please the court i would like to introduce first dr lewis and mr sawyer who are in the gallery that they are of course written about and in the brief as your honors know and if they were able to speak at the podium today they would be able to describe in great detail and color the human cost of a wrong incorrect document of an equitable conduct especially in a situation here where the lower court did not give any reasons for its decision to go one way versus the other end of the hearing at the conclusion of the closing arguments sort of announced that his normal practice was to request the winning parties to submit proposed findings of fact in conclusion to law that's absolutely right judge that andrew didn't object to that knowing there's nothing wrong with that as far as a go that happens in courts across the country every day what was wrong is what happened afterwards which is that there's no apparent scrutiny there there is no explanation by the judge of what the reasons for going one way versus the other were we were all completely in the dark about that and then of course we were hoping and expecting that there be some sort of back and forth on the objections in the in the proposed find can there be at it in changes and you could really get to a point of view of what was on the mind of the judge at the time the district court made its decision but what is there to suggest that the judge didn't think this through carefully and simply felt comfortable adopting all of the proposed rulings that are in the order judge that that's certainly a possibility i mean what is that what we are supposed to presume that everything is done in the ordinary course and that the district judge is acting properly in reviewing the or record yes and that's i think we call that we all call that the presumption of correctness of venue and isn't it's not unusual in the district of nevada for from time to time and we're not appealing just the adoption of the verbatim findings what we're appealing is the is the clearly erroneous findings of fact there within the adopted findings however from cases like the bose case and from several cases in the ninth circuit we know that first off from the supreme court's votes case the presumption of correctness is weakened under some circumstances that's for example in the circumstance of completely written evidence that leads to findings of fact presumption of correctness is weakened and from the rest of the ninth circuit jurisprudence we know that there's still careful scrutiny applied more careful scrutiny by the appellate panel in a case where there is for being adopted findings but but of course turning to the actual appeal of the merits that we have in this case we have are clearly erroneous findings and improper conclusions of law and i turn to those and  turn to those for quoting a passage from from the fairness and thank decision when there are multiple reasonable inferences may be drawn intent to deceive cannot be found cannot be found  that your honour's is a powerful holding and you found that the witnesses you put forth lacked credibility there were conclusionary mentions of lack of credibility there were in fact mentions in  him credibility is kind of a conclusion isn't it i mean what do we do to deal with that it often is restarted as a conclusion but it's not insulated from appeal your honour's and a great example of that is in the critic on case reversed the credibility finding because vat particular trial judge in that particular case cited nothing in support of his or her i don't know but in support of the court's credibility finding that the judge has that transcript on that about him credibility yes the opportunity to prove to proceed then that we don't supposing supposing he has enough to find that their testimony testimony is incredible no absolutely not and that's actually because of the supreme court's bo's versus consumers union decision that's a case where it's a lot of talk at their expense because i think you've got a universe of information there so the question being your honor whether sarah sense in another itself gives you enough guidance to talk about whether an incredible testimony by itself without more is not i don't recall seeing that  intercepts actually your honor in fact i think that would be contrary to the spirit and to the literal holdings and their sense because it's it's the that's what i'm asking is the infringers burden of proof to prove inequitable conduct by clear and convincing  testimony doesn't come into the consideration it's we still have to look to the rest of the record to see if there is a tenet of that testimony is clear and convincing evidence showing either a deliberate design actually both a deliberate decision to withhold no material reference if they lied about these things then everything's a lie and therefore they're there i can infer some negatives out and i believe that that was the path taken by the lower court in the most decision in the supreme court reversed that that question about materiality and you make an argument in your in your blue brief and also in your great read about the bush reference and dr lloyd testified that the reference was missing certain components that were claimed and in particular you're referring to the testimony of a forty five fifty two or retrieving program source material explaining that billing system is the stylized representation of a unit of a four peroration or a group of people not a piece of technology i have no idea what that means can you tell me what that means i'll tell you exactly and those are words directly from the bush reference itself in the in figure one of bush there's a box around a lot of words and maybe even some some boxes and there's a reference numeral ten pointed to it when you go to page four of bush reference numeral ten is explicitly labeled it's called a corporation or a group of people and then that's of course the context of everything you read within the box in the figure legal services building center that then there are some other things which put my mind i don't have the figure in front of me but but that's that's why dr lloyd was was fully had full foundation to provide that opinion as always referring there to just various groups of people or types of organizations within a technical context but the other piece of technology a piece of technology i think i think the sense was it's not a computer not a sir it's not something that sits in the closet somewhere with wires coming out of it he said there's really no disclosure and bush account was accomplished except what we just discussed it is a group of i think your honors and good morning i'll be arguing on behalf of all the appealing for purposes of this morning's argument what i think is missing from the brief and and wasn't discussed even much later this morning is really the context i think your hon alluded to this there was a trial there was testimony taken there were credibility findings that were made in light of a very careful analysis by judge me but we have of course the intervening there  case and this finding was entirely based on a reasonable examiner standard there was some balancing of materiality and intent both of those fly in the face of their sense and then we do have the intent point that mr green's greenspun mentioned that this seemed to be based on credibility when there were other reasonable inferences how do we get around change the law on intent the findings the judge may hand may he made in under the most stringent standards at the time which was star scientific under star scientific the standard that was in play in that case was a specific intent to deceive the patent office that was the finding the judge may hand was striving toward in effect he used the sliding materiality scale he actually did not run and he made it made it very clear in his finding conclusions that he did not apply a sliding scale he was very conscious of take an intent to materiality separately exactly as there are since instructed after the fact just recourse to do what where what where was the determination that there was a deliberate decision to withhold any reference the judge made a finding that there was i would say two things that there was no materiality with respect to all three of the references that are in question here on appeal bush b horton you have known materiality on the part of the participants in this case and just may hand in light of that known materiality and in light of the circumstantial evidence concluded that there was a specific intent to deceive the pattern not them and now see you've just told me there was no sliding scale and yet the first thing you cited to me is evidence of intent was that materially you know the evidence of intent was knowledge of materiality you cannot have knowing conduct if you don't have knowledge of the underlying materiality so there isn't necessarily a tie together between intent materiality but the question that their sense was addressing is where the court takes it materiality  and says this is very highly material and therefore i'm going to require less evidence of intent that's a sliding scale that was disparaged and there are since in fact held to be not good law but it is impossible to say that you cannot make an intent finding without consideration of materiality because there doesn't fact have to be the mens rea there has to be a culpable mental state in the sense that the actor knew what they were doing and they intended to deceive the patent office but there is sense makes it clear that you you need to establish that the applicant must have known of the reference must have known that it was material and that there was a deliberate decision to  withhold you talked in your briefs about the reference was known and arguments about well they should have known or they were aware for the therefore were sufficiently informed therefore they knew it was betrayal but there's nothing about any deliberate decision to withhold and interbreed i think that the way we presented this no way i believe is the right answer is that  deliberate decision is exactly the same thing as intentionally deceiving the patent office by withholding a no material reference those are one in the same concept and i would point the court well i'm not sure the whole there is is intent know withholding a known material reference well this or that stuff there because there's another very big problem here and that is the known materiality is based on a very superficial of claim turns isn't it in the coal pending claims the comparison of similar terms do they have there was no real claim construction here to show us whether those terms were identical in scope or not i think you have to be since well they're pretty similar so we're going to consider him identical and say that's a very damaging i think you have to be careful here about where the knowledge of materiality came from because there was some discussion a moment ago about wasn't it just based upon a lack of credibility of the witnesses or refutable of the excuses that they offered in the answer is no there there is a a first instance before you even get to the explanations you have to look at whether there is a demonstration a threshold showing in the terms of their sense of knowledge materiality and where did that come from here you have examiners from other applications that are specifically disclosing prior art and saying this prior art contains coined elements in your other patent coined in the sense of these words are made of the i mean a shorthand but the i am i m d n the m c p s coin terminology made up applied in one claim of each of these three patents just one claim and in that one claim you have the three quarters that are described identically because they cut and paste from one application to another what difference does it make if the respective claims in their respective applications in addition to those core elements or other limitations  relate to their various different inventions it goes directly to the state of mind when when the state of mind is purported to be we did not know of the materiality because we thought these applications were entirely unrelated and that explanation does not hold water but in finland as a whole we're not dividing this up into little pieces and all use the same word here so it's an identical claim it doesn't need to be an identical claim you need to show that the applicant  aware of the materiality and when a reference is described as having the same three components as the claim you're looking at in that the asserted pattern the one for six application that demonstrates knowledge materiality of the threshold  states applications bush however was identified in a european counterpart that had the same claim at the time of filing there was two changes made to the one for six claim later in prosecution but it was the same claim with the same words in the same application as the karaoke limitation was added to the plea before the european search report was received it was and so it's not the same coin in terms of the right total relevance there were two changes there was the addition of karaoke into the preamble of claim sixteen in the word order was changed to two purchases from the two changes were made during the nine four six presentation but when a when a piece of prior art is identified in a foreign koeppen or a foreign counterpart application the law is very clear that that creates a very high inference materiality and in fact the witnesses admitted to that  admitted to knowing under the impact provisions that there was an extremely strong inference of materiality with respect to the bush reference mr gross i assume that there was full discovery taken on this unequitable on the issue to any communication from this to sawyer to his client reporting search other than the fact that they're the facts are in the record that it was delivered to mr lewis and that mr lewis reviewed that information was it delivered under cover of a letter that was not interact or but there was full discovery taken you're not claiming that you were deprived of the opportunity to locate any such dr no in fact s there was no letter from sawyer to lewis as part of the discovery or in the record i guess what i'm get what i'm getting to is is there anything missing from this record that would relate to the question of intent relating to the bush reference or do we have the full record as far as i know the record is full we certainly don't have any reason to believe that there was any information that wasn't disclose or not which has a completely different standard put in place wouldn't it be at least potentially beneficial to both parties but if this court go back and make new find but for materiality under duress since it is on that it would be on this court to make that finding with respect to example for bush in the point of of the briefing in the arguments for making under the case law there is  respect to bush in particular the findings that are in the right lead you to the conclusion of but for materiality and if this court wants to take that step it's in your power to do so if not yes remain very beneficial to  both parties here to to make findings and the but for standard the point of our briefing is is in addition to that the intent finding from judge may hand does apply the correct law and if i would like to get back to the point of deliber decision because i don't think we have absolute clarity there yet but judge may have applied the right law on intent he did not make any clear errors of fact he didn't misunderstand anything he didn't misapply and singing first media hasn't demonstrated that as  to do the other option for a reversal and remained on intent is that the judge's order was so far off that it was fanciful or arbitrary and i don't believe that showing has been made in fact reconsider materiality in light of the new standard but don't consume judicial resources unnecessarily with a general remit on the issue of deliberate decision and if there's not other questions i'd like to get back to that on the issue of deliberate decision those are words that were used in their essence and they came from wallace and i kept i kept noting earlier it reflects the underlying culpable mental state you have to have deliberate conduct you have to have intentional conduct and it has to be intentional conduct that results in deception or an intentional deception i should say that the culpable mental state you have to intend to deceive if we look at their essence and their remit and instructions that didn't use the word deliberate decision it said go back to the trial court and indeterminate there was was a specific word used a conscious decision thank you if you look at mullens it describes a deliberate decision but it also talks about a finding of intentional withholding it's different language intentional withholding that describes the same culpable mental state if we look at star scientific it used different language yet it was intentional withholding with office it all goes in the same question of intentionality and deception there's a statement in the in the district courts border at age eighty nine the very top of page a nine first's two line intent may be inferred where non disclosed information is material and where knowledge of the information and its materiality is chargeable to the a your position is consistent with their assertions it is when you when you when you couple that and that knowledge of the reference knowledge of the materiality of that reference and then you have to find intentional deception we do you need to find some deliberate intent to mislead the peppermill in addition to what this says which the judge did find he found in light of that knowledge and in light of the fact in light of that knowledge and in light of the fact that there was no credible explanation to explain that knowledge we were talking past each other ok because the census as intense maybe infer where th information is material and where knowledge of the information and its materiality is chargeable to the applicant with intent may not be and for according to their essence unless you have in addition so showing of the deliberate intent to deceive which is the remainder of judge may hands order he found the threshold showing of knowledge of materiality and that's a threshold jim there's a lack of any credible explanation and he stops there itself is not sufficient to make a finding of of a specific intent to deceive and that's absolutely right judge mehan did not do that he did not simply say what's the additional evidence of have to have the threshold showing in the first place got that now where's the additional evidence of intent when you have no knowledge of materiality you proper explanations and those explanations are found to be incredible so you do not explain why you did not act consistent with your practice the lack of the alternative explanation that doesn't suffice understand their sense or star scientific where is the evidence of intent there and that's that's before you get to the explanations what you have to look at here is knowledge materiality practices you have to have awareness of your of your duties knowledge of what you were supposed to be doing coupled with that knowledge of materiality it demands a course of conduct at that point it demands either disclosure or it demands an explanation of why you were not as well as you know what i'm hearing is i have no additional evidence of intent i am placing my emphasis on knowledge of materiality and they do need to act on that in the absence of an alternative explanation i think that's deficient understeer sense  with that creates your threshold showing now you know here's the thing and here's what i think you're demanding from me which i cannot give you and i'll be very open about ok you're demanding from me that i point to some evidence in the record that says these gentleman admitted or somehow demonstrated through their communications correspondence course of conduct if it's extra but a course of conduct i've already the applicants should have not they committed negligence essentially and that wasn't sufficient and you clearly in terraces put the clamp down on that line of thinking but this is different that the judge here found in light of the credibility findings in circumstantial evidence that these gentlemen knew of the materiality and acted inconsistently with their standard practices that their sense is designed to limit what's going on and to narrow these causes of action and to reduce the numbers of positive action and it creates more of a standard i agree because it can't be should've known it can't be a sliding scale it absolutely tighten down intent and judge may have if you if you look his findings he did not do either of those he did not apply a sliding scale and he did not apply a should've known standard but i think the core of your question what additional evidence can you point to you're asking for direct evidence you're actually you're asking for the smoking gun of what we can point to and say here they absolutely knew it materiality they absolutely you know here's my direct evidence of intent to deceive and their sense did not require that and it would be inconsistent with years and years of case reason that people who are committing fraud on the patent office don't document and the type of evidence you're looking for is not going to exist except in very rare circumstances which is why you have to  you have to find the most reasonable inference on the facts but judge may hand sitting at the trial judge was uniquely situated to do that he was uniquely situated to consider the circumstantial evidence here the testimony and make credibility findings about what is most believable from these witnesses and he did that as it's not a job that i think judge my hand took lightly to find that that individual senescence committed fraud on the patent office is not something he was inclined to do if you read the entire the entire trial tests and transcripts he was has been from the start i'll bet you dollars to donuts jim may have never took a case like that would not surprise me and and despite his inclinations the evidence was compelling circumstantially a trial and two to ask for more no i don't have direct evidence of intent to deceive it's going to be evidence based on a circumstantial judgment call the judge may hand was uniquely situated make thank you mr brash sliding scale law in his general background discussion and then if we go forward to page a thirty six it's paragraph one eighty two there's language for for judge may have said quote unquote the scale explanation they didn't appreciate the materiality it's very well established in the record these are undisputed facts mr sword was an extraordinarily busy new patten prosecutor actually he was a new as a prosecutor but he had a new branch office that he opened for all of us home if these references were material which we don't concede it's very understandable that an individual with a hundred files open at the same time dealing with this level of activity would not appreciate something especially when it comes into his office in some cases over five hundred days before where the record shows he's considering claims patentability over the prior art this is a poster child for earlier comments by the court and for example one of the northern telecom cases that you have to take into account the realities of patent practice because you've got the same terms and their unique terms being used in the various applications wouldn't one be alert to those terms being rejected elsewhere that means it has some relevance i think it's fair to say that one should alert but i don't think that substitutes for evidence of deceptive conduct when one happens not to be alert for it we have respect to the european counterpart wouldn't it be in her practice automatic i think it's a good idea but i also given that isn't it in this in this instance so we don't have the reference coming in with flags if you will of extraordinary relevance extraordinary importance this was a reference that came in by itself on the second of two search reports with a wide designation being by itself it wasn't combined in any fashion on the search report whereas the why did the nation the u s counterpart you take a look will say oh my god that's the issue fee is due in five days i better go find out whether this has any relevance because i've got i've got i've got a few days that i have a chance to do something if i need to do something if that perception is bubbled up that you've got that european search report it's it's something involving an identical claim and you're aware enough and you have your wits about you enough to think about at that particular moment i mean it's a good idea it's an opportunity lost if we don't act on it because once you pay the issue the then your then your opportunity to make any changes to address  issue is this loss judge i think you know you look at both dr lewis and mr stores have planned this point in the trial court and i think you saw exactly the kind of humility that you might be expecting a practitioner's i think it's pretty clear from the testimony that they wish they had done things that they didn't hold back on that they didn't try to there was no arrogance about the discovery and litigation that bush was not disclosed there was a sense that gosh i wish we really would  honor no there was full discovery on that including privilege logs and the whole nine yards there is always to communicate it's unclear from the record i can't say that it was communicated it might have been something that got stuck in the file without being communicated to dr lewis dr lewis when he was asked the questions you know very foggy memory of whether or not he got the reference i'm not even sure if you was asked questions about the letter  itself but but it's consistent with the record that there was never any transmission of mr right letter from mr sawyer to dr lewis and your honors if you will i look just like to close with with one thought and this response to just follow if you're your questions about reversal versus vacate and to me to be fair if you're offering a reversal i mean i'd rather if you're offering to vacate the decision we'll take that but we prefer there is every incentive to develop the record to the max i mean they would have benefited in their presentation of the defense if they had shown deliberate decision and if they had shown before syria and from