thank you and may it please the court this appeal presents three issues whether claims one two and seven of eskies nine hundred seven patent are invalid as a matter of law due to obviousness whether the jury's verdict finding claims  seven valid but claim to invalid or inconsistent and therefore require a new trial and whether a b s breach section sixteen the confidentiality provision of the parties two thousand and twelve agreement with the court's permission i'd like to start with obviousness the supreme court in k s r held that one of patents simply combines old elements in a new combination with each performing the same function it had been known to perform and yields no more than one would expect from the combination the combination is obvious that's the nine hundred seven packed it claims as its invention the combination of two old techniques the johnson method of sorting sperm and a photo damage cells order and nothing more now can i just interject that i find in the party's briefing and i actually find it in federal circuit's case law and ambiguity about how one approaches obviousness you can find plenty of statements that say obviousne itself is a question of law for the court and then you find things such as juries being asked do you think this patent was obvious or do you think whatever some historical fact is established how did the valid neither side objected to that neither side asked for any sort of special verdict on specific questions underlying the act so we don't think submitting the case that way was an error we think the error of the district error was afterwards and making the legal determination of obviousness the jury's conclusion on the question of obviousness is not a determination of the legal issue is what doesn't really even conclude if that's just the question is it a valid patent it might be valid or invalid for any of a number of reasons might not be novel might be you know well sure enough there are no absolutely and in this case there were there were two challenges to the validity of these claims obviousness and a lack of enablement so things like novelty i suppose were off the table but you're absolutely right but in holding to where the claims of not invalid the jury necessarily found that  away from that's a phrase they like to use taught away from this and there would have been a motivation to combine the johnson innovations with i'm not sure how he pronounces th k teaching and that that's enough to show that when somebody did go forward and blend these two different approaches that was patent that was enough to make it well the problem there are a couple of problems with that your honor one is it's clear under k s r that the motivation to combine can be found any time that there is some problem known in the field and in this case for example a need for greater speed in sorting and limited number of finite number the court in case our side of salou possible solutions to bad there is a motivation to combine in that situation you don't need and express suggestion in some prior article that says hey you should do this but in this case in fact we also have what the supreme court in k s r said is really more than you need which is the expressed suggestion in k says talking about other things and then he says this photo damage technique that i'm talking about is particularly suitable when large numbers of cells are needed and and as a result sperm sorting as taught in johnson and he refers to the johnson method is an interesting possibility that and he never says anything like but on promising because i've been using little cells and sperm cells are more fragile or anything like that no that's exactly right and  and here is the the problem first of all as a legal matter to teaching a way requires something that really discourages somebody from going down a particular pass something that says you know you should you might think about doing this but you really shouldn't do it because there are problems here and k plainly doesn't do that it's sad hey this is an interesting possibility i haven't done it but it's an interesting possibility the other problem with the teaching away argument is esky emphasizes case statement  that the capabilities of his photo damage sorter can be fully exploited with cells that are small and sturdy and ask he says at the sperm cells are neither of those but the problem with that is that what kay actually says is that the high speed capabilities of sapper that's his device quote can be fully exploited for small and security cells which survive passage through the nozzle and increase philosophy's now johnson's article which is the other piece of prior art that's relevant here derive it from the velocities reported to mackay article so there's nothing about that statement which is what ascii focuses on that would discourage somebody of ordinary skill who is presume to know both johnson and k from putting the two together the other problem with eskies teaching the way argument i think is that even as quoted by as key case statement that those apple would would full would fully exploit would could be fully exploited with small and sturdy cells would work best but those doesn't even suggest that it won't work with others that there wouldn't be advantages to using it with others don't remind me under the under the ninety seven patent there's no particular speed or or laser treatment that specified is there not something that would be adjusted by the user that's exactly right it just says use the johnson technique to identify x and y and then instead of you know that the droplets order method the photo damage method to know for certain kinds of cells you michael faster and other kinds of cells you might go slower right and either one of those would be within the scope of the patent claims there is no requirement of any particular speed or any particular output and k tested on a variety of cells i think nine different cells are reported there and his test showed that the various speeds at which he ran his machine were not a problem for any of them at the upper upper end of the speed range it was better for some cells than others but in the part of the speed range that he used all of them did fine and moreover a statement in a prior art reference that says a particular alternative is best or is preferred does not teach away from other alternatives the last quite clear on that the fact that some results are better than others does not teach away from putting together two in this case and an obvious combination of two prior methods you have to recognize an undisputed need for greater speed you to as the pattern itself says three conventional sorting methods one was johnson the other was fluid diversion or something like fluid switching and the photo damage method and it was recognised that photo damage was faster so this is a case of starts talking about so can i ask this is probably beside the point but am i correct that this is still in the development stage at this technology that ninety seven technology has not been commercialized well and up well i'll answer it this way as eskies well i know i can i can be more more forthright esky accused the system that my client a b s is using as infringing the patent as using this technique we didn't contest infringement at trial so it is if you say you are currently using a process we are currently using a process that bad as he says and we don't dispute is within the the claims but prior to that there was no commercial use of it no commercialization teaching away or something that would tell the person of ordinary skill who knows who knows about all the art don't do this and you end up with what's claimed in this pattern and that's obvious as a matter of law but i'd like you to talk a little bit about th depended independent claim business because it seems to me that you're claiming your argument is that the claim one the independent claim has you know a certain number of features and make up a number and say ten features and claim to the depended claim as all of those ten features plus an eleventh feature somehow it is that correct i would put it a little differently what i would say and  i think this is the way independent independent claims work claim one covers a university is not the right word to cover as a body of storing techniques claimed to subtract a little that can can be either use a sort strategy or use cold fusion or use something else and then claim to whereas the method of claim one but limited to are using the source strategy so it really has to be a exactly right by statute under section one twelve it is a subset because section one twelve says and dependent claim includes all of the limitations all of the things that define the scope of the independent claim plus an additional limitation that narrows it even further and the case law is very clear that a dependent claim has to be narrower than its independent claims so you're saying now that it's impossible if the independent claim enables the patents a person who you know who skilled can replicate produce whatever the independent claim sets forth it's impossible for dependent claim to not be sufficiently enabled that the written specifications that forth in the deep pendant something that enables someone to replicate or to make what is described as well correct but the case law at least the federal circuit case law says that to be enabled the full scope of a claim must be enable that is the pat t must teach a person of ordinary skill how to practice everything within the scope of the independent claim without the need for under experimentation so i think that and the the cases are also clear as i said the dependent cl narrower by definition and the independent claim and indeed depending claims are embodiments of the the independent claim i don't so you've you've argued that it would be possible then to invalidate the independent claims but still say that the dependent claim was that alan if some of the methodology specified the independent claim don't work but the dependent claim has in fact identified the one that does that's exactly right your honor did to go back to my example if you had an independent claim says use a source strategy or cold fusion well if you can't fully enable it there's nobody can do cold fusion but if the the dependent claim says use a search strategy and don't use you know it doesn't cover cold fusion that could be enabled even though claim on the independent claim is not fully unable and that's the fundamental problem here but there's also a think a factual problem which is the jury was not given any basis on which to draw any so there was no factual basis for the jury to go off on a separate theory as to cling to but even if they had if they if even if they properly concluded that claim two was invalid because it was not properly enabled that necessarily would mean the claim  not unable either and so the verdicts are inconsistent are there any cases addressing that i can find anywhere it says that a dependent claim must necessarily be unable to finish independent claim is i found a family on the reverse but not right that well i think the that if a part of a dependent claim is not enabled as was conceded there that necessarily affects not only the ability of that claim but also the independent claim by that but phrase precisely as as you said your honor we have not found a case that says just backed if i might turn briefly to the contract issue the contract claim it is basically the finding a breach was based on the fact that five years before the contract was signed a former employee a basque he left with some confidential protocols that she wasn't supposed to take she then came to a b s and used them there and that was the supposed violation of section sixteen the confidentiality provision that provision on its face applies only to information that is disclosed by esky or its affiliates to a b s that language is clear and unambiguous what difference does this make well it doesn't you since you concede that mean revealed trade secrets which your client is not allowed to use why does it matter well one reason it matters is because s g is currently asserting a claim for attorney's fees in the district court based on this supposed breach of contract are you a bank a trade secret violation we pay the trade secret violation so this is not a situation where they don't have any redress no no you're worrying me for another reason w this was an argument about contract and there's some residual pending dispute about it do we have a final decision well i think you do your honor under the they re how like gravel case which says that requests for attorney's fees are substantive were you given your concession that your client can't use this information well i think that's right there is not a substantive worry in that in the sense that it's affecting our operations that's absolutely right your honor so but but to get back to that just very briefly whether a contract is ambiguous it's a question of law under texas law we think the district court erred in answering that question where it worked at that third parties claas do but third parties clause in truth doesn't do anything because what the what the third parties clause says is bad and it's under sub part two of section sixteen are any information related to sordid semen that is based on or derived from any of the foregoing in other words you the information provided by s t to a b s whether by a b s or its s p or third parties that is based on or derived from some third parties might do the derivation but there still has to be a threshold disclosure b least although a b s tries to characterize the underlying facts as largely undisputed the key fact questions here on the obviousness issue motivation to combine and reasonable expectation of success were subject to extensive and conflicting expert evidence that the jury necessarily resolved in estes favor so here's my problem with a lot of the gist of your argument on obvious it seems to me to be in quite a bit of tension with k s r because the whole point is that in the chaos our decision was to evaluate the federal circuit's so called t s m teaching suggestion motivation test and the court said that's not a rigid test of obviousness is a much more capacious inquiry and it seems that in the wake of k s r the federal circuit has chugged right along with t s m and your argument is is very much about that you're not really arguing about the broader concept of obviousness that the supreme court said was what we need to be worried  about well your honor i guess i would view argument little bit differently we fully expect chaos are we do not accept the t s m test which the supreme court expressly refuted which had you had to point to something in a source that point did you to the combination we're not saying that you can look to anything to get the reasonable motivation to pendar going is the obviousness isn't equal to motivation motivation is one fact that might lead you down the path of thinking that a particular invention either was or was not obvious and if people wouldn't have ever thought i would have ever thought of putting two different things together then maybe that's a good sign that it was not obvious and yes but that starting with nice people but starting with cancer with cancer i says this it doesn't reject the fact that motivation to combine is one of this you know the in most obviousness case is in reality in cases where the prior art you look at different pieces of prior art and you have to combine the difference of pieces of prior art that's most inventions are involving combining things out there and precisely the supreme court said that they said all right no that's you know in here we have the johnson method that covers everything except for damaging purses droplet we've got k and we have you know that's just playing around with these methodology seems to me that's very straightforward your honor what case are says look there's going to be a certain subset of cases where a judge can look at it and common sense will lead you to believe you can just combine these two resources and that compels as a matter of law the conclusion of obviousness you don't need to defer to the jury fact finding on whether there was a motivation or you are here arguing to me cases one in which a judge can look at the technology is relatively simple and this is what chaos are says the cases that they cite wires and abt explicitly the federal circuit says look when when technology is relatively simple and the judge can look at it and say yeah it's pretty obvious to combine these two in those cases those are the ones that are amenable to summary judgment or judgment as a matter of law but when you have technologies like this and what's so complicated about this like your honor we had p experts who had a two week trial arguing about the nature of sperm cells and here's the fundamental problem and this is set forth in our brief a twenty six to thirty you can be we cite the trial transcript this was the  disputed trial is with this method with an expert and here's the question person of ordinary skill in the art at the time of the invention would they have had a reasonable expectation of success when they have had a good this is worth a try that's what he says he doesn't ever say and it's not going to work he has sure one kinds of cells that he's used eight or nine different types of cells he doesn't do it with sperm cells b sites johnson you know he knows the johnsons out there so apparently everybody in the business knew johnson was out there yet so a couple a couple points there when he does say it's an interesting possibility that doesn't sound like teaching a way to me that sounds the experts at length testified and this is that eight to seventy two to seventy five in the record but why you would take in k g said this works for small and sturdy cells the expert that's that's what you can infer from k heat but he says it might be interesting in this other application because one supreme court has told us not to be wedded necessarily even to the experts sure a question of law well your honor but the underlying question of motivation to combine is a factual question and verdicts were given to this jury to answer that question no your honor and when there is no special verdict they did not request one when there is one you take just like any other trial you assume all of the factual findings and for favor of the verdict winner here ample expert testimony that small and sturdy cells were very different than the unique large and fragile sperm cells and there was good reason why you would not expect the photo damaging technique in k to work with these cells  yes that was what a person of ordinary skill in the art would not have had a reasonable expectation of success and here's the reason why i don't see this at all but anyway well your honor it's in the expert testimony at length as in their scientific reasons why large and fragile cells sperm cells once they are damaged it do the paradigm missing speed though doesn't it and this patent doesn't solve that problem this patent doesn't in any way specify rates sure your honor but their entire argument as to why you would have wanted to combine cage and johnson is so that you could do it faster well and you were going you could double or triple the speed without running into problems centered on what this well well your honor the johnson and this is a little bit to clarify cage does not cite the johnson source that's at issue here it's a nine hundred eighty nine johnson source the johnson that is the prior art in this case is from one nine hundred ninety nine five years after cage does not mention photo damage  fact johnson wood johnson says and this is a six thirteen essentially says look i have solved the problem of high speed sorting i've developed a droplet sorting that can do it at higher speeds the problem as the experts testify is sixty times faster than the oil droplets werder that cage cited from one nine hundred eighty nine the problem is an expert said what if you tried to do photo damaging at that speed with sperm cells it will not work because sperm cells are large and fragile and you have a leaky laser once the sperm cells are damaged unlike the types of cells that kate tested they cannot repair themselves sperm cells cannot repair a pair themselves and in the reproductive technology that is the ballgame a damaged sperm cell does you no good so there is there is ample testimony it's certainly past the substantial evidence standard but is acting on you're arguing fact i'm arguing that you're not arguing sure i'm arguing that two principle underlying factors of obviousness motivation to combine and reasonable expectation of success if you accept that the jury resolved those in our favor then it is a pure a legal question yet notwithstanding all of that would somebody looking at the elements of the johnson approach and changing just the one factor how you're going to select the cells either  for division or for photo damaging or for whatever what final process are you going to try and why wouldn't you try one of the other two processes out there well for the recall the reasons that the experts testified experts at trial the who testified to what a person of ordinary skill in the art would have thought was possible in two thousand and three said because perm cells can't be repaired because they are large and powerful because they are fundamentally different than the types of cells that used in photo damaging you would not combine and it would not be obvious to combine these matters so the question is can the court say as a very low standard i think you have of non obviousness and i think that's circuit on more than one occasion for true readily assuming that certain subject matters had to pull but yes on under one o one that's right but this isn't obvious this case and to be sure we're not arguing you can never have s skill in the art is fiddling around jury decide let's let's try this instead so yes some things are not bad oh and then some things are enough of a leap forward they used to call the obvious a standard the constitutional standard of invention the right the purpose of article one was to encourage these advances but as the core points out it's not just stifle invention month or so the question for this court is is it so is a common sense that this should have been a summary judgment case that you can just look at these two pieces of art and say ah any person of warner's going the art would have combined them and come with this invention again we submit this is not like a case like abt or wires where you had what the federal circuit says these simple technologies that a court can look at and say no here we have ph d s arguing about the differences in sperm cells real reasons why you have the p tat so you always have obviousness then whenever ph d s have to testify no no no your honor what i'm saying is there are appropriate cases for summary judgment on obviousness there are far afield from a case like this where there are real reasons why when even if a layperson looks at the source and say oh easy enough i'll just combine them there are real reasons for turing that and the real reasons are sperm cells are very different they can't repair themselves are large and fragile they break up during this year of the last thirty all of these different reasons and remember there was an inner part of the review instituted here by the other side in the was because the interesting possibility language in cage is quote too slender reed to rely rely on in light of all of the other technology problems with respect to sorting cells now what they cite in their reply brief is another in or part as review proceeding which you may be referring to what they don't tell you is that's a different pattern involving different claims not involving photo damaging and involving different prior art they say it involves katie and johnson but it's a different johnson from one thousand nine hundred nine not the johnson that you have here so if in fact common sense compelled the conclusion that these were obvious that means that the p t have got it completely wrong the district judge got it completely long the jury got it completely wrong and that a judge i don't know what the jury thought maybe we should turn to the jury's decisions about that depend on the independent claims sure and stats are a backup argument that your opponents have sure raised so it seems to me quite sensible that if the independent claims found to be invalid you might still have a perfectly valid dependent claim because it's narrowed to one of several possible ways of practicing the independent claim i don't see the other way around i don't see how you can get an infallible dependent claim and salad independent clause of your honor there is a way around that just to give it a simple example to take it out of complicated technology like this if you had patent covering the recliner right the recliner has a head rest a reclining mechanism and a foot rest there is your independent claim and you could say that school enabled because they describe how to build that recliner you would then have a defense dependent claim that says we're going to add we're going to make that foot rest adjustable now the the specification in the patent may not disclose how to make that put rest adjustable the independent claim fully enable you can do all that but you have not disclosed how to do the adjustable foot rest that is a perfectly classic example simple example and that is why i have a child over dependent claim i think won't get difference in definition because i don't see how the depend functionality it is a subset of i resemble sam said when you are adding something instead of subtracting you could say there's no foot rest well now you have an independent claim with the head rest and the chair and a the foot rest to be taken off is it possible and call that the dependent claim making the recliner minus the detachable right is it possible that's a subtraction right now to be possible then for the dependent claim to not be fully enabled because you haven't given sufficient i'll quote the language from prisms are not mis characterizing it this is what it says a dependant claim may not be patentable despite the allow ability of the independent claim because of the absence of support in the specifications for the added limitation a dependent claim always has an added limitation the addition and subtraction terminology is a little bit off it's an added limitation because it is a subset that you have to show how it works in order to get the dependent claim that is why it is commonly accepted that you can have an independent claim that is fully enabled but not independent claim and they even if you have to nice you have cases that illustrate is that the cases we have the leading countries of the best case cases are in the written description requirement which they don't you don't have cases that are exactly what we do have a district court case kyra in which which except that the reason why there is not much case law on this is people don't argue this they don't dispute that in the written description requirement that this rule is correct they say oh chisholm is only talking about written description requirement which it's not that section applies to any woman and written description but even if it were only talking about him and description there is no distinction between enablement and written description for these purposes both require the full scope of the language that they rely on to be described in the specification for enablement how it works for description full scope of the description if it's good enough or just written come in once an ambiguous when it was found is that the former under texas does not follow the four corners approach as the cases that we cite what it does in order to determine whether a contract is unambiguous or not you look at the surrounding circumstances first and then you construe the language in light of the circumstances so our submission is given that one of the primary things they were negotiating around when they were doing this agreement was the potential that kathy means took this information with her on the way out the door and shared it with a b s you have to construe the language of section sixteen of the agreement in light of the fact they were trying to capture that event and when you construe it in the light of that we don't think the language  sentence about third parties it says s t's confidential information shown compass all of the foregoing information whether provided by s t in writing orally or by other means so i'm not reading that sentence out but when you read sentences like disclosure by s t provided by s t obviously this is not the the heartland case where you have the formal authorized disclosure from s p but what you have is an s t employee on her way ago she took this binder with her she continued to use that information on behalf of a b s through two thousand and fifteen that's the undisputed record this agreement was signed in two thousand and twelve so there was a violation through two thousand fifteen that's undisputed and so that's why this two thousand and twelve agreement is relevant to me like a clumsy way to write about an authorized information on someone who is not  and employee it was by no means authorized by s t to be handling this information your honor i feel is the primary concern driving the provision of yeah i agree with you your honor it's not a model of clarity but the only question is when you read it in absolutely does not support the proposition that was just articulated he's talking about written description when he talks about enablement in the footnote to that section he's talking about what we were talking about earlier where a narrower dependent claim beef may be fully enabled but the independent claim is not and that also incidentally is what the current case the council cited is about it's about a fully enabled narrower dependent claim but that has nothing to do with the whether the independent claim is is also enabled so i think that's just incorrect now on the obviousness council talked about all the ph d s and all these problems and all that but but that loses sight of what what the motivation to combine is about and what the reasonable expectation of success is about what you need is a motivation to combine the the prior art methods to produce the claimed invention you need a reasonable expectation of success in producing the claimed invention the patent here doesn't address any of these supposed problems of laser leakage in the lag times and all of that it just says put these the two things together and so the question is would somebody of ordinary skill looking at k looking  johnson have a reasonable expectation that putting those together would produce the claimed invention which says nothing about special treatment for sperm cells or any of these supposed problems the case law from the federal circuit which i understand is not binding here but nonetheless i think it's relevant makes clear that the patent owner can not rely on supposed prior art problems or features that are disclosed in the prior are when the patent itself doesn't include that doesn't solve those problems and  minerals cases about that muni auction is about that there are other cases cited in our briefs or about that so the fact that they're there may or may not have been these problems the fact that some ph d may have talked about them makes no difference where the pattern itself doesn't deal with any of this because what you need the motivation to do is to do to come up with what the patent came up with and it doesn't solve those supposed problems of the last thing just on the contract question we don't agree the texas law allows you to look at extraneous circumstances before you decide whether the language is ambiguous and the final point on that you judge what as you pointed out if this was true if there truly was a meeting of the minds on having this contract address the cap you mean situation it would have been very easy to do that in section sixteen by just changing the definition of estes confidential information the fact that it's still tied to information provided by s p i just takes the caffeine situation right out of it there are no questions thank you all right thank you very much thanks to both counsel take the case hundred