ninety seven laboratory corporation of america versus  perri whenever you're ready release the quarter let corpse read briefs in this case states the question presented as quote whether the district court correctly held the metabolite chose to terminate the parties license agreement that question is wrong in both of its parts let me take them in order your august first the district court did not hold that metabolite terminated the know how agreement because actually i think this is a to just agree fixing on some language which is not very precise the fact is that you proceeded in the first trial theory that there license rights and c g i took the position that lab corpse switched to the abbott constitute a determination of the license agreement that is it lifted the protections of the license agreement so that lab work could be sued  party to treat the the contractor part of the contract as we term your honor metabolites right under the no how license to treat the breach as a terminations goes to the entire agreement under new jersey law and under section four point zero three of the contract metabolite has an on off switch it can either continue performance of the contract upon breach or can terminate the entire agreement with it but the report of not to terminate the entire agreement it purported to terminate the agreement all of the patents including the sub license for the terms of the letter agreement between these parties go up to the c g i a lot c g i has no authority to terminate or affect the metabolite license agreement which is the issue in this case that license agreement is n to the jury was whether there was the court was licensed under the patent and whether that license that license was terminated because that's the route to patent infringement damages that question was not necessary to the breach of contract damages or by the end of this trial it was but terminating it with respect to its performance of the habitat it is absolutely true under patent law that a part of the use adoption of an infringing alternative gives the patent holder the absolute right to terminate that portion of the patent license that goes to the infringing activity is absolutely not true that that gives an equivalent right to a hundred license holder a state law license holder the right to partially terminate the metabolites right to terminate has always been governed by the terms of complaint asserted that it was not obligated to pay royalties because these were not licensed acis it asserted true grounds for that are first the license agreement terminated and second that the assets that does course position was quote the acid is at issue in this case are not licensed assets for a variety of reasons including the fact that they do not fall within a claim of the six that was last court position last quote directly put in issue breach of one accords obligations of any known routine consideration to a no license that's a recitation or of metabolites defense we took the position and still take the position that the the fact that these asses are covered by the patent can't be disputed because the good issue but they challenge us in their complaint and in the pretrial of that they were not covered because they got they have this theory that the outsourced assayers are somehow different than the in house abbott assays again it's not a good theory but it's a patent based theory of the argument august twenty first two thousand and seven when it finally sent a terminator and letter that complies with section four point two of the contract plus sixty days according to license agreement the question then becomes terminations i mean something to use how this can be a substantial seven lab corp continued to conduct the essays on europe and continued to pay royalties either this contract was terminated even if there's a partial termination to either was terminated for hom or it wasn't lab corp own conduct it's heard early payment quarter after quarter after quarter after quarter after quarter of the rotis on the urine based homocysteine as it destroys the suggestion the license agreement can't be undivided any other way so if the homocysteine asset was not terminated for europe and the undisputed facts show that it was not the undisputed evidence a to overnight in five or breach of contract as opposed to a suit to recover the royalty in your are as a matter of contract law this contract cannot be terminated in our bimetallic it can be terminated in heard by metabolite but it is abundantly clear the metabolite has not done that the court made that finding on law question arises again because of the intermingling of the jury verdict which lab corp wants to over i would submit that figuring out what the jury actually decided about the lab court did willfully infringe the patent and therefore  doctors that is the automatic termination available to a patent license holder which just like i respectfully submit does not translate over into the state law license contract there the termination rights have to be defined by reference to the contract which was not followed honor and so why isn't that case in point well jurisdictional one first of all familiar with it in general i don't remember the specific facts of the case as i stand here  that if there had been no determination in the first case with respect to these essays coming within the scope of the contract that metabolite case would have depended on a substantial issue of federal law if there had been no determination in the first case that the abbott assaye wasn't infringing assaye yes that might make the difference that does it certainly seems to me that if we had it what it is this case that would take it out of that franchise i've looked at some of these supreme court cases they don't suggest the fact that the issue gets to be undisputed between the parties somehow affects the federal jurisdiction he says the right thing if you look at the franchise tax board says that it has to be a substantial disputed question of federal law this court's decision and speak goes says it has to be a substantial disputed question of what what he says that if it's not disputed there's no jurisdiction if th difficult for you to stand in front of us and say there was never any dispute over this issue well we knew it was as mr perry said it might not have been a good argument if it was an argument and it is enough to get this court jurisdiction we're happy to have this court take it up on the merits we're not we're not resisting this force jurisdiction with the suggestion made by the other side that somehow or another this telegraphs a weakness in the merits because i want to make sure that if the court is going to decide this case on the merits rather than transfer really brief well we certainly have also reached the merits of case where rob we certainly have briefed the merits as well but i'm not running away from the jurisdiction argument we still think that under franchise to export and  court doesn't have jurisdiction of this is a state law contract case that should go to the tenth circuit we think that when you look at the inverse of the declaratory judgment action that we filed which is what speed co says then you see a case that has no substantial disputed question the federal law at the outset if we were all i want to make sure that we are at the merits here because this court will then decide the merits and with regard to the merits the district court was correct in the district court was correct because the judge dying as my colleague on the other side earlier we know something was terminated from the first case the question is what was true and the answer is just one shape held was the license agreement itself was terminated with under four point zero three well that's not very helpful to them because if it's terminated as a whole then that that then i don't know why we're here i think that ends the case right there but what they were allowed to do in the first trial was to terminate on the  answer is either the entire group this agreement as is used in four point two and four point zero three or more this agreement with respect to a particular asset which is four point zero two this is what compelling and why she granted summary judgment for lipo in looking at the contract she realized that the parties had agreed yes there were different types of rights being licensed but there was a singular license agreement and it c the theory they put forth at the prior trial we say but if we're wrong on the law then that's at least judicial and collateral estoppel because of what the jury verdict actually said and what they actually argue both to this court and to the jury of the prior case but we think that the agreement itself was a matter of law says you can't terminate this some rights but not other rights basis there's in fact the provisions in the license agreement that mr perry has in both which are in article one of article t that sort of division anywhere quite the contrary the parties anticipated but the only terminations would be across the board either with regard to an essay or with the agreement entirely and let me make sure the court understands why this strategy had to be followed by metabolite not just because of the trip but they needed to terminate at least the patent aspect of it so that they could get enhanced damages which they got in excess of a million dollars under four zero three that metabolite has the right to do it on and say yes they base well if you follow the contract literally what four point zero three says exactly what this court said in the prior opinion which is in the case of the breach you have the election case material breach not reaching party is the election to follow the contract or terminate well so now whatever sort of the terminations and general contract was not the right being exercised by mid hamelin under four point three zero contra well i think i think that's right also i think if you look at the if you look at the way the case was tried in the first case was tried you see that what they did was to terminate it with pointed out before with regard to the contract the contract itself doesn't suggest that the parties want a separate ability of termination rights in the way that metabolite now argues now let me just go back to what this case might have looked like had metabolite been able to legally put forth this theory a prior trial because if it had been able to argue this partial terminations metabolite and c g i represented by the same counsel would have been arguing well the agreement that we weren't reasonable and acting in the sort of bad faith that it took to get a willfulness determination at that time when we at least ten a good faith basis for believing that we were licensed remember we thought our argument in the first case was that we w judge direction the only thing i can say about that without having read thurston at least having read it in recent memory is that it's hard to reconcile that holding as you've described it with what franchise tax board were able and this court's it measured that's the title please right now i think if you look at i think your honor if you look at our complaint and more importantly the mirror image complaint to the declaratory judgment complaint that we brought you pleaded you will see in the mirror image of our well pleaded complaint the the hypothetical counterplay of the speedo says to look at you won't see that this case necessarily terms of a substantial disputed question in this court's prior opinion of page thirteen seventy which but which all say that we can only terminate the entire agreement so general contractor principle say no terminations therefore the current argument problem with that is this that the boat parties have treated it as though the power your honor as to the patent license that's exactly right and i can do little better than to recommend to you to the court the district course absolutely thorough and correct analysis of this question the first time she looked at what the jury verdict meant in the record of a two one two two and two one one two three that's the september o's six opinion where she correctly understood that the jury necessarily we're dealing with what the jury had to decide only a partial term nation of the patent license which is permitted under patent law and no terminations but a breach of the know how a license which is what all of the state law contract principles require that should be enough to end this case undisputed fact and law there is no terminations there and continued breach there is absolutely no way to divide the contract they concede that the terms of this contract require payment of royalties from the entry of judge when the last trial through august twenty first plus sixty days of the contract that amount has been accounted for under the stipulated stay order it's a matter of math to determine the remain would only be to add up those dates and apply interest to it and that's what the court