patent infringement case as this panel knows the critical issue in the case was that there were two the claims terms required a first and second dope semiconductor region so i didn't omitted one of those and the question was whether or not there was infringement by equivalence that's that's an interesting point mr cook and equivalence claim is a cause legitimate claim i'm representing the prevailing party that might be a question for i mean we say it is evidence of bad faith no question about it they the critical fact was at the very version and i found that that wasn't any good it was to walk down by brooks furniture well i would argue we are not how would you argue that because books furniture was a cases are listed on page forty five of our opening brief they are cases that said that in order to get attorney fees under two eighty five you looked at all the circumstances and would make an award based on  the equities if there was just not so as your primary argument that the trial court aired interviews that discretion in denying your two eighty five fees under eating pork furniture or is your primary argument that we really need to have a more flexible view under two eighty five and this court ought to rethink whether brooks feared furniture ought to be the state or both those are alternate arguments the court under brooks furniture court and have relied on the intervening p r e i mean i know you argue that p r is shouldn't have been adapted for use in under two eighty five but the but at least there is the argument that there was an intervening supreme court cas well yes there was an intervening law but that did not require it was a whole different issue that did not require adoption of the don't forget the p r he was a question of what test do you question of whether there it would be unjust to deny attorney fees it's within the framework of the patent statute antitrust laws a whole different issue i guess is the difference just bad faith is that what the differences between case will that where does bad faith come into that why is that part of the requirement do you think i know you don't think but i'm asking you to respond to live where bad faith comes from and how it can be part of a statute that doesn't mention bad faith well apparently the court was influenced and  case i'm trying to understand what standard you're arguing for are you saying there should be some kind of a sliding scale so that even if something's not objective lay basis if it's a weak merits case and you've got some bad faith that somehow it could still be an exceptional case if it's a case that no reed rational person would have relied upon and expected success that would be the standard that we would argue the why wouldn't that make it objective the supreme court objective perceptions and internals in terms of the actual results though in those cases those cases that that you cite l tec and others in those cases though didn't the courts actually even though they ok so you what as to your first argument as i understand in your response a judge jury said that you're saying that we should look behind any effort that that was made to to contact counsel or to have conversations with counsel and and just like you would in a willfulness we're supposed to look at those underlying opinions and determine whether those had any merit i i think those underlying opinions would have had to be defense to have been applied by the district court she would have had to find that it was reasonably relied on and they could not have reasonably relied upon it because of the substantial size difference the opinion didn't take standard but i think their position in court can be judged by the same standards whether it was well framed or whether they had no expected reasonable expectation of success i just don't see how the mere existence of opinions whether they were good or bad or indifferent should control what's more in this case the opinions themselves were omitted any reference of the substantial size difference and we find that to be a critical difference here it's inconceivable that a firm like morrison foerster if they had known of the size difference wouldn't not have mentioned it they had a detailed infringement infringement opinion detailed discussion of infringement by equivalence no mention of size difference they did correctly recite the role of insubstantial that infringement by equivalence requires an insubstantial difference they address negative facts they addressed the president the reference s d i in the patent specification they didn't mention this that's a telling omission it's also inconceivable that killer pass would not have told them if it would have negligen surprising it was also something that they could use in marketing it was the fact that they they could say we invented it first we were there first and and there is larger than ours i mean these are important things then you would doctrine of equivalence there's an engineer luan or something the says the same i mean there seems to be a an amount of evidence here saying that there's likely infringement well as as i said morrison foerster they didn't have the the information they couldn't have had the information and if they did and left it out then i would say it was a cosmetic specious didn't tell him because they they didn't think they would take the case if they if they told him i think they had already consulted with shining the patent attorney he the patent attorney he knew that an insubstantial difference would defeat equivalents he never told them that there was in friendship by equivalents the only favorable opinion it gave him was when he believed that there might be two fusions once he found that there was only one he never gave any favors bias from that point on and in fact he said he didn't he thought they designed the product to avoid infringement or at least make our case tougher one of the problems i have with your overall picture here is that you're arguing that the district court should have very broad discretion in a tally of the circumstances toward two eighty five fees but when i looked at the discretion that she seemed to exercise and admittedly the opinion was very short but it seemed to be that the district court felt that a pox on both your houses i mean she seemed to say that both sides had engaged in litigation misconduct and that as a result it sort of washed each other out and so that nobody was entitled to sanctions or fees because of that isn't that exactly the kind of flexibility you want to give the district well there are two lawsuits and you know there were competing business tort claims that were like the tail that wags the dog and she didn't like the way that either side handled that particular case but the patent freshman case was ninety percent of the case so are you arguing that we have to excise out any conduct that related to those aspects of the case for purposes of assessing to eighty five she never said there was any misconduct or anything approaching patent infringement case as far as right but she did say it it means that's as far as the business tort claims go both sides in this action were sufficiently disingenuous and obdurate that the court was acquired to expend considerable judicial preparation for a jury trial that both sides knew would never occur she described the overall litigation as discouraging so you are you saying that that might be relevant to sanctions for the tort claims case but that we have to excise in determining that it had a reasonable case under the doctrine of equivalence the only substantive argument that has been presented to the contrary is that the morrison and forrester opinion did not explicitly describe the size difference between the accused product and the product that was described in the patent specific question we just really meant though at least for purposes of telling the district court to separate out her problems with the business toward conduct from the actual to eighty five analysis it is clear your honor that the court was distressed by the parties conduct with respect to business torts but i don't think the opinion suggests that her distress and there she indicated that this was a case that had been over litigated she referred to the docket in its entirety in explaining her assessment that this was not a case in which these are sanctions were appropriate as against either side what about two years c e o bragging that he will take out so i dense and then there's an e mail or something that discusses gamesmanship and some statements that are kind of on the borderline or so i don't think you will pass our competitor yes in this area clear he was brought in to turn the company around there is a presentation in which he notes the patents appear to be strong in the end all of the little power point this says look outside in syria we come well it says two things your honor it says the patents appear to be strong in his analysis and it says that in order for kilo pass to have a viable business it's going to need to have this market space to itself which and it has patents covering that and the assertion k respectfully your honor we don't believe this is a case where it is necessary to obtain further guidance from the district court as to what she believes the appropriate remedy here to be  not saying we can decide objective because i think the court could make that determination i don't think the court needs to make that determination i think the record aptly supports the district court determination that this was not a case in which fees were appropriate and i want to know if that or if it's kind of following on this line if we follow our law which requires of course to apply the earliest determination of what our last two eighty five is there wouldn't be any subjective objective dichotomy into eighty five with their we'd be applying l tech in the line of five or six other cases that don't make that distinction i understand your honour's observation and i would note first i don't think there is any reason to believe the result in this case would have been any different under any standard that reasonably totality of the circumstances test there's ample reason in this record to believe that kilo pass acted reasonably and making the determination that this was a case that could be brought this is the record in this case is unusual because it results from a finding of privilege waiver with respect to all of the various legal analysis that was conducted but but but part of the problem is you're asking us to peruse the record and figure that out under under two eighty five this is initially an inquiry that that lies with the district court and i have the greatest respect for judge alston but the entirety of her opinion was one paragraph one paragraph and and doesn't discuss at all any of the things that we're talking about here she simply just says there's not enough to show that they acted in bad faith there's no objective analysis there's no comparison of how that might be indicative of bad faith that it produces is objectively meritless and then that how that weighs in the in the subjective component none of that's in there i agree your honor it's a very short opinion but she does reference the fact that to love has obtained advice from two different law firms prior to making the decision to institute this action and the advice that that company received from morrison and forrester is particularly significant only argument to undermine the morrison and forester opinion is that they speculate that morrison had not been told that there was a difference in cell size to observations about that first nothing in the patent suggests or ties cell size to anything having to do with the use of a doped semiconductor region it's true that the patent provided for a smaller cell sides it did so because it was used only two lines and was there they spent a lot of time investigating whether they did have a basis from the beginning or from early on kill a pass appreciated that side and had tried to design around its patents and its undisputed that side patents and endeavored to design around them and the question was whether that effort had been successful they identified early on the substitution of an s t i region for the semiconductor region and the question was whether that and i would not say your honor they spent five years trying to come up with a theory i would say they spent a long time being sure that that was a viable theory and part of that work was the engineers and else as part of that work was getting  probably well i would suggest you're on our actions the goal of the system is not simply to file a lawsuit promptly without regard to its merits but instead to be sure that that case has merit from the inception and that's what they did they reverse engineer the chip to be sure that their assumptions about what science has done were correct and they engaged morrison and forrester to give them an opinion now i want to i want to know one thing about the morton forester opinion that's important so i did speculates that killer pass withheld information from morrison and foerster so that the opinion would be a sham that makes no sense this was not an opinion that was intended to be disclosed this opinion only came to light because there was an inadvertent production and then a finding of privilege waiver so it makes no sense that they would have retained morrison forrester and spent money on that analysis unless they were in good faith intending to rely on it why wouldn't that the trial court that have really had to to conduct a hearing in this matter i mean you're asking us your briefs essentially ask us to make credibility findings about what the path really intended or what they disclosed or didn't disclose and yet there was no hearing there was there was no trier of fact making those and i'm not your honor asking this court to make credibility findings and i'm asking this court to defer to the district court's judgment with respect to what was appropriate in this case the district court clearly concluded she didn't need to have a hearing in order to decide these issues the parties had been litigating this case in front of her for a long time she had presided over claims construction and over multiple multiple rounds of motions and it had an ability to evaluate the merits of the case as well as evaluate this purported distinction that science was drawing with respect to cell size which again had nothing to do with the claims it was due to most or to stop after eight days so the original estimate from zero four was that it would take them thirty to thirty five hours and it would cost twenty thousand dollars to do this work they ultimately spent considerably more hours than that and proffered a bill that was for thirty some thousand dollars in excess of the estimate nothing suggests their analysis at that point in time was incomplete they provided clean charts they didn't say we haven't yet completed our analysis or would that be indicative of the fact that they were unable to find anything on which you could rely no your honor the claim charts provide a detailed assessment of the doctrine of equivalence and find that there was a reasonable basis for concluding that the use of s t i served as a channel stop and that that was the function of the dope semiconductor region that doctrine of equivalence analysis is set forth in the claim charts is detailed which and there's that doesn't mean that they were preliminary then couldn't sense they couldn't be relied on they were not necessarily complete such that you would serve them in the litigation more than for us or had not been retained as litigation counsel but there's nothing that suggests that the analysis that was done was incomplete with respect to the client's ability to rely on it for the purpose for which it was being provided which was to make a decision about whether there was a basis for bringing suit we haven't discussed the elephant in the room supreme court is granted certain octane or set affect us your honor i suggest the answer is that it does not there's nothing here to suggest that coup district court would have reached a different result under a different legal standard this is not a case where that brings us back to what judge o'malley said we we have no basis on which to make that conclusion we have one paragraph if there are is a question as to what standards been applied and whether that standard is even the law and we need to go back not unless it is the court judgment that in every section two eighty five case must be held in abeyance pending supreme court review and i would suggest that's not an efficient result judge just a little leery of the conclusion that  the proper standard is the first one l tech etc and we're not confident that's been applied i would suggest the record the factual record in this case support the proposition that fees would not be warranted under either standard this was really not a close case i would suggest with respect to a request for fees given precisely the amount of time t pass spent determining whether a law suit was viable and the fact that it received outside legal advice and did its own analysis this is very different from the kinds of cases in which these previously had been awarded where there really was not the demonstration of a serious effort to determine whether this was in fact a meritorious position and i would suggest the question whether s t i was in fact equivalent to a don't semiconductor region was at worst for my client a close question the district court ultimately concluded that it was not in part because it would result in a larger cell size although nothing in the patent as i said tied the use of adult semiconductor region versus s d i specifically to the benefit of the invention which was a smaller size for a completely different reasons having to do with the two lines versus three or dreamed up the length of time actually works in your favor showing the care which the issue was investigated rather than indicating the difficulty you're putting together a claim that's absolutely right i mean the chronology here is that at the beginning when this issue surfaces concerns or questions are raised about what the implication of this is and whether there is a doctrine of equivalence case that i would note there the prosecution attorney does not say there is no infringement he says i don't think there is literal and frenchmen and so the question immediately is presented as to whether there is a good faith basis for a doctrine of equivalence case there's an enormous amount of work that goes into that inquiry they receive an opinion of counsel that on its face says there is a basis for it the only attack on that opinion of counsel is speculation that information was withheld but it makes no sense that you would withhold information from counsel your king to render an opinion that you intend to keep privileged and not disclose and the more logical implication is that no one thought that cell size made any difference to the analysis which makes sense because the function of the d semiconductor region was not to provide for a smaller cell size it was to delineate the channel you asserted literal infringement right there was an assertion of literal infringement and i think had the case only an argument that was put forward that there would be literal and frenchmen because the deposition would create a second doped region literally and then there was an assertion on the record i think there is no question and the morrison and forrester opinion says we think there is at least a case under the doctrine of equivalence but they never said literal so you did assert a claim that three different law firms that you should know sir well i would suggest your honor i don't think the two different law firm said you should not assert it i don't think morrison and forrester address coolly came up with a fury for literal and french mint now i think if that had been the only basis for the claim we would be having a very different conversation but there's no suggestion that the assertion of literal  addition to the doctrine of equivalence case made any difference in terms of the conduct of the litigation but it how can that be true it's going to multiply their discovery obligations and they're there it's just going to multiply the expense that they have to go to if you have to defend two three four five claims it's different than one is it it was the same claim your honor i mean i think if if if additional claims that raised genuinely different issues had been in dispute i would understand the basis for that concern but here there is a claim that is being asserted it is being asserted to cover the same instrumentality the question is whether the s t i the device that has one dot semiconductor region and one as t i region in french is this claim there's no reason to think that coming forward with a literal infringement argument in addition to a doctrine of equivalence argument is going to affect the scope of discovery at all think isn't perkins telling you that you need to go to re exam so you can make a literal perkins that's the isn't that multiplying the potential for proceedings in expense well perkins original originally said if we want to make out a literal infringement case we would first need to go through a reissue proceeding and get claims issued that's not what they decided to do they decided to proceed on a doctrine of equivalence theory first and foremost in lieu of going back to the patent office and i would suggest your honor that was a reasonable decision based on the strength of that doctrine of acquittal its case i don't think there is support in the case law for the proposition that adding in a literal in french meant clean to in another itself would suffice for a conclusion that the claim was brought in by that is where that i mean alone that would be a rule levon violation would it not and well i if the end end there and mark text says that rule level violations can can be a basis for up to eighty five the problem you have with that is you're saying all right we can shop as much as we want and so we finally get an opinion that says ok there's some viable theory and then we can assert anything we want even ones we know are not viable so let's change the whole status when you're the district court judge and you get a case that says there's little of frenchmen and feel we that's very different than a case that when it first walks and you say you know we an violation to have brought the literal infringement case because as i said they did have a theory for literal and frenchman's with respect to the deposition i agree that they did not have the benefit of an opinion from morrison and forrester supporting that  which is why i said had that been the only issue that were presented i think we would be having a different conversation but where you are bringing a deal we case and this was this is not a can in this case was litigated first and foremost is a doct equivalence case that was the issue the expert reports are focused on that's the issue that was ultimately presented at summary judgment there's no showing that having for a period of time a sort of literal in french meant to actually made any difference in the conduct of this litigation and i would say yes to rule eleven if this truly were rule of in violation a rule eleven violation makes a difference but where you're asserting a claim where it so will the leaven violation to pursue that claim i think that's very different from saying that you're going to parse every single assertion that it's made and start awarding fees in either direction based on whether you win or lose on those particular individual that at least be evidence that was indicative of bad faith that the trial court should have taken into consideration so there's no way that the trial court presided over this case and was certainly aware of the parties allegations and what happened to them so there's no reason to think the trial court did not take that into consideration what i think the trial court ultimately concluded is that this is the evidence in this case show that this is a case where the client spent a lot of time looked hard at the question interrogated it from all angles and got outside legal advice confirming that it had a basis to file suit and that in the district courts discretion that made this a case in which these were not warranted and that's a judgment to which i think this court should appropriately defer as i said under any and under any rational  standard that might be applied in this case where you have well respected outside opinion counsel you do it and tear down of the actual product to figure out how it works your own c t o provides engineering advice and also comes up with claim charts and there's a robust sort of discussion back and forth about the merits of the case this is not a situation where there's record that simply says we're going to file a lawsuit without interrogating the merits and i think that is the situation that to eighty five was designed to address where there is not care and thought that goes into the decision to file suit and the decision is made without regard to the merits here i don't think the court could conclude under any standard that this is a case where there was not a careful and thoughtful evaluation of the merits before filing  as a matter of kind of policy wouldn't we prefer the broader deltec exceptional circumstances the the court's original doctrine because it gives the district judge the broadest latitude to decide whether fees are warranted and they're the ones who sit through the whole trial and know whether literal infringement was justified or whatever else we've been talking about here i would agree with you on that with one cab and that is that on the objective baseless news standard itself i think this court should maintain some so i write a review that's going on like that but the court didn't make any objective basis that's correct and went off on the bad faith and it is a two pronged analysis i mean if you really have to have both and why couldn't the court have simply looked at the second line  said regardless of what the first one is i don't find that yes certainly there's there's i mean if it's a two pronged approach then obviously you find one prong is missing then that would be a correct decision i don't disagree with and you don't think that that one prong is informative of the other well that you make a good point yes i actually do though i think that the if it's objective  right i think it should've yes for sure yes but where's the discretion lie with them or with us know maybe i make a i think the discretion i i'm still hung up on the fact that i believe that this court should maintain some control over objective basis and i think that's an important decision something this court well within this court's expertise is beyond the expertise of district courts in many instances the district court sits there and hears the case you think we are better equipped to decide what's  baseless you're making a good point and i have along with my colleague bennett district judge and many patent cases since i can tell you i know more about the cases i try than those i hear on appeal in every instance let me use an example to explain what i think my my view on this is in this particular case the objective baseless in y it's a theory of lawyers and lawyers always make up their ears but there was no factual support whatsoever there was no mention of channel stop in the patent specification no technical  expert supported that theory professor niekerk killer passes technical expert actually refused to support it and eventually repudiated his deposition because he said whether or not electrical current flows in use in that region is irrelevant to the to the finding thank you mr cook i think your time's expired thank you your honest our next