thank you your honor please court the district court in this case without hearing any evidence of health claims twenty four and twenty five of the r e one five three reissue patent invalid that decision should be vacated the threshold issue is did the district court have jurisdiction and to decide on the validity of noah's claims and the answer is it did not arcelor mittal had not asserted infringement of those claims in this case more importantly it provided a covenant not to sue defendants or their customers on those claims that a limited any possible case or controversy as to those claims were going to be let's put the covenant to suicide for just a minute because i think these are two discreetly different twenty four and twenty five were at issue in the case as previously appeal and they litigated them from start to finish throughout the prior district court proceeding live people to us that down and now all of a sudden it seems like in a lengthy eleventh hour argument and two other cases that have to do with post trial conduct of the defendants twenty twenty four that the r e one five three pattern in general was asserted in those two other cases in our case on them after the first  remain and we did move to amend to substitute specific claims of the r e one five three pen one two five seven and sixteen which were the claims that had originally been asserted under the original pack those were the only claims that issue in that case so sure whether we have sort of them in any of the cases or not claims twenty four twenty five more issue because we needed to get a judgment as to those two claims vacated which which this court did i know you can't waive subject matter jurisdiction but certainly the argument didn't come up and when i read your briefs in the prior case it seemed as though you believe claims were in fact that issue and treated them as such in the briefing it wasn't just a matter of we need you to vacate this particular ruling and certainly it wasn't brought to the court's attention that these claims are not being asserted in fact throughout the briefing they talk about infringement of the path currently don't talk about the claims in these claims are part of the patent and so when i read all of that i think it becomes difficult for you to convince me at least that your client didn't acquiesce in an act as though these claims were part of the litigation at least as of the appeal briefs to us in the us and your honor they were part of the did you didn't identify specific claims and twenty four and twenty five were at issue in the litigation why don't you i mean i don't i don't want you to spend the most time on your worst argument i'd rather be safe with time when you're better arguments alre conditional on the amendment of a complaint in the other case i'm not going to remember that docket numbers i'm sorry right from getting the facts though generally i don't really sure close so pushy had not done it in a single order but had done it in two separate orders a day apart with the first one being summary judgment at that point the covenant had not taken effect that doesn't mean i'll come back to the taking effect part but i don't think it matters your honor and here's why and let me let me maybe lay out the timeline a not august fourth there was a hearing in the district court and that's i don't have the page site here but it's and it's at the back of the appendix there was a hearing in the district court where counsel said we're dealing with the zero five zero case the only claims that were at issue in that case have been held invalid were not asserting that that anymore we want to proceed in the other case on the new patent then on september fourth we moved to dismiss this case the own five zero case on the guy on the ground that there were we weren't asserting any valid claims in this case and in that motion and this is at forty nine fifty six of the appendix we said although we don't think it's necessary we are prepared to grant a covenant not to sue on i think at that point there were what if to the extent that there was any question at all about whether the claims had been asserted that question was resolved and there was no jurisdiction and that when were the parents we haven't actually got it dow jones case for example there was no sign common and there was an offer of a competent and it was can end it was and that was conditional by the way on down jones the defendant dropping its invalidity counter claims which it refused to do this court none the last held the offer of crystal clear that they were issued because there's a pair that we thought it was or actually if we thought it was crystal clear and obviously you're right appear it wasn't crystal clear to everyone then in the reply brief on the motion to dismiss this was october twenty third and on its fifty two eighteen of the appendix as explained in the at the hearing and we tender it conditioned on resolution of the motion to amend which is obviously the core of the problem but but the condition your honor notice it wasn't  condition on granting the motion it was conditioned on resolving it was going to happen the carbon in itself is unconditional the you know the text of the covenant it it's not good it doesn't say and runs from the date of the granting of the resolution of the motion should just give it to it your honor and this is this is the height of irony believe it or not we thought this was this would be so later yeah i mean it i think you did this for so that you wouldn't have to the rights right it would make it easier for the court and the like exactly exactly and so it is that enough to make it conditional i think it is your honor because the task is the task under the supreme court precedent and this court's precedent is whether under all of the circumstances the defendant had a reasonable expectation that it was going to be so that it could be sued on these claims there was no way the real question is did you have a reasonable expectation that eventually the motion of the men would be re resolved i think i think we did your honor of it but it but even if it even if it didn't even if it hung in limbo forever first of all we would have just gone ahead and filed a new lawsuit which we made clear on the record on october twenty seventh and well you know if you want to file a new suit we will but we thought this would be simpler i don't know i'm not comfortable with a presumption that federal courts won't mention a result then well i say i'm and comfortable that are in particular judge  you know i don't i think i'm glad that it didn't because i think our argument is better because it's there it's there was no condition on this ng becoming effective or you know if you didn't think was already effective the motion was going to be resolved one way or the other there's no question about that the terms of the covenant were clear they'd it's not like it ran from the date of some action it was forever and ever past and future so there was no reasonable apprehension on that the defendants could have had claim twenty four the prior obvious this decision found the claimed obvious only difference being three hundred four and the rendered obvious claim is the rendered obvious claim was construed as fifteen hundred m or greater which includes fifteen hundred m p and play here and claim twenty four says in excess of fifteen hundred m of looked at the prior art reference at issue clearly disclosed express invalid so why are we here you're telling me why i'm spending my morning discussing subject matter jurisdiction well you and you're fighting me over these two claims which have not the sliver east of hope of being held obvious let me say two things one is we're here we didn't want to be here we want to we wanted to drop these claims and just move ahead with the good they're gone earlier and the second thing is your honor i would take issue with the fact that there's there's no have disclosed to one of ordinary skill at the time is a question of fact that fact that's never been addressed but p t o issued these claims despite being informed of that precise prior art as well as to this court's prior decision as well as the jury for so i argument on the fact that the patent office the infallible patent office issued it no i will hang my argument on the fact that it is a question of fact that is an important piece of evidence as this court has held in other cases that no fact finder has considered thank you it's then lost twice on appeal about infringement and obviousness and they are desperate to avoid a final judgment and they tend to argue they have another real issue which they've since gotten which they are enforcing against defendants and they appeals have occurred what we're trying to do is get a final judgment of why the argument over preclusion let me start with whether twenty four and twenty five or in the case they put it squarely in the case last time and they did so to avoid a final judgment this is it a five one nine ninety five two hundred even if only reissue claims twenty four and twenty five remain there is evidence that those claims weren't phrased during the time period that issue in the zero five ok's they're saying five twenty four twenty five they're going to start infringement of them in the over five ok so that relating back to the time frame of that case that also means they're meeting under two fifty two that it relates back after our motion for summary judgment had been fully briefed and there had been and there was argument and it indeed the first time they showed up with a covenant at all was a draft covenant attached to their reply brief and their motion to dismiss after you know at the end of the close of a briefing that rest on it is not even the covenant they finally came in with because it had a number of problems so there's been not they never moved it was no briefing on that covenant that covenant came in start right so they have four problems any one of which defeats the covered one is under already the nikkei the supreme court case a way that post dates doubt there was a controlling or now they had a burden of formidable burden to show that  absolutely clear that the case was moot but they never made a motion they never briefed the specific terms including the conditions of the act so they made no showing their argument to you about the conditions they never made th district court they're trying to raise on appeal issues they never presentable of why because that covenant was so belated to the covenant was defective while as they admit and as it says in the condition purpose of the condition was to keep alive their other case the sixty five case asserting the very same ari one fifty three claims against os so at the same time they're saying they don't want tension  infringement of those claims they have a second case asserting them now they say what we want really serious about that case we just wanted to amend the fact remains they said specifically in their code their cover letter submitting the company that they were don't believe so because it was said specifically that didn't become effective until she acted on their motion to amend what they were saying was you're not listening to me but i said i don't believe we could once it became effective i'm sorry could you have asserted it in the other case if she had grant not granted the motion to amend then once it became effective we could have time in the exact same order right in the same order she grants the motion to amend it like the last sentence or you are sol and i mean i was even perplexed because the front page of that order even though these two cases are not consolidated it seems to be a single order with both pockets in the front to make it clear that it was entered in both dockets so she granted a motion to amend so the public went into effect right then and there another reason to which is for james even if we give them even we got rid of the condition and as i say i think she had jurisdiction to enter that order and that order invalidated under four j's a covenant that after a jury trial and when there is no reasonable apprehension of being found to infringe is not effective is not effect if you deprive a court of counterclaims and that's the four tapes case of four twelve at third thirteen forty thirteen forty eight and so she had hers because by the time they gave a covenant not to sue they'd already abandon infringement because they'd lost the jury that found that there was no infringement this quarter to firm no infringement  infringement the lawyers they cannot move the case to avoid preclusion which is exactly what they're trying to do here they cannot move the case by giving a company the company does not cover anything because we don't have fr of effect on road to have a party invest in all this litigation and be told look clean slate we start over again i think even an activist here we've been through a jury trial into appeals it's time for final judgment and so it was a pure slip up or something else we don't know but that was litigated and this court held in arson we talked to that the courts that the judgment of good decision in argument or one continued and that  but this is not anything like for change yeah there was a trial here but it was a trial of different claims from a different pad and under of the wrong claim construction the jury verdict was vacated the points twenty four and twenty a key actually say look it was your obligation to come forward in the stablished this i mean this is a burden of proof question you know who has the burden of coming forward we've got to give an order or she did both simultaneously i don't know what the heck you know but but what i do know is if i don't know what the heck to do with somebody who loses the person who had the burden of proof so tell me given already and the burden that was thrust upon you in that case as the person asserting the validity of the they said is you have the burden of showing there is no longer a reasonable expectation that this would be enforced against you i believe that's pretty close minded and here we clearly met that standard term for our prior statements which i know you by hypothesis were saying are enough but still their relatives are certainly relevant they're relevant and then we have the covenant saying that we are not asserting this patent against you or your customers forever and ever and ever there was no reasonable expectation that we were i'm going to assert these claims  against these defendants or their customers and that's the nikkei the already task now that the condition issue is a separate one and there i think again because it was the supposed condition was just as a matter of administrative convenience we'd like to proceed in that in the the old caillat that's a choice you made it is a choice we made your honor but it doesn't affect the effectiveness of the company well it might well it depends on what this court decides obviously but i think it does it didn't more convenient and orderly to just proceed with the six eight five case rather than file a new one that obviously backfired it was not with hindsight we wouldn't have done that because we obviously made things much more complicated but i think there was no reasonable expectation that they would ever be