[00:00:33] Speaker 03:
OK, the next argue case is number 17, 1869, 01 Communique Laboratory against Citrix Online.

[00:00:43] Speaker 03:
Mr. Schunk.

[00:00:44] Speaker 01:
May it please the court.

[00:00:47] Speaker 01:
Communique asks this court for a new trial because the trial court, over the strenuous objection by Communique, permitted Citrix to put on a classic practicing the prior art defense at every turn

[00:01:04] Speaker 01:
comparing its prior art buddy help product against its accused go-to-my-PC product.

[00:01:11] Speaker 01:
Now, this Court, in many cases, since the original Baxter Health Care case, has said that you can't do that, that it is improper to tell a jury that they may decide either infringement or invalidity by comparing a prior art product to the accused product.

[00:01:33] Speaker 02:
Wasn't the jury here instructed on the proper way to determine infringement?

[00:01:39] Speaker 02:
That is, that you compare the claims to the accused product.

[00:01:46] Speaker 02:
And that, in fact, occurred.

[00:01:47] Speaker 02:
I believe the expert, in fact, did that kind of comparison.

[00:01:52] Speaker 02:
So why isn't this case distinguished from cases like Baxter and Tate?

[00:01:57] Speaker 01:
I'm glad you asked that, Your Honor.

[00:01:59] Speaker 01:
First of all, yes, the court did give that instruction.

[00:02:02] Speaker 01:
but at the end of the case, not when the court should have done it when the improper statements were made.

[00:02:09] Speaker 01:
And secondly, it is absolutely not true that the plaintiff's expert did any kind of limitation by limitation comparison of this prior art buddy help product with the claims.

[00:02:23] Speaker 01:
In fact, if the court turns to the joint appendix citation that Citrix gives when it makes that claim,

[00:02:29] Speaker 02:
But it was non-infringement that was being shown, right?

[00:02:33] Speaker 02:
Was there an attempt to show non-infringement by the expert?

[00:02:36] Speaker 02:
Is that right?

[00:02:37] Speaker 01:
Oh, there was.

[00:02:38] Speaker 01:
Yes, the expert put on.

[00:02:40] Speaker 02:
So doesn't the expert just have to show that there is one limitation that isn't satisfied?

[00:02:46] Speaker 01:
No, Your Honor.

[00:02:47] Speaker 01:
Well, yes.

[00:02:48] Speaker 01:
Yes, that is the stand-up.

[00:02:50] Speaker 01:
Of course, if any of the limitations are not present in the accused product, the All Limitations Rule says that there is no infringement.

[00:02:59] Speaker 01:
So there was evidence put on about that.

[00:03:01] Speaker 01:
But what there was no evidence on in this case was a comparison of the Buddy Help prior art product to the elements of the claims at issue.

[00:03:13] Speaker 01:
So that's what makes this case different, Your Honors, from the number of cases that have gone before that have talked about practicing the prior art.

[00:03:23] Speaker 01:
Just to make sure I understand.

[00:03:25] Speaker 02:
You're saying that there wasn't a validity analysis.

[00:03:29] Speaker 01:
Yes.

[00:03:31] Speaker 01:
Right, right.

[00:03:32] Speaker 01:
So in this case, there was no reason for any evidence about buddy help to be offered to the trial court.

[00:03:40] Speaker 01:
And yet, it was the central focus of the defendant's case.

[00:03:44] Speaker 01:
And I would encourage the court to look at the joint appendix reference cited by Citrix when Citrix says that there was a good reason for their expert to talk about buddy help.

[00:03:54] Speaker 01:
which was the priority product.

[00:03:56] Speaker 01:
They cite Joint Appendix 2512 through 2517, saying, oh, well, our expert did an element-by-element analysis and comparison of Buddy Help with the claims, and that's why it was legitimate for us to talk about Buddy Help in this case.

[00:04:13] Speaker 01:
If you turn to those pages, Your Honor, you'll see that they consist of the following.

[00:04:18] Speaker 01:
One question asking the expert whether or not he had done

[00:04:23] Speaker 01:
an element by element comparison.

[00:04:26] Speaker 01:
Then another question saying, well, what was the result of that comparison?

[00:04:31] Speaker 01:
To which he says, I find the patent to be valid.

[00:04:37] Speaker 01:
Then four pages following that in which he talks about the similarities between the buddy help product and the accused go to my PC product.

[00:04:49] Speaker 01:
Never once

[00:04:50] Speaker 01:
was did the expert bother to walk through the elements of the claim against the Prior Art Buddy Help product?

[00:04:59] Speaker 01:
And in fact, of course, why would they have done that?

[00:05:02] Speaker 01:
The expert began by admitting that he found that Buddy Help did not invalidate the claims.

[00:05:08] Speaker 01:
So unlike the several cases that this court has heard before in this case, there was no justification for Buddy Help, the Prior Art product, to have been mentioned to the jury.

[00:05:20] Speaker 02:
Can't parties argue in the alternative or present alternative theories to a jury?

[00:05:26] Speaker 01:
Sure they can, Your Honor, if they have a legitimate alternative theory.

[00:05:30] Speaker 01:
But here, their expert admitted on the stand and their counsel admitted in opening and closing that they had no invalidity case against us under the trial court's claim construction.

[00:05:43] Speaker 01:
And Your Honors, there is no theory

[00:05:46] Speaker 01:
to present to a jury that is contrary to the trial court's claim construction.

[00:05:51] Speaker 01:
Counsel can't stand up and say, well, I have an invalidity theory just in case the jury discards what the judge says the meaning of the claim terms are.

[00:06:04] Speaker 01:
And I'm going to talk about that.

[00:06:05] Speaker 01:
No, that cannot enter the courtroom because only a comparison of the claims to the accused product and the claims to the prior art

[00:06:16] Speaker 01:
under the trial court's claim construction are proper.

[00:06:20] Speaker 01:
And if the defendant had had a problem with the trial court's claim construction, then it should have raised that with the judge.

[00:06:27] Speaker 01:
And it should have objected, and it should have raised that on appeal here.

[00:06:31] Speaker 01:
So it did not.

[00:06:33] Speaker 01:
There is no objection by the defendant to the trial court's claim construction.

[00:06:37] Speaker 01:
What was it doing then talking about an alternative theory of invalidity if

[00:06:44] Speaker 01:
the trial court's claim construction was not properly applied.

[00:06:49] Speaker 01:
It made no sense, other than as a practicing the prior art defense.

[00:06:54] Speaker 01:
And in fact, Your Honor, I think it speaks volumes to look at exactly what the trial court said.

[00:07:05] Speaker 01:
I'm sorry, what counsel for

[00:07:11] Speaker 01:
Citrix said when we raised this issue with the court on the second day of trial, because we didn't hear, we didn't know they were going to do this practicing the prior art scam until we heard opening statement, we immediately filed a written motion and the next morning we began arguing this with the judge.

[00:07:32] Speaker 02:
Don't parties sometimes use kind of a squeeze?

[00:07:36] Speaker 02:
during cases where they might, say, push on infringement versus written description, or infringement versus validity and view of the prior art, as in, look, if you're going to take this view of the claims, you're going to fall in that scope of the prior art.

[00:07:54] Speaker 02:
If you're going to take this view of the claims, then we don't infringe.

[00:07:57] Speaker 02:
Isn't that kind of a theme that's sometimes brought out in a case?

[00:08:00] Speaker 02:
Is your position that that kind of theme can't be

[00:08:03] Speaker 02:
relied upon?

[00:08:04] Speaker 01:
Absolutely, Your Honor.

[00:08:05] Speaker 01:
That was the case in the Zenith Electronics case.

[00:08:10] Speaker 02:
But in that case, wasn't the problem that there was no separate analysis?

[00:08:15] Speaker 01:
Well, and that's the problem here.

[00:08:17] Speaker 01:
Let me read you, Your Honor, if I may, the words.

[00:08:20] Speaker 01:
And they're quoted in the opinion in Zenith Electronics.

[00:08:24] Speaker 01:
Let me read you the way it was the improper practicing the prior defense was phrased there.

[00:08:30] Speaker 01:
To the extent the allegedly infringing

[00:08:34] Speaker 01:
PDI P2O LCD, and that's the accused product.

[00:08:38] Speaker 01:
To the extent the accused product is considered to practice the elements of the claim, then so did the RCA prior art television.

[00:08:49] Speaker 01:
Exactly that same formulation, Your Honor, was used in this case to talk to the court and to the jury.

[00:08:56] Speaker 01:
In fact, when we challenged Citrix

[00:09:00] Speaker 01:
Trial counsel in explaining his theory of the case to the judge said, Your Honor, I don't think there is a practicing the prior art issue here.

[00:09:11] Speaker 01:
I have the right, he told Judge Lui-Hui, to get up and prove that my current product is the same as my prior art product, and I can sit down and I win because either their patent is invalid or I don't infringe.

[00:09:28] Speaker 01:
He said those very words, and that is what this court has said you cannot do.

[00:09:34] Speaker 03:
I don't think so.

[00:09:36] Speaker 03:
I think in the cases that have made a statement about practicing the prior art, there have always been additional factors, additional qualifications in a particular case.

[00:09:51] Speaker 03:
And I was looking to see, because I think it's quite interesting.

[00:09:55] Speaker 03:
Because if, in fact, an accused infringer

[00:09:59] Speaker 03:
is doing exactly the same thing they did 10 years before the asserted patent was applied for.

[00:10:06] Speaker 03:
That isn't something that is excluded by the rules of evidence.

[00:10:12] Speaker 03:
And so there were some fine lines that were drawn in precedent.

[00:10:18] Speaker 03:
And it would be helpful if you can tell us how your case of that they, again, said they were practicing the prior art

[00:10:29] Speaker 03:
distinguishes the distinctions if you go back and look at the facts, which ended up with statements out of context.

[00:10:40] Speaker 03:
That seems to happen very often.

[00:10:42] Speaker 03:
And so to understand, in fact, if an accused infringer can never say at the risk of an immediate adverse judgment that I'm doing what I did 10 years before,

[00:10:58] Speaker 03:
application was filed that they immediately lose their case.

[00:11:03] Speaker 01:
I think that this court's decisions say if you are doing something that you have always done then you should be able to easily come into court and compare the elements of the claim against the specific features of what you've always been doing and prove an invalidity case or

[00:11:25] Speaker 01:
If you believe that what you have always been doing doesn't fit within the claim, you can compare what you've done or what you're doing with the elements of the claim in a non-infringement case.

[00:11:38] Speaker 01:
What you cannot do is compare your old product to your new product and say, I'm done.

[00:11:45] Speaker 01:
You don't even need to look at the claims.

[00:11:47] Speaker 02:
But they didn't do that.

[00:11:49] Speaker 02:
I'm sorry?

[00:11:49] Speaker 02:
They didn't do that here.

[00:11:51] Speaker 02:
They said that they didn't infringe because they didn't perform a particular claim element that was in the claim.

[00:11:59] Speaker 01:
They said that, but most of their case was focused on comparing the two products, the old and the new.

[00:12:06] Speaker 01:
So if you look at the number of pages where they're talking about the element of the claim that they argue they don't practice, very few pages take up that

[00:12:18] Speaker 01:
portion of their case.

[00:12:20] Speaker 01:
Most of the case, in fact, the entirety of the testimony by witness Monkey and witness Christensen, their two fact witnesses, was about comparing the old product and the new product.

[00:12:33] Speaker 01:
And as we show in our blue brief, their demonstratives were all about setting those two products side by side and arguing that they're the same.

[00:12:43] Speaker 01:
That is how counsel for Citrix characterized the case.

[00:12:47] Speaker 01:
when he was talking to the judge.

[00:12:48] Speaker 01:
And it's what he told the jury again and again and again.

[00:12:52] Speaker 01:
And this court has said that just because there might be a basis for finding in the defendant's favor, if the defendant had not done all the things that it shouldn't have done, doesn't mean that the defendant gets a free pass for having done all of those bad things.

[00:13:14] Speaker 01:
This court's decision

[00:13:16] Speaker 01:
in the Magnavision v. Bonneau case says exactly that.

[00:13:20] Speaker 01:
In that case, the problem was that there was an improper charge about the standards to be applied to invalidity.

[00:13:31] Speaker 01:
And the trial court got it wrong, and the defendant capitalized on that and repeated it again and again to the jury.

[00:13:39] Speaker 01:
And this court said, no, even if you could argue perhaps that the patent was invalid,

[00:13:46] Speaker 01:
on additional grounds beyond those improper grounds you argued.

[00:13:51] Speaker 01:
Nevertheless, the presence of that improper argument makes it imperative that this court grant a new trial, because this court said it would encourage cynical advocacy to permit an improper argument to be foisted off on the jury

[00:14:12] Speaker 01:
And so it's not a question of whether it's possible that you can put together proper evidence to show that there was no infringement.

[00:14:22] Speaker 01:
If their use of this improper practicing the prior argument pervaded the trial, then this court must grant us a new trial.

[00:14:32] Speaker 01:
And I would ask to reserve my remaining time for rebuttal.

[00:14:37] Speaker 03:
OK.

[00:14:37] Speaker 03:
Thank you, Mr. Schenkel.

[00:14:41] Speaker 03:
Mr. Fleming.

[00:14:44] Speaker 00:
Good morning, and may it please the Court, Mark Fleming with Christopher Dodge on behalf of Citrus.

[00:14:48] Speaker 00:
Judge Lioi carefully considered all of the objections that were made in the Rule 59 motion.

[00:14:54] Speaker 00:
She did not address the many arguments that 01 did not put into that motion, and those are waived on appeal, so I won't address them unless the Court has questions.

[00:15:02] Speaker 00:
The main argument this morning depends on the assertion, which we heard repeatedly and the Court appropriately questioned.

[00:15:08] Speaker 00:
The assertion was that we argued non-infringement

[00:15:11] Speaker 00:
by comparing the accused product to the prior art.

[00:15:14] Speaker 00:
Neither in his briefing nor in his advocacy today has Mr. Shunk cited any point in the record in which we argued that to the jury.

[00:15:22] Speaker 00:
Judge Lioi, who sat through the whole trial and was very attentive to this concern, because as Mr. Shunk says, it was raised throughout, found that we didn't do that.

[00:15:31] Speaker 00:
And that was certainly not an abuse of discretion.

[00:15:33] Speaker 00:
It was, in fact, correct.

[00:15:34] Speaker 00:
Our non-infringement argument was, go to my PC, does not practice all elements of the asserted claims.

[00:15:39] Speaker 00:
And particularly, it doesn't have a location facility that creates the communication channel between the host and the remote computers.

[00:15:46] Speaker 00:
Now, as part of our invalidity case, we did point out that the creation of the communication channel in GoToMyPC happens in the same way as we had done it in the prior HelpBuddy help product.

[00:15:57] Speaker 00:
And that meant that if the jury found as a factual matter that GoToMyPC practiced that element of the claims, then that would support our argument as a factual matter.

[00:16:08] Speaker 00:
that Buddy Help as well practice that element.

[00:16:10] Speaker 00:
That's not a clean construction issue.

[00:16:12] Speaker 00:
That is a factual question of infringement with respect to Go To My PC, anticipation with respect to Buddy Help.

[00:16:19] Speaker 00:
So it's an invalidity argument for Buddy Help as raised in the alternative, Judge Stoll, as you indicated, in the event that we lost on non-infringement.

[00:16:26] Speaker 00:
It's a practical application of the principle that the claims are applied the same way for invalidity and for infringement.

[00:16:32] Speaker 00:
I just say it's important also to remember the context in which this case comes to this court.

[00:16:36] Speaker 00:
The jury was repeatedly told by the judge and by Citrix's own counsel that infringement required comparing the claim elements to the accused product.

[00:16:45] Speaker 00:
No objection to any of those instructions.

[00:16:47] Speaker 00:
There was a specific instruction Judge Stoll, as you indicated, not to compare the accused products to the prior art when determining infringement.

[00:16:52] Speaker 00:
And it wasn't just at the end of the trial.

[00:16:54] Speaker 00:
It came throughout the trial.

[00:16:56] Speaker 00:
And Judge Lioi specifically told Mr. Shank on several occasions that if he wanted an additional instruction, he could request one at the end of the trial.

[00:17:03] Speaker 00:
The jury was also told openings and closings of counsel are not evidence.

[00:17:07] Speaker 00:
And in the midst of trial and in the Rule 59 order afterwards, Judge Lioi found that Citrix's discussion of the prior art was always in the context of arguing invalidity, didn't affect the infringement side of the case.

[00:17:17] Speaker 00:
And now, because there has been no appeal on substantial evidence, it's undisputed that the non-infringement verdict is amply supported.

[00:17:25] Speaker 00:
With all this, the district judge was well within her discretion in denying a new trial.

[00:17:28] Speaker 00:
01 cites no case, not one.

[00:17:31] Speaker 00:
that provided the relief that they are now asking for, which is a new trial on non-infringement, reversing a discretionary judgment by a district court to deny a new trial motion just because of some asserted problem with an invalidity argument.

[00:17:45] Speaker 00:
The Zenith case, that was a grant of summary judgment.

[00:17:47] Speaker 00:
The district court there had ruled on summary judgment that the patent was invalid and not infringed, and the only reason for it was because the defendant had said, we're just doing what the prior arc did.

[00:17:57] Speaker 00:
Of course, that's wrong.

[00:17:58] Speaker 00:
That's not a basis for summary judgment.

[00:18:00] Speaker 00:
It's not a basis for Jamal.

[00:18:01] Speaker 00:
Nobody's contending that it is.

[00:18:03] Speaker 00:
No one contended below that it was.

[00:18:05] Speaker 00:
We've never suggested that.

[00:18:07] Speaker 00:
But the point is, Zenith did not suggest that it was categorically, as a bright line matter, an abuse of discretion for a district judge to permit a defendant to argue in the alternative to make the argument that was made in this case.

[00:18:19] Speaker 00:
I just summarize to say that, you know, in order to reverse the district court here, I think this court would have to take two steps that are flatly inconsistent with the standard of review.

[00:18:27] Speaker 00:
You would first have to decide that Judge Leoy abused her discretion in finding that there was no misconduct at all.

[00:18:32] Speaker 00:
Everything Mr. Shunk said about counting the number of pages and what the core theme was, those are quintessential judgments for the district judge to make who had a front row seat for the entire trial.

[00:18:41] Speaker 00:
But second, you would also need to find not only that there was prejudice, but that the prejudice was so severe that it couldn't be cured by the correct, unobjected to final jury instructions that Judge Leoy gave.

[00:18:53] Speaker 00:
And that would require errant speculation about what was in the mind of the jury

[00:18:57] Speaker 00:
and a substitution of the appellate court's judgment for that of the district judge on a core trial management issue.

[00:19:03] Speaker 00:
So unless the court has any further questions, I believe the further points are amply ventilated in the briefing.

[00:19:07] Speaker 00:
We think this is a straightforward case for affirmance, and we respectfully submit that the court should so rule.

[00:19:12] Speaker 03:
Let's see.

[00:19:12] Speaker 03:
Any questions for counsel?

[00:19:14] Speaker 03:
Any questions for counsel?

[00:19:15] Speaker 03:
OK.

[00:19:16] Speaker 03:
Thank you, Mr. Fleming.

[00:19:17] Speaker 01:
Thank you, Your Honor.

[00:19:18] Speaker 03:
Mr. Schenck.

[00:19:20] Speaker 01:
Very briefly, Your Honors, let me read to you at Appendix 2894, what

[00:19:26] Speaker 01:
the Citrix counsel said in summarizing his case to the jury.

[00:19:31] Speaker 01:
He told them the only real question is whether BuddyHelp, that's the PriorArt device, practices the claims.

[00:19:39] Speaker 01:
And Dr. Foster, Dr. Foster has showed us that.

[00:19:43] Speaker 01:
He showed us that from the neck down, BuddyHelp and GoToMyPC are the same.

[00:19:49] Speaker 01:
We also have Dr. Foster doing an analysis where he went through and made a comparison of BuddyHelp to GoToMyPC

[00:19:56] Speaker 01:
and showed every accused functionality.

[00:19:58] Speaker 01:
Everything that Your Honor says is covered by the claims finds its way back to Buddy Help.

[00:20:03] Speaker 01:
This case was all about trying to get the jury to avoid comparing the product that was accused to the elements of the claim by telling them that all they needed to do was decide whether Buddy Help and Go to My PC were the same.

[00:20:20] Speaker 01:
And this Court has said that places an improper additional burden on us, the plaintiff, not only to show that the product infringes and that the patent is valid, but also that there is a difference between the current product and the defendant's prior product.

[00:20:40] Speaker 01:
There is no such burden on us.

[00:20:42] Speaker 01:
And in this case, Your Honor, why should there be a new trial?

[00:20:45] Speaker 01:
It's because in this case,

[00:20:47] Speaker 01:
There was no justification to even say the word buddy help in court.

[00:20:52] Speaker 01:
The counsel and his expert admitted buddy help did not invalidate the patent.

[00:20:58] Speaker 01:
So why was it pervasive in this case?

[00:21:01] Speaker 01:
It's because.

[00:21:03] Speaker 02:
Didn't the court say that Citrix was going to discuss buddy help to prevent your client from broadening the reach of the claims to, wasn't that the purpose?

[00:21:13] Speaker 02:
So that the claims had been construed.

[00:21:17] Speaker 01:
That's an illegitimate purpose, Your Honor.

[00:21:19] Speaker 01:
The trial court has told the jury what the claims mean.

[00:21:24] Speaker 01:
It's for the jury to decide whether the claims read on the accused product.

[00:21:29] Speaker 01:
What Your Honor may be referring to is the sometimes appropriate use of the prior art to limit, in a doctrine of equivalence case, to limit expansion of the claim scope

[00:21:43] Speaker 01:
when a claim of infringement under the doctrine of equivalence has been made.

[00:21:47] Speaker 01:
In those cases, yes, you can look to the prior art.

[00:21:52] Speaker 01:
But in this case, there was no doctrine of equivalence argument being made.

[00:21:58] Speaker 01:
It wasn't before the jury.

[00:22:00] Speaker 01:
Buddy help never should have seen the light of day.

[00:22:02] Speaker 01:
Thank you very much, Your Honor.

[00:22:04] Speaker 03:
Thank you.

[00:22:04] Speaker 03:
Thank you, both.

[00:22:06] Speaker 03:
That concludes this morning's arguments for this panel.