improperly abdicated jurisdiction over a case for infringement of a u s patent for my research this is happened only once before the northern district of illinois in halo creative and design has come to r d a days and days and this court reversed that decision in the present case the district court abused its discretion in three respects st the district court abused its discretion by failing to hold defendants to their burden tyler's allegations of infringement defendants had the burden of affirmatively proving that the canadian courts are an adequate form in piper aircraft the supreme court has stated that an alternative forum is how to quit unless under indiana law or what is the theory of infringement in indiana as i take it these shutoff valves were manufactured in canada and then import of the united states and you're claiming that the installation of the shutoff valve in the machine constitutes part of the manufacture is that it that's not exactly correct your honor in the present case were asserting infringement of claims for  patent and those claims were cite shutoff valves that have a specific feature not found in any other claim namely a latch remotely mounted away from the housing bust the manufacture of the invention you so why can't you obtain adequate remuneration for this suit does the hole in canada given that you can breathe during a breach of contract cause of action against the patent for allowing its subsidiary and so the breach of contract would be the exact same measure of damages as the infringement damages because that's the harm that you suffered directly as a result of the breach that action could be fully commenced compensable under canadian breach of contract law so why isn't the district court correct that you have adequate relief in canada fees to be the breach of contract clause of action against the patentee for allowing its subsidiary to cause this infringement  i wouldn't agree with that with that conclusion because the breach of contract playing st of all could only be brought against the patent d j kick it be holding and that does nothing to address the infringement committed manufacture they allowed someone else to manufacture so your measure of damages your only measure of damage is in fact is the damage you suffered by virtue of them permit ing the infringement to occur that measure of damages would be identical dollar for dollar to what you would otherwise get for infringement you wouldn't be permitted double recovery if you were made whole through the infringement claim against and  united states your then breach of contract action in canada would have no damages because you would no longer have been damaged because you would have been made whole by the infringement cause of action likewise if you're made whole through the breach of contract you're not entitled to double recovery for infringement you can't get both you can only get one that will make you whole so why isn't a breach of contract under those circumstances in canada sufficient and i'll tell you this argument was clearly raise not none of that is in the space and scream but that but that opinion that because the grant of an exclusive license to make use or sell the patent intervention carries with it the right to prevent others from practicing the invention now what that's what i'm saying is that's very different from getting damages so even if you had the right to prevent others from practicing the invention invention under that's a license agreement which i think is questionable but even if you had that right what right would you how would you have a right to seek damages well that's a different issue in terms of proving the quantum of damages but the fact that i'm not talking about the quantum i'm not talking about the manufacture these shutoff valves carries with it the right to enforce that and that right may may require the the the the the jointer of the patentee but in this case the patentee is joined as a party choose cited in the complaint to support the notion that manufacturing took place in the united states join that and to the extent that they would deny that that would be a factual dispute counsel an allegation that on its face is inconsistent with your other allegation says it doesn't have to be accepted by the court in your license agreement only says you have the me will you not that there were no claims at the time there were no claims at all at the time you were granted the right to manufacture shutoff valves well right but but the answer is yes good morning my name is bill gantz and i represent the defendants and athletes in this matter on the subject of the forum on convenience motion i think quite clearly that the court has focused its questions on the discretion of the district court and there's been very little argument here that any of the findings of fact or the conclusions made by the district court judge were clearly erroneous in the lower court only three arguments were even raised  you know i don't believe anyone has sided or made any arguments but it's a little astonishing that you didn't cite it since it seems to be the most relevant case that we have well i'm not you're familiar with mr slavitt under our rules are obligated if you're going to mention a case that's not cited in the briefs and all you want to provide a copy to mr gates in advance and you didn't apparently do that that's not compliant with our rules so in terms of the observation of the court regarding the allegation that paragraph forty one it bears mentioning that this was an amended complaint and it was supposed to fix the problems which we raced on our st motion dismiss and in particular they came back and there are many complaints and said that the infringement occurred because there were these installation of shut off having remote latches well the important one of the  remote latches in the united states and that's the critical problem that the plaintiff here never contradicted this affidavit and the district court was entitled to rely upon this as particularly  paragraph eighteen is where we addressed the specific allegation regarding the remote shutoff valves and that was never contradicted another important thing is just as a matter of common sense installation of a part has never been determined to be manufacturing which is the only right that the plaintiff ever could have conceivably claim that the manufacturing rights for the district court was properly focused on whether or not there had been any installation in the district of indiana and council in paragraph eighteen after question never manufacturer sold them then said well we can create one or two demonstration canada i mean there was never any sale to a customer even in canada but if there is infringement in canada that has no bearing on whether there are standing or a right to sue in the united states  manufacture shutoff valves with remote latches anywhere i don't know that that clear your honor because as it's been pointed out this nine hundred and ninety nine agreement which actually is not between granted if any to the p r c does not confer or statutory standing because they're not a patentee they're not an ass and they and they're not an exclusive live action tory standing isn't a jurisdiction applied to this case would read indicate that the lack of statutory standing is not an article three jurisdictional rights issue correct so right we we have to address constitutional standing because that is in fact jurisdictional the article three type we don't have a choice but if we right if they surpass the constitutional standing hurdle of just injury in fact then we move on to the farm not inconvenience argument and decide whether or not the district court erred there is is that pro turner and the mentor case that wasn't your question the supplemental question but all parties ended up briefing the subject of statutory standing but in terms of what type of license and responding to your question your was was an exclusive life and see this case as more like textile productions versus maiden which you have an exclusive supplier with the bare license they would not have standing to sue on that type of li no right to sue there's no right to life and there's not even a right to enforce but if you do want to imply that this party at best have the right to enforce the patent that implies a right only to seek an injunction certainly it spiral on this path expired counsel i see a significant problem with your argument you say the only thing they got was the right to manufacture that's not true they got the loose right to manufacture and that's a really big difference because what the patent owner or in this case inventors are promising for their future patent is that no one else will be allowed to manufacture it only you well the the the exclusive right to manufacture even if that is granted by this agreement is still not sufficient right to do anything other than seek an injunction that if they didn't have that bond that one  well i'm responding to the hypothetical but there's not a case that cited that in the case that a party such as this with one particular right and that is only the right to make can actually bring any type of lawsuit says if you have the right to exclude the defendant you have the right to sue well but the license key in the y up case your honor had all of the right it had the right to make use and sell an sue which makes it a lot like a lot of the other cases which found that the parties were actual exclusive life and c and then the issue was whether or not they had to join the patent but we would submit there is not a case that  them the right to exclude them from making something well your honor the understanding here is that they have an exclusive right to make as stated in this agreement and that doesn't rise to the level to give them any type of right under the patent act to actually seek damages for patent infringement and in fact the right that the right to sue is separate from the exclusion rights is also kind of demonstrated by the the moral case and the pro pack case and the lack of any expressed right to do anything with this right we would from that would bar them from seeking any type of relief  allowed to bring suit in its name a loan when you don't transfer the right to sue but are otherwise an exclusive licensee you have to just join the patent p to ensure there are multiple potential suits so isn't that the only difference that that under our case law that transferring the right to results in no your honor and that's because that does it depends on whether or not the plaintiff  case they sued the patentee in morrow but but the inclusion of them as that the inclusion of them as a party in the case didn't give the plaintiff in that case standing statutory standing to sue because the right to sue was divorced from the right to make use and sell and here we also have that same thing happen in the pro pack case a plaintiff with the right to a license and the  when when the bid is installed for operation constitutes manufacture on the site so that point that the defendants made was not correct tyler is not a bear licensee as the court  chosen form would have to establish oppressiveness and vexation to a defendant out of all proportion to the point of convenience and those words are found nowhere in the district court's opinion on the district court makes passing refer