Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 1 of 63 PageID #: 5140
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`CA NO. 15-228-RGA,
`15-282-RGA,
`15-311-RGA
`
`January 10, 2017
`
`10:03 o'clock a.m.
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`: : : : : : : : : :
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`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD INC., et
`al.,
`
`Defendants.
`.............................
`
`TRANSCRIPT OF MOTION FOR ATTORNEY'S FEES
`BEFORE THE HONORABLE RICHARD G. ANDREWS
`UNITED STATES DISTRICT JUDGE
`
`APPEARANCES:
`
`For Plaintiff:
`
`POTTER, ANDERSON & CORROON
`BY: PHILIP A. ROVNER, ESQ
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`CA NO. 15-228-RGA,
`15-282-RGA,
`15-311-RGA
`
`January 10, 2017
`
`10:03 o'clock a.m.
`
`: : : : : : : : : :
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD INC., et
`al.,
`
`Defendants.
`.............................
`
`TRANSCRIPT OF MOTION FOR ATTORNEY'S FEES
`BEFORE THE HONORABLE RICHARD G. ANDREWS
`UNITED STATES DISTRICT JUDGE
`
`APPEARANCES:
`
`For Plaintiff:
`
`POTTER, ANDERSON & CORROON
`BY: PHILIP A. ROVNER, ESQ
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 2 of 63 PageID #: 5141
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`For Defendants:
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`-and-
`KRAMER LEVIN NAFTALIS & FRANKEL
`BY: PAUL J. ANDRE, ESQ
`BY: AARON M. FRANKEL, ESQ
`
`MORRIS, NICHOLS, ARSHT & TUNNELL
`BY: JACK B. BLUMENFELD
`-and-
`WINSTON & STRAWN
`BY: DAVID P. ENZMINGER, ESQ
`BY: MICHAEL A. TOMASULO, ESQ
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`Court Reporter:
`
`LEONARD A. DIBBS
`Official Court Reporter
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 3 of 63 PageID #: 5142
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`P R O C E E D I N G S
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`(The proceedings occurred at 10:03 o'clock a.m. as
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`follows:)
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`THE COURT: All right.
`Good morning. Please be seated.
`This is Acceleration Bay v. Activision Blizzard, Civil
`Action No. 15-228, plus two others other cases.
`Mr. Rovner?
`Here you are.
`MR. ROVNER: Good morning, your Honor.
`THE COURT: Good morning.
`MR. ROVNER: Happy new year.
`With me representing Acceleration Bay is Paul Andre and
`Aaron Frankel from Kramer Levin.
`THE COURT: All right. Good morning.
`Mr. Blumenfeld, good morning to you.
`MR. BLUMENFELD: Thank you.
`Jack Blumenfeld from Morris Nichols for all of the
`defendants.
`And with me is David Enzminger and Mike Tomasulo from
`Winston & Strawn.
`With the Court's permission, Mr. Enzminger is going to
`be doing the presentation for the defendants this morning.
`THE COURT: All right. Okay.
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 4 of 63 PageID #: 5143
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`Mr Enzminger.
`MR. ENZMINGER: Good morning, your Honor.
`We're here on a Motion for Attorneys' Fees following
`the dismissal of all of these actions for Lack of Standing.
`Under the Supreme Court's decision in Octane Fitness,
`the question in this case is whether it stands out from the
`others. And under the Court's inherent authority, the question
`is whether the suit was brought in good faith.
`We submit that the fees are appropriate under both
`tests for the following reasons.
`First, the issue of standing in this case was not a
`close call, so much so that it stands out from the others, and
`demonstrates that the plaintiff didn't have a good faith basis
`to sue these defendants based on the rights that it had when it
`filed these cases.
`Second, in furtherance of that, Boeing's exclusive
`right to practice the patent, defeated standing that any
`reasonable litigant looking at that License Agreement would have
`understood that the rights retained by Boeing precluded
`standing. Regardless of whether the Court determined that
`Boeing was the owner or a licensee, under controlling Supreme
`Court Federal Circuit, and decisions of this District Court, all
`were very clear that the plaintiff lacked standing. In fact,
`it's no exaggeration to say that there was no authority for the
`contract position.
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 5 of 63 PageID #: 5144
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`All of this shows that the case was exceptional.
`The plaintiff was created for the sole purpose of
`exploiting these patents against these defendants, which is what
`we heard in that standing hearing. And yet, they didn't acquire
`ownership before they sued.
`As part of the documents, they created a separate
`public assignment document, which did not accurately reflect the
`true terms of the deal, and purported to say that they owned all
`right, title, and interest in the patent to the same extent that
`Boeing owned them before the transaction.
`That was the document they filed with the Patent
`Office. That was the document in their initial disclosures they
`pointed us to by identifying the Patent Office assignment
`document, and for nine months did not disclose that there was
`another agreement that had substantially different terms. Terms
`which showed clearly upon first reading to anyone in this field
`that they lacked standing.
`Further, they never produced that document to us.
`We eventually got it nine months after the litigation
`began via a subpoena from Boeing, and only after threatening to
`move to compel.
`THE COURT: Now, the defendants or the plaintiff says
`that was two weeks after the Protective Order was entered, is
`that right?
`MR. ENZMINGER: It was about six -- if I'm remembering
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 6 of 63 PageID #: 5145
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`the time line correctly, it was about six weeks after.
`THE COURT: Well, when was it produced, because I think
`the Protective Order was entered on December 30th?
`MR. ENZMINGER: The -- the document -- then that would
`be an inaccurate statement -- the document was produced in
`mid-January, but there was no reason for them to have pointed us
`in their initial disclosures to a document that wrongly set
`forth the terms of the deal, and maintain a litigation for
`nearly a year based on rights that were told to the public which
`weren't accurate.
`We submit that that's very likely to have been merely
`an accident.
`So the fact that the plaintiff was incorporated and set
`up for the purpose of suing on these patents against these
`defendants, and failed to even acquire ownership of the patent
`is, itself, an exceptional and remarkable situation.
`Very similar to what Judge McMahon found in the
`Advanced Video case, a patent case from last year, where fees
`were granted based on the plaintiff's failure to acquire
`ownership rights.
`THE COURT: That's the one that is described as being
`on appeal to the Federal Circuit?
`MR. ENZMINGER: It is on appeal to the Federal Circuit.
`There has been no decision on that.
`THE COURT: Has it been submitted?
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 7 of 63 PageID #: 5146
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`MR. ENZMINGER: My understanding is oral argument is in
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`February.
`
`THE COURT: Okay.
`MR. ENZMINGER: So, turning to more -- getting more
`specific. There are two Supreme Court cases that bear heavily
`on this motion.
`The first is Octane Fitness, in which the Supreme Court
`basically held the standard for attorneys' fees is whether this
`case stands out from the others.
`Obviously, this judge is better at determining, based
`on all the patent cases it's had, whether this is a remarkable
`circumstance, but we believe that it is. Litigating a case for
`nine months, based on an assignment document, which very plainly
`did not give the right to sue.
`THE COURT: Well, so, I'm not sure whether or not this
`is actually relevant to the issue today, but there are new cases
`filed by the plaintiff that, I guess -- I haven't looked at
`it -- it's kind of a backup by a revised Patent Purchase
`Agreement, or amendments to the Patent Purchase Agreement, or
`something, which I which I think -- we're going to have a
`scheduling conference in a little while -- in a short time.
`The difference between the pending case, and this
`resolved case, other than the patent purchase arrangements being
`different, is what?
`MR. ENZMINGER: Well, that is not an insignificant
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 8 of 63 PageID #: 5147
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`difference, because they were given an opportunity to cure it in
`this case, and were unable to do so. And we had to go back to
`Boeing, which refused to participate and renegotiate the
`difference, so that they renegotiate the Purchase Agreement.
`So, in the second cases, it's a completely different
`Purchase Agreement with a different bundle of rights.
`THE COURT: But in terms of the sort of underlying
`merits of asserted various patents saying some product, or
`products, or methods, or something that you all do infringe the
`patents, what are the differences?
`MR. ENZMINGER: So, in the second case, there are --
`there is a -- there are products that have been dropped from --
`that were not in the first case.
`THE COURT: Does that have anything to do with the
`Patent Purchase Agreement?
`MR. ENZMINGER: Pardon me?
`THE COURT: Does that have anything to do with the
`Patent Purchase Agreement?
`MR. ENZMINGER: It does not.
`THE COURT: What's there about the second case that has
`something to do with the Patent Purchase Agreement?
`MR. ENZMINGER: They acquired Boeing's rights that they
`didn't previously have.
`THE COURT: And what difference does that make to you
`in the second case?
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 9 of 63 PageID #: 5148
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`MR. ENZMINGER: A portion of the standing argument in
`the second case would not be made, because they went out
`acquired new rights that they didn't have.
`THE COURT: And, so, you have one less argument in the
`second case.
`In your briefing you said that in the second case they
`will -- the damages will go back to six years presumably from
`when it was filed, which is presumably not as far as back as six
`years from when the first case was filed.
`Is that a -- in terms of what was the products that are
`accused, does that actually make a difference --
`MR. ENZMINGER: Yes.
`THE COURT: -- in his terms of what the damages are?
`MR. ENZMINGER: Yes, we believe so.
`THE COURT: Okay.
`And I think you said that in the briefing.
`Did you point to anything specific, as just a factual
`matter, because I may be confusing this case with some other
`case, but I thought there was -- well, I could be confusing this
`case with another one.
`But in the discovery that occurred in the present case,
`did you produce discovery showing that whatever the accused
`products are were things that were selling or doing something
`with more than six years before the second case was filed?
`(Pause)
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`If you say, I didn't understand your question, Judge, I
`will rephrase it.
`MR. ENZMINGER: I'm not sure I understand the question.
`THE COURT: Okay. So, presumably, the damages in the
`first case, which was filed in 2015 --
`MR. ENZMINGER: Yes.
`THE COURT: -- go back to some time in 2009.
`The second case is now filed some time in 2016.
`Presumably, it's damages go back to 2010.
`In the first case, did you produce discovery showing
`that you did some kind of commercial thing with some product in
`the 2009, 2010, time period? Things that would now no longer be
`in the second case?
`MR. ENZMINGER: I don't know the answer to that
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`question.
`
`I know that we produced the technical documents. I
`don't know whether we produced the historical sales documents.
`THE COURT: Well, so, perhaps your opponents will know.
`But regardless of whether you produced them, do you
`know whether there are historical sales documents saying that
`you were actually selling any of these things in 2009 and 2010?
`MR. ENZMINGER: Yes.
`THE COURT: Okay. All right.
`I'll take that from Mr. Tomasulo.
`MR. TOMASULO: Tomasulo.
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`THE COURT: Thank you, sir.
`And, so, related to that, you know, at the end of your
`briefing, you do what I think is the proper thing, because you
`estimate what your claims for attorneys' fees would be if you
`went on the merits of the motion. And I'm not going to repeat
`that number right here, but it's a big number.
`And, you know, a substantial chunk of that number was
`for IPR work, but even the part that was District Court, how
`much of that number figure, if you can answer, realizing you're
`not under oath here, is a percentage or an absolute number -- I
`don't care which -- how much of that number is related to
`litigation over the standing issue?
`MR. ENZMINGER: I don't have a direct sense of that,
`but it was a fairly substantial amount. I wouldn't say it was
`about -- I mean, I wouldn't say it was more than half,
`certainly, but it was a substantial amount because it went on
`for quite some time through several rounds of briefing.
`And also at the same time, what I think is even more
`salient is, most of the discovery in this case took place after
`we alerted them to the standing issue, and they kept pursuing it
`even though they had no good faith basis for pursuing standing.
`THE COURT: But that's discovery, that if they hadn't
`got in case number one, they would get it in case number two,
`right?
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`MR. ENZMINGER: Not necessarily, because -- for a
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`couple of reasons.
`One, we have -- we still have pending standing issues
`in the second case.
`THE COURT: Right, but they are not dispositive
`standing issues.
`MR. ENZMINGER: They are with respect to about half the
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`products.
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`THE COURT: Well, right, but they are not dispositive
`as to the case?
`MR. ENZMINGER: They are not dispositive with respect
`to the entire case, that's correct.
`THE COURT: Okay. Go ahead.
`MR. ENZMINGER: So, there is -- there is discovery.
`THE COURT: I was going to suggest -- all right.
`Go ahead.
`MR. ENZMINGER: And moreover, you know, to the extent
`that the plaintiff has not advised us what discovery they don't
`intend to duplicate, and the way litigation --
`THE COURT: Okay. Well, I thought I saw somewhere in
`here, plaintiff I don't think are actually in reduplicating
`discovery. They would like to just take what they got from the
`first case and say, okay, it's alive in the second case, am I
`not right?
`MR. ANDRE: That's correct, your Honor.
`THE COURT: Okay. Yeah, I thought so.
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`Go ahead.
`MR. ENZMINGER: So, further, with respect to the
`standing motion itself, that was not a motion which we had any
`choice in bringing.
`THE COURT: Well, so, one of the things is, you just
`implied that you think it was really substantial, and you spent
`-- hold on a minute.
`(Pause)
`Again, I understand you're not -- you don't know the
`exact answer, but on Page 20 of your opening with brief, there's
`a number for fees relating to defense of the Delaware action.
`And your sense is that that number -- and this was not
`what you said, but I'm paraphrasing -- you would get 25 to 40
`percent of that number is standing related?
`MR. ENZMINGER: I don't know what I would get looking
`at that number. I mean, it's something I can certainly provide
`to the Court.
`THE COURT: I mean, in a way, it's kind of ironic that
`something you're saying would open and shut frivolous, and then
`it cost you more than a hundred thousand dollars, isn't it?
`MR. ENZMINGER: No, not really. This is a motion that
`was potentially dispositive of the case in which they advised
`the Court that they are seeking $150 million from each
`defendant.
`The bulk of those fees, granted it had a lot to do with
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 14 of 63 PageID #: 5153
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`ongoing discovery, but the standing motion itself went through
`several rounds of briefing or supplemental briefing.
`We also had some discovery to take with respect to the
`standing motions.
`THE COURT: By the way, the supplemental briefing,
`wouldn't that tend to indicate that at least from the Court's
`perspective this was not open and shut?
`MR. ENZMINGER: No, because the Court -- the question
`the Court asked with respect to the supplemental briefing was
`not the basis upon which the Court ruled. That was an
`additional reason the Court indicated, but the Court agreed with
`us from the outset, which is what all the cases said, which
`was --
`
`THE COURT: There's something wrong with the mic.
`Can you do something about it?
`MR. ENZMINGER: Can you hear me without it?
`THE COURT: Yeah, yeah, I can hear you fine.
`Why don't you just get it out of the way. That
`feedback is irritating.
`MR. ENZMINGER: What all of the authorities said, and
`what the Court concluded was, based on well-settled law, the
`plaintiff wasn't the owner of the patent.
`The question the Court asked in supplemental briefing
`was, if the Court concluded that the plaintiff was the owner,
`would it matter?
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`And the answer to that was clearly no.
`And in the order the Court found that both of those
`things -- agreed with us on both of those points.
`But also with respect to the standing motion is, from
`the perspective of the defendants, there was no choice but to
`bring that motion, because we had no facts to --
`THE COURT: I'm not saying you shouldn't have brought
`the motion.
`So, that's funny, you said you had no choice but to
`bring it. Nobody is -- I'm not criticizing you for bringing it.
`MR. ENZMINGER: Okay. Well, I'm just pointing out that
`that was a very probably entirely case dispositive motion, so a
`lot of effort did go into it certainly. We had discovery that
`was directed specifically to it. We had to get --
`THE COURT: My only point is, yes, you can have an
`important motion, but when it's easy, no reasonable person could
`argue the other side. You would expect that the fees involved
`in prosecuting the motion, that even doing whatever peripheral
`things you needed to do in relation to the motion, would not be
`that great?
`MR. ENZMINGER: Well, if we're talking about the amount
`of fees to be awarded, we are certainly happy to submit the
`supplemental --
`THE COURT: Well, no, no, no. I understand. I --
`MR. ENZMINGER: Yeah.
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`THE COURT: Yeah, yeah, I mean the --
`MR. ENZMINGER: The Court will determine what the Court
`determines is fair, and we'll live by that.
`THE COURT: All right.
`I'm sorry. Go ahead, Mr. Enzminger.
`MR. ENZMINGER: The other point I would like to make
`with respect to the fees in the first case with respect to the
`merits discovery is that there is no guarantee that we would
`have the opportunity to get them back in the second case.
`We're not aware of authority that would allow the Court
`in the second case, which we also believe to be frivolous, both
`for standing reasons for about half of the products and on the
`merits to be recovered.
`So, this is our chance. This case is over. They were
`not able to cure the defect that we identified. They had no
`reasonable argument to continue the litigation. Certainly not
`once we pointed out the standing defect that was readily
`apparent on the Patent Purchase Agreement.
`And this is -- this case was not brought based on a
`good faith belief in the existence of standing.
`You cannot look at the Patent Purchase Agreement and
`conclude that the plaintiff had all right, title, and interest
`in the patent as Boeing did before the transaction.
`There is just no way to read that agreement to say what
`they told the public that agreement said. They brought this
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`case without any real basis for standing. And then once that
`was identified, pursued it for another six months after that.
`Even when this Court gave them an opportunity to cure,
`after they said they would cure it, they didn't cure it.
`THE COURT: Well, actually, while theoretically they
`could cure it, I think or the transcript shows in oral argument
`Mr. Andre said he didn't think Boeing would join.
`MR. ENZMINGER: Right, and then the letter submitted to
`the Court thereafter, suggested the possibility of cure, which I
`don't know what the basis for that was, but the ultimate result
`was they did not cure a standing.
`THE COURT: And without having the letter in front of
`me, which I do not recall, or as I recall Mr. Andre's argument,
`more or less, you know, there's a possibility. I don't think we
`know what happened in the two weeks, or whatever the period of
`time was, you know, Boeing certainly was agreeable to revise the
`agreement in some fashion in two weeks.
`So, I'm not sure that I can say there was a possibility
`that they would join, if that's what the letter said, is an
`untrue statement.
`MR. ENZMINGER: It wasn't there. I'm not suggesting it
`was untrue. I'm suggesting it didn't happen.
`THE COURT: I'm sorry. You're suggesting what didn't
`
`happen?
`
`MR. ENZMINGER: They did not cure standing in this
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 18 of 63 PageID #: 5157
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`case.
`
`THE COURT: Oh, okay, right.
`MR. ENZMINGER: Of that point there is no doubt
`whatsoever.
`THE COURT: Right, right, right. Sorry. I wasn't
`clear what you were saying.
`MR. ENZMINGER: In the opposition papers, the plaintiff
`makes the argument that because the standing judgment was not a
`judgment on the merits, the defendants cannot be the prevailing
`party for purposes of fees under 285.
`We submit that argument is directly contrary to the
`United States Supreme Court in the CRST case cited in our
`papers.
`
`That argument has also now been rejected, and
`explicitly rejected in one District Court case for the same
`reason. That's the TufAmerica case.
`And in Footnote 1 of the TufAmerica reconsideration
`decision, which is found at the Westlaw decision, 2616 Westlaw,
`3866578, Footnote 1, the Court basically set forth, as we
`contend, that the argument that a Motion to Dismiss for Lack of
`Standing can't support a prevailing party -- it can't be used to
`show that a party is a prevailing party is meritless under the
`Court's decision in CRST.
`Also, in a patent case, the Advanced Video case, Judge
`McMahon in the Southern District of New York, while not
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 19 of 63 PageID #: 5158
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`specifically addressing the prevailing party standard, did grant
`fees based on a plaintiff's failure to obtain rights before it
`sued.
`
`So, we think under the Supreme Court's authority, under
`the District Court cases that have followed since that decision,
`make it very clear that the defendants are the prevailing party
`in this case.
`The cases cited in the opposition brief, to the extent
`that they discus this issue at all, every one of them is before
`Octane Fitness or before the Court's decision in CRST.
`And, so, to the -- we would suggest that to the extent
`that they would appear to support the plaintiff's position,
`those cases are no longer good law in view of the some Supreme
`Court's decision in CRST, which explicitly also said at Page
`1640 that all federal fee shifting should be construed
`consistently.
`So there is no merit to the notion that because -- that
`was the civil rights case -- that the law is somehow different
`for that fee shifting statute rather than the fee shifting
`statute in this case.
`So, with that, I'll conclude my remarks, unless the
`Court would like to ask any questions?
`THE COURT: Ask any questions?
`Hold on just a minute.
`(Pause)
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 20 of 63 PageID #: 5159
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`All right.
`Thank you, Mr. Enzminger.
`Mr. Andre.
`MR. ANDRE: Good morning, your Honor.
`May it please the Court, subsequent to the briefing in
`this case, we had a -- this issue came up to some degree in the
`Northern District of California. The defendant in this case
`filed a series of Declaratory Judgment actions --
`THE COURT: Right.
`MR. ANDRE: -- that were identical. And we have a
`judge out there, Judge Seeborg, and I don't know if you know
`Judge Seeborg.
`THE COURT: I met Judge Seeborg, and I read his Order
`and Opinion when he transferred the cases here, which his Order
`and Opinion made perfect sense to me.
`MR. ANDRE: And, in that vein, I know that we submitted
`a subsequent authority.
`But just for the record, on Page 8 of his Order, I
`think this really -- this is a succinct conclusion -- where he
`states here, "Acceleration Bay met constitutional standing
`requirements in the 2015 Delaware actions, but that the video
`game companies object to applying the relation back doctrine,
`causing Acceleration Bay re-filed complaints, as opposed to an
`amending the preexisting complaint. The re-filed complaints,
`however, did not introduce any new parties, patents, products or
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 21 of 63 PageID #: 5160
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`claims, and the circumstances suggest a mistake as to the legal
`effectiveness of Boeing original assignment was made in good
`faith."
`
`THE COURT: As I said, when I read the Opinion -- which
`I read it -- did he write that before this briefing?
`MR. ANDRE: It was after the briefing.
`THE COURT: Okay. I can't remember, because I read it
`-- I mean, I read it, more or less, at the time when he wrote
`it, because I -- there were pending motions here for me to
`transfer them there, so I guess you gave me notice, or somebody
`gave me notice that he made a decision.
`And since it appeared to me that his decision was
`probably going to moot the need for me to make any decision, I
`read -- and, as I said, it sounded very reasonable to me.
`MR. ANDRE: Your Honor, when this opinion came out, we
`had approached the defendants in this case and said, we
`requested them to withdraw their Motion to Transfer the cases
`here to California, making them moot. We also requested that
`they drop this motion as well, the fees' motions, because in
`Judge Seeborg's Order, while it's not binding on this Court, it
`obviously is strong dicta or evidence that ensued, a respected
`judge has found our mistakes being in good faith.
`THE COURT: Well, but that's not dispositive of the 285
`Motion, is it?
`I mean, under the old law that might be dispositive,
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 22 of 63 PageID #: 5161
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`but under the new law you can operate in good faith, but just be
`so misguided that a case could be exceptional, right?
`MR. ANDRE: In theory, yes, but I think in most cases
`that you decide here on Judge Robinson and Judge Stark, when
`they say cases are a filed in good faith, that kind of takes
`them outside of the 285 exception.
`Really, in addition to the exceptional case, the
`prevailing parties' analysis that was done -- and your Honor
`picked up on this earlier in questioning my friend here -- the
`prevailing party issue is addressed here as well. There are no
`new parties. It's the exact same parties. It's the exact same
`patents.
`
`THE COURT: Well, so, one of the -- part of the reason
`why -- so, the question about what the damages period is, and
`whether in the new case it starts later than it did in the old
`case, you had a sentence, or something in your brief about that,
`but it didn't have much argument. It didn't cite any authority.
`Are you arguing that for some reason the damages in the
`new case goes back further than six years from when it was
`filed?
`
`MR. ANDRE: Your Honor, to be very clear, and I'll make
`this statement on the record.
`As your Honor is well aware, damages begin when notice
`is given to the alleged infringers. We gave them notice for the
`very first time in March of 2015, when we filed the Complaint in
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 23 of 63 PageID #: 5162
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`this case. We're not seeking damages before March of 2015.
`So, the six-year period that they put into the straw
`man argument --
`THE COURT: Well, wait.
`So, you're saying in neither case -- you're saying in
`the first case, because you had not given them notice, the
`damages, while theoretically the six years is there, it wasn't,
`because of the lack of notice.
`And, so, that case, let's assume you filed it June 1st
`of 2015, damages started on June 1st of 2015.
`And, in this case, the damages period goes back to June
`1st of 2015?
`MR. ANDRE: That's exactly right, your Honor.
`So, damages begin when notice is given. And the first
`time in these defendants were given notice of these patents is
`when we filed the case in 2015.
`THE COURT: Okay.
`MR. ANDRE: So, that's all we're seeking damages.
`We're not seeking six years of damages, so --
`THE COURT: Let's, you know, as I said, I have a vague
`memory of the discovery dispute when I was handling the
`discovery dispute.
`You weren't trying to get sales -- were you in
`discovery trying to get sales information going back before
`2015?
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`Case 1:15-cv-00311-RGA Document 170 Filed 01/12/17 Page 24 of 63 PageID #: 5163
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`MR. ANDRE: Your Honor, not that I recall. We were
`trying to get the development -- and some of the products were
`developed earlier than 2015. We're trying to get discovery of
`the developmental documents of the products and whether they
`added new features in.
`And that's important for liability aspects, but for
`damages, we were just really trying to get sales going back to
`the time of actual notice when damages began. And --
`THE COURT: Okay. By the way -- and I don't mean to
`interrupt you, Mr. Andre.
`But Mr. Enzminger, do you disagree with what Mr. Andre
`is saying about the history of this?
`MR. ENZMINGER: I certainly disagree about the history.
`I'm perfectly happy to accept the representations today that
`they are dropping their claim for damages prior to the filing of
`the Complaint.
`THE COURT: But you're saying that's not a position
`that they were taking earlier on?
`MR. ENZMINGER: That is not a position I understood
`them to be taking at any time in the prior case. And I recall,
`though, I may be mistaken -- Mr. Tomasulo is checking -- I
`recall having discovery fights on this issue seeking
`information, but I can't make a representation to the Court,
`because it's been a year.
`THE COURT: Right, right.
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`MR. ENZMINGER: And I --
`THE COURT: I understand how that goes.
`MR. ENZMINGER: But this is a surprising judicial
`admission.
`THE COURT: I don't think judicial admission is the
`right word here, but, in any eve
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