are visiting judge james a terrell from the district court based in los angeles california he volunteered to sit with us and we're pleased to have him on this panel and assisting our court our judges frequently sit with other courts and we find the reciprocal arrangement to be of great help to the court so we recognize his service and we thank him for visiting with us thank you before we since i can't preside and be the moving at the same time judge dyke will preside over the motion proceeding just like i have a motion to present to the court to judge michele your motion i move the admission of the three named individuals to be admitted in sworn as members of the bar of the court of appeals for the federal circuit i certify that they in each case are a member of the bar of the court of the highest court in their respective states and that they are fully qualified by reason of training and experience as well as state bar admission to be admitted to this court i certify  thank you and we hope they will see you before too long standing at the podium arguing cases as many former clerks have done and i also observed to the best fringe benefit of being a federal judge trial or appellate is having l have three cases before the panel this morning two are being submitted on the briefs today without world argument they are namely number and appeal number zero sixty or seventy three seventy eight columns versus department of veterans affairs and appeal number zero six dash thirty three forty five carat yolo versus office of personnel management will hear argument now in abbott labs appeal number zero seven dash ten nineteen council good morning trying to understand is what's the jurisdictional contention is it that any time there's a new a and e a that that's not within the scope of the injunction the fact the district court lacks authority to include the second  statement that the hatch act remedies are limited we know they're limited we know what they are you've written in the briefs reminding us what they are and you're reminded this again and i'm see what that has to do with why a court would allowed to have a contempt proceedings here was not allowed to adjudicate whether the product was the same or was materially changed you seem to be saying he wasn't allowed to do anything he had no jurisdiction he was not allowed to open court that day and i'm having a lot acting as a stalking horse for for a particular personal files in the end according to the statute must have personal knowledge of the truth of the matter is asserted in the end mr benn yet infringement action broader a contempt action in that the generic midi factor could still amended in the a to describe the product in the non infringing way here to describe it as a polymer know right i mean there can be a proceeding if there's a false statement but the problem is you've got two parallel remedies here provided in the statute before the f d a and one for infringement or possibly contempt in the district court in the question is how to amending the and i understand that that's not what happened here the men took place before the district court records decision but it but the claim that they if you can amend the unit any time it seems to me is difficult to make the statute says that the certification as should be done by someone with knowledge who can state that the patent is invalid or the sale of a new drug of for which the app used where there's conflicting expert testimony to difficult issues and why aren't we in a situation here where judge posner should not have held contempt proceedings which should have left this to the infringement evidence on whether this product was infringing and to some extent judge posner seem to have looked at the wrong things seem to have looked to the identity of the original product or the abbott product rather than to the claims of the pa sell there there was conflicting evidence as to whether looking at the claims to the patent there was infringement and in fact because of the summary nature of the proceeding evidence was excluded which would have that is were to determine whether the product is infringing which requires it addressing the claims of the patent and the new product is in the don't don't our cases suggest that we shouldn't get to that second stage in the course of contemporary seating where it's a closed case the conflict you haven't and that's really my concern and i stand a concern that i actually think what your case a sad case and case peter says is that if the two products are identical you need not go to a separate information even if there's conflicting evidence well first of all i don't think there was conflicting evidence but a few hypothetically th he has more in terms of error i don't think that testing the thing against the original product is sufficient to satisfy the second step that is as to whether there is an arrangement and that's the concern here it looks as though judge posner has relied heavily on the identity of the product rather than doing what he should have done the second step which is to compare the evidence to the claims of the pack well first of all i  second step the second step in our cases require your thinking for there's no colorable difference which is in the first camp then if you don't need to go to the second i think i think i am saying that that is the logic of the cases and i believe judge under thousand and six why didn't you move before judge paul meyer for based on the collateral they filed only a doctor first versus first office affidavits and that's what the other has expert report which says nothing about whether or not it's the same if your pride the reason the matter sent back down your remedy  seem that the mandatory language in septic's today which is the court shall order is inconsistent with injunctive relief because that type of language would constrict the court in its flexibility if if the defendant comes back with the same product whether it be through star wars otherwise that the court order should expand to that as well and that's actually what we saw we've not seen to contempt finding such that it is under the content finding that directed to the f d a as the parties have construed that there is no commercial manufacture of the product what the what's the what's the violation one acted accordingly in our view the violations of the that your theory was that the original injunction was being violated and i'm just trying to understand which portion of the original order was b riley what was the violation was that the filing of the of the second hand yes the fi our decision and bayer the court should simply say in the end a claims a non imprinting product there is no theory to proceed here right i don't actually think that the so under the theory the buyer controls everything and that there is no fact to a very fine he can simply change the label and file the same thing a second clear theory of the beer is limited to a situation order under two seventy one a is an injunction is am i correct in understanding your brief is it an injunction thing we wait the concept of order not to do something with enjoying  if if it's in the nature of an injunction that does the dizzy bay have any implications here in other words if it's in the nature of an injunction and if the e bay holds or held the judges need not grant injunctions after finding infringement couldn't we have certain situations where the court would not order the  bay says that judges should not always issue injunctions if we interpret to seventy one as an injunction or injunctive relief they'll be certain situations well where judges may not issue orders and or to seventy one which was seems to be papers to initiate a proceeding that you call contempt if what you're really doing functionally is asking a judge to clarify a prior injunction by making it more specific i e number of the second hand that seems like you're asking to reopen or amend the original proceeding not bringing the new contempt pretty well understand she changed all that if you look at  they were intended as asking him to make the contempt finding a then made it in any threaten that if the contemplations conduct didn't immediately stop that there would be sanctions against them not against the f d a but against them so i'm very confused about what what is it we have in front of it looks to me like we have a contempt judgement where threatened but not ordered and that's where i think we have to work what's the point here though i mean like what's the point are you saying that some standard other than the standard for contempt proceedings should be applied here i actually think that if you do i don't understand why we have to allow any part of his ruling to stand because all he did if we put aside the contempt judgement is to say that my original injunction which referred generically not attending to be clever here generally referred to  applications only did was to say such as and then he gave the number of the second and application though if all he did is clarify or make more details more specific his original injunction he's allowed to do that one would think under the power of the earlier perceiving doesn't need any separate authority to do so but with life and i think he might  record so why is it clear that all of a sudden you can bring can pin proceeding which is so summary in nature that they're not going to say because submit the supplemental expert reports i think it's fair because it depends on what you think they were doing in this case which are supposed to help or quit what they were doing which is they never tested the products before they found something and the reason they didn't test them is because very sharon thought there is no other power to comply with the court's or that means finding out in this case what what he actually says in his deposition sherman says because i'm not with the new math which is more likely to be in french but they didn't have to but when you said too little too late i take it you're suggesting that because they didn't have that testing evidence to submit at the live hearing that they were properly barred from submitting it two weeks later actually said too little too late you filed late august the hearing is held and then two weeks after that they submit reports any refuses to accept there was actually a week after that was we can't resist keep in mind just what what what what what's the harm  him still why define either allow the report submitted a week after the hearing to come in and then based on buffalo record decide the same with issue i think he felt that what was going on is that if he did that he gave them the award that he lives here he basically has a full additional science but he's going to have a peer proceeding in which people have the opportunity to develop expert testimony and your original theory was they should have done it before judge o'mara but it now turns out that they weren't on timely with these expert reports if they'd been back before judge paul meyer we can assume that and why is it that judge posner doesn't give them time to do the expert reports you can't get an expert report ready in a week or two right well i think they did but what happened was on august fifteenth we thought remember that basically it's senate date of august thirtieth and then let all the parties bring whatever evidence