united states court of appeals for the federal circuit is now open and in session god save the united states in this honorable court good morning the st case for argument this morning is  james that a determination of non infringement even when coupled with the patent owner's disclaimer of any right to appeal doesn't deprive an article three court of jurisdiction to resolve any remaining dispute or that assert understand the move versus the article standing issue but you start off with the friends of the earth and you never take us through that analysis which continues by the supreme court  nike vs already you never take us to the point where there is a continuing controversy there's no covenant not to sue an analysis of who's got the burden to show in the context of instead you just turn around and get us to what i think is a fairly unremarkable opinion of this court fifteen years ago called for and that deals with the context of a district court proceeding and retention of the ability to pursue a counter claim even in the finding of non infringement that doesn't necessarily without further analysis apply to the context of i p r so you never go quite further where i think you need to go to at least make an argument to persuade me at least on the moon claim here i think i let me take those actually in reverse order so on the for james point we actually think that this this case stronger case for jurisdiction than for james because as you mentioned for james arises in the context of a da da da action for invalidity and this court has made clear for example the consumer watchdog case that the article three requirements  relaxed when you have a procedural right to appeal when i feel our was insufficient consumer watchdog but this case would require even less of a showing of an injury than was at issue one for james but going back to the mootness question and the question of burden  don't have to question it later but even if you were to look at the moon this analysis they caused that initial injury and they have once they saw our brief on appeal and saw the arguments that we were making with prospective liberty they tried t that really has little to do with what i think we need to and analyze in this case which is under nike under friends of earth we're who's got the burden to do and i don't see any argument in your great largely that's a that's a function of when the issue was raised and what happened in the course of this appeal and to the extent that the court orders additional briefing on the subject obviously we'd be happy to submit it but when you refer to the covenant i mean the question is what happen and that didn't happen in this case i mean why don't we pass that at this stage of the game well as i say your honor i think that for james resolved the case on its own and i also think that as you mentioned we actually didn't receive a covenant not to sue as and for james we disclaimers of an appeal and this is as against a party and we point this out in our for a brief that has repeatedly sued us including repeated times on the very same patent with respect to the same period so we think that we've met our burden but as i say we conduct then the burden shifted to already to indicate that it has engaged in sufficiently concrete plans to engage in activities not covered by the company out here there is a disavowal of appeal deal have any the there was a lot of disputes in the district court about what period of time was covered by the the judgment with respect to the other patterns so it's not entirely clear i suppose whether saddam might be able to continue to sue on  considered in the district court case or not it's the subject of yet another infringement suit that's been separately filed ok so we're continuously facing i think they've sued us twice this year alone and they us i think four or five times in the past on pet infringement so this is this is a sort of never ending string i do want to mention that even if you're saying can i interrupt you just again to make sure and clarity so you're saying there's a lawsuit out there right now where you're accused of infringing based on a different product that is not the subject of the disavowal of the appeal that's not infringement not on this pen we are the subject of a some other patents and it is the same part of the machine but it is not on this patent i do want to no just to be clear that if the court were to disagree with us and determine that the appeal is moot i just want to be clear that the proper disposition would not be to dismiss but to vacate the challenge portions of the decision below and that's clear from this cour possible ground well your honor again we think that there is jurisdiction but as the court made clear in p p g when the unilateral activity of the appellee is the reason the jurisdiction has disappeared it is a just an appropriate course particularly in a case like this where there are going to be potentially arguments about a stoppel down the line not to not to deprive the appellant of any appeal and also the upon with the possibility of a stumble but to as n  supreme court to vacate the portions of the decision that would have been challenged because we've been we would have been deprived of the right to appeal but as i say i don't think that that's necessary here because for james makes clear that the court has  is judged all again now let's say that hypothetically i don't think you're for change argument strong and steady i want you to focus on whether there is activities and plan your client that would make it so that disavowal didn't cover future products or current products with respect to this patent and to have an argument along that line we don't have it in the record we do have it in the sense that as i say judgment was entered in that case that is the subject of the one hundred and sixty one patent in june there was a transition process sort of worldwide involving the kinds of chips the kinds of components that are accused here and that process was not sort of immediate and so there are arguments about the scope of damages under the other side and patents in the district court subject to the public record and you could take you to show notice of them to the question of whether we think it's reasonable for them to expect them to sue again a point the court to what we mentioned in the great brief which is that they have repeatedly sued us on the same patents that is to say multiple cases involving the same one patent not this patent not the one  done you're very respectfully i respectfully i think that the our position is that the for james case made this this case easy and there wasn't actually a separate need and the reason is that the supreme court  has made clear including in karnal chemical that there's a public policy in ensuring that patents that are asserted can be challenged on the validity and we made the decision to channel our validity challenge into the pizza rather than in standing obviously as assessed from the outset and at the time we filed our notice of appeal we were the subject we were the defendant in a pending french an action in which the one hundred and sixty one patent was asserted i don't think that there's any case no at the time you filed this appeal didn't we already have of no infringement from the district court we had an opinion but we didn't have judgment and until final judgment is entered the court could have revisited that decision could have could have done any number of things ok but didn't the courts revisiting truly final and so obviously but it was it became turn right when they didn't appeal so that the time appeal hasn't passed but i take your point about the disclaimer and that is a move this question on standard questions as to standing up straight forward we are the object of an infringement suit as to mootness the record is made clear that the parties shouldn't be able to manipulate the jurisdiction of the federal courts and the judicial process in order to avoid challenges compel a similar and analytical framework in this context but that's not a given that's a hard issue i don't know where one would come out on that but there that is an issue that needed to be fleshed out did it not you can't automatically say because cardinal chemical apply and counterclaims we continue to live in the for change circumstance automatically without further analysis that also applies  not clearly under that those cases not at this stage of the game becomes a moot question and not the threshold article three question your honor i do i do agree with you that it is that it does fall under the rubric but as as a supreme court and this court is made clear and then if he has to show injury in fact throughout the course of the proceeding the fact that whether or not they had injury and fact when they filed the appeal is not enough they have to have it throughout the course of the court loses article three jurisdiction i agree with you that and then becomes a this question but right now if there is no dispute a b s has not contested despite ample have to make i mean ninety rested on the fact that there was this very very broad covenant not just yesterday and had a lot of that so don't you have whatever the burden is and unfortunately that has not been flushed any of the briefing but you have to show something so you're something here is we haven't appealed the finding of not infringement right that's wrong or something and you think that that your burden and  just moves to the other side too with stablish if they have some continuing recurring injury exact that your honor is exactly the sole basis and mr horowitz just said that the sole basis of their standing at the time they filed appeal potential appeal of that non infringement ruling that eradicated the only injury in fact that this is not a case like nike where they had kind of a sprawling set of injury and facts right multiple trademark actions multiple products that issue here the only basis was this non infringement summary judgment and the threat of an appeal once we took away the threat of that appeal that is now there is no injury in fact and the the burden then shifted to them once we made that argument in our red briefs and attach the evidence the argument then shifted the burden then shifted back to them in their grey brief to come forward with some other basis of injury in fact and  believe different or not would that be sufficient your honor i think it is it has to show a specific threat and this court has laid it out in detail in the a v x case which we discussed in our brief and there just kind establishing standing in the st instance that a question we're standing had existed at one point i honestly don't remember yet your honor it is a it is a standing case but it goes to the question you're asking about what would they have to show to show some injury in fact it was an injury in fact case and it was at the time of filing but i think the inquiry once the burden just back to them is the same that is can they show some injury in fact based upon the future likelihood of an infringement action vieques lays out the types of the specificity required to show that even though the a v acts appellant attached a declaration from their general counsel laying out in a sworn testimony all the sorts of things that mr horowitz said at oral argument that look we have a long history with this company they sue us all the time we think it's going to happen again this court was specific and it said that sort of nonspecific the  horowitz use was it's conceivable and this court said the fact that it's conceivable it might happen that's not good enough it has to be a specific articulable concrete basis to think that there's going to be a mother s reoccur i mean that this got a lot to prove they're right sure exactly rahner they have to show they have to show some basis nike makes that clear this court in a vieques made that clear this court in j tech all cases redesign and they thought that maybe you would sue them for infringement that lead to same course they haven't done that here but would that be enough if your client charts or something like that you had a specific redesign sure your honor arguments that have been made and they put that in a sworn declaration and said we're coming out to mark that with this product and and they establish that it was actually a concrete specific articulable risk of infringement then yes then maybe maybe it's a much closer case then but they haven't done that here in fact they've done the opposite mr horowitz referred to it's not in the record but the redesign will they use data trial this was in september they said so he is asserting all of this with no evidence yuri support for the st time in oral argument that is correct your honor and the one thing i will add is that unlike for james we do have a case of this court albeit it is non presidential but it's much more recent and much more on point and this court brought it up in the argument keep e g the palace bar and that's one where like here that you had a p tab calendar that lost in the a declaration a covenant not to sue in that case because the alleged injury was not a potential appeal like here but about the future risk of an infringement in this court said look even though that's tardy and unilateral article three is article three and we can't doctrine and here the equities are more favorable for us than they were for the afzali and p p g v valspar and the reason i say that is this the the non infringement summary judgment happened fifteen months ago it happened before they invoked this court's article three jurisdictions so everyone was on notice at the time they filed their notice of appeal that their sole basis of injury was already the subject of  infringement summary judgment determination of non infringement by the district court and so in the normal case that would that the time for appeal we would have had a final judgement over to c definitely this is just more i definitely agree with you that that is a an excellent point and i'm really glad you were right to it what about the fact that you waited till after they filed their blueberry to disembowel your right sure your honor a couple things one is part of that is for that very reason this was a fluid situation it was entirely possible and in fact we expected that given this was fifteen months ago by the time that we would file our brief there would actually be a final judgment in the district court it turns out there are other pending claims in the district court and and even though those ended last september the court has not yet ruled on the fully briefed jame all motions so by the time the fact by the time we came to a read brief it was clear that we weren't going to have a final judgment and it was also clear that a b s had not alleged any future risk of infringement either at trial or in its read brief and so that that pushed us to the point of saying ok we no longer have a reason to seek this so you've got the not inference what happened fifteen months ago they in their camp have yes but you then didn't give us what we really needed a just about all of appeal until after the blue brief was filed but i would assume your response to that would be well that didn't stop them from continuing to pursue the appeal so it's not like if you had given them an earlier point is i'm disavow they wouldn't move forward because they're arguing to us that that's just the valve has no impact on their right that's exactly right your honor and this  not the sort of case like that they can claim surprise remember involves bar that that covenant not to sue an appeal came after oral argument attached to a supplemental brief we did it in our read brief as i often in standing article three cases in this court we've looked at we've found thirteen cases in which a p tab article three jurisdictional defect has as a risen all since two thousand and seventeen and then half of those it's raised in the red precedent it was nice to show that it could not reasonably be expected to resume its enforcement efforts and then look to this broad covenant not to sue which i think is i understand the case didn't just deal with the accused design in that case but covered all of the existing design and the colorable imitation so it must be your view that your decision to just claim your appeal in this case was right on par with with the broad covenant not just in nike is that your position that the two of the same and therefore you have the right to say you're satisfied your burden life simply disclaiming the appeal and it's up to the a b s to come up with further information is is a difference but analytically they are the same and here is the reason why the disclaimer covenant not to sue has to be coextensive with the asserted injury in one key the asserted injury was much broader the basis for the injury in had a sprawling set of products nike had sued on some and threatened to sue on a whole lot of others and so in order to defeat that broad basis for an injury in fact you had to have a commensurately fraud covenant not to sue otherwise it wouldn't actually obviate the injury in fact and render the case moot here the basis for the injury and fact that a b s assert is much narrower there only basis for injury in fact was the pending parallel district court infringement proceeding on which we already have a ruling of non infringement and so the sole basis for their injury in fact was the prospect of appeal and so here are a categorical disclaimer of that appeal extinguished that threat of injury so in just as a nike we have we have issued a covenant or a disclaimer that is coextensive with the asserted injury in fact and that is did legal test that you want to apply the course is going to differ a case to case as to how broad that disclaimer as to be based upon the nature of the asserted injury the products and the actual litigants involved anything else from my colleague ok thank you thank you your honors is about halfway down the page a case or controversy adequate to support jurisdiction necessarily exist if the party has been actually charged with infringement and it appears that point again with something right above which says a post verdict covenant had no effect on the claim for infringement so once you have a claim for infringement you have injury and the post verdict covenant doesn't get rid of it so that's why we think for james applies turning to the the equities here and and vaguer but it also bears  and your questions at the end of my friends argument we don't just we don't have a covenant not to sue in this case we have the thinnest of disemboweled of appeal in the p p d case there was a covenant not to sue him for james there was a covenant not to sue they had brought protections we have a repeat of a sort of the same patterns and this is in the gray brief it's in the record i went slightly be on the record to respond the court's questions but this is in the record we have a party who repeatedly sues us for infringement including infringement of the same patents they altered you know the timing of when the two issues were decided infringement probably didn't and this is a different proceeding this is an appeal from an agency an agency that is not an article three court so can you address why it is that you think or change could apply in the context of separate proceedings of a district court in i p r yes just all at the time we filed our appeal of this case we invoked the article three jurisdiction of this court and at that time we were relaxed as compared to the district court context but i want to turn if i can with my remaining minute to the vicar question the equities here strongly favor of a critter and the reason is because as i say we have no protection against a future suit from s t who has repeatedly us including for the same patent over and over in light of the a stop a risk that's created by the a i a and in light of the fact that we're dealing with a repeat player here even if the court were to conclude that there is no jurisdiction because it's been rendered moot by  gnome's creative tactics the court should nonetheless vacated to protect a b s against the risk a future suit pressed he comes in and argues that we've been a stopped count council just for you to file away so that your client knows