on a summary judgment record at the district court and fundamentally the error that we propose is that this court should have conducted a trial on the question of off the ems declaratory judgment counterclaim seeking a declaration in order to find the underlying facts yes i am your honor instead the district court referred the matter to a special master of the special master on papers with some evidence but by no means all the evidence that would have been presented in the trial  between to assess the credibility of witnesses on the error that the special master made was he rendered his his decision his recommendation on the undisputed facts that he found and some consideration of reality right it ties in together of course the evidence of no witness testified you're right i'm sorry i didn't submit it i tried to force the patent office no witness testified to that what what the record showed was that on a reasonable interpretation of the facts available that the invent doors identified this willems article as the closest prior art to their invention now there is a dispute about that there was an invention special master made in the the court adopted was in weighing the materiality and therefore it infected his decision on intent there was evidence upon which a reasonable fact finder could find that the reference was highly material there was evidence that a reasonable fact finder could conclude that the invent doors knew the reference was highly material there was no credible explanation in fact there was no explanation at all for why the reference was not disclosed and in that circumstances then the court the fact finder can infer intent when there is that highly material reference when the inventor or knows and we're not talking should have known here a reasonable fact finder could have found below that these invent doors knew the reference was highly material a reasonable reading of the facts is that they identified it as the closest prior art to their invention and there was no explanation why it was not disclosed the inventor said they don't they don't know why it wasn't disclosed the attorneys who were deposed simply said they can't recall in an interactive tour response i'm going to ask him for an assumption that it was ought to be weighed three for us is what the special master did right there was expert testimony that that it be and that it rendered obvious claim twenty four and other claims and special master just got that fact wrong  expert testimony that there were many claims of these two patents that williams presented a promise fish a case of invalidity as obvious that was from the expert dr way in combination with other in combination with other art there was also evidence though that there was no reference before the patent office that disclosed the specific feature of of a plot of s b s threshold increase as a function of phase modulation index so if we let's accept that it's material right but we still need to i understand why intent either didn't have to be shown i guess that's your position i don't think that it didn't have to be shown i think and i recognize that it is it is chicken and the egg each if you will but it is no one's and question of precedent which says these are separate facts yes i understand that you can meet a threshold you need to crush old showing a clear and convincing evidence of each fact i absolutely understand your honor and here the facts were that with there was reasonable evidence that williams was highly material and not d m presented evidence upon which reasonable fact finder let's accept that right i and that reasonable evidence has been has been shown reasonable evidence that the inventors knew that it was highly material not just that they knew of the reference but reasonable evidence upon which a fact finder could find that the inventors knew the reference w highly material that invention disclosure a reasonable reading of it is what was the source of previous information closest to your invention now mcor proposed a different construction of that question and the special master came up with a third construction for them questioned it precedent and says you have to show ten by clear and convincing evidence right i can't say that that's a different construction of the law now i understand what i'm saying i'm sorry i  wasn't clear the special master sunday third construction of what this convention disclosure was asking it seems to me that that makes clear there is a dispute about that and on summary judgment obviously was entitle to the benefit of its reasonable proposal that the inventor is knew that this was a highly material reference they identified it as the source of previous information closest to their invention and i do think the case law says at that point when there is a highly material reference when the applicants know that it's highly material and it's not disclose that in the absence of a credible explanation a fact finder can then in her intent and here hakim did not get the benefit of disputes concerning what williams disclosed the special master weighed he said he even said in his opinion there is a dispute about willems what willems discloses there's a dispute about what the invention disclosure was asking the inventor is identified but williams reference there was expert testimony that the reference was highly material he weighed this evidence and he concluded himself personally which is fair enough that he didn't think it amounted to an equable conduct  on summary judgment that was not his role his role was to give up the benefit of these questions he and to the extent there are disputes move the case forward to trial instead he recommended summary judgment  i think the burden i think if if if if at a trial at a bench trial the court would assess acrylic credibility of the of the tourney saying that they don't recall it can't be that on a summary judgment record a patent applica hadn't been shown at least couldn't meet the clear and convincing evidence standard right but of course was not limited to the undisputed facts at this stage the proceeding obvious was entitle to have the benefit of the disputed facts as well and there are several points in the report recommendation where the special master makes the error of saying on the undisputed facts i don't find that it's inequitable conduct or that there's intent but bob dean was not limited to only the undisputed facts or some of the other facts fact well that's evidence supporting it is evidence upon which reasonable fact finder could rely to conclude that the reference render is invalid many claims of the patent dr hall explain that there was no reference that showed the sa invalidating reference was entirely that it should have been cited by the applicant so there is there is there was opinion testimony from dr hall an argument by off the him based on that opinion testimony that at least much elation and a level of ordinary skill in the art that a reasonable person would have found the differences between the claimed invention and willems obvious as a whole obvious at the time the invention was made so that that is part of obvious position that the williams reference trial that's correct that is correct there was and i wasn't that's not in this briefing it happened after this brief and i submit it's not part of this current record but there was testimony from dr hall on this issue i mean my r a good morning your honor in me to please the court two three of this court's decisions answer the argument that's been made against us trying to overturn the summary judgment motion of first this court's recent relatively recent decision astra zeneca which we portrayed in our briefs and which was not responded to in the reply brief holes that i quote intent to deceive cannot be inferred from a high degree of materiality a e but must be separately proved to establish one force ability due to an equitable conduct yet judge knew when you asked my friend on the other side what the evidence was of intent he pointed you to materiality other three criteria i'm not sure that he does meet those criteria when you look at the facts a ferry in the facts of the other case i think there was one other case to press here yes the that set those forth and you'll be you'll note in both of those cases that there were affirmative representations that would have been impossible to make or would have otherwise been rendered false by the submission of the obit of art or the omitted document and what we have here also there's another problem answered by another one of this court's precedents again which i hope and presume is this court's precedent and that's the the xor jim case we're not sure even at this stage who the suppose a bad actor is what i heard from mr klein was that the inventors knew of the materiality of this reference but in fact the inventors disclosed the reference in the chase through the attorneys the only thing we know about the communication of that of that report of the the invention disclosure to the attorneys themselves is one sentence at page eight tonight of the record where logan testifies that quote here yes i believe mike referring to priska one of the four lawyers who handle these two applications i believe mike got a copy of the invention disclosures as a process of developing the pat sentence is the entire team of the evidence that any of the lawyers knew anything about the invention disclosure and let me just well that the evidence is that the inventors disclosed it to the prosecuting attorney and i thought somehow it got lost in the shuffle and that was your argument right got lost in the shuffle better that is better is a much more reasonable inference on this record that is a much more reasonable conclusion to draw that the question is really a summary judgment reasonable i was simply trying to use the language of the thirty's that i was going to mention and that star scientific which i think plays into the summary judgment standard so that to overcome a summary judgment motion on is that the material was withheld with deceptive intent in order to deceive the patent office you can't find that here in fact the case that's being made against us is that on a eleven year old records where there is little recollection and very little documentary record in possession of any of the inventors or in the possession of any of the lawyers that somehow or other the burden should be shifted to us to disprove it it will conduct this is precisely the sort of this case if if inferences of this sort were allowed and that gets passed summary judgment can then be bootstrapped to not say only material but i would material that every p inherently inferential what you would have to conclude on summary judgment is that a reasonable fact finder could conclude that the most reasonable inference from the intent evidence is that there was an intent to deceive the patent office and that that is not the case here even of star scientific didn't exist you would not be if you could not uphold on a post trial record if this is the best evidence and i think that might be enough to to discard that testicle the problem is that the bird like there are two bits of evidence still belongs to the other side and i don't fit that simply disbelieving a denial of the charge somehow or other it is clear and convincing proof of the charge itself but i want to add by the way mr klein made the comment at the beginning of his argument that there was other evidence that they didn't present that summary judgment and i just want to add there that real fifty six is i think this court has used the term it's a put it shut up tom if they didn't put the evidence in to show that they had a case for trial in front of the judge then i don't think that we get to hear about evidence that they could put in but didn't  question see is that it really is two questions and if you look at page one seventy five of the appendix which is the invention disclosure it asked actually two questions it says what were the previous methods or apparatus that were to tell us what you need there is a second parent there is a second question there in the parent's article that's the only part of the question that they seize upon now that important point to note also is that the invention disclosure is actually only the first few pages of this reference and why invention disclosure which is a four of them used by the company and then it's followed by a paper that was written by looking at leap and you'll note that the dates are different the paper is dated february ninety seven and the invention disclosures dated may one nine hundred ninety seven one of the things we don't even know on this record from this testimony day two of nine is whether what logan says prisco got was the whole thing and this is important because if  only got the first part let's say then that bracketed one in the answer to c doesn't have any reference because that's all the way back in the february one thousand nine hundred seven paper that was appended to it and in fact when he was being asked this question if you look also at page eight two zero nine the lawyer questioning mr logan is separating the eventual disclosure from the logan lead paper itself so if he only got the first few pages he had a disclosure that had  one and he could look all the way through the thing and would never find any reference to the williams article because it was in the low to leave paper and we don't know that but let's say it was let's say we draw the inference that it was attached now you have assume that he actually pulled the williams reference and read it that's another of us on top of inference on top of an inference then we have to conclude that he concluded that that reference was in fact material and other inference that the invention that the inventor has disclosed newman they said well they disclosed well if they disclosed it they just at all which they never disclosed it to the patent office at best they disclosed it to the attorneys you can't employ can't credibly say well the inventors disclosed it but that the attorneys knew that then said there's no evidence that the attorneys ever got they can't have both of those  those are mutually exclusive mcor the inventors identified the willams reference in that invention disclosure and i certainly don't think i said i surely did not mean to say that what they meant by identifying willems in response to question three c was undisputed it was disputed and in fact the special man excepted neither op teams position nor am course position regarding precisely what the invent or is meant by identifying willems in response to that question a special master came up with the third view now it seems to us that manifestly evidences that there is a dispute about what the inventor is met the court should have had a trial to hear from those inventors on cross examination perhaps in a bench trial to ask those invent doors questions itself and assess their credibility and the same with respect to did not get the opportunity it was denied the benefit of reasonable dispose of reasonable assumptions being made in its favor based on the facts that it presented and denied the opportunity ever to present these matters at a trial  where court could assess credibility determine clearing forensic evidence of materiality is that their clear and convincing evidence of intent is that there and then at its discretion balance the equities and decide whether that amounts to an acquit conduct the court should have had a trial to do that how do you respond to the argument i definitely just made or i'm sorry which precisely approach a person well i don't think that it is i mean they have said the prescott the attorney and i don't think it's disputed that the invention disclosure with the attached report went to the panel tourney's though it's in the record in the brief so i don't think that's an inference at all and at that point that the question arises for the it is for the attorneys then to say what they why didn't you disclose and you can't fight off you can't insulate potentially an act  of bad faith in an acquittal conduct commission should be able to insulate that simply by saying i don't know i don't remember and i think bennett at that point it is reasonable if the other subsidiary facts high materiality knowledge of high materiality and