additional cause of action that we played in the complaint in the first a medical place and each of those involved that substantial question then turns on the question of the breach of the of the patent signers duty not to undermine the patents of has been found to supply an affirmative cause of a minimum of defense and the reason for that is because in this case dr nick got a first after many many years after having assigned his patent rights and been fully paid came back to s t l after some litigation which he realized that those patent rights became quite quite valuable he attempted to extort money from s c l by demanding that the he be paid for a period of four years demanding the be paid additional compensation for his inventor ship  different than the gratuity of the third hired as well because the the issue in the in the gratuity got the seventy six thousand dollars that he was paid by as he all was that s t l asked for his cooperation in connection with the earlier litigation against acer he supplied that cooperation assisted in a variety of ways doing patent research finding documents and supporting the the cause of action that was based in part on patents that he was the co invent when he comes to court on behalf of samsung and having entered into an agreement to be paid in advance a minimum amount of money plus three hundred fifty dollars an hour it's a it's a whole different thing there's no room in the front  goddard to be paid by the semiconductor energy laboratory for that work that he did in the case nevertheless because the case was successful they compensated him afterwards everything you've been saying to this point that i duty that we're talking about is a federal duty under the patent law this court to recognize and i'm a scientific that's quoted justice felix frankfurter on that point and that duty that fundamental duty not just underlies the the declaratory judgment relief that we have sought but it also underlies things like the quiet title action the slander predilection it's admittedly difficult to know exactly how to characterize the of the actions of dr mcgaugh to in order to obtain a remedy for this it's a very significant harm however and it arises directly from the breach of the duty so even though we acknowledge that this is an unusual fact pattern in terms of the sign or a stop of bachrach it it clearly implicates that fundamental duty that underlies the  e and it's that breach of duty that diamond scientific talked about so clearly as being the pattern assigned or having once been paid for the assignment of this pattern under the under the least implicit representation that it has value coming back and now being paid on the opposite side of the equation for arguing or sustaining arguing that it has no value and that's really the the issue that we're that we're addressing here we have a situation where that inventor in fact came in after the fact many many years after the fact after many years of cooperation and not challenging having been unsuccessful in getting this money from s c l and now is for a guaranteed minimum compensation plus an hourly wage plus an hourly rate is breaching that duty expressly to allow that case under protective order so you don't know if it was a certain we know that the issue of doctrine of god is testimony and the veracity of that testimony was was a challenge we know that under the stop certainly doctor got his position but it's not really a remedy it's a there's a procedural aspect to that there's a process that allows us to test that testimony in that circumstance the issue that we have here is that  district court in wisconsin would not rule on the inequitable conduct issue said although we were doing quite well in other issues we got a partial grant of it of infringement of some of the elements of the bridgeman the invalidity of the patent was held over for trial autum additional litigation this patent has a life until two thousand and twenty two it's a fundamental pattern the semiconductor area do we deal with that issue in every individual case going forward knowing that it will come likely at the end of the case why can't you if  but i'm not sure that the concept of that anything or then provide a substitute for consideration a contract for each case that went from soldiers is however based on the it is but it's based on the doctrine the underlying doctrine if you trace the development of that case as we've done in our brief from the underlying equitable consideration of what you have encouraged somebody to change their position or reliance upon what it is that you were promised you should be a think that it's likely that people out there would prospective descendants and your infringement actions that you might bring might climb to challenge the living and therefore you want a declaratory judgment from a list well i think that hypothetical is far from our facts because it doesn't it doesn't arise from the specific circumstances were already been done and that the circumstances were if somebody had challenged the validity and a suppose one case a witness and asserted something that would have contributed to a finding invalid that case was settled and now you know under those facts and the and those thinks i think from our case is that in our case what we have is that underlying duty and obligation of the inventor not to do that and what's lacking in the hypothetical that the court provided is that underlying and fundamental duty which is that the heart of this case and the essence of the of the harm that was done to s c l in this case are you asserting a common law we have a sort of call a lot towards that turn in part on the asked go right to the heart of the matter is there are key is there a federal claim here and the defend the plaintiff excuse me has acknowledged in oral argument and here today that currently there is no federal claim what asking for is that the court create a federal claim based on an unstoppable doctrine now the doctrine of a sign or a stop will says that if one assigned patent one may not later when accused him for enjoyment usually as a party defense assert a claim that the patent is invalid however this court and courts follow have held many times that invent tours and is designed to prevent a party from challenging the validity of the patent being asserted against him that he has signed here what we had in the underlying case against samsung is a part claim that belongs in federal court at all i agree here without having without the context of firm of claim of infringement against which in the course of which that issue comes up and the broader n stoppel an affirmative claim for relief that they conceded that below and they've conceded in the rape that there hasn't yet correct one but they're looking for one here i mean again the nature of the common law is that it is always open a court to create a new doc trying old basis for leave isn't classy reasons and precedent suggests that it should be created if that's what they're asking for the fact that it hasn't been done in other words could they create an action in this case based on a finer stoppel that one could imagine others where they can seek to foreclose testimony in subsequent infringement actions that they might bring by seeking a declaration that whatever testimony might come in is untruthful or in permissible in some way and i suggest clerestory judgment act does not extend that far to permit such a claim to be made so yes i believe that judge buyers kharab that it would not be proper to allow such a claim in this instance for the purpose of preventing future testifying x by making a finding now that this testimony would not be true or the testimony might be a stop in future so that is definitely a basis on which to uphold the lower court's decision let me ask you this with respect to the question whether the state law claims really do raise federal issues to render them arising is the route to federal jurisdiction is is it necessary to decide the federal question in the course of resolving the state claims can you address whether that route is present in the state cla at issue in this case yes your honor that that is always for us the harder because it's what much more and more has been the first absolutely your honor here the state claims that are asserted our claim to show is well there's three that i definitely do not implicated sign or stop the doctor one is quite a title one is slander of title and one is unjust enrichment arguably unjust enrichment could be said relates to of contract claim under state law the breach of contract claim arguably says that a sign or a stop allows a doctrine it whereby it's improper for an assigned or there's a duty on the implicate the assigner the stuff of doctrine and make it part of that cause effect because for a couple of reasons first of all i think that it is not a substantial question of federal patent law in other words you don't have a case within a case this is not where we need the expertise of the federal court in an area such as patent law that is exclusively in the jurisdiction in order to make that determination i think the state court could readily determine a very small an underlying that that that we have that i have to address which is is there even a claim for a sign or stopping here at all and what is that so we have an inventor in assigner who testifies the remedy to the extent that there need be a remedy here is the crucible of cross examination if if the facts are as allege that dr nevada try to extort money from from the plaint that doctor got a failing to extort money in fact sold his assistance to samsung as compared to plaintiff who acknowledges giving doctrine about money but that was ok but when when the defendant did it wasn't ok that the doctor in about a sold his assistants a doctor in about a light under oath that he had a reason to do so the answer to that is frost examination doctrine about as a witness this court has held many times something one way you can stop those on the other absolutely your honor and it goes to the weight of the testimony and it goes to for example you can imagine a court saying well you signed a declaration saying a and now you want to say b i'm not going to allow you to do that and that would be permissible but what you don't have is a court saying well you signed a declaration saying a i'm going to let you testify to be you testify to be and then later the plaintiff come back and sues you in an independent collateral action for doing something that the court permitted that to me seems a bit perverse it how are courts to get  as a policy matter highly relevant and otherwise admissible testimony when an inventor nonparty inventor who may not have any skin in the action in terms of the outcome of the case and there's been no i agree your honor i have a real problem with that too and i think doctor i think i think any court should have a problem with that and i think what the plaintiffs is requesting here is a rule of law a claim that would put witnesses  horrible position of having to wonder whether or not any truthful testimony or testimony they believe is truthful that they give will subject them to later liability and we have a whole body of law that provides that it's going to be a matter of witness credibility which is where it should be there's three points i like to make quickly in my remaining time first the issue of pretty we talk about it both ways here here there are substantial facts that support a finding a pretty in the district court cut off s c l without the opportunity to take discovery we for years earlier and failing that he turns to the defendant in the next patent case involving one of his patents and get this money that way is not a case where an innocent third party has come to court to provide truthful fact testimony those are not the facts the facts of the first to make a complainer these he came to court he was paid a substantial amount of money for his lies that's a different situation and those are the facts that are before this this panel once you have a duty or you have the proposition that any of to touch upon here first of all the cases relied upon by the court below in all of the cases discussed by dr got our cases that happened at summary judgment or after trial after substantial discovery was taken an evidentiary record was developed there were facts sufficient before the court to make decisions in those cases there are not yet here and find that i would like to come back to the point that you made your honor regarding the policy reasons here we have not just the policy reasons that i've applied historically but we're on the verge of a new era in the america where in three months we'll have a first to file a rule we're going to have earlier applications for patents we're going to have more declarations more time and documents this is not the time for this court to weaken the patmos line or a stop of doctrine north at the time for this court to endorse what samsung has done here which is to go out and pay inventors who have assigned their patent rights to come into court and undermine the patents that would tend entirely the wrong message at a time when the american invents act is launching us into a new age when these documents will become all the more important to have a fully functioning patent system