membership of the federal circuit bar i'm sure he will be a valuable addition to that bar and his clerkship with me was sandwiched between two very other important quick ships one with our dear friend ken jordan the third circuit and now for my college great colleague judge chad and i want you all know that i plan to take credit entirely all of the progress of success in this feature and i am absolutely confident that there will be an enormous success because he's not only just such a great individual and pleasure to have around and to work with but he has quite an extraordinary love and respect for the law that you don't see unfortunately all that often i'm on wires or a lock works way but i also say that over the past few months i've gotten to know robert's intellect skills that character work ethic and i have no doubt that you will make a most excellent addition since robert and it never occurred to me i knew he was probably the only judge on the court i can't really say anything to this other than his reputation among the other finding of unexpected properties then that finding mandates that there we we conclude that there was no reasonable expectation of success not that it's a manner which tevis characterize our argument and we are not so that legal error number one that would like to address illegal or number two is so that's all crime and pay should case and that doesn't get into the number of house that does the drug laws in terms of  presumption that it is if you take all the evidence and then you reach a decision to leave before you reach the ultimate conclusion of obviousness run in this case and in scores of other of our opinions we've analyzed certain factors with regard to the this reason if we take the three areas that i'd like to focus on obvious to try which does have the reasonable expectations test component when the district court respectfully erred in saying that i find  then had to confront his own findings that this compound had extraordinary potency and extraordinary therapeutic window and it had extraordinary resistance to extraordinary genetic resistance those were his findings and the question was how can you reconcile them with the regional expectation of success and he did it three ways and again respectfully he erred illegally three times and here are the reasons why the first time he said they really weren't unexpected because i'm going to look at what the inventors expected and they told me that they expected some of these unexpected properties that's the wrong analytical framework he then said friend points out in the really rare record evidence that that was sort of a forced air that that was something that was raised by your client and the judge will respond to that what's in the side if you're let me just respond to it in ten seconds they actually raised it and our expert was responding in fact in the did save they raised it in the pretrial memo they raised it with their expert affirmatively our expert responding to it but i think however it was great it's not the closest prior art but then the third part of this analysis because having found no reasonable expectation of success but having done it by comparing the invention to the prior art which is not the correct analysis the court then has to say what am i going to do with these going to take the objective considerations and some are good and some are bad and i'm going to say they're mixed and i balance them against each other and then he says i find that v m s did not strongly persuade the court as to in tech the various not obvious there are two legal problems with this the first problem is that you don't balance the objective considerations mrs levy what if we read this record we find some of the proffered secondary consideration evidence to be valuable and compelling and then we find some of the other proffered secondary consideration happens to be not particularly compelling  from that and it's a legal conclusion but the district court did more than just that the district court did three things the first the district court did said i have these unexpected results but i'm going to impart dismiss or diminish the because inventors would have expected it because what the inventors would have expected if a court considers the district court's analysis on unexpected results you will see that there did credit this patent compound as having unexpected properties high barrier genetic very resistant high therapeutic window and high potency he made those express fine and he gave that credit in the you know you're right i would have mentioned the other ten of your and the and then looking at the inventors expectations but regardless of all that he ultimately did find that there were unexpected proper honor i agree that's critical because he ultimately found that there were unexpected properties as we've said we can find no case for this court involving a new chemical and as opposed to a formulation property with extraordinary potency and extraordinary therapeutic window high barrier to resistance those undisputedly properties has been sound obvious now the question your honor the reason i said i agree with the first part is the second part of the question is what you've been do with that because as a legal matter you can't reconcile that with the finding a preschool expectation of success that was my first question the one that i knew saying as a matter of law once you conclude that there of the answer is your honor i would not advocate for a girl that was that broad what we're saying is this when you take judge chance three finds unexpected results and which are not disputed by either party and then you layer that on top of that analysis going back to your question a reasonable expectation of success where the comparison made by the just report was not for the claimed invention but to the prior art and you then layer upon that the fact that the winner which in this goes to the second half of judge tend to question the manner in having made those findings the question then becomes what use does the judge make them in reaching his determination and i think that the acknowledging what that decision has to be key for us here is this one of the reasons that it's court has existed and is to give us a coherent body of patent law in the new chemical entity field over the last quarter century the court has articulated a set of principles that has given some certainty some guidance and predictability to the field and opinion that has been consistencies with it and i think this is at least an inconsistency but in a picking that has any consistency but more importantly said it in a context where you can have literally scores of decisions that should be obvious to try in a context where the reflex dictation success is a comparison to the because what he's dealing with there are facts we may say his factual conclusion on that point is clear but ultimately we you point out that our job is to look at his destroy the trial judge's position because ultimately world we have to do is look at the facts of the case the fact that he found determine whether any of them were clearly erroneous in this they were point is that i actually think your honor that the focus on appeal when the folks we've tried to give the court is less than the facts that were found and more on the legal principles that have been applied and i tried to focus on that this morning because i think ultimately unexpected results and he did make those findings but then he diminished them legally in correct way and then if you think about obvious to try and even if you think that finite in particular questions of fact there did below was consider the objective in dishes evidence which is what you should have done i think when counsel says that is the diminished them what he really means is that the judge didn't accept those as proving that the as estab evidence that this was not an obvious invention at the time the invention was made which is the purpose of the objective in disha analysis here the court did that properly considered all the objective in disha consider that as a totality of the evidence considered in the context of all the evidence of obviousness which is exactly what the president of this court calls for to do what did he mean when he used the word next he talked about some evidence being great some evidence being not helpful and therefore the evidence of the whole being mixed comparing them off against each other and then diluting what could have been arguably the strong evidence and you know your honor i think what the judge was doing and it does it in the section i think that's titled summary and he was summarizing the overall character of the evidence and in summarizing the overall character of the evidence that was an accurate statement first to mars presented some evidence of objecting to objective in di to the court ruled wasn't really evidence of objective in addition the court concluded that other evidence that was preside per presented did provide some support for being an object of indicia of non obviousness that was a descriptor of what his overall analysis had been but it's very clear as i believe judge prose pointed out earlier in the opinion this judge was very aware of the of the standard that is to be applied stated it correctly numerous times and never stated that  incorrectly and so when the court came to objective in addition it knew what the standard was at the end it did summarize what kids overall findings were and how that fit into his obviousness conclusion but that was inappropriate and appropriate statement of the was invited to error by bristol myers what happened was that at a pretrial conference our expert couldn't make it a disco jewel time and so it was agreed that our expert would actually go first that's the only reason our expert unexpected results for a moment you know at first i didn't i that we were going to use the thoroughness of the district court hundred seventy page opinion against him but he's on to something is he not i mean one of the reasons you describe this to such a thorough lengthy opinion is because this was quite somewhat more complicated than your normal run of the mill case i would say it was not so much the nature of our cases it was the nature of bristol myers case because first of myers came in and said to get to the point of obviousness here you have to go through six or made about the steps really the prior art cuts through all of those steps because there are really two pieces apart that are reported here to prime c d g which is the lead compound which had never been disclosed to the patent office so this court was the first entity to consider whether a patent fit issue in light of two prime c d g and the second thing was the mind of an reference so there were really two prior art references that cut through all of those seven steps now did we and did the judge go through all those stubborn steps seven steps to rebut what the contentions were by b m s absolutely we did we did that out of the sake of thoroughness and wanting to address every point and we did and if you go through each of those seven you will find that there is nothing about those indicators to clarify are you saying that you in the district were going through all of those multiple decision points on vinyl i would think that you would need to do that in your initial analysis to establish necessary in your view they are necessary some of them have been skinned that's what i want to know nothing's been skipped no but that you are saying it was wrong to characterize it as seven decision points and when i'm in so i'm trying to figure out more which of the ones within the consideration of two prime c d g and modify and so those two references are already made many of the decisions that were made with respect to the seven different elements that we just spoke about but yes all of those are dealt with about those six or seven steps and let's assume that for each of those steps there was a high probability of success in seventy five percent if prime c d g was a lead compound that had very great activity against viruses that made a lead compound here the part of the probability of success in getting another compound based on a one adam one a talked about and sorted through it you come to the conclusion that two prime c d g was only compound head promising properties and was precisely the type of compound that you would expect a modification to would make for a more active confound you add to that the modifying compound the other reference that we talked about modifying talked about the specific alteration the one album alteration and show that when you make that one atom alteration you make a significant change district court found on unexpected results and all of the objective in dish it was to consider those objective in addition for the purpose you're supposed to consider them which is ultimately was this compound obvious at the time of the invention was the motivation to make the compound real as the allegheny basted for instance and these unexpected results in particular didn't test any doubt on whether the motivation was real at the time of the invent do you disagree that the cases would support an analysis that says you don't just look at the time that the invention the unexpected results kind of rot that are relevant and can arise afterwards oh i absolutely don't disagree with that that is that is absolutely correct and  ss reporter did consider that evidence did consider the evidence that arose after the time of the invention but what the district court did was consider it for the purpose you are you are to consider objective in addition which is ultimately to determine whether at the time of the invention there was a motivation and a reasonable expectation of success and as the time of the invention that this report found that the motivation was real to prime c d g was a weather compound that was being touted in the art argument it helps organize everyone's thoughts then you have to get to the secondary consideration evidence and that's what we're having some trouble figuring out to what degree do what's what's your best case for showing us that there are fact similar to the specs where the unexpected results just more than our good and the allegation case that was it was a situation where there were claims to a formulation and the were unexpected results that specifically related to something called an afternoon trough and those were unexpected results in this court accepted the fact that those were unexpected results but the court said despite those unexpected results and that was not enough not enough to raise a question as to whether the motivation to make the compound in the first instance was real and found the patent obvious there are other cases judge which we talk about in the bridge we talk about the  back it cites cases like in re modern in rave billion i think is how you pronounce it judge which are also instances where there are findings that there are unexpected results but you still have a finding of obviousness and this is that objective in dishes there that you have evidence of it's not a checkbox you just don't check the box and conclude that you have a finding of non obviousness what you have to do is determine whether those objective in dish have an impact on the conclusion at the time of the invention and whether there was a reasonable expectation and a motivation at the time of the invention and when you look at the objective in addition to this case all of them and in particular the unexpected results the conclusion is if that's not enough to cast doubt on the fact that at the time of the invention the time of invention there was no hindsight at the time of the invention there was a reasonable expectation and you have to be curious did anybody else come up with this i know in the late eighties this was regarded as something of a hotbed of an area of research and then i guess it's your position that if you mikey's on only a matter of time   did happen prior to the door window of time between the time of the invention of the time this was made known to the public that v m s had this compound which short and so there wasn't a lot of time there but in the intervening time there were people working with two prime c d g and making modifications to two prime c d g other of the modifications that we said were obvious and were predictable they hadn't gotten to this particular modification but people were working with the compound and working with other modification of mr limbaugh the wild car with the court's permission unlike driving this morning i heard a radio program  point that this is a major medical problem in this country and the cost of treating all these people in later years is apparently a lot of people back in the eight expose themselves to needles in one thing or another and that's now something else do you have any information or that completely just background information on what any of these new drugs  are they in the pipeline somewhere or are they counting what's happened i honestly can't speak to what exactly is in the pipeline i can tell you your honor and this was in the record in the case that there are other compounds that have been successful in treating hepatitis explosion of compounds that were used to develop hepatitis b and this is one of those compounds that court considered exactly the point you're talking about consider the commercial success points and consider them in a nuanced way  just check off the box of this had been commercially successful he clearly has been a quote boy way but the part of the question is does that commercial success change the analysis changed your view as to what happened at the time of  of this case is trying to figure out what to do when you have some properties that might have been expected right it's just assume for a moment the two c d g will be compound and that there are reasons to play around with that maybe even on the sugaring not the base and there was some expectation of a viral property but maybe not you know particular proper the discovery of the unexpected properties all the sudden negate the expectation and perhaps motivation to make the modification to the lead time found you're right where is the law on that and then why is the law that way there are two parts to the answer the first part goes to your last question where the laws and it's a point i tried to make in the opening argument the requirement is that you identify a reasonable expectation of success of the claim invention if the district court had actually correctly use that analysis then you wouldn't find the inconsistency we're finding between the unexpected results and the reasonable expectation of success i'm asking you to assume for the question that there was a reason why complication that you would get some good properties against herpes ok but maybe maybe it wasn't expected that you would have reason to make this claim compound because there's an expectation that you would get something good and valuable out of it but you didn't know that you were going to get something extra you're going to get an extra boost  that collective body of evidence which is what the court has done whether you go private take a case or not it's a collective body devon's in that circumstance you're describing you could have an antiviral that was appears crazy may have been lots of cancer treatments that are promising cancer treatments and people find out they kill every cell in your body that's why the question of whether something is toxic or not or has a therapeutic window or not to ski priscilla marty said hundred four if this was so simple as to just go to mattapan what happened in the intervening six years point number two there are multiple steps in the analysis of missing limb bardia skipping steps one three four and five each of those immense number of choices what we just reported as it started with structural similarity and then i went out to a very small academic to research body parts and found at each step something that would suggests change the very next sentence it says it's toxic and the very next sentence says actually threw out a flooring instead you have something just as potent toxic that is the problem with the