course this is an obvious miss case where all aspects of the claimed invention were taught in the art both major components of the invention the active ingredient testosterone and the penetration enhanced or were known and taught in the art the need to combine testosterone with the penetration and answer was known in the art and the combination of all of these elements together was taught in the art but can i just double check something or correct me if i'm wrong and you don't make any argument that even if some of the claims are invalid for obviousness others or not that is i a single ball of wax for you on obviousness and i get it is a council of my my pawn in the case calls out to particular claims to focus on other than the whole and we do argue that those two claims and and  i misunderstood your question are yes we say that everything it's obvious first answer the same reason so as i said there are some crimes that are only it's treated differently and talk about differently and we respond to that but we think everything has one has a kind of for me at least housekeeping matter why does your infringement contention matter if it's a fair point your honor because in terms of our end of the practical matter we have to win on obviousness that is true we did think and we did have a specific question as you can imagine we did think that the infringement situation where an article you the district court flipped the burden of proof and put it on us sort of an indication of general wrong headedness well i know it it was an indication of something wrong that we thought it would be good to have a court precedent on it we thought it would be good to have this court speak and understand that something that your honor soon your discretion will decide whether to do or not but we felt like it was an important enough issue and that the dish recorded got it wrong we should be addressing it the district court finding of obviousness here was made in spite of all those findings all the findings that this report actually made that the elements are all in the art and the district  specifically said i'm quoting at paragraph one thirty six said another way the court finds that while the pieces of the patent suit were known their combinations and especially their specific ratios of the combination were not so the district court ruled saw what it thought was a gap in the prior art in terms of the ratios of the combinations and based on that gap concluded that this was not an obvious invention the but what what is the best prior art that indicates taking then since we just agreed i think that we are giving obviousness of all the claims as a single ball of wax that shows hatcher's were thoroughly taught in the art but in terms of prior art that actually has testosterone with the penetration enhancer you could look at the questions with the specific claim penetration in ha yes the three components it would be could tell the one ninety puts hell reference there to tell reference but to tell one ninety it would be cooper which was identified as the closest prior are in the patent  office you would also have and those are the ones with testosterone specifically taught but there are also pieces of prior art that they have had the exact penetration enhancer is taught as something that can be used with trans like this one that would include frank her which actually had the exact penetration and hence are including the amounts that would be santas which is very including ink and when you say the amounts you're here you're be clear claim one thousand and twenty have no amounts of any kind for any of the information he answers it only in this is up and i won't repeat it only has an amount for testosterone two point one and two percent so you can have any amount any percentage of any of the others so those claims it seem to me would be the easiest for you to render obvious but since you haven't said partly argued them because again and your ability to practice turns on killing all of them and not just someone you have to focus on it seems to me and unless you're posing council tells me i'm wrong claims six of the nine one three  the as far as i can tell the glycol to thirty to forty percent by weight that is not dependent on six so you have claimed six which limits only oleic acid and none of the other penetration he answers and your claim twenty two which limits only the amount of glycol and none of the other penetration enhancers all those penetration he answers are utilized in the composition but there are no specific ranges given for any of them is my understanding of the claims correct b s if your initiate is correct your honor and so focusing on that the fifteen and also example twenty six now because there was so much prior art i have to admit to not having a perfect mastery of all of it although i think i have to tell down really well but my patel was nine seventy s i was really surprised when you thought one ninety was better but nonetheless eleven fourteen and fifteen you said it has the concentrations of a lake acid does it also have and it doesn't matter what amount because the claims don't require what amount but does it also include glycol and does correct claim sets claim six yes you're telling me hooper has between point one percent and five percent of the lake assett it also employees alcohol and glycol doesn't matter what percentage because for claim six that's irrelevant structure and the problem with cooper though according to the district court was it just lists male sex hormone in a long list of fifty different tensional ailments slash active ingredients and that this records problem as i understand it was the predictability of choosing this particular composition of penetration he answers and plugging it back into a given active ingredient is that right yes that's correct and specifically the district court found that disclosing male sex hormone does not disclose t really curious to me because i'm a woman so maybe i'm a little daft when it comes to this how many male sex hormones do people have you know i'm telling the amount but i can tell you that it's a it's as a matter of record in this case testosterone is the most important and the primary male sex for money and i found that curious as well your honor because the entire argument or most of the argument related but but still it's almost irrelevant though because even if i agreed with you that it's clearly erroneous for him to find that which i don't know that i can on this record because i don't see evidence that proves that male sex for hormone is dispositively testosterone but putting that aside the second you give a second reason which is you can't just cherry pick one from this column and these from these amounts of the penetration hansard our position is that as a matter of law the court erred there because the patent teaches that a person of skill in the art could determine the appropriate amount the district court completely ignored that part of the patent a proponents never address it and they haven't even addressed it in this appeal so the patent at column i'm talking about the nine one three patent right now column three line sixty three the appropriate amounts are concentrations of the active thirty one to thirty four which says the amount of the penetration cancers will be readily apparent to those skilled in the art since the total amount of penetration of cancers will be approximately the same as those of the prior art that's in the patent and when full art and that this is not just hot just once in obviousness pieces we frequently run into the idea that this is that there's not that much in the art this is an art where there is makes it seem less obvious to me if i have to look at seven different references instead of one or two and i understand that your honor but i would say patel one ninety teaches all the elements that cooper teaches the elements and understanding them judge mo statement about the testosterone that was an issue in the court frank her teaches the precise penetration and hence or it teaches such a patent the ghost of penetration his features the precise penetration in hansard in the precise testosterone specifically but testosterone was taught to be a trans dermal formulation that needed penetration answers this penetration answer was called the most preferred in various pieces of art more than one piece of art in santas and the in frank her and so this why don't you why are you hung up on to tell why ninety and not focusing on patel nine seventy and i'm fine and confused about why you're so wedded to like something i have a hard i'm saying is clearly erroneous is a lie i mean nine seventy doesn't have that problem so why are you so focused on one night when we can look so great i know we can look at the one ninety two but mary just addressed the  example in the nine seventy is at column eleven make example roman to write and to various tests numbers which test number you're referring to it's to dash the one that talks about if you didn't point unfortunately as far as i can tell to claim thirty nine well your honor if we turn to their obvious in this case this is the first time in three years we're hearing about any particular combination or any particular reference all we've heard from them is that there is this bundle of prior art and it's actually ten references that they list and they put testosterone testosterone in a specific combination with the penetration inhance or so but what they're saying is everything individually was known they pointed to no prior art that had either testosterone with any kind of penetration hansard at the same time this is a two tiered analysis the patent makes clear that when you're patent it has absolutely no limits at all on the concentrations of any of the penetration hansie and gradient it does not so how would that control for skin irritation you don't have a limitation like a wearing clothes wherein the amounts are limited to avoid skin irritation that would kavin even the percentages even if you don't specifically list them so how can you justify the non obviousness of claim why well the supreme court said in atoms that you are permitted to consider the objectives of the claimed invention from the specification to assess the prior art this court did the same thing in dupont in one nine hundred eighty eight and held that adams is proper when you are considering  uttal to an obviousness assertion so the court is permitted which is what the district court did is take into account that all through the patent it relates to penetration and skin irritation and when percentages of any of the ingredients but whether testosterone how in the world does that claim i mean do you think the specification contains a disclaimer that indicates that only amounts that will result in a reduction  skin irritation for example ought to be read into this claim is there a disclaimer somewhere in there no there's not a disclaimer there's no disclaimer there's nothing in the claim that reduces that requires a reduction in skin irritation it's not even mention and the claim contains no percentages of any kind that's correct your honor but as i said how is that claim not rendered obvious because there's no where when you're looking at and a trace in for a  you must consider irritation and all of the art that they are showing you tells you when you are putting these types of penetration answers together that our inventors chose they would costs of be you assy concentration to point one to one percent weight by volume for reasons of the official and lack of irritation so we have one reference that doesn't disclose testosterone mind you but it  reduction in oleic acid in order to eliminate skin irritation and it's not in fact the only reference teaches that there are other references that teach the same thing well i'm confused how in the world do you ever think  no limits do you know any ingredients at all but how is it balancing anything but the claim has three hundred lb it completely unfounded the claim has three different components to that it has a mix alcohol and all three of those are just that you couldn't just take a penetration answer from here and flip a new activity in there the prior art touching you could not do that what's what's in it what's most specific piece of prior art that says the same penetration in answer might produce quite different results depending on the act and greeting to you to tell us you what happened into it too is they took the three components and they tested it with two different active and they got markedly different results markedly different results of far as the ability to penetrate and so to each set and i will try to quote it for it they tested two different actives and in that formula the two e two people said that because there were such divergent results when you change the active that when you're considering transdermal formulations you must consider a situation what active are you using what penetration hansard you're you're using and what part of the skin you are going to be using to eat to is clear on that that you can't do that in addition to that reference the nine three four that you have talked about as well that reference told you don't first of all that was a true combination not at three and it said don't use  agreed with you and made a fact finding to that extent however atenolol clearly discloses using testosterone and in one example using two of the three penetration he answers in another example using the one that wasn't used before alcohol and the again  acid and then in the claims claim thirty nine actually discloses using all three together in combination against the active ingredient and it discloses all of this in exasperated detail with testosterone in the relevant percentages and it says it works as a penetration enhanced or effectively with testosterone so i don't understand what am i missing well to tell how is there unpredictability about whether these three ingredients will work as a penetration in the answer with testosterone because again as the p t o found and the court found this is a two part say when you combine propylene glycol and a lake acid in the percentages that are here five percent you get severe irritation so nobody would be looking to that because you're trying to solve the problem of white white i mean did you disagree with the apparent reading of claim thirty nine that actually claims the three part harmony engine well this is the first i've heard about it because they didn't argue it below but the reference was given to the court and part of the prior art he was considering absolutely my first look here today would say that these part of the these are not sorry well the other thing is there's about eight or nine or ten of them here and what would lead somebody to say well only use these three and just these three so this claim thirty nine is no different than the tell one ninety which although that had testosterone it has five different penetration hansoms and there what's the motivation to go to just these three when especially the earlier patel tells you when you go to these two you're going to get severe irritation in the amounts that the patent describes it what would that i may be missing something really obvious i guess use the word but if if patel one ninety is understood to describe among many other things the combination of testosterone and the this penetration and answer within their ranges covered the three five and nine and thirteen what's missing from an obviousness case well patel one ninety doesn't disclose these three by themselves it discloses five of them and it  combination that make up a claimed penetration and handsomer in the claims that issue before us no it doesn't disclose three and only three it's as close as five together it doesn't this is never the three alone never the three  art that are inventors were trying to get around so they knew and everybody knows and the defendants will not dispute that that patch cause severe irritation unbelievable there are pictures with welts from trial and all of this so that is why would somebody be looking there when it doesn't have the three it has the five and that's the very aren't that's causing the severe irritation that you are trying to get away but for stuff to be clear patel doesn't say anything about severe irritation tell says it does not possess the skin irritation properties that's all it says i don't see if i can look other penetration and he answers they found that that combination was the worst that penetration hansing and the second worst at irritation  percent and i didn't remember that example which is it a one three three nine suggesting it didn't function as a penetration and the answer if i could just have a second one three  to have you back page in front of me but there's two tables and the table showing you the penetration hansing i believe it is at thirteen fifty four i'm reading from one three three nine why don't you turn to that so two different good for them but one of them is good for the well the one that you're reading from says the major task in successfully using fatty acid for delivering drugs through the skin will be in avoiding skin to skin irritation yeah that's a thirteen forty for that want so right so if we're looking at thirteen thirty nine it tells you about ten percent here it it does tell you that the lower you go the better it will be but the problem as is that once you go lower with a lake acid you have to balance especially cording to t possible penetration hansard it can i can i ask you just if i mean it is a couple of very focused things so we were looking at thirteen forty i think you actually read something from that you know there's a sentence almost exactly in the middle chest two d which doesn't include the alcohol it doesn't include the alcohol and it's also would apply equally to example three is the same percentage as a legacy as well but why how do we know that  would not predictably translate into humans did he make any finding on a no but he made a general finding that this art in general is totally unpredictable and changing the slightest thing will make it that you don't know what's going to hell he made that finding with respect to picking active ingredients and penetration and he answers and making those combination and i never saw any suggestion or discussion anywhere in the idea that because this was shown to work on guinea pigs there's some question about it predictable use and you know he did not make that he made a more general one that it was it was predictable in terms it was unpredictable in terms of just putting the penetration he answers together and then putting them with a certain active he made a general the bottom in the middle of the table it shows you that oleic acid it's enhanced one factor is fourteen which is the worst of all of them and interestingly to show you how small difference can make a huge difference and so i've  profound effect on what's happening so there's no way to predict that this penetration hansard when you put these three together they're going to work no matter what the percentages are whether you lower one you might have to up another one and again all of these references and so that would help you on claim twenty two correct but it would be of no value to you on any other claim in the patent because no other claim on the patent has a limit on the amount of what i call well i think i correct no other claim that office made a determination that the both patel's future way the district court made that same finding it wasn't clear error the patel nine seventy that you talked again it was only two that that same thirty nine listed about eight be selected from a list of eight or so right so why would you one versus the other when there's so much art out there that tells you that a lake acid with propylene glycol is going to cause  irritation so why would you pick a mix alcohol from playing thirty nine there's no there's no teaching or anything that would teach you to to find a mix alcohol and when you're looking at the ole cassatt that they're talking about got frank who are telling you that that's your taping and don't do that so and frank oregon was before the patent office and was also before the court and the district court made these findings that that taught a way because of the  glycol and again frank or is not testosterone the only one missed us thrown is patel and it teaches you severe irritation where it teaches you this is the patch that we want to get over and here are five different possible ones you could use and why would you pick these particular three all the other art was the sort of ties us one one question for think is this just on i'm looking at one ninety it was he said earlier an issue in the district court in this was a reference to mr so that has to show will air not correct correct your honor and what i'm saying is that this was presented to the district court if it didn't matter we couldn't to support that it would have been raised by the other side and it think is a key factor in this entire case the district court i think based a lot of its ruling on the fact that it felt that any reference to irritation in a reference and of part reference taught away but the fact is that there's no claim to reduce his kind of said this is a second ago and i guess i want to echo it because i think that you have some good points very within a morass of issues that will appeal i think that it's possible to district court clearly aired a number of different fact lines but some of those are almost irrelevant to whether you can prevail or not and the difficulty is contingent narrowed down or focus your issues on appeal for us to allow  thoroughly and softly address particular preferences or particular combinations literally through twelve references at us and i don't seem your brief much of an attempt to say this plus this renders this claim invalid this plus this renders this claim invalid i said to my last parks if you listen before you even get started on this make a chart claims there are elements references across the top boxes with little x s in them where you see them i  mean i mean i don't know if the shotgun approach you may have felt like was good for the district court but if it didn't serve us well before us to be honest with you and this is a complicated case and and i think you know you made some good arguments but unfortunately they aren't as flushed out as i wish they were given especially in light city of the technology we got a room full of people i feel like you're all here for this case so i'm not just speaking to you i'm speaking the entire room full of people because you  want us to understand and master this kind of stuff twelve references without identifying particular combinations and linking them up for what they teach to particular claim elements and everything else you kind of putting a lot of the burden on us and it doesn't serve as well in terms of your ability to persuade especially when you're that appellant in particular obviously so in that in the future it would really probably help us if you tried to synthesize your case into maybe fewer and more detail arguments instead of quite so many hoping that there's in house counsel here as well because i know that you don't make all the decisions on exactly what issues are appealed and everything but you know what well you can take this back