our final case is morning is making versus  firm could have and should have drawn a patent that would have provided such meaningful protection the district court dismissed the case on summary judgment plaintive had proposed to prove his case by providing hypothetical patent claims distinguishing those players from the prior or the district court held that because plaintiffs expert did not opine that those hypothetical claims would not be subject to rejection by the patent and trademark office on grounds of obviousness that the necessary requirements because the subject matter of the underlying case was deemed to be patent law and there seems to be a broad consensus that those matters fall within the jurisdiction of the strict court this case is filed by question is dealing with claims well yes and no i believe although we're focused today in our discussion on the davis case which involved one actual patent filing albeit one that was permitted to expire and a couple of was deadlines i'm not able to cite to the court case per se at this moment since we were really focused on the jurisdictional issue but i do believe that you have dealt with misstep lying cases and missed deadlines cases uniformly decided in favor of federal jurisdiction over the resistance of plaintiffs who have it tend to prefer state court as the point of in this instance initially file in state court i hadn't appreciated the court considered jurisdictional issue to be alive at this point judgment purposes to provide guidance to the bar and to the district court to enable it to know what the necessary things that are required to be included in a situation like this are and what the court said there was that you have to within a case factoring require you to establish that that fight for the negligence a patent would have issues that would cover these claims the issue well i think that when we're using  different claims in that real life back and forth those claims were survived don't you have to at least address the arc that the p t o cited as a basis for rejection your honor it's addressed in of the thirty seven page supplemental report in which the sixteen par re ferences are all distinguished by the from the hypothetical cla now i have a couple of other things to say about what the obviousness proves the issue would wouldn't tell misses first since we're using case within a case i posit to the court the following we have an actual prosecution history here  this is not a misstep one case we know what happened and we know that the examiner included obviousness as a bar to the issuance of the patent up to the point when she actually handled the device is not the question for a case within a case purposes whether the wording of the claim the plate advances here or the hypothetical claim if included in the initial application would have given rise to a different result that when the examiner actually handled the device she would have because of the different claims wasn't there i mean that was something that plaintive testified to play the status affidavit testified to his deposition and was included in the factual mil you is that something that mr gearhart was in a position as an expert in pat drafting to no i don't think that anything other than common sense is an unearthly move experience tells us that if the patent examiner was sufficiently impressed with the device under the circumstances here presented that she probably would have been sufficiently exhibiting a little misunderstanding as to how the prosecution process works if there had been a different claim of course that the examiner would have had to compare that new language to each of the pieces of prior art that would have had to have been some examination of the differences and whether or not there was any motivation to combine various references to reach that conclusion it would have had to been findings about the level of skill in the art and the ability of want to skill in the art for see the combinations of prior art that may have produced this new issue that issue was never presented to the examiner so we do have to have some kind of insight with someone who has knowledge of the prior art and the level of skill in the art how it would have been a motivation to either reach or not reach the claimed invention by the way all of that's a course in credibly intense patent law but there's nothing in the record that shows us that this kind of analysis occurred it any point well your honor we often we only hear that well that wasn't in the prior art it's anticipation that by the way takes a little bit more analysis than we receive but ok and what you said i don't disagree with it's fairness and your analysis is certainly cogent but there are a lot of different ways in which the procedural posture of this case might be viewed now we here on summary judgment the question that's presented essentially is what did we need to do to get past that initial war and i suggest to the court that don't you have to present some evidence on obviousness to get what i that are is not issue of fact if you did present any evidence ok i have a lot to say about that running i think the other to just say a couple of words about the doctrine of the equivalence as a procedural matter and whether or not that model is suitable one to employ in connection with the case as to why the hypothetical claim would not be subject to various bars including obviousness and is required to respond to the challenger and i submit to the court that in the context of the hypothetical patents that model is validity analysis which is an entirely different set of law well it would be the it's i don't think that's entirely correct because it would be the validity analysis of the hypothetical claim on top of the a of claims so you're really going through a somewhat similar thing in that respect but to address what you just said about there has to be something could we have gotten past that if we were to say and it's our opinion that there wouldn't be an obvious and spar obviously that wouldn't be quite enough if we were to take a couple of combinations of the sixteen current references and say if we can pint a one and b two or c three and before and those would not be subject obvious so it's ok is there a limit to the point at which we could say in the first instance without having been told by the fed that just as the applicant for the patents told people by p t o this is your obvious is relatively uncharted territory here i submit we don't have a lot to work with by way of pirate law i'll confess that the analysis distributor analysis is something that we were not aware of at the time that we were presenting this but i submit also that all of this is important in considering what the allocation of burden is another point that i think needs to be referenced here when we're talking about this particular issue is that the district court if you read its opinion it seems as though it's not until about page twelve or thirteen that the judge even notices that the supplemental report is there and that there has been a sufficient discussion of the distinction of the prior art in the opinion there is a concession that there has been some discussion there seems to have not been a it focus on the part of the district court with respect to what the appropriate procedural mechanism to deal with the situation is so to state it simply we think that  speaks sufficiently well to the expert proof requirements we think the case within a case requires that in the first instance the point of only be required to do with the applicant before p t o would do for summary judgment purposes at least that the at the at the first row plaintive in the first instance that you've got to prove the negative of non obviousness as opposed to demonstrating that a claim of obviousness can be defeated which is you have to at least raise the question of material we have a situation here with the way practice is conducted in district court where play is not a deadline by which it's got smith's expert proofs it's cut off at that point the defendant then has a period of time there is not under the ordinary case management  a period during which the plaintiff now has a rebuttal in the ordinary case maybe that should be the case here in order to facilitate that my expert proof of might my provisional expert proof was defined and limited at the time that my discovery period concluded and my expert reports were finally submitted i did have the opportunity to say ok they've shown me their obviousness now i'll have my expert opine on that so we're called upon to do in the setting is anticipate the real extra two minutes if he needs to use it he will have an equal time i think it's really proceed they please the court the underlying patent examination was characterized by the kinds of issues and tensions and dynamics that you would expect to see what she did and in fairness the record shows that givens is submitted two years before that in and person interviewed a c i p application that again revamped and narrowed the claims for interview that that interview was requested by givens because of the two years of inaction on what they thought was a pretty good looking application giving given the narrowness of the c ip and the additional materials addressing the secondary considerations of is and did did you client ever explain to the inventor that they were drafting the patents so narrowly that it didn't even cover the prototype i don't know what they explained to him your order wasn't an issue in the case  picked up the drafting from that point on but the draft of the drafting was done by someone who never met with the client and who never even saw the prototype cracked i don't know whether he saw the prototype he had the making drawings i believe he had the initial issue for any patent attorney how does a doctor tell someone with a terminal illness look i can treat you we may extend your life but you're going to die from this disease and you're going to die from this disease and six to eight months it's a difficult discussion and it's a it's a finesse that rule i think mr making one of the patent was adamant about that and indeed went out and made a fair deal money with the three sixty three patent kind of following on what judge o'malley said and patent law that when you put in a numerical equation this is going to be three times the length of that that that sort of  this was it is them alone to justify kind of a malpractise i've no one has said that it does and there's no evidence in this case that that is the case of this is a pair of pliers or that i think  this and shown it to fifty of my patent law friends forty five of them would say never do that it may not have been the a preferable approach with most inventions but i said this is a pair of pliers it had to pivot points the prior art is full of of that type of invention and the only way to draft around it is to go to those kinds of ratios and in fact objection was drawn in the initial rounds that this was simply the point of sales there's no evidence for the play if they weren't practicing the prior art there's no evidence from the plaintiff that your heart's claims cover the general tool that is an undisputed fact it's in our statement see an issue of fact even though it's not been presented to us no there is no issue of fact and there cannot be an issue of fact because of the opinions that mr gearhart gave and the testimony that he gave he said i did not consider and raise obvious this in that we go into another round of it i don't think that's the way to go there has to be a line drawn at some point procedurally rule twenty six you have to have some evidence of motivation to combine some evidence of skill in the ar articulated reasoning with some rational under paid in underpinning to support the legal conclusion of obviously this is the point that i seek to emphasize to say that that criterion is not met is to prove a negative which simply is not