patent action based on the one on one should have been raised in a prior trademark action involving the parts specifically relying on eight circuit law the district court almost lawsuits arose from the same nucleus of operative acts namely floors offering for sale of its f b under carriage technology in the united states this was clearly erroneous both factually and legally as a conclusion by the district court and we believe it in large measure that was due to the failed use of eight circuit precedent to any difference here whether we look at this case through the lens of eight circuit law or federal circuit one it doesn't present of the standard this is very near identical the substantive law of the federal circuit however does view the facts of this case through a different lens the issue in the prior case that the court was dealing drawing a conclusion that superior should have brought an actual prepared in prison had to do largely with the advertising with cereals that were an issue in that trademark action and that was the only adequate evidence to use or making the claims invention it is evidence that there that there may be some use though we have no information about that evidence we have no information of any for the defendant it was only on that web site for a very short amount of time it disappeared for as far as far as we were concerned for these two years and in two thousand i am then superior began to learn that the same types of advertising materials were being distributed in the us that was all the information that we had we had no other knowledge or information of any offers for sale or any sales we specifically  d in their trademark action that we had no knowledge of any commercial activity in the united states the sole focus was to eliminate the market impression that the two companies had somehow become affiliated with respect and it's pretty hard to drop that hammer if we're basing it on a speculation that someone maybe could have raised an argument where does that come from where that speculation y that we always say in rez judicata generally that's something that has been litigated and completely disposed of and you don't get to come back and relive again it's something that's  argued completely and now this is being done because not because you litigated it because you might have a right to court error in in concluding that we should have brought the  fact superior was not a position of any facts and the record that was before the court did not support that there was any basis for asserted it penner principle action that could have was was an issue before us of one or trademark infringement we didn't have information before us we were on that we were never trying to learn we could have waited to try to learn that information in the meantime the mark of confusion was going be intended to address the wrong that was before us with the facts that were before if subsequent facts developed that informed us so be it but at the time the only facts that were before us were the facts of an advertisement and a computer that that was causing in the marketplace we were able to and did successfully conclude that trademark infringement action was a contentious point so it was it was a the only three one patent issue and if i understand it correctly and please tell me if i'm wrong the district court said the problem with your town relating to three words that was that you base your contention of infringement upon admissions and they in the trademark suit those admissions of the prior to and related to a period prior to the issue of the two three one shore and asked certain what are you in fact are you doing in the us the intent there was to eliminate the use of our mark in their advertising but their intent was to continue to advertise it we the six case it was a rule eleven case but the facts otherwise are fairly similar the outcome was fairest should be similar that when the plaintiff asked the defendant what are you doing and the defendant the court chris holland from the craig keller law firm in san francisco this case very simply is about claims splitting superior wants to be able to split off a patent infringement of up residence judicata meaning that they have simply on that advertisement very clearly on or based on what they decided to put in that pleading and what they're now taking the position is we decided that we're only going to look at that the advertising itself we being superior they certainly were aware of what those products were these are not this is not a roach situation is not a situation where the n b a is out there with an air drug where we have a method patent but how could they have brought a patent case based on the second the knowledge that they had of their own intellectual property portfolio as well as the publicly available knowledge about the products in question because i was saying this is not a situation where the method patent or something being done in secret where they need to make these inquiries like they're going with the trademark change they're dealing with s b the trademark not whether there are technical structural that infringe upon i understood your honor but that f b that they're talking about if placed on a one hundred fifty to one hundred seventy foot long crane or conveyor system to say that well they did see very clearly they have a trademark problem but the forest right in front of them was not available to them i don't believe the proper analysis because there is a gate that for us i believe they did because they purposely put in the nine four seven pat to beef up their allegation that they were the superior user and the senior user of f b i mark that actually they were saying this is our trademark where did they ever say you're making using selling evidence of their prior entitlement to the trademark not because you were infringing party of the patent claims well again that was their voluntary election out of the reason circuit that is held that we're going to drop the hammer of rez judicata on someone before they actually litigated and had an issue decided against them in fact the additional requirement is that the issue of decided was necessary to the holding of the prior case now was there a necessary holding of patent infringement involved in the trademark case no there was not your honor the the and rather we get to wouldn't i except that this cuts them off without any chance to ever return well talk again i perhaps it goes back to whether the eight circuit law applies or not there was was cited by the court in terms of the circuit law about what could have litigated and i think that in terms of the court's analysis certainly i would think the court would agree that if one brings a claim for breach of contract one cannot then say i've had that claim decided i've decided to dismiss it voluntarily and now because they're sitting there with goods they have brought a patent case based on that advertisement they couldn't have on the advertisement papers of what they had to engage in discovery to discern whether your product was identical to the claimed invention they never did that that actually your honor they had to prior to even filing a case and prior to filing a case if the court remains now they need to show that they have actually investigated and made the determination the court just spoke of that have they done and they didn't know in advance that i don't believe they still have your honor and as of how did they litigate remember they have to actually litigated then it was decided against them because and therefore we're not going to let them live again and again i apologize because admitted they haven't litigated it so how can they be foreclosed from their first chance to litigate this issue patent action against you for infringement of a pet they did not know health and they'd be clear closed from doing it for a first time because they were in possession of sufficient information to make that assertion that there's not going to argue to the district court that's for that day and you'll understand the nature of the air what the the again that the case all they're relying upon to make the same which are first of all there is no case up there opinion and that was then held to be sufficient to go forward and i think there's no need for them to do a pre filing investigation of patent infringement where they make a before they intend to make a patent claim is the they're just on a trademark case they're trying to show they're entitled to the mark s being they're not trying to show that your extended conveyor belt is copying their again trademark but they didn't know me but we on this technology which has sure's that we are so on the market associated with that's a little different from saying you infringe our technology as it is except they didn't say that they said simply they own the patent they didn't actually make the connection that the court just made in terms of this is evidence that we own the trademark in fact they said back then and they are saying still in the briefing that the superior user actually was my client in october two thousand and seven and they were very concerned about a finding that would result in that because it would invalidate the pending application they had for their f b i mark they couldn't come in and hav mark that's exactly what they were doing and my point is that you ought not to be able to come in and have it both ways which is what they're trying to do they're trying to say i get priority over you because i have this patent application pending and yet at the same time i have no consequences for waving that around and trying to mark they think well you know that there we clearly think they're infringing our mark but we're not sure if they are doing anything with respect to an infringement so we're just going to go in the market right to spend the money and we'll just see they are wrongfully infringing some or more of my patent or trademark rights i though the damage that's occurring is going to be occurring with respect to the same sales the same products all the same evidence it's going to be involved and how much money they're going to  onto my property and i want to sue them for trespass i can't have that lawsuit go through the decision to make a consent judgment resolve it let that person think ok i'm done now i'm going to proceed with my life and then say know there were two of the patent owner sued only on one of the models knowing of the other but didn't sue on the other they were free then later to sue on the other model because that issue is not an adjudicator it's name actually it's a even more difficult case than this one because the first suit was a patent action the first action and this one is a trademark set of conduct a different design of the court just mentioned an axiom that was at issue in the second case that's not the case here since two thousand and seven since the very first advertisement the precise same structure the precise same material  know what your accused device does or how it does it we've never gotten to that issue have we or when it was first devised or when it was first of all we don't know any of that or not based on the record on are absolutely correct