health care james and yvonne far i would like to reserve three minutes please so this is a trademark dispute our client merit healthcare claims it has trademark rights to the market merit for pharmaceutical and medical devices based on common law use coming stemming back from use from the one nine hundred seventy s the opposing side medical has trademark registrations that issued after that date also covering medical devices and so that the issue before this court is whether or not there was a case or controversy that would have permitted merit health care to file i dead declared terminally faction for non infringement obviously you have some conflicting interests with respect to the patent office as to you know the pending applications that were rejected by the patent office the trademark office but that's not necessarily dispute between health care and medical where and they were being blocked based on the existing registration so the so now you have two entities who have are claiming similar rights to use merit and so we contacted merit health care contact in merit medical to attempt to resolve the isn't a problem there isn't a conflict and as i understand it marriage medical is not taking a position to the contrary well that's the problem or medical is taking a position to the contrary and so it respect so we originally contacted them and attempted to work out a coexistence agreement and that went nowhere and there were there were comments made to the effect that there's not going to be a coexistence agreement and then at that point they  attempting to gather evidence that one would see one would think would be the type of evidence you would look for to prove likelihood of confusion and or priority and so they're just doing background research on i don't know that that necessarily suggests that there's you know an actual controversy of some immediacy that might warrant or justify supporting jurisdiction in this case they did not obligated to enter into an agreement are they they are not that's correct they're not obligated and that obligated to do research to determine whether there is a necessity to enter into such agreement correct us if there was  any obligation on their part to do research to determine whether there is some reason to enter into such agreement i would say it's an obligation on their side one way or the other i mean that would be up to them how they want to deal with the issue but  that's not those aren't the only facts that are before the courts a book before the court is an issue as of as of the final end of the thirty minute complaint what were the facts and what were the allegations that would support a claim for case a con and as of my understanding is the law that that it's as filing of their original i'm what basis can we do that that would be on the north star case in that case for example there was a question of whether or not there was standing at the original point because there wasn't an assignment that was granted so i think when their original complaint was filed the plaintiff had and executed the assignment that was necessary to have standing that assignment was executed after the complaint was filed but the court northstar said well we'll consider that and walk we'll consider that as a supplemental complaint and so there is standing now and we're not go put a form over i mean we're not going to force you to file a new complaint well except that is a supplemental pleading i think your reading of northstar is right but it you would concede wouldn't you that it's a little bit odd that you could use things that happened during the course of litigation itself to generate the controversy between the parties right because it seems to me your without the statement of the rule twenty six have conference that i guess the other side saying that they will be suing you i think this is an eas think that's the only piece of evidence if you want to call it that that gives me pause at all but you all generated that in the course of litigating you know this lawsuit just seems a little bit odd even under nor start to allow you to take advantage of that to basically create the controversy that's now going to provide jurisdiction i guess a court has to consider the context of a trademark not the courage to relieve trademark infringement action where the plaintiff believes it has prior rights and there's not infringement but the other side won't agree to that it's a much larger company and it's basically holding this implicit threat of litigation over the smaller company which is preventing them from fully using what they what they believe their full rights are to use merit and there's always the shadow of this big company that has not agreed that they don't infringe there are a lot larger there are more ten million dollar company and they're standing out there and they've done a number of things that suggest that they may be building a case for an infringement case and again in the context of a deck relief action for not infringement these all the facts have to be viewed from the plane as viewed from the plane as perspective and so to the extent there is a reasonable basis for them to believe they would be building a case of infringement but then i'm just saying i'm just telling you my view at the outset of the case when you first filed the complaint i don't think this is even close that there was no jurisdiction that because you did not have a reasonable apprehension of suit at that point as things progressed you know through the different iterations of the complaint and the things that happened in the league ation maybe the case got a little bit stronger but do you see what i'm saying it just seems odd to me that you could file a case for which there really is no jurisdiction of the outside by but by going through the different litigation steps you can kind of generate a controversy or evidence of a controversy between you and the adversary i just i understand what you're on are saying that's just a question of timing it's that the honey the defendant in a position contest what you're saying and then if you start using that that those factual just fused demonstrated that really is a controversy you're basically making a controversy out of and i'm controversy now not just as a matter of timing but as a function of the progress of the litigation of the fact of the little so is that an open ended possibility or are there limits on it well the problem is in the factual situation here intil trademark priorit term and no defend it was a junior use of a trademark is going to probably could affirmatively say anything about i'm going to sue you or i think there's a likelihood of confusion because you don't know who has priority right if it turns out based on the facts of the case a year and a half to get some sort of coexistence agreement and all we got back was more not interested in that and you know let's find out all the evidence we would have to potentially build an infringement case that story and that one is interested in two we knew enough to know what  maybe they're looking at it to enter an agreement needed to looking at it to build a case of infringement you know the ninth circuit law is that even if you have circumspect language in a letter that would be a sufficient basis for a plaintiff under that circumstance to believe that the other side was northstar said was that if there is a supplemental complaint that contains new factual allegations then those that were in the original complaint in the occurred between the finding of the original complaint and the supplemental complaint those could be considered in that case in the case of standing there is a fundamental problem with the playing northstar here and that is that the allegations of case or controversy in the original complaint the first amended complaint the second amended complaint and the third amended complaint are identical there is not one word of all this these things that they're alleging now in any of those complaints so northstar is just not a political here at all ye the one thing at what there is i think in the complaint and certainly said anyway that at one point i think was the president of your client the line of discussion if you were having with mr bleecker there's a case called international video versus ampex in that case it was also declaratory judgment claim and the defendant in that case said look we don't think there's a case for controversy we really don't think there is but they found a motion to dismiss and toby won and the court denied it and so they then actually filed a counterclaim and they said look we don't think there is but that you said we will see for infringement well and i think that was a hypothetical if you do x and he says that they did to x x being using i think using the name marriage without a i asked the question correctly the first time actually but go ahead and forgive me if i misunderstood you or what mr lamb propolis said was that if you used the same article on the same goods to the same customers there would be a likelihood of said and you say it wasn't said the timing of it was as a result of your honor i'm sorry the timing of that is important the timing is important because even under their view of the facts that happened about a year or so well a long time after the case was filed and then to the wilderness society the case or controversy has to exist at the time finally you can't put the cart before the horse and say you know i'm going to gin up this lawsuit this controversy after the thing is already file is just north star the facts support this at the use of something that happened afterwards let's assume that for a moment all right what i want to know is if there is a factual controversy at this stage of the proceedings i  which we asked the judge to rule i think what the judge did was essentially resolve the the factual dispute can you do that should he do that the answer is i believe he did and yes he can under the i plaintiffs submitted several we submitted several there were declarations all over the place and i asked this you've said a moment ago in response to a question from judge press on that even if you had made the statement that's attributed to you that that still would not give rise on their part to a reasonable apprehension of suit and i guess i didn't i didn't quite understand how that would be the case because just looking at mr is it mr daley who gave the declaration it is it's it's not phrased in terms of your statement you know what he's trying to use not phrase in terms of bringing a compulsory counterclaim for say right it's for a more in terms of that you want your client will bring a suit for trademark infringement it just seems like if it's an explicit threat of that nature isn't enough to give them an apprehension of suit i don't know what would so i'm a little bit confused as your position on that well your honor mr daley did say that i can see that he said it i  don't agree that it's true but he did say that i think in he mentioned that in connection with the twenty six f conference the twenty six f conference is what gave rise to the attorney's planning meeting where we said we may file it we don't know yet we're working on it we're trying to figure it out the the interesting thing about all those well let's take his statement as true for just a moment for purposes of argument during the course of this litigation we deposed the president of this company and we asked him in very simple terms mr farha did marriage pharmaceutical ever believe that marriage medical was going to sue him for trademark infringement and he said no twice in a row there this is ginning up a controversy to satisfy it after the fact i know but and the judge resolved that well no not the judge did not resolve who was telling the truth on that you issue that exactly what i'm saying if if we were forced to  you know come to ground on this particular factual dispute because if we believed you know their version then there would be jurisdiction but if we believe your old version then there wouldn't it seems to me that a right from a procedural standpoint the right thing to do would be to of back to the district court and have the district court make an explicit explicit factual funny on that point right your honor if that were in a complaint anywhere maybe it's not i mean the the even under bust and a complaint well they say that the north star they argue that the north star cases you can argue stuff that happened after the finding of the original complaint northstar said that's true if you have a supplemental complaint that has new fact parties it was a surprise to me that one has to have anything as in terms of the pain likely lawsuit as what you're suggesting and i can think of many instances and i thought that the embedded media case kind of says you don't  credibly i want to continue to sell this stuff i maybe they haven't made the right allegations but if i suppose they said you know i want to use this this their trademark without the logo and i and making some products that are similar to their products and eyeing and there is at least a credible non frivolous case that i'm infringing and i don't want to be liable for his illions of dollars i'd like to know whether i thank you mater the rule for met immunity is that you have to have a definite and concrete controversy not that you have to have an actual threat just you know that's evidence that's can be evidence of but you don't actually have to threaten no that was the standard and the federal this entire case was argued on the basis of whether there was or was not a reasonable apprehension i think there were allegations that we threatened that we argue that you are based on a real that met immune suggested a lessening of the burden i agree your honor but the district court seemed to take that into account in its ruling under all the circumstances i think with his words you your honor i think it's important to realize the context that this is the case or controversy issue was first raised at the beginning of the case they took the position subject matter jurisdiction was proper that's in the rule twenty six f report it was only after filing the second minute complaint that they raised this issue we are also deciding whether or not there was a fraud claim and so we asked the court to file thirty minute complaint to address the fraud issue the court permitted that and them their original motion to dismiss base alaka case a controversy was denied is moot so the time that this was actually addressed by the court was with respect to the thirty minute complaint and so we both relied on allegations and that complaint and we provided affidavits and under the roads case if there's not evidence you're hearing the court may consider one motion so just because the court considered other facts not in the complaint doesn't mean that there was necessarily a factual fight i'd also like to point out that with respect to mr lamb problems is testimony during that during the course of the case he did that in his opinion if the word merit alone was on a product and that product was offered for sale or sold to one of his customers he would consider that to be a big deal and from our client's perspective that's exactly what they were doing they were using just merit place perspective is there a joint company who of tons of customers we don't know who their customers are from time to time and so that the risk was that at some point in time our client would then knowing this risk existed you know unknowingly sell one of their products to one of their clients and at that point then they go to utah and file their lawsuit and then we'd be stuck and so that risk was out there at the same time throughout all of this various times at your home well your side and you're stuck with your potential liability but it's also that that's hanging over you the whole time you're doing business because remember if the whole time they're not agreeing that we have priority they're not a agreement they're denying that they're denying all those things so there's this threat hanging over the business throughout this and so i guess the other point i would make is to the extent there was a conversation made during their rule twenty six  conference lots of time settlement is discussed lots of issues are discussed in rule twenty six f conference the rose case finds that statements made during a settlement conference of threat threatening infringement it's proper to consider that determining whether there's a case of controversy so you know watford's point to the extent you know it may seem odd that you file a complaint and then there's additional facts as a result of the complaint where there is one circle law that supports that if there are threats made in the course of litigation or the threat of litigation that it is proper to consider that from the because you're looking at the