of another bt had to do the design around these two patents was to remove these two gene modifications when it did so and the motor agreed the g b t no longer in fr ignored that testimony that i just mentioned and didn't even mention it in its decision instead what he did is just what you pointed out judge worried he in effect turned the best moat requirement into a strict liability test he leapt and he said is there any prefer any preference that the inventors have that relates to any word in these claims and his rule was if there is a preference that the inventor has that he perceives scope of the best mode inquiry the legal standard to be applied is a legal question and that is what we're challenging what he did it was as the claims became narrower as the claim moved from a claim to th gene modification to a bacterium transformed with a gene modification and finally to using that bacterium with the gene modification to produce lies the claims became narrower js you know the disclosure obligation became much much broader in his view as we limit the claims we have to disclose more and a fundamental error that he made in applying the best mode was saying that this patent claim has to do encompasses the overall production of licensing and thus we require the inventor is to disclose anything that he perceived to be a preference  strain is is an integral part of the method it's not you need to have a heart strain no question about that the question is what did these inventors claim to be the accumulating at but it does sound like you're you're asking us to define it in the best mode as having some sort of an inventive step or an inventive component aspect rather than the best mode of the claimed invention as a whole no i think the two are the same the invention that you know this is not infringement analysis it's not a doctrine of equivalence where every single word has to be parsed and if any any word is not covered by the alleged infringing product it's not an infringement here the best mode and this court's cases including that the road the term clip in that case was clearly a bat and that was was a term and what the telephone next court held was yes it is in the clay but there are no claims made with respect to what that clip is what it looks like what it's hardness is what its thickness is and in the end you found that the specifications but those were characteristics that were specified by the customers and really affect the invention but here this is a little different this is not there's actually no evidence and no there was no finding by the a o l j that the host strain demonstrate that if you get introduced these genetic modifications into any host it has the effect of making it better at producing lycee and that was the invention that it was using specific genetic modifications to make the production of lysine by microorganisms better otherwise and what they did here was effectively to require the disclosure to be a treatise on the production of was be based on price and availability in a given location the absence of a production detail then g didn't discuss that at all secondly he did discuss the other uncontroverted piece of evidence which was the that the use of sucrose and sucrose utilization genes were known to a person of ordinary skill in the art at the time g b t's own witness agreed with that and the a l j specifically said under motors right about that but it doesn't matter and the reason it doesn't matter is because he was applying the strict liability test he said i find the inventor had a preference for sucrose the patent doesn't say he had a preference for sucrose therefore it's a best mode violation  and there's no finding that it does the most that the a l j ever said it was he said the evidence suggests that the production of lies in would be greater with  wasn't i'm sorry i wasn't that that is was way well we don't believe that it was waived your honor because that's just an application of a law that wasn't of an affirmative defense it wasn't something we have the burden of proof on extent that it meets the requirements of section one twelve and this court's cases including probably most recently bear but other cases that we cite in our brief stand for the proposition that what happened  invalid because there is intervening prior art that was not in this case so the only legal consequence of the ale jase finding with respect to the one six zero patent is that moto cannot rely on that for of greater broader claim scope because it can then bring this action the disclosure requirement does not impose an undue burden on the patentee because the patent addressed the claims which set the boundaries of the best mode disclosure requirement the claims are interpreted the ordinary principles of clean construction including the principle that no claim of mutations are ignored ensuring the claims in addition to being a clean limitation the microorganism is an integral part of the process and i would refer the court if i may g had three independent grounds or bases for finding a best mode violation the first one which i've been talking about is the still you are to disclose the host during a microorganism when talking about a six questions as to the one sixty patent the l j issue graham rules requiring the parties to set forth any pre hearing statement their contentions and are now gets to a pretrial order the district judge me issue these rules on that trial judge to manage a case by requiring the parties to set forth contentions for discovery and trial based section where the intent was based upon the submission of fictitious data and the materiality for that an acquittal conduct finding was based upon that the  first i would submit it is courtney not reach the internet or conduct issue if it agrees with the best mode violation as to the pattern of non disclosure the able gene looked at the fact that he hadn't mis claim asserted so as a matter of law the effect would not change the the outcome of violation of section three three seven this court could of course reach it that want to look at the personal respect to intent and correct challenge except for the challenge to whether there was a best mode disclosure or non disclosure you mentioned at the beginning of your argument that the  lot of the cases where the ins are very much at the margins here what happened was the preferred embodiment of two patents was not disclosed the material that was not disclosed was expressly claimed the material that wasn't disclosed was important to the basic purpose of the claim which was to produce lysine the ael j found that the omitted material was material that the skilled artisan would not know about and in fact with regard to  held that material back and then obtained a patent on it years later which it now enjoys you know a long patent term on as a benefit of its non disclosure and i'd like to go back to some of these issues of inequitable conduct that were raised just at the very end of the conversation with mr worth because i think that it's important both for the best mode and for the inequitable kunda issues here that it be kept in mind that the l j made an express finding that fictional data was placed in these patent applications and published and that there was an intent to deceive and it's correct that that intent to deceive is not challenge here on this appeal that was a factual finding that was made it's past us now and it's really not something that is up for grabs in this appeal so just sort of stepping back for a moment the i t also part of the claims that are an issue in addition to moto put huge effort into trying to figure out what the optimal carbon source would be the essential part of the liquid medium that is also decided  claim three of the six ninety eight patent and that wasn't disclosed either  moto has talked a little bit about the scope of these claims and how they differ mr malkin characterize the claims as you go from the early ones in the patent to the later ones as getting  narrower but in fact in a way it's really only the fact that they invoked these production claims that permitted them to even in both the jurisdiction of the i t c all of my clients activities occurred in china and so claims to a gene a mutant gene or even a microorganism are nothing that they could complain about because they all occurred extraterritorial e the reason why we are here now is because as you know moto chose to enforce claims to produce lice and gives you a different scope it gives you the ability to engage in this industrial process for the production of lysine so i'm in no way suggesting that there's anything improper about that but i am saying that the claim scope is  important here because it is the scope the production of lysine that even allows this to be a case that is in the united states so we're not talking about a claim here to a particular mutation this is a claim that recites mutations it recites a micro organism it recites a liquid medium and it is designed for the production of lysine so i'd like to respond  also to some of the things that have been said about that the suggestion somehow that these aspects of the claim were not novel and not important first of all that's not the law as mr wirth pointed out you know the novelty of a claim is the claim is all but i really think that the motos argument is premised on the notion that if you claim something very broadly with very few specifics and that such as a microorganism that you don't have to really disclose anything and that you're best known for that so the argument as i understand it from mr malkin is that the narrower the claim element that's what you have to disclose the best mode of but if you claim something very broadly you don't and i think that that's exactly the opposite of what the best mode requirement is designed for under the cases of this court because it's where you have a broad array of potential  important to disclose that which is the best and if you look in our brief you'll see that the difference in the amount of lace in the could be produced depending on the particular microorganism that was used was enormous that these things that were withheld had tremendous significance or are you referring to the deposit which microorganisms you posited when you talk about with when i was talking about withholding your honor i was referring to all the different things that have been withheld here particularly of the microorganism with regard to the one sixty patent there's no question that there was no deposit of the preferred microorganism as to the six ninety eight patent the microorganism that was deposited was not the one that the inventors preferred and that it wasn't even the one that the inventors used that microorganism was never used for anything other than derivation of others and to deposit presumably to cover the tracks of the fact that they had referred microorganism that was not disclosed along with the nondisclosure of the sucrose that was the preferred medium for that particular microorganism  if you look at claim sorry i'm column ten of the six ninety eight had and you'll see that there is a disclosure about what the medium was that was used and it is listed as being a glucose medium when in fact it was  it does raise the question of how much needs should be included in the basic patent and then when you do come up with an improvement or decide that your improvement should be separately  for a moment because the i t c found in the exercise of its discretion based on its own ground rules that this issue is clear so it's not an issue of appellate labor it's an issue of the i t c enforcing its own rules and as i understand it the argument from the moto side boils down to the notion that if you don't bear the burden of proof on something you don't have to disclose what your contentions are and that just runs contrary to the whole concept of local rules of courts being able to enforce disclosure requirements and it's very very unfair to people who are trying cases not to know what they're up against finally i just wanted to say on that that in so far as there is any concern about the justice of applying the waiver here if you look at the difference between the original japanese patent application and the p c t s allocation you will see that there is no new disclosure of a better strain they made further disclosure using the exist strains that they had talked about before and that they never really used and then they disclosed another strain that was actually worse but they never disclosed a strain that was preferred at any time thank you question claim here really reads a method of producing lysine comprising taking a microorganism cultivating it in a liquid medium lising and collecting it they have written written the genetic mutations that were the essence of the invention completely out of the patent it's got and what was left was a requirement to disclose everything that the inventors in the a r g s mind had a preference for related to lies in production this is fundamentally the same error that the district court made to the christians in case that it read the patent claim of five of the nine patents in christians and claimed a firearm as part of their claims and what the court said there was a firearm is the thing in which the invention goes just like disclose everything that knew about ho strains which one strain happen to be best at that moment in the ale jase perception and one of the reasons a priority should make sense is this eighty seven the strain dr was throwing away presumably since nobody called for a deposit it would have been just putting it either some data or the name a seventy because you didn't disclose the worth of the strain your patent claim is invalid and had to disclose that worthless stream it would be valid  to paraphrase the christians and for the law is not so foolish there was never any debate that the only aspect of these claims that was not in the prior that was at all inventive was a specific genetic modifications and with the a l j did by applying his strict liability rules saying if you've got a preference you've got to disclose it without regard to that tension was he invalidated the patents for failure to disclose what everybody agreed was in the prior art and obvious the use of microorganisms any micro organism that's what the one six zero specification says and that's what these patents were designed to do was to show a way to make any eco lie better at producing lysine by making two very specific genetic modifications broader you know it got narrower as it went from just the gene down to this method claim that they just possessed that gene here in the united states or anywhere else it wouldn't be an infringement of this had to use it in a method if they used a method that didn't require a liquid medium no infringement even if they used the gene that sound era that claim was what the a l j did here was to turn it into a strict liability test in effect a game of gotcha where with the broad discovery allowed in american litigation and zealous defense counsel you parse through all of the lab notebooks and research reports and find anything that you can say the inventors had a preference for that relates to any word in a claim that you can pull out and look at in isolation and then if that