body of race judicata law that was out there and simple where it was decided after the district court we're not faulting the district court but simple there is the law now and what simple error seems to do it says look what nike said when it said that was not laying down a categorical rule you could imagine a circumstance where you had an after issued claim and it did in fact trigger res judicata but it would have to be essentially the same patent claim and it says outside of the distinct reexamination context you have to do a claim by claim analysis to determine whether it's essentially the same whether it's issued after or before and that's a simple area think lends a lot of clarity here and if the district court had the advantage of simple eric think this case would have proceeded very differently and i think that's i think that's the key point and since we're on res judicata i will let me i only if the scope of the asserted claims in the two suits is essentially the same and then it says that requires at least outside the reexamination context which is not political here comparing the patent claims ye of much worse for the party that was trying to avoid race judicata there you had exactly the same accuse products you had a common specification you had a terminal disk disclaimer to the same patent findings that there was it back to do a claim by claim analysis so here at a very much at the very minimum it's a baker and remained to do that sort of claim by claim analysis but we think that in fact you can go a step further because although the dollars that was a continuation in part and the reason it was in part is because it added three paragraphs to the specification that specifically provided the support for the super oblation stuff and then the corresponding claim in the four sixty nine dollars patent that is also undisputedly broader in scope than the ones that were issued in the two thousand and twelve case because it drops two of the elements the freezing and collections so it's your view we should hold trials those issues your honor i think those can be decided by this court even though the district court didn't reach it because i think based on the briefing here it's clear those are different in scope but if there's any doubt about that at a minimum you could remain and that's not what happened in simple error there was arena yes in civil there they did they simply just vacated and remained and they said there might have to be a claim construction yes they said there might have to be claims instruction on the facts of that case so certainly that that's what they did in simple there and the court nations the dear the supreme court's decision in deer both involve improvements otherwise known industrial processes to the specific application of mathematical algorithms and let me break down the ways in which they're similar so fur as to be improvements not in deer you had an inventive step that improved the industrial process of curing rubber right whereas here you have an improvement that improves the you get a greater purity in the sort you have improvements in both the nd one applied to otherwise known industrial processes in dear it was applying it obviously to the industrial process of curing rubber which had been around a long time here at the plying is the right time as you said to cut off their curing process here there are harnessing the rotational alteration algorithm which allows the flow cytometry or to get a greater clarity in the separation chromosome and therefore gain a greater purity than was ever present in the existing art and that set forth in the specification itself that it in fact is an improvement so just like in dear where using the arsenius equation in that fact i think it's the supreme court case that provides the best factual analog and so thanks or another question chalk this one on one issue to the court held that the claims are directed to the mathematical equation permits rooted in multi dimensional data right which are view of what the claims are direct we think just like in deer the claims are directed to an improved industrial process for sorting particles that was the objective by doing it just like india they did use the that natural law here they really care about the industrial process that's what the patent is all about it that's what it's directed to improve flow cytometry method of supply sorting particles and one step in that just like in dear one step i'm sure your honor we think else or it's that they old in fact i think characterized itself as a step one case we think your honor this is also a step one case that's the easiest way to do it just as the judge stole asked what is this directed to that's the step one question i think the district court kind of took an overly abstract view of this and said well it uses a mathematical equation therefore it's directed to the mathematical equation no it's directed to the specific process and dear and said well it's not limited to step one it certainly speaks a lot to words step one and that's what we think is going on here i'm happy to talk about why this is not even a close case under step two but maybe i'll say that error for the district court in that case to hold that the mere filing of a terminal disclaimer was dispositive on the issue of rescue caught in a found that yes simply filing a terminal disclaimer and holding that that you case in a blue brief and forty three x y says and your friend is argued that the district court never compared the claims of the patents that were dismissed as a clue with claims of the two thousand and twelve claim by claim of yours and this court's perfectly competent to do that analysis itself with respect to the seven hundred and sixty nine patent i would invite this court to do that analysis because there is no difference between the seven hundred and sixty nine patent claims and the two earlier asserted reversed sort patent claims save for one distinction which is the earlier patent say collect and freeze the sperm cells reza seven hundred and sixty nine patent says law cells that have already been frozen is there a material distinction between collecting freezing and thawing versus thawing previously frozen cells no i think that's readily apparent on the face of the claims and since you says explicitly that if it's readily apparent that there is no material difference between the claims of the pursuit and claims the nd suit there is no need for a detailed comparison certainly with respect to that patent i would suggest there's no need to remain and that that the court was which was within its rights to hold that there was no difference and as judge stolpe stated earlier in the day this court sits to review judgments not opinions so whether the opinion was was perfect is not the issue is whether your view that  if the court were inclined to remain and the other two patents back down in in light of simple error and say it would be beneficial to us if the court had conducted a claim by claim comparisons that we remained those patents back down in the district or to do that analysis that certainly would be unreasonable i do think it would be a waste of judicial resources to do that with respect to the seven hundred and nine dollars patent when it is so readily apparent from the face of the claims that it claims pretty much the freezing steps are arm materially distinct because in theory a competitor could could structure its business operations so as to avoid it infringing the st set of patents by not collecting breezing but not avoid infringing  that argument ignores the important issue here which is the scope of the claims it's not the number of entities that might infringe particular claim it is the scope of that claim itself an excellent argument would be akin to saying that there is a material distinction between for example a claim that says operate machine x and claim it says turn on an operate machine x is there a material distinction between those two claims no could they in theory be asserted against different infringing into these in theory they could but there's no material distinction between this claim just as there is no material with things and between thawing a frozen cell sample and collecting rotating multi dimensional data do you agree with that yes i think that the there are a lot of conventional elements mean that this claim is is charice of us to look and decide what's conventional and not conventional when we decide what a claim is directed to no no but i'm simply pointing out that the even x y doesn't dispute that everything in this claim was known in the prior with one exception according to them and that is the use of rotation math to sort of particles in real time i began though you are saying that this court when it looks at would claim is correct to resists really work and to claim construction exercise what is the claim directed to it we're supposed to consider private or what is it whether individual steps are known or not i mean we're supposed to look at whether it's directed to an abstract idea whether it's directed to a natural law whether it's directed to a mathematical equation which might be an abstract idea of course there's cases that say you can use a mathematical equation any actual application just because you have math like for example and they always just because you have math doesn't mean that it's directed to claim actually resulted in a novel product in the works to pains to make that point said it resulted in a synthetic sure to mold a product result heretofore unknown in the art that is not what you could contrast your focusing on fear for sure so i don't think you have to look at the player i mean i think you can just look at the mathematical formula in this context in the context of the claim their entire argument is built and  counsel said it repeatedly today their entire argument is premised on that mathematical formula leading to an improved result and improved result and if you if they had support for that if they actually showed an improvement in the specification that might be a good argument it would be a better argument though if they actually claimed it they don't claim that the claims don't recite a better result the claims don't recite increased accuracy or you know it is especially cation sa that it's improved no it does not it does not what the specifications says at every turn is that the use of rotation math may lead to better results it's not even definitive as to whether it does lead to better results it may lead to better results why does it say may why is a permissive because they had no results to back that up at zero results the only data the only rotated data disclosed in the pattern is in figures five and six and if you look at the inventor's description of those figures it says this is rotated data they conspicuously do not characterize that data they don't say it shows clean or separation the particle data it shows increased purity of the particle population so that may very well be why they don't reciting the claims and why they don't even definitively say anywhere in the specification so in step one you would have me look at prior to see whether there a suggestion that something is actually improving or not is actually an improvement i don't know that that is appropriate in step one i think in step one we're just assessing whether the invention as a whole is directed to an abstract concept i think the answer here is yes for the reasons i've explain think once you move into step two you're looking at whether or not the invention as a whole is directed to a quote unquote inventive concept and i think it's appropriate at that point to look at what's come before to look at what is conventional and again this is important specification written description yet which discloses evidence specifically and says isn't that right happens because i'm going to think if you look at the patent number you'll see it's not the evidence that you're relying on i would appreciate or that's a quote from the patent it's talking about the compensation algorithms specifically disclosed in evans that also disclosed math to sort particles in the exact same way that this claim is to particles it's just a slightly different math and the question is do you want to reward x y or relying on a totally conventional well known mathematical algorithm and substituting that algorithm for the other conventional well known  specifically because they did not recites the alleged improvement claims for thirty seven there was determined to be a material issue of fact because the court found that they did recite the alleged improvement maybe not definitively but maybe that was sufficient to state analysis requires comparing the pattern claims that's an exact quote that carves out the special reexamination context which is not at issue here nd of all if you're exactly right the district court opinion has two parts to its opinion the st is could they have been brought that's when they analyzed the three patent claims that we're talking about and raise judicata and then has a nd essentially the same or materially different section there it analyzes only the eight  patent which is not at issue on this appeal none of the three patents here so at a minimum it's a vacated remain under simple err on the section one hundred and one dollars argument my friend on the other side talks about new product being the distinction between deer and in this case that's a distinction without a difference in gear you had better cured rubber as the new product here you have better sort of product as a new product and dear the claim itself  industrial process that is sorting out comes all of their arguments which was my nd point go to step two was there really an improvement which is an odd question to be asking and on the twelve c motion we don't think you need to even get there because this a clearly a step one case and it can end right there but if there was any doubt about that under step two the specification of you do the passages and there are a number of them it does use the word mate but it clearly talks about the rotation algorithm leading to improve sort out on column seven line seventeen through twenty one method of gaining spatially separated data may be to use compensation algorithms that's the analog of the evans pattern that he's talking about as those killed in ark could appreciate rotation of the data forward scatter versus i scatter may be a more accurate mechanism to do this and then there are several other pathogens in the specification that talk about unlike conventional methods this one is lead to better sort outcomes but again your honor those are all steps to arguments in which you can have a battle of experts and all that but we don't even get there in case in this case and last point i would make is the arguments they're making as to whether this is a material advancement or not again step two obviousness and novelty they're welcome to bring those arguments at a later stage in this case thank you thank you