address the issue of intent on their conduct first and then i'll talk about the general issues on exceptional case and i'd like to direct your direct report to specifically the appendix  quote and they were able to compare the two in detail and if you look on page of the appendix seven nine seven you will see under paragraph six point one under operation  reality can expect to find it difficult to establish subjective good faith shift sufficient to prevent a drawing of an inference of intent to see now in this case what was mr marble's explanation for failure to knew he couldn't get a patent on something that was on sale more than one year he admitted that but he didn't connect in his mind the fact that they had offered for sale more than one year before so the right side of the brain apparently wasn't talking to the left with the  problem of course is to cut to the changes in the trial judge believe exactly and the question for us then is what are we going to do are we going to say that when you have a situation in which the evidence is in the record that would provide both the fact that at some point the individual in question had the requisite knowledge and that there is materiality that approach a station that one has forgotten in effect the pertinent fact will simply not be accepted the trial judge shouldn't accept it and we won't accept it if the trial judge does i think that's essentially your submission in this case it may be over simplistic but i think that's what it comes down to it is very close with caviar that he's not saying he didn't remember what he's saying is he didn't connect it to well i think it maybe there's a shading difference there but i said we just didn't meet the clear and convincing standard so what a record is basically to do was to prove what was in mr merkel's mind back when he filed step occasion to prove that he did make that connection which is a burden this court has never posed on us the clear convincing standard does not require that so it also just from a practical standpoint it makes no sense it would destroy the duty of candor it's an affirmative duty and have somebody come in and say nuthatches case but suppose you have somebody who has elderly and has had let's say some of the problems with just hypothetically a stroke and knew perfectly well at some time about the alleged invalidating event but has simply comes in and says gosh you know i forgot all about it but when the time came to sign th would certainly you would accept i take it would new that that would be a demonstration of sufficient demonstration of non intent to deceive i hesitate to say yes but i suspect that probably that would be a factor that is somebody who equally does not intend to deceive the patent office if i can make a sufficiently persuasive case that that was a failure of memory on my part but but that ignores the fact that mr marco did testify at the hearing that he didn't recall the offer for sale in november of ninety ninety two he did recall it is his testimony is very carefully worded you you should take a look and in particular if at the  eight eleven o nine mr merkel originally testimony that he did make the connection then on cross examination i reminded him that in this deposition he said he didn't remember anything about nineteen twenty two he answer would be i have had no recollection of ever connecting the two i have no recollection of ever connected to the judge got confused by that answer i got confused by the answer and we went on to examine the following page he repeat saying as i sit here on the stand today i can't tell you whether i ever connected it one way or the other i have no recollection of doing that so when you think of the burden that we will be met in this case of showing here's a person who was involved in the sale who was involved in pap prosecution which we get we had him we had a smoking gun document that showed that he was reminded of the of the transaction just before he filed the patent application we haven't been meeting on the witness stand that he recall the transaction  missed apparently missed the argument that i knew my duty i knew the acts i did but i didn't connect my duty with the acts that i did in violation of the do or someone taking an oath to testify on the witness stand and saying well i i did connect take an oath to tell the truth will actually telling the truth mr mark will sign a declaration at that time that he filed the pact and that declaration represented to firmly that this invention was not on sale and i would submit that the reason why office requires that declaration is the put the fact that the thing is spent on sale or off for sale directly on somebodies radar screen to make them make that connection and he signed it anyway so even though he admitted he remembered it it just was not on the radar screen it wasn't simply well that's what he said that's it there were a number of factors that should grow pointed to that gave him some basis to reach that conclusion and in the role as i see him credibility based conclusions that are very very difficult for us to overturn it again the the fundamental question here is substantial evidence or is this going to be the standard but you look at each of is clear that but judge pryor said for example people mr market didn't offer the offer for sale is there any requirement in a law that somebody who knows about something have to offer it he admitted he he knew about it that has nothing to do with a thing mr mr markel the other item was nobody talked about it during the prosecution is there were wire minute law that that somebody who was has an offer still has to have an ongoing correspondence or discussions with somebody throughout the prosecution in order to show of conduct if there is no will connect he admitted he knew about it mr marple had correspondence with other individuals not one of which was involved in the offer sale so he writes he asked people in japan what they did to offer first off that bites for sale has nothing to do with the i b m or say we're involved that's like me asking you gentlemen what movie did i go to last weekend and you saying you don't know me offering that as proof that i don't i don't remember what movie i went to even though i said i do remember what movie i went to mr marvel said he remembered the event that that was his admitted testimony on the witness stand i see him leading into my rebuttal time ok so i'd like to stop  appeal judge briars decision that there was absolutely no violation by any attorney twenty eight u s c nine hundred twenty seven that's untouched here are appeal therefore this whole order about fixation with a geisha as we see it is no longer before  inexorable conduct what your honors are being told by counsel was some sort of a for a self the district judge is october twelfth two thousand and four order said there were trial issues of fact as to whether there was a note to be off for sale of the alltech to vice in this case counsel makes it sound like it's not the speed of fact it was a disputed fact which previously was nicer procedurally they want to do something that you can't do procedurally they want you to supposedly the judge should spell out further why you decided something why didn't decide something but they want to go much further than three subset of the points are the first one is your honour's are being asked to effectively ignore what happened but if you look at what he did on this night he not only heard the evidence he was an activist judge i'm just going to pick so you guys have you folks have it a half dozen these days the time activist honor he was definitely not asleep at the wheel i have to tell you counsel pointed out that he took over the questioning from the store where i one point he decided that he was the better cross examine or a mr merkel so for example if you turn to page eight one one one zero he says the court says he's taking over the examination for me because i'm going through that directly decided that i would direct examination on them as to where what would cross on that he said i think the question what he's you were considering filing what became the eight thirteen patent going back that period of time do you recall whether or not you thought you thought well i remember this thing that happened in one thousand nine hundred on think that pertained in one thousand nine hundred two or do you just have no recollection of that and this is the judge facing the witness and cross examine him in other words did you think about it every jacket or did you not think about it or do you know what you thought answer i have no memory of connecting the i b m response  investigations on the eight thirty pound notes remember affirmatively mr market went out and sent memos out saying tell me what is an offer of sale because he has been either a the inventor or co inventor on some forty five is team more or less understands this area is not a lawyer but he wanted to know whether there was an offer of sal and still to this day there's no ruling by the district judge that there's an offer of sale there's a want to be offer in this case it's not true because we've never had that trial the court went on to say this is a lie and seventeen the same page when you say i'm a little unclear in my mind whether what you mean by connecting is to i believe there's a relevance to it that is a connection between what you believe there's a connect no connection between and so what about it but i reject it and the answer comes back as i have no memory of thinking about it the idea both with terms of its relevancy for the two hour a thirteen pack the court goes on you mean whether or not it's relevant and the witness says right i have no memory of that that's one small sample i have six other examples or probably a dozen or more direct questions by this judge specifically substantively probing his memory what was going on what did you think about when c says that memo was supposedly in front of the witness it was in his file he never testified i read that memo as part of doing this and probe it heat his testimony was that mum was in my file i don't recall reading it so i don't know where this stuff is being made up from that supposedly there was one of the to be offer of sale in the district judge's order from october of two thousand and four says otherwise and when there's a statement here being said that o'connor the witness had in front of in this document this comparison document and therefore he should have disclosed that i wanted a further procedural point and this one it is this should have been more reflect in our briefs and it was there was one witness at this hearing and the hearing went on for a number of hours and heard back my memory is over three hours and mr ware is team of lawyers were there we were there as well and no time to mr ware say oh i want to call a few other witnesses what about the patent attorneys you put the patent attorneys on he did try to go further he's here complaining didn't carry his burden of clear intimacy evidence but he doesn't say you well the district judge refused to allow me to put all the witnesses on in your various cases your honor you talk about how if it's just one person versus a collection person in this case  insured clear mr marple didn't happen medication with other people about this the communications he had was to ask what was going on because he's not a salesman he's a technologist so subsequently that's the second substantive point in you you have to decide and we think it's pretty clear is this a paragon kind of case where you say the district judge could not do anything but conclude that there was a clear offer of sale and that offer should disclose the common office which happened on summary judgment or is it like your most recent more lambert case where the decision was the scientists testified that they really didn't focus on a particular drug that third party not so they didn't think it was rove and to provide to the patent office even though after the fact the district court said it was highly relevant and after taking testimony and making specific credibility determinations the district judge says i've made a decision and i think if you wind up your cases from the big picture point of view  think you're saying is when i look at the case and there's a very recent one involving barrett and dr hauser that was recently it's not not cited for decision but there's a published district court ruling where there was a having some of the same characteristics in this case does that your summary judgment is a summary judgment motion is filed on in seeking a declaration of inequitable conduct it is not enough for the respondent simply to say i didn't intend to mislead the patent office therefore let's have a trial and i think that the gist of paragon is to that effect and here in case well bryer had looked at the summary judgment pleadings and mr marcos assertion have been i did not have an intent to deceive the patent office why wouldn't it have been appropriate for judge bright to grant summary judgment six reasons starting at a j he says there's no discussion between six different co investors or at least they didn't get the witnesses up there to testify otherwise the burden was on them mr markel testified they had other witnesses they per call they the question i have is really if i as the afghan response to a motion for summary judgment in that quibble conduct respond that i just don't recall the invalidating materials enough i have to say i don't recall the cause and here's the reason i don't recall that there's there's i wasn't that much involved in it or something like that that's enough you think the best the best statement i can give you the answer question is out of your own cases the war lambert case where the statement that was made is that the investigation is very much a pin textual investigation you have to look at everything that's going on at the time remember this kind of patients filed in january of ninety three the critical data's january of ninety two counsel wants to go back not to the august ninety ninety two that's not invalidate you want to go back to the april nineteenth ninety we're talking by the time of the application nearly three years passed from when i first issued a request for proposal which this witness testifying to see the artist my transcript there's hundreds of these things that come in all the time companies are coming in saying well you build something for us and i b m just was one of them it didn't result in a sale so contractually you look at these other facts it didn't result in any negotiation that this witness went to or that he testified about because there was no one there was no actual transaction documents created between i b m and there was not actually a negotiate deal was sort of like so if the court said we want to better audiotaping system then what we have and you send out requests for proposals twenty vendors and one of them responds and maybe a box of them respond and no one gets a contract or somebody else gets the contract is that something that's going to bear on your mind is that something that's when to be a burning decision he did show his good faith by going out in fact there are several memos asking people in the business office at all tech when is it that we made any quotations what's what's out there tell me what's going on and the judge credit that it is decision it was an important point and i think the highlight of when the judge credit  by counsel but i have to tell you that this judge and i'm obviously not reading all the passages this judge was asking specific questions as this hearing went on very actively asking questions and at one point he just looked at the witness it was about two thirds into it and he said you know i just i just have to ask you so what is it that finally it dawned on you that there was this stuff going on between i b m and all to attack what is it that occurred he said frankly it occurred when mr ware took my deposition at the point that he took my deposition he showed me some stuff which i had not seen i had not seen i had not remembered i had not even given to the trial lawyers i could tell you we didn't have it the judge certainly agree with our representation that i make that same representation of the court we did have it they said you know frankly at that point the light bulb went off that oh oh they have some stuff from i b m but even then i didn't necessarily view it as roll into the patent as we interpret are so i would just repeat your honor this is a case where i think they're asking you to wipe out more lambert you would have to in effect say that recent case from two thousand and five that says you can text will exercise and i think you have to also wipe out effectively what was done really in all the cases where district judges make credibility determinations which is you're not sitting there your church meant might have been different as it did strick judge maybe if you sent this case out to one hundred district judges maybe fifty  whether or not a case is exceptional that's the power that congress has bess's dishy judge and once credibility instant decisions are made about what happened the patent office what happened with the particular application what happened in the litigation certainly the judge went have about three minutes attorneys fees has nothing to do with the motion against the tourism selves but this case has to stand out i just can't see how it does not there were five iterations of claim construction in this case each a new one and then a new one and then a new one five times this court has held pappy's to it pretty soon obligated to make a priest an investigation for someone to come in and make one claim construction the beginning of the case but then change it five times tells you something and that changes all began upon the discovery of their prior art off for sale so they started making these narrow claim constructions the minute they knew that we got that evidence of their prior art for sale in order to beat their own prior art that's exactly what happened in this case the prior art which the judge found they concealed from discovery that prior off for sale was concealed from discovery which this court has also found be sufficient fine exceptional case in other cases if this case involved nine discovery motions in the end what i think is incredible so the judge said well he wasn't involved in the discovery process is my client supposed to be faulted because the system set up so a match or a judge decides discovery conflicts and the and then the district court judge could just wave his hand say well i wasn't involved so i can't really get into that nine discovery motions to compel basic things that any court would financial documents from the plaintiff asking for damages we had to move to compel that we had to move to compel their contention contention discovery that they objected to on the grounds of work product we had to file a motion on that we had to file a protective order on it eighty three category rule thirty six deposition notice they did which withdraw all one category in the meeting of council we had a problem with them that they noticed discovery on products they withdrew and then even after the court said they're not entitle to discovery on that they noticed more discovery out off right after that and we had found motions on that the court were to produce documents and what they did after being ordered produce and they put them in a storage room buried within one hundred boxes and counsel stood in front of boxes and we asked where are the documents the court ordered to sit in there so we had to file a motion to to compel them to actually identify the documents in order to produce that it is it is remarkable i i you know i've i've heard you ten days bar meetings and i know in the past a judge on these used to call these things rambo tactics and you go to these bar meetings and courts say well they do have cases are particularly contentious there's something wrong with what's going on in the hat are you hear that all the time judge barber said that in this case that penn cases tend to be particularly contentious but if this case with that conduct is the standard in pattern cases then not