morning please the court the district court in this case committed two fundamental errors in granting the defendant's motion for summary judgment of rescue to conduct the first one was the failure to recognize many claimed twenty three and new claims thirty five in the re examined five four five pattern created new causes of action that did not exist in either the revolution one or the marsh on one litigation compound in that or the district court failed to give any weight to paragraph six of the settlement agreement in the march on case which limited the scope of the releases to causes of action existing or that could have been brought before the of that effective date easy agreement and concerning the old design marshawn primary frames why couldn't it have been brought before because amended claim twenty three and new claim thirty five did not exist in the patent in the five four five patent during the march on one revolution one litigations it existed over a year for the first time over a year after those cases were decided after the reexamination certificate adding those claims was issued in two thousand and nine no what this court looks at and the time place and manner are you suggesting that the new claims which only added this horizontal surface layer added a second element to you  are did those change things did they change the substance of the claims drastically i believe they changed the substance of the claims if they changed the substance of the claim drastically we'd have intervening rights wouldn't we you have been or you may have been are being right up until the time of the regs emanations certificate but to my point being the way that she would circumvent the intervening rights problems by saying  we didn't make any change or any significant change and if you didn't make any significant change then why aren't you stuck with the proposition that you should have just amended your complaint to cover the new products because in the first instance you had every opportunity to bring that what we believe you are on a date or significant changes then intervening rights  patent in one case and then in the second case they sued on a narrower reissue back and the court said well read you the kind of does not apply there because those new claims those narrow or claims  characterize that as not much of a change since it was there before to wait the word farzana surfer's was not in the original they weren't there but the feature was there right no see now when you look at the and claim twenty three which was generic as to the spatial orientation of the magnetic members was rejected over those references and during prosecution the patent he specifically said that look look at these references the magnets are located in the plane of the lenses meaning vertical they put in the horizontal limitation that was the only substantive change to claim twenty three that was made the horizontal engaging services claim thirty five added added the requirement that the magnetic members must be magnets that they no other change what is the top mounting configuration necessarily imply a horizontal surface limitation c once again this is all flying in the face of sound patent law if you were really doing something you didn't have support for earlier then you'd have a written description problem you would be adding new matter so you couldn't have been adding new matter then so that top mounting figure showed that you had a horizontal limitations in your original  inventive scheme and you didn't add anything except specificity and if you did add something intervening rights well top management means mounting in an up and from the top meaning in the up and down direction doesn't necessarily mean that the aging surfaces have to be horizontal if it did the patent office would not have rejected original claim twenty three over saharan this yoke of which were front mounted and in the reasons for allowance the examiner paraphrased the language of claim twenty three saying this is allowable a new claim twenty three disallowed one cited the horizontal surfaces so that was the only substantive change and that was the reason why it was allowed at minimum there's an issue of fact on that let me ask you a question moving away from this question of the effect of  or well you tell me i will assume it does is them the president action urging infringement of products that were not a new theory with respect to products individual products that were and existence and when i say individual products i don't need the models i need the actual individual eyeglasses the actual individual eyeglasses i have that is let me tell you where i'm five years later i commit the same porton you did to me again right yes that's true to kind of doesn't prevent you from suing you ken so what i'm trying to get it is this that case you have make much of that in your briefs it would have seemed to me that you would that that's the sort of basic principle that really read that as a matter of arrested because that yes is right and actually the court is why is it way emphasizing so much this question of whether the reviews and the new the reason why memphis i think that your honor is because that's in the sparse opinion the district court gave us that's what she emphasized presumably because that's what you read we did say we know we did also say in our briefs that now we're dealing with the auxilary spectacle frame here at issue in the first cases and marshall want to revolution one was the primary spectacles right the agila respectable frame there's a continuing tort yes because they're still still selling it they say they continue to sell it after march on one revolution one or over and i think what your honor may be referring to is something like the courtis case of delaware which we cited and in that case the patents were the same which is not as we contend true here the products were only color of lead different they were ninety nine percent the same and the district court said well there's a new damages period it's a continuing tort it's something that damages period did not exist in the first action so the doctor to rescue the cotton does not apply that's the court's case that's most of the technology leasing case out of the eastern district california two thousand and ten that we quote extensively from there were two things that happened there there were narrowing reissue claims in the reissue patents and some of the claims were the same so the district court said two things as a narrow claim rescued had it doesn't apply they did not exist and the narrow or that what was at issue in the first cases and to finish the line on technology leasing there were claims that were also the same in the reissue patents and the  please the court good morning your honour's representing the march on the nikkei defendants this is the third time that that this court is dealing with the basic specification and these inventions right the first time was the original pat t that was the two zero seven patent that litigation started about thirteen years ago when all the way up on appeal then aspects got a reissue of that two zero seven patent we had more litigation against marshawn this time for the amended an original existing claim twenty three in the reissue path and so the question here is and in fact the first line in aspect is reply brief is every patent is a new and independent caus confidential i showed him that it is not confidential in that we cannot refer to it that's correct ok so we can disregard the confidentiality yes you can it's been marked confidential in the case pursuant to protect our eric to answer your question is aspects asserting an infringement only to the extent that some of the auxiliary frames are a little different in size or shape and i'm not going to not going to different models here what i want to say is if i went down to c v s and i plucked one of these products off of the off the shelf would that particular pair of glasses have been in existence at the time of the first action or put another way if it wasn't in existence is it within the scope of the new action correct yes and therefore the end why is it barred where they barred by rescue the cutter from shooting you for a second tort for producing a good that didn't exist at the time of the first resolution firstly there is a settlement agreement whereby they entered into a release ok including a stipulation of dismissal of all claims they had a claim twenty three that would cover any of these you're now talking about your honor because the original claim twenty three is clearly broader than the reexamined except that you have the language with any marshawn old design magnetic i were made s which seems to limit the release to the old is not correct how they're using the new news correct paragraph six is limited to the old designs actually goes beyond the patent suit there then a claim which could have been brought paragraph four is the operative paragraph that is a stipulation of just this will all play into the action your honor to claim splitting argument also is very very important in this case they had claimed twenty three that would arguably cover every claim every every device at that time or any thing that was not caught that was a colorable imitation right within the confines of the law in other words in substantial differences that do not relate to any of the limitations of the question but that's what we have here they gave that up and they did can't you can't cut cut off my right to two damages for your additional tort right it's not it's not an additional tort because there's a stipulation of dismissal of the  action right if the if the if the first cause of action was really was was decided on the merits which was here and i think you you you look it was it was an adjudication by virtue of the stipulation of dismissal with prejudice and there's claims when they have to claim they could have sued they gave it up when they said we are entering into a stupor and then you've committed another toward if you've committed another tort they can come right back at you with that claim or any subsequently issue how do you interpret this language of either dismissal or release to cut off their ability to sue when you infringe again in march on one they had a fr that they say infringes and the stipulation of this missile says our claim of infringement of this frame is dismissed with prejudice that's it so i think the question later on with whether or not it is a tort later on is whether or not the frame you're now looking on at is identical to that frame or not legally different not another words it's a colorable it's the same thing ok essentially the same as the law requires and that's what we have here if we change so that it is there is a material difference of some sort or a difference that's not legally the same then i would say they do have a cause of action but that's not happened here at all and they gave up when they entered into the stipulation of dismissal and the settlement agreement is one of the grounds that shows wrester to cut the other is claim swing they did not and i do i think this issue about reexamining plays is very important because if they're allowed to do what they're trying to do here there's nothing to prevent aspects from coming back a fourth time by going back from a exam getting another narrow or a claim by the way by the statute that we examine claims have to be now or cannot be broader and so there is no claim we can come they can come up with a claim in the future that would be broader than what they had in the first action and that's really the basis of our bill and usually we have an injunction that stops you from infringing in the future  any other product that is the same sure i think if you sue someone and the case is dismissed with prejudice the accused device is effectively released i mean you can't sue them again for the same device later on left that explicitly in your settlement agreement or in your stipulation of dismissal or it is a dismissal without that which is not and that's where we would see what brings us to the quick language of the release yes which is limited to old limits all precisely because those were actually on the market and asserted to be infringed in marshawn correct so that's goes back to the question the judge rater brought up should an aspect of sought injunctive relief at that time if if all right now you see why we don't like to divide these arguments as have to figure out which one of the argues mr hanley yes you are and part of the revolution is differently situated because there's a somewhat agree with the case marshal on there in case of revolution there's final judgement so it really was necessary but the argument from for that reason else you can have one person who can argue both but go ahead going right to the point it's not whether the specific product with an existence of the time that matters the purpose of racially caught up it's it's whether the cause five i sue you i win and i win two thousand dollars damages and then in two thousand and five you sell ten times as many widgets the exact same type of widget but of course new products and i the cases that the nystrom case that say that the test is whether the products are essentially the same and so if the products are essentially the same this court has stated very clearly that you do not have any cause of action against you you may have a remedy for those you can go back to the to the court that issued the final judgment the first case in this case and the judgment was just damaged well in the case of the no there was also an injunction in this case so there was an injunction in the case of revolution is going to be very applicable post bay where court may not it enter an injunction typically the courts would enter in those cases post ongoing royalties and there and the market will change and the value of the product will double and the only way i can recover is to bring a new cause of action this is right precisely on point it's a it's a bit of a red herring there in this case your honor because because the determination the california case was that the auxilary frame to knock in france so so so that's was on the auxilary frame limitations horizontal surface to mean a downwardly facing surface and construed the extending across limitations to mean extending across the top on that basis the court granted summary judgment that kind six and thirty four were any legal grounds and we've cited that the case law wouldn't have anything to affirm there's no decision to review and we would have to do a lot of digging and poking around in order to get collaterals well we certainly  issues but new products new tort new claim that really what's going on here you're arguing issue preclusion to us under the guise of claim  virtue that the fact the fact that you sell you know a product on day two you know the day after the judgment that's not in you you don't get a new cause of action you may get a new remedy it's not any cause of action for i'm having my really hard t that as just related to that this district court has taken e bay and run with it and says and you're not getting an injunction even though you're absolutely right mr d that you your product was your patent was french and i'm giving you damages and here you are damages to everything up until the day of the judgement which is that they are and three weeks after the judgement you say well there's no junction i'm going to continue to sell this and you go out and make some more stuff and you sell it's exactly the same you're going to come in and take a rest to the cannard i what i mean and that's have frankly i've never never ever seen a case where where someone sues on i think it's pretty basic rested kind of law unless i'm really hopelessly confused on this that if you commit new to works after the judgment that creates a as well that it's base it's cases that have a common nucleus of operative fact it's the same it's the same determination the fact it would have had would have had to been made in first case there meaning thinking and that's where this course jurisprudence of essentially the products sold on day two after the judgment infringes precisely the same as the as the nucleus of operative act as to whether they infringe on the two but significant way when you said punish and then say this of course when you articulate it that way you're right but if we're talking about different products that is to say products that individuals didn't exist on day one and were created and sold on day two i'm not sure the common nucleus operative fact analysis encompasses that kind of post and we say i think the words are man in case but i frankly would be surprised if you're right well and we would also assume if they would it would be bad policy to allow serial lawsuits on on on first judgment against subsequent towards that's a pretty good reason to the supreme court to reconsider or even see well i think that as a haven the norm in cases is to speak if an injunction or in the alternative an ongoing royalty and that that that should be the expectation rather than creating a new cause of action and i'm doing race to the cause a law that that's already been settled by the court to say that you have a new cause of action you have to sue all over again to get damages on products the infringement which has because it's a new tort is that right not necessarily this this brings in money but look in a second that seems to be where this could take us right you'd get to a chance to you lose on infringement and you're saying yeah but they've they're infringing again i'm going to bring in a claim yes or no you have to look you have to look at the claims that you're going to bring you have to lose look at the reason why you lost and  product you lose right you've lost once that case is over we're not going to relive it get it again right yes and here it's not the same claim and it's not the same price but if it were the same claim and you lost the first time you'd be cooked and the collateral stuff right here tears almost certain and we submitted is not the identical issue they're not the same claims both council went into some detail about well not much detail but they took the products are or are you know the same there's no differences we think this is just like the act in before and if it wasn't it be no matter who would have trouble that way anyway so it's essentially the same claim or essentially the same case then what do we do with this you send essentially the same product to what do we do with  the at least a portion of the usual lost on what about the if if the issue was absolutely identical which is not and if the claims and everything else were absolute same which they are not then maybe hypothetical or hypothetical worlds and all the stars aligned for what is collateral stopping and it is cholesterol stoppel but that's not the case of acting that's not the case or one point i want to raise on the both counsel since you have me up  in the new in the newer axle reframes that were not an issue in the first case and we believe that there's a least an issue of fact for purposes of traditional rest and get caught up on the question of some of the century the same for the product it's like the acting that case that i was referencing before in acting med there was a surgical nail in the claim said that it had to be configured to occupy a certain region in the humoral in the humorous and the humorous didn't have dimensions in the claim it said configure to occupy a certain region so here we have claim limitations where it's at the auxiliary frame has arms they have to extend across sides of the primary frame and adapted so that the primary engage now revolution of marshawn took the position in the district court that that cannot be done with their products you cannot stable the top mount the chooser jewelry frames on a primary frame that in and of itself