to give everyone a heads up that panel's interested in hearing your thoughts about our jurisdiction to hear this case and then it's not an issue that either side briefed my church but you know the question is whether any of the claims of fall within prosecute whether litigation based on a patent was objective we are subjectively reasonable and in order to determine whether litigation patent infringement litigation is objectively or subjective unreasonable or reasonable don't we have to get into the scope of that patent maybe the patent prosecution history perhaps even the tangential relation exception to patent law all of that seems to be in the heartland what the federal circuit does and it seems that it would principle applies here and i think the court's reading and looked for also applies here but as i said you know i think that if the court has concerns about this it really ought to be briefed by the parties because we're all we all are notably if you look at the difficult decision i don't think it ever mentions allegation that the the tricor deal was a benefit to have a work one hundred and seventy five million dollars so those two things which are really part of the s if the worst pain a claim wasn't dismissed it on discovery maybe maybe it's time if you were allowed discovery on this you might learn that no they were truly the left hand not knowing what the right hand is doing but if you've alleged it you say that now and in this trial and so that's that's eleven of the of the court major errors here i think the court got hung up on the fact that the  making now how do we differentiate between a token agreement what is arguably a win win settlement for both sides and any anti competitive the st payment so many thing i think the answer is that it's not that that's really going to whether there's a pro compact the deals are pro competitive in the in the final analysis which lippa toward particular makes clear is not probably part of the inquiry on a motion to dismiss to allege that the payment was and obviously one hundred and thirty five million dollars i think it's large by any standard and it was unjustified and here is unjustified both because it doesn't reflect anything like the save litigation costs i mean litigation expensive and not that expensive  to protect and or gel from competition and so again those those allegations that large and justified that's enough to stay to clean under the case law on the question of whether it's whether it's pro competitive something that was worth about fifty million dollars but the st payment related to the tablet market which was which was orders of magnitude smaller so the fifty million dollars was orders of magnitude smaller than the alleged two billion dollars market competitive and you know there would be a lot more evidence there might be experts there might be a whole lot of things that the court could take a consideration at summary judgment or at trial but this was just a motion to dismiss and gum and  junction do you want to just is i read the briefing i think i think there was this notion of each party mischaracterizes the precise balance of the injunction i guess one side makes it sound bigger because bigger injunctions are harder to get it sounds like you're saying it's not that big because smaller injunctions generally speaking might be easier to get why don't you just lay out very clearly what injunction you think should have the scope the injunction that you want you can look at that you think is justified by that the record that you provide for so we are for three things one wrong for a long period of time but it might be only appropriate to have five years or so here i think it really needs to be addressed on the circumstances of the case but this is a certification requirement if we stay awake of what we hear you know one of the things that we encountered in this case was this somewhat unusual clean that that all of the you know all of the decisions to bring suit were just made by the lawyers that he would go in put from the business from the business people i mean i find that to be we have a challenge that addressed by lawyers who are members of the bar officers the court who have their own obligation their legal training to make that assessment as opposed to for instance maybe a member of the executive board or the business component of a company who may think to themselves aha thirty months without competition that helps the bottom line it strikes me that if we're going to do almost a legal process analysis the best people to make this is not those with legal training as opposed to those without  decisions assessing the reasonableness of litigation should be made by business people not solely by lawyers as your lawyers typically do not have the authority to go and buy a lawsuit without without the approval of their clients that's not something we are typically do part of the if that's why the certification requirements is appropriate we've also before you give us your nd and rd elements of the injunction after the certification requirement i want to just make sure i understand is this within the context of bamberg gel or just any any potential lawsuit court in the st instance and the problem here the district court didn't really apply the proper test and didn't really apply the proper test and didn't seem to be characterizing we were asking for correctly so you know i  argument mr hoffman as it vies me he doesn't intend affirmatively to bring up the besides issues but if the court has questions about this on mr nepalese here and i would stay asked leave to cede some of my time to allow him to answer the court's questions in fact on the issue of the cross appeal and the appeal i'd like to say that before i'm going to respond almost immediately to the my my colleague's discussion of the reverse payments claim and trying to answer some of the court's questions but i do to underscore at the outset of my argument that we think that the dispositive issues in this case the dispositive errors were the district courts finding of sham litigation and the district court's imposition of an unlawful discords ment obviate the f t c as appeal and so i do hope to be able to focus some of my time today mainly on those points that the infringement suits were not shams and that the f t c failed to prove monopoly power and this because not only is not only does this case involve some consideration of a patent law issue but this is like the mother of all patent law issues this is whether there is an exception to an exception to an exception to  requirement that the patent act provides but our view is that the court is not actually being called upon to decide who is right that is whether or not there was infringement under the tent under the doctrine of equivalence but whether or not no reasonable attorney who no reasonable party could have thought there was any chance of success and in fact of the parties that the some examination of the underlying patents and as you say it's a pretty deep evaluation of those patents we get to equivalence after equivalence then we're off to patent prosecution history after patent prosecution history then we're off to can general relation exception all of those have to be evaluated and assess to determine both the object of reasonableness and then as you say this you enter a requirement so it seems very very hard to a vet to conduct those two analyses without forced taking a tour through just about employee step there is in patent law not just for one case but for two cases one of which has a reverse payment component to it which might make it different under a look at tor but the nd case the parent go case is distinct from look at tour because there's no reverse there's no reverse payment companion there and so it seems that in that case if nothing else we are in for a long long tour of patent law before we can get to the issues in this case and that seems what one thousand two hundred and ninety five a is all about so i i will say when i did a moot court for this oral argument as soon as i assume is like onto the objective baseless and this one of my boot court judges paul clemente as it turns out said why are we being asked to decide all these pat cases we're just going to certify this to the federal circuit why do we have to decide this in my response was there is no sir i'm not aware that there's a certification process and i think you are required to decide this there was sham litigate there was sham litigation at issue in the where we know we know about wellbutrin and look at or and so on but i think what i distinguish this case is in those cases there were several theories packaged into a claim some of which were patent like sam litigation some of which were like same citizen petition brief and let the courts decide this that was our best reading of the jurisdictional statutes and this court's case law on the federal circuits case law but if we're wrong we'll just you know of take the  for watching but let me i mean some of your questions do go to the question of like how hard is this subjective baseless ness determination going to be for us and i really do want to address it but you know on the in the theory that i'm trying to proceed in order i guess i should say would like to sort of you want to start with the remedy st that's fine with me as far as i'm concerned so i think there's a serious question here about what the word injunction means and you're fighting an uphill battle with a lot a lot of precedent going against you but i guess in your favor is the most recent seven circuit decision an f t c v credit bureau set or so where there are two issues on the remedy one is the injunction all i want to say about the injunction is the district court got this absolutely right he understood that the question of whether an injunction either one of the three versions that they asked for was warranted is whether there was a pledge that they had carried their burden in showing a likelihood of recurrence he found as fact in his ex his decision explains why he didn't find any showing of a likelihood of recurrence of the notion as my friend said that there were that apathy has a history of sham litigation i don't know where that comes from in even activists which involve solve a a predecessor of advie didn't involve any allegation of sham litigation but in any event that was a finding of fact by the judge no no likelihood of recurren and we think it's reviewed for a clear error we don't think any clear error was shown but your honor judge hartmann that to read the remedy question here the more interesting remedy question here goes to both the reverse payments claim and the sham litigation claim and they both relate to the order of discords meant i want to tell you why we think and notwithstanding some of the comments that i've already skeptical comments i've heard this morning we don't think that they are complaint on reverse payments actually articulate a plausible theory of liability and i do want to address that but perhaps before for i do i should say on the remedy issue that even if it did even if you thought that judge bartol was wrong in concluding that it failed to state a claim on pay for the lad reinstating that claim would be utterly futile because under no circumstances we now know could the f t c obtain any relief or in fact i guess is the same thing prove that there was any any trust injury the district court properly found and because this was an issue on the remedy in the sham litigation side properly found that chose not to launch its product for reasons entirely independent of the lawsuit and that means that not only that no discords from it would be available even if you found that the complaint properly alleged a reverse payment under activist but indeed that no violation occurred because as you explained it well well bute train and the d c circuit also discussed this in the microsoft antitrust case there was in fact if there was no  tethers entry then a theory of an act of this theory of liability which is pay for to lead it has no any trust injury and therefore we think even leaving aside the merits of the reverse payment allegations and whether they satisfied twamley or not it would be futile we could we could play this forward let's say you send it back to judge our goal and say yeah we think there's enough in the complaint not withstanding m strenuous arguments so you know go ahead and let's have discovery and let's see whether there really was in any trust violation to just start interrupting but that is what we would do if this came to us directly it said it so basically you future argument is it rests on the fact that you've already gone through discovery summary judgment sixteen day bench trial a run on sham litigation and what you're basically saying is well maybe just maybe that  isn't possible claim but based on what we know now four years of litigation or sixteen days of trial there is nothing there to send them back for that's right now the words we know if you sent it back judge borrow would say look the the question of well i mean i mean it seems that the most that your argument buys you is discordant wouldn't be a remedy for the reverse payment kept but that i mean you know i was supposed to we learned some things we didn't get discovery maybe we can learn a few things maybe we want to sort of occasion style injunction again maybe that's good enough i mean it seems a little early to start saying no no remedy ever is available judge phipps this is a this is an incredibly weird case right because if we not only have the reverse payments claim that was dismissed they could be sure there was no discovery on that right but we then had a full summary judgment on sham litigation denied go to trial we have a long trial we have full discovery and what we talk about discovery here in terms of what they could or couldn't plead let's understand that this complaint was filed not only a few weeks before generic entry  years of investigation by the f t c in which they subpoenaed thousands of documents and lots and lots of witnesses both from heaven and absolutely but leave that piece be that as it may just any trust injury is an element of a violation of the f t c act on the issue of injury as it happens we have already had full discovery and a full trial including expert testimony by both sides on whether or not there was in fact any delay even if you think that there is an allegation a properly pleaded allegation of a payment in order to delay generic entry which is what activists claim is we now know because judge bartol has found not only based on the credibility of the morning kavanaugh the only to have a witness who testified in the case who interestingly was called by the f t c but also by three objective facts that he found that even if no lawsuit had ever been filed sham or not tampa was not going to enter this market for three reasons number one all of which existed in two thousand and eleven number one they were told by the f d a that the pop bottle presentation of this drug which they estimated would account for more than fifty percent of their profits was disallowed number to their manufacturer cipla as the judge found told them we want a ten million dollars payment up front or thirty five percent royalty and by the way once you agree to that it will take us two years in order to be able to manufacture this and perhaps most critically the f d a had advised and it would be over here that there would be no way be reading and as ms cavanagh testified tempus entire successful history as a generic competitor had never involved a b x rated drug they had no ability to do that and so in thinking about both whether there is a remedy available or any trust injury shown for the sham litigation claim but also the reversed payments claim there is none we now know because of that admittedly weird posture of this case that after full discovery and after a full trial the judge found based on credibility findings that test vote wasn't going to enter even if abby and dishonest had never  less settled those merits arguments those are arguments do you also argue that the judge lacked the power to order the four hundred dollars plus one million dollar fact somewhat implicated by the supreme court circle rant in s c c versus the who which will be argued next month the st reason is as we briefed and as judge sykes has explained in his opinion for the th circuit forward looking injunctions it mentions injunctions six times it doesn't mention or encompass any backward looking monetary relief and we think for the reasons articulated by judge cites that is correct and there is no case law there's no precedent in this court that would the court would have to overrule in labs what i'm saying about mainland so lame labs is is actually it's interesting because  worldwide your opinion in lame labs and your opinion in f t c versus shyer viro pharma in lane labs what this court said is well gee we have these older supreme court cases that seem to say that you you know you can sometimes imply equitable relief in the event with a statute that authorizes an injunction but then we have a more recent supreme court case that says well but if this is in the context of a ridiculous ated statute that in other sections specifically articulate other forms of relief you go and therefore what this court said in lay in labs is still we really have to look at the context of this language in the food drug and cosmetic act and what it found was that there were no other provisions in the food drug and cosmetic act that elsewhere in other procedures said yes restitution yes discord yes money damages whereas here we have i mean look the f t c is historic and principle authority to enforce the f t c act is through section five section five everybody admits allows the imposition of monetary relief it allows the imposition of equitable monetary relief we have another amendment to the statute section reflected in section one thousand which is i think fifteen u s c fifty seven b which expres authorizes in the circumstances of a cause of action under nineteen equitable relief and here we have a statute that everyone agrees as judge sykes explains was introduced in order to solve a problem the problem that the f t c or to kill a did was yes we can go through the section five proceedings but in the meantime we have no authority to stop what we believe is illegal conduct to give us that authority and so our argument number one on the discouragement remedy is it's not authorized so that the counter argument i guess is one that was one that provision was adopted it carried along with it the whole puerto mitchell equitable theory right and that's i think that's a doc but that's an argument that is completely unavailing because unlike i mean when you think about porter and mitchell so porter was a plain old statute that basically said you know you can file a cause of equitable apportionment case in which obviously when you know when courts are sitting in equitable apportionment apportionment cases they have the full range of authority that's our argument number one argument number two is even if you don't agree with that even if you say well credit bureau center was wrong and the old th circuit precedent that it overruled was right it only applies to equitable relief and the award here of the discourse of an award here is not equitable the f t c stated toward the district judge and the district court found that the award was intended to punish that portion of coke cash the portion of focus we're relying on is the passage of the very end of the courtship in the last paragraph before roman numeral three where it says that if the remedy one seeks to redress harm to the public and two is to punish a violation and deter others from committing the same violation rather than quo so we to compensate the victim for a not right so so this is an issue of st impression obviously we have to heed our prior reasoning in certain cases that involve different statutes or inactive at different times and have different places in the statutory regime and what you're saying is that the unique place in the stack for a regime of section thirteen b makes clear that this statute is not about discourse and actually it's limited to the text that congress decided to put that and that because context was such a big deal in a case like lane labs and even for the th circuit recent th circuit that when we look at context and we look at this case we look  the reverse payments claim doesn't state a claim under on its face doesn't state a cause of action even leaving aside futility and i certainly i know how much you don't would prefer not to hear this but this is a case about sham litigation and i would like to be able to say at least a few reasons why the district court erred as a matter of law just on the discords met the remedy issue even if you didn't agree with our reading of thirteen b and if you didn't agree with our reasoning that under cocaine and coke has cited the supreme court's decision in austin this is a penalty as duke term penalty has been described in coke ash and austin nonetheless there still wouldn't be any appropriate disco because as you explained in your opinion an f t c versus shirer viro pharma under thirteen be any equitable whether there is or isn't any equitable  relief vailable it is it follows the ability of a court to impose an injunction if there is no likelihood of recurrence and therefore no authority to as a result of an injunction and finally the you know we think that even if it even if discouragement were legally possible in this context the district judge clearly erred because what it found was you owe this four hundred and forty million dollars because i find that para go would have entered in june of two thousand and thirteen not december of two thousand and fourteen and here here's what i calculate the profits  but he based that factual conclusion on two findings both of which were demonstrably wrong number one he said the only reason that the f t c took so long to give you the a a b rating is  that you had agreed not to enter until december of two thousand and fourteen and i think everybody is in agreement that that is factually wrong in fact para goes deputy general counsel testified that they did not they chose not to make that public and did not tell the f to the f d a that until it filed the lawsuit in the fall of in the summer of two thousand and fourteen the judge also said well earlier like within four months after asking for your ab certification that is just more there's nothing in the record that supports that mr solomon again parados deputy general counsel sad that is pure speculation this is our regulator we sue them only as a last resort we did write them three letters in which we asked them to expedite this even though and the letters were in the records say we know f d a that you've told us that you are considering a rule making on the issuance of t e ratings before you grant these we are asking for an exception so when talk about  because there's a fundamental right well this is we're talking about the st amendment here and you know your sister circuit the federal circuit in in other cases involving letter sizing their expertise exercising their expertise i'm claims of invalidity in claims of walker process violations all apply a clear and convincing evidence standard then of course it really naturally follows because as the supreme court  has said the issuance of a patent is presumed valid and it can be challenged only on clear and convincing evidence that it is not so we think that that standard was correct but we also do we also think that we are under any of the standards to show i mean let me just say one thing which i'm sure the court is exquisitely aware of but i feel like i need to say it is as this court has explained as the supreme court has explained the sham litigation exception and poses a very high hurdle on the plane on the party arguing it it requires the proof of an exacting standard because it is in derogation of the st amendment that's what nor pennington and the supreme court's decision in pre says and this court's decision in well butte trend actually says in the hatch waxman context the standard is particularly hard cause hatchway act in a hatch waxman case there's no dispute about whether there has been an act of infringement the filing of the paragraph or certifications is an act of infringement this court explained now with all of that perforation out of the way to prove st of all objective baseless ness the standard is that the f t c had to prove that there was no reasonable litigant that could have perceived any chance that the infringement claims might succeed and is objective basis that's part of the f t c is affirmative time it is good in order to prove sham litigation the supreme court said in cream the party invoking sham litigation has to a deuce independent evidence to establish both that that the claim of infringement was objectively baseless meaning in the in the judge evaluated that after extensive trial and in the prosecution history speaks volumes here when they started with every penetration in hansard they reduced it to twenty the expert testimony in this case and in particular i want to focus on the case law all show the very opposite of objective baseless and just before i get into the prosecution history which i know acquires a deep breath let me just make two take it or leave it january for entry by january th two thousand and fifteen they calculated that they had a seventy five percent chance of winning on this infringement claim not a one hundred would you know i mean this this this very experienced trial judge it was within his purview to to discount what those percentages the same way i just did was so the fact of the matter is not only that mr but nonetheless before the end of the patent term they calculated what are the life how could this come about and they factored in not a ninety percent it is just a fact that they considered that they had a twenty five percent chance of losing that's number one number two in terms of judge bartels reasoning we cited to judge oracle for decisions i think we cited more but i have four in mind including most recently that you tiba happened when it was we want to protect the universe now then we went from the universe to twenty four excluding only only a gas and then again spare go is i understand the crack i'm on and then then against parago assessments of of the general counsel who go higher than seventy five percent i don't want to be mistaken about this at all st of all i want to talk about what the standard is the standard of objective reasonable thus the standard of objective reasonable this that  no reasonable person could have thought there was any chance of succeeding either under existing case law or an argument for an extension of existing case law is in  two elements of ruled on the federal rules of civil procedure i mean that the language is virtually identical th rouletabille that will levin says you have to you have to certify the following things your complaint is not being presented for any improper purpose such as to harass cause unnecessarily delay or needlessly increase the cost of litigation and that the claims defenses are legal contentions are warranted by existing law or by a non frivolous argument this infringement litigation what mother told should have said is we would be violating what levon if we did that and do my research on this is under this reading and maybe there's maybe there's reasons that they should conflate but justice is that well look it was a rule eleven violation therefore it should be objectively unreasonable but no one truly gone quite that far yet so i think i think you may you may have misspoken ok but what what  argument the argument in pre was if we can show c enter if we can show subjective on reasonable us we don't have to show objective and that that was an ass in the look at look at octane in the fi shifting cases that was the case what the supreme articulate it the exact same is the rule eleven standard it seems to be that there is futility and then there's something about futility rule eleven frivolousness and then there's objective one reason on this which seems to make the colde you look at the standard of what objective on reasonable this is the court articulate and you read rule eleven they are substantively one in the same and i'm not saying this is not a gotcha argument by me the point is this the f case when you're talking about prosecution history of stoppel and the federal circuit not only said these arguments are entirely on reasonable and we're going to sanction the lawyers for making them they all won now we can have a long debate and i'm about to give you my best argument about para go and eli lilly we can have a long debate about whether we're right that they compel the conclusion that our claim of infringement was meritorious d or whether the c is right that they don't know but the fact that we can have the debate shows that they are not objective leean reasonable now as to para go your honor the the the u i lilly was the following there was a claim for a cancer treatment that included as one element an anti foley and it claimed all anti full weights there were a succession of narrowing amendments in response to objections by the examiner ending up in a claim that only included the particular anti full weight that the brand manufacturer was in fact using and the question was can they claim infringement cry by equivalents with respect to a product that is using a different anti fold weight a different salt form that the patent prosecution history in that case i believe correct me if i'm wrong demonstrates it was designed in narrowed to avoid one particular anti for late that's what happened with t v that patent prosecution history demonstrates that it was designed to narrowed to those twenty four to avoid one particular ingredient gas and i can see that you know i will use a huge help to you for tivo but when you go from twenty four to one with is that that  which is the equivalent is entirely tangential to the reason that the claims were narrowed to pema tracks that dice odio another entire fully and that argument that we have the argument was again in in you i will leave the examiner said there are two functionally there are two prior references that a republic for your claim for all anti foley one was a pat didn't include methotrexate and then ultimately just have a track said di sodium and the issue was was the narrowing of the claim not to include in the last instance methane mean tangential to the reason for the amended claim that is the what was it when you amended the claim what patent related objection were you trying to avoid and what the court said in eli lilly was the amendment was to avoid the are sent in claim that claimed the full light the johns patent which also named vehicle of the the issue in this case what there was no effort to avoid it the argument was that that the arson and patent taught away from it now in our case we have again of penetration and cancers in the context of a nitroglycerin cream the patent examiners rejection of the original claim says this is obvious over mac because mac discloses a penetration hansard with you know with testosterone formulation and allen discloses all sorts of other kinds of penetration and he answers albeit not in the context of a testosterone treatment we amended the claim as you say in the st instance to include a category of twenty four which included both  as we point out in response to their latest twenty eight chain letter and eli lilly there were also successive narrowing amendments in this case there was a further narrowing to a single penetration and he answer just as an literally there was all to mentally and narrowing to a single anti foley but in that twenty three that were left behind is the compound that paragon wanted to use and i don't think that was present  i'm wrong but if i'm correct in understanding that the examiner not only honed in on ice a problem here state but also homed in on the particular composition it then it stands to reason that explained in lilly the federal the argument in lilly was hey you alternately came down to only one anti foley and you didn't include these other ones and that's game set match and what that has a prosecution history matters is not just where you start and where you stop your treating you i only as a starting point a stopping point case not not you know the local you're treating it as an express not the local bus that stops at every stop along the way and and this case is different because there are stops along the way and one of those stops is really really important in terms of whether your client had an objective reason for suing ok i'll just say again and i won't move more and say it again there were stops along the way also in  i will also say that the very fact that we are having this discussion about lilly and we haven't yet talked about the federal circuit's finding of tangentially ality in primos and regents and in sit form all of which there are arguments back and forth the only question is whether somebody in our position whether the in house lawyers at advie and the sons or monger tolls and foley lardner when they filed that foley hawaii when they filed that lawsuit were engaging in something that was objective leean reasonable that no one could have thought they could possibly prevail and the very fact that there are four cases that we think are very hard to distinguish going the other way actually going the other way much far from basically same way that was a on reasonable argument to make takes this out of the extreme really exacting standard the st amendment references now as my last year your point i can tell i haven't satisfied you on what happened between october and december the f t c the what happened between october and december is the following they don't hear anything from the examiner they amend their claims in october to include twenty four penetration enhancers norwood jackson of those claims ever they have a conference with the patent examiner on december  claim that included ice a pro bowl i satiric acid none whatsoever all the examiner has said is i'm looking at your product i agree that your product is not and in the context in which that occurred with very little time left on f d a marketing exclusivity for this product the company made a decision let's get the patent on our product the fact that the claim was  over narrowed is not only a commonplace under the doctrine of equivalence and prosecution history of stoppel but as the federal circuit has explained it is the only reason that ten jentzsch reality and foreseeability and the other exceptions to prosecution history the stoppel exists the federal circuit has explained repeatedly these patent is always over narrow their claims that's why these doctrines exist to evaluate whether or not the reason was tangential and whether in this case it was tangential to the map now so how does forty four we can compare the prosecution history here with the prosecution histories in these other the four cases and cases you're talking about but for three mom patent lawyers can you give us a sentence or paragraph what is the test for when the the the claim  aspects of a claim are only tangentially go to d the amendments that we're talking about how do we know one what that looks like right so the tangential ality arrives only in an instance in which original claims have been narrowed in order to as the federal circuit as explain over com a statutory obstacle to patentability the only obstacle to patentability here mentioned by the examiner in the rejection was matt which used a lake acid when you look when you determine whether or not although ultimately the claim that was granted and patented was narrowed only to a particular substance you have to look at what again the federal circuit has said the rationale underlying the amendment and the question is did that rationale as it is in most of these other cases why did you narrow your claims only to that one particular penetration and he answered you look at the prosecution history to determine that the prosecution history of the pages that i cited in response to the rejection are we narrowed it to avoid mack and we don't need to will void alan because and again this is reciting the prosecution history mack teaches away from the use of any other penetration enhance know that i don't see that i really don't that's why they meant it down to twenty four was to avoid mack after they avoided men they didn't need to amend any more so the st amendment took care finally i think understand your point and let me add and it goes to the other reason why we think that we would prevail on an infringement claim with respect to para go and that is the narrowing has to have occurred has to have been to overcome a statutory obstacle to patent ability now you say and i agree with you that the october amendment did that it said we're now claiming a whole bunch of of penetration  that are structurally functionally and chemically different than oleic acid and mac teaches away from the use of them done over there was no further rejection by the patent examiner and examiner told you to do in the examiner base and you wrote it if you done exactly the examiner said look i'm not rejecting your october claims you want to move fast that's why you're in here darkening my door usually got one penetration enhancer i'm convinced that that penetration enhancer is patentable conduct yourself in order to certain composition right in the right with your penetration and he answer you know with this one penetration and he answer now i just submit that the idea is we can have arguments and if this were being argued in the federal circuit maybe there would be a long argument back and forth about whether lilly and ensuite to form and the proper understanding of this pat prosecution history does or does not make a winnable case for infringement but we are we're not even in the same time zone as that question the question is only whether the advie and dishonors lawyers inside and outside counsel when made brought this lawsuit were behaving in a manner that is on lawful and we are so far from that we wouldn't have to all these exchanges about under under the twenty eight dollars chain letters if this were an open and shut answer i fully i give judge phipps i mean you clearly seem like you are in fact able to adjudicate this even if you were on the federal circuit but there are i'm not saying that there are no arguments back and forth i'm saying that we think that in light of the way that this the federal circuit has treated very very similar claims of infringement by equivalence even in the face of the doctrine of prosecution history of stoppel this was reasonable that it is incumbent on the f t c not only to prove objective on reasonable miss but also subjective subjective baseless ness and we can talk about what could or couldn't be proven here but what the judge did the weight of recent he erred as he said i find that these are objectively unreasonable these were knowledgeable patent attorneys they knew because of the hatch waxman automatic stay which is an outside limit thirty months this was going to be very valuable and i find that they acted in a manner that you know essentially with c n n or in this case that cannot be right because and the f t c is is there's no way to detect it all the key exchange is through privilege well let me get let me go back to that for a nd st of all let me just say that what however you can or can't prove with the f t c has an independent obligation affirmatively to prove subjective what the judge said is i'm going to win for it from the following two facts three facts one i've already found these claims objective leave baseless two lawyers made this decision three there's the hatch waxman automatic act with all due respect to judge bartol cannot trump the st amendment you can't say well sham litigation is really a two part test in every area other than  structure of an automatic stay supplies the predicate for a finding of subjective baseless no to your question your honor about the attorney client privilege i want to say two things the f t c says well in a situation like this how could we possibly how could we possibly bear our burden to introduce independent evidence the answer may be maybe there wasn't anything you could do but as none under the st amendment it's nonetheless your burden but those aren't our st to order answers or for one answer is in these cases there are any number of things that a challenger could do so it could have for example brought in evidence a deuced evidence that they filed these lawsuits and they had already taken steps to enter with their authorized generic at the when the thirty months and did they could have already made plans to shutter their manufacturing line or reduce their manufacturing wind because when generic entry happens they're going to be selling far fewer dosages they could have go on to have the two tabs and peridot and said well just settle this litigation we'll let you enter thought when the thirty months extended they could have hired non patent lawyers who we gauged in the kind of delaying discovery abuse that even says a desire to obtain a procedural advantage but otherwise and finally on the attorney client privilege i must say that for the life of me i don't understand how if there is an argument that these decisions were made by lawyers a lawyer looked at the claim the lawyer decided we're filing this claim i don't understand why they didn't buy it in a situation like that they can't try and challenge the assertion of attorney client privilege the argument is the lawyer looked at it the lawyer is an experience patent lawyer the lawyer decided a suit there's no like number two i'm like maybe what i have to say and i've done this as a plaintiff i've also defended it as a as a defense lawyer you know what the other side comes in and says look our theory we intend to prove that they acted w emptor the attorneys made the decision they acted would see enter in order to secretly attain secretly pursue an objective that violates the law there is an exception to the attorney client privilege for that which was not invoked here was the th circuit wrong credit here well the seven nd credit bureau so this case is controlled by the supreme court's decision quarter and mitchell and this court decision lean around two thousand and five in may great was that it presented at that point in time a very close call that was towards the middle of the opinion and then almost as an outro to the opinion it said if there was just a little i'm paraphrasing if there is just a little bit more guidance from the supreme court that might told us one way or the other that wasn't section thirteen b that was to drug and commit cosmetic act and then so we have a different statute coming in a different structure fitting into the structure of a seshadri framework said if we just had a little more guidance that might sway us one way not only do we get more guidance we get more guidance in the context of just one term and doesn't that steer us into credit bureau being the way to go you know i don't think so and of course credit bureau could not rely on coke and i'm quoting from the opinion a two hundred and twenty five dollars district court sitting in equity may order restitution unless there is a clear statutory limitation on the district court's equitable jurisdiction and powers and restitution is permitted only where it furthers the purposes of the statute and after that we held that the food drug and cosmetic act authorized restitution because it empowers district courts to quote restrain violations and quote of the act so it would appear that the statute issuing labs was murder of a generic equity powers of the court statute whereas here in the thirteen b we have with the word injunction we don't i don't see i don't see any of that sort of expanse of language in this statue this is all in any other equitable relief the courts will deem just improper or things like that and monetary relief under that statute so i don't so i think you know it's important to keep that in mind in terms of but this is a this is a revision it rishon if you're right the credit pure opinion goes against a tremendous weight of authority the other return money that was that was improperly withheld so again i go again it was down under a statute that was empowered an agency such as yours to seek an injunction or was that a case involving the general equitable powers of the court because look what what's where in the point i'm making a distinction i'm trying to draw is between the historic equity jurisdiction where the chance for an equity can do almost anything and decided it sounds like an argument that says discordance available restitution is available any other equitable lease that you can think of is available even when the statute doesn't mention any of those pieces of relief as well as the statute legend's word injunction we know we're all in equity land and every statute where congress has specifically given powers to agencies to see i mean there are a couple questions lurking in co cash and i think one of those is going to you know he will likely be addressed in the loo decision it's really i think not the question that this court had to decide but that's the question of whether is really is is that outside the scope of the court's equity power is that to me like a penalty and hence not applicable the question here is does the does the the quick does the statute allow equitable monetary remedies has as has overturned or limited order and this court in labs addressed that request and said you know what we think there are some indications of what might want to rethink this whatever but for now we're sticking with order and i think this court is bound by that i suppose your strongest argument that somehow equity can implicate money would be this hypothetical which is someone deposits one hundred dollars in a safety deposit box crisp one hundred dollars bill that maybe the grandmother gave to them they say i want that one hundred dollars bill to the bank says no they say ok i'm suing inequity i want you to give my money back it's one hundred dollars that's just the race that i want back i guess you could bring a companion claim for damages they will if you won't give me my one hundred dollars back out of my my safety deposit box and i'd like a one hundred dollars damages law but i'm less you're playing with a distinction like a bad if you're really playing for damages or something like that this is signed to make someone whole for a loss not to give the specific race about how does that help you because the fact that money is fungible i don't know how that helps you and inequity i mean to judge poor judge phipps is hypothetical the whole reason that's equity is if it's equitable it presupposes that there's something unique about that reds and here we're not talking about a unique rez we're talking about four hundred dollars plus one million dollars you know nothing unique about those four one hundred million dollars so nothing unique about about  other in some other opportunity that would have netted me a one thousand dollars i have consequential damage well that's understood that's that's why there's flavor some damages there's actual damages there's expectation there's all different flavors of damages what we're concerned about is that line between equity and damages money was going to return to them and the judgment provides of the money will be put in a fund to be return to consumer in the the purchasers and we've made a commitment that no money will go to the government so this you know whatever the court holes ready in lieu and whatever situation was in co cash  pick this particular remedy this do you know have you have the power to change your mind oh let certain forcible court order to make sure the money doesn't go to the go up up at four other says is that if there's money left over the court will decide what to do with a couple of things stay to say on this but let me start with the fact that this case was decided in a very thorough opinion by a very experienced just the court judges handled dozens of patent cases he was very aware of the high standard that you need to meet to show  gave us all this stuff then they turned around and said in litigation and said well we're not really limited ice but in your state in the st place i mean if you accept mr latham's argument the patent still covers everything in the world except for oleic acid  there's a very obvious distinction between you i believe and this case in my lily of the prior art that was cited by the examiner didn't disclose the alleged equivalent in this case the allen prior art maybe it's helpful to me you seem to have a very good grasp of the prosecutor to record but i mean it may be helpful for me to just sort of go through the key points of how this transpires i think it relates to the to the perry go so again they start with a very broad clean the covers everything under the this i'm quoting from the j one thousand and thirty two but it basically says talking about mack focuses on the superiority of oleic acid again talking about mack provides no teacher suggestion to substitute the claim penetration answer and he answers in place of all a tacit so i mean i think isn't it then from that passage fair to say that the amendment of the universe to twenty four was an amendment designed about all ic acid and not about the desire to overcome so is the reason that the new application listed twenty four specific materials or compounds instead of just saying something other than oleic acid and my hearing that correctly well because they could have said just something other than a way of gas it right but that was but according to you that would have been enough because there was this combo that meant more than just oleic acid so they had to they have to say what that something is not that he can get a pat are i think you know even less colorable but but the fact the matter is that in order to overcome the rejection based on that and alland they chose to examine their claims and in doing so they surrendered they you you seem to have it exactly correct i speak only for myself my questions i reflect my view yeah i understand that completely but but i think that you've got it right and so they make two different arguments of evidence it looked to you i think it did properly take into account the finding of objective based listening us as well as the fact that the lawyers who made the decision were highly experienced that they had access to the when you say took into account that it suggests that it's not a problem for the district court to review objective baselessly this is subjective intent is into related allowed to do right at the subjective problem certainly in the hatch waxman contact where someone you know in the circumstances of this case where there are billions of dollars at stake and someone an objective we baseless lawsuit you know absent any other evidence you know there is a i think a strong inference that this was done to interfere with competition rather than to win the lawsuit but the district court also looked at a lot of other evidence which backed up that inference including the skill of the lawyers the information they had available to them the fact they were particular specifically warned by para go that if you file this it will be a sham people be a sham lawsuit the fact that they were people who would have known that their work is order of congress the evidence there's no reason for a heightened standard here but the court found that we met the heightened standard i think that you know given the evidence the court had before it that was correct there's only one conclusion that can be drawn here  in the court is more questions and i have one last kind of deeper question about clear and convincing which is this if i understand it correctly this norm pennington doctrine starts in the context of petitioning the government for redress and so this is you know lobbying basically right now odds of success on lobbying i don't know what that is maybe depends who you are but i suspect that that's very very low david that you want to go and lobby something you're pennington and then gets extended to not just petitioning government but to filing a lawsuit it's the st amendment it's set the standard not counting government or filing lawsuits so shouldn't there be parity between when something is sham or something is done for an improper purpose since it's a st amendment really deprives it it would be strange to say you have a point five percent chance of getting this lobbying based solution but now in litigation we're going to demand that you have i'm just ballpark you know fifteen percent that's our five percent chance so i guess my question is should there be parity between the norm pennington standard when it comes to petitioning government and when it comes to filing problem where you buy a objective baseless lawsuit because that's not really something that i think the st amendment should protect them you know it certainly protect people's access to the court their right to go and get relief but for legitimate the patent holders went instead to congress and said on the basis of everything we've got here we'd like you to make some amendments to the rules and give us the thirty months just for us and made make a private letter ruling or whatever redress we could get would that be objectively and these arguments over and above the arguments made by abby which we join i will only address the nd issue with respect to discordant i think the st issue with respect to subjective baseless us is very straightforward and without n stipulated to these facts on the eve of trial these are uncontested facts and i would point the court to d x three o four this all matters because discouragement upon  exceeds any gain to be a child and puts b a child in a worse off position than it would have been under the status quo or the but for world the supreme court in co cash view punitive arguments made by abbey are only worse with respect to be a child because we never received help or control the monies of the lower court order to score now with respect to court's decision in s c c versus hughes one thousand nine hundred and ninety seven and there's no reason to upset that lower court determination that apportionment was appropriate i'm hopeful that i won't even call upon your patience for that long i have two points to make with respect to the monetary relief and i think three points with respect to the objective basis with respect to monetary relief the question of whether or will leave period whether disk or judgment would be available even if there were a substantive violation for sham litigation or for a reverse payment or whether an injunction would be available turns on whether all of the elements of any trust violation are proven one of which is antitrust injury and the district judge is does this argument that well we didn't have discovery there was a full discovery and a full trial about what the what tev a would have done in the butt for world and what the court found was that even forget the settlement even if no lawsuit had ever been filed teven never would have entered that obviates the question of that answers the question of whether there was any antitrust injury in this case as to objective baseless a miss we've heard another another long discussion trying to distinguish this thing or the other or what temp of might what have the might or might not have done there was no talk about objective baseless ness and what happened if you look at judge bartels opinion and his summary judgment on objective basis he spen thirty pages talking about the prosecution history never mentioning any of the four d cases that we cited as the stablish ing that we were right on this issue not just reasonable and after thirty pages he says i find that abby and besides having carried their burden in proving that prosecution history or history of stoppel isn't a bar and the very next page in the very next paragraph he says therefore no reasonable person could have can come to that conclusion that in the absence of any discussion about all the case law that we cited in which the federal circuit found that in fact claims very similar we can argue for ever about whether they're controlling or not were you know were correct or not is just he clearly with all due respect to a very experienced and appropriately well respected judge home or not it here he equated our burden to prove that we current absolutely correct that there is a patent law problem with what's called negative claiming all penetration in he answers except oleic acid that runs into all sorts of issues like my friend on the other side says well there's a black letter rule here that the federal circuit did not and here is to st of all as we pointed out the federal circuit has made clear over and over and over again as the supreme court did infest that in this area these are all equitable doctrines there are no black letter rules because argument is that if the claimed equivalent is named in the prior art as a matter of black letter it can't be tangential that is true with respect to the prior art being avoided if we had come up with an amendment that named acid it couldn't have been tangential to the raise the patentability objection the notion as as counsel has conceded the notion that because i  was mentioned in alan means that it can't possibly be tangential is refuted by the fact that i suppose will mirror state is also mentioned alan in so for the and i know your honor is judge phipps at least is familiar with the relevant pages if you look at page one thousand and thirty seven in one thousand and thirty eight you will see that they they they are not seeking to overcome alland there is page after page of argument about why alan doesn't make it obvious to use one of those penetration and he answers with respect into testosterone composition because they are incredibly different and math in fact teaches away from it the notion that we also argued secondary considerations and that was also true in the notion that we identified specific concentrations of ice appropriate near a state number one was not in rejection response to any communication and the concentrations that we identified are within the concentrations included in the prior art so the level of concentration couldn't possibly be a way to above weigh the prior ar hardiman finally with respect to your observation about what solve a did in response to parrot those earlier effort to come in st of all that was different lawyers it was to a different generic formulation did or did not think the very i am here i've i have i have argued in our brief and before this court that we are right on the infringement which i don't think that i have committed a violation by saying either i'm covered by existing law or i'm asking for a reasonable extension to existing law which is the standard objection i'm thinking two weeks to file supplemental briefs on the jurisdictional question and answer without objection and i'm just going to throw this out there i'm not saying you need to talk about this but this whole issue of  rising under is something that i think there's a lot of case law out there in the bankruptcy context because as you may be aware one thousand three hundred and thirty four b talk about a rising anger rising really related to and there's a lot of case law about what those phrases maybe that case law by analogy will be helpful to what arising under means in this case maybe it won't be but i throw out there for  your consideration the notion that that there are two sides to this not only what does it mean to evolve an important issue of patent law but also what the phrase arising under means so know yeah now you know there's a chance we'll have to talk about whether to hold the case pending lou or not i have no idea whether that would be proper but as you know from time to time when there's a pending supreme court case that my girl  one sometimes the panel will wait to see what the high court says but  she wait for loop i mean we won't hear arguments until early march and the decision until june so i don't know what you would have to say about it