bases to court over the years prosecution of the suit lasted not a single prior art reference was provided to the patent office and the patent t and their attorneys repeatedly made arguments regarding the validity of their their their application that could not have been made had they disclosed closs whole duct letter and product and its twenty eight pound man in class  is that there was a lack of interest in not providing the liner and perhaps a lack of anger in distinguishing those earlier references but the bottom line is it had no effect on the prosecution lines were obvious into the media have a situation in which it worse there is a lack of endor in the course of the prosecution is this something which made no difference at all because of the way the game are disposed of and we do examiner that handled the prosecution that matter but i was hardly started on a law that's not a question the question is if it didn't impact the prosecution doesn't matter well it would have the impact could it then cumulative for several reasons other than the fact that the only evidence in the record was the submissions of can also personnel to the patent office explaining that patent examiner in fact misunderstood the teaching to the references the fact that he ultimately allowed claims to machine that consisted of nothing more than a duck of those cases that i've read i'm suggesting that if there was an equitable conduct of the patent office with respect to a coin which didn't issue that that does not invalidate the patent as long as there was no connection between your neck will conduct and the claims that did issue in this case the inevitable kind of goes directly to the claims that did issue it to six a patent claim one covers nothing more than a duck board with a mat facing in this case and say was disclosed by dr liner him he didn't need duct liner and that i read these prior art references of the closing bell in his first notice of allowance the examiner specifically say that he was allowing the claims to issue because nothing in the prior art references that he had found taught the basis weight of the preferred math had they disclosed outliner n and its twenty eight pound manning glass twelve ninety six mat and had the examiner known that the lidl manning corporation had been examiners i disagree with you i think this prior art reference showed exactly that and goes on to examine the planes on that basis is that a basis for an invalidating the pat for the exam or so if not you know i'd you know i disagree with your statement i think the proper order doesn't close this and in goes on and there's no consequence to the misrepresentation in the course of the prosecution is that an equitable comp i guess i don't understand the relationship between your hypothetical and the facts in this well that may be but that happens sometimes but it didn't happen and there's no you have to answer the hypothetical question even if you think it doesn't have anything to do with this case what's your answer to the hypothetical misrepresentation inexorable conduct under those circumstances that can invalidate the pack it would depend on the claims of the patent that issued and not light of the his knowledge meant of the prior art that he thought was there and whatever claims were issue without knowing what the claims were i can't say whether it's unethical conduct or not but in this case there's no dispute they knew about the are the court no less exonerated the attorneys even though there was not literally a shred of evidence regarding why they failed to disclose the line around correct yes and in this case the district judge was commented very favorably on the fact that not withdrew as soon as the prior art significance was shown to them they dismissed their court thought that was the right thing for them to have done and secondly the district court was very specific about saying he believed the testimony that these folks didn't know or were misinformed by themselves who didn't have the records he didn't write or but in the record he the year ok there were and we get on with that what are we supposed to do or what do you want us to do let's look to the attorneys and not the inventors there's not a shred of evidence about the attorneys you tourney's knew about the prior art they offered no explanation you want an independent this quarter since you need independent evidence of wrongful intent in addition to merely withholding highly material prior art in this case certainty identified eight or nine specific arguments that were made to overcome are excited by the examiner that could not have been made had they disclosed outliner and at its manning last match facing the court simply ignore those with regard to the bars of the tho burgh attorneys there isn't even a single final of fact about their role in the prosecution which is not surprising because both orange and thornburg attorneys said not only did they not remember a single thing about the prosecution they professed not even  evidence or make a finding of fact that has no evidence to support it in this case there is not an iota there's all kinds of evidence in terms of the arguments that were being made that could have been made had they disclosed it for the simple reason that that was the invention they took the matter off dux liner had been put on their duct work they couldn't distinguish that combination had they disclosed that to the examiner because that was their age you also mentioned that mentioned that an off had dismissed the case upon receiving certain prior art once again the court abused its discretion in finding it was reasonable because certainty provided a one zero to reference shortly after the case began a spanish price list that showed that back faced upwards shiplap edges had been on sale in europe for years prior to their alleged invention cannot never made an attempt before during or after the trial to distinguish that reference because there was no argument to distinguish it nonetheless the court found that notwithstanding no argument made below the court found all it was reasonable to continue in the face of that reference because it didn't have a photograph of a duck liner covered with a mat facing covered the shiplap edge this court has never required photographic evidence clearly given that it was inherent in the manufacturing process here in talking that was advertised in the spanish brochure which clearly stated it had to match facing in the shiplap it but he said because the process wasn't known they couldn't know that the mat covered the ship that bitch but in that case that was an entirely spec finding on the judge without a shred of evidence to support it all the evidence was that there is only one way to make mat face the board you put the matter on it goes through the oven the ship claps get made necessarily covering the ship left edge in fact the examiner rejected the application finding that exact fact and cannot attorneys are convinced him to with what knowing that it was not only obvious for the mat cover to cover the shiplap edge but that it was  misconduct geisha misconduct as well to feed sixty five i believe based on the evidence that the certainty provided for the first time in a reply brief and a summary just motion showing again a for there is no fact for or basis for it all and the statement that was made even here today is that the duct liner and mat was in fact this manning twenty eight lb mat it had all these features there is no evidence in the record for that  in the record was the very first time the inventor attempted to make this invention this duct work product they happened to use the same math that was on the doppler product the only evidence of what that matt was its characteristics or its features was a  document that was annette as it simply describes it as a wolf and matt none of the other features of characteristics of that product were known or are and yet have the inventors then tried other products other mattes there is no don't know the yes to that mr staples was the lawyer who filed the application first in one nine hundred ninety three he was a witness in this case he was to post in this case he appeared live trial and i don't believe that there's any evidence in the record as to why he  did not or any evidence in the record as to why the lawyer later on got involved in this case didn't concern them so i don't recall if there's a you didn't i don't recall any evidence of that one of the other lawyers mr hole was also so you associated with mistake with his for approximately three or four years later files transferred to a different firm two attorneys from that for mr right and mr newman all of whom were to pos test and all of whom couldn't remember anything i could not remember any anything about it i think that's fair i think that's a little unfair in fact mr staples the attorney who drafted the application submitted it  remember some of the details even fifteen years later again remember this application was filed at first in one thousand nine hundred three prosecuted threat believe about one thousand nine hundred nine or so and the trial took place in two thousand and seven so the events in two thousand and seven are already at least eight years removed from the latest portion of that file history fifteen years removed from the time when the application was first filed by mr stables so to say that there was no recollection of any of the details i think is a little unfair and not accurate of course with respect to any allegation of withholding prior certainty have the burden of establishing materiality and even today with respect to that duct liner product that we hear about we don't know of any of features of characteristics of that product we skipped two certainties skipped materiality and assumes materiality at this court require first a finding of materiality by comparing the allegedly important or material reference to the references there were already of record here we know the patent office and the examiner had in front of them the examiner had references described as flexible duct liner products having a match face we don't know any more about the duct light or any product at it as it examiner had before a fire or related to flexible duct liner products it was in that footnote that he said that it was material i think and would suppose dollars that the reference there meant that it was relevant meaning that instead of assuming as the inventors believed that it was not even a relevant subject matter but used the term material to mean it was it was a relevant subject matter right close where you might remember that it was material fact the duck liner and product and the information that the court had on their product was cumulative that he understood that duct liner and board were not the same product but were different products his recollection he could not recall fifteen years prior is exact spot process of why he did not disclose what he did testify that he would have considered it relevant if the inventors had thought that that was a different product and of course in this case the inventors went to great lengths and described in the trial court found to be in on a certain credible fashion the many differences between those products and widely believed that there was no rel materiality to the dock liner in product certainty it also suggests that at some point along the way somebody should have submitted a product called tough guard a certainty product again there  no evidence in the record that any of the inventors knew of that and there is no evidence and record that any of the attorneys that certainty so willfully charges of misconduct knew of that either say one and that's mr staples again mr cunningham not an inventor gained access to this product but year after approximately a year after the applications were filed just gave that information to mr staples the attorney mr staples conducted an investigation and testified so a trial determined based upon that investigation it was not prior and there was no obligation there was no evidence that anybody else associated with this prosecution was even aware of that product there were some statements made by certainty that there were other pieces of prior art that the drift district court dismissed most of them saying that there wasn't even sufficient information a record to go into detail again certainty has not tied any piece of prior art to any person and establish that that person whether it's an inventor or turning had knowledge of that particular reference and didn't submit at most certainty points to a statement that well from a from a can often employee we gave our files to the attorney that's the only support they have that would could possibly link an attorney with any one of these references at no point in time is there evidence of the record that establishes that within these bottle were any of these references can offer excuse me certainty that didn't ask any of the attorneys were you aware of this exact specific reference were you aware of it during this time period those questions were never asked about the current or the trial and to focus on i would like to do so your honor i believe it was not so much the conduct of the trial but the aspects leading up to the actual evidence of that and today an argument we've heard that well it's one or two if you find that it was inherent there's a feature of the claims of the can off and that require a mismatch facing to cover the ship lab edge there is a photograph or drawing of that ship in the path itself it's just a stair step it's cut out on one side of this product so it's the mat actually covers that stair step if you will the alleged want to reference that was providing discover did not show that feature in fact no reference up until the reply brief in support of summary judgment motion had that feature so it's not even a one zero three that you would say here that future is shown and want to reference and the rest of the claim is shown an that feature did not exist in any of the references provided during the discovery the response is well it was inherent when we asked one of the inventors what was inherent is when the inventor sat down to invent a process in which the map would in fact that by carrying out the process it achieved that goal there is no evidence in the record for true inherent c meaning it must and always is that way that if you had a product that had this step or shiplap edge and wanted to add here a mat to it in some way it would necessarily cover that and that evidence isn't in the record so one position that certainty makes is that this art was great art are certain enterprises and the suggestion that certainty makes that well this is kind of close prior art so sufficient that you should have dismissed your case that it was misconduct to do so i think fails the bar the second part of course granted the motion to dismiss did not dismiss certainties counterclaims with prejudice but without it noted that of course the case from this court which essentially established that protocol the super sat case in fact that was the circumstances in that case the the less infringers counter claims were dismissed with prejudice raising a motion in which you seek relief which has been granted at least once prior by this court constitutes litigation its conduct i do not end that the specification sheet which although not prior arc itself in fact described the properties of that map which had not changed or over panofsky own development documents indicate that court know the district court didn't make those fine but that that was the point the evidence was uncontested what mr newman said was uncontested the court said somehow that evidence did not establish that they were the same but having testif that the only met they ever used was the midwest well ninety six and the patent described that as the preferred mat it necessarily had to be the same math otherwise the best mobile acquirement would have been violated that's where they got the details which were virtually identical one or two slightly different between the specification sheet for the manning class mat and the description of the preferred mat in the patent itself as to what's again this court has clearly said that when there is evidence of material i don't the set is cumulative but it couldn't have been cumulative no art showed the weight the examiner said that in a lab on the plane he said no hard i found showed the weight of the mat clearly cannot knew the weight of the mat it was a publicly available off the shelf product sold by that differentiating characteristic to not disclose that goes to the heart of the invention but for that they would have never gotten their application  the examiner never would have agreed that oh you have the prior art doesn't show the weight that's exactly how they bought it that's how they selected the math they'd been using for years before the invention wanted to say there's with regard to the inherent see the attachment process and then the thing gets treatment there's no way for it not to cover the shiplap edge and even the examiner who knew nothing about the ark to start with thousand that they convinced him to withdraw that rejection notwithstanding it isn't here to say that there might have been some other process that didn't cover it is pure speculation unsupported by a shred of evidence finding of making a factual finding based on something that is normal or that your speculation is an abus discretion the what we've talked about here today is just the tip of iceberg of many misstatements and risk and different types of conduct and i suggest that this is a case where clearly an egre