[00:00:00] Speaker 00: Our next case is Google versus Sonos, 2024-1997. [00:00:05] Speaker 00: Mr. Rosencrantz, let's wait until your fellow counsel are seated. [00:00:17] Speaker 00: Please proceed. [00:00:18] Speaker 02: Thank you, Your Honor. [00:00:19] Speaker 02: Good morning. [00:00:20] Speaker 02: May it please the Court, Josh Rosencrantz representing Sonos. [00:00:25] Speaker 02: Your Honor, is the District Court [00:00:27] Speaker 02: took a doctrine that this court has cautioned must be sparingly applied and stretched it to endanger standard continuation practice. [00:00:38] Speaker 02: If this court sustains this approach, it will fundamentally alter the norms of both patent prosecution and patent litigation. [00:00:47] Speaker 02: Now, we say that for three basic reasons, and there are three undisputed facts that undermine Latchez here. [00:00:54] Speaker 02: The first is, [00:00:55] Speaker 02: that the district court found that Sonos, quote, diligently prosecuted patent applications in this family. [00:01:04] Speaker 02: That's at A81. [00:01:06] Speaker 02: Second, more than half the delay of this prosecution, seven years, was attributable to the PTO. [00:01:16] Speaker 02: So we're talking about a six-year delay. [00:01:19] Speaker 02: Third is a fact that the district court completely ignored. [00:01:25] Speaker 02: Sonos already had broader claims that covered all zone scenes without regard to whether they were overlapping or not well before Google launched its products. [00:01:41] Speaker 02: Now, missing from this case are any of the shenanigans that usually accompany, and I would say have always accompanied, [00:01:49] Speaker 02: prosecution latches. [00:01:51] Speaker 02: We never abandoned any application in the priority change and we did not bury the patent office in tens of thousands of duplicative... Can I just ask you a very simplistic question which is, because maybe I'm misunderstanding, I'm missing something. [00:02:08] Speaker 04: Just in terms of what the district court found, I know you have to, both each side has to win on both issues. [00:02:15] Speaker 04: But where is the prejudice given the court's findings and conclusions with respect to, I don't know whether we're calling it anticipation or written description or new matter or whatever. [00:02:26] Speaker 04: How could there have been, how could he have concluded there was prejudice under prong to, if in fact based on his conclusions on anticipation, [00:02:37] Speaker 04: Google was not going to be liable for any money and there was no prejudice. [00:02:43] Speaker 04: So I'm just, this is just at a very high level. [00:02:46] Speaker 04: Isn't there tension between, whether they're both right or both wrong, isn't there tension between the two? [00:02:52] Speaker 02: There is a fundamental tension, Your Honor, just to state it in a slightly different way. [00:02:58] Speaker 02: If there was no written description and these claims were anticipated, there is no patent. [00:03:06] Speaker 02: And we can't be held liable for a 13-year delay in prosecuting claims that were not supported by the written description. [00:03:13] Speaker 02: But I also want to underscore another point about prejudice that the district court found [00:03:20] Speaker 02: And that is this whole prejudice concept that the prejudice for Google is totally made up. [00:03:28] Speaker 02: Google had no witness who got on the stand and said that they were caught unaware. [00:03:34] Speaker 02: Google had no witness on any aspect of prosecution latches. [00:03:39] Speaker 02: Google conceded that its product planning did not begin until 2015. [00:03:49] Speaker 02: Google can't dispute that by 2014 we had the patent that I mentioned earlier, 228, covering all zone scenes. [00:03:57] Speaker 02: Plus, in 2013 and 2014, we laid out all of our technology to Google. [00:04:02] Speaker 02: It was on notice. [00:04:04] Speaker 02: of all of our technology, including zone scenes. [00:04:07] Speaker 02: And Sonos warned Google that it was infringing Sonos' patents right after Google eventually, by surprise, came out with its products. [00:04:17] Speaker 02: And that was in 2016 that we issued that warning. [00:04:22] Speaker 04: Can we start, though, on the invalidity anticipation? [00:04:25] Speaker 04: Because that seems [00:04:27] Speaker 04: problematic, at least how it affects prosecution latches and maybe beyond that. [00:04:32] Speaker 04: You make a waiver argument. [00:04:34] Speaker 04: Your first argument is a waiver argument. [00:04:39] Speaker 04: There's a slight difference between waiver and forfeiture. [00:04:42] Speaker 04: And the other side's response is that the judge can kind of sua sponte, it's his prerogative to sua sponte, reconsider the decision he had made on summary judgment. [00:04:54] Speaker 04: So what's the problem with that? [00:04:56] Speaker 04: Can't he do that during the trial when more information comes in? [00:04:59] Speaker 04: Does he have the prerogative, unreviewable prerogative, to just decide to reconsider his decision? [00:05:07] Speaker 02: So two things about that, Your Honor. [00:05:08] Speaker 02: The judge never decided on summary judgment, this new matter question. [00:05:14] Speaker 02: Google had not even thought of that till the middle of trial when Google said, oh, Your Honor, we hadn't thought of that till you raised it. [00:05:23] Speaker 03: How did that issue, what I can't figure out is, what came before the district judge that, shall we say, caught his ire? [00:05:31] Speaker 03: What was it? [00:05:33] Speaker 02: So, Your Honor, what happened was our inventor was on the stand, and the judge actually, Judge Elsa spells this out, he did not realize until our inventor was on the stand that the crux of the invention of the claims that we were asserting was the overlap piece. [00:05:51] Speaker 02: And then he started asking questions about what is the written description support, to which we responded to your question, Judge Prost. [00:06:01] Speaker 02: Wait a minute. [00:06:02] Speaker 02: You already decided summary judgment. [00:06:08] Speaker 02: Google had the opportunity to raise the issue as a factual matter because it was Google's summary judgment motion, not ours. [00:06:17] Speaker 03: It's not clear to me. [00:06:19] Speaker 03: When the court denied summary judgment on written description, did the court deny summary judgment because there was a factual issue, which is usually there is with written description? [00:06:32] Speaker 03: Or did the judge rule as a matter of law that the written description was adequate? [00:06:36] Speaker 03: Well, what is it that the judge ruled? [00:06:37] Speaker 03: Because I can't figure it out. [00:06:39] Speaker 03: But I think that that matters. [00:06:41] Speaker 03: to the waiver argument, or I think it's a forfeiture argument. [00:06:45] Speaker 02: Yes, I agree it's forfeiture. [00:06:47] Speaker 02: So the only issue before the court, the only motion before the court, was Google's summary judgment motion. [00:06:55] Speaker 02: The only thing the court did when it denied Google's summary judgment motion was to free Google to try the case if that's what it wanted to do. [00:07:04] Speaker 02: Sorry, just to finish the answer. [00:07:06] Speaker 02: He did say things that made it seem like he thought there was adequate written description support. [00:07:12] Speaker 03: And that's why I'm asking the question. [00:07:14] Speaker 03: So was there any effort on the part of any counsel to seek clarification as to what the court had ruled? [00:07:24] Speaker 03: Because when I look at the court's order, it is not clear. [00:07:27] Speaker 03: It seems to sort of say both. [00:07:29] Speaker 03: There's an issue of fact that I find as a matter of law that. [00:07:32] Speaker 03: the written description is adequate. [00:07:33] Speaker 03: And I think that that is very relevant as to what the forfeiture argument, whether it has legs or not. [00:07:41] Speaker 03: Do you agree with that? [00:07:42] Speaker 02: I disagree for one reason, Your Honor, and that is one thing that district court did not rule on was new matter. [00:07:49] Speaker 02: And if Google had a new matter argument, which it hadn't thought of, [00:07:55] Speaker 02: It was certainly free to raise that. [00:07:57] Speaker 02: But the second answer is this court's precedents are very clear that the denial of a summary judgment motion without regard to what the judge says as the basis for the denial, at least in the factual written description context, [00:08:12] Speaker 02: The denial only does that. [00:08:14] Speaker 02: It denies summary judgment to one side. [00:08:16] Speaker 04: The confusing thing in the record, and I understand Judge Baum's confusion, I think I may have figured it out so you can confirm or deny. [00:08:23] Speaker 04: The reason it's confusing is because of the shootout thing. [00:08:27] Speaker 04: And so it was actually Sonos's motion for summary judgment. [00:08:32] Speaker 04: So even though they denied Google's counter to that, it's defense of that. [00:08:38] Speaker 04: It's defense of the infringement summary judgment. [00:08:41] Speaker 04: And so what they say, like it read page 44, it says, correctly, the court granted summary judgment to Sonos. [00:08:50] Speaker 04: But that's only because the context of this issue came out as a shootout issue. [00:08:55] Speaker 02: Your Honor, Judge Alsop's shootout procedure does not change the federal rules of civil procedure. [00:09:05] Speaker 02: I'm not disagreeing. [00:09:08] Speaker 02: Google had a motion. [00:09:10] Speaker 02: for summary judgment, Google's motion was denied. [00:09:14] Speaker 02: It wasn't our motion that was granted. [00:09:18] Speaker 02: If Google wanted to present new matter, which it said to the district court is not an issue in this trial, if Google wanted to present new matter, it could have sought clarification. [00:09:27] Speaker 02: It was clear to us. [00:09:28] Speaker 02: And Google could not have appealed that summary judgment, excuse me, the denial of summary judgment, without going to trial and trying to try its case. [00:09:41] Speaker 02: I will also add this whole written description question is a question that is full of fact issues. [00:09:49] Speaker 02: And the district court's decision to decide that issue after a trial that was not geared to written description [00:09:59] Speaker 02: or to new matter without even giving us a chance to put on our witnesses unwritten description or to develop witnesses on new... Okay, so that begs the question of what we do with that, assuming, hypothetically, that we accept a lot of what you're saying. [00:10:15] Speaker 04: We remand it for a new trial. [00:10:17] Speaker 04: I mean, we could find forfeiture and find whatever. [00:10:21] Speaker 04: But you also, I think you accept the possibility, I think that's one of the options you put forward in your brief, that we could remand it for a new trial on the written description issue for a trial. [00:10:33] Speaker 02: So let me just be clear, that was our last point at a minimum, that it should be a new trial, but no. [00:10:39] Speaker 02: Judges don't get to decide how a defendant is going to prosecute, or patent infringer that is accused, is going to prosecute its defenses. [00:10:50] Speaker 02: Google never put the new matter issue in the case. [00:10:54] Speaker 02: If Google had tried to do it without the judge's intervention in the middle of trial, it couldn't have done it. [00:11:00] Speaker 02: If Google had tried to do it without a 50A motion, it couldn't have done it. [00:11:04] Speaker 02: The rules are no different just because the judge came up with the theory on his own. [00:11:09] Speaker 02: So the result should be that this court vacates the district court's order and reverses at least and sends it back to the district court to decide the new trial motions and the post trial motions because there is no live issue before the district court on new matter. [00:11:31] Speaker 02: I see your puzzle. [00:11:32] Speaker 04: I understand what you're saying, but let's assume. [00:11:36] Speaker 04: The question is what we do then with the latches and what the question is. [00:11:40] Speaker 04: There will be different questions with regard to the prosecution latches. [00:11:44] Speaker 04: It's a different case, as I said. [00:11:47] Speaker 04: I think, just me, that what the district court did in finding that there was a real written description problem [00:11:57] Speaker 04: avoids the prejudice. [00:12:00] Speaker 04: So that affects Latches. [00:12:01] Speaker 04: But if we get rid of his conclusions with respect to anticipation, and we say the patent was valid, then it's a different analysis on Latches. [00:12:13] Speaker 04: And do we have to send it back, therefore, to the judge to reconsider the Latches conclusion? [00:12:18] Speaker 02: So I would say no, Your Honor. [00:12:20] Speaker 02: At a minimum, [00:12:22] Speaker 02: that the district court would have to reconsider laches in light of this court's conclusion about written description. [00:12:29] Speaker 02: In other words, if we had a right to try written description, for example, the district court would have to reconsider laches without that rationale. [00:12:38] Speaker 02: The district court would still have the first 25 pages of its opinion. [00:12:44] Speaker 02: This court does not have to send it back for the district court to assess the new matter issue if this court concludes the Latches analysis was legally wrong just on its face without regard to the written description and new matter point. [00:13:02] Speaker 02: And that was the point I see deep into my rebuttal time. [00:13:06] Speaker 00: Well, we'll give you more time if you need it. [00:13:09] Speaker 00: Have you concluded your... No, no. [00:13:12] Speaker 04: So just to... The analysis we would have to do on evaluating latches, assuming we don't buy the first line, which is latches can never apply if there's no extension of the pattern. [00:13:25] Speaker 04: Assuming that's it, it's a different Latchez analysis. [00:13:28] Speaker 04: Is it not in terms of prejudice? [00:13:30] Speaker 04: I mean, then we've got 13 years. [00:13:33] Speaker 04: If it's anticipated as written description, there's no 13 years. [00:13:37] Speaker 02: Right. [00:13:37] Speaker 02: So Your Honor, this court can still decide the Latchez question, putting aside the new matter point, on legal grounds. [00:13:44] Speaker 02: For example, the prejudice point. [00:13:48] Speaker 02: 13 years was six years. [00:13:50] Speaker 02: Every time counsel for Google says 13 years, I would just remind the court that seven years of that was for the issuance. [00:13:58] Speaker 04: As a matter of law, do we consider, because I don't think there's any law saying this, that does it matter that in 2007 or 2013 this became public so Google was on notice before 2014? [00:14:12] Speaker 04: Yes. [00:14:13] Speaker 04: drawing lines, there's no requirement that the patent owner make something public, so I'm a little hedgy on making that be an important fact. [00:14:23] Speaker 02: I'm sorry, the reason I say it's important is because in 2013 was two years before Google started [00:14:31] Speaker 02: even planning its infringing activity. [00:14:35] Speaker 02: Google's argument is the prejudice was, oh my goodness, we were caught off guard because we didn't know that this patent protection existed. [00:14:44] Speaker 02: It knew. [00:14:45] Speaker 02: It had our patents. [00:14:46] Speaker 02: It was aware of [00:14:47] Speaker 02: of the entire technology and our role in it. [00:14:50] Speaker 02: And if Google wants to claim prejudice, it had to put a witness on it that said, oh my goodness, we didn't read the patent that way, even though it provides a written description in five different ways. [00:15:03] Speaker 02: Oh my goodness, we had no idea that this was going to come and bite us. [00:15:07] Speaker 02: Or oh my goodness, even though the 2014 patent, the 228 patent, covers all zone scenes, we thought it was invalid. [00:15:17] Speaker 02: Google had no witness that said any of that. [00:15:19] Speaker 02: So just on the prejudice prong, this court can reverse without even thinking about new matter. [00:15:27] Speaker 00: Thank you, Mr. Rosencrantz. [00:15:29] Speaker 00: We'll give you your full bottle of time. [00:15:31] Speaker 00: Thank you, Your Honor. [00:15:34] Speaker 00: Mr. Bagatell. [00:15:46] Speaker 00: And we'll give you a little less time if you need it, too. [00:15:53] Speaker 01: Thank you, Your Honor. [00:15:54] Speaker 01: Dan Bagatell on behalf of Google, with me are Nate Kelly and Iman Lourgui. [00:15:59] Speaker 01: I had intended to start with prosecution latches, and I'm willing to do that if Your Honors would like me to start there. [00:16:04] Speaker 01: But if you'd like me to switch to anticipation first, I'll do that. [00:16:07] Speaker 01: I'll take the guidance from the court. [00:16:10] Speaker 00: I wanted to go to anticipation. [00:16:13] Speaker 01: Sure. [00:16:16] Speaker 01: anticipation comes into play uh... if you don't want prosecution latches to confirm on either ground uh... if you do read your anticipation we submit that you should affirm the question is whether there is description of the overlapping zone scenes phenomenon in the two thousand six or seven there are several questions one is whether or not it was waived oh yeah well I'll guess that right away it was not waived first of all [00:16:43] Speaker 04: so this is wrong this issue came up and so this is motion for summary judgment of uh... i know but it was kind of funky right because it was it was something different that's because the way the shoot-out was well you get summary judgment of uh... i'm sorry no i i mean you did summary judgment of infringement but in case so it's it's it's kind of a technicality that it came out on summary judgment for some there were actually two papers there were there were cross motions but sona sent a motion [00:17:12] Speaker 01: for infringement, we responded. [00:17:14] Speaker 01: It's at page 4890. [00:17:16] Speaker 01: Our opposition to Sonos's motion for summary judgment, one of the issues was there can be no infringement because claim one of the 85 patent lacks written description support. [00:17:27] Speaker 01: So we got one brief, and then they came back with a reply. [00:17:30] Speaker 01: It was not briefed in conjunction with our motion. [00:17:33] Speaker 04: It was briefed in conjunction with Sonos's motion. [00:17:36] Speaker 04: I know. [00:17:36] Speaker 04: The court rejected it. [00:17:37] Speaker 04: The court rejected your assertion of invalid. [00:17:39] Speaker 04: There's no doubt about that. [00:17:41] Speaker 04: Yes. [00:17:42] Speaker 04: And therefore, wasn't it up to you to pursue that at trial? [00:17:46] Speaker 01: No. [00:17:47] Speaker 04: It's a factual question. [00:17:49] Speaker 01: Can you tell us why? [00:17:51] Speaker 01: Yes. [00:17:51] Speaker 01: Because he granted summary judgment to Sonos over our... On infringement. [00:17:55] Speaker 01: On infringement, which included our affirmative defense to infringement. [00:18:00] Speaker 01: He said the description was adequate. [00:18:03] Speaker 01: where did you say that because i think that you're free to say that the parties were ordered not to present this issue to the jury and i i really am having a hard time figuring it out what was ordered not to present the jury is when he re-raised it at trial after hearing saying gosh this really is all about overlapping zone scenes and this seems awfully thin i want you to brief it some more [00:18:22] Speaker 01: He heard the arguments and he said, you know, we're trying a different case and so I don't want to hear about it now. [00:18:27] Speaker 01: I want you to brief it, but I'm going to decide it after trial. [00:18:30] Speaker 01: So he said, don't put it on in front of the jury because this is an issue I want to address after trial. [00:18:36] Speaker 03: We have two things going on. [00:18:37] Speaker 03: Can you answer the first question? [00:18:41] Speaker 01: We have to find Judge Alsop's order. [00:18:48] Speaker 01: He said that the written description was adequate. [00:19:00] Speaker 03: So did Google take that that he ruled as a matter of law that the written description was adequate and therefore there were no findings of fact or dispute of fact that had to go to the jury? [00:19:10] Speaker 03: Is that how Google interpreted it? [00:19:12] Speaker 01: Right, because he had affirmatively decided that this paragraph of column 10 has an adequate description overlapping his own scenes. [00:19:20] Speaker 03: How can there be such a disconnect between the two parties? [00:19:23] Speaker 03: You've got Sono standing before us saying, oh no, he ruled that it was a disputed issue of fact. [00:19:28] Speaker 03: And you got Google coming before us saying, oh, no, there wasn't. [00:19:32] Speaker 03: It's kind of extraordinary. [00:19:34] Speaker 01: No, no. [00:19:35] Speaker 01: he never said it was a disputed issue of fact. [00:19:37] Speaker 01: He said it was an adequate disclosure. [00:19:40] Speaker 04: He said, I find Google lost. [00:19:42] Speaker 01: Google lost. [00:19:43] Speaker 04: And the question is, why didn't you appeal it? [00:19:45] Speaker 04: Or at least you lost its factual dispute. [00:19:48] Speaker 04: At least say, we want to take it to the jury. [00:19:51] Speaker 01: No. [00:19:51] Speaker 01: What he said was that the written description was adequate. [00:19:54] Speaker 01: And so we accepted that ruling and reserved the right to appeal. [00:19:58] Speaker 01: Obviously, we couldn't appeal then. [00:19:59] Speaker 01: It was an interlocutory decision. [00:20:00] Speaker 03: It seems to me that there is a fundamental disagreement as to what Judge Alsop did. [00:20:05] Speaker 03: Because Senes is saying that he found that it was a disputed issue of fact presented to the jury. [00:20:12] Speaker 03: Google says, nope, he found it as a matter of law that the written description was adequate, and they lost it and then presented it to the jury. [00:20:20] Speaker 03: That is a fundamental disconnect between how this case was litigated. [00:20:24] Speaker 01: And so therefore, from there flows the issue of forfeiture. [00:20:36] Speaker 01: At trial, he said, I know, I granted summary judgment, but I'm raising it again. [00:20:41] Speaker 01: So he recognized at trial and after trial that he had granted summary judgment in Sonos' favor. [00:20:47] Speaker 01: That's in the order that's on appeal right now. [00:20:49] Speaker 01: At the very end, he says, I'm going to vacate that rule. [00:20:52] Speaker 04: But when he recognizes, yeah, I recognize there's a problem here, and I decide it, at that point, shouldn't there be a trial? [00:21:01] Speaker 04: Because the description is a question of fact. [00:21:04] Speaker 04: No, because he said... And did he not make fact findings with respect to written description? [00:21:10] Speaker 04: Your brief suggests that he made fact findings with respect to prosecution latches, and that's okay, because that's inequitable defense, bench trial stuff. [00:21:18] Speaker 04: But I think there are a lot of findings here. [00:21:22] Speaker 04: He even calls them findings in some instances. [00:21:24] Speaker 01: Well, I think what he was making findings [00:21:27] Speaker 01: In connection with the prosecution latches, as you say, he was making findings affecting conclusions of law. [00:21:33] Speaker 04: And you don't think he was making any findings? [00:21:34] Speaker 01: Oh, I think in practice, it was a 56-F situation when he was raising summary judgment motion on his own. [00:21:42] Speaker 01: That's what he said during the trial was that, I'm having concerns about my earlier motion. [00:21:46] Speaker 01: And his tone says, well, you already decided that issue. [00:21:49] Speaker 01: He said, I know, but I'm raising it. [00:21:51] Speaker 01: And they said, fine, we'll brief it. [00:21:53] Speaker 01: And then he said, after seeing how complicated it was, he said, you know, we're going to deal with this after trial. [00:21:58] Speaker 01: And I think what happened then, it was not tried to the jury. [00:22:02] Speaker 01: It became effectively a summary judgment motion raised by the judge, which he's entitled to do under 56F. [00:22:08] Speaker 03: Did he cite 56F? [00:22:10] Speaker 01: I don't think he cited it. [00:22:12] Speaker 01: But he said, I'm entitled to raise it on my own. [00:22:15] Speaker 01: And there was certainly plenty of notice and opportunity to respond. [00:22:19] Speaker 01: There were a hundred pages of briefing from Sonos, a thousand pages of exhibits, five oral arguments. [00:22:23] Speaker 04: Which included preservation of the waiver issue, but he shouldn't decide it because of waiver. [00:22:28] Speaker 01: Well, they argued that it was waived and he disagreed, first of all. [00:22:31] Speaker 01: First, he did not find waiver. [00:22:33] Speaker 01: Second of all, there can be no waiver when the judge decides an issue. [00:22:36] Speaker 04: I'm sorry to keep it. [00:22:37] Speaker 04: I couldn't find anything in terms of an analysis of why it wasn't waived or waived. [00:22:42] Speaker 04: You're right. [00:22:42] Speaker 04: He obviously concluded it wasn't waived because he went on and decided it. [00:22:47] Speaker 04: But is there anything I'm missing? [00:22:49] Speaker 04: Did he analyze or say why it wasn't waived? [00:22:53] Speaker 01: I don't recall him specifically saying so, but it's in the court's discretion to determine waiver. [00:22:58] Speaker 01: In any event, he said, I'm raising this on my own motion, even though I decided it before. [00:23:03] Speaker 01: I'm reconsidering my summary judgment ruling. [00:23:05] Speaker 01: That's the way he characterized it. [00:23:07] Speaker 01: And so first of all, we don't think we were entitled to try anything after we had summary judgment against us. [00:23:15] Speaker 01: Second of all, he reconsidered on his own motion. [00:23:18] Speaker 01: Third of all, any time that the court actually decides something, waiver is gone. [00:23:22] Speaker 01: I mean, waiver is no longer an issue once a judge decides to address the merits. [00:23:27] Speaker 04: And we don't get to review whether or not waiver applies. [00:23:32] Speaker 04: I mean, it's solely in the discretion of the judge as to whether or not it was waived or not. [00:23:38] Speaker 01: And once he proceeds to decide... I suppose you could have a... [00:23:41] Speaker 01: crazy abuse of discretion in some circumstances. [00:23:45] Speaker 01: But this was something where the judge heard testimony and said, I think it's thin. [00:23:48] Speaker 04: I'm sorry to interrupt you, but time is limited. [00:23:52] Speaker 04: Let's go back to the fact issue. [00:23:54] Speaker 00: Yes. [00:23:54] Speaker 04: So what he decided, I think he even called them findings. [00:23:59] Speaker 04: When he took up, after briefing, the question of written description, it seems to me that his analysis includes factual findings. [00:24:07] Speaker 01: I agree in that I think the question then is, was he entitled to grant summary judgment? [00:24:12] Speaker 01: Was there a genuine dispute of material fact regarding whether Sonos disclosed [00:24:19] Speaker 01: overlapping zone scenes under the standard under 112, which is of course a clear disclosure. [00:24:23] Speaker 01: And your view is that there was no genuine... There were bits and pieces here and there that mostly talked about zone scenes and that you can set them up in various ways, but none of them talked about overlapping zone scenes. [00:24:34] Speaker 01: They're trying to grab snippets here or there. [00:24:36] Speaker 04: In other words, so are you saying that there was no genuine dispute of mint, of fact? [00:24:41] Speaker 01: In other words, are you saying that... Yes, I don't think there was any genuine dispute. [00:24:46] Speaker 04: That would mean that we could decide the issue too then. [00:24:48] Speaker 01: uh... you could decide the issue you could record you could or and uh... i think this is one of them mentioned that if you decide that there was a genuine dispute of material fact on that issue you could vacate and remand uh... for further analysis or trial if necessary if we remand do we have to reach the prosecution lunches issue i think you should uh... because i think you do because [00:25:18] Speaker 01: because the judge's decision was primarily on the equal defense of prosecution latches. [00:25:26] Speaker 01: And one of the elements of it was, of course, unreasonable and unexplained delay and prejudice. [00:25:35] Speaker 01: And one of the elements of the unreasonable delay was the fact that it was not only [00:25:40] Speaker 01: a failure to claim, but also even a failure to disclose for all that long period. [00:25:45] Speaker 01: So that was part of his prosecution latches analysis. [00:25:47] Speaker 04: But what does the result of the analysis on written description inform the analysis on prosecution latches? [00:25:55] Speaker 04: In other words, what I asked Mr. Rosencrantz's first question, isn't there a contradiction in what the court did here in finding that the claim goes down, it's invalid? [00:26:06] Speaker 04: there was new matter added, and then claiming prejudice where, given his conclusion, there is no prejudice to Google because Google wins and there's no infringement. [00:26:16] Speaker 01: Well, I think you can have multiple overlapping defenses. [00:26:23] Speaker 01: You could have a defense of 101 and 103. [00:26:25] Speaker 04: Yeah, but if one goes down, one might go the other way. [00:26:29] Speaker 01: Well, I would agree that if you affirmed on prosecution latches, then you can vacate on it. [00:26:35] Speaker 04: Let's assume we affirmed on written descriptions. [00:26:38] Speaker ?: OK. [00:26:38] Speaker 04: where are you on the prejudice for all of the last i mean if you're from unwritten on on on on no anticipation the patent is dead i agree with that yes it was the patent is dead and i'm gonna find prosecution line with black watches and prejudice how could you be prejudiced what is that [00:27:00] Speaker 01: But I understand what you're saying. [00:27:01] Speaker 01: I think he was sort of making some alternative analyses that there are two reasons. [00:27:07] Speaker 04: How do they live together? [00:27:09] Speaker 04: Where's the understanding? [00:27:15] Speaker 01: I think at the end of the day, if you affirm on anticipation, you could vacate [00:27:20] Speaker 01: the prosecution latches ruling. [00:27:22] Speaker 01: It wouldn't have to stand. [00:27:23] Speaker 01: I think what the judge was doing when he was analyzing prejudice was analyzing the traditional prejudice under prosecution latches which is [00:27:31] Speaker 01: essentially intervening rights, as this court has looked at it. [00:27:34] Speaker 01: And there was certainly no question that Google had to come up with this idea in 2013, told so and so about it in 2014, begun selling the product in 2015. [00:27:42] Speaker 04: But there's no prejudice to any of that conduct if the claim is anticipated. [00:27:47] Speaker 04: So the two, I think, do you disagree that the two are not reconcilable? [00:27:52] Speaker 01: I think if, at the end of the day, you agree with [00:27:56] Speaker 01: the anticipation analysis then you can vacate the prosecution latch's conclusion. [00:28:01] Speaker 03: And I think what you mean to say is that what trial courts like to do is to rule in the alternative. [00:28:08] Speaker 01: yes I think yes I think he was he was primarily addressing prosecution latches and then when he got to the end of the analysis I think he concluded well it was not just for good measure this has been something that had been argued over and over again it wasn't drawn out of I mean it was the focus of the oral argument on the prosecution latches motion so our point with the prosecution latches is that this isn't one of the [00:28:38] Speaker 04: uh... run-of-the-mill ten-year prosecution cases we've never suggested just before you get to that because i was really following up on Judge Bum's question about why how we could decide prosecution might latches if we still think there's an open question that requires a jury trial on written description because the result of that [00:28:59] Speaker 04: might affect it. [00:29:00] Speaker 04: For instance, if the jury concluded and there was no J. Moll or whatever. [00:29:06] Speaker 01: Let me just point out that the converse is also true. [00:29:08] Speaker 01: If you find prosecution latches, you don't need to reach anticipation because this case is over. [00:29:14] Speaker 04: Well, if we find prosecution latches, in order to... [00:29:18] Speaker 04: consider prosecution latches, don't we have to decide whether or not there was prejudice? [00:29:26] Speaker 04: And if, in fact, the written description comes out your way, there's no prejudice. [00:29:32] Speaker 04: So it doesn't help. [00:29:34] Speaker 04: I guess we can do whatever we want. [00:29:36] Speaker 04: But it really does, it makes sense that we do it one way or the other. [00:29:41] Speaker 01: I think we've given the example of how you get to prosecution latches is that which anticipates [00:29:48] Speaker 01: which infringes the later anticipations of earlier, you sort of assume what the party is arguing, and if Sonis is arguing that [00:29:59] Speaker 01: in this case, with respect to Google infringing, then you can assume that for purposes of anticipation. [00:30:06] Speaker 01: So there are times when this court takes one, puts a stake in the stand, and then analyzes the other doctrine. [00:30:13] Speaker 01: So I think you can do that with prosecution latches. [00:30:15] Speaker 04: Would you make some sense to do what Judge Bum was at least suggesting, which is to resolve the written description, if one way or the other, in order to inform the prosecution latch? [00:30:26] Speaker 01: If you think you can resolve written description as a matter of fact, then in either direction, I certainly submit that you can't say that it was summary judgment for Sonos. [00:30:39] Speaker 01: That was not a clear description of overlapping zone scenes. [00:30:42] Speaker 01: But if you resolve it in our favor, the case is over. [00:30:44] Speaker 01: If you resolve it in their favor, that it goes back, I think you can still say the judge was entitled to make findings of fact on disputed issues for purposes of prosecution latches. [00:30:54] Speaker 01: And he did. [00:30:55] Speaker 01: I think he was making findings. [00:30:57] Speaker 01: That was a subsidiary issue. [00:30:59] Speaker 01: It was part of the entirety of the undue delay and prejudice, especially the undue and unexplained delay involved the delay in both claiming and disclosing overlapping zone scenes. [00:31:11] Speaker 01: And he's entitled to make those decisions at a bench trial. [00:31:15] Speaker 01: It didn't contradict any jury verdict. [00:31:16] Speaker 01: There was no jury verdict on that point. [00:31:18] Speaker 04: Just on the latches question, kind of following up on some Mr. Rosenkrantz's arguments. [00:31:23] Speaker 04: I mean, 13 years, a large portion of which was consumed by prosecution by the PTO and not by his client. [00:31:37] Speaker 04: and how is this not kind of, I don't want to use the word run-of-the-mill because there's no such thing as run-of-the-mill, but this is a continuation practice. [00:31:48] Speaker 04: It's not a continuation in part, it's a continuation practice. [00:31:52] Speaker 04: How is that so unreasonable in the extreme to establish? [00:31:58] Speaker 01: Let me just as a threshold matter dispute the seven years is all on the PTO. [00:32:02] Speaker 01: That's not true. [00:32:03] Speaker 01: That was seven years until the issuance of the first patent. [00:32:05] Speaker 01: They didn't get a seven-year term extension. [00:32:07] Speaker 01: that it was all in the PTO. [00:32:09] Speaker 01: So yes, I think there was a term extension of three in some years, but some of that was due to the PTO. [00:32:16] Speaker 01: But some of it, I mean, Solace took a delay in filing the first application in 2007. [00:32:24] Speaker 01: Solace filed, we were on this, I think the fifth and sixth or sixth and seventh applications by the time we got to 2019. [00:32:32] Speaker 01: So it almost took a long time. [00:32:33] Speaker 01: They certainly could have claimed overlapping zone scenes if they thought their disclosure had covered it. [00:32:39] Speaker 01: They elected not to do it. [00:32:40] Speaker 01: So we were not making micro-arguments that this particular office action was unduly delayed or something like that. [00:32:48] Speaker 01: but they came up with no excuse for it. [00:32:51] Speaker 04: Their only excuse was... What if we conclude that the judge was wrong on written description and in fact at least it goes back to the time when the 2007 provisional was... the public had notice of that in 2013. [00:33:07] Speaker 04: So that's before Google launched. [00:33:11] Speaker 04: So where's the prejudice in that scenario? [00:33:13] Speaker 01: Well, prejudice to us? [00:33:15] Speaker 01: because they did not claim overlapping zone scenes until 2019, which was five years after we disclosed it to them, and lots of other people, including Google, were making progress. [00:33:24] Speaker 04: Well, no, but let's assume that we don't agree with that conclusion with respect to the written description. [00:33:29] Speaker 04: This goes back to the part I was talking about. [00:33:31] Speaker 01: No, no, no, no, no, no. [00:33:31] Speaker 01: I'm not saying it. [00:33:32] Speaker 01: Even if you say that they had a sufficient disclosure, there's no dispute that they did not specifically call out overlapping zone scenes claims. [00:33:41] Speaker 01: They had some earlier patents that addressed zone scenes generally. [00:33:45] Speaker 01: Most of them were continuously rejected over a prior art that disclosed zone scenes as a concept. [00:33:50] Speaker 01: And they then added some limitations like display this or do that in a certain way of invocation. [00:33:56] Speaker 01: And they got these subset claims that were not claiming overlapping, excuse me, zone scenes per se. [00:34:01] Speaker 01: That's what they have. [00:34:02] Speaker 01: But they did not have claims that called out overlapping zone scenes until 2019. [00:34:07] Speaker 01: And by that point, they knew that the world had grown around it. [00:34:10] Speaker 01: They had an opportunity to claim it for 13 years and they elected not to do so. [00:34:16] Speaker 01: I think the logical reason is they didn't see it in their own specification, but their subjective intent isn't critical to the fact. [00:34:26] Speaker 04: But if there was adequate written description, if we disagree with you, forget what the amendment happened in 2019. [00:34:32] Speaker 04: If it was adequate written description before 2019, like in 2007, the public had notice of that in 2013. [00:34:41] Speaker 04: That was before Google launched. [00:34:46] Speaker 01: It was before Google launched, but I think the question is there are cases in which applications have had patents have been granted and you still find prosecution latches. [00:34:59] Speaker 01: That just means that the specification is out there. [00:35:02] Speaker 01: You don't get a free ride forever just because you had something in your original specification. [00:35:07] Speaker 01: You still have to diligently prosecute. [00:35:09] Speaker 01: And part of the analysis here is that Soros didn't just [00:35:16] Speaker 01: immediately prosecute claims to prosecution or to overlapping zone scenes. [00:35:20] Speaker 01: They didn't do it in 2007, they didn't do it in 2013, 14, 15, 16, 17, 18, 19. [00:35:26] Speaker 01: They took 13 years before they even presented claims on that point. [00:35:34] Speaker 03: it's [00:35:49] Speaker 01: I think this case is highly unusual. [00:35:51] Speaker 01: Every one of these prosecution latches cases is unusual. [00:35:55] Speaker 01: There was some remark, I think, in one of the amicus briefs that there are 10,000 or whatever tens of thousands of patents that have issued after 10 years. [00:36:04] Speaker 01: We're not saying that every patent that issues after 10 years is unenforceable. [00:36:10] Speaker 01: At that point, I think you could say, maybe you have some explaining to do. [00:36:14] Speaker 01: Tell me why it took that long. [00:36:15] Speaker 01: That's what a presumption would do. [00:36:17] Speaker 01: But you don't even have to have a presumption in this case. [00:36:19] Speaker 01: I mean, it's 13 years. [00:36:20] Speaker 01: It's way beyond the eight or nine that have been at issue in other cases. [00:36:24] Speaker 03: So let me ask the question this way. [00:36:26] Speaker 03: And maybe if it's an unfair question, tell me. [00:36:29] Speaker 03: It seems like the judge was upset about the fact that he felt that Sonia was introducing him better in the middle of the trial. [00:36:36] Speaker 03: That's what caught his attention. [00:36:40] Speaker 03: And he used prosecution latches. [00:36:42] Speaker 03: Is there another equitable doctrine that would have addressed that misconduct in his view? [00:36:46] Speaker 03: I'm not saying it is, but another equitable doctrine besides prosecution latches? [00:36:53] Speaker 01: There may be, but there are a bunch of equitable doctrines. [00:36:57] Speaker 01: For example, in equitable conduct, which is very difficult to prove if we could prove specific intent to mislead the patent office. [00:37:04] Speaker 01: That wasn't required for prosecution latches. [00:37:06] Speaker 01: So there are a variety of equitable doctrines. [00:37:08] Speaker 01: We raised some equitable estoppel defenses based on what we had disclosed to Sonos. [00:37:12] Speaker 01: He didn't reach that. [00:37:14] Speaker 01: That would have to be an issue. [00:37:15] Speaker 03: When you say he raised them when? [00:37:16] Speaker 03: Where? [00:37:17] Speaker 01: Oh, we raised them in our initial complaint. [00:37:21] Speaker 01: Actually, it was our answer to their counterclaims. [00:37:23] Speaker 01: We raised a variety of equitable defenses. [00:37:26] Speaker 01: The judge said he was going to take care of those after the trial. [00:37:29] Speaker 01: And we briefed him. [00:37:30] Speaker 01: The briefing is in the record. [00:37:32] Speaker 03: And the affirmative defense of prosecution latches was in your answer? [00:37:37] Speaker 03: Because it wasn't clearly how he [00:37:40] Speaker 03: felt that he could address prosecution latches. [00:37:42] Speaker 03: Oh, yes. [00:37:43] Speaker 03: Is it because it was in a defense in your answer? [00:37:46] Speaker 01: Yes. [00:37:47] Speaker 01: Our answer to their counterclaims specifically raised prosecution latches among other defenses. [00:37:51] Speaker 01: And all these supposed procedural shenanigans, none of them applied to prosecution latches. [00:37:57] Speaker 01: All of that was entirely kosher because it was before the court at all times. [00:38:01] Speaker 01: He gave them plenty of opportunity to brief it and argue it. [00:38:04] Speaker 01: The only thing that they've gotten upset about is with respect to raising it at trial regarding written description and anticipation. [00:38:12] Speaker 01: But none of that relates to the prosecutor. [00:38:14] Speaker 01: And I'm overstaying my welcome with Judge Lurie. [00:38:18] Speaker 00: Thank you. [00:38:20] Speaker 00: Close the class. [00:38:22] Speaker 00: You may take up to seven minutes if you need it. [00:38:32] Speaker 02: Thank you, Your Honor. [00:38:34] Speaker 02: Just a few points, and really going in the order in which these issues came up. [00:38:40] Speaker 02: So first, we can win before this court on latches for multiple reasons, even without regard to the disentanglement of the written description point in the prejudice question that you raised, Judge Prost. [00:38:57] Speaker 02: We can win because there's no unreasonable delay separate from the prejudice inquiry. [00:39:03] Speaker 02: We can win because Google was on notice and never demonstrated that it was all prejudice by what it now says was lurking in the shadows. [00:39:14] Speaker 02: And so there are multiple grounds on which this court can resolve the whole case, rather than piecemeal sending it back for a new written description analysis and having that [00:39:24] Speaker 02: get reconsidered as to latches, which would be horribly wasteful and yield another several years of delay on reinstating a jury verdict that we won. [00:39:39] Speaker 02: Secondly, Judge Bell, I agree. [00:39:42] Speaker 02: It is remarkable that two parties stand here and cannot agree on what the district court did. [00:39:49] Speaker 02: I have a few responses to that. [00:39:52] Speaker 02: First is it doesn't matter. [00:39:54] Speaker 02: Because Google, for all it says about written description, Google never raised new matter. [00:40:00] Speaker 02: New matter was most certainly forfeited without regard to what the district court did on summary judgment. [00:40:07] Speaker 02: Second, luckily, this is an easy question for this court to resolve. [00:40:13] Speaker 02: Mr. Bagotel says it was Sonos's motion. [00:40:19] Speaker 02: But we had no motion on invalidity. [00:40:22] Speaker 02: We had no motion on written description. [00:40:25] Speaker 02: We moved. [00:40:26] Speaker 03: Let me ask a question. [00:40:28] Speaker 03: Is this a fair question? [00:40:31] Speaker 03: Sonos knew at the time that the judge had rendered his summary judgment opinion that the judge was relying upon the land, the 2019 land. [00:40:41] Speaker 03: And really should have spoke up and said, judge, just let the judge know. [00:40:48] Speaker 03: Is that a fair question? [00:40:50] Speaker 02: Oh, it's a totally fair question. [00:40:51] Speaker 02: I think the answer is that the counsel is arguing the case just did not notice until the judge raised the issue again that that one sentence was imported. [00:41:02] Speaker 03: What do you mean by that? [00:41:04] Speaker 02: What do you mean the council didn't notice? [00:41:06] Speaker 02: The council was arguing the motion, simply did not realize that the 5B figure that was in the patent had that description that had the added sentence. [00:41:19] Speaker 02: No one realized it. [00:41:20] Speaker 02: Google did not realize it either. [00:41:21] Speaker 03: Maybe I sound like I'm repeating myself. [00:41:24] Speaker 03: It is remarkable to me that two capable parties, one didn't realize [00:41:32] Speaker 03: that the judge was rendering that language. [00:41:35] Speaker 03: The other side didn't rely on that language, nor did the other side, nor did Google. [00:41:38] Speaker 03: And it's like, what was going on? [00:41:41] Speaker 02: Your Honor, what's going on here is classic forfeiture. [00:41:44] Speaker 02: If there was a there there, without regard to the other five items that provide for written description, that obviate any assessment of new matter, Google could have raised it. [00:41:56] Speaker 02: I will underscore, Google's own expert mentioned the fact of the [00:42:01] Speaker 02: quote unquote, importation of that sentence in his expert report. [00:42:05] Speaker 02: And still, Google did not raise it. [00:42:07] Speaker 02: The third point I'd make about the question you asked, Judge Bum, about how remarkable this is, is that if Google did not realize that that's what the district court did, and just to repeat the point I was making earlier, what the district court did was to deny Google's motion. [00:42:26] Speaker 02: Our motion did not present an argument on validity. [00:42:31] Speaker 02: If Google didn't know what the consequence was of the district court's ruling, Google had the opportunity to ask the district court for clarification. [00:42:43] Speaker 02: It had no problem seeking reconsideration or clarification at other points. [00:42:51] Speaker 03: How do you respond to their argument that they were told, no, they can't introduce this testimony? [00:42:59] Speaker 02: Your Honor, that's just absolutely false. [00:43:02] Speaker 02: Going into trial, I would point out that Google's pre-trial brief actually mentioned that it was going to raise a new matter, and then Google never proceeded to raise a new matter. [00:43:12] Speaker 02: When Google says we were told that it would not go to the jury, [00:43:16] Speaker 02: What Google is pointing to is the district court saying, no, that's not going to the jury because the case wasn't tried that way. [00:43:25] Speaker 02: He put it back on Google for not trying the case that way. [00:43:30] Speaker 02: Mr. Bagatell admits that Judge Alsop had to decide the written description motion as a matter of law and that he had to decide it differently [00:43:40] Speaker 02: if there was a dispute of fact. [00:43:43] Speaker 02: A single dispute of fact on this question of what the importation of this one sentence meant. [00:43:51] Speaker 02: A single dispute of fact as to any of the five bases on which we claim there was a written description without regard to that one sentence. [00:43:59] Speaker 02: There were so many disputes of fact, and I would underscore that is not what Judge Alsop did. [00:44:05] Speaker 02: He starts his opinion by saying that all declaratory statements are fact findings. [00:44:11] Speaker 02: He made credibility findings. [00:44:13] Speaker 02: Yes, Your Honor, I think he may have thought that he was also disposing of the case on anticipation. [00:44:21] Speaker 02: But that is clearly not something a judge is allowed to do on equity. [00:44:25] Speaker 02: This was all really improper. [00:44:27] Speaker 02: A district court does not get to say, there is a new issue in the case, and I'd like to decide it. [00:44:33] Speaker 02: And I'd also like to decide it without giving Sonos the opportunity to present a witness. [00:44:39] Speaker 02: There was literally not even depositions on this question of new matter. [00:44:44] Speaker 02: That is not the role of a district court judge. [00:44:48] Speaker 02: Nor can a district court judge then proceed to make findings on his own without regard to any testimony on prosecution history. [00:44:57] Speaker 02: And just to underscore, if you look at the district court's opinion on this subject, the district court cites nothing but the prosecution record. [00:45:06] Speaker 02: He cites no witness because there was no witness on this. [00:45:09] Speaker 02: This new matter thing, if it was real, was something for Google to raise and it didn't. [00:45:16] Speaker 02: One last point that goes to Judge Bum's question about the floodgates. [00:45:21] Speaker 02: I mean, applying prosecution latches here, [00:45:24] Speaker 02: to overturn a jury verdict will upset the fundamental balance that Congress struck. [00:45:31] Speaker 02: All you have to do to follow this roadmap is point to six years of delay and raise some fact question about written description, which is all that this dispute [00:45:43] Speaker 02: was about. [00:45:44] Speaker 02: I think Judge Post, you mentioned garden variety. [00:45:46] Speaker 02: This was a garden variety written dispute issue. [00:45:49] Speaker 02: I've won written dispute issues like this as a matter of law. [00:45:53] Speaker 00: We've given you extra time. [00:45:55] Speaker 00: I think we've given you equal time. [00:45:58] Speaker 00: And I think the case is submitted. [00:46:01] Speaker 00: Thank you, Your Honor. [00:46:02] Speaker 00: Thank you to both counsels.