this appeal in what's really north by the defendants and their briefs and the poor bloke is the difference between the accused products as to the different sets of defendants in this case it's what the distinction the district court miss and that's the distinction york and then you will go back to this federal court once that as a result but we're not in court as to this claim eighteen into the infringing products that infringe that claim the binary reproductions were out and you look at the the case of the discuss what indefinite stay is isn't it it's a confusing term i think because what indefinite really applies to is the length of time of the st so all these cases that surrender surrender the case to another body you say well how long is the state going to lots of and in this case we don't know it could be six months it could be seven to eight years but it putting aside the issue of whether the state should have been entered i still don't understand how that creates it's an appealable issue right well so let's basically this isn't even a first to file circumstance so is it well i mean i didn't start out that way but it's in it up that way because well yeah but the first to file doctrine is very specific and has to do with through different races to two different courthouses think the issue of the comedy between that judicial officers overseeing those cases and the sovereigns overseeing those cases here you don't have that you do have a judge who in one case decided to split off an action and send it to where it should have been properly venue but this is not a first to file circumstances it well first of all then it was a problem in chicago they knew there was never a proper challenge when it was a convenience that moved kodak to new york but once i mean once the case was severed against cota and placed in new york and you have a case in chicago you're exactly in the customer suit doctor situation and the underlying policy concerns about first file don't exist but the underlying policy concerns about first file may not exist but what's driving the policy concerns behind why you're trying to figure out which case should obtain priority is what really because you are staying one of the proceedings pending the outcome of another proceeding and the case law on down the line is very clear that saying one case pending the outcome another is indefinite the state richard is and doesn't is a case court the district court split them and was asked to basically determine which case should be given priority if either and the remaining defendants who were prince for western district of new york were two percent of sales in other words not major factors well and that gets to the point and that gets the point that the district court missed yes it is two percent of kodak's products still caught but there's there's also a net another product that the printer defendants make on their own which is a binary reproduction that is an infringement claim eighteen of the pet does not depend on any type of mass which staccato is a scream mask it's as is kind of a red hair because that's not what we're that's not the only claim you have against the customers you also have all the same claims that you assert against conic right absolutely we're just saying i happen you happen to have one extra claim against there is there is certainly overlap from claims one to seventy and that would be primarily the printer defendants use of staccato i mean they've used other masks also i mean even if i accept your proposition that that kind of cats should be apply in these circumstances despite that that the different procedural posture even cat said you don't have to have one case doesn't have to completely result the other as long as they don't materially affect it there's a district were case teleconference out of delaware they characterize that test as outcome determinative and that's really that makes sense because if you stay a case against wrong with that well i mean a state in especially this indefinite state i mean this they can last and kodak's actually move to stay the new york case now so it could be even longer this could be a seven year stay at that time the trial prints actual prints to analyze and see where the dots are under claiming team will these aren't something that they maintain or keep in order business they could shift products in the  an abuse of discretion standard and i think it is and in this case it is an abuse of discretion because i think going back again in its use you worry that you'll lose evidence but the parties have an ongoing obligation to preserve evidence don't they they should they've never as far as i know not agreed to maintain copies of every print question of whether they agree it's a question of their obligation  specific witnesses that you can identify who are potential potential to be lost well it would be employees of the specific  be available correct monetary damages will still be available i mean i don't think we can deny that at all let's hear from mr feldman and we'll come back to you then  new york action this well no your honor we moved to transfer that as your colleague correctly adverted to this is not a race to the courthouse case we did not fall into under the declaratory judgment act and have to manipulate the new law there is to jurisdiction three menu items have been offered by s three for jurisdiction this court has held in pos texas tivo that it must address jurisdiction as a matter of first instance and in both the pa sec a sin in the nice versus truck case there were pending counterclaims this court said that there was no final jurisdiction under twelve ninety five a one there's no jurisdiction there the first basis offered by s three moreover as the pasta court noted that there had been no application for certification of this interlocutory order mr feldman in cats and con we have one case where it seems to require the customers to consent to be bound by the results of the other case and another one where they there's no such requirement is that relevant here no your honor is not you have to resolve that you think to do rule in this case no your honor we codec has already taken responsibility for any infringement that may have occurred out of use to colorado in the new york action the the con case which relies upon apart from the fact that footnote three makes it clear that the federal circuit that time is relying upon second circuit law whereas now a lot relies upon its own authority to determine jurisdiction the contacts says as to the third basis for jurisdiction as claimed by us three section twelve ninety two a one that is denial or grant therefore not appealable under section twelve one two one and that's con versus general motors it eight nine of second ten seventy eight ten eighty so the lead authority for s three dispatches the third and final basis for jurisdiction claim for the feel aren't cold case says that a stay becomes actionable if it's going to be for a protracted and indefinite period of time why isn't the likely five year delay in this case a protracted period while your honor as to how much time remaining for the western district new york that that may be speculation but the key point if circuit is said three years is protracted the ninth circuit this is six years is protracted yes or we're looking at something in the neighborhood of the ninth circuit and something far beyond what the found protracted well this this this court in gould versus loser control said that under twenty eight u s c section twelve ninety five quote stay were should not work nearly be viewed as final and thus within the jurisdiction of an appellate court and you have answered my question it's going to take five years for to get to trial in the western district of new york that's kind of a standard estimate why isn't that a addressing the question of whether it's a protracted period a circuit we just went through this three years is protracted we're looking at least five years here why isn't that protracted your honor the core had to balance that possibility of a five year delay along with you dition economy you would have multiple mark in your ensued have customer defendants are no basis to defend all but one of the  claims because they have no access to the software in managing its own docket and having its inherent authority the trial court had to take into account and made findings of fact they know nothing about the software they don't have access to software  the complaint from paragraph forty eight fifty one says you have joint infringement here that the customers are liable as for direct infringement for using the staccato software to print newspapers to print out to make you the opening brief the s three says on pages three four and thirteen that the customer defendants are infringing by use of the starts to kind of software they're creating these separate prints if s three prevails on validity and frenchmen in new york are you saying that she'll concede that moment when you go back to the printer defend us well your honor i'm not it's not clear what shadow of a claim eighteen that would be your honor kodak you said it would be responsible and that includes claim eighteen which is pleaded against kodak and the customer defendants contrary to position the complaint where  the judicial economy here that you are arguing to us so passionately a moment ago if you're going to read that it gave validity and in french meant the second time when it goes back you're not going to take responsibility as you said medical you're going to relate it gate well here is the judicially khana me the judicial economy is that even as three concedes the claims validity to science or even on a direct infringement in western just review your because they've all been pleaded against all of the respondents here every claim not just one three seventeen they included the kodak had induced by sale staccato software to the team to the customer defendants and by their use of that in print out that they were infringing infringing claim eighteen is it correct that severance issue was he'll just to stay correct around and is it also correct you're making every effort to preserve all the evidence that would be needed for both trials yes your honor absolutely you look on the in the reply as they they claim now and there are their brief that this claim eighteen is not tied to the use of any particular software system such as codecs accused to cut a product in their opening brief page for they say instead the printer defendants use  k products during the manufacture of their own unique separately infringing products which infringe other claims e g claim a tune of the patent suit so just as the theory of liability shifted before the trial court to have a contradictory theory of liability that right yes you're on you're absolutely right finding no jurisdiction or on the merits exactly correct your honor there won't be two markman hearings there won't be litigation claims one three eighteen in both jurisdiction won't be the risk of an insult consistent results their cases being a vast and western district of new york and when if anything is left of it it will be disposed of in the northern district of illinois the district court has used its inherent authority to stay its own proceedings there's no abuse of discretion in so apart from apart from jurisdiction and apart from the lack of record support to demonstrate that there's been an abuse of discretion this case by the truck or which should be deferred to its closer to  this latest theory of independent liability and are claiming it's contradicted by the complaint it's not possible subject matter it should be disregarded the fact that it's not in the stay order does not mean the court views discretion and as to s three arguing that while there is nothing in the record to show prejudice the us sensually have s three for the first time on appeal arguing prejudice the only party to raise the potential risk of prejudice was corespondent genesis in the appendix on page two thirteen there are no affidavits from as through there was no argument made yet now they are they are finding fault with the district court's decision which would streamline this case get rid finds your stiction ignores con with regards to treating a stands an injunction that you could well open a major hole in it section fourteen of four agers prunes you'll see many more lawsuits abuse or riggers jurisdiction so i wouldn't buy the court to read that case in the cases cited there there are several from all over the country in all the circuits not all of the circuits but the majority of the circuit