[00:00:00] Speaker 02:
All right, our next case for argument is 24-1798, Parallax Group International versus Ink Stores.

[00:00:11] Speaker 03:
Do you mind if I just get a glass of water?

[00:00:20] Speaker ?:
Oh, please, go ahead.

[00:00:35] Speaker 03:
May it please the court?

[00:00:37] Speaker 03:
My name is Matthew Peckinaugh.

[00:00:39] Speaker 03:
I represent Inc.

[00:00:39] Speaker 03:
Stores, the appellants in this litigation.

[00:00:45] Speaker 03:
Inc.

[00:00:46] Speaker 03:
Stores brings this appeal today, presenting multiple discrete areas involving two different PIL-X patents, each with serious public policy considerations.

[00:00:57] Speaker 03:
First public policy issue raised is the public notice function of a patent.

[00:01:06] Speaker 03:
the idea that the patent is supposed to tell the public what the actual invention is, and then at the end of the patent term, the public will know that they can practice that invention because it's dedicated to the public.

[00:01:23] Speaker 03:
As to the 085 utility patent, which involves that public notice function, issued a district court-allowed Pellex to redefine its invention

[00:01:35] Speaker 03:
in litigation in a way that conflicts with the 085's patent disclosure.

[00:01:40] Speaker 03:
And each source contains that that approach undermines the patent system's public notice function.

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085 patent claims an invention that solves the purported prior delamination problem related to dual-color formats using coefficient of thermal expansion matching, abbreviated CTE, in case I see CTE later on here.

[00:02:06] Speaker 03:
So CTE matching and undulations for the purpose of preventing two layers of a mat from separating from each other in delamination.

[00:02:16] Speaker 03:
During the course of the litigation for the next year and a half, Parallax reinforced the narrative, including in emails between councils, such as in June of 2016, where Parallax stated that the undulations were intentionally done.

[00:02:33] Speaker 03:
suggesting to me, the recipient of that email, that they were to prevent or reduce delamination.

[00:02:42] Speaker 03:
Likewise, at a different point in the litigation, just as another singular example, the named inventor, Mr. Thrush, executed a declaration stating that he had developed techniques to match coefficient of thermal expansion.

[00:02:58] Speaker 03:
when he was defending validity of the late-five patent opposing summary judgment.

[00:03:06] Speaker 03:
Around two weeks later, in 2018, when Mr. Thrush was deposed, Thrush testified that he did not know that dual color max existed before he made them, never observed delamination, didn't care about CTE, and had never tested for it.

[00:03:27] Speaker 03:
And he testified that undulations were ornamental defects that he basically included in the claims because he knew that feature would end up in products in the marketplace.

[00:03:38] Speaker 06:
Is your argument right now geared towards trying to explain to us why the district court committed clear error in not finding an equitable conduct?

[00:03:53] Speaker 03:
With respect to this issue,

[00:03:56] Speaker 03:
I think there was some confusion with the district court as well.

[00:03:59] Speaker 03:
But we had raised it both in the inequitable conduct sense and the exceptional case sense as an alternative.

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So I'm raising it in both contexts, actually.

[00:04:13] Speaker 06:
Because I didn't quite understand

[00:04:17] Speaker 06:
how everything you're talking about with respect to the 085 patent and whatever it was testified to, how that connects with some allegation that the applicant committed inequitable conduct before the patent office.

[00:04:33] Speaker 03:
For example, he signed a declaration saying that the specification, the background of the invention, the summary of invention that claims that that was his invention.

[00:04:47] Speaker 03:
At the end of the litigation, he testified that his invention was not using or creating undulations to prevent a lamination, but it was to control undulations which already existed in the prior art, which were too wild, and he wanted to reduce them for ornamental reasons.

[00:05:08] Speaker 03:
Because of that disconnect, our argument on the inequitable conduct issue in particular was that effectively

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He signed a declaration for a patent disclosure, which he didn't really invent.

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And he must have known it had he read it.

[00:05:25] Speaker 03:
And effectively, it was a sham patent, sham patent on the patent office.

[00:05:29] Speaker 03:
And then, separately, because of those same and similar issues, and also involving the representations of parallel acts during discovery and things like that, that it supports an exceptional case because, in effect, the entire litigation is meritless with respect to H5.

[00:05:48] Speaker 03:
So that would be the exceptional case.

[00:05:50] Speaker 06:
The district court action was stayed during the pendency of the re-exams?

[00:05:55] Speaker 06:
At least at some point during the re-exams, the district court action got stayed, right?

[00:06:03] Speaker 03:
Yeah.

[00:06:03] Speaker 03:
Suspente, at the very end of the litigation, after the parties had already spent the entire litigation preparing for trial and discovery closed and all that, we'd actually requested early on

[00:06:16] Speaker 03:
that a stay be granted based on the reexaminations.

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Another party who was co-litigating the same issue actually got a stay.

[00:06:24] Speaker 03:
Judge Guilford denied our stay.

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We actually had essentially the same stay motion on file, actually, because of co-defense agreement.

[00:06:34] Speaker 03:
And later, when Parallax amended the claims, effectively mooting

[00:06:39] Speaker 03:
any damages in our view.

[00:06:41] Speaker 03:
We narrowed the claims.

[00:06:42] Speaker 03:
And once you narrow the claims, that's supposed to wipe out any past damages.

[00:06:47] Speaker 03:
We had asked for another stay based on that, because at that point, 764 was already invalidated.

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238 had been withdrawn, because Parallax had admitted that none of the original allegations had met with respect to 238.

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And so 085 had been amended.

[00:07:06] Speaker 03:
And again, because we thought that that wiped out all damages,

[00:07:09] Speaker 03:
that that was a good time to ask Judge Guilford a second time per se.

[00:07:14] Speaker 03:
He denied it again.

[00:07:16] Speaker 03:
So after that, the parties progressed through discovery.

[00:07:22] Speaker 03:
Bruce Thiraj, the inventor, was actually deposed.

[00:07:26] Speaker 03:
He didn't show up to his first deposition.

[00:07:30] Speaker 03:
So when he actually did show up, it was at the end of discovery or maybe even after the close.

[00:07:38] Speaker 03:
I think Judge Guilford had given leave or something like that.

[00:07:40] Speaker 03:
But it was at that point that the parties had filed new cross motions for summary judgment.

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And also, I believe there was a motion for leave to amend the complaint with respect to

[00:07:56] Speaker 03:
Inequitable conduct allegations because of current activity that was going on during the re-exams.

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Judge Guilford decided that that was too much.

[00:08:08] Speaker 03:
There was too much going on.

[00:08:09] Speaker 06:
OK.

[00:08:10] Speaker 06:
I guess to bring back.

[00:08:13] Speaker 06:
the discussion to the arguments in front of us.

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I think the big problem we have here is that there's a very deferential standard of review here to the district court judge who, when we look at his trial decision and then his denial of your motion to amend it, it really does look like the judge carefully considered a whole multitude of different arguments and issues.

[00:08:42] Speaker 06:
each of those findings gets a lot of deference.

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And so you've got quite a mountain to climb to try to convince this court that something really unreasonable happened below.

[00:08:56] Speaker 06:
What is your best argument?

[00:09:01] Speaker 03:
Well, I would say a best argument.

[00:09:03] Speaker 03:
First of all, it definitely appears superficially that he gave attention to the subject matter

[00:09:11] Speaker 03:
briefs and things like that, but I think we've exposed a lot of underlying mistakes in the reasoning and things like that.

[00:09:18] Speaker 03:
But I think our best argument is with respect to 085 and this concept that parents kept switching positions back and forth, you know, taking a narrow stance with respect to the claims when it came to defending validity at the patent office.

[00:09:37] Speaker 03:
You know, for example, during the examination,

[00:09:41] Speaker 03:
It was arguing at the patent office that it was very difficult to match CTE that if you had two layers, a top and bottom layer, that were the same composition.

[00:09:53] Speaker 03:
They were arguing to the patent office to save validity during the examination that that wasn't enough to establish coefficient of thermal expansion.

[00:10:01] Speaker 03:
But then on the flip side of that,

[00:10:05] Speaker 03:
They were accusing my client's products after having performed no testing, just basically looking at photographs and noting that both were EVA foam or something like that.

[00:10:14] Speaker 03:
And I think it's even reflected in their infringement contentions that are cited.

[00:10:20] Speaker 03:
But lots of other issues.

[00:10:24] Speaker 03:
Thrush, again, I think he admitted in his deposition in 2018 that two weeks prior,

[00:10:33] Speaker 03:
He had submitted a declaration also talking about difficulty of CTE and things like that, where he said that – I'll just read it – that his invention was solving a problem that was plaguing the industry with respect to dual-color mattes, and that, you know, his efforts with CTE and undulations resolved that problem, and that's why he got the patent.

[00:10:59] Speaker 03:
And that's the declaration, again, he put in, filed with the court,

[00:11:03] Speaker 03:
opposing summary judgment, but then two weeks later he testified, I've never even seen dual color mattes before.

[00:11:10] Speaker 03:
Didn't know about delamination, didn't care about CT.

[00:11:15] Speaker 03:
Thought that using top and bottom layers of the same composition was common sense and you would always in those circumstances get a matching CT.

[00:11:27] Speaker 03:
When asked why he was, why he had made that declaration and whether it was

[00:11:32] Speaker 03:
He believed it was accurate.

[00:11:33] Speaker 03:
He agreed that it was inaccurate.

[00:11:36] Speaker 03:
And he could not explain how he would change it to make it accurate at that time.

[00:11:40] Speaker 05:
Counsel, if I could.

[00:11:42] Speaker 05:
Sure.

[00:11:43] Speaker 05:
The history of this is littered with concerning twists and turns.

[00:11:48] Speaker 05:
And you've outlined all those.

[00:11:49] Speaker 05:
Sure.

[00:11:50] Speaker 05:
And you go back to.

[00:11:53] Speaker 05:
you know, the number of claims that were withdrawn based just on the threat of a Rule 11 motion and the rest.

[00:12:00] Speaker 05:
Like Judge Chen, my concern here is the standard review hurdle that you have, and what exactly the district court either missed or got wrong that makes it clear error for this court to where this court needs to address it.

[00:12:17] Speaker 03:
I understood completely.

[00:12:19] Speaker 03:
I think what Judge Selma did was he

[00:12:23] Speaker 03:
looked at all these inconsistencies and he ultimately determined by looking at the OA-5 patent itself that it was reasonable for Thrush to contend that his invention was controlling undulations as opposed to using undulations anew or CTE anew to prevent delamination.

[00:12:51] Speaker 03:
However, when you look at the patent itself,

[00:12:54] Speaker 03:
And I think at least to some extent, the court can review the claims de novo.

[00:12:59] Speaker 03:
I realize that overall, it's an abuse of discretion standard.

[00:13:03] Speaker 03:
I think the Supreme Court case on the issue actually suggests that still there might be some issues of law that factor into that.

[00:13:15] Speaker 03:
And I think that's the claim construction itself.

[00:13:18] Speaker 02:
Counsel, you're almost out of time.

[00:13:19] Speaker 02:
Should you like to save some for rebuttal?

[00:13:22] Speaker 03:
Sure.

[00:13:26] Speaker 03:
Okay, so this is correct.

[00:13:29] Speaker 03:
I'll finish answering.

[00:13:31] Speaker 03:
I'm sorry.

[00:13:32] Speaker 00:
Was that set at 15 minutes, Mike?

[00:13:36] Speaker 00:
Two minutes of 15?

[00:13:38] Speaker 00:
Yeah.

[00:13:38] Speaker 03:
Oh, two of 15.

[00:13:39] Speaker 03:
I'm sorry.

[00:13:40] Speaker 03:
I thought it was set to eight.

[00:13:41] Speaker 03:
Okay.

[00:13:42] Speaker 03:
I'll take your time.

[00:13:44] Speaker 03:
Okay, no problem.

[00:13:45] Speaker 03:
Sorry.

[00:13:45] Speaker 03:
Sorry.

[00:13:46] Speaker 03:
I misunderstood.

[00:13:52] Speaker 04:
Thank you, Chief Judge Moore, and may it please the court.

[00:13:57] Speaker 04:
I'm John Van Leeuwensels.

[00:13:59] Speaker 04:
I represent Parallax in this case, as I have for the last nine years or so.

[00:14:03] Speaker 04:
And I want to, I think, bring up critical points that underlie

[00:14:13] Speaker 04:
Judge Chen's question and Judge Cleese's as well, and that is that we're here because Judge Sona denied Ink Store's exceptional case motion, and that exceptional case motion depended almost entirely, maybe 90 percent, on the allegations of inequitable conduct.

[00:14:35] Speaker 04:
So if we look at the inequitable conduct side first,

[00:14:40] Speaker 04:
and Judge Sona's resolution of that counterclaim, it's important to remember that Judge Sona conducted a bench trial on the counterclaim, and police stores had the opportunity to and did question Mr. Thresh, the named inventor, as well as Mr. Fish and Mr. Andelin, who were the prosecuting attorneys.

[00:15:01] Speaker 04:
They were able to put on their own expert as to part of their inequitable conduct story.

[00:15:08] Speaker 04:
And then the parties did a post-trial brief, and Judge Selna then provided very detailed findings of fact and conclusions of law that came out of that.

[00:15:17] Speaker 04:
And the real gist of the ink store's appeal is that they don't agree with what Judge Selna, how he resolved those key factual issues.

[00:15:29] Speaker 04:
And in each case, with respect to Mr. Thrush, Mr. Andlin, and Mr. Fish, the individuals who were accused of inequitable conduct

[00:15:38] Speaker 04:
Judge Selma specifically found that each of them testified credibly that they did not intend at any point to mislead or deceive the PTO.

[00:15:50] Speaker 02:
Well, I mean, I think that it's fair for Judge Selma to have concluded that Fish did not mean or intend to deceive the PTO and probably didn't deceive the PTO.

[00:16:03] Speaker 02:
When he made the statement, the applicant knows of no prior art interlocking max that have multiple layers, which are either textured on both sides or where the layers have different colors.

[00:16:12] Speaker 02:
I see no problem with the statement or the finding by the judge that at the time Mr. Fish made that statement, he did not intend to deceive the PTO.

[00:16:24] Speaker 02:
It in fact may very well have been a completely and utterly true statement that at that moment when he made that statement, he didn't know of any prior art.

[00:16:32] Speaker 02:
But isn't there a continuing obligation to notify the PTO if you've made an assertion that you later find out to be untrue?

[00:16:42] Speaker 02:
OK, it is true.

[00:16:44] Speaker 02:
He did not know of the prior art at the time he made the statement.

[00:16:47] Speaker 02:
But later on, he finds out through the prosecution process related to the other applications that there are one or two pieces of prior art that fall into the category of the things he said he didn't think existed.

[00:17:00] Speaker 02:
Doesn't he have an obligation?

[00:17:02] Speaker 02:
I mean, wouldn't a sort of good attorney either notify the PTO and say, you know, these have been brought to my attention, I just want to correct the record, apparently these exist, or alternatively?

[00:17:16] Speaker 02:
You don't want to correct the record, just submit them in an RCE.

[00:17:19] Speaker 02:
I mean, isn't that what we normally do in this kind of thing?

[00:17:21] Speaker 02:
You just continue in prosecution, and you actually submit those two documents so that the statement he made was not false when he made it.

[00:17:29] Speaker 02:
But isn't it reasonable to expect there's a continuing obligation of candor to the office, which ought to include correcting something you later find out to be incorrect?

[00:17:41] Speaker 04:
I agree with the second part of your Honor's statement.

[00:17:44] Speaker 04:
I believe that if Mr. Fish became aware that his statement was incorrect, that if there were facts that he needed to make the Patent Office aware of, that he should have done that.

[00:17:56] Speaker 04:
But in this case, I don't believe that that is what happened.

[00:17:59] Speaker 04:
I think that that statement by Mr. Fish and his declaration had a temporal element to it.

[00:18:05] Speaker 04:
So what he said was, what the actual statement is, is that at

[00:18:09] Speaker 04:
At this time, the applicant knows of no such priority.

[00:18:13] Speaker 04:
And so the only way to show that that statement.

[00:18:17] Speaker 01:
Well, he didn't say the at this time thing.

[00:18:20] Speaker 01:
He didn't say at this time.

[00:18:21] Speaker 04:
Well, he did say the appellant knows of no.

[00:18:25] Speaker 04:
So I believe that there is a temporal element that is a part of that statement.

[00:18:30] Speaker 06:
But just to follow up on Chief Judge's question, then there is no question that Mr. Fish

[00:18:38] Speaker 06:
learned about dual-colored mattes soon thereafter, while this particular design application was still pending before the office.

[00:18:49] Speaker 06:
So therefore, wasn't there an obligation at that time, once he learned about DeLazansky, once he learned about Chang, to submit Chang and DeLazansky to the design packing family and say, OK, I told you last year

[00:19:08] Speaker 06:
I was unaware of any such dual-colored mats.

[00:19:12] Speaker 06:
Well, it turns out they do exist here, too, that I've learned of.

[00:19:17] Speaker 06:
But let me tell you why they are of no moment to the patentability of my design.

[00:19:25] Speaker 04:
And I would not dispute that that would have been a better practice.

[00:19:30] Speaker 06:
But the next question is, was there an obligation for him to do that?

[00:19:34] Speaker 04:
Well, no.

[00:19:36] Speaker 04:
Why not?

[00:19:38] Speaker 04:
There would not be an obligation for him to do it in order to avoid a finding of inequitable conduct.

[00:19:44] Speaker 04:
That's what I'm saying.

[00:19:45] Speaker 04:
Because what both of your honest questions go to, I think, is toward the materiality of the statement, the materiality of that bit of information.

[00:19:56] Speaker 02:
Well, it's actually more towards officer of the court kind of concepts for me.

[00:20:00] Speaker 02:
I mean, materiality, by the way, I mean, you don't want me to get to materiality because one of them was part of the ultimate rejection.

[00:20:06] Speaker 02:
So you would lose on that one on materiality for me.

[00:20:08] Speaker 02:
So you don't want to go to materiality.

[00:20:11] Speaker 02:
But on the intent prong, I mean, he's an officer of the PTO, a member of the bar.

[00:20:19] Speaker 02:
You have a continuing duty of candor.

[00:20:21] Speaker 02:
I mean.

[00:20:22] Speaker 04:
I don't disagree that it would have been

[00:20:28] Speaker 04:
the appropriate thing to do, that he should have done that.

[00:20:31] Speaker 04:
But at the same time, Mr. Fish's good faith belief was that those other references were not material.

[00:20:41] Speaker 04:
And that was part of Judge Selma's finding in the case.

[00:20:47] Speaker 02:
But do they have to be material, or don't we have cases that say they are in fact material if they directly contradict a statement you made in the PTO?

[00:20:56] Speaker 04:
I agree that they are material.

[00:20:59] Speaker 04:
I agree they're material.

[00:21:01] Speaker 04:
But there's, under Therasense, there's two aspects of the inquiry.

[00:21:07] Speaker 04:
One is

[00:21:08] Speaker 04:
materiality and materiality can be but for materiality as a piece of prior art or in the case of a an affirmative statement that you make to the PTO it doesn't have to be it could just be an important piece of information so I would concede that it's material and I think even Judge Stone that conceded he said you know without even finding one way or another whether it is material if I assume that it is

[00:21:29] Speaker 04:
I still have to inquire about what was Mr. Fish's specific intent.

[00:21:36] Speaker 04:
And there has to be a finding that.

[00:21:40] Speaker 02:
So can you explain to me, like, do you have any clue?

[00:21:43] Speaker 02:
What is your best guess as to why he didn't disclose it?

[00:21:47] Speaker 02:
Is it because he sort of just didn't appreciate the relevance of that art somehow, even though it was being cited in the other action?

[00:21:57] Speaker 02:
What is your best guess as to why he would not have disclosed it?

[00:22:04] Speaker 04:
I think it's because the art that you're referring to, D. Losanski and Chang, were cited in the utility and not in the design pad.

[00:22:14] Speaker 04:
And so he just didn't make the connection.

[00:22:17] Speaker 04:
I think it was just an innocent failure to correct versus

[00:22:25] Speaker 04:
reflecting any specific intent to deceive, which is what... Negligence is not intentionality.

[00:22:32] Speaker 04:
Exactly.

[00:22:33] Speaker 04:
And what the cases say is that negligence, even gross negligence, isn't enough to establish specific intent to defraud the patent office.

[00:22:43] Speaker 04:
There has to be something more.

[00:22:44] Speaker 04:
There has to be something else.

[00:22:46] Speaker 04:
And we did have a trial on it.

[00:22:49] Speaker 04:
And Judge Sona heard testimony on the subject of

[00:22:54] Speaker 04:
of this exact point, and he ultimately came down and said that he found Mr. Fish to be credible and that he did not believe that he had the specific intent to defraud the PTO.

[00:23:08] Speaker 04:
And I believe, based on rule 52 of the federal as-is procedure and the Supreme Court case called Anderson v. City of Bessemer, that this court

[00:23:22] Speaker 04:
respectfully cannot disturb those credibility determinations.

[00:23:25] Speaker 04:
Those are uniquely the trial court's decision.

[00:23:29] Speaker 04:
And I'm aware of no case where the Federal Circuit has reversed an inequitable conduct decision, where the trial court has specifically found that the inventor and the prosecuting attorneys lack the specific intent to defraud the PTO.

[00:23:47] Speaker 04:
I don't see how, based on the record that we have, you could get there.

[00:23:51] Speaker 04:
And maybe there is some questioning that ink stores could have put on at trial that would have got at your honor's point or your honor's point and elicited from

[00:24:04] Speaker 04:
Mr. Fish some incriminating reason why he did not disclose it Maybe you know got him to admit that if he disclosed those there's no way that design patent issue But they didn't do that and that's not on the record and we don't have that all we have is the testimony that they did elicit on cross-examination and ultimately the decision by Judge Selma that there was no specific intent to defraud and

[00:24:30] Speaker 05:
Echoing what the Chief Judge and Judge can ask, my concern here is the disclaimer, a temporal disclaimer being able to forego the clear obligation to supplement that any patent applicant can simply say, what the time?

[00:24:53] Speaker 05:
which renders this court's body of law on this issue, the PTA's processes and procedures, the duty of candors, the chief judge mentioned, irrelevant.

[00:25:04] Speaker 05:
If they are coached, prepped, trained, whatever term they're going to use by their counsel, I'll make sure you put a temporal disclaimer on when you had disbelief.

[00:25:15] Speaker 05:
And then we're good to go.

[00:25:17] Speaker 04:
I didn't mean to suggest that that's what our argument is.

[00:25:22] Speaker 04:
I believe, and I accept the idea, that Mr. Fish, when he became aware of his references, should have submitted them.

[00:25:29] Speaker 04:
I'm not disputing that at all.

[00:25:32] Speaker 04:
All I'm saying is that the only evidence in the record was, or maybe the lack of evidence in the record, reflecting any sort of

[00:25:41] Speaker 04:
intent to deceive the PTO into issuing a patent that we're otherwise not entitled to.

[00:25:47] Speaker 04:
That just didn't happen.

[00:25:49] Speaker 04:
And Judge Selma made that finding.

[00:25:51] Speaker 04:
And I don't see how you could, even based on what Your Honor believes is the obligation of prosecuting counsel to bring relevant references to the patent officer's attention.

[00:26:05] Speaker 04:
I don't think that you can get there from here.

[00:26:09] Speaker 02:
Anything further, counsel?

[00:26:10] Speaker 04:
Well, the only other point that I wanted to make, Your Honor, is that the inequitable conduct claim is, counterclaim is the centerpiece of the exceptional case motion.

[00:26:25] Speaker 04:
And Mr. Peccano's arguments about what were essentially the shifting SANS view on the 08-5 patent, I think Judge Feldena addressed those and rejected those.

[00:26:39] Speaker 04:
That was really more a part of their argument that he should have granted the exceptional case even if they lost the inequitable conduct counterclaim.

[00:26:49] Speaker 06:
So could you just explain a little bit about this undulation matter?

[00:26:54] Speaker 06:
have to confess I have a hard time following what's going on here.

[00:26:57] Speaker 06:
But the overall story arc seems to be the patent says one thing, then Mr. Thresh comes in and says another thing, and then Mr. Thresh has to do a take back and try to correct what he had said previously.

[00:27:12] Speaker 04:
I don't think that that is exactly what happened here.

[00:27:18] Speaker 04:
What Judge Solna found was that

[00:27:22] Speaker 04:
Inc.

[00:27:23] Speaker 04:
Storrs took issue with what the patent said versus what his testimony was.

[00:27:28] Speaker 04:
And what Judge Salna pointed out in his order was that the patent was not written by Mr. Storrs.

[00:27:35] Speaker 04:
The patent was written by his lawyers.

[00:27:37] Speaker 04:
And it may well be that you would have a lay person like Mr. Storrs who would use words in a different way than how the legalese of the attorneys put it out there.

[00:27:46] Speaker 04:
And Inc.

[00:27:47] Speaker 04:
Storrs also attempted to show that there was a conflict between what the lawyers argued versus what

[00:27:52] Speaker 04:
Mr. Thrush testified to.

[00:27:54] Speaker 04:
But I don't believe that there was a meaningful change in Mr. Thrush's testimony.

[00:28:02] Speaker 04:
And Judge Felna said so.

[00:28:03] Speaker 04:
Judge Felna said what happened was, you know, the undulations, the microscopic undulations may be an inherent part of this type of a mat, but that doesn't preclude there being an inventive concept associated with controlling the undulations for

[00:28:20] Speaker 04:
the specific reason, which was to prevent delamination.

[00:28:25] Speaker 04:
So I don't believe that they established shifting scenes.

[00:28:28] Speaker 04:
I don't believe that they established that there was inadequate pre-filing investigation by parallax.

[00:28:36] Speaker 04:
And what Judge Selma concluded was, Ainsworth didn't give me the analysis that I would have to have in order to grant the exceptional case motion if I disagree on the inequitable conduct.

[00:28:49] Speaker 04:
That really, those two have to rise and fall together.

[00:28:52] Speaker 04:
And although they argued something else, the record doesn't support it.

[00:28:58] Speaker 02:
OK, thank you, counsel.

[00:28:59] Speaker 02:
Thank you.

[00:29:01] Speaker 02:
Counsel has a little bit of time.

[00:29:11] Speaker 03:
I'd like to address the issue in intent first, with respect to 764, since that was just discussed.

[00:29:20] Speaker 03:
I think, well, number one, FISH absolutely had an ongoing duty.

[00:29:26] Speaker 03:
And I don't think that's really disputable, that the patent rules require disclosure at any time during the pendency of the patent, that you find something material that you're supposed to disclose it.

[00:29:40] Speaker 03:
It seemed at one point, at least at appendix page 38, that Judge Selna seemed to not understand that prosecution was still open.

[00:29:51] Speaker 03:
And I believe that might have had some sort of effect on his decision with respect to intent to deceive.

[00:29:59] Speaker 03:
But even apart from that, Fish testified that he made a conscious decision not to disclose this reference.

[00:30:07] Speaker 03:
He also testified that he knew about it.

[00:30:10] Speaker 03:
During 764 dependency, he said that despite having told the patent office to allow the patent based on dual color, that he decided to withhold the references, affirmatively withhold them.

[00:30:25] Speaker 03:
Intentional decision because the teeth looked a little bit different or something like that.

[00:30:31] Speaker 03:
Aventus Farmer, though, says, if you know a reference is material, which he obviously did because he told the patent office to allow 7-6-4 on that basis, and you make an intentional decision not to disclose, that's intent to deceive, and that's exactly wrong.

[00:30:46] Speaker 06:
The problem here is the district court concluded that he testified credibly that he did not believe they were material.

[00:30:53] Speaker 06:
to novelty and non-obviousness.

[00:30:55] Speaker 06:
And the designs are similar, but they're still different.

[00:31:02] Speaker 06:
In the re-exam, there was a different reference called Wu that was used as the Rosen primary reference.

[00:31:09] Speaker 06:
D. Lazansky was used as a secondary reference.

[00:31:12] Speaker 06:
But in terms of the overall look and feel and appearance, it was a different reference, not D. Lazansky or Chang.

[00:31:22] Speaker 06:
So I guess the question here is, again, maybe this wasn't a model of ideal patent prosecution and probably should have filed the IDS with these two references.

[00:31:36] Speaker 06:
But nevertheless, the district court looked at Mr. Fish while he was testimony and concluded that he did not have an intent to deceive because he didn't think these references looked close enough to his claim design.

[00:31:52] Speaker 06:
And so, therefore, it's hard for us to go over the top on that.

[00:32:01] Speaker 03:
Got it.

[00:32:02] Speaker 03:
I thought I had run out of time.

[00:32:03] Speaker 02:
You have.

[00:32:05] Speaker 03:
OK.

[00:32:05] Speaker 03:
All of a sudden, my time showed up.

[00:32:06] Speaker 03:
Do you want me to answer or address, or am I?

[00:32:09] Speaker 02:
You can respond to Judge Chen.

[00:32:11] Speaker 02:
Go ahead.

[00:32:11] Speaker 02:
And then we'll call it a day.

[00:32:14] Speaker 03:
OK.

[00:32:15] Speaker 03:
I think Judge Sona aired as a matter of law deciding that,

[00:32:19] Speaker 03:
The reference was not material.

[00:32:21] Speaker 03:
The references were not material because I think the case law says that when you tell the Patent Office to allow something based on a particular feature, it's automatically material.

[00:32:30] Speaker 03:
I think it also falls into the barest exception of a false declaration.

[00:32:37] Speaker 03:
And then he also failed under Roman Haas and Intellectual Wireless to correct his false statement, as both of those cases require.

[00:32:44] Speaker 03:
And neither of those cases

[00:32:48] Speaker 03:
Necessitate that the the false statement have been made intentionally You know when it was made big just say generally speaking.

[00:32:57] Speaker 03:
There are these steps.

[00:32:58] Speaker 03:
You're supposed to follow When you make a false statement, and it's unquestionable that the mr. Fish did not do that Okay, I think both counsels of states are taken under submission