c in a judgment from the district stuff you don't want to nd in open court which seems a little crazy since it's laid out since there are only so many things that could constitute the alternative dolphins and there laid out on the face of the patent which is a public document so is it really necessary for us to use things that will trip our tongues like slayback secondary solvent or something none of those are our issue your hon great minds think alike ok go ahead i'm it please the court i want to delve into the central air in the district court decision here and the district court concluded that when the specification in this patent describes something as a pharmaceutical or acceptable fluid or solvent for one purpose that that component is disclosed as a pharmaceutical acceptable fluid for every purpose within the patent and i want to focus in particular on you your argument is that well it's ethanol is better with the salt formulation but i don't see anything that says that in any other formulation you couldn't use it well there actually it's because in example one and that's that's what i'm getting to an example one where they're tested without the stabilising amount of ports also that they say it's not suitable if you skip to example to a test d m s o also a pharmaceutical acceptable fluid they test it without advocate absolutely but in the d m s o separately disclosed environment doesn't talk about using you know pharmaceutical acceptable fluid or in addition to the no d m s o is the pharmacy do ethanol from the it's textual disclosure in the what i'll call the category b formulation is in the specification to the category a formulations is he he latched onto the term pharmaceutical acceptable fluid which he labeled the solvent limitation and he said since it's disclosed is a pharmaceutical acceptable fluid that means it's disclosed as an alternative to p g in the category a formulation but if that were true then you could take  transport it because it's also a car masuda acceptable fluid as a d m s o you could transport it to the category three formulations but the patent tells you you can't and what the specifications i'm getting lost when you're talking about for present without without an accident present is suitable it works and so you can't conclude by the label pharmaceutical acceptable fluid that something is an alternative if it's described in one category the or it's all category you can't conclude that just because of the label pharmaceutic sceptical fluid you can't that label does not translate into disclosure for all purposes where you see the word  nothing in the patent itself that says it definitely won't work correct right and then now you're going to then you're going to try to say under geo we that it's just a simple substitution  if it's such a simple substitution and we know work why why isn't the district court correct that that you ultimately disclosed all the pieces and parts i think the the requisite case there is the sandusky case in under the sandusky case that the court very clearly said that the the issue and the requirement is actual disclosure it's not enough that a skilled artisan could read it and determine that it could or couldn't be used that the requirement is actual disclosure as an alternative it's not required that there be some magical language or specific language but the issue is does a skilled artisan reading this find that something disclosed  disclosed as an alternative to the claim limit to the claim limitation at issue in the claim invention and so so i think since an disk clearly answers answers that issue and i would point out that all of these to that particular embodiment of the imagine that is discovered so you have to jump from that the say well that really means in all embodiments of the invention the nd textual limitation that i would point to your honor's is at columns five and six and  in our reply brief in the grave brief page twelve we copy we repeat this section appears three times and all three time the specification describes the pharmaceutically acceptable fluid as quote containing one of the following and hey this is where my a b and c was coming from your honor is p g p g or mixture is there of and stabilizing him out of an antioxidant be say one or more it doesn't have the open ended language that you've seen and in the cases where this court is no indication disclosure where something is for the purposes of this invention it says it includes one of the following it uses one or more with bottle it's also has a fastener and the fastener can be any one of the zipper buttons or velcro or are you saying that because of the way i separated out those two  zippers and buttons of been interchangeable and alternatives for each other but that's exactly the question or if you want to skilled would understand that it's disclosing that as an alternative to velcro well i guess my point is you know i'm listening to your and you're saying well you know embodiment once and for purposes of this by an environment too for purposes of that and by that but i'm not sure of if that phrase is good enough to really drive a wedge to say that one reading this preference would understand there's some kind of special chemical sensitivity of using an ethanol with an antioxidant because after all that's the very basis of your doct equivalence claim that it would be totally insubstantial to replace p j with ethanol but that's so that's the case in every dedication disclosure argument you're saying something that works what was was not disclosed in your specification we think as a factual matter we believe that we can show under this court's factual carmen's for equivalence we can we think we can we can show equivalence at the district court but at that at best you're arguing that that the specification says that certain combinations we're better than other combinations but you conceded earlier that that there's nothing in the spec that says they won't mind if the combinations are are jumbled in a different way except the fact that the d m s o category will not work with  alcohol or with p e g so three of the components are tested without a stable up without the any accident and without the fluoride salt and they were found unsuitable d m s o was not and so that does tell you there is a sensitivity and that the declaration we submitted with at the district court clearly laid out that different mechanisms would be understood to work be at work in the category a formulation the or it's all to be addressing hydrolysis whereas the president nothing the only option correct but the send us cases makes very clear your honor we don't have to show it wouldn't work it could be very clear to a skilled artisan that it would work if we don't actually disclose it as an alternative that that's the  global statement that that there was a case in a substrate and there was a global statement that it was preferred to be aluminum it could also be steel that apply globally here we have a difference this the disclosure of ethanol is specific to the c salt formulation textually in every instance and and so that's the and what i think is very important here is in examples three through eight i counted ten different concrete formulations that use interchangeable grows a prism but but i think i think the mechanical context here versus a claim that has a particular i stability limitation which was the point of this patent and they tested their certain things and they found you got the stability they tested certain things and said you didn't get the stability and other things they didn't test and they were silent and so you here were addressing something they were silent on and that we think is right down the middle of what i want to pick up with some of the points that your honour's raised with the appellant i think the problem with the position that they're taking here is that on the one hand they say they concede in their brief that the doc that the  dedication disclosure doctrine applies to disclosures of claim limitations you don't need all embodiment and i agree that's the law on the other hand they take the position that because the patent never says you can use this list of of acceptable solvents for the for the pharmaceutical acceptable fluid you conjunction with any accident that therefore it's not disclosed and i think that there's a fundamental inconsistency between that because effectively if you if you follow the logic of their position to basically saying you have to disclose the entire environment consisting of benda mustang and ethanol in conjunction with any accident and i think that that is not a law and certainly the district court found a part of my problem and you know admittedly i'm not a process freak but i mean to do this on a twelve c even i kept saying i just wish i had a little more i wish i had a little more information even the declaration that that the district court would you consider mean was would have been something that i wish we could weigh in the balance or could i have had some prosecution history discussion of any of this is the the problem is the district court really jumped quickly to this why shouldn't we say this is just not something you should do you want to twelve's because your honor the though there's plenty of precedent for  deciding issues like dedication is closure in prosecution history stoppel and it will be context you know a number of courts many courts the cases are cited membrey that have done that i don't disagree that you know it would probably benefit you to have additional evidence in the record but the fact the matter is the district court found that he had sufficient context to decide the issue because he had the prosecution history in front of him and he had the relevant portions of the n p a in front of them as well as the patents and the disclosure and you testimony while you're out of the court certainly could have done that but i don't believe it was required and even if it had considered doctor needs to ration dr mi g doesn't address the critical issue which is is there any reason why a person  basis for that was the immediate declaration but at the same time they said it's not proper to consider expert testimony in the context of the twelve c motion and again the media declaration doesn't really address the question of whether within the limitation of pharmaceutical acceptable use but the patton also talks about the function of the pharmaceutical acceptable strewed and the only thing that it says about that is that it's it's a solvent for bend a must and if you look at the column one from column a one from column b one from column c all this close together in order for there to be a dedication disclosure it's sufficient if if if there is a disclosure of alternatives to any limitation of the claim so long as a person ordinary ski art would recognize that this is an alternative to that limitation in this case the patent says almost in not for these are alternative solvents for use in the pharmaceutical acceptable for the only argument that eagle makes is that and again there's nothing in the patents to indicate that ethanol would not be suitable in those environments it's true that the inventors didn't test that but there's nothing in the patent indicate that wouldn't work and as i mention you know there is language in the patents that  of the pretty clearly suggest that the inventors invision that other solvents would work and the other thing to bear in mind here is that we're talking about the minor component of the pharmaceutical acceptable fluid as it's laid out in the for p g as the minor component of the pharmaceutically acceptable fluid and you know so the question the judge decided is whether in the is whether or not the specification made clear to a person ordinary skill in the art ethanol could be used as an alternative to p two p g and that's exactly what the patent so i think in answer to your question jim how that's why the judge didn't feel he needed expert testimony and again the expert testimony that they put in really wouldn't help them because what it pox about  you know the two points i would make what it talks about is the mechanism of action for the chloride ions it doesn't discuss the mechanism of action for an antioxidant and again these are completely different elements what's not talking about what is the mechanism of action for say that the mechanism is different or what that would be but the even the the point i was late to ethanol it doesn't i mean the point that what i'm saying is that the declaration that they put in really doesn't relate to the issue in the case which is whether or not a person would recognize ethanol as an alternative to chippy genie in the in the claim which requires the any oxygen i mean recognizing that the trial judge does not want to ordinary stay on the art i mean we have to accept the proposition that what he's saying is that anybody would recognize this i think he's saying that the plain english words in the patent make it clear that these are disclosed as alternative alternative fluids for use in the pharmaceutical film forming agent and the argument was made that because the claim also required another element that had to be present in the form of mixed molecular weight i think is polyethylene oxides that in the patent never say well you can use this other film forming agent with a mixture of high and low molecular weight p t o s that therefore there's no dedication disclosure and this court found that there was that occasion disclosures the same kind of argument that they're making here they're saying well that they may wait because they didn't raise it below that's the argument that says that the disclosure of ethanol is too generic to place an ordinary person born are still on notice that that the particular absolute ethanol in our product was was dedicated to the public we do not believe this argument is raised below which i would invite you to look at the references to their brief below where they say to raise the issue i don't think they did in any event on the merits i  think it's almost silly to argue that the disclosure of ethanol which is a specific chemical moiety that it probably any high school chemistry student could draw is a generic disclosure and if you look at  you know that i think make it clear that there were no disputed factual issues with respect to the actual deciding factor in this case which is whether or not there was disclosure of an alternative for the pharmaceutical acceptable fluid limitation a couple of other  things that i would mention at various points in their brief they they talk about how these work in different ways what is one of the ways they say it by different mechanism fundamentally different from the formulation there is no evidence of that there is no evidence in the  specification to indicate that these embodiments are all that would that there's any preference for one a body mint versus the other there's no instruction on when you would pick one versus the other there's nothing to indicate that there's really anything different they're all means of getting to the same and which is a storage stable demosthenes solution so i don't there's nothing in the certainly nothing in the specification that would place anybody on notice that there's any distinction between these environments other than that they are different audience which is true you know in most p limitation there's a there's a i think an inconsistency in saying on the one hand it's in substantially different on the other hand saying as they say in a brief that there are fundamental differences here that that preclude application the dedication disclosure argument i think they are really two cuts to weapons so while i wouldn't concede at this point that it would create problems for us it would certainly be something we would have to be addressed have just a couple things i'd like to pick up quickly on one of the last things that sleigh box counsel says which is so there is no evidence in the specification supporting our contention that there are different mechanisms of action or the reason for that is we have no record the specification is directed to a person of ordinary skill in the art which is presumably pharmaceutical formulation which deals with stabilising complex pharmaceutical agents and we put in a lot of we put in a lot of factual evidence into this specification that shows certain things work certain things didn't work and other thing counsel said which she said which i don't believe they're supporting the record for that the function of ethanol in this is to was able to come to the market and so we solved the problem and we say we laid out very carefully things that were things that didn't work and we presented it to a skill artisan i'd like to focus on two particular things the st just the mere fact image stabilizing amount of an antioxidant that i guess relates to oxidation we don't have any testimony about that either this is and so would a skilled artisan think those are the same thing i can tell you they wouldn't but we don't have a record to support that and i think that's the central basis for this court's now co decision which is this is replete with factual issues and on page forty three dollars of our opening brief i just wanted to point out we lay out several federal circuit cases a desk addressing dedication to closure that we're s on the issue of the amaechi declaration our contention in submitting that to that to the district court was the court could deny the motion to for twelve c and let the case proceed and to discover it in normal course without considering expert evidence but we should not lose and be denied our date day in court we haven't even had oral argument you have had no proceedings attendant to us having a fair chance to prove our case here why don't you ask the court to take this into a suddenly judgment  because i believe under the rule under rule twelve it's automatic in other words if we submit the factual evidence and we say you should deny the twelve c motion it doesn't need to be concerned converted into twelve into a summary judgment motion to deny it if the court thinks it's necessary then the court needs to convert it to a summary judgment motion and needs to allow all parties to be appropriately heard for summary judgment purposes but the one last thing i want to make sure i don't mess is we did ask in our briefing for leave to amend if the court you know if the court were inclined to believe that amendment was appropriate so i want to make sure we don't do if it's just a pleading issue to plead that the specification discloses certain facts that would not lead a skilled artisan to conclude that ethanol was disclosed as an alternative for the claimed for the claim formulation but that what the all fair in inference is how our case and how a skilled artisan would read this patent that you could not conclude with the appropriate expert testimony in front of you but a skilled artist in reading holiday would think one thing was at work and seeing a reference to stabilize the amount of reasonable inferences that can go our way or entitled to have or do process rights of discovery of going through the normal district court proceedings we want to present expert testimony we think we can really show not only that this is not disclosed as an alternative we think we can show this is an insubstantial difference they copied every last detail of our product of our most detailed formulation you know council reference that ninety percent peg minor amount of p that some of the narrowest claims that are that are that are at play here and the issue is is swapping out ethanol in that context versus p g and insubstantial difference when you don't have anything to slow down here where you have a majority  a minority p g and any suggestion that ethanol is an alternative we don't have to show there is a teaching away in our specification we just have to show it science silence is a not understand ask we don't have to show it wouldn't even be unable to understand it we just have to show for the claimed invention with the stability limitations with the ratios with all of that detail that it isn't actually disclosed as an alternative for that purpose