the new trial set by the district court for september fourteenth and all other proceedings on that board should be stayed because the jeep have that instituted c b l review of all claims asserted in this case and there will be no prejudice to the patentee smart class from that stay in ruling otherwise the district court made three critical legal errors first the court treated section one  differently than the other grounds of invalidity your own patentability we know that's wrong from this court's decision in the benefit fundings case as well as this morning's decision ever sought a versus a fifty case which holds that he tab can review section one of one determinations o a second the court resolutely look backwards not forwards it looked at the water already under the bridge the work already done rather than the work remaining to be done which now since this appeal was filed concludes an entire new trial and damages impaneling a new jury having new experts new daubers new discovery all of which could be avoided by the state and third and i think most fundamentally the court faulted apple for employing the procedures authorized by congress in the a i a and we hear a variant of this from my friends of smart flash who claim that apple is is seeking a tactical advantage by using the c p m process i would like to address first factual advantage not that kind of tactic like this or talked about here could be contemplated i think the only ones that i could think of your own are ready to be an unfair advantage when on authorized by law or somehow gaming the system apple did not game system your apple did exactly with the system requirement i think that there's a disconnect there between the arguments being made and some of the trichords order in the facts of this case so give me just give me a hypothetical example where first time on grounds that were available earlier in the case and did not act reasonably promptly that could be the kind of event that's not what happened here what happened here is right after the alice decision of the court is familiar of course with the confusion after this court's decision a samsung filed it's one of one of the decisions apple then filed in twenty one positions and we simultaneously moved on one of one grounds the district court smart flesh makes it sound like why didn't we just do that at the beginning of the case judge malley footnote eight of the court's opinion and intellectual ventures of the court may recall says the congress didn't intend for a party to file c b m at the beginning of the case it was only when they became right and the c m is a difficult thing i brought the first apple to be a magician with honors its thirty three hundred pages long ambition until after the district where the issue starts so it has to go in parallel then the question becomes which should go first because if they both keep going at the same time the courts this court specifically ultimately will end up in the  be able position that i know several of you're familiar with for seniors and other cases where there is a potential conflict that conflict can be avoided entirely if one process where the other goes forward while the other one w twelve month after institution statutory period that cannot be altered by either the parties or the be tabbed and congress therefore expected that that would be expeditious and in every judicial district of the united states with the exception to my knowledge of the eastern district of texas the district delaware  mind there was the kind of case a competitor vs competitor case where the patent holder had a product on the market and would actual so actually suffer real quantifiable demonstrably all factually find of all injury we is the date the motion was filed so standing on the date the motion was filed what is going to happen forward in the litigation third i would take the language from virtually gelati including footnote six that says the court can take you to shal notice of things that happened after the motions by you suggest that our judicial notice is judicial notice and if it is an event that is usually notice of bowling may play into the stay analysis which feeds in my fourth point that must be one of the meanings of the section eighteen provision very quickly district courts move at least and events will happen and if it were the case that were frozen in time judge o'malley you would have the odd situation where it's clear that if they require it today but you go back in time and it might have been a closer question you know there's no sense in a remand or something i think what congress said by putting in the noble review provision is now here just decide we've got a new trial and damages we're going to have new experts for us we're going to have a lot more work and we're going to have a lot of work in this court and i think it's clear that this cour first that comes to this court and then anything is left in litigation gets resolved the district court that is what congress put in place for by the way this narrow slice of past this isn't a an across the board rule this is for covered business method patents the court also deliberately set up by congress for certain authorized issues and certain authorized patents it should go first and if we take that as the defining principle as i think the statute says and depart from him only in the rare extraordinary case where the patent  holder after institution would suffer arm that does take care of my finest case but i would also take care of my clients where i represented the patent holder and it would be a fair or neutral rule that applies to everyone and that's the rule we provoke  one quickly to talk about don't don't look back look at what what he's facing the court at the present time but doesn't the fact that the district court as in this case had extensive experience with these things don't with this case over an extended period of time is fully flu with all of the issues and i mean doesn't that have an effect on the fish in the district court in going forward  continuing shall we say sort of the momentum in getting this case resolved as opposed to at this point in time despite all the work that has been done sort of putting everything on hold and then picking it up  is a question of law if it is decided if they confirm their initial terminations these patents are ineligible all of those other issues fall out of the case so the most likely scenario is that the district court never has to return all that work the case is simply over now you just fifty one zero one institutions thirty two final decisions one hundred percent confirmation as proof patents and ninety seven percent of the claims so the pretty going to share in this case where they've already found more likely than not ineligible that it will be confirmed this court of course will have to review that i understand that but on the other scenario i'm getting in my own time here the court will be able to pick it up what's left of the damages read trial according to the most recent order with new experts new discovery and so forth everybody's going to have to do something new to start so that in the unlikely event that this patent is ever held to be sustainable and action will then we can pick it up in the future and again i need to return to the point the court has already found that most importantly doing so would engender and take an immediate appeal right now on all of those issues including the one alleged your honor we've actually taken a position the district court the liability of damages is inextricably intertwined in this case and that it can't be separated out that way the court reserve that issue pending smart flash's new damages approach to see whether or not it would have to decide that we don't have a final decision on that question and we don't think that kind of an appeal would be right in this particular case i don't think that's a of a generalizable principle some cases might well fall of th category certainly as to efficiency though of getting everything wrapped up in the broad number of cases from every district in every circumstance and letting them be to go first under a statutory timeline is generally going to result in the best of the and avoid one of the other can make leave the court i'd like to start with an observation the judge newman made in virtual agility that the american events permit if it does not require the district court to stay in earlier filed litigation during the later requested post grant p p o proceedings such a state is not obligatory but is confined to the district courts discretion and i think what we have here is we have a very thoughtful and thorough analysis by the district court has a lot of experience with this case and has put a lot of effort into this case and carefully analyzed the statutory factors as to four different parties have put out a careful ruling the fall of the statute denying the day the apple and then the dems understand that the granting of de as to google and amazon who are postured very differently they were well before markman before even the start of discovery in the case of in the case of amazon and i think what we've seen you but there there is still money left to be done especially now in trial and very well i would say that there's comparatively less to be done because so much has been done as to whether the court can appropriately look forward and backward i think there are a couple different aspects of that one is what the court has already done certainly informs an elevated level of knowledge of the cases miliary of the case and handling the remainder of the short amount left in this case now prevents the need to completely reboot and reload all of these issues in the courts mind at a time later if as we believe that's correct this court ultimately determines that these patents are not an eligible subject matter al damages if you've got to go back and restart your act right i think that's i think that's to be determined that we've got the ruling from judge still strapped just a couple of days ago and at this point i think honestly it's just a matter of us still figuring out exactly where that purpose and looking at what we have to do to go and present a new trial he sets a new trial for the middle of september clearly judge bill's drafted not anticipating that we're back in the case of many many months and starting from scratch so i don't i  well i do think obviously some work is left to be done and i wouldn't dare argue otherwise i don't think that is the case that we are backing up significantly and starting all over again whether you agree that  of taking up those liability issues right now i do not believe that this is a case where damages and invalidity are inextricably intertwined that notion was raised to my knowledge for the first time in oral argument last week in front of when there was a whiff of the notion that we might go back and revisit some damages and apple said well let's just make sure we get to redo everything we can on liability to not the first i've heard of that but i don't see any reason that it wouldn't i don't know how far down th example apple had no one approaching alternatives and stipulated to that and once there's a finding that certain functionality already infringes and then the finding of known on infringing alternative that apple had that if it is wildly different than many cases in which you might have to go and it's like a lot of small fine boundary damages in order to retry damages i don't believe it or am strictly intertwined and to go back to go back to your earlier point on looking backwards there are two different in terms of what is left prospectively but also what has been done so far and to look at the delivery motive and i think your honor my friend representing apple has brought to the court's attention the congressional a ten intense and that has been addressed extensively in the briefing plainly from congressional intent the cover business man the review system was designed to be used as an the proceedings i've got to try to characterize it a sense of the notion was that because we're in one of the districts that's working really hard to get through things quickly we should be able to do things that are really really like my case as a result almost as though the district court's opinion should be less credible because he has worked very very hard to get this case to trial that's not what we filed the case and went to trial even months later it still was almost two years  trial and they have a case but he did work very very hard and i think what congress has told us is we're trying to have a fish and competition time efficient alternative for litigation but when you wait until the litigation you're ninety percent of the way to trial you negate that and i think it probably bears repeating from the breeze that plainly congress never intended there to be a mountain where getting close to them serially just until something heads right up to the eve of the trial if that's going to justify a stay and say never mind what your motives were never mind the efforts of the district cour has put in and we're going to go ahead and stay the system is actually encouraging precisely the opposite of what it's meant to encourage because then what it encourages it litigation abuse from those who are the alleged infringers when arguably have said to curb litigation abuse from people who were sending out to new letters and abusing really terrible patents that should have been granted or things of that nature what we've done is authorize a new circuit review of the want to one issue we'll take it slow around and then by the time the patent could come up to the federal circuit following the patent on appeal board review and then come back and go back to the district court we've seen that we loose enough appeals coming to us after the americans and so act to illustrate also it's a variation on the relationship as to what comes first and after and which stage and so on as far as the circumstance is concerned i gather that your view is that one thing should be some specific time period during which one can have resort answer to your question is unfortunately because of the law that we're operating under there can't be a bright line rule and i actually think that's terribly important this case because of what you're hearing from our lives that congress has been express don't think you can say it's moot if it's brought before or after martin hearing and i think it comes down to the reason i say that it comes down to different district judges based on they've figured out what works for them and they manage their dockets in a particular way so there are some district judges who weigh in addressing martin's just before trial in connection with summary judgment i'm only giving that is an example because i don't think because of the way the district judges manage their dockets and they have wide latitude in how they manage their docket i don't think throughout the litigation and they can say in this case you told me that this defense was available to you a long time ago you could have requested it a long time ago and it and i think that's why district courts looking at the factors are all we're going to have to give some deference to the mother i know that's you from if an overview to ensure consistent application of established precedence i realize that the does the district judges have a lot of insight and will make determinations that should be entitled to some discretion in this case for example when apple and samsung finally raised one hundred one petitions at the at the p c b they didn't even notify the district court and in till after the apple trial had taken place just as as an example so it's let's let's have a free look at the cards look let's see the cards that are facedown and we'll go ahead and do some remove for doing and then over the holidays we redid a new damages model they tried again and that was denied and all of this took place and then the trials of place and then it was a couple of months after the trial that on not i don't know that i'm saying they have an obligation what i'm thinking about you if you also look at fertility for example that also tells you a district court can either deny without and without prejudice to refiling or can reserve a decision i think is actually the way it's  filter is an institution decision but my point is simply that there was actually no effort to reduce any of the litigation cost time money in this case based on a one on one essential he designed the timing of its filings so we could take every shot possible including the jury trial shot well before and saying time zones to think through the answer and i think there are very talented and creative lawyers and hopefully that sentiment goes for both sides and everybody's working very hard for their clients but a part of being a talented and capable lawyer who played in the first instance that you had a section on a wonderful sense they also could not just fight the congressional intent where it's helpful but actually try to advance congressional intent by having moved far earlier and i think that's where the tactical advantage comes out in the wherever we are it is just simply a recognition that there will be less to be done mr caldwell accused apple's four times or three times maybe of abusing the system by waiting too long to file this position but you never once heard him say the word malice these are  honor these are computer implemented business methods the law was in confusion before the supreme court decided alice i apologize for saying that in this forum but we were all here for alice and that's the case never ever making arguments on a line we preserve the proper grounds be a starter rule kicks in to that final decision when it was being seriously debated simultaneously contemporaneously in the supreme court whether these kinds of patents were subject to want to want it all and what the standard would be i actually think would have licensing no nothing making all of these arguments because interested in our injunction papers in the district court because it goes to that factor of the injunction we have pointed out that there is absolutely no evidence of any harm whatsoever much less irreparable harm this is a case about money they can be compensated it and finally judge newman you asked my friend what to do and i think his answer was that a variant of leave it up to district courts have a case by case determination with respect that would result in what senator  called the dog's breakfast that existed before the a whatever else congress did it was clear that it wanted more uniformity as to this precise question when stage should be issued it gave this court  overpowered automatic appeals for review and when the court is exercising that it ought to have standards then for the benefit of this court the district court the litigants who have to take the case of this court judge newman has l review has been instituted on all claims in the case dish court has very little discretion that discretion is limited to prejudice to the opposing party and in the absence of prejudice stays required as a neutral rule that can be applied