because jeff has been my clerk for the past year and you know i've been in charge long enough to know that there's certain rhythm where you see clicks coming going and so it's a little bit of a sad time but a happy time to to look back and when clerks come through one of the great joys is seeing them grow maybe they become a better writer or a better something what he's done it'll be nice when jeff came in he was already pretty much a finished product and what i mean by that is it was an outstanding lawyer outstanding person hi functioning and i character so it's been a great asset enjoy for me to work with him and rely on him for the past year i know he's going to do great things and i won't be able to take any of the credit for it i look forward to seeing where things go so for all these reasons ask for the court to grant my motion well i couldn't possibly talk that whole how did he turn that around then who i just wanted to add my thoughts because it's not often that we have the opportunity to get to know each other's clerks as well as i feel like i've had the opportunity to get to know jeff and i actually have to say for whatever reason i think you pulled the short stack and he worked on so many cases that i had you know with judge chen and i have had the opportunity to see and  benefit from really great feedback from jeff which is is unusual that i would have the opportunity gets know somebody else's cork and their work so well and i really appreciate all the work you've done here especially that work that has benefited fact specific of the prosecution history of chaos or express concern that rigid privileged rules deny fact finders recourse to commonsense good counsel can help direct a expert it wasn't really qualified in this area and didn't really get to take the time to get informed on this area and not only that but stood by get expanded his statements and in the view of facts  by the trial court here because we have to focus on what specific issue we're talking about you you let off talking about this i literally had written description and i didn't see your briefs well rob so using that as a basis for your appeal matching the other and pull them together to make an anticipation case that has to be an obvious case not at two different embodiments so how is your case different from that because i think that i'm bound by a number of cases that have definitely held what i just said which is to embodiments disclosed in the same reference yes you can't pick and choose and modify to pull them together no matter how obvious it would be might be obvious but not for anticipation of the two responses to the first is that under  look at its chemical structure now there's something inherent in that structure that necessarily discloses the exact same chemical structure and flow away but what i'm hearing you say is something different which is look at flow to look at the chemical structure look at the other teachings inside the team and patent and one of skill would be motivated to make little modifications based on other teachings in the ten and to make adjustments to flow to that that lives at the chemical structure of flowing now to me that kind of thinking channels me towards  indicators of foreseeing and wrote a bit they had five working examples they didn't present all the things that didn't work now according to a strict genus species analysis the only thing that that's really covered by that are those five specific examples even though they to the actual five disclosing body myths because it discloses other things that go beyond just you know conceptually speaking it's it's describing a gene it's good yes it does identify five examples but i if even if you were to say that it's limited to five examples number one that doesn't help you because you're trying to tell us you have a one of two argument and none of those five examples anticipate flowing but number two if you're the reference is broader than just this five example there is an actual genus going on there it is it's wonderfully wrong it's the i mean it's the concept of how you combine these two that's the invention of the  your summary judgment motion of no into submission whether there were issues that material fact for which the court should have allowed the judge should have deferred to trial and what you did i would actually say in its conclusion section on twenty five sixty what test labs failed to demonstrate a convincing evidence of the one six five patent was invalid because it was in to support a class prior are i was so darn confused first on the braes very confusing in this case begin with but then i was so confused because when i read this i thought space and went to the bench trial i thought introspection was decided on summary judgment but the standard that she's using here is definitely not the summary judgment standard it's the trial standard am i wrong about that while i believe that she set up that argument anticipation and whether there was a genuine question of material fact about i have no interest in patient because i kind of feel like you people all let her down the wrong road and made an either or scenario as though if she didn't agree with them that summary judgment anticipation was warranted then she should automatically grant your alternative summary judgment motion of no into submission but clearly that's not how the world works right and that is not what we advocated your honor we advocated clients that if tacitus failed to provide evidence and essential elements of its defenses if they fail if we if they failed to raise any evidence and essential elements that summer did she didn't hold them for a period anyway and she didn't hold that where did she you tell me where in her opinion she held that she agreed with you that they failed to raise any evidence about an essential issue because the entire analysis is on these two pages there's nothing else for it so frank dissipation the first question judge are you asked was where within the four she holds she finds that test labs fails to identify where in chen those two differences from close to compound were identified and then moving on to the genus species argument the question is whether a person of ordinary mostly in his very eyes and he seemed to ignore the separate argument if he preserved it in his briefs is a real question but he seems to have ignored the separate argument as to whether claim one itself actually discloses the  and therefore anticipates because it does it actually does what you said but wait a minute but it discloses twenty billion possibilities why would that one have been pulled out of that twenty billion and that's where in we end up devolving into a genus species case for sure but that's what you're pointing to is whether flow two into space i agree with you hands down flow to doesn't anticipate and you can't cherry pick other things from other parts of patterns to come into flow to tell me to anticipate the only question i have  claimed one anticipate as my only question for you he didn't necessarily preserve it and it may very well be waived you sure as heck didn't say a word about it up here in oral argument and it's hard for me to find anything in the briefs on it nonetheless as i read this i was very troubled by the way she analyze that issue and page two five five nine where judge ten started which appears to be a series of really fact findings on her part i didn't like this expert i did like this one and these people dispute whether this list is accurate was before her was and i'm differentiated mass of hundreds of pages of prosecution histories and other documents including prosecution histories that weren't even in this case so test labs never once pointed to where in  or to any other evidence to say that a person of ordinary skill in the art would have invasion flow eight within the sub class what they did was have dr mentor put forward declaration testimony that where he was not qualified from the district court as an ex for he didn't offer it from the perspective of an ordinary person skill in the art which i believe judge or you made a point of that there are arguments aren't from the perspective of a person of ordinary skill in the art which is the required perspective in this case so maybe that is your argument maybe that on summary judgment our job is to look at the record and see if it supports what she did to know about as opposed to necessarily nit pick with some things that maybe she maybe said in a way that i'm not i i believe your job was to see if the district court got it right to say that they did not present evidence to essential elements of its defense and the evidence that's as to the essential elements would have to consist of not competent evidence it wasn't a weighing of evidence it's that they didn't even provide evidence to support their theory they never argued it was an expert he was a fact with he was not right he was not qualified as an expert he offered expert testimony which is for clued under to through his declaration was what was the state of the art at the time two thousand and six what kinds of embodiments are species from the gen genus were actually been commercialized in the marketplace sorry that's not the relevant question and i guess that's what i was that's my follow up question what relevance is that it when it comes to a one of two in trying to figure out what how big of a genus does th t actually disclose the fact that maybe only eighteen species of a potential billion genus have been commercially marketed i don't see how that goes to the question of why does that matter  terms of the four corners of the channel what does it actually disclose how many different environments are actually disclosed that's a different question than what we would want to see only art be motivated based on the commercial marketplace that's picking and choosing that's right the so in looking at the essential elements again even if you take everything that meta said is true which the court found was not competent evidence it wasn't proven to be a fact it wasn't proven to be clear and convincing evidence even before our reviles if you look at what he did he's looking at two thousand and six which has no relevance to the four corners of chang which ended the disclosure in one thousand seven if you look at the chen patent and ignore is that chen actually tie away from making other compounds like the flow to compound which had not electron withdrawing troops at the exposition chance said you need to have electronic drawing groups at the exposition that because of this ph sensitivity of flow to flow two was didn't work as a fluorescent indicator it those fluorescents was almost completely quenched and explicitly taught that for that reason you move to a compound like flow three which has chlorine which are electron with trying groups and not hydrogen's so he specifically taught a way so if you look at what a person of ordinary skill the art would have understood to have ben any disclosure of a subclass of common property it's it would not have included flow eight or any other indicator with a non alectryon withdrawing group at the exposition test labs completely ignores that teaching from chan doesn't address it they focused only on this case equals hydrogen which is a different chen they never say it that way they never give the from the perspective of an ordinary skill in the r and there's flaws with those thirty six it's not clear and convincing evidence because it's from a perspective of two thousand and six and they didn't even prove that those compounds in two thousand six were even the ones that were flow indicators on the market they excerpt out and rear end and and make characterizations that are not from the source reference so essential elements they fail to even address from the  for those reasons they for failing to present it an argument on essential elements not addressing the question of what a person of ordinary skill would have understood  addressing the teaching away from the flow to compound with not an electron withdrawing groups they failed an essential elements in summary judgment was appropriate against against them with the finding of knowing to suppression what's the status of the practices the fluid compound are they infringing both ends no your honor because it's not disclosed so there's a difference between being literally in contest and what the what is actually disclosed to person of ordinary  what's disclosed to say i understand you're teaching this genus the subclass of common properties i understand i can't do it there's no evidence in the record from test labs and what that person would have understood we did present his that because we were responding to tough plans arguments but in terms of like you said literally disclose and i would say it's literally encompassed but not disclose from the legal perspective of whether a person of ordinary sculley are would have seen and understood the specific flow eight am compound to be disclosed by this reference whether there is a small subclass with common properties that is disclosed and claimed by chance and we're saying that when we presented expert testimony which by the way was not challenge the expertise the evidence base and his opinions were not challenge at the district court level i test labs they were challenging tell its motion for a gather for reconsideration or for a new trial after the fact and eighty presented evidence despite the fact that test labs failed and its burden to even raise evidence against each essential element we nonetheless presented our own evidence to say no was in the hands of those of skill in the art at the time of the one nine hundred eighty seven disclosure of chen that this compound which is way better than anything in the market right now seven didn't you know didn't know actually made it to seventeen years later even though it was so obvious that a person just had to change the few things from flo to which ten talk away from to come up with the slow it compound yet nobody did it so fashionably factually their argument is a logical that if you to understood coming up with these thirty six combinations sort of in impermissible hindsight never say what those what what kind properties those thirty six combinations would have had  and the case law is very clear that that kind say this hindsight recombination even if you're in hindsight looking at this disclosure itself and looking at the disclosure submit that she did a thorough job with her analysis and that her ruling should be affirmed thank you thanking  the doc number forty three pages five and then later page twenty nine in that same docket i asked of course court again explained expressed concern about not having the specific sites i asked for permission to  just add page numbers and the response was absolutely not you had your choice you had your chance your headshot i'm sorry you had your shop you'll rue fifty six allows the court to ask  for information if there's any question of the death so you know the course and we have the ability to do that was just you know pretty annoyed that that we haven't done in earlier that it was there was just a miscommunication observed later on my part some significant cost advantages like half price to flow for so a lot of these things are overstated and i think those are pretty well developed in the worth of the primary defense that that we didn't present a person warmer skill and they are now explained early on why we didn't do that we thought that was going to require an expert we're going to be ended up positions we're going to be into trouble we couldn't afford to do anything ago we we explained want to take a person orders skill was required because in the case of the chemical patent for so i structures can be determined and you could look at table two and one sixty five ad and it's either there or it's not there further there were there were