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`BLITZSAFE TEXAS, LLC
`
`VS.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`)(
`)(
`)(
`)(
`)(
`JANUARY 11, 2017
`HONDA MOTOR CO., LTD., ET AL. )(
`11:09 A.M.
`)(
`PRE-TRIAL HEARING
`BEFORE THE HONORABLE JUDGE ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
`
`CIVIL DOCKET NO.
`2:15-CV-1274-JRG-RSP
`MARSHALL, TEXAS
`
`APPEARANCES:
`FOR THE PLAINTIFF: (See Attorney Attendance Sheet docketed in
`minutes of this hearing.)
`
`FOR THE DEFENDANTS: (See Attorney Attendance Sheet docketed in
`minutes of this hearing.)
`
`COURT REPORTER:
`
`Shelly Holmes, CSR-TCRR
`Official Reporter
`United States District Court
`Eastern District of Texas
`Marshall Division
`100 E. Houston Street
`Marshall, Texas 75670
`(903) 923-7464
`(Proceedings recorded by mechanical stenography, transcript
`produced on a CAT system.)
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`29242
`
`1
`
`BLITZSAFE TEXAS, LLC
`
`VS.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`)(
`)(
`)(
`)(
`)(
`JANUARY 11, 2017
`HONDA MOTOR CO., LTD., ET AL. )(
`11:09 A.M.
`)(
`PRE-TRIAL HEARING
`BEFORE THE HONORABLE JUDGE ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
`
`CIVIL DOCKET NO.
`2:15-CV-1274-JRG-RSP
`MARSHALL, TEXAS
`
`APPEARANCES:
`FOR THE PLAINTIFF: (See Attorney Attendance Sheet docketed in
`minutes of this hearing.)
`
`FOR THE DEFENDANTS: (See Attorney Attendance Sheet docketed in
`minutes of this hearing.)
`
`COURT REPORTER:
`
`Shelly Holmes, CSR-TCRR
`Official Reporter
`United States District Court
`Eastern District of Texas
`Marshall Division
`100 E. Houston Street
`Marshall, Texas 75670
`(903) 923-7464
`(Proceedings recorded by mechanical stenography, transcript
`produced on a CAT system.)
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`Case 2:15-cv-01274-JRG-RSP Document 399 Filed 01/20/17 Page 2 of 167 PageID #:
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`I N D E X
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`January 11, 2017
`
`Appearances
`Hearing
`Court Reporter's Certificate
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`Page
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`LAW CLERK: All rise.
`THE COURT: Good morning. Please be seated.
`For the record, we're here for the pre-trial
`conference in Blitzsafe Texas, LLC versus Honda Motor Company,
`et al., which is under I think Consolidated Case No. 2:15-1274.
`Would counsel state their appearances for the record?
`MR. FINK: Hello, Your Honor. Rudy Fink for
`Plaintiff, Blitzsafe. I'm joined here by Mr. Shahar Harel,
`Mr. Alfred Fabricant, Mr. Peter Lambrianakos, and Ms. Jennifer
`Truelove.
`
`THE COURT: All right. Thank you, Mr. Fink.
`MR. DACUS: Good morning, Your Honor. Deron Dacus
`here on behalf of Volkswagen, here with Susan Smith and Michael
`Turner, Your Honor, and we're ready to proceed.
`THE COURT: Thank you, Mr. Dacus.
`MR. GARDNER: Good morning, Your Honor. Allen
`Gardner, and with me is Mr. Kumar Vinnakota, Mr. Sean Hsu,
`Mr. Glenn Janik, for Nissan, sir, we are ready. But I do want
`to add Mr. Jeff Patterson is our lead counsel, and I believe we
`notified the Court that he has pneumonia. Otherwise, he would
`be here, and I just wanted to advise the Court on that. And
`we're ready to proceed, sir.
`THE COURT: All right. Thank you, Mr. Gardner.
`MR. AKIN: Judge, Randy Akin for the Honda Defendants.
`This is Mr. Bob Kantner, Mr. Albert Liou, Mr. Jeff White,
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`Mr. Joe Beauchamp, and we're ready to proceed.
`THE COURT: All right. Thank you, Mr. Akin.
`MR. CRAFT: Your Honor, Brian Craft. I'm here with
`Paul Steadman and Matthew Satchwell, here on behalf of Hyundai
`and Kia. We're ready to proceed.
`THE COURT: Thank you, Mr. Craft.
`MR. HEARTFIELD: Good morning, Your Honor. Thad
`Heartfield on behalf of the Toyota Defendants. With me is Gil
`Gillam and Bill Mandir and John Rabena, Fadi Kiblawi, and Brian
`Shelton, and we are ready.
`THE COURT: Thank you, Mr. Heartfield.
`All right. As counsel are aware, we recently issued
`an order setting out the order in which the, I think, five
`matters that are separately on the trial docket in this group
`will be reached by the Court. These are all set on the
`February 6th trial docket at this time. There are other cases
`on that docket, as well, that are also going through the
`pre-trial process.
`I have talked with Judge Gilstrap about the order of
`trials between this group and the others that are on the
`docket. He's in the process of preparing for a trial in Tyler
`that starts next week. It should finish next week, as well.
`And after that case has been resolved, we should be getting
`into a position to be able to give counsel more precise
`indications about where all of the cases will stand with
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`respect to each other. But at this point, these matters are
`all on the February 6th trial docket.
`I know there are a number of pending motions in this
`matter, and I think that counsel have indicated that argument
`on the motions would be a good use of time today. So I believe
`that's where the intent is for us to start.
`If anybody wants to be heard on something else before
`we take up the pending motions, tell me about it.
`Mr. Dacus?
`MR. DACUS: Yes, Your Honor. I need to raise one
`issue with the Court.
`THE COURT: All right.
`MR. DACUS: Not because we're expecting any action
`today, Your Honor, but I want to put the Court on notice. We
`will be filing a written motion to this effect, but Volkswagen
`will need to file a motion for continuance of that February 6th
`setting.
`
`Mike Lennon, who is the lead attorney for Volkswagen,
`had an accident Sunday evening. I won't go into the -- the
`bitter details, but essentially his radiator in his home blew
`up on him, and he has third degree burns today. He's, in fact,
`in a burn unit today. He had every expectation of coming to
`the pre-trial today, but obviously was not going to make it.
`We do know that he's going to require skin graphs, and as the
`Court probably well knows from its time in practice, that's
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`going to require significant treatment and wound treatment
`significantly into February at a minimum.
`So we will file a written motion to that effect. But
`I wanted to raise it for the Court today. And I raised it with
`the Plaintiffs prior to -- prior to the hearing today, Your
`Honor.
`
`THE COURT: I'm very sorry to hear that, but I
`understand that. And I will await your motion. And,
`obviously, that may have some effect upon the ordering of these
`matters.
`
`MR. DACUS: Thank you, Your Honor.
`THE COURT: Mr. Craft.
`MR. CRAFT: Your Honor, if I may, I also want to raise
`an issue with the Court. Again, I don't expect a ruling, but
`we do want to let the Court know that the principal expert for
`Hyundai and Kia, Dr. Chris Kyriakakis, has an irreconcilable
`conflict on the latter part of the week of February the 6th
`that requires him to be in LA on Thursday.
`We've discussed this with the Plaintiff's counsel.
`We'd be happy to go the following weeks after that, or, if
`necessary, and Plaintiffs would agree, we would content to this
`Court as long as we could schedule the trial beyond the week of
`February 6th. So we, too, will be probably placing a written
`motion on file to that effect, but I did want to raise that
`with the Court and make the Court aware.
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`THE COURT: All right. I think that we had been
`advised of that conflict, but I -- it would be helpful to have
`that in the record, as well.
`MR. CRAFT: Thank you, Your Honor.
`THE COURT: And, Mr. Craft, just for the record,
`what -- which expert is that that we're talking about?
`MR. CRAFT: Dr. Chris Kyriakakis. I might be
`butchering his name, but...
`THE COURT: All right. I think I've got a phonetic
`spelling of that.
`Mr. Akin?
`MR. AKIN: Yes, sir. Your Honor, I had emailed
`Ms. Andrews to pass on to you that we have a similar problem
`with Dr. Matthew Shoemake, who is scheduled the week of
`February 6th to testify in an ITC hearing in Washington, D.C.,
`and we brought that to the Court's attention, to co-defense
`counsel, and to Mr. Fabricant with the Plaintiff.
`THE COURT: Maybe that is the conflict I was thinking
`about, but tell -- tell me again the name of the expert
`you're --
`
`MR. AKIN: It's Dr. Matthew Shoemake, and it's just
`that one week.
`THE COURT: All right. Thank you, Mr. Akin.
`MR. AKIN: Thank you.
`THE COURT: All right. Have counsel conferred about
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`what order of these motions they think would be most
`appropriate in terms of argument?
`MR. FABRICANT: No, Your Honor. We just assumed we
`would take them in the order that Your Honor laid out, by
`numeral, I guess, by docket reference number, but in any order
`that the Court would choose would be fine with us.
`THE COURT: I'll -- we can proceed in that fashion. I
`didn't know if you thought it would be helpful to take them in
`any groups or other order, but we can just take them up in the
`manner they're filed, so that's fine.
`Which motion does that have us starting with here?
`MR. STEADMAN: Your Honor, Defendants would prefer to
`start with the motion for summary judgment -- partial summary
`judgment on failure to mark under the patent number on the
`licensed product.
`THE COURT: All right. And do you happen to have the
`docket number of that motion for ease of reference?
`MR. STEADMAN: My copy does not have the docket
`number. 201, I'm advised by my colleagues.
`THE COURT: All right.
`MR. STEADMAN: How do I switch to the ELMO? Thank
`
`you.
`
`THE COURT: Whenever you're ready.
`MR. STEADMAN: Your Honor, I am Paul Steadman. I'm
`counsel for Hyundai and Kia, but I speak for all the Defendants
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`this morning, I believe, except -- except Volkswagen.
`Your Honor, this motion seeks to have partial summary
`judgment in order to prevent evidence and testimony that would
`come in as to any damages before the complaint was filed as to
`the four -- the four parties that filed the motion. And the
`basis of the motion is one that you've seen before in other
`cases because I've read the orders on them. It is a failure to
`mark the patent number on licensed products.
`At the conclusion of litigation between Marlowe Patent
`Holdings, which is the former owner of the patents in question,
`and two different parties, one called AAMP and the other being
`Ford Motor Company, the Plaintiff settled, and in the one case
`for AAMP, issued a license, and for Ford, issued a covenant not
`to sue. And neither one of those agreements contains any
`marking requirement.
`And I can put them on the ELMO, but Exhibit A to our
`motion is a request for admission in which Plaintiff admits
`that there was no marking requirement in those agreements.
`The Ford agreement, as we briefed in our brief, is the
`equivalent of and operates as a license agreement under
`TransCore and the subsequent progeny from that case. And so
`these are license agreements in effect with no marking
`requirement.
`The complaint against AAMP and the complaint against
`Ford laid out very specific accused products in those
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`litigations, and we've included the complaints, but we've also
`included the infringement contentions that Marlowe Patent
`Holdings' counsel filed in those cases and showing exactly how,
`by their own admission, those accused products met the patent
`claims.
`
`As Exhibit S to our reply brief, we've also included a
`letter brief to the Court wherein they argued in discovery that
`the letter briefs were -- not the letter briefs, the
`contentions were sufficient in order to show infringement and
`met all of the rules. And there was a hearing the day after
`that -- that letter brief was filed and the contentions were
`not -- were not knocked out.
`So, in summary, we have two license agreements,
`neither one of which requires any marking. We have undisputed
`facts that there were products that met those claims, at least
`according to Plaintiff, and their admission that they met the
`claims, and we also offered testimony from the -- the
`representative of AAMP that there was no marking that ever
`occurred on AAMP's behalf.
`Blitzsafe responds to our motion and says that they
`will contest at trial whether the Ford products and whether the
`AAM -- AAMP products actually met the limitations of the
`claims, and so, therefore, summary judgment should be denied.
`There are at least three problems with this. One
`problem is that their briefs do not contain any evidence. They
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`were -- they had to come forward with evidence in Rule 56
`process, but they come forward with no evidence or admissible
`evidence that would actually create an admission of fact -- a
`dispute -- a genuine dispute of fact on that issue.
`All they came forward with were the non-infringement
`contentions of AAMP and Ford. But, of course, those are not
`admissible in our case. There's no -- those parties are not in
`our case. They are contrary to their admission -- their own
`admissions in that case. They are not mentioned anywhere in
`Plaintiff's expert reports. Plaintiff's experts make no -- no
`attempt to show that these products are outside the claims of
`their own patents.
`So that's the first problem is they came forward with
`no evidence.
`The second problem, as I already alluded to, is that
`argument is contrary to the admission by the party opponent
`that those products actually meet the claims.
`And the third problem is that because they actually
`put that position forward in litigation and the Judge
`actually -- they actually made that argument to the Judge that
`their infringement contentions were sufficient to show
`infringement and those infringement contentions were never
`stricken, there is at least a good argument that there is
`judicial estoppel, and not only do we have an admission of a
`party opponent, but there is a complete estoppel of their
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`ability to argue otherwise.
`Their other argument is that the burden is on
`Defendants to show that they have not met the marking
`requirement, and that is contrary to quite a long string of
`cases, both from the Federal Circuit and from this Court, that
`make it very clear, in particular, when there's a good faith
`showing that there's a license agreement and no marking or that
`there's products made and no marking, that the burden is
`actually on the Plaintiff who is seeking damages to show that
`the marking requirement has been met in order to get pre-suit
`damages.
`
`THE COURT: What is your best case on -- on the
`
`burden?
`
`MR. STEADMAN: The best case on the burden, the
`clearest statement of it by the Federal Circuit, I believe, is
`the Nike, Inc., versus Wal-Mart Stores case, 138 F.3d 1437. It
`is also very clearly stated in the Maxwell v. Baker case, 86
`F.3d 1098. Both of those are Federal Circuit cases.
`I believe also of great interest would be the Soverain
`Software case, which we refer to repeatedly in our briefing and
`that essentially has the same holding, but it is a district
`court case, but it's very clear what's going on here.
`THE COURT: And what's the citation of the Nike case?
`MR. STEADMAN: Nike is 138 F.3d 1437, Federal Circuit
`
`2008.
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`THE COURT: All right. Thank you.
`MR. STEADMAN: On the burden issue, before I sit down,
`Plaintiff cites three cases, and we discuss them at length in
`our reply on Page 2. Two of those cases are unpublished
`Northern District of California cases, the Oracle case and the
`Unova case. The Laitram case, which they cite, is an Eastern
`District of Louisiana case. So they cite no authority at the
`Federal Circuit level. And that Laitram case actually comes
`before the Nike case, which is a later pronouncement by a
`higher Court.
`So all three of those cases actually have very narrow
`holdings and I think can be distinguished, but I would say none
`of them are actually good law in light of the Federal Circuit
`case.
`
`The Laitram case is actually instructive. In that
`case, the Defendant -- the Defendants tried to create a lack of
`marking through essentially statements of their own principal
`just saying that he thought that the -- that the Plaintiff's
`products certainly would meet the -- the claims. And the Judge
`said that was not enough. There was no comparison of the
`claims, and that wasn't enough to make their showing.
`In this case, we have Plaintiff's own admission with
`claim charts showing exactly how they contended, and as a
`matter of their own position, that the products in question met
`the claims.
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`THE COURT: All right.
`MR. STEADMAN: Thank you, Your Honor.
`THE COURT: Thank you, Mr. Steadman.
`MR. LAMBRIANAKOS: Good morning, Your Honor. Peter
`Lambrianakos of Brown Rudnick for the Plaintiff.
`THE COURT: Good morning, Mr. Lambrianakos.
`MR. LAMBRIANAKOS: Your Honor, the -- the main issue
`before the Court on this motion is whether or not there were
`patented products which were required to be marked in the first
`instance. Section 287(a) requires that the Defendants -- that
`the patentholder mark products which are patented articles in
`order to be able to recover past damages. So the question is
`was that obligation ever triggered? Were any patented articles
`ever sold?
`Now, we believe there's plenty of evidence in the
`record here that there were no patented articles sold by either
`Ford or AAMP. The licenses that the -- the covenant not to sue
`by Ford indicated, first of all, that there were no products
`which either party contended in this agreement were licensed
`under the agreement. In fact, it's not a license at all.
`Ford denied that any products that it sold infringed,
`and Ford actually indicated that intended under this agreement
`not to be sued -- and not -- and it does not indicate that it
`intended to license the patent to cover any products that were
`contended to be licensed.
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`The case law that's been cited by the -- by the
`Defendants in this case does not involve a situation of
`marking. Those cases indicate that a covenant not to sue is
`indistinguishable from a license in the context of patent
`exhaustion. This is a completely different circumstance
`because the issue in a license is that the products -- the
`parties come to a meeting of the minds that there are products
`which practice the patent, and, therefore, if that meeting of
`the minds take place, the parties must then ensure that there
`is marking.
`There's also evidence that the AAMP -- the AAMP
`agreement is not a license that indicates that there are any
`licensed products or that there are any patented articles that
`needed to be -- to be marked.
`This indicates only that AAMP obtained a license to
`the patent in general, and then the AAMP agreement continues to
`say that the agreement is not an admission regarding any fact,
`which would include, of course, that any product sold by AAMP
`was, in fact, patented.
`So the Court would have before it and a jury would
`have before it evidence that -- which would -- which could come
`in through Mr. Marlowe that the predecessor company, Marlowe
`Patent Holdings, which is obviously not the Plaintiff in this
`case, was unable to prove infringement by either Ford or AAMP,
`never proved infringement. There were never any expert reports
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`that were served by his attorneys that indicated that there was
`infringement by AAMP or Ford. Of course, that these agreements
`did not license any specific product that were covered by the
`'786 patent. That Ford, as we saw here, denied infringement in
`its settlement agreement, which is not a license. That Ford
`entered a covenant not to sue for zero dollars, which would
`indicate that Ford did not obtain anything of value in the
`agreement. And that AAMP's former executive who is -- who
`Plaintiff brought up here never testified at his deposition
`that any of his products practiced the '786 patent.
`In fact, he was specifically asked by counsel for
`Plaintiff whether any of his products were covered by the '786
`patent or covered by the license, and he would not answer the
`question on the -- on the instruction of his attorney.
`So with all of this evidence before a jury, a jury
`could reasonably conclude that these -- that the '786 patent is
`not practiced by any of the products that the -- that the
`Defendants are identifying here.
`THE COURT: What evidence is there that the -- that
`AAMP did not have infringing products? I understand what
`you've said about the Ford covenant denying it. Is there
`anything comparable coming from AAMP?
`MR. LAMBRIANAKOS: Well, from AAMP, we have this
`agreement, which indicates only that it was licensing the
`patent, not that any of the products that it was licensing --
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`any of the products that it sold were licensed under that
`patent.
`
`Typically, you would expect in a license agreement
`that when a party licenses a patent in order to -- to sell
`certain products, that those products are identified, and
`there's compensation set forth with respect to those products.
`In this case, it was a settlement agreement which
`essentially ended the litigation and which AAMP explicitly
`stated that this -- this -- that this agreement is not
`admission of liability or of any fact. Of course, it was sued
`for patent infringement. And so it's clear that they were not
`admitting that any of their products were infringing.
`THE COURT: So this one is silent, in effect, on
`whether or not there are any infringing products?
`MR. LAMBRIANAKOS: It doesn't say one way or the
`other, that's correct.
`THE COURT: All right.
`MR. LAMBRIANAKOS: But it implies through this
`admission -- this no admission that it's clearly not indicating
`there are any products that practice --
`THE COURT: So what do you say about your infringement
`contentions?
`MR. LAMBRIANAKOS: Well, we did -- patent -- Marlowe
`Patent Holdings did serve infringement contention, there's no
`question. And Ford also served non-infringement contentions.
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`And so there is a dispute clearly regarding whether there is
`infringement. And so when weighing the evidence that's before
`the Court, there certainly isn't a lack of evidence on
`Plaintiff's side to counter the evidence that's been provided
`by Defendants.
`AAMP did not serve non-infringement contentions as far
`as we can tell, but AAMP settled very early in its case. And
`it may be that those contentions were not due. In any event,
`it denied liability in its answer and settled the case without
`admitting any infringement or identifying any products.
`THE COURT: Now, the Defendant contends that Ford's
`infringement contentions would not be appropriate summary
`judgment evidence. What -- what do you say to that?
`MR. LAMBRIANAKOS: Well, we -- we would agree that
`that -- that that document itself may not be admissible, but we
`believe that in -- in the summary judgment context, where it's
`the Defendant -- where it's the Defendant's requirement to show
`that there is no evidence supporting the Plaintiff's position,
`that even if those non-infringement contentions couldn't come
`in, that the -- the Ford agreements and the other evidence that
`would come in through testimony regarding the fact that Ford
`contested infringement would -- and -- and that Plaintiff and
`Marlowe Patent Holdings could not prove infringement and did
`not have an expert report that detailed infringement would be
`sufficient for a jury to decide in Plaintiff's favor.
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`THE COURT: Is there anything in the summary judgment
`record, the record of this motion, that supports that there
`would be testimony about Ford's position at trial? Are there
`affidavits or declarations or deposition testimony from your
`side about that?
`MR. LAMBRIANAKOS: There is deposition testimony, Your
`Honor. I believe that Mr. Marlowe testified regarding his --
`his counsel's inability to prosecute the Ford case. He
`testified that he was unable to serve an expert report in the
`case that would indicate infringement, and that was the reason
`why his case was -- he had to dismiss his own case and take a
`zero dollar covenant not to sue. So that evidence is in the
`record, and he will be able to testify as to that.
`THE COURT: All right.
`MR. LAMBRIANAKOS: I would like to just -- to just
`address a couple of other issues of law that were brought up
`here.
`
`The Court asked a question about whether there was any
`Federal Circuit case law or other controlling case law on this
`issue. It's -- it's important that we -- that we realize that
`there are two separate issues.
`The first issue is whose burden of proof it is to --
`to demonstrate a compliance with the obligation to mark. And I
`believe that the cases that were cited by Defendants here
`indicate that that is the patentholder's duty.
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`But the second and more important question is whose
`burden of proof is it to determine or to show whether an
`obligation to mark exists -- in other words, whether there are
`patented articles. And in that instance, I do not believe that
`there is any controlling Federal Circuit case law on the issue.
`The reason that we cited some other cases from
`different jurisdictions is because that issue is an open issue.
`There is no Federal Circuit law that controls. There are some
`cases that say that when you're dealing with a licensee of a
`patent owner, there is no -- it is no easier for the patent
`owner to prove infringement of those -- of the -- of the
`patented -- supposedly patented articles being sold by its
`licensee than it would be by the Defendant who would like to
`prove that there is no -- that there is no compliance with the
`obligation to mark.
`And so those cases say that if a Defendant wants to
`bring up a failure to mark and it contends that there are
`patented articles that triggered it, it is the Defendant's
`burden of proof to show that. And we've -- we've cited some
`cases in our brief on that point.
`Now, there are other cases that come out differently,
`as well. There has -- there are cases that require some
`showing and then a shifting of the burden of proof, for
`example.
`
`But in any event, the Court here is not constrained as
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`far, as we're aware, by any Federal Circuit case law on the
`issue of -- of whether the -- whether a patented article exists
`that triggers the obligation to mark under 287.
`We'll note, too, for the -- for the record that the
`Ford covenant not to sue was last signed by a -- by a party in
`that case in the middle of June of 2015. And the -- and this
`case was filed about one month later. And so as a practical
`matter, we're looking at an agreement that came into existence
`approximately one month before this -- this case was filed,
`and, therefore, that the Defendants had notice of the patent --
`actual notice.
`And so as a practical matter, even if there were a
`marking obligation in the agreement and -- and there was an
`attempt by the part -- by the -- by Ford to mark, it's unclear
`whether that would even have been possible.
`Similarly, under AAMP, the AAMP agreement was signed
`back in 2011, shortly after -- within, I believe, one year of
`the filing of the -- of the earlier litigation. And we have
`damages that are accruing back to 2009 here. So we're talking
`about a -- just a smaller window of total products being sold.
`Finally, there's some talk about the issue of -- of
`whether there's been an admission. There, of course, has not
`been an admission. Marlowe Patent Holdings, which is a prior
`company, granted it was commonly owned, or at least it was
`owned by Mr. Marlowe, but a prior company alleged infringement,
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`provided infringement contentions. There's no estoppel.
`There's been no case law cited and no argument that is correct
`that indicates that merely serving those infringement
`contentions would -- is sufficient to create judicial estoppel.
`There would have to be a decision on the merits of the case
`concerning that -- concerning that, and that did not take
`place.
`
`THE COURT: Well, there would at least have to be some
`reliance by the Court upon the position taken. And I
`understood the argument to be that there was a motion to strike
`the contentions, and that was ruled upon in reliance on the
`contentions? Is that -- what is your position on that?
`MR. LAMBRIANAKOS: My -- my position is even assuming
`that that's the case, judicial estoppel requires more. It
`requires a reliance on the statement that leads to a decision
`on the merits in the case, infringement, non-infringement, the
`issues of the case, not an interlocutory order regarding
`whether there was sufficient infringement contentions.
`THE COURT: Do you have a case on that that you're --
`MR. LAMBRIANAKOS: I do not have one at my disposal.
`THE COURT: All right.
`MR. LAMBRIANAKOS: And, secondly, of course, it's a
`different party. All right. We're talking about another
`entity. Blitzsafe Texas did not make the allegations in the
`prior case.
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`And, thirdly, but most importantly, even if it's true
`that there is -- there was a statement by the prior company
`that there was infringement, the statute doesn't require that
`there be a marking of accused products, that there be a marking
`of products which a party has contended infringe. It requires
`that they be patented products.
`An accusation is not sufficient to create a patented
`product. And so merely -- merely having made the allegation in
`the past isn't sufficient to trigger the marking requirement.
`And they've presented no case law for the proposition that an
`accusation in and of itself by a different party in a prior
`case gives rise to a marking obligation.
`Unless there are any questions, I think I'm done.
`THE COURT: All right. Thank you, Mr. Lambrianakos.
`MR. LAMBRIANAKOS: Thank you.
`MR. STEADMAN: Briefly, Your Honor.
`First of all, the argument that Blitzsafe Texas is a
`different entity than Marlowe -- than Marlowe Patent Holdings
`is a new argument that's not brought up anywhere in their
`briefs, including in their sur-reply brief. So that has been
`waived, and they are clearly the successor in interest on this
`patent to Blitzsafe Texas. And the idea that they're not bound
`by Marlowe Patent Holdings' statements, I think, is a dubious
`proposition.
`Second, there is absolutely evidence that the -- that
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`AAMP's continued to sell exactly the products that were accused
`of infringement. There's no question about those sales.
`And this is Exhibit Q to our original -- our original
`motion. And this was produced by AAMP and used at the
`deposition of its representative. And these are the thousands
`of products that they sold after they settled and took a
`license with Blitzsafe. These are the exact accused products
`in that case.
`And then lastly, I disagree with counsel's idea that
`there has to
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