the they've claimed to be open claiming a point of novelty and what's the most important thing i think to understand and appreciate for evaluating  claims is drafted in competition huge swaths of subject matter including many many multiple accents that use nothing in the invention nothing invented learn nothing from the disclosure zero and what's important standard the role of primers for each locus luck to be amplified you have the primers that bookend it and there's any number of primers that can be used finding farmers that work for one locus is easy finding primers that work warning so it's a method of determining the illegal present presence and you obtained a d n a sample and then you select a set of low side which is step b and there is a list there and it could be structured was that the set of liquid reaction and then you could create a mixture of amplifier we also would support we should just sort of look at the in of those terms there and to say we could own with just convert all that and say locus a new one a fresh one it may make you have to redo all the primers for every single one because it's unpredictably difficult to come up with a a set that works together and it's from a good got the patents by saying existing multiplex and you start from scratch so every time that you add a new locust you have to add new primers into the mix and you may start from scratch and it's from a disposition that as the number grows it's even more difficult so if you have an eight that's just under a mag so let's trade not a name to my mind i mean you can't just say it can't be that the teaching that you need to be include for the three plaques is the same as for ab plaques and you get the fifth you just get the expanded coverage but the important point is if you make it three plaques and you add a new locus and the primers conflict and it's completely unpredictable it's likely that will happen you might have to do use all new primers which is trial and error testing and you learn nothing from the fact that you don't even get to use their primaries from their original trip just talking about one element it's talking about that we're afraid that one specific thing and then it's open and but the point the whole point of the invention is that we can get a multiplex to work and it's completely unpredictable you have to look at the facts of each case what to me there's two the the pat holder there that there was a claim to reign with the with actually the novelty with that you could reach these new numbers this new range in terms of the take belief system here it's very incremental if they c was that open or closed that was the flame destruction put to judge crabs and she said it's open if that includes not just these but all the low side that you want to add so human stupidity and some of their patents is a triple x if you add ten more to a triple x the set is thirteen and no one is challenging that no one challenging the time construction and then in the call amplifying the multiplex amplification reaction has to be all but that's where that's where they get into my mind that's where they just lose that chance they can say the enablement they cover every possible multiplex a building on there is even though if you add in ten more you're going to have a problem of conflicts you can have to throw out there primers which is all the work they did the only work they did create new primers and then you're infringing that doesn't make any sense now their argument to be fair on the plane construction is that well the set that they're picking is just the set of the enumerated ones and the set doesn't mean that they can draw a plane chart that doesn't include yours i think that's not what what was intended by an open set and open set means the set can accomplish more and that's the way argued i think they lose on that but a step c trips them up on that because there is i don't think there's a way to look at the multipl the there is no challenge to the validity of the touts patent which actually is the pioneer patent on s t on the low side multiplex amplification and because there's no dispute that all of the accused kits read only claim forty two with a telepath and i thought i'd sort of like to spend most of my time on our cross on the issues that are cross appeal but i do want to address the sort of the nature of the two questions that judge pros to judge are asking first as to your question judge approached about this different license privileges at say the taubes patent let me just say this this is an issue that they have raised and that comprises true sentences on page eight of their reply brief it is not an argument that they made to the district court it is not an issue that they raised in their opening brief they have not even graced the court within the one nine hundred ninety six a license agreement in appendix there are three pages of the one nine hundred ninety six agreement in the appendix to which they refer to none of them in their two sentence discussion and so the issue is a part of the way the faith raised a different issue with respect to their license right at summary judgment the judge found it insubstantial and ruled against them and they didn't appeal it so that the issue of the scope of the nine hundred ninety six license is not before this court what is before this of the six sixty patent and we've had a long discussion about the two thirty five patent which in step b uses the term comprise and i just want to point out for the court that there also is infringement of the six sixty and five ninety eight which use the words consisting of not comprise them and so even if you were to agree with my friend that consisting of somehow left the two thirty five claim one t can before you go there just so i understand you're saying that there's claims in your other patents that don't use the word comprising the use consisting of correct correct and so that suggests that those would be correct regardless of whether the magic word is comprising or consisting of that's correct and the reason with respect to the six sixty and five ninety eight is that she also construed step c which is not challenged the claim constructions are not challenged on appeal she said that even in the six sixty pad where step b says consisting of step c which will recite a mixture is open ended and the mixture can include the low side in this case are in fact on what this court has referred to repeatedly as an recited claim elements and the issue in mad still was a recited element of open scope play it was actually a claim to it had comprising of claim but one of the things that was involved was and electrical junction exhibit a resistance change within a specified range and it was construed to be a specified resistance change between ten percent to infinity what the corded magill so the cordon axle found no enable button but not because of the consisting of open language what it found was that the claim to the electrical junction was not enabled because the inventor disclosed only a means to get an electrical resistance change between ten and eleven point five eight percent and not to infinity and therefore in contrast to this type of case where our planes don't care whether you do other things in addition to creating a two multiplex amplifying the thirteen low side in a pattern the two thirty five taps claim one which corresponds to the f it's the patent the invention is practiced if you multiply x employed by those thirteen the patent claim is indifferent to whether you also multiplex amplify a nother locus and in that inventions may be patented but they are also why isn't this a little bit more like maxiell in the sense that as i understand the district court claim construction step in claim one is understood to be selecting for use of the invention and what she said correctly is that the invention are those elements that must be present to practice the claim and the open it is that the use of comprising t to include an recited element is to prevent somebody who practices the invention but then add something else onto it from claiming that there is in fact no infringement as for example the person who invents the  go on the pencil does get a patent for that but they can't practice his own invention unless he's licensed by this person and the important difference i think between your hypothetical and it does illustrate i no relation to each other they're on different chromosomes they're not part of a range that's what makes them useful if they can get a patent done that if it's a non obvious extension if we were to claim you know these thirteen and verbal they wouldn't we would be in fact blocking them from getting a patent when they discovered the twenty six locust where is this doesn't and in mad still the question was somebody comes along and uses feel it has a device that uses the electrical junction that exhibits a resistance range of six hundred and that actually six hundred percent and that actually was the issue in macs all the quests the problem was not this wasn't something that was in addition to practicing the recited elements this was a substitute range that was claimed so somebody who comes along and says i've discovered a way to do the electrical junction at six hundred percent can get a patent on it then it would be you know a claimed element in other words in mad still and the same thing was true in why a person's abbott laboratories where the claim was to crap i thank you very much i like the cross appeal focuses on three points us infringement damages and to seventy one after number one you start with two seventy one please sure s sales we need to win on vote but in order to get a new trial and to seventy one after we only need to win on i don't want it we only need to win on the proposition that by export ing these products to the u k employees working for a foreign division or subsidiary satisfy the inducement prong because the evidence showed and the judge a ed and in their jame all opposition they agreed the evidence proved that all of the identify a lot of kids which comprise forty four percent of their worldwide sales were comprised of as it should that the supreme court is not gonna mess around with what the federal circuit said in the majority on inducement am i correct about that and if so does that leave us  views among the on by the court but our argument here does depend on it at all ok so tell me about the inducement in the absence of lessons that and i'm sure as we pointed out they raised this issue of two seventy one a half in their rule fifty motion and in response to the rule fifty motion we said first of all there is no bright line rule that a single component cannot be a substantial portion but in any event this case involves life employees a component and components for various camps to employees of a foreign division or subsidiary and we cited to the court i think it's on page forty four of our read brief in this of a foreign or a distinct subsidiary or division is actionable inducement under even to seventy one b much less to seventy one inducement means and i  think that regardless of how whether one believes this court was right or not in akamai with respect to fifty inducements means to cause particularly when you're talking about inducing something like inducing vomiting or  cing labor inducing a combination which is the language of two seventy one f one means to cause that and there is no reason why there's no reason to support the bright line rule the judge crab d that there's no federal reserve a case either way there are federal circuit cases that deal with two seventy one b that deal with the intent requirement of two seventy one b that talk about inducing another which makes sense because when you're in the two seventy one b world you're operating against a backdrop of two seventy one a where if you're the one that's practicing the invention which you've been douches yourself to practice the invention you're directly liable not in not just indirectly liable and that caused a situation doesn't exist in two seventy one you're suggesting the word do can mean different things into seventy one f one compared to seventy one b we think it means the same thing it means cause and two seven and inducing under two seventy one b can include inducing an employee as this court held or inducing a subsid or a division but even if this court were to rule that somehow it doesn't mean the same thing you would have to take into account the context in which two seventy one f was enacted which was what are we going to do about the failure of the patent laws to address a situation exemplified in deep south where somebody has a combination there's a combination patent in that case combination patent and simply ships it in pieces overseas for combination overseas and under that circumstance where there is no a liability where the liability can only exist for it under any one some might say and that what we're going to do about that the we is the wrong we million dollars in four documented foreign sales as to with that as to which multiple components were supplied from the united states and therefore the substantial portion question is a jury question and it was presented to the jury but if you are simply looking at the court's right line rule you are correct that if you characterize it as well should we have a federal circuit the loophole that's for congress but the but this is situation in which the court is filling a loophole the congress has filled a loophole they are asking for a super narrow construction of deep south in which the thing that matters is whether your foreign subsidiaries does the combination or whether you ship it directly to your customer for purposes of doing the combination now i apologize i think if you don't part three and i know your time's running out but i know that's was just the third of two is see one briefly briefly touch on that ris over contrary my friend they say differently this year is what happened we filed a lawsuit we at the time we of the lawsuit we didn't know that these some or all of these products were combined overseas had we had discovery requests to life that would have brought this information forward that had not been completed at the time we filed our summary judgment motion so we moved for summary judgment of infringing on the made use sold offered for sale we introduced evidence of instances of every single kid being sold in the united states for a non licensed purpose their defense was not well all these things are made overseas their defense was not these things aren't infringing their defense was we have a license and our licenses privileges us to do the sales and that is the issue that the court decided when she granted summary judgment of direct to seventy one a infringement a few days before trial we get these documents that show that they have a facility in warrington u k in which they a of these kids are being combined the case goes for that they there's an opening statement by life's lawyer that tells the jury at the outset infringement there's no question that infringement has occurred the issue for the court from you is the amount of damages that are due to that and there's no question that infringement is occurred and there's no question that cro magnon is entitled to be compensated for that the question for you is how much those damages are and whether we acted willfully at the time of the rule their first rule fifty a motion they bring up this issue of f one and say are entitled to this because our kits were made in warrington and you know there's no basis for f one liability for the reasons that the judge originally disagreed with them insensitive the jury on that one but then post trial with them and vacated and granted them an injunction so yes it it so your snuck in to think that the judge clearly submitted the f one liability theory absolutely i'm just calculation to the jury absolutely one and you know the first question is what's the total amount of worldwide s t r of tips sales and that was a stipulated amount for the second question was what is the total amount of defendant sales of  total dollar amount of the defendant sales of s to your kids that were united states sales at that term has been defined for you the instructions and she goes on united states sales include all kids made used offered for sale sold within the united states or imported into the united states as well as kits made outside the united states that are supplied from the united states now that instruction that was given to the jury which asked them to calculate the images both on eight to seventy one a theory and a two seventy one f one theory was not a happenstance instruction the original instruction that was presented to the court said please determine the fear the worldwide sales please determine the number of infringing sales there was an objection by life to that that infringing sales should be defined under a only made use sold offered for sale we said no no no there's also f and the court has held the bag the shoe will go to the jury why don't we just define infringement and explain to the jury the two things that's when the port says and now i'm quoting from page sixty three tenths of the joint appendix she says quote well the infringement question has been answered so i'm not going to explain to them what infringement is but someplace we've got to get in this concept of how many were of sales of kits that were made in the united states for imported into the united states and that's how the derision of question two of the jury instruction which said how many of the sales were infringing said how many of the sales were sales that were damages questions when it still hadn't been completely resolved whether it was liability entered to seventy one f on their their head it had been resolved they asked for they specifically asked that the jury not be instructed on to seventy one after they said that as a then their motion for fifty a motion set the save up you know importations to the united states are fine if they're not licensed but everything else shouldn't be presented to the jury to hear the true reasons why the judge said i don't accept them was it that put this question the question of two seventy one f liability is going to the jury and it did what happened was you think right there the judge basically by you know consistent with the judge's summary judgment ruling which to be sure didn't raise f one because they never raised four in combination in response to that they are the ones who stood up at opening statement and said there has been infringement from make this entitle to be compensated the only issue is damages the the parties during the trial repeatedly agreed that the only issue before the jury was willfulness and the scope of damages and i'll cite the court to page fifty one twelve fifty one sixty seven fifty one of three and fifty one zero seven of the joint appendix for those record those agreements the court again as i just pointed out refused to instruct on infringement quote because infringement has been answered no objection and the judge then some confusion in lights briefs about this in our direct case we had their corporate witness mr stan dooley on the stand with all sorts of spreadsheets showing what products were sold where to who what country what customer etc etc we started asking him questions about u s sales they objected they objected on the grounds that says this i can give you the exact same  to bring out the extent of the evidence about us sales in their case they have the same witness on the stand and they start asking questions about us sales we object on the grounds that we weren't allowed to do it at that point or shortly after that we have a bench conference about this and the judge says look you you didn't allow them to put this  those sales and the judge then says well there is then obviously a miscommunication in this case quote and that includes me so now that we've precluded them from putting it on in their direct case we're going to have to allow them to do that in the rebuttal case which is exactly what we did with the exact same witness and that testimony that evidence comprises virtually all of volume four of the joint appendix in this case and our evidence of u s sales also included testimony from i think three or four other life witnesses who testified about their sailings of infringing kits to us customers and want to fight it so this wasn't a situation in which we were in any way trying not to do it we tried to quantify both u s sales world worldwide sales and indeed for the worldwide sales of the identifiable kits as to which both the attack polymerase and the primers were export and from the united states for combination we quantified it at three hundred eleven million dollars and therefore even if you agree we even if you were to agree with the court's ruling as to whether or not one component in the court's ruling that one component can never be a substantial portion we would still be entitled to a new trial on two seventy one f one for the three hundred eleven million dollars in time let me first reply on the enablement there's really two undisputed points right now that i think are determined those in terms of the outcome one is  argued and acknowledged that even as it relates the sixty patents have now in front of me if you want to look at that in claim one it had the same call amplifying the low side in the multiplex amplification reaction language and i think we stated rather is any infinite number of low side and an infinite number of primers so it's open to play at the point of novelty in c and that's not disputed i think you're saying so the point about whether it's a fitting or comprising in the set of low side doesn't matter that's the point we don't infringe because we don't use their primers and there are loads i don't use them all we don't need their inventions to pick up so we don't do that so if it's close we don't infringe if it's open they're covering stuff that they haven't invented they haven't given low side you might have to start from scratch your projects beginning of we have a conflict it's also a predictable and rare that it works and so i hope that some trial and error we have to start over again we have to go pick all new primers there was not an effort whatsoever to refute that point because it can't be refuted we're not talking about pencils generators we're talking about interrelated systems where a new low side brings a new primers that can disrupt everything that happened before it's interrelated and so it's now undisputed i don't think i don't think they did dispute in their brief that in dispute in oral argument that if you add one to local locust you maybe start from scratch that was the language we use in our brief that's the fact there's no way someone should be encompassing to this kind of arrangement now i think the point on that is if it's there's a reason why someone has skilled as might my learned opponent didn't make that argument and that because of the record  the technology we're talking about pencil it was that of multiplex amplification reaction at a seven fifteen and seven sixteen their expert ballantine said one of the most significant problems in adding a new low side so you have a three triplex or adding a ford is the unpredictable interaction between primers y a t sen something that would sound friendly to us because they're worried about obviousness and they have to say that every time you add a new locals you're starting from scratch because you don't know what the primer is going to work you don't get the benefit of th client that case because here you gain nothing from the three triplex with those unique primaries that have to work together there because you're bored if you put four more on you're going to have conflict you started from scratch which is an undisputed through for this panel to do anything on tablets in terms of awarding that license rights are not license rights why would we what would be fit to fill the already large appendix with that the question was why does it matter that that that we clear the commercial good thought it was done with its work showing the quantum of infringement with the summary judgment motion is completely consistent with the record and it's inconsistent with what the judges have said she decided perhaps the best authority and what she said when determined to look at what i think was being employed in the other argument was the ambiguity in the word frenchmen which you've all been conjured in your this area especially some of us depend on the bench for that date infringement can mean two things in close really the way people use it can mean you're reading on you've got a claim sharper each claim requirement is satisfied and then people often use it for statutory violations of two seventy one there are two different things we all know that that's not complicated the summary judgment ruling did not purport to find that there was or quantify god much less quantify for all the different product the got to trial there is no basis whatsoever for promulgated feign surprise that they have to prove infringement and statutory violations their foreign sales it's no shock that you have to prove to seventy one one af no no what happened is there was a column please where there was confusion and i'm not sure it matters where they were because it was cleared up that the judge said i have and this is it a six one ninety in the mid trial said because i think clearly the plaintiff thought that it didn't have to put in any more than it already had and that's not correct in other words wait you've got to prove to seventy one f infringement and for whatever reason your trial team didn't think you had to that's undisputable notice they knew they had to prove their to seventy one at one case and i think the thing to do would be just to let you put that all in your rebuttal case which was outrageous to my teammates on the side because wait now and because they didn't realize they had to prove something they had to prove they now get the open door to prove anything they want rebuttal but that's the way it was and we had to accept that trial for you and maybe that's what they were invited to think because of the jury instruction that's ok so then they had to try and prove it out they were on notice they had to put it up where the where things went wrong the problem isn't that they were it that there was an instruction that related to do seventy or whatever effort to gather drop you know and to handle that that way they wanted to make this and that and that this is a situation to be definitely a trial judge and respect for what she did in this very large and complex and lengthy litigation which is they wanted to jury verdict question that conflated two seventy one and two seventy one asked i've been to a lot of trials i've been to a lot of appeals i've never seen them before anything remotely resembling that frankenstein comes to mind ok they wanted technology and they were u s sales so that was it wasn't a defense that there's nothing in the u s to point the salient point being that during the trial we tried to say we don't we we're ok being held responsible for u s sales if we're to do this fair and square if the jury so finds but we don't want to conflate in which together the foreign sales because we don't think you're going to be able to prove the foreign sale infringement so we tried to have our expert what with the usa it's kind of a simple question and the response that we got from that was a objection on relevance that was sustained at least at the time to the judge trying to sort out we wanted the believe so i mean it's a discovery they could have i mean it's a fact if they did if they didn't know about it would have been their own fault there's no suggestion of if you have to disclose where your products are made and there's no sanction that says we withheld so i mean i don't have  finger tips but it was certainly within the scope of reasonable discovery and but but but but the point being that they selected an all or nothing strategy that set them up in the barn and domestic and we said no because you can't prove the  no don't push it together separated out they want to trial strategy the district judge went through this and said you know what you forced me to try this extensive case where you wanted everything lumped together in the fact that you can't don't have evidence to prove that brings it all down together and that's this question about the number of components they want to start parsing out now on appeal and say well we did have this theory where we gave the sat and what the judge said is in the jail model when it was pointed out that there was there was  total verdict and that you couldn't show you didn't have evidence to support the total verdict you can come forward and say i can prove this segment i can prove that segment their briefs are labored on appeal and say comedy is important and it's not that straightforward they their time trying to say we can trace some money here we can trace the money to every straight someone to try to salvage some damages out of it's after they shot for the moon and lost and they didn't segment anything out of the trial record they didn't segment anything out of the jam on say well you might take away the sales for identify there but not profiler and here's our number for profiler ok they said we're entitled to everything and they pursued that and j much that you can't do that you can't one be through a whole huge trial and then the j process where you're taking the position that it's all or nothing fifty two million dollars or nothing and then when you lose say well we want to do over we should be able to show some of our damages and then that appellate court go through the spreadsheets numerosity is perhaps get that remanded back for further fact finding given that ok maybe in some instances it's just the single component the tackling rains another instance is there are there's a kid with protect the after the multiple components that have been proven to the district judge they could have done that they didn't do it so i don't agree at all if there is a new trial right and it's in these circumstances and that would be for me that really something  and we're going to hold her to ok i'm going to stick to it the point here a lot of this discussion has gone to the supposed inequity or impropriety in a new trial in this case nothing could be further from the truth the judge denied us our motion denied our motion for a new trial because she found that it had been waived because we hadn't asked for it in the alternative in response to their rule fifty b motion we pointed out to her that under rule fifty d which is absolutely to loose it about this a verdict winner has until twenty eight days after an actress came all to move for a new trial she didn't recites that or acknowledge it in her denial of a new trial motion doesn't even cite rule fifty did that is clear error and we are entitled to a new trial now i do want to get into i hope that i'll have a few seconds to get into the fifty's that to seventy one f damages on the identify our kids because it's not as if we want to have the right to go back and show that both the polymerase and the primers were supplied for three hundred eleven million dollars of sales the judge found that she had knowledge that in her j all ruling that's an accepted fact but more than that directly to the point two things first of all they moved for jane wall not on not infringement how could they stood up and told the jury that there  infringement and we were in sight of be compensated for their fifty b motion was on damages they claimed that we had this all or nothing theory and since we didn't prove all we had to be stuck with nothing the notion that in ruling on a damages motion the court could enter a judgment of no infringement on the record in this case is completely indefensible and even if there had been a flaw in the damages award in light of the judge's jame on a ruling on two seventy one f there is no question under the law of the supreme court the law of this circuit in the law every other court that the proper remedy would be remitted or an offer of a permitted or a new trial that is the rule when one of multiple theories is subsequently determined to be invalid it is the rule that the supreme court in had sole and this court i think in forgetting the name of it now has held the seventh amendment required when there is proof of at least some damage new trial is required the court is not allowed to say you didn't prove all of it therefore you get none of that and here the evidence on to seventy one day is nothing short of overwhelming i've already mentioned everything that's in volume four of the joint appendix here if you just look at pages fourteen through eighteen of our opening brief in this case you will see as  for the extensive evidence of quantify acknowledged u s sales of infringing good fear and that included multiple light witnesses own testimony in the notion that mr ryan this is  ting here that all we did was try and lay a bunch of spreadsheets in the record you know so that the jury could somehow figure this out is as we point out in our read brief more than ironic because they raised the issue before trials with the judge and they did not want testimony about what was in those spreadsheets on the record in the case because they considered it confidential and as a result the judge provided that we would have their witness on the stand who would describe what the spread sheets for and explain to the jury of how it could in fact some of the d n a why didn't you supply all of that evidence that you have sales you gave us to the district court judge in opposition to the chamber when we asked that's exactly what happened that's exactly what happened what happened was and i actually do have the pages for your honor about the tapes cited for what exactly happened when on day four of the trial we had this witness mr sands really on the stand and asking him about the spreadsheet it's showing why sales including us sales they objected because the evidence was not relevant to any issue before the jury that's a page fifty five seventy two two days later they had mr c and duly on the stand they asked him to quantify u s sales that's a sixty one twenty six and sixty one twenty seven we had a we said they would let us do this exact same thing with them and there was at at the next break on the same day there was this key colloquy that's a page sixty one eighty four to sixty one ninety one where the court recalled that life had previously objected to the evidence of u s sales saying quote when there was an effort to get into that the agreement was we didn't need to and then the court said ok now i understand lights point quote well i think there's a miscommunication between counsel and that included me i think clearly the plaintiffs thought that it didn't have to put in any more than it already had and that's not correct and i think the thing to do i think we're going to read it ok and if you look at all the citations of our this groaning table of proof about infringing u s sales and the quantity of it it is almost all after that page sixty one ninety of the transcript where the judge said