weakness of patent claims the second related to the weakness of the fourth choice in making these arguments took relied on facts that were all undisputed they were undisputed in the district court they were under speeded on novelty to overcome two prior rejections and obviousness crouse it is also in dispute at that five pieces of prior art that cook at cited early in the litigation each fully disclosed precisely what combinations read on our side fifth which elements most respectfully your honor i would not characterize it that way the welter of other references that we cited related to other limitations in the patent with respect to the sheet movement album we cited fiber of princes we specifically identified those references we specifically recited the prosecution history and these were the same references that the p t have relied on in granting our petition so yes they did include leslie and yes they did include the other four and there is no dispute so kind of at the heart as i read leslie and the others are either or both file a summary judgment motion or action commission to do so or at least send a notice to the other side and say this session is ridiculous on this very particular ground and if you continue you're going to be in trouble and that there was none of that i think i agree with you that that there is that fame and judge kennedy's opinion in order to understand the litigation reality is that we were facing it's important to put it in context we recognize after typically after the inventor stuff position that with this recent jack you write january motion or at least in a letter to the other side so that it could focus on what you had decided it was so compellingly clear that it was objectively unreasonable prosy let me preface my answer by saying it was objective were clear that it wasn't relevant and the most compelling proof of that was their decision to cancel the patent rather than submit it to merits determination before the pieta there's no question the patent is invalid now here the litigation realities we face we had a pending motion to transfer before the texas court that went undecided for ten months how many times did you have to go down to your district area that hearing i had to go down to appear in court once right so what's the appeal what i'm focusing on litigation but not stopping right no litigation and all of that might have been perfectly transferable to indiana of course of course but my point is that we had a pending motion to transfer before the court for ten months so we're faced with the question what is the pathway that is going to get us out most quickly from this litigation given the compelling evidence of  for twenty year i routinely went right to opposing counsel and say say i've got no complaint here you're missing an element here is that supreme court state supreme court cases station need that peter in march which laid out all of this if it written resulted in no response from the other side what we're arguing about here is litigation choices that we made  or maybe it was that you were using this as a test case to run up the cost so that you and you could gain the people that you're trying to get because you don't like not like the general practice of non practicing in the litigation by these  about this practice no i haven't i haven't had discussions that i can disclose about deterring this practice google is a client of our for google has the right time of that time period for it's a basket maybe not much at all why don't and how long it took you to look at leslie there aren't that many patents listed on the front of lesley as you know his ex an extraordinary huge three weeks before this happened or something and why didn't you write to the other side and say we don't need to go through all this in invalidity contention we don't need to do all this clean constructions we don't need to go through the i p r or tell us we're wrong in thinking this is glaringly obvious because it was our judgment that that was not going to lead to that to the result we were seeking which was a very early exit what would have been the harm there would've been no harm but it wouldn't have been likely to to achieve the early well it seems to me that that's more or less the kind of letter i was trying to i mean it's not real friendly i understand and maybe we could have written a letter but my professional judgment that would have resulted in the excellent one saying is that e mail is sort of the kind of communication i'm talking about that is it's as if i were not friends but i'm talking if you don't drop this in and six weeks later yes yes the proceedings end of six weeks six weeks later but why did you send something like that before i didn't think it would produce the result we were likely to see and i think the proof of the application or is that something in the examiner came out with an added we i haven't been able to find in the prosecution case i don't recall i don't recall whether the examiner found it or whether it was provided by the applicant during the prosecution history the prosecution history is extremely telling on that point your honor because leslie became relevant for our purposes only after the applicant added the chief movement el to overcome the two prior rejections in other words when it was whether it was provided by the applicant or the examiner had discovered it that was just as an example of a prior device in this field once disclose that back to leslie particularly since we now know that the applicant had actually copied the same element from a cook the books he made no such disclosure so the argument that judge mckinney relied on that this was one of these references was from before the prior art the record conclusively shows that the examiner never considered it from the standpoint of this chief movement element because the applicant had violated his duty raises an issue that transcends the facts transcends the party and that is to what extent should individuals in the position of messrs mitri and salman be held accountable for baseless with respect to the idea of a letter or rule levon activity will eleven requires that rule eleven motions be made as soon as practicable as early as possible in the process and the whole point of that requirement is to avoid situations like my friend says is our president here had he done what rule eleven requires of a party who believes what he says he believed he would have taken action immediately to submit a safe harbor motion so what is your response to his statement i think that it was deposition if he answers that he did so we disagree very strongly with that judge toronto the there's a big difference between what happens when issues are being litigated on their merits when parties are expressing their competing views and when one officer of the court tells another that a claim falls so far below the standard that it should be dropped immediately now if if counsel were to  that this case is frivolous this case falls below that standard in a letter as judge while it suggested or in a safe harbor motion as required by rule of and b that creates a very different context than the ordinary interaction of litigation where parties exchange positions and fight about if those those terms mean the only evidence was that out of approximately four hundred cases there were two in which attorneys fees were ordered and where those pay i don't think there's anything in the record regarding that one one of those matters is active the other was settled and i do but i don't think there was anything in the record but your honor with respect to the energies i don't believe the number count supported the statement that you just made dozen entities and then a lawsuit can't remember much of a seven sticks in my mind but it just popping in twenty eight is the one in my mind your honor but i can't swear by that so in other words it wasn't one case pransky that's not what happened and of course as judge mckinney pointed out there was no evidence that there was a pattern that should be of concern in the record showed only that lawsuits were filed they weren't tried and there were some was speaking of i didn't mean a trial the fee the evidence was that there were no trials so they went to the merits and at least some absolutely they did and that's that's another to stand wishing factor about this case in the paradigm case of nuisance value settlements the pattern this court has identified involves litigants who never test the merits of their claims who as in the new a case back down even though claim construction goes their way when it becomes clear that the adversary will settle that pattern is not present here indeed to the contrary the record shows the merits of being content sometimes successfully sometimes not but in any event gentleman or yes your honor so if you have a situation where you're buying a patent presumably one of the things that one might want to do in a given case is review the prosecution history and in doing so various things might come to once attention but the the market for purchasing patterns is very broad and patents are purchased under different circumstances it wouldn't necessarily be the case that in every instance diligence process would include a review of the prosecution history is it was one of the grounds i don't remember in this case that kind of lack of due diligence not jump out and scream there's a buck well here honor all of the art was before the examiner so whatever might be said about a given piece of art or they are collectively the fact of the matter is art was known to the examiner and it was considered by the examiner now in this context whatever stands out whatever comes the want exams or know that the inventor copied that feature from cooke so that's that's a disputed point your honor that whether whether the feature was caught in the deposition he seems to have said well what he said was that the feature wasn't novel now of course that doesn't mean he copied the feature from clock and it about i guess i'm remembering he said i had to draw or use a cook model for the basket but that's not actually be interesting feature here the interesting feature is the movable sleeve over the wire does he say something about copying that the inventor had the invention and turned to an artist and the artist used the cook device for inspiration illustration explanation rather than that the inventor had copied from cooke but on the other one judge toronto provided that that could happen to the artist or his and or her and i don't remember that the record is clear on that point your honor and i'm not sure but on the other issue your honor there was there was no happened get on the face of your i'm not recalling i know there was a lengthy i d s that was provided but i'm not sure your honor but just the the context we face here is that judgment kenny was presented with a situation in which as judge serrano was and inquiring of my friend there had not been specific identification of art there had not been a claim that the case was frivolous these issues had not been tito he took a look at those judgement kenny turley evaluated the record the standard of review is abuse of discretion judge mckinney's careful and one particular failing i cook is the notion that this was about a nuisance value settlement approach the court has seen this approach in other cases cook argued that this is an example of that judge mckinney considered the facts he found the claim and proved that finding by judge mckinney which was the foundation for just about everything the cook says is sufficient to support his determination now there was no we haven't seen of them that may be the foundation of just about everything that cook says because they decided to pages in the fees motion about just how it's for you know really weak the validity defense is here so the argument was made judge toronto but in the context of things judgment can be evaluated then and we have to consider the full context there when it came time to defend the merits of the claim before the peat tab and remember this was of course just a preliminary pet might be prevalent i wouldn't say that it did in the argument that was made in response at the preliminary patent owners stage shows that there was clearly a non frivolous response the is not an endoscopy device sygate is a cabinet there petition was about lots of stuff besides well it was but but that point the point about the end of scopic device was made in response to the three arguments that succeeded to each of them and that argument was well founded there hasn't been a specific argument by cook that there was something that fell below the bar in the argument that was made at the preliminary response stage the argument was well founded based on the characteristics of seagate as it was well founded based on what the crandall says and the argument that the preamble was limiting it was also reasonable and there's no suggestion that that argument was frivolous and if there were such a suggestion it wouldn't it wouldn't be well taken so when we come to even the point at which a preliminary position was to be taken  a clearly non frivolous response to the arguments that were being may now the argument didn't succeed but as we've been told many times by this court and by the supreme court simply losing  that the idea that there is a pattern of misconduct was not proved judge mckenney explicitly found that allegation not to be proved that finding was not clearly  that was not the clearly erroneous finding and if you don't look at the argument the way cook described it your argument inherently wasn't something that was going to be perfect cook said the only inference that can be drawn is that a certain state of affairs apply well judge mckinney didn't draw that inference it was reasonable for him to do so i said i've been going after his license to practice long thank you thank you like to first address the corning that was made the judgment kenny thoroughly evaluated the record on the invalid if you point you will search judge mckinney's opinion in vain for any discussion of the prior ar that you made a different point in your opening argument about some sort of duty of candor that they were required to say something that they didn't and now you just said there's a false statement which you also said in your brief and can you just show me where that is the pages that i cited earlier that they did not affirmative you're correct they did not affirmatively state that this confers novelty but that was the basis for the their argument to the examiner to overcome the prior art yes it's correct that it over that it  distinguish it from sukey it up but the implicit representation surely was it distinguishes it from all the prior art including leslie which wasn't true that wasn't true my broader point though is simply going to judg analysis he undertook no one analysis of the prior art never mentioned leslie he undertook no one alice is the prosecution history he undertook no analysis of any of the really undisputed facts that we presented going to  valid secondly he was given i forget how long your fees intuition was at thirty pages something like that two and a half pages was about and there is overwhelmingly what you wanted me to concentrate on was the way this was an instance of a general practice just how how much more should he have done and what was you know five percent or something of here your attention going to i'm i don't have the pages in front of me but i am very confident we devoted more than two pages to the invalidity of this had just the statement of facts we were cited the prosecution history length and by the way in that prosecution history we included excerpts from the deposition arguments going to the extraordinary weakness of the case one was the invalidity of the patent and which was based on prior art in the prosecution history and the other was the decision to file in the eastern district of texas which had absolutely no connection with any of the witnesses in the parties any facts related to the case at a minimum under ron trial in order to conduct an adequate inquiry the district court has to address the prior art it has to address the prosecution history when that is the predicate for our claim that this was an extraordinarily weak piece of litigation none of that is in judge mckinney's opinion the decision to file in the eastern district of texas was indefensible there was no connection with the eastern district of texas we made that argument we cited this court's decisions under fourteen or fourteen that's not it can't be quite right and maybe it was and there is undisputed nintendo under nintendo this court made clear that if there is no connection between the district and the parties the witnesses the documents or any of the evidence it can't be filed in that district when you were asking me earlier about our decision making why didn't we file for an earlier motion for summary judgment because this motion to transfer was before the texas judge for ten months one of the things we had to take into account was the possibility that we were going to mandamus and the other possibility that we had to take into account is that our motion would be granted as we is it should have been as indeed the texas court ultimately did so if file a motion for early summary judgment he in the texas car in the texas court our motion several months later is granted and then we're going to be before a new court in indiana where the discovery is nowhere near completion a likelihood that we were going to get an early summary judgment in my professional judgment approaches zero we thought that the i p r was going to be the fastest pathway to exit and that's what the facts filed by more than twenty five shell entities in none of those cases did mitri and salmon go to trial test the merits of their coins in none of those cases are two different things that's not in some of those when none of those tiny percentage of civil cases and probably even a small percentage of cases actually go to trial i understand your honor but this is four hundred cases and in none of those cases was the patent was the right judgment of pat