[00:00:46] Speaker 02:
Mr. Nace, is that correct?

[00:00:48] Speaker 01:
Yes, your honor.

[00:00:49] Speaker 02:
And you set aside five minutes of your time for rebuttal?

[00:00:52] Speaker 02:
Yes, your honor.

[00:00:54] Speaker 02:
Okay.

[00:00:54] Speaker 02:
Hold just a second.

[00:00:54] Speaker 02:
Let's go to counsel.

[00:00:56] Speaker 02:
Oh, sorry.

[00:00:57] Speaker 02:
Okay.

[00:00:57] Speaker 01:
May it please the court.

[00:01:01] Speaker 01:
Counsel, Christopher Nace on behalf of Disc Disease Solutions.

[00:01:06] Speaker 01:
Disc Disease Solutions respectfully brings this appeal because the district court erroneously imposed

[00:01:12] Speaker 01:
a heightened pleading standard at the Rule 12b6 stage.

[00:01:17] Speaker 01:
The district court erred because it failed to appreciate that the abrogation of Rule 84 and Form 18 did not overturn this court's precedent.

[00:01:26] Speaker 02:
Let me have you address a kind of like a threshold question that I have here.

[00:01:31] Speaker 02:
In your motion to amend the judgment and also your motion for reconsideration,

[00:01:38] Speaker 02:
Do I understand correctly that up until that point in time, you had not filed a second amended motion or actually even a motion to amend the complaint?

[00:01:47] Speaker 01:
That's correct.

[00:01:48] Speaker 01:
We had not filed a motion.

[00:01:49] Speaker 01:
Why didn't you do that?

[00:01:51] Speaker 01:
Well, at the time, in our responsive brief, we indicated, and albeit in a footnote, that if the court agreed that our pleading was inadequate, we asked for leave to amend.

[00:02:06] Speaker 01:
We did not file a separate motion.

[00:02:08] Speaker 01:
at the time.

[00:02:09] Speaker 03:
The Eleventh Circuit law is pretty clear and consistent that a footnote contained in opposition to a motion to dismiss doesn't serve as a valid request to amend.

[00:02:23] Speaker 03:
Posner v. Essex and Rosenberg v. Gold in the Eleventh Circuit stand for that express principle.

[00:02:29] Speaker 01:
How do you get by them?

[00:02:30] Speaker 01:
Well, I think that the Eleventh Circuit also has a strong precedent for allowing parties that when there is

[00:02:37] Speaker 01:
a motion to dismiss or a will told be six motion where the deficiency in the pleading can be corrected by an amendment.

[00:02:45] Speaker 01:
The 11th circuit has strong precedent that says the party ought to be able, given that opportunity.

[00:02:49] Speaker 01:
You asked for it.

[00:02:50] Speaker 01:
I don't know that... You're not answering my question.

[00:02:54] Speaker 01:
No, I mean to answer in this regard.

[00:02:57] Speaker 01:
I was thinking about your exact question, about whether asking for it is the only way

[00:03:06] Speaker 01:
under the rules of civil procedure that you get the opportunity to amend.

[00:03:11] Speaker 01:
And the reason that I'm thinking that is... No, sometimes you can amend it right if you do it early enough.

[00:03:15] Speaker 01:
That's right.

[00:03:16] Speaker 01:
And oftentimes, in fact, scheduling orders generally have included in them deadlines by which pleadings are to be amended as well.

[00:03:24] Speaker 01:
So I don't believe that Rule 15 is the sum and substance of the entire opportunity to amend.

[00:03:32] Speaker 03:
It is when you get to that point.

[00:03:35] Speaker 03:
according to the 11th Circuit, you have to ask.

[00:03:40] Speaker 04:
Does Rule 15 specify the procedure through which you have to ask?

[00:03:47] Speaker 04:
Does it say you have to file a motion?

[00:03:49] Speaker 01:
There is a local rule in the middle district that indicates, and I believe it's also 11th Circuit rules, case law as well, that indicates that the way to present

[00:04:03] Speaker 01:
a request to the court is through motion.

[00:04:06] Speaker 01:
We don't disagree with that.

[00:04:07] Speaker 01:
That case law is what it is.

[00:04:10] Speaker 01:
My point on the amendment, though, and again, this is what I was contemplating as I was preparing today, is that you do have Rule 15 that lays out that when you can amend as a matter of right, when you have to ask parties consent, when you have to ask court consent.

[00:04:24] Speaker 01:
But you also have, under scheduling orders, a deadline that is often set by when you can make amendments to pleadings.

[00:04:32] Speaker 01:
in part because things come up in discovery and the scheduling orders often permit an opportunity to amend even after certain deadlines have come and gone.

[00:04:44] Speaker 01:
And the reason I raise that is because if you have a scheduling order which was suspended, which was delayed in this case on the request of the defendant appellees,

[00:04:58] Speaker 01:
that we not enter a scheduling order while the briefing was taking place, an issue that we opposed.

[00:05:03] Speaker 01:
But if you have that deadline set by the scheduling order, I think you still then can amend as a matter of right at that point once the scheduling order says this is the deadline by which amendments are due.

[00:05:18] Speaker 02:
That could be, but you never did move to amend.

[00:05:21] Speaker 01:
We did not move to amend.

[00:05:22] Speaker 01:
That argument doesn't help you.

[00:05:25] Speaker 01:
Well, again, we believe

[00:05:28] Speaker 01:
that even though it wasn't a footnote, and I agree with your honor that the case law in the 11th Circuit is that a footnote is not the appropriate way.

[00:05:37] Speaker 01:
But again, when you get into the strong preference in the 11th Circuit to have cases decided on the merits, and when you have the strong inference that if a pleading can be corrected by amendment, that plaintiffs ought to be given that opportunity, I think at that point,

[00:05:57] Speaker 01:
When you're looking at whether we asked in a footnote, whether it was by motion to reconsider, by request to alter or amend the judgment, there's a whole host of ways to get there.

[00:06:09] Speaker 01:
Not only, by the way, the fact that the case was dismissed with prejudice.

[00:06:17] Speaker 01:
If it had been dismissed without prejudice, then we could have refiled a pleading that

[00:06:24] Speaker 03:
So the analysis on that comes down to futility.

[00:06:29] Speaker 04:
Can I ask you something?

[00:06:30] Speaker 04:
I'm a little surprised that you made that statement because it seems to me the fact that the original decision by the district court, it wasn't clear to me whether it was with prejudice or without prejudice.

[00:06:41] Speaker 04:
And so therefore it's hard to say that your motion to amend at that point was late.

[00:06:47] Speaker 01:
Well, we didn't know if it was... We agree, Your Honor.

[00:06:50] Speaker 01:
We didn't think it was clear ourselves when we read it.

[00:06:52] Speaker 01:
It didn't say, right?

[00:06:52] Speaker 01:
It didn't say.

[00:06:53] Speaker 04:
And then the motion to dismiss, was it with prejudice or without prejudice?

[00:06:59] Speaker 04:
I thought if I remember correctly, maybe it was the last page of the motion to dismiss said with prejudice.

[00:07:06] Speaker 01:
But as far as the defendant appellate is pleading?

[00:07:08] Speaker 01:
Yes.

[00:07:09] Speaker 01:
Your Honor, I don't know the answer to that question off the top of my head.

[00:07:11] Speaker 01:
I do know that one of the steps we took after the order was issued

[00:07:17] Speaker 01:
was to alter or amend for that purpose, to make it so that it was without prejudice.

[00:07:23] Speaker 01:
And it was really when we got an answer to that, that I think we were clear that it was with prejudice.

[00:07:29] Speaker 01:
Because we had the same review, and I think the case law and the rules indicate that if a decision is, it's on the merits if it's with prejudice, obviously.

[00:07:40] Speaker 01:
So we weren't quite clear in that, which was part of the reason we took some of the steps we did afterwards.

[00:07:45] Speaker 04:
You had those alternative pleadings that you filed.

[00:07:48] Speaker 01:
Correct.

[00:07:49] Speaker 01:
And one of those was to try and get some clarity.

[00:07:52] Speaker 01:
Candidly, I think we were hoping the court would come back and say, of course it's without prejudice.

[00:07:59] Speaker 01:
As the 11th Circuit permits, we want matters to be decided on the merits of the case.

[00:08:05] Speaker 01:
And yes, it's without prejudice.

[00:08:07] Speaker 01:
Refile a different complaint.

[00:08:09] Speaker 01:
Of course, this all presupposes that we feel that our complaint was certainly sufficient.

[00:08:15] Speaker 01:
under the case law.

[00:08:16] Speaker 04:
I'd like to ask you about your original pleading.

[00:08:18] Speaker 04:
And in particular, I'd like to just jump quickly, just so I don't forget to ask you this, of contributory infringement.

[00:08:25] Speaker 04:
I'd like to ask you a question about that.

[00:08:27] Speaker 04:
Because it seems to me that you don't say much at all in that original complaint about contributory infringement.

[00:08:32] Speaker 04:
And for contributory infringement, it seems that you'd have to at least allege a fact about whether this is a non-staple article of commerce or not.

[00:08:40] Speaker 04:
And there's nothing in the original complaint.

[00:08:45] Speaker 04:
I'm just wondering, what is your position on that?

[00:08:49] Speaker 04:
Maybe with respect to direct infringement and induced infringement, there are some facts alleged, but with respect to contributory infringement, something that is key to a contributory infringement finding just is not even discussed.

[00:09:03] Speaker 01:
Well, and again, that may be the case, Your Honor.

[00:09:07] Speaker 01:
I don't know that I put up a strong argument against that reading of the original complaint.

[00:09:13] Speaker 01:
Again, though, I think that's where you fall into the situation where we ought have been able to amend at least one time.

[00:09:20] Speaker 01:
We weren't even given an opportunity one time.

[00:09:23] Speaker 01:
I'm not going to make a strong argument and try to read into the complaint something that's not there.

[00:09:28] Speaker 01:
So again, I think that comes down to the point, though, that we ought have been able to amend at least one time to make the pleading, again, tighter if there was an issue on that.

[00:09:40] Speaker 01:
Let's assume that that was the only issue.

[00:09:43] Speaker 01:
that the district court felt was insufficient in the pleading, was uncontributory, and granted the motion to dismiss that claim.

[00:09:53] Speaker 01:
In that case, I think we still would be entitled to file an amended complaint to correct that claim at that point in time.

[00:10:03] Speaker 01:
Would that have been with or without prejudice?

[00:10:06] Speaker 01:
I don't know.

[00:10:06] Speaker 01:
I don't know where we would have gone with that.

[00:10:08] Speaker 01:
But I think that even if that single claim

[00:10:11] Speaker 01:
had been dismissed.

[00:10:12] Speaker 01:
Why wouldn't we, under the case law, be permitted to a file an amended complaint that fixed that?

[00:10:19] Speaker 01:
We're here, obviously, because all the claims were dismissed.

[00:10:22] Speaker 04:
Why was it sufficient for you to allege that the accused device, which you identified by name and had pictures of, why wasn't it sufficient for you to say that that embodied all the elements of at least one claim?

[00:10:38] Speaker 04:
Why was it sufficient for you to say at least one claim?

[00:10:41] Speaker 04:
Um, and why did you not have to under Twombly at Ball identify the specific claims that you were alleging?

[00:10:49] Speaker 01:
Well, I think certainly that when you look at the case law in specifically McZeal, uh, versus Sprint Nextel, my understanding of that in the citation, uh, is that in that case, McZeal asserted, quote, the technology

[00:11:08] Speaker 01:
A cell phone product line called Motorola i930, quote, international walkie talkie, close quote, offered by the defendants, comma, falls within the scope of one or more claims of the patented worldwide walkie talkie, international walkie talkie invention, period.

[00:11:26] Speaker 01:
So falls within one or more claims.

[00:11:29] Speaker 01:
I think that type of pleading has been endorsed under the case law.

[00:11:35] Speaker 04:
So I don't know that... Is that case you were citing, is that one that was decided after Form 18 was abrogated?

[00:11:43] Speaker 01:
It was not decided after that, but then we go through a series of cases, including, so McZeal obviously is one, which is 501 F-3RD 1354, INRI Bill of Lading Transmission and Processing System 681 F-3RD 1323, and what I think is the most recent is KTEC,

[00:12:05] Speaker 01:
Telecoms Inc.

[00:12:06] Speaker 01:
vs. Time Warner Cable Inc.

[00:12:07] Speaker 01:
714 F3 1277.

[00:12:11] Speaker 01:
Those cases, K-Tech and Bill Leading in particular, they all talk about the fact that Form 18, a well-pled complaint complying with Form 18 with the five factors laid out, would satisfy Twombly and Iqbal.

[00:12:29] Speaker 01:
I think that's where

[00:12:30] Speaker 01:
the trial court erred and went down an incorrect path in the regard that it looked at the abrogation of Rule 84 and Form 18 as changing the pleading requirements.

[00:12:48] Speaker 01:
And in fact, all of the case law, and remember, our complaint... The court did a Twombley-Ickball analysis.

[00:12:56] Speaker 01:
It did a Twombley-Ickball analysis without regard for this court's

[00:13:01] Speaker 01:
analysis of how Twombly and Iqbal would affect pleadings regardless of where Form 18 came down.

[00:13:09] Speaker 04:
I think that our cases have really just said, look, we're not going to decide whether Form 18 satisfies Iqbal Twombly.

[00:13:18] Speaker 04:
We don't have to.

[00:13:19] Speaker 04:
We're just going to look at the complaint that's before us and see if it satisfies Iqbal Twombly.

[00:13:27] Speaker 04:
And that's what we said in lifetime, for example.

[00:13:31] Speaker 01:
Well, I think that the court has said, though, that you can comply with Form 18 and still satisfy Iqbal Twombly.

[00:13:39] Speaker 01:
So you've got two minutes left of your rebuttal time.

[00:13:42] Speaker 04:
You don't really need to do that, though.

[00:13:46] Speaker 04:
Maybe you're better off just talking about why you satisfy Iqbal Twombly, because you actually have more in your complaint than Form 18 does.

[00:13:53] Speaker 01:
That's right.

[00:13:54] Speaker 01:
And again, even beyond that, let's not forget, too, that our complaint was filed

[00:14:00] Speaker 01:
before Form 18 was abrogated.

[00:14:02] Speaker 01:
How long before was that?

[00:14:03] Speaker 01:
It was a day before.

[00:14:04] Speaker 01:
Oh, yeah.

[00:14:05] Speaker 01:
You were aware that it was coming.

[00:14:07] Speaker 01:
Well, I think it was.

[00:14:09] Speaker 01:
Your Honor, if I could stand here and tell you that that was the date we needed to get this filed, I don't know that that played any role in the filing of it.

[00:14:22] Speaker 01:
That's a candid response to you, is that I don't know that that was some strategic decision that we better get this in.

[00:14:27] Speaker 01:
the day before.

[00:14:28] Speaker 01:
We filed an amended complaint with the court attached to a motion later that we certainly were capable of filing something if we felt that the case law and the requirements, what we were going to be asked to stand for, was drastically different than what had been out in the case law before.

[00:14:44] Speaker 01:
Again, there's ample cases that say, let's not get hung up on Form 18.

[00:14:49] Speaker 01:
These items that are contained in there can satisfy

[00:14:54] Speaker 01:
Iqbal Twombly and we certainly believe that based on the precedent that our complaint did satisfy Iqbal Twombly and beyond that we should have been given an opportunity because the law was changing at least one time to amend.

[00:15:05] Speaker 01:
Thank you.

[00:15:15] Speaker 05:
Morning, Your Honors and may it please the Court, Council, Megan Kent on behalf of DGH Solutions.

[00:15:22] Speaker 05:
The judgment of dismissal with prejudice in this case was a result of DDS's strategic and informed decisions.

[00:15:28] Speaker 05:
And then the district court making a series of decisions that were supported by the rules of federal civil procedure and the precedent of the Supreme Court, the circuit, and the 11th circuit.

[00:15:39] Speaker 04:
Why doesn't the original complaint satisfy Iqbal Twombly, particularly for the 509 patent where there's only one independent claim

[00:15:48] Speaker 04:
And there's an allegation that the accused device, which is identified by pictures, infringes at least one claim, which necessarily would have to be claim one, since that's the only independent claim.

[00:16:02] Speaker 05:
Thank you, Your Honor.

[00:16:04] Speaker 05:
Iqbal and Twombly set forth that a claim has to be plausible on its face.

[00:16:09] Speaker 05:
The plaintiff has to present enough facts that a judge can draw a reasonable inference that the defendant is liable.

[00:16:19] Speaker 04:
If the claim is identified and the accused device is identified in a picture, why isn't that enough?

[00:16:25] Speaker 04:
And then there's a statement that the thing in the picture has all the elements of the claim.

[00:16:35] Speaker 04:
Why isn't that enough?

[00:16:36] Speaker 05:
That's not the standard for patent infringement.

[00:16:38] Speaker 05:
You don't just say, here's a picture, here's a picture in fringe.

[00:16:42] Speaker 05:
The standard is that each element of at least one claim is met.

[00:16:46] Speaker 04:
Yeah.

[00:16:46] Speaker 04:
But what if, what if the,

[00:16:48] Speaker 04:
complaint as it does in this case says, here's the accused device.

[00:16:53] Speaker 04:
Here's a picture of it.

[00:16:54] Speaker 04:
It's a inflatable back support, right?

[00:16:58] Speaker 04:
Correct.

[00:16:59] Speaker 04:
There's a picture of the inflatable back support and there's at least one claim that this inflatable back support has each and every element of the claim.

[00:17:10] Speaker 05:
It's not enough because to start the 509 patent is a method patent.

[00:17:15] Speaker 05:
It's a method of manufacture.

[00:17:17] Speaker 05:
So pointing to pictures of a box of a product does not do anything to tell the judge or the defendants why those products are manufactured according to the claimed method.

[00:17:29] Speaker 05:
This court in the Lyda v. CBS case laid out that to plead a direct infringement of a method claim, there have to be sufficient facts to allow the judge to reach a reasonable inference that every step

[00:17:44] Speaker 05:
of the method, of the claimed method, has been performed.

[00:17:48] Speaker 05:
They have not done that whatsoever.

[00:17:51] Speaker 04:
So you think that requires indirect infringement cases, it requires a claim chart?

[00:17:55] Speaker 05:
Not necessarily, Your Honor.

[00:17:57] Speaker 05:
I think a claim chart could absolutely aid the court and aid the defendants in understanding what the plaintiff is claiming, whether they plead a plausible cause of action.

[00:18:05] Speaker 05:
But that could be done in the text of a complaint.

[00:18:09] Speaker 03:
What you're saying is it requires articulation?

[00:18:12] Speaker 05:
Absolutely, Your Honor.

[00:18:15] Speaker 02:
Is there any prejudice involved in this case?

[00:18:17] Speaker 05:
Pardon me?

[00:18:18] Speaker 02:
Is there any prejudice involved?

[00:18:20] Speaker 02:
No, Your Honor.

[00:18:21] Speaker 02:
Was your client's prejudice, let's say, if the court had allowed the amended complaint?

[00:18:29] Speaker 05:
At this point, Your Honor, having gone through all of that briefing... No, I'm talking about back when all this was going on.

[00:18:36] Speaker 05:
Sure.

[00:18:37] Speaker 05:
Well, at that point, Your Honor, we were evaluating, quite frankly, whether to prepare an IPR.

[00:18:43] Speaker 02:
And we had bases to do that, but... You had bases by which to proceed in the event that a trial was forthcoming.

[00:18:52] Speaker 02:
That's not prejudice.

[00:18:55] Speaker 02:
In evaluating... Why shouldn't the court have allowed the amendment based on the fact that it's not going to prejudice you at all?

[00:19:04] Speaker 05:
It could have allowed it had the plaintiff requested an amendment.

[00:19:08] Speaker 05:
But the plaintiff never requested an amendment.

[00:19:10] Speaker 05:
And leave would have been freely granted had they requested that.

[00:19:12] Speaker 03:
Well, would you have opposed it on the basis of futility?

[00:19:16] Speaker 05:
Potentially, yes.

[00:19:17] Speaker 05:
We believe, looking at the amended complaint, which is not really before this court, we would still have a basis to move to dismiss based on them being unable to prove their claims.

[00:19:30] Speaker 02:
The concern that I have with this case is that,

[00:19:34] Speaker 02:
I don't see a motion to amend.

[00:19:36] Speaker 02:
And I went back to the timeline, and I'm not sure the one was ever filed.

[00:19:42] Speaker 02:
There's arguments that the court should allow us to amend, but there never was a motion to amend which carries a motion, carries your prayer for relief.

[00:19:50] Speaker 02:
And since this is what I want the court to do, this is what I think it should do.

[00:19:56] Speaker 02:
In your view of the local law, is there a requirement that an actual motion to amend

[00:20:04] Speaker 02:
be filed and why wasn't the footnote, footnote six in the motion for reconsideration enough?

[00:20:11] Speaker 05:
Right.

[00:20:11] Speaker 05:
So an argument raised in a footnote is not preserved.

[00:20:14] Speaker 05:
That's established 11th circuit precedent and federal circuit precedent.

[00:20:17] Speaker 05:
11th circuit provides that to amend, you need to file a motion memorandum supporting that.

[00:20:25] Speaker 05:
I do think that potentially in their opposition to amend, they could have included a more robust request for leave to amend.

[00:20:33] Speaker 05:
The 11th circuit provides that you need to articulate, um, in what way you would amend and what way it would not be futile to amend.

[00:20:42] Speaker 05:
Um, and they didn't offer the district court judge anything for her to believe that they might be able to amend and actually be able to plead a cause and action in practice in that locality to, to allow leave or motion to amend after a motion to dismiss has been granted.

[00:21:00] Speaker 05:
It, I believe, would be within the district court judge's discretion to do that, but the 11th Circuit clearly states in the Wagner decision, which was an en banc decision by the 11th Circuit, that a district court judge has no requirement to sue a sponte and invite a plaintiff to refile.

[00:21:17] Speaker 02:
Does the court have a requirement to provide a specific or a significant reason for the denial?

[00:21:25] Speaker 05:
if the plaintiff had properly requested leave to amend under Rule 15A2, which they never did.

[00:21:35] Speaker 04:
What about their motion for reconsideration and they had two different kinds of pleadings following the original decision by the district court where the district court didn't indicate whether it was with or without prejudice and they attached to that an amended complaint.

[00:21:53] Speaker 04:
Does that

[00:21:53] Speaker 04:
operate also is a motion for leave to file an amended complaint?

[00:21:58] Speaker 04:
Does it have to be so styled?

[00:22:01] Speaker 04:
What is your reason for why it's not sufficient?

[00:22:06] Speaker 05:
It was out of time to begin.

[00:22:07] Speaker 05:
Rule 15 of the Federal Rules provides that you may file a motion seeking leave to amend until judgment.

[00:22:15] Speaker 05:
Judgment had been entered already in this case.

[00:22:17] Speaker 05:
They had plenty of opportunities to seek to amend.

[00:22:23] Speaker 05:
At that point in time, when they were seeking reconsideration, that is determined based on 59E of the federal rules and 11th circuit precedent that looks at whether there was a change in fact, law, or some sort of clear error.

[00:22:36] Speaker 04:
What about how the district court said, and maybe you can help me understand the record and what happened, but the district court judge said in the decision,

[00:22:50] Speaker 04:
I didn't indicate whether it was with prejudice or without prejudice, but now, yeah, I think it's with prejudice.

[00:22:56] Speaker 04:
I mean, is that what made it a final judgment or had a judgment been entered before that fact?

[00:23:02] Speaker 04:
It was just unclear whether it was with or without prejudice.

[00:23:06] Speaker 05:
So we did request it to be with prejudice in our motion to dismiss.

[00:23:10] Speaker 05:
Right, but the court didn't indicate.

[00:23:12] Speaker 05:
That's correct.

[00:23:13] Speaker 05:
The court and courts often do this where they simply dismiss and don't indicate either way.

[00:23:17] Speaker 05:
And when they don't indicate either way, the presumption on a motion to dismiss such as this.

[00:23:22] Speaker 03:
Is the day without prejudice?

[00:23:24] Speaker 05:
That it is with prejudice.

[00:23:25] Speaker 03:
The presumption?

[00:23:26] Speaker 05:
Yes, your honor.

[00:23:27] Speaker 05:
And in this case, the day after, actually it may have been the same day that the judge's order was entered, the clerk closed the case and entered judgment against

[00:23:40] Speaker 05:
closing the case, enter judgment.

[00:23:41] Speaker 02:
The judgment and the motion to dismiss or the motion to dismiss when it was granted, those were entered the same day.

[00:23:49] Speaker 02:
I believe so.

[00:23:51] Speaker 02:
There was no time lapse between them.

[00:23:52] Speaker 05:
I believe so, Your Honor.

[00:23:54] Speaker 05:
It was shortly thereafter.

[00:23:55] Speaker 05:
I believe it was the same day.

[00:23:57] Speaker 04:
What is your support for the idea that the presumption when it's not indicated that it's with prejudice on a motion to dismiss a complaint?

[00:24:08] Speaker 05:
I have to look back in our brief, Your Honor, to find the case that we cited.

[00:24:14] Speaker 03:
When I practiced in the Ninth Circuit, the presumption was without prejudice unless you obtained with prejudice.

[00:24:22] Speaker 05:
Our understanding was that it was presumed to be with prejudice on a motion to dismiss, 12-26 motion to dismiss.

[00:24:28] Speaker 03:
Is that an 11th Circuit rule or holding?

[00:24:32] Speaker 05:
I believe so, although recently in

[00:24:35] Speaker 05:
District of Delaware, we ran into the same issue and it was the same presumption, Your Honor.

[00:24:41] Speaker 02:
What reasons did the court provide to support its dismissal of prejudice?

[00:24:49] Speaker 05:
It pointed out that the plaintiff had never requested leave to amend while it had opportunity to do so.

[00:24:57] Speaker 05:
And at the point when it was being asked to reconsider,

[00:25:01] Speaker 05:
whether it should be without prejudice or with prejudice, it was meant to evaluate whether there was new law, which there was not new facts, which there were not, or a clear error, which there was not because the 11th circuit specifically states that it has no obligation.

[00:25:14] Speaker 02:
Did the court address undue delay, bad faith, prejudice?

[00:25:20] Speaker 05:
No, Your Honor, it did not.

[00:25:22] Speaker 05:
It was not required to do so.

[00:25:23] Speaker 05:
It would have been if it were evaluating a motion to amend under 15A2.

[00:25:29] Speaker 05:
but that motion was never brought.

[00:25:41] Speaker 05:
DDS made strategic decisions throughout this case.

[00:25:45] Speaker 05:
It chose not to amend its complaint.

[00:25:47] Speaker 05:
It had opportunity to do so after

[00:25:50] Speaker 05:
after its complaint within 21 days, after we filed our motion to dismiss, completely laying out all of the reasons why we believe their complaint was deficient.

[00:25:58] Speaker 05:
It elected not to do that.

[00:26:00] Speaker 05:
It had the strategy not to amend, even though it had named a defunct corporation.

[00:26:05] Speaker 05:
It had this aversion to amending, and it didn't.

[00:26:08] Speaker 05:
Instead, it filed its opposition to our motion to dismiss and argued in that opposition that it continued to meet the amended pleading standard.

[00:26:20] Speaker 05:
And it dropped a footnote, a half-hearted footnote, which was insufficient to request to amend.

[00:26:26] Speaker 05:
The district court then applied the amended rules.

[00:26:29] Speaker 05:
Form 18 had been abrogated.

[00:26:32] Speaker 05:
And it applied those because the Supreme Court's order promulgating the amended rules was that they should apply to any case then pending so long as it was just and practicable.

[00:26:43] Speaker 05:
DDS, again, made the strategic decision.

[00:26:45] Speaker 05:
It never argued that it was unjust or impracticable for the amended rules to apply to it.

[00:26:51] Speaker 05:
And it was.

[00:26:52] Speaker 04:
So you said earlier about this presumption, you said there's something in your brief that supports that.

[00:26:58] Speaker 04:
Do you know where that's at?

[00:27:01] Speaker 03:
No, Your Honor, I don't.

[00:27:02] Speaker 05:
I can find that.

[00:27:04] Speaker 03:
I want to clarify something.

[00:27:06] Speaker 03:
You said that it was unjust or impracticable, period.

[00:27:12] Speaker 03:
And it was period.

[00:27:16] Speaker 03:
It looks funny in the record.

[00:27:17] Speaker 05:
Okay.

[00:27:18] Speaker 05:
Thank you, your honor.

[00:27:19] Speaker 05:
Um, they did not argue that it was unjust and impracticable and it was just impracticable to apply, to apply the amended rules.

[00:27:32] Speaker 05:
I'm looking, your honor, Judge Stolz for the site.

[00:28:09] Speaker 02:
What are we waiting for, a citation?

[00:28:10] Speaker 05:
Yes, Your Honor, and I apologize, I'm not- So you think it's somewhere in your brief?

[00:28:15] Speaker 02:
I do, and I'll- We'll find it.

[00:28:18] Speaker 05:
We'll review, and perhaps it was not, it may not have been raised.

[00:28:22] Speaker 05:
I believe that's the rule, but perhaps it's not in here.

[00:28:27] Speaker 05:
But continuing on, the district court applied

[00:28:30] Speaker 05:
if all in Twombly is standard.

[00:28:32] Speaker 05:
It didn't apply Form 18 because Form 18 had been abrogated.

[00:28:36] Speaker 05:
And we had argued to the district court, and we believe it was with a rational basis, that a plaintiff should have to plead sufficient facts to support a reasonable inference that every element of a claim is met.

[00:28:49] Speaker 05:
The district court didn't even go that far.

[00:28:51] Speaker 05:
It just said that a plaintiff must make some attempt to describe the alleged infringement.

[00:28:57] Speaker 05:
That's all, just some attempt.

[00:28:59] Speaker 05:
And in this case, it found that

[00:29:00] Speaker 05:
DDS had not done that.

[00:29:02] Speaker 05:
It had not gone beyond patent, product, and fringe, which is insufficient for the district court judge to be able to reach a reasonable inference, including in particular on a method of manufacture claim.

[00:29:16] Speaker 04:
What about the other set of claims, which are not a method of manufacture, and there's only three independent claims?

[00:29:22] Speaker 05:
Right, so the 113 patent, Your Honor, which relates to the product, and that includes the inflatable back brace, the

[00:29:29] Speaker 05:
support structure, which goes, there's both an anterior and a posterior support structure, as well as a means of associating those two.

[00:29:38] Speaker 05:
It's a means plus function claim.

[00:29:39] Speaker 05:
It's not as simple as it appears on its face, and the simply putting a photo of a product does not provide the judge with any ability to tell whether that means of associating

[00:29:52] Speaker 05:
the structure with the inflatable belt has been met or could be met by the plaintiff in this case and whether the plaintiff could plausibly meet those elements of that claim.

[00:30:02] Speaker 04:
They don't have to prove their case, right?

[00:30:04] Speaker 04:
They just have to allege enough facts to make it plausible that there's a claim of infringement.

[00:30:09] Speaker 04:
Correct, Your Honor.

[00:30:11] Speaker 04:
But you would say that under ICBAL Trombley, whenever someone files a patent complaint and there's means plus function claims, they need to identify what the corresponding structure is?

[00:30:19] Speaker 04:
and then identify where that is in the accused device?

[00:30:23] Speaker 05:
I would think that they should make some attempts to provide the defendant in the court with a basis to draw a reasonable inference that it could ultimately be proven.

[00:30:33] Speaker 05:
And in this case, they didn't do that.

[00:30:35] Speaker 04:
What about the fact that we still have notice pleading?

[00:30:38] Speaker 04:
And so there's notice pleading.

[00:30:40] Speaker 04:
Do you think that in this case you had notice of what was accused of infringement and what claims were asserted?

[00:30:47] Speaker 05:
We didn't have indication of which claims were asserted.

[00:30:49] Speaker 04:
We knew at least in one of them that there was one independent claim, so that would have to be the one.

[00:30:56] Speaker 05:
And we had notice of what they were alleging, which products they were alleging, but that doesn't give us a basis to understand why they were alleging we infringed.

[00:31:07] Speaker 05:
The method of manufacture that BGH uses does not in any way practice these claims.

[00:31:13] Speaker 05:
had been explained to the plaintiff, and they had not provided in this complaint a reason for us to understand how we could possibly be infringing on this method.

[00:31:23] Speaker 03:
We could have fought a motion for a more definite statement in the alternative.

[00:31:28] Speaker 05:
In the alternative, we could have, Your Honor.

[00:31:30] Speaker 05:
A motion to dismiss was just equally effective.

[00:31:35] Speaker 02:
And would prohibit us even more so.

[00:31:37] Speaker 02:
Yes, Your Honor.

[00:31:38] Speaker 02:
Okay, let's go back into the rebuttal.

[00:31:41] Speaker 05:
Thank you.

[00:31:46] Speaker 02:
Thank you, Your Honor.

[00:31:47] Speaker 02:
We have two minutes.

[00:31:48] Speaker 01:
Yes.

[00:31:49] Speaker 01:
I heard counsel refer to the court applying the amended pleading standard.

[00:31:54] Speaker 01:
And of course, that's why we're here.

[00:31:56] Speaker 01:
There is no amended pleading standard at this point.

[00:32:00] Speaker 01:
At least at the time that we filed and that this matter was briefed at the trial court, there certainly was no standard.

[00:32:07] Speaker 01:
The only standard on November 30th when we filed our complaint was the form and all the case on it.

[00:32:13] Speaker 01:
And I don't want to get hung up on the form.

[00:32:15] Speaker 01:
because this court had given clear pronouncement that even if you don't have the forms, you don't worry about the forms, the fact is that the factors that are contained in the old form, if you plead those factors, that can hold up to the Iqbal Twombly standard.

[00:32:32] Speaker 01:
And that's the question here, is did our complaint satisfy Iqbal Twombly?

[00:32:38] Speaker 01:
Not in a vacuum, it's not a new case on December 1, 2016, it's all the case law

[00:32:45] Speaker 01:
that had come down to that point.

[00:32:47] Speaker 01:
I cited for the court earlier the McZeal case where it specifically said that pleading that you infringe one or more claims, that was sufficient.

[00:32:58] Speaker 01:
That was sufficient at one point.

[00:33:01] Speaker 01:
I'm sitting here thinking, what if our complaint had been filed on November 1st or October 1st?

[00:33:10] Speaker 01:
How far back do you go before you say, well, you're close enough that we're going to

[00:33:15] Speaker 01:
we're going to apply a new standard that's yet to be defined without giving you an opportunity to amend it.

[00:33:22] Speaker 01:
And I should note that in the... You had an opportunity to amend it.

[00:33:26] Speaker 01:
Well, we had an opportunity to amend... You didn't ask for it.

[00:33:30] Speaker 01:
Well, respectfully, we think we did.

[00:33:33] Speaker 01:
We acknowledge now that under the case law, putting in a footnote was not sufficient.

[00:33:37] Speaker 01:
That is the case law in the 11th Circuit.

[00:33:39] Speaker 01:
So you don't think it is.

[00:33:41] Speaker 01:
I mean, I'll acknowledge that that's under the case law in the 11th Circuit, that's not sufficient.

[00:33:47] Speaker 01:
However, that goes back, and I don't think that's necessary because if the court had dismissed the complaint without prejudice, we wouldn't need to ask leave to amend at that point.

[00:33:56] Speaker 01:
If it was dismissed without prejudice, we wouldn't be fined.

[00:33:59] Speaker 01:
What is the practice in your circuit?

[00:34:01] Speaker 01:
In the 11th Circuit?

[00:34:03] Speaker 01:
With or without?

[00:34:06] Speaker 01:
Respectfully, I'm based here in D.C.

[00:34:09] Speaker 01:
I am a member of the 11th Circuit, but I will tell you that I don't know that I've ever seen a situation like this where a party says, well, we'd like at least a chance to amend, and the court comes back and says, not good enough, and dismisses when the law has suddenly changed.

[00:34:31] Speaker 01:
Well, the law has suddenly arguably changed, although we don't believe it.

[00:34:35] Speaker 01:
It's changed because of all the case law that had defined that a Form 18 pleading, something that aligns with that, would satisfy Iqbal Twombly.

[00:34:45] Speaker 02:
OK, you're out of time.

[00:34:47] Speaker 02:
Thank you, counsel.

[00:34:48] Speaker 02:
Thank you, Your Honor.

[00:34:48] Speaker 02:
We thank all parties for the arguments today.

[00:34:50] Speaker 02:
The cases are now submitted for consideration.

[00:34:53] Speaker 02:
Court remains in recess.

[00:34:56] Speaker 00:
All rise.

[00:34:58] Speaker 00:
The honorable court is adjourned until tomorrow morning.

[00:35:01] Speaker 00:
It's at o'clock a.m.