confidential which seems to be argument by the expert witnesses as to what the situation is here and work having difficulty in see how that could possibly be appropriately marked as confidential and would you please they please the court the recapture rule should not apply to an invention disclosed but not claimed in the original patent here's the district court legally erred in using the recapture will to deny antares motion for preliminary injunction environment and invention the pushbutton environments of the automated injector and for that reason the clear injunction should have been granted because the recapture role should not have been addressed in the first book this was an overlooked aspect this was a separate invention and the three points that i'd like to discuss today are once the case law with most stuff is not in human to the statutory rule in the policy behind surrender and how it relates here because there was no surrender of the subject matter later claimed and three to the extent the claim construction flynn court's decision and in the us in the stroke chemicals are you familiar with that case though your honor i'm not familiar with that would be happy to follow up on that well if it sets forth a standard for claiming a new invention we issued which seems to be fairly strict it's it's and this is the sites of the taste of three fifteen us six sixty eight in the slide which appears a page six seventy six and are are later cases in our court discussing what that means and raising the question of weather slight change in language in the fifty two statute made this test inapplicable but if that were the test that i just read to you would the specification in in here disclose the separate safety feature invention that you say exists yes your hon and the reason for that is because of the case law including the later following cases looking at in this court have looked at the object of intent so for the original patent tests have considered when the word intent is used the object of intent in other words going back to the written description type of analysis what you did yeah but what the test is how strict is the written description we're parmentier how clear does it have to be that the original specifications set forth a separate invention related to the safety features and looking at that specification it doesn't seem to be particularly clear that there is a separate safety feature invention identified and specifications suggested perhaps but industrial chemical doesn't that's not sufficient i think under the written description cases or i or that the disclosure need not be expressly set apart as here is a separate invention and then it is claimed as a separate invention under both the original patent and written descript n guidance of the court that as long as there is a disclosure that from which one of ordinary skill in the art can discern the invention and its parameters then that would be adequate to be separately claimed law i guess what i'm raising is whether that really is the right or you're right it doesn't have to be in the original coins but it does have to be in the specification and the industrial chemicals suggest that there's a stricter requirement here that goes beyond the  description required in other words you really have to be identifying a specific identifiable separate invention in the specification and i question whether that's the case and i do not believe that should be the way that the but there's nothing in that language just says that those safety features if your ears go inferring to apply to all injectors when the entire pen is directed to a jet injector you're agree that the examples are jet exit injector and there isn't such a disclaimer and for the work to the point of a person of ordinary skill in the art here we know from an expert when asked about those features that yes indeed there is an understanding that it could be used without limiting to the to  idea that's exactly what industrial chemical rejects saying that you can't bring in expert testimony to serve reinterpret the specifications that has to be clear what you're that you're really claiming something separate is just what you points right it doesn't expressly say that you can use these affirmatively with any kind of injector and the question is whether that was a requirement and i understand what your honor is reporting about the supreme court case and how the statute than applies in this court has included for example the lampy case that was recently decided where in the court found that even though the disclaimer the disclosure in the patent referred to one particular environment the claims could be broader so long as they were taught so i was referring to the is not it's not limited to it yet so the example that underlying it in the patent is a jet injector but that feature that safety feature is more universally applicable to any and that's what because because of these particular safety features really are completely independent of the performance the injection of performance that's represented either by the term jets or by the more specific limitations added during the initial prosecution  sure that's true if the unless there is a specific description of the overlooked aspect and here as i understand it you're not able to point to anything in the specification that identifies the safety features being significant apart from the situation where they're combined with gen sector right that's right it doesn't express we say that you can use it universally that in the question of whether it is required to say so universally or whether the independent of what kind of injector they're on because the features are separately described and described in a way that would function with any injector and that structure is there in a way that was claimed differently in the reissue patent and another example for showing why that was different at the prosecution history if they were limited to jet injectors then it would be very easy on a reissue to have either rejected the claim for it or more likely to see that it's covering the same subject matter in the word gens in there but here  separately distinguished on reissue the same prior art that it already distinguished in regional patent import of that being the jacks teachers which were more prominent throughout the specification were clean the originally and the overlooked aspect were the separate invention the push button with a lock that was generally overlooked and cleaned separately and reissued but had to distinguish again the same prior art showing that it was a distinct environment in the specification and described as such and that's where the alternatively language of that column twelve environment is important because it doesn't express we say i agree it doesn't express things that you can use it with any kind of injector but the teaching of that embodiment in the safety features context is that you can use it why would we look at that as as other  narrowing the scope and narrowing the safety features to just git jet injectors you're trying to expand the scope because you're saying that it's applicable and and you can do that but when you look at it the  so as a matter of clean construction there is the support for saying that if there is the president mentioned in that kind of language we're only the want to buy them and it can be limited to that inviting here the president invention is used in different ways throughout the patent so for example use all of those as the key distinguishing features over the prior art and in just the jet by itself that the patent office viewed as the distinguishing feature and there be no reason to add any of these other time or limitations because that just distinction had already been way that i think the one clear thing about it is that we haven't really made clear exactly what the status is of that how would it be possible under the fairly frequently repeated doctrine when there is an amendment likely amendments here add some very specific claim limitations about the actual opening and the particular mechanism of creating the force for the injection better than not in every issue claims and we say presumptively there's a surrender and then we specifically say that if you add other stuff if it's unrelated that doesn't say that it feels to me like you're saying something that is an overlooked aspect would be by definition unrelated and you want to turn that into a ground for saving the claim as opposed to avoiding the recapture and i like it explain how those two things surrendered has been given up and so the policy in the keep liking can you reckon from telling where that if there is an overlooked aspect that's different it doesn't require opening the recapture door if you will because those three steps of why when there's a surrender and that's why the fact that it's so common that you've got a claim on the original one word is either deleted or expanded the rest of the claim remain the same and in that context that's a recapture concern why doesn't why doesn't it make sense view all of this as in the following way it's your job before the actual issuance of the first patent to review the specification and figure out if there are overlooked aspects and i continuation application but if you don't and the thing issues then you are within the realm of recapture doctrine and what you very specifically added by amendment here to  focus not only on a performance feature that was in there originally namely jet but to further refine it and say here's how the jet has a high speed it has to go through the tip of the needle it has to be something like a spring  that at that point unrelated things just don't count that was definitely an alternate pathways that continuations affably but so too is in the two year window and that's the congressional balance that human discusses for example wherein the two year window allows for change claims because as long as there's something disclosed in that original patent that's what could be legally claimed and even if it's not just a modification of an existing claim with all of the baggage of the original patent it can be something is an example that says it can be something different and claimed as such the m p p of course give those examples as well but i think the reason for that rule is the continuation is one issue but also somebody looking at the issue patent inventor having a discussion with counsel hey these are the claims but what about this thing over here that's what that two year window allows of the sort of discussion and fiction to fifty one literally allows for changes which are big my mistake and somehow that is what the problem was the way these  issues are secured is just by checking a box for and if there really was a separate invention i mean it would seem as though it should have been claimed as a as a continuation or division and  two tools and it was me or was an example your honor where the original patent had cancelled claim those were rather than do a continuation on the cancelled claim the patent thief thought three should tool to use the and because it was a different invention that was allowed so there issues but that two year bar to your window i suppose even where you want to look at it does allow for the expansion of claims in the change of claims in the covering subject matter that was overlooked whether it be different species environments or inventions and that's a language that protect protecting the user against the needle how is it possible to say that when we pee typically the performance features were stressed and then even narrowed that that didn't surrender claims without those performance features that added nothing more than is something in the family of the needle protecting features safety features which are to response that i think the most direct your honor is that the umbrella of safety features is there but the overlooked aspect can still be referred to even an aspect of the safety that had been overlooked in the first place and here for clean sixteen and the killer seventy any of those none of the original pat t clean use pushbutton at all they don't have that environment covered because that's that alternatively language income twelve that i'm referring to in my ten through fourteen so yes can a needle cover also be a safety feature it can be but it functions very device so that's what makes it not only different but also differently claimable and we think that for that reason it was overlooked simply because of the focus of the over here on here we have a jet injector the needle guard or nose cover activated but what about the push button thing that was there it's the school so your safety devices if you are looking at something in a safety device you came back later and said we overlooked this particular sector device it seems you'd have an argument if you're if you're arguing that that is related to needle to be considered the recapture rule being the three steps but that that should be avoided and just falling back on the section two fifty one and reshoot more generally when there's an overlooked aspect because otherwise as you can fail that city the  that there's an overlooked aspect that's different so that's just it's not it doesn't trigger to use the word of mouth stuff is not worth the separate inquiry to use the word of human because if there's an overlooked aspect we don't need to go down into the rec consistent with hats or in the following way that hester if it had really meant that overlooked aspect also have to be related to the surrendered subject matter well that would be internally inconsistent because at the one hand it would say here's overlooked aspects that can't re to the underlying subject matter but on the other hand over here there is the subject matter that surrendered has to be limited and the material limitation at the related to the surrender subject matter so be both canceling each other out in other words but it shouldn't be the case even considered for another patent six three one patent so i think your honor that it's basically using it as a tool for claim construction without saying so sort of like what happened in the m b o one that basically the district court says there's a recapture rule problem  is not a print construction i agree around or we're addressing it here because the district court viewed it as a claim construction issue and to the extent that we say here recapture will is not a problem but claim construction it should still be limited to a jet injection device years happen the fact decides they want to point to something in the specification that they did not claim they can say overlooked aspect and that prevents a district court from doing the three part analysis that isn't as expressed in most of the hesters and you know that there's no that cannot be the  anytime there's a quote potential recapturing of surrendered subject matter district court is entitled to in fact obligated to make sure that the surrendered subject matter is not recaptured if an tars is logic was to be was to be followed  logic should be applied strictly we would say it should industrial chemicals logic was a different point does not mean industrial chemicals not talking about whether you treat this as a recapture problem it's talking about the same convention corners of the patent of your original and decide what is specifically said in the work of the patent there's no dispute here that the words of the patent talk only about jet projectors it's not a separate invention when you talk about the safety features because if you dangerous ram the prior art did not address that the safety features are caught in conjunction with jet injectors they say they say the prior art tried to address questions about whether or not there are safety features the judge and they failed because they had a tendency to corners of this document to say to reads it to refer only to judge injectors that's unrebutted the first time we heard on tarzan the answer to the original patent question what we consider to be an alternative ground for  think peter's it simply is not there so can you explain with some specificity maybe you think maybe you already have it in which case tell me again the particular safety features that appear in somewhat they did and some of it in the way that they did with the two examples that i said there are and there may be more but these are the ones that come to mind there's there's disclosure specifications that when you have the high pressure gentex you can cause a dangerous projectile so you have to protect and i think that's the latch of the needle the needle guard needle shield with this in the original claim fourteen fifteen sixteen of us are a dangerous project of interest project that was that it was i mean the needles going to shoot out there's going to be the safety aspects are necessary t projectiles due to the pressure and energy generated in jet injectors and pages thirteen and fourteen are brave which is columns two lines thirty two to forty two prior art efforts to shield the needle resulted in slowed injection times losing the advantage of jet injectors needs of airport there is a need for a jet injector with retractable or conceal needle now as we pointed out the whole notion of overlooked aspect is basically a ticket you check the box on an application to get a issue you need to meet the air requirement in order to participate in the revision process here there is nothing in the specification nothing the prosecution just didn't send anything to do with safety features was an overlooked aspect that is a post when we look at the i'm sorry if it was over left over look it wouldn't expect there to be serial in the original prosecution history referring to it does and it wouldn't be overlooked would it no that's not correct your honor i think you have to fill out of that correct typically in a in that there is a substantial likelihood that they will not be able to be successful american they did they fail to recapture test because they they distinguished both through the render and by amendment to the claim to put the words jet inject in two amendments and the other is not the fact is you originally filed claims of said jet now maybe it's possible to say that under the ball corp case it's a statement not it's strict holding that when they came in with a reissue play and eliminated with broader than even the initially filed claims full stop recapture and of analysis put that aside for a minute the fact is they added amendments with the actual opening the elastically deformable mechanism for creating the force and then required that that force produce a high speed jet through the  opening those are all race forget about arguments just focus on those amendments those have been under done by the reissue and what they say is that the suppos i'm i'm not yet persuaded on the argument because if there had never been an amendment it seems to me and over a lack over what aspects doctrine makes a kind of intuitive sense nobody is focusing on these particular safety aspects put aside amendments put aside the ball the ball point how in the absence of some statement that is not in a one five prosecution the additional push button work to avoid the creeping into the right i mean i guess one interrupted i'm in complete agreement that when they say that these aspects were overlooked whatever else it means it means they're unrelated to what was given out in the first state so they need an entirely distinct doctrine that says overlooked aspects can be claimed on reissue even if they would otherwise want to recapture test so i guess i want to want to just focus at let me let me ask this this question have we ever said spoken about overlooked aspects or ruled out over with aspects in the context of a non amendment so your position is it wouldn't matter defective whether they were overlooked or not to a few months of ours if they were overlooked with frist and there was no surrender that's the key issue here on if push button think it has work to be overlooked and they wrote a actors there's not one word about a separate invention relating to non jackson safety features a push button can be used on an electric cigarette switch blade knife on a safety counselor at it is whether it's obvious but w twelve requirement that the written description is met with in the four corners of documents this court is crystal clear on that in the area which is that to the extent that the supreme court was using the word intent had been to do some objective intent which the footnote characterizes as the same as the written description test and that's why in a minute the whole thing in inelegant too i think and the question is is whether the industrial chemical pace i'm describing what's required is perhaps requiring a more stringent written description test model and i don't think so your honor and the reason that i think in this addressing that footnote on to just accepting the six nineteen and up thing that the original patent in short the absence of an intent even if objective evidence from the earlier claims drawings or original object that mean vention is simply not enough to establish that the new claims are not drawn to the invention disclose your japan that's where the footnote is inserted which i take the material because it's explaining that issue and saying that we don't need to go so far as an apparent intent as to one invention i don't understand introduction of our brief it says push button safety features that's on page three of four to push button safety features and then throughout the discussion is of course in the context of those particular features the second i think councils that could be true that there is recapture problem here by either amendment or argument but importantly only the argument issue was argued below and i'm reading from page fifteen of their brief which civically refers to the argument carries repeatedly acknowledges that hester says that surrender can happen through both five at the specification has the push button and safety features and then alternatively and it's referred to the alternatively a push buttons in the context of that whole column which is safety from eleven to twelve about having the needle and having be covered and having it be lock but to use the phrase push button safety features no it refers to the push button how it's locked until ready for use with a needle or and sir i just wanted to point out again that as far as the testimony of the expert that medic had i think i heard deposition that's where the expert was looking specifically at the claims in the questions were specific about for example looking at claims thirty one is the pushbutton that limited to a jet engine actor answer no you could use the push button like that in  it maybe you can just clarify i suppose i can check i took your colleague on the other side to say that by declaration their expert said that the written description fortune having to do with right but that was a take away for example there was no opinion that the claim should be invalid because of that particular issue because as to the original patent rule issue there recapture and how that was something recaptured but that's original and it was like a written scripts and test