Legal Case Summary

In 1819, our floor would tell France versus the A.K. to the corporation. Mr. Trello. Thank you, Your Honor. May it please, the court. These appeals involve a reissue of a patent that this court initially considered in 2012. The district court held that some, but not all of the reissue claims were broader in scope than the original claims as this court had construed them. And on that basis, and on its own motion held that all of the reissue claims were invalid, including claims that everyone agreed were no broader than the original claims. Well, I would be fair to say that the certain client went to the PTO in an effort to get them to overrule our claim construction. No, I don't think it would be fair to say that, Your Honor. I'm going to go before the date of the appeal

. Exactly. That's one reason why it certainly was not an effort to overrule this court's claim construction. And this is not about, but that's what you're saying, the PTO effectively did, right? No, not at all, Your Honor. And that I think is a misconception in the way, at least the other side, is argued the case. It's not about overruling this court's claim construction. There's no question that where litigation is finally resolved, and no longer pending, all claims have been resolved that the court's claim construction decisions have started the size of the fact and are binding. But that's not this case. This case is a pending case. This was also a minor plow or a plow or a stop, right? Or under the mandate? Well, and there are exceptions to the mandate rule. This court has recognized in a couple of recent cases. And one of those is where there is new evidence that is fundamentally inconsistent with the evidence that was presented before. Now, on the, and that I think goes to this question about overruling the court's construction

. We are not saying that the PTO's construction of the very high mechanical resistance limitation overwills this court's construction. What we are saying is that it's new evidence that in a pending non-final case ought to be considered, because claim construction can still be revisited as long as the case is still pending. Well, let me ask you this. Broadling of the RA153 has not been before this court's reform. That's correct, Your Honor. So the mandate rule only binds as to those issues which are actually before the appellate court, right? It's correct. Taking that line of reasoning backwards, then it doesn't apply. Well, I believe that's correct, Your Honor. But now in, in, in candor, I will say obviously any time that there is a, an argument about broadening whether a reissue claim broadening to claim, there, there are two parts of that analysis. One is what does the reissue claim mean? What does it cover? What does the original claim mean? What did it cover? Well, then we address what's the original claim meant? Exactly. And that's why it was being candored, Your Honor. You certainly did, but again, because, and I, and I do think, I think that, well, it makes sense of what the original claim means

. Well, and it's, and I think it's, it's of a piece with the mandate rule, Your Honor. And, and our point is, it's certainly true that ordinarily where this court renders a claim construction or approves the claim construction on appeal, it's law of the case, it's subject to the mandate rule for further proceedings, but there are exceptions. In banks versus United States, this court is recently recognized there. Our point is the claim construction or why an only intrinsic evidence or did we have to put extrinsic evidence to reach it? I believe that this, this court relied primarily on intrinsic evidence, but it also, the opinion did discuss extrinsic evidence. If we relied only on extrinsic evidence, well, I'm sorry, only on its extrinsic, intrinsic, intrinsic, sorry, enabled, that's not my initial syllable. If we relied only on intrinsic evidence in that first-class-length construction and thought that that was proper, why is this new evidence even relevant? Is it an extrinsic evidence? No, I don't think it is extrinsic evidence, pardon me, because what you have is a PTO construction of the identical claim, claim language. That is, normally considered intrinsic evidence, what the PTO during prosecution said about a claim. Now, certainly it had there been no prior appellate decision, and this was just coming up for the first time with the reissue claims and a broadening challenge. What the PTO had to say about the meaning of the reissue claims and the meaning of the original claims would be highly relevant. There'd be no argument that that shouldn't be considered and that shouldn't have a bearing on the court's decision. So the question is, does the fact that there was an appeal that they've hated the claim construction in part, not this part, admittedly, but in part, and send a fact for further proceedings on infringement and validity, does that somehow mean that the prior construction cannot be revisited under any circumstances? But do you have any case, if you say that there's an exception to the law of the case, is there any case that considered after generated evidence in determining whether the original decision was correct, or are they all cases in which there was additional evidence that created this kind of determination that was then made or discovered? I think the case that occurred to me in our opening brief, we cite a number of mandate law of the case decisions from other circuits, admittedly not this circuit, not claim construction. But those cases involved both pre-existing evidence that had not been discovered and who really generated evidence that came into existence only at what the Vanley's example, the case with newly generated evidence

. I don't have those cases that my fingertips, not on the names that my fingertips, but I believe there was the, I think it was the nice circuit case that we discussed about whether a party was able to intervene, and there was new evidence that came into existence after the fact that allowed revisiting the prior decision. And the cases that, I'm sorry, where do you discuss that? I don't have the page of my fingertips, but it is in that section of the flow rate, if you really are supposed to. Well, I will get that for you, Your Honor. Well, you're looking. Yes, the PTO is not found by law in the case. That's correct, Your Honor. It is not, in fact, in the forsenius case, this court said PTO in re-examination proceedings is not, it's not, it's not, it's not, it's not the latterly stopped to reach a conclusion different than this court has, as long as that litigation is still pending and has not been finally resolved. It's a bad point, obviously, story, the size is fixed in to effect. Yeah, the ninth circuit case I was talking about, Your Honor, is at page 36 of the blue gree, the bany versus commission case. And in the, for example, the aptly case in the, in the eighth circuit, the court didn't discuss where the evidence had existed before or was newly discovered, but in the cases that identified new evidence as an exception to the mandate rule, they don't draw distinction between whether the evidence came into existence after where it was, or the blue is a pair to say are not able to identify a case in which the evidence was newly generated after the decision. I think thought I did, the ninth circuit case, Your Honor, I believe, what, what new evidence was generated after the decision. I would have to go back and look at the opinion to, to say specifically, but Your Honor, let me, let me make a comment about this

. It is a requirement of the new evidence exception to the mandate rule that the evidence could not have been presented earlier, which clearly contemplates evidence that it, that couldn't be presented earlier because it didn't exist. And I would also, and it's admittedly not binding on this. It seems to me there's a difference between evidence that wasn't discovered or couldn't have been discovered, and evidence that you will permanently go out and generate the challenge of prior clinical trucks in our arms. I mean, if we agree with you, every time we do a clinical instruction and send it back, the party next is at, at verse two, it's going to arise as a PTO and try to get it changed. That seems to me to, to allow for a substantial distortion of the system. Well, Your Honor, I think, I think that's a fair point. But you have to, I think, consider the fact that the circumstances here are very narrow. You, you had a case go up on appeal. The court reversed the claim construction in part, affirmed it in part, sent it back for new proceedings on both infringement and validity. In the, am I not correct that the request to the PTO came before the appeal? Yes, that the request to the PTO came after the jury verdict, until after the District Court's claim construction that was at verse two. After the District Court's claim construction that was at verse two, now I think worth noting, Your Honor, that, again, that was before the appeal. And there were two District Court claim constructions that were reversed to us

. The reissue by adding dependent claims really addressed both of those. And there's no question that, as to the one that this court reversed, that there was no broadening and there's nothing inappropriate about that. And so, again, I think this is a very narrow circumstance, but don't we reverse and part and affirm and part claim constructions up here all the time? You do, Your Honor. And so this could happen in almost every single claim construction appeal. Well, I don't think so because what you have here is identical claim language being considered by the PTO with an identical specification. That is very rarely going to happen. I think, and again, we're not going to be aware. I mean, if you have a claim construction that's at verse two, go back and you try to get a reissue patent that we define the claim. Well, again, Your Honor, I think first of all, there is a presumption that the PTO is doing its job properly. And you do their job properly here. And in the reissue, I believe they did. Yes, Your Honor

. I want to know if they did that in the next case. They'd be doing their job properly. Well, not necessarily, Your Honor, because here you remember the specifications specifically called out the 1000 megapast-gell mechanical resistance as an object of the invention. Now, the panel disagreed with that or concluded that that didn't support our construction and the first piece. But this is not that the PTO didn't make this up out of whole cloth. And in fact, in the reissue application, the PTOs, the applicants specifically directed the PTO's attention to that portion of the specification of support for that claim. If I might very briefly, if I could talk about claims 24 and 25, those are the claims that everyone agrees were not broadened. They specifically call out 1500 megapast-gell. In fact, the defendants in their motions in the district court didn't even ask the district court to hold those claims invalid and said that those claims in fact would be left valid and at least that's abroading and could be addressed later. The district court on its own motion, there's a matter of policy, held those claims invalid. That is contrary to the statute, in which several statutes, such in 282, 288, 253, all say that each claim has to be considered independently and the validity of one claim does not affect the validity of others. It's also contrary to the decisions of this court, such as Hula Packard, in which the subclaims should not have been granted in reissue the court held, but that did not invalidate other claims

. It's also contrary to the court's decision in MBO laboratories. In that case, the district court had held that certain reissue claims had been improperly broadened in violation of the recapture rule. On that basis, held all the reissue claims invalid on appeal, this court agreed that about the claims being broadened in violation of the recapture rule, but held that it was error to hold the other claims invalid on that basis and reverse that part of the decision. It's very clear that claims 24 and 25 ought to stand regardless of what the court's determines with respect to claims 1 through 23. If the court has no further questions at this time, I'll save the rest of my time for a bottle. Thank you. Mr. Sainte? Thank you, Your Honor, and I'm here on behalf of all of the defendants. Let me start with a question that this court asks, which is whether or not Arslamant Hall here went to the PTO to overall disquart claim construction. We believe the anteters clearly yes, it began with an attempt to force to overrule the district court's claim construction, and then because the re-earing was drawn to a re-issue, was drawn out past not only this court's decision in November, but it's denial of Arslamant Hall's request for re-earing on this issue. It then attempted to overall disquart the court's claim construction came after they filed the application for the hearings. It came after they filed the application, but the re-issue was not issued until after the court said, are you saying that they asked or asked the PTO to lay? No, but I'm saying that they could have at any point after this court ruled, pulled the re-issue permission and adopted a re-issue that was now or only

. And instead, not only did they obtain the broader re-issue, they went into the marketplace and immediately they were after and said, now we can go down to a thousand FDA, they were enforcing broader claims. And one doctorate, but do you say on the date of your decree? Legal ruling, or filed a re-issue with the goal of obtaining broader claims? That's not true. Well, I think what we said is that I apologize, you're on a pre-war in elegance, but what we're saying is after the district court ruled and after they lost the court, then they had a legal ruling from the district court that the regime started to pass through the district court's claim construction. Well, after the district court claims construction, you're on a time here, the district court construed the claims in December 2010. The jury park was on January 14th of 2011. The re-issue application was filed in August of 2011. Arsumetal then appealed. And again, in terms of the appeal, this court announced its decision on November 30th of 2012. Arsumetal continued to pursue into re-issue. The notice of allowance in the re-issue was in February of 2013. Well, after this court's decision, the court denied Arsumetal's petition for re-hearing or re-hearing unbombed on March 20th of 2013. Among that, for that

. What affirmative action did Arsumetal or K before the PTO to continue its application? I don't have the old prosecutor's ministry with me, but they accepted they put them on other things. They certainly, after this court's decision, they continued to pursue the claims to add, including claim 23, which was broad and broad. They didn't withdraw. They didn't withdraw. And then after the notice of allowance, they paid the issue. And the issue is knowing that it was broad and what this court has done. And one doctor in that you did not hear from Arsumetal or that is really critical here, we think, is simple story to cite this. This court's announced its claim construction as a matter of law. And it announces it, as the court said, the national story to cite this effect, that this court's decision on claim construction has. And this court is kept the panel having ruling as a presidential holding of the court, is a statement of the law binding of future cases before the same court or another court holding of pedean's to its decisions. When this court said as a matter of law that the original 805 patent was limited to 1500, it announced that for the whole nation. And it was binding on the PTO. It was binding on district court. It was binding on a subsequent panel, including this panel. And the OR25 consists of different R claim construction. The S24 and A25 are known for order than the original claims. However, there's two defects with S24 and 25 that's important to recognize. The first is Section 251, the reissue prohibition on broadening speaks to the reissue patent as a whole. It says no reissue patent shall be granted and largely in the scope of the claims of the original patent. And our service is witness in their group brief at page 31. They've been in Section 251 means that the PTO was permitted to issue the reissue 153 patent only in their emphasis. So in your view, if any individual claim that a reissue patent is brought up the entire patent goes down. Well, there's two categories. The court has the power, the power to invalidate a broadening ratio of its entirety, which is important as well as in order to have a remedial sanction in discouragement as this court recognized in quantum and in the quantum case, your honor, which was cited by the district court in its decision

. It was binding on district court. It was binding on a subsequent panel, including this panel. And the OR25 consists of different R claim construction. The S24 and A25 are known for order than the original claims. However, there's two defects with S24 and 25 that's important to recognize. The first is Section 251, the reissue prohibition on broadening speaks to the reissue patent as a whole. It says no reissue patent shall be granted and largely in the scope of the claims of the original patent. And our service is witness in their group brief at page 31. They've been in Section 251 means that the PTO was permitted to issue the reissue 153 patent only in their emphasis. So in your view, if any individual claim that a reissue patent is brought up the entire patent goes down. Well, there's two categories. The court has the power, the power to invalidate a broadening ratio of its entirety, which is important as well as in order to have a remedial sanction in discouragement as this court recognized in quantum and in the quantum case, your honor, which was cited by the district court in its decision. In that case, it was a broadening reissant that now we're restoring case and model question of whether when they made a broadening plan, whether they said we anticipate the original plan, or whether we send it back to narrow the plan. And quantum case said no, no, no, you made the broadening your suffer that you can't narrow it. It didn't involve a situation where there was a separate claim for responding to the original plan. Well, it was a point you honor in that regard. That's true. Because quantum was a reissant. But what we have here is we do not have what are called carryover claims. And that's important. The council report to the HP case, which involved what are called carryover claims. Those are claims that are identical and restated in the reissue. And why shouldn't there be a difference between carryover claim with the same and a new claim in reissue that gets the claim that wanted to be responded by. Because the fact that it is not a carryover claim is inherent in the strategy here to undo this course claim construction

. In that case, it was a broadening reissant that now we're restoring case and model question of whether when they made a broadening plan, whether they said we anticipate the original plan, or whether we send it back to narrow the plan. And quantum case said no, no, no, you made the broadening your suffer that you can't narrow it. It didn't involve a situation where there was a separate claim for responding to the original plan. Well, it was a point you honor in that regard. That's true. Because quantum was a reissant. But what we have here is we do not have what are called carryover claims. And that's important. The council report to the HP case, which involved what are called carryover claims. Those are claims that are identical and restated in the reissue. And why shouldn't there be a difference between carryover claim with the same and a new claim in reissue that gets the claim that wanted to be responded by. Because the fact that it is not a carryover claim is inherent in the strategy here to undo this course claim construction. The reason the claims 24 and 25 are new claims. And there's no dispute about that. The written in italics in the reissue they were added. They are not identical for the original one. And the reason why it was a carryover claim is because the strategy that Arsenal told this year was to go to the patent office and say they wanted to clarify it and say, that the court of the year that they do not have carryover claims. They have new claims in the reissue that happen to be narrower. But as the court of recognized, when a party intentionally goes to the patent office to seek a broadening reissue out of time, the section where that is the reissue in valid is void. That's what the courts have said. And whether or not there be power for the court to preserve carryover claims, the court shows in this case and they have not challenged that discussion, not to reserve claims. And there are no carryover claims. These are new claims that came in with the reissue. They may be narrower

. The reason the claims 24 and 25 are new claims. And there's no dispute about that. The written in italics in the reissue they were added. They are not identical for the original one. And the reason why it was a carryover claim is because the strategy that Arsenal told this year was to go to the patent office and say they wanted to clarify it and say, that the court of the year that they do not have carryover claims. They have new claims in the reissue that happen to be narrower. But as the court of recognized, when a party intentionally goes to the patent office to seek a broadening reissue out of time, the section where that is the reissue in valid is void. That's what the courts have said. And whether or not there be power for the court to preserve carryover claims, the court shows in this case and they have not challenged that discussion, not to reserve claims. And there are no carryover claims. These are new claims that came in with the reissue. They may be narrower. But they are new claims that came in with the reissue and it is specifically a consequence of Arsenal and Macau's desire to go into the reissue and to go into the original claims. And the district court found quite correctly that it was an intentional strategy by Arsenal and Macau to get around first it's and then after this court is admitted. And it sounds like you're saying that the district court can cancel the otherwise valid claims of the section. What the district court can do is cancel the reissue and that's what the statute provides. The statute provides that the reissue should not have granted. And the case also suggests that a broadening reissue is void. So we do believe you run. The statute suggests that a broadening reissue is void. That's part of the reissue that not broadening the law is void as well. Because the statute doesn't speak of claims there or even of the invention which is often a post-statory term. When we look at cotton coins and determine whether they're valid or not, we look at the claim by claim not as a whole. Not always, Your Honor

. But they are new claims that came in with the reissue and it is specifically a consequence of Arsenal and Macau's desire to go into the reissue and to go into the original claims. And the district court found quite correctly that it was an intentional strategy by Arsenal and Macau to get around first it's and then after this court is admitted. And it sounds like you're saying that the district court can cancel the otherwise valid claims of the section. What the district court can do is cancel the reissue and that's what the statute provides. The statute provides that the reissue should not have granted. And the case also suggests that a broadening reissue is void. So we do believe you run. The statute suggests that a broadening reissue is void. That's part of the reissue that not broadening the law is void as well. Because the statute doesn't speak of claims there or even of the invention which is often a post-statory term. When we look at cotton coins and determine whether they're valid or not, we look at the claim by claim not as a whole. Not always, Your Honor. And interestingly, this court in the New York Packard case noted that the statute that provides for that section 253 does not appear to apply in the case of an improper reissue. And that in that case, it said specifically the section 253 that is the section that talks about going claim by claim. That says this court said that that section offers little guides because the invalidity resulting from a defective reissue application may be viewed as affecting the entire path and not merely any particular claim. And we think that's important, Your Honor, because if a party can go to the pad office. After a certain discipline pointed with a claim construction and still would happen here, injured and stupendly claims for purposes of indirectly forerunning the original claims. And then obtained new narrow work claims, there is no sanction. There is no deterrent for doing what happened here. But the consequence in the marketplace are severe. What is lost when a party does that is the very purpose of section 251, which is proposed to know when a patent is finally construed to its outer boundaries that a party cannot a patent or cannot later go and seek to expand that. And that's not only the function of section 251 in the statutory purpose, that's the very purpose in Markman by making this court the final legal arbiter of the scope of the claims. And that is entirely lost in this case. And if the only section is to strike down the parole and claims, then there is no deterrent

. And interestingly, this court in the New York Packard case noted that the statute that provides for that section 253 does not appear to apply in the case of an improper reissue. And that in that case, it said specifically the section 253 that is the section that talks about going claim by claim. That says this court said that that section offers little guides because the invalidity resulting from a defective reissue application may be viewed as affecting the entire path and not merely any particular claim. And we think that's important, Your Honor, because if a party can go to the pad office. After a certain discipline pointed with a claim construction and still would happen here, injured and stupendly claims for purposes of indirectly forerunning the original claims. And then obtained new narrow work claims, there is no sanction. There is no deterrent for doing what happened here. But the consequence in the marketplace are severe. What is lost when a party does that is the very purpose of section 251, which is proposed to know when a patent is finally construed to its outer boundaries that a party cannot a patent or cannot later go and seek to expand that. And that's not only the function of section 251 in the statutory purpose, that's the very purpose in Markman by making this court the final legal arbiter of the scope of the claims. And that is entirely lost in this case. And if the only section is to strike down the parole and claims, then there is no deterrent. And that's what the court recognized in the recent context in quantum. And that's what the district court recognized below in its decision. And we believe that is right. Did you argue next to the district court? What happened here on our is the case has been divided into two parts. A non-intriguing part is in the nipple of the part and we address non-infringering. And we argue non-infringering. The court at the hearing on the motion raised the possibility of whether or not it could because of the broading invalidate the whole issue. At that point we agreed that it could your honor. But so as matter of which, that briefed again after the court issued its decision before its judgment where our court briefed the question about the question of whether the other country struck down and the court reaffirmed that the issue was a whole. And as I read the book, they have not challenged procedurally the fact that the court chose and its power to strike down the whole reissue. And we think that was correct here on earth. There is a separate basis which we've raised in our briefed for a firm entering at least the judge was non-infringement in the old five bubble case, the original case

. And that's what the court recognized in the recent context in quantum. And that's what the district court recognized below in its decision. And we believe that is right. Did you argue next to the district court? What happened here on our is the case has been divided into two parts. A non-intriguing part is in the nipple of the part and we address non-infringering. And we argue non-infringering. The court at the hearing on the motion raised the possibility of whether or not it could because of the broading invalidate the whole issue. At that point we agreed that it could your honor. But so as matter of which, that briefed again after the court issued its decision before its judgment where our court briefed the question about the question of whether the other country struck down and the court reaffirmed that the issue was a whole. And as I read the book, they have not challenged procedurally the fact that the court chose and its power to strike down the whole reissue. And we think that was correct here on earth. There is a separate basis which we've raised in our briefed for a firm entering at least the judge was non-infringement in the old five bubble case, the original case. And that's the fact that the district court found and it's clearly true in the record that our started to do snow leavens showing infringement of of of choose products above 1500 or 8K feel they admitted 8K It feels product was below that's an argument that's directed to the situation which is this is 2425 so a lot correct only 2424 survive at a minimum in the old my record seen some products over 1500 at least one part. So sever skull what happens is there is evidence and service was brought to be made into product about 1500 their expert had treated it as part of the litigation and done that but what they what what service all came in on some rejoice and showed it may not contradict this there was no evidence that anyone actually in the marketplace had done that. So there was no evidence of actual infringement let alone evidence that sever skull had induced anyone to do that and the court found on a 15 and again an a 17 that there was that they had not contested the fact that there were no actual accused products within the 15 on the limitation and a judgment of not infringement there what of course create the kind of finality we're talking about but it's not necessarily a reach there we but we have a situation where as a matter of law this court has determined the out of bounds. So it's a common reason to be in the original patent at 1500 the PTO was found by that legal ruling as a as the district will be as a subsequent panel of the because that the purpose of claim construction and you know they're they're going to the PTO doesn't change that. Now even if they could so we think as a matter of star decided and this court of decker case makes clear that's final they can't come and even say that clearly erroneous even if they could this is not new evidence for two reasons. The first is it's not evidence of the meaning of the original claims as the court noted in Anderson which was a broadings re-example but the test for broadings the same and both the court recognize that Anderson in that broadings a legal question you can through the original claim and the later claim. So Anderson's test makes it clear that construction of the original claim does not involve consideration of the post grant proceedings in what the claim mean one addition and that makes that's for two reasons the purpose of claims is to give public notice of what's being claimed at the time the patent issues and while they cite some cases that suggest that later proceedings may narrow claim. There's no suggestion that a party of having to broaden the claim through post grant proceedings so we just don't think it's evidence more right notice this court and this is a 700 F3rd 32 sound is both the intrinsic and the extrinsic evidence supported the 1500 and new evidence is going to change that conclusion. And finally it's not new whatever the proof is it's a reasonably discovered recently generated evidence where we're in which a party itself can generate the new evidence that it then comes in but at a minimum certainly they waited 10 years to file the the re issue the timing of the re issue could have done much earlier whether immediately after the claim construction they weren't happy with it or years before and a party cannot rely on evidence that it controls who's timing and gender. And the generation it controls to say new evidence so we think there are a lot of reasons here why a party cannot use post grant re issue proceedings to broaden a patent claim that has been finally considered the question. It is an interesting honor in Anderson this court dealt again with a patent owner said oh no those post grant proceedings to read and there which is clarifying the scope of the claims and they said you know what the court said is it's not about whether it's clarifying it's a matter of the earlier claim can still the post grant claim and compare them this court has already construed the original claim instead of the 15 hundred. Arsler admits claims once is 23 in the re issue patent our broader they claim down to a thousand so everything is settled the scope of the original claim the scope of the the re issue claim it's broader the ratio of his claim and subject matter outside the original claim that the test for broadening so the ratio is clearly broadening the questions what the sanction because we believe the only claims that are not broader are new claims that were introduced as part of the strategy to broaden the claim

. And that's the fact that the district court found and it's clearly true in the record that our started to do snow leavens showing infringement of of of choose products above 1500 or 8K feel they admitted 8K It feels product was below that's an argument that's directed to the situation which is this is 2425 so a lot correct only 2424 survive at a minimum in the old my record seen some products over 1500 at least one part. So sever skull what happens is there is evidence and service was brought to be made into product about 1500 their expert had treated it as part of the litigation and done that but what they what what service all came in on some rejoice and showed it may not contradict this there was no evidence that anyone actually in the marketplace had done that. So there was no evidence of actual infringement let alone evidence that sever skull had induced anyone to do that and the court found on a 15 and again an a 17 that there was that they had not contested the fact that there were no actual accused products within the 15 on the limitation and a judgment of not infringement there what of course create the kind of finality we're talking about but it's not necessarily a reach there we but we have a situation where as a matter of law this court has determined the out of bounds. So it's a common reason to be in the original patent at 1500 the PTO was found by that legal ruling as a as the district will be as a subsequent panel of the because that the purpose of claim construction and you know they're they're going to the PTO doesn't change that. Now even if they could so we think as a matter of star decided and this court of decker case makes clear that's final they can't come and even say that clearly erroneous even if they could this is not new evidence for two reasons. The first is it's not evidence of the meaning of the original claims as the court noted in Anderson which was a broadings re-example but the test for broadings the same and both the court recognize that Anderson in that broadings a legal question you can through the original claim and the later claim. So Anderson's test makes it clear that construction of the original claim does not involve consideration of the post grant proceedings in what the claim mean one addition and that makes that's for two reasons the purpose of claims is to give public notice of what's being claimed at the time the patent issues and while they cite some cases that suggest that later proceedings may narrow claim. There's no suggestion that a party of having to broaden the claim through post grant proceedings so we just don't think it's evidence more right notice this court and this is a 700 F3rd 32 sound is both the intrinsic and the extrinsic evidence supported the 1500 and new evidence is going to change that conclusion. And finally it's not new whatever the proof is it's a reasonably discovered recently generated evidence where we're in which a party itself can generate the new evidence that it then comes in but at a minimum certainly they waited 10 years to file the the re issue the timing of the re issue could have done much earlier whether immediately after the claim construction they weren't happy with it or years before and a party cannot rely on evidence that it controls who's timing and gender. And the generation it controls to say new evidence so we think there are a lot of reasons here why a party cannot use post grant re issue proceedings to broaden a patent claim that has been finally considered the question. It is an interesting honor in Anderson this court dealt again with a patent owner said oh no those post grant proceedings to read and there which is clarifying the scope of the claims and they said you know what the court said is it's not about whether it's clarifying it's a matter of the earlier claim can still the post grant claim and compare them this court has already construed the original claim instead of the 15 hundred. Arsler admits claims once is 23 in the re issue patent our broader they claim down to a thousand so everything is settled the scope of the original claim the scope of the the re issue claim it's broader the ratio of his claim and subject matter outside the original claim that the test for broadening so the ratio is clearly broadening the questions what the sanction because we believe the only claims that are not broader are new claims that were introduced as part of the strategy to broaden the claim. The court acted properly and well within its power to invalid the re issue as opposed. There is no support in the cases or in the statute for this sanctioned notion that you've just heard so much about the statutes are very clear in particular section 253 which says the invulidity of one claim shall not render other claims invalid. The system is the one that the three is in the chapter on reissues in vector of fitness this court said it's closely related to section 251 the re issue statute so the notion that it doesn't apply here just does not make any sense. Now Mr. Sites said that he didn't hear me talk about starry decided when I was up here before there's a reason for that starry decided does not apply here this case is not final. Starry decided applies only when a case is final it does not apply here what applies here as we acknowledge is the mandate rule there are exceptions to the mandate rule and one of those exceptions applies here now as far as whether there's new evidence here. There are plenty of cases that consider subsequent proceedings as relevant to the meaning of the original delay Microsoft versus multi tech as an example now that was as Mr. Sites pointed out a negative in instance where the claim was narrow. By the subsequent proceedings but that that's a merits decision that doesn't go to whether the evidence is relevant and should be considered. The case didn't have all questions re-open a claim construction is not alive. No that's correct right that's correct and again that that's going back to what the mandate will means and whether there's an exception to it and an exception is new evidence so what I'm trying to address is whether there is in fact new evidence here in house versus medical components. The court held a consideration of reissue prosecution history was necessary to construe the relevant claim language whether the claim had issued was the original claim or the claim in the new patent in the reissue patent in in tevla sent which both parties psych are various we agree with you that this is new evidence yes

. The court acted properly and well within its power to invalid the re issue as opposed. There is no support in the cases or in the statute for this sanctioned notion that you've just heard so much about the statutes are very clear in particular section 253 which says the invulidity of one claim shall not render other claims invalid. The system is the one that the three is in the chapter on reissues in vector of fitness this court said it's closely related to section 251 the re issue statute so the notion that it doesn't apply here just does not make any sense. Now Mr. Sites said that he didn't hear me talk about starry decided when I was up here before there's a reason for that starry decided does not apply here this case is not final. Starry decided applies only when a case is final it does not apply here what applies here as we acknowledge is the mandate rule there are exceptions to the mandate rule and one of those exceptions applies here now as far as whether there's new evidence here. There are plenty of cases that consider subsequent proceedings as relevant to the meaning of the original delay Microsoft versus multi tech as an example now that was as Mr. Sites pointed out a negative in instance where the claim was narrow. By the subsequent proceedings but that that's a merits decision that doesn't go to whether the evidence is relevant and should be considered. The case didn't have all questions re-open a claim construction is not alive. No that's correct right that's correct and again that that's going back to what the mandate will means and whether there's an exception to it and an exception is new evidence so what I'm trying to address is whether there is in fact new evidence here in house versus medical components. The court held a consideration of reissue prosecution history was necessary to construe the relevant claim language whether the claim had issued was the original claim or the claim in the new patent in the reissue patent in in tevla sent which both parties psych are various we agree with you that this is new evidence yes. What Senator you would look at this records decision not to accept it and not to to change the law of the case. I think the on that decision I think it would be denobo review what because the district court was at least said she was construing the scope of the mandate and what she didn't allow for was the fact that there shouldn't even acknowledge their exceptions to the mandate. No but you agree that the mandate covers this claim construction I think yes it seems to me that what you're arguing is the district court abused its discretion and not applying an exception to the mandate. Well I don't I don't know that that I would view that as within the scope of whether the mandate will apply and so I don't think it's a discretionary decision but last I see I'm out of time I could have 10 more seconds on the place 24 and 25 the argument that they should be overturned can't be reconciled with the statute as I said it can't be reconciled with caution long or with MBO and the Supreme Court's decision engaged versus herring is right on point this court relied on it in the he will have Patrick Bouchon long case. Thank you right Mr. President thank both counsel cases.

In 1819, our floor would tell France versus the A.K. to the corporation. Mr. Trello. Thank you, Your Honor. May it please, the court. These appeals involve a reissue of a patent that this court initially considered in 2012. The district court held that some, but not all of the reissue claims were broader in scope than the original claims as this court had construed them. And on that basis, and on its own motion held that all of the reissue claims were invalid, including claims that everyone agreed were no broader than the original claims. Well, I would be fair to say that the certain client went to the PTO in an effort to get them to overrule our claim construction. No, I don't think it would be fair to say that, Your Honor. I'm going to go before the date of the appeal. Exactly. That's one reason why it certainly was not an effort to overrule this court's claim construction. And this is not about, but that's what you're saying, the PTO effectively did, right? No, not at all, Your Honor. And that I think is a misconception in the way, at least the other side, is argued the case. It's not about overruling this court's claim construction. There's no question that where litigation is finally resolved, and no longer pending, all claims have been resolved that the court's claim construction decisions have started the size of the fact and are binding. But that's not this case. This case is a pending case. This was also a minor plow or a plow or a stop, right? Or under the mandate? Well, and there are exceptions to the mandate rule. This court has recognized in a couple of recent cases. And one of those is where there is new evidence that is fundamentally inconsistent with the evidence that was presented before. Now, on the, and that I think goes to this question about overruling the court's construction. We are not saying that the PTO's construction of the very high mechanical resistance limitation overwills this court's construction. What we are saying is that it's new evidence that in a pending non-final case ought to be considered, because claim construction can still be revisited as long as the case is still pending. Well, let me ask you this. Broadling of the RA153 has not been before this court's reform. That's correct, Your Honor. So the mandate rule only binds as to those issues which are actually before the appellate court, right? It's correct. Taking that line of reasoning backwards, then it doesn't apply. Well, I believe that's correct, Your Honor. But now in, in, in candor, I will say obviously any time that there is a, an argument about broadening whether a reissue claim broadening to claim, there, there are two parts of that analysis. One is what does the reissue claim mean? What does it cover? What does the original claim mean? What did it cover? Well, then we address what's the original claim meant? Exactly. And that's why it was being candored, Your Honor. You certainly did, but again, because, and I, and I do think, I think that, well, it makes sense of what the original claim means. Well, and it's, and I think it's, it's of a piece with the mandate rule, Your Honor. And, and our point is, it's certainly true that ordinarily where this court renders a claim construction or approves the claim construction on appeal, it's law of the case, it's subject to the mandate rule for further proceedings, but there are exceptions. In banks versus United States, this court is recently recognized there. Our point is the claim construction or why an only intrinsic evidence or did we have to put extrinsic evidence to reach it? I believe that this, this court relied primarily on intrinsic evidence, but it also, the opinion did discuss extrinsic evidence. If we relied only on extrinsic evidence, well, I'm sorry, only on its extrinsic, intrinsic, intrinsic, sorry, enabled, that's not my initial syllable. If we relied only on intrinsic evidence in that first-class-length construction and thought that that was proper, why is this new evidence even relevant? Is it an extrinsic evidence? No, I don't think it is extrinsic evidence, pardon me, because what you have is a PTO construction of the identical claim, claim language. That is, normally considered intrinsic evidence, what the PTO during prosecution said about a claim. Now, certainly it had there been no prior appellate decision, and this was just coming up for the first time with the reissue claims and a broadening challenge. What the PTO had to say about the meaning of the reissue claims and the meaning of the original claims would be highly relevant. There'd be no argument that that shouldn't be considered and that shouldn't have a bearing on the court's decision. So the question is, does the fact that there was an appeal that they've hated the claim construction in part, not this part, admittedly, but in part, and send a fact for further proceedings on infringement and validity, does that somehow mean that the prior construction cannot be revisited under any circumstances? But do you have any case, if you say that there's an exception to the law of the case, is there any case that considered after generated evidence in determining whether the original decision was correct, or are they all cases in which there was additional evidence that created this kind of determination that was then made or discovered? I think the case that occurred to me in our opening brief, we cite a number of mandate law of the case decisions from other circuits, admittedly not this circuit, not claim construction. But those cases involved both pre-existing evidence that had not been discovered and who really generated evidence that came into existence only at what the Vanley's example, the case with newly generated evidence. I don't have those cases that my fingertips, not on the names that my fingertips, but I believe there was the, I think it was the nice circuit case that we discussed about whether a party was able to intervene, and there was new evidence that came into existence after the fact that allowed revisiting the prior decision. And the cases that, I'm sorry, where do you discuss that? I don't have the page of my fingertips, but it is in that section of the flow rate, if you really are supposed to. Well, I will get that for you, Your Honor. Well, you're looking. Yes, the PTO is not found by law in the case. That's correct, Your Honor. It is not, in fact, in the forsenius case, this court said PTO in re-examination proceedings is not, it's not, it's not, it's not, it's not the latterly stopped to reach a conclusion different than this court has, as long as that litigation is still pending and has not been finally resolved. It's a bad point, obviously, story, the size is fixed in to effect. Yeah, the ninth circuit case I was talking about, Your Honor, is at page 36 of the blue gree, the bany versus commission case. And in the, for example, the aptly case in the, in the eighth circuit, the court didn't discuss where the evidence had existed before or was newly discovered, but in the cases that identified new evidence as an exception to the mandate rule, they don't draw distinction between whether the evidence came into existence after where it was, or the blue is a pair to say are not able to identify a case in which the evidence was newly generated after the decision. I think thought I did, the ninth circuit case, Your Honor, I believe, what, what new evidence was generated after the decision. I would have to go back and look at the opinion to, to say specifically, but Your Honor, let me, let me make a comment about this. It is a requirement of the new evidence exception to the mandate rule that the evidence could not have been presented earlier, which clearly contemplates evidence that it, that couldn't be presented earlier because it didn't exist. And I would also, and it's admittedly not binding on this. It seems to me there's a difference between evidence that wasn't discovered or couldn't have been discovered, and evidence that you will permanently go out and generate the challenge of prior clinical trucks in our arms. I mean, if we agree with you, every time we do a clinical instruction and send it back, the party next is at, at verse two, it's going to arise as a PTO and try to get it changed. That seems to me to, to allow for a substantial distortion of the system. Well, Your Honor, I think, I think that's a fair point. But you have to, I think, consider the fact that the circumstances here are very narrow. You, you had a case go up on appeal. The court reversed the claim construction in part, affirmed it in part, sent it back for new proceedings on both infringement and validity. In the, am I not correct that the request to the PTO came before the appeal? Yes, that the request to the PTO came after the jury verdict, until after the District Court's claim construction that was at verse two. After the District Court's claim construction that was at verse two, now I think worth noting, Your Honor, that, again, that was before the appeal. And there were two District Court claim constructions that were reversed to us. The reissue by adding dependent claims really addressed both of those. And there's no question that, as to the one that this court reversed, that there was no broadening and there's nothing inappropriate about that. And so, again, I think this is a very narrow circumstance, but don't we reverse and part and affirm and part claim constructions up here all the time? You do, Your Honor. And so this could happen in almost every single claim construction appeal. Well, I don't think so because what you have here is identical claim language being considered by the PTO with an identical specification. That is very rarely going to happen. I think, and again, we're not going to be aware. I mean, if you have a claim construction that's at verse two, go back and you try to get a reissue patent that we define the claim. Well, again, Your Honor, I think first of all, there is a presumption that the PTO is doing its job properly. And you do their job properly here. And in the reissue, I believe they did. Yes, Your Honor. I want to know if they did that in the next case. They'd be doing their job properly. Well, not necessarily, Your Honor, because here you remember the specifications specifically called out the 1000 megapast-gell mechanical resistance as an object of the invention. Now, the panel disagreed with that or concluded that that didn't support our construction and the first piece. But this is not that the PTO didn't make this up out of whole cloth. And in fact, in the reissue application, the PTOs, the applicants specifically directed the PTO's attention to that portion of the specification of support for that claim. If I might very briefly, if I could talk about claims 24 and 25, those are the claims that everyone agrees were not broadened. They specifically call out 1500 megapast-gell. In fact, the defendants in their motions in the district court didn't even ask the district court to hold those claims invalid and said that those claims in fact would be left valid and at least that's abroading and could be addressed later. The district court on its own motion, there's a matter of policy, held those claims invalid. That is contrary to the statute, in which several statutes, such in 282, 288, 253, all say that each claim has to be considered independently and the validity of one claim does not affect the validity of others. It's also contrary to the decisions of this court, such as Hula Packard, in which the subclaims should not have been granted in reissue the court held, but that did not invalidate other claims. It's also contrary to the court's decision in MBO laboratories. In that case, the district court had held that certain reissue claims had been improperly broadened in violation of the recapture rule. On that basis, held all the reissue claims invalid on appeal, this court agreed that about the claims being broadened in violation of the recapture rule, but held that it was error to hold the other claims invalid on that basis and reverse that part of the decision. It's very clear that claims 24 and 25 ought to stand regardless of what the court's determines with respect to claims 1 through 23. If the court has no further questions at this time, I'll save the rest of my time for a bottle. Thank you. Mr. Sainte? Thank you, Your Honor, and I'm here on behalf of all of the defendants. Let me start with a question that this court asks, which is whether or not Arslamant Hall here went to the PTO to overall disquart claim construction. We believe the anteters clearly yes, it began with an attempt to force to overrule the district court's claim construction, and then because the re-earing was drawn to a re-issue, was drawn out past not only this court's decision in November, but it's denial of Arslamant Hall's request for re-earing on this issue. It then attempted to overall disquart the court's claim construction came after they filed the application for the hearings. It came after they filed the application, but the re-issue was not issued until after the court said, are you saying that they asked or asked the PTO to lay? No, but I'm saying that they could have at any point after this court ruled, pulled the re-issue permission and adopted a re-issue that was now or only. And instead, not only did they obtain the broader re-issue, they went into the marketplace and immediately they were after and said, now we can go down to a thousand FDA, they were enforcing broader claims. And one doctorate, but do you say on the date of your decree? Legal ruling, or filed a re-issue with the goal of obtaining broader claims? That's not true. Well, I think what we said is that I apologize, you're on a pre-war in elegance, but what we're saying is after the district court ruled and after they lost the court, then they had a legal ruling from the district court that the regime started to pass through the district court's claim construction. Well, after the district court claims construction, you're on a time here, the district court construed the claims in December 2010. The jury park was on January 14th of 2011. The re-issue application was filed in August of 2011. Arsumetal then appealed. And again, in terms of the appeal, this court announced its decision on November 30th of 2012. Arsumetal continued to pursue into re-issue. The notice of allowance in the re-issue was in February of 2013. Well, after this court's decision, the court denied Arsumetal's petition for re-hearing or re-hearing unbombed on March 20th of 2013. Among that, for that. What affirmative action did Arsumetal or K before the PTO to continue its application? I don't have the old prosecutor's ministry with me, but they accepted they put them on other things. They certainly, after this court's decision, they continued to pursue the claims to add, including claim 23, which was broad and broad. They didn't withdraw. They didn't withdraw. And then after the notice of allowance, they paid the issue. And the issue is knowing that it was broad and what this court has done. And one doctor in that you did not hear from Arsumetal or that is really critical here, we think, is simple story to cite this. This court's announced its claim construction as a matter of law. And it announces it, as the court said, the national story to cite this effect, that this court's decision on claim construction has. And this court is kept the panel having ruling as a presidential holding of the court, is a statement of the law binding of future cases before the same court or another court holding of pedean's to its decisions. When this court said as a matter of law that the original 805 patent was limited to 1500, it announced that for the whole nation. And it was binding on the PTO. It was binding on district court. It was binding on a subsequent panel, including this panel. And the OR25 consists of different R claim construction. The S24 and A25 are known for order than the original claims. However, there's two defects with S24 and 25 that's important to recognize. The first is Section 251, the reissue prohibition on broadening speaks to the reissue patent as a whole. It says no reissue patent shall be granted and largely in the scope of the claims of the original patent. And our service is witness in their group brief at page 31. They've been in Section 251 means that the PTO was permitted to issue the reissue 153 patent only in their emphasis. So in your view, if any individual claim that a reissue patent is brought up the entire patent goes down. Well, there's two categories. The court has the power, the power to invalidate a broadening ratio of its entirety, which is important as well as in order to have a remedial sanction in discouragement as this court recognized in quantum and in the quantum case, your honor, which was cited by the district court in its decision. In that case, it was a broadening reissant that now we're restoring case and model question of whether when they made a broadening plan, whether they said we anticipate the original plan, or whether we send it back to narrow the plan. And quantum case said no, no, no, you made the broadening your suffer that you can't narrow it. It didn't involve a situation where there was a separate claim for responding to the original plan. Well, it was a point you honor in that regard. That's true. Because quantum was a reissant. But what we have here is we do not have what are called carryover claims. And that's important. The council report to the HP case, which involved what are called carryover claims. Those are claims that are identical and restated in the reissue. And why shouldn't there be a difference between carryover claim with the same and a new claim in reissue that gets the claim that wanted to be responded by. Because the fact that it is not a carryover claim is inherent in the strategy here to undo this course claim construction. The reason the claims 24 and 25 are new claims. And there's no dispute about that. The written in italics in the reissue they were added. They are not identical for the original one. And the reason why it was a carryover claim is because the strategy that Arsenal told this year was to go to the patent office and say they wanted to clarify it and say, that the court of the year that they do not have carryover claims. They have new claims in the reissue that happen to be narrower. But as the court of recognized, when a party intentionally goes to the patent office to seek a broadening reissue out of time, the section where that is the reissue in valid is void. That's what the courts have said. And whether or not there be power for the court to preserve carryover claims, the court shows in this case and they have not challenged that discussion, not to reserve claims. And there are no carryover claims. These are new claims that came in with the reissue. They may be narrower. But they are new claims that came in with the reissue and it is specifically a consequence of Arsenal and Macau's desire to go into the reissue and to go into the original claims. And the district court found quite correctly that it was an intentional strategy by Arsenal and Macau to get around first it's and then after this court is admitted. And it sounds like you're saying that the district court can cancel the otherwise valid claims of the section. What the district court can do is cancel the reissue and that's what the statute provides. The statute provides that the reissue should not have granted. And the case also suggests that a broadening reissue is void. So we do believe you run. The statute suggests that a broadening reissue is void. That's part of the reissue that not broadening the law is void as well. Because the statute doesn't speak of claims there or even of the invention which is often a post-statory term. When we look at cotton coins and determine whether they're valid or not, we look at the claim by claim not as a whole. Not always, Your Honor. And interestingly, this court in the New York Packard case noted that the statute that provides for that section 253 does not appear to apply in the case of an improper reissue. And that in that case, it said specifically the section 253 that is the section that talks about going claim by claim. That says this court said that that section offers little guides because the invalidity resulting from a defective reissue application may be viewed as affecting the entire path and not merely any particular claim. And we think that's important, Your Honor, because if a party can go to the pad office. After a certain discipline pointed with a claim construction and still would happen here, injured and stupendly claims for purposes of indirectly forerunning the original claims. And then obtained new narrow work claims, there is no sanction. There is no deterrent for doing what happened here. But the consequence in the marketplace are severe. What is lost when a party does that is the very purpose of section 251, which is proposed to know when a patent is finally construed to its outer boundaries that a party cannot a patent or cannot later go and seek to expand that. And that's not only the function of section 251 in the statutory purpose, that's the very purpose in Markman by making this court the final legal arbiter of the scope of the claims. And that is entirely lost in this case. And if the only section is to strike down the parole and claims, then there is no deterrent. And that's what the court recognized in the recent context in quantum. And that's what the district court recognized below in its decision. And we believe that is right. Did you argue next to the district court? What happened here on our is the case has been divided into two parts. A non-intriguing part is in the nipple of the part and we address non-infringering. And we argue non-infringering. The court at the hearing on the motion raised the possibility of whether or not it could because of the broading invalidate the whole issue. At that point we agreed that it could your honor. But so as matter of which, that briefed again after the court issued its decision before its judgment where our court briefed the question about the question of whether the other country struck down and the court reaffirmed that the issue was a whole. And as I read the book, they have not challenged procedurally the fact that the court chose and its power to strike down the whole reissue. And we think that was correct here on earth. There is a separate basis which we've raised in our briefed for a firm entering at least the judge was non-infringement in the old five bubble case, the original case. And that's the fact that the district court found and it's clearly true in the record that our started to do snow leavens showing infringement of of of choose products above 1500 or 8K feel they admitted 8K It feels product was below that's an argument that's directed to the situation which is this is 2425 so a lot correct only 2424 survive at a minimum in the old my record seen some products over 1500 at least one part. So sever skull what happens is there is evidence and service was brought to be made into product about 1500 their expert had treated it as part of the litigation and done that but what they what what service all came in on some rejoice and showed it may not contradict this there was no evidence that anyone actually in the marketplace had done that. So there was no evidence of actual infringement let alone evidence that sever skull had induced anyone to do that and the court found on a 15 and again an a 17 that there was that they had not contested the fact that there were no actual accused products within the 15 on the limitation and a judgment of not infringement there what of course create the kind of finality we're talking about but it's not necessarily a reach there we but we have a situation where as a matter of law this court has determined the out of bounds. So it's a common reason to be in the original patent at 1500 the PTO was found by that legal ruling as a as the district will be as a subsequent panel of the because that the purpose of claim construction and you know they're they're going to the PTO doesn't change that. Now even if they could so we think as a matter of star decided and this court of decker case makes clear that's final they can't come and even say that clearly erroneous even if they could this is not new evidence for two reasons. The first is it's not evidence of the meaning of the original claims as the court noted in Anderson which was a broadings re-example but the test for broadings the same and both the court recognize that Anderson in that broadings a legal question you can through the original claim and the later claim. So Anderson's test makes it clear that construction of the original claim does not involve consideration of the post grant proceedings in what the claim mean one addition and that makes that's for two reasons the purpose of claims is to give public notice of what's being claimed at the time the patent issues and while they cite some cases that suggest that later proceedings may narrow claim. There's no suggestion that a party of having to broaden the claim through post grant proceedings so we just don't think it's evidence more right notice this court and this is a 700 F3rd 32 sound is both the intrinsic and the extrinsic evidence supported the 1500 and new evidence is going to change that conclusion. And finally it's not new whatever the proof is it's a reasonably discovered recently generated evidence where we're in which a party itself can generate the new evidence that it then comes in but at a minimum certainly they waited 10 years to file the the re issue the timing of the re issue could have done much earlier whether immediately after the claim construction they weren't happy with it or years before and a party cannot rely on evidence that it controls who's timing and gender. And the generation it controls to say new evidence so we think there are a lot of reasons here why a party cannot use post grant re issue proceedings to broaden a patent claim that has been finally considered the question. It is an interesting honor in Anderson this court dealt again with a patent owner said oh no those post grant proceedings to read and there which is clarifying the scope of the claims and they said you know what the court said is it's not about whether it's clarifying it's a matter of the earlier claim can still the post grant claim and compare them this court has already construed the original claim instead of the 15 hundred. Arsler admits claims once is 23 in the re issue patent our broader they claim down to a thousand so everything is settled the scope of the original claim the scope of the the re issue claim it's broader the ratio of his claim and subject matter outside the original claim that the test for broadening so the ratio is clearly broadening the questions what the sanction because we believe the only claims that are not broader are new claims that were introduced as part of the strategy to broaden the claim. The court acted properly and well within its power to invalid the re issue as opposed. There is no support in the cases or in the statute for this sanctioned notion that you've just heard so much about the statutes are very clear in particular section 253 which says the invulidity of one claim shall not render other claims invalid. The system is the one that the three is in the chapter on reissues in vector of fitness this court said it's closely related to section 251 the re issue statute so the notion that it doesn't apply here just does not make any sense. Now Mr. Sites said that he didn't hear me talk about starry decided when I was up here before there's a reason for that starry decided does not apply here this case is not final. Starry decided applies only when a case is final it does not apply here what applies here as we acknowledge is the mandate rule there are exceptions to the mandate rule and one of those exceptions applies here now as far as whether there's new evidence here. There are plenty of cases that consider subsequent proceedings as relevant to the meaning of the original delay Microsoft versus multi tech as an example now that was as Mr. Sites pointed out a negative in instance where the claim was narrow. By the subsequent proceedings but that that's a merits decision that doesn't go to whether the evidence is relevant and should be considered. The case didn't have all questions re-open a claim construction is not alive. No that's correct right that's correct and again that that's going back to what the mandate will means and whether there's an exception to it and an exception is new evidence so what I'm trying to address is whether there is in fact new evidence here in house versus medical components. The court held a consideration of reissue prosecution history was necessary to construe the relevant claim language whether the claim had issued was the original claim or the claim in the new patent in the reissue patent in in tevla sent which both parties psych are various we agree with you that this is new evidence yes. What Senator you would look at this records decision not to accept it and not to to change the law of the case. I think the on that decision I think it would be denobo review what because the district court was at least said she was construing the scope of the mandate and what she didn't allow for was the fact that there shouldn't even acknowledge their exceptions to the mandate. No but you agree that the mandate covers this claim construction I think yes it seems to me that what you're arguing is the district court abused its discretion and not applying an exception to the mandate. Well I don't I don't know that that I would view that as within the scope of whether the mandate will apply and so I don't think it's a discretionary decision but last I see I'm out of time I could have 10 more seconds on the place 24 and 25 the argument that they should be overturned can't be reconciled with the statute as I said it can't be reconciled with caution long or with MBO and the Supreme Court's decision engaged versus herring is right on point this court relied on it in the he will have Patrick Bouchon long case. Thank you right Mr. President thank both counsel cases