members of the court i move for admission of david ferret's who is a member of the bar in good standing of the highest court in new mexico have knowledge of its conventional show and i am satisfied that he possesses the necessary qualifications  on this day with your admission to this great an honorable court i say fitting because you've been a partner not only as a clerk in my chambers but to the entire court you've been a contributor been a giver much more than standing of the highest court of new york and christopher suarez is a member of the bar and good standing of the highest court of illinois i have knowledge of their credentials and i'm satisfied that each of them possesses the necessary qualifications four of them this morning for their really outstanding work in my chambers this year it's a sad time of year when we when we come to the end of the end of the sittings for for the year before  success from each of you and in the coming years that's one of the great satisfactions of being a judge is to is to see how successful your law clerks become and how much they contribute to the to the society  today i actually went and bought a light skinned mini i now own this product and i can make any use i want that now there was a notice on the bottom of the moss that said i had to use it with the strips of li to an authorized a sale in this case however there was no such authorized deal was there there's two instances you're absolutely right sixty percent of the meters are given away weis can give them to health care providers and those  healthcare providers then give them to patients when those patients are dying diagnosed with diabetes two to use so they can use them but in that instance life can intends those patients to use those meters intend and authorize those patients to use those meters in a manner that practices the one of five power so you think the reference repeated references and supreme court in other cases  though i paid consideration to a third party because the patent he had not authorized that sale and that's consistent when you read quanta and in particular when you read us the universe once company the focus should be on whether my use of the meter is authorized by my scan then exhaustion should apply that is reading exhaustion consistent with the patent act which is the way it should be there's nothing in the patent act that talks about an idea of remuneration and if you limit exhaustion to this idea of remuneration then you're going to have the instance where light skin has clearly authorized those people who get the meters to use them for free purchasing the meter did you purchase in a strip store no i did not purchase and what you're hoping to practice the method of and that to me is in the next important point because you're right i'm you have those additional elements but let's say after this hero no because the patent as you just pointed out you know counsel please don't motion during or you it's a very important point as he pointed out the patent is not too strict once i meter i have given life scan to the extent they're entitled to a monetary reward or a monetary reward to practice all of the elements of the patent so there is no dispute with respect to the found in the meter and which is comparing the readings from the two strips as your theory to see if there's something wrong with the strip exactly because that's what the examiner he analysis when he allowed this patent he said that that was the new feature this measuring feature and additionally when you look at the prosecution history they attempted to get a patent on the strip it's out and they abandoned but i'm not sure that under quanta that the mere fact that the essential step is being performed in the meter is itself sufficient to say that the pat exhausted when the meter is so because quanta talks about not only that the inventive aspect of the method is in the first piece of hardware but it also talks about the  but if i understand what you're saying is well they may not have been common but that they were disclosed scripts or substantially stripped similar steps were disclosed by the prior art in my understanding you correctly absolutely and if they could not if they would not be patentable they cannot invent features but also there's a key distinguish well i'm not sure that's true i'm not sure that the test is whether the strips would be patentable and i thought in fact in your and being the appropriate test i thought the i thought that the argument was a little bit different from that which was that the they in the strips similar to these in fact the  about the inventive element in all those cases those new component parts alternate component parts come from third parts here i buy their strips as well there's all the all the elements are there but isn't there a inventive aspect of the method patent has to be in the first piece of hardware in i mean there is some some overlap here between obviousness but but my understanding is that the two sides have conflicting experts on the question of whether these priority scripts are similar to the strips we have here or not right which i think is also not only relevant obviousness but also to exhaustion oh absolutely there aren't but and the point i think some important there when you look at the prosecution history in the office actions repeatedly in the office actions the court consistently citing then high a trade up future more is saying look at all of these elements in the strip the unidirectional well the multiple sensors that's all on the prior art that was done with respect to so wouldn't you have to have a true i guess what i'm getting at is there may be a substantial question of patentability here perhaps that you say you should result plunder injunction but we're not in a position to reach a judgment as to whether this aspect of quanta that is the the veil the common availability in the prior or similar scripts is i satisfied for example by mankind because there's conflicting expert testimony of the distinction here though your honor is what happened with respect to the seven one four application they brought that homeward they abandoned their ability to contend that there's anything then i think that's a tough argument i don't i'm not sure that i see that as as what the quantas talking about i think more perceived to be talking about more about whether this second piece of hardware is available in the prior art was available market and i agree with you and i would just again stress that simple point which is what makes this to think is i can buy the strips as well i bought the strips simultaneously with the meter they don't put them in the same hot box so is it just isn't that sort of gamesmanship to let them divide their patent in pieces sell it in different parts and then say aha sometimes bought one at one time and i bought one at another time there's no exhaustion here a new news for or a no machine for example you absolutely can in the issues there that doesn't make those other fundamental elements of those limitations in the patent new what makes it new is the adding of those new limitations relevant to really confused me about life scans brief was this comment that they solve the problems that the prior art didn't recognize the prior art clearly recognized that improvement and accuracy is what is important with respect  between multiple sensors provides a measurement that exceeds a threshold and it involves the exact same underlying technology of electro chemical pile sensors for them a measurement of blood glucose the difference is as  they pointed out is you have an inadequate still issue doesn't occur and say but when you look at the claims in the past the error referenced in the claim limitations is not limited to inadequate felt it's any reportable error and it's  important to recognize with respect to say is we're talking about the meter not the time server so when to say you have an implantable sensor and in the one hundred five you have a strip sensor but they're both being read by a actually had sat for us a mark many hearings before those hearings and the judges continued that work when you're in august with the understanding that there would be some markman advice coming from this court and i didn't get to talk about that but maybe i will be able to talk about that were bought some time over my time so nothing's happened nothing that we were doing discovery we've done and that's the one key point we have one second is that you know this is a plumber injunction stage we've learned a lot where not whether the scripts exist in the prior art but whether where the essence of the invention was and so you would have to analyze that as i required the seems to me to basically put the presumption that there won't be an exhaustion when you sell a component of a combination patent unless the essence of the invention is held in the part of the soul and that part has no response mind fringing you so your so even under my hypothetical is no exhaust fall under your hypothetical assuming the exact same x that we have with respect meter and strips so i'm not making up some other strips assuming however the problem of what do you do with the method of use satin i mean method of use patents can take things they're known in the art and come up with a novel we use for them and here's a novel use for the strip is the recognition is stripped of this design can gather data which the prior art hasn't perceived it can gather data that can be allies and compared to give an error message it's the same data as in the prior  took a measurement of blood glucose in transmit it to the meter but they were that is it not the case that what's happening here is that the meter is making a comparison of the readings from to  there's some problem here the prior art design as positive for the scam there was a prior art meter strip that all all one did with that prior art fair was collect the data and it it up and say this is the the outcome now what we're doing is we're using a strip of the same design hypothetically and instead of taking the data and adding it up we're taking separate measurements there's nothing in the prior art that says you have to take separate measurements we're taking separate measurements from the two electrodes we're then comparing the measurements from the two electrodes and only allowing a meter to come out at the electrodes reach the same result the inventors recognized with the prior art didn't that by lining up the meters the electrodes in this way the blood would traverse them in that in that order that you would get cell of discussion three quarters of it is about the strip and why the strip design is useful for this purpose and different than the strips in the prior art so i think if it wouldn't have the script that's true it wouldn't that we don't have a p the strip but the question is whether this novel method of use of a strip of this particular design which does not exist in the prior art is is where the part of the  method of use patent unless we've exhausted our rights place can has a right to profit and sell every use every time the method is used method of use the owner upon use we sell we are no profit on the meters on the test strips there is no double dipping we sell a box of pasturage and for each test strip we are  let's say there were one hundred thousand strips i think one could reasonably say i'm making up one hundred thousand but you know if the sale consisted of the meter components by combining them with the with this chip in that and that therefore the the combination of the chip with the standard components doesn't result in exhaustion seems to me that exactly the same argument that you're nothing like them is on the market until these folks enter with their their product our strips are made specially for use in our meter there is no prior art strip that's usable in our meter there's no prior art strip that you could go to a contract manufacturing say make that you could stick it in our meter there are no standard price they aren't and i bet emphasize as well they want to look explicitly and whether what makes our script special no answer my question let's say you have a script that your destiny electro but only two are used as that would that infringe the method if you had strips with three electrodes only two of which were used that were arranged according to the specific arrangements those the two working electrodes had to be upstream in the reference select through downstream and there was another non working electrode presumably would why isn't that the heart or the soul or both of the inventors because the test strip was designed uniquely for this purpose and it is where it is frankly the parts of this use patent why in the clever design of a particular test strip that may or may not have parallels in the prior art with the prior art has no conception of such a novel interesting scientist recognition that it can be used in this fashion and then again i keep going back to the client also emphasizes that the piece that's all have no reasonable non infringing uses and we had back and forth on that and finally in their reply brief they say that test strips compatible with life scans meter can be designed without contributing to the infringement of the one o five that's a huge twenty eight of their reply citing us but we've said that repeatedly and it's true so i think we're about out of time thank you mr just thank entity who makes a product you have you know photocopy machines just like test strips here where they sell bulk the the part of the product and they sell the consumables that go with it and they have a method claim here under percent right because it was just the sales of the meter what is the practical implication if we go for you on one of those the sixty percent but not the forty percent water they can meet in purposes of the injunction the balancing of the activities you now have innocent third parties who would have the right to use our meters and since i was innocent third parties would have you know the right to use our strips so those innocent third parties should have the right to use a competitive strip i think that really changed the balance of equities there like that one last point my thirty five seconds on the left is what is the risk meaning of reasonable not infringing years you get it directly from quantum quanta at page six thirty two it says here as in you know the universe you know util and the only apparent object  intel sales was that quanta permit them to be incorporated into these products when you're looking at reasonable not infringing use you're looking at the intent of the patentee at the time of sale did they intend to