`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
`
`CIVIL ACTION NO.
`2:15cv478
`
`))))))))))))
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`- - - - - - - - - - - - - - - - - -
`NADER ASGHARI-KAMRANI and
`KAMRAN ASGHARI-KAMRANI,
`Plaintiffs,
`
`v.
`UNITED SERVICES AUTOMOBILE
`ASSOCIATION,
`Defendant.
`- - - - - - - - - - - - - - - - - -
`
`TRANSCRIPT OF PROCEEDINGS
`Day 5 (Afternoon session)
`Norfolk, Virginia
`April 24, 2017
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`BEFORE: THE HONORABLE ROBERT G. DOUMAR
`United States District Judge
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`APPEARANCES:
`MEI & MARK LLP
`By: Krystyna Colantoni
`Irene H. Chen
`Reece Nienstadt
`Laurence Sandell
`Lei Mei
`Jeff Pearson
`Counsel for the Plaintiffs
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`JODY A. STEWART, Official Court Reporter
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` 1
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`USAA 1072
`USAA v Asghari-Kamrani
`CBM2016-00063
`CBM2016-00064
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`
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`968
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`APPEARANCES CONTINUED:
`FISH & RICHARDSON
`By: Ahmed J. Davis
`Michael T. Zoppo
`Matthew C. Berntsen
`Counsel for the Defendants
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`(Luncheon recess from 12:30 to 1:31 p.m.)
`THE COURT: All right. Who's going to argue?
`MR. DAVIS: Good afternoon, Your Honor. Mr. Zoppo
`is going to begin with Mr. Tadayon.
`THE COURT: What points is Mr. Zoppo going to
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`argue?
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`MR. DAVIS: He's going to argue the points
`specifically as it relates to Mr. Tadayon, Mr. Nader
`Asghari-Kamrani, and Mr. Kim.
`THE COURT: Who are you going to argue?
`MR. DAVIS: I'm going to argue Mr. Kamran
`Asghari-Kamrani, Mr. Fortkort, and Mr. Nienstadt.
`THE COURT: Okay. Okay, Mr. Zoppo. You're on
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`board.
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`MR. ZOPPO: Thank you, Your Honor. Might I ask how
`much time we're allotted?
`THE COURT: Give you an hour.
`MR. ZOPPO: Thank you, Your Honor.
`THE COURT: Each get an hour, period.
`MR. ZOPPO: Thank you, Your Honor.
`THE COURT: Okay.
`MR. ZOPPO: So we'll start with Dr. Bijan Tadayon,
`and Dr. Tadayon is who filed the application for the '432
`patent, and he is who made the priority claims in the '432
`patent. The question is whether those priority claims, as
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`they were originally made, are they material and were they
`made with an intent to deceive. With respect to
`materiality, Mr. Pearson stated that there's no better prior
`art than the '837 patent, and that's a very important point,
`Your Honor. That's an important point because unless the
`plaintiffs are able to claim priority to the '837 patent,
`their patent is invalid.
`Okay. That's because the '837 patent has the same
`specification as the '432 patent. So if the '432 patent was
`in the public domain prior, a year prior to the filing date
`of the '432 patent, the patentees would never have been able
`to get the patent that's at issue in this case. That's what
`makes that material.
`THE COURT: Go over that again, Mr. Zoppo.
`MR. ZOPPO: Sure. It's an important point, Your
`Honor. The '837 patent published in 2003 as a published
`patent application, and it describes an invention.
`THE COURT: All right.
`MR. ZOPPO: And the '432 patent application was not
`filed until 2008, and that was several months after the '837
`patent issued, but also importantly, many years, several
`years after the '837 patent application became a
`publication, something public, something that the whole
`world then knew about, okay. Patent law does not allow you
`to get a patent on something the whole world knows about.
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`It has to be something new. Okay.
`And because the '837 patent application was in the
`public domain more than a year before the '432 patent
`application was filed, it's what's called prior art. And
`prior art is what the patent examiners use to reject patent
`applications. Okay. And it may seem odd that the
`plaintiffs' own application can be used against them, but
`this is the law.
`If the patentees had voluntarily published their
`invention a year before they filed their patent application,
`the statute does not allow you to then apply for a patent on
`it.
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`THE COURT: Prior art?
`MR. ZOPPO: Yes, Your Honor. That's exactly right.
`And the issue to keep in mind here is that Dr. Tadayon is
`not a newbie. He is a sophisticated practitioner. This is
`the gentleman I described in my opening statement as having
`gone to Georgetown and a Ph.D. from Cornell, and the
`pre-credentials go on and on, a former patent examiner.
`What's also important to report is the testimony
`that Mr. Nader Asghari-Kamrani gave at this trial, that it
`was their intention to file a continuation of the '837
`patent, and that he relied on Dr. Tadayon's testimony -- I'm
`sorry, on Dr. Tadayon's advice in doing so. I have a cite
`for that testimony. That's Page 394, lines 3 through 12.
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`THE COURT: 394?
`MR. ZOPPO: Lines 3 through 12.
`THE COURT: Wait a minute. Let me read it.
`MR. ZOPPO: Sure. And we also discussed in this
`trial that -- well, the testimony here, Your Honor, is that
`Nader Asghari-Kamrani states, "What you wanted to do was add
`claims to that same specification and drawings of the '837
`patent, correct?"
`And the answer is, "We wanted to file continuation,
`and we received advice from the patent attorney."
`That's a problem because at that time, at the time
`the '432 patent was filed, the '837 patent had already
`issued, and as I discussed, if you recall, in my opening,
`this idea of a missed deadline in this case, and this missed
`deadline was the fact that the '837 patent issued five
`months before the '432 patent application was filed. What
`that means is you can't file a continuation of the '837.
`You had to have done that while that application was still
`pending as a patent application.
`Now, there's been some testimony and some
`suggestion in this case that the CIP or the CON label is
`really just a label and nothing more, but we also received
`testimony that actually these labels mean something. The
`label of a continuation means there is no new subject
`matter. The label of a continuation-in-part means it does
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`add subject matter.
`The problem here is that the patent applicants and
`Dr. Tadayon, what they told the patent office was that the
`'432 patent adds no new subject matter to the '676 patent or
`the '837 patent. There are two problems with that. The
`first is the '837 patent was already issued, and that's what
`we've spoken about. The other is they told the patent
`office that the '432 patent adds no different, no new
`subject matter to the '676 patent, but that's not true,
`either, because those specifications are very different,
`because it was called a continuation, which signals to the
`patent examiner that it's the same subject matter. The
`question of continuity of disclosure was never evaluated by
`the patent office. They never knew that they had to
`consider whether the '676 provides a written description for
`the claims.
`THE COURT: Why didn't they?
`MR. ZOPPO: They didn't because the '432 was called
`a continuation, and the definition of a continuation is that
`there is no new matter. It's the same. So they were
`telling the patent office that this '432 and the '676 are
`the same, but they're not the same. The patent office
`didn't have a reason to consider that because --
`THE COURT: Why didn't the patent office examiner
`look it up, Mr. Zoppo?
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`MR. ZOPPO: I can't answer what the patent examiner
`was thinking, but I can tell you that when we looked at the
`filing receipt of the '432 patent, the patent office
`accepted the priority claims as they were made, which was a
`continuation of the '676.
`So this is, again, a case where the patent office
`has to rely on representations that patent practitioners
`make, and you can see the acceptance of that in the filing
`receipt. Furthermore, we also saw, as evidence in this
`case, that USAA filed certain petitions called CBMRs, a
`post-grant procedure, and in those petitions USAA alerted
`the patent office to these issues that we're discussing at
`this trial, this priority issue.
`We argued, USAA argued to the patent office that
`the '676 patent can't be a link between the '432 and the
`'837 because it describes something different. Okay. And
`the patent office has found that USAA has made that showing
`by a preponderance of the evidence. It has instituted two
`trials on that point.
`I also do want to point out, and if we could bring
`up trial transcript 36616 through 36722. I do want to point
`out that this idea of the missed filing deadline, we
`believe, is an important one. I asked Nader about why
`didn't he file the '432 patent application while the '837
`was still pending in his deposition, and during the
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`deposition he didn't have an answer for me. But you also
`see in the trial transcript, if you can bring up the --
`THE COURT: After looking it over, he comes up with
`a different answer?
`MR. ZOPPO: Yes, Your Honor.
`THE COURT: What does he come up with?
`MR. ZOPPO: That answer has not come onto the
`record, Your Honor.
`THE COURT: Did he ever answer the question?
`MR. ZOPPO: No, Your Honor. He just indicated that
`he came to a memory between his deposition and this trial.
`THE COURT: So you didn't ask him what was his
`current memory?
`MR. ZOPPO: No, I did not, Your Honor. I assumed
`that plaintiffs would ask him that.
`THE COURT: The question primarily with Tadayon is
`when he filed this, did he intend to deceive the patent
`office?
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`MR. ZOPPO: Correct.
`THE COURT: What evidence is that he intended to
`deceive the patent office?
`MR. ZOPPO: Well, I think on the one hand the
`priority claims are so --
`THE COURT: Well, the priority claim isn't worth a
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`MR. ZOPPO: Correct.
`THE COURT: Okay. Assuming the priority claim is
`no good, why or how did he intend to deceive the patent
`office?
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`MR. ZOPPO: Well, I think the intention to deceive
`arises because, as Nader Asghari-Kamrani testified, what
`they wanted to do was file a continuation of the '837
`patent. So what they wanted to do was circumvent the act
`that the '837 patent issued and, later in time, realized.
`THE COURT: Stop a minute. Why would they want
`that to have been done, Mr. Zoppo?
`MR. ZOPPO: Absolutely. It's very simple. If the
`'432 patent application had been filed while the '837 patent
`was still pending, we would not be here. Okay. There would
`not have been a single petition to amend a single priority
`claim in the '432 patent. The only reason we are all here
`is because the '432 application was not filed while the '837
`patent was pending.
`THE COURT: I assume that, and I'm assuming that.
`Now, Dr. Tadayon, you say, knew or did not know of the
`patenting application?
`MR. ZOPPO: No. Dr. Tadayon knew of the pending
`applications because he recited them in the priority claim.
`He identified them by number. So he must have known about
`them, Your Honor.
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`THE COURT: Then how did he know that it was
`already granted?
`MR. ZOPPO: Because he identifies the '837 patent
`as an issued patent in the priority claim.
`THE COURT: So he identified the '837 patent as one
`already issued?
`MR. ZOPPO: Yes, Your Honor.
`THE COURT: So that wasn't deception.
`MR. ZOPPO: He did call it a continuation of an
`issued patent, which is so beyond the pale.
`THE COURT: It was a continuation of the '676
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`patent?
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`MR. ZOPPO: It was a continuation of both, Your
`Honor, that's correct. That's correct. And, again, I'll
`remind Your Honor that the intention, the desire from the
`plaintiffs was to file a continuation of the '837 patent.
`And if they were able to accomplish that, the issues in this
`case, these issues in this case would not be issues at all.
`THE COURT: Okay. Go ahead.
`MR. ZOPPO: Okay. So I think the next topic to
`discuss is the February 22nd petition to amend the priority
`claims in the '432 patent, and that was the one filed pro
`se. Let me make sure what that petition did before we get
`into the details. So the original priority claims, as I
`discussed, were two continuation claims: A continuation of
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`the '676 and a continuation of the '837.
`This first petition changed those entirely, and it
`converted them into a sequential chain. Instead of being
`continuations, it made them continuations in part. So the
`'432 patent became a continuation of the '676 patent which
`in turn became a continuation-in-part of the '837.
`THE COURT: Stop.
`MR. ZOPPO: Yes.
`THE COURT: The '432.
`MR. ZOPPO: Is a continuation-in-part of the '676,
`and the '676, a continuation-in-part of the '837.
`THE COURT: Okay.
`MR. ZOPPO: Now, first of all, those changes are
`not consistent with the inventor's testimony as to what the
`intention was in filing the '432 patent. The testimony we
`read earlier was that Mr. Nader Asghari-Kamrani wanted to
`file a continuation, yet he changed his priority claims to a
`continuation-in-part.
`On top of that, we had the testimony from
`Dr. Tadayon that the originally filed priority claims are
`perfect the way they are. That is in Court Exhibit 1.
`That's Page 192, 18 to 22. So we can see Dr. Tadayon's
`testimony. "So I don't claim that I have the full, you
`know, list of all the related cousin or, you know, uncle
`cases here, but the ones I wrote here are perfectly correct.
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`You know, there's nothing wrong with it."
`So Dr. Tadayon gave that testimony at his
`deposition.
`THE COURT: That is at?
`MR. ZOPPO: That is at 192, lines 18 through 22.
`THE COURT: Nothing wrong. Okay.
`MR. ZOPPO: Right. What's interesting about that
`testimony is that Dr. Tadayon gave that testimony after
`having received the malpractice release from plaintiffs, and
`that malpractice release was not produced to USAA before
`that deposition.
`So you may wonder why there is no testimony about
`that. It's because we didn't have it, Your Honor.
`Another reason that this petition --
`THE COURT: Doesn't indicate by fact that you
`didn't have it? Did you ask for the documentations?
`MR. ZOPPO: We had served document subpoenas, yes,
`Your Honor, before the deposition. We had no way that a
`malpractice release existed, so we did not ask could you
`please produce the malpractice release.
`THE COURT: Dr. Tadayon doesn't look good here,
`Mr. Zoppo, but the question is not whether Dr. Tadayon looks
`good. The question is whether the plaintiffs intended to
`deceive or Dr. Tadayon did. I'm not sure what evidence is
`that he intended to deceive the patent office.
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`MR. ZOPPO: Understood, Your Honor. Relatedly, I
`think on this same point, getting at this idea of altering
`these priority claims, is, again, I mentioned that the
`plaintiffs changed from continuation and
`continuation-in-part type priority claims, and as the
`evidence came out, I think all the witnesses except for
`Dr. Tadayon share a common understanding of what a
`continuation-in-part is, and that is that it must add new
`subject matter.
`If you recall, we discussed with Mr. Nader
`Asghari-Kamrani the overlap of subject matter.
`THE COURT: Everybody understands what a
`continuation is and what a continuation-in-part is.
`MR. ZOPPO: Correct.
`THE COURT: The only person who seemed to have a
`lot of problem with it was Dr. Tadayon, but I'm trying to
`figure out why.
`MR. ZOPPO: You and me both, Your Honor. I think
`that's a valid question. It does not add up, someone who
`spent five years as a patent examiner, and with
`Dr. Tadayon's credentials, to have such a disconnected
`understanding of such basic patent practice is very curious.
`I agree with that, Your Honor.
`THE COURT: Showing that Tadayon had any interest
`personally, interest in this patent.
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`MR. ZOPPO: Your Honor, I'm not aware of evidence
`that Dr. Tadayon has a financial interest in the outcome
`here. I can't represent that I do.
`THE COURT: Okay. Go ahead, Mr. Zoppo.
`MR. ZOPPO: Okay. Getting back to this idea of the
`plaintiffs' attempt to change the priority claims, it's
`important to note that, number one, the plaintiffs Nader
`Asghari-Kamrani did not contact the former lawyers before
`changing the continuation claims to a continuation-in-part,
`and that's important to note because the former lawyers were
`certainly capable of having had an intent to make the claims
`the way they were or to keep them the way they were, yet no
`investigation was made.
`Similarly, given Nader Asghari-Kamrani's testimony
`that the '432 patent, it discloses no additional subject
`matter than the '676 or the '432 -- I'm sorry, strike that.
`That the '432 discloses no new subject matter than the '676.
`The designation of continuation-in-part doesn't make sense.
`If the definition of a continuation-in-part is that it add
`subject matter, how can the '432 patent be a
`continuation-in-part of the '676 when the testimony is that
`it doesn't do that? So that just doesn't add up. It does
`not reconcile.
`Now, I want to talk briefly about Mr. Kim. Mr. Kim
`was our first witness to testify in this case, and Mr. Kim
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`filed two petitions in this case. There were two issues to
`amend the priority claims in the '432 patent. He made
`representations in those petitions that the entire delay in
`making those changes to the priority claims, unintentional.
`Okay. That, as we have heard testimony from the PTO
`experts, they couldn't have been the product of an
`intentional course of action, the original priority claims.
`I want to show you some of Steve Kim's testimony
`that call his representations into great question. Could we
`bring up 104, 11 to 14. One of the things Steve Kim
`testified to, is I asked him, "But you don't know the filing
`strategy that was in the heads of the plaintiffs when they
`made these filings, right?"
`"Answer: I don't know."
`The filings we were discussing were the '676, the
`'432 and the '837. Now, I don't know how Steve Kim could
`have truthfully represented unintentional delay or that the
`priority claims are the product of unintentional action if
`he did not understand the intentions that the plaintiffs
`had. And similarly, if we could go to transcript 163, 15 to
`20. Okay. I was asking Mr. Kim about his understanding of
`the priority claims that were made in the '432 patent
`application, and I asked, "So it's your testimony that the
`applicants did provide a relationship between the '837 and
`the '676 and the '432 patent; is that your testimony?
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`He says, "That's my speculation.
`"Question: But you don't know that to be true,
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`correct?
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`"Answer: I don't know."
`So Mr. Kim did not understand the originally filed
`priority claims. I asked how he could have truthfully made
`such representations. And in the same vein, if we could go
`to trial transcript 158, 8 to 22.
`THE COURT: What page is this?
`MR. ZOPPO: This is -- should be 158, 8 to 22.
`This is testimony that we elicited that Mr. Kim did not know
`whether or not the plaintiffs intended not to claim priority
`to the '400 application, and that's notwithstanding that his
`petition certified unintentional delay in doing so.
`One final point I wanted to bring up. That is 117,
`lines 5 to 13.
`THE COURT: The last one you had, that was page
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`158?
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`MR. ZOPPO: Yes.
`THE COURT: Now we are on Page 117?
`MR. ZOPPO: Yes. Now we are going to 117, lines 5
`through 13. This is where I'm asking Mr. Kim why is he
`trying to change the priority claims in the '432 patent to
`include a claim of priority to the '400 application.
`I ask, "Is it because it would make the '432 patent
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`safer against USAA's CBMR petitions?
`And the answer: "Yes, that's part of the reasons."
`He goes on in his testimony to give the other reason, and
`that other reason was the approaching deadline to respond to
`USAA's CBMR petition.
`The reason I raise this is because it's USAA's view
`that the '400 application was added to the priority claim,
`not because everybody missed it and it was an honest
`mistake, but it was part of the litigation strategy to deal
`with USAA's CBMR petitions.
`As for Mr. Kim's second petition, I would repeat
`the prior basis I provided the Court, and I would also note
`that I don't want to get into Mr. Fortkort because Mr. Davis
`is going to address that, but with respect to Ms. Cao, the
`evidence is that Mr. Kim attempted to obtain a signed
`declaration from Ms. Cao that that delay was unintentional
`and said to her in a cover e-mail that if that statement of
`unintentional delay is correct, you can sign the
`declaration. Ms. Cao did not sign that declaration.
`Your Honor, with that I'm going to turn it over to
`Mr. Davis.
`THE COURT: Wait a minute. Let's get the testimony
`in that regard. Where is that, Mr. Zoppo?
`MR. ZOPPO: With respect to Ms. Cao we have --
`THE COURT: What line are we on? Mr. Kim's
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`testimony we are still talking about?
`MR. ZOPPO: Yes. I'm going to try and find that
`page and line for you right now. We are searching for that
`pincite, Your Honor. In the meantime, I will point out that
`the unsigned declaration is Defendant's Exhibit DX-61, is
`the unsigned declaration.
`THE COURT: Is exhibit number what?
`MR. ZOPPO: DX-61. We also found the pincite, Your
`Honor. It's Page 143, lines 15 through 18.
`THE COURT: Wait a minute.
`MR. ZOPPO: I'm sorry, through 20.
`THE COURT: There was nothing on this form, was it,
`
`DX-61?
`
`MR. ZOPPO: DX-61, there is Bates numbers in the
`lower right corner, NOVKIM 13 through 14. That declaration
`is unsigned, and we also have the trial --
`THE COURT: You talking about DX-61. What is the
`Bates stamp?
`MR. ZOPPO: NOVKIM 13 through 14, Your Honor, is
`the unsigned declaration.
`THE COURT: I don't have 13-14 in this exhibit.
`MR. ZOPPO: In DX-61?
`THE COURT: I have 261. I'm sorry. I'm sorry.
`Didn't have it.
`MR. ZOPPO: No problem, Your Honor.
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`THE COURT: 61. All right. DX-61.
`MR. ZOPPO: Yes, Your Honor. And Bates numbers 13
`through 14.
`THE COURT: I'm looking at -- just a minute.
`MR. ZOPPO: Yes, Your Honor.
`THE COURT: Okay.
`MR. ZOPPO: Mr. Kim's trial testimony is also on
`the screen. That's lines 143, 15 through 20 where I ask,
`"And in number 3 of that list, you wrote to Veronica, 'Your
`draft declaration. If it is true, you can sign it.' Is
`that right?
`"Yes.
`"And Ms. Cao did not sign the declaration, correct?
`"Yes."
`That declaration was never signed, Your Honor. And
`Mr. Kim made his petition certifying unintentional delay
`without that certification. The question of -- it's a fair
`question -- to ask us why didn't we ask Ms. Cao about this
`during her deposition, and there is a few reasons for that.
`Number one, prior to Ms. Cao's deposition, none of these
`documents about declarations or investigation were produced
`to us. We did not learn about the existence of any of this
`discussion between Mr. Kim and Ms. Cao until after the
`depositions had occurred. Though we did ask questions
`during the deposition about whether Ms. Cao had been
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`contacted by any lawyers concerning the question of
`unintentional delay in the amendments that were made to the
`priority claims, those questions prompted instructions not
`to answer. So we do not have any testimony from Ms. Cao on
`this question.
`THE COURT: Well, that was part and parcel of this
`wonderful thing that he was representing everybody. I've
`already indicated that I felt that was unethical. However,
`ethics are only important as the unethical is inequitable.
`Evidently ethics in the patent law is confusing since people
`who do patent work are not necessarily lawyers. We'll see,
`Mr. Zoppo. What else have you got to offer? Anything else?
`MR. ZOPPO: On my point, Your Honor, I'm going to
`conclude and pass to Mr. Davis to discuss the other
`witnesses.
`THE COURT: I keep coming back to, I find that a
`lot of untruthful information is being furnished to the
`patent office. The question was done with an intent to
`deceive.
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`MR. ZOPPO: Correct.
`THE COURT: The problem is it's not an objective
`standard. It's a subjective standard. So one has to get to
`the motive of the individual.
`MR. ZOPPO: Yes, sir.
`THE COURT: I'm having some problems getting to the
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`motives, Mr. Zoppo.
`MR. ZOPPO: Understood, Your Honor. I think that
`the motives for the plaintiffs in this case are rather
`clear. As you know, there's a very substantial damages
`award sought in this case since before the patent was
`invalidated. I think that -- I don't want to step into
`Mr. Davis's argument concerning Mr. Nienstadt, but I will
`observe that -- I would say a majority of the most
`questionable conduct in this case was prompted by a notice
`by our firm to the plaintiffs that there's a problem with
`the patent. And that prompted a scramble, and in that
`scramble to try to fix things and to keep that ability, that
`hope of getting that massive damages award,
`misrepresentations were made to the patent office.
`THE COURT: What are you talking about the massive
`damage award? What massive damage award.
`MR. ZOPPO: The plaintiffs seek a massive damages
`award from the plaintiffs.
`MR. PEARSON: Your Honor, I object to any reference
`to demands or damages post -- especially post you finding
`the patent invalid.
`THE COURT: I'm confused. Is there some damages
`award involved?
`MR. PEARSON: There is no evidence of such in this
`case. It is simply not an issue. I believe it was Judge
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