it morning your honour's me please court i'm initially going to address the motion to dismiss and i hope to keep about a minute of my opening time to address the motion for sanctions primarily to focus on the motion to dismiss weight applied to you i think you have problems with both of those but you can pick either one ok i'll start with i'll start with the weight that the district court gave to the during performance understanding of the parties your honor doesn't the burden of proof however that burden can be satisfied by coming forward with a recorded oh there's not the difference between a burden of proof and a burden of production right and you're you don't want to mix those do you know your honor i do now so the burden to prove is always on you but you could at least initially produce a nice enough evidence to shift it back to the other party to rebut that evidence only recorded assignment in the patent office was an assignment from the inventor to in that case alternately global locate that was enough to shift the burden because there was a presumption of validity  burden of production you'd be misinterpreting it if you suggested you're shifted the burden of proof away from the plaintiff to prove their standing right that your honor i mean maybe we're arguing a point that doesn't have a great deal of to the substance of this which is why do you think i period doesn't own the the path i believe that i period is not on the patent because there was an informed specific understanding between the parties during the time of performance that i created not on the patent and it was in its more than simply but there is a declaration from the inventor and the president c e o and chairman of the board of a period that they had a an hour long discussion at the time and arrived at this informed conclusion in addition there is a there was a lapse of seven to eight years during which time i period never treated the invention as their own and that's a circumstance that arises to the surface maybe i'm confused about the facts which i might point out the appendices here are kind of problematic and hard to follow some of the pages are missing some of them just label terms numbers but leave that aside so maybe i'm missing something but the conversation that took place between we intended to argue that as a fallback position to the extent that the different reforms understanding is not given proper effect that under massachusetts law despite section two sixty one it requires an agreement an assignment append to be in writing th massachusetts law would support it were the circumstances reflect that no fraud is being committed then an oral agreement in other words an assignment back to the company from so that you could is that your view that it was that that subsequent four year later discussion was represented resulted in a modification of the original agreement or is it your view that that reinforced what is currently your view of what the agreements that it actually reinforced  position actually reinforced at the parties understanding in the reason in let me tell you what my problem s so maybe you could address just what you're right about it even if you're right about the standard of review having changed the district court still made findings irrespective of what words he placed on the party and he made very strong definitive findings with respect to really get it whether it was related which is a term in the agreement and he also made finding discounting the relevance and the you know whatever the harassing and threatens of this four year later discussion between the parties what to meet whether what we know matter what the ultimate burdens are we're objective evidence first of looked at the objective evidence but whether it believed based on anecdotal evidence of what it was could figure out was the business of the company reviewing things like trademark applications articles incorporation prior patent filings by the company which are which by the way is exactly the site sort of information that this recording d t b relied on in this court reversed and remanded it one point how do you how do you get around for instance juror gerard statement that what he worked on at i honor him if you and therefore as the district court says this invention was related to the present business of by period gerard had nothing that he could modify or send back four years later he'd already given it  has found and the only way to determine that is to is to determine what is the business and research and development of the company at the time right and what are going to best position to determine that i project your honor had the parties in the best position to determine that issue are the parties that are here the five nineteen excerpted major portions of the company's patent applications that a portion of the network in the figures that scribe are precisely what's included in the other patents that the company all that seems pretty unassailable to me in terms of some relationship i mean it doesn't say significant relationship it doesn't you know ferret out what we lay should tip it but how can if we laid it doesn't include that what we just saw from looking at the patent application that related to my view doesn't mean anything so tell me well i'm not really related and i believe that the reason why the understanding of the parties is so important is because they have an understanding with the businesses they understood that their business dealt with application servers provided voicemail and other enhanced services mr gerard's invention is an entirely other end of a network where there are there are thousands of companies that companies in the united states to provide telecommunications services in general but their businesses are not necessarily software well i thought i thought that the argument you were making and maybe i'm mistaken about this is that period was was in the business of providing the software they got together weren't in the hardware business they were not in the hardware biz of the year is that this isn't related to their business because it's a hardware patent rather than a software package right well your honor it's hardware and software the patents certainly without permission from my period to use the software which was incorporated within this path is that my understanding that's right around that's correct and there seems to be a misperception that this ship t s i application had something to do with the edge switch is part of the five one nine plan part of the eight application result in the five one nine it simply does not the city aside application deals with extensions that are necessary for an endpoint for for an item in the middle of a network to communicate with an application drug not right at the corporate attorney wrote it but it's a misperception again that mr girard correct his own employment agreement i think the reality is actually it's a record is that employment agreement was provided by corporate counsel it's likely standard language it was not negotiated by mr  not there is nothing in the claim which but that's not the question whether or not he was trying to incorporate that the question is whether there was some relationship between what this was doing and what he was inventing and that does why does it not demonstrate given that this is a figure that shows this is an integral part of what he's claiming is an invention sufficient to establish the related your honor again you say there is some relation and i would concede that there is some relation however related because it is inherently bad you must go to the understanding that the parties had been reached during propensity to the group because they only they know what the business of research and development of the company is in the best position to determine that they know what they intended by their agreement and they apply it you'd still have to show beyond that that he didn't use proprietary information would you that's right is the district court chronicled quite clearly the eighty eight patent that each of by period is is aside provisional application that is incorporated by reference our system element definitions in the system element definitions refer to specific hardware pieces such as a soft switch or a media gateway or an application server are simply there for purposes of definitions they are not incorporating the specific details by the way the district court did not identify any specific details beyond stating that the details of the media gateway the soft switch and the education server are not disclosed her we demonstrated in our opening brief that those those details are discussed ad nauseum in the article that was published unchallenged at that article was published there is nothing in the district court's opinion that that finds that any specific detail beyond those three things that are obviously part of this the published article there is no finding whatsoever that any other detail was provided the information that go now on appeal has identified as being different are are specific examples of extensions of the protocol the six years i protocol that are mentioned in the city aside article that was published and in fact many of those extensions come from public sources there referenced right in the application and article as coming from public sources there are a footnote to your time's expired will restore your three minutes of rebuttal and give mr technologies states when it remanded stated that the employer's view that the agreement did not apply would only be significant had the employer been aware of the nature of the  project the crucial question this court held what the extent of the employer's knowledge of the product project absolutely true but i don't read the district court is going to disregard the cocked and gerard discussion because evidence even post dating the execution of the employment agreement as to the parties understanding and that is exactly what the district or did here the district court did not disregard the declaration is of limited interpret disregarding that the case law what we have here with the conduct and declaration your honor is a declaration with no corroborating contemporaneous documentary evidence and which a good family friend girard father who's been business with them for years and years and years reports to recall a very specific conversation that happened eight years prior and you weigh that against the actual documents assigned to our period contemporaneous documentary evidence of gerard's understanding of the scope of the agreement that is actually in writing and was created during the time period and you weigh that against  the litigation jorja he was incredible we did argue that as well but the primary argument was that it that that his understanding was incomplete and inaccurate another example your honor really quickly as he believed that the invention was limited to hardware and limited to wood called customer premises equipment well if you look at the for example claims thirteen through one thousand of i won one patent it claims a method for the entire system including software and hardware components of the system includes software and includes the centralized components as well as the customer premises components so his understanding even if you credit his declaration is under that according to him his own understanding of the scope of that invent was much much more limited than what the invention actually claims so it would be appropriate to discount this declaration it was submitted with no corroborating evidence in light of the fact that it's there's no question that he had a misconception of the scope of the invention he also never was in a technical person is in check with any technical people he wasn't a patent lawyer didn't know there was in claims or specifications didn't check with any lawyers so even if you credit that this conversation happens and we do it we did attack its credibility for this record as well but even to credit that there are a number of reasons why under this court's preceden s that it was appropriate not clear error for the district court to find the contemporary got documentary evidence not many many pieces of documentary evidence outweighed after the fact litigation inspired declaration and what's more concerned i mean apparently the this happens fairly frequently that there is and remain like this about relatedness or proprietary information or whatever and somebody leaves a company and there's a discussion of time or the departure as to whether something the person invented is automatically assign to the employer so this this comes up fairly frequently right it does yes  so the the problem i see is that years later somebody comes in to sue the way cisco was here for penn ranchman and says hey there's a neat defense here is that we can say that it was automatically assigned earlier and these people who have the written assignment really don't own the patent so what strikes me is that given the vagueness of terms like relatedness and proprietary it is appropriate to rely on the parties contemporaneous understanding and to give a great deal weight to that it so that you don't have this sort of second guessing years later about an assignment that occurred and development that's occurred pursuant to that side so that that's the that's the concern that i have maybe this is a case that's outside that i understand that concern your honor but the i the other side of the spectrum which you should also be a concern to this court i suggest is you shouldn't be able inventor after the fact should be able to rewrite history by submitting it to litigation is our declaration is contrary to all of the document area that is created during the time and say this is the this is dispositive my declaration outweighs all of this other evidence because if you were to take that tack your honor that and these agreements would never be able to get these agreements in force and the other the other point i want to make is of course this is standing and standing  it's appropriate for the district court to be the finder of fact here and the appropriate standard on those findings of fact is whether there's clear error and here this is not a case where you show clear errors there are multiple reasons anyone argues that that constitutes error it's clearly harmless error in this case and although we didn't really brief the surf case extensively there was another lot of reading to apply and if i might just cite a couple of harmless error in light of the factual findings and so for example the e s i meets vs go florida terminal case which is the fifth circuit case the court so held there is a bench trial and the court held that any error in allocating the burden of proof was harmless where judgment was based on extensive statement of the judge's finds of facts which demonstrated that even the placement of the risk of not persuasion made no difference at trial to your position as we separate the findings the finding with respect to related as proprietary information and his treatment of the declaration and then it's fairly straight forward that will irrespective of what burdens you're flying come up sa absolutely there are absolutely let me go back to the point about that was relating about lady yes i mean the judge kind of concede agreed that the term relatedness is inherently ambiguous  it seems to me i mean this goes to judge dykes point about concern about how this is going to play out in these circumstances which happened to me that there's something there's another part of the inquiry of related yes occurred here which is that there's strong evidence i mean you would agree that there can be circumstances and with such there's nothing to point to with respect to what happened you really don't know it's like is this related to this and so there are circumstances in which the testimony of the parties is going to be very compelling but your position i assume is that this case is different based on particular facts that absolutely are in this case all you need to do is look at the documentary evidence the patent itself and the summary of the invention devotes columns thirteen and fourteen to describing the application server as part of some really invention well the application server w thirteen through one thousand are method claims that in claim the entire system requires application server software to be running on it which is a period core business i period evidence shows a period partnered with switch makers like cisco so that those who bought cisco quitman when they want to purchase a messaging system what happened number of pre integrated solutions pre integrated solutions that's their product that they could have confidence would operate with their equipment there's evidence of the record that i period partnered with a company called sonus as us and they entered into a pre integration agreement with sonus and wish they jointly marketed and sold bundled hardware with their software switches with their application server there's just no question the evidence shows that gerard job and i perry was chief technology officer officer and it was his job the sip protocol research that was being done that was gerard's baby and i period he was researching bringing the sip protocol which was an emerging technology at the time into this network environment   what was your involvement development driver said quote a sensually research of key areas that related to network integration such as the use of sip the just the evidence goes on and on that this  this pattern is right down the middle of a period especially with a period actually advertised that its products quote is widely regarded as having the most robust soup support of any enhanced services platform available today confidential and so forth i mean it's kind of hard to contemplate writing an opinion if that's what happens or whatever i'm just wondering wasn't clear to me why certain things from our company certain things were so surely when we asked parties about that they say you know i don't know i'm familiar with the courts views on that and we have cisco my client cisco is not marked anything confidential in the briefing unfortunately that those are designated by periods as represented by a good one what we could do your honor is to go back and check with the curious counsel and urge them to designate some of that information and send a letter to the court in the next two or three days that's fine you can do that thank you in my quickly my remaining time like to address the even if we're wrong inform them that if we feel it's necessary for our opinion of the use it anyway to just really briefly the proprietary information point if proprietary information setting aside the relatedness the proprietary information is used and of this employment agreement then you're out of the exception and this is there's an automatic assignment well here in light of the briefing it's now clear that appellant is not contending that is not contesting that the five one nine patent used information from the sip t s i provisional to well actually the over as couple points yada first the use of the proprietary sip yes our information occurred prior to that time so that article although it was just a couple of months that article is not public at the time was used to file for the application it tends to show that it was not confidential information well the the article thirteen pages the cip t s i provisionals thirty three pages we've got twenty extra pages of detail technical information that weren't disclosed it's a relatively common practice this isn't in the record but i'll just say it's a relatively common practice at conferences that you do a a cleaned non confidential version of what you're working on  you don't disclose your technical details we would submit that's what happened here if you look at the twenty pages that weren't disclosed in the overview they were important they contain important technical information for example the cip t s i endpoint normalization model which was incorporated into the five one nine as a key element into into the technology of the five one patent yeah but you but you have a situation where they put this in the provisional application is ultimately going to be published down the line at least when the  so it could be that somebody said well we put it in there we know it and we can eventually sooner or later so we don't regard that as proprietary the reasonable there's no evidence of that the evidence is you know what the evidence is that that that gerard himself file the step to yes i application ensured that every single page of that document to proprietary confidential to i period non disclosure agreement requires that the evidence and that was the use of my period proprietary information prior to it ever being public and under the plain terms of employment agreement that takes you out of the exception to the simon clause thank you expressly the district court made it based on the fact that it was four years after the one thousand nine hundred seven agreement was drafted clearly and so that's the sole reason in the opinion that we can learn the judge discounted it during performance understanding it is clear that the judge in the district court misunderstood this court's precedent it believed that it was applying a canon of contract construction of extrinsic evidence available at the time that you dream it was directed you didn't recognize that what is missing during performance is you don't know what the business in research and development the company is unless you look outside the bounds of the grim news very clear based on that statement that this that the district court discounted the during performance understanding simply because it  respect to the four years preceding that without the four years he said talks about the weight of the evidence to the contrary curious doesn't include that's right around and right if you have the weight of the evidence to the contrary and the weight of the during performance understanding and you give but he's considering everything as city he certainly considered it but he but he absolutely gave improper weight and it's not just this court that has said that during performance is is the most relevant evidence it's the district of the courts in massachusetts and the supreme court the supreme court said that the practical struction with the parties put upon the terms of their own contract and according to which the work was done must prevail over the literal meaning of the contract this is this is where we do have a literal meaning so for example with the literal contract said if gerard's invention relates to voice over ip but during performance they went contrary to that literal statement that during a performance interpretation the parties must prevail according to the supreme court