will hear argument next in number two thousand and eleven eleven zero five and it concepts against smith and nephew i suppose is actually a wake pass thank you are here please the court i believe the most significant issue on this appeal is the question of the standard of review as you read page two  brief apple e's do not seek to defend the judgment based on the traditional parents plan which this court has found obviousness is a matter of law in the past this court has found obvious as a matter of law either where it found after a jury verdict that there was not substantial evidence to support the explanation or implicit fact finding by that jury that is not the ground upon which the police seek to defend this judgment  or second where the invention of the issue is simply a combination of old elements reacting in predictable and reliably understood way that is also not defensible on this on this record instead what apple each do their only real attempt to defend the judgment below is by flipping the standard of review by arguing that this court must pay deference not to the juries explicit and implicit fact fine but to the court's expletive and implicit fact finding on general the stated basis for that flipping of the traditional standard of review is an argument that now this jury verdict should be looked at under rule forty nine as opposed to a regular jury verdict which is in fact how it was argued below well let's assume that you're right about what what strikes me is that there's a significant claim construction issue in this case which the parties haven't really addressed completely and that is what does it mean to talk about a so in order to determine whether there's obvious mishear it seems to me that we have to look at that plane limitation and determine what it means and it  would seem as though it's any stage of healing that's elected by the position i mean what what other meeting does it have your honor is correct the issue was not rather the distinction between draining and healing so in our view the key issue is not the selected stage portion of the particular plain language that you're ours addressing but the concept of healing versus address using i'm suction and other things of different pressures different degrees of ceilings and i want to get to that in a minute but not for the purpose of healing and in fact each of them removed those devices once the not say that that was his purpose he noticed that at some point after removal i'm sorry it happened it happened after removal of his device so the question that the problem is that the prior art doesn't have the same purpose that is that about here not really what we're saying is that they were used for a different reason and had a different effect and the conventional wisdom of the time and this on this point i think there is no meaningful debate their own experts conceded this the conventional wisdom of the time is at the core of this invention i using a vacuum with a sufficient pressure and i don't want to forget the amount of the pressure because we're going to get there awfully was the math method by which you produced this the conventional wisdom of the time was that that amount of pressure or vacuum around a moon would damage the one given the regular account i'm confused i mean here you have this prior art which talks about draining the wound and talks about achieving granulation why isn't that a selected stage of healing because the device was removed after drainage and before it produced feeling of complete healed but that's why it's so important to know what sentence and gotten off or he notices that it's been one of the references granulation had occurred after the device was removed it goes to a core factual question in the graham factors which is what is the content of the prior art when it's genes as a whole selective stage of healing doesn't it says what we've both said it says what it discloses and what it teaches is a question of fact that question of fact is presumed to been found against the question of the appleby's or raising by the jury's verdict of obviousness and the only question doubt that's what it comes down to the standard review if the standard review is the traditional standard of review as it is for the reasons we've described the question then before this court is whether right i don't understand that there was any contrary testimony that everybody seemed to agree that that's what they've done enough achieved with respect i don't think that's quite the right question your honor is right which is really what this invention is about the answer is no he removed it because he thought it would inhibit regulation that evidence is all over this record cited in the blue brief and the great brief repeatedly that evidence is substantial evidence to support the jury's implied finding your honor appears to be asking the flip question which in my view is the wrong question given the right standard of review nephew for this process wasn't made explicitly under forty nine a it was not and i'm sure it was not and it was well that was that's really my question what once that motion was put on the table did what the district court do with it convert this case into in effect a forty nine b case in your view yes and walk me through put to the jury the whole spirit behind forty nine is you give the jury every factual question they're supposed to decide you take that factual and put in the court that applies more fact that was not that's what they proposed initially when they had that precisely and what happened to answer judge bryson's question is both parties then heard what the judge said prepared very very lengthy verdict forms dozens of pages the judge looked at those lengthy lengthy verdict forms and s i'm not going to give the jury something about moral one sent them off to a hotel room at ten o'clock at night and said come up with something that's three hundred words or less three hundred words directed right and they came back that was  what happened in the dark of night in that hotel room but the next day what we had is a few questions plus the ultimate question of illiterate and quaker city and other cases and logic are undeniably inescapably clear that when you give the ultimate question all subsidiary factual questions explicit and implicit are deemed to been found in favor of the verdict holder of course the ultimate question advisory naturally because it's a question of law but once you do that for your city says you are you're bound by that ultimate question and logic tells you that because forty nine a realistically only applies if you do give the jury all the factual questions if you don't because you think the verdict form is too long you can't then impose on a party that is rightfully requested or a jury trial which has an undeniable right to a jury trial on th factual questions you cannot deprive them of that jury trial because you say you don't want to long verdicts or so you can't impose a waiver of the right to jury and that was not done here because they gave the ok to question which has then the effect that i think the record is not a model of clarity in terms of what everyone thought they were doing when you read everything but the judge was clear he wasn't going to give all of the questions that people said were factual questions i think the judge understood he couldn't force a waiver of a jury trial and what happened instead on the record is that the ultimate question was given and the effect of doing so in a quaker city and so then he talked to them to come down to three hundred words or less which apparently they did but he gave the ultimate question and the b s legal effect of giving the ultimate question to my mind and that question even if he's g that question purely as an invite the legal part is clearly advisory by definition and that's what he said in his ruling on the motion struck he said i'm going to give the jury the fact part and i'm going to keep the legal aspect on top of it for me that's what he said his intent was in the ruling on the motion to strike the jury and that's what he did it and to hold otherwise in this case would be to say that he imposed a waiver of great forest book was intended but the berkeley book talks about different alternatives one of which would be forty nine a one of which is forty nine b forty nine b says you do a general verdict of obviousness but ask specific targeted questions as well  and i think what happened by of somewhat convoluted process below is they ended up with forty nine b because he gave the ultimate question and had additional iraq or tories on top of it what nephew is attempting to argue is that all of the additional factual elements of the graham analysis beyond those narrow questions that ultimately resubmitted w along the way were simply doesn't support that and quicker city is squarely inconsistent with so what then with regard to if we get past the forty nine any issue then the question comes down to will expand your time by the way and to some extent to allow a little bit fuller exploration of some of the issues either gender story or full  and i just have one question before you get there and that is that if i understand it your view is that that all of the claims are limited by the a reference to the negative pressure is that right yes each of them actually calls out particular pressure and that's a point i wanted to make sure i didn't miss in addition to the treatment versus draining the stink from those present in the claims each of the claims also has specific pressures that are called up and there's no debate not only th have those pressures but in the got enough there's even something more critical which ties back into the treatment versus drainage point because he's basically a baggie with we'll call it vaseline but the record blow was that that was really oral and the record demonstrated the back created something that slip and slide it not the created the seal there's a ceiling means limitation that were simply a prior art that this was the ceiling that's right the ceiling well the method claims the answer is no there was not a single form that was in any way meaningful near a record on that is very very clear we're talking about a baggie with oil and there's a reason for that it's not just accidental it's not a why why wouldn't somebody i mean it strikes me as strange if you wanted to create negative pressure and you were you found the oil caused you to lose the backing was there plenty of prior art that taught you to use that difference in the predicate of your arse question is exactly the issue what if they wanted to do it the point is the conventional wisdom was not to create that seal because they thought it would damage the surrounding skin tissue and gotten off and this is the point i want to really want to try to make but gotten off so i did the prior art beers  and said that provides pressure that's high in fat to high cause damage i want to use a lower pressure because that's all i need to do to drink and the lower pressure got up uses is not within the claimed pressure ranges so not only does it not different points in the vessel it is a different point but they're all related the reason is using vassalage doesn't care about having a seal that can provide the right types of pressures because he's using it for a different purpose his purpose is just to drain and his purpose that's why none of them cared about the pressure or wanted high pressure in fact to the extent they cared they were explicitly on page one of the gotten off teaching away from the claimed pressure ranges because they thought it cause damage which was the conventional wisdom of the day just enough pressure to drain just long enough to drain then remove because otherwise you'll damage the tissue that is the opposite of what actually worked that was the conventional wisdom and so the in the us on those wounds so it wasn't obvious even to him and so if what's claimed on his from gotten off is not obvious to become and there's extensive evidence in the record that supports wh record was investment but the evidence that was in this record actually further supports the conclusion that this court reached in blue scott's withhold at this court in blue sky reached two conclusions one was that there was a dispute about whether draining was accomplished that's what sheriff here was about your honour's opinion in blue sky is explicit on the distinction and specifically calls out the distinction between draining and healing with regard to care for jeter the evidence here certainly supports that the new evidence that was present here that wasn't in that record was the two thousand or so page records from the hospital and the best i think that comes out of that for smith and nephew is the statement that was made which was a bit of a negative pregnant embedded in it that it was never quote diagnosed as a fistula and we've cited this in the record and the evidence from our expert doctor or go was quite clear that says although they never actually put that on needless to say i completely disagree with the characterization of what happened below as outlined by mr powers and as a lawyer who handled the case full of force get a little defensive when i hear that the record is less than the model  first of all the three hundred word limitation i heard had absolutely nothing to do with the verdict form that help had to do with putting in a description of the contentions to assist the jury in the jury instruction that had absolutely nothing whatsoever to do with the verdict form number one we all agree that the verdict form does not outline and it's a question every single one of the grandfathers practiced it listed all the grand factors that were still in dispute as the district court wrote in its opinion the only factual issues that were in dispute dealt with the differences between the prior art and the claimed inventions and the secondary considerations there was no dispute on the level of skill and there was no dispute as to the scope and content of the prior art and is very important if you look at the verdict form that that  composed they proposed at the beginning of the case many many questions under the heading both and contents of the prior art the court ruled as a matter of law that all those questions particularly the ones that were in debate should be in my client's favor as a matter of law all of the art is now prior art as a matter of law the only thing but he only world what which ones were prior art in other words which ones are available to be cited for he didn't say that he was ruling as a matter of law as to what the content and scope of those of prior art references were that is correct with the language that was used in the verdict for management of the trial what scope and content of the prior art and those questions were all ruled in my client's favor so it's a little it's a little unclear what they mean by scoping content versus scope wh it was not far they were fighting today before the charge conference that's admirable patient was not prior art those rulings were made so you're saying that saying waived the right to a jury on motivation to combine teaching away all those other underlying issues that is correct i would judge does not impose a waiver of right to trial by jury that is explicit in rules forty nine a three the history of rule forty nine eighty three is very very important which mr powers not knowledge there are three ways that rule forty nine allows this court to affirm and it was specifically designed to overcome all supreme court case law that used to vacate judgments for inadequate finding by the all the grand factors underlying factual grand factors to the jury and then and refuses to strike the ultimate question you know i don't know where you're reading both yeah i think at this point in the case see this was done and the chronology is very important and the grapefruit really doesn't give it in the correct knowledge and i regret that i haven't had a chance to respond to the standard review points raise for the first time in the reply brief at this point yes my proposed verdict form prior to trial in january trial began feb fifth fourth at this point we assume everything was at play all the grand findings was still in dispute you'll notice over any writings jame of opinion which is now post trial obviously he then explain a nine of the jane will hear the scope and content of the prior art and the level of ordinary skill in the art are not contested and then he continues the only disputed factual issues presented to the are where the differences between the claimed invention that's question five and the prior art and the secondary considerations of non obviousness all included in question five there is no doubt quest the findings that are required for a role for the night a bit where the court is required to make very specific factual findings with respect to any issue that the court has reserved well first of all under fifty two you move down to fifty yet and i want to give you the law that controls that issue this court has already made clear that a rule fifty the motion after a rule forty nine verdicts must be treated as findings the waiver is imposed on the party who does not submit a question as the first sentence of a three a three is issues not submitted let's take teaching away motivation to combine starting point sorry point  argument never made below a party wage the right to and you're saying they never sought the teaching away question correct me and then i was on motivation question correctly i was away for correct correct in fact until they objected to use of a forty nine verdict form they rejected the use of forty nine a in general and they went and said to black box now that's not on appeal they're not challenging anything the district court did on this on this appeal with regard to the procedure remember there are blue brief does not challenge the claim construction the jury instruction the verdict form at all this will only raise in the under the guise of the standard of review so let's be very clear the use of the judge's procedure and the verdict form was completely and absolutely stipulated to and they even call done was inherently objectionable it was that what was done did not full within the ambit of rule forty nine a but rather was in the form of a rule for the knowledge type procedure in which you have a general verdict with answers to written questions that's so the fact that that you're not saying the whole thing was done wrong doesn't seem to me to address that well ok let me address the fortnightly you'll see no mention of forty nine b anywhere anytime in this record never once the first time forty nine b is ever mentioned is in a footnote in the great appeal number to this court judge judge district judges don't use the phrase forty nine when they when they pair verdict forms i don't think i ever was in sixteen years he meant question six is advisory the question is environment how do we know that ok first of all there's a long history of this case there's a lot of citations i need to give you to really fully answer that question first of all the prior for an advisory verdict and not asking for rule or the nine questions so when the next trial came i was the first one to teach the court that obviousness is a question of law and that we are not waiving like the other defendants apparently did and we demanded rule forty nine a question i read that entire colloquy with the court and the court kept saying you know i get i get your point that there are certain things i have to decide but i'm not i'm not doing matters rule forty nine a and the case law is clear that you have to demand submission and the demanding of submission occurs the charge happens a month later and mr putney's and i were in agreement over the verdict form and they're not challenging the verdict form they're not challenging the sufficiency of the verdict form that is not on appeal so we have a stipulated verdict form we have assisted latest set of jury instructions so these are very interesting issues and mr puppy's and i and even at the charge conference mr poppy's understood when the judge said if you don't ask the question i make findings of fact and conclusions of law that's will fifty two a language and mr pop means responded i understand agreed and understood when the judge that if you guys don't give me questions are make findings of fact so we can't we're supposed to ignore what what we said i quaker city gear and even though there was some ultimate question asked on the verdict form that that that doesn't matter quaker city isn't applicable to the extent that appellant's are relying upon implied findings due to question six the implied defining question if we had a situation which there had been no reference to an advisory board of years we would have to imply findings to support the jury's verdict on august writes if they were supported by substantial evidence to justify the outcome you have a different question is what was meant by seeing that the obviousness verdict was invited free it meant the judge and the court says mr putney is arguing the top of two to ninety four don't follow this book this book is written by a bunch of defendant lawyers in northern california and don't follow especially his argument but the judge responded as well i know it's just been published but it does talk about a supreme court case and one nine hundred sixty six supreme court case graham versus john deere it is obvious if i just put an obvious question that it is only advisory then i have to go back through now there i could see he meant it was a question a lot i decide obvious but he continues and mr poppins interrupts and says yes and then the court continues and i have to write up this  and conclusions of law at that point so he's talent mr pop means you don't agree on the questions to go to the jury i am making findings of fact i mean a jury in some ways of this another beautiful line the jury in some ways has just been you know just sort of have been beside the fact the jury is beside the fact that i'm saying it doesn't matter what they do i mean if i don't find some way to do it that is really not going to make any difference what the jury says that's pretty good language to write he saying this is his sole discussion about why he doesn't want to do this why he's not saying that he's making the finding that the jury would be satisfactory saying if you did i do what you want me to do that's effectively what i'm rendering them i don't quite understand i know what he sang to me as a pact means that if you and mr ray don't come up with questions for the jury and agree on them i'm gonna make findings of fact i want to get some record about that you don't see any objection being made by wake forest to k c i we had an agreement are all trial practice at this point and then the it continues where mr putney's is arguing over how many questions and then he comes my way and he basically agrees let's have it on a claim by claim they says reference by reference that's eight times three twenty four questions we have total agreement the judge was very happy the night of the help and you'll notice there is no preservation of any objection whatsoever and more importantly there's no objection on this appeal so judge o'malley your question sound as if they appellant is complaining about  well your question also sounds like the judge did something wrong or something was frustrated yes frustrated no i didn't say that it well that i'm ill deter but my questions just make your argument my argument is that the issues that are being raised with regard to adequa verdict form are not on appeal they were not raised we have a joint set of jury instructions we have joint verdict form we have a joint quite construction we agree on everything and conference he later goes on and says thank you very much for now i'm going to overrule those objections and give the matter to the jury and as i say so much of what the jury does may not be binding as a final matter here and that's at a two three zero six two so much of what the jury does may not be binding as a final matter here but we'll just do the best we can that's in the charge conference as well in the misuse trial we had another trial after the jury trial which i think is another really and mission that the parties understood question six is not and in fact at the misuse trial which was in july so now after the jury trial in february before the jame all decision in october the parties had a trial on patent misuse an equitable proceeding and current o'neill another lawyer for wake forest and k c i began to tell the judge that your absence by the jury verdict in this misuse proceeding and he was simply explaining the beacon theater line of cases that obviously a s proceeding you're bound by determinations by the jury are well he said a few times and he said you're bound by the jury verdict by the jury verdict caught the judge's attention and the judge on a one for three eight seven eight seven following two he stops mr o'neill and says i need to make sure are you saying in this regard the jury verdict i guess is not advisory it is mandatory so now he's using the word mandatory to clarify that he of course was using the word advisory in accordance of the federal rules of civil procedure he never was using it in this hybrid kind of way he knows what advising very did this judge was very proud of the fact tried of a four hundred cases and the very very knowledgeable on trial practice and he questioned o'neill to you saying it's it's mandatory and mr o'neill had the stats up he s perec they're arguing that my case before judge person is like any other case and questions that i do you agree with mr powers that if you're wrong on this point that that you lose your appeal no because this quite easily could have made the determination as a matter of law what happened on the merits was the court basically set dr or guilty you're testifying contrary to the claim contraction and you can't you testify contrary to the references and the evidence he could have made those attack the findings that the jury didn't make but in terms of what he meant an initial it's odd that he didn't clarify what he meant by saying that it was advisory no it's not at all it was understood by everybody in that courtroom they argued here this is post briefing this isn't a misuse trial and fact when the judgment adds up what about the briefing on the chain didn't they argue in the briefing on the jame off that the jury had made implied finding i think they just treated it like a binding verdict they just applied the regular standard of review so my recollection is there was no acknowledgment of the significance of the issue of the advisory nature of the verdict they just buried their head in the and the court refers to it as advisory in his jame all opinion it was fully understood i did mention i want to just one more point i just wanna give a citation to the cases i mentioned the watkins case which explains the purpose of will forty nine a freak in the fifth circuit which is the leading case  if i may promise you i would give you the citations on but not enough teaching a way that for ages twenty to thirty of the blue brief and thirty nine to forty of the brief that contains all the citations i'd also like to respond to questions judge dyke raised first why traditional jame all rule fifty run of the mill process they are you know substantial evidence we argued explicit and implicit findings your honour's asked a question about whether that was actually argued a good example of that is an a for twenty that the tenor of the argument i don't i can't speak for stage but everything they said the tenor of the argument was there's no substantial evidence i think that was twenty times in their brief twenty eight and they certainly asked the judge to forty nine motion at page eight ten three eighty three where he says quote additionally the juror he says the court will submit to the jury the factual disputes of the grand factors and to seek an advisory verdict on obviousness from the jury in the final statement of that page says additionally the jury verdict form shall specifically ask the jury to determine the underlying graham factors and make a final determination of obviousness that the court will consider is a think the word final is referring to the legal conclusion on top of the underlying graham factors well except that he seemed to contemplate the extent that there were fact issues those would be submitted as questions i think at early on that was what he was thinking as we discussed the evolution of it he thought that was too much to give to the jury and so the ultimate question was then use of the search for that one point i do want to make is the snippets that counsel quotes from this particular portion of that particular portion about what mr putney's meant or what the judge meant in a particular excerpt those don't control quicker city the answer is that once you give that ultimate question on a verdict form you're done  but the problem is the quakers i mean quicker see would be in point is that for the advisory aspect of this you know question is what's meant by that i don't think that's right i see your honor's point the only way you get there is to find that the parties agreed to waive consideration by the jury of the fact the factual grand factors and there's no it was a point that on this record everybody was saying we were saying consistently we want the jury to decide factual instructions to cover all of that and i do want to cover one point that that counsel argued that the district court found that quote the scope and content of the prior art runs spewed that is a statement of the general opinion but it's fa this teachings taken as a whole not one snippet of it but taken as a whole whether those teachings allow combination of cetera that is squarely within the factual question of the content of the priority that was squarely disputed and there was out and they implicitly juries implicit finding on that factual question is dispositive the district court incidentally made no finding on that question of the motivation to combine and there wouldn't be evidence in the record to support such a finding if you have me obviously i'm sure the parties would join this minute but i do want the place like it might be helpful to have them the place for your honour's question were just next question goes would be to an implicit waiver by wake forest up its right to jury trial in the remaining disputed questions of the content of the prior art and the lawn on waiver is much more harsh than that implicit waiver would support the only argument they've made is that although  findings on all those questions although the district court said he would give the ultimate question which of course he did and quit your city's dictates what the result of that would be although all of those things were consistently done somehow at this ten o'clock meeting at the hilton we all of a sudden way perjury right which is off the record not done by anything and we have no record of what was going on or what was said and all we have is mr ray's word for it that that was waived i suppose he'd have ads it's a little on th some of the grain factors are in questions and others aren't in that there's no record of any answers or other question well that is that the second part is not true there was in the record and we've cited it there is a record of all of the additional questions i think one of the traps was twenty pages long and that's the one where the judge said this is way too long i'm just not going to get this but what were the additional questions and if they cover they cover the waterfront of what you normally see in a page  i will get there at their site in the great grief and when the judge said these are too long and that wasn't at the hotel meeting that was before the hotel  on the record where he said it's too long that's in the record and i'll give you both all of this to discussed at length at pages eleven through fourteen of the grey brief and the to long portion is really discussed at page twelve the where where the where these additional questions where do we find us and that's discussed in the first full paragraph on page a fifty nine fifty five is the beginning of actually a fifty nine thirty six although some of the pulled out it's a fifty nine thirty six is one of the drafts of wake forest verdict form and question sixteen just asks that version just ask a question of the scope question seventeen is differen thirty or thirty five questions thirty six is secondary factors non obvious question thirty eight is the ultimate question of obviousness so there isn't any specific by one that teaches well there's not specific question on this using the word teaching well no of course our motivation or motivation but that's within the question of  on that question and those were certainly not that would be subsumed within the question of obviousness you're right about that but what quaker said he teaches is that all of the factual ram factors that are subsumed within a conclusion  presumed to been found by the jury in favor of the verdict holder and content of the prior art which is who's teaching away and motivation to combine and what it teaches all of that is squarely within that there was substantial evidence records support that finding that