point of order for this morning i wish to record for the record that this very day is called the newmans thirtieth anniversary marks her thirtieth he year on this court this very day and her presiding in this session this morning is an example of her can in you devotion to this court and to the principles of the judiciary and on behalf of my colleague judge moore and pleased myself i am pleased to record this for the thank you for permitting judge newman may it please the court after the original broader claims were invalidated by the district court in this case the patent he sought you examine aged pursuant to the procedures provided by congress and in so doing so rendered significant claims scope adding additional limitations as this court recognized this most recent decision of this limitation precisely in order to avoid the prior art that had been asserted against the patent what emerged from the reexamination is a very narrow set of claims that describes very specific parameters for this unique composition a very narrow range of the active ingredient they were these claims were was within the ranges of the original patent claims reexamination narrowed the ranges to these very specific claims in light of the prior art that the previous claims had broader ranges for all these claims have never been litigated against any defendant and these defendants that are here in the courtroom today were not parties to the peer litigation have never these claims have never been tested in court until i didn't change the prior art exists for these morris chemist so i don't find that terribly helpful and they because what troubles me about your physicians is simply this drug robinson district  i'm having trouble figuring out how at this level and given this cold record and given the fifteen minutes you have to sit here and read balance all of those factors in your this is a survey document that looked over all of the prior art permeability studies and concluded that at the low levels quote e d t a was devoid of any effects and that if using it in a high enough mass to be effective would be quote toxic to the patient so this is what a person of skill in the art actually would conclude before the invention of the micro reference your honor is nowhere in judge robinson's opinion that robinson did not consider this very critical piece of on the composition claim because those weren't the prior art references about which she declared the composition claims obvious and nor do they contain any corneal permian billet in the taishan so they don't need to contain a pretty ability saw for examination congress provided of course for the expedited procedure after an up obvious objections been raised the p t o did that issue the new claims this is the first litigation that they've ever been really good this is the first judgment that is a resolve subsection of that same thing did robinson said the reexamined claims were new i'm not sure what she meant by that because we had earlier how they weren't new and reexamined context they are not new claims now i think what what judge newman is suggesting is that why should there be a different result now than there was in that earlier litigation with regard to the validity of the claims even though there may or may not be collateral estoppel let me answer the two steps first congress specifically authorized reexamination upon a validity objection  specific content that's all they wanted and the precludes effect of the reexamine claims is limited to this one drug or two drugs and that's what's at issue here and that's a much narrower set of claims than with ever considered in the previous litigation and that those were obvious in the district court correctly so found the prior art had already taught clerk went along with some positions that contain the same e d t a levels the same ph the same additional ingredients listed in the dependent claims so the district court also correctly found and they've never disputed that there was an existing motivation in the prior art to improve upon those existing formulations to use a more potent and next generation get a focus and so i understand it right combine that's exactly right and yes and in fact their expert never disputed that there was this motivation to combine and even their experts didn't even dispute that the reason why the e p a was used in those formulations it was known to work as a preservative and have all of these good effects on mr perry was talking about unexpected results and he said i mean i will tell you that just robinson clearly consider them with regard to method but her opinion with regard to the composition claims seems to take them into account clearly we've held on multiple occasions all secondary consideration evidence ought to be considered so explain to me why if anything it's harmless error for her not to consider them with the composition claims given what she concluded about the result of her garden i think first and foremost when it comes to the composition quaintness the only difference that was opponents never presented to her any evidence suggesting that there was something unexpected about data foxes and being able to work in a not down the composition she didn't really have any secondary considerations evidence on the particular issue that was alleged to be the point of novelty or you think additional the secondary consideration evidence regarding unexpected results is related to what degree of improvement might exist in corneal permeability which isn't one of the claim limitation exactly so it's not part of the example want to claim limitations it can't possibly you can't possibly have the requisite nexus in order to have the secondary considerations even be relevant in the first instance so i certainly can sort of the issue but she actually noted in her opinion that because this type of information the cornal permeability items were not relevant to were or were not contained in a part of the claims themselves then they weren't relevant so she considered it but she explained why persuasive when it came to claim six and i think that that decision is also correct because the judge figure as you noted judge robinson didn't go through all the prior art she had the benefit of hearing all of the experts testify as to what the are with each one of ordinary skill in the art and she concluded that the art did not actually teach that point only one weight vying percent e d t a with some magic cutoff number where the e t a s efficacy stopped she relied on the new reference that was not before the p t o the  a as the levels go down you don't get the same magnitude of increase as the levels go up you do get the same magnitude you do get an increased magnitude so you know with that the types of the degree of the magnitude that they were talking about here that they observed get a flock to send it follow that same trend as you increase the amount of e d t a the corneal permeability increased when you are at the point zero one weight volume percent you saw some increase but it was not statistically significant are limited to achieving a particular threshold or you know the twenty percent more permeable or anything along those lines then again there really is no distinction between what would have been obvious to one of ordinary skill in the art and what they've you would noted in your pick your part of the opinion in that case that one of the things we look for when we're talking about unexpected results is is there any indication that something is bucking the trend well here get a flow across and was behaving absolutely consistent with the pri because i understand this really isn't something that was raised on appeal to us and i don't even know if it was raised below but why is everyone treating and they have for purposes of this appeal but why is everyone treating the raising corn meal cornmeal permeability language as a limitation part of the preamble and it didn't seem that seem to me it was a statement of intended use or benefit to be derived from use and so i was kind of surprised that nobody made the argument to us that this isn't even a limitation and therefore  ineffective limitation so then at the district court level the asli understood the judge robinson was not going to change your mind did our federal circuit when we rule did you bring that issue to our court when we wrote that was the rule for when we were all thirty six correct reversed and we had to go back to the district court she rolled and then it came back up again that would obviously be an issue that we would raise if we had a judgment a verse to us i don't know that you would have that opportunity right if she's already construed the claim and you didn't object we couldn't do that because there's nothing too large the judgment because we prevailed so that's one of the reasons why we didn't exhaustively go through all of the i don't think we dealt with it in the earlier that i don't i don't know that it was i don't recall issues for they're entitled to have the reexamined claims considered i actually i disagree with his position on that for a variety of reasons first in the context particularly the context of this case the dish both the district court and the opponents made a variety of arguments that all of the district courts prior decisions should apply to our conduct because they said there really but from a zero in terms of a matter of illiteracy i certainly think that all of the findings that the district court made in the prior at the text decisions that were left on appealed should still be considered to be found fact all of the arguments that were made to the sport on appeal at the federal circuit by the appellants that they lost on they shouldn't be permitted to reapply to get those issues again and i actually won the i'm not the clients are different now party you're different part perspective of litigation resources and the fact that they didn't even appeal some of those findings i think it's fundamentally improper that we had to litigate that again but never have made an argument before  she would agree she was not necessarily bound by her use from the earlier litigation so i mean i could she have changed her mind on something and then persuaded for something else but probably specially if new evidence has surfaced right the only record what if suddenly they were able to proffer evidence that everybody believed got a flux and would never work in combination with e d t a for example that wasn't part of the record for a while and doesn't she have a right to consider that new evidence and possibly therefore reach a different conclusion i haven't thought in a lot of detail about that particular issue because that actually didn't that didn't happen here so it's not something that confronted but you know philosophically speaking i think a lot is going to depend on the scope of the issues presented and i mean the extent to which something with you know fall within the law the case doctrine the extent to which there is no loss the case well it's not a continuing case well if but in the context to the extent they are trying to make allegations that are a product of identical the apatow xs so there's assertions they made about the epidemic case on the infringement side that should apply to us i think no i think that the final decision was a final decision there were issues with us i think that we should have been able to take full advantage of the prior appetites decision because the same if that was not your case in this case i mean you're not standing on that is your argument we've started to follow up there was new evidence judge newman and judge moore the send you nine zero one one zero four studies which specifically analyzed this composition and found these unexpected results they were disassemble significance is absolutely undisputed that they are statistically significant at the thirty minute data point which is the closest apple to apple comparison to grasp what do we know on this unexpected results versus more klim preamble was construed as limiting tough that if you drop the concentration you go to zero and you go to zero precisely a point zero one percent we know from my truck that a person is still in the art at the time not a paid litigation expert expected it to have no effect and when they studied this particular you when you say percent change but yet the raw numbers demonstrate a change you're right it doesn't rise or level statistical significance according to this until certain point but the raw numbers do demonstrate t raw numbers it's one point three percent a good three hundred seven percent to eighty eight percent to one point three percent and our studies show twenty seven to forty percent statistical significance that is a dramatic and unexpected result and the examiners who experiment proves successful was a great surprise to them but you mean unexpected in terms of someone ordinary skill at that time looking at the record what might have been thought about the latter obviously the inventors were after something with they expected to be success well they they were trying to develop this the first successful data fluxus and i dropped this is a very difficult compound to get