i'd like to move up the admission of adam's adam jennings will appear who is a member i'm standing of the bar of california still in this country ok well in that case i'm a california and i can certainly vouch for his good standing in the bar in his eminent credentials to represent this bar of self admirably in our profession adam came in on short notice and has done just stellar work for me you can always remember you the first one admitted in this courtroom matter such as my rather link the and the room ling motion you grant i remainder of the appellant's opening time to discuss the court's findings after the trial the district court erred if in granting summary judgment because there was ample evidence in the record to support  the the selection of lanes opposite as a lead compound sufficient to establish the obviousness of representing and was also sufficient to establish that the non disclosure of aliens opera's  i relied upon here in this instance i tell them the the experts said that the test data in the seven twenty six application didn't allow a precise quantification of the amount of acid secrete but the but and as to experts testified that the data in the seven twenty six application confirmed what a person of skill in the art would have understood from reading the seven twenty six application in light of the priority clearing branste which importantly disclosed that compounds with this structure were not only were not only anti ulcer drugs but were anti ulcer drugs that operated by suppressing the secretion of gastric asset and i should add that in a sense the judge got one of the theories smalls structural variations in this field produced wildly different properties i'm still struggling to understand why just the listing of this particular one in its lampreys all and would identified as a starting point but it would be if there were very few drugs in this class of brands from course structured compounds disclosed in the prior art that were identified as having powerful anti ulcer characteristics lens opera's all was and this is under spewed it shown to be twenty times superior to all members all and the evidence is also undisputed that person's a skill in the argued over met result as the gold standard that was the compound against which every was it was the first commercial successful commercial p p i that everybody in the field was trying to develop compounds that were the were better then zero members all the prior art disclosed that lands opera's all more perhaps than any other prior our compound was better than the evidence was clear and could not have been rejected some nearer that a person of skill in the art would have recognized the in the message and test as indicating the superior entity else or characteristics judgment there was clear expert testimony that a person of skill in the art would view the data in the seven twenty six application as squinting to lands opera's will as a deed compound one of few if any compounds that showed the most promise as a way to develop the next generation of anti ulcer medication right that the judge said did he know that the fat the  also rectify the is sufficient to identify it lives opera's all as a lead compound if you look at the five fifty two patent itself you know the title of the application talks about anti also not anti secretory the field that's identified in the patent is the treatment and prevention of ulcers not the treatment prevention of ulcers by suppressing gastric acid the claims themselves the claim three talks about treating peptic may have been the case that the inventors were focused on suppressing acid secretion but identifying lens uppers all as a superior anti ulcer medication is sufficient i suggest to identify it as  were over there was evidence in the record the testimony of dr fuller in particular which suggested a person of skill in the art viewing the seven twenty six application in viewing the mess up and test data in that would understand in the context of the compound as close as compound do you still have a problem in the substitution of the particular substitution that's in question here because substituting alters  it was not alone it is not our argument here that someone would have selected lands opera's oil as a lead compound primarily because it has this already made it out toxins that spit at the four position it did but it was it than i'm going to do in explaining why why this is the case but a person that the prior art in particular the brant strawn article taught persons of skill in the art you know basically the way to get the bang for the buck in terms of developing and improve to have to come back to the point that your own experts said that the level of acid secretion was not ascertainable from the e p seven to six data which shows that there's really no nexus a as a lead compound moreover the testimony of other experts that have offered disagreed with mr stoner this is a summary judgment it was it was not  disagreement even if it were disagreement that could have been resent that should have been resolved on summary judgment to have a proffered sufficient evidence to warrant the conclusion that lands opera's all was a may please the court going to address the issue of inevitable conduct this case is the flipside of the produce form of verse and ok's in produce the case was remanded because the district court made the mistake of finding that the materiality was too high in this case what we have is the district court made a mistake finding that the materiality was too low or nonexistent and in that regard we submit that the district court made contain substantially similar claims under date though the test is substantially similar not identical not overlapping the district court erred in substituting the concept of ultimate obvious of view of a reasonable patent examiner he went to the end result and he looked at it from the point of view of ultimate obvious that but the it seems to me the problem you may have is that there were a whole series of arguments that you  me and therefore the district court pretty much addressed all of them none of them seems in and of itself to necessarily be dispositive so it's just a random it's ok he didn't say it was highly material but it may have been you know even if it was no materiality the accumulated that to reach its decision well the problem your honor is that if the court should find that his findings on the level of materiality are incorrect and we submit that they clearly are then his entire analysis is tainted but what does that mean on the level of materiality so he said that there is a low level and we would say well there's not a high level but it's something more than a low level yes if you if the court were to find for example that the co pending applications were highly material that the rejections were highly material that the withheld prior art the big golden reference was highly material and we submit that each of these things work then you have to look at how the court analyzed intent and what the court basically said is these folks would not have had a motivation to withhold any of this stuff because none of this rose to the level of being seriously material they would have gotten the patent anyway and the prism through which the court analyzed the admissions  in house patent attorney was this prison of kind of no harm no foul but what do we have in this case we had the in house patent attorney the japanese patent counsel admitting that he understood the big golden reference that a patent african knew or should have known that the withheld information would be material to the p t o s consideration of the patent application we submit that the district court did not make any findings that are based on the record that there was any good faith credible explanation for why it was that this information was withheld for example in the case of the fujisaki there the in house patent attorney admitted that he made a deliberate decision to withhold the information the district court never decided never analyze the evidence or whether there was any good faith explanation for that and said the district court found that the the declaration was not misleading because the omitted information was not prior if your view is if we were to just agree with the district court that everything he said was not in love love materiality becomes high and that requires completely evaluation of the intent to deceive problem because he's misunderstood what w in fact not get that i think that's right roger i think there's no question that the district court viewed this case from the prism of low materiality and i bring this this brings me back to the produce decision in produce it's really the flip side of the situation the district court made findings on the issue of intent that were predicated on a finding of materiality this court found that the materiality the traumatization was incorrect and therefore the man did i suggest that we we have the same case here i'd like to reserve have to meet some threshold of intent however well i think we did your honor i think we've proven both knowledge of the to reality and and that withholding but that's not intended to see well but i don't think the district court focused on the question of whether there was any good faith explanation i think this court's precedents indicate that if we put knowledge and knowledge of withholding it's incumbent upon the patentee to provide some good faith explanation for how this could have happened remember we have a pattern of a withholding this patent application was pending for the to cope any applications were pending for three years there were multiple opportunities sometimes within days of each other we've consumed all of your time but if we could restore three minutes of rebuttal time and if you'll add three minutes to mr malise time if he needs to use it they'll end up pretty even was a wealth of prior art out there were many patents a claim superiority over the gold standard all members all based on anti also data there's the k to sr application that's referred to before six four there's a big golden one of the multitude because if it's one of a multitude what is the chance that you picked the right path to the claim compound so they made a conscious decision to say anti also doesn't count as it inhibition is the key and they set up that straw man not the core but it fell apart in expert depositions the judge didn't decide on a material issue of fact their own experts three of them were forced to admit there's no correlation between the data in the lamb's opera saw application the defendant says i have lead compound b and that's where anyone would start in the relevant time period to start their pathway to the compound ultimately the problem that the court had with that was there was about a ninety equally probable lead compounds under the criteria that that the defendant identified and the court said that's too much and the court distinguish for example the pfizer your best decision where you where the defendant was able to get it down to about three relevance although there were too many pathways and chaos are the cornerstone of keris are is common sense and if in one thousand eighty six is hypothetical person of of ordinary skill has all the references in front of them but he has to be lucky enough to pick one of dozens of different pathways to get to the right claim compound and that's not obviousness it's it's like picking a needle in the haystack and so i think in giving data that was it doesn't disclose there's i don't have a number for you quite a few more within the genus that's disclosed there's the sister to kate application another twelve to fifteen with data a much larger g compounds disclosed there's a big golden five eighteen application some twenty compounds with data a huge genus disclosed that alerts claims offers all the one with the twenty times better raises everyone  this is what where table flip flop once all serves once acid inhibition was struck down as as a straw man that it was they said well ok let's talk about an isles or you've got let's talk about it and i also even and i also there it's better but the court said no we're going to hold you to your argument you set up a straw man it fell apart and therefore i'm not going to go to your secondary and tertiary arguments the other place significantly where where this prime facia obviousness argument falls apart which doesn't require a trial is on modification here's what table's own expert says about lance offers all the teaching of the lan opera's all application is that all these wonderful properties flow from this four position period to group this fluorinated substantial way and if you look at that and compare it to the tecate assister application really that's the only thing that distinguishes lance opera's all and their own experts said that's the key that's that's where all these wonderful properties flow from now what do they say you do in the modification will you take that group from which all good things come and you laugh it off and you throw it in the trash at doesn't make sense they say get rid of the four group after going to that for that very reason first thing we're going to do in modification is get rid of that which attracted us to the concept we submit that doesn't make sense  that there's no conclusive evidence or that it's not conclusive that there would have been a double patent rejection and even if they were would have been temporary is that really the appropriate test to determine materiality well let me handle th time in terms of the first question isn't is the issue of the double patent irrelevant i would submit it is a double as a rejection of the m p p m p v piece sets up the duty and it says you have a duty to disclose co is what leads you into the analysis with there have been a double at a rejection and what the judge found is that there was no motivation to go from the so call that a law to a better person on the one nine hundred eighty six period no but my question is whether or not there would have been a double patently jackson is that equivalent to whether or not it's material that just gets in the door that just sets the threshold that that just opens the discussion if you can't get the building that and he found there was an adequate support for that and my opponent say well he should have decided on structural similarity alone but in re dillon doesn't say that in rebuilding says you have to have structural similarity and chemical compound unpredictable compounds dr hopfinger was at searle trying to develop a p p i in the relevant time period and he failed he knows firsthand how unpredictable they are so the court found as a matter of fact that these that and if you agree with that then this duty to disclose koeppen applications we never get there and furthermore if you if you agree with that this this duty perhaps to disclose rejections you never get there because you've never opened the door but let's lay that aside because i thought your first question was the key no matter where the defendants go judge lynch his opinion if you disagree that it's low materiality if you think the material is a little higher he says well you know intent and if you disagree that maybe there's some in and he says well when i look at this it balancing i just don't see anything that happened that's so egregious that i'm going to take away this conceitedly valid patent that protects this this very important drug product so no matter where the defendants go there's no that just necessarily require our do over on the intent to deceive because there's really a discrepancy between what we think these references met and doesn't that affect the intent analysis i think had the court said i materiality side you go back to me says i still found no intent so i still find no inequitable conduct so i would say a real man under your hypothetical would be appropriate only when he finds some degree of that he found crawford and at the end of the day he found them overall to be very credible he found mr crawford to be absolutely unimpeachable in this fred ability and so at the end of the day he simply found zero intent and what bothered him is that the story doesn't make sense the premise the motive doesn't make sense from the day one that they were back result patton was filed rebecca purcell was the commercially important drop yes they filed a second application on some other drugs they said why not we could get a blocking pattern our competitors will be able to make those drugs but from the day they filed that second application it was always less important and the judge said quite accurately if you think you have to hide this ethyl homma log why do you file that second application at all he didn't believe this motive he made a factual finding that this alleged motive to get a blocking pat reference to the same prior art as judge lynch observed during the trial it's a little bit like hiding in plain sun by making that second application so similar what a side basically did was guarantee a go to the same  the same art unit of discrete ten to twenty in jammers that's not how you hide a coke and the application and judge lynch accurately are i think appropriately cited for the golden valley decision for a contrast where the patent attorney the in his second application he changes the titles of everything changes the part names and he intentionally guarantees that it won't go to the same aren't you that's how you hajduk opening application and let me go to the to the issues of materiality i touched on the the code pending application aspect of it again he found there was no support that refers all would be patently in this thing from the  law and he observed more broadly of course the ethyl home lobbed claim eventual e drops out of the one for any observer more broadly leaving those two depending claims out there really is no argument for substantial act ron in each of those patients in each of those other three decisions this court found either substantial identity in the claim subject matter and substantial overlap in the claim subject matter and in the mckesson decision this court went through an elaborate factual analysis to show how the related the claims were and how the rejections in the later filed application really had a material effect or could have had a material effect had they been disclosed in the earlier pat now and this is the other aspect that really bothered the judge with respect to the store from the first day that the regressors all application was filed it was always been an issue first it was the important patent application it was the one that got all the attention from a's on the second test and had the patent the other patent issued right i'm sorry in the caisson that's right the later cases there's a real so called real double patenting rejection that could have been made that would have had real world consequences to the patent suit for example and a co they hold that had the disclose the later filed application you might have had to take the turmel disclaimer in the earlier patent suit application and even though if one of affected the term of the patent he would have had to assert that there was this common ownership except as common ownership limitation here there was never going to be any real world consequences had there even been a double platinum rejection but if why not just make sure that the of the application knew about all this i knew to avoid all this problem for that's right and i wouldn't be here and that that troubled judge lynch a little bit and he said on the basis of that assign some low materiality to this because it's better practice in his view that there should be disclosure as a jurist he wants to know what his colleagues down the hall if he has a similar interest i grant you that judge rader but but low materiality because again there's no real world consequences they didn't avoid anything and he found that their path to bleed the state and he found in contrast to mckesson that there was nothing in any of the rejections that occurred goes both to it doesn't take material ality off the table ok if you assume that their coat the co pending applications have patentability in distinct claims i don't think it takes materiality off the table for the why would a as i have done this if they if there are no real world consequences now with respect to the rejections issue though i do submit that there is no per se rule that i defended say that there is in terms of if there's a rejection of co parenting it's automatically material in the air or mckesson decided after day co first articulated the possibility of this scenario went through a very fact intensive analysis to find that the rejection in caisson would have had real effects in the earlier file have ensued application in that case the examiner in the later filed application found this brady so in that case the this court found a real conflict in those positions here the defendants can't find one they can identify one they talk about asymmetry versus symmetry in december of eighty nine in the second file one three application the court points have these big golden four compounds that rebut this argument that was being made in that later filed application about a structural difference  and mentioned in connection with what judge lynn found was a novelty argument and then it's never mentioned again and judge lynch finds by august of eighty nine some four months before this debate prefers in the later filed application the debate in the earlier filed patent suit application shifted from structural differences the property examiner fan in crawford to have this debate at the interview which examiner fan records and they agree o'malley i would just finally say again going back to your point that having found zero in time that there can't be a remained even if you want to read juggle perhaps the levels on these various particular and then i'll move on and one is the seven twenty six application itself in particular pages one three two five seven and five eight which are which set forth the into message in test data you'll see that the really good compounds there are only three of them and you know mr o'malley was at least exaggerating when he said there was a multitude of compounds to select as we compounds and the testimony of our experts identified creating a factual issue why you would focus on lives opera's also let me direct your attention in particular to dr cooper mince decoration at pages two zero seven one zero two eight three five in the record and now let me turn my attention to the that could be an equitable cut issue that was tried the judge just did not think the non disclosure of the coke ending application and more important the rejections in that co application were a very big deal but this court has recognized in the patent office as reckoning of the judge did careful analysis and each allegation going through materiality and in each one finding there is quotes there is no clear and convincing evidence of been tempted to see in each one of us no evidence of intent to deceive but you get past that well in part because there was direct evidence of intent to commit to good to deceive in the form of the behavior of mr tenet gucci who testified on two consecutive days that he directed one of his underlings to remove reference to particular compounds from a presentation in connection with one of them and he admitted that he did so because he was concerned about the impact of the information on the five fifty two  denied up and down it had anything to do with it and the judge found that that testimony was not credible this is the unusual case your honor where we are not completely relying on inference it was and circumstantial evidence to prove intent there was direct evidence of a desire to conceal from the patent office believe in each instance mr tener grucci is mentioned as one who does not present a clear and convincing evidence of any inten to deceive your honor in the area named he mentions a need instance you're on it if the judge weeks you suggest erred in assessing materiality and for the reasons the judge proposed identify for that reason alone intent would have to go back re evaluation but we think with respect to intent the judge simply missed the forest for the trees to an extent that rises to the level of your error for example