technologically and temporally not comparable to the so let me go directly to obviousness this case is the unusual case where the prior art identifies the problem  same prior art discloses he changed every element the claims and the same prior art expressly states that you should combine these two pieces of prior art to solve a problem so i may go to the first part because there are multiple combinations that would render these claims fully disclosed invalid but there was no dispute a trial that the combination of the g t x prior personal watercraft and challenger act disclose virtually every element of the sort of claim you see your view that the law requires a conclusion of obviously if there is some reference to suggest the company your honor i don't think that i would go that far and have that black and white a proposition i think in a context where there is b now i know we're not in the chemical arts we're on jet skis you know everybody gets this technology but the rule of law for obvious with this would nonetheless be a political across different areas and i feel like you're asking me to are and i don't think we need to even call close to that far because in this specific case the s a e reports which are prior art which the jury was instructed disclose each and every element except for that disclosed by the challenger we have patience if those reports actually say three critical things they say first combine the reallocation with system with person water but they also say after having examined the question the problem that we're trying to solve there are four possible solutions so you're correct in the life sciences area or in the chemical area where you would take a chemical formula and change a radical in literally hundreds of different ways this is a circumstance where so much the genocide the problem there is a request for proposal from the coast guard the society of automotive engineers and the specific sub committee of the society of automotive engineers dealing with watercraft says there are four solutions and actually in the interim report it was roger's scoops frogger re application and one other by the time chemical formula and you're talking about whether it's obviously synthesize a new compound there are an infinite number of different radicals you can choose and there's a great deal of unpredictability i think you point out a sort of teasing question let me follow up however days reading all the record in this case and reading all the briefs and comes to the conclusion that you know if i were on the jury suggesting that it's really irrelevant it's it's it's irrelevant in the sense that it's not a basis for overturning what is the basis then for overturning there are a jury verdict in this kind of a case after the jury and spend ten focus on no more than five pages in this record eight three five three nine four zero which is the jury instruction where the district court judge who was there instructed the jury that in four different pieces of prior virtually every element of the claim says this was the second is ok it for nine which is the challenger manual which says in a single paragraph what's missing which is no doubt that the to focus only on the facts that help your case that went on appeal there are presumably a lot of jury fact findings in favor of obviousness here that i have to review for substantial evidence and so that's not a matter of just looking at the facts that you point to the strongest for your case it's looking at the facts that go the other way and saying you don't rise to the level of substantial evidence your honor i i couldn't agree more you could have started your conversation determine do you know whether it was obvious as a matter of law we can focus first on what the undisputed facts are and then you can put in context anything else that they would like to offer and if you focus on  there is a jury charge that says virtually every element satisfied there is the undisputed evidence the challenger satisfies for many a limitation and your honor the challenger on the remaining limitation operates exactly the same about from your own witness saying that a prototype was quite a surprise and things like that i think those are those are the kind of things that concern me as i think it's a really hard issue to be honest with you but at the same time there is some evidence here including the fact that that as a draft final report itself has some language that says if there could be problems here so let me answer that question on my rebuttal time and i'd like to give two senses on each of the other two issues before lee you stand here all morning and you're trying to tell me what helps your case but any substantial evidence standard you've got to dispute what they already had evidence and i was just budgets you know with your time running out don't start with all the things that help you get out of the heart of what hurts you there only t issue which is the type of praise that would be a secondary consideration overcoming the obviousness case we presented and the second thing is long felt need but as i said in response to judge players question the i know you can't i would like you to talk about marking that's the only other issues i want to hear anything about from you right now france you're totally out of time but i do want to hear about marking because that is a case of first impression for the court if we are to reach it i think your idea if there is a small set of how you get to a reversal when the district court are adopted the rule of law did adopt in summary judgment therefore a trial goes forward with the expectation that the burden of proof is on you all whether that's correct or not probably not correct but whether it's correct or not the word was placed on you while you may be met your burden of production even if we do adopt that particular view by identifying these fourteen things my problem is they were never i noticed since the court adopted the rule of law it was choosing in summary judgment and therefore they were never given an opportunity to put on evidence at trial why should they if they don't have the burden of proof that you do why in the world should they put it in clean charts that you've asked for a river but i don't see how you can get anything more than a vague memory man even if i agree with everything you've argued about the time first is that whether you've got the minority view of the majority view we suggest we satisfied or heard in a production or persuasion on your point there was an issue at summary judgment the jury charge did not charge on this issue at all the daughters of the do the jury charges had to do with whether they were put on notice that they would have the obligation to put forward evidence if the judge has already announced in summary judgment which he did very clearly that you had the burden of producing claim charts on infringement if you were going to try to allege that the honda model the fourteen models that you identified actually fell within the claims once the judge has put that burden on you how would it be fair to them for me to reverse in your favor saying well you didn't put on the evidence to the jury i mean they were clearly of the belief and i think rightly so that you had the bird well your honor let me say two things if it was that  except that mike my question is if that is how i view what the court nonetheless did and how could i possibly in you you've said that what the court did but the way you know you are great to me is that that that's what the court did so if i agree with that legal argument by you how in the world can i give you the result you want which is a reversal when they never had an opportunity to put on evidence that for the first time in this litigation i'm going to make clear is their burden to do what your honor what you say has logic to it and at a minimal require of a picture we would suggest this question of who had the burden was a live issue right up until the charging conference which occurs after the evidence is in both of us had a chance to prove what we're going to prove as a matter of evidence but under the logic your honor just articulated what you would do is you would face remand for a determination of whether they satisfy the burden know for a need for a new trial on this issue and possibly even the opening of discovery if it's my view which you argued to me that's a summary judgment motion makes it clear that the district court put the entire burden of proof not even just the burden of production on you all improperly so you if you win on that legal argument w producing evidence so i'll let me break down my answer in the two parts the first answer to the first part of the answer your question is yes as a matter of logic that's what you would do i think the question of whether there was an opportunity to discover issue for summary judgment is something that we would address with just for at that point she would decide whether there was new discovery or not but if the legal standards incorrect at a minimum there should be a new trial whether there would be new discovery thank you for answering our questions mr jackson may please the court to avoid switching too many times i will start with marking where we left off and maybe i'll take that in reverse i'll assume for a moment that they have the burden properly and address what they put in because i don't burden do you think they have the original burden of production to the park it's a little fuzzy in that district court summary judgment motion and where he seems he or she seems to sometimes refer to it as a burden productions and the burden of proof it's my understanding burden of proof is the persuasion burden ultimately states at all times with you well is that your understanding as well i think so ok and so the only question is who has the burden of initially coming forward is it the patentee under one of us who some district court judges or is it the titian or the infringer who's challenging that's right that's matters here so let me try to come back for just because i think it's easier to talk about what they provided and then we'll talk about why we think they should have the burden of production so what they provided they cited four places one of them is the license so that wasn't really what's provided but one is a twenty four forty seven to forty eight and the question was if their expert or you asked to opine on whether the patents covered the hundred products he says he asked and they say what's your opinion so we're waiting for him to say yes the athens cover the heart of products and he says well i the honda system is very similar to o t s ok so they had a chance to meet their burden of the guy said he was asked do the patents cut patents cover honda and he says no it's similar to o t s in other words hondas similar not the same as but similar to be r p so when they had a chance to get the opinion to meet that burden they didn't need it identify i hear understand yours maybe fourteen not those products were covered by the patents or anything like that ok so it has to be more than just saying there's a third party that's selling products and they have to at least make an assertion in our view is they have to make a prime aphasia case they have to come forward with allegations sufficient to show if they were believed they don't have to be believed because they don't have to win on it obviously we have to win at the end of the day why would they have to be the ones to show whether there are one hundred selling patented products when in fact you are the ones who are more likely to have to have that information about how the kind of products work you have and that it was your licensee ok two points nobody has ever said and there is no evidence that we would be more likely what dunlap says is that the patent he would be more likely to know about its own products ok that the reality is that a patent he does not necessarily know anything about what its license is doing you see parties all the time that where the patent he and the licensee are not friendly and i don't think anybody's ever if you hear somebody talk about licenses as an opportunity that's not the licensee saida licensees are not best friends with the people that they're paying money to and in fact little different in this situation i insincere your client as i understand it is that making the products it may be different but we're not partnering anywhere there's not a joint venture and in fact if if they actually would be practice seen and having to pay or if you have an ongoing royalty th licensee would actually be friendlier with the defendant because the fed is trying to kill the patent and then the licensee wouldn't have to pay anymore so i think that the assumption that the dunlap rule should control in the licensee context is off right there are know very seldom do we see these upfront paid fully paid licensing licensing agreements that for such a small amount of money give a license to all of these patents and any other family patents which is the ones who are at issue here and say and by the way you have no obligation to mark anything i would say this is not the normal licensing agreement that i've been exposed to in in my history as a judge but nonetheless in the normal licensing agreement where the patentee is having an accounting by the licensee because most licensing agreements already pay to play kind of scenario of course the patentee is better situated to know whether the product comes within the claims because every single one they sell  going to result in direct money to the patentee and i what we do see here are a lot of disputes between licensees and patent is over whether particular models do or don't fall within claims and therefore require payment so i mean norm in the normal i don't think this licens norm but if we're being asked to make a rule of law that applies in all patented licensing arrangements i think that would judge still suggest it is probably the better rule of law because i think i should create a special rule of law could you got a weird license so let me take have to prove marking across the board i say across all products they say well you don't have to prove it for certain pete of you see that have certain features but if you're trying to do a rule across the board of a company like intel with chips would have to identify the i'm sorry to interrupt you but not in this case that doesn't make sense and i do understand your point but has some point made so the acoustic infringer should have to do something like identify fourteen that are marked with an allegation that they actually infringe and that the identification of the fourteen products did not have that allegation in them and the question i read you from their expert does not have that allegation it says another it's not fair to pl for that list the list says there's fourteen things that honda generated there's no agreement that that's all we have to come back on they think they can say that here but even in this case there is no agreement that we've met our burden by just dealing with those fourteen if you put the burden on us initially there is no narrowing it what you have here is somebody who thought they had the burden they made a list of fourteen we say they didn't do enough because they never even had a sort of that those were infringing asserted that they were similar of their product but if you don't have this right if you don't have a party that feels they have to put a list in and they don't have to do anything and there is you know their lead and that's our point is let's assume that we agree with your view of what the legal standard should be they have a burden of production to come forward and why haven't they met it i mean they they identified fourteen jet skis that are all within the same general line that i mean i don't know what to possibly use this lift list for but for a claim because it follows directly afterwards with and they didn't mark any of these with either of these of numbers you are right that it doesn't say and we have concluded after expert testimony that they infringe you know it doesn't say that last little part but it says here are fourteen and these fourteen are marked with either  i would say they actually testified that they don't infringe but if you go to twenty four eighty two which mr leask cited they start with saying that there is no infringement and then they say but if we infringe them they infringe but the testimony was the honda products don't infringe and what they had here was a refinement and you know that's such an alternative argument it doesn't help you i mean the fact that they might say look what we actually think we're doing is like what hunters doing in things we say we but their statement isn't that the products are the same right they say our products are like theirs and so they're hedging they're trying to not admit they were hedging they're trying to if they'd said listen these products but honda do exactly what we're doing so if we infringe it's in but what they're saying is they're similar so they're hedging i know they never know obviousness because we don't have a limited number of minutes together and i think it's really important i understand your arguments reasonable wine given these kinds of statements and fears are because here there is a finding that that is a report that has a finite number of solutions i believe there's four and then you get a patent on one of them and so how do you respond ok so first it's likely we don't have to go too far with that it says likely ok so that's the easiest response number two we disagree on the finite i mean all solutions are finite but we disagree on the separate off rivals during prototypes using various approach and they worked on them for years that that long time that they worked on them and worked out each one suggests that each one was a distinct so lucian and not that they're all just one finite number of solutions nobody said this is it and in fact if you look at our patent examples one two three and maybe four don't fit any of those solutions they are throttle reallocation but they don't practice our path the examples are you have the throttle and maybe put some fold me and so when the throw when you let go of the throttle it takes a little longer down at the bottom and then the graph how it kind of slows down more slowly that doesn't infringe o and then further on the k s r point they say predictable we think there is substantial evidence that the result here was not predictable because if you look at what was facing these people both green and we haven't even got to whether brain can be  surprise and i would say that they are super skilled they had sam spade on their team who some art said knows everything about stuff about water craft and was a racer personal watercraft so you have super skilled teams that are say never surprise i don't reply i'm asking before the r p memo was before that's right so if that's the case don't it may be there were thirty two things on the table but then when as that he comes on isn't it possible those thirty two get narrowed down to four solutions or this is your exhaustive list of solutions yes force we don't know whether the jury thought there were two four thirty two and there were plenty in front of them there are more out there that i just identified from our and and i guess ultimately if i understand your point it would be that even within those who are identified by the state you report there were lots of formulations within each of those four some of which would infringe some of which would not write like you  but the writer under the boat you can put the writer on the back of the right right there's a line that was up to the jury and this is an area that involves safety ok you're putting something on a big boat onto a small boat everybody the dynamics of the small boat every factor that differs makes that small boat less safe and then what you're doing is putting thrust onto that small boat without telling the driver and i say that because it brings it closer to some of these pharma cases where you're trying to make a drug that doesn't kill people and there's a key chains away or there's just ways and because of dangers and this is why slow people the low skilled people in this field relative to pharma would be dissuaded whether that's a teacher the way whether you say that's not a motivation to combine or whether you say that's not a reasonable x and just going back to that finite point for just one more second you're not not trying to beat a dead horse but i also remember a testimony somewhere in the record and i want to know if this is correct and if you can explain it to me that you said but they sent out letters and thirty or so people responded who contributed to this essay report where there are a bunch of companies that said we're not going to respond and the rationale given was we're not revealing our tech no and if you actually take that one step further you look at the two parties here this is a little bit like an interference if you want to bring in the proto fourteen which we think doesn't have to be brought in but if it is brought in their team was surprised that it succeeded to what they did they made the proto fourteen cover their documents with confidential look in the in the report of the product fourteen which we say doesn't say much cover in proper financial we invited the coast guard to come and look at it we invited our competitors to come and look at it we  if you're looking for other parallel to interference we win the interference we got the patent their work should not hurt us it helps us the p ws trees typically are pretty similar in size to each other to each size of the small i think i'm going to say twelve fourteen feet problem now there are differences other than just size seating position whether you're high or low whether you're down in the boat how wide the boat is right and whether it's going to wobble the throttle whether you have to reach down for the throttle or whether it acts automatic and so there were numerous you know that the statement of the challenger boat had everything is just mr gryce i think our time is that an end but i would like to ask you if we were to reach the question of marking can you just and suppose that we were to adopt the view that the plaintiff bore the burden of coming forward or some burden and i will burden burden suppose we were to adopt that field what do you think the correct result would be you heard the discussion i had with mr lee should it be they keep me and a new trial what do you think the right result should be under those circumstances i was taking some notes but i think he said vacate and let the district court deal with it and i think that's probably the best result if you didn't say that it's still what i say ok very good thank you m be covered by the claim and the burden after that shifts to the penty well let me let me ask you about that because this is if we end up in that space then i want to know whether you've done enough here to satisfy that initial burden of production and in fact i want to kind of crystallize in my mind what that burden would even look like for cases in general because it can't just be that you say well for example suppose honda had a hundred different models of  said we don't file one hundred models of skidoos now you go prove that every one of them doesn't fall within the clutch that's not what you did right but but what i'm trying to think about again a rule of law that's going to make good sense in lots of cases so you can tell me if you don't mind how you comply in this case and what you how exactly you think that rule should look so that it doesn't allow what i just suggested which is the defendant to just point and say all of their products i think there are four critical facts that are that's a new number for you i have for i'm trying to get better with age and i think therefore crop factor the fact that you have a license agreement that says you don't have to mark the fact that you have a license or who has affirmatively stipulated that they didn't work and then you have a defendant saying here are fourteen personal watercraft as your honor said if you look at the stipulation and then the manner in which the stipulation was incorporated the jury instructions to basically says license agreement no marking no obligation of mark here are fourteen hundred watercraft next paragraph there had been no steps taken to determine whether there are in your license but it's up there in that context i think one of the minority through the burden shifts back to them to say no those are covered by the patent the bird is that in part because you think you identif at the licensee and say all his product if your honor i understand exactly the issue i think there are circumstances where a license or could enter into a license agreement says you have an obligation to mark i have an author right to determine whether you have and they've taken steps to do that there are cases that c c s that that may be enough to discharge your obligation that's why start like let's hear your stipulation that you never what you've submitted never express the sense that you all hold the belief that any of these fourteen likely infringe you didn't even say likely in french or may well in french you you know i think unless i'm mistaken i'm looking o thirty five forty and forty one you see just as fourteen products it doesn't say anything at all about these products potentially falling within the claims of the staff but your honor but that the purpose that stipulation which is a fact that people everybody agreed upon and then a twenty four eighty two are infringement expert says twenty four eighty two twenty forty two are infringement experts testified that that line nine if you're going to find that in fact test make this a special case to which whatever our journal may be whether this is a potential exception area i heard that provision in the license agreement is unusual and context the fact that you affirmatively contract not to have an obligation to mark and you have a license or who affirmatively takes no effort to determine whether they're licensed products makes it a special case i c imagine articulating a role as judge moore did that would cover that situation i can imagine describe it as a specific circumstance that would require the shifting burdens we just described  are not talking about just any trauma we have a census and they were talking about the challenger system which is identical to the o t s this wasn't a question of lots of alternatives out there yes there were