[00:00:00] Speaker 00:
Team 1873 again, target training versus extended disc, North America.

[00:00:29] Speaker 00:
whenever you're ready.

[00:00:35] Speaker 04:
target trainings uh... let me express a concern at the beginning about a statement that you make at page eleven of your brief the district court here found that the whole claims and the new claims were not substantially identical and you say the only record evidence before the court was the declaration of TTI's technical expert who opined that the newly added claims were substantially identical to the original claims i do not think that is an accurate representation of that declaration

[00:01:06] Speaker 04:
Could you show me where in the declaration he renders such an opinion?

[00:01:50] Speaker 02:
We were looking at paragraph 8, I believe, Your Honor.

[00:01:53] Speaker 02:
Independent claims.

[00:01:56] Speaker 00:
Can you give me a page number?

[00:01:57] Speaker 02:
I'm sorry, JA 356.

[00:01:58] Speaker 02:
Okay.

[00:02:02] Speaker 02:
Of the 372 re-examination certificate, claims 12, 13, 14, et cetera.

[00:02:07] Speaker 02:
These claims include all of the limitations of the original claim 1 with additional clarification or wherein clauses.

[00:02:17] Speaker 04:
That is not a statement, but they're substantially identical.

[00:02:21] Speaker 04:
no you're not say substantially identical well you shouldn't be saying that when it doesn't say it.

[00:02:27] Speaker 04:
I mean in fact claims are not substantially identical.

[00:02:30] Speaker 04:
I think it's important to address this point because it affects the rest of the case.

[00:02:35] Speaker 04:
They're not substantially identical.

[00:02:38] Speaker 02:
Your Honor, I believe that there is

[00:02:43] Speaker 02:
evidence that they are substantially identical in the fact that what they are is all of the information that's in there in light of, when you read it, in light of the claims, the specification, and the understanding of those skilled in the art, that information is within the original specification of the 372 patent.

[00:03:07] Speaker 04:
But you have maybe showing of substantially identicality, right?

[00:03:11] Speaker 02:
At the stage when this motion was filed, Your Honor, no, we did not file something going through that analysis.

[00:03:20] Speaker 04:
OK, let's assume that you didn't, then, make such a shot.

[00:03:23] Speaker 04:
The question is here, what the district court should have done about the new plans.

[00:03:29] Speaker 04:
And I think you have a good argument that Fresenius doesn't say that you can't amend your infringement contentions to continue with the newly granted claims.

[00:03:44] Speaker 04:
But doesn't the district court have a lot of discretion as to whether to allow an amendment to bring in new claims?

[00:03:54] Speaker 02:
Of course, the district court does have that discretion.

[00:03:57] Speaker 02:
But in this case, the court didn't even make the analysis with respect to that issue.

[00:04:02] Speaker 02:
The court simply said the initial claims were canceled.

[00:04:06] Speaker 02:
Therefore, under Fresnius, the case is dismissed as moot.

[00:04:12] Speaker 02:
So it was making a leap between Fresnius and the language there that said when all the claims are canceled, once that happens, the case is over.

[00:04:23] Speaker 02:
and all be all, as opposed to this situation.

[00:04:27] Speaker 04:
I think your problem is you didn't move to amend the infringement contentions.

[00:04:32] Speaker 04:
I guess you did, in part of the motion to strike papers, say that you wanted to do that.

[00:04:41] Speaker 04:
But why is it you didn't actually make a motion to amend the infringement contentions?

[00:04:46] Speaker 02:
So prior to actually stating that in the motion to strike papers, Your Honor, we also had asked the court

[00:04:54] Speaker 02:
As soon as we submitted the re-examination certificate, we had contacted the court and asked for a new scheduling order.

[00:05:00] Speaker 02:
The scheduling order that had been in play, obviously, was over.

[00:05:04] Speaker 02:
And so we had asked the court to set forth a new scheduling order immediately.

[00:05:10] Speaker 02:
Actually, even prior to that, days prior to that, the other side had filed their motion to dismiss.

[00:05:16] Speaker 02:
And so we had asked the court for a scheduling order.

[00:05:20] Speaker 02:
The court actually never ruled on that issue.

[00:05:22] Speaker 02:
And we had offered to amend our contentions in compliance with a scheduling order.

[00:05:30] Speaker 00:
What does that mean, you offer?

[00:05:33] Speaker 00:
You say you offered to amend it?

[00:05:35] Speaker 02:
Well, in the motion to strike, we indicated that we intent.

[00:05:39] Speaker 04:
What page is that on the motion to strike?

[00:05:41] Speaker 02:
Sure.

[00:05:48] Speaker 02:
JAA 319, which I believe is actually our opposition,

[00:05:53] Speaker 02:
So at JA 319, in the opposition to the motion for summary judgment and motion to dismiss, we indicated that we were willing to go ahead to amend those claims if necessary at that stage.

[00:06:15] Speaker 02:
It's a footnote.

[00:06:18] Speaker 02:
Footnote one at the bottom of page two of that motion.

[00:06:22] Speaker 02:
Yeah, but that just says you're willing to do it It's not a request to be allowed to do sure and then in JA 181 to 182 we had requested the scheduling order in light of and indicated that in light of the

[00:06:41] Speaker 01:
As I understand your argument, and it's somewhat sympathetic actually, is that the trial court said even though their motion to dismiss was not compliant with the former scheduling order, the trial court found the scheduling order didn't exist.

[00:06:54] Speaker 01:
And then the trial court wouldn't allow you to amend because he said you violated the scheduling order.

[00:06:59] Speaker 01:
Correct.

[00:07:01] Speaker 01:
And so while I think that is sympathetic because it's obvious that you could say that's an abuse of discretion to apply the old scheduling order to you and then to say that the old scheduling order didn't exist with respect to their motion, going back to Judge Dyke's original point, even if that was an abuse of discretion,

[00:07:25] Speaker 01:
Don't you admit more than once in your papers, in those very papers you're talking about, that the new claims are narrower?

[00:07:32] Speaker 02:
Which would go to the second point of my argument, Your Honor, which is the issue with respect to 252.

[00:07:40] Speaker 02:
Even if the court were to conclude that they are narrower, the language there is to suggest that, yes, they are not.

[00:07:47] Speaker 02:
We don't use the identical words, clearly.

[00:07:50] Speaker 02:
But we believe that within the specification, it's there.

[00:07:53] Speaker 02:
But putting that aside.

[00:07:55] Speaker 02:
If, because there are newly amended claims that if you conclude they are narrower in scope, we are still entitled to proceed with the action under and go through the analysis of 252 and with

[00:08:15] Speaker 02:
respect to if they choose to plead the affirmative defense under 252.

[00:08:21] Speaker 04:
I don't think you're entitled to go forward with the new claims.

[00:08:26] Speaker 04:
I think you are entitled to ask to go forward with the new claims.

[00:08:30] Speaker 04:
And the district court may or may not allow an amendment of the infringement contentions to go forward with the new claims.

[00:08:39] Speaker 04:
Do you disagree with that?

[00:08:41] Speaker 02:
Yes, we are allowed to ask and we did ask and the court didn't say yes.

[00:08:45] Speaker 04:
So show me where, I'm still puzzling over this, where in 151 is there such a request here?

[00:08:52] Speaker 02:
So I'm sorry, it's JA 319 and JA 181 and 182.

[00:08:58] Speaker 04:
So we're on 181 and 182.

[00:09:01] Speaker 02:
So the last second paragraph, second full paragraph, given the duration of the stay in this matter and the outcome of the re-examination proceedings,

[00:09:08] Speaker 02:
TTI respectfully requests a status conference with the court to discuss setting additional or modified deadlines.

[00:09:15] Speaker 02:
And then if you flip, to update contentions and expert reports with any associated additional discovery.

[00:09:23] Speaker 04:
But that's sort of being an actual request to amend the infringement contentions to allege infringement of the new claims.

[00:09:32] Speaker 04:
That's the problem I'm having.

[00:09:34] Speaker 04:
is that there was nothing to prevent you from making a motion to amend the infringement contentions, was there?

[00:09:41] Speaker 02:
Your Honor, we were trying to comply with the court's scheduling order that wasn't in existence.

[00:09:46] Speaker 02:
We wanted a new scheduling order.

[00:09:48] Speaker 04:
That's my question.

[00:09:49] Speaker 04:
Was there anything that prevented you from making a motion to amend the infringement contentions?

[00:09:54] Speaker 02:
I would say, Your Honor, just the fact that we were waiting on the court's response to our request for this conference

[00:10:01] Speaker 02:
to have a scheduling order in play.

[00:10:03] Speaker 04:
So there wasn't any order of the court that prevented you from making such a motion?

[00:10:07] Speaker 02:
No.

[00:10:08] Speaker 02:
But the court didn't address the issue of additional contentions to say whether or not we had the right to amend them until the dismissal order, at which point, of course, the case was over.

[00:10:21] Speaker 01:
And in the absence of a scheduling order, you didn't have a deadline for filing motions to amend?

[00:10:25] Speaker 01:
Correct.

[00:10:26] Speaker 04:
Which means you could have filed a motion but didn't.

[00:10:32] Speaker 02:
Your Honor, we expected that the court was going to respond to the... The court never responded.

[00:10:39] Speaker 02:
It's not the court denied the scheduling of the order conference.

[00:10:42] Speaker 02:
It's the court didn't respond and we were waiting on that response.

[00:10:46] Speaker 00:
What do you want to happen here?

[00:10:48] Speaker 00:
I mean, the other case we ended up asking you, why don't you just file a new case?

[00:10:51] Speaker 00:
Why don't you just file a new case here?

[00:10:53] Speaker 00:
Is it the matter of...

[00:10:55] Speaker 00:
having to do everything again?

[00:10:57] Speaker 00:
Is it because you're afraid of losing?

[00:10:59] Speaker 00:
Are you still think that you're entitled to a fight over whether or not there's substantial similarity or not?

[00:11:06] Speaker 02:
We believe we are entitled to that fight.

[00:11:08] Speaker 02:
I'm not sure we couldn't make it in a second case.

[00:11:10] Speaker 02:
I'm not sure about that.

[00:11:15] Speaker 00:
As I recall, I may be confused with another case.

[00:11:18] Speaker 00:
I mean, they filed for summary judgment.

[00:11:20] Speaker 00:
The district court said,

[00:11:22] Speaker 00:
you make this assertion about substantially similar, and you haven't put up any facts.

[00:11:27] Speaker 00:
I think your expert report just fell short.

[00:11:30] Speaker 00:
So if you didn't put out any facts to establish that there's a factual dispute, you lost on summary judgment.

[00:11:38] Speaker 02:
Actually, in this case, the court didn't actually rule on summary judgment.

[00:11:41] Speaker 02:
The court ruled, I believe, that if I recall correctly, the court said that

[00:11:45] Speaker 02:
the summary judgment issue was moved in light of the fact that it was dismissing the cases.

[00:11:49] Speaker 04:
No, but the court did rule that you had failed to establish substantial identicality.

[00:12:01] Speaker 02:
Your Honor, I don't recall the court's statement with respect to that, but perhaps that is accurate.

[00:12:21] Speaker 04:
It says on page six of the opinion, the record, however, does not contain any evidence that the claims are substantially identical to the original claim.

[00:12:29] Speaker 04:
TTI's conclusion statements that the claims may be identical is not sufficient.

[00:12:36] Speaker 02:
I said that.

[00:12:40] Speaker 00:
I'm sorry?

[00:12:40] Speaker 02:
I said I see what you're pointing to, Your Honor.

[00:12:43] Speaker 02:
I'm not sure that that is a final decision on the summary judgment issue, but certainly that is a statement that the court made in that

[00:12:50] Speaker 02:
that decision.

[00:12:52] Speaker 02:
But the issue with respect to refiling is that we are going to be faced with the same exact fights we're facing now if the court does not.

[00:13:01] Speaker 02:
And my expectation is the other side isn't going to agree that all the discovery that was taken in that case comes forward, the Markman opinion comes forward, and all of that.

[00:13:11] Speaker 02:
So we are forced to restart a case that started back in 2010.

[00:13:16] Speaker 00:
Are you asking for two alternatives here?

[00:13:18] Speaker 00:
One, that we would vacate and remand and send it back to the judge.

[00:13:25] Speaker 00:
You need to amend your complaint.

[00:13:27] Speaker 00:
I'm just trying to figure out what you're asking that we do, that we tell the judge to allow you to amend your complaint.

[00:13:35] Speaker 00:
Do you want us to ensure that you can revisit the question of substantial similarity or decide whether or not that issue has been properly disposed of and is over?

[00:13:45] Speaker 00:
Or are you willing to agree that that issue at least is over, so you just want us to vacate and remand for purposes of allowing you to file an amended complaint, but no issue, substantial similarity is a given, so you just proceed prospectively with regard to the new allegations.

[00:14:03] Speaker 00:
Your Honor.

[00:14:03] Speaker 00:
We'll start with the new claims.

[00:14:04] Speaker 00:
New claims.

[00:14:05] Speaker 00:
Yeah.

[00:14:05] Speaker 02:
With the new claims.

[00:14:08] Speaker 02:
Ideally, we would like the opportunity to go back and argue the substantial identity.

[00:14:13] Speaker 02:
If that is not acceptable, we certainly are looking to at least have the ability to go back and proceed with amended invalidity contentions based on the new claims and to proceed forward there with the ability to use the continuing all of the discovery and the rulings that have already taken place in that case.

[00:14:37] Speaker 01:
As I see it, the most we could do, there does seem to be a lot of oddities here with respect to what the District Court did in terms of prohibiting moving to amend.

[00:14:52] Speaker 01:
The most we could do is say consider a motion to amend.

[00:14:56] Speaker 01:
But then the trial court would still have discretion whether to allow that.

[00:15:00] Speaker 01:
So we could be in exactly the same place.

[00:15:04] Speaker 01:
How does that help?

[00:15:06] Speaker 02:
Well, I think it does help us, Your Honor, because I think the point is that the district court didn't even consider that issue in reality because the court said, Fresneus says canceled claims means no case.

[00:15:22] Speaker 02:
And so basing everything off of Fresneus, I think the court

[00:15:27] Speaker 02:
that this issue of intervening rights 252, our ability to amend our infringement contentions, really wasn't a part of what the court was considering.

[00:15:38] Speaker 02:
As I read the court's order, and of course, it is certainly my view of the court's order, and the court may view differently, but the decision was made.

[00:15:48] Speaker 02:
Fresnia says the case is moved.

[00:15:52] Speaker 02:
because claims are canceled.

[00:15:53] Speaker 02:
And it doesn't matter that new claims.

[00:15:55] Speaker 01:
But the court said you can't move to amend because it was too late.

[00:15:58] Speaker 01:
And that ultimately said that means you're stuck with the original claims.

[00:16:01] Speaker 01:
Claims, right.

[00:16:01] Speaker 01:
Ergo presidius.

[00:16:04] Speaker 02:
Applies.

[00:16:04] Speaker 01:
OK.

[00:16:07] Speaker 02:
We'd respectfully request.

[00:16:09] Speaker 02:
Oh, did you have a question, Your Honor?

[00:16:10] Speaker 00:
No.

[00:16:11] Speaker 00:
I was going to ask you to sit down so we can hear from you.

[00:16:13] Speaker 02:
Thank you.

[00:16:24] Speaker 03:
May it please the court, good morning.

[00:16:26] Speaker 03:
Steve Slather of Collins Edmonds, Slather and Tower for the Appellee Extended Diss North America.

[00:16:32] Speaker 03:
Based on the undisputed facts in this case, the district court's decision to dismiss was both factually and legally correct and should be affirmed.

[00:16:42] Speaker 01:
Well, let me talk about procedurally correct.

[00:16:44] Speaker 01:
I mean, you have a case that's closed.

[00:16:46] Speaker 01:
He didn't just stay the case.

[00:16:48] Speaker 01:
He closed the case, right?

[00:16:50] Speaker 03:
Well, it was administratively closed.

[00:16:52] Speaker 01:
Yeah, well, we all know what district courts do.

[00:16:53] Speaker 01:
They claim it's administratively closed.

[00:16:56] Speaker 01:
And that way, it gets reopened and comes right back to you.

[00:16:58] Speaker 01:
And it gets off their report.

[00:16:59] Speaker 01:
But it's still closed.

[00:17:01] Speaker 01:
No matter what you call it, you have closed the case.

[00:17:03] Speaker 01:
You have nothing in place in terms of scheduling orders.

[00:17:07] Speaker 01:
Because otherwise, you both would have violated all the scheduling order, right?

[00:17:10] Speaker 03:
Right.

[00:17:11] Speaker 03:
As the court found that the deadlines

[00:17:15] Speaker 03:
then pending scheduling order had long passed.

[00:17:18] Speaker 01:
All right.

[00:17:18] Speaker 01:
So therefore, he said, for purpose of you being able to file a motion to dismiss or a motion for summary judgment, he said, therefore, you get to file whatever you want, because there was no scheduling order, so you couldn't have violated it, right?

[00:17:31] Speaker 03:
I don't know if he said we could file whatever we want, but he did not prohibit us from filing our permission.

[00:17:35] Speaker 01:
And he said, because there's no scheduling order, that would have said you had to do it sooner.

[00:17:39] Speaker 01:
Correct, Your Honor.

[00:17:40] Speaker 01:
Right?

[00:17:40] Speaker 01:
But then he applied the old scheduling order to the other side.

[00:17:45] Speaker 01:
to say they can't amend because it's too late.

[00:17:49] Speaker 03:
I disagree with that on a couple of points.

[00:17:52] Speaker 03:
First, they never asked to amend.

[00:17:54] Speaker 01:
They never sought leave to amend.

[00:17:55] Speaker 01:
We could debate whether the two places, one where they asked for a scheduling conference so they could then come back, and where they mentioned in that motion that there were new claims, and whether when they responded to your motion

[00:18:11] Speaker 01:
for summary judgment, which they didn't think you could procedurally file, they said, well, if we're going to go forward with this, Judge, please allow us to amend our claims.

[00:18:19] Speaker 01:
Because we all know the old claims are not issues we're supposed to be addressing right now.

[00:18:25] Speaker 01:
Right?

[00:18:25] Speaker 03:
No.

[00:18:27] Speaker 03:
I think so the procedurally, EDNA filed its motion.

[00:18:33] Speaker 03:
Shortly thereafter, TTI filed a notice, presumably notifying the court of the new claims.

[00:18:41] Speaker 03:
and asking for a scheduling conference.

[00:18:45] Speaker 03:
It was a notice.

[00:18:46] Speaker 03:
It required no action by the court.

[00:18:49] Speaker 01:
But it did in there both say, we want to talk about the infringement contentions and the issue of intervening rights as well.

[00:18:57] Speaker 03:
It did say that.

[00:19:00] Speaker 03:
Next, TTI filed a motion to strike.

[00:19:03] Speaker 03:
And again, they asked for a scheduling conference.

[00:19:06] Speaker 03:
They never asked to amend their contentions.

[00:19:09] Speaker 01:
They said they would be willing to amend their contentions if that was necessary, right?

[00:19:17] Speaker 03:
They asked for a scheduling conference where that could be discussed.

[00:19:21] Speaker 04:
So what do we have here in terms of the district court saying anything about a possible amendment?

[00:19:31] Speaker 04:
Did the district court say anything about that issue?

[00:19:34] Speaker 03:
I don't believe it did because TTI never asked.

[00:19:38] Speaker 03:
TTI never asked to amend.

[00:19:40] Speaker 03:
And so there was no reason for the court to address that.

[00:19:44] Speaker 01:
Well, didn't the court specifically said you didn't amend your infringement contentions?

[00:19:49] Speaker 01:
Ultimately, it did.

[00:19:50] Speaker 01:
Right.

[00:19:50] Speaker 01:
That was the basis for its ruling, was that the infringement contentions weren't previously amended.

[00:19:56] Speaker 03:
In part, that was the basis for its ruling.

[00:19:58] Speaker 04:
Could you show me where this language is?

[00:19:59] Speaker 04:
Because my recollection of this.

[00:20:02] Speaker 04:
is not that there was a ruling on it.

[00:20:05] Speaker 04:
Could you show me the language we're talking, that you and Judge O'Malley are talking about?

[00:20:10] Speaker 04:
Which language specifically, Your Honor?

[00:20:13] Speaker 04:
That's the problem.

[00:20:14] Speaker 04:
The language where he says something about the feather to a man.

[00:20:19] Speaker 04:
So, right, so in the courts... Is this on page 5, where he says, binds TTI to foreign infringement contentions unless TTI seeks leave to amend?

[00:20:30] Speaker 03:
Correct.

[00:20:31] Speaker 03:
Is that what we're talking about?

[00:20:32] Speaker 03:
I believe that's what we're talking about, Your Honor, yes.

[00:20:36] Speaker 04:
That doesn't seem to be a ruling on any request to amend.

[00:20:39] Speaker 04:
It seems to be a statement that there was no request to amend.

[00:20:42] Speaker 03:
I agree.

[00:20:43] Speaker 03:
And that goes to my point, Your Honor, that TTI never made a request to amend.

[00:20:49] Speaker 03:
And that's really the crux of the issue, or at least one of the issues here, is that there was just never a request.

[00:20:57] Speaker 03:
There was never an opportunity for the district court to consider it and decide that issue one way or the other.

[00:21:04] Speaker 00:
So why shouldn't we just vacate and remand?

[00:21:08] Speaker 00:
Assuming, let's assume hypothetically that we are prepared to agree that for purposes of intervening rights, the claims are substantially similar, or that summary judgment on that basis was appropriate.

[00:21:21] Speaker 00:
But why wouldn't we just remand it and let the court decide whether or not to amend the claims?

[00:21:27] Speaker 00:
And why is it not just more efficient?

[00:21:29] Speaker 00:
I mean, the court may have good reason not to, and that would be reviewed under abuse of discretion.

[00:21:34] Speaker 00:
But it seems to me it may be.

[00:21:36] Speaker 00:
that rather than just getting a new suit filed, it would make sense to amend this, and the district court may conclude that.

[00:21:43] Speaker 00:
So why shouldn't we at least give that opportunity?

[00:21:46] Speaker 03:
Well, because the TTI never asked for that relief.

[00:21:50] Speaker 03:
So it wasn't an error.

[00:21:54] Speaker 03:
There was no error at the district court.

[00:21:57] Speaker 03:
And so there's no basis to vacate or remand.

[00:22:04] Speaker 03:
The district court was correct.

[00:22:06] Speaker 03:
in its decision, and there's just no basis for not affirming that.

[00:22:14] Speaker 00:
Now, it's clear, is it not, that if we were to affirm this dismissal, it's without prejudice, so that there's nothing at all that would preclude their coming forward tomorrow and filing a new complaint based on the amended claims, right?

[00:22:29] Speaker 03:
So obviously, for the original claims, they couldn't.

[00:22:34] Speaker 03:
Those are gone.

[00:22:34] Speaker 03:
On the amended claims, certainly they're free to file any case that they want.

[00:22:45] Speaker 00:
Because I got the impression from their side that they were worried that they would be precluded somehow by this dismissal from filing a case or no.

[00:22:51] Speaker 03:
Well, I think there are significant issues of claim preclusion in this case.

[00:22:56] Speaker 04:
So if they file a lawsuit, what you're saying is you're going to argue claim preclusion because of the dismissal here?

[00:23:02] Speaker 04:
Correct.

[00:23:03] Speaker 03:
That's the problem.

[00:23:05] Speaker 03:
It is a problem for them, but it's a problem of their own making, largely.

[00:23:11] Speaker 03:
Because they didn't move to leave on that?

[00:23:13] Speaker 03:
Well, because their original claims were invalid, and because they then didn't ask the district court

[00:23:21] Speaker 03:
to allow them to amend their contentions to assert the new claims.

[00:23:25] Speaker 00:
But why would there be preclusion if the other suit was on the original claims?

[00:23:32] Speaker 00:
They've got to re-examine newly minted claims.

[00:23:35] Speaker 03:
So I think it was discussed a little bit earlier.

[00:23:38] Speaker 03:
It's based largely on the Senju case.

[00:23:42] Speaker 00:
Well, that's when there was a discussion.

[00:23:43] Speaker 00:
I think some of our discussion was, or at least we're all reading it.

[00:23:47] Speaker 00:
But assuming Senju was based on the dismissal on the merits.

[00:23:51] Speaker 00:
This is not dismissal on the merits, but on the merits of the former claims, not on the new claims.

[00:23:59] Speaker 00:
That's your whole point.

[00:24:00] Speaker 00:
They didn't amend it.

[00:24:01] Speaker 00:
The new claims, the newly minted claims, were not before the district court judge at all.

[00:24:06] Speaker 00:
So I would send to control.

[00:24:07] Speaker 03:
Well, I believe and send you that those facts were similar, that the original case

[00:24:15] Speaker 03:
The original case was decided, and then the plaintiff brought new claims based on newly added claims in a reexamination.

[00:24:24] Speaker 03:
And the court found that those new claims were precluded.

[00:24:29] Speaker 03:
because they were subsumed by the claims in the original case.

[00:24:35] Speaker 01:
Right, but the court had made substantive judgments as to infringement and validity on the original claims.

[00:24:43] Speaker 01:
Here, this court specifically said that it was simply dismissing the claim as moved.

[00:24:48] Speaker 03:
That's correct.

[00:24:48] Speaker 03:
And so that would be an issue that we would have to work through going forward, whether- Well, how can it be that if there's a dismissal of mootness, that that's a treated decision on the merits?

[00:24:59] Speaker 04:
I'm not aware of any race-judicata case that suggests that.

[00:25:05] Speaker 03:
I'm not arguing that here today.

[00:25:06] Speaker 03:
I'm saying- I know you're not.

[00:25:08] Speaker 03:
We're wondering whether you're going to be arguing a month from now.

[00:25:12] Speaker 03:
We may be, and that case wasn't part of the decision below.

[00:25:18] Speaker 03:
And so we would have to see.

[00:25:21] Speaker 04:
I think what we're looking for in order to lay our concerns is some statement on your part that a dismissal for mootness, which is what this is, wouldn't invoke the St.

[00:25:33] Speaker 04:
Jude bar.

[00:25:35] Speaker 03:
I don't know that that's the case, Your Honor.

[00:25:38] Speaker 03:
So I'm sorry.

[00:25:39] Speaker 00:
I cannot allay those concerns.

[00:25:40] Speaker 00:
What you mean is we have to say it if that's what we think.

[00:25:43] Speaker 00:
We can't rely on you saying.

[00:25:45] Speaker 03:
I cannot say that today.

[00:25:47] Speaker 03:
I'm sorry.

[00:25:52] Speaker 03:
So I think if we look at the record here, the district court

[00:26:04] Speaker 03:
has the authority to enforce its own patent rules.

[00:26:06] Speaker 03:
This court in Keranos, for instance, found that the enforcement of local rules is reviewed for abuse of discretion.

[00:26:18] Speaker 01:
I thought you just said the judge didn't enforce those rules.

[00:26:22] Speaker 01:
I thought you just said that he viewed it as never having been asked of him.

[00:26:28] Speaker 03:
I believe he enforced them to the extent that the claims

[00:26:33] Speaker 03:
the claims before him, the claims that he made, based his decision on, were the asserted claims, which were 1, 2, and 5 through 11.

[00:26:41] Speaker 00:
Oh, so your comments weren't dealing with the motion to amend, that he enforced the rules?

[00:26:45] Speaker 03:
Well, there was no motion to amend.

[00:26:46] Speaker 03:
But they were not directed towards the new claims.

[00:26:49] Speaker 03:
They were directed towards the... So here's the issue.

[00:26:53] Speaker 01:
The patent, I mean, the complaint generally alleges infringement of the patent.

[00:27:01] Speaker 01:
It doesn't specify every single claim.

[00:27:03] Speaker 01:
Then we have infringement contentions.

[00:27:07] Speaker 01:
So they later then assert infringement contentions.

[00:27:11] Speaker 01:
So when the judge said they didn't move to amend, it really wasn't the complaint that needed to be amended.

[00:27:17] Speaker 01:
It was only the infringement contentions, which were part of the original scheduling order, right?

[00:27:24] Speaker 03:
Right.

[00:27:24] Speaker 03:
So the infringement contention bound TTI

[00:27:30] Speaker 03:
these specific claims that they disclosed as part of those pursuant to the rules.

[00:27:43] Speaker 03:
There were intervening federal rule changes, and so whether it would comply today.

[00:27:50] Speaker 01:
Yeah, but there had not been a motion to dismiss on grounds that it wasn't specific enough.

[00:27:55] Speaker 01:
Right, so then that would have been your problem to ask the judge if you could move to dismiss the complaint.

[00:28:02] Speaker 01:
But you didn't move to dismiss the complaint based on its specificity.

[00:28:07] Speaker 03:
Right, we moved to dismiss based on

[00:28:11] Speaker 03:
TTI's contentions that they were asserting only a certain subset of claims, not necessarily the complaint as a whole.

[00:28:19] Speaker 01:
But again, it wasn't even a complaint.

[00:28:21] Speaker 03:
No, the complaint, I believe the complaint mentioned specifically claim one, but even as Judge Miller I believe mentioned in his order,

[00:28:31] Speaker 03:
The complaint was broad enough to encompass additional claims.

[00:28:35] Speaker 00:
So how would this work?

[00:28:36] Speaker 00:
If they had done what some of us think would have made life easier for all of us, and they had filed, we're not talking then about a motion to amend the complaint.

[00:28:45] Speaker 00:
Would they have had to press a motion to amend the infringement contentions?

[00:28:50] Speaker 03:
I think that's what they should have done here, and they just failed to do that.

[00:28:53] Speaker 04:
And that's what the district court was referring to on page five.

[00:28:56] Speaker 04:
It wasn't referring to a motion to amend the complaint.

[00:29:02] Speaker 04:
takes leave of court to amend the contentions.

[00:29:04] Speaker 03:
Correct.

[00:29:09] Speaker 03:
And they never moved to amend their contentions.

[00:29:11] Speaker 03:
So as I read the judge's order, the only claims he saw as being before him at that time were the claims that TTI specifically asserted in its contentions, all of which have been canceled.

[00:29:43] Speaker 00:
Time's almost up.

[00:29:44] Speaker 00:
Anything further?

[00:29:44] Speaker 00:
Thank you.

[00:29:45] Speaker 00:
Thank you.

[00:29:52] Speaker 02:
Just briefly, Your Honors, that is the concern that we have, as we have expected, based on prior.

[00:29:59] Speaker 00:
That is the concern, meaning the Senju concern?

[00:30:02] Speaker 02:
The Senju concern, that we're going to be faced with a whole new briefing, which will be, again, very likely, potentially, before you, depending on who wins, presumptively, it will come up either way.

[00:30:13] Speaker 02:
to say that this is, there is claim conclusion and we can't bring that.

[00:30:18] Speaker 02:
And we think that in light of the scheduling order that wasn't in place and our request to have a scheduling order to amend our contentions compliant with the re-examination, we request that this court remand the case.

[00:30:33] Speaker 00:
Thank you.

[00:30:33] Speaker 00:
We thank both sides and the cases are submitted.