decides a sign or estoppel is an institution-level decision, this court will never get to decide, except maybe in a case like this one, that the PTAP has to hear a sign or estoppel.

[00:11:41] Speaker 03:
I will note, this court could affirm the denial of the preliminary injunction and come to its own conclusion that the PTAP has to hear a sign or estoppel, and that's why we don't get

[00:11:50] Speaker 04:
a preliminary injunction, that'd be... That's a little extreme.

[00:11:54] Speaker 03:
That's what I was about to say.

[00:11:55] Speaker 03:
I'd like to ask Your Honors to consider a hypothetical to address aristocrats arguing about Section 311.

[00:12:01] Speaker 03:
According to aristocrats, Section 311 is not a generic grant of authority to file an IPR.

[00:12:06] Speaker 03:
It's an absolute immunity from any restraint that any court could ever impose on a party to file that IPR.

[00:12:13] Speaker 03:
And that does not make sense when one considers the possible contract that Your Honor alluded to.

[00:12:17] Speaker 03:
I don't think

[00:12:18] Speaker 03:
Contracts with an assigner to not challenge his own patents are terribly common because assigner-estoppel has been around for over 100 years and people know that assigner-estoppel applies.

[00:12:27] Speaker 03:
But I presume aristocrat did contract with us never to seek IPR.

[00:12:31] Speaker 03:
It's aristocrat's position that we could not go into a state court in Clark County and get an anti-suit injunction against the very IPR that aristocrat had contracted not to seek if aristocrat indicated it was going to seek one or in fact did.

[00:12:44] Speaker 03:
That's what aristocrat thinks 311 means.

[00:12:47] Speaker 03:
that it means not just a person may file, but all people may file under all circumstances, despite what a court in equity may say.

[00:12:55] Speaker 03:
And one thing we know is Congress did not intend to deprive federal and state courts of the authority to issue anti-suit injunctions.

[00:13:02] Speaker 03:
We know what that looks like.

[00:13:03] Speaker 03:
It looks like the Anti-Injunction Act.

[00:13:05] Speaker 03:
Congress speaks with specificity.

[00:13:08] Speaker 03:
And the PTAB doesn't have any Chevron deference.

[00:13:10] Speaker 03:
I think my opponent will agree.

[00:13:12] Speaker 03:
No Chevron deference to decide whether a federal district court or a state court

[00:13:17] Speaker 03:
has the power and equity to restrain someone from appearing in front of the PTAB and to issue such an anti-suit injunction.

[00:13:26] Speaker 03:
Once you take that together, and by the way, this contract hypothetical is not just fantasy.

[00:13:30] Speaker 03:
The PTAB refuses to hear contract bars to seeking inter-partis review for the exact same reason it refuses to hear a sign or a stubble as an interpretation.

[00:13:41] Speaker 04:
Well, how would the PTAB be able to hear cases on the sign or stubble?

[00:13:45] Speaker 04:
Because as we said, we started with this conversation about the factual inquiries that have to precede a conclusion that a sign or a stopper would apply.

[00:13:55] Speaker 04:
It requires that you know something about the relationship of the parties and privity.

[00:13:59] Speaker 04:
And you have to determine, you have to know something about what products have been alleged to be infringed and so forth.

[00:14:05] Speaker 04:
How would the PTAB even have the capacity to do that sort of inquiry as a threshold matter?

[00:14:11] Speaker 03:
I think they'd have to create rules to give themselves the capacity.

[00:14:13] Speaker 03:
They're good at real party and interest, and they allow real party and interest discovery, which is somewhat similar to privity.

[00:14:19] Speaker 03:
And as to the accused products, I think you've identified exactly the difficulty that we identify in a footnote in our brief, acknowledging some of the weaknesses in the argument that the PTAB should have to hear a sign or a stoppile.

[00:14:30] Speaker 03:
But every one of those leads you to only two conclusions.

[00:14:33] Speaker 03:
Either we should be able to get an anti-suit injunction at the appropriate time.

[00:14:37] Speaker 03:
And this court can tell lower courts what the appropriate time is.

[00:14:41] Speaker 03:
Either we should be able to get the anti-suit injunction, or Judge Cabranes in American Fence is correct.

[00:14:46] Speaker 03:
And it simply doesn't matter what the result of the IPR is.

[00:14:51] Speaker 03:
Aristocrat cannot interpose a cancellation of the patent as a defense in our suit for patent infringement.

[00:14:57] Speaker 03:
Those are the only two options.

[00:14:59] Speaker 02:
Did I hear you correctly?

[00:15:00] Speaker 02:
Did you say that you have now?

[00:15:02] Speaker 02:
after they've proceeded in the patent office, that you have renewed this case or filed another action or gone back to the same district court or what?

[00:15:14] Speaker 03:
There has not been institution yet.

[00:15:16] Speaker 03:
I want to make something clear for you, Judge Newman.

[00:15:18] Speaker 03:
There is an underlying patent infringement suit here that invokes the district court subject matter jurisdiction.

[00:15:23] Speaker 03:
We've sued for patent infringement and in connection with that, sought our anti-suit injunction.

[00:15:28] Speaker 03:
This is not a free-standing claim for an anti-suit injunction.

[00:15:31] Speaker 04:
And are there defenses raised in the district court proceeding with regard to invalidity?

[00:15:35] Speaker 03:
Yes, Your Honor.

[00:15:36] Speaker 03:
We have all the way through invalidity contentions on every basis you could imagine against the subject patents.

[00:15:42] Speaker 03:
But to get to your question, Judge, you know... Has anyone asked for a stay, just to kind of... Aristocrat has now asked for a stay pending IPR.

[00:15:49] Speaker 04:
They've said... The IPR has not been inst... There's no decision on institution.

[00:15:52] Speaker 03:
Correct.

[00:15:53] Speaker 03:
Aristocrat has asked for a stay.

[00:15:55] Speaker 03:
pending IPR, and we have responded to that by saying, no state should issue for the same reasons that Judge Cabranes gave in American Fence.

[00:16:02] Speaker 03:
May I reserve my remaining time for rebuttal?

[00:16:04] Speaker 04:
Can I just ask you, I'll re-story rebuttal, but let me ask you, if the district court did refuse to stay the case for this or other reasons, it's still a fight to the finish line, right?

[00:16:15] Speaker 04:
In terms of the time it would take, because they're under a pretty quick clock in the PTAP proceedings.

[00:16:21] Speaker 04:
And the district court proceedings, even if not stayed, are likely to

[00:16:25] Speaker 03:
It's a fight to the finish only in the following sense.

[00:16:29] Speaker 03:
If the district court refuses to stay on the grounds that Judge Cabranes and American Fence is correct, it's not really a fight to the finish unless this court subsequently disagrees with Judge Cabranes from American Fence.

[00:16:40] Speaker 03:
Because it simply does not matter.

[00:16:42] Speaker 04:
Well, this is a district court opinion that seems to bump up against some of our precedent, right?

[00:16:46] Speaker 03:
When you say that, I assume you're talking about Fresenius.

[00:16:49] Speaker 03:
And what I'll say is this.

[00:16:50] Speaker 03:
Fresenius only says that when a cancellation certificate issues,

[00:16:54] Speaker 03:
the patent holder loses the case.

[00:16:56] Speaker 03:
And then it says, it makes a reference to mootness.

[00:16:59] Speaker 03:
The patent holder loses the case because it no longer has a property right.

[00:17:02] Speaker 03:
In this instance, if we were to lose these patents in the IPR, we would still have a property right against aristocrat, an equitable property right, just like you can have an equitable easement, just like you can have a constructive trust.

[00:17:15] Speaker 03:
So our case would not be moot.

[00:17:17] Speaker 03:
That's what equity would tell us in that circumstance.

[00:17:20] Speaker 03:
But if Fresenius is going to

[00:17:22] Speaker 03:
actually address an assigner's double case that it never discussed, and we're going to take a very broad reading of it, then you're right.

[00:17:28] Speaker 03:
We're still in a race, a race to the district judgment or a race to hear.

[00:17:32] Speaker 04:
Thank you.

[00:17:33] Speaker 04:
I'll always store two minutes of rebuttal.

[00:17:40] Speaker 00:
This court can affirm the court below based on irreparable harm, and I'll come back and address that issue.

[00:17:47] Speaker 00:
But I think we still do not have a situation in which there has been an institution

[00:17:52] Speaker 00:
nor are we any closer, because there's no institution, to a final written decision terminating the claims.

[00:18:00] Speaker 02:
But accepting the position that there is a valid argument about a sign or estoppel, how can one justify going forward even at the institution phase?

[00:18:14] Speaker 00:
In this case, on this appeal,

[00:18:17] Speaker 00:
That issue, I don't believe, is fairly raised.

[00:18:20] Speaker 00:
As they say in their reply brief on page 8, IGT is not asking this court to decide in this case whether a sign or estoppel should be available as a defense in IPR proceedings.

[00:18:32] Speaker 00:
Indeed, the absence of a sign or estoppel as a recognized defense in IPR proceedings is the basis for IGT's preliminary injunction motion and the source of its irreparable harm.

[00:18:43] Speaker 00:
Would you answer my question?

[00:18:45] Speaker 00:
Because they have conceded for purposes of this appeal that the aristocrat has the right to file in the PTAB.

[00:18:54] Speaker 02:
I don't think they've conceded it.

[00:18:56] Speaker 02:
They have said perhaps it's not right for adjudication.

[00:19:01] Speaker 02:
They are not asking.

[00:19:02] Speaker 02:
I've never seen that they conceded the right to go to the PTAB with a patent that they say is stuffed.

[00:19:12] Speaker 00:
On their road to that, they have conceded that they're not asking this court to decide whether or not a sign or a stop was applicable in a PTAB proceeding.

[00:19:20] Speaker 02:
No, because they're trying to justify their taking an interlocutory appeal on the denial of a preliminary injunction.

[00:19:28] Speaker 02:
So they have no choice but to concede the premises.

[00:19:32] Speaker 00:
Whether they had no choice or not, they've conceded the premise.

[00:19:36] Speaker 00:
Now we ask the question, if the aristocrat is within the zone of anyone other than the patent owner, two questions and two problems arise.

[00:19:47] Speaker 00:
One is, how do they get around NAGATA?

[00:19:49] Speaker 00:
What is the affirmative basis for now enjoining aristocrat from participating in a statutorily separate proceeding in the patent office from district court litigation?

[00:20:04] Speaker 00:
And to go to the question that Judge Lurie raised earlier, how do they get around INS versus Pangiloland, which said where the statute is clear and the parties acknowledge that the statute is clear, a court cannot, in the guise of fashioning an equitable remedy, override the statute?

[00:20:24] Speaker 02:
The statute doesn't come even close to discussing a matter of estoppel.

[00:20:31] Speaker 00:
And that's because a sign or estoppel is a defense to a claim of invalidity.

[00:20:38] Speaker 04:
So are you saying that we have to, in this case, in order to find in your favor, we have to decide the question of whether or not a sign or estoppel should apply in PTAP proceedings?

[00:20:47] Speaker 00:
I don't believe you have to decide that because they've specifically said it's not an issue they're asking you to decide.

[00:20:54] Speaker 00:
So we take the case as they have now styled it.

[00:20:58] Speaker 04:
But that doesn't mean

[00:21:01] Speaker 04:
I'll leave that aside, because I don't think there's any waiver here or anything.

[00:21:04] Speaker 04:
I mean, that statement makes perfect sense to me in terms of what our role is in connection with the preliminary injunction versus other issues.

[00:21:11] Speaker 04:
To me, it doesn't indicate that they... Let me ask you just, in terms of just looking at the PTAP proceeding, let's assume hypothetically that your friend's suggestion may turn out to be true, which is depending on what the Supreme Court says or otherwise.

[00:21:26] Speaker 04:
that not only does PTAP consistently continue to take the position that a sign or estoppel doesn't apply, but also that that decision is not even reviewable by this court.

[00:21:37] Speaker 04:
Is it your view that there's

[00:21:40] Speaker 04:
That's the absolute end of it, and there's no way that either we or the district courts can speak our own view of the issue through the preliminary injunction process or otherwise cases coming through the district court.

[00:21:52] Speaker 00:
This preliminary injunction would not be the appropriate way to resolve that if the Supreme Court were to say it's not reviewable.

[00:22:00] Speaker 00:
And I don't think there's any inequity in that, because the assigner estoppel doctrine was created in district court for district court litigation.

[00:22:09] Speaker 00:
Hypothetically, suppose in this case the same action was filed and aristocrat did not raise any invalidity defenses.

[00:22:21] Speaker 00:
There would be no premise for a sign or a stoppile.

[00:22:25] Speaker 00:
And therefore, what would be the basis for enjoining the PTAB?

[00:22:30] Speaker 00:
The fact that we've raised invalidity defenses doesn't mean that the filing of the PTAB eviscerates

[00:22:40] Speaker 00:
the assigner estoppel doctrine.

[00:22:44] Speaker 00:
It will still apply in the district court case if, for example, it's... Well, that's what your friend is saying.

[00:22:48] Speaker 00:
It will still apply in the district court.

[00:22:50] Speaker 04:
But if the PTAB invalidates the patent, unless we buy, I guess, some of the suggestions by Judge Cabranas in the district court case, then that's the end of it, and that the patent is invalid, case over.

[00:23:03] Speaker 00:
That's right.

[00:23:04] Speaker 00:
And I think this court's reasoning for zinnias

[00:23:07] Speaker 00:
is applicable here, because it doesn't matter for purposes of whether there is a patent on which to predicate a suit under 281, 35 U.S.C.

[00:23:20] Speaker 00:
281.

[00:23:22] Speaker 00:
As Fresenius makes, I think, reasonably clear, the basis on which a suit exists no longer exists if the patent office doesn't declare the patent invalid.

[00:23:35] Speaker 00:
It says it never should have issued in the first place, and there is no property right left to enforce.

[00:23:42] Speaker 00:
And that shouldn't make a difference, whether it's a party in that situation, which was not subject to a sign or a stoppable.

[00:23:50] Speaker 00:
But you understand the tension here, right?

[00:23:53] Speaker 04:
I mean, the district court, the PTAP proceeding was entitled, at least to a certain extent, to be an alternative to the district court proceeding.

[00:24:00] Speaker 04:
No one is disputing that if the facts line up for your friend's side, i.e.

[00:24:04] Speaker 04:
there's privity and some of the infringed products or those that tap into what the inventor invented, then a sign or a stuff will apply in the district court.

[00:24:15] Speaker 04:
And that would be a pretty powerful tool they would have.

[00:24:20] Speaker 04:
You could not challenge the validity of the patents.

[00:24:24] Speaker 04:
But now that's all lost if you decide to go the PTAB route in your view.

[00:24:28] Speaker 00:
That's right.

[00:24:29] Speaker 00:
And I believe, not in my view, I think it is in Congress's view when they passed the PTAT, they wanted an alternative to litigation that was speedy, effective, and would get rid of what Congress at the time believed, as they believed, as this court explained in Fresenius and earlier, that the patent office is issuing bad patents.

[00:24:49] Speaker 04:
But there's no suggestion in the legislative history or otherwise

[00:24:52] Speaker 04:
that there was some, Congress had some problem with the application of the Assigner-Stoppel Doctrine at the district court, and it was trying to foreclose that or to run around that by PTAP proceedings, right?

[00:25:03] Speaker 00:
No, but the Assigner-Stoppel Doctrine, all the cases arose in district court litigation.

[00:25:09] Speaker 00:
It was an equitable defense in district court litigation.

[00:25:12] Speaker 02:
Well, of course.

[00:25:12] Speaker 02:
Where else was there?

[00:25:14] Speaker 00:
There wasn't.

[00:25:14] Speaker 00:
And that's why those cases are inapposite to this case, because they didn't have to consider

[00:25:20] Speaker 00:
the conflict between Congress establishing a separate administrative review for the actual issuance of the patent, as opposed to once the patent is issued doing district court litigation.

[00:25:33] Speaker 00:
As this court in In Re Etter, when it was deciding whether or not the presumption of validity applied in reexamination said, fundamentally, the two administrative proceedings in district court litigation are separate.

[00:25:47] Speaker 00:
They're different.

[00:25:48] Speaker 00:
They have achieved different things.

[00:25:49] Speaker 00:
In one, you're challenging the validity of the patent.

[00:25:52] Speaker 00:
In the other, it is an administrative re-review by the patent office to see whether or not the patent should have issued in the first place.

[00:26:00] Speaker 04:
Can I ask you something?

[00:26:01] Speaker 04:
If there were an instance where an inventor leaves the company and they assign their patent, and there's a clear, unambiguous contractual provision that says that I will not challenge the patent at any time,

[00:26:14] Speaker 04:
And then let's assume there's serious privity in this case, and then in fact, they're one and the same.

[00:26:20] Speaker 04:
Is it your view that PTAB should not recognize or does not have the authority or the ability to recognize that contractual bar in any way, shape, or form when it's reviewing validity?

[00:26:31] Speaker 04:
That the inventor could come in and challenge the validity, notwithstanding the contractual provision?

[00:26:39] Speaker 00:
What I am aware of, I don't believe that there would be a basis to engraft on the language anyone other than the patent owner decision that says a sign or estoppel applies.

[00:26:52] Speaker 04:
As they can see- I'm not talking about a sign or estoppel.

[00:26:55] Speaker 04:
I'm talking about a contract provision that says, I'm selling you my invention for $2 million, and I am agreeing that I am never going to assert that the patent is invalid.

[00:27:05] Speaker 04:
And we have a strict contractual provision.

[00:27:08] Speaker 04:
under state law and then I run over to the patent office to try to invalidate the patent.

[00:27:13] Speaker 04:
Is the PTAP going to recognize that?

[00:27:16] Speaker 04:
Are they allowed to?

[00:27:17] Speaker 00:
I don't know whether the PTAP would recognize that or not because that's not the issue in this case.

[00:27:21] Speaker 00:
We're talking about an equitable doctrine

[00:27:24] Speaker 00:
that is created and is specifically applicable and will be applicable.

[00:27:29] Speaker 01:
That's a very powerful, equitable talk.

[00:27:34] Speaker 01:
You can't sell something to someone and then deny its value.

[00:27:39] Speaker 01:
That's quite basic.

[00:27:43] Speaker 01:
And you're, in effect, saying that any person can file an IPR, wipes that out.

[00:27:50] Speaker 00:
That's what Congress said.

[00:27:52] Speaker 00:
Anyone other

[00:27:53] Speaker 00:
than the owner of the patent.

[00:27:56] Speaker 00:
It's not me saying it.

[00:27:57] Speaker 00:
It's not the district court saying it.

[00:27:58] Speaker 00:
It's Congress saying it.

[00:28:00] Speaker 01:
Of course, Congress didn't say including Aspen or Estoppel.

[00:28:03] Speaker 00:
Because it didn't have to, because Assigner-Estoppel, once ex-party reexaminations and inter-parties reexaminations, they had never addressed the issue of the applicability of Assigner-Estoppel, the Supreme Court, in that proceeding.

[00:28:17] Speaker 00:
And I do believe that if the court were to look at it today,

[00:28:21] Speaker 00:
There are serious questions as to the vitality and the breadth of what a sign or estoppel is.

[00:28:25] Speaker 00:
And I'll give you one example, the written description argument.

[00:28:29] Speaker 00:
The basis of a sign or estoppel is the inventor says, here's my invention.

[00:28:38] Speaker 00:
And I can't challenge that if I then leave and do certain things.

[00:28:43] Speaker 00:
Suppose after he leaves, the claims are drafted way beyond any conceitedly.

[00:28:50] Speaker 00:
Anything that specification would support.

[00:28:53] Speaker 00:
Well, the inventor never really assigned that invention, because it's not something he was in possession of.

[00:28:59] Speaker 00:
But Assigner Estoppel bars that written description argument.

[00:29:04] Speaker 00:
That doesn't seem to me to be fair, but that's the bread.

[00:29:07] Speaker 00:
And that's why I think if the Supreme Court would- Is that a hypothetical case or is that a real case?

[00:29:10] Speaker 00:
That's a hypothetical case.

[00:29:12] Speaker 00:
But I don't know whether it's- Sounds very hypothetical.

[00:29:16] Speaker 00:
Well, there are written description problems in patent litigation all the time.

[00:29:21] Speaker 00:
And many of which, this court has affirmed the written description as not being one in which the inventor was in possession of the invention.

[00:29:29] Speaker 00:
But you won't even get to those issues.

[00:29:31] Speaker 00:
That's why you haven't had those cases.

[00:29:33] Speaker 00:
You won't get to those issues in a sign or a stop will give you the breadth of it.

[00:29:36] Speaker 00:
And it cuts against, as this court recognized in Diamond Scientific, what the Supreme Court said in the Lear case.

[00:29:43] Speaker 00:
There's a problem with bad patterns.

[00:29:46] Speaker 04:
Yeah, but even playing with your hypothetical, written description isn't something you can get review of the PTAP.

[00:29:53] Speaker 04:
So in terms of written description cases, if that's the validity challenge in the district court, you're going to have to live with that.

[00:30:00] Speaker 04:
What you're arguing here isn't going to fix that up for you.

[00:30:03] Speaker 00:
No, but I was just addressing the issue of whether or not the assigner estoppel is the be-all and end-all that my opponent seems to think it is.

[00:30:12] Speaker 00:
But the assigner estoppel doctrine exists.

[00:30:15] Speaker 00:
But it was created and exists in district court litigation.

[00:30:18] Speaker 00:
And this court in Fresenius, in Ray Eder, and Congress, when it set up ex-party re-examinations, re-issues, inter-parties re-examinations in the IPRs, has said, and district court cases in the inter-parties re-examination context have said, that it means what it says.

[00:30:41] Speaker 00:
So Congress, when it passed the

[00:30:44] Speaker 00:
AIA and set up IPRs wasn't, if we're going to look at it, wasn't writing on a blank slate.

[00:30:49] Speaker 00:
It was writing in the context of district court cases which had said in inter-parties re-examinations, a sign or a stopple does not apply.

[00:30:58] Speaker 00:
So I don't think there's anything inconsistent or radical in what Congress did when it... Okay, what do you want us to do here?

[00:31:04] Speaker 04:
I mean, there are, you know, there are ways even to achieve your result.

[00:31:08] Speaker 04:
I mean, one of your, you argue obviously this case was not right, that there was no IPR file.

[00:31:13] Speaker 04:
That's one way to go in order to achieve your result, which is to affirm the dismissal.

[00:31:18] Speaker 04:
And, but we've spent about 15 minutes now arguing about a much broader conclusion that you're advocating.

[00:31:24] Speaker 00:
I'm not advocating that the court needs to reach those.

[00:31:29] Speaker 00:
What my point is is that given those concessions, there is no basis for an injunction here.

[00:31:36] Speaker 00:
What is the affirmative claim, to use Nagata's language, what is the affirmative basis for now taking an equitable doctrine created for district court litigation, which still has vitality in this case?

[00:31:50] Speaker 00:
It would apply if there's no institution.

[00:31:55] Speaker 00:
Or if there's institution and the claims aren't canceled, not only then to prior art, we'll get the estoppel here, but non-printed publication prior art would still fall within the umbrage of an assigner estoppel in the district court litigation.

[00:32:08] Speaker 00:
So there is still some fatality to the assigner estoppel.

[00:32:12] Speaker 00:
It didn't ban assigner estoppel.

[00:32:16] Speaker 00:
If somebody doesn't file an IPR, assigner estoppel would still apply in district court.

[00:32:21] Speaker 00:
What we're talking about here is given the concession that they're not asking you to consider whether a sign or estoppel should apply in the PTAB, the district court's decision was correct.

[00:32:32] Speaker 00:
And it should affirm.

[00:32:35] Speaker 00:
Just to note one point about the argument that maybe you should remand with instructions to consider this within a year or whatever period of time, there's 32 patents in this case.

[00:32:47] Speaker 00:
And while it's not in the record, we have now had a case management conference in which

[00:32:51] Speaker 00:
aristocrat has picked five patents to go forward, and we've picked four, one of which is a Cam and Cal patent.

[00:32:57] Speaker 00:
But to do what they want you to do would have to remand and tell this court to deal with all four of the Cam and Cal patents within a year, because they're all different inventions.

[00:33:11] Speaker 00:
They all go to different things.

[00:33:13] Speaker 00:
And it is hypothetically possible, if they were to prevail on one of the patents, they would lose on the others, because the Cam and Cal wasn't involved with the

[00:33:22] Speaker 00:
inclusion of those particular features in the finished device.

[00:33:27] Speaker 00:
So I think the court goes down a dangerous path if it's going to take a sign of estoppel cases where there's IPRs and begin to now mandate what the district court has to do and what period of time it has to do it.

[00:33:38] Speaker 04:
Thank you.

[00:33:42] Speaker 04:
I want to just take a minute and talk about this concession that you've made.

[00:33:46] Speaker 04:
Yes, your honor.

[00:33:48] Speaker 04:
Did you make a concession?

[00:33:49] Speaker 03:
No, your honor.

[00:33:50] Speaker 03:
We acknowledge only merely what your honor said when I proposed that this court could affirm on the basis that the PTAB has to hear these things, and you said that would be a little bit too far.

[00:34:00] Speaker 03:
We recognize that that would be a little bit too far, and even is arguably outside of the scope of the appeal in the sense that we could argue for affirmance on an alternative basis.

[00:34:08] Speaker 03:
But if we came into the court with a brief that said, we lost below, but we really like you to affirm, I think I would have gotten a letter suggesting that maybe there was no appellate jurisdiction in the case.

[00:34:18] Speaker 03:
So no, it's a concession only in the sense that it forms the basis for our request for relief.

[00:34:23] Speaker 03:
I want to start with, what should the court do?

[00:34:25] Speaker 03:
I think we'd ask the court to do a little bit more than just affirm on the basis that we're the trailblazer, we tried everything, and we came in too early.

[00:34:33] Speaker 03:
And really, in the future, people should wait for institution.

[00:34:36] Speaker 03:
Because the district court expressed at A7 that it was going to deny the motion, at least in part because no one had ever asked for this relief before.

[00:34:44] Speaker 03:
And in that sense, the district courts do need guidance.

[00:34:47] Speaker 03:
as to whether these antecedent junctions are available.

[00:34:50] Speaker 03:
Now I'd like to move to your hypothetical about a contract.

[00:34:52] Speaker 03:
You asked a question of my friend, which was, will the PTAB consider the contract bar that you propose in your hypothetical?

[00:35:00] Speaker 03:
There is an answer to that question.

[00:35:02] Speaker 03:
The answer is no.

[00:35:04] Speaker 03:
It's assault versus DYMO IPR 2015-00781 at page 7.

[00:35:12] Speaker 03:
where the PTAP said, for the exact same reasons that we refuse to consider a sign or a stopple, we will not consider any alleged contract bar to seeking IPR.

[00:35:24] Speaker 04:
And that reason is because this statutory language is so broad among any person involved?

[00:35:28] Speaker 03:
That reason is, again, exactly Section 311.

[00:35:30] Speaker 03:
In that case, it's a form selection clause.

[00:35:32] Speaker 03:
So the argument was the form selection clause prohibited the petitioner from seeking IPR.

[00:35:37] Speaker 03:
I want to now go to Nagata, because my opponent brought up Nagata.

[00:35:42] Speaker 03:
Nagata has hold absolutely nothing about the availability of an anti-suit injunction in an infringement case.

[00:35:48] Speaker 03:
It's a subject matter jurisdiction case where the only federal claim was, in the discussion you and I were having Judge Newman, the only federal claim in Nagata was one for a declaratory judgment of a sign or estoppel.

[00:35:58] Speaker 03:
And the court held at page 370, as the district court fittingly noted, it makes no sense to use a doctrine intended to estoppel a party from advancing a particular claim or defense in a legal case as a way to sue a non-party

[00:36:11] Speaker 03:
who has made no claim or defense in a legal case.

[00:36:13] Speaker 03:
We sued aristocrat for patent infringement.

[00:36:16] Speaker 03:
That is our cause of action.

[00:36:18] Speaker 03:
That is what gives the district court the authority to enter the anti-suit injunction we're seeking.

[00:36:22] Speaker 03:
And the fact that a sign or estoppel is a defense to claims of invalidity is of absolutely no moment.

[00:36:28] Speaker 03:
Think about res judicata.

[00:36:30] Speaker 03:
Res judicata is a defense.

[00:36:32] Speaker 03:
There is no cause of action for res judicata.

[00:36:34] Speaker 03:
But when I want an anti-suit injunction on the basis of res judicata, I go back to the first court that entered that judgment.

[00:36:41] Speaker 03:
and ask that first court to enjoin proceedings in the second tribunal.

[00:36:44] Speaker 03:
You don't need a cause of action specific to the defense you're asserting to seek an anti-suit injunction.

[00:36:51] Speaker 03:
Now to address the scope.

[00:36:53] Speaker 04:
Your time is up, so you can have one more.

[00:36:57] Speaker 03:
Sorry, Your Honor.

[00:36:58] Speaker 03:
One more point.

[00:36:59] Speaker 03:
The scope of a sign or estoppel, it's only ever been in the district courts, as Judge Newman said.

[00:37:03] Speaker 03:
That's because that's the only place to assert it.

[00:37:06] Speaker 03:
And it assumes the conclusion to say that because Congress passed section 311,

[00:37:11] Speaker 03:
a sign or estoppel doesn't apply outside the courthouse walls.

[00:37:15] Speaker 03:
Courts are courts of equity.

[00:37:16] Speaker 03:
A sign or estoppel does apply everywhere.

[00:37:18] Speaker 03:
Thank you.

[00:37:19] Speaker 04:
Thank you.

[00:37:19] Speaker 04:
We thank both parties and the cases submitted.