issue the four pillars case at least treated it as dispositive i realize it wasn't raised there but i believe that that would be enough of a change in law that we didn't raise it because we knew that this case law uniformly treated these as non dispositive but there's also a second exception in the cold mountain case and that is where the issue is purely one of law and does not depend on the factual record developed low it can also be retroactively applied to another case and it's a simple one issue legal question of whether it's dispositive or not and so i think for that exception under the cold mountain case it could be applied here as well for a cli also in the situation it would have to be some prejudice there well i think and to your question that you raised it in the prior appeal i think it is quite important in this case because well the problem that i have with all of this is you don't raise it you didn't think it was a big deal nobody had a chance to brief it and now you're saying it makes a big difference in this case it changes the decision maker now i would not say that you should decide it based on our arguments in our case certainly but if the court were to change the law and it has come up it should certainly apply in this case i think we were able to we reasonably relied on the fact that this case this court in four pillars as well as about fifteen years of ninth circuit district court cases had treated it is not dispositive so it's not like it didn't matter to us but we comes up and the court for some reason decides it doesn't have jurisdiction for the appeal well because that helps and case appears to be on point and in your brief suggests that this ordered to production nobody filed a motion to quash nobody fought it the only motions filed the defendant filed a joint letter brief they never challenge the grand judge resolve the discovery problems on or the production seems to me that the whole glue and issue is avoided because everything you could have done as a defendant or may have done as a defendant to avoid it not being final and hoagland you didn't do i would not agree with that why so the reason is that the initial order that the magistrate judge granted on an ex parte basis subject to the standing order now the standing order expressly prohibits all discovery motions and furthermore the magistrate judge had previously held that discovery disputes subject to the of discovery problems an order the production in my book where at the finality of that decision now and now you raise that it shouldn't be enforced so why is hol even relevant here the appeal that would be under whether in re hoagland or global fishing applies for the appeal and for the mandamus is to the district court's review of the order granting discovery the first order the july first two thousand and sixteen order merely authorize the subpoena that was an ex parte order that you never saw to have to submit additional information or any other type of relief from the magistrate's order you we did not and let me explain that we had indicated in our letter briefing because that's all we were permitted to do that we would be available to submit briefing we did not know that the magistrate would necessarily take five page discovery reports and dispose of the whole issue oftentimes these discovery proceedings lead to further targeted briefing leads to submission of evidence lead to argument and none of that was regarded as you were able to submit i think it was twenty pages of argument concerning your objection to the subpoena why wasn't that an ample opportunity to be heard on this issue where they were for discovery parts because ancillary issues came up such as the protective order for example but on the key issue of the intel factors he was fundamentally  page report which resulted in the put you back with us your first time in court that you couldn't you didn't it didn't occur to people i don't know if it was you are not to say well judge either orally or in writing i know you have a standing order we think this court this case is important enough for this issue is important enough that we seek leave to file an expanded request here it did not occur to anybody that's nobody's ever done that before  was raised in the record a year fifty eight where we had identified the evidence that we could submit and we identified the issue that the cases are all stayed in germany because all of the asserted patent claims have been held invalid and we had indicated that that was the case the magistrate judge should have received some evidence on that and we had indicated that we were available perhaps we were too polite but we indicated that the way i did to my question is no we did not do that it did not occur to you to do that i would not agree with that the answer the question is that we had offered to to provide that information after identifying what it was but we were faced with a standing order that prevented us from doing so the bottom line is i think her question pretty important because as i reviewed what happened here it seems to me that you went through the magistrate issues is it so order you did not object to the order you didn't move to quash the order it didn't do anything like that you just said well let's see what the discovery is so now we're all the end all the way out to the end of wood determining what the discovery is and now at that point we're trying to the see if the order should be enforced i don't see that to be similar to hoagland at all because it homeboy and they said we're not given up this information fact we'll go to jail before we give up this information and at that point one could say it's final i'm trying to decide at this point and done all you need to do to side with the discovery is you didn't fight you didn't file any motion to quash you've got all the way through with the discovery so at that point it's time it's final it's time to be appealed and therefore hoagland doesn't apply that i would not agree with that so when we received the first order which was an ex parte order within fourteen days as we are permitted to do we served objections under rule forty five d and making a record for your appeal and i just don't know if you made the record here let me ask you about the intel factors if i could and i'm just curious how many of these heart pumps exist how many exist i sumit must be over dozens because they're even it physically exists in this world yes because i'm curious because you say it would be an unreasonable burden to produce three i think is what the number that knocks me out there but i don't have any sense of how many of these exists in the world and if there is five of the asking for three then i guess that's burned some or are there five hundred humble nature of the bird is that it is being produced to a direct competitor and the american standard pfizer case for example recognizes that that is a bird that is one of them had it approved right it was approved in europe it is not been approved in the us so if we were agree with you i just wanted to know regarding the intel factors or weigh in here in your favor does that mean we have to reverse or is there some residual discretion there that even if we view the factors clearly you know ways in your favor the magistrate could have reasonably determined that one or two went against you and that means we affirm if you could talk about that a little better i think that the proper result would be to reverse because the facts are quite simple the cases in germany are state all of the asserted patent claims have been held invalid and that is what i am not caution about that it's a little surprising to me that the we have in the record and it's cited i think it's a seventeen but i can identify that that all of the asserted patent claims have been held invalid and none of their declarations dispute that they say that patents have been upheld because why is this an abuse of discretion even though you disagree on some factors but the magistrate did not go with you i'm trying to figure out why it is an abuse and i as i understand it that was her question ok sure when we received the original ex parte order in july of two thousand and sixteen it authorized service of the spina just as in tokyo district court where the objections and intel factors are considered later but we were faced with an order that number one precluded us from filing run for example he said that it precludes motion squash but in terms of why we didn't submit evidence we certainly didn't submit and it's because of the motion but also because this procedure of discovery ports does not always end in a final decision not talking about what she asked you about she said is three oh i'm sorry i mean what she's really saying is there we know there's three that are wanted we know that the magistrate says produce the three we know what the situation is generally under the factors that the magistrate looked at so why is it i can say that the magistrate abused its discretion using those factors sure because the magistrate's order itself said that he was unable to judge which side is more accurate about the status of the underlying german actions and the set is it is just one factor while all three of the factors that relate to the underlying matter of intel factor one two and three clearly cut in our favor and factor for as the supreme court itself indicated is a reason to deny it is not in a selfish reason to grants why do they when your favorite try to where we are number one we were participants in the foreign all the cases are state and have been stayed for nearly two years number three the you know third intel factor which is it's an effect it in effect circumvents foreign proof gathering effort or avenues because there are avenues available in germany they may be limited but never attempted that and that's also undisputed in the record so all of those factors clearly favor denial of seven hundred eighty two and i believe that it would in fact allow this court to summarily reverse based on those factors your time six fired their own peer to be additional questions make a decision on rebuttal after we if my colleagues have any additional questions thank you good morning may it please the court patricia heaton on behalf of this is an appeal from a district court's discretionary discovery order no one disputes that the seven hundred eighty two petition w time came to appeal the issuance of the subpoena no appeal was made no motion to quash was made we ended up in front of the magistrate judge on a pure disc discovery issue once the subpoena or the intel factors whatever the parties wanted to discover it would discuss it was just a rule twenty six discovery order what do you what's your view on whether the european courts and validated any or all of a they have not your honor and again this this goes back a little bit to the argument it was just before us and what the supreme court said intel is that it doesn't one action only has to be reasonably contemplated to we don't look to what happens in four proceedings because what happens in five are howard but they have not they have not in the german courts there unlike the u s system where we have one infringement case in the german courts nobody or their invalidity actions are completely separate from their infringement actions keep in mind that this discovery was sought for the infringement actions not really the no i mean if if they ha validated if the european courts have invalidated any or all of your patents do you agree that your interest in forcing your attack to give a competitor samples of its heart pump is greatly diminished now so even if you don't have any valid patents you still get to look at their heart pumps a competitor judge callahan that's not how the system works in germany it's the nobility courts there's an ongoing there's an ongoing appeal process we have several patents several claims there was just a hearing and right before thanksgiving it's an ongoing process and so intel there's a final resolution reached which there has not been then it's an ongoing process it's still for use in germany in the german proceedings and of course what we sought the evidence for was for the infringement piece or a chance terminating a separate had gone through the whole process a new one are you in a better position than to look at a competitor's heart pump than you are until he invests in till you have one you've lost it somewhere else is that correct and you're still appealing in the courts of first instance we have lost on some claims of some patents some invalidity findings which are on appeal ok so  there is so what you're saying is it's not final but you're not saying that you didn't when at that early stage right no i what i am saying is it's an ongoing process so for example one of the patents and it's kind of like if it's an ongoing process you want to win at every stage don't you i mean if you're not i mean did you have you lost at the stages up to this point but you're still appealing or what's the  some claims they were initially ruled invalid and some claims there have been subsequent proceedings that the hearing right before the hearing before thanksgiving the german court said some of the pigtail patent claims would issue in amended form we haven't we don't have a final written ruling but that was the ruling of the court that we are going to get those claims that they say that are finally invalidated we're going to get those claims in amended form so it's not that simple to say as would be the case maybe in a way the simple if you'd won if you either one or lost in the final stages but you haven't won yet is that is that right we have not won in the final stages or lost in the final stages and as for why i have lost in some pullin areas stages yes and yes i just you know you're kind of we're dancing around here so it's just hard because the systems aren't comparable right and that is what intel tells us is that we don't we're not going to be looking at what the foreign courts do because they have two separate actions and the action that we've sought discovery for is temporarily state review must be by way of mandamus you both agree that we have to review by whitman yes it's in thor tex writ of manned damus at page twenty one and that's because we both agree that this hogs and  ruling although it is old and that the whole thing it is narrow it directly applies in this case so you're both are saying that both of you think we have to resolve by mandamus and  and so we have to send it back to the district court well if you don't have jurisdiction well you don't have direct appellate jurisdiction and you have uncovered that's what mandamus review that's right it doesn't in fact this court in other cases when there's been a question for example after mohawk industries first issued of whether or not direct appeal why use the mandamus as a vehicle to decide it you're saying there wasn't a way to appeal so you have but it seems odd because we were here on appeal yes oh those are there isn't your jurisdictional challenge in the direct appeal both parties acknowledge hogs applies and whatever we disagree you know what if we say hogs and doesn't apply well you know it for a minute i don't believe that the parties can bind me simply because they think something i looked at hogs and i know what dogs and says frankly i don't know why what happened here is more than enough to put this question on appeal in a direct appeal so whether this court decides this th subpoena either on direct appeal deciding to distinguish hogs and or on rare for firm for my case it doesn't matter this the standard is still abuse of discretion erroneous and of law yes it cannot and that is without that factor they don't get a ray it doesn't go back so so for purposes of our discussion today i'll just focus on the  the clear error abuse of discretion standard because whichever way this court gets to this issue which other vehicle uses that's going to apply but if you ok but we asked you to be ready to talk about you you sat through the last case i did and so if we said this was just positive and clear error would not apply so that puts them but i'm assuming your position is they never mentioned it before so it's waived yes so even if we rule in the other case that it's a dispositive motion yes no worries here because they didn't bring it up is that is that your position yes you asked us whether or not the two exceptions well first let me just say one of those exceptions to our text says well you know we didn't really we we relied on the fact that this has been well established law so that exception applies in fact page nineteen of the writ footnote five so our check raises in a footnote the possibility of whether or not this might have been an issue but of course they didn't brief it they didn't raise it below they didn't take it to the district court in the first instance they didn't brief it to this court and then they dropped in a footnote that they could have but  in this case it's more than that it was invited error because that was the standard they offered the court asking for its review and it would also be harmless error because if you look at the district court's careful review in this case the the corps at that time the district court knew that the mandamus had been filed and he looked through all of the record and he made his own independent findings you can see it's not just a furring to the magistrate judge so in this case it clearly went have made a difference it's not one change the standard is there any fact yes in this case that was the fact that germany well in this case the only thing that was taken up on to the district court to review at magistrate judge's discretionary discovery rolling right there was no appeal from the order to issue the subpoena there was no motion to quash the only thing that was taken up was this was a pure discovery issue of whether or not the district court should have allowed the discovery so it won't apply here so now you talk let's go to the abuse of discretion just recorded made a decision and i review that on abuse discretion he's saying the district court abused its discretion in applying the standards of the entail why is he wrong several reasons first of all the standards of intel those particular standards as the district court found were waived because the intel standards along with the statutory criteria is what the dish what the magistrate judge decides what the magistrate judge reviews in deciding to issue the subpoena after the subpoena was issued and no motion to quash was filed the criteria for the subpoena had any disputes that had been waived even if we set that aside even if we set that aside and were looking at the intel factors that were briefed this court has said several times and clearly judge grader's opinion and kiba how we review seven hundred eighty two petitions and it says there's not that the magistrate judge has to have to put anything in writing doesn't have to list out the factors and facts seventeen eighty two provides a lack of specific guidance on how to rule on these motions now i think you can look at the forty pages of briefing in the magistrate judge's order and see he gave each of the arguments great credit and credence and he what way do these and the district court judge did it again and there's just no justification under disappear discovery motion of this type with this much broad discretion and the leniency point for this court to consider and that's if you look at the writ you look at the briefing from thor attack there's a lot of rhetoric and a lot of accusations that the what the  that it imposed a standing rule that forbid parties from following the rules of civil procedure that they asked to be heard none of that bears out i want the panel to understand that when thor tech says that this was reviewed ex hundred forty one page record that was what the court did when it was reviewing our prime officials showing to get the petition in the first place that evidence was not considered in the discovery disputes no parties were allowed without first seeking leave of court to offer exhibits we had the same pages we had the same rules the district the magistrate judge didn't the matter should judge a standing order doesn't overrule the federal rules of civil procedure it doesn't abrogate them in fact in his order to the parties he told them to file a motion to quash he named it there's nothing in his rules that says oh all of a sudden we have a whole different playbook they were obligated to filed a motion to quash and they say well they filed a letter to the court asking to be heard that's an e r sixty two if you can take a look at the letter of the to the core and asked not says nothing about asking to be heard there's no request to file question because i'm just trying to figure out how we resolve this is why i asked you about the mandamus because and i know you both you say you both have stipulated but it seem like hughson says there's no jurisdiction on appeal because you probably didn't you didn't follow the right procedure by having contempt order and here there is a way to appeal and they've also appealed so i just i'm not trying to figure out how many damus can be appropriate here yeah so as i read this court hog's and order it says in the narrow circumstance where you have a party who is both the the target of the seven hundred eighty two petition application as well as a party in the foreign in that case the law that applies in the criminal contacts you know it's different and in that case you have to go through the other remedies before you can take an appeal on a collateral order so i did you file this is join this stipulation that we got to go mandamus because what you're articulating right there is exactly what i articulated or i was thinking i mean you look at this order you look how it's so much different than hogs than that simply for case there's no question they're dot the same you've gone to the end result they've given them every opportunity to do what they had to do they could have filed their motion to quash they could have done all these things they did not in fact they did they fought about what the discovery process was and when we got to the end of the fight about the discovery process here we are on appeal that's all we've got the end has come just like as in the seventy four case so why did you file some stipulation that we should do this on mandamus b because that the hogs and case is controlling and it's on all fours and i think both parties struggle i don't think it's at all for that i don't think hughson says that higher than says you know kind of sets forth the different you know ways here in terms of jurisdiction but here from the standpoint but i still think that there mandamus can be addressed so i don't you know i realize that i that puts me in a different position with my colleagues but and i wouldn't accept that stipulation if i didn't agree with this but i think it does squarely fall within the rule because dora tech the target of the discovery order is a party to the german proceedings and you know and i think to our tech makes arguments an attempt to distance itself from hogs n you know is was well you know i'm not sure it was decided but that i think we're stuck with it but i think it still can do i agree with you and i would up until the point where whether or not it's well decided because you're right it is on all fours the holding directly applies here although it's narrow it's spot on in this case  and you know text tried to distinguish it which would be one way to go except for seven hundred eighty two the statute itself it really doesn't allow for that kind of distinguish between letters r applications that statute treats them the same it's a discovery statue so then we get into you know what does that mean well i think the supreme court in mohawk industries has said what it thinks it means about collateral appeals of collateral orders mohawks says and in that case we were talking about disclosure of confidential information mohawk was attorney client privilege and whether or not that would satisfy the collateral order appeal and what the supreme court said you've got because you have other avenues one of those avenues is take a contempt finding the other avenue is a writ and of course we have both of those tech could have taken a contempt fighting didn't it filed a writ which is one of the avenues that mohawk industries identifies and so i think that's how we all got to the conclusion that we're here on a writ did you have additional questions