feel free to discuss both the four fourteen and the four thirty four in the european argument and you might feel free to do th thank you judge transfer may please the court john o'quinn on behalf of activists i tend to focus most of my argument on the doctrine of equivalence but if i may i'd like to start very briefly with anticipation of claim one of two or three for patton the district court found but then it somehow found that cygnus did not disclose a patch containing or to get seen freebase it reason that applying the conditions of example fifteen the route to get seen would be primarily in its salt form now respectfully that doesn't make sense first even while it said that free base was missing it acknowledged that one point two eight percent of the particular scene would be freebase that's appendix one fifty eight and relying on reciting appendix forty five thirty and the fact that the salt rather than the free also presumed to be enabled and again as dr ling testified what works is the freebase not the salt so on that should be the end of the matter that requires reversal as to claim one based on no matter how you slice it this is not an appropriate case for the doctrine of the quittance it's not what it was meant for instead it as festo holds the doctrine equivalence is premised on the limits of language and here there is no doubt that they had the other why does that not decide this well i think just toronto a few things first subsequent to so grave or tank you have the supreme court clarifying the doctrine of equivalence in one or jenkinson and  restriction requirement is that are there circumstances like this so certainly the supreme court didn't didn't address exactly the details of a case like this but i think it's a few things that are instructive one in water jenkinson it said that the time that's only where the was foreseeable by the inventors it was foreseen and so this is a situation where as first when the inventor turned their attention to the subject matter in question they knew the words for both the broader and the narrower claim and affirmatively chose the latter and i don't think that that reasoning is necessarily or should be limited to the context of where you have a prosecution history to stop and now here the case is even easier because prosecution history the sample should apply based on the restriction requirement and i think this court's decision in pacific coast marine yes that was a design patent rather than a utility patent but there's nothing in the reasoning of this court's decision that that that should make any difference and in fact if you look at the reason for the restriction requirement in pacific coast marine it was that you could only have one invention because you can only have one class same in a in a design patent the same is true here the restriction is because you can only have one and then sion and you have the same policy concerns which which is this the restriction requirement and the election that follows it still robots the inference that the thing that led to the changes in festo and everything else involved the examiner saying you cannot have this broad claim on this specification and now your attention is focused on how much you're going to narrow restriction just as well you want two different patterns so two points in response to that are trying to first that would be and that was entirely true in pacific coast marine as well nothing that would pursue prevented them from pursuing a different pattern on the other on the other claims the point that i think that that case ultimately turns on and i think that point is even stronger here where you dealing with words as opposed to pictures is the fact that they had claims to an chose not to pursue those claims at least for purposes of this patent they can have no argument that they didn't have the words and that gets back to the festival and the idea that the dr of equivalence is premised on the limits of of language or is a sa products put it's put it in wonder i wonder if you're making too much of this idea premised on the limits of language it is premised but that doesn't mean that's not synonymous with saying every time language is available we will forbid you you don't know except for the two that you've tested that they work for this particular purpose and now i have to delay my filing of my application on the two that i know work in order to test others that are you know  i think if you look at the claims that they actually pursued here these are claims to an accolade based or silicone based polymer it he said of system and what they effectively are now asking for is just a polymer at hese of system vitiates the claim term because at that point it they're given the differences that were disclosed or that were known and if you're going to say the equivalence applies here it's hard to see where it would not apply work and maybe there's a third option you're aware of that could also work for the same purpose goal but you know that's going to require work it's going to require experimentation and are we going to require applicants to go forward with that additional work and experimentation to see whether or not that other potential option also works and then claim it as opposed to just allowing the africans  ahead and start applying for claims directed to things they know works under their experiments at the time i appreciate the question judge chin and i think that here if you look for example at appendix fifty nine sixteen you see that not only was it foreseeable that p i bees were known and were commonly interchangeable with these others it was foreseen and by the inventors fifty nine sixteen is their feasibility study they specifically identify this is what it would be easier to say you know you're not demanding that an african or an inventor go ahead and do that additional experimentation in order to write a claim broadly enough to cover ali i said you know when you're the promise of your argument is they knew it already that's exactly right judge and that's my point is that not only was it forseeable it was it was foreseen and i'm not saying that they had to go  here is they they knew they knew that it would work in for this particular process of delivering an effective dose of the underlying medication for treatment of parkinson's what what what what what they knew and what the district court found appendix one twenty seven is that he i d s were long known along the silicones and accolades as pressure sensitive and he says that we're well suited for use systems and there's no no suggestion by them that there would be a difference in the these of the second scene versus versus anything else and i think that when you have that situation you have a situation much like to now be versus i where the inventors chose to define their invention in that case in terms of a specific base solvent combination rather than in terms of categories of solvents and bases and a person still new york would have known that  about the completion of the inventive activity was not already part of this litigation when the use you was tried under the  your question and that's this evidence of derivation doesn't answer the question of whether or not there's been sufficient communication for joint invention so we don't have just a single inventor here who allegedly did everything you have different inventors having different roles and you can see for example at appendix thirty nine fifty two one of the inventors wolf testifies that it was clear who did the analytical work it was right there who did the chemical synthesis and there's no suggestion that you know that they were all doing it together they were doing this independently and the question then is where does the does it get does conception actually get communicated among  the joint inventors because you can only be a joint inventor is as eli lilly says it's recently successor thought i thought that there was quite full record about what happened between the you know the s m so what was missing so the two different thing i guess there are two different sets of communications that your your question is referencing judge toronto yes there were a number of elaborate communications between who could queer and well for u c b wares right near he is you see he is well actually and and about the communications among them and the different roles that they had and yes there was testimony about what they did in their respective roles in invention the november twenty eighth two thousand and seven is the date that it's relying on and saying that what it's going to show is that there was no use not that there was earlier in vention and similarly the expert in his testimony a trial appendix forty three through thirty six is relying on nov twenty eighth two thousand and seven and that's what he's asked about in krakow in his rebuttal exam after our cross examination he specifically asked about whether or not there was use before november twenty eighth two thousand and seven if they were going to argue that there should be that the invention was before that they needed to say something about that before their post trial brief and the district court was right and well within its pressure to find that was wa were we supposed to do with that statement as to your narrow claiming our right so with respect to it's a ring and pinion i think you have to look at the context in which that case came to this court which was on a stipulation question is there a per se bar to the doctrine of equivalence based on foreseeability and this court answer that question no and i'm not relying just on foreseeability for purposes of our narrow claiming argument i'm also principally relying on the idea of the limits of language that is sage products itself acknowledges that you might have something that would have been foreseeable but subtlety of language or complexity of the technology would be a reason that you wouldn't expect it to have been specifically claimed they can't argue this that here particularly given their own feasibility study at appendix fifty nine sixteen this is a case of buyer's remorse they knew about it they they chose not to claim it  and particularly when you add on top of that the fact that you do have the restriction requirement here that the in which they elected and then ultimately voluntarily cancel their claims in this court infested a nine on remained from the supreme court said voluntary cancellation gives rise  the sickness patent which they are arguing anticipated claim one was raised in the patent specification and specifically distinguished on the basis that it was not the freebase and it was  water it was the main reference that was distinguished throughout prosecution on the same basis the only examples of  application are examples fifteen and sixteen both of them are in the water there in a phosphate buffer which the record is not painted somebody did jetstar rejects it and the anticipation getting in water what what judge stark said was that correctly that the and it another part of the cygnus patent application it refers to using other pol solvents than water there is no example of it and more importantly he specifically found that there was nothing in the record that what would happen if you put  change into ethanol or into another polar solvent he said there is just no evidence of what form the rich a good chain would take and that's because activists didn't make any record of that they put in no evidence and that is that there is water there that's those are the only examples it gives that's only teaching it has there is a statement or maybe two in the specification that say you could use a polar solvent such at now there's no example and there's but there's nothing i take you're on his point but there's nothing that tells you what you would get if you put really take it seen into ethanol there's no conditions there's there's no information and that's where judge starr went he said yes they're pointing to two ethanol and i think it's a basic matter you don't take one part of  and plug it into an example for another family can well sometimes you can but here there was really no information which would lead you to do that and what he said was if you did it there's no record as to what you would get there no records start think that it was what he said was it's possible that rethink of themes of the present primarily in its neutral base form but activists has presented no evidence to that effect system using p i b is substantially equivalent to the claimed invention that was something that there was a lot of evidence on judge stark found and there is no appeal on that point no claim anywhere that anything he found was clearly erroneous there's also no disclaimer disavowal never has been an issue of disclaimer disavowal never came up that claim construction or anywhere else can you explain what happened in the wrigley opinion really opinion and seems like the closest case for the other side that's crime that when  there is more to wrigley than that because when you read the wrigley opinion and and the lower court opinion that case involved the the chemical structure of the chemical compound and during claim construction the district court held that there was a disclaimer of non i think it was car from a car box hammett's of that structure that there was a express disclaimer based on the information both in the claim and in the specification and it held that way but what do we mean there was an express lane because neither the claim nor the spec ever refer the non car box car box am it's that word claimed had been disclaimed and that had that it come up unlike here that a clump during claimed construction and the defendant or the the counter defendant i guess it was there specifically asked to have that excluded and it was excluded and under those circumstances the court said you can't go in and claim that i flipped once we have a very different situation here where there was no disclaimer and no argument that there was a disclaimer no amendment no disclosure dedication knew about it that that's an interesting question or because that was a different either yes or no well that's the reason i would say that it's based on the prosecution history only include the silicone and not the accurately but that you know whether whether there would have been equivalence we'll never know i mean that's an interesting issue because there was were discussing just a little bit earlier about mr mueller and others what evidence is there that that even though he and others knew that  your honor i i don't know i think the answer to that is that dr mueller hadn't tested it didn't know his experience with p i be here was in a liquid form as attack a fire that he didn't testify to but the the claim limitation that we're talking about here is not simply the polymer adhesive system it also has to have a  inventor knows full well that a and b are substitutes both of them absolutely could work in this claim claims only a it's troubling to say even though with all of that knowledge and not even any doubt about whether b would work you left b out and now you're going to get it why is this case different from that well i mean for a couple reasons one because there is no evidence of the this would work just the same i mean there's no evidence that dr mueller knew that when they were applying for the patent he applied for what he knew specific document to you and i think that is an overstatement there certainly was a technology route for where at l t s where they listen to one of the applications before the application was filed where they listed different types of polymer adhesives and it was in the list was it ever tested with were taken seen freebase which is what's what's claimed here no was there any information about amendments as one and i think there was never an amendment here of this term disclaimer is one that resident they've been pretty careful to appoint the ones that are obvious and not present righted but the point to you know what's in someone's head there is no authority that i know for that and in fact that is exactly opposite to this court's decision and ring opinion and as for the kind of that was that was old law that was a forks two thousand and fourteen opinion and the issue in bringing opinion and ring and pinion it was exactly the issue here and and i don't know how you could find a more a clearer statement in this court there is not nor has there ever been before see ability limitation on the application of the doctrine of equivalence getting back to the policy issue here we have a situation where the inventor view of having tests that the notion that they had to claim something or lose it by equivalence even though they hadn't made it hadn't tested it really i think put c incentives in the wrong in the wrong place you want to encourage people to apply for patents on the work that they've done and not on things that might work in the future can be before your time runs out can you turn to for fourteen i by asking that the panel look at appendix twenty four twenty six which is a page from the pretrial order which specifically says that on september twenty third two thousand and seven with probably both sides about whether you raised enough are not put that aside what lies mr o'quinn wrong in saying it made a difference in what would have happened in the litigation hand you that you did not raise it more clearly than you did something else you would have been tried that wasn't it here i think the one that he focused on was the relation among the three named inventors  inventors and i forget whether he was referring also to unnamed co inventors but something about communication you're on or on the derivation point i don't think there are any other facts that weren't tried if that's what you're what you're asking about the communications between you see b l t s the issue from our point big communication to find her there was never any issue involving inventor ship or derivation as between different you see b isn't that effectively his point i don't think that is his point i think his point from the the completion of the invention of the by the three co inventors we actually would have to know when mr right near what he did and when that was actually completely irrelevant to the derivation question  so there would have been something more to try had this issue been identified or clear i don't think there was anything more to be tried we know exactly when dr wright near made t and at that time the memo spelled out that there had been a conception and there had been a reduction to practice and it involved  location but they were working together on this project and i don't think there's any any question and i didn't understand before just now that mr quinn was raising an issue as between these inventors our issue as you know from our brief is a little different and that is that we felt like we were of sandbagged on the prior use or defense where they didn't they didn't even put on a case prior use or defense in their cas chief and it was only during cross examination of our expert that they brought out a document that had never been put in their exhibit list in the pretrial order that's why we think we don't we haven't waived anything about the conception reduction to practice states because they didn't raise it until they were into our case we had no reason to have earlier dates until they raised a date of alleged public use before if i can thank you just trying to let me respond on the last point that my friend said and that's this this idea that they were sandbagged at trial you can look at appendix forty three seventy nine they didn't object to the admission of the exhibit that he's talking about they didn't put us on notice that that was an issue that they were contesting now there may have been other issues as well my maybe my memory isn't very good i don't remember in your brief here whe can't tell me if i'm just wrong i remember coming away from the from the briefing finking i don't have a single concrete point in my mind about why this made any difference  made this precise point or not the point that we did make was that it would obviously have prejudiced us from the ability to contest issues at trial including when this purported conception and reduction of practice actually happened among the joint invent inventors and that we had been led down the primrose path because of every single step whether it was in the pretrial water or at trial with their experts affirmative testimony or the questions that their expert w when we had raised the issue of us and they were on notice in chief and stark fine in the course of rejecting the derivation argument that there was conception and reduction to practice by october thirtieth i don't y and then reproduced it he judged over thirty years i mean what else is there but that goes again to there being different individuals having different roles at different points in time and if they're going to then say ok well that gives rise to an earlier priority date in this business that they were not on notice of that we were arguing of use prior to november twenty eighth is simply not true you can look in the joint and in the joint pretrial statement we specifically  identified that you know as of november twelfth they were telling the f d a that these things were being used in the united states from lott forty seven eight zero eight which necessarily contain these crystals let me if i may turn to to the hire a firm of appeal and i think the is indistinguishable and i think what's tell thing about wrigley and it's reasoning number one is obviously there's no limit on language there that would have prevented the claiming a number two it's pacifically distinguished other cases like a where it was unknown at the time of patenting than alleged equivalent was a suitable substitute and so when my colleague says well there's no case that that looks at what would have potentially been in the inventors head well maybe not in their head specifically but what would have been known to a person of ordinary skill in the time of the art at the time of patenting wriggly is directly on point and i think judge bryson's decision joined by judge newman is indistinguishable in in this regard this is a pattern where they tried to name click to claim narrowly to get around the cygnus prior art i don't think they did that all come back to that as my my final point but to try to get around the cygnus pyrite they had worked with with was cygnus and now what they were can reference to a judge to answer that you were asking about a moment ago is fifty nine sixteen it is the feasibility study by inventor mueller and the strategies it says for the formulation of matrix systems with a self adhesive matrix formulation the following it he's