[00:00:00] Speaker 03:
Good morning.

[00:00:09] Speaker 03:
We have six cases on the calendar this morning.

[00:00:14] Speaker 03:
Three patent cases from district courts, a patent case from the Board of Appeals, a military pay case from the Court of Federal Claims, and a veterans case from the Court of Appeals for

[00:00:30] Speaker 03:
The claim court and veterans cases are submitted on the briefs and will not be argued.

[00:00:38] Speaker 03:
So we have four patent cases.

[00:00:41] Speaker 03:
The first one is Simple Air versus Google, 2016, 2738.

[00:00:47] Speaker 03:
Mr. Uchman.

[00:00:58] Speaker 00:
Good morning, and may it please the court.

[00:01:01] Speaker 00:
The first topic I'd like to address today is how to treat continuation patents for purposes of the claim preclusion doctrine.

[00:01:09] Speaker 01:
Just a housekeeping question.

[00:01:11] Speaker 01:
How many more patents are lurking here?

[00:01:15] Speaker 00:
The total family has 10 in them.

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Two of them are currently subject to a declaratory relief action that they filed in California, which the parties have agreed to stay for the moment.

[00:01:25] Speaker 01:
Because all of the patents should have expired by now, right?

[00:01:27] Speaker 00:
That's correct.

[00:01:28] Speaker 00:
They all have.

[00:01:28] Speaker 01:
I'm just wondering, however this case gets resolved, are we going to be in this continuing night of the living dead situation where there's going to be more patents coming out of this spec that might be used to sue Google again?

[00:01:43] Speaker 00:
No, Your Honor.

[00:01:43] Speaker 00:
These patents, all of the patents have expired.

[00:01:46] Speaker 00:
At the end?

[00:01:46] Speaker 00:
I'm sorry, sir?

[00:01:46] Speaker 01:
We're at the end of the litigation process with this case.

[00:01:50] Speaker 01:
That's right, Your Honor.

[00:01:51] Speaker 01:
And then the DJ action.

[00:01:52] Speaker 00:
That's right.

[00:01:53] Speaker 01:
OK.

[00:01:54] Speaker 00:
In the district court, Google presented the theory that all continuation patents in a family of patents should essentially be treated as one patent, one piece of property, giving rise to just one cause of action.

[00:02:08] Speaker 03:
If that's stating a broad rule, then we're deciding a case view.

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We've got a bunch of patents there.

[00:02:16] Speaker 03:
Continuation claims differ very little from each other.

[00:02:23] Speaker 03:
terminal disclaimer, which can only have been filed to avoid an obviousness rejection.

[00:02:29] Speaker 03:
So why isn't this readily probable?

[00:02:34] Speaker 00:
Your Honor, for several reasons.

[00:02:36] Speaker 00:
First, the filing of a terminal disclaimer under this Court's law does not create a presumption nor an estoppel on the merits of any double patenting objection.

[00:02:46] Speaker 03:
It could be relevant, though, can't it?

[00:02:48] Speaker 00:
It would be relevant, Your Honor, if we had lost the prior case on obviousness.

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Now in every single one of the prior cases, and in the various IPRs and CBMs, we succeeded on the grounds of validity.

[00:03:01] Speaker 04:
Doesn't a terminal disclaimer presume that there are similarities between the patents?

[00:03:09] Speaker 00:
It does in the sense that it's usually only filed in response to an obviousness type double patenting rejection or suggestion at the patent office.

[00:03:23] Speaker 04:
That's the use of the terminal disclaimer, but really what you're saying in that situation is that the PAN-T is seeking a patent on the same invention.

[00:03:32] Speaker 00:
No, Your Honor.

[00:03:33] Speaker 00:
If it were exactly the same invention, a terminal disclaimer would not overcome that rejection.

[00:03:39] Speaker 03:
One patentably indistinct.

[00:03:42] Speaker 03:
I'm sorry, Your Honor?

[00:03:44] Speaker 03:
An invention not patentably indistinct.

[00:03:47] Speaker 03:
Patentably distinct.

[00:03:48] Speaker 03:
I mean, that's the point, isn't it?

[00:03:50] Speaker 00:
Well, the point of the terminal disclaimer is that it can

[00:03:53] Speaker 00:
overcome a rejection that it's not patentably distinct.

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But a finding that something is not patentably distinct, or even just a mere suggestion or a rejection, is not a finding that it's the exact same invention.

[00:04:06] Speaker 00:
Because that would be still a violation of Section 101.

[00:04:09] Speaker 01:
But I guess what Judge Gilstrap relied upon was your terminal disclaimer as being a representation that the claims in these patents are not patentably distinct over the other patents.

[00:04:21] Speaker 01:
which have already been litigated in final judgment as being not infringed by Google's products.

[00:04:28] Speaker 01:
That's my understanding of the rationale below, right?

[00:04:32] Speaker 00:
That's right, Your Honor.

[00:04:32] Speaker 01:
Therefore, by being patentably indistinct, there can't really be a new cause of action with these patents given the insubstantial difference between these patent claims and the old patent claims.

[00:04:47] Speaker 00:
No, Your Honor, that's not correct.

[00:04:48] Speaker 01:
But that's the logic of the

[00:04:51] Speaker 01:
district court's reasoning, right?

[00:04:52] Speaker 01:
That is the logic.

[00:04:53] Speaker 01:
OK, now you can go ahead and try to destroy that logic.

[00:04:56] Speaker 00:
First, Your Honor, the filing of a terminal disclaimer under this court's holding in Quad Environmental, this case is cited in our brief, does not raise a presumption nor an estoppel on the merits of the double patenting rejection.

[00:05:12] Speaker 00:
It is improper to convert this simple expedient of obviation into an admission or acquiescence of estoppel on the merits.

[00:05:19] Speaker 00:
That's the quad environmental case.

[00:05:22] Speaker 00:
So when we filed that terminal disclaimer, it would be improper for anybody at the Patent Office or anybody in subsequent litigation to say that that is an acquiescence, that that is an agreement, that these inventions are, in fact, patentably indistinct.

[00:05:37] Speaker 00:
Furthermore, Your Honor, we are here in the context of a motion to dismiss.

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It is their burden for any one of these preclusion doctrines to show that these patents raise the exact same cause of action

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as the prior patents.

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Now, to do that, they simply pointed to the terminal disclaimer and the relationship to the family as if that created an irrebuttable presumption that they raised one and only one cause of action that has never been found by any court, district court, or any of the opinions of this court before.

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And furthermore, the inferences need to be resolved in our favor on a motion to dismiss.

[00:06:16] Speaker 00:
They have to be resolved in our favor.

[00:06:18] Speaker 00:
We have pleaded specifically that we did not intend or admit in filing that terminal disclaimer that these patents were patentably indistinct.

[00:06:29] Speaker 01:
I guess a concern I have is I've looked at your claims.

[00:06:35] Speaker 01:
I've looked at the claims that were litigated in simple error one and read your patent.

[00:06:41] Speaker 01:
And even if we were to send this case back, I don't see how you would be able to survive

[00:06:48] Speaker 01:
a new motion arguing that there really is no new cause of action here because the claims are so similar to the prior claims and especially in every critical way or an issue preclusion argument given the claim language of whether the system is online or offline you're going to be getting these notification messages i.e.

[00:07:13] Speaker 01:
through that what I'll call right hand side of the figure

[00:07:18] Speaker 01:
a communication pathway that is distinct from the communication pathway when the user device connects via the internet to anything on the internet.

[00:07:29] Speaker 00:
Your Honor, I'll address that in three points.

[00:07:32] Speaker 00:
The first is that similarity between these patents is not sufficient to show that they give rise to the same cause of action.

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This Court has held repeatedly that each patent gives rise to its own cause of action.

[00:07:46] Speaker 00:
They're each distinct property rights.

[00:07:48] Speaker 01:
But we've also said, beyond that, in cases like Senju and, I think, ASPEX, when the claims aren't going to be any material.

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It can't be broader, because those are re-exam claims.

[00:08:02] Speaker 01:
Then there's no cause of action there.

[00:08:04] Speaker 01:
So then the inquiry really becomes, OK, to what extent are the claims materially broader?

[00:08:10] Speaker 01:
So you have your baseline statement from Kearns, but then you have these other statements

[00:08:15] Speaker 01:
from Senju and aspects that ask us to look a little more deeply.

[00:08:20] Speaker 01:
And in those cases, in fact, those patent owners were bar if I claimed the claim.

[00:08:25] Speaker 00:
Absolutely, Your Honor.

[00:08:25] Speaker 00:
And as the Court recognizes, these are not re-exam patents.

[00:08:28] Speaker 00:
These are continuation patents.

[00:08:30] Speaker 00:
And by law, we are permitted, during prosecution of these, to make them broader.

[00:08:34] Speaker 00:
For example, by removing limitations that were found not to infringe.

[00:08:38] Speaker 01:
All right.

[00:08:38] Speaker 01:
But my point is, when you have the same claim language

[00:08:43] Speaker 01:
Regardless of whether the user device is online or offline, you're going to get these notification messages, i.e.

[00:08:50] Speaker 01:
you're going to be using this distinct pathway for transmitting and receiving the notification messages, which is different from the internet connection.

[00:08:58] Speaker 00:
Your Honor, it is not the same language.

[00:09:00] Speaker 00:
The claims are drafted differently and they have a different meaning.

[00:09:03] Speaker 00:
And this court never previously ruled on this claim language.

[00:09:08] Speaker 00:
The ruling that was on the prior patent

[00:09:10] Speaker 00:
And this is in the opinion that Judge Raina also signed on to on the 914 patent, address different language, a term data channel that the court said and rightly found was not found anywhere in the specification.

[00:09:23] Speaker 00:
These patents specifically refer to an information provider, which is a source on the internet, for example, espn.com and their website.

[00:09:33] Speaker 00:
And what these claims say is that you're going to send the notifications

[00:09:39] Speaker 00:
and notify the device, even when the remote computing device is not connected to CNN.com.

[00:09:47] Speaker 00:
It is not about whether the device is connected to the internet at large or has a data channel, a term that doesn't appear here.

[00:09:53] Speaker 01:
But the concern I have for your position is when the language in the claim says whether online or offline, that basically means whether you're powered on or powered off to the network.

[00:10:05] Speaker 01:
And so if there's additional language in the claim that says,

[00:10:08] Speaker 01:
whether you're powered on to CNN.com or whether you're not powered on to CNN.com, the operative language is, are you powered on to the network or not?

[00:10:19] Speaker 01:
And that's what the language offline, online means.

[00:10:22] Speaker 01:
It's the exact same language that was earlier litigated in the prior patents, and that is

[00:10:28] Speaker 01:
part of the critical reason why this court concluded that Google's products don't infringe because they only use one pathway.

[00:10:37] Speaker 01:
They don't use two distinct pathways.

[00:10:40] Speaker 00:
Your Honor, two things.

[00:10:41] Speaker 00:
The analysis that you're providing at the moment will be proper in one of two situations.

[00:10:47] Speaker 00:
First, under claim preclusion, if this court were to conclude that Kearns doesn't apply because that's too much of a bright line rule,

[00:10:55] Speaker 00:
And we do need to, in fact, even for purposes of claim preclusion, look at whether there are differences that are material in these claims that can show that the claims are broader and may, in fact, be infringed.

[00:11:06] Speaker 00:
The type of analysis that you're providing, that inquiry, is one that would be proper under that analysis.

[00:11:11] Speaker 00:
Now, what it isn't related to is an assumption, an automatic assumption, that because there's a terminal disclaimer filed or because these patents are part of the same family, that we don't even get to make the argument about material differences between the claims.

[00:11:25] Speaker 00:
The second context in which the analysis you're providing would come up is, in fact, in the context of an issue preclusion framework.

[00:11:33] Speaker 00:
That is the framework that we believe is the proper one for analyzing this situation.

[00:11:39] Speaker 00:
But it is not one that they raised below.

[00:11:40] Speaker 00:
They've only raised it here for the first time on the appeal.

[00:11:44] Speaker 04:
It was not fair to do that when we don't have a... But if we were to remand, we would have to ask Judge Gilstrap to

[00:11:51] Speaker 04:
make a whole new analysis right under claim preclusion and issue preclusion to examine the claims of all the patents and see if there is indeed any type of preclusion?

[00:12:03] Speaker 00:
Absolutely, Your Honor.

[00:12:04] Speaker 00:
And we can win that argument below.

[00:12:06] Speaker 00:
The argument of issue preclusion, and this is something that is also distinctive at this case, usually when these matters come up to the court, either under the doctrine of claim preclusion or Kessler,

[00:12:17] Speaker 00:
The district court below has addressed each of the three available or potentially available situations, claim preclusion, casserole, and issue preclusion.

[00:12:25] Speaker 00:
So you've been able to do the full analysis, and this court can then determine whether it's the case that this one or that one applies.

[00:12:33] Speaker 03:
Here.

[00:12:34] Speaker 03:
Mr. Reichman, you're well into the time you wanted to save for a bottle.

[00:12:38] Speaker 03:
You can continue to use it or save it.

[00:12:41] Speaker 00:
I'll continue for the moment, Your Honor.

[00:12:42] Speaker 00:
Thank you.

[00:12:44] Speaker 00:
We believe that if the court is going to adopt a test that says, for purposes of claim preclusion, it's not enough to just simply be your own patent.

[00:12:52] Speaker 00:
You have to look for claim preclusion to determine whether there's material differences under the claim.

[00:12:57] Speaker 00:
Then that's an analysis that needs to take place at the district court where they need to meet their burden of showing that these claims are materially the same as the others.

[00:13:08] Speaker 00:
Just as in a case where a new product is asserted, it's the burden of the defendant

[00:13:13] Speaker 00:
to show that the two products are essentially the same.

[00:13:16] Speaker 00:
If the test is going to be equivalent for related patents as it is for related products, then it still is their burden to show there's no material difference.

[00:13:25] Speaker 00:
If we are going to get to the doctrine of issue preclusion and into the fact, the question of whether this court in its prior decision ruled that there's only one invention in this entire specification and it has this one data channel limitation,

[00:13:39] Speaker 00:
and that no other claims can ever issue in any other patents out of this specification that are different from that.

[00:13:46] Speaker 00:
That's not what this court ruled.

[00:13:48] Speaker 00:
And we believe that we should provide a full and fair opportunity at the district court to show that issue preclusion does not apply to this claim language.

[00:13:55] Speaker 00:
It's very different from the data channel language.

[00:13:57] Speaker 00:
And for the moment, I'd like to reserve the remainder for rebuttal.

[00:14:01] Speaker 03:
We will do that, Mr. Verhoeven.

[00:14:07] Speaker 02:
Good morning.

[00:14:08] Speaker 02:
May it please the court.

[00:14:09] Speaker 02:
Simple Error has had multiple opportunities to prove its claims.

[00:14:13] Speaker 02:
It's asserted four patents against Google, and we've got final judgments in our favor for Google on all four patents.

[00:14:21] Speaker 02:
This is now the fourth round in which they're asserting the same invention against the same accused product.

[00:14:30] Speaker 02:
By filing terminal disclaimers back to the 433 patent, Simple Error made an election to treat

[00:14:38] Speaker 02:
the A38 in 048 patents, patents in this appeal, as part of a single invention?

[00:14:46] Speaker 03:
Well, we know why terminal disclaimers are filed, but we also have statements in case law saying it's not an admission.

[00:14:56] Speaker 02:
That's correct, Your Honor.

[00:14:58] Speaker 02:
So I want to get right to that.

[00:15:01] Speaker 02:
So we're not arguing it's an admission.

[00:15:04] Speaker 02:
We're not arguing it's a stop-all.

[00:15:06] Speaker 02:
If you look at those cases,

[00:15:07] Speaker 02:
They're not talking about obviousness type double patenting based on the prior patent.

[00:15:15] Speaker 02:
Those cases are talking about, can I argue obviousness based on a piece of prior art?

[00:15:23] Speaker 02:
The point I want to make is, regardless of admission or estoppel, during the prosecution of a patent, if you get a rejection for obviousness type double patenting, the patentee can make an election.

[00:15:37] Speaker 02:
They can elect to challenge that and preserve their invention as a separate invention, or they can simply file a terminal disclaimer.

[00:15:46] Speaker 02:
The effect of filing the terminal disclaimer is that it removes obviousness type double patenting.

[00:15:53] Speaker 01:
We know all this.

[00:15:54] Speaker 01:
Yes.

[00:15:55] Speaker 02:
So at district court, I can't argue obviousness type double patenting to the jury or the court, because they've made that election.

[00:16:05] Speaker 02:
And now they come to the court.

[00:16:07] Speaker 01:
No, but to argue claim preclusion, you have to then, as the movement, argue why these claims are qualitatively the same or insignificantly different from the claims that had already been litigated.

[00:16:19] Speaker 01:
And that's what you didn't do.

[00:16:21] Speaker 01:
You used the terminal disclaimer as creating, I guess, a strong presumption, if not a clear rule, that these claims, new claims, can never be litigated in light of the terminal disclaimer.

[00:16:36] Speaker 01:
runs into the teeth of quad-environmental motionless keyboard and orthopharmaceutical, where we say, where we've said, you know, we can debate whether it's right or wrong, but we have said that you cannot look at a terminal disclaimer in some kind of substantive way.

[00:16:52] Speaker 01:
It's nothing more than a procedural tool to remove the obviousness type double patent rejection.

[00:16:59] Speaker 02:
Exactly.

[00:16:59] Speaker 02:
And if you look at those cases, they're saying,

[00:17:05] Speaker 02:
like motionless keyboard, saying, obviousness type double patent is not relevant anymore.

[00:17:11] Speaker 02:
So in motionless keyboard, I believe, the Federal Circuit said the district court was wrong.

[00:17:17] Speaker 01:
You're not arguing validity here, right?

[00:17:19] Speaker 01:
You're arguing non-infringement.

[00:17:20] Speaker 02:
What we're arguing, Your Honor, is that the appropriate test for this court to consider in preclusion is the transaction test, not the identity of issues test.

[00:17:32] Speaker 02:
That's claim preclusion.

[00:17:34] Speaker 02:
or excuse me.

[00:17:35] Speaker 04:
Did Judge Gilstrap do that?

[00:17:37] Speaker 02:
Yes, he did.

[00:17:39] Speaker 02:
Well, yes, he did.

[00:17:40] Speaker 04:
He's, in fact, the best... Didn't he rely his decision on the terminal disclaimer matter?

[00:17:46] Speaker 02:
He did rely as one factor, Your Honor, and it should be one factor.

[00:17:51] Speaker 02:
It's a very important factor, but you need to look at the totality of circumstances.

[00:17:55] Speaker 02:
And in the totality of circumstances, Your Honor, we've got multiple lawsuits being filed on the same patent family.

[00:18:03] Speaker 02:
We've got this

[00:18:04] Speaker 02:
District court has now done three trials, two trials in the simple one error case, a simple error one case, and a trial in simple error two, three combined case.

[00:18:14] Speaker 02:
And now they want him to go start over.

[00:18:16] Speaker 04:
How do you see how totality of circumstances, the way you're describing, is a factor in these different tests?

[00:18:23] Speaker 02:
Well, the transaction test, which all parties admit is the applicable test for claim preclusion,

[00:18:31] Speaker 04:
Transaction test is a very limited test.

[00:18:34] Speaker 04:
It's a narrow test.

[00:18:35] Speaker 04:
It's not a totality or circumstances test.

[00:18:37] Speaker 02:
It's a test that looks at whether there's a common nucleus of operative fact.

[00:18:42] Speaker 02:
And let me give you an example, Your Honors.

[00:18:44] Speaker 04:
Yeah, but the fact that there is multiple lawsuits swirling around here doesn't respond to that.

[00:18:54] Speaker 02:
All I'm saying, Your Honor, is it looks at the factual situation and whether there's a common nucleus of operative fact.

[00:19:00] Speaker 02:
From the Supreme Court on down, that's what the transaction test is.

[00:19:05] Speaker 02:
And I just want to say one thing about this.

[00:19:07] Speaker 02:
Think about counterclaims and compulsory counterclaims.

[00:19:12] Speaker 02:
What's the test for whether a counterclaim is compulsory?

[00:19:17] Speaker 02:
Whether there's a common nucleus of operative fact.

[00:19:19] Speaker 02:
Same test.

[00:19:21] Speaker 02:
Here, we're talking about claims that clearly

[00:19:24] Speaker 02:
are not even the claims that the plaintiff is making.

[00:19:27] Speaker 02:
They're claims from the defendant.

[00:19:29] Speaker 02:
They're counterclaims.

[00:19:31] Speaker 02:
And those claims, if they involve the common nucleus of operative fact, must be asserted or they're waived.

[00:19:37] Speaker 02:
So the common nucleus of operative fact is not limited in some strict way to a particular claim.

[00:19:43] Speaker 02:
It's looking at the factual situation.

[00:19:46] Speaker 02:
What is the story?

[00:19:48] Speaker 02:
What are the common facts that are alleged, regardless of the form of the claim?

[00:19:52] Speaker 04:
Let me go back.

[00:19:54] Speaker 04:
Maybe we read the cases differently.

[00:19:56] Speaker 04:
I mean, it seems to me that Judge Gilstrap based his decision on terminal disclaimer, that he didn't make this claim by claim comparison and considered the brutality circumstance.

[00:20:07] Speaker 04:
He just simply said, there's a terminal disclaimer here.

[00:20:11] Speaker 04:
That tells me we're dealing with the same invention.

[00:20:14] Speaker 04:
And that was the end of his analysis.

[00:20:17] Speaker 02:
I agree he did not do a claim by claim comparison.

[00:20:19] Speaker 04:
So if we were to remand, then that's what Judge Bielstrap would have to do, correct?

[00:20:27] Speaker 02:
If Your Honor were to remand, I would say with respect, Your Honor, that that's issue preclusion.

[00:20:34] Speaker 02:
And you'd be looking at whether there's an identity of issues.

[00:20:37] Speaker 02:
And there's a distinction between claim preclusion and issue preclusion.

[00:20:40] Speaker 04:
Well, that would be up to him, then, to decide what test applies here, including testimony.

[00:20:47] Speaker 02:
Yes, Your Honor.

[00:20:49] Speaker 02:
The point, though, I'm making is there's two different doctrines here.

[00:20:54] Speaker 02:
And the claim preclusion doctrine is meant to avoid having to do this, having to go back and recheck everything and make sure everything was identically decided.

[00:21:07] Speaker 02:
It's saying if it's the same transaction, the same common nucleus of operative fact.

[00:21:12] Speaker 01:
But that's the whole point.

[00:21:14] Speaker 01:
You're assuming the conclusion.

[00:21:16] Speaker 01:
Is it the same?

[00:21:18] Speaker 01:
you know, transaction.

[00:21:19] Speaker 01:
Is it the same common nucleus of operative facts?

[00:21:22] Speaker 01:
Yes, they all come from the same specification, but they're all different claims.

[00:21:26] Speaker 01:
You can't just automatically say every single continuation patent is barred from being asserted after one patent, an entire family of patents has been litigated to non-infringement.

[00:21:39] Speaker 01:
That can't be the rule.

[00:21:40] Speaker 01:
So then the next question is, what is the rule?

[00:21:43] Speaker 01:
And you're saying, well, then the next rule is terminal disclaimer.

[00:21:47] Speaker 01:
But we have case law in the books that says terminal disclaimers shouldn't be presumed to have some kind of substantive confession, concession, estoppel effect.

[00:21:56] Speaker 01:
So then where do we go?

[00:21:58] Speaker 01:
I think where we go is you've got to actually go through the exercise, and it could be easy in this case, but you've got to nevertheless go through the substantive exercise of trying to figure out whether these claims and these patents are truly substantively, insignificantly different from the prior litigated patent claims.

[00:22:17] Speaker 02:
I don't think I'm making myself clear on the terminal disclaimer.

[00:22:20] Speaker 02:
Let me take one more shot if I can.

[00:22:22] Speaker 02:
What I'm trying to say is, you're right.

[00:22:24] Speaker 02:
The terminal disclaimer has no effect on future obviousness arguments and whatnot.

[00:22:30] Speaker 02:
But the effect of a terminal disclaimer is it takes the issue, which you've agreed with me, of obviousness type double patenting based on the prior patent that it's terminally disclaimed to.

[00:22:40] Speaker 02:
It removes that.

[00:22:42] Speaker 03:
And the effects of... Are you trying to say that the district court first decided that the underlying invention is the same, and then only said that the terminal disclaimer issue is that the issue was amplified?

[00:22:56] Speaker 02:
Exactly.

[00:22:57] Speaker 03:
In other words, that was a secondary point?

[00:22:59] Speaker 02:
There are many factors.

[00:23:00] Speaker 02:
Yes, Your Honor.

[00:23:00] Speaker 02:
There are many factors.

[00:23:02] Speaker 02:
The exact same product is being accused.

[00:23:06] Speaker 02:
Same witnesses are going to come to trial and testify.

[00:23:08] Speaker 02:
Same experts.

[00:23:10] Speaker 02:
It's going to be the same trial.

[00:23:11] Speaker 02:
uh... as the court has already done twice uh... and the only difference will be that it's a continuation that was terminally disclaimed and so we court looks at all those factors together and i think at the end of the opinion the uh... action analysis that these claims are the same correct correct the judge relied on the terminal disclaimer that's correct your honor what else did the judge rely on

[00:23:38] Speaker 02:
I think the judge took into consideration that there had been two trials.

[00:23:43] Speaker 02:
It's the same accused product.

[00:23:44] Speaker 02:
It's the same family of patents, Your Honor.

[00:23:49] Speaker 02:
And terminally disclaimer is important here.

[00:23:52] Speaker 02:
When you terminally disclaim, it has consequences.

[00:23:55] Speaker 02:
You forfeit the term of the patent back to the patent to which you terminally disclaim.

[00:24:00] Speaker 02:
And you also, you have this non-alienation doctrine, which is important here.

[00:24:06] Speaker 02:
The non-alienation doctrine says,

[00:24:08] Speaker 02:
an owner who terminally disclaims cannot sell the terminally disclaimed patent to anyone else.

[00:24:15] Speaker 01:
Let's get to the heart of the matter.

[00:24:16] Speaker 01:
Am I wrong to draw from Quad International Orthopharmaceutical and Motionless Keyboard the principle that the filing of a terminal disclaimer is not a confession that the new claims are patentably indistinct from the old claims?

[00:24:34] Speaker 02:
I disagree with that.

[00:24:35] Speaker 01:
Now, why is that wrong?

[00:24:37] Speaker 01:
Because that's how I'm currently thinking about it.

[00:24:39] Speaker 02:
If you look at those cases carefully, they're never addressing that issue.

[00:24:41] Speaker 02:
They're talking about a piece of prior art, a motionless keyboard is talking about, I forget the name of the system, but it's talking about a prior system and whether it was on sale.

[00:24:53] Speaker 02:
What I'm saying is, when you terminally disclaim, what you're doing is you're saying, I'm electing to take obviousness-type double patenting as to that other patent.

[00:25:01] Speaker 02:
That specific issue off the table.

[00:25:05] Speaker 02:
And as a result, I get a patent that I may not have otherwise gotten.

[00:25:09] Speaker 02:
As a result, I forfeit my term.

[00:25:12] Speaker 02:
As a result, I can't sell that patent to anyone else without selling the parent patent because of the policy of avoiding, the same policy that I'm advocating, of avoiding multiple harassing suits.

[00:25:24] Speaker 02:
That's the purpose of the non-alienation doctrine.

[00:25:27] Speaker 02:
And so what I'm saying on terminal disclaimer is- The past of the three cases we're talking about.

[00:25:34] Speaker 01:
Okay, there was the old patent and then there was a new patent where a terminal disclaimer was filed.

[00:25:39] Speaker 01:
In all three cases, the old patent ultimately in litigation got invalidated for Section 102, Section 102B.

[00:25:46] Speaker 01:
And then the defendant wanted to immediately invalidate the new patent where the terminal disclaimer was filed.

[00:25:53] Speaker 01:
On the theory that the patent owner had conceded and confessed that the new patent was patently indistinct

[00:26:01] Speaker 01:
from the old, now invalidated patent.

[00:26:03] Speaker 01:
And each time we said, no, you can't do that.

[00:26:06] Speaker 01:
You can't do this shortcut to conclude that the new patent is just automatically, as a matter of law, patently indistinct in light of the terminal disclaimer.

[00:26:16] Speaker 01:
You have to go back and do an independent analysis on whether or not that new patent is, in fact, invalid under 102, 103, whatever.

[00:26:26] Speaker 02:
Agreed.

[00:26:26] Speaker 01:
So now that we have the principle in those three cases that you cannot assume that through the TD that the new patent is patentably indistinct from the old patent, how can we now say in this particular instance, oh, we can use the TD in simple errors new patents to conclude that they must be, as a matter of law, patentably indistinct from the old patents that have already been litigated?

[00:26:50] Speaker 01:
I don't see how we can do it.

[00:26:52] Speaker 02:
because those cases you just referenced are talking about a shortcut, as you said, so that you don't have to look and see if, in fact, the eternally disclaimed patent is invalid under this prior art, the same as the earlier one was.

[00:27:04] Speaker 02:
What we're talking about here is different.

[00:27:06] Speaker 02:
What we're talking about here is whether or not they can get their patent by admitting it's patentably indistinct and then turn around

[00:27:15] Speaker 02:
and say it's not the same transaction because they're patented.

[00:27:18] Speaker 01:
You hear what you just said?

[00:27:19] Speaker 01:
You just said they admitted that the claims are patently indistinct.

[00:27:22] Speaker 02:
Well, I apologize.

[00:27:24] Speaker 02:
Whether they can get their patent by filing a terminal disclaimer, Your Honor, and avoid the challenge of obviousness type double patenting at the Patent Office, and then turn around, and when they're sincerely suing on the same invention, make that argument, that very argument, that the patent is distinct, having

[00:27:45] Speaker 02:
filed the terminal disclaimer to get their patent in the first place.

[00:27:48] Speaker 02:
It's completely inequitable.

[00:27:49] Speaker 02:
And it's not having anything to do with admission about prior art.

[00:27:52] Speaker 02:
It's not having anything to do with estoppel, trying to argue estoppel.

[00:27:58] Speaker 02:
What we're saying is they took that off the table.

[00:28:02] Speaker 02:
And now they've basically took the issue of whether their patent is distinct from the earlier patent.

[00:28:07] Speaker 02:
That's the narrow issue I'm talking about.

[00:28:09] Speaker 02:
They took that off the table.

[00:28:11] Speaker 02:
And now they want to re-raise it, having got their patent by taking it off the table.

[00:28:15] Speaker 02:
and put it back on the table and say, this is patentably distinct.

[00:28:19] Speaker 02:
Because if it's not patentably distinct, they can see that preclusion applies.

[00:28:25] Speaker 04:
Assuming, and I appreciate your argument, but isn't this something that Judge Gilstrup should have considered?

[00:28:33] Speaker 04:
Well, I think that he didn't.

[00:28:36] Speaker 04:
He just simply took the eternal disclaimer and said, this tells me it's the same invention, case closed.

[00:28:43] Speaker 04:
He did not engage in the very,

[00:28:45] Speaker 04:
discourse that you're telling us.

[00:28:50] Speaker 02:
That's correct, Your Honor, because we moved on claim preclusion and neither side asked for a comparison of the claims.

[00:28:56] Speaker 04:
If our law says that every patent is a new cause of action, then isn't that error on Judge Goldstrap's part?

[00:29:04] Speaker 04:
No, Your Honor.

[00:29:05] Speaker 04:
To have summarily dismissed this case without engaging

[00:29:09] Speaker 04:
in the type of analysis that's required in order to determine the rest of the conduct, claim preclusion, the Kessler Doctrine, claim splitting, whatever applies here, he should have conducted this type of analysis.

[00:29:22] Speaker 02:
I would submit he did do that, Your Honor.

[00:29:25] Speaker 04:
Well, you said repeatedly he didn't do that.

[00:29:27] Speaker 02:
Well, he referred to the transaction test, and he did list some factors, Your Honor.

[00:29:33] Speaker 02:
He did not compare the claims to look if there was an identity of issues, because that's issue preclusion.

[00:29:39] Speaker 01:
Issue preclusion, claim preclusion, they're all questions of law.

[00:29:42] Speaker 02:
Correct.

[00:29:43] Speaker 01:
And do we have the authority to handle that right here, right now?

[00:29:47] Speaker 01:
Or are we obligated to give the district court the first shot at addressing those actual, more merits questions of comparing the new claims against the old?

[00:29:59] Speaker 02:
This court is absolutely authorized to consider it right now, Your Honor.

[00:30:03] Speaker 01:
Because why?

[00:30:04] Speaker 02:
Because number one, in its opposition, or it's in its appeal papers, Simple Air makes the argument that the patent is different.

[00:30:14] Speaker 02:
They make that argument repeatedly.

[00:30:16] Speaker 02:
And I can go into the merits of that, but we don't believe it has any merit.

[00:30:20] Speaker 02:
But they have raised that issue.

[00:30:23] Speaker 02:
Now, we in our opposition, our appellee papers, said, well, in the alternative, the court could rule on issue preclusion.

[00:30:31] Speaker 02:
And that's a slam dunk as a matter of law, too.

[00:30:34] Speaker 02:
And now, in their reply, they say, well, we can't consider it, having argued that you should consider it in the opening papers.

[00:30:42] Speaker 03:
It should be closed in his question.

[00:30:43] Speaker 03:
I think the time is up.

[00:30:45] Speaker 02:
Thank you, Your Honor.

[00:30:46] Speaker 03:
And we'll give Mr. Eichmann three minutes.

[00:30:56] Speaker 00:
First, Judge Chen, if I may address your last question.

[00:31:01] Speaker 00:
Issue preclusion is a question of law.

[00:31:03] Speaker 00:
But in order to reach it, the parties have to have a full and fair opportunity below to state their positions.

[00:31:10] Speaker 00:
And in this case, that would include a full and fair opportunity to construe the claims in this case, to at least get their positions of how exactly they would construe this claim.

[00:31:20] Speaker 00:
And they say it's the same because the terminal disclaimer shows it.

[00:31:23] Speaker 00:
We all know there's some similar language.

[00:31:25] Speaker 00:
But are we not at least entitled to the opportunity to see their actual claim construction proposal

[00:31:30] Speaker 00:
the portions of the specification that they rely upon, how exactly they are interpreting the prior opinion regarding that data channel language to be so broad as to preclude any other invention in the specification for being claimed.

[00:31:44] Speaker 00:
The second point, Your Honor, is that on this issue again of distinguishing these claims from the data channel claims, I would direct the Court to Appendix 88, Column 29,

[00:31:59] Speaker 00:
starting at line 44.

[00:32:01] Speaker 00:
This is within the 484 patent.

[00:32:04] Speaker 00:
And if you want to take a moment to get there.

[00:32:09] Speaker 00:
Yes, appendix 88, column 29.

[00:32:12] Speaker 00:
Starting at line 44.

[00:32:17] Speaker 00:
Are you there, Your Honor?

[00:32:19] Speaker 00:
This is one example of an embodiment that matches with the language of these claims, these information provider claims.

[00:32:27] Speaker 00:
What is described here is the figure 13 embodiment, and what you'll see here starting at line 47 is, quote, in accordance with the present invention, a user may be instantly notified of email messages without being connected to an email service provider.

[00:32:45] Speaker 00:
That embodiment, that invention is about sending a notification to a remote computing device that is not connected to an information provider, in this case, an email information provider.

[00:32:56] Speaker 00:
And if you look through that embodiment in figure 13, what you don't see there is a requirement that that device is online, or it has to be able to be notified even when it's not connected to the internet.

[00:33:09] Speaker 00:
Another example.

[00:33:11] Speaker 00:
Did you have a question, Your Honor?

[00:33:12] Speaker 01:
Yeah.

[00:33:13] Speaker 01:
I guess I don't understand why this helped you.

[00:33:17] Speaker 01:
But OK, keep going.

[00:33:19] Speaker 00:
The other example that I would point to is on column 30, also on- How is this responsive to your opponent's argument?

[00:33:26] Speaker 00:
Your Honor, what I'm hearing from both sides appears to be an attempt to prejudge our ability on the merits of issue preclusion.

[00:33:34] Speaker 00:
So they've argued that the district court below had all the knowledge from the past case and all the experience of the patents in order to make a determination of what these patents are about and how they differ from the other ones.

[00:33:46] Speaker 00:
We don't dispute that they – that the court had that knowledge and information.

[00:33:49] Speaker 00:
We're saying that both sides need to be able to participate in a process where we identify portions of the specification

[00:33:56] Speaker 00:
that support our various positions.

[00:33:58] Speaker 00:
This is one such portion of the specification, as well as, also on Appendix 88, the Figure 12 embodiment that starts at Column 30, Line 58, and continues to Column 31, Line 20.

[00:34:12] Speaker 03:
Thank you, Counsel.

[00:34:16] Speaker 03:
Thank you, Your Honor.

[00:34:16] Speaker 03:
We'll take the case under advisement.

[00:34:19] Speaker 00:
Thank you, Your Honor.