and aspect however the fact pattern aspect is completely different sand you succeeded in the first case on the issue of infringement sensu failed to succeed on the issue validity the defense property by appetites for successful existing effects as we sort of know and you sure the background i don't think you need to go over that but for the with respect to where we stand right now thousand and ten on a map a texas had to be f d a difficulties which would leave have interfered with its launching a product initial and you're not arguing are you that that if in fact you were allowed to go forward with respect to that its new claim it came out to re examine that that would give you any right to another thirty months that actually not were only and because the claim here doesn't relate back to the original claims our cause of action didn't arise until the reexamin paroxetine case caused congress to change that's why only entitled one we've had our one thirty month stay what the issue was we don't we're looking forward we don't want to have to text watch going forward it's a declaratory judgment for an injunction to prevent future infringement that little trouble following those relationships because you've had a one thirty months on your original script but now you're arguing you have a new pet that's correct your honor but then you're saying the new patent is blocked by the earlier patents thirty months i don't understand that what is your position as well it is blocked because the statu authorizing the three months even was changed a number of years ago i forget exactly how i want to allow only one thirty month stay hurt in the right so i've taken you down a road that probably it's a little bit  relief is that we've requested ok so going back to your argument you you argue that the facts are different here than they weren't at facts but there's two really broad language in that case are we supposed to ignore that language or do you think that language with dicta i mean how do we get around that language i think through two things around or i think broad language is and i think can be treated as dicta but it is qualified immediately after they back after reexamine the second case with the hof and court set at the part cited by this court nine twenty seven at seventy three ninety seven us up at seventy three thus claims to add or amended any reexamination proceeding will necessarily be narrow because section three all five are just claims that enlarge the scope of the original claims therefore no device can infringe the narrow claims emerging from a reexamination that would not have encouraged the original claims as well here we've got the opposite situation court was not addressing a situation where you've got a success on infringement on the broader claims but a lost on the defense of invalidity and we come that one within our claims which the patent office says that our patent what over the very same prior art and so it's a different facts situation and if the court also on hopping went on to say because the age sixty patents claims were broader claims you're not going to win on the narrow claims the issue there like here should be are the claims substantial seventh st that's what two fifty section two fifty two says which is referenced by the reexamination statute so honor that's absolutely correct and we have to prove infringement of those in our claims new case we don't get the benefit of that infringement judgment because the plaintiff changed i mean we had a very easy time proving infringement if you look at if you've looked at those original claims as interpreted by the court it was brought we now have coins which for us we have a new infringement case that we have to put on we're not saying we get the bet we get you know nerd but but the as i understand it the district court never entered a final judgment on the original claims until december correct correct term and they have written some of the original claims back in august i think she just went through since she found them invalid she you know the judgment i don't think the procedure procedurally maybe she should move but i think the fact is that she had made a finding in june of two thousand and ten that they were invalid and she controversy as to certain of the claims the claims that was cancelled as of the time she entered final judgment and the only claim as to which the case a controversy remains when she entered final judgment with claims that as that impact really the patent system once you sued on the patents it doesn't matter you're done if you get one bite at the apple it where we'd have to we'd have to accept that broad proposition correct no your honor the act is not made up of the product on the claims but simply the patent and that is contrary to the accepted practice involving the real issues were there when this happens has since procedurally she had already had the rover reopen the record and was in the process of designing a claim someone at the appropriate thing to do was we now had a reeves emanations to fix it with totally different claims to but you didn't give her the chance to do that well actually when we told her in august october now september of two thousand and eleven we did you every chance had she wanted to do that but i think the issue but you told me about a new claim but you didn't say can we amend our current action and now reopen the record for purposes that we did not know that your honor october two thousand and eleven that's correct but i would have been way way late in the case because again the patents the defendant app from me please the court good morning the question here is whether these two cases involve the same cause of action and this court's precedent teaches that the primary consideration in determining whether the same cause of don't you don't you see a distinction between a case in which there was a loss on infringement vs the case in which the original claim what was being invalid because it was too broad i see no difference at all  the also what goes into the cause of action is the whether the patent is involved whether that's the same patent because each patent gives rise to a cause of action what what they're saying is that they get a second shot because now they have they they think that are in the letter the defense is weaker this time around so they should get to go out again against us with the reexamine claims and you say each patent gives rise to a cause of action so if you do on a patent you can never assert a different claim under that patent against a different product a different product yes the same product no because that's that's the hemphill case that is a classic case of claims letting know what they have done is they had a patent right the zero four five pen right that they initially suit on they lost and they went and they got it reexamine now that muzammil nation gave them no further rights you know from aspects give them no for their rights against infringement that they didn't have the first time around i don't i'm having difficulty with that because you've got a narrower claim that has substantially more limitations krauts under that whether you think it would be invalid otherwise is a different question but under the court's original invalidity it out that there's no doubt that it's not the same claim it's an error claim yes and the don't don't we say repeatedly in our case that it's the claim that the fine the read seven claims by statute can be no broader so the read seven claims are in that circle they might touch it or they might be a little dot in there or they may be somewhere but they're in that circle so when since you bring suit number two what it is doing is it is calling certain rights out of that same bundle of arguing that it was for lames are within the circle they're within this in a smaller circle because they are now or claims but they're still within that bigger circle precisely just play that's a circle that they had to start with wasn't my idea was my law clerks i was very good at the so it's the it is a smaller circle and so what it's no different than suing same defendant and same product claim one in one to claim to another suit it's the same issue of claim splitting  to such great lengths to compare the the new planes to the old planes to see if they worked functionally the same way why did why did the court in aspects go to such great lengths to compare the planes and  reading of aspects is that the holding is that reexamination because it has to be an error because you know where the rights against infringement that you didn't have the first time around so again the venn diagram whether it's  there or whether it's a circle that's almost as big as the first circle even butting up against it it doesn't matter but it can understand if you're talking about if you don't have french the broader thing then there's no way even to infringe the narrower claim but that is not what makes up the cause of action the cause of action is derived from the facts that give rise to the claim the operative facts in a patent case are the accused product and the patent and whether a defense is better or there's a different defense or a stronger you know they think a stronger weaker defense doesn't matter the defense inability is merely a defense to the claim itself so you don't look at defenses and how they might change from one to the other in determining whether to cause of action are the same is that why the fact that they won on infri free to renew that against anyone else but they are not free to do that against appetites but they didn't lose on infringement the first time judge risk would have caught it doesn't matter whether you win or lose it's what you the initial claim they could have included you said that in your brief that they could have asserted this narrower claim but but i mean let's explain basic principles of law that says you can't import all those limitations into that claim the tried to to claim it merrily you would have laughed at them well they had the right to sue on that now us whether you have the right to fill out a claim that had never been issued no no that was the solution in fact there were so grotty that they asked the judge for an airing construction which they received but in any event they made the decision to go to trial with two to go to trial with only those brought claims why didn't they ask tell judge robinson to stay or amend we have very liberal rules of amendment jointer we tolerate directions in trials it's we have a system that's designed to get at the truth and to resolve disputes between the parties they could have asked judge or they could have actually told her that they were going for examination and they could have asked her to stay that first suit and did so that all of their rights or all her claims whatever claims reexamined claims they want to bring could have been determined in that first lawsuit they didn't but when they went for a examination aspects that already issued the district court decision and aspects that are had already issued so they knew or at least they were on notice that a district court had already held that a reexamination doesn't give you suit two against the same defendant in the same product that was a calculat choice that they made they chose instead of asking church robinson in the first case to stay to hold everything wait we're getting reexamined claims things might change instead they did not tell or they took their chance and now they're trying to see they're trying to assert those claims against us in a second lawsuit well the interests of repose finality and whatnot we draw the line there at least the court has wisely drawn the line and and i say wisely because if they would be permitted to bring a second suit here what you in current senate spend has to draft the broadest possible claims go to verdict against those claims and if you lose well they can run back to the patent office and shave a little bit off the claims and try again against the past against the same defendant and the same product so what you have what you  is the product doesn't actually exist that this is just a hypothetical product that doesn't well the fact is that it's the same product that's the thing and the and it is a stand in for the product in these cases so i understand that it's not really a product that's out there on the market right now no it's not but it's the end of the infringing mechanism and that hasn't changed so what you didn't courage is that the lose lose the first case go back to the patent office get and there are claims assert them against the same defendants in the same product if they lose their go back again and so the district treasures are not deciding any controversies between the parties and they're not deciding any disputes between the parties but they're merely giving advisory opinions about helping the patentee define the scope of their claims that might survive but what do we do about the fact that the district court's decision was premised on the assumption that they could fanatic it's we're weren't on the same you know the same perspective that the district court is using and you review judgments you know review each you know each word of the opinion so the district court had it right the district court said that followed aspects and said that the second the reexamination gives you no extra right against infringement that you didn't have the first time around so the district court has it absolutely clarify one thing the suit is not on the in that ship sailed with the first two this is on apa texas threat to launch the product which is a different cause of action doesn't ride on the two seventy first super relief would have been an order against the f d a to not approve the and that's a remedy issue but we in that case we're filing on the technical act of infringement here we're acting to say we say said correctly an attorney went to patent suits are actually the same cause of action she said the federal circus looked primarily one where the accused products were sense of the same and whether the patent claims being asserted are the same well we are looking at claims seven your honor and we were looking at a client at a company that had an approved and up and could launch and we thought that we could win on claim sell them and that that would then allow  injunction against after tax but wasn't that a calculated risk if quite frankly we didn't think that we have the ability to bring this new claim into that case this was a whole new client  that's correct but that's not the test you're out of the test under two fifty two is substantial similarity and substantial similarity doesn't exist here it was substantially similar to the patent office will issue that and even the district court in a subsequent decision acknowledged that she never issued any decision on the merits on a claim which had a limitation on e t s in the present way if i have a glass of water and i  pour half of it or a third of it into another glass isn't there substantial similarity between the contents of the two that says you're doing the analysis that's necessary to reach that conclusion that's the analysis that has to be done here substantial similarity to clients if you take that glass of water and you put some of it another glass and now i put tang with it we didn't add anything well we did our claims have had substantial things that just like m separate cause of action on the long naylor course stryker so wait a minute that's substantially the same and this court said no we've got to look at that product and substantially different so they didn't split the cause of action maybe they could have brought in the first case they could have amended in the first case to add that project's use product they didn't and stead they did what we did they write a separate course of action the separate action so i think that you know has happened so it's not unusual for things like this to to go on what is unusual is for a patentee to lose on validity to be able to go to the patent office and fix it this is happening you succeeded on the infringement question but was the first lawsuit still ongoing when the new claim was issued in that case i don't believe always your nothing in the record that i can see maybe the solution to this