i here once again to discuss the plague on this court of an equitable conduct rather than focusing on the misconduct of the defendant and the willful infringement of this particular patent we are once again focused on the question of whether or i wish you would eliminate an equitable conduct but now i know there might be other that you haven't but what the court has suggested is that it ought to be rare and what the court is also suggested is that it must take a very hard look at what the district court's findings  way then of circumstances where the inference is could go in that direction the only fair conclusion is that there is no clear convincing evidence of an equitable conduct was used would be here as what we have them here is that you've got statements that the made to the patent office about some possible prior or which seemed to be contradicted by this brochure in the question is whether first whether that's material and whether the this other system and omitted a reference to the fact that integrated billing right although all right i mean you agree for example that if the brochure here had come into the atkins possession before the filing of the application that they would have had to disclose that you do agree with that i'm not actually hundred percent sure whether they would have had to disclose that although you know the testimony it was quite clear that under the circumstances if they'd had it ahead of time they would have disclosed it so in that sense it's beside the point i mean i think what's important here is to recognize that this obviously came in this or judge accepted the idea that the information didn't come in until later and it and the attorney who evaluator next to me the patent agent who evaluated this said two things first of all it was undated and as such he didn't include it for that specific reason because he had been previously chided as a good faith explanation the district judge made no findings with respect to that good faith explanation and under star scientific that want to take the failure to put the brochure before the patent office off the table and the second question is why did he only describe the portions that he did describe and again there is explanation was i looked at the first page and there is a specific listing of what this software accomplishes including medical charting which was not disclosed in the application in the first instance and what did he conclude about that he said that if this is their best description of what the software publishes then i will reproduce that given that the i d s is merely designed to make to give the examiner sufficient information to allow him or her to make an assessment of whether or not there is still speaks about what existed as of the time of the application not what existed in terms of prior or that's like i'm a bit of a loss was it seems to me that if you are bringing to the attention of the examiner in your application what system exists currently what and it's the only system you identify as having any relationship to the invention that you're putting forward and you are clearly indicating that this is what you regard as as the only potential prior art that's out there look that's true but the problem is that the specification says describes it in current term the then you're just evaluating what's in the i d s right what's in that what's in the disclosure statement and there the problem with the disclosure statement is that you don't know from the brochure because it's undated what system it's describing it could be current terms doesn't that create an obligation to be complete about if they've said in the idea that this is a system that existed a year earlier than you but i understand they're saying well here is this current brochure so that's not material to what existed a year ago  but when they describe it in current terms in the present tense in the i d s then aren't they being selective in leaving out the most pertinent then which is the billing integration well i didn't understand the district  focusing frankly on whether this was in the present tense or in the past tense i thought his concern frankly was that there was not a specific reference to the billing portion in the middle of the brochure and and to be sure there isn't that so there is a  omission whether that admission as material or not it seems to me remains an open question because what we do know is that when the patent agent disclosed the charging information which was not disclosed in the application that didn't make any difference whatsoever the examiner went ahead and approved claim number fifteen even in the face of the fact that there was now turning information that we knew came from here so it strikes me at least at a minimum as quite implausible that this was a material represent a material fact and then beyond that just like the notion that the kind of intent you need to truly deceive the patent office and thereby obviously divest a party  of the entire patent shouldn't hang on whether or not something is in the present tense of the past tense to be sure maybe there was a basis for claiming that there was a breach of a duty and that there was negligence in this context but breach of a duty  negligence as the district court seem to recognize but refused to reply properly is not a sufficient basis on which to declare that there's an equitable conduct sufficient to divest the patent holder  module and it says that you can put the two together and it says as part of the flight management module that there are that billing is a breeze how that interacts and whether in fact that's exactly what happens is candidly anybody's so you not only to my mind at least have the problem of if they have focused on this particular language so unclear precisely what it means but you still have what is still the more fundamental problem which is you don't know whether this is describing a system that existed prior to the application or describes a system at the date when this brochure or work was released after the application or frankly doesn't describe a system that exists the evidence isn't least as clear as any other alternative that's on the table that this could be describing a system that never existed but this is aspirational that they're trying to encourage people to show up and say well tell me what you need by way of matching up billing with these other activities and we will try to provide that to you that that's what  recollection which of course remember all this takes place ten years after the fact when you try to figure out what happened here which is the my mind another problem with an equitable conduct they were very much so you were cause he thinks picking up a brochure or adding it off to his lawyer which you would say was the most a you know it's very difficult for me to see any basis for filing an inference of any kind of the wrong doing in that me at the district judge criticize upset just a clearly reveals the understood that this was material as a doesn't reveal anything it simply says in your material through within the brochure was the argument the major argument for patentability so the district judge was concerned about the credibility of the agent but i think then he receives conflicting testimony from the inventor from dr hood as to when he received the brochure even though it's on days and and the timing is quite close and i came away with the impression that here rather than that he concluded that it had been artfully selected in terms of what was place in the ideas and without i think except in there that that the the agent to the issue of what did the patent agent conclude with respect to the absence of a date yeah because that was the primary explanation for why the patent agent didn't go further with the information that when i didn't believe and judge and say that information that was the reason i didn't do it now that may or may not be the law or it may not be required but it was certainly a good faith explanation offered and the district judge did not say i don't believe him but he didn't cite the problem is that it wasn't consistent why is he disclosing part of the brochure earthly things the brochures are relevant because it's undated but not disclosing the other part of the brochure because he felt he felt he had an obligation to provide the most up to date information he had available and he did it well then why was he providing up to date information and if it was undated i mean if he thought it was relevant to provide part of it why did me think it was relevant to provide the other part because he may have made an error in judgment unless unless you're going to reach a conclusion that every error in judgment of information that's material rises to the level of intent is not just a question of an error in judgment is a question of the fact that this partial disclosure undercuts his explanation that he thought the undated brochure was irrelevant he chose to disclose part of it but not the other part of it he does that if he'd simply said ok this brochures undated i'm not going to pay any attention to it that would be one thing but he did pay attention to it he took part of the it's not as though though it would i think this would be a very different case and attlee if billing had been one of the seven items described in the front page of this idea as an economist of this brochure and then he would exclude billing from it but he didn't do that he gave an exhaust description which included medical chart we should decide recognizes was a significant element of claim fifteen so he's not hiding anything he's disclosing the basic information that he took off there this is i mean the problem with this case moll evidence of content to not disclose this is not a case like the cases in the past where you had an inventor who's who's been negotiating with the p t o and needs to get around some kinds of objections that have been interposed or  a situation where you where you know the inventor knows how important this information is and and lies to his lawyer or lies to the p t o in order to set a ground work so that you have a motive to deceive the p t o imbedded in the case all you have here is a failure to disclose certain information which with the benefit of ten years of hindsight you can now say may or may not have been material it seems to me that maybe that in the us but i have a very hard if i have very hard time thank you your honor good morning may please the court judge war did make specific factual findings in this case in his opinion that are not challenged much less shown to be clear their church remain you asked about billing and integration judge ward specifically found from the brochure that it taught integrated billing with medical charting and dispatch there is no challenge to that finding to this court but there did indeed very close to most of this invention your honor it's absolutely accurate he put exactly what was on the front page of this trifold brochure we know or they just report concluded as a fact that of course to realize it wasn't dated even the most cursory review would have seen on the inside the statements that the judge found taut integrated billing because judge ward found as a fact that the inventive concept of the claims that were pending and there was only one office action and an issue the issue claims in the pending claims that integrated billing was the inventive concept that was used in the specification and before the patent office to obtain allowance of the clones so why don't suit gross at worst gross negligence for the agent of what makes the selective misleading disclosure so material the examiner needed to understand that there was a brochure  used to fight about not reviewing the writer first it was conceded before the district court that there was a deliberate and probably a deliberate and conscious decision not to give the brochure to the patent office because it was undated because it was undated but your honor and i think it's been pointed out the fact that the brochure is undated is neither a plausible nor a good faith explanation but what i'm really asking issue did he say he didn't read the rest of the brochure what did he testify that he mostly said that he could not recollect having read the brochure and in fact we pointing out judge ward decided to question him directly on this very issue and never got an answer to that critical question even to explain to the witness you're not answering my question there isn't a good faith either and that's understandable your honor but the undated part first of all there was testimony that at the time he has no recollection that he didn't give the brochure because it was undated this is testimony of two thousand  it was his general practice but giving credence to that explanation and the judge were going into it him detail it doesn't explain why you would list the seven attributes on the cover and not go into what judge ward specifically found to be the crux of the inventive concept of the patent with the hindsight knowledge of what this patent was about that then knowing that it also included additional aspects beyond what was on the cover of the brochure they say well there it is you should disclose that also well i don't believe that judge were true choice of the words even the most cursory review was happenstance your honor this is a case where to determine that brochure was a dated even giving credence to the two thousand and nine explanation practitioner here had to read the whole pro choice or it seems the only way that you could even assume that someone could conclude it wasn't they did and when you read that brochure and you find no down in judge or tomorrow that looking at the pending claims and looking what's disclosed in the specification the failure to disclose to the patent office the integrated billing that was taught in the pro sure has no explanation other than it was done with the intent to deceive and your honor unsupported at four six six nine to seven three at those pages judge repeatedly asked the prosecution counsel for a credible or plausible explanation for the selective misleading disclosure it that he discredit was not only the seven attributes and not that integrated building because that's what this case is about this case is not about non disclosure this is not about a reference  that with hindsight you should have maybe could've given it to the patent office this was it needed a deliberate conscious decision to describe the brochure rather than give it to the patent our patent system requires that when a practitioner takes it upon him or herself to describe that brochure that it has to be full and fair it is not as as was testified by the practitioner it is not something where i'm going to give the patent office half a loaf so the patent office can search so the patent office can figure out what should have happened in this case is clear you give the brochure to the patent office i'm not sure that's right i mean it seems to me that the real question is not failing to give the brochure the patent office but the selective disclosure in the i fairly and fully describe it to the patent office if you're not going to give it to the patent office and that's the failure here there's no explanation for that failure it's not ten years of hindsight there is no explanation ever offered by the practitioners involved here of why that selection was made and the critical feature not given to the patent office and this was an all day that struck all of the actors testified live in front of judge ward he concluded his opinion with an observation that the testimony of the prosecution counsel was not helpful in determining whether a credible alternative explanation existed what is missing because he didn't remember is why he had the decision or non decision or taken certain steps nears earlier but your honor even with years earlier you have the inventive concept that the  brochure and everything else is on the front is disclosed but not this crux issue what explanation could you give for that what credible plausible explanation could you give for a meeting this central feature of your claims that's in a brochure that you're being from well i think the explanation could be that he didn't read the rest of the brochure well i understand he didn't say that but that you know it's possible that there isn't that would be an explanation that it was the carelessly only read the front page of the brochure and took that from there and didn't read or understand the rest of it that could be an explanation it could be your honor but then the dated as judge ward pointed out in his opinion then the date excuse completely drops away there isn't any way that you could get on the witness stand and say i didn't give this brochure because it was my general practice not to give an undated brochure you cannot truthfully give that testimony unless you believe you hadn't read it at least enough to know that somewhere in that brochure it doesn't say here in one nine hundred ninety six or here in one thousand nine and even the most cursory review finds judge war would have understood that integrated but the problem i understand what one judge warren set the problem is if he'd said i'm convinced that the patent agent read the entire brochure and i'm convinced that he knew that this integrated billing was disclosed by the brochure that he deliberately didn't disclose that would be one thing i don't see that his findings quite went that far i believe they did your honor when judge ward in his opinion starts talking about the liber cultivated ignorance at one point in his decision judge wharton mentions that if you are going to quite an answer to say that maybe judge war should have been a better idea but you know i sort of dances are of the problem of the sort of dances around the central question of whether he thinks the guy is why well your honor i believe a fair reading i believe that he is being polite when you put in your opinion at least on four different occasions that the testimony is unhelpful it is inconsistent and other direct observations from the trial i believe that judge ward in effect is making credibility determinations and not crediting the testimony of any of the three witnesses that he heard but to return to  you asked in making the observation about the liberal cultivated ignorance cannot be rewarded i believe judge ward is there addressing the idea that somehow you're going to excuse what happened because of the imagination that it's was careless he didn't read the whole brochure that statement combined with the idea of how can i determine it's undated if i don't read the brochure boasts to findings by judge ward in essence perhaps not expressly but with all due he not yes he did and both judge moore and i asked him that question directly and he said he couldn't remember and he said he couldn't remember but when he's faced with you was in that part where touch wood was asking the questions with that i gave you the cite to before the idea that you have this collision between it's undated and my prime although i don't know i did it for this brochure it's undated so i didn't give it to the patent office that's the practice he testifies to there's no evidence that's what he did in one thousand nine hundred eight but we it is ten years later so we have to i think give some  read the brochure one page four six seven to judge more days still you're not answering my question in my mind why did you elect how did you make the election that you left out billing in the term integrated software i would expect that it's just the front page of the brochure your honor i just looked at the front page and wrote down those things heirloom it said about the brochure but you didn't look you wrote it down but you left two out now at four six seven three well no the building is in the mid center m if i recall about that and i probably just look at the front and then he continues i don't recall i really doubt but so likely i look at the front and wrote down what the front thing says ok journey practitioner could do that but not then determine it was undated judge him and he's two factors collide and permit of there is no wiggle room here if the defense below that was rejected by judge or was that the brochure is undated as he found even the most cursory review of the brochure would have found the part that was  remarking on this very point that his testimony is inconsistent and it did a fine innocent person in that this was not a credible witness not expressly your honor but i'm not sure that wasn't the result more of politeness than anything else is did you say that inconsistent he was talking about the inventor will know it when he said it was inconsistent as to when and where he got the brochure that was with the inventor but with the practitioner the inconsistent comment by judge ward in his opinion went directly to you if you claim you didn't know it said integrated billing yet you claim you knew or your defenses is that it was undated him but then we have a situation in which the findings that are made by the district court perhaps are not adequate for us to determine whether or he was correct or incorrect is perhaps a situation in which we have to send the case back to judge ward that ask him to make more direct findings about whether he concludes that this agent rid actually read the brochure in the libera didn't disclose the key part of that may have been what bothers me is he hasn't expressed fully made that find said some things that dance around it but he hasn't made it why should we insist that he directly address the question and tell us what his findings are because i believe that he did it dress that question sufficiently because there's only two possibilities here one possibility is that he didn't read the brochure and only witnesses stand what you're saying but let's assume that they were finding that just the he was careless you only were the front page of the brochure and didn't realize that there was this damning thing later in the brochure and the story but he made a terrible mistake but that's what it that's not integral count on the other hand if in fact he read the whole brochure and deliberately didn't disclose this key thing later in the brochure that probably would be in it so there's a problem we don't know which did and maybe of the district where it made a finding that he read the whole thing and the liberally was selective about it that would be one thing but i'm having a little difficulty seeing the judge word went that for well your honor i think we have to get to get back to the first principle of if he didn't really ask if he didn't read the brochure was that an equitable conduct in you had some trouble with that but we have to i think take the case of and you know look them up he didn't see a date he didn't read the whole of it the finding below even the most cursory review of that brochure would have determined that it top billing integration there is no challenge to that factual point being made is even the most cursory review to determine it didn't have a date would require reviewing the whole brochure it's the only see only logical explanation for that statement  at the judge if i see up at the top of it a date out we've the hold your honor i don't have to do this a brochure as we're talking about here is certainly not a court opinion remember we're having a witness who testifying that he's not going to give the brochure or doesn't have to give the brochure because it was his general practice not to give undated material to the patent office there's no single place on a brochure waiting that office action in connection with the integrated billing i think it's pretty important to focus on the office action in this particular case approved claim fifteen claim fifteen is the only claim that specifically does not involve billing it's a charging claim and so therefore the disclosure in the i d s of medical charting just on the application would have gone directly to fifteen and fifteen is the only one that got approved the one thing counsel has from the materiality point for all of the reasons and because it is an undated brochure we still have no idea whether or not he is describing it whether that brochure describes anything that existed prior to the time of the application part of the time of the i to saying is that repeatedly i looked at it and i concluded that i didn't know what it was describing and the inventor himself specifically said on a number of occasions that it's very common and this and this business for brochures to describe things that don't exist so all of them may be true but he's pollen i d s which disclose part of the brochure but didn't disclose the other part of it he at least thought that the first part of it was material to disclose and if he knew and deliberately decided not to disclose the second part of it that's a real problem that comes pretty close to inevitable conduct in a find him otherwise he'd be hard to sustain will respectfully to agree to disagree with you step back from the materiality point and focus on those on the specific question of intent when you asked for the testimony and counsel's you know properly read it to you but they're not the specific question is how did you make the selection to leave out the billing in the middle information is on forty six seventy two and he specifically says again remembering that this is ten years before at the time that he's that he's filling out these forms he's got literally dozens of other applications that he's worked that he's been working on but he said i would expect that this is the front page of the brochure you are just going to the front page of the brochure and wrote down those things he said if that testimony were credited that that he just looked at the front page of the surely was negligent in not looking at the rest of it that's not of this entire rights of the bat for conduct by his lawyer or in this case by his better agent that you at a minimum are require the district judge to step up and say these are the specific findings that i make with respect and could have been easy so why should it back and tell but that's the word that's the least you want to do is send it back for those purposes but that set i mean is that the reality here is that there is not the basis on which to make a specific finding of intent because the most that you have here is is arguable negligence under these circumstances the in here it's worth sort of two elements to look at ok first question is do they have an obligation to turn over the brochure and there seems to me the answer is clearly no they had a good faith explanation for the district judge than saying the word one about not turning over the brochure so then the question is that he had not have an obligation to go beyond page one and look at the other two parts of it and there it seems to me this is fatal and that is precisely what it seems to me this court's and star scientific is not a sufficient basis upon which to enter a finding of content sufficient for an equitable conduct so unless the