may please the court my name is david then you're on behalf of the the regional circuit which courts judge you know show what what would you choose or standard leave the well the the regional circuit applies but this court has its own body of evidence a body of law that it that it applies to these kinds of cases for the standard and for this issue it's the question is abuse of discretion by the district court so going forward as i said the p m g case controls here because in that case as in this one the district court below denied a preliminary injunction motion on the ok there are two patents that we added nothing to the past when we moved to add these two patents there was not even a motion to stay the case at the time we moved before there was that time the additional patents the additional patents that we wanted to add were not in the case yet discovery continued on the original patents because the additional plants again were still not in the case and then several months later granted the other side's motion to stay the entire proceeding given that then pending petitions for i p r is on the first three pat correct that's exactly right what's the status of those three i p r so they are there's pending applications relating to those patents and so the decision was made not to bother amending the claims that would show all the i p r that had been instituted before the the motion for a stay was cemented well we have move to lift the stay under proper circumstances after a decision on the in not after decision on institutional leading to the original patents there's an institution decision on those three there are five three of the five but titian's are granted and so i care proceedings proceed starting in may have twenty fifteen on the original bands we will move to lift the stay as to the additional patents which have been state from the beginning because they were state as part of the rest of the case and so we moved to move forward with the additional patents and in fact indeed to just catch up with the discovery ten months of discovery that had been already taken on the original patents so i guess  petitions for our i p r on the additional patents months later i believe it was the beginning of this year or late last year made last year the the but left one of the claims that we've asserted in our motion there injunction untouched for a by any i p r review and now that claim is completely free and clear of any i p r review going forward  of course of the one hundred four patent that's going to expire unfortunately it in june of next year so the type of the we've lost almost eighteen months since we originally moved to add these patents into the case and now we're left with about fourteen months left on th patent and this claim but that institution decision occurred in january of this year five months after the court stayed the case and months after we moved for plenary injunction at the time the district court denied your motion to lift the stay these additional i p r petitions on the new patents were already filed and pending in the district court relied in part on the fact be at some point at leader the district court order references the fact that there are pending petitions that on the two additional two added patents by the time of the district court's order i believe the petitions have been filed  the motion to lift the stay was was controlled by the district court's order saying that we are invited to move to lift the stay after an institution decision on the original patents when that institution decision came out we moved to lift the sta that that motion was filed in in may late may of two thousand and fifteen so we're talking about eight months after we had moved to add those patents into the case and i want to go back for a minute to my original question about why well our understanding was we can file the script we can fight we can amend the complaint and the and the case will be stayed at we i mean frankly at the time we didn't see it as a choice now that we had to make as to decision on the original patterns not the patents here we were we were wanted to go forward on a different set of patents different not related to the original fans at all and it was our view that these additional patents should should be allowed to proceed and catch up with moved to ag many months earlier so what other words i read this is the court saying what a stating entire litigation right including those two patents that you're going to and that's what he was saying he was going to it was going to stay the entire case for inviting us to lift move to lift the stay at the point when there was going to be an institution decision on the original patents that you see how the the basis for knows that these three patents are in jeopardy and he doesn't know what those patents are going to look like a year from now by the time that the i p r is are completed and so very well may be the with respect to these three patents there's nothing left to litigate moreover as a basis for agreeing to grant your motion to amend the complaint to add two additional patents he relied on the fact that your position was that these two new patents were very similar to the three patents that were already in the litigation and based on your arguments your statements that those two added are very similar to these three pat was willing to allow you to amend the complaint therefore whatever happens in those three i p r could very well have impact to on these two patents which you have told the court which used it up until the court that are very related well we you know we didn't we didn't view them as as related in the sense that these these two sets of patents should must necessarily track together we didn't view it that way frankly in that time in that timeframe of february of two thousand and fifteen we were between a rock and a hard place in the sense that we have two paths that we believe are infringed they don't have a lot of life left on them and we have a choice of whether to proceed and with the understanding with the calculus was that time was of the essence and that our best chance to get these patents addressed the infringement of these pants addressed was through existing with a gay including the fact that so much of the discovery and really this was the basis for bringing these initial patents into the case in the first place so much of the discovery although not directed to the additional patents there was a lot of commonality there which we felt was going to have to be completely if we filed a separate complaint in a different case and so our view was that tough because timing time was of such of the essence we were caught in a position of having to accept the situation and hope that it was going to recognize that the discovery benefits were the real reason for having these patents in the case but it wasn't a reason to necessarily have them track completely through that that one case and that that there were good reasons to have rada had produced over two million pages most of it in japanese most of it had to be reviewed that who produced over three hundred thousand pages also most of it in japanese all of that ha we had to review that before depositions we took thirty six depositions in los angeles we spent two weeks in osaka for depositions of of die fuku we had invented depositions in boston millions of dollars were spent on this case before the case with state we were going to have we were going to be in a position of having to repeat a lot of the things that were common to these plans in terms of the background of the technology in terms of the parties involved in terms of the industry  there are a lot of limitations on our ability to necessarily do that as a matter of fact we've been hampered by our ability to use any discovery from this case in any other proceeding including the i p r's it was it was a far from a certain quick answer that we were going to be able to use discovery from this ongoing case in any other case not to mention the fact that we're going to have to serve a foreign defendant all over again  because if we had to go through the hague so we were facing a time crunch and a decision whether to stick with stay the course with respect to this case or completely start fresh on patents that were already long in the then let me take you back to your legal argument sure your legal argument is procter and gamble generals in this case procter and gamble of course the the case at that moment when the district judge was deciding these various motions in front of the case was active here your case the cases inactive it was state already correct so i mean to me that's you know a potential pivot point and i guess what i'm trying to understand is is it your position that any time a case has been state and then sometime thereafter the plaintiff been stayed there on absolutely absolutely so basically what that means is whenever there is these litigation is going on and these ip r s get granted and now you know well over one hundred litigations have been stayed to await the outcome of the i p r's the respective ip ours plaintiffs can undo those days throughout the country by filing a preliminary injunction motion thereby forcing the district court to crack open the case and have an evidentiary hearing into a claim construction take witness testimony and figure out you know the likelihood of infringement and likelihood of validity or invalidity every single time what we're saying is that the district court regardless of whether or not there's a state must consider must consider the preliminary injunction motion it doesn't have the discretion to say oh i've stayed the case so i'm not going to consider this motion there is an that plaintiffs can undo all those days by filing a preliminary injunction motion thereby taking up a lot of costs time and resources of the courts and the parties to resolve those ending delimi injunction motion inherent in a preliminary injunction motion is the notion that there is some kind of ap reparable harm going on that there's something that needs to be redressed immediately it's the very reason why these motions are immediately  sets them apart from other motions and so what we're saying is that a district court has to consider it has to at least look at it if you say if the court's holding here is that while a state obviously that obvious that requirement then you're saying that that  injunction that's right and that's trying to figure out her well happened all of the sudden it's not all of a sudden what you have is you have a a business an industry that is you know not like apple samsung where you're selling ubiquitous products us you're talking we're talking about r m h s systems these are automated material handling systems for the semiconductor manufacturing industry specifically where these contracts happen once in a while there aren't that many customers for mr made it again for us that there was going to be a solicitation for this type of business and it was a rather big order and we wanted to capture it yes we didn't want and we certainly didn't want to be hampered by offers b food it's so competitor of infringing products and and potentially lose those opportunities when we become aware of an opportunity they don't come along all the time we find out about it and that's what was the basis for bringing the motion it was something tangible morning your honor the way thank you your honor jeff sure word for the die fuku defendants and the issue is i think i heard a few minutes ago or this court to consider is whether the district court made an abuse committed a busa discretion in its ruling with respect to these motions and that would be a clear error of judgment a decision outside the boundaries of permissible choice or an error of law none of those things happened in fact i didn't even hear that your argument that i think that the facts in that case are different than the facts in this case in that case this court look specifically at the hearing transcript before the district court where the district court was asked to consider the harms and declined and that is not the situation that happened here here the district court made a finding with respect to harms made a finding that there would be no undue prejudice if the filed several pleadings that related to its harm it first filed in opposition to the original state motion it then don't look for the decision of the district court where they address well of those they actually didn't specific discussion as to your rationale as to why i was denied other than those just simply the knife well your honor i don't think it was a problem and let me explain why i don't think it was a problem the district court made it finding in both the first order and in the second order and i can refer the court to page eighty four in the appendix where it says near the top of the page accordingly the court finds as it previously found that all four factors militate in favor of stay now iran are is absolutely correct that there's no analysis there the district court doesn't go through these exigent circumstances but in fact they were set both with respect to its original motion to lift and in its reply and in fact if you make a comparison between the harm that was presented in the p i motion which was subsequently filed in violation of the state because i think you're on a got to the point where it felt like you didn't want to wait any longer you'll see there is no difference in the harm that was presented with respect to the motion to lift the stay and the harm that was presented subsequently in the motion so in both they talked about loss of customers and goodwill they talked about upcoming opportunities they talked about impact on personnel and hiring all of those things were before the district court when it made this finding your are and the other thing i want to be sure to point out here is what is the record on these market opportunities missed and near or through and that is on page a one seven one si of this record or mr ben ami counsel for mirada testifies that he and his law firm learned of opportunities at some point earlier on for their client that is not the kind of immediate exigent circumstance under which a court should grant a preliminary injunction so what happened was the district court had all of this before it saw that these were not the circumstances that would constitute an irreparable harm that there was no undue prejudice that there was no need to take the motion up at the time and so what he says at the end is again on a floor because the court has now declined to lift the stay meaning he didn't find any un do practice the motion for the p i is to not without prejudice be renewed at a later date if and i'm adding here parent that it will if they come forward and they show something that isn't exigent circumstance that it is an undue prejudice that it is an irreparable harm that would justify the court moving forward that's not what happened in the injury in p and g and i looked at the hearing transcript that this court cited two binjie tried to argue harm and the judge said no no i don't want to hear it this is just going to be about scheduling and and simplifying issues and so forth it's not in the court's opinion but it is in the transcript and that's where this court went when it decided p and g what it says  can't refuse to consider harm at all i agree with that i'm not taking a contrary position with respect that but if the harms not their dissidence record then have to go through the four factor injunction analysis and do all the balance two separate opportunities actually ok and it was this declaration by counsel that is what was connected to the  that yes so my point here is that if one of those first two elements in the p i analysis is missing likelihood of success on the merits or lack of a reparable harm then that's enough for a district court to go no farther in terms of deciding whether a p r motion needs to be decided you have cases that say that so does the tenth circuit which is the daylight do you think if any between a finding that there's no  prejudice and then what is required for determining that there is or is not a ripple harm so you seem to be obviously marrying that you together if you find there's no one to prejudice you necessarily find there's no reparable arm and in kind of backing your way and including that the district court appropriately denied the limited injunction question but if that is the legal matter what's the difference between those too concepts well that's not something that i would say we have found a lot of cases to flesh out the case that we cited in our brief mori versus sado relates to securities fraud reform and the court there southern district of new york  prejudice is a lower standard than irreparable harm i'm not here to really try to figure out which one is low well i am saying that i do prejudice is not a higher standard than irreparable harm on the record in this case though if we look at the harm in the prejudice they argued it's all the same it is an irreparable harm type analysis that they're making here they criticize us for conflating undue prejudice factors and if we go back and look at just earlier decision which starts on a six he lists those specifically on a eight one of those is under prejudice and what he says on a fork is i find those four factors listed on eight all militate against a stay and he does not do more textual analysis the courts absolutely right with respect to that but you are your cases say that it's not simply a matter of him having to list every reason in support of his decision if if the record shows that the ruling was correct and can be sustained and was not an abuse of discretion how we can do our job at that point but i do i don't like to repeat myself so i apologize for that i can't offer anything more than what he says in these two workers which  is no undue prejudice therefore they can't meet this is my addition this is what the record reveals to me at least no one do prejudice therefore there can't be any irreparable harm therefore i don't have to take up the p r i motion and so the logic is i read a four is the first thing he says he says near the top of the page accordingly this is after he's gone through some analysis good had the court even stated that the logical step that you're arguing now i don't know would have been better than what they did i'm not sure that would have been enough but you're saying you're saying something that the court did not  i am adding something to his opinion yes you're right your honor not no question and we can all see what the words are on the page i just want to make sure my point is clearly understood which is he did make a finding he did not elaborate on it but he did make a finding and the finding was no undue prejudice and that was sufficient not an abuse of discretion for him to have then decided in the record i believe fully support that mirada could not therefore make issuing of a reparable harm and when you look at the evidence here of harm that they have presented to you both in the motion to left and also in the b i you'll see there is who would decide to submit a response one of the arguments mirada has made here is something we call a lock in which basically says if you're the incumbent supplier it's very unlikely that you're going to get a contract to provide more systems or new systems to a customer well mirada is the incumbent supplier for one of the two customers at issue here and neither of these companies are the incumbent for the other so i fluked who might very well not even decide to participate if there was a bidding process because according to marotta it has such a poor chance of winning that and then even if they did decide to bit we don't know what product it would submit this is a very customizable system is mr ben meir explained the cork so we need to know what are the details what are the things that are going to be in the system and how they line up with a cla in one of these sort of patterns we don't know you got claim charts in the briefs that all relate to systems sold to a nother customer in the past they have nothing to do with the issues that are for the court regarding what you say that given the grant of all the i p r there's a substantial issue of validity with respect to claims well i would say that yes your honor i mean we know after the district court has made its rulings that now all claims but  this rash of women or injunction motions you p g cases been up on the books for eight years and there hasn't been a rash of such motions of such appeals to this court from state cases and that's because the situation with the primary injunction motions are different where there's typically an exigent circumstance they're very unusual and it's not fair to expect that we're going to see that kind of thing happen on the point relating to whether how the relationship between under prejudice and irreparable harm there's also suggests that there's not a lot of cases that relate the two and i'm fact it really isn't there are that suggest that one is simply a lower standard of of another in terms of an assessment of our irreparable harm is often about the redress ability of the harm caused by the infringement of another of another party i do prejudice is as concerns about the tactical advantage or disadvantage gained by one party or another in the context of litigation that certainly there can be underlying facts that are common to them but to suggest that the analysis is the same and so if you don't meet one you don't meet the other is simply incorrect but more fundamentally we do feel that the that the district court abused its discretion when it did denied that the stalest motion you don't doesn't undo prejudice necessarily incorporate notions of measuring out the potential harm to the norm or it can but what we know for sure is that the district court actually never reached those issues because it never it expressly refused to consider marauders motion we know that it says in his own order he's not going to consider it so whatever issues we raise there were were not something of of concern clearly expressly by the order itself and and and again as a as a matter of concerning the under prejudice issue we do view the district court's decision as abuse of discretion marotta presented facts regarding the nature of the industry and the relationship of the parties the the situation being a sole competitor situation where you have patents that are s state that is effectively destroying the right of exclusivities of one of the parties as a result of the stay that very much dramatically shift the balance of power between the two parties in the context of the case that is by definition prejudice and you prejudice in fact as we cited a solutions the prejudice in this kind of situation should be presumed on the flip side you have to i fuk you not really presenting any arguments for why there's no one to prejudice to marotta they argue about the prejudice they'll suffer if the stay is lifted they argue about the the in correctly on the facts about the harm being something that's of its own making but they never actually contest the facts as to why there is under pressure just marotta this the circumstances of the industry the relationship of the parties that the expiration of the patents none of that's contested so in our view the district court had no discretion to determine that there was no empty prejudice and it abuses discretion when it decided not to lift the stay the the  stayed on feb twelfth twenty fifteen yes ok initially yes initially yes so when you filed your motion to to lift the stay and commensurate with that your criminal injunction that was during a time when been stayed correct is it an abuse of discretion for the district court to not consider a motion for a preliminary injunction on the basis that the proceedings have been stayed yes it is it's an abus that's attached to them that makes them different from any other kind of motion is different from a summary judgment motion is what i'm wondering is shouldn't you first have to pass through the threshold of succeeding on a motion to lift th that but if you're not considering if you're not actually even going to consider the arguments presented a motion proponent or injunction relating to for example the reparable harm then you're basically just not even paying attention to them in favor of consideration may be appropriate first for considering whether or not to state case like burden of litigation and another convenience factors that simply shouldn't supercede the potential for irreparable harm that is underlying a state  discretion in refusing to consider the preliminary injunction on the basis that the proceedings have been state i think the answer to that is yes your honor i think when you're presented with with the court is that because because a plumber injunction proceeding has so special character yes because eliminator injunction it inherent in a preliminary injunction motion is the the argument that there is something exigent there's an emergency situation here that needs to be addressed immediately which is the very reason why it's immediately viewable because clearly the passage of time is going to preserve prevent potentially prevent it from being something that can actually be redressed later on the state is presuming that there can't be anything anything exigent involved it's it's it's a pre ordaining a stay is essentially preordain e that there can't be any emergencies there can't be any exigencies that can't be the rule it has to be the case just want to emphasize that since the decision of the district court we do have the institution decision of the p tab and we do have clear clarity that at least one of the claims claim three of the one hundred four patent is free and clear of