Legal Case Summary

The case this morning is number 2012, 1269, biotic instruments against notice on remand from the Supreme Court, Mr. Hume. I'm sorry, Mr. Harris. Mr. Harris has begun one of the issues that we had suggested discussing with us related to whether the final decisions we made here or remanded to the trial court, would you as you proceed if there are disputed facts or issues that require evidence if it's convenient mentioned to us so that we will appreciate where the decision should lie? Thank you, Your Honor. Okay, proceed Mr. Harris. May I please the court? My name is Mark Harris and I represent biotic instruments. When this case was last before this panel, the court looked at the intrinsic and extrinsic evidence of the patent and came to the conclusion that a skilled artisan would understand the meets and bounds of the invention. Since that time, the Supreme Court has issued its decision, but there's nothing in that decision that calls into question either part of this court's analysis the last time. First, the Supreme Court did not materially change the test for deafness from what this court actually applied the last time. And second, the record, of course, has not changed at all. For that we... The Supreme Court said we hold the patent as a valid for indefinance if it claims red and light of the specification, specifications of leaning the patent and the prosecution history failed to inform with reasonable certainty, etc. Now, they're focusing there on intrinsic evidence, the specification, the prosecution history. Do you read that as a direction that extrinsic evidence cannot be considered? No, I don't, Your Honor. It is true that at footnote four, the court references the Leckland Declaration and the experiment by Dr. Galliata, I guess. But I'm just wondering if one should take this as a direction that we can only consider intrinsic evidence. No, I don't think so at all, Your Honor. First, for the reason that Your Honor mentioned, the court went out of its way actually to describe some of the most-helling facts that were in the record, including the experiences of Dr

. Galliata's research assistant who was able to build the entire device and test it within two hours. But more than that, the Supreme Court also referred back to its decision in Markman, which mentioned that expert testimony would often be extremely important. Inclined construction, but I think the purpose of mentioning it here was that the same would be true in a definite as analysis. What the essence of the court's Supreme Court's test was that there are basically two main points. One is that the question is what the skilled artisan at the time of filing would understand and secondly was the reasonable certainty standard. Both of those things are exactly what this court did the last time. I'll just read a quote from the panel's decision last time. The court said that the 753 patents claim language specification and the figures illustrating the space relationship between the live and common electrodes are kelling and provides sufficient clarity to skilled artisans adds to the bounds of this disputed term. In fact, this court gave, the majority, gave two different reasons for coming to the conclusion last time that the patent was definite. First, it simply looked at the claims, the diagrams, the specifications and found that there were intrinsic parameters concerning what the spacing had to be. Had to be greater than zeroes. That the electrodes didn't collapse and had to be less than the width of a hand in order that the user could use it. It didn't even turn to extra-indicabinance or the declaration of Dr. Leckman until it got to the second step, which was to say that the functional limitation also shed additional light, those are the courts words, shed additional light on the meaning of space. If you position it, this case can be decided, focusing solely on the intrinsic evidence, mainly the claims and the specification, without looking at whether or not it's extrinsic evidence, the material from the re-examination proceeding, and I guess it was the uonus declaration. Are you saying, leaving aside what those items are, one can just decide it based on the specification of the claims? Yes, we do think so. In fact, that's what the majority held last time. There were clearly two separate steps to the analysis. The first one was that the inherent parameters provided by those intrinsic materials were sufficient. In any event, I do want to mention that the extrinsic materials, the expert reports that were submitted, the purpose of those being submitted and the purpose of the court looking at them was not to provide additional facts for the court. I want to say extrinsic materials, you're viewing all of that, including the material from the re-examination proceeding is extrinsic. Well, it's a little bit unclear how the panel treated it last time. The panel, I think, said that treated the lexman declaration, which was submitted as part of the re-examination proceedings

. I think it's called the intrinsic evidence, or it's cited a case from the Federal Circuit where it was treated is intrinsic. And then later on, it referred to you newless as extrinsic. But again, I'm not sure from our standpoint, it matters very much. Either way, the evidence was all one-sided. It all pointed to the fact that a skilled artist and could understand, did understand, in 1992, the meaning of space relationship. There was nothing from the other side, from not list at all, to contradict or rebut that evidence. Let's talk about reasonable certainty. What do you think that means? Well, the Supreme Court made clear reasonable certainty does not mean perfect certainty, or no possibility of doubt, which was positioned a novelist that takes the Supreme Court. That's a start. Reasonable certainty, I think, means that there's room for some gray areas around the edges. But if a skilled artist in reading the patent has a well-founded basis for concluding that he or she understands what's included or excluded, that's sufficient. What well-founded, is that reasonable certainty? I don't want to say that that's the legal definition of it. I'm just offering that as I think reasonable as one of those words that lawyers use and courts use. I think it takes into account all of this ill and the background of the person who is making the determination. That is a very precise. Is it, are you saying, more likely than not, has been cited to us in some past decisions that is 51%. Or that the conclusion that the court wishes to draw can be substantiated by a logical argument? I think I would say that it does mean it has to be at least a preponderance. I just want to make clear though that our opinion is that there's really no doubt here at all, because nothing was submitted on the other side to suggest that this was not clear. In fact, the court came to the conclusion last time, the panel looked at all the materials last time, and said that a skilled person would understand what the meets and bounds were. So what? Well, just to round this out, you're saying that however we define or fail to define reasonable certainty, you should prevail. Yes. That's correct. So I think what you want to say is reasonable certainty is anything that's not unreasonable

. That's what you want to say. That sounds fair. So that sounds fair. That sounds fair. So let me ask you about Exxon from 2001, where the court said, if the meaning, I'm going to ask your opposing counsel, this Tuesday, if the meaning of the claim is discernible, even though the task may be formidable, and the conclusion may be one over which reasonable persons will disagree, we have held claims sufficiently clear to avoid and validity on indefinite grounds. Under the reasonable certainty standard, can reasonable persons disagree and a claim be found not indefinite? I think it's telling the Supreme Court, although these issues were discussed that our argument came out with a standard that was somewhat vague and didn't nail down exactly. Can you not with no standard? And they weren't particularly taken with the Exxon series of this course. No, that's correct. Or the other prior attempts to resolve particular cases with particular descriptions. There has been a sense that the obligation on remand is to somehow add as much precision as language can add to this relatively vague standard with looking for your help. I would disagree with that slightly later on, or I don't think the Supreme Court expected, or thought it was necessary for this court to define with more precision what reasonable certain demands. What the Supreme Court left for this court to do, and in fact constructed this court to do, was to apply that standard to this case, not standard, the standard of reasonable certainty. I also want to point out the main critique that the Supreme Court had for the insularly ambiguous standard was not that it was too far over to one side of the range. Maybe that was true. But the main critique they had was that they thought the focus was wrong. The focus was on using the term insularly ambiguous, a court, a lower court, may misconstrue that to mean that what matters is what a court after the fact thinks the words mean. Whereas the focus should be on the skilled artisan. Stair, it's interesting that picking up on what George Newman and George Wallach were saying about reasonable certainty, during the time that this case was under decision, if you will, before the Supreme Court, we decided a case and court of technologies, 744, fed 3rd, 732, and at 737, we noted that the Supreme Court had this case before it, and in that case, Judge Toronto addressed the indefinite issue. He said, we don't need to weigh in on what the Supreme Court will or will not say, but he said the test he applied in that case was the claim language and the prosecution history lead no reasonable uncertainty about the boundaries of the terms that issue, even considering certain aspects of the sophistication that could consider confusion when read in isolation. So this was a decision in March of this year, while the Supreme Court was working on its decision in our case. But obviously before our revisiting here today, and I'm wondering if what you think about that standard. What Judge Toronto said in Anne Chorrel? Yes. I don't have the language in front of me, but I heard how you're on it just right now

. I think it's difficult to put greater parameters on the word reasonable. Reasonable is a word that we see in many areas of law, and it's, I think, by design. It's a little bit vague as to what's included and what's not. I think the key thing is that there has to be a reason the basis as to why the skilled artist and what comes to that conclusion. The skilled artist can't, based on a whim or something else, come to conclusion as how he'd read the patent. That's, I think, from our standpoint, that's the key idea here. Again, I don't want to repeat myself, but we think that the court does not need to get into deciding what the precise standard is beyond reasonable, because here all the evidence goes one way. In fact, all that Nogglis has submitted are attorney arguments in 2014 as to what it thinks was unclear about space relationship. Nothing about what a skilled artist in effect. In fact, Nogglis really falls into exactly the crap of what the Supreme Court said shouldn't be done, which is to offer only arguments that are not tethered to what an actual skilled artist would think. I guess I see my time is running down. I just want to quickly, before I serve some rebuttal time, just want to answer Judge Newman's questions from the beginning, which was who should decide this case. This court, I believe, should decide it for three reasons. I'll just run through them very quickly. First of all, the Supreme Court's instruction to this court was for the Federal Circuit to decide the question of whether this patent meets the standard that they articulated. That's explicit in the end of the first paragraph of the Supreme Court decision. Second, under the current understanding, which is that, definitely, it's a matter of law, and is reviewed without deference, which is what the court said the last time, there's really not much gain in sending it back to the district court, because it's going to be reviewed denobo without deference by this court. All it's going to do is just have it come right back here. Third of all, I don't think there are any new facts or new decisions, new factual questions that need to be answered. All of that was briefed and was presented the last time. Nogglis said every incentive last time to present whatever evidence they had, and they didn't have any other than attorney arguments as to what space relationship means. In fact, the district court would be in a worse position than this court to say whether or not this patent is valid, because the district court is going to be found by the previous decision by this court to the extent that aspects of it weren't overturned by the Supreme Court. It's going to have to figure out what to make conclusions by this court, such as that the functional limitation that sheds additional light on or is highly relevant to the meaning of space relationship

. But the court's going to have to wade through all that and figure out what's open and what's not open. It's much more sense for this court to decide it in the first instance. I'd like to reserve a reason. I'm going to say you're a better person. Yes, I have a question. Would you like to answer this? Okay. This is just one, this is sort of a housekeeping type of question. Obviously, if we decide the case and affirm the decision of the district court, the case is over. So if, however, we would be your position and we reverse on the indefinite issue, it goes back. Is there anything pending there other than infringement? Are there any other validity issues that were put on hold pending the indefinite question? I believe that nobulous and also made arguments, other threshold arguments concerning anticipation and obviously isn't the like. So I believe there are still other issues that are there. I'd like to reserve the remainder of my time for the rebuttal. That's my question, too. Thank you for asking. Okay. We'll save you a little time. Mr. Harris, Mr. Benjuburg. May I please the court? Before turning to the various questions about the standard, I'd like to have at least 60 seconds to sort of frame what we see as the ambiguity in this claim to create a framework for that. This claim recites a prior art circuit combined with a desired result, the desired result being that the muscle signals detected on both hands will be equal. What is unclear is what ways of achieving that result with this circuit are covered. It's possible that this claim, viewed from in 1992 by skilled artisan, covered all possible known and future ways of achieving that result of equalizing EMG signals with this prior art circuit

. That would be true if the term space relationship was a broad term that simply meant any spacing because if it meant any spacing with no functional requirement built into the term, then all we have is a claim that recites a prior art circuit coupled with the desired result. On the other hand, it's possible that this claim covered only one narrow way of achieving this result with this circuit, namely what Mr. Lexman described 15 years later. You adjust the spacing of the electrodes while looking at an oscilloscope until you have the results you want. That's a possibility. A third possibility is the claim covers four ways of achieving the desired result with this circuit, namely you adjust four variables, any of four variables, only one of which spacing is mentioned in the claim. That is the ambiguity that we have asserted. The scope of the claim is ambiguous because it is unclear if the term space relationship includes inside the term a functional requirement that the spacing caused the equalized EMG. In fact, the concurring opinion in the prior vacated decision pointed this out and pointed out that the majority presumed that not only did the claim have this functional limitation, but that the term space relationship has the functional limitation built in and the concurring opinion found no support for that in the claim. With that framework, to turn to your honours questions about what the Supreme Court did. Well, I have a question about that framework because we're talking about claim constructions and infringement as well as whether this claim is particularly indefinite and from what I heard you say, even if the accused structure, none of which is before us, but even if it were identical with the drawing in the patent, that the claim would nonetheless necessarily be deemed indefinite because it could cover structures other than that, which is specifically an exactly picture. The claim's indefiniteness is not dependent on which alleged infringer may be before the court. So I would submit that even if, which is not this case, a party had copies of the picture in the patent and it could concede it infringement, which is not this case. Even if that were true, the claim would be indefinite or indefinite under the statutory mandate equally, would not be relevant to that. That's part of the problem because it does look as if what led this court to some of the broad language which has been criticized by the Supreme Court was in order to cross that hurdle and to get to the real stage of what's an issue. And that is, in fact, what is the relationship between this patent and what was invented and what is accused of infringement. But I hear you saying that if there is a reasonable way, let's not say any way because that's behind us, but a reasonable way of construing a claim so that you don't know what a slimmit saw, it's indefinite always. We would not say that. We would say that when the court said reasonable serve what it meant and some of these terms themselves could be subject to further scrutiny, but looking at the opinion, the claim needed to be clear, it needed to be unambiguous and it needed to be precise, but not more precise than the subject matter permits. The Supreme Court did not use that exact phraseology. The Supreme Court said there's allowed to be a modicum of uncertainty. There's limits in the English language and it says absolute precision is not required. We would submit that this court's precedence back from the 1980s and 1990s during that period, one of the requirements that this court imposed on claims under 112, was that the claim be as precise as the subject matter permits

. That worked both ways, sometimes that helped the patent owner survive a claim because the claim in fact was as precise as the subject matter permitted, but sometimes it led to invulidity because it was possible to make the claim more clear. Here, if that were applied, it is clear that it would have been easy for this patent to have clarified the ambiguity we're speaking of. It could have, in the claim, had a clear expressed length between the claims result and some structure in the claim. The claim does not have an expressed length, it says whereby after a lot has been recited, it doesn't hide expressly to space relationship. They could have defined the term space relationship. There's a hand that has to cover both electrodes. That is true, but that does not answer the question, the ambiguity of whether or not the term space relationship itself has a functional limitation or a functional requirement built in. They could have defined the term space relationship in the specification. They could have given examples of configurations that fit within the claim and examples that fit outside the claim. There is a picture, yes, but there are no dimensions or relative dimensions in the patent to specify what range if any is allowed on the spacing. You can't take traditional notice of the size of a human hand. The problem here is that one interpretation, before the reexam, the best interpretation, but it was unclear, was it space relationship meant any spacing. If one looks at the specification, they refer to things like space or space the part. They never suggest that the amount of spacing affects the result. The original examiner, as we've noted in our Reman brief, the original examiner said the spacing doesn't appear to be critical. It seems to be a designed choice. Before the reexamination, if one had the guess of the best claim construction, the best guess would have been that space relationship means any spacing. This claim covers any possible way of a scheme. Are you telling us the spacing is critical? I don't recall any evidence provided to that effect. Well, post reexamination, the best construction perhaps shifted to the functional limitation, which the majority of the court in the VKA opinion found that space relationship itself had a functional requirement built in. The reexamination statements of Mr. Lexman certainly would support that. The person of skilly aren't knows that this circuit is prior art

. They know that Fujisaki had the identical circuit. Their Lexman said that Fujisaki didn't achieve the desired result. The artist in knowing all that looks at this claim. Prior art circuit that supposedly doesn't achieve the result. The claim says it reaches the result. What is there in the claim that might suggest how that is achieved? What way is that achieved? The only possible term there that might have caused that is space relationship. Because that's not a term of art. It's not defined in the specification. And therefore there are clues that would support the view that the majority ultimately reached in its opinion. And there certainly are clues supporting the occurring opinion view of it. But what matters here is not the, half the battle here is defining the correct issue. The issue before the court is not what is the best claim construction. Viewing matter opposed to taking into consideration the reexamination. The Supreme Court rejected that approach. That is one of the aspects of Exxon and both star scientific cases. And did the question? The question is we have a claim construction here. That the district court came up with and that we looked at in our original opinion and that's noted in the Supreme Court opinion. Is the question whether accepting this claim construction one is left with indebtedness because one of skilled in the art cannot tell based on that construction with reasonable certainty the bounds of the invention? Absolutely not, Your Honor. That is the approach that was taken in Exxon and in star scientific both decisions there and by this panel to construe the claim first and then ask if the claim as so construe gave enough notice to the skilled artisan. And the Supreme Court rejected that claim construction first approach. You have to claim there is a claim there and the question is where do you start? You have to look at the claim. But you don't first go and proceed and get the right answer and then step back with that hindsight and ask was the right answer clear? That is the post hoc approach that the Supreme Court. What in your view? I am sorry to interrupt you but it is time to speak

. We have a claim construction that neither party disputes. What do you say is the analytical framework that we should pursue? I know you want us to conclude that the claim is indefinite but how would you consistent with what the Supreme Court said and maybe consistent with what our anchor of decision say? How would you approach this case in terms of your decision process if you were on the bench? First we didn't mind there is a claim construction out there that no one disputes. Well first we did dispute the claim construction in our opening of Pelletbury but let's assume hypothetically that it was undisputed. We would say that is not relevant. We would have taken approach the interval licensing took. You take the perspective of the person of skill in the art, you look at the original intrinsic evidence as the primary evidence. You look at the original specification, the claims is issued and the original prosecution history. You do not look at post issuance events such as judicial claim constructions, re-examination or reissue prosecution history because that skilled art is in a 1992. That is the person who matters here. That is the person who is either going to go out and invent a better solution or is going to look at the claim, see a zone of uncertainty and go home and watch television. That is the person we care about. That person does not have a crystal ball. That person does not know how the trial court will construe the claim 15 years later or how this panel will construe the claim later. If there is a claim construction for other reasons that is fine but that should not bias the analysis. You did? I am so good. In your opening brief at P.J. you say the Supreme Court's decision requires a more demanding analysis and then underneath that you say the Supreme Court held Section 112 mandates clarity and precision. I wrote a vulgar note next to it and went back to the Supreme Court decision where they say the definite and its requirements so understood mandates clarity while recognizing that absolute precision is unattainable. Now I think that walks a different route than your heading does. You are not taking the position that 112 mandates clarity and precision. You are taking the position that the person who is skill in the art has to be able to deal with it in a reasonable fashion. No, you are on a weird stand by the heading

. The mandate is clarity and precision. Given those they say absolute precision is unattainable. Well, the very beginning of the opinion refers to the statute's clarity and precision demand. This is at page 2124 of the opinion. The Supreme Court opinion clearly distinguishes the Supreme Court's point in distinctly claiming. It is not only clear it has to be precise. However, you are on a good list. Within the ambits of the English language. Yes, and within the ambits of the subject matter. If it was undisputed that space relationship was a functional limitation, it had functional requirements built in, then it is certainly possible in some other case that one could turn to the oscilloscope as the enablement analysis and determine that people of skill in the art here could use that oscilloscope to figure out what space relationship would be in a particular set. Such as the controlled environment case and other cases here. That is not this case. It is not undisputed. It was not known from the get go that space relationship was a functional limitation in of itself had a functional requirement. As the concurring opinion indicated, the majority presumed that there was a functional limitation built in to the term space relationship. Our position is the person of skill in the art would not know. It was like 52, 48 if space relationship had a functional requirement built in. If space relationship did not have a functional requirement built in, then the skilled artist who comes up say he has this new material that he thinks will create equal EMG singles on both sides no matter what the space is at the Fuji Saki space. That would in frame. Are you saying that a person reading the specification, looking at the drawing, seeing where the electrodes are placed, and reading all of the description of the neutralization and the grounding and so on would not reasonably with ordinary skill of someone in this field be able to design. We have the evidence that a apparently young person of modern skill was given the specification routine equipment and within a couple of hours balance the electrodes and whatever it is that would normally follow from knowing that you need to have the neutralize each other. We would have done this record. There is evidence to support that. That is the enablement. That says that the skilled artist and if they wanted to take a license and practice under this claim, they could figure out one way of doing so. That is completely the different issues in what we have here. Our skilled artist doesn't want to practice within the claim. Does it want to? What did you just not reach it in the course of a summary judgment procedures? There was no ruling by the trial court on that issue of a trial. On that issue of the nailment there were certainly arguments there and biocig is still making that argument which we submit is a legally not relevant because again the skilled artist and doesn't want to practice within the claim. They want to practice just outside the boundary of the claim and they need to know where that boundary is with reasonable certainty or else there is going to be the zone of uncertainty. Will you help us to define reasonable certainty? Yes. One aspect of it would be what interval licensing quoted from every penny counts trial court decision. What was decided interval licensing? The interval licensing was that said in our brief? No, if it is not. It may not but it was interval licensing versus AOL decided September 10th, 2014 by I believe judges Toronto and Chen. And I have a paper copy. Can we have a copy? So they quoted every penny counts which was quoted by the Supreme Court and they said if there is no informed and consonant choice between two possible constructions. So that panel adopted that language, the Supreme Court adopted that language. So you would accept more likely than not as adequate? No, not at all your honor. The point is not whether or not one construction is clearly better than the other. That is not the issue. The issue is avoiding post-trial analysis, avoiding hindsight of coming up at the right construction, looking at it from this point of the artist and without a crystal ball. Are they faced with a genuine ambiguity? The Supreme Court was clear that claims cannot be ambiguous. The Supreme Court said that one of the problems with this court's exon decision was that it tolerated some ambiguous claims. There is no way reading the Supreme Court decision we submit that would allow any ambiguity, genuine ambiguity. So if there is any ambiguity about that answer, even if there is a reasonable world I believe is not meaning? Yes, Your Honor. That is the position of the Supreme Court

. That is the enablement. That says that the skilled artist and if they wanted to take a license and practice under this claim, they could figure out one way of doing so. That is completely the different issues in what we have here. Our skilled artist doesn't want to practice within the claim. Does it want to? What did you just not reach it in the course of a summary judgment procedures? There was no ruling by the trial court on that issue of a trial. On that issue of the nailment there were certainly arguments there and biocig is still making that argument which we submit is a legally not relevant because again the skilled artist and doesn't want to practice within the claim. They want to practice just outside the boundary of the claim and they need to know where that boundary is with reasonable certainty or else there is going to be the zone of uncertainty. Will you help us to define reasonable certainty? Yes. One aspect of it would be what interval licensing quoted from every penny counts trial court decision. What was decided interval licensing? The interval licensing was that said in our brief? No, if it is not. It may not but it was interval licensing versus AOL decided September 10th, 2014 by I believe judges Toronto and Chen. And I have a paper copy. Can we have a copy? So they quoted every penny counts which was quoted by the Supreme Court and they said if there is no informed and consonant choice between two possible constructions. So that panel adopted that language, the Supreme Court adopted that language. So you would accept more likely than not as adequate? No, not at all your honor. The point is not whether or not one construction is clearly better than the other. That is not the issue. The issue is avoiding post-trial analysis, avoiding hindsight of coming up at the right construction, looking at it from this point of the artist and without a crystal ball. Are they faced with a genuine ambiguity? The Supreme Court was clear that claims cannot be ambiguous. The Supreme Court said that one of the problems with this court's exon decision was that it tolerated some ambiguous claims. There is no way reading the Supreme Court decision we submit that would allow any ambiguity, genuine ambiguity. So if there is any ambiguity about that answer, even if there is a reasonable world I believe is not meaning? Yes, Your Honor. That is the position of the Supreme Court. They said two things on that. No, they didn't say that. They asked us to figure it out. Well, they made two references to ambiguity. One, they said that there was evidence that there was an economic consensus to inject ambiguity in the claim and they said it is right or suited on the right language but it is right to end that temptation. That certainly suggests that they are not allowing ambiguous claims because they want to stop the temptation to add ambiguity. And secondly, they said one of the problems with the insolubly ambiguous standard was that it allowed some ambiguous claims but not others that did not comply with the statute. If I may speak to the remand issue briefly. Did you have a question for them? Yeah, but I'm not all right. So what you're telling us, I think I want to make sure I understand it is that the question is, is it insolubly, I'm not going to say that. But is it ambiguous? So the one looking at the patent would not know the bounds of the invention. Is that it? That's half of it. The other has to be unambiguous but it also has to be as precise as the subject matter permits. We submit those are two different criteria. And to do that, you look at the intrinsic evidence, the language of the patent and the prosecution is correct. Primarily, but in answer to the question, you can look at extrinsic evidence. So long as the extrinsic evidence is not injecting some hindsight, it's not giving adding a crystal wall to the analysis. If it is saying, if the extrinsic evidence says, oh, this term of art space relationship, that had a clear meaning in the art. Anyone in this art reading this would know that it was not a functional requirement, et cetera. That type of extrinsic evidence is perfectly fine. The original prosecution history here, does that in your view shed light on this question or not? Yes. The original prosecution history supports the broad view of space relationship, the non-functional view, and if all the artists and looked at that, was that prosecution history where the examiner said the spacing is not critical, appears not to be critical, the placement appears not to be critical. That's all they looked at

. They said two things on that. No, they didn't say that. They asked us to figure it out. Well, they made two references to ambiguity. One, they said that there was evidence that there was an economic consensus to inject ambiguity in the claim and they said it is right or suited on the right language but it is right to end that temptation. That certainly suggests that they are not allowing ambiguous claims because they want to stop the temptation to add ambiguity. And secondly, they said one of the problems with the insolubly ambiguous standard was that it allowed some ambiguous claims but not others that did not comply with the statute. If I may speak to the remand issue briefly. Did you have a question for them? Yeah, but I'm not all right. So what you're telling us, I think I want to make sure I understand it is that the question is, is it insolubly, I'm not going to say that. But is it ambiguous? So the one looking at the patent would not know the bounds of the invention. Is that it? That's half of it. The other has to be unambiguous but it also has to be as precise as the subject matter permits. We submit those are two different criteria. And to do that, you look at the intrinsic evidence, the language of the patent and the prosecution is correct. Primarily, but in answer to the question, you can look at extrinsic evidence. So long as the extrinsic evidence is not injecting some hindsight, it's not giving adding a crystal wall to the analysis. If it is saying, if the extrinsic evidence says, oh, this term of art space relationship, that had a clear meaning in the art. Anyone in this art reading this would know that it was not a functional requirement, et cetera. That type of extrinsic evidence is perfectly fine. The original prosecution history here, does that in your view shed light on this question or not? Yes. The original prosecution history supports the broad view of space relationship, the non-functional view, and if all the artists and looked at that, was that prosecution history where the examiner said the spacing is not critical, appears not to be critical, the placement appears not to be critical. That's all they looked at. They would come away and think, oh, this claim covers all possible ways of achieving this equalization result with this circuit. Now, you just said earlier, when I mentioned that we had a claim construction here, you said your view that was the wrong way to look at it. What is the right way to look at the language of the claims in the patent in your view? What did the society case? Well, one does apply the appropriate interpretive tools. This is very much like a Chevron analysis. So we have to consider the language of the claim. Absolutely. The starting point is the language of the claim and the specification and the original prosecution history, and one applies the appropriate interpretive tools. What one shouldn't do according to the Supreme Court, when they said they rejected a post-pock analysis, one shouldn't add in the Exxon, struggle, struggle, come up with the right result, the best claim construction, and then ask, is that claim construction clear? That is what the Supreme Court rejected. And on the remand? Well, I think I've got an answer from, like Judge Shalves asked you, but for a while there, I thought you were saying that we could release the District Courts of the burden of Markmans, since they wouldn't have to worry about claim construction. They would just be with the Pazitas, and we could take evidence. They could take evidence. I think you were going down that road. No, you're on the road. Sorry if it was, I'm not clear on the road. I thought you got your answer from what you said, Judge Shalves. So I think the distinction is to not inject Heinz. I mean, the Court rightly is concerned about Heinz site in the obviousness analysis, but here if one followed the old approach of construing the claim and then asking, was that sufficiently clear? That is injecting Heinz site into indefiniteness, and we submit the Supreme Court reject that. On the remand, we essentially agreed that the Supreme Court asked this Court to reconsider. It is a question of law. It noted, the Supreme Court noted that biosec could raise no fact dispute. There is no issue here that the trial judge got it wrong because there was a genuine issue of material fact, and we submit that the trial judge opinion was correct because of this core ambiguity as to whether space relationship itself is a functional limitation as the majority found earlier or does not have a functional requirement built in as the concurring opinion found earlier. Thank you. You say, Mr

. They would come away and think, oh, this claim covers all possible ways of achieving this equalization result with this circuit. Now, you just said earlier, when I mentioned that we had a claim construction here, you said your view that was the wrong way to look at it. What is the right way to look at the language of the claims in the patent in your view? What did the society case? Well, one does apply the appropriate interpretive tools. This is very much like a Chevron analysis. So we have to consider the language of the claim. Absolutely. The starting point is the language of the claim and the specification and the original prosecution history, and one applies the appropriate interpretive tools. What one shouldn't do according to the Supreme Court, when they said they rejected a post-pock analysis, one shouldn't add in the Exxon, struggle, struggle, come up with the right result, the best claim construction, and then ask, is that claim construction clear? That is what the Supreme Court rejected. And on the remand? Well, I think I've got an answer from, like Judge Shalves asked you, but for a while there, I thought you were saying that we could release the District Courts of the burden of Markmans, since they wouldn't have to worry about claim construction. They would just be with the Pazitas, and we could take evidence. They could take evidence. I think you were going down that road. No, you're on the road. Sorry if it was, I'm not clear on the road. I thought you got your answer from what you said, Judge Shalves. So I think the distinction is to not inject Heinz. I mean, the Court rightly is concerned about Heinz site in the obviousness analysis, but here if one followed the old approach of construing the claim and then asking, was that sufficiently clear? That is injecting Heinz site into indefiniteness, and we submit the Supreme Court reject that. On the remand, we essentially agreed that the Supreme Court asked this Court to reconsider. It is a question of law. It noted, the Supreme Court noted that biosec could raise no fact dispute. There is no issue here that the trial judge got it wrong because there was a genuine issue of material fact, and we submit that the trial judge opinion was correct because of this core ambiguity as to whether space relationship itself is a functional limitation as the majority found earlier or does not have a functional requirement built in as the concurring opinion found earlier. Thank you. You say, Mr. Member, that extrinsic evidence can be considered in this case if, and you would underline if, it's used in the right way. That's what I took from your statement a bit earlier. Yes, Your Honor, and not the only reason we say that, but one reason we say that is as we brief, we submit that the extrinsic evidence in this case supports us because their own experts once that space relationship was broad, one took the narrow view, and the third took both views. So we submit their expert testimony extrinsic evidence supports our view that the intrinsic evidence showed it was ambiguous. So you think the extrinsic evidence is in solving a plea ambiguous? No, I wouldn't say that, Your Honor. All right, thank you, Mr. Van D'Amour. Thank you. Would you enlarge the errors of time by the amount we've run over? Thank you, Your Honor. A few points. What Mr. Van D'Amour just spoke out, I think, is exactly what the Supreme Court said the test wasn't. The test is not perfect notice. The test is not whether or not the inventor could have in retrospect now with 20 years hindsight, could have written something else that would have been clearer. The test is not whether there is any possible ambiguity. None of those things have a test. The Supreme Court rejected all of those decisions. The Supreme Court held the test was reasonable clarity. And the test for that is based on the materials that were available at the time, as well as additional extrinsic materials that may shed light on what a skilled artist would have thought back then. If anybody is using 2020 hindsight, I would argue that this novel is here, because what novelist is doing is arguing based purely on lawyers' readings of what they think the claim means, many, many years after the fact. And trying to say that as a result of that, without tethering it to any skilled artist's thinking process, that the claim must be ambiguous. Let me make this very specific. In their reply brief, before this court, I believe it was the first time the Nautilus raised this idea, which was just mentioned, which was ambiguous about this claim, was that, and a skilled artist wouldn't know whether or not he could try to develop a new material, which would somehow intrinsically detect equal EMG signals

. Member, that extrinsic evidence can be considered in this case if, and you would underline if, it's used in the right way. That's what I took from your statement a bit earlier. Yes, Your Honor, and not the only reason we say that, but one reason we say that is as we brief, we submit that the extrinsic evidence in this case supports us because their own experts once that space relationship was broad, one took the narrow view, and the third took both views. So we submit their expert testimony extrinsic evidence supports our view that the intrinsic evidence showed it was ambiguous. So you think the extrinsic evidence is in solving a plea ambiguous? No, I wouldn't say that, Your Honor. All right, thank you, Mr. Van D'Amour. Thank you. Would you enlarge the errors of time by the amount we've run over? Thank you, Your Honor. A few points. What Mr. Van D'Amour just spoke out, I think, is exactly what the Supreme Court said the test wasn't. The test is not perfect notice. The test is not whether or not the inventor could have in retrospect now with 20 years hindsight, could have written something else that would have been clearer. The test is not whether there is any possible ambiguity. None of those things have a test. The Supreme Court rejected all of those decisions. The Supreme Court held the test was reasonable clarity. And the test for that is based on the materials that were available at the time, as well as additional extrinsic materials that may shed light on what a skilled artist would have thought back then. If anybody is using 2020 hindsight, I would argue that this novel is here, because what novelist is doing is arguing based purely on lawyers' readings of what they think the claim means, many, many years after the fact. And trying to say that as a result of that, without tethering it to any skilled artist's thinking process, that the claim must be ambiguous. Let me make this very specific. In their reply brief, before this court, I believe it was the first time the Nautilus raised this idea, which was just mentioned, which was ambiguous about this claim, was that, and a skilled artist wouldn't know whether or not he could try to develop a new material, which would somehow intrinsically detect equal EMG signals. That substance, as far as we know, defies the laws of physics. Dr. Leckman explained in his declaration that the EMG signals their amplitude and phase depends on the size of the electrode and also the spacing, how much of the hand touches it and also how far apart the measurement is. So we're now supposed to take the view that because 20 years ago, it should have been foretold that somebody might down the road, invent some substance, which still doesn't exist as far as we know, goes against what we know works about physics. Because that wasn't specified that that wasn't included, now the patents invalid. That seems to me to be exactly what this report doesn't want to happen, which is lawyers now having every incentive in the world to come up at every phase of litigation with a new possible ambiguity or unclarity that the lawyers come up with as being the reason to invalid the patent. That's not the way the process is supposed to work. This court did examine the claim last last time, the majority did. The majority did not focus on the construction. The majority, I read the language before and there were other passages where it's quite clear that the majority looked at the claim language itself and found that the claim language was clear enough to the skilled artisan would know the relationship between space relationship and the end. As Judge Newman, as you mentioned, there was evidence undisputed not only that the Dr. Gallagher and the system was able to build this into hours, but also that the assistant was able understood how to read the claim in order to achieve that result. How did that work? I don't want to go outside the record with the assistant's supposed after that information was filed. I'm sorry, what the... Was it that two hour experiment or whatever you wanted to call it? Was that pursued or was that just put into the record? I don't believe that it was. I'm not positive about that. My understanding is that it only came up in the course of Dr. Gallagher and his description of her conclusions that the language was clear and was certain enough for a skilled artisan to understand. She gave the example of what her research assistant had been able to do. I don't believe he was.

. That substance, as far as we know, defies the laws of physics. Dr. Leckman explained in his declaration that the EMG signals their amplitude and phase depends on the size of the electrode and also the spacing, how much of the hand touches it and also how far apart the measurement is. So we're now supposed to take the view that because 20 years ago, it should have been foretold that somebody might down the road, invent some substance, which still doesn't exist as far as we know, goes against what we know works about physics. Because that wasn't specified that that wasn't included, now the patents invalid. That seems to me to be exactly what this report doesn't want to happen, which is lawyers now having every incentive in the world to come up at every phase of litigation with a new possible ambiguity or unclarity that the lawyers come up with as being the reason to invalid the patent. That's not the way the process is supposed to work. This court did examine the claim last last time, the majority did. The majority did not focus on the construction. The majority, I read the language before and there were other passages where it's quite clear that the majority looked at the claim language itself and found that the claim language was clear enough to the skilled artisan would know the relationship between space relationship and the end. As Judge Newman, as you mentioned, there was evidence undisputed not only that the Dr. Gallagher and the system was able to build this into hours, but also that the assistant was able understood how to read the claim in order to achieve that result. How did that work? I don't want to go outside the record with the assistant's supposed after that information was filed. I'm sorry, what the... Was it that two hour experiment or whatever you wanted to call it? Was that pursued or was that just put into the record? I don't believe that it was. I'm not positive about that. My understanding is that it only came up in the course of Dr. Gallagher and his description of her conclusions that the language was clear and was certain enough for a skilled artisan to understand. She gave the example of what her research assistant had been able to do. I don't believe he was... Okay, was she supposed? No, I don't believe she was supposed either. I believe, again, nozzles brought in, nozzles made this number's judge of motion. This was all done in the basis of declarations that were submitted. Which this court isn't as good a physician to read as the district court was. Hi, sirs. What's your comment? Mr. Van Enberg's... He says the ambiguity here and hopefully I'm not mistaken. But he says that the ambiguity here lies in the fact that one would not know whether it's be guided by functional consideration or just the structure. I hope I'm not doing a disservice to his position, but you heard it. What is... If I have it right, fine. If not, recall it and answering my questions. You understood it to say it. The... the

.. Okay, was she supposed? No, I don't believe she was supposed either. I believe, again, nozzles brought in, nozzles made this number's judge of motion. This was all done in the basis of declarations that were submitted. Which this court isn't as good a physician to read as the district court was. Hi, sirs. What's your comment? Mr. Van Enberg's... He says the ambiguity here and hopefully I'm not mistaken. But he says that the ambiguity here lies in the fact that one would not know whether it's be guided by functional consideration or just the structure. I hope I'm not doing a disservice to his position, but you heard it. What is... If I have it right, fine. If not, recall it and answering my questions. You understood it to say it. The... the... the... the... the... majority said last time that it found that both the intrinsic parameters, the... the sides of the hand, as well as the functional limitation, showed that the claim language was definite. The court said multiple times in multiple ways that the functional limitation shed light on, was highly relevant to, and contributed to the end. So Mr. Van Enberg had said a few moments ago that this was a situation where all that was... all that the patent disclosed was simply some desired result without structure. It's just absolutely not true. The

... the... the... the... majority said last time that it found that both the intrinsic parameters, the... the sides of the hand, as well as the functional limitation, showed that the claim language was definite. The court said multiple times in multiple ways that the functional limitation shed light on, was highly relevant to, and contributed to the end. So Mr. Van Enberg had said a few moments ago that this was a situation where all that was... all that the patent disclosed was simply some desired result without structure. It's just absolutely not true. The... the structure was given. The structure explained the elongate number, explained how that there were going to be electrodes, explained what they were supposed to do, which was to receive signals of equal amplitude and phase, how they were going to feed into the differential amplifier or the council, DMG signals. The only part that it didn't go into more detail about was something that the undistude evidence shows everybody already knew, which was the way to move the spacing of the electrodes in order to get equals signal. The evidence shows that using an ordinary oscilloscope that existed back in the early 90s, it would be quite simple to figure out when the spacing was accomplishing the end. Was this initial raise in the exbree examination proceeding? Which issue precisely? The question of indefiniteness. In the reexamination proceedings. I don't believe it was... I'm not positive. I don't believe it was phrased as an indefinite issue. I think the question was whether or not this was distinguished. This... this invention was distinguished enough from Fujisaki to represent something that was new. I don't believe it was phrased as indefiniteness. Well, whether the claim is for sufficiently precise to affect that distinction. Whether or not there was..

... the structure was given. The structure explained the elongate number, explained how that there were going to be electrodes, explained what they were supposed to do, which was to receive signals of equal amplitude and phase, how they were going to feed into the differential amplifier or the council, DMG signals. The only part that it didn't go into more detail about was something that the undistude evidence shows everybody already knew, which was the way to move the spacing of the electrodes in order to get equals signal. The evidence shows that using an ordinary oscilloscope that existed back in the early 90s, it would be quite simple to figure out when the spacing was accomplishing the end. Was this initial raise in the exbree examination proceeding? Which issue precisely? The question of indefiniteness. In the reexamination proceedings. I don't believe it was... I'm not positive. I don't believe it was phrased as an indefinite issue. I think the question was whether or not this was distinguished. This... this invention was distinguished enough from Fujisaki to represent something that was new. I don't believe it was phrased as indefiniteness. Well, whether the claim is for sufficiently precise to affect that distinction. Whether or not there was... yes, whether or not the claim is represented some kind of an inventive advance over Fujisaki. And what Dr. Leckman, his evidence and others, explained that yes, there was an important difference, which was that the Fujisaki invention didn't seem to take into account at all the notion of EMG cancellation, which is the very thing that caused the devices before Dr. Leckman's advice came on the scene. It did not work very well in terms of detecting heart rate. Before he found a way to cancel out EMG signals, they were interfering with the heart signal that was coming through. And the Fujisaki invention never mentioned EMG signals or their cancellation is being important. The design of it seemed to reflect that no understanding of that was important. And in fact, the testing, which again was never contradicted, showed that it didn't work very well. I guess as a fact outside the record, commercially speaking, the Fujisaki invention didn't work. It didn't sell. So we think that that's also a red herring. There was a clear difference between the two inventions. And it was spelled out the patent example, who also is a person skilled in the art, confirmed what biosigdiskers had said. Any further questions? Any more questions? Thank you. Okay, thank you, Sarah. It's about in case the second under-solution. I can conclude this morning's argument. All right.

The case this morning is number 2012, 1269, biotic instruments against notice on remand from the Supreme Court, Mr. Hume. I'm sorry, Mr. Harris. Mr. Harris has begun one of the issues that we had suggested discussing with us related to whether the final decisions we made here or remanded to the trial court, would you as you proceed if there are disputed facts or issues that require evidence if it's convenient mentioned to us so that we will appreciate where the decision should lie? Thank you, Your Honor. Okay, proceed Mr. Harris. May I please the court? My name is Mark Harris and I represent biotic instruments. When this case was last before this panel, the court looked at the intrinsic and extrinsic evidence of the patent and came to the conclusion that a skilled artisan would understand the meets and bounds of the invention. Since that time, the Supreme Court has issued its decision, but there's nothing in that decision that calls into question either part of this court's analysis the last time. First, the Supreme Court did not materially change the test for deafness from what this court actually applied the last time. And second, the record, of course, has not changed at all. For that we... The Supreme Court said we hold the patent as a valid for indefinance if it claims red and light of the specification, specifications of leaning the patent and the prosecution history failed to inform with reasonable certainty, etc. Now, they're focusing there on intrinsic evidence, the specification, the prosecution history. Do you read that as a direction that extrinsic evidence cannot be considered? No, I don't, Your Honor. It is true that at footnote four, the court references the Leckland Declaration and the experiment by Dr. Galliata, I guess. But I'm just wondering if one should take this as a direction that we can only consider intrinsic evidence. No, I don't think so at all, Your Honor. First, for the reason that Your Honor mentioned, the court went out of its way actually to describe some of the most-helling facts that were in the record, including the experiences of Dr. Galliata's research assistant who was able to build the entire device and test it within two hours. But more than that, the Supreme Court also referred back to its decision in Markman, which mentioned that expert testimony would often be extremely important. Inclined construction, but I think the purpose of mentioning it here was that the same would be true in a definite as analysis. What the essence of the court's Supreme Court's test was that there are basically two main points. One is that the question is what the skilled artisan at the time of filing would understand and secondly was the reasonable certainty standard. Both of those things are exactly what this court did the last time. I'll just read a quote from the panel's decision last time. The court said that the 753 patents claim language specification and the figures illustrating the space relationship between the live and common electrodes are kelling and provides sufficient clarity to skilled artisans adds to the bounds of this disputed term. In fact, this court gave, the majority, gave two different reasons for coming to the conclusion last time that the patent was definite. First, it simply looked at the claims, the diagrams, the specifications and found that there were intrinsic parameters concerning what the spacing had to be. Had to be greater than zeroes. That the electrodes didn't collapse and had to be less than the width of a hand in order that the user could use it. It didn't even turn to extra-indicabinance or the declaration of Dr. Leckman until it got to the second step, which was to say that the functional limitation also shed additional light, those are the courts words, shed additional light on the meaning of space. If you position it, this case can be decided, focusing solely on the intrinsic evidence, mainly the claims and the specification, without looking at whether or not it's extrinsic evidence, the material from the re-examination proceeding, and I guess it was the uonus declaration. Are you saying, leaving aside what those items are, one can just decide it based on the specification of the claims? Yes, we do think so. In fact, that's what the majority held last time. There were clearly two separate steps to the analysis. The first one was that the inherent parameters provided by those intrinsic materials were sufficient. In any event, I do want to mention that the extrinsic materials, the expert reports that were submitted, the purpose of those being submitted and the purpose of the court looking at them was not to provide additional facts for the court. I want to say extrinsic materials, you're viewing all of that, including the material from the re-examination proceeding is extrinsic. Well, it's a little bit unclear how the panel treated it last time. The panel, I think, said that treated the lexman declaration, which was submitted as part of the re-examination proceedings. I think it's called the intrinsic evidence, or it's cited a case from the Federal Circuit where it was treated is intrinsic. And then later on, it referred to you newless as extrinsic. But again, I'm not sure from our standpoint, it matters very much. Either way, the evidence was all one-sided. It all pointed to the fact that a skilled artist and could understand, did understand, in 1992, the meaning of space relationship. There was nothing from the other side, from not list at all, to contradict or rebut that evidence. Let's talk about reasonable certainty. What do you think that means? Well, the Supreme Court made clear reasonable certainty does not mean perfect certainty, or no possibility of doubt, which was positioned a novelist that takes the Supreme Court. That's a start. Reasonable certainty, I think, means that there's room for some gray areas around the edges. But if a skilled artist in reading the patent has a well-founded basis for concluding that he or she understands what's included or excluded, that's sufficient. What well-founded, is that reasonable certainty? I don't want to say that that's the legal definition of it. I'm just offering that as I think reasonable as one of those words that lawyers use and courts use. I think it takes into account all of this ill and the background of the person who is making the determination. That is a very precise. Is it, are you saying, more likely than not, has been cited to us in some past decisions that is 51%. Or that the conclusion that the court wishes to draw can be substantiated by a logical argument? I think I would say that it does mean it has to be at least a preponderance. I just want to make clear though that our opinion is that there's really no doubt here at all, because nothing was submitted on the other side to suggest that this was not clear. In fact, the court came to the conclusion last time, the panel looked at all the materials last time, and said that a skilled person would understand what the meets and bounds were. So what? Well, just to round this out, you're saying that however we define or fail to define reasonable certainty, you should prevail. Yes. That's correct. So I think what you want to say is reasonable certainty is anything that's not unreasonable. That's what you want to say. That sounds fair. So that sounds fair. That sounds fair. So let me ask you about Exxon from 2001, where the court said, if the meaning, I'm going to ask your opposing counsel, this Tuesday, if the meaning of the claim is discernible, even though the task may be formidable, and the conclusion may be one over which reasonable persons will disagree, we have held claims sufficiently clear to avoid and validity on indefinite grounds. Under the reasonable certainty standard, can reasonable persons disagree and a claim be found not indefinite? I think it's telling the Supreme Court, although these issues were discussed that our argument came out with a standard that was somewhat vague and didn't nail down exactly. Can you not with no standard? And they weren't particularly taken with the Exxon series of this course. No, that's correct. Or the other prior attempts to resolve particular cases with particular descriptions. There has been a sense that the obligation on remand is to somehow add as much precision as language can add to this relatively vague standard with looking for your help. I would disagree with that slightly later on, or I don't think the Supreme Court expected, or thought it was necessary for this court to define with more precision what reasonable certain demands. What the Supreme Court left for this court to do, and in fact constructed this court to do, was to apply that standard to this case, not standard, the standard of reasonable certainty. I also want to point out the main critique that the Supreme Court had for the insularly ambiguous standard was not that it was too far over to one side of the range. Maybe that was true. But the main critique they had was that they thought the focus was wrong. The focus was on using the term insularly ambiguous, a court, a lower court, may misconstrue that to mean that what matters is what a court after the fact thinks the words mean. Whereas the focus should be on the skilled artisan. Stair, it's interesting that picking up on what George Newman and George Wallach were saying about reasonable certainty, during the time that this case was under decision, if you will, before the Supreme Court, we decided a case and court of technologies, 744, fed 3rd, 732, and at 737, we noted that the Supreme Court had this case before it, and in that case, Judge Toronto addressed the indefinite issue. He said, we don't need to weigh in on what the Supreme Court will or will not say, but he said the test he applied in that case was the claim language and the prosecution history lead no reasonable uncertainty about the boundaries of the terms that issue, even considering certain aspects of the sophistication that could consider confusion when read in isolation. So this was a decision in March of this year, while the Supreme Court was working on its decision in our case. But obviously before our revisiting here today, and I'm wondering if what you think about that standard. What Judge Toronto said in Anne Chorrel? Yes. I don't have the language in front of me, but I heard how you're on it just right now. I think it's difficult to put greater parameters on the word reasonable. Reasonable is a word that we see in many areas of law, and it's, I think, by design. It's a little bit vague as to what's included and what's not. I think the key thing is that there has to be a reason the basis as to why the skilled artist and what comes to that conclusion. The skilled artist can't, based on a whim or something else, come to conclusion as how he'd read the patent. That's, I think, from our standpoint, that's the key idea here. Again, I don't want to repeat myself, but we think that the court does not need to get into deciding what the precise standard is beyond reasonable, because here all the evidence goes one way. In fact, all that Nogglis has submitted are attorney arguments in 2014 as to what it thinks was unclear about space relationship. Nothing about what a skilled artist in effect. In fact, Nogglis really falls into exactly the crap of what the Supreme Court said shouldn't be done, which is to offer only arguments that are not tethered to what an actual skilled artist would think. I guess I see my time is running down. I just want to quickly, before I serve some rebuttal time, just want to answer Judge Newman's questions from the beginning, which was who should decide this case. This court, I believe, should decide it for three reasons. I'll just run through them very quickly. First of all, the Supreme Court's instruction to this court was for the Federal Circuit to decide the question of whether this patent meets the standard that they articulated. That's explicit in the end of the first paragraph of the Supreme Court decision. Second, under the current understanding, which is that, definitely, it's a matter of law, and is reviewed without deference, which is what the court said the last time, there's really not much gain in sending it back to the district court, because it's going to be reviewed denobo without deference by this court. All it's going to do is just have it come right back here. Third of all, I don't think there are any new facts or new decisions, new factual questions that need to be answered. All of that was briefed and was presented the last time. Nogglis said every incentive last time to present whatever evidence they had, and they didn't have any other than attorney arguments as to what space relationship means. In fact, the district court would be in a worse position than this court to say whether or not this patent is valid, because the district court is going to be found by the previous decision by this court to the extent that aspects of it weren't overturned by the Supreme Court. It's going to have to figure out what to make conclusions by this court, such as that the functional limitation that sheds additional light on or is highly relevant to the meaning of space relationship. But the court's going to have to wade through all that and figure out what's open and what's not open. It's much more sense for this court to decide it in the first instance. I'd like to reserve a reason. I'm going to say you're a better person. Yes, I have a question. Would you like to answer this? Okay. This is just one, this is sort of a housekeeping type of question. Obviously, if we decide the case and affirm the decision of the district court, the case is over. So if, however, we would be your position and we reverse on the indefinite issue, it goes back. Is there anything pending there other than infringement? Are there any other validity issues that were put on hold pending the indefinite question? I believe that nobulous and also made arguments, other threshold arguments concerning anticipation and obviously isn't the like. So I believe there are still other issues that are there. I'd like to reserve the remainder of my time for the rebuttal. That's my question, too. Thank you for asking. Okay. We'll save you a little time. Mr. Harris, Mr. Benjuburg. May I please the court? Before turning to the various questions about the standard, I'd like to have at least 60 seconds to sort of frame what we see as the ambiguity in this claim to create a framework for that. This claim recites a prior art circuit combined with a desired result, the desired result being that the muscle signals detected on both hands will be equal. What is unclear is what ways of achieving that result with this circuit are covered. It's possible that this claim, viewed from in 1992 by skilled artisan, covered all possible known and future ways of achieving that result of equalizing EMG signals with this prior art circuit. That would be true if the term space relationship was a broad term that simply meant any spacing because if it meant any spacing with no functional requirement built into the term, then all we have is a claim that recites a prior art circuit coupled with the desired result. On the other hand, it's possible that this claim covered only one narrow way of achieving this result with this circuit, namely what Mr. Lexman described 15 years later. You adjust the spacing of the electrodes while looking at an oscilloscope until you have the results you want. That's a possibility. A third possibility is the claim covers four ways of achieving the desired result with this circuit, namely you adjust four variables, any of four variables, only one of which spacing is mentioned in the claim. That is the ambiguity that we have asserted. The scope of the claim is ambiguous because it is unclear if the term space relationship includes inside the term a functional requirement that the spacing caused the equalized EMG. In fact, the concurring opinion in the prior vacated decision pointed this out and pointed out that the majority presumed that not only did the claim have this functional limitation, but that the term space relationship has the functional limitation built in and the concurring opinion found no support for that in the claim. With that framework, to turn to your honours questions about what the Supreme Court did. Well, I have a question about that framework because we're talking about claim constructions and infringement as well as whether this claim is particularly indefinite and from what I heard you say, even if the accused structure, none of which is before us, but even if it were identical with the drawing in the patent, that the claim would nonetheless necessarily be deemed indefinite because it could cover structures other than that, which is specifically an exactly picture. The claim's indefiniteness is not dependent on which alleged infringer may be before the court. So I would submit that even if, which is not this case, a party had copies of the picture in the patent and it could concede it infringement, which is not this case. Even if that were true, the claim would be indefinite or indefinite under the statutory mandate equally, would not be relevant to that. That's part of the problem because it does look as if what led this court to some of the broad language which has been criticized by the Supreme Court was in order to cross that hurdle and to get to the real stage of what's an issue. And that is, in fact, what is the relationship between this patent and what was invented and what is accused of infringement. But I hear you saying that if there is a reasonable way, let's not say any way because that's behind us, but a reasonable way of construing a claim so that you don't know what a slimmit saw, it's indefinite always. We would not say that. We would say that when the court said reasonable serve what it meant and some of these terms themselves could be subject to further scrutiny, but looking at the opinion, the claim needed to be clear, it needed to be unambiguous and it needed to be precise, but not more precise than the subject matter permits. The Supreme Court did not use that exact phraseology. The Supreme Court said there's allowed to be a modicum of uncertainty. There's limits in the English language and it says absolute precision is not required. We would submit that this court's precedence back from the 1980s and 1990s during that period, one of the requirements that this court imposed on claims under 112, was that the claim be as precise as the subject matter permits. That worked both ways, sometimes that helped the patent owner survive a claim because the claim in fact was as precise as the subject matter permitted, but sometimes it led to invulidity because it was possible to make the claim more clear. Here, if that were applied, it is clear that it would have been easy for this patent to have clarified the ambiguity we're speaking of. It could have, in the claim, had a clear expressed length between the claims result and some structure in the claim. The claim does not have an expressed length, it says whereby after a lot has been recited, it doesn't hide expressly to space relationship. They could have defined the term space relationship. There's a hand that has to cover both electrodes. That is true, but that does not answer the question, the ambiguity of whether or not the term space relationship itself has a functional limitation or a functional requirement built in. They could have defined the term space relationship in the specification. They could have given examples of configurations that fit within the claim and examples that fit outside the claim. There is a picture, yes, but there are no dimensions or relative dimensions in the patent to specify what range if any is allowed on the spacing. You can't take traditional notice of the size of a human hand. The problem here is that one interpretation, before the reexam, the best interpretation, but it was unclear, was it space relationship meant any spacing. If one looks at the specification, they refer to things like space or space the part. They never suggest that the amount of spacing affects the result. The original examiner, as we've noted in our Reman brief, the original examiner said the spacing doesn't appear to be critical. It seems to be a designed choice. Before the reexamination, if one had the guess of the best claim construction, the best guess would have been that space relationship means any spacing. This claim covers any possible way of a scheme. Are you telling us the spacing is critical? I don't recall any evidence provided to that effect. Well, post reexamination, the best construction perhaps shifted to the functional limitation, which the majority of the court in the VKA opinion found that space relationship itself had a functional requirement built in. The reexamination statements of Mr. Lexman certainly would support that. The person of skilly aren't knows that this circuit is prior art. They know that Fujisaki had the identical circuit. Their Lexman said that Fujisaki didn't achieve the desired result. The artist in knowing all that looks at this claim. Prior art circuit that supposedly doesn't achieve the result. The claim says it reaches the result. What is there in the claim that might suggest how that is achieved? What way is that achieved? The only possible term there that might have caused that is space relationship. Because that's not a term of art. It's not defined in the specification. And therefore there are clues that would support the view that the majority ultimately reached in its opinion. And there certainly are clues supporting the occurring opinion view of it. But what matters here is not the, half the battle here is defining the correct issue. The issue before the court is not what is the best claim construction. Viewing matter opposed to taking into consideration the reexamination. The Supreme Court rejected that approach. That is one of the aspects of Exxon and both star scientific cases. And did the question? The question is we have a claim construction here. That the district court came up with and that we looked at in our original opinion and that's noted in the Supreme Court opinion. Is the question whether accepting this claim construction one is left with indebtedness because one of skilled in the art cannot tell based on that construction with reasonable certainty the bounds of the invention? Absolutely not, Your Honor. That is the approach that was taken in Exxon and in star scientific both decisions there and by this panel to construe the claim first and then ask if the claim as so construe gave enough notice to the skilled artisan. And the Supreme Court rejected that claim construction first approach. You have to claim there is a claim there and the question is where do you start? You have to look at the claim. But you don't first go and proceed and get the right answer and then step back with that hindsight and ask was the right answer clear? That is the post hoc approach that the Supreme Court. What in your view? I am sorry to interrupt you but it is time to speak. We have a claim construction that neither party disputes. What do you say is the analytical framework that we should pursue? I know you want us to conclude that the claim is indefinite but how would you consistent with what the Supreme Court said and maybe consistent with what our anchor of decision say? How would you approach this case in terms of your decision process if you were on the bench? First we didn't mind there is a claim construction out there that no one disputes. Well first we did dispute the claim construction in our opening of Pelletbury but let's assume hypothetically that it was undisputed. We would say that is not relevant. We would have taken approach the interval licensing took. You take the perspective of the person of skill in the art, you look at the original intrinsic evidence as the primary evidence. You look at the original specification, the claims is issued and the original prosecution history. You do not look at post issuance events such as judicial claim constructions, re-examination or reissue prosecution history because that skilled art is in a 1992. That is the person who matters here. That is the person who is either going to go out and invent a better solution or is going to look at the claim, see a zone of uncertainty and go home and watch television. That is the person we care about. That person does not have a crystal ball. That person does not know how the trial court will construe the claim 15 years later or how this panel will construe the claim later. If there is a claim construction for other reasons that is fine but that should not bias the analysis. You did? I am so good. In your opening brief at P.J. you say the Supreme Court's decision requires a more demanding analysis and then underneath that you say the Supreme Court held Section 112 mandates clarity and precision. I wrote a vulgar note next to it and went back to the Supreme Court decision where they say the definite and its requirements so understood mandates clarity while recognizing that absolute precision is unattainable. Now I think that walks a different route than your heading does. You are not taking the position that 112 mandates clarity and precision. You are taking the position that the person who is skill in the art has to be able to deal with it in a reasonable fashion. No, you are on a weird stand by the heading. The mandate is clarity and precision. Given those they say absolute precision is unattainable. Well, the very beginning of the opinion refers to the statute's clarity and precision demand. This is at page 2124 of the opinion. The Supreme Court opinion clearly distinguishes the Supreme Court's point in distinctly claiming. It is not only clear it has to be precise. However, you are on a good list. Within the ambits of the English language. Yes, and within the ambits of the subject matter. If it was undisputed that space relationship was a functional limitation, it had functional requirements built in, then it is certainly possible in some other case that one could turn to the oscilloscope as the enablement analysis and determine that people of skill in the art here could use that oscilloscope to figure out what space relationship would be in a particular set. Such as the controlled environment case and other cases here. That is not this case. It is not undisputed. It was not known from the get go that space relationship was a functional limitation in of itself had a functional requirement. As the concurring opinion indicated, the majority presumed that there was a functional limitation built in to the term space relationship. Our position is the person of skill in the art would not know. It was like 52, 48 if space relationship had a functional requirement built in. If space relationship did not have a functional requirement built in, then the skilled artist who comes up say he has this new material that he thinks will create equal EMG singles on both sides no matter what the space is at the Fuji Saki space. That would in frame. Are you saying that a person reading the specification, looking at the drawing, seeing where the electrodes are placed, and reading all of the description of the neutralization and the grounding and so on would not reasonably with ordinary skill of someone in this field be able to design. We have the evidence that a apparently young person of modern skill was given the specification routine equipment and within a couple of hours balance the electrodes and whatever it is that would normally follow from knowing that you need to have the neutralize each other. We would have done this record. There is evidence to support that. That is the enablement. That says that the skilled artist and if they wanted to take a license and practice under this claim, they could figure out one way of doing so. That is completely the different issues in what we have here. Our skilled artist doesn't want to practice within the claim. Does it want to? What did you just not reach it in the course of a summary judgment procedures? There was no ruling by the trial court on that issue of a trial. On that issue of the nailment there were certainly arguments there and biocig is still making that argument which we submit is a legally not relevant because again the skilled artist and doesn't want to practice within the claim. They want to practice just outside the boundary of the claim and they need to know where that boundary is with reasonable certainty or else there is going to be the zone of uncertainty. Will you help us to define reasonable certainty? Yes. One aspect of it would be what interval licensing quoted from every penny counts trial court decision. What was decided interval licensing? The interval licensing was that said in our brief? No, if it is not. It may not but it was interval licensing versus AOL decided September 10th, 2014 by I believe judges Toronto and Chen. And I have a paper copy. Can we have a copy? So they quoted every penny counts which was quoted by the Supreme Court and they said if there is no informed and consonant choice between two possible constructions. So that panel adopted that language, the Supreme Court adopted that language. So you would accept more likely than not as adequate? No, not at all your honor. The point is not whether or not one construction is clearly better than the other. That is not the issue. The issue is avoiding post-trial analysis, avoiding hindsight of coming up at the right construction, looking at it from this point of the artist and without a crystal ball. Are they faced with a genuine ambiguity? The Supreme Court was clear that claims cannot be ambiguous. The Supreme Court said that one of the problems with this court's exon decision was that it tolerated some ambiguous claims. There is no way reading the Supreme Court decision we submit that would allow any ambiguity, genuine ambiguity. So if there is any ambiguity about that answer, even if there is a reasonable world I believe is not meaning? Yes, Your Honor. That is the position of the Supreme Court. They said two things on that. No, they didn't say that. They asked us to figure it out. Well, they made two references to ambiguity. One, they said that there was evidence that there was an economic consensus to inject ambiguity in the claim and they said it is right or suited on the right language but it is right to end that temptation. That certainly suggests that they are not allowing ambiguous claims because they want to stop the temptation to add ambiguity. And secondly, they said one of the problems with the insolubly ambiguous standard was that it allowed some ambiguous claims but not others that did not comply with the statute. If I may speak to the remand issue briefly. Did you have a question for them? Yeah, but I'm not all right. So what you're telling us, I think I want to make sure I understand it is that the question is, is it insolubly, I'm not going to say that. But is it ambiguous? So the one looking at the patent would not know the bounds of the invention. Is that it? That's half of it. The other has to be unambiguous but it also has to be as precise as the subject matter permits. We submit those are two different criteria. And to do that, you look at the intrinsic evidence, the language of the patent and the prosecution is correct. Primarily, but in answer to the question, you can look at extrinsic evidence. So long as the extrinsic evidence is not injecting some hindsight, it's not giving adding a crystal wall to the analysis. If it is saying, if the extrinsic evidence says, oh, this term of art space relationship, that had a clear meaning in the art. Anyone in this art reading this would know that it was not a functional requirement, et cetera. That type of extrinsic evidence is perfectly fine. The original prosecution history here, does that in your view shed light on this question or not? Yes. The original prosecution history supports the broad view of space relationship, the non-functional view, and if all the artists and looked at that, was that prosecution history where the examiner said the spacing is not critical, appears not to be critical, the placement appears not to be critical. That's all they looked at. They would come away and think, oh, this claim covers all possible ways of achieving this equalization result with this circuit. Now, you just said earlier, when I mentioned that we had a claim construction here, you said your view that was the wrong way to look at it. What is the right way to look at the language of the claims in the patent in your view? What did the society case? Well, one does apply the appropriate interpretive tools. This is very much like a Chevron analysis. So we have to consider the language of the claim. Absolutely. The starting point is the language of the claim and the specification and the original prosecution history, and one applies the appropriate interpretive tools. What one shouldn't do according to the Supreme Court, when they said they rejected a post-pock analysis, one shouldn't add in the Exxon, struggle, struggle, come up with the right result, the best claim construction, and then ask, is that claim construction clear? That is what the Supreme Court rejected. And on the remand? Well, I think I've got an answer from, like Judge Shalves asked you, but for a while there, I thought you were saying that we could release the District Courts of the burden of Markmans, since they wouldn't have to worry about claim construction. They would just be with the Pazitas, and we could take evidence. They could take evidence. I think you were going down that road. No, you're on the road. Sorry if it was, I'm not clear on the road. I thought you got your answer from what you said, Judge Shalves. So I think the distinction is to not inject Heinz. I mean, the Court rightly is concerned about Heinz site in the obviousness analysis, but here if one followed the old approach of construing the claim and then asking, was that sufficiently clear? That is injecting Heinz site into indefiniteness, and we submit the Supreme Court reject that. On the remand, we essentially agreed that the Supreme Court asked this Court to reconsider. It is a question of law. It noted, the Supreme Court noted that biosec could raise no fact dispute. There is no issue here that the trial judge got it wrong because there was a genuine issue of material fact, and we submit that the trial judge opinion was correct because of this core ambiguity as to whether space relationship itself is a functional limitation as the majority found earlier or does not have a functional requirement built in as the concurring opinion found earlier. Thank you. You say, Mr. Member, that extrinsic evidence can be considered in this case if, and you would underline if, it's used in the right way. That's what I took from your statement a bit earlier. Yes, Your Honor, and not the only reason we say that, but one reason we say that is as we brief, we submit that the extrinsic evidence in this case supports us because their own experts once that space relationship was broad, one took the narrow view, and the third took both views. So we submit their expert testimony extrinsic evidence supports our view that the intrinsic evidence showed it was ambiguous. So you think the extrinsic evidence is in solving a plea ambiguous? No, I wouldn't say that, Your Honor. All right, thank you, Mr. Van D'Amour. Thank you. Would you enlarge the errors of time by the amount we've run over? Thank you, Your Honor. A few points. What Mr. Van D'Amour just spoke out, I think, is exactly what the Supreme Court said the test wasn't. The test is not perfect notice. The test is not whether or not the inventor could have in retrospect now with 20 years hindsight, could have written something else that would have been clearer. The test is not whether there is any possible ambiguity. None of those things have a test. The Supreme Court rejected all of those decisions. The Supreme Court held the test was reasonable clarity. And the test for that is based on the materials that were available at the time, as well as additional extrinsic materials that may shed light on what a skilled artist would have thought back then. If anybody is using 2020 hindsight, I would argue that this novel is here, because what novelist is doing is arguing based purely on lawyers' readings of what they think the claim means, many, many years after the fact. And trying to say that as a result of that, without tethering it to any skilled artist's thinking process, that the claim must be ambiguous. Let me make this very specific. In their reply brief, before this court, I believe it was the first time the Nautilus raised this idea, which was just mentioned, which was ambiguous about this claim, was that, and a skilled artist wouldn't know whether or not he could try to develop a new material, which would somehow intrinsically detect equal EMG signals. That substance, as far as we know, defies the laws of physics. Dr. Leckman explained in his declaration that the EMG signals their amplitude and phase depends on the size of the electrode and also the spacing, how much of the hand touches it and also how far apart the measurement is. So we're now supposed to take the view that because 20 years ago, it should have been foretold that somebody might down the road, invent some substance, which still doesn't exist as far as we know, goes against what we know works about physics. Because that wasn't specified that that wasn't included, now the patents invalid. That seems to me to be exactly what this report doesn't want to happen, which is lawyers now having every incentive in the world to come up at every phase of litigation with a new possible ambiguity or unclarity that the lawyers come up with as being the reason to invalid the patent. That's not the way the process is supposed to work. This court did examine the claim last last time, the majority did. The majority did not focus on the construction. The majority, I read the language before and there were other passages where it's quite clear that the majority looked at the claim language itself and found that the claim language was clear enough to the skilled artisan would know the relationship between space relationship and the end. As Judge Newman, as you mentioned, there was evidence undisputed not only that the Dr. Gallagher and the system was able to build this into hours, but also that the assistant was able understood how to read the claim in order to achieve that result. How did that work? I don't want to go outside the record with the assistant's supposed after that information was filed. I'm sorry, what the... Was it that two hour experiment or whatever you wanted to call it? Was that pursued or was that just put into the record? I don't believe that it was. I'm not positive about that. My understanding is that it only came up in the course of Dr. Gallagher and his description of her conclusions that the language was clear and was certain enough for a skilled artisan to understand. She gave the example of what her research assistant had been able to do. I don't believe he was... Okay, was she supposed? No, I don't believe she was supposed either. I believe, again, nozzles brought in, nozzles made this number's judge of motion. This was all done in the basis of declarations that were submitted. Which this court isn't as good a physician to read as the district court was. Hi, sirs. What's your comment? Mr. Van Enberg's... He says the ambiguity here and hopefully I'm not mistaken. But he says that the ambiguity here lies in the fact that one would not know whether it's be guided by functional consideration or just the structure. I hope I'm not doing a disservice to his position, but you heard it. What is... If I have it right, fine. If not, recall it and answering my questions. You understood it to say it. The... the... the... the... the... majority said last time that it found that both the intrinsic parameters, the... the sides of the hand, as well as the functional limitation, showed that the claim language was definite. The court said multiple times in multiple ways that the functional limitation shed light on, was highly relevant to, and contributed to the end. So Mr. Van Enberg had said a few moments ago that this was a situation where all that was... all that the patent disclosed was simply some desired result without structure. It's just absolutely not true. The... the structure was given. The structure explained the elongate number, explained how that there were going to be electrodes, explained what they were supposed to do, which was to receive signals of equal amplitude and phase, how they were going to feed into the differential amplifier or the council, DMG signals. The only part that it didn't go into more detail about was something that the undistude evidence shows everybody already knew, which was the way to move the spacing of the electrodes in order to get equals signal. The evidence shows that using an ordinary oscilloscope that existed back in the early 90s, it would be quite simple to figure out when the spacing was accomplishing the end. Was this initial raise in the exbree examination proceeding? Which issue precisely? The question of indefiniteness. In the reexamination proceedings. I don't believe it was... I'm not positive. I don't believe it was phrased as an indefinite issue. I think the question was whether or not this was distinguished. This... this invention was distinguished enough from Fujisaki to represent something that was new. I don't believe it was phrased as indefiniteness. Well, whether the claim is for sufficiently precise to affect that distinction. Whether or not there was... yes, whether or not the claim is represented some kind of an inventive advance over Fujisaki. And what Dr. Leckman, his evidence and others, explained that yes, there was an important difference, which was that the Fujisaki invention didn't seem to take into account at all the notion of EMG cancellation, which is the very thing that caused the devices before Dr. Leckman's advice came on the scene. It did not work very well in terms of detecting heart rate. Before he found a way to cancel out EMG signals, they were interfering with the heart signal that was coming through. And the Fujisaki invention never mentioned EMG signals or their cancellation is being important. The design of it seemed to reflect that no understanding of that was important. And in fact, the testing, which again was never contradicted, showed that it didn't work very well. I guess as a fact outside the record, commercially speaking, the Fujisaki invention didn't work. It didn't sell. So we think that that's also a red herring. There was a clear difference between the two inventions. And it was spelled out the patent example, who also is a person skilled in the art, confirmed what biosigdiskers had said. Any further questions? Any more questions? Thank you. Okay, thank you, Sarah. It's about in case the second under-solution. I can conclude this morning's argument. All right