may please the court my name is ron cahill i don't represent american technical ceramics cooperation the defendant and appellant in this case claim one is indefinite because the intrinsic evidence discloses no means to define a fringe effect capacitance that's capable of being determined by measurement why does it have to come from intrinsic evidence of if something that could take an extreme example everybody in the business knows why in the world would you have to say require that a patent claims viewed in the light of the specification prosecution history inform those skilled in the art about the scope of the night i was once or may already be in the hands of the skilled skilled reader now if you're talking about a presumed meaning a claim term has a meeting that everyone in the art understands that if you go to a textbook and it's there of there's no dispute about it then that might be true simply using the name in a patent might be enough that's certainly not the case here well that was an expert and i gather just on one side that said you see what that and says you got to be able to measure i know i don't graduate students are very second year engineering students would do it and there's no said it had never been done before that it hadn't been disclosed in the patent or in any publication of any kind if nobody had any reason to do it before and the second year graduate student are there for whoever it was it that he referred to would upon being presented with a task you know how to do it and there's no contrary evidence what's the uncertainty well the uncertainty is there is no guidance performance testing was something that was disclosed in the back and that's the methodology to use and what he also said was that testing the fringe of factor determining the fringe of fact was correct that's correct so and and he said that it would take his graduate students who he actually said were above the level of a person skilled in the art six months to a year to do it so is that sufficient that somebody skilled in the heart could could make a determination six months to a year doesn't seem to me  separate out the fringe effect that's right he did say those things and insertion loss testing is shown in the patent for capacitors that don't have  expert agreed that the patent does not teach how to use insertion last test and to result from the fact passed in some capable of being determined by measure and he further said quite loudly that there was no evidence at all in two thousand and that the methodology has to be in the intrinsic evidence and it seems to me that that's just not in fact supported by the cases and indeed if you look at the the discussion on denial o your most important case it expressively says that's not there's no categorical such requirement and it doesn't make sense that there be a categorical requirement that the patent teach people what to do they can either but they either already know can reasonably figure out and then the question is well ok he had to figure something out now not no longer talking about a categorical barked at this kind of evidence and i'm not sure why in this case where you had no contrary evidence to different methodologies and nobody would have any idea which one to use and they might come out differently there are no methodology is at all there are none and all of the experts agreed that there are not all of the experts and a third party witness agreed that insertion loss testing doesn't resolve for fact capacitance capable of being determined by measurement worse than dial in down there were three methods that one could go to the yard and find here there are no methods you could go to the are right there is a statement doubt that that here there's nothing in the patent that tells you which of the three methods to peck or even if that's the universe of methods here the universe is why don't we have an expert who says i don't apply the scientific method and i'll figure it out and my grad students who are above the level of ordinary skill in the art can you know what it is take them six months to a year to figure it out existed at the time that tells you how the testing to determine the bridge and he said he had to develop a method and that it would take someone skilled in new york six months to a year to do that governance those are cases where it's clear out side of the patent what it means here there's no clarity there's no way to resolve it and no one's ever done it the inventors never did it which is probably why it's not in the pa and there's no literature at all to say that it's even possible in the experts clear in the yellow brief it page twenty in the appendix of page ninety there's nothing in the patent that says a network analyzer can be used to determine whether the xterm contacts of a multilayer capacitor have a terminal relied in part of the presence of logs and b when it goes back made the district court take up to date evidence and in particular when i'm thinking of as i understand it this injunction has been in place since november fifteenth of last year and i think that was judgment day plus ninety days for the so called sunset provision yeah actually i think it was february because it was it was stated by the court of first so if it goes back there's going to be a period of real world experience about what you were five fifty customers have been buying since they couldn't buy the function if you can the district court update the evidence to look at that i'm not sure how much weight it would have but i don't think there would be a preclusion to them considering that now i agree that if lost profits is reversed the court should simply remand for page one thousand eight and i believe it's right after the recollection is it's page one thousand and twelve it's right around  couldn't compete with the b b in other words that if you took the five fifty out of the market that the b p would be sold instead of the five sixty sure so first of all it simply takes his own documentation perseveres expert witness at ten forty eight in ten forty nine and forty eight and ten forty nine talked about the framework of his analysis which is quote the five fifty product was not market he's asked about specific presidio products and he says they're going to test my memory it's late in the day if the b b c series i think that i could be wrong at the top of my head i just can't remember frankly but the question wasn't tell us everything including bt sees other products five sixty is not in the market because it's a reduced performing part was not in the market that at the time that the five fifty was being sold where does he say that if you think the five fifty out of the market the sales will be rather than the five sixty because the b b is superior well with all due respect that's a hypothetical that a witness factual witness would not answer but what you have here is so you don't have any  well i believe it's seven or nine and seven twelve three seven fourteen again he's testifying which products are in the realm of that and he didn't refuse to identify the five sixty because he had identified that as a reduced performing part as compared to the b b b in one instance he testified that as to compare to the person the o b v we're i believe it just well i'm assuming seven twelve seven fourteen six and that's your problem problem and you've got a market here where there is an alternative and where a t c has made a very reasonable argument that while they compete with their sales their five sixty product is better performing probably because they stole your french affected us that it's but it's better performing and because it costs they have a higher profit margin so why would they offer an alternative of their rather to their own product why not just stick with the five sixty however if they can't make the five sixty they've got this other thing fully developed sold at least to one customer and available to step in place of their five sixty and the problem is this record is devoid of anything that suggests the customer wouldn't buy the five fifty and w apply insertion loss measurement to determine the fringe of fact that's the point there's no you know there certainly is testimony that people knew how to do insertion loss testing that's not the question the question is did someone know how the district court made factual findings to that attempt and that is directly supported by credible expert testimony and let's step back and look at where we are here the standard of review of those factual findings is clear air in when you known how to do it but then he said to apply that to determine the fringe of fact and required me to develop a new methodology right know if you know at fifteen or seven but i understand i'm at a time when we can still answer the question your honor if i believe i have your question is whether dr huber testified whether a portion of ordinary skill me or already knows without having to figure out how to isolate a discrete capacitance and the testimony is absolutely clear then reason he said that he had to develop a test and he said i could do that because let's assume that that's his testimony i know you don't agree with that ok let's assume that testified that it would take some skill north six months to year to develop the methodology is that sufficient under novel assuming divine measurement language is different from language that was in the ultimate claim construction that judge gonzales care why was that not a substantive difference in the sense that by your own evidence in the first case there was a basis for finding coverage that would not qualify under the new claim even if it's a very small  so that's because there were no special right tories presented during the first trial to speculate about why the jury found infringement in the first trial is just that it looks like a first cause of the evidence that you put on was the theoretical measurement and the other side and argued that that was insufficient evidence he enjoins gonzales said the it's not sufficient evidence to show infringement on and again i disagree with that because also measurement as showing in principle that not the case that was part of the evidence that was presented as backgrounds to why the fights and it was it not true that judge gonzales and that habitants was sufficient to show infringe theoretical measurement the just or court found that there was sufficient evidence presented at trial well supported only discussing the theoretical measure i respectfully disagree while the district court cited that also consider for have the panel consider that when reviewing the an amended claims of course we need to evaluate this in terms of the specification specification we cite and all the parties agree that the priority includes theoretical fringe effect lasts the first time the first time that the specification talks about the claim fren distinguishes the two situations that the question is what kind of measurement technique might or might not have been covered by the preeminent claim that isn't covered by the amended claim and lots of measurement techniques use equations in and get into an ultimate measurement so the use of an equation all by itself i don't see why that makes in fact a substantive difference but wasn't there in fact different a part of dr humors evidence during the first trial was the calculation yes but he also presented evidence and eighty season documents showed the insertion loss measurements of the five forty five  part of the case so they were soon to do so i'm in i apologize i am way over time as there was no need to do so so i had done there was no need to do so because he had not just missed in his had he done measurements against a bunch of insertion loss measurements and he decides he's this one at this stage and this one at this stage and you know it's a seventeen step process that call half the entire methodology that sequence of steps calculate it so what is it that was covered by the pre amended claim that is now not covered well it is the the proof from presidio one where you look at the capacitor you pull all of its various dimensions you plug those dimensions in the dielectric constant into a formula and you talk your way to capacitance that's the sufficient proof the substantial evidence that supported the jury verdict i  phillips claim construction so in this forum it's not enough to do what you did and in the district court you're going to make you put it in a claim in some sense that stopping the purpose of b at the end of the day the language put into the into the amended claim is absolutely nothing but the claim construction i doubt that in the district court by philips case then their scope is the same what came out of the patent office and what went into the patent office even though the p t o along the way you know said you don't survive on phillips here how is what came out of the p t o now or and what went into the p d p what's would be in this that the pre that is not in the books will get stuck calculation by measurement and the examiner expressly considered the district court's construction it is in the record of twenty seven something that might well be what we do b r i here we don't do feelings he actually adopted he actually looked at the claim construction from the district court that requires the french effect answers to be determinable and he said well even past but my understanding now is that the patent key is not contending that that is within the scope of the claim obviously because that would create interest creation or obviousness problems that there there is agreement is there not at this stage that the that theoretical measurement that was satisfactory in the first case wouldn't be within the scope of the claim now we certainly agree with the why don't they agree with that too i mean  which if i understand correctly even i may be wrong about this but correct me if that were were dealt with by saying no with that kind of theoretical measurement which preexisted the patent here is not sufficient under the passion that you have to have an actual measurement using the kind of measurement that was developed by their expert right after amendment that's exactly the case let me ask a slightly different question which during riggs emanation not only this capable of being determined by measurement language was added but also proximity was added prior to the amendment increasing and the claim used to say the first in the second contacts have to be located sufficiently close after him and that it firstly says they have to be in an edge to edge relationship i can't figure out why for the life of me that argument wasn't made because wouldn't that create immediately unquestionably a change in proximity and therefore her solve your entire being rights problem and we wouldn't be having this complicated discussion about what happened in the first district court what happened in the p t o whether the constructions were the same why did you not make this argument what am i missing so why doesn't this actually cause you to win on this issue easily and yet you didn't make it so i am what am i missing when presidio amended the claim they amended the claim to adopt the clinton structure from judge which was also adopted by judge charles and it included that language so they amended in the district court claim construction of the first district court required them to be an edge to edge relationship even though the claim itself only says they have to be located sufficiently close at a school so the words that were different the words they were not part of a claim construction before work by measurement and that's correct and specifically it never included that claim which that's right and that's really spelled out by the specifications self where there is a signal to a person of skill me of where the priorit this present and that was essentially a quote from the post trial ruling that's at appendix fifty three thirty four the judge gonzales's post trial ruling rejecting the i mean upholding the reject upholding the rejection of the