neither could have been the case here on materiality the question is would the patent office have validated have affirmed the patents issued the patents if it had known about sixty one  jobs where the inventor was testing this the invention for the intended purpose and we know the answer to that because two continuation patents were issued approved by the patent office after full disclosure not just of all sixty one frac jobs but of the district court's finding of an equitable conduct and depositions and everything else i just point of clarification just to confirm it was my later in january twenty fifth in the trial judge had ordered him ordered us to submit his materials by affidavit which we did and that's as a as  an offer proof that's twenty three one twelve of the record which we did and so there's no reason you know the issue is should he have been it should that have been excluded well and whether it should have been excluded for the jury is one thing but this is months later and why would you exclude thin under the eighth circuit i think the law of the local circuit would apply you've got to have to shoot in that case you've got to have  reason well immediately for the jury trial is one thing you have to delay the jury trial but months later they have plenty of opportunity to discover it as it's no surprise and it's it's decisive the patent attorney says i told forth and i don't know exactly the timing but they were at or about the time and i think most somewhere after you know the first twenty third maybe your friend can help or find the record afterwards but i thought there was at least one communication wire to the attorneys deposition that privilege for the attorney during that deposition isn't that a sound basis for excluding his testimony for the jury trial yes but am i not for everything well  issue is there evidence both ways on obviousness that is for the jury and the examiner says i'm looking at the prior art and it's not obvious to me so is that you know can we say as a matter of law examiner you are wasn't a reasonable person or i think there are there are cases that say if the examiner was not looking at everything the district judge was looking at you could have a difference but this is not that case that  basis for the obviousness was prior art there can counsel for the other side submitted a thirty five page argument and institute requests for reexamination that listed all the prior art made all these recommendations and the p examiner said look heating water for fracking is just different from heating water for your shower or your swimming pool it's a it's for is four thousand gallons a minute it's it's not just heating water as it comes out of a and let's see i think i've covered in a minute made clear the nearby us exclusion of the nearby us decoration goes to the intent to deceive issue it doesn't change the materiality problem the materiality problem is what question is would the p t o have done differently if they knew about all sixty one prior jobs and there's no question they feel that those were  the district court got off base and came to a different conclusion than it was obvious he defined a person of ordinary skill in the art as somebody who doesn't need to know much about fracking operations just has to be familiar with heating water and that the fill field of endeavor is heating water and we think that's just not true for several reasons one is the volumes already mentioned the flow rate the remoteness this is done in the middle of nowhere in oklahoma  or north dakota sometimes the heating water has to be brought in from several miles away and the main didn't difference is the danger if the system doesn't work or if it fails if your tank we represent across appellants and we dive right into the question here of the patent office proceedings the patent office proceedings took place eight months after the trial and in the first instance the patent office proceedings we're talking about with respect to the continuation patents are different patents they're different scope they're different claims at issue and what's interesting about that is that what you simply have is an effort to do a do over in the patent office of what didn't work at trial let me tell you why i believe that's the case there are the issue before us well there i can't answer the question to tell you why there are ninety nine claims in the ninety three patent ensuite there are i believe forty eight claims in each of the other two there's nothing in the record comparing the scope of those two i don't think oral argument  this time is the place to do that kind of claim analysis they haven't done it they simply said there that they're all encompassing that broader so therefore the conclusion must be that the examiner had that in mind as well but my point is simply that there are different patterns it doesn't really help if you nobody has done to determine whether or not there are the same the sixty four page declaration four hundred pages of testimony at trial and there's that is not submitted to the p t o instead there's a new newly minted sixty four page declaration which is significantly at odds at what was said fight it to a trial at trial for example mr hadley said well i don't have any notes and i don't have any clear recollection of any one of these particular jobs that i c testify in any detail as to what was done suddenly in a sixty four page declaration he submits a chart showing fifty one of these sales with information about each one that he somehow magically reconstructed now after the fact eight months after trial the argue they think that we relied upon advice of counsel was interesting about that though as the court has pointed out those were excluded from trial and there's not one mention of the fact in the p t o proceedings that well we couldn't get that in because we had asserted the criteria it is not a statutory criterion for patentability but it's rather a judicial application of the unclean hands doctrine and that's appropriate to be handled by the courts as the m p e p rather than by the administrative body call the other witnesses a part of their case in chief and they ask the witness this question this is a limb is the second guy that they call the question was question during your call we're talking about isn't it true that mr kelly told m not award the work the plaintiffs because ron law isn't told kelly that he had a patent on the fly answer yes it goes on and there's a couple questions to that effect where is that in the right that is not an appendix to two seven five zero which to two to seven point seven which includes my cross examination where again he says without objection he says he basically just said that he couldn't put triangle in jeopardy and the superheater is going to have the work so citing as admissible for this point at all so it can't be at this corroborates that you have to rely on something else independently in my view apart from the hearsay testimony i know you disagree with that but let's assume that's a starting point why is this t patents in an attempt to deprive you of business get well here's that circumstantial evidence if you will we had a relationship with triangle and it had gone on for several months it was a lucrative relationship or making a lot of money we were told as a part of that conversation that we were going to be able to continue to do work after the december of two thousand and fourteen suddenly two thousand and fourteen the work stops and suddenly no surprise the same time it starts with super heaters of north dakota that's pretty powerful evidence it seems to me like the county that took a look at all the records of their they're going to records our county records so that ours went up to a certain point it stopped and there's we're not i think our clients were entitled to explain why o business stopped at that point in time as a part of our damage calculation he with me i understood what you're saying but you're not answering my question which is where is the direct evidence that she'd on the fly attempted to this was in the context of ferguson was the company man for marathon who was doing work with us was outside it and every yes i believe it was where well i'm going to have to ok you're not to give me any good information during or witnesses of this your say conversation supposedly they've waived in the hearsay objection when they call the second witness and ask him and he gives the precise answers of the first witness gape that they did object to it seems to me  that's the end of the hearsay inquiry that that testimony is it minute and has before the court whether it would have been an objection they could have made at the time of whether they made a mistake by calling the second witness that's that's beside the point north dakota attorney's fees statute let me just say that the under the north dakota statute there is a requirement that there be an underlying tort and it's a little bit of an anomaly but  case what is clearly the case is both the that sort of interference in the tort of of north dakota unfair sales and advertising statute there's sort of joined at the hip if you will and this case as we pointed out in our materials is directly controlled by the circuits american family versus hollander case and it basically stands for the proposition that unless you can show privileged and less that you didn't have actual notice of the claim and to get back to an earlier question your honor that you asked actually three months before the trial we notified them that we were going to make this claim and then also that you have to show that the the evidence was admitted without objection so here we have energy notifying of the claim three months before trial we have both parties briefing the north dakota statute in progress we have evidence relative the issue being admitted we have the appellant's not objecting to a jury instruction actually to a jury instruction i didn't just enter interference claim i'm pretty sure that's in the record i may be wrong but i but i don't think so your honor i believe that discussion took place at the time in which we're arguing about whether or not this claim was was involved when it came to the jury instructions so it's your position that even if they thought the jury instruction went to the tortious interference they need to preserve that argument even though the court very clearly said this might not be an issue in the case i'm going to punt on that to later see how the jury works out this issue and then i'll figure out at on attorneys fees under two eighty five let me just say this by we're going to duction to mr coleman who's going to take them later and that's not going to have any time you've used all of the time you had for both direct and rebuttal but i'm going to allow you to address this issue well let me just say that i don't think you can read the court's initial order on an ineffable conduct and then read the second order exceptionality that sort of wondering is it the same judge that wrote both opinions just yesterday argument on an equitable conduct and that's why it's now your attorney's fees meritorious if i understand the meaning of that word because you actually use that twice once with regard to marathon and he says that they're there arguments were not without merit with regard to and so i'm so i can see that it's the same judge that decided to hold it let me tell you why i said that yesterday this court is entered in opinion honeywell versus fujifilm and which you considered exceptionality and one of the things you decided in there was that this recorded conducted in different witness that repeated the same thing and said you didn't object to that testimony is that correct i'd have to look at it see i mean you are not very helpful were asking a very specific question about the record and neither of you can answer that i mean this is not my job to to think through the record independently and come up with reasons to affirm or versus appeal i agree this is a two week trial and this is sort of this is something i heard first time five minutes ago so i apply well just reasoning on the fly if it's if once evidence is admitted which it was before this witness was called and we've made it we've stated our objection is in the question is do we have to state the same objection d m and sometimes you do and sometimes you don't when you say do we need to state the same objection again if i understood your posing counsel's argument he says the second witness is actually called by you and i direct i know it wasn't you personally just to be clear but and actually asked why you were dropped so would you be objecting to your own calling of the witness and your own questioning of them is that would that would all how would that work precisely well once evidence comes in you can question the witness about what they then presented testimony that had it been called by the other party would have i guess you would have objected to but there was no follow up and no questioning of the type that you're talking about right it's been a long time since my second referring to in the judge's opinion when the judge says that he's not going to work terri sweeney's i mean as justification for that he says he done a fly reasonably disputed with its own evidence and provided the kind of things that make a case exceptional and you can hold on for a second just on that one they brought a d j action correct correct there has to be a case for controversy over this patent for them to be bringing d j action correct right they had to fear a threat that you would sue them it has to be legitimate water to be eligible to even bring a d j action i'm not sure they have to be in fear they'd best be a case or controversy and had he was never forced to pat against anybody is standing out on it couldn't it couldn't be the case well i'm not saying we were standing down and i'm saying we didn't sue anybody on that we had a valid pap and he threatened litigation no no there's no evidence that we threatened them with litigation there's no evidence that we threatened marathon