patents are lurking here the total family has ten of them two of them are currently subject to a declaratory really faction that they filed in california which the parts of agreed to stay for the moment because all of the pat succeeded on the grounds of validity doesn't the terminal disclaimer presume that there are similarities between the parents it presumed it well your honor it does in the sense that it's usually only file in response to a obvious type obviousness type double patterning rejection or suggestion happening at the patent office with that's the that's the use of the criminal displayable really what you're saying in that situation is that the understanding of the rough you know the low that's right you're on and that therefore by being patently indistinct there can't really be a new cause of action with these patterns given in substantial difference between pedient obligation into an admission or acquiescence of a stop on the merits that's the quad environmental case so when we filed that terminal disclaimer it would be improper for anybody at the patent office or anybody in subsequent litigation to say that that isn't acquiescence that that is an agreement that these inventions are in fact kind of way indistinct furthermore your honor we are here in the context of a motion to dismiss it is their burden for any one of these doctrines to show that these patents raise the exact same cause of action as the prior patents now if you do that they simply point to the terminal disclaimer and the relationships of the family as if that created an presumption that they released one and only one cause of action that is never been found by any court district court or any of the opinions of this court for and furthermore the inference is need to be i guess and the concern i have is i've looked at your claims and looked at the claims that were that good and simple error one and rig your patent and even if we were to send case back i don't see how you would be able to survive a new motion arguing that there really is no new cause of action here because the claims are so similar to the prior flames  and specially in every critical way or for an issue preclusion argument given the claim language of whether the system is online or offline you're going to be getting these notification messages i mean through internet you know under saddam and in three point the first is that similarity between these patterns it is not sufficient to show that this may give rise to the same cause of action this court has held repeatedly that each continuation patents and by wall we are permitted during prosecution of these to make them broader for example by removing limitations that were found not to infringe and i thought my point is when you have the same clan language of regardless of whether the user device is online or off you're going to get these notification messages i see you're going to be using this distinct pathway for transmitting and receiving the notification that's what is different from the internet connection you are it is not the same language the queens are drafted differently and they have a different meaning and this court never previously ruled on this claim language the ruling that was on the prior patent and this is and the opinion that the judge also signed onto on the island for patton addressed different language a term data channel that the court said and rightly found was not found anywhere in the specification these patents specifically refer to an information provider which is  is a source on the internet for example e s p n dot com and their website and what these claims say is that you're going to send the notifications and then notified the device so even when the remote computing whether online or offline that basically means whether you're powered on towers off to the network and there's additional language in the claim that says whether your power and on to c n n dot com or whether or not at the moment would be proper in one of two situations first under clean preclusion if this court were to conclude that kearns doesn't apply because that's too much for a bright line rule and we do need to in fact even for purposes of cl assumption an automatic assumption that because there's a terminal disclaimer filed or because these patents are part of the same family that we don't even get to make the argument about material differences between the claims the second context in which the an all the patents and see if there are there is indeed any type of preclusion absolutely your honor and we can win that argument but well the argument of issue preclusion and this is something that is also distinct about this case usually when these matters come up to the we believe that if the court is going to adopt a test that says for purposes of claim preclusion it's not enough to just simply be your own patent you have to look for a claim for who isn't that's a german whether there's material differences under the claim then that's an analysis that needs to take place at the district court where they need to meet their burden of showing that these claims are met that are materially the same as the others just as in a case where a new product is asserted it's the burden of the defendant to show that the products are sensual the same if the test is going to be equivalent for related patents as it is for related products then it still is their burden to show there's no material difference if we are going to get to the doctrine of issue  and into the fact the question of whether this court and its prior decision ruled that there is only one invention in this entire specification and it has this one data channel limitation and that no other claims can ever issue in any other patent out of the specification that are different want to reserve the remainder for a bottle we will do that  good morning it was a court simpler it's had multiple opportunities to prove its clients it's asserted for patents against google and we've got final judgments in our favor for google on all four patents this is now the fourth round in which they're serving the same invention against the same excuse product by falling terminal disclaimers back to the four three three patent simple error made in elect statements saying the mission that's correct your honor so so i want to get right to that so we're not arguing it's a new mission we're not arguing it's just awful to look at those cases they're not talking about of obviously they're not talking about obvious this type double patenting based on the prior patent those cases are talking about can i argue obviousness based on a piece of prior art what the point i want to make is regardless of admission or stop all during the prosecution of a patent if you get a rejection for obvious nice obvious this type double patenting the pads he can make an election they can elect to challenge that and preserve their invention as a separate invention or they can simply file a term of disclaimer the effect of filing the terminal disclaimer  obviousness type double patenting as we know all that yes so so so it's just the district court i can't argue obvious nice type double patenting to the to the jury or the or the court because they've made that election and now they come to the court now but to argue claim preclusion you have to then at the movement argue why these claims are qualitatively the same or in significantly different from the claims that had already been litigated and that's what you didn't do you use the terminal disclaimer as and screeding i guess a strong presumption is not a clear rule that these claims new claims can never be litigated in light of the terminals claim and that is runs in the teeth of quad environmental motionless keyboard and ortho pharmaceutical where we say where we've said you know we can debate whether it's right or wrong but we have said that you cannot look at it from the disclaimer in some kind of it's a very important factor but you need to look at the totality of circumstances and the totality of circumstances your honor we've got multiple lawsuits being filed on the same patent family we've got this district court has now say it's a test that looks at whether there's a common nucleus of operative fact and let me give you an example your honour's the fact that there's multiple lawsuits were only around here doesn't doesn't respond to that all i'm saying your honor is it looks at the factual situation where there's a common nucleus of operative facts in the supreme court on down that's what the transaction tested and i just want to say one thing about this think about counter clients and compulsory counterclaims what's the test for whether a counterclaim is compulsory whether there's a common nucleus of operative fact same test here we're talking about claims that clearly are not even the claims of the plaintiff this is making their claims from the defendant their counter claims and those claims if they involve the common nucle asserted or their weight so the common nucleus of operative fact is not limited in some strict way to a particular claim it's looking at the factual situation what is the story what is are the common facts that are the point though i'm making is there's two different doctors here and the trick and the claim preclusion doctor is meant to avoid having to do this having to go back in recheck everything and make sure everything was identical a decided it's saying if it's the same transaction the same common nucleus of operative fact but that's the whole point you're assuming the conclusion isn't the same you know transaction this is the same common nucleus of operative facts yes they all come from the same that's mackay sure but they're all different claims but you can't just automatically say every single continuation patent is barred from being asserted after one patent entire family of patents has been litigated to none for enjoyment that can't be the whole so then the next question is what is the law and you're saying well then the next move this terminal is claiming that we have case law on the books that  turmel disclaimer shouldn't be presumed to have some kind of substantive confession concession and stop of so then where you go yeah i think where we go is you've got to actually go through the exercise and it could be easy is being accused same witnesses are going to come to trial and testify same experts it's going to be the same trial as a court has already done twice and the only difference will be that it the terminal disclaimer that's correct your honor what else did you drive while i think the judge took into consideration that there had been two trials at the same accused product it's the same family of that i disagree with that now why is that wrong because that's how i'm currently thinking if you look at those cases carefully they're never addressing that issue they're talking about a piece of prior art motionless keyboardist talking about i forget the name of the  name of the system but it's talking about a prior system and whether was on sale what i'm saying is when you terminally disclaim what you're doing is you're saying i'm electing to take obviousness type double patenting after that other paths that specific issue off the table and as a result i get a patent that i may not have otherwise gotten as a result i don't six i forfeit my term as a result i can't sell that had to anyone else without selling the parapet and because of the policy doing the same policy that i'm advocating the avoiding multiple harassing suits that's the purpose of the not alienation doctrine and so what i am saying on turmel disclaimer talking about ok there was the old pattern and then there was a new pattern where terminal disclaimers filed in all three cases the old patent ultimately in litigation gotten validate per section one of two section went to the and then the to go back and do independent analysis on whether or not that new patent is in fact invalid under one of two one of three whatever great that now that we have the principle and the three cases that you cannot  of law patently and distinct from the old and the bread even let again because at the end we can do it because those cases you just reference are talking about a shortcut blaise you said so that you know you don't have to look and see if in fact in the early disclaim had it i where they get their patent by filing a terminal disclaimer your honor it avoids the challenge of obvious this type double happening it's had an office and then turn around and when there's a serially suing on the same invention make that argument that very argument that the pad is distinct having filed a term of this claim or to get their patent in the first place is completely an equitable and it's not having anything to do with admission about prior art so i have anything to do the actual more merits questions of comparing a new claim this court is absolutely authorized to consider right now your honor because it was because number one in its opposition or its in its appeal papers a simple error makes the argument that the patent is different they make that argument repeatedly and i can go into the merits of that but we don't believe it as an american but they have raised that issue now we we in our opposition are upheld the papers said well the alternative the court could rule on issue preclusion and that's a slam dunk as a matter of law too and now in their reply they say well we can consider it having argued that  at least entitle to the opportunity to see their actual claim construction proposal the portions of the specification of they rely upon how exactly they are interpreted and the prior opinion regarding that data china language to be so broad us to preclude any other invention in the specification from being quaint the second point your honor is that on this issue again of distinguishing these claims from the data channel claims tyra i would direct the court to eighty eight colonies twenty nine starting at line forty four this is within the forty four patent and if you want to take a moment to get on your own yes appendix eighty eight starting at line forty four are you there your honor this is one example of an embodiment that matches with the whang which of these claims these information provider claims what is described here is the figure thirteen environment and what you'll see here storing at wine forty seven is quote in accordance with the present invention a user may be instantly notified of e mail messages without being connected to an e mail service provider that embodiment that invention is about sending a notification to a remote computing device that is not connected to an information provider in this case an e mail information provider and if you walk through that environment and figure thirteen what you don't see there prejudge our billet on the merits of issue pollution so they've argued that the district court well had all of the knowledge from the past case and all the experience of the patents in order to make a determination of what these patents are about how they differ from the other ones we don't dispute that date that the court had that knowledge information were saying that both sides need to be able to participate in a process where we identify portions of the specification it's a poor our various positions this is one such portion