appeal ability in respect to that because i have some concerns about that under the microsoft case and some of the circuit decision following microsoft not all of which are referred to in the brief it strikes me that there's a pretty good argument that this falls within the microsoft rule it's not a class action issue to be sure but the later certain cases have extended microsoft to situations  fairly resemblance to this where there's a voluntary dismissal cuz the dismissing party thinks that it can't win based on the record that it's allowed to make and and or the tortious interference for him does that have any significance about the argument with respect to the attorney's fees on the patent claim and with respect to the cross appeal and it strikes specifically the public policy around a little twenty three and gamesmanship at the court saw a recognized in the way they acted in that particular setting and under those circumstances critically though ask you about you sought an injunction you don't need to establish damages to seek an injunction so how is it that is correct ok so those are the two points right we we have a long line of cases  there are lots of other similar cases that say when there's when a disregard decides it particular issue and the against the plaintiff in the plate there says we now can see a factual question that means we do not have  the claim construction and the accused products under that claim construction don't fit or that there are some of the legal implications of eliminating the liability but we don't seem to have that and the district court didn't think we have that we've we think to have you just don't think it's worth proceeding and therefore you're confessing judgment because you don't think it's worthwhile that we would disagree and i we have a jurisdictional question we're not bound by what you say or what they say the judge said you can prove damages the judge also said you seek an injunction and the judge said you can prove some measure of purely stand for the proposition that the parties nor the district court need to pursue through a trial line and issue where the parties have at least one party in this case both parties meaning that we've given to it in the claim construction situation where once there's a claim construction ruling the plaintiffs can actually it mitt the factual question that would then determine no liability i don't see that that has happened here and i'm not sure whether that has happened in most of the cases that you've relied on there was a fact a factual mention here the court there was that there is no such actor because the district court said you could prove some amount of defensive damages there's no ruling that you couldn't prove some amount of difference of damages so it's a choice that situation we had here but every time the adobe sought to comply with the dish reports order orders and they were incremental and successive and major in terms of saying what damages were permissible for recovery the obvious inconsistency on both the record and the facts that make the district court judge you call or at least opinion in that regard not justifiable and in this particular case prince and digital and south one farms what is the language that you're relying on page thirty five ninety two says you seek an injunction that's a reason why he's not going to do something else do you seek an injunction or have you permanently waived any right to an injunction the answer to which we may well affect whether on your appeal with respect to attorney fees and with respect to the cross and that the the appeal for peace and the appeal out with respect to the waiver privilege which adjoined under the determine whether it's an exceptional case and step two he's going to decide the exercises his discretion not to work attorneys fees i don't think you accurately described the second decision as based upon efficiency alone but let's put that aside for a moment we have cases be before octane which say that it is a two step process and my first question is after octane is it really a two step process that is a determination of exceptional case and then the exercise of discretion to award attorneys fees or should it really be viewed as a one step process involving the totality of the circumstances and just a decision as to what the exceptional case determination which automatically leads to an award of attorney's fees and i don't see that we've addressed that circumstances are standard to the exceptional case findings so that made sense to have a two step procedure but i'm not sure now that it makes sense to view this as a two step procedure since both one look he says at the top of the page on forty one he said she lifted this aggressively and that has a relationship to compensation and deterrence but then you know at the bottom of the in the middle of the bottom of the page he gives other because they were all dismissed with prejudice present here soon he said i'm going to find out if you're not the revealing party that's on page twenty five and twenty six and then he says but i'm going to go ahead and presume for a minute that you are the prevailing party and addresse as to whether it's up parties for availing is a this issue of law this court could decide that issue is noble and there is no doubt here that christian digital is not the prevailing party adobe is the prevailing party on the infringement  these were without consideration i thought there was some record that maybe at least in one maybe more than one so sue defendants did pay something maybe not these nine i understand your question are not these and i use mine were all with respect to his decision not to award fees and have to look at what he said and what he said on page forty one is not just that  aggressive he also made it quite a number of comments about p d i sees conduct as not warranting fees and so we have a decision which contrary to your argument does not on progressive conduct what has he left out what is he not consider that he should have considered actually considers white their role in ours in our view the and saying with ruhleben he actually finds the facts that support for all of a violation which the rule requires shall not be sanction it's not even discretionary when a party does not  apply attorney does not make an independent investigation on this record he fully acknowledges even aspirin seditious counsel again on the record i have nothing more than mr marsh declaration and the answer that is correct number of times i did not take this to be eliminated that is the district court said i hereby exclude all the evidence of damages that falls into a particular category namely damages in the form of costs of defending against princeton's claims against the actual defendants not the intervenor that also overlap with what has been called affirmative change at trial and i didn't see any evidence that this ruling could change at trial indeed it's a little hard to do suddenly when you say mr becker or dr becker can't come here it's a lot easier if you say he can founding customers then there should be some record of that song financial ability to them and strangely yes we spent this money what if they didn't do that though what if they didn't keep those kinds of  well but it doesn't mean that it's not a final decision i mean the question is whether there is jurisdiction for an appeal right now and they hansard or is there's a second answer and that is as we pointed out in our in our read briefing page twenty six the main point is what happens now suppose the adobe consented or actually requested a final judgment that final judgment is hundred to eighty five about the patent infringement case and then there's a counter claim of breach of contract which is i think that the only counter claim left in the case right there breach of contract counterclaim is that and i haven't got that right question of two claims if we thought that there was no final judgment on the breach of contract claim then don't you have to go through a fifty four b process in order to get that patent judgment up here after that in fact they had done that before the case terminated so that the surgeon was subsumed in the final judgment and that final judgment is now on appeal and if the thomas the court put in over a life over section two ninety one that basically said even though there is a final judgment it's not an appeal a final judgment because we don't we're not gone to  about it those decisions were decided my only comment is that if in fact they were those decisions were rendered before the final judgment and subsumed in the final judgment and appellants appeal from that final judgment is the same as then everything is dismissed like it can i says you have you thought about how the new supreme court decision in baker relates to the old supreme court decision in proctor and gamble which is was a rigged finality more or less openly and expressly where the government right government says we're not going to provide grand jury testimony and please judge write in your order that if you don't if we don't supply had you any trust case your only interest case is dismissed and the supreme court said and that's a perfectly fine way to bring a case up when the old at least when the alternative is going into contempt and baker or whatever else it is is ultimately about rule twenty three but it has language that is let's call it skeptical about various forms of voluntary action to produce finality that might not otherwise ex to actually present the case how is that different from microsoft and baker i mean i guess imagine a scenario where it might be a judgement call on whether they can prove their case or not it  a structure it's never that simple you have to go out every water that we have been in i have been involved in it and i think it is generally true of all those orders actually why the claim construction because there was no one breach of contract there of course we wouldn't have to worry about all of these issues on the other hand if the court said that there's a jury determined that there was a breach they would have been entitled to a police nominal damages even if they couldn't prove anything it is only then that you have a final decision a final determination that can be appealed an this is a singular question were a two part question i both didn't and the district court looked upon this as a two part question and the determination of the exceptional case simply meant this case and i think my recollection is just stark said this is outside the mine run for a mix of reasons some of which have to do with your conduct and some of which have to do with the complexity and the intervention and  saying you decide is this a little bit different well a little bit different doesn't mean you're entitled to attorney's fees if i don't i don't read him i think is this a little bit different from other cases i read him as saying me that this is just you know this is an unusually interesting case for something i read it is saying that there was culpability sufficient to make that exceptional c the for the following mix of things not due to the lack of merit of p d i sees case more due to bad faith litigation but due to a combination and then he enumerate some things about the weakness of your case and some things about the to find a case exceptional what's he supposed to do then he seems to say one forty one well you know so exceptional case but it's not that bad and therefore i'm not going to lord attorney's fees is that a fair reading of what he says it has to be permissible it has to be permissible and i think that again the way he octane defines exceptional does not carry with it any any implication that someone was acting in bad faith or that attorneys fees should be allowed that's why there's no way i don't think  the breach of contract claim is you promise not to sue adobe's customers when the accused infringement and i'm going to summarize here involved adobe products i realize that's a short and he did not promise not to sue adobe customers that would be false to say that you did you did have you ever promised not to sue them for infringement based i forget the language  would be a question for in two ways one it's a defense to your charge of infringement if it were true and it also is a breach about as perfect an overlap work that they did for that issue namely trying to show that in violation of the covenant you sued for infringing activity that because as you said no there there wasn't that it was plainly not bad faith but and then the district court said but if and i'm trying to get at this inextr intertwined business which seemed ultimately to be the heart of the limitation what is it that you think they  extending attorney's fees to pursue a monetary claim like young's p b i see and then they're saying that well i work our pursuit of money all of their preaching this is some ten or maybe even a contest the assumption if all of their research work was aimed at showing that you were suing  customers for activity that although you may not have known it at the time or maybe you just were reckless in not figuring it out in fact use the dhobi process which is also a defense to the infringement the cost of defending against that infringement graca at least the cost of defending against that infringement on the grounds that it came within your promise not to s the american rule at best says we don't entitle you to any fees for some other work how does and entitle men to get defeated by a rule of non entitle ment to something else because what the fees or that are volved here i mean i guess it must be that some of those fees are relate to defending the customers but nobody has articulated what the record evidence shows about what the pieces are that are in dispute here are some i would say that some of the fees must be for defending the customers and some of the piece must relate to proving the amount of damages that adobe is seeking to recover here so there must be at least two separate categories of damages but nobody tells us what it is that we're arguing about i find the briefing to be satisfactory in that respect of that the reason for that i'd your honour's are still being that has people that you can on the record shall adobe did before twenty seventeen ok let's cut it off there what even category of work do you think that  nationally they said ok all of these fees every single dollar that they had spent in the case because there's a description of what they did is there something in this appendix that provides a description of what they did know because adobe refused to provide a bilby never provided a single description of anything they had done that was part of the issue and why  what are they submit to the court in terms of the claim that he disallowed but they had a hard time understanding that of the three from the three what are you what's the evidence that they submitted that he can present if they submitted something similar to fifty seven forty four and i thought it was in the record that's what i was looking for or at this moment i can't buy that five but they had submitted something along the did affirmatively that is seeking monetary damages was in fact defensive in nature all the court said is that the new jersey amergin wall for bids things are not opposite the breach of contract claim on the merits is at its core i don't want to go to the defense of the dhobi said everything that we can do by way of leverage against the prince in everything including threatening you for fees and whatnot that also would not be recover i'm having a very hard time and i understand so you said earlier that they were doing work on the quantification of breach damages and they were quoted before twenty seven to me and if they were doing that it certainly feels like that's on the non compensable side line show me what evidence there is including an expert report from backers before twenty seventeen and maybe the answer is  twenty sixteen and we need to distinguish between december twenty sixth jane and july twenty fifth scene but against your infringement suit are nevertheless not recoverable as breach if they were also fees incurred in pursuing breach that they are even where they are inextricably intertwined and i think judge starr said you can't i don't you can't get those suppose i thought that were wrong that was wrong is there an independent basis for judge stark's ruling that that is a basis independent of that legal assertion around page eighty eighty two he seems to say to say i told you you had to separate you didn't separate i will exclude and in addition you adobe are asserting a legal view about particular ruling encompassed sees that what profit as a new jersey will i mean i see a lot of discussion of the new jersey rule and the law and all that but i don't see a discussion of the fact why it doesn't give us the facts to back up the argument your honor the facts are that it's not a question of what the facts are is the question they're not in the brief to be that the one kind of concrete thing i guess i'm focusing on at the moment were was there was work done before twenty seventeen on the question of i think my question has a yes or no answer i'm not sure they didn't hear it right here you said in response to make the previous question there was work done before tw seventeen on quantifying the damages you sought in brief for the breach yes and that you soft compensation for the work done in quantifying vat those damages i understand why your honor i don't think that those are recoverable if they were part of your request then there is something to separate breach damages where that work was done before twenty seventy they were answer is not a yes or no when i would like explain why because our summers were inseparable your breach damages are on the side of the line of prohibited by the american rule that that would be fees for the work done in the breach case not for simply defeating the other the other side which would be a walk away you get nothing and then that's one concrete example where i think that that's not on the blee intertwined side of the line unlike all the work you did in trying to show that princeton was doing in violation of the agreement so get the dismissal of the customers from these cases so from the moment adobe picked up the phone to answering them the requests responded to the letters and then the from that moment on it was had christian digital dismissed adobe's customers when it said it was in july twenty fourth t it's always the case is it not on your under your butt for principle that tourney fees the work would not have been incurred if the underlying wrong hadn't been committed that doesn't place them on the other side of the line