there's no way to resolve this dispute without wrestling with substantial questions of patent validity and scope and that is true for a new independent reasons st the agreement itself provides that it has expired unless a patent is issued with valid claim coverage over particular medical devices and nd dr sasser as entire theory of liability and damages as played and tried in state court necessarily depended on construing patent claims and determining whether they cover medtronic devices that's why at the trial or ignored well it it is not relevant to this court's assessment of its own jurisdiction and that's certainly true because this court has an independent obligation to assess its own jurisdiction under the gun factors and whether a state court made determinations after this complaint was filed does not bear on that and we think all of the gun factors are eminently satisfying because patent issues are necessarily raised and they're substantial and i don't think there's any dispute as to factors two and four once those two are resolved and then the only question becomes did the district court abuse discretion in declining to exercise the jurisdiction that congress has said is exclusive and the fact that the state court proceeded after this complaint was filed to a trial that it had no jurisdiction to conduct does not change the that is not the issue to rely on the date of their expiration date of a patent expiration i suppose it could determine those things certainly but that doesn't change whether the issue of the patents scope and the are substantial issues of patent law that under this court's and decision court ground i'm quoting from the state court the amount of money to be paid under the agreement of the term depend on the issue and happen were not there what would be so that is the determination that was made in the summary judgment ruling after this decision this declaratory judgment action was filed so at the time this complaint was filed which is the time at which this court determines not only the district court's jurisdiction but also it's on that order had not been issued now had the state court done what we think it should have done which was dismissed the state court judgment because a secret proceeding because it lacked jurisdiction that would never have come out besides that issue was one of tennessee law not one of indiana law there is no requirement that federal courts defer to one state courts application of a different state's law the supreme court told us that in titus versus wallach in adam versus sanger which we cite and also it clearly erroneous determination even if made under state law is not preclude siv if it would have the effect of depriving a federal court of jurisdiction with such a number of cases to that effect and that sentence that you want to read doesn't even engage with it was something drafted by dr sacks of counsel signed by the state judge  products and that the fact that the state court clearly erroneous lee came to a determination as to whether the contract was in forcible or not does not prevent this court from making a fresh determination of its own jurisdiction truth has to do what what is the intermediate court the supreme court of india and it's the highest and i think because the you because the district court opinion here sort of said well you know i'm going to take a wait and see we'll see what happens in the state court proceedings and maybe this could all be reopened then so we think under this court's decision in i believe it's either castro or take no we are not required to wait for a determination by the owner of the dispute among the parties by the only court that has jurisdiction the congress or presented in the in the appeal i mean that's that that's certainly true there's nothing on the public record to have an idea i mean we certainly plan to appeal the patent issues certainly and because this that's what this case was all i was going to ask you if we don't find yours to why would we transfer to the th circuit instead of just dismissing it well if the court doesn't have jurisdiction i mean we have we have time we noticed an appeal we have the right to some court of appeals review of the district court's dismissal of our to if we if we if we decide if we found we like jurisdiction because we applied the gun factors country way you would want to do it but assume one went through the gun factors and said no jurisdiction in the federal circuit there's no patent jurisdiction here and as i looked at that at the d j complaint it appears that the whole focus was on patent issues and if i guess what i'm trying to get a score to my way in my own  respectfully we were to disagree with you and say there's no jurisdiction in our court i'm wondering why the proper result would be just a dismissal as opposed to a transfer because i can't see what that would be for the th circuit to do that maybe other side will have a different view on that yeah i think this is the th circuit would still have to review the district court's decision under wilton and really hard with the there was a proper exercise of discretion and that would include evaluating the district court's decision i don't think it would be bound by this court's evaluation of the issue it would no doubt take into account but i think it would be decided afresh i don't think this court could for instance either refer it couldn't or from the district court if it if you're on a could lose you don't have a ballot jurisdiction you can't from the district court i don't think would be proper to dismiss because we have the right to have some kind of appellate review of the district court's decision so with respect i'm happy to go through the gunfighters i mean i think it's clear and you know not least because of this court's decision in jang which i think is completely indistinguishable from this case where you have a contract that makes the in force ability of the contract and paid delivery of royalties depend on patent claim coverage that is a patten issue that is necessarily raised and it is weren't inspired development they weren't in your repair but your repair specifically cited james as an example of a case where the patent he she was were disqualified and that's precisely what's going on here that's how it was planned and that's how it was trucked so we don't think there's actually any significant difference between this case and jang and so we respectfully submit that there is federal jurisdiction exclusive in the district court and exclusive appellate jurisdiction in the court and that we would also submit resolves the question under wilton and brill arc because neither dr sasso nor the district court cited any case suggesting that it is remotely proper for a federal court to decline to hear a d j action with that's within its exclusive jurisdiction simply because there is a state court that has improperly exercise dispute but that's what the district judge did hear the court as soon that it had jurisdiction which means xclusive jurisdiction and that meant the state court lacked jurisdiction but the district court then refused to exercise that out of respect for what had then become a issues purely and they said however that when a plaintiff asserts of the controversy can be fully adjudicated in state court then the federal court needs to determine whether that's actually true and of course a state court cannot fully adjudicate a dispute that is within the exclusive jurisdiction of the federal courts and as i said dr sassa hasn't cited we haven't found any case not one where a court declined to clarity or jurisdiction in favor of a state suit that fell within exclusive federal jurisdiction the court made other errors as well respectfully which compound yes that's that mean we would we would welcome that obviously we were we were made to go through the trial we we litigated the trial in the belief we think correct that there was that we have paid all the doctors as it was entitle to understand that it would  j action i don't think i did not entirely i don't think because ultimately the case as it went to trial in indiana did not involve all the claims at issue in the patents it involved a subset of them but ultimately d sassa left a few of them go so the deal just is broader in that sense that it involves all of the patents dr sas alternately didn't try the old forty six dollars patent at all that's part of our d j complaint so there would still be issues now whether we would still continue to press them i think would that but we filed this case for a completely different reason which is we want this dispute to be resolved and we want to be resolved by the court that has exclusive jurisdiction the congress gave it and under the capital we are entitled to have that now we don't have to wait until the state  versus cold industries says that if on the face of a well pleaded complaint their reasons completely unrelated provisions of purposes of the pet was why the plaintiff may or may not be entitled to relieve then the claim does not arise under those laws well plead of complaint could be proven without without going to the language of the issue and all this is at its core is a contract dispute dr sasso created surgical instruments  surgery on his own he took those to bed tronic he has signed all intellectual property including know how surrounding that the instruments to mend tronic in a detailed written agreement i'm sorry to interrupt us but i had it and i know you're in the middle of something i did have a question i wanted to ask yes that's the same question i asked mr fleming if i could what if we determined that there was no jurisdiction for our court here what would you say would be the correct remedy mr fleming suggests that we should transfer it to the seven circuit i was sort of thinking that well if we find no jurisdiction what would there be for the th circuit do wouldn't just be a dismissal do you have a view one that i have i believe that the court could it be and should simply dismiss this complaint there is no without a transfer we have there's no underlying diversity jurisdiction that exists in most of the cases that come before this court better then transferred to back to a different court of appeals as with the inspired development case that was recently decided by jurisdiction as well as you all probably do but but there they did say supplemental jurisdiction it's true that that the judge used will brill hard to scratch and to dismiss to complain but he did that without prejudice and  think we've said in our brief what what is why are we even here when the plane was simply dismissed without prejudice and if there isn't any other jurisdiction diversity there than to just dismiss it seems like it an appropriate way to go in a properly relief for my client and so we would say simply discuss looking at the will plea to complain it would have to closely track the written in exchange for royalties to be paid on a medical device using the invention the invention is defined and that's very important any product method system or system relating to of the setscrew instrumentation and a headless to setscrew fixation system as described in schedule way this is important to parties to find the invention they didn't leave it to pass laws to come up with what the invention  schedule a says states to set screw instrumentation and a headless with said screw fixation system consisting of bone screws and associated instruments were installation thereof there's no mention of a p you saying that in your view and i'm thinking now christensen riggins co that the state court would not have jurisdiction if in fact a fair interpretation of that contract  was at the pet used to be valid i was still think that the the state court would have jurisdiction debt and that is because the gun factors are for debt that it's necessarily adjudicated summary judgment order that took out the valid claim coverage language that is the it's the cornerstone it's the mainstay of everything that they pleaded to the district court even if they took that away there would say you know they could  away and that agreement that term part of the agreement it doesn't just say valid claim province it says that the agreement is to last until the last to expire the intellectual property rights included in claim coverage then seven years from the data for sale of the medical device will even that paragraph has payments being made for seven years after the sale of a medical device which wouldn't you know that's not raising a patent law issue either but but as it stands the the the ruling has taken out completely their whole reason for filing this lawsuit about getting some ruling about valid claim coverage or let me ask you in the we have to look at the the the th factor is correct yes now we also have the fact here that there's been a verdict in the judgment in the state court trial ford in the anna mr fleming has told us that it's now on appeal and his briefs are due to be filed shortly at the st ballot level and then there's the nd appellate level how does that fact in other words the pending case in indiana play into the gun is is a company that use d n a a court system to seek a dismissal because of subject matter jurisdiction and the last doubt ruling so we fully and fairly litigated the issue before the state court it was rejected and now it's being appealed and if the federal system steps in and takes that away from the state system that the state system has made a ruling people of both sides have have litigated it in it's going up on appeal and it would seem that to do that would it would be in violation or contrary to fact for it's upset or a valance yes and so that that has been done and  to do that it's like they're they've they've lost in the state court and that now has become a final judgment and it is on appeal and i think it also that's relevant to the wil abstention factors that that the district court judge looked at in saying i'm trying to dismiss this case without prejudice because it is going up on appeal and and many different things could happen on appeal that would moot everything about this declaratory judgment action that's been filed anyway and that's a reason for a district court to step back and say i didn't i will assume without citing jurisdiction and dismiss and and again in the arguments that i'm hearing about assuming jurisdiction it's assuming but they're ignoring that it's without deciding that he didn't say that there was jurisdiction he just used that to get to wil if we meaning his client tronic prevails in the indiana appeal process that there's still the case doesn't totally go away from his standpoint there's still an open question do memory talking about that as to the six for pat but he said you know we may be wouldn't pursue it you have a comment on that do remember any what i'm talking about i remember that exactly but we we got there are issues between the parties about the these contracts a the indiana court of appeals has for the indiana state court a step down both contracts in for school and has awarded damages that brings up other factors about continuing damages under these or federal law that decides to claim that that's something that the court of appeals will be doing to pella process of so i can try to go through the language with you that that there is no language in this agreement and and were transferred to to the company and patent application was written there was all sorts of evidence to determine what the invention was no one in again this is all going up to the indiana court of appeals and it and the subject matter jurisdiction argument has already been made and fully briefed and it's going for the court of appeals  his order on that and so so that everyone is looking at this agreement saying that the analyzing and so the essence of this dispute is is what is a medical device and said that consistently throughout this case that that's what's going on and and that's what happened and that's how he could prevail without ever looking at the past and said he transferred off course when a patent application is written on an invention and the facts here are that he created the prototypes and he went to a patent attorney and the pad attorney put together the pictures and the different things of the patent had described them wrote everything about a patent then that is helpful along with lab notes and e mails and everything else that goes into defining that and big u s term medical device that that had to be done for the state court trial to determine what the intent of the parties was so so now we have a two and the verdict is is has it is simply a damages for ticked in an indiana general verdicts are given by for by juries there are no special or if no patent applications issue into a patent having valid claim coverage of the medical device then seven years that sixty thousand six hundred yes in that section seven in title to term of the agreement there is no way to determine which of those contingencies applies whether we're talking about life of patent royalties or seven years of royalties without determining the alledged claim coverage the fact that dr sacks of counsel wrote an order and the state court judge signed it giving absolutely no notice to this provision at all it does not change the fact that that is an issue that and certainly as of the time when we filed this declaratory judgment complaint which was before they even moved for some a judgment on this point this is something that we think needs to be determined in order to resolve the dispute among the parties and this court can decide and must decide it in order to assess both its jurisdiction and the district court's jurisdiction the nd point mr m hart said the patents did come up respectfully that is the understatement of the century in the complaint on page one hundred and sixty because council where the order of correspondence doesn't know i don't mean to suggest i'm sorry there's a lot i do not mean to suggest impropriety the point is there was no analysis at this point and so there's nothing for this court to defer to to the extent dr bloom so to speak where do you think that plays into the gun analysis he says it's a significant point with respect to factor for what would is your response to that are they substantially yes they are for the same reason as they were in changing are they disputed of course they were we had a full trial about them in the wrong court but there was a full trial about them and then finally would exercise in federal jurisdiction upset the federal state ballots and that has  the allegations at the beginning of this claim and it only continued from there he answered contention interop the tories at page seven hundred and sixty two dollars that the contract was intended to provide me royalties quote from medtronic products covered by any pakis issuing from the intellectual property developed the threatened to move for a mistrial in the state court because of something our expert said about the scope of claim twenty six dollars of the three hundred and thirteen patent he demanded depositions on claim scope and coverage he served expert reports with detailed claim coverage opinions markman hearing in state court damages which is a reason under the gun factors why this is going to affect other cases but yes everything i ever cited happened it was what happened some of it happened before we filed our complaints in the federal court some of it happened afterwards but it's all of record cited in our was by arguing the scope of the patent claims and applying them to the medtronic devices that's the case he pled it's a case he tried there's no other way he could have prevailed that claim should have been brought and needed to have been brought in district court and we are entitled to have a result on this declar