thank you judge taken me up please the court john a plan on behalf of western jiko i'd like to start by addressing the two questions from the court's october one thousand and then turn to some of the other issues that iran has raised since the supreme court's limited remain and in this case first assuming the supreme court does not grant review and reverse in the i p r appeals then claim twenty three would be the only claim that would support the entirety of the lost profits award and it does support that award award just as in crystal semi conductor and just as a judge of bryson explained for this court in tivo versus echostar five sixteen f third twelve ninety upholding a lost profits award even when some claims were found not infringe on appeal because all one is food grow food grow was of course in this trial with ion originally the surveys that involved food grow the devices that involve food grow were carved out and if i didn't think that that was done appropriately it could have objected at trial and it didn't do so  with respect to an entity called pole arcus there was a credit that was agreed to between the parties it was a stipulated three million dollar offset and in april and april twenty third twenty fourteen stipulation a docket six eighty five and then with respect to p g yes yes there has been a confidential settlement with p d s i can't really speak about the terms of that in court but suffice it to say it's certainly our position that it does not affect any of the issues in this case and to the extent that i am disagrees the appropriate course of action for them would be to follow rule sixty motion in the district court now i don't think they will mr burrell who is counsel for i on now was counsel for p t s in the being sought in this case was iran's liability somehow limited to damages for the infringing device rather than the full value of the service no and that would be inconsistent with supreme court precedent judge wallach and indeed inconsistent with the supreme court's ruling in this case i think the supreme court was was very clear in deciding this case that the measure of course of damages is full compensation and under section two eighty four damages are adequate succumb and see for infringement when they pla he says that he's not a technical expert in other words he's not in position to be able to pick on whether claim twenty three is necessary for the performance of the survey contract and would you agree that that's an accurate statement what the record shows i don't think it was just an assumption judged i think that he was reflecting things that he had learned in the in the record and in terms of the value of the various claims twenty two sixteen and also with p t x two fourteen i on itself estimated in its minutes marking materials for this that the value of the turn mode itself just the turn mode was six point four million dollars per year per vessel which that calculates to be ninety six to one hundred twenty eight million dollars per year which is more than the last profit in a sort of what is that connected in the record to claim twenty three that's the problem i'm having oh yes i am i have my clerk look through the search the record for references to claim twenty three and i don't see that i may be just mistaken about this i don't see any testimony that claim twenty three the technology of claim twenty three was necessary for the survey contractor oh it absolutely it absolutely was to take and the words to be looking for i don't know that claimed twenty three was referred to as claim twenty three it would have been referred to as line changes or as turn mode orest turn control mode and in terms of the value of it and the necessity of it you don't have to take my word for it let's look at what i on i playing twenty three technology as opposed to the technology of the validated claims is necessary to get the survey contracts where we might find the record sure so let me point to a few things first if you look at is something that customers were were expecting was to minimize the time required to complete line changes that is what the turn control mode is all about it is minimizing the time required for  particular aspect of this which is reflected in claim twenty three and that's what i understand you be saying but the trouble is there isn't any one to be fair to say there isn't a testimony directly that directly says that claim twenty three technology in those terms to something that's essential for the service so that i don't think that it's true to say that there's nothing in the record that ties it  i don't think that it ties it necessarily with having for example the damages expert refer to claim twenty three or first specifically to the testimony of the technical expert on claim twenty three but you had that the technical expert wa so let me see if i can understand what you're saying there isn't any testimony in the record specifically focusing on claim the claim twenty three technology and saying that's necessary but what you're saying is that without using the mak specific reference to claim twenty three there is material in the record showing that the technology that's covered by claim twenty three is necessary for the services that the yes the technology that's covered by claim twenty three there is testimony and there is evidence in the record that the technology that was covered by claim twenty three was was was what was something that was required by customers in other words without it you would have had an acceptable not infringing alternative which brings us back to what is the panda a test of course that the panda would test the question on whether or not there is demand it doesn't look to the specific claim features it looks to the product as a whole and then the question is are there acceptable non infringing alternatives and there s and the turn mode is necessary to give you sort of a contract right well it is that the claim that the the there is testimony that links claim twenty three to the turnover that is what claim twenty three covers and then in terms of the ability to get the contracts question you're asking is not quite what the panel what factors asked and so i want to come back to what the is one of but for causation but for their infringement would we have gotten the the service that's absolutely right and we prove that through the panel with factors in the idea that if they weren't on the market with their product then there would have been we would have won those surveys this is where the that's the exactly the problem when you say on the mark with their product the problem is their product includes a lot of technology other than claim twenty three some of  which was previously covered by your other half so just like that's going to always be true and it's never been that is every product is going to be covered by by things that are beyond the panda technology and this court has never suggested in the you're you're in the fortunate position of going first which means you get some rebuttal time afterwards and i would be comfortable with what you're saying if you can point us to somewhere in the record where twenty three is referred to as current technology and one other place where your name is x incorporates it in some fashion yeah well just draw that line for us and  sims the damages expert players who maybe not twenty to eighty nine of the transcript and the damages expert says that acceptable alternatives and that's what this comes down to is acceptable alternatives acceptable alternatives would provide the same benefits and means all of the same benefits as the patented steering system so i think that's where he lives up there and he's not a technical expert he said and that the testimony that you quote in your read and rely on so heavily is based just  technical support for the notion that the quinn twenty three technology is necessary for the service but just like i have respectfully you keep asking the wrong question when you say it necessary for the survey in the sense of the question when you apply the panel what factors is to say what whether there were acceptable not infringing on terms and this court has made clear that when whether there are acceptable not infringing alternatives is a question that depends on the specific kinds of each of the tech and technology was necessary to perform the service and it's difficult the briefing has not been very detailed or very clear or in fact will have helpful on this point and it may be that we you know figure out today in the oral argument but if it were we're looking for for something in the record that would support the notion that one hundred twenty three was necessary for the circus yeah sure he gives the right one no no i appreciate judge well it and if i will endeavor to give you that today if i can and if i can't with the court's leave i'll submit a letter in which i simply refer you to specific specific pages from the trial transcript  referencing the expert in where the technical expert discusses claim twenty three and tying it to to the issues here but i think that the with respect to to the jury verdict of course all reasonable inferences have to be drawn in favor of the jury's verdict and the evidence is of course of course viewed in the light most favorable to us and to the extent that what ion is is arguing now and that's really what is arguing now is that its own devices would have been unacceptable non infringing alternative if some of the claims were found not to be infringed that was that was a live issue a trial because at trial there was a one room strike that was already found to panel what factors were fired we addressed whether there were any acceptable non infringing alternatives and you can see for example at this is a trial transcript twenty two nine of those three necessarily have to be alternatives that may be between twenty three technology simply just isn't necessary at all and doesn't have to be an alternate they point out to some reference or some comment that you made in connection with the i q ours which i don't think is all that helpful and i think we're going to decide minimize the value of claim twenty three and suggest that this was some some minor feature that is a very different tune than they were singing in the district court when they were arguing that they didn't infringe claim twenty three and they argued this is there are there do that we've got a different situation here now because of the invalidation of these other well what they said judged like it's quote this turn mode is one of the most important benefits of the patents in quote that's docket five sixty two page twenty nine and and of course in this course decision in mentor graphics the court is clear there can be any number of features that might be important but as long as only one party can provide all of the features that are required by the consumers of the product then that then there are no acceptable non infringing alternatives and that's meant for graphics that page twelve a not and that's what you have here there are multiple there were multiple features th covered by the claims all of those features were were necessary were required and the way that you know that is again partly from iran's own business plan and eighty two of the the joint appendix as well as the fact that damages differently lost profits or a measure of damages intended to make the party whole a reasonable royalty is intended to compensate the pantie for the value of what was taken from him the panda technology and so when you start talking about apportionment yes you're talking about what is the value of the technology and it makes sense to talk about that in the context of a reasonable royalty but when you're talking about damages intended to make the party whole and the supreme court has been clear that is that is any  suffered by the patent owner because of the infringement and and i think that proof of but for causation then the kates apportionment principles in this court said that in right height and bonked fifty six f third at fifteen forty eight the concern that lost profits must be related to the intrinsic value of the patent is subsumed within the but for analysis and quote and i think that that principle is absolutely vindicated here is vindicated by application of the panda  mr mr sens explained the damages were separate for separate acts this was an issue of whether there was a double counting here or attempted double recovery was an issue that i on raised  the district court specifically considered that argument rejected it that's a j a thirty five and they did not appeal so it is our position that that with respect to lost profits we were not compensated for for those by the reasonable royalty and so we're not in the situation presented in going at let me say let me ask you if there are questions with respect to the reasonable royalty award which is itself the subject here of a separate final judgment which has been executed indeed the reasonable royalty was was paid amount was paid two years ago there's been suggestions in the briefing that that can be reopened at this stage we respectfully submit that it cannot ion of course agreed to entry of whoa we attempted to do so and your honor the reality here is that we have to intervene in controlling authority as this court put it in the context of its prior case law we wouldn't be here asking for the money back obviously if the claims had been invalidated but the law is clear that there was no final judgment in the sense of a final judgment adjudicated entirely on the merits as simmons versus greer from the supreme court says and so that judgment is null you once it was a party loses their case they pay the judge some time later a lot changes they can come in absolutely not absolutely not because that is a final judgment conclusively and finally decides the case the litigation is entirely concluded as this court put it in for sirius and the supreme court put it in simmons versus greer that has not happened here i'd submit simmons versus gr conclusively and finally a jew equates all claims on the merits and fear that's missing the fact that we paid the judgment rather than for example posting a bond on appeal which had the had the judgment been vacated we would have received back  really of no moment that's just a question of whom we pay we paid pursuant to a court order which the supreme court explained in the united states for his morgan and then the all com case further addresses is sufficient to ask for restitution it's not as if we ate out of charity or out of our goodwill it was pursuant to a court order requiring the sureties to pay and the law is clear whether western people think it's fair or unfair that we're entitled to litigate at this stage anything that sureties have to pay the judgement so it was under the qualcomm case which analyzes morgan and its progeny the question is whether the payment was pursuant to a court order or as a result of a court order and this clearly meets that test the shorties were required to were successful that might result in a reappraisal of the reasonable loyalty very well it had we tried not to pay and we had vance that argument to the district court that we shouldn't have to pay it and that it should be delayed and the court ordered that the sureties have to pay the it's i believe the district court docket number is seven twenty five i'll check that seven twenty five and seven get it if you want it and i do not believe that is in the joint appendix before the district  that because the jury was instructed to do that but what the record reflects here is that there was no identification for the jury of which digit things were used in the last profit surveys so the jury was not able to say well here were the devices used in the last profit surveys here were the devices used in those non plussed profit surveys or reasonable royalties for one set and lost profits for the other and thereby ensure that there is no double counting as claire would records about which digit things were using last profit survey which would be a requirement not to double count what lester jiko relies on is that the jury gave lester jiko less money in the reasonable royalties then they asked for and they say well this may have reflected their effort to avoid double counting maybe but certainly not in any accurate way because the tree again did he have the evidence it would have required you to look to see or disagree with you the district court said they were available to you on your first as a subsidiary argument that is and you thought that we did not directly make the start we did note that if any of the infringement or other determinations were changed that a remained would be necessary portion of the infringing sales then you must award western reasonable royalty for on fringing sales for which it has not been awarded lost profits damages but you didn't object to that and it seems pretty clear to me that the are actually to avoid double counting as glen air and the law requires it should be required that western people identify the digit pins that were used in the lost profits award and ensure they don't recover reasonable royalties for those same three it requires a particular series of steps as to how you steer drawing a turn to throw out streamers in one direction to throw them back in a sphere them in another direction and not just do that but do them in a way so that it returns to something called feather and what you seem to claim eighteen is that it's a broad claim that covers using term control mode feathering all modes or stream or separation no stream or separation was also very important because that is what prevents the streamers from getting tangled with each other which is a disaster if that happens during a survey such as when you have that weather so that's the broad claim and what the people have found again obviously since affirmed by this core is that streamer separation mode is in the prior are valid and the key mode this other angle mode which is what you use when you're actually collecting data on a survey and that's what these companies really want which is accurate data collection that's what these surveys are all about that's invalid too and so the jury operated in a world where one could not do stream or steering with out practicing lessons because  think your honor was asking the right question respectfully and the answer to the question of whether there's any evidence in the record that claim twenty three was necessary in the award of the surveys customer basis so with respect to each of these surveys they would have to show that the customer would not have bought the survey but for the technology of claim twenty three and that they would have bought a survey either with out and turn control at all or with a different to turn together put together turn control mode or line changes and the importance of that with with the surveys but again claim twenty three does not cover all current control modes it claims one particular feature and that's why besides evidence which is evidence from western jiko saying listen the reason our patent survives and the p tab should not even institute trial here is that the prior art recognized from control problems problems drove cars generally not line changes generally but specifically the features of claim twenty three to the award of each of the law in the wrong you're wrong the question is is there sufficient evidence in the r question that you have to ask this is not a normal sufficiency standard given the invalidation of all the broadsides the question is what did the jury conclude can we determine why the jury awarded the damages it did and whether those damages were attributable to the sole situations where both parties agreed that it should be sent back and then that's for the man which obviously we're here asking for remand so the normal rule here is to say listen if we have a general verdict like we have here we look and try to figure document that was cited respectfully doesn't say anything like that it just talks about why changes as a feature so i don't think and such evidence is in the record the jury would have to find again as metro graphic said as judge dyke was asking before the recall again the jury would have to find the claim twenty three was the basis for the sales on a customer by customer basis and those sales would not have been made absent the features of playing twenty three days that the customers would not accepted either something that didn't practice playing twenty three because it did that for control at all or a different kind of current control non infringing alternative absent that showing there's no lost profits that's from grain processing on forward the black letter law and so that's what western jiko would have to show they certainly didn't show that below there's no evidence in the record time claim twenty three to the decision by these customers to buy these surveys from from from western from customers and so western jiko basically is at a place where they have no evidence in the record to support the jury verdict on claim twenty three which wasn't even the basis of course for the jury's determination given the jury render a verdict under the assumption that lateral steering case this year must in all cases separate or apportion between the patented feature and the other features of the product that was the gerritsen versus clarke case in eighteen eighty four and the later cases like dobson and blake versus ferguson and seymour they all say the same thing that you have to conduct in a courtroom an analysis that it is overcompensating a patentee if you give him more than the value of the patented feature because they're not allowed to profit from the now invalidated peters let alone the features that they never patented that were relevant to the surveys including for example the vessel itself the data analysis from the survey of the streamers themself these devices are one small component of enormous surveys and given what remains of the patent portfolio that the treatise of claim twenty three the notion that that should somehow profits for the in higher survey is contrary to see more than a century of supreme court cases did you raise the issue well we raised the issue that last profits were per se unavailable because of invalidation it's quite different now given lateral steering is is off the table but but but i grant you that but but i would submit that in arguing that lost profits are unavailable because of the absence of direct competition here that says lost profits are completely off the table and the direct competition has it is relevant to the apportionment analysis as well in this court's decision meant for graphics where where the court basically tries to address the question of whether apportionment is required and says creates an exception into which this case does not fit and says that there can be in such cases only one award of lost profits because you have two companies their mentor graphics and synopsis competing for the same sales and the party shows the pattern he shows that but for that infringement it would have made that sale so in that particular case metro graphic says you have this direct competition and so is not required we submit that that standard is not met here ion does not directly compete for the same customers with western g p l therefore lost profits are completely off the table and as a subsidiary point to that what he says it is and i say that twenty seven and what he says precisely is that lost profits are unavailable for several reasons so he articulated the view to the jury and bill some claim valid inference zero all the time the notion that that's somehow an admission that a lost profits award of ninety three million dollars is appropriate when one narrow claim is valid and infringed respectfully lost with the infringement and so he was attacking various aspects of the of the sims model and sims analysis which said here's my analysis and you can't lost profits case around the country does every day that one claim is valid and in french at least one because otherwise you force have no lost profits and you have no damages so every one of these non technical experts says that's the assumption i'm making i'm not getting into the details of the claim any of the technical analysis i'm just making that assumption and what he says is what profits under any scenario are zero zilch he never suggested that lost profits for the ninety three million dollars because each one would prevent its customers from using bottles curing not that one claims provides the western jiko sort of changes the phraseology between its first report i'm close to testimony and it's for law  judgment that there is a possible problem is that correct yet so morgan deals with the question of restitution and the question of restitution of course is ultimately a federal lawsuit or one well it was the a yes the idea that you could have i don't recall the specifics of what happened in morgan judge dyke but my understanding is that what the court said was that potentially you could have a claim for restitution restitution being an equitable doctrine and here of course you have a situation this day has never remained it the issue of reasonable royalty which as we've talked about before there's no double counting that goes to different distinct acts of infringement when they're serious sorry no no no they're related only in the sense that  nothing to be nothing to be done viz a viz a reasonable royalty that part of the case was over finished final and could never be appealed back to this court and the district court ultimately granted execution now at the same time you had t that there was nothing else left of all done i think you could collect right exactly correct there was nothing else left to be done in terms of execution this court had a firm with respect to the reasonable royalty and that the same thing that happened  us but it's not judging but i mean the difference here is they paid i think there are two fundamental differences yes there is the difference that they pay but second in for sending us this court actually had issued a general that's how this court distinguished the d c circuits decision in qualcomm this court issued a general re man and on remaining and there was a motion for a new trial on damages because some of the claims have been found to be either in french or not invalid and some of the claims  in twenty fifteen and in twenty sixteen really ended nothing with respect to the reason world twenty fifteen or mandate nothing at all and twenty sixteen only the issue of enhancement that then brings us to documentary seven sixty nine and seven seventy which is the entry of final judgment with respect to the issues that remain in front of the district court and that's where you actually had an issue litigated in front of the district court on enhanced meant and the parties then did agree to the end and not just to not but agreed to the entry of a final judgment from which no appeal was taken and i think that is absolutely dispositive with respect to all of the issues which this court had affirmed or had remained it because no appeal an underlying acts of an infringement it absolutely was final and it would be one way you could think about what the district court ultimately did here of course is consistent with the fists or good line of cases that you can sever parts of cases that's united states versus o'neil six nine and then seven seventy is the entry of the judgement and to be clear they entered that weeks before argument was scheduled to be had in this court in the i p r appeal so it wasn't like the ip orders came out of nowhere and surprised them they entered knowing full well about asked for example for their expert or for any of their witnesses to address of course a minute trial and they did not appeal apportionment to this court there you can look through their original briefs in this case you won't find the word apportionment is not in there they didn't raise it and the supreme court's limited remained on the issue that remained in the case does not open up the argument for them to be able to to take on and address apportionment at this point in time now coming back  non argumentative letter on monday that just lights what we think are the best transcript sites that we have from from the record in which they they reference claim twenty three what i can provide you today are a couple of things first the claimed in claim twenty three claim eighteen talks about a system that has one or more of the following features then claim nineteen which was further angle mode is describing one of those and specifically claiming one of those features in the same way claim twenty three is then claiming the turn mode the turn control mode feature and you know the question alternately of course it doesn't have to be and i think mentor  clear about this it doesn't have to be that the the that was the sole basis for the sale the question has to be would we have made the sale by for the infringement and that's for example at a trial transcript twenty two ninety three twenty two ninety ten seventy three to seventy five and indeed you know i am itself a den of five no alternatives to western  to docket five sixty two of page twenty nine this turn control mode i understand they're the latest council but they said this turn mode is one of the most important benefits of the pad and it was then the turn mode was discussed a trial again little stand at fifteen thirty separation mode and two or more of these modes and then claim twenty three goes on to explain what the turn control mode was and the court and claim construction define controlling things i think we're well if if i j twelve eighteen and j twenty six fifteen both of which are discussing what the importance of the turn control mode was which is to get this trying to round more quickly the questions never can return