[00:00:00] Speaker 00: Okay, the next argued case is number 17-13-14, Advantech Marketing Incorporated against Shanghai Woklong Tools. [00:00:15] Speaker 00: Mr. Wesley. [00:00:18] Speaker 01: Thank you, Your Honor, and may it please the Court, Keith Wesley, for Advantech Marketing, the plaintiff and appellant. [00:00:26] Speaker 01: This Court decides many, many, many [00:00:30] Speaker 01: extraordinarily complicated appeals with, for example, highly technical patent issues. [00:00:37] Speaker 01: This is not one of them. [00:00:40] Speaker 01: Advantech applied to register a design patent in a gazebo-like animal housing unit, both with a removable cover and without a cover. [00:00:53] Speaker 01: The examiner required Advantech to choose one or the other [00:00:57] Speaker 01: Advantech chose the gazebo without a cover. [00:01:02] Speaker 01: Defendants copied Advantech's patented design. [00:01:07] Speaker 01: Defendants are currently using a colorable imitation of Advantech's patented gazebo without a cover. [00:01:17] Speaker 01: Here is the critical fact that the district court overlooked or failed to understand. [00:01:24] Speaker 01: Advantech here [00:01:25] Speaker 01: is claiming that defendant's design without a cover, in other words, the design we have a patent on, infringes our patent. [00:01:36] Speaker 01: The district court misconstrued our claim. [00:01:39] Speaker 01: It's as simple as that. [00:01:41] Speaker 01: The district court believed that we were claiming that defendant's product when used with a cover was the accused product. [00:01:51] Speaker 01: And that's just not the case. [00:01:53] Speaker 04: Well, it's all derived from the fact that you put a picture in your complaint, correct? [00:01:59] Speaker 04: A picture of the accused's article that had a cover on it. [00:02:04] Speaker 01: I'm not sure if that was... That's a fact. [00:02:06] Speaker 04: That's in the complaint, correct? [00:02:08] Speaker 04: I'm trying to find the complaint in the record. [00:02:11] Speaker 04: Yeah, A-23. [00:02:12] Speaker 01: It is absolutely a fact, Judge Clevenger, that we put a picture of the defendant's product with the cover in the complaint. [00:02:21] Speaker 01: Whether or not that was [00:02:23] Speaker 01: What drove the district court to conclude that we were claiming only the iteration of the defendants? [00:02:30] Speaker 04: Well, if you hadn't had the picture of the accused gazebo with the lid on it, what would have been the basis for the motion to dismiss? [00:02:41] Speaker 01: Well, I guess damned if you do, damned if you don't on that one. [00:02:48] Speaker 01: That was the only picture we had, and we thought [00:02:51] Speaker 01: Well, it would be helpful for everyone to know what product we're claiming. [00:02:56] Speaker 01: However, we also included in the complaint an allegation that specified that what we were accusing as infringing was our patented design. [00:03:11] Speaker 01: And this is at APPX 25, paragraph 17 of our amended complaint says that [00:03:21] Speaker 01: They have infringed and continue to infringe by making, using, offering for sale, and or selling the patented design without the authority of Advantage. [00:03:33] Speaker 01: And so we made that clear in our complaint. [00:03:35] Speaker 01: And if it wasn't clear, there are two things that I want to bring to the Court's attention. [00:03:40] Speaker 04: And then in response to the motion dismissed, I believe your filing pointed out that the defendant's cover is removable, replaceable. [00:03:50] Speaker 04: Correct. [00:03:51] Speaker 04: You don't need to have the cover on it at all. [00:03:53] Speaker 04: I mean, if you want your patch to get some sun, you take the cover off. [00:03:57] Speaker 01: That's exactly right. [00:03:58] Speaker 01: And we felt like the district court should have been adequately apprised of our intent. [00:04:06] Speaker 01: And if you combine that with this... And then you asked for leave to amend. [00:04:10] Speaker 01: We did ask for leave to amend. [00:04:11] Speaker 01: And if you combine that with the standard that the district court was reviewing our complaint, it was a 12C motion, [00:04:19] Speaker 01: So the district court was required to construe all of our allegations and inferences as true. [00:04:25] Speaker 04: If you were to amend your complaint, presumably you would take the pictures out that show the cover. [00:04:32] Speaker 01: I'll go even further than that, Judge Cleminger. [00:04:34] Speaker 01: We have new pictures with them affirmatively marketing the product without a cover. [00:04:41] Speaker 01: So we would replace the old confusing pictures with new pictures that make it 100% clear [00:04:48] Speaker 01: absolutely polluted that we are accusing. [00:04:54] Speaker 04: I must confess, I did not download or try to download the record from the district court. [00:05:00] Speaker 04: But you had a motion or a leave to amend on the docket. [00:05:06] Speaker 04: Was it actually denied when the case was closed? [00:05:08] Speaker 04: Or it looked to me as if the judge was either unaware that you had a motion to amend or didn't address it. [00:05:17] Speaker 01: I can't recall that. [00:05:19] Speaker 01: I know we amended prior to the defendant's answering to add some alternative claims. [00:05:25] Speaker 01: And I don't recall a motion for leave to amend on the docket. [00:05:32] Speaker 01: But what I would say [00:05:34] Speaker 04: is that you moved to amend the complaint, correct? [00:05:40] Speaker 04: You have a First Amendment amended complaint. [00:05:43] Speaker 04: It has some more allegations in it, right? [00:05:45] Speaker 01: Correct. [00:05:46] Speaker 04: Did you seek to amend after that? [00:05:49] Speaker 01: Well, in response to their motion, we asked the district court to for leave to amend. [00:05:59] Speaker 01: And we did not file a separate motion. [00:06:02] Speaker 04: Let me say this because... When you asked for a leave to amend, is that oral? [00:06:06] Speaker 01: Well, it was in our brief, and the reason why it wasn't oral was because the judge took the matter under submission, so we never had an opportunity to appear in front of the judge. [00:06:17] Speaker 01: And I just want to make one point clear on the leave to amend, because I know my adversary took issue with the fact that our request was in a footnote. [00:06:28] Speaker 01: We're operating here under Ninth Circuit procedural law, and [00:06:32] Speaker 01: The operative case that I wanted to bring to the court's attention is Sharkey versus O'Neill. [00:06:39] Speaker 01: This is 778, F3D, 767, Pinsight 775. [00:06:45] Speaker 01: I'm sorry, Pinsight 774. [00:06:49] Speaker 01: This is a 2015 decision of the Ninth Circuit. [00:06:53] Speaker 01: And it says, I quote, dismissal with prejudice constitutes an abuse of discretion where the district court fails to make a determination [00:07:03] Speaker 01: that the pleading could not possibly be cured by the allegation of other facts. [00:07:07] Speaker 01: And this is the important point. [00:07:09] Speaker 01: And this is so even if no request to amend the pleading was made. [00:07:15] Speaker 01: So where we're from in the Ninth Circuit, it is reversible error to deny leave to amend, even if we never mentioned it, which we did. [00:07:26] Speaker 01: And so I think under these circumstances, [00:07:31] Speaker 01: It's clear. [00:07:32] Speaker 04: I mean, the general rule is that leave to a man should be freely granted. [00:07:35] Speaker 04: Absolutely. [00:07:36] Speaker 04: Unless you can show prejudice. [00:07:38] Speaker 04: And the argument your adversary is making is not prejudice, but that they say would be futile. [00:07:44] Speaker 00: We're getting off on a sidetrack. [00:07:47] Speaker 00: I think let's stick with the argument as I understand it, which is that the designs are the same. [00:08:00] Speaker 01: In our view, the designs are exactly the same, and that's what we alleged. [00:08:05] Speaker 01: Now, they're going to say that, but we added a removable cover, and that's the design that you decided in front of the examiner to withdraw. [00:08:19] Speaker 01: But, again, the key point here is that we're not alleging that their design with the cover is the infringing product. [00:08:27] Speaker 01: We're alleging that a component of their design [00:08:30] Speaker 01: that oftentimes is used without a cover, which we can allege in our amended complaint, that's the accused product. [00:08:37] Speaker 04: Well, who else wants their design as their product? [00:08:40] Speaker 04: When you say their design, I mean, it's their product. [00:08:44] Speaker 04: They may personally view their design just to be the superstructure and not the cover. [00:08:50] Speaker 04: Their product has the cover on it. [00:08:53] Speaker 01: Well, in our view, their product can have the cover on it, and it cannot. [00:08:58] Speaker 01: And that's exactly what we would [00:08:59] Speaker 01: allege if we were given the opportunity. [00:09:04] Speaker 04: I mean, if you were to bring a lawsuit against your adversary for the cover, if you simply said, we are alleging that their cover infringes our patent, it would be a frivolous complaint. [00:09:17] Speaker 04: You'd be sanctioned for that. [00:09:19] Speaker 01: Exactly right. [00:09:20] Speaker 04: You think your patent can't possibly cover a cover? [00:09:24] Speaker 01: Absolutely. [00:09:25] Speaker 01: And I believe that the defendants here can use the exact cover [00:09:29] Speaker 01: that we use. [00:09:30] Speaker 01: They just can't use the underlying structure because we have a patent on it. [00:09:35] Speaker 01: And that's straight from the Samsung and Apple case saying that a component part of a defendant's product can infringe. [00:09:43] Speaker 01: It doesn't need to be the entire product. [00:09:45] Speaker 01: It can be a component. [00:09:47] Speaker 02: Did you ever file a divisional on the gazebo with the gazebo roof? [00:09:53] Speaker 01: My understanding is there is an application pending with the roof. [00:09:59] Speaker 00: Pending, going back to the original date, or what's still pending? [00:10:04] Speaker 00: A division after the election was made. [00:10:10] Speaker 01: Correct. [00:10:10] Speaker 00: That's my understanding. [00:10:11] Speaker 00: A division would have had to have been filed within a certain time frame. [00:10:16] Speaker 00: You're saying that you think that was done? [00:10:18] Speaker 01: That's my understanding, yes. [00:10:24] Speaker 02: So what about Pacific Coast? [00:10:26] Speaker 02: I mean, that's the case that the judge below relied on, including, well, those restricted out designs in that particular case were disclaimed, essentially, and lost in terms of being able to capture coverage by using the elected design. [00:10:50] Speaker 01: Sure. [00:10:51] Speaker 02: Why don't we just apply that here, in concluding that there were really two embodiments at stake. [00:10:59] Speaker 02: A kennel with a cover, and a kennel without a cover. [00:11:02] Speaker 02: You elected the kennel without a cover, and so you don't get the kennel with a cover. [00:11:08] Speaker 01: Well, Your Honor, in my view, Pacific Coast actually supports us. [00:11:13] Speaker 01: There, the plaintiff claimed a variety of windshield designs. [00:11:18] Speaker 01: ultimately patented a single design with four holes and then was accusing a windshield with three holes that it had never abandoned. [00:11:28] Speaker 01: And this court found no estoppel under those circumstances. [00:11:33] Speaker 01: Here as well, the product that we're accusing of infringing is the underlying shell or the cage or we've called it the skeletal structure. [00:11:45] Speaker 01: It's everything except that vinyl on top of it. [00:11:48] Speaker 01: And that's what we own the patent in, and that's what we never withdrew when we were in front of the patent office. [00:11:54] Speaker 01: So under Pacific Coast, I think we're rock solid. [00:12:03] Speaker 01: If the court has... Oh, I'm sorry, Your Honor. [00:12:06] Speaker 00: I didn't mean to stop you mid-sentence. [00:12:09] Speaker 01: I was just going to say if the court has nothing else, I was going to reserve for any rebuttal. [00:12:13] Speaker 00: Fair enough. [00:12:13] Speaker 00: Let's hear from the other side. [00:12:18] Speaker 00: Mr. Goldberg? [00:12:20] Speaker 03: Good morning, Your Honors, and may it please the Court. [00:12:24] Speaker 03: This is a case about notice, the notice function of a patent and its prosecution history that the public, including the appellate. [00:12:33] Speaker 00: It's a case of whether the designs are the same. [00:12:35] Speaker 03: The claims that were brought relates to infringement of a design patent. [00:12:41] Speaker 03: And this appeal, I would pause, it relates. [00:12:44] Speaker 03: There's a common thread, which is notice. [00:12:47] Speaker 03: And this is what I want to talk about a bit this morning, is the notice function of a patent. [00:12:52] Speaker 03: If you look at the appendix, page 14, it's the first page of Advantex patent in this case. [00:12:57] Speaker 00: Every patent says this is what I claim. [00:13:00] Speaker 00: So here they claim that this hexagonal structure. [00:13:04] Speaker 03: Actually, they claim an octagonal, and our product is hexagonal. [00:13:08] Speaker 00: Octagonal, okay. [00:13:10] Speaker 03: however many is a big difference actually there's eight ours is six your honor but sorry but from the pictures it looks as if they're the same whether it's octagonal whatever from the comparison of their product as opposed to their design to drawings there is a certain facial similarity to one of the figures I would agree with that your honor but they are there are so many differences that are actually not [00:13:37] Speaker 03: that issue yet. [00:13:38] Speaker 04: We haven't gotten to that stage of the case. [00:13:40] Speaker 03: That's for later if we have to deal with that. [00:13:42] Speaker 04: What would your view be if in the complaint they hadn't had the picture of your client's product with the lid on, but they'd gone out and snapped a picture of one with the lid off? [00:13:56] Speaker 04: Yeah, in their complaint, Your Honor, you would not have an estoppel argument. [00:14:01] Speaker 03: I think we would, Your Honor, because [00:14:03] Speaker 03: They make a big deal in one of their briefs about being the master of the complaint. [00:14:06] Speaker 03: And they talk about it. [00:14:07] Speaker 00: Where does an estoppel come in if you're given a restriction requirement and you respond by making the choice? [00:14:16] Speaker 00: Where are you estopped? [00:14:19] Speaker 03: You're estopped with respect under Pacific Coast, Your Honor. [00:14:22] Speaker 03: You're estopped with respect to the design that you have surrendered. [00:14:27] Speaker 03: So the design that they surrendered was an ornamental design for a gazebo [00:14:32] Speaker 03: with a cover. [00:14:34] Speaker 03: And so the estoppel applies to a design, that specific design for a gazebo with a cover. [00:14:40] Speaker 00: A non-elected species is not an estoppel. [00:14:46] Speaker 00: A design patent is not. [00:14:48] Speaker 00: A design patent operates on different principles. [00:14:52] Speaker 00: You are entitled to the design that you present and that you picture. [00:14:59] Speaker 03: Yes, Your Honor. [00:15:00] Speaker 00: But then you say you could have [00:15:02] Speaker 00: claimed a whole bunch of other things which you didn't claim, which embellish your design. [00:15:06] Speaker 00: Therefore, you're stopped from enforcing your design patent against that which you have patented in the design that you picture? [00:15:19] Speaker 03: We're relying on the Federal Circuit's decision in Pacific Coast, Your Honor, which is on all fours with this case. [00:15:26] Speaker 03: It's exactly the same circumstance, a design patent with [00:15:31] Speaker 03: different sets of drawings and there was a restriction requirement by the examiner and based on the restriction requirement the patent applicant withdrew certain drawings. [00:15:46] Speaker 03: That was held by the Federal Circuit in Pacific Coast to give rise to prosecution history estoppel. [00:15:52] Speaker 02: In the design patent? [00:15:53] Speaker 03: In a design patent case. [00:15:54] Speaker 02: And it specifically didn't comment about the utility patent? [00:15:57] Speaker 03: Correct. [00:15:57] Speaker 03: That's correct Judge Chen. [00:16:00] Speaker 03: So [00:16:01] Speaker 03: What I want to emphasize, and just in response to Judge Clevenger's question about the photo, what the plaintiff and appellant, Edvantek, did in his complaint was more than just put a photo. [00:16:15] Speaker 03: They defined the accused product. [00:16:19] Speaker 03: And if you look at the appendix page 24, the body of the complaint, this is their first amended complaint. [00:16:33] Speaker 03: it's very clear as to what is accused of infringement. [00:16:36] Speaker 03: It's the whole product. [00:16:38] Speaker 03: The pet companion, outdoor pet kennel. [00:16:40] Speaker 03: And that is specifically a defined term in the complaint. [00:16:44] Speaker 02: But I think there's a little bit of ambiguity here. [00:16:47] Speaker 02: Because yes, they point to the commercial product you have out there on the market. [00:16:53] Speaker 02: But the commercial product you have on the market has a cage that [00:16:59] Speaker 02: is at least similar to the patented design of a cage. [00:17:04] Speaker 02: And so in that respect, one could read this complaint as targeting just those aspects of the defendant's commercial product that look very much like, but I won't say substantially similar, just looks like the 006 design. [00:17:23] Speaker 03: Your Honor, I can understand an argument [00:17:28] Speaker 03: that the complaint can be read in different ways. [00:17:31] Speaker 03: I actually don't agree, frankly, but I can see how someone might argue that. [00:17:35] Speaker 03: But I would say when you read the actual text, they're the master of their complaint, and they said they're accusing the product. [00:17:41] Speaker 03: They didn't say we're accusing the cage, the skeletal structure. [00:17:45] Speaker 03: They said they're accusing the product, and they put a picture of the whole product with the cover. [00:17:49] Speaker 03: And frankly, I think that's what they were doing. [00:17:51] Speaker 04: They could amend the complaint to get rid of any ambiguity. [00:17:55] Speaker 03: They could have, once we pointed out the prosecution history, which I think came as a surprise to them, they could have said, oh, well, our patent actually is different. [00:18:03] Speaker 04: That's what they asked. [00:18:04] Speaker 04: Whether in a footnote or otherwise, they said, we'd like to amend our complaint. [00:18:09] Speaker 04: So why shouldn't we send it back and let them amend their complaint? [00:18:14] Speaker 03: I'll explain, Your Honor. [00:18:15] Speaker 03: It's sort of a three-step process. [00:18:19] Speaker 03: accused here. [00:18:20] Speaker 03: What does the complaint say? [00:18:21] Speaker 04: And we believe under Twombly... I was asking what are the reasons why we shouldn't send it back and let them amend the complaint? [00:18:30] Speaker 03: Understood, Your Honor. [00:18:33] Speaker 03: So under Twombly, an amendment has to do more than just have threadbare conclusory statements. [00:18:40] Speaker 03: What they want to say is that they're accusing the patented design. [00:18:43] Speaker 03: That's not what they did in the first amendment complaint. [00:18:46] Speaker 03: That's not what they'd be allowed to do in [00:18:48] Speaker 03: a second amended complaint. [00:18:49] Speaker 03: You can't just say what we're accusing is the patent design. [00:18:52] Speaker 04: Well that's an interesting question, but I mean that could arise on if you send it back and they want to amend the complaint and then you argue with the judge they can't amend the complaint, maybe that would be so. [00:19:03] Speaker 04: But at the moment there seems to be some dispute as to what the complaint is covering and ordinarily you allow an amendment to the complaint or try to amend it. [00:19:11] Speaker 03: So a couple of things, Your Honor. [00:19:13] Speaker 03: What does their patent claim? [00:19:16] Speaker 03: And they say [00:19:17] Speaker 03: You just look at the drawings. [00:19:20] Speaker 03: And I understand that that is sort of a very rough way that people think about design patents. [00:19:25] Speaker 03: If you look at appendix page 14, which is, I would urge your honors to look at appendix page 14, the first page of their patent. [00:19:35] Speaker 03: There's one sentence under the heading of claim. [00:19:41] Speaker 03: And the one sentence under the heading of claim in their patent [00:19:47] Speaker 03: says the ornamental design for a gazebo, as shown and described. [00:19:55] Speaker 00: That's how you claim designs. [00:19:57] Speaker 03: And this is? [00:19:59] Speaker 00: That's all you can do? [00:20:00] Speaker 03: Right. [00:20:01] Speaker 03: And so you give context. [00:20:03] Speaker 03: They're not saying, when you look at a drawing, you don't know, is this a tattoo? [00:20:09] Speaker 03: What's the size? [00:20:10] Speaker 03: What is this context? [00:20:11] Speaker 03: The claim sentence says it's for a gazebo. [00:20:14] Speaker 00: With a picture. [00:20:15] Speaker 03: Right? [00:20:16] Speaker 03: as shown and described. [00:20:19] Speaker 03: And then the description says, figure one is a top perspective view showing my new gazebo design. [00:20:25] Speaker 00: That's how you're required to claim. [00:20:27] Speaker 00: That's right, Your Honor. [00:20:27] Speaker 00: Put in any more and they scold you. [00:20:30] Speaker 03: And if they were just seeking a design on a component, they could have explained, we're seeking an ornamental design for the skeletal structure that supports a gazebo. [00:20:42] Speaker 02: Is there any case law that requires them [00:20:46] Speaker 02: so specifically articulate what it is that their design is? [00:20:52] Speaker 02: That it's just a component of a larger product as opposed to the full and complete and finished product. [00:21:01] Speaker 02: And don't you dare change one iota of it. [00:21:05] Speaker 03: Well, I would think, Your Honor, the public's entitled to rely on what they actually do say. [00:21:09] Speaker 03: Whether they were required to say anything more, what they have said is that this is a design for a gazebo. [00:21:15] Speaker 03: And again, [00:21:17] Speaker 02: So your argument right now is separate and independent from any prosecution history estoppel idea. [00:21:25] Speaker 02: You're just saying, just based on the four corners of this page of the 006 patent, they are constrained to coverage to just this particular item, and no add-ons can be included that would infringe this patent. [00:21:45] Speaker 02: Is that your argument? [00:21:47] Speaker 03: Well, I'm really trying to get to an answer. [00:21:50] Speaker 03: It's a little bit roundabout. [00:21:51] Speaker 03: I'm really trying to answer Judge Clevenger's question around notice. [00:21:54] Speaker 03: I mean, I'm sorry, around amendment. [00:21:55] Speaker 02: I'm sorry. [00:21:56] Speaker 02: Before you walk away from me, can you just answer my question? [00:21:57] Speaker 03: And I'm not trying to walk away from you, Your Honor. [00:21:59] Speaker 03: Yes, so. [00:22:00] Speaker 02: What's your answer to that? [00:22:01] Speaker 03: So the answer is they were, because of prosecution history estoppel, they have surrendered a specific modification, if you would, or a specific version, [00:22:16] Speaker 03: that would include a cover. [00:22:17] Speaker 00: But they didn't surrender it for patentability. [00:22:20] Speaker 00: That's the difference between the cases that are being cited. [00:22:24] Speaker 00: They surrendered it in response to a restriction requirement. [00:22:28] Speaker 03: Respectfully, Your Honor, the Federal Circuit and the Pacific Coast case stated that when you do that, it is a reason of patentability, that you're not going to get your patent unless you do that. [00:22:39] Speaker 03: And so therefore, it does count for prosecution history estoppel as a surrender for reasons of patentability. [00:22:45] Speaker 03: I would understand, Your Honor, if you choose to take issue with Pacific Coast. [00:22:50] Speaker 03: That's a different question. [00:22:51] Speaker 03: But that was stated in that case. [00:22:54] Speaker 03: But I do really want to, I know my time's getting short here, and I want to answer Judge Clevenger's question about amendment. [00:23:01] Speaker 03: And going back to notice, they did not file a notice motion. [00:23:07] Speaker 03: So they didn't say, if we are [00:23:13] Speaker 03: If our pleading is defective, if prosecution history estoppel applies based on what we've accused in our first amended complaint, please give us a chance to file a second amended complaint. [00:23:22] Speaker 03: They didn't do it in a formal motion, not saying they had to, but they didn't. [00:23:25] Speaker 03: They did it in a footnote. [00:23:28] Speaker 03: And the key thing that they did was specify what they would have done in an amended pleading. [00:23:35] Speaker 03: So they shouldn't be given the benefit [00:23:39] Speaker 03: of any possible bleeding under the sun, but they said what we would do, Your Honor, is allege that during assembly you can see the skeletal structure without a cover. [00:23:52] Speaker 04: They might not even say that. [00:23:53] Speaker 04: They might just take a picture of one of your devices that doesn't have a cover on it. [00:23:58] Speaker 03: They didn't say they would do that, Your Honor? [00:23:59] Speaker 04: Well, I don't know what they're going to... What they said to the judge by way of amendment is quite thin. [00:24:05] Speaker 04: It's in a footnote. [00:24:06] Speaker 03: And I think they have to be held to that, Your Honor. [00:24:08] Speaker 04: Well, I understand that. [00:24:09] Speaker 04: But I mean, listening to the disagreement between the two of you about what's at stake here and what's actually being charged and whatnot, and in a circuit where amending complaints is very, very liberally granted, I'm just wondering why the proper resolution in this case isn't a vacate and send it back. [00:24:29] Speaker 04: Judge Reel seemed to think that prosecution history's top will totally [00:24:34] Speaker 04: got rid of the entire case, there wasn't any possibility of suing against the disabled. [00:24:39] Speaker 04: One of your clients, you know, the fabric blew away so they had to order a new one and so for several months they had a structure sitting out there that was without a cover on it. [00:24:52] Speaker 04: So all I'm saying is I just wonder in my own mind why the better result isn't to put this case in the posture where the plant really wants to have its case. [00:25:04] Speaker 04: And that would be by giving the commitment. [00:25:06] Speaker 04: Now, on remand, you could argue, well, I'm terribly sorry, but under Twombly, you're not allowed to have the amendment you want to have. [00:25:14] Speaker 04: And that would further sharpen the debate about what's really at stake in this case. [00:25:19] Speaker 03: Well, Your Honor, cases have to be decided based on what was presented [00:25:25] Speaker 04: We have to decide what's fair and just as well as lawful in the circumstances of this case the way it's served up. [00:25:31] Speaker 03: Of course and what's fair and lawful and what's appropriate is to hold them to what they said in their papers because at appendix page 240 their opposition to the motion. [00:25:40] Speaker 04: Right but you have to agree with me that if they actually brought a lawsuit against you and said we are suing you because you've got a cover [00:25:47] Speaker 04: on your gazebo and your cover infringes our patent, that would be a frivolous complaint. [00:25:51] Speaker 04: You'd ask for sanctions. [00:25:53] Speaker 04: Of course. [00:25:53] Speaker 04: Against that. [00:25:54] Speaker 03: That's what they did. [00:25:55] Speaker 04: And that's the way the judge thought, that's what the judge thought was coming down the pipe here. [00:25:59] Speaker 03: That's what it was. [00:26:00] Speaker 03: In our view, that's what it was. [00:26:01] Speaker 03: Exactly. [00:26:01] Speaker 03: But Your Honor, what they said to the court, this is, I haven't made my main point to you, which is, with respect to amendment, they told Judge Reel there were two things that they could do in an amendment. [00:26:14] Speaker 03: One was to say that under common sense, [00:26:17] Speaker 03: During assembly, you would see the skeletal structure without a cover. [00:26:22] Speaker 03: And as a matter of law, that is not enough. [00:26:26] Speaker 03: And Judge Real is right. [00:26:27] Speaker 03: That would not be enough to find infringement, because you don't look at it during assembly. [00:26:33] Speaker 03: You look during normal use. [00:26:34] Speaker 04: And the court in the case is a- He didn't really respond to that. [00:26:38] Speaker 04: I mean, the two of you disagreed about exactly how far InReWeb goes about assembly where there's assembly in. [00:26:47] Speaker 03: Right. [00:26:47] Speaker 04: Your take on that case law is different from his. [00:26:50] Speaker 04: That's another point of dispute between the two of you that didn't actually get resolved. [00:26:55] Speaker 03: Well, Your Honor, if this Court finds that you can judge infringement during assembly, then we would agree that if their patent were for a component, then you could have a complaint on this one basis, right? [00:27:13] Speaker 03: We think that the complaint's frivolous for so many other reasons. [00:27:15] Speaker 04: It's a much more interesting case than Judge Real thought it was. [00:27:21] Speaker 02: Do all elements of a design have to be easily viewable from 10 feet away for there to be design infringement? [00:27:31] Speaker 02: If someone else appropriates that very design, but perhaps a piece of the design is at least hidden from if you look at it from 10 feet away? [00:27:42] Speaker 03: You have to be able, the ordinary observer has to be able [00:27:45] Speaker 03: to see the aspect. [00:27:47] Speaker 04: At some point. [00:27:49] Speaker 03: Yeah. [00:27:49] Speaker 03: And you judge by all four designs in this situation, since it's four figures. [00:27:54] Speaker 03: But the very last thing I want to say is what they told Judge Reel was discovery would likely develop additional points in the normal use beyond assembly. [00:28:03] Speaker 03: So all they said that they had evidence was, they didn't even say evidence, but they said common sense is that you see it during assembly. [00:28:09] Speaker 03: And then they said discovery would likely give them evidence. [00:28:13] Speaker 03: That is not the basis for a complaint. [00:28:15] Speaker 03: You can't file a complaint saying, we think if we take discovery, we'll have evidence. [00:28:20] Speaker 03: And so they did not have a basis for an amendment. [00:28:23] Speaker 03: And that's the only thing that was in front of Judge Reel. [00:28:26] Speaker 03: So there was nothing they put in front of Judge Reel that would give him any basis for thinking that they have anything that they could do in an amendment. [00:28:34] Speaker 03: Thank you very much, Your Honors. [00:28:35] Speaker 00: Appreciate your time. [00:28:39] Speaker 00: Thank you. [00:28:40] Speaker 00: Mr. Wesley. [00:28:42] Speaker 01: Thank you, your honor. [00:28:44] Speaker 01: I'd remind the court that under the Sharkey case, we didn't even have to mention an amendment. [00:28:49] Speaker 01: It would have been an abuse of discretion for Judge Reel to deny us leave, even if we hadn't asked. [00:28:55] Speaker 01: That's the law of the circuit. [00:28:56] Speaker 01: And so counsel's arguments regarding what we said, what we might do, are irrelevant. [00:29:03] Speaker 01: In fact, what we would do is include a picture of the actual accused's design, the skeletal structure, and we would [00:29:11] Speaker 01: include allegations as to how it's actually used. [00:29:15] Speaker 01: To Judge Chen's question, in terms of infringement, we know that this court has said that you have to look at the entirety of the product when judging infringement. [00:29:30] Speaker 01: The Contessa case, the bottom of the shrimp tray, the Crocs case, the inside of a shoe, we're not just looking at a particular piece or [00:29:41] Speaker 01: We're not only looking at accused products up close. [00:29:45] Speaker 01: We're looking at the entirety of the design. [00:29:48] Speaker 01: Finally, overall point, what the defendants are asking is really a gotcha result. [00:29:54] Speaker 01: They're saying, well, you used the wrong word in your complaint. [00:29:58] Speaker 01: You put quotes around accused product. [00:30:01] Speaker 01: So too bad. [00:30:02] Speaker 01: We can forget about what the defendants did. [00:30:06] Speaker 01: Summary judgment, case closed. [00:30:09] Speaker 01: That's not fair. [00:30:10] Speaker 01: My client did everything right here. [00:30:13] Speaker 01: Created an original interesting design, applied for a patent, the attorney chose one iteration, and now, if prosecution history estoppel applies, the patent's rendered worthless. [00:30:26] Speaker 01: Just throw a vinyl cover over our design and you're free to copy it exactly. [00:30:31] Speaker 01: That's not how the design patent laws should work, and I don't think that that's the message this court wants to send. [00:30:38] Speaker 02: What would you say is the [00:30:40] Speaker 02: contribution to the ornamental arts with the 006 design, this octagonal cage. [00:30:49] Speaker 02: What makes this so pretty? [00:30:52] Speaker 01: Well, I don't think the standard, Your Honor, is that it's pretty. [00:30:55] Speaker 02: Okay, well there's some kind of ornamental design requirement and I'm just trying to figure out what is it that you think this is the ornamentation [00:31:06] Speaker 01: I'd say art is in the eye of the beholder, and in the eye of the examiner, they found it ornamental enough for it to be considered a design patent. [00:31:15] Speaker 01: I'd say it's prettier than the shrimp tray in Contessa, and perhaps the crock in International Seaway. [00:31:25] Speaker 01: Unless the court has any other questions, I'll... Thank you. [00:31:29] Speaker 00: Thank you. [00:31:30] Speaker 00: Thank you both. [00:31:31] Speaker 00: The case is taken under submission.