the victim in the st circuit case anderson that kept export cited however the specific reference to the words due diligence is not in any of the other circuits however all of the circuits have the same concept and that is the concept that the misconduct prevented the movement from fully and fairly presenting its case and that fairly is determined to be diligence most of the circuit site more federal practice which says that rule sixty three dollars should not be a reward to the lazy litigant who did not adequately investigate his or her case so that's where the diligence comes in and that's what the  circuit just made explicit someone in one of these proceedings not entitled to rely on testimony by the opposing party as being truthful of course it's entitled to rely but the question is whether that absolves the party from an obligation to be diligent and simply because a deponent might have a bad memory or might even make a misrepresentation that doesn't mean that the party under rule sixty three dollars has no obligation to be diligent and so you're saying trust verify well actually know your honor simply because one deponent might not know about prior art doesn't mean that the prior there and there is always an obligation for every patent litigant to propound requests for production of documents directed to prior art there is always an obligation from many circuits your honor is correct that there is no obligation because it has been done for so many years that it has been incorporated into the pattern local rules for example the past local rules of the northern district of california which have been adopted by many other districts and in the past local rules the patentee has an obligation within fourteen days of the case management conference to to disclose all documents that  for example relate to the sales or on sale activity but in districts that don't have a patent local rules the old fashioned way it is the obligation of the infringer to find out that information through traditional discovery mechanisms and one of them is interactive tori's venus presented expert testimonial evidence actually two declarations one's from a  and one from a very experienced pat litigator with over one hundred patent cases that said that you do not meet your standard of care as a patent litigator if you  asking to identify identify oneself prior art in fact the declaration from mr marino said that the law firms that he's been asked have standard in a raga tori's for patent cases and he teaches law at u c berkeley and university santa clara and that's what he teaches in his class and i believe it is true they also seem to be a different issue as to whether it is commonplace for people to do particular things doesn't mean that if they're lied to by the other side that are going to lose their right to challenge the resulting judgment because they are the done something or it's not doing something more in this case they did nothing at all they sure witnessed about it no your honor that was not the full deposition that was before fact discovery had opened and the district court for bad the parties from discovery into anything other than issue of standing so naturally the witness didn't prepare himself for issues of illiteracy for example and simply and had as recollection had been a refresh there were no requests for production of documents before that to ask him about and he did not  remember he wasn't he didn't lie and well the court the court made that contrary finding didn't it seems to me the court saying that not only was it exceedingly unlikely that he did not remember appropriate misrepresentation not intentional no he forgot he didn't didn't remember well the court said it was highly improbable that he was unaware of  both the patent activities and implausible that he did not remember the ship much that's correct and i believe that the district court was incorrect because  doesn't i believe the district court was relying on incorrect assumptions for example the court found that it was highly improbable that mr laurie didn't remember things  because i passed a note to him right as we were discussing that telling him not to mention his company go somma well it turns out that that was a fabrication by cap export and i never pass any note and in fact the invoices to h q be so the inferences made by the district court were just incorrect to let's assume let's assume that we reject that and we find that the district court found that your client lied and that party line right it was not necessary to find the misrepresentation in order to find the prior art but i think my hypothetical i'm assuming at the person is a line casey the seminal case it says the misconduct would not have been discoverable by due diligence the misconduct is the concealment of the shipments of beds it is that misconduct that had to be found by due diligence you still have to have be diligent you can't say oh there was a misrepresentation so we don't need to look and that that language that the fraud or misconduct must be discoverable by due diligence is cited in over fifty cases that's the law discourse just hit the nail on the head and asking the same question in the in years there are no cases that up hold the proposition that or sixty motion should be denied soley because the other side was not diligent anough and discovery to discover the misconduct or this court's called a lie and casey in fact had left that wide open the laws not the fact that casey set forth the proposition that diligence requires the discovery casey in of itself was a run of the mill discovery issue and that issue was the serving party served discovery two and a half weeks before the cutoff and the defendant albertson's refusal to respond to that discovery didn't constitute a fraud it just said well the discovery is late we don't have an obligation to produce and the th circuit then affirmed the district court denial of the rule sixty on those facts but stated it is significant to note that this is not a case in which it is alleged that albertsons possessed smith's employment records but falsely denied having that that's the fact pattern here are completely different from case in this instance matter the the controlling cases are more along the lines sorry i didn't hear the question your own you say couldn't have been discovered i don't think there's a finding here that it couldn't have been discovered i understand i understand as the district court pointed out  we have conducted several prior art searches and the district court noted that given the relatively unique nature of the relevant evidence that was being sought the district court analysis of prior ar specifically made mention of the fact that the prior art searches are mostly documents focused making the existence of physical products embodying these claims challenging to find it also went on and noted that the  evidence concealed by mr lowry's misrepresentation were not documents discoverable and prior art searches but in fact were concealed purchases from a malaysian furniture company and what the district court was addressing in that particular instance was the fact that while it may have been able to while this evidence may have been discoverable by other or me means those beings were so far remote from where we were at that time in the case because of the fact that during that deposition of mr lowery he testified i believe it was five or six different times that he had no recollection of the purchase of these beds he had purchased one thousand two hundred and five units of the exact same bed over three years in three different shipments and interestingly the last shipment shipped in the same year two thousand and thirteen as when his company zine is filed for the patent and  that's why the court found it disingenuous to believe that his position as president of the company he would have no knowledge of those purchases and shipments at the time of the filing of the patent and at the time he was designated as the expert in the case i think the court used the word implausible in this court cited that this morning so so from that perspective that evidence may have been out there but by just as sinus's coun said in this court acknowledged we should be able to assume the truth of the testifying witness and given the fact that that was the direction of witness suppose the witness lied by saying that a particular document didn't exist court's question that would be the deponent lied about the existence of the document but the document was in fact in our possession visa via discovery mechanism yes yes your honor then in that particular instance that's more similar to i believe it was the m b peacock case where evidence was available and there was a lack of due diligence and following up on it and assumptions were made versus having that information so so so i evidence were in the possession of the party and then the deponent thereafter lied i imagine that evidence would be used as an impeachment mechanism during the deposition and that would have triggered and or allowed  or would have initiated the response for further discovery on that topic but that in fact wasn't the case here because the st the st discovery mechanism deployed was that early deposition in the case  testifying to thirty b six with no your honor at that time he was testifying as the patent expert designated by zionists in his subsequent deposition he testified at the thirty  six i mean misspoke and i think no i apologize he was not designated thirty six he was ordered right and now that i'm correct after after the st round of hearings on the motion on the rule sixty in the district court the district court judge asked the parties to go and ascertain these videotaped depositions because the court wanted to st hand view the credibility of the various witnesses that  are i think it's important to know that if i may think you are i think it's important to note that the cases that were cited in cap ex sports brief point out the fact that in the  circuit there is an interesting body of law on the matter and starting with the andersen matter that court found that the moving party exercise due diligence simply by and machining discovery requests and i've already mentioned the cock case in the hazel atlas case but what's important to note is that the the fact that there are varying interpretations of diligence underscores the fundamental premise that the courts are given discretion to apply  flexibility approach the courts look at these matters the district courts in the th circuit's are to look at these matters on a fact based approach and given what this court has noted   and why that's important is because this court i heard earlier this morning saying that should this court credit the district court and i would advance the proposition that this court must credit the decisions of the district court because of the fact that this is an abuse of discretion standard and because of the fact that the district judge has the opportunity and in fact ordered the opportunity to gather this evidence to gather videotaped evidence and to be able to there's no further questions from the court i would see the balance of my time i don't have a question just quickly do you recall what the initial ask in this case watch in terms of damages exchanged but they were asking for damages to the korean company zionist entity that's in korea there's multiple sinuses that we've learned over the years but saying that that company had been damaged by the alleged inf thank you i'd like to talk about the judge's findings of mr laurie that he was improbable that he had no recollection of the shipments that's not really relevant he did have recollection of the shipments the question was did he have recollection of the structure of the beds and that was not part of the business that he was in and he didn't see that and he recalls that the beds had a central wooden beam that didn't fit in the headboard so that's why he didn't think that the the bed that he had purchased fell within the question of whether all the parts fit in the headboard to the to the law misrepresentation or misconduct and casey says that the rule sixty three dollars requires that the fraud not be discoverable by the diligence so the fraud or misrepresentation so in a case where there is a misrepresentation there has to be due diligence that doesn't waive it and in this case the court the district court waived the due diligence requirement because cap export engaged in no discovery whatsoever into that alleges a misrepresentation or the misconduct that was the basis for the sixty three motion but you did say that the district court made a legal error by finding that there were no we're meant to do diligence but as the as i read the district court's opinion the court did acknowledge that that there was such a requirement due diligence says that in the case of in a footnote at the end of the opinion i think it was said that that due diligence requirement might be lessened although not avoided altogether but lessened in the case of a misrepresentation where is the legal error there and i understand you say that factually that you think that the district court heard and finding that that was due diligence in this case but i'm not saying a legal or illegal error is that  court found that a lack of due diligence is acceptable in these circumstances or in this context in these circumstances being in the situation where there's misrepresentation i read the footnote we're talking about the footnote an appellate appendix twenty one i think as saying that the due diligence requirement may be lessened in the case of a misrepresentation not that is avoided altogether so that a fair assessment of what the court will say well diligence might be lessened but due diligence is a is a standard and you can't go below due diligence and the thanet of due diligence doesn't isn't lessened in certain circumstances and xena's was the only party that entered evidence of what that standard is and the standard of due diligence never falls below the standard of care and the cap ex work didn't meet the standard of care because it did nothing absolutely nothing the after fact discovery open it didn't do anything to find on sale prior art well correct me if i'm wrong that the declarations that you submitted weren't addressed if i recall correctly maybe i'm wrong about this too  sixty eight judge greater says fundamental attorney competence requires the service of such formal discovery whether a particular witness for example the president or patton owner venus might testify inaccurately in a deposition or might make deliver affirmative misrepresentations in an effort to conceal prior art the standard of care demanded of an attorney an internally to request production of documents for prior art must be made in every patent infringement case but i think you're not addressing the question i'm asking my understanding is that they're talking about basically what attorney competence requires  the attorney performances required as a practical matter rather than addressing the th circuit standard what constitutes diligence in connection with that's the lower limit of it ok that's in on as i said appendix one thousand and sixty eight paragraphs twenty nine and thirty so in this cap ex board did nothing it asked for no requests for production of documents no into rocket tori's and it didn't take thirty six deposition of venus never did the case he says that that diligence has to be before or during the proceedings so the deposition of mr lowery after the motion doesn't count and the court also relied on some supposed  the online searches database searches but even the district court recognized that those searches aren't going to find non documentary evidence like on sale prior art but yet the court says it all because of the unique nature of that prior art he wasn't requiring it but there's nothing unique about on sale prior art it comes up in every single patent case this case as patent case just struck me that this case is not a particularly big case i think the settlement if i recall was around a one million dollars do you think that due diligence is the same level is required for cases regardless of the size of the cases or is that a factor that plays into the data that is a factor it was in both mr marino's declaration and mr and judge raters declaration that goes to summary judgment of infringement for example where the amount at issue is over a one million dollars then yes you have to do the minimum steps for  discovery of every patent case and again both of the expert testimonial evidence that zenith presented state that and cap ex for didn't have any evidence about what the standard the honorable court is adjourned until tomorrow morning at ten a