of a made one two thousand and three consulting agreement between a doctor list all inventions original works of authorship developments in improvements and trade secrets which were made by the consultant prior to the date of this agreement and the pres that confirms that the ordinary meaning of the word made is physically constructed and with what the record reflects is that dr of the time prior to may first of two thousand and three and subsequent to that mr fell and others work doc took that concept took that solution that dr low time had provided and they were the ones who were involved in reducing that to practice and creating our time is limited short what if we think that what happened in august and in terms of april comes with then ninety seven should have the student and he did not ok in your view with the consequences of that going on here that this guy dr go time is trying to hold back to work that he's been doing for us and is declaring it as his own work his own and he has his own rights to it and and the best we're going to get is a realty free non exclusive vices as a rational person don't you think that's how andrew score would have reacted well i don't i mean it's hard it's hard to speculate don't know well the reason i'm hesitating is only because there weren't a lot it is bizarre i grant you that it is bizarre to just sort of have the situation where everybody knows what was going on the people who were who were on the other side of the contract on the interest or side of the contract knew that dr low time was involved and knew what he was doing in april of two thousand and three so i think i understand the gist of the question but the reason i hesitate is i don't know why they didn't simply say well let's let's make the agreement april first let's make the agreement march first so maybe they were concerned maybe covering the intellectual property rights at that time wasn't a big deal to them  doesn't well i take i think the tripper incorporates to mean he has to actually put it in but if if we give it a different if you don't accept that argument then the answer is yes what they would get is a nonexclusive that's also harboring and you see right that he well what i can say is that there are some ambiguity in the record as to what he was representing there the did he have an obligation to list his prior invention to make an assignment i'm sorry to grant another license because he's still the owner of his inventive rights well yes and the counter origami would be that if he listed this maybe they wouldn't have gone forward with the record i mean i could speculate but but if i were i don't know i have no idea when the country downtown really start doing work consulting work francisco or do you know that well so this is a small group of people and according to  provisional application was filed in january of two thousand and three the they were talking about doing testing and i believe had a first generation prototype in march of two thousand and three people might have known and so forth the for just looking at the contract you have seems to me don't argue with me if we assume nine eighth been violated and you assume this is something that he should have listed and he did not list then the question becomes what are the and if and i think judge dyke started to talk about this which is there are consequences if you have not done what you were obligated to do in nine and if not listed in invention that should have been listed the into what they're trying to do in nine b if they really didn't know about it then it could affect what they're letting him work on if they otherwise would know that except for so aren't there circumstances we are in fact the failure to list could feed into the remedy in ninety four simon well i don't think so your honor i don't think there's any support for that in the language of the contract to the first that the contract is a is essentially a form contract that doesn't take into account arguing is that there is nothing in nine b that says that in the event that consult it does not list a prior invention it becomes assigned or occurs during the term of the agreement the language of ninety is very clear that the only assignment obligations come comes with respect to conception reduction to practice or development occurring well if that's the case then that would sound like they they have they would have a contract revenue or perhaps that's what they they should pursue of they believe that there was some listing that should have occurred that it didn't but that doesn't deprive that can't deprive dr low date of the contract change the effective language for nine b they could have changed the product and decided well we don't have full rights to what dr lowe ten is disclosing in reserve and so we're going to take our product produced in a fluid design what was going on and so how can you come here and tell us that we should be consequences because they would have acted differently if indeed they knew about it im sure and your honor you're exactly correct it's a small medical start a company they were all working on and one thing the engine scope probably there wasn't a big company with lots of different projects but what dr lo tand did is when he signed the contract with exhibit c blank and he signed exhibit c he was the one that is it says if no such list is attached consultant represents that there are no such prior inventions so that was dr lowe ten telling his colleagues at entry score i not claiming that anything i did before may one is my property either solely or jointly i'm giving you my colleague's assurance well point that i'm not and he was testimony was i didn't listen to because you know basically i mis read the contract would we be then i think we would be in a place where there is a binding representation that nine a provides if the list is four and that is the contract said exactly how  interpreted and it's interpreted as a representation that there are no prior inventions but i know that doesn't say this isn't a sign of anything that's not listed either well the representation is would be binding one as we know of a contract and by the california adventure code so he's telling his colleagues i didn't do anything before the operative date maybe one two thousand and three and then we know she did work on the n g s cults project and and case in front of us right now this is a nine a case i didn't see the district court the line on nine the has being having been triggered to the point where all invention rights automatically flowed and you score so sticking with and the problem with the reading of nine and that you are needing to defend is that of if dr of motown had in fact invented something five years before ever talking to an just score g s if he had this prior invention and he failed to disclose it but then again that's a representation by him that he didn't have any right to possibly argue that the invented something five years earlier that got assigned to them right i mean that the question is really to my current day other than the the argument that there's no license the argument i'm trying to articulate is perhaps not well i apologize really what we look at is did dr lo prior right have to relate to any of the company's current or proposed isn't his products for research and development so it's basically saying we're bringing you want dr will tend to work with us if you have rights that you believe are yours so we're jointly to what we're working on and he represented by leaving exhibit seemed like he had no such rights he should be held to that representation that that's the district court found that so number one in the question did dr contract is more limited than that nine a set is if then if he incorporates this widget that he invented five years ago into the product of the company that and ye they get signed they get in an exclusive license for that is it your view that that's the way it ought to go so the answer to jens judge jones list and question is if he invented something five years ago and then he is responsible for putting it in to i don't believe that's how the district court looked at it i believe what the district where did it is us to judge prosecuted she read nine and nine a together ninety is if you're working on an invention or saw your jointly during your time with us after may  two thousand and three you're assigning to us all of your rights in that and the undisputed evidence of record is that dr low ten did work on the invention after may want two thousand and three through his clinical studies and the like what nine maybe haven't been listed in the exhibit b but nine a is what applies where in nine a land not nine b glances we're talking about three may one work why is there anything in in these two something that happened earlier and couldn't predate the cover that happened that so it seems as though in that circumstance the five year earlier invention it's very difficult to read this  saying that should be treated as a song if it were a five year earlier invention for which there was no ability to invoke nine b because the consultant didn't work on it during the actual term then we're not going there is not why is it or not is it wrong for me to look at nine as being about everything that happens up to may want two thousand and three and then nine b being about everything that happens after may one two thousand and three it's not wrong to look at it structurally that way but what happens is nine d has a reach back to fact if you work on something in invention while you're at the company if you work on it develop it improve it move it forward if you work te it matters because he is saying and only carving out from nine assignment provision those things that are written down so by writing nothing down he is carving nothing out of nine b an invention from five years prior with no relationship and you score but somehow that invention thanks to him got incorporated into it and your scores catheter case where there was inventive work before may want but then it flows into additional development work after may one somehow all of those natural inventor ri that jet developed in april automatically get assigned and you score they do because he with his gun assuming that whatever work he did after may one doesn't rise to the level of triggering the assignment provision in ninety let's just assume for the moment that whatever he did post may want it's not can't be deemed to be conceiving or developing or reducing the practice the invention if he didn't do anything reduced to practice until after the assignment provision took effect may want you thousand and three he worked on developing it he worked on clinical trials for it he worked on all of the things that made it evil to get a approval down the road this is a medical decisions then your argument sounds like it's just a straight up nine b argument that his work post may one triggered paragraph nine in so you don't have to worry about and it isn't nine the argument we prevail by ninety eight but ninety i have to be careful right because ninety has a clear about and nine ok if something had been listed then that could have prevented assignment under nine saw instead was the district court observing that some of those post wait may one activities quote unquote might have risen to the level of being a development or reduction practice but then i didn't see that you had to go any further nothing to the exclusion mechanism of nine thank you so that to me that's why i looked at the judge's reasoning as being all about paragraph nine and then if you go to the fifteen  because we know from his deposition testimony that you worked on the clinical trials he was talking with this co inventors here at the people who actually listed on the patent and the claims co inventor status what they reduced the device to practice during the may one two thousand and three period forward so the record lets us see that nine b applies and even in the brief the brief that counsel submitted they said and  study in april was so important is they thought they had a device then that worked they put it in the paper as the pig study and they found it fell off it didn't work so his test and the clinical trial work is necessary to develop the problems it would have triggered a whole nother phase in the development work it turned out that it worked nicely in to use his words from the testimony but that doesn't make it any less a part and a crucial part of the development of the medical device for ricci party in the position should be and are given a license the argument is that the consequences of the breach with respect to something that was done as part of the development of this product or the women should be treated as having an earlier effective today is that a possible way of looking at this it is again a third way to look at it is it possible consequence of the breaches hold him to his representation which the contract itself simply that the consequences of the breach there are from situation to situation certainly we have to look at situation to situation but here in this situation where you have got everybody focused on one thing this isn't five year old separate independent work this is work together with the engine school or they write the contract he says everything up to may one two thousand three hundred not claiming any rights in any of it as a sole or joint developer not claiming anything and then going forward he works on the project with everybody else and he puts his ip into the assignment kit into the part with everybody else who's working it and you score it shouldn't be allowed that he can skinny his way through all this failed to disclose his contention that he wants something from prior to maybe one then keep working on it and making sure that the device with that particular feature on it under nine and because he said it and he should be held to his representation that he hadn't done anything but even if we want to say he did and he should have listed it and he breached his contract the affection be the same he did not have anything side of things so we did not like we could reach out to dr constantino and say well why was it made one two thousand and three he is on the other side he was in a pretty vigorous breach of fiduciary duty litigation that you've lost it turns out this whole thing came up because d he went and tried to buy this license from dr loeb hand for a certain amount of money and then argue license back against angeles court so the lack of evidence about why particularly may want two thousand and three is compounded by the fact he said no and the contract was very clear that if you leave that exhibit seemed like it's a representation i have no rights and then going forward did he work on the project absolutely there was no other project to work on to do school at interscope all they did was the engine scope and his work was critical his work was absolutely critical of him thank you thank you mr heller who is the person who signed the may two thousand and three consulting agreement on behalf of the underscore the c e o of edge of score at the time mr gurr shoni one of the other founders  we spent all day there until late evening discussing engineering aspects of the device is that absolutely one thousand percent clear that the we happen at the same day that he did it the fact that the ed and i do agree with counsel that there's nothing in the record that says why the first was chosen but i would respectfully submit that's irrelevant because the contract says what it says the contract says the effective date is may first everyone had full awareness of what was done and what it was done at the time it was done they wrote the remit later in october or at least it was signed in october and november