and failed to do that well i think the major problem is the patent lawyer spline that we could not reverse engineer this process the only way to get the information would be to get it from the other side now i'm not a popular i've you thought you needed now actually i believe in the brief i've cited two three discovery motions that i brought before the magistrate and he denied all of them basically we took some discovery and then i filed a motion file amended complaint in my motion and in them in a complaint i said that i did not have enough evidence for the claims that i needed to take discovery both the magistrate judge and the judge granted leave to file them at a complaint and both of them specifically discovery i was never allowed to take the discovery there's been no showing that i tried to take the wrong discovery or something like that but basically we asked the question was that i was told by the patent lawyer needed to be asked and we wanted to find out how these mediatrix products work because we could not reverse engineer them and we believed that they worked similarly to other products which had been found to be infringing and we had worked out and those things with those defendants and we had brought the claims because we figured we would be allowed to take some discovery to be allowed to do them but at the end of the day i wasn't allowed to take the discovery it's undisputed two in the parties that after i was allowed to file the net a complaint in which i said both in the motion and in the clinton needed to take discovery i was never allowed to take discovery again with every motion from the media never alone well basically media tricks never gave me a route discovery response after filed the medical claims when i brought a motion to compel discovery those motions are all the nod so basically i have a situation where the defendant is refusing to respond to my discovery i bring motions to compel those motions are denied and meanwhile i think i think i said that i'd be happy to get what i passed but we had this lawsuit filed in late two thousand and five and i've attached an excerpt from the transcript of the hearing from january two thousand and six in front of the first magistrate judge in which i said i've given discovery requests were the mine there were some discovery requests where you sought to compel him to answer in iraq why they didn't infringe right let's put those aside what discovery request had tested it using an electronics engineer we believed that it infringed but from the beginning with them where the reference is motions to compel discovery as to how it works where to find that  record here those would be d e one twenty seven is the order from the district court which was simply recognizes the great technology says it needs to take more discovery to support its claims  what i'm looking for is you say that you made a motion to compel unnecessary discovery to have this work and that it was not how to how do i know that from the structures i'm looking well i have found so far the citation in my declaration saying that and i'm looking for the citations to the orders because i know that i cited that and i agree information about how this would work and you weren't permitted to do that i do not have the orders in front of me i apologize for that i had the references to g e one fifty six and one fifty seven but i don't have directly in front of me for example this  one fifty six refers to what seems to be in iraq a tory was deemed redacted copies of all subtle i'm in agreement that cetera et cetera that doesn't seem to have anything to do with your ability to  they were done like nine hundred thirty eight starting in one thousand nine hundred ninety nine hundred forty cases just come down and unanimously said all you have to do is give the information you have if there's going to be rules that says you have to discover or find additional information that you don't have to respond to interoperate hurry that should be a well announced case of the bar knows what's going on rather than the throwaway sentence here that says whether or not i have the information makes no difference to you now in large part of proceeded the way that i did because i was not necessary in this courtroom or even in this building is i'm not sure it was here twelve years ago but and the very first one of the very first case i ever handled for rates they had been a there's a rule eleven motion not for my myself in the trial court but i handled the appeal to this courtroom and the panel hell such really what we did in that case was fine we are getting we need to talk about this because  says exactly that in your briefs and yes different places your appeal was an appeal of a denying the all for attorney's fees and the exceptional case and the other side appealed saying we should have got attorney and you argued to this court because i've read your briefs now among other things that finding wasn't wrong we did adequate investigation there was no problem here and then you also argue that it is not an abuse of discretion because even if we did when our court rule thirty six to the case which means only that we affirm the judgment and specifying no reasons as to why it's quite improper you argued this to the district court you argued to us we actually have a rule in this court you can't  unpublished decisions that issue prior to two thousand and seven you never even mention the civil to thirty six you don't mention that it's unpublished which by the way breaks the rules of this court even cited to us as precedent which she did and on top of it all it's a rule thirty six i remember the argument quite well because of the fact that the client was very concerned about whether it had done an adequate pre filing investigation and one of the major i mean in large part is my memory of the argument and the argument about whether or not they had to test more than one product or if they should test all the products that were accused and there is a great deal of back and forth and discussion about the one product versus all the primarily oral arguments conducted by this court is effectively a holding that you can quote to district court brief there's about five or six of them like that well it was my understanding this had been approach and if i'm wrong i sincerely apologize but basically what i'm trying to say is that ten years ago my client was in a similar argument situation and both just coincidentally both the client and i were before a panel arguing that the pre filing investigation was good enough and basically we followed that procedure for the next ten years in terms of what to do before filing a lawsuit and in the return to that question of what was done before with the losses and you mentioned this trip c and you mentioned he prepared a chart  indicating the reasons that he believes there was infringement in this case did you provide that information in response to the request to see a theory of infringement yes in two ways one mr epstein in fact made an your argument to the court was well we don't think we're not arguing it infringes any individual claim just the whole package that was the last answer we gave several different answers trying to come up with something that would satisfy the magistrate when none of them were the only play on the comparison you did it for other patents and other claims you provided an element by element comparison for the one you didn't i don't find him to withdraw the complaint to that claim i don't believe we ever provided an element by element comparison till we were able to take discovery to give us enough information to do that i don't think i've ever claimed that we do that every other claim what i've said isn't every lawsuit we've got outside opinions we use an engineer to the extent that the client couldn't analyze the products itself we did all kinds of stuff in this particular case we got the outside engineer we reviewed what we believed the way it worked and i think from the beginning i never said i'd be happy to give the full element by element analysis i said i'd be happy to give a response but from the beginning i always said i needed to take discovery to be able to give a complete response in the first magistrate judge recognize that he said mr hicks said he's given me all i can i don't see how you can ask him for the more that he doesn't have cummings good morning in may please the court i think the only real issue here is whether the district court applied the correct rule in rule thirty seven was short answer is yes it did district courts have broad discretion in choosing get more information about how it worked that we were not corrected and there were discovery requests yes it skips over a very important part of the case for earlier in the case there was a substantial production of exactly the kind of materials mr hicks said he needed to perform an element by element in printing analysis that was in april of two thousand and six thousands of documents were produced including technical documents like schematics and drawings building materials and user manuals and other things the district court relied on wasn't adequate discovery allow with respect to that question that make all the sanctions and question themselves right as to the discovery mr hicks only points to two elements that actually that he contends actually required additional discovery it doesn't say anything at all about the other elements and doesn't i don't think doesn't even dispute that you could have at least provided a partial element by element analysis and that would have been useful in this case one of the purposes of having an early contention in iraq between is to define the scope of the case for discovery and to allowed to go forward to allow defendants to pursue a summary judgment motion or something like that which we never even had a partial element by element analysis to figure out what the dispute was really did you get the epstein chart and mr epstein's alice's mr x refers to the that epstein analysis as something that happened during a hearing i believe what happened during that hearing is that what he said was also where and during the hearing of the court as does this part of the record and was told that it actually wasn't part of the record whether or not it wasn't part of the materials that were submitted it was actually to compare the products and the claims what this did was basically repeat the claim language didn't actually point to specific components specific accused components or anything like that so it's similar to what happened in the in this as a whole and as to the other patent was a hand written drawing where the accused device was one small component of an overarching system and i i think mr hicks could have answered this in  have the information you made for response no your honor we haven't conceded that it all was and so how did he have the information to make a full response and he had he had at the failed to ask her certain things he needed that pair that that's my understanding not only did he have what he asked for but after we gave it to him several months later he moved to compel production of exactly the same materials  this in the district or refuse those because it was an attempt to shift the burden to defendants to prove non infringement it wasn't that was an invasive he had he had given evasive responses to the propose my understanding is that the energy or erotic stories that were denied were actually a follow up to the non infringement contention in iraq tories and asking for the specific basis for why well that's not how this  had already been produced  honor i don't i don't think so at all because it was released because this was this was the second and third chance mr hicks had already asked for discovery that he said he needed to do this analysis he received that discovery and then didn't do the analysis of what happened here and i think that this report recognizes there there were twenty five or so in iraq a tories i don't remember all of them individually but i don't believe so am i right that didn't expert in iraq dettori my understanding is was for the factual basis for the not in principle contentions was friend or whether the involves a request to explain how your system works but i don't think it doesn't work we're talking about an electronic device mr fixes has referenced certain cases relating to chemical processes that are impossible learn anything about without discovering that that's not true here they were able to buy a product and test it and give it to a consulting engineer and run test side we made clear throughout this process that this this contention in iraq a tory wasn't asking for proof of infringement it was just asking for contentions asking where you believe these elements are found in the infringing system of the station or for what i did that that's certainly our belief as it should and that should have been formed before filing the complaint but at the very least it should have been pointed after receiving the discovery that was requested in order to perform that analysis and the district court was well within its within its discretion to to say that between those two things mr hicks should have been able to provide thank you man briefly mike yes you have to say ok basically it brought to rule of emotions they're both denied they brought a motion under section one hundred twenty seven that was denied grant is where the sanction say i didn't completely respond to the robert and whether or not i sent out the interoperate hurries asking them for the information i only had two and a half months to do so because if you look at the medical pl which was the order allowing you to be filed was on june twenty ninth two thousand and seven in which i specifically said i needed sky every and the hearing on the sanctions was a simple temper of two thousand and seven two and a half months later say that i had two and a half months of senates cover i believe i did and will obviously do the supplemental filing to show you whatever that discovery was but i never had a chance really beyond those two and a half months after the first man a complaint was filed to seek this is covered and even then the rule on iran or hers is different from rule of and and one hundred twenty seven and all the other things about whether or not i should have had the information or didn't do enough work to get the that may be lead to a rule of unsanctioned or some other dismissal but at the end of the day as long as you answer driver to hurry that's fine and they have never to this day pointed to some information which we have which we did not put in response to a derogatory they said they gave us complete responses of cetera but they've not shown anything that we could have shown them in there are correct that we actually have that we were missing it it's undisputed that we didn't have the evidence whether or not philosophies given filed to rule of motions were night all the sanctions motions were denied except for this one discovery sanctions motion and if we're going to have a rule that says when you're sponsored to robert hurt you need to really sorry but we just don't have it and i guess that's that's i believe that we did our best look at the loss of that at the end of the day you have that and i'm also really constrained by at san diego federal court inflicted massive sanctions on attorneys and they were all reversed because the fact that the attorneys could not step out of the attorney client privilege and say here's what we did there are no monetary sanctions on appeal against the part that there was never a motion for monetary sanctions against mr epstein who's a lawyer who did all the analysis leading up to this lawsuit and who spoke to the district court judge and explained his analysis no one's even moved for sanctions against anyone but me and i had to relight right to