warner honors robert price plan on behalf of appetites in this case this case raises the interesting question of what is the impact when this court reverses a trial judge holds a patent invalid and specifically states in the decision that it is not getting to the other two issues raised on the appeal i think it's important to look at the procedural background of this case and of the court probably familiar with let me highlight it again doesn't the inequitable conduct stand as the law of the case because the law but you wanted to challenge it why didn't you challenge it on this appeal here we did challenge an equitable unit and did we do not reach it no actually it did not review it this court said we're not even going to get to it we don't reach it exactly right we're not ritually me we read the brief we know what was there we'd reviewed it we just did not reach it now the question i ask again why didn't you just appeal it here if you wanted to discuss the merits of inequitable conduct again i guess what i'm confused about is when this court says w appeal it again i don't understand what this court means by appeal it again we're appealing the decision down below now which was done on the motion to dismiss had it been i motion for summary judgment the merits of the case would have been looked at  that day but that didn't happen you're arguing here the the application of the law the case doctrine why didn't you argue that the inequitable conduct issue the merits of the materiality in intent why didn't you raise that here if you wished to substantiate your case for the damages you wish to receive again i'm confused when the court says without that you can't make a walker process claim because again walker process requires more than an equitable conduct if you don't even reach an equitable conduct you can't make walk or process arguments we don't get to that point because the district court's findings are not the law the case what invalidated them where did this court say they are wiped off of the the rule book for this party has now and the court does not reach it the party has not had its full day in court there can't be a lot of the case because we have not had our full hearing because when it was appealed this court did not have to get to of the case at the district court doesn't depend on what this court does unless we reverse them that to the degree they are reversed of course that is wiped off of the books but but what wiped the inequitable conduct finding off of the books when it was appealed if we live below the case meaning that you mustn't be allowed to have your full dating worked you had it it came here and we did not reach it and so it go so it remains as it was before as less will you ask us to reconsider which you probably should have done at the  time it is important because of our pending walker process claim that you reached an inequitable conduct in the court would have done so well the let the process claim but now you bring walker process back to us my argument is why didn't you at the same time because it's required argue the district court's inequitable conduct was incorrect and again we did it and that's the problem not new claim which is the antitrust point if we had reversed it if we had reversed the whole case you would be correct if we had just said your judgment below is reversed we only discussed maybe the obviousness but we reversed the whole vertical we didn't do that here we specifically say we are not reaching a portion this portion is reversed we're not reaching this did you come back to the year earlier panel and say oh no you can't do that you got to decide it no because under mascara we felt by not ruling as not ruling that a lot by taking a position with this court was not d the district court we would have said ok we don't have unforeseeable it anymore but neither of those two things occur what occurred was this court didn't review it and as such and didn't reach the issues as determinations of the trial work continue to work and the stop well what happened in cowbell not when you have to look at it the issue that they're talking about is when did the person know where should have known that they had a lung disease because of where they had been working and the playing of the good that's the be allayed event they didn't raise the issue on the first appeal and they didn't raise it because they had agreed they never breach the issue on the first appeal so that was just assumed by everyone to be the last of the case you know you're absolutely right your honor she never raised at the issue of when the english took place it's only at the second trial that she tries to change the date and now launch it to be a date in the future and that's when the court of appeals that this applies but the other interesting thing about our bill is they draw an analogy between the leopard issue preclusion they refer to it as a stoffel and the other case this court even  exxon said that we follow the law of the case and it's federal law and then with the mascot with issue preclusion and it says if you don't get your full day in court which we did not at because there wasn't a decision on the appeal that process which has to be a lot more there's a celeb share what's your point there discovered we're going to take we have a jury trial waiting forced down below if she goes to rule on summary judgment there and tested issues of fact and we believe discovery  out others we have served document requests which weren't responded to last once but you're going to win this time right that's that your honor we believe we can prove you're going to win this to a process yes ok jury trial on those i made a very specific we have a transcript where i reiterated that again so at trial that was just our ermine of defense's including an equitable conduct anticipation and obviousness that we tried were was that really become a law of the case of the issues not considered by those four and our position is it does not and that's what we've been arguing and arguing here well what happens in a situation where it's not considered but it's an issue which is still you go back to the district court judge greater points you still have to overcome the burden of proof of  what you have them what you had before none of the issues we asked for on discovery at the trial below there was a quick look at law the privilege will show there were communications between the us at an attorney and the japanese patent attorney who was working on this right around the time that the various references were filed the us patent attorneys filed was point there was nothing in it other than that they destroyed it as part of their policy but the plaintiff backed those documents put them on the privilege of law those communications we would seek those documents now why would you get discovery isn't discovery clones not remember we're in the new case we never took any discovery on the antitrust point that part of the case was not litigated you agree that there's there wouldn't be issue preclusion on the an equitable conduct in a subsequent case right under massa yes because that there is not it let me make sure since again workers and even occasionally courts have use these terms your exxon decision says this is covered by regional circuit was the third circuit is struck traders right with third circuit here's where we would look for it is not a preclusion district court has the power that's the difference i mean and that's the difference from the m reinstating the decision which we held was wrong again this court has the ability to say that something is moot and knows how to say it when it means what the footnotes as  issues between an equitable conduct which was try to keep talking about his day in court they had their day the court had a full trial they had first discovery there were no it with issues they had to challenge the privilege rock back then they had full discovery they had a trial and we have eight questions of damages he's correct that discovery west and addressed but he's absolutely incorrect as to the questions of fraud all of which were included again the standard as judge rater said is much higher for on everything but causation on everything but causation frankly because all the rest it's the same proof the experts on patent prosecution process where they're the inventor etc all of that evan is entitled to a jury trial in the walker process is that not true he would be entitled on any issues that weren't already decided this goes back to parkland by agreement by agreement first of all he is not kind here is not claimed here that judgment he would have to get past motions but yes you're out on on the fundamental if you don't if you don't stipulate to try inequitable conduct first to the bench which is what they did here and you carved out and it's not the law of the case if you lose on that he's in trouble to a jury trial and walk a process right on the he would be entitled to a jury trial on on walker process and the circumstances but here's his has that been wiped out  fact and frankly if we were to look at the merits of that inevitable conduct claim claim it is incredibly weak and and had my friend what judge rater suggested would have been available to them and have said to the court at the time that the footnote said you weren't reaching those issues just like if you had said well excuse me this doesn't matter because these issues overlap factually with the a c s they have asked for a rehearing when he's won when we've determined through an equitable fraud and it wasn't moot because some common issues of an equitable conduct restore law and the counter crimes and the decision to destroy her decision doesn't become a nonevent district court decisions are presumed invalid unless and until the f to whether a rehearing would have been an opportunity to advise this panel of petitions after the first days and so after the first decision of addition for rehearing that says excuse me you didn't reach this issue you have to and you need to because it has consequences because we tried before the bench by consent no jury problem here by consent we tried exactly the issues without which we can't make out walker process and therefore we  we fully briefed it would like the court to decide that they could have done it they made the decision not to figuring they had a better shot trying to persuade a new district judge since that judge was retiring to do something different the second time around  discretionary doctrine and you do have the ability to review for abuse of discretion the district judge is not precluded she looks at the decision below and decides whether she's going to follow it doesn't require  present your honor if you look at the line of third circuit case of him not to do it as absolutes many of them are decisions that never got to the court of appeals well those cases sure sure i mean nobody's arguing that if the issue didn't get up to the court of appeals that it's not was the case if they decided not to brief the issue if they decide not to raise the issue it can become off the case but this is a situation in which they did raise the issue is there any third circuit case where they didn't raise the issue in the court like this one said we're not going to reach it where it's meant held to be a lot of the case in future situations i'm not sure whether p r p r g may have been such a case your honor i can i will i will take a look at that but it is but the point is that the case doesn't depend on any action by the court of appeals and the third circuit case is to make that clear they had the opportunity to argue what the script of the third of the extraordinary circumstances the opportunity to go into the district court and argue that judge bassler got it wrong on an equitable conduct they had an absolute free shot of that when we made the motion in the district court they didn't say issued his u s patent and you have presented to them and i would they raise that they're saying it's not off the case the complaint should have been dismissed the only grounds for dismissing the complaint was law of the case they weren't idle to proceed why would why would they start or you mean the fact that you made a not saying it's not the case means they have an opportunity to argue it and they have not they have not done that they still haven't done it so that in this court and this court constrained by law of the case that the case is a doctor that yours with courts of comparable jurisdiction the decision the decision of a district court doesn't bind those courts so again responding to judge readers initial question there's nothing that would have prevented him from arguing the merits to this court today and this court would not have been constrained by judge pastor's decision and would have been absolutely absolutely free to say we've looked at it it's right it's wrong whatever you have the decision before you but he again made the decision not to do that his argument is that you don't get to the merits of  about this court silence on the issue or failure to address the merits of the issue and the impact of that if we're talking issue preclusion absolutely but that's not what law the cases about and that the cases of discretionary concept that's intended to preserve judicial resources and it basically says if it if a number judge of probable jurisdiction has already decided this issue i'm not going to redo it unless there's a good reason and then three examples of good reasons are provided in the third circuit case to read directly from the case in this in exxon that was not a reversal of i recall correctly in this case there was a specific reversal and there's a court said we're not specifically getting to one of the benches you raised the  or it's our position that under those facts which aren't the same as in exxon under those facts we are in fact the the patent is now been held to be invalid there were these other claims set aside and this court decides not to get with a lot of games doesn't mind and we are not prohibited from having our trial in front of the jury