after sixty nine pages and eight factual findings that bar does not contest the district court concluded that the skilled person would have to experiment to see whether the claimed invention would work but affirming here would work a fundamental change in the law of obviousness because the district court read predictability out of k s r in its conclusion on page eighty seventy after discussing the eight factual findings the district court concluded that the skilled person would have concluded that a bio availability test should be undertaken which as it is now known would have confirmed the true spirit known absorbs and is bio available in addition to this legal error lowering poorly water soluble has trouble dissolved the prior art taught that you can use micra as a ship you can grind up the active ingredient into smaller particles to help it dissolve more readily but the prior are also warned that this affects the second characteristic of dispirit no it's acid sensitive in acid dispirit on breaks down degrades does not work acid sensitivity so the question in this case is whether the skilled person could reasonably predict success with a leno's micra nighest acid sensitive  dissolving in stomach acid and yet be effective as an oral contraceptive now the district court lowered the standard for obviousness did not apply as predictable solutions test in whether my current ization would lead to more degradation and we know that the district court did not find that the prior art predicted the success of the claim invention in advance of the testing this is shown for example on page eight fifty six of the court's opinion here the court is discussing the crabs the references these are the references that are contends are the closest prior art therapeutic use the person aboard mary schiavo in the art would perform independent in vitro in vivo testing the skilled person would have to test and this is confirmed again after the discussion of spillane own absorbed or i solder arised requires verification through precise in vivo and in vitro testing the skilled person would have to test cannot predict in advance of the testing what will happen we also know from the court's conclusion that the current had an impermissible state of mind hindsight we notice from the phrase on a seventy a conclusion obvious that the battle availability test should be undertaken which as it is now known would have confirmed so that the district court was looking at the claimed invention and saying as it is now known using hindsight throughout the analysis of the prior art to in four that's an impermissible state of mind and a legal error in addition the district court did not consider the subject matter as a whole as for example on page a sixty eight where the court writes my current position is obvious now the subject matter as a whole must be considered and obviousness is a determination about subject matter as a whole not one limitation of the claim turning to obvious to try the district court had an alternate holding and it aired again because it lowered the standard of obviousness and didn't apply predictable solutions instead it a seventy the district court wrote about finite choices it's found where there are finite choices and it's possible to standard is predictable solutions would the skilled person be able to predict the solution to the problem to be solved in advance that is the standard k s r kikhia lates it matters not if there were ten choices but each represented a predictable solution to the problem to be solved that would be obvious where so if there were only two choices but the prior art doesn't teach the skilled person to predict success in advance then it matters not that there are only two choices because the skilled person based on the prior art cannot predict in advance what's going to happen and so in this case the district court well it bars argument that if there are limited choices that establishes obviousness but the k s our opinion doesn't say finite choices at page seventeen two it speaks of a finite number of identified predictable solutions and if you try one of the predictable solutions and that leads to the anticipated success then the invention is likely obvious here we know it was the skilled person under the district court's findings could not predict in advance whether the claimed formulation would work and be effective as an oral contraceptive this is the fundamental legal error in the district court's opinion and it's further informed by clear factual errors as well the district court had in a ron instagram analysis because bar led the district court to believe that there were two key prior are acid sensitive drugs that were my current ised and work just fine so the district court in contraceptive that's acid sensitive dispirit known as unique so there's no prior are dealing with the problem of acid sensitivity for an oral contraceptive and the district court thinks in error that there is a suggested to the court that spirit or lack tone was acid sensitive and the court found in error the which is the pharmaceutical formulation text for textbooks upon which both parties rel is an insurmountable obstacle to using an oral contraceptive because in terra coding gives rise to variability in bioavailability where bioavailability is the amount of the active drug that gets into the bioavailability such that it's an insurmountable obstacle to an oral contraceptive and bars answering brief cites no evidence to support this proposition it's wrong and more ver for five years they are sharing used in terror coated formulation in women in clinical studies and it was working just fine p t x eighty five and p because it was fundamentally confused between two different concepts the first concept is very deliberately in time to therapeutic onset variability in time to see max maximum concentration of drug in the blood and this is due to the varying gastric emptying time because if the drug stays in the stomach with an internal coated formulation it won't release it won't come out until it's in the intest the second concept is different it's variability in bioavailability that's how much of the drug ultimately gets into the system to do that there are a puter at work and liquid confused these two different concepts perhaps the best evidence of this confusion is the discussion on page forty nine where the court is first discussing the variability in time to therapeutic onset that's not a problem for zero one tablet a day or a contraceptive but then dress conclusions about variability in bioavailability just totally different and the blockquote on page forty nine that cites to alternate page one seventy is perhaps the best evidence of this confusion where the first sentence from one seventy concerns coated tablets not in terra cota tablets and the second sentence of that passage comes from twenty four pages earlier in a completely separate section discussing a completely separate subject and yet the court attributes it to page one seventy and actually cut off the beginning of the sentence and change the subject of the sentence so this is just a reflection of the unreliability and confusion shown in the district court's opinion and the reason this error on a terror coding is so important is it it led the district court in error to find a here is entitle to a reversal because embracing the district courts fact finding if you apply the proper k s r standard of predictable solutions the facts found show there was no the court the patent claims that the most common formulation for an oral contraceptive set steroids used in oral contraceptives are poorly soddy will in water the solution in refers to as a normal tablet they work it's in that context it's in that context that planets make their claim they make a claim for a routine formulation of an  contraceptive that is well known in the art and the district court in considering this concluded that this was not the product of innovation but was the product of common sense and routine techniques being applied the there was a reasonable expectation of success and properly applied the law plaintiffs are given buyers argument here is essentially is essentially that this court should disbelieve the seventy pages of factual findings in which are a lot of all of the prior art was considered all of the experts were considered all of the evidence was considered and thoroughly discussed but plaintiff fire faces a clearly erroneous standard and this court will not have a firm conviction that the district court got those facts wrong as to the legal standard which my colleague led with the district court well understood the legal standard and properly applied it in this case to make the argument that the legal standard was improperly applied requires that the district the district court opinion be taken in small pieces sometimes less than a sentence pieces and  the reports opinion was organized just the way an obviousness opinion should be organized it talked about the obviousness it talked about the scope of the prior art it had a section comparing the prior art to the claimed invention it went through an analysis of the power and the claimed invention and pointed out the differences and similarities and then the district court came to opinions the conclusions at page eight thirty six the district court started by talking about the necessity accurately quoting k s r of the necessity of a finite number of predictable solutions at eighty seventy which is the page on which the conclusion appears the district court repeated the language from k s r specifically requiring that there be predictable solutions and also and also in the section that begins conclusion the district court specifically said and i quote a reasonable expectation of success not absolute predictability supports a conclusion of obviousness that is exactly the standard that should be applied here and after making bat statement the district court listed eight factual findings that it had that supports the reasonable expectation of success in this case so the district court clearly recognized the standard to be applied and clearly applied that standard in this case now there are places throughout the opinion as the district court discusses the opinion where the district court makes reference to what happens after the reasonable expectation of success clearances that a person of skill in the art would go ahead and do the testing to confirm the reason why success but that is not inconsistent with the reasonable expectation of success as a legal standard to be applied in this case but what's your answer to their argument that this formulation district court you're honored by the presented its formulates and scientists men and dr tak who testified on the stand to what he did and the district court specifically considered what we refer to in the cases the development path evidence in coming to it conclusions what the district court concluded was that buyer's assertion buyers assertion that dr tax work was representative of what a person of ordinary skill in the r would have done was not accurate was not credible and there are several reasons that in the district court's opinion the district court goes through seven maybe eight different reasons why he did not find dr tax story credible in that regard but one of the main reasons was th tac made a mistake by rick relying on a mathematical model that he called the compartment model to make his decision that in terror coding was necessary that mathematical model was something that he had generated himself it w not something that was available to a person of ordinary skill in the art so that mathematical model which dr tacked relied on to confirm his decision excuse me to confirm his decision to interrogate code actually proved to be change its development path completely which the court took as an indication of an abrupt turn around and an indication that dr tac had made a mistake when he set down the path towards in terror coding so the district court finally considered the development path testimony and evidence and gave it in our view the proper weight which was no weight in determining the obvious now counsel has said in addition to the fact that the district court got the wrong which of course we disagree with the district court made some substantial factual errors and those factual errors are to be evaluated under the clearly erroneous standard and in any event did not exist and did not know that's not accurate the district court actually found that you would have a reasonable expectation that it would absorb first and then i summarize and i refer your honor to the opinion at a sixty eight expectation that spirit known would absorb before being i summarized in the human body and therefore would work for it in tended purpose or a reasonable possibility expectation of that is correct and that's what the district court in fact found as i pointed out at a seventy eight and also on this particular point at age sixty eight when the district court said together the product recognizes if i realize the possibility is not in this case that's correct but are you sure you want to be that magic about that answer well your honor i think that i have no hesitation in defending the district court court's conclusion that a reasonable honor didn't lead the development path that they took was a path that was one in which the inventor was led astray by factors that were part of the prior art for instance the mathematical model that they relied on for instance the inventor did not have access to four different pieces of prior art that arose between the time he did his work and the time that the inventor of the in the patent application was filed that made the inventor different than the person of ordinary skill in the art at the time and so the development path the district court correctly concluded that the development path was not something that shed any light on the obviousness inquiry in this case sensitivity issue came up it was in this context the question to the district court or that was being tried to the district court as put to the district court by buyer was that an acid sensitive drug automatically automatically would require in terra coating that was the argument that was made by pirates in the in the district court and the district court correctly rule based on the facts that were provided that acid sensitivity did not require did not require in terra coating in all instances and was not an automatic that was the context in which the acid the findings really to protest her own were made and the court had plenty of support for its conclusion concerning acid sensitivity not leading to in terror the cross articles specifically dealt with a drug that was acid sensitive and considered the issue of whether it should be interrogated and the conclusion of the crowd's articles was that  evidence presented to the court to the district court was that said that was a general reference called the alton reference which both parties did refer to and did make the statement that there are circumstances in which acid sensitive drugs do dense that common sense it is common sense in the in the brad and general scope in which your honor has just stated that's true but the facts that were presented to the court further laid out what the state of the art was with respect to asset sensitive drugs and those acids and what the record was was that there were a number of acid sense of drugs that did not require interrogating and buyer did not come forward with drugs that were  acid sensitive but did require in terra coding so the nature of the art was that acid sensitivity did not mandate or did not require automatically as buyer said and terry putting that is not what this case your honor there was a specific piece of our art that helped answer that question and provide the basis for the reasonable expectation and that was the cross articles where a particular compound that was closely related to dispirit on the compound was not was not acid sensitive to a degree that caused by summarization before absorption in vivo and so what the conclusion of that article was which specifically centered around whether coating was not necessary and the district court considered screw are known this article to cross article considered score are known to be a closely related drug and you'll see that in the findings the court went through that there was no necessity for enteric coated in fact crouse article it was actually three articles that was the first article and it was tested in humans in the first article it was tested in humans in the third article more humans and slightly different experimental conditions and in the middle article the second article was tested in monkeys and it was tested at various rates various dosages and various experimental conditions and in each but it was a closely related drug it was a sect steroids it was also as was crisper known derived from the same drug and it had a similar chemical structure being different in one chemical bond the district court considered that it was different but also noted the similarities and completed that the similarities between the two products would give or assist in giving the person ordinary skill in the art a reasonable expectation that the that the drug would work without i have three points tourist the fact that the district court recites a legal standard correctly does not require the federal circuit's intervention we can look at the sentence about reasonable expectation of success and determine if it's a proper quote what will or needs the federal circuit panel to do scrutinize the analysis it is not enough to recite the standard it is necessary to apply the standard properly to the facts found out the district court or recited the reasonable expectation of success standard on page a seventy but then when you scrutinize the analysis that leads to the conclusion on a seventy it's apparent that the district court did not file a reasonable expectation of success it's possible to write a sentence that explicitly has a finding in it about reasonable expectation of success instead he or the district court could only say that the skilled person would have to experiment to see whether or not the claimed invention would work and not only no using hindsight what that experiment would have shown this is a reasonable possibilities standard and that is not the law that's why the district court eroded lowering the standard and you have you applied the proper standard there is intitled to judgment the second point concerns this passage on a sixty eight and the conclusion that the prior art recognizes dispirit on does not need an terror that only follows after the district court erroneous lee concludes that an insurmountable obstacle to an oral contraceptive that's what led the court to that conclusion we know that because the court specific discussion of the crowds he references which concern a different drug only a very small percentage of the total dose was ever at risk of by some arising in crowds these experiments and he was dealing with a diuretic not an oral contraceptive whereas the claimed invention is a low dose early contraceptive and that difference in dose and that difference in indication makes all the difference to the skilled person and the district court recognized that that's right the district court said based on crowd the school person would have to test and wouldn't be able to predict the outcome of the test in advance finally  position is that tack was led astray there's inventor tack with tact did was follow precisely the teaching of the prior art that when you have an micron ised acid sensitive drug it's going to degrade even faster in acid and the prior art teaches to protect it within in terror coding this is alton and on page one seventy one often teaches that using the  predicted path until he had a surprising and unexpected result which gave rise to the claimed invention wherever they are relies upon was before the u s patent office the examiner considered it and properly found that the invention was not predictable in advance and was indeed an appropriate one for patenting and for these reasons we ask this court to reverse the decision of the district court questions and thank you very much