good morning please be seated mr schroeder would like to begin as soon as you can be read my morning walk and thank you roberts wrote of the gallup st john i think the best vantage point from which to view this dispute is perhaps the supreme court's decision the needle general survey of policies of intellectual property you would point out wherein lies clearly erroneous fact findings on likelihood of success or abus discretion and granting the injunctive relief you challenge you actually where did this judge go wrong i think the precise way which this judge went wrong was in placing far too much emphasis on a generalized statement by mr warner the witness for plant that there were multiple whole designs they all without saying what those felt design without yet now is it is it a question of what weight the judges the fact finder should have given to that testimony or is it a question of whether the judge used the wrong legal standard i think primarily the judge used the only stand exactly what standard do you understand him to have used and what's your basis i believe it's page twenty two to me reading the whole decision if you want to find the point that it comes down to it's precisely there and so is it your position that the possibility of alternative designs is not an appropriate consideration to determine whether it's primarily functional or mental well is held in the very sterling says it is one factor to be considered among others editor of the list in the event how is that a wrong legal standard you're saying he considered one factor that we all agree is is one of the appropriate factors how is that fair well i think your honor that you can you can conclude from the opinion that much too much emphasis was placed on it or even that it was  where wait a minute you say he regarded as conclusive on page twelve which i think is the page you said to me yes he simply says it's more likely that's the opposite of conclusive second paragraph second line up from the bottom of the paragraph citing to abiah group internationally says if there are several ways to achieve the function of the article of manufacture comma the design is more likely to serve  primarily ornamental purposes more likely is not the same as but you don't think you are i think your problem consul is i think the language you were searching for is really appears at the bottom of page thirteen but you didn't make it in front of the district court and the very good argument is the arrangement of these labels is functional and it has to be done this way if you want to sell labels to use with the software right and you didn't make that argument down the law that's why that's why the arrangement these labels is functional because if they're arranged in a different way you can go to the hospital if your client can go to the hospitals and sell these forms because they won't work with the software unless they're arranged this way well that's certainly a true statement and it's also true that you didn't raise that make that argument but walt right yes you are it's true that we didn't make that argument in those specific terms and the reason is that the preliminary injunction here until before discovery began and we really didn't have that evidence of the time to show the link between software and the printing only particularly sheets so your honor is quite correct that that specific area was not ah to show clear and convincing evidence as would normally be the case but merely to raise a valid to show to have an argument that has substantial merit to it but the judge said that it was on a metal and the basis for that as i read the judge is that it is because because there are other ways to arrange the different level of labor there are other ways to arrange the differently that's right you could have the wide ones on the top rather than on the bottom arrange it and the judge and you say you agree with the judge's conclusion with respect to the label change so is your view that that's the wrong legal test to apply to conclude that that in and up itself was sufficient multitude versus so many or several i mean do you think that was the basis for the judge's conclusion i think i think that was the factor i think that were true that there were a hundred ways to make this design th functionally equivalent it would be a very different case ah but given the fact that there are only a couple of ways and even as to that there was undisputed evidence that there was there were functional there's multitude that's the legal test if it's multitude of ways to arrange it then it's ornamental but if they're only two or three then it's not is that what the legal test is here you know the proper legal itself but i also think that in very clearly indicates that this is a factor to be weighed along group other it seems to me that the wage should be given to that factor would be greater if there were only a couple of alternatives available whereas if there were a multitude then that factor would have more weight i do think that makes sense so what do we released i think i understand your position a little more clearly so you're saying it's given some way even less weight but it might because it's got so versus a multitude of yours and then your view is that even though it's given some weight there was what there were so much evidence on the other side on functionality that you should when there's a substantial question of the liberty there is a substantial question the validity regardless of that answer is that if you look at the original utility application from which this design and ultimately sprung you can go through that application and see that every particular facet of order to show we we said functionality is a stringent test and you have to show that there's no other way of doing it that can achieve the function and you haven't shown that here you may be able to on the wee man because this is the only way to use it with the software but that's not before a human mood you didn't raise that this record doesn't show there is no other way to arrange the labels and still perform the function well first of are i would say the record does show because that's  the mission by ph d in the before the patent office in the prosecution of the current application secondly i don't think that that is the proper standard although perhaps the rosco decision can be read that way before the judge in the preliminary hearing record yes what's the evidence was before the judge it's in the record here and it seems to me that this proceeding not some later procedure yes this proceeding which we refer is not has nothing to do with printers or symptom systems it is a it is directed to exactly the same article that is the subject of the design that there is no difference whatsoever what claims both we have lots of cases about where a particular feature is both functional and ornament well i don't think that's precisely accurate your honor we have cases in which the same art has functional features and ornamental features and they are or is appropriate for both types of happens but we don't have a case is it which the court has held the very same feature can itself was the subject of the utility application that just foolish not the system in which it's used and they claim the precise dimensions and location of every label on that right and are you to rule in your way because of the app and utility application they file no you are let me say that very precisely what i'm saying here is that when the patentee has previously taken the position and effort to get  injunction should not issue it may be that the evidence in the prosecution history functionality can later be overcome the trial if the witness wants to take the stand and say what we told patent office was an preliminary injunction yes namely the question of whether or not there are a couple harmony or something but a presumption irreparable harm or so forth i don't in my case a tell me if you disagree you haven't really raised that you have procedure that your appeal seems to be focused on solely the validity of frenchmen questions and even though there are some subsequent discussion about the irreparable harm standard it doesn't seem to me that you would have raised that is an issue on appeal in terms of on page seventeen in the appendix my impression is that the district court may have understood misunderstood the patent office rules in this respect that the black lines are part of the design and the the patent office rule appears to say that they should be can must be considered to be part of the design and that only thought of the law in terms of the saw so what's your response to if you look at page seventeen he says the comparison i made is between the design pattern with how the black lines in the infringing product and that strikes me is perhaps the wrong comparison the eat the part of the where it's read reads consequently the court terms it is you have property compare st john's product to ph g s product with black lines drawn on it to resemble a drawing of ph d s for a five design that would be black lines drawn into the product itself represent contours and not black lines on the sheet that's correct your honor it is dye cuts that are shown by looking at the product itself you can easily see where where is the line which in the panels will it's represented on a sixteen he's sixteen a sixteen yes your honor which is part of the district court's decision appropriate an adequate surface shading should be used to show the character or contour of the surface if we first refer to the design patterns themselves the design patterns themselves require that the elements that are claimed to be shown in solid black lines your honor there's no other way to show a distinguishing barrier between labels on a sheet other than with black lines that does not necessarily require a foreigner for enjoyment to be found that the product that is alleged to it french has solid black lines you know how is one supposed to if you want to show black lines and the design pattern between the labels was opposed to shown in an indentation or depression how would you do that you could make a notation on the design pattern itself but that's what you're claiming your patents that have been issued to other parties in which a solid black line shows the demarcation between labels on a sheet and the district court includes a reference to several of those showing that is the standard let me with some trepidation let me turn to the questions we were raised with the council the proper seat i mean i read the district court's opinion in the language that we've talked about before is that he said they're primarily ornamental because there are other ways to bring different size is it your view that as a matter of law if there were two way another way if something is arranged in one way and there your honor it's within the court's discretion if based on the facts the court finds that one other alternative way is sufficient then yes your honor the court doesn't have to look at the other factors were cited and very startling in fact and very sterling the court specifically sa consideration of alternative designs if present is a useful tool that may allow the court to conclude that a challenge design is not invalid for functionality so i'm asking you if this is the only thing that's the only thing if there are no that the design must be viewed as valid no your honor i don't think there's a per se rule that should that should come out of it so it's great just opens the door but it doesn't settle the result yes your honor it's not  design then that one fact there is no functionality invalid function there is no invalid any on the basis of functionality i'm saying that the court can't view all of the facts that may be establishes what let me clear let me make sure i'm clear on what you're asking are you asking a hypothetical or are you saying that the court found there was only one alternative way to arrange these labels appreciate well he says the court says of our other like but for purposes of my question i'm saying let's assume it's one other way ok is that sufficient and we supposed to affirm that that's sufficient he found the court of the district court find one other way to arrange it therefore on that basis and that basis alone i conclude that it's primarily ornamental and i just absolute affirm under that hypothetical yes your honor because there's not going to showing a clear error but in the actual case itself the about the ascetics of the arrangement of the three different sized labels on a standard even a half by a live and sheet of backing paper your honor i don't recall that there was proof of customers particularly being arrested in the appearance but the testimony was that the end then nursed chose this because they liked it they they selected this particular arrangement because they liked the flow they liked the may who buy the object and if the designer liked one arrangement of the possible to do but the customers couldn't care less which of due to arrangements is offered for r standard of artistry it's not that standard but i'm not suggesting that i'm suggesting it has to matter to those who buy the product if they couldn't care less then it doesn't qualify as protect honor there was no proof down below from the defendant who had the burden of proving that to show that it was a question of whether our consumer purchases the product or doesn't purchase the product based on appearance alone well that may be but my question to use whether you put in in any evidence that customers hear that hospital form buyers will buy one arrangement in preference over another because it's more pleasing no your hon  the bottom of the sheet or at the top of that she obviously if the clerk is going to prepare a label for a file that the clerk types in the characters that will go on the file one and if the clerk is preparing a risk being labelled the clerk will type in my name on the wristband size form and it would seem to make no difference whether the wristband size form is on row one of eleven rows or ro limited to being used for patient identification this is drawing in limitations from the utility application the design patterns here are very specifically state the title which is the only limitation medical label sheet for the four zero five and the one nine seven is entitle label pattern for a medical label sheet under this course court's precedent your honor it is improper to read in limitations for from from the physical embodiment in the market place your honor goodyear tire arsons hercules tire the courts said what's the implication of what you're saying what i'm saying your honor is that the court is reading and and the defendant is reading in the limitation that what court pro or no no i'm sorry from the hypothetical that was just was just raised that there is no indication on the design patents that any label is for  or is for a chart label it's just a layout and arrangement of differently size labels on a sheet it's improper to read in these limitations they're not there the designer hats themselves i don't think i was reviewing any limitation so i don't follow what you're saying the defendant has argued down below your honor at the at the district court level and has brought it to this court that it is important that you can or that they should they believe that the pass themselves should be construed not only to include limitations from manufacturing specifications which is improper and to bear startling but also to include limitations from the utility application that are not shown we didn't warn you good bye by saying that the utility application necessarily includes every limitation of design they have your honor because that ignores the fact that the claims in the utility application specifically include additional features or might want to let me go back to the point that the chief raised earlier about who's the customer and whether or not mentality is judged by the fact that the designers happen to like it better and have nothing to do with it is it your view and i you know i've not thought of it is that everything has to fall into one of two categories either it's primarily functional or it's primarily ornamental and that's the those are the only choices boxes and we've got a few there which box is the appropriate to your own or no i don't think that that there are only two boxes which is primarily functional and primarily ornamental because the standard for patentability is not non obvious ss and ornament tallit so that necessarily leaves open if it's not going to mental in some and in some instance then it may not be patentable under the design pad statute but your honor the case law shows that if it is not if there are if it is not primarily functional then it is likely to be patentable and your honor the patent office examined not one but two applications and passed them both finding that they satisfied the requirements for patentability including the ornament tally there was no office action issue that even question that the prosecution history is devoid of i'd like to read just one or the very sterling decision in this list to list current alternative designs joining a list of other appropriate considerations for assessing design as a whole its overall appearance was dictated by functional considerations other appropriate considerations might prove those on the list i don't think the district  the test again it is one of these factors i believe that needs to be considered along with are there other designs is there are there very many other designs it's a factor there is no one dispositive if you offer any evidence th concern the hospital town with the efficiency of these labels and explain what their concerns were he said to his sixty salesman on the road that he travels with them constantly and has done so for many years and he has never even in its use first and that's why it's in that form and mr press explained that the witness stand and nothing was introduced to rebut that i just have a moment i'd like to comment with respect to the issue of intrenchment for us here while we did your honor in the form of the testimony of mr press and the prosecution history of the earlier time the prosecution history let me put aside the prosecutor's history yes there's no testimony there's a testimony that one aspect of this arrangement or maybe two aspects of this arrangement are important functionality but there is no testimony that the whole arrangement of this thing on the sheet of labels is dictated by function i don't recall your on that ever anybody ever said that in so many words what the what mr president was dick was it was discussed the various aspects of the thing individual would say these labels are  upper labels chart labels of the size they are and this is the reason certain amount of information goes up so that was discussed but certainly the the prosecution history we can say that we're looking at this from the point of view of appearance for design and therefore the first to say that these lines indicate where one label ends and another  speaking in function we should be speaking in terms of appearance now design patterns have almost no scope of sports and on several occasions that being the case  and i think that in the absence of any indications of the hundred such as statement in the ob apt in the patent itself that these lines represent cut blocks between the