the morning me appraised the courts when congress enacted a section eighteen in the transitional program for coverage business at the patent review or c p m review it created a statutory say provision unique to that proceeding we petitioned on those fifty four claims we included every claim where we thought there could conceivably be a good faith basis and just an abundance of caution every independent claim so to that point when the district court says in her opinion caliban chose to put in to review a subset of the claims that issue that was certainly not our intent we intended to put every claim that issue but based on our understanding of what would be at issue since we did not where she would see that you know even if all the petition for claims which were granted ultimately fail in front of the patent board this case is still going to come back to her after that with because they're still going to be claims that she's going to have to deal with right i agree your honor i believe that the district court in her analysis on states after one did not assess whether or not  would simplify issues in the litigation or whether it would streamline the trial what she did instead was considering whether or not it could potentially dispose of litigation and in the absence of findings actually considering how the institute it claims with effect what remains to be tried or remains to be considered in the litigation it's our position that that creates a rule that's not supported by either the statute the decisions of other district courts or the policy behind the statute itself so if your view that the district court judge needed to do more and needed to explain what relationship if any there is between the claims that are before the patent board and any other incorrect both in terms of what the other side position is is that we never raised the issue of asymmetry of planes in the briefing and while that's true the briefing was submitted and completed before for sata had ever identif claim in a hearing before the court we raised the fact that we intended to consolidate the claims but more than that we raised the fact that for the remaining claims they were all dependent claims they depended from independent claims that had been challenged and at that point had been instituted for review and that the remaining claim limitation under review refusing the remaining claim limitations be not initially challenged remaining the pendant claims are either identical to or substantially similar to those claims that had already been submitted and so you know we did not know at the time of course that would be the basis for the district court's denial of a stay with respect to the zero two four and three zero four so there was no additional briefing on it but certainly the fact of the argument had been raised before the district court and on that point you know i would room mind the court not that i need to but that under the basis that was instituted for review before the patent trials and appeals for it which is the patentable subject matter of section one hundred one the supreme court both in alice and in mayo before it made it very clear that it's a two part test for assessing  subject matter first you look to the claim and whether or not it's directed to an abstract idea and then you look to whether or not there are additional limitations that provide meaningfully more to tie down the abstract idea to salvage  and in the context of the remaining claims that were not initially challenge the true statement that at least the first part of that analysis will be done for the court by the patent trials an appeals court the patent trials an appeals court will determine whether or not those instituted independent claims are directed to abstract ideas if they are then in order to dispose of the remaining dependent claims in district court the district court need only consider  whether or not the additional limitations do something substantially more to tie down the abstract idea in many places cases those remaining dependent limitations are identical to claims that have already been instituted in the current and in the  first round of c b l proceedings even where there are no identical limitation for the few remaining claims where there are no identical limitations they are substantially similar to the subject matter that's already before the patent trials an appeals court and presumption that because not all plans are challenged or instituted that c b s proceedings cannot streamline the trial or simplify issues in the litigation so as a matter of policy as a matter of statutory interpretation and consistent with other district courts i would say i don't think you need to reach the issue of making the findings because i don't believe the district court did and i think there's enough here to see that the simplification of the independent claims and the simplification  that it would simplify however if that material to the issue of whether or not this court believes the state is appropriate or whether it believes that it's necessary for factor one and i would say yes this court as i mentioned so far factor one because the deform plans are instituted including every independent claim certainly there will be a simplification of issues in the trial court does that mean that all all claims will be a result potentially not but i would just as an initial matter like to correct some of the math in the district court opinion correct math is probably not the clarify the math in the dearest district courts pinioned a district printed on a five forty two remaining dependent claim and her order that she indicates will not be addressed by c p m review as is reflected in the briefing and also in the patents themselves this number really should be twenty eight claims because the twenty eight claims of the o t four patent that she points to are really what hits of the same fourteen claims there are literally identical claims so there are twenty eight claims that were not initially submitted in the c p m petition of those twenty eight claims six planes contain identical limitations to those that have already been instituted and we submit that with respect to even the remaining claims they would be significantly streamlined given the findings that will be made in the conclusions that will be made by the trials in the field for it but even if that were not the case even if that were not the case with our position that with respect to statutory stay factor one there is no requirement that it that it eliminates or potentially dispos m petitions yes your honor we will have an institution decision last month and so if instituted it would certainly be our preference to consolidate proceedings and dispose of all of the issues together our objective is to assuming those plans are instituted in the second petitions to seek expedited treatment since the issues in maine will have already been decided presumably an oral hearing or at least for purposes of issuing a final on this current round of t v m's the judge below is going to have to look at your counter claims one way or another sooner or later well as so i guess two points there first of all them pending review you know candidly it would be my anticipation that that should should the claims be canceled the parties will likely reach a settlement and i think that's also one of the objectives of of stays pending c d n review is that it permits parties to try to resolve their claims and result their issues so i don't think that those claims will be unaffected by what happens with her side of claims but more to the point the fact that we have town or claims those could never be addressed by us in the c b m petition so it's a little bit of it's a little bit like saying the c m petition one address issues of infringement or stoffel or latches by design that that that transitional program is not designed to consider such issues and so congress placed a heavy thumb on granting stay the litigation pending resolution of a c b m review hard purpose underlying it is because once instituted there's a presumption that these are suspect patent as a matter of public policy we're going to allow people to challenge them in the patent office with the patent office determine whether they're valid or report so moving on to the still say factor one but what that's a factor requires i would also note that the conclusion of the district court is inconsistent with other district court decisions that the state cases pending c p m review were not all claims were challenged or even not all patents were challenge so in addition to that we're sort of nurses are on a decision cited in our papers there's also been a decision post this court s decision a virtual agility and intellectual ventures versus p and c which came out on august twelfth twelve twenty fourteen and i can provide a citation if the court wishes but one of the things that that's obviously not binding overlap between the three patent there's an overlap of inventors there's an overlap of subject matter specification and even claims that by allowing litigation to proceed on part without knowing what if any is going to survive on the other side of c review not only do we have the burden of litigation but we are potentially multiplying proceedings because we may need to redo claim construction once we get there or redo expert report if anything survives your view that certainly was not the intent of the statutory virtual agility with respect to stray factor to a final decision for the from the p p p b is expected more than eight months before a trial as opposed to a virtual agility it was in the midst of trial with respect to say factor three the district court made no findings of prejudice and her only finding with respect to tactical advantage advantage was based on an erroneous understanding of the record below and finally with respect to state factor for not only  continuing to litigate issues that are so overlapping increase the burden potentially the multiply proceeding but the time the district court rendered her decision on stay factor for an on the stay in general were sort of still had a motion to amend claims pending and she feels that way that the lower courts are filled a way that in considering that the burden of litigation could potentially multiply proceedings if there were going to be an amendment of claims in the p that would require supplemental claim construction discovery in the light and also with respect it's a factor for in our case the district courts fail to make any findings relevant to the issue of what the burden of litigation what  administration started out talking about how judge robinson vision wasn't consistent or she didn't properly apply the first factor and i think judge robinson's decision was entirely consistent with this court's decision in virtual robinson looked at what had been filed looked at the record and noted that only a subset of the claims of unchallenged noted that there was only a want to one challenge in play one or two one of the three one twelve had been held back by i agree that it would simplify if all of those kinds of cancel it was simple plan matters but it's only one of the factors and if the first factor of whether things are simplified was simply a yes or no question and i don't think we would ever be here arguing these types of cases if that was the end of the inquiry there's always going to be some simplification even if the claims were cancelled then at the very least kaldis would be a stop from arguing the one i want to try to work that's a simplification but i bet that's not the end of the all of the claims were challenge on the sole asserted patent and that's not the case here so i agree ron or if the claims are canceled certainly that would simplify things however judge robinson was aware as a gesture noted that no matter what these are going to come back there they're going to be live  this argument has been waived it was never a before in the briefing it was never raised before this trial they didn't have an opportunity to raise it in the briefing right it was some would say it was your side that was a little bit tactical and compliance with the scheduling order and i mean i don't think there was any suggestion that we should do otherwise that's what we do in every case and so and i agree that the an initial briefing had wrapped up prior to that time period but there were notices of subsequent events filed absolutely if that was an argument they want to make they should have question permission and brief that the only i've i believe ms fishman mentions that there was a there was maybe a sentence mention in a discovery hearing i find it interesting that kallis is criticizing judge robinson for failing to make this comparison of the independent claims under review in the deep into claims not under review when she was never presented with the analysis or argument at all i can't comprehend how that would be some sort of an error on her part additionally these dependent claims are talking about they're not issues they haven't been instituted yet and so i i don't think that they're before this court obviously they can be considered as a general matter but they haven't been instituted no decision has been made even in the briefing that this court all talus really does is they cherry pick three of the dependent claims not under review and compare them to the independent claims and say well the claims they're not initiating and they're going to be lots and they've got counterclaims all this stuff is going to come back to judge robinson and then with respect to my opposing counsel's comments about this court's analysis or just robinson analysis or lack of analysis on alice court i find it interesting you know it seems to me to ask well first of all that type of analysis i don't think has a place in these four factors that it would be affected by the canceling of our claims that may or may not be true unless kallis is willing to agree to dismiss with prejudice immediately if those claims are cancelled which i doubt they'd be willing to do i'm not sure how that is relevant and and  well yes but it's one of the other round of c v s get granted and then what if a year from now all the claims of your patents and not surviving will then the maybe it is quite likely that would withdraw its counterclaims i don't know the answer to that i can't speak for them but if they are instituted we can expect a decision for so that my understanding is that decision to institute will be made on october twenty fourth of this year the hearing on the  presently instituted c v as october twenty ninth week we won't have a decision probably for a year our trial date in this case is october nineteenth two thousand and fifteen so we're not going to have a decision on that until right around or after the trial and again that goes to all these factors the simple to cajun of the issues we're not going to have a decision for another year probably after trial and again still all of the claims at that point would be at issue assuming that they're all instituted but we're still talking about only a one to one challenge one of two one incisions going to be months before the trial date without really considering the current stage of the litigation at the time of when the motion to stay was filed and also the stage of the litigation at the time that the any depositions or expert reports she didn't go into anything that gives us any sense of her assessment of the stage of the litigation at either of those two trigger point plans i just mentioned twenty fact depositions have been taken kaldis alone as you know but we need to go back in time not look at it from today's point in time but back to the time of when this even granted last spring so when the granted in march discovery was underway several discovery least a couple of discovery hearings taking place i think roughly well i guess we had then and i can't recall if we've been in front of a court not yet but discovery was underway documents have been produced written discovery had taken place and additions are done and you depositions no depositions about time your honor and so i you know and but i also think it's relevant to to to consider the state of the proceedings today because when you get into some of these other factors i think this is part of a virtual julie i think was saying that while this may not fit under factor two factors three and four certainly the current stage of proceedings and the resources and time expended to date are important the fact the matter is on a million pages of documents or in produce not including source code twenty depositions have taken place claim construction positions have been exchanged the joint claim construction has been filed experts have been disclosed and have begun work a lot of work there have been several discovery hearings in this case a lot of work has gone into this case and  back with live dependent claims we know we're going to be back with counterclaims let's pick up our pencils and start again is incredibly costly and inefficient and i think it's again it would be different if all of these issues even might be disposed of here but when you consider that it's  activity for eight to nine months to a year and then pick it back up it's costing inefficient that's that's that is not reducing the burden on the parties or the court the court would have to get back up to speed also also i think that what's really important here is on the third  rather than staying the whole case and it was actually crystal clear that calibers was position where they had the entire case until after you know i don't think that's at all what judge robinson was saying i think that is that is misconstruing her order then have to cheat arrive alice wanted to keep going in front of her on the counter claims while stating your entire wait for them so i don't think that's what she says in the order i think that's what calendar says she says another if you look at the order what she says is given the back th of a legit tactical advantage would be true for any and every c b and i don't as well i don't agree with that if you think moving forward on his interest means moving forward on trying to see if the be it but when you take into account the other factors the timing of the of the see the imposition the scope of the if if if what was it play was a larger simplification more of a chance that this was going to dispose of all the issues in the case i think that weighs more heavily in favor of that but as it stands given the scope of the see the implication the subset of the claims the one to one challenge only there counter claims i think clearly factors one three and four weigh heavily in our favor because whatever happens with this sliver of the c p m petition we're going to be back and we're going to be litigating there's no question and experts going to have to pick back up the parties are going to have to pick back up and argue all that stuff if there were more at stake within the c b s petitions and i think they might have a stronger argument but there's not that i think that's sort of the key and i want to make sure i answer your question i think that's the key difference you're right on factor three certainly anytime there's a stay the moving party is going to get to attack the path of the p t b and then pick things back up but in a situation where you've got a limited you've got a subset of plants or challenges under a very limited basis under one hundred one and they're holding back all these prior references i think that you know and that's a virtual and and correct me if i'm wrong but you know my understanding is i mean this court can review this i actually think it should be an abuse of discretion standard but this court to review this abuse of discretion or do no but you can review that not everything so this analysis may not be in her may not be in her order although i think she clearly addresses each and every factor in her order but i think the record before your honor's allows you to make that and to make the right determination which is that a stay in this case is an orchid you know i think in particular if you think about the policy which you know one of the concerns i have is so if this type of a case if this type of a case gets state and you've got in this sort of this subset of claims a one on one challenge only and motion to transfer venue but i don't necessarily agree that that is we should denote those kinds of motions to be kind of nefarious aggressive that occasion tactics i don't i don't disagree i don't think that they are nefarious and i don't have to be clear i don't have a problem with aggressive a geisha tactics but i do think it's some point when you've taken up a certain amount of time and a certain amount of resources and you file a c b s petition late in the game and you do it on a limited scope i don't have a problem with that with litigation but you don't get a stay and i think that's what these factors are meant to are meant to measure and i think to sustain a case like this is to encourage a policy where a defendant can take a narrow subset of cla narrow scope c b s petition to seek a stay and again it's back to that path again it's now they get to attack the patents on a sliver of the case and know if i'm successful great i've harmed them and if i'm not guess what i've got all the stuff i held back that i can assert in clear that motion to dismiss was never going to dispose of this case that was a twelve the six pleading standard motion to dismiss that the case law and that is well established the judge denied it outright and basis of the two of the six are what was the basis  complaint with a fixed pleading the litigation is going to go forward third they filed a declaratory judgment this step was going to proceed so i understand the question about the motion to dismiss but my point is and again i don't have a but in fact that's because it took the judge below quite a bit of time to settle on the life vest through but they didn't have to my point about the motion dismisses they knew this litigation was going to proceed it was not going away because of  available as soon as it was available in september two thousand and twelve and they chose not to they chose to wait ok i see you're well in your time  itself to section one hundred one believing that that could be handled most expeditiously and it was our intent in the time we put in the c b s to request expedited treatment which we did do and in fact the board put us on a more aggressive schedule than the d good tactical advantage or reason for holding back and with respect to the three to six patent which we also challenge on one on one grounds only in the p t a b she instituted a stay one other point i'd like to make which is in terms of the district court analysis the state factor went to be clear the the fact that she did not make findings about the similarity claims or what would happen to the proceedings that were remaining that comes into play because she predicated her decision on the idea that there are these claims or meaning and without findings what happens is that that conclusion boils down to the proposition that unless you are able to challenge or unless you actually get instituted all claims you're not going to streamline or simplify case sufficiently to warrant a state or meaningfully in the words court and that's a very dangerous rule it's not supported by the case law and in fact even if one does challenge our plans there's no guarantee that they're all going to be instituted so it is important in if that's the basis for the decision for the district court to bear it out there may be cases where for some reason it wouldn't simplify it but here given the overlap of issues over positions until there was a ruling on the motion to dismiss we you know i don't know why did it matter just the time when your call it was we had claims again we had every claim that they had asserted ever all of their plans are under motion to on our motion to dismiss that that argument was rejected and and rightly so the patent office was found to control its own jurisdiction and it was permitted to continue to proceed and review on one on one grounds that for