up that is an appeal from the district of massachusetts relating to a determination under section two eighty five mr chew you want to reserve how much for a and my chief the white haired institute for biomedical research alan i love and representatives of the university of massachusetts there were two claims in this case a district court that mistakenly applies the law is affectively committing an abuse of discretion under a whole host of cases and that's what occurred believe octane fitness actually says it's just before no six probably in the s cut version seven hundred fifty six that fee should be awarded in a case that stands out from others and better ship claim it either should have been asserted or should have been removed sooner what impact did that claim have on the rest of the discovery or the rest of the case i mean the joint inventor should claim what she found to be not from us and we can talk about that in a minute if this discovery would have been identical with respect to that as it would be with respect to the sole invention claim witness so it's a good question or a set of questions first of all a world of difference if someone is going to be a sole inventor and have all ownership rights as opposed to a joint good inventor with it from which a whole host of other rights might flow but it's vastly different there was a seven hundred fifty million dollars claim being made by you top it was premised principally on the sole inventor ship it was a huge motivation for the four years of hard fought litigation and and that's the inventor should claim what the court said was only it was dropped and therefore i'm not awarding feeds that doesn't address what octane that nist told us which was to look at the substantive strength and then it mentions a number of factors such as whether it was frivolous whether or not they did do it subject among other factors you can consider the substance of strength it went out of its way to say that that was not determinative i agree i agree and if it was dry up in the first three months or six months or nine months o rocket claims i appreciate that members of this panel of been on the firing line as a trial judge but here are the core facts which does make this stand at all of the charging allegations from the original complaint through the third amend one would normally expect that utah or its council would interview dr beggs and if they didn't interview dr bass in advance of making those allegations not once but four times so and there is something wrong isn't it true that at the trap counsel that wasn't involved on that and the second or third amended complaint actually inherited the first amendment complaint man a complaint i mean the first complaint from the regional coun l so so he answers yes but and this is an important but we're not trying to separate out who was at fault the question is the allocation of fees between utah and utah or its representatives plainly were at fault at a much earlier time then when the allegations were dry up utah's continuing counsel had to have known the allegations were them supported the charging allegations in a seven hundred fifty million dollar case so i still don't i mean i get your your claim that well they couldn't possibly have hoped for that kind of damage award barring s generation but you still haven't completely answer my question whether it would have altered the scope of discovery it's pretty clear that the discovery was what it was as it relates to the interaction between these two purported inventors and that dr bass i mean there the court made very specific findings about her contributions and and so there's and there's no question that she was a legitimate scientists who shared information it's the same question at the end that would discovery have been different the answer is yes i wouldn't be we counsel would not be doing a decent job it's counsel if one litigated a case that was worth a say hypothetically one hundred thousand versus a seven hundred fifty million dollar case so that needs to be taken into consideration now i would agree with one aspect w i practiced for twenty years and that's how big perm litigators approach it and if if if they hire if the defendant hires at a big firm defend him they expect that they'll get a full representation clients do care about the potential liability the size of the case there were also vast differences in discovery and just give you one example when i had an intellectual reputation reputations matter to t the district court's opinion she concludes that the record supported the claim that the mini review supported it the claim now let's think about that the mini review itself was the prior art there was a three week period which i'll just a second it cannot be the case that a piece of prior art by itself would allow someone to make a joint invent otherwise all of science and all a patent will always be turned on its head because every advance in science is built on all the work that came before so let me look at that three week period their expert agrees that there was nothing done zero five dr to szell who received a courtesy copy of the many new view during that three week period months later he was doing experiments in their expert testified he was doing his own research he wasn't using anything from dr basters mini review and he tested many different structures many different possibilities so their own expert witness who greets that there was no learning from the mini review so although the just report does list some factors in fact looking at the record it's not supported by the psychopath this is regarding the three prime over and into his research and her prediction was a significant contribution to the ultimate patent invention and that this contribution was corroborated by existing documentation and then she said ultimately the only question is whether their dice or in the pages was causing some cleavage i get all this but what you're saying then is you're not just asking us to review the two eighty five determination you're asking us to go behind the summary judgment analysis and actually reject findings of fact made by the trial court that's that's a big leap isn't note she sewed what i think we're both referring to is her order denying the motion for  any way orally by e mail by smoke signals or in any other way those allegations are completely false she did have some communications with doctor to cheryl they were ten professional meetings they would see each other but in all of her court make factual findings that were not that were not correct but clearly incorrect and i think both of my splunk argued pretty darn it extensively and i believe persuasively that there were allegations in the complaint that any reasonable counsel reviewing and talking to dr bass would answer there was nothing in that conversation about the things that were question that there was a quote but i find that disturbing because any competent counsel writing a complaint the quote that your honor just gave me i've got to confess i don't know what she was saying i don't know what she announced when she said the things that were questioned in the patent i don't know what she was talking about but she did in fact testify quite clearly about the things that she did tell dr to shift and what she told him was that she had just done a set of experiments which confirmed that r n a i does not occur in the absence of his inventions well again one has to be very clear about what claims you're talking about when the court says these inventions there are two sets of claims one set of claimed claims discusses her claims the since the synthesis would have had to show to the jury for each of those claims that there was no inventive contribution by the traditional inventors and we determined that that would be a nightmare would be a logistical nightmare or trial and that we could cut response to mr choose argument that it was a fundamentally different place if it was a solid better ship plane versus a joint venture the the the firy of technology and so whether or not its sole inventor ship or joint inventor ship they don't have exclusivities university of utah could have run off and licensed anyone they want and that would have been an issue and what they did to try and corral that joint inventor back into the group it was university of massachusetts that wanted to go its own way do its own licensing and bill nye them was prepared to pay them a very substantial sum of money in order to to corral them and bring them back into the group the coal licensing group and it was that transaction that was the basis for the damages theory and so it didn't matter whether it was sold or joint inventor ship the damages number would have been the sense so we could drop that claim and greatly simplify our case for trial by getting rid of the small inventor shipley and that is not something that distinguishes one  this case from any other case that's a very important thing that trial lawyers do before they go to trial they've proven simplify the case for presentation to the jury and that's very valuable to courts and i think this court should trade very carefully judgment then i began to think whether this is an exceptional case whether this is a type of analysis that should be done at the outset of the case you took you're taking a risk in your saying i'm a play both sides of the coin knowing that one may not be may be counterfeit your honor  and the last of those was taken up on appeal at the time we had pending discovery requests and the appellant's sought a stay and they got in so there was no discovery until after we got through the ruling here at the federal circuit which affirmed the district court in our favor and then we had to go to the spring cork and we had a petition for writ a search you are and we had to fight that in then finally finally it was almost three years later the case came back down for discovery and it was it was after we got discovery that we learned about the university massachusetts trying to bolt from the group and do it time we filed the complaint and so we wanted to make sure that we had both theories in we did he asserted both theories but it was it was it was after we got discovery and when we found out what they had with what they had offered university massachusetts which your response to that i don't i don't take their arguments have to be and perhaps i'm mistaken but i don't take their arguments to be that are witnesses lied i are let me let me address that but if this is there was a large scatter shot of allegations that are attacked here we have tried to show that they are not playing fair but they either snip it out portions of that we try to show that one point that significant is it is not unusual in a case where if you file a complaint and it has allegations in it and then you take discovery and the facts as they develop don't necessarily support every single allegation in the complaint and that may or may not be feed into the complaint and if it is it ma the those those have to be be looked at in the context first of all of the questions that were asked right because they were leading questions and often ross examination i'm not objecting to that but often they will quote the answer without quoting the question and when you go back and you look at the question it doesn't refute the allegation which came didn't really did but but more importantly she had a lot of testimony ask these questions again and again and again and most of her testimony was perfectly consistent with with the facts that we relied on from the complaint to support the saudi faction off in the rhetoric all questions in this inserted into uncertain language or they've been they've been edited in a way that they don't represent what we said in the complaint they omit material information and so it doesn't make it doesn't correspond to what we said and  the quotations of the deposition they picked the parts that they liked which may or may not correspond with the allegation because what the question was or what the series of questions were that preceded it the provided context and they don't provide that it is in much of the of the appendix so if you look at what they what they cite and then look at the series of questions in answers that preceded the court will see them frequently she is perfectly consistent with what we a dismiss and to stay on discovery that would have brought all this out a lot sooner so the trial judge is down there and she's living with this case she understands the delays she understands the the extent to which the discovery impacted the analysis something damages why shouldn't we say that it was her call so there's nothing on the record to say that all of the activities would have been the same i did answer the court's question about whether they would be different if the court sends it back to the district court the district judge would be in a business position to determine whether the activities would have in fact been  for seven hundred fifty million dollars case the respect were money to have the district court come out the same way well since i have client representatives in the corbomite definitely don't want to spend more money but we do want it to be done right august two thousand and thirteen the jurisdictional issue i think it was by november two thousand and thirteen that search was tonight although i'm not absolutely positive it was more than a year later that the third  in another human being's mind but i do know this i do know exactly what the allegations were and maintained through for pleadings i know exactly what dr bass said i know exactly what their expert said so they were untrue and i assume that proper interviews were conducted and if they were conducted it then they would be false if properly views were not conducted it's still a problem for you top because they shouldn't