have to start by recognizing this is a historic occasion i'm certain that a circuit judge o'malley will serve the united states in this court for many decades but this happens to be the first motion and dismissing claims twelve thirteen and fourteen of the counter claims in the district court we believe claim nineteen is invalid under thirty five u s c section one hundred three based on the  active ingredient bessie's ek but the substitution for that in this claimed invention is a rather complex and precise mixture of three or four different and that's obvious well your honor there are cases where several compositions having same function have been replaced for a single composition we cited those cases your  honor in addition i call your attention to the fact that in the east side case which you decided you noted that in re dylan makes it known that you can replace a function of those those compositions with compositions having the same function but in each of the three functions you're replacing there would be multiple choices in each of those three categories and yet they have selected a specific group which seems to work extremely well your honor it was sixty it was well known to the defendant to plaintiff and to the public that the citric acid performed two functions it's a base a buffer but it also increases bioavailability by virtue of the fact that it is concentration dependent as you increase the concentration of secure gas it in the zero one four pattern it is clear from that patent which is dr stern's own patent which he was a joint inventor in and it shows specifically that there is an increase in in the other one for patent the fact is that in this case your honor well dick or all of the components were known and there's only a limited number of components that could have been used as the elements that in an international spring can i just ask you for clarity purposes because one of the things i found a little difficult about the briefing was that you didn't tell me which the most obvious cases do this is obvious in light of blank and blank so just so i understand exactly which references amount to the combination you say is going to render obvious so i understand your primary reference to a primary patent as being a material reference or even relevant because of the fact that he did not consider the fact that it was shown for use in an oral dosage as opposed to an intern a sole dosage that was in this district court ignored is the fact that a liquid constant tone and composition with citric acid was injected directly into the widening morat because of the fact that it was the record the one for pat is directed to oral dosages that are in a powder form he did not consider that to be a liquid formulation but in fact the patent actually teaches that it teaches that it goes through mucosa membrane just as you tell your adding and adding and adding to the number of things one of the skill in the art has to do when i mention the twenty mil molders you added another piece of prior art that isn't just a day in the old fourteen but you have to get the  and you will have to then modify each of those this or that they're not just done make but they also apply in the nasal you're up to about four things that one of skill in the art would have to put together skill new york your honor would know that you want to have the same bioavailability for samut for the for the for the calorie they claim night paying as you have for the my accounts and we showed in the prior art few they're all in a day reference and i can and that they reference sickly shows that there is that  the number of conservatives that are there are one two three four five six seven eight nine preservatives and you can see also that that same list also shows that there were only three surf acto that had been approved at that point nine times nine that's eighty one different options they could have had just off that list but your honor the thing is both bands will alcohol we have anything anyone to different choices there we have you're on it it does not say it will not work it just says it wasn't used for that purpose that's all it says and it and for all we know it may have been serving that purpose and it probably did because that's the inherent property of citric acid to it that i think it's specifically says it was not being used for that purpose that's all and that's that's occurred to me that is not what what i believe you're saying ok helpful just so we can go back for a second  places i couldn't accept that from them i checked accept it from you see that you're on the left what specific reference brings me to that conclusion the the references that we cited in our brief your honor big they are in our brief  and which one can you count the i'm not your best answer as to exactly which combination renders these claims obvious or it was really routine testing that would bring you to the result of all these big give up the numbers the percentages you use it's just routine testing if i may your honor i would just like to point out the equivalen of putting a house together for the mere fact that you may not know what it was a specific number of nails and screws and pieces of wood that you're going to put together for a house doesn't make that house makes it easier for you not to infringe the rights that claim the sun so yes you do have to show those numbers to render it obvious but your honor even if you didn't show that each of the there were any earlier proceeding it becomes the word the case and you can't argue with it again with the same judge and the thing is that's the reason why we didn't have it in our briefs we didn't i didn't mention it in my in my argument as you said but the point your honors may it please the court first judge o'malley welcome all from this side of the bench or by you're here judge moore you asked a very interesting question please give me your best combination of art and mr pocatello continued along the line we've had in this case since the very beginning it's been a moving target since the very very beginning of this case his answer was you can buy any other one for patent which was not argued below and the day reference which was hardly argued below and that would be your reference while everything that was said this morning and everything that was in the briefs of epitaphs tries to oversimplify this technology wouldn't want to be on the r we're dealing with pretty sophisticated people here putting together pharmaceutical compounds when they know this is about the right amount of citric acid this is the right amount of understand this is a very narrow claim requires specific amounts of five different components it requires a liquid number one and so what is known with how to make a solid may not work with a liquid it requires a nasal administered drug which means it has to permeate through the nasal membrane so what is known with an oral drug or a rectally administered drug or a badge an elite administered drug or a buckle or palminteri doesn't necessarily teach a person either and one of the things that is so glaringly evident in the in in the absence is the fact that citric acid the one major component we've tried those but those absorption hansard in the long list of anik and they didn't work well they didn't work and in fact cashel says that they were disappointing and that's the word that he used it was disappointing so if a person of skill in the art looked at the three month five cashel patent and saw that those results were disappointing it certainly wouldn't teach him to go ahead and look at that as an absorption in hansard you and well the thing they choose for an absorption in hansard had never been used as an of and it as an absorption in hampshire in a nasal formulation in fact they were far more logical places for a person of skill in new york to in the nose they did it instead they went to these old references that were there were fourteen grodd categories of tensional things that put you that could be used for absorption enhancement among those fourteen key waiting agents plus their soil so we're now into hundreds possibly thousands of choices that an accountant didn't even refer to caps atonement so what what they're person of skill in the art would have had to do was truly inventive this was not a logical choices along a path that was logical this is not like the average sat case where there was only one component from one piece of prior ar this is not like the sundance case or even where it was a predictable solution here any change and any one of those components could have upset the apple cart no question about it in it does your honor yes ok rick and it also says look to the one sixteen happens which lifts absorption enhancing agents and one of the things we've already agreed on is listed is in the georgian hinting agent is in that so why doesn't that close the loop up enough to survive summary judgment several reasons first that patent uses citric acid for a different purpose three fifteen yes there that's used as part of a buffer as part of a ph modify arjun's the clean cover functionality because i see this is the street formulation claim so i'm not sure it should well the point is if you were to use the person of skill in the art path that apple tech suggest you take you do have to consider function because otherwise there would be no incentive for a person of skill in the art to even get to that patent and so the answer to that question is it's it's one used for a different reason a two there's others that are prefer and if even if you take the amount of the twenty point five in one example fact that's it then it becomes a lot less throwing darts against a wall at that point it becomes a much more concrete thing three hundred patents and disclose everything but preservatives and surf acting and those don't seem to be the it was not used specifically in the pats as it was not used as an absorption in hansard at mr pocatello says just because they said it was not used doesn't mean it worked that way well how does he how does one learn from that what the  column for beginning at line eighteen it says it can be seen that in some of the foregoing examples citric acid is mentioned it is however to be noted the citric acid was not used as an absorption in hansing agent but it is merely the acidic component of a buffer and if you look at column two beginning at around line fifteen it talks about this addict one certainly not be incentive and would not have an incentive to go and pick out citric acid as an absorption in hands or a nasal formulation certainly not when there were far more logical choices iran or where there had been other agents tested and had worked but you're starting from the proposition again that function matters and i understand that's the way it's been argued all the way through you've got a reference that discloses a good chunk of this claim formulation you wouldn't get to the selection of the very same greedy and that's the whole point of the obviousness in the person of skill in the art path that we have arguing from the very beginning is a very torturers path and because this is such a narrow claim as you pointed out you need not only each of those ingredients you need them in the amounts that they're given and certainly we don't think the casual patent does that and we think the district court correctly decided that we also think that the fact that it was a buffer in an amount of twenty point five doesn't teach you would use that same amount if the purpose of your using citric acid was to have absorption in hansard meat calcine as your honor probably knows doesn't have a buffer so if you're taking me a calcium is the lead compound and you're trying to replicate it and replace the components you certainly wouldn't look for a buffer you wouldn't look for a ph modifier so  casual patent doesn't tell you that frankly we think that in there are so many logical have some so many logical choices we think the district court got it right when it says this is too complicated to have them prevail even on summary judgment or this patent claim is not obvious as we pointed out our briefs all of this art was before the patent office and every single piece including kushal not one of those pieces of art because the patent office to reject the claims that presumption after reissue and the presumption that that an examiner did her job when she looked at the references should be considered in this context the prior art doesn't teach the use of two hundred million mole citric acid certainly the attic patent has a two thousand fold range the four patents that apple relies on uses citric acid as a buffer how does the amount used as a buffer teach one how much use to use of the store financer we say it does not we also  say that apple techs in our view essentially conceded nonobvious this when it says in its brief it wanted admits that a person of skill in new york lacks sufficient information to determine without more testing whether this was used as an absorption in hansard well more testing required is simply not enough to warrant an obviousness finding i would like to spend just a moment your honour's to talk about the other issues that are before the core of the new equitable conduct claims we don't think the district court abused his discretion in dismissing those camps in fact we don't think that protects even suggests an abuse of discretion here there were new issues they came too late they were after the scheduling order a court has discretion to control his or her docket and in fact these things came too late and this pragmatically appropriate time that you read in the briefs makes no sense because it's not the facts adequate techs knew about these facts two years earlier than they pled them they  subject of a crime fraud motion and indeed they were never brought in any other pleading we think the judge district court was correct by finding that apple texas inequitable conduct claims were conceded waived border abandon or improperly raised that was his decision one other point i think is important in a decision below on page a seventy five in footnote thirteen the district the administration of couse a tone in an oral dosage or in a dosage through the cheek rectum or the vagina or in a dose it in a solid or powdered form is far different from the administration of a liquid dos respect to the to the house example i gave earlier just as in the house example the playing has not shown any unexpected results from the obvious putting together of these functions to replace pencil