either the accused product this valve was infringing on the one fourteen which is what you would like or it wasn't infringing on that one fourteen because it came under paragraph eleven of the agreement it seems to me you can't have that both as your theory which you perceive it and one twenty six million dollars or at least ultimately got twenty six million dollars was predicated on this not being an end fringing product if it had been infringing if it had been covered by this one fourteen or if you had alleged it had you wouldn't a paypal to proceed in your trade secret litigation so i didn't really have a hard time figuring out will you know what your argument is you're on i understand what you're saying anna anna and i have been concerned about this issue because it appears to been the sort of infiltrated the case and and it's fundamentally incorrect the case underneath the case below did not depend on the application of section eleven of the license agreement which was a right of first refusal triggered when and if the device of that that license agreement but it did not rely on the terms of that license agreement other then the it was essentially background your honor what would happen is and maybe it helps to go back to the facts like mr rogers and mr zimmer developed conceived the idea that became the one for pat and it has to do with simply the door into one of these valid points they came up with an idea that you could have a plunger that could be used so that when you inserted a syringe into the valve cord it would depress the plunger and that would allow food to flow into the about itself one problem for needle free valves didn't solve them all but one tough one is how you get in that door and then it reseal so you can use it again and again and again that's the one for patent it was issued in  nothing was happening so zimmer and rogers went out and they hired an engineering firm to help them out get this process go vi our engineering was hired and they came up with five phase one concepts for how to manage the process once you're through the door use the plunger but then once that fluid gets into the valve how do you get it through the valve without getting air bubbles without getting back pressure without having other problems that mess up the price of the hole but that's what v r r did they came up with certain of these concepts two of these concepts let's develop them and see if we can get a product that we are engineering went back to work and they came up with a conceptual design that used one of those five concepts brand then came to roger she kept saying where we've gone is this going to be a product and said you know what so are we decide to go a different path we're going to develop something that doesn't infringe the one for those of you the one for going to something else entirely and without rogers knowing that  our engineers to sign assignments of their invention and they went out and they acquired the four fifty one pad which does not relate to the same function in the valve as the one for it manages the flow of the fluids through the valve once th different function different concept different and inventors four five one patent developed entirely differently totally unrelated to the one for about a valve that's produced could either practice the one for pat or not it could either practice the four five one patent or not the two are not exclusive so there's a question with the valve that comes out the ultra side valve three separate questions doesn't practice the one for pat well at the time this all happened mr rogers isn't mr zimmer didn't have money to hire a patent firm to go pursue a patent for three point zero to do the analysis they had to go another path they followed the path they found out that braun had acquired this it's a one twenty five of the allegation was that none and another they were pretending this was under the one fourteen patent the whole agreement but this was really under paragraph eleven which is the exclusion for things that are covered by the one fourteen why isn't that that and other things on the record certainly sufficient for us to conclude that your original claim was predicated on the theory that know this valve listen and frenching on the one fourteen the meth misrepresentation eleven because your honor this is part of a fairly complicated fraud allegation which refers to specifically the misrepresentation being made by brown at the time it does not take a position as to patent go away and that's what it is you already get compensated for what are your damages you've got future damages and the other k s o m for what for trade secrets misappropriation all the jury verdict form or two what with part of the royalty agreement you can now come back and it seems to me like a double click and you're out of if i may can address the whole double recovery issue is clearly a difficult issue to sort of sort out and if i may i'd like to just kind of walk through what happened  in not in the same way as in the brief because i think the briefs have the dots but they don't really connect them and maybe here today i can help connect those dots to make this little more clear that in the district court as i said there were there were there was a trade secrets misappropriation claim and that related specifically to trade secrets developed by vi our engineering during the course of that work on phase one and phase two so this was trade secrets that were developed long after the issuance of the woman for pat and that nothing to do with one fo separate group of conception invention or those trade secrets had to do with the flow through about and those trade secrets were the basis for the four hundred one application now as you know to the fraud allegations the plaintiffs alleged that there was a misrepresentation by braun essential to put them off to say we're we're not doing one for patent go on your merry way don't mind us and they relied on that and iran and so on that there was a blatant willful intentional misappropriation of trade secrets and for that misappropriation of trade secrets which was those vi our trade secrets it awarded sixteen million dollars in past damages plus two point five million dollars in future damages let's missing that dot that you're not connecting for me is that the all of this is about one accused product right it is to say so you're talking you're telling us that the whole trade secret and all the money and all the pas future damages you got was with regard to the same product that you're now suing over as the accused device that infringes the one one four that's correct it is the same device but it is different features of that compulsory claim and this is this is critical this is the this is something that's embodied in these cases the current case and the other cases talking about this distinct pattern right there is no duty where there's a single product to assert every single pat or because the issue of infringement of the warrant for patent undisputedly was never dealt with in the court there was never a piece of evidence there was not a single piece of evidence taken on the issue of infringement of the one one for  refused that discovery it went before the court in the plaintiff said that infringement of the one for patent is not at issue in this case and ultimately no discovery was taken on what the interactive tori's on that question were directed to and never responded questions before was that that was about the whole trade secrets was about one feature of this cuse device and the one fourteen infringement allegation is about another the a separate  feature can you show me point what in the record tells us that including that the calculation of damages was predicated exclusively on this particular feature of the device well i can point to that the two patents if you if the court looks at the patent claims the one for patent and the four five one patent they claim different features of of about and those claims are directed to different aspects of about and they're not incompatible there is there's nothing about talking about answer me about the point to me the complaint to something in the damages award when they were calculating damages this is in the original case where they said this is only about this particular use products that separate and distinct from the trade secret allocation i'm just looking for some come from a shot in the record your honor i think the because the one fourteen was never discussed in the underlying case it's a little bit hard to go to a record  say there was a distinction they said no i don't need them to name the one fourteen i want them to talk about the feature i want them to tell me what feature in this accused if i use this particular picture the handle was what we were talking about paragraph eleven that was a part of it and the limited trial testimony in this we have trial testimony from the underlying case but that issue we didn't foresee that we'd be looking back into the expert witness trial testimony of the or the technical expert reports but i just think it's relevant as to i mean it seems to me that your case may rest or not on whether or not you're talking about a different feature in the q s product in this one fourteen patent infringement case a feature other than the one that was at issue in the traits of a case do you not think that's a relevant question it is a relevant question yes but we thought that the that the distinct nature of the two patents was sufficient evidence to explain the fact that these these are different patents on different features because if you're comparing the claims i mean the four five one patent was issued over because that was not a compulsory claim to be brought up with the case that was filed and again this case was filed this counter claim two bronze action declaratory judgment action regarding ownership of the four five one at the counter claims that were rot involve that same nucleus affects ownership of the four five one patent in the underlying traits or it was not a compulsory claim for the plaintiffs to bring at that point claims relating to an unrelated doesn't have to be compulsory at that point if it's the same the lawyer side in this bridge that it was not compulsory to bring that claim at the time and in fact that this is done regularly and it's and it's a it's a strategic decision often made by parties who have multiple patents the myriad on a single device to assert certain thank you judge garson may it please the court john o'quinn for be brought in medical judge approached i think the questions that you are asking get what the heart of the prior case was about and the intersection between it and the current case and namely that s l r had a choice on what to what theories to pursue they could approve pursue theories that the valve that had been developed was an infringing valve and that there had been a breach of the one fourteen license agreement and well i guess you've correct about there been completely different aspects of th arise from the relationship under the one fourteen license agreement and they had a choice when they brought their claims or they could have pursued a theory of infringement they could have pursued a theory that this was an improvement and under section two of the the one fourteen license agreement braun did have a license to any improvements whether they were patented or not he didn't choose that theory very clearly very explicitly in the complaint in the make this a convenient trial unit that make this a single case or a single cause of action for claim preclusion purposes and i think those facts are that they both arise from the relationship under the one fourteen patent license and that's a license in which rights and duties are defined with respect to whether or not something in french the one fourteen so the one fourteen patent was involved in it may not have been at the forefront but it was certainly foundational to the prior case such that the district court in the prior case alternately concluded in crafting an equitable remedy that the one fourteen patent should be included with that and there was a colloquy with the district court in the prior a to the counter claims and was was integral to the counter claims and defining what the rights and duties of each party were under the one fourteen license and when when the district court in two thousand and four said well that has occurred to me what he's saying hasn't occurred to him is the idea that having prevailed on theories that were fundamentally inconsistent with the notion of infringement of the one fourteen path that s l r could then turn around and a a claim of claim preclude or excuse me sir a claim of infringement and if you look at j f k two twenty three and two twenty four you see that discussion a played out and the district court was actually somewhat incredulous he said quote it reminds me of the guy who murdered in cold blood both of his parents and then threw himself on the mercy of the court because he was an orphan and quote in reacting to their arguments and that's because throughout the course of the prior case the predicate to the claims were that this was not infringing valve you see that in the you see that in the conclusions that are drawn by the district court in the post trial decision by the district court in the original case in which he looks at the fraud claim and says yet that they have shown that there was fraud namely that they misrepresented that they were developing a valve that was royalty bearing that infringed the one fourteen patent when in fact they were not that was the theory on which s l r proceeded that was the theory in which esler is counsel made closing argument saying that the inventors had been deprived of the opportunity to see their invention come to fruition because they had been this lead that and fringing device was being developed when in fact it wasn't that's also integral to the trade secrets claim was again that the notion on the trade secrets claim was that these were trade secrets that were disclosed pursuant to paragraph eleven which only applied does involve the same relationship involves exactly the same device it both cases seek the same relief namely an injunction of the manufacturing and sale of the ultra side valve both would involve evidence of how the ultrasonic valve was developed the course of conduct between the parties and both would involve much the same evidence as to damages judge of course you would ask the question with respect to the images i don't know how you could ever segregate out the trade secrets of the brawns prior sales so there's no reasonable royalty they can tack on top of that it was one hundred percent of the prior sales and i think that is very rigid and that among didn't differentiate between because of the speech or no there that the trade secrets equal patton equals ultra side valve and an s l r owns all of it and there was no distinction between one feature versus another feature and again that there's a reason that they wouldn't litigated the case that way because if they had conceded that the valve was simply an improvement that infringed the one fourteen patent then braun had a license to it under paragraph two of the the counter claims have been brought in this case it doesn't it's some much broader release them that it says are in our who are our s l r for present purposes and be brought here by mutually release and discharge each other from any and all claim whether or not now known anticipated suspected which obviously would include that language if you meant to let me yourself to the claims that have actually been asserted and then it's and then it does limit this by saying with respect to the matters alleged in the litigation now the matters alleged in the litigation is broader than simply the claims or counter claims that had been asserted because again if that's all that meant to be that's what it would have said matters alleged clearly would include a claim of infringement of the one fourteen patent for one thing again pet the one fourteen patent was exhibit a i don't know how you can say it's not at least a matter of alleged in the prior case when it's exhibit a to the prior case there are allegations relating to the one fourteen patent there was litigation over what the one fourteen there was litigation over though what the one fourteenth's patent license covered and so you have discussions by the district court in the prior case differentiating between covered products and not covered products explaining the difference in the regime the one fourteen patent wasn't at issue because they weren't affirmatively asserting it we certainly weren't taking the position that we infringe the one fourteen patent and in indeed the predicate to their claims and there was to the finish of the answer to your other question judge guy or so there's a specific allegation in wrongs d j action that says braun does not infringe the one fourteen patent that's and paragraph seventeen and eighteen a j fifty three and so we were arguing that we have friends the one fourteen patent they were not arguing that we infringe the one thirteen instead they were asserting claims that were predicated on non infringement and so when there was some discovery that was propounded that asked you know what products of the bronze do you assert infringe the one fourteen they objected to it as being irrelevant the issue never got that issue never got litigated in any detail is as far as i know before the district court and then you have after the district court has made findings of fact and conclusions of law that specifically walked through the one fourteen licens and specifically walk through the distinction and therefore between whether or ability to litigate over the one fourteen pat in the future and the district court was was incredulous about it made the point we're not here to plant the seeds for the next big litigation and again going to the issue of claim preclusion the fact that the district court in the prior case took it upon itself to include the one fourteen pat in the equitable remedy that he crafted i know that remedy was ultimately vacated we saw it it's because you're on for other reasons but the fact that the district court clued the one fourteen in in crafting his actual remedy is proof positive that these are claims that could and should have been brought together for clean preclusion purposes it is it your position that if  doesn't well i think that would be a very sensible rule of law this case does not present that issue to this court because this isn't a case about the assertion of patent a case one patent be in case to see in case three this is a case in which case one is about a license agreement about to patent a which is defined in which rights and duties are defined with reference to whether or not something is an act of infringement under patent and case case in terms of the way that they litigated their trade secrets case the way that they litigated their fraud case and the damages that they were alternately entitled to i mean this was a quote strategic decision and it was a strategic decision taken outside  world of the license and so they would not be limited in the damages that they could recover to the kinds of of loyalty that they would have been entitled to under the license it would be fundamentally unfair to be brought on whether you call it settlement for twenty six million they could turn around and pursue the other theory because if if if that were the law and if that were permissible to put it this way if they had had to bring their infringement claim at the same time they could not have argued to the jury you have defrauded us by representing that you were developing an infringing valve a royalty bearing valve when you were not he could not brought that case and he could have asserted well you've taken things that were disclosed pursuant to paragraph eleven which only applies to non infringing devices and done something that you should not have done because we actually would have had the right to do doesn't apply and what's your view of the curves case and the roe and sort of lack thereof to this case well i think first and foremost kerns is is not relevant because it doesn't volved the case of the assertion of pat a than patent b than patsy and that's just not what you have here you have here a very narrow issue where the relationship and the issues all of olten at least i'm to the one fourteen license and  fourteen patent which defined rights and duties under that license and i also think that you only of course get to applying occurrence case if you decide that you're applying federal circuit law as opposed to ninth circuit law that's an issue that was waived below they did not make a choice a lot of argument and also i think creates some jurisdictional issues as well because of the notice of appeal being only addressed to the motion to dismiss but if i'm but not on that itself turns on the procedural nature of the dismissal that's integral to the whole occurrence and kearns seem i think kearns actually supports the notion that you can't bring aid in b than c because if that were the background rule the court would not have needed to focus on the rule forty one dismissal and the procedural nature of this the of the dismissal the reason that the court found that there was something improper about the destruction of property rights in that case was because it was a procedural  problem in the prior case that had not allowed a full and fair opportunity to litigate whether or not somebody took that opportunity so i think kearns is is eminently distinguishable and the judge pros with respect to the jurisdictional issue  are you you can't be suggesting here that if let's assume a different regional circuit law was applied below and let's assume it's at least arguable that it would have been the difference between that and existing that was circuit law us waiver is a discretionary doctrine the court can always choose in its discretion not to apply a waiver doctrine i'm simply my argument is they did not make a choice of law argument and it's not good policy to encourage  what in this case would be a second bite at the apple a second time where where you encourage parties to game the system let's litigated under one set of laws one theory if that doesn't work will turn around and litigated under different law so i'm not saying that the court here you have one minute we will if you need it i do your honor just briefly this damage is announced this question is really troubling because it's being twisted around in a certain way and i think i was confused by the regarding his calculation of damages but specifically the jury instructions in the jury verdict form and the test was provided all pointed to an allocation of damages specifically to the trade secrets relating to the development work done by  and carving out reference to other items so again there is no double dipping the past and we just were based on lost profits those can't be touched they were lost profits and on of the catalina case we can get into those lost profits but the future  of two point five million dollars was based on a royalty for the trade secrets alone and so there's still left to be apportioned damages we have one fourteen pattern out here which has never been adjudicated a patent right acquired by  individual after years of labor that they had financial financially were unable to assert at the time of this burkas they had to pursue a course finding counsel that could take the case on a contingency that could only find to who pursued this theory and pressed it was not depended their theory of trial was never contingent on infringement or not infringement of the one fourteenth section eleven related purely to damages it's the basis where the judge