the final arguments this morning before the panel is an appeal two thousand and eight ten twenty one broach palo alto v what is so wonderful yes what is what is so mart new and improved about your product that we should grant you the equitable remedy of reverse dr mcclelland your honor that assumes that it has to be remarkably improved it does not to be remarkable what is your standard it just has to be different it has to be substantially different doesn't have to be substantially worse it can be substantially worse and so why would you could construe an equitable doctrine to protect someone who creates a substantially worse product the reason is because it has been the equable principle here has to do with the extension of a claim to cover something that wasn't meant to  so if a if an infringer uses each of the elements that are claimed in a claim and literally false fulfilled then but does it in a completely different way percent of forty four is within the definition that was the scope of the formulas under the patent what so different new and or worse or changed about what a protect that entitle had to reverse the alley the difference is that in the end to it taints the same result of stabilizing but by a different it to soluble lies the k t and the vast by what difference does it make whether it stabilizes or doesn't stabilize because the claim construction  seemed to be that the purpose of the over forty was not a separate plane limitation so if you have the claim to arrange your mouth to row forty that's all that's but i'm trying to test that proposition because if it's not clear to me is it in a formulation to me it makes any sense to talk about things working by a different principle because a formulation type claim doesn't talk about principles it just talks about ingredients you put in three pounds of x and two pounds of y and one pound a v and you start together and that's the mixture that i can eat and whether it does this or that or perform certain functions or doesn't in certain ways is not part of the invention invention is just a recipe type invention that would normally be the case you want but in this case the only reason the patent was held valid in the first case was because of the fact that there was an alleged robust ability performed by the sir factor possible for it right i recall that but i don't think so and i don't see why that makes any difference because we're not talking about what motivated the examiner to grant them to allow the claim we're talking about whether there's any skills for reverse deal we in the case of a recipe type claim your honor there is that the principle or mechanism or way gets you out of infringement you're on the greater tank it was the substitution of a different material which was within  ts within that climbing limitation that caused the product to work in a different manner and that was considered to be an equivalent under the doctrine of equivalence in the west and house availability of the reversed doctrine of acquittal your honor the reversed doctrine of equivalence covers products a solution a composition is a product the product here works in a different stabilization was a function and the point is if the stabilisation is a function then it waited i'm sure you know it's a function of the product that manufactured under the claim but it's not the point is it said that was the the the result was accomplished by that i thought signal for it and the point is it's not it is not performing that result in the well this is my question for you the district court in syntax caution if they considered the same concentration of all forty i e lower than point zero five percent in the first case why isn't point zero four percent in this case precluded by the finding and centex one the reason i you talking about what the district court found in not talking about prosecution history or anything like that if you go to into sixty four  say that specifically the solution of zero point five percent way provid solution free of particles that is exactly with the stabilisation is supposed to prevent so it didn't work at the lower amount and there are cases where when the when the when the plaintiff tries to extend the claim became infallible because it didn't meet on the jacket it she'll but nobody made that decision here the decision here could not move and the prior decision whether you like it or you doubt whether it came down before or after passed far i mean i understand the frustration of the time a half of the decision so you want another try obviousness but the decision is the decision it didn't limit this decision the friers has and didn't say no longer includes point  four percent did it i don't say that your honor but based on this decision along you can see that the zero or zero point is the point zero zero four percent does not work and the point is if the claim covers something that doesn't work it's invalid and we should have an opportunity to prove that i didn't do enough and they have the same question why didn't you attack on all validity ground you can say you're just extending the scope of the claim but that doesn't make a lot of sense to me that you don't understand the literal scope of the claim the literal scope of the claim is what it is it's not being extended it just is what it is and the reverse doctrine  applies cuts back on the literal scope of the plea so we really aren't dealing with somebody extending the scope of the claim they're just enforcing the scope of the claim is construed by the district judge and sees me what you're really saying is these claims are inoperative invention a part of the range of clean and we should be able to prove that now and the only problem i have with that is you could equally have proven that at the first trial but didn't so it looks like there's a we hadn't been side we came up here first on your equivalent that's all we want you to consider we don't want you to consider the claims is out as far as we're concerned all it does is prove our expert was correct when he said it doesn't work at the lower handed to and that is the reason we cite that but if that's true then the claim is that well maybe but it's already been held valid as against all the attack that you brought in the first trial and no one limited what number or variety of attack you could bring on the validity of the patent but you are what i'm here to right now to say that there is a different product that does not is a product that does not mean the french do we did was he works in a different way to the other side of thing that you really are attacking politically but because of claim preclusion case law you don't admit your attacking validity you rephrase it in terms of seeking the protection of the reversed doctor to the public but but the fact would be the same as invalidating the patent ground not previously property it doesn't matter the fact is if you have exaggerated infringement argument it doesn't matter if the claim may be invalid if all you're attacking is infringement and we are only attacking infringement with this we are attacking infringement because that the second product does not work the same way you perform the result you think is the second product include sale and selection the second product and the first product agreement say on solutions but in the first part of the a doctor quibbling argument is nothing more than trying to read are you philip well exactly what that is that your basis then is for saying that they can't now make the reverse argument that it's the equivalent same place or were there really separate issues i mean what do we have to decide we have to decide let's assume we would agree hypothetically with what the district court decided on the first deal we summary judgment do we still are there other validity issues hanging out court as a problem there's nothing left to try and i think that there's no reason to get it so there's no other validity issue that they're seeking to try in the outside of the reverse doctrine of equivalent thing which is an infringement  correct me if i'm wrong but i believe if they lose the reverse dogma quibbles argument they're not inclined to go back and try to reopen the validity issues but what would i would suggest a court was started getting alternative  don't think it necessarily is something we have to resolve here but the district court did make reference to the law in plain preclusion as i recall suggesting that if you've ever litigated one validity of example obviously then all other political issues are similarly precluded is that your view of the law for example if you have obvious and then they come back with an equitable conduct are not honored for stability or anticipation of the we would have a quiet final and binding judgement on infringement which is i understand it entirely could undermine the validity of this patent if they could i don't think i don't think they can as a matter of fact and i don't think they can was do we have to decide both claim preclusion regarding validity and reverse keely and i think the answer is yes because on the state of the case as it is in front of us today nothing relating to validity has been forfeit so we do have to decide that that before there's no question about that issues be so i mean under cardinal we can't duck it for you we have to decide it was decided by the district court is here it's contested by the other side so i think that both is right we have ability to maintain the stability of the formulation in different kinds of weather temperature conditions and with different qualities of ingredients same ingredients are different so your suppliers put into the formulation that that became sort of the notion of robust ability i don't really think that that issue is is totally germane to what's going on here but there is a fine fine ever fifty on utility findings based on tests that were basically revealed to the public eleven years after the pat mission and that cannot be a proper basis for relevant evidence to support in princip maybe a theoretical sort of intellectual question but we are on summer judgment for those to know about repeal but as i understand the case law the standard of review for infringement under the reapers doctrine of equivalence is that it's a question of fact not a question of laws that your understanding well and that's and so the second part of that is the quote from scripts your reliance on scripts we look at the spec and the prosecution is doing the prior i mean we review that for an abuse of this what standard are reviewed well i very interesting in other words if we were to agree with the district court hypothetically on the first option of a quick one we don't have to reach going preclude the other thing we didn't make any findings on reverse document equivalence he basically found two things your honor which was the basis for determined by looking at the prior art and scripts then ordered a trial reversing the reversing the the summary judgment and saying this is something that has to be found a trial in the in the in the other case case the the the the court of appeals the federal circuit again said you need to have a trial because sometimes it isn't clear from the specification or anything that's in the intrinsic evidence what the principle of the invention is so it's going to have to be tried that's how you determine the principle and that's it in this case the principle of the invention was set forth so that the jobs that the hour was able to say this is and the think is that's what that that the talks about forty is being put in here for work and it doesn't stabilize in this situation and the announcers that are in the end the two and a has a completely different principle of