just and this is james patrick queues and i would like to move his admission he's a member in good standing of the bar of the district of columbia and california and  i would second all the wonderful things judge laurie said about his clerk and say that jim has been a fast service to me and to the entire court and he will be a pleasure first is that under one it to whether you need to have it you have to have a conception of invention and then a transmission of the invention invention here and the p there for an issue and a district court never distinguished among them half of them are actually met that claim their method of use claims if you go to be asserted claim that your claims one to fourteen and sixteen there are for sure at your honor they had they had they had sent one line that had ninety five percent below that number but they never appreciated that with the number they had one last that was below about one sixty and i think the fact that we have a good look at what the funded the two boxes just or put it there are critically important one is the derivation box achievement and a five you can't derive something from someone who does confucius to even with the price specified your honor the key and i think this is the key on the on sale bar is that page eighty eight twenty nine of the court's decision there was a price that there was for free that's simply not correct and so in this court's opinion the court was very clear that one of the bases for the one i was to be on sale bar was the fact that the clinical trial material was in that the mere commercial nature of an agreement where someone supplies material free of charge there's going to be clinical trials if the clinical trials are successful in this court knows that many times they're not that there and then will be was that both in and so in this case the clinical materials were supply for free and the consideration was conducting clinical trials but that would have been true and i won as well and without a doubt your honor i think let me say two things because in that act and type in equitable conduct finding their arguments to be a both ways as we had on how you characterize that fine license agreement we think i that finding clearly erroneous but i think you wanted to go back and i like go back to our ship the characterization you said of advantages it's a ten keys were very clear in this case now they might have been wrong but they said first i'll say that it was twenty years ago they say explicitly in the summary of the invention that this invention is the discovery that there is a threshold and if you manage the particle size distribution particles is important to put into an ethics now that the court knows better than i but much of the wall on whether you have to appreciate the invention actually was developed in the year two thousand two thousand two thousand five fifths of one thousand nine hundred three they say what they thought the invention was and then your honor if the court looks and we would ask courts look it take twelve eight thirty eight to thirty nine this is actually for sure discussed in fact well conduct and whether it's their understanding of what they were claiming as a reasonable explanation but in terms of derivation you claimed the company didn't claim appreciating that it was that there was a benefit from this you claim that the actual physical thing that that had been provided we claim two things around to reclaim the compound and then the method of using the compound in specific formulations and in specific ways to treat specific disease conditions and they were all collapsed into a single inequitable conduct finding without addressing them at all separately but with there is even treated jane decision back in two thousand and five which suggests appreciation court for one or two i think the question of whether you have to if it's a one hundred two after evasion defense whether you have to in fact appreciate the benefits of invention for you can communicate it is an open question as cancelling and well what about the f that and we focus on the decisions of this problem with the manner in which it was addressed and i think exigent says you have to say specifically who it was what they know and what they did at the fed doesn't say that you have to have a finding that only one person engages in inequitable conduct it could be a group of for they claim that the misrepresented what was done during the course of making the convention that person your honor is not accused of an inequitable conduct the person who made the statement is not and the affirmative fossa to me you don't admit that she intended you saying it was a mistake on the part of this prominent practitioner but it was clearly prostate at your honor i actually respectfully i think if you look at two things if you look at the preceding page where he describes the manner in which the invention was made and then if you look at the other parts of the record where he actually rephrase what he said in that particular state and he says if no one had focus so you have something that's not even offered by the people who are charged you have to prove going memorandum which both app attacks in the district court say are set to pull up to multiple different interpretations you have the sh talking about a circumstantial case for sure i and there is a sense itself says you can why you can't use assigning scales the level of materiality is certainly relevant to the wrong question of intent and here we've got foreigners for sure i don't i don't know that any of those require disclosure of any more than what's in fact disclose but it's been validated on foregrounds and one of the reasons i'm focusing on an act of conduct some problems i think the most important issue within each of the different findings are the places like on the on sale bar where there is simply a finding that is incorrect and when you have people like the prominent is that is i think one and the most obvious remedy because he had made a sacrifice things that are required there is nothing before you that identifies the person the claim the knowledge of materiality  the district court's decision with one hundred fourteen findings of fact cites to the record is complete and is in fact an indictment of what it was that stuff one did in this case as to the two individuals there are particle size at age two three five seven mr gong makes it quite clear that he was describing of the baton and as part of the process in the prosecution he had to draft responses to rejections and concerns of the at of the product the supply agreement and all the work were fine had done and we start off because i think there might have been a little bit of it on the statement but i think it's pretty clear that material that met every claim in this pattern happens to be used in clinical testing they also shipped part of a lot three which was the a substantial material emissions here i mean clearly there were repetitive substantial material emissions the real question is whether or not there is the finding of intent which we are k from acquiring one of the things that surprised me here is while the medium fine the core never made any specific credibility determination and that is a bit surprising when you're talking about intent and you're talking about the trial that was a as extensive as  the one here why do you think that a well court actually did make implied findings of credibility for example the court rejected this claim of confidentiality he rejected the air figuring the testimony to the patent office he finds that rebel knew about the reduction of the particle size on behalf of a fine and never told the patent office about it all those are important findings that go to the materiality findings yes or do because i love find knew exactly what they were doing and the court looks at the chart that was prepared which is i think it's quite helpful it's a four thousand what a four thousand tells us it's fascinating so this is what will plan was doing after nine hundred eighty six every watt they produced with one the media claiming error they claimed the concept of small particle composition and didn't make clear that they were really claiming a method or a threshold and let's assume for a second there's a cut off at this point where the predictability is better here's what they tell us and this is the this is what i can i can tell the court on mr green by our write a memo on october six laboratory in paris he's still negotiating we don't know if he doesn't also up one's going to buy this product to sell in the united states which they do under the supply agreement or not and what he did is he writes the statement that the formulation was strange during the development this is talking about the fine tells our understanding from the conversation to begin for was that the change in bob decreasing the particle size of no formulation change all he clinical studies were said to be conducted with the later formulation and when we looked at the chart which is the evidence in the record as to what the fine did starting in january  three years before this meeting before they talk with mr greebo they are producing starting with five slash two four three five which was never disclosed by the patent office by step one though they knew about it no less than one third and they do that consistently less than one thirty less than one sixty four less than one sixty four one thirty one thirty last one thirty what can we say about that anyone looking at that sees that there's a reason they're doing susan the pharmaceutical company you know making a mistake they do with him confessed can consecutive batches with one except what about the method claims as a method claims are using the pharmaceutical process which on they didn't challenge him at the claims in the brief but if if we look at the method claims makes a distinction between this situation in though this is specifically on line with them so here you have a signed contract something you never had and want a lot of just letters sent out to a number of companies who have a signed contract nothing was free because no license agreements up one was required to conduct the clinical test to get approval and the testimony at trial was that it was well known among some one that that was going to cost over a million dollars to do the clinical trials that all approved in the future and that didn't stop the court from finding it was a contract and that's exactly the situation we have here this is a written contract signed by two parties and when the product gets delivered in july the product that's delivered in july for the sale price because what you don't know and that's why it's tied to a percentage of your net sales obviously when you're selling a pharmaceutical you don't know yet what your pricing is going to be how much profit we're going to make and so what they said is you pay us eleven clark and just tell me what is your best evidence of specific intent remember specific intent to deceive on each one of those three  was aware of the receipt of the laffan small particle that met all the claims that he did he was well aware of that never discloses the patent office as the inventor he never in any of fine from the minutes that we've seen you knew that were fine had tested the small particle he knew that they had used it in the clinical test so when we look at the atoms and it says that they only tested large mcdonnell in the form s he knew that was false because he that he knew that were fine had been consistently reducing particle size which is through the notes that he ad of all these meetings he knew all of that never disclosed any of it to the so that said a one two eight five five and remember going gets there i believe you said in july of ninety ninety four is testimony in his deposition and the judge got to observe dr revile on the stand and judge what he was going to and what we learned from the memo is that mr boone was well aware that they get receive every measurement that laffan had made of this particle size showing small particle size and large particles size and hot and we know that well part and that's what the judge found the judge didn't find that they simply hid lafont role and often he specifically says every time he makes that statement that their role in the claimed invention their role in the small article pervasive is the judge found throughout this application that's the finding the judge made it just wasn't one state it just wasn't one part of the patent prosecution it is consistent throughout they it well as i say it's rare that you get a concession for say and i you know i i might be you know looking at this in a different way but i look at frankly the october  memo as about as close as you're going to find is a confession in a patent case when someone says that we measured the data so we didn't have to disclose it to the patent office and the judge rejects the confidentiality argument because if you look at the end of the actually gives us the reason why we why someone did this without the efforts of this team an opportunity which may provide significant benefits the safwan would have been lost and for this you've talked about repo mr clarke for a mr clarke's statement that mr we pointed to which is a and a response to an office but never before been modified as the inventors have done there's no with bud's or question about that state he's making the statement that the everything he did was reviewed by foregone the truth so either clark knew it was a false statement when he made it which would make him guilty of an equitable conduct or were gone let him make that statement knowing it was false  reading of it i think the statements made the judge point to this statement as being something that shows part of the pervasive prosecution history to get this pattern with false statements and this leading statements now do we want to do we want to say it was clarke who did this we're going says i was with clark when he came to interview the inventor's i reviewed everything that is provided on and maybe clarke can be excused for this but that statement is visible where in this statement it is simply false if we sit down with you reince or a question if the invention is perceived by them as the rational regardless of the waves claimed for now if they perceived it as the threshold is there still the same materiality and intent yes because they should have told the patent office  these particle size products they were putting it into modafinil that was being used in going to build tests i don't know how you ignore that you can't i don't care if you say the threshold was one sixty or the fresh old was one eighty the first one they got  and here's the best example what is mr cartman votes to do if this decision the firm you did not get an answer as to whether he's accused or not the honest answer is he was accused in the complaint what the accused the trial the first time there's been any suggestion that he are just flat out in error i don't know how we got there but let me give you an example if i quit that goes to a question the judge rater in u s history priceless the fine did not appreciate the threshold it doesn't even appreciate in fact was correct if you consider a one to five days not well liked what that testimony say was that we did not appreciate that that there was such a correlation with fire availability but they but they specifically the first thing is that they never came out they never told them that two things one is that there was a french is below which the relationship the traditional relationship between particle sized inviolability which is smaller the particle size on the part of they made large particle size they made small particle size they never discovered the threshold for its consequences and its scientists said so and then most importantly your honor at a one two five eight nine which is november twenty five one nine hundred ninety three this is a month after stefan has written and said we've got a big problem we think we have to discover the solution and the the patent office it says that the threshold was key and it was particularly key because below that threshold that traditional agent should be just described disappears so that if you can control it below the ninety five percent below the last thing on me i ask sure question one is it reasonable for a patent attorney to think that he's claiming a threshold when he puts forth a composition claim such or if they actually had modified the method for making modafinil particles there would have been a claim there for the new process of making modafinil particles next question even if they thought the invention was the threshold they didn't disclose anything about their activities with laffan and you heard mr price return to that point over and over again invention was that discovery of the particle size stressful and the elimination of the traditional relationship between particle size and bioavailability it didn't matter who make them it didn't matter where they came from it was that discovery and the reason i keep coming back this is that if the court considers the specifications they were open and honest about what they thought the invention was now they may have gotten it wrong they may have claimed it incorrectly but honor and that that was there because if you're trying to that's not legal you're saying that he just factually didn't he didn't believe them so therefore we have to rivers no i think there honor there there are two legal errors that are completely separate evaluating intent not to put yourself back in the fiction of the people in nine hundred ninety three making a statement and to try to disassemble it in hindsight and if they said i think if your honor considers the specification and if you look at the two documents