before you look at the object of a dish just but not when you go through during the prime of facial case and then considered an attempt to do crime fish a finding of obviousness and then the secondary consideration that's what our case law well here i attacking or questioning the problem they should determination of obviousness based on the combination of references i'm doing just saying it's weak and therefore the secondary consideration should carry away i'm saying that which seems to me at the heart of it and then that is does a court before finding and this is a factual issue a motivation to combine have to consider the secondary considerations yes the court should consider secondary consideration as an equal factor when making it our business determining to let me let me let me try to try to separate things obviousness as a whole is a conclusion of law based on a whole bunch of facts motivation to combine we've said is a fact traditionally done in thinking about the art traditionally before one considers the non art factors also lots of facts and it's absolutely true that one cannot draw the legal art part of the case the part of a she case there's a motivation to combine question which we have said repeatedly is a fact question can a district court decide that fact question here actually not decide the fact question but be treated equally for purposes of the overall legal conclusion of obviousness is our right or what are our eyes have we said that even reaching the factual determination of motivation to combine the secondary considerations must be taken into account the second for a motivation to combine the secondary considerations are often what highlight why the prior art is not so the court erred in three ways the common sense finding a way contrary to the evidence of record so the court decided motivation by it was entirely based on common sense it was viable it was predictable that the court did not provide your first motivation combined i think traditionally if you can tell me cases that don't do that i'm interested because becomes part of the private they should case of obvious attempted over conclusion if you conclude that there is some level of private basic aids and then you turn to the secondary considerations and there is no question and there's no dispute that you have to consider those before you reach your ultimate conclusion of obviousness it seems to me that's what the district court did here i mean there might be other problems but he established a problem if a should case and then he correctly turned to and credited the secondary considerations so you're trying to make sort of like the stage has been set wrong kind of a legal error in the way he considered and i'm not saying i mean maybe you have you might help an argument as to why the motivation was insufficient and you might have an argument about why the secondary considerations should have carried the day over the prime official case because they were so overwhelming but i'm not at all is that what you're trying to say are you making another a different hard power integration make the prior combination that's the intersection i'm trying to highlight in the core had no evidence to pick the different prior references and make that combination that combination that motivation to combine with only base and common sense and conclusion well right so it think about bacon package and so you can access the food that way in the sushi it was a bad very shallow tray and so there was no for and the claims require the frame to protect the cookies and elevate the wrapper get stale it's a terrible problem for me really really is so once you have the machine machine machinery update or even packaging news it's kind of counterpart counterpart saying here's a way to access the food and in it and reseal it really easily including in one instance in the you know only a little shallow frame because we can't really call it a frame but a shallow tray how is what's i went to germany to a trade show obtained a food you package brought it back had to cut it actual to kalydeco and had a meeting with five packaging engineers at that meeting it was considered to use that resealable label for cooking package s it was rejected discarded they never used the technology they then considered many options this was not even one of those options this is exactly the situation where it seems today that it's common sensical when you look back at technological point as opposed to didn't see that it was worth worthwhile economical when we can look at what that what happened today to so at that time were evaluating whether it's common sense and predictable and so callous treatment they were looking for a solution to the cow life to the cookie package they were presented with the recently able adding to a traditional cookie package and they rejected it and these are packaging engineers looking for the solution so they have knowledge of the problem of trying to solve it and they couldn't solve it if it was so common sensical and predictable they would have used that it didn't even make their list of considerations and go forward basis this is not a situation where we have one or two motivation to combine based on common sense whereas here's all this other evidence backed by expert testimony that that goes directly to that issue and that's part of the secondary  going on about that but i think this court is pretty clear that you cannot reach a legal conclusion on obviousness without consideration of second third of the object of a condition and it seems to me that the count it's over eighteen thousand in your brief and i like for you to take a look at that particular issue and report back as to as to the adequate word count and what we we should do about that where it's not a question of having a couple hundred or fifty words but when we're talking about several thousand and also could look at the very end of the  pages in the record as if to say here's my position now you court go find it and there's no there's no argument there's no analysis there it's just citation back to the and i'm kind of concerned about that i mean it's your job to to state your position fully and thoroughly before this court and i don't like to see this type of  got we've got two elements in this purported incredible invention we've got an existing fifty year old cookie back a flow red cookie bag that's been around forever and i'm a big cookie fan myself character you know that was a problem that was of equipment or some package that was being used to address and that's in both packaging somewhere in some industrial complex somewhere this was being marketed in the court the scene three separate magazine articles and two machinery update articles as well as the packaging news of the one with the misprint three separate articles back in late two thousand and one in the early two thousand and two long before this purported invention that was geared with trade shows  long before that i think it's a year before for right i think i would actually think that the closeness in time is rather important to discounting the objective considerations of the rather than if it was long before and still nobody was doing it that really helps craft while they actually are on or it's when i say long before i'm talking in terms of months it was a long felt need then one unnoticed until by the way both craft and kellogg attended trade shows where the actual something that had existed for quite a long time and it had drowned however eleven months ten and a half eleven months before the trade show that both parties were at and saw this equipment before then we had three articles come out right one of them was seven months before the other two were from late two thousand and one about ten or eleven months before and in those articles rather than being some obscure piece of prior art and some you know warehouse or some plant somewhere this these particular articles address what it takes to keep your food fresh in the wave of discrete food products and by the way one of the pictures of the third one th sealing layer flap and so he simply attached to the top of a pre purchase package that when you pull it back it either opens it or if there's a separate one that your friend tells us that you were well aware of that and  not the case your honor we really well both companies were aware of this technology out there kellogg's simply did not go ahead and attempt to put it together it ends up that kraft had their  their plastic supplier go ahead and put together they had a vendor actually designed for that kellogg did not write was just a choice of who was going to jump into it and who was not but this particular invention was designed for the whole world and saw this decided not to go forward with that why does that not communicate something of evidentiary significance about why in fact this really wasn't an obvious standard clearly erroneous i don't understand what that standard or review is doing in this case this is on summary judgment oh so so it to put it another way the district like did not make any factual findings the district court found that the use it after so why is it not the case that there are two stories to tell one on each side about whether that's significant or not well you have your story and they have their story but the problem is is that both stories revolve around the two stories that we're dealing with here and each story has a factual basis to it you you and there's different there's the conflict in stories and we're dealing with summary judgment what isn't that tell me you're right the fact there are two stories about who decided to jump ahead with it and who didn't that's one story the story here however is whether or not it was just one a skill in the art and the we if we look at that story that the latter one that you just raised and we think about that in terms of motivation to combine the court says common sense and the objective  why does that argument not go to the jury because the fact is is that looking at the claims looking objective leave the claims of the inventions here and that who made a business decision to jump with it and who didn't of obviousness which after considering and the court spent three or four pages going through the issues of secondary consideration one by one check i don't understand the court find that that that the look obviously at the secondary considerations although i have to tell you robert this is the first time i'm hearing today that one of the factual considerations what would be one of the secondary considerations was who went into it first then that is news to me here today they went into sales they went skepticism they went into things like that but who went into it first i think it's been raised for the first time today but with the court looked at before the didn't hear the concert secondary considerations the court look at the claims after properly construing them and look to see exactly what the prior to school and saw what everyone in this courtroom could see that there are two things that were being combined there where the one the additional aspect of what was disclosed by the food you reseal in technology was made specifically to apply to death very bad it was being used it was a overwhelmingly strong case and supported the whether or not the of business decision was made on the basis of who was selling the most copies and whether to make an investment down that that was something that i don't think the court had before a number could become a number two  one is why is there not a factual issue on literally infringement for the following reason i can't think of a reason that the little color that you guys put under under the opening in the is not part of the top ok if it was part of the tab then you would have the tab sealing to the top which can't be done no you have the the flag or what you call the x or layer or something to the top ceiling in fact to the color here was are concerned with that part here our number one the court made clear from to claim construction and the court repeated again in its opinion that the fact  do we need to decide that if you win on validity we believe that it's a counterclaim so unfortunately movie for that purpose leaves not just an affirmative we believe that you do your honor and we believe that we're entitled to a hearing on the issues and if i can go back for just one quick second when the court looked at i that the doctrine of equivalence it did so on the basis of completely ignoring the all oh it's real it's just some of these products will keep things fresh and everything it didn't go element by element or could it because the the number one element was a material element there is no the court considered the differences to be drawn against kello kellogg did not bring the motion it was brought by kraft g b and yet the suggestions that well this can be explained away not just some shrug of the shoulders the patent office have a copy of the typo the misstated document they could read it and everything they have that pales in comparison to what was actually done here with regard to representation arguing that the court made a construction of sealing layer made one construction at the markham hearing and then applied a different one at a summary judgment and can you can you repeated again in his opinion then it could still nonetheless be laminated to the top of the wrapper so they can come together but you can't seal one to the other if they're wanting to say now during the briefing  there was another suggestion to say that the court said it could be a different type of material opposed to distinct or separate material keep the court said type of material it could be a different place that could be ano in the context of what it was made out he said it had to be separate he said it had to be a distinct layer it could be laminated well let's get clear on this because you you you've offered two different arguments here and mark but like you know now that you point that out i believe that the court was using them interchangeably it's best to be a separate layer of material whether or not it's binding to it it's laminated it's still laminated or not would then the issue infringement actually fall on the question of whether the the two layers are separate meaning not together as opposed to distinct enough that no i believe  supported by the evidence no one involved in the invention knew about that which you package in two thousand and five then it had a new label it was investigated and believed to be new as of two thousand and five people in germany for a division of craft may have attend the show but they also do not have a recollection of seeing the package in two thousand and five and the idea that there's a smaller break and and sad thing about the packaging companies going forward are not going forward that's not supported by the evidence top to close the access opening that key there is overlap there are also other factors that are not raised by this would pose a starter portion you have to be able to grab it then access and put your hand in and then it's  sealing layer should be dispositive there's no requirement that the sealing layer be physically separate the claims are not limited to any certain manufacturing process as to how to make a sealing layer that construction improperly limits it to the  at several points you emphasized the particular language well without conventional film rep in wrapping film and there is just no plausible basis for believing that that was anything other than a mystic we disagree and that was what is the plausible basis for thinking that that it in fact lacked conventional wrapping for three things the photograph does not show film going through going over the sides if you compare the photograph or machinery up to the packaging new one as a pouch where you can see that it's a bay and one is not you can see the film going through and in fact the article says that that package was made without the expense of plastic profile what does different articles but two different photographs and different content the sentence might be the same but the overall context of the articles are different fernie birmingham explained that they never recognize a typo they read all the articles independently from what they stood for and addressed the rejections by the examiner based on the articles reference the third party exam was i believe company affiliated years ago with the release of ok and did was did and did the requestor there were custer presented all three of these articles two of them two of them  that the lawyers and others who said they didn't catch it either what we're going to debate we actually took their deposition they admitted that they knew about the difference there was notation that they had one of their paralegals do research contradictions between the references to the piece or primary whether there was an obligation to disclose it but we cited that in the record your honor and i think they knew what the differences were and yet they broke that difference again reexamination it's not just a case where these two things came in the examiner the reexamination examiner missed it the other attorneys missed it but these folks credit the time they knew about it they go about