[00:00:00] Speaker 04:
The last case for argument this morning is 19-1141, Amarynth versus Domino Pizza.

[00:01:19] Speaker 04:
We're ready.

[00:01:20] Speaker 04:
Good morning.

[00:01:21] Speaker 02:
Good morning, Honors.

[00:01:22] Speaker 02:
Rich Weinblatt of Samuelson-Weinblatt on behalf of Amherst.

[00:01:26] Speaker 02:
The district court should be reversed for at least three reasons.

[00:01:29] Speaker 02:
First, the court invalidated nine unasserted claims contrary to Fox Group v. Cree.

[00:01:34] Speaker 02:
Second, it violated Ninth Circuit law as an animal legal defense fund v. US Food and Drug Administration by issuing summary judgment in the face of a disputed factual record regarding what was routine and conventional.

[00:01:47] Speaker 02:
Third,

[00:01:48] Speaker 02:
Even though the appealed claims are presumed eligible under self-spend and eye-for-eye, the court did not view the facts in the light most favorable to Amarith and ignored claim elements to rely on Apple v. Amarith when deciding they are patent eligible.

[00:02:00] Speaker 04:
Can I start you off with, I think, the second point you made, which is the scope of the judge's ruling here on 101 and the claims that were covered?

[00:02:10] Speaker 04:
So included in those claims are 4, 5, and 14.

[00:02:17] Speaker 04:
As far as I can tell from what we have in the record, those claims were asserted against maybe some of the other defendants, but not against Domino's.

[00:02:27] Speaker 04:
But I don't know that we have the complete record.

[00:02:29] Speaker 04:
What is your?

[00:02:32] Speaker 02:
Only claims 1, 6, 9, 13, and 17 were asserted against Domino's.

[00:02:37] Speaker 04:
Well, originally, the others were as well, right?

[00:02:39] Speaker 04:
You just were forced to pull back because the district court allowed you to only assert

[00:02:45] Speaker 04:
Five.

[00:02:46] Speaker 04:
So I know that.

[00:02:47] Speaker 04:
I'm asking you about, though, particularly four, five, and 14.

[00:02:52] Speaker 04:
Because my view of the record is that all the other stuff, at least at some point, was asserted against the defendant.

[00:03:00] Speaker 04:
But those claims, as far as I can tell, were asserted against another defendant, but not this defendant.

[00:03:06] Speaker 04:
I'm just asking you.

[00:03:07] Speaker 02:
So if you go back in the earlier part of the case, that is correct.

[00:03:10] Speaker 02:
But Fox Group v. Cree, as well as

[00:03:15] Speaker 02:
I think it's Plantronics, and there's one other, tell us that at the time of the court's ruling, the subject matter jurisdiction is only on those claims that- But you're addressing a different question.

[00:03:27] Speaker 01:
The question was whether 4, 5, and 14 were ever asserted, or there's any controversy between you and Domino's about those three claims.

[00:03:38] Speaker 02:
No, there's no controversy.

[00:03:40] Speaker 02:
There is.

[00:03:40] Speaker 04:
And there never has been in the context of this case.

[00:03:43] Speaker 00:
I'm not aware of that.

[00:04:09] Speaker 00:
Five lines up from the bottom you say, which identified the asserted claims as claims 1, 6, 8, 13, and 17.

[00:04:17] Speaker 00:
And two lines up from the bottom, Amaranth asserted claims 1, 6, 9, 13, and 17.

[00:04:26] Speaker 00:
I'm sure there's an explanation for that other than it's a typographical error.

[00:04:30] Speaker 00:
Can you help me?

[00:04:31] Speaker 00:
Yes, it's not your... When it happens in several other places in the briefing, it jumps between claim eight and claim nine.

[00:04:39] Speaker 00:
What's the story?

[00:04:40] Speaker 02:
So here's the story, and it's in the sentence first.

[00:04:42] Speaker 02:
The first sentence that you read, one, two, three, four.

[00:04:45] Speaker 02:
Six lines up.

[00:04:46] Speaker 02:
About six months later, Pizza Hut had filed a motion for summary judgment, which identified the asserted claims as claims 1, 6, 8, 13, and 17.

[00:04:54] Speaker 02:
So if you were to look at APP Act 6398 and APP Act 6421, that's Pizza Hut's motion for summary judgment, where they identified those asserted claims, 1, 6, 8, 13, and 17.

[00:05:07] Speaker 02:
When Domino's sought to join Pizza Hut's then-muted motion, Domino's pointed out to the district court that,

[00:05:16] Speaker 02:
Claim eight was not asserted against dominoes.

[00:05:20] Speaker 02:
but claimed 9 was.

[00:05:23] Speaker 02:
So at that point in time, the only claims that were then in front of the Judge Sabrah was 1, 6, 9, 13, and 17, because those were the only asserted claims against Dominos.

[00:05:36] Speaker 00:
Well, that's not quite true.

[00:05:38] Speaker 00:
9 is a dependent claim of 1.

[00:05:40] Speaker 00:
8 is the dependent claim of claim 1, and 9 is an independent claim.

[00:05:48] Speaker 02:
That's correct, Your Honor.

[00:05:51] Speaker 02:
So what it boils down to is... What does it boil down to?

[00:05:57] Speaker 02:
The parties were on notice of the five asserted claims against Domino's prior to when Domino's filed his motion for summary judgment.

[00:06:04] Speaker 02:
The district court itself was on notice of the five claims that were asserted against Domino's.

[00:06:09] Speaker 02:
The case law from the Federal Circuit is clear that where the parties are on notice of what claims are asserted, there's only subject matter jurisdiction on those asserted claims.

[00:06:20] Speaker 01:
But your problem is, if you look at 12-426,

[00:06:23] Speaker 01:
These claims, which are the subject of the judgment, other than 4, 5, and 14, were asserted against dominos, right?

[00:06:33] Speaker 01:
So the domino ordering system infringes at least claims, and then it lists the claims, right?

[00:06:42] Speaker 02:
No.

[00:06:42] Speaker 02:
So the claims were dropped against dominos.

[00:06:45] Speaker 02:
So there are only five.

[00:06:47] Speaker 01:
No, the local rules required you to limit it to five.

[00:06:50] Speaker 01:
The claims weren't dropped.

[00:06:52] Speaker 02:
If you look at the pretrial order, as well as the submissions to each other and the court, this is in line with Fox Root v. Cree, which is... Where does it say the claims were dropped?

[00:07:12] Speaker 01:
I mean, I know that they weren't included because of the local rule.

[00:07:16] Speaker 01:
But where is it that your client said that these claims were not infringed by Domino's?

[00:07:27] Speaker 01:
So, APPX 10198.

[00:07:29] Speaker 01:
10198?

[00:07:31] Speaker 01:
Yes.

[00:07:45] Speaker 02:
Causes of action to be tried, first paragraph, whether Amaranth has proven by preponderance of the evidence that Dominos directly infringes any of the asserted claims 1, 6, 9, 13, and 17 of the 077 patent, either literally or under the Doctrine of Equivalence.

[00:08:00] Speaker 02:
Yeah.

[00:08:01] Speaker 02:
Well, then those are the only claims that are being tried against Dominos.

[00:08:04] Speaker 01:
Right.

[00:08:05] Speaker 01:
But that doesn't mean that they weren't previously asserted.

[00:08:09] Speaker 02:
It doesn't matter if they weren't previously asserted, because as the case progressed,

[00:08:13] Speaker 02:
They weren't dropped.

[00:08:14] Speaker 02:
They had to have been.

[00:08:15] Speaker 02:
Otherwise, they'd be identified in what the court's trying.

[00:08:17] Speaker 01:
But is it not the case that the local rules said you can only assert five claims?

[00:08:21] Speaker 01:
It's not the local rules.

[00:08:22] Speaker 01:
It was the court's order.

[00:08:23] Speaker 01:
The court's order said you can only assert five.

[00:08:25] Speaker 02:
Said you can only assert five.

[00:08:26] Speaker 02:
So these are the only five asserted.

[00:08:27] Speaker 02:
That means the rest were not asserted at that point in time.

[00:08:31] Speaker 02:
Claims can be dropped in a litigation.

[00:08:33] Speaker 02:
There's times where a complaint says at least claim one, and the first infringement contention show 30 claims.

[00:08:39] Speaker 02:
And then by the time it goes to trial, there's only five being asserted.

[00:08:43] Speaker 02:
And then they might try two or three at trial.

[00:08:45] Speaker 02:
But here, there are only asserted claims that are defined, 169, 13, and 17.

[00:08:49] Speaker 02:
That's it.

[00:08:50] Speaker 02:
There's only five asserted claims against Domino's of the 077 patent.

[00:08:53] Speaker 04:
Those are the ones on page 2196.

[00:09:11] Speaker 04:
claims that you've been required to select.

[00:09:15] Speaker 04:
And Amaranth reserves the right to assert additional and or different claims in the future by court order in amended infringement contention or as otherwise, right?

[00:09:27] Speaker 02:
You have to look at the date of this document.

[00:09:30] Speaker 02:
The date of this document is earlier on in the case.

[00:09:36] Speaker 02:
Well, this goes with claims being asserted and then narrowed as the case progressed.

[00:09:41] Speaker 02:
So that goes to what I was saying before.

[00:09:43] Speaker 02:
If you have a claim that's asserted at the beginning and that's no longer asserted at the end, there's no subject matter jurisdiction over it because there's no case or controversy.

[00:09:51] Speaker 01:
So here... I don't think that's the law.

[00:09:53] Speaker 01:
I mean, I don't think that's what Fox stands for.

[00:09:55] Speaker 01:
Fox stands for the proposition that under the circumstances of that case, the district court could conclude that the allegations were withdrawn.

[00:10:05] Speaker 01:
In other words, no longer asserting infringement of those claims.

[00:10:08] Speaker 01:
It wasn't a situation where the local rule or the court's order limited the number of claims.

[00:10:22] Speaker 02:
In Amaranth's infringement conventions, it's at KPDX 2196, it's 169, 13, and 17.

[00:10:29] Speaker 02:
Again, those are the only ones charted for infringement.

[00:10:32] Speaker 02:
So that shows which claims were assorted.

[00:10:39] Speaker 02:
And then in

[00:10:41] Speaker 02:
the briefing to the district court at APPX 10258.

[00:10:45] Speaker 01:
So suppose you have a situation in which a patentee writes a letter to a claimed infringer saying, you've infringed six claims here.

[00:10:59] Speaker 01:
And then when the suit is brought, they only assert three.

[00:11:03] Speaker 01:
There's no subject matter jurisdiction over the other three?

[00:11:06] Speaker 02:
No, there are not.

[00:11:07] Speaker 02:
And that patent owner

[00:11:08] Speaker 02:
If that case goes to trial, loses the ability to assert those other three because they should have been brought at the time of the three.

[00:11:14] Speaker 01:
All you're saying is that you can't have a controversy except by suing, and that's not the law.

[00:11:20] Speaker 02:
What I'm saying is that if you try three cases, you then can't go back and say, I'm now asserting these other three.

[00:11:26] Speaker 02:
So if you are in court and you say, I'm asserting claims one through three,

[00:11:31] Speaker 02:
At trial, you say, here are the asserted claims one through three as a patent owner.

[00:11:35] Speaker 02:
You just lost the ability to say, well, I also asserted four through six.

[00:11:38] Speaker 01:
We do have cases, don't we, in which case a controversy was found because somebody wrote a letter saying you infringed X number of claims of the patent.

[00:11:47] Speaker 02:
In those cases.

[00:11:48] Speaker 01:
Without bringing suit, right?

[00:11:50] Speaker 02:
In those cases.

[00:11:52] Speaker 01:
Isn't that correct?

[00:11:54] Speaker 02:
Your honor, while there are cases that talk about unasserted claims and having, I shouldn't say unasserted claims, saying at least claim one, and then invalidating an entire patent.

[00:12:04] Speaker 02:
You cannot answer my question.

[00:12:05] Speaker 01:
Is it not the case that we have situations where we have found a case of controversy, even though

[00:12:11] Speaker 01:
the patent owner didn't bring suit but just sent a letter saying you infringed on such and such claims of our patent.

[00:12:18] Speaker 02:
I'm not aware of that unless you're talking about a declaratory judgment action in which the person receiving the letter said here are the claims that you asserted and the patent owner did not say

[00:12:28] Speaker 02:
no, I'm limiting my claims to these specific sets of claims.

[00:12:32] Speaker 02:
So where the patent owner does not limit the claims to be assorted, you are absolutely right and the court can invalidate an entire patent.

[00:12:40] Speaker 02:
But where, according to Fox Root v. Cray, Allergan v. Sandoz, Plantonix v. Alloth,

[00:12:46] Speaker 02:
And even in Inotherapeutics v. Praxar from August 27th, where the patent owner has restricted the claims that are asserted, there is no subject matter jurisdiction over those unasserted claims.

[00:12:59] Speaker 04:
In Fox Group, there are only two claims, one in 19 rights, that were asserted against them, that were ever asserted against them.

[00:13:06] Speaker 04:
We were dealing with the same set of claims throughout.

[00:13:09] Speaker 04:
It wasn't a situation such as this, where you started with an additional set of claims and were compelled to limit your assertions to five, right?

[00:13:19] Speaker 02:
I think that is correct.

[00:13:21] Speaker 02:
But I think Allergan and Plantronics dealt with the situation where claims were the narrowed

[00:13:26] Speaker 02:
And they changed these sort of claims by the time the case was tried or the motion was tried.

[00:13:34] Speaker 02:
I'm in my rebuttal.

[00:13:35] Speaker 00:
Not to belabor the point too much, but part of the confusion is attributed to sentences like, Amaranth filed a complaint against several defendants asserting infringement of two patents.

[00:13:51] Speaker 00:
This is from your brief.

[00:13:53] Speaker 00:
You don't infringe a patent.

[00:13:55] Speaker 00:
You infringe claims of a patent.

[00:13:57] Speaker 00:
So when you use the phrase infringement of two patents, it creates enormous confusion as to what it is you're actually stating.

[00:14:06] Speaker 00:
I suggest that for future reference.

[00:14:10] Speaker 02:
Thank you, Your Honor.

[00:14:23] Speaker 03:
Good morning, and may I please the court?

[00:14:24] Speaker 03:
My name is Frank Angeliari for Domino's.

[00:14:31] Speaker 03:
Would you like me to start on the issue that you were discussing?

[00:14:33] Speaker 04:
Yeah, that's the only thing your friend has covered.

[00:14:35] Speaker 03:
So I think it's appropriate for you to deal with that issue.

[00:14:37] Speaker 04:
Obviously, we have questions.

[00:14:40] Speaker 03:
The only thing that I would add to the record that was developed in my colleague's portion of the proceeding

[00:14:46] Speaker 03:
I think there are two important points, and the most important of which is that Amaranth put all the claims in play in their supplemental brief.

[00:14:53] Speaker 03:
So Domino's filed the declaratory judgment.

[00:14:56] Speaker 01:
What about claims four, five, and 14?

[00:14:59] Speaker 01:
Those were not in the original claims asserted, as you can see from 12 or 26.

[00:15:07] Speaker 01:
And the claims on their face seems

[00:15:10] Speaker 01:
been unlikely that they would apply to Domino's since they have to do with ticketing and reservations and things like that.

[00:15:18] Speaker 03:
Your Honor, I agree.

[00:15:19] Speaker 03:
And I was actually, when you were going through the, I agree with the claim analysis that you did in the sense that those are the three claims that are in the judgment and were not asserted against Domino's.

[00:15:29] Speaker 03:
So they shouldn't be there.

[00:15:30] Speaker 03:
I agree with that factually.

[00:15:32] Speaker 03:
Pardon?

[00:15:33] Speaker 04:
So they shouldn't be included.

[00:15:35] Speaker 04:
If we were to affirm the district court determination, they should be extracted from this case.

[00:15:42] Speaker 03:
That's certainly one possible result, Your Honor.

[00:15:44] Speaker 00:
Are you conceding that point, or are you just saying it's a possibility?

[00:15:50] Speaker 03:
It's a possibility.

[00:15:51] Speaker 03:
And I would add, and I certainly understand that ruling.

[00:15:54] Speaker 03:
Why are you not conceding that?

[00:15:55] Speaker 03:
Pardon?

[00:15:56] Speaker 03:
Why are you not conceding that?

[00:16:00] Speaker 03:
I'll answer your question, Your Honor.

[00:16:02] Speaker 03:
The answer is simply this, in their supplemental brief, Amaranth put all of the claims in play.

[00:16:07] Speaker 03:
They affirmatively asked the district court to find all the claims patent eligible.

[00:16:14] Speaker 03:
Having done that, does Domino's agree with that?

[00:16:17] Speaker 03:
Absolutely not.

[00:16:19] Speaker 03:
So we certainly would dispute their request.

[00:16:23] Speaker 03:
So to that extent, those claims were in play.

[00:16:27] Speaker 01:
I mean, they're bound by the case of controversy requirement just as you are.

[00:16:31] Speaker 01:
They can't ask for a determination of patent eligibility with respect to claims in which there's no controversy.

[00:16:38] Speaker 03:
And if we have that, of course, let's put it this way.

[00:16:40] Speaker 03:
If we know that those claims are never going to be asserted against us, then yes, then there's no case of controversy.

[00:16:45] Speaker 04:
Well, that's not the standard.

[00:16:47] Speaker 04:
We know they're never going to be asserted against them.

[00:16:50] Speaker 04:
What case gives us that as the standard?

[00:16:53] Speaker 03:
Well, I guess what I'm asking then, Your Honor, is to that extent, there is a case of controversy.

[00:16:57] Speaker 03:
Because we filed a declaratory judgment action on the claims, and they affirmatively asked the judge to find a claim patentable.

[00:17:04] Speaker 03:
I guess, in a sense, it turns on whether they're allowed to put that claim in play.

[00:17:12] Speaker 03:
So if they're allowed to ask the judge to- You're hurting yourself by making an untenable argument.

[00:17:17] Speaker 03:
Your Honor, it is not of concern to Domino's in this appeal.

[00:17:25] Speaker 03:
Yes.

[00:17:27] Speaker 03:
Because the judge didn't find the patentable.

[00:17:28] Speaker 03:
If the judge had found the patentable, then we'd be having a different discussion.

[00:17:31] Speaker 03:
But yes, Your Honor.

[00:17:33] Speaker 03:
we do concede that those claims are not in play in this appeal.

[00:17:38] Speaker 04:
So what about your friend's argument with respect to the remainder, other than the five that he was required to limit his assertions to?

[00:17:48] Speaker 04:
Why did those get covered?

[00:17:52] Speaker 03:
Under Fox Group and the other cases he cite.

[00:17:55] Speaker 03:
I think it's the same analysis from our perspective.

[00:17:58] Speaker 03:
They're not asserted against us.

[00:18:00] Speaker 03:
I'm not sure whether the pretrial order was ever entered.

[00:18:03] Speaker 03:
And it comes down to whether, I guess, Domino's has assurance that they're out of the case.

[00:18:09] Speaker 03:
They were pled against us.

[00:18:11] Speaker 03:
If they're formally and fully withdrawn forever in the case, then the same case.

[00:18:15] Speaker 01:
But they weren't formally and forever withdrawn.

[00:18:18] Speaker 03:
Well, that's the problem.

[00:18:19] Speaker 03:
So that's where the analysis is different.

[00:18:21] Speaker 03:
And so to that extent, Domino's does have risk, if you will, in this present case for those claims that were asserted.

[00:18:30] Speaker 03:
initially, but then not asserted because of the rule.

[00:18:33] Speaker 04:
What happens?

[00:18:34] Speaker 04:
I mean, I know there are a lot of district court judges that force you to limit the assertions.

[00:18:40] Speaker 04:
So what would happen if this case didn't go down on summary judgment?

[00:18:44] Speaker 04:
So the district court has limited them to five.

[00:18:49] Speaker 04:
And let's assume they lose that at the end.

[00:18:52] Speaker 04:
And there's final judgment.

[00:18:54] Speaker 04:
Is that judgment just with respect to those five?

[00:18:58] Speaker 04:
But what happens to the other claims that have never been formally withdrawn?

[00:19:03] Speaker 03:
Well, Your Honor, this is a very broad statement.

[00:19:07] Speaker 03:
And my reaction is that a district judge would not have authority to essentially substantively limit, if you will, or permanently limit

[00:19:18] Speaker 03:
a patent owner's right to, I mean, that happens all the time.

[00:19:21] Speaker 04:
And as a... Well, that's what I'm asking you.

[00:19:22] Speaker 04:
I just have never had a case which involved how things turn out at the end.

[00:19:27] Speaker 03:
I haven't either, Your Honor, which is why I'm answering in some respects at a theoretical level.

[00:19:31] Speaker 03:
But I don't see how a district judge has authority to essentially take away all but five of your patent claims.

[00:19:39] Speaker 03:
But I haven't researched the issue.

[00:19:41] Speaker 03:
And it's a very practical issue in the sense that it happens all the time.

[00:19:44] Speaker 03:
I'm not aware of cases where

[00:19:46] Speaker 03:
It was appealed, as Your Honor described, where somebody presented five.

[00:19:49] Speaker 04:
Well, if the claims are still alive, if we get to the end of the day and there's final judgment and we've adjudicated these five claims, I mean, the answer maybe you just don't know.

[00:19:58] Speaker 04:
What happens to the others?

[00:20:00] Speaker 04:
Are they automatically included, or does the judge tell the patent owner to withdraw those claims, same for another day?

[00:20:08] Speaker 04:
But you don't know how that plays out.

[00:20:11] Speaker 03:
I don't know how that plays out.

[00:20:13] Speaker 03:
I do think, yes, I don't know.

[00:20:15] Speaker 01:
But there was a counterclaim here, right?

[00:20:17] Speaker 03:
There was a counterclaim here, yes.

[00:20:19] Speaker 01:
And the counterclaim wasn't limited to the five claims, right?

[00:20:23] Speaker 01:
That's correct.

[00:20:25] Speaker 03:
Well, the counterclaim was the entire patent.

[00:20:27] Speaker 03:
Right.

[00:20:27] Speaker 03:
Which is what?

[00:20:28] Speaker 04:
Did the local rules apply?

[00:20:29] Speaker 04:
I mean, whatever was here, was it the local rule that the judge relied on or just his own authority to limit this to five?

[00:20:36] Speaker 04:
Does the local rule give him the authority to limit it, talk about five, limit it?

[00:20:40] Speaker 03:
I don't know the answer to that question, Your Honor.

[00:20:42] Speaker 03:
And I can ask my colleague who was more involved in the pretrial phase.

[00:20:45] Speaker 04:
Well, either way, nothing, the district court did not impose the same limitation on your counterclaims, right?

[00:20:55] Speaker 04:
He didn't say, OK, and here's my order.

[00:20:59] Speaker 04:
You, Patnone, are limited to these five claims asserted, and you, alleged infringer, are limited to these.

[00:21:07] Speaker 03:
That's true.

[00:21:08] Speaker 03:
I mean, I suppose the judge, just thinking it through, may have thought that by limiting the plaintiff to five asserted claims at trial, that there was an implicit limitation of those five claims on the trial.

[00:21:20] Speaker 01:
Well, apparently not, since he entered a judgment with respect to the other claims.

[00:21:24] Speaker 03:
Well, and I believe, Your Honor, he was taking a practical approach, because he had, and I know you didn't like it, you said I was hurting my argument, but... I was talking about the three claims that weren't originally asserted.

[00:21:38] Speaker 01:
Sure.

[00:21:40] Speaker 01:
That's off the table now.

[00:21:41] Speaker 01:
You've agreed that the judgment has to be corrected to eliminate those three claims.

[00:21:46] Speaker 01:
We're talking about the claims other than the five that were the subject of the summary judgment motion, which were the subject of your counterclaim and which the judge invalidated and which were originally asserted against you.

[00:22:00] Speaker 01:
Correct.

[00:22:01] Speaker 01:
I want to make sure I know your question before I answer it.

[00:22:06] Speaker 01:
The question is, were you limited by his order in seeking to invalidate those other claims which were originally asserted?

[00:22:15] Speaker 03:
I don't believe so because of the counterclaim and because of the original assertion.

[00:22:21] Speaker 03:
And I was going down a different path with respect to when I said the judge took a practical approach.

[00:22:26] Speaker 03:
But I think that those claims were in play.

[00:22:36] Speaker 03:
Does the court have any other questions?

[00:22:50] Speaker 02:
Your Honor, I'd like to briefly discuss the unasserted claims and then go with the Ninth Circuit law issue with the remaining time.

[00:22:59] Speaker 02:
One of the issues with the district court's ruling is you had Pizza Hut's motion that sought to invalidate the asserted claims and they were defined.

[00:23:06] Speaker 02:
Domino's joiner motion at APPX 1020... 204 to 206.

[00:23:14] Speaker 02:
102...

[00:23:18] Speaker 02:
104 to 102 oh six I'm sorry wrong They sought joiner and the claims that were Asserted against dominoes in the contentions were those five and those were the same five that were

[00:23:44] Speaker 02:
Sorry, it goes to the APP Act 10212.

[00:23:47] Speaker 02:
10212.

[00:23:47] Speaker 02:
10212.

[00:23:52] Speaker 02:
Nowhere does the Joinder motion raise the additional claims that Judge Sebrall invalidated.

[00:24:00] Speaker 02:
An amaranth was not put on notice that claims beyond the five asserted against Domino's were at issue.

[00:24:10] Speaker 02:
So there's a procedural problem there in the district court.

[00:24:14] Speaker 02:
Because if you notice, in their joiner motion, it says, we seek to join Pizza Hut's motion.

[00:24:19] Speaker 02:
Again, Pizza Hut defined the asserted claims as five asserted claims to be invalid.

[00:24:25] Speaker 02:
And then there's footnote one on APBX 10212, where it just mentions claim nine.

[00:24:33] Speaker 02:
There's no other claims.

[00:24:34] Speaker 04:
I got to tell you, and maybe this is not on you because I know our rules and we try to limit people to what they can and cannot put in the appendix.

[00:24:44] Speaker 04:
But just for your own takeaway, it's really impossible for us, for me, to comprehend all of these documents when there's an excerpt of two pages from a document without any

[00:24:57] Speaker 04:
dates on it or anything I can discern.

[00:25:01] Speaker 04:
I mean, we've got 211 and 212.

[00:25:03] Speaker 04:
On the bottom, it says a memorandum.

[00:25:05] Speaker 04:
I don't know where this is, who filed it, when it was filed, in the context of everything going on.

[00:25:10] Speaker 04:
It's very hard to follow.

[00:25:12] Speaker 02:
So that, if you go to APPX 10204, that's the cover page.

[00:25:16] Speaker 02:
There's also the ECF notice at the top of the page, or the NEF notice, filed 8-28-18.

[00:25:33] Speaker 04:
And the import of this document, I mean, they included all these claims except for the three that Judge Dyke has called out in their counterclaims, right?

[00:25:45] Speaker 02:
In their counterclaims, it did.

[00:25:47] Speaker 02:
But then in their invalidity contentions, with their expert report, it was limited to five.

[00:25:52] Speaker 02:
There were no more in their expert report.

[00:25:55] Speaker 04:
Well, that's because you were limited to five and being asserted, right?

[00:26:00] Speaker 02:
But that also goes to, if they're seeking to invalidate more than five claims, their expert report should cover more than five claims.

[00:26:05] Speaker 02:
Otherwise, there's no arguments made as to their invalidity.

[00:26:08] Speaker 01:
As I understand what you're now saying, is you're not addressing the case or controversy point.

[00:26:13] Speaker 01:
You're addressing a different argument, which is, procedurally, you weren't put on notice that these other claims were at issue under the counterclaim.

[00:26:22] Speaker 02:
I'm making that argument during this portion of my oral argument.

[00:26:25] Speaker 02:
It's brief.

[00:26:25] Speaker 02:
But yes, because we previously discussed the whole case or controversy.

[00:26:29] Speaker 02:
Now I'm saying there was no notice to Amaranth that the other claims were at issue.

[00:26:33] Speaker 01:
OK, but you did not raise that in your opening argument, which is a bit unfair to your opponent.

[00:26:39] Speaker 02:
Well, I did say that the court invalidated nine unasserted claims.

[00:26:44] Speaker 02:
then, Your Honor, I understand you asked questions.

[00:26:46] Speaker 02:
But when I'm answering questions, it also takes me off of what I would have also liked to discuss.

[00:26:50] Speaker 02:
So for example, the district court found that the claims were routine and conventional.

[00:26:56] Speaker 02:
And in doing so, it had to make a factual determination based on the record before it.

[00:27:02] Speaker 02:
And Ninth Circuit law says summary judgment with a disputed factual record should not and cannot be granted.

[00:27:09] Speaker 01:
That's an argument you didn't even address in your opening argument.

[00:27:13] Speaker 01:
It wasn't addressed in the opposing argument by the other side.

[00:27:17] Speaker 01:
And now you're raising it for the first time in your revolt.

[00:27:19] Speaker 02:
I did.

[00:27:20] Speaker 02:
When I did my opening statement, I said the court didn't.

[00:27:22] Speaker 04:
Well, you tried to raise something about the summary judgment on the fact that there were factual issues on the inventive stuff.

[00:27:30] Speaker 04:
But we cut you off.

[00:27:32] Speaker 02:
Right.

[00:27:32] Speaker 02:
I can read it back.

[00:27:34] Speaker 02:
I said, second, it violated Ninth Circuit law as an animal legal defense.

[00:27:38] Speaker 04:
And then we proceeded to take one piece of your argument, not that one, and ask you questions.

[00:27:49] Speaker 02:
In the record before the court, there was a declaration from a person named Mr. Ditto, who worked at Microsoft at the time, who knew what Windows CE did and the technology.

[00:28:00] Speaker 02:
There was then an extra report submitted by Dr. Shamos, who opined on the state of the art, tied the factual record to claim elements, and all of that was disregarded by the district court.

[00:28:15] Speaker 02:
And it also showed that there was a factual dispute regarding what was routine and conventional.

[00:28:19] Speaker 04:
OK, you've exceeded your time limit.

[00:28:21] Speaker 04:
Cases submitted, we thank both sides.