about the american and your so you've gotten ahold into a declaratory judgment action under the court's precedent in redwing and its progeny a single reference and a singles in a single letter is not enough what about the jack henry case are you familiar with that requires assessment of the burger king factors in each case yes and i think a way to address that is to look at the totality of the contacts and the burden on the card i think your reliance on the red ring is creating a br it doesn't exist so how does that not undermine your entire basis here before us sure i don't think that the president has to take a single hard line rule but it is an example and i think consistent  that if you look at the contacts that the parties have with the united states you would see why one reference is not the other activities in this court three prejudiced action analysis what is your analysis of the burger king factor factors obviously the st burger king factor favors she for your argument but what about the others sure so even in looking at forums interest in adjudicating the dispute it would be important as this court has looked at to see the contacts that the parties have with the forum and the issue here is that the german defendant lava clan only has contacts with the u s licensees that it has so it was i don't want to over read your letter you at least mentioned it in your letter if you were ever going to follow through imports that busy then you would have to go through all of those steps so i don't think any of those are necessarily all that much of a burden in the context of her toward judgment on that same argue it's a difference between a declaratory judgment act and an action by the party seeking to enforce so the difference here is that this is a one sentence in a six page letter and right but i didn't i mean maybe i wasn't clear but you're talking about in terms of the language and presumably foreign travel and all kind of stuff like that those don't you would have you would have to give those up if you were trying to enforce our patent here you would have the same burdens but they wouldn't have any relevance to to the case looking at due process and how this court has analyze what is fair and substantial contacts it requires the court to to quote sell a licensed product in north america within twelve months which includes numerous countries and territories did live a clinical effect a sale it's my understanding that  states and as this court said in redwing but they haven't gauged in commercial activity in the united states involving some monetary recoupment through the two licensees and that limited use is described at page three in the circumstance where there is only a letter with a single reference and that goes to the fairness prom if there is only one letter reference you should look at other enforcement activities such as as a band and other litigation has the party travelled here is it a patent troll where it's purporting to say that my business is in force those factors don't apply here loveland has not traveled to the united states for purposes of enforcement it is not engaged in any other enforcement activity throughout the united states and  let's let's assume that that single sentence is enough purposes of starting a civil action absolutely bring up an excellent point that jurisdiction over the university is a different analysis and that analysis focuses on the sovereign immunity the university so the university does not have any but they have the university were taped all the authority here right no it does not retain all authority there's actually the two lab a client institute a enforcement action can they  states including negotiating for licenses with and of these like people by sending for example strongly worded cease and desist letters demanding as much without being subject to  sued in any state how does that seem reasonable or fair underpriced i don't think the facts are consistent with your analogy and that's why i don't think it would be consistent with this precedent the letter is not as focused on the threaten litigation in the united states that your client's letter threatens competitors with with enforcement of the american patent do the jurisdictional analysis that doesn't the pro king factors  and i would argue no because of this court's precedent in new world as a cent in those cases the court looked very closely at the license agreements that were in place i was something else just just make sure i understand i understand that the court below held that there was declaratory judgment jurisdiction if there wasn't sufficient threat for there to be a jurisdiction here and that you would not raise that issue on appeal during your stay in that correctly yes you have ok so we're focusing on the other contacts that we understand are required and this court has looked at other contacts with the forum residents other contacts with the u s residents and in new world and in other cases they've analyzed do those university of california miner saying they're not commercializing that the other license agreement has only resulted in two thousand dollars worth of royalties do we really look at the amount of royalties determine whether somebody has been commercializing in the there's other agency relationships that could apply for example joint enterprise that was not analyzed and that's an error below was it raised the parties did not analyze why would commercial exception and in response to that the court said that there was a waiver by proxy is the phrase that was used and so on appeal for the st time you're arguing the principal agent relationship based on and there are language in the district court's opinion right no we argue below that there were it was not waiver because the direct the consent to the letter was not a direct action and that the parties are separate we've always argued that they are an arm's length to separate compan i question if you originally was you are arguing on appeal yes said there is no principle agent relationship but would in another by proxy relationship be joint enterprise we do not believe so and why not because here there is not a joint enterprise being formed the german company has a separate business from the university the university is a nonprofit university the german company is  a veterinary laboratory and they do not have a joint enterprise with respect to how they are behaving there is an agreement between them right there is a license agreement and it is their common purpose to be carried out by them in the context of that agreement that is commercializing in the united northern north america we believe they have different interests because the university has retained research rights the licensee has its own business interests so we do not believe they are completely aligned both have a voice in who they send a letter to but as dr miller's declaration shows at page ninety four level clinton's not actually have an obligation to commercialise in the united states and she is the one directing the action here so it is not may please the court mark walters on behalf of genetic veterinary sciences ink doing business as popper in genetics or p g on page four of the gray brief local insights the supreme court case coal co and states that according to my friend the there must be some sort of exclusive license or absolute right to enforce it hadn't in the form but it's not so mechanical and the supreme court cautions against that kind of mechanical jurisdiction is reasonable under that prog and burger king and so where the minimal contacts are satisfied like they are in this case the question has to be asked is the defendant gauging activities with respect to the forum such that they are shielded by the benefits and protections of that form state's law and i think in this case they clearly are they're undertaking to commercialize the patent in the united states they have to licensees here i don't think the substantial the magnitude of that revenue matters or is as relevant the fact that they are engaging in a commercial enterprise from germany to collect revenue and in and force cooperate in foresman here in the united ether the whether lab oakland is obligated by the terms of that agreement to engage in commercial activity in the united states in a way that would fall within the scope of the claims of the licensed patent and clearly they are i think the argument was that because it refers north america doesn't necessarily mean that they were tasked with operating in the united states right that's what they're arguing as i understand it because north  but again the only way to to commercialize a united states patent is to engage in commercial activity in the united states the united states that doesn't have any application outside of the united states so so your hon think the language was chosen the way it was but i think what's really going to be helpful for the court it's good is to look at this case i want to address the burton factors really quick your honor i think the st three really fall very heavily in our favor  just use brought it up with respect to the burden on defendant which is the st factor falls in your favor i absolutely do not in judge shoes i kind of gathered he might i think that way to you and i wouldn't gather anything from questions here well but i mean it seems a little odd to leave a brief reference to united states patent in a letter that was really about imprinting german patents is is enough i mean both obviously this this little hole litigation frustrates me because it seems like you're both wasting our court's resources then by putting the sentence and then you by overreacting and piling a declaratory judgment action on based upon this one reference  american patent when they were complaining about german patents i mean did you really need to do this or could you waited until you actually got sued over the american patents maybe you never would of and then we would never have to been here in the st place well your hon grip the issue of course as the court pointed out was not raised on appeal i know i have but it's really frustrating that you you overreact to one sentence in a season to the letter about a german patent or group a patents and rush off and file a declaratory judgment action which takes up the party's resources the district court's resources and our courts resources over something that may never have happened in the st place well your honor my client makes decisions on what business it to go into and when their business is threatened by this one sentence or twenty four sentences that is something that they have to deal with and they're faced with a would be the letter into united states saying we own this german patent you're infringing it you need to stop sending product into germany would allow you to go after an unmentioned and raised american patent if we assume that that's the only thing that might implicate my my client's business then i think maybe there is probably no case or controversy but that of course is not the case and the analysis goes beyond right overreaction whistler further communication there was an attempt to resolve but it just couldn't get resolved here on earth and that is then in the record i don't believe so yeah why i thought it was in the record that once you got this letter you threatened not only to file a declaratory judgment action if they didn't stop this but that you they had to pay you thirty thousand dollars well i think that particular letter which is not relevant to any issue on appeal had to do with fees expended  and if they don't pay your fees to do that you're going to invalidate their american patent i don't believe it was quite like that your honor i mean i believe that the issue is is you in this letter raised this issue of the u s patent we presumptively reasonable that that german company would be subject to suit here and the analysis of the burger king factors in that case concluded that the burden on the defendant would be minor  and because they have to come to the united states in any event to enforce the patent so it's it's that it does weigh pretty heavily in in our favor i plead in this case and if you look at the other relief we would have no ability to obtain relief in this particular case if if they are correct in their argument and similar the implications of a decision from this court that would it would rule that in this particular case  based on a commercial activity carried out by the foreign state in the united states the nd way is where your cause of action is based on an act performed in the united states in connection with the commercial activity of the foreign state elsewhere and the rd way is where there is an act outside the united states in connection with the commercial activity of the foreign state elsewhere and that act has a direct effect in the united states the district court cited the  and reason that university threatened litigation against keep e g by proxy through lab oakland and it wasn't clear from the discourse analysis if they were relying on clause one or two but i think if you if you look at the intel the situation and and that case which involved this australian resource organization in that case that research organizations attempts to secure patent licenses in order to generate world to income was not an activity particularly or to the foreign states but it was instead a commercial activity at a private entity would engage and i think the same analysis applies here the fact that the university obtained a united states patent and then entered into an agreement with that lab oakland for the express purpose of commercializing that technology in the united states that particular activity practically what do you understand that by proxy to mean i don't know what the district court meant by by proxy it wasn't an argument that we made i mean the argument that we made was that the universe university make that argument i'm not sure your honor i don't recall but the argument that we made was that the university is engaging in commercial activity in germany that has a direct effect here or by obtaining a patent and then  entering into a license with lab oakland who then used the patent here either of those the scenarios would i think result in an exception or a waiver of the immunity under the foreign sovereign royalty income they are under the agreement both tasked with enforcement they are under the agreement or lab oakland as under the agreement tasked with commercialisation so i think that they both have an interest in it and i mentioned control right and that is that university shares control correct the university does share control which would also feed into the analysis of a joint venture so you i'd like to address some of the questions that you raised you asked where the agency relationship was argued below it was argued below at the evidence sherry hearing on appendix page three hundred and fifty eight and that argument was made by law the klan and it explained that there is not control here that there would be establishing an agency relationship with respect to the joint enterprise issue i'd like to direct this court's attention to two cases that provide persuasive authority foremost  mckesson versus iran its site nine hundred and five f nd for thirty eight and that is a situation where the parties did have business it was a dairy farm but the court remained ed because they needed to determine whether there was a principle agency relationship was that this court no it's not it's persuasive authority out of the d c circuit also i could direct you to a nd circuit case which would also be persuasive authority that addresses a recess and it says that it would show that there was common control it was still necessary for there to actually be a relationship with the parties so to waive sovereign immunity the idea here is that it's a significant matter and that it needs a princip