today to st address a technical misinterpretation of a passage from the prosecution history that conflates a passive link and the date of the close through that pass of lying the nd and related legal question before the court is whether a single alleged ambiguity from one paragraph in a twenty two dollars and a half year prosecution history invalidates all subsequent issued and asserted claims particularly where as here there is over fifteen years of subsequent prosecution history including an explicit definition of the very term at issue passive link offered by the applicant and adopted by the p t explicitly on appeal forming part of the salient prosecution history in connection with three examinations of all actually asserted claims in the case and the claim language all twenty six asserted claims and the specification all you agreed that a skilled artisan in order for this language to be definite would need to know where the passive link ended and the computer began if that's right then there would seem to be a kind of analogy to table here which is the claim language by itself and i think i would say your two thousand and four express definition leave unclear the answer to that question where one ends and the other begins and you therefore need something to resolve the uncertainty and the role of the prosecution history here is to search for something that resolves that uncertainty and what you find when you look at it is actually something maybe not as dark as in tevar but you find something resembling an inconsistency in any event not a resolution why is that not what is going on here yes thank you judge for on time so st of all i think i think we need to appreciate that there is a distinction in this is vital to the case but tween the dataflow and the link in that these are different constructs so a link all of the links disclosed in the pattern specification are cables thousand and two says that the link runs from the facsimile machine to the computer in fact if you look at the september th two thousand and two example it's even made more explicit because at the time they were arguing against a reference called perkins the principal embodiment of perkins was that there was a box that sits in line between the facsimile machine on the computer and the secondary one was a card and the p applicant was extremely explicit saying that the computer begins at the interface so i would respectfully posit your honor that the even the very office action that they're talking about is completely explicit it says that the passive link terminates at the computer interface and referencing the secondary embodiment of perkins what the applicant said is even though circuitry of device three and this is again in reference to the  embodiment of perkins is placed on a card within a box containing the computer so he regardless of where the plastic box of the computer is it is a peripheral device to the computer part of the computer which processes data before it is transmitted to the i o bus so going back to what the the district court actually said is the office action response repeatedly mentions the i o bus as the end point of the link if you look at what the citations by the district court to the state and are is there's one citation and you will never see anywhere in the prosecution history including to that citation any reference that the passive link ever went to the i o bus what was actually said is the following your honor the non intercepted data i'm sorry i'm hearing a slight echo the non intercept the data enters through the serial type connector port of the computer so the very passage that they claim is an ambiguity is not because the do the intercept the data enters the computer at the connector port according to that passage and so we've used the example of traffic vehicular traffic across a tunnel or bridge yes the bridge has a beginning and an end and these are well defined but the vehicle or traffic passes through it another example that occurred to me is if we had a claim directed to and said that the non intercepted water flow allows you to water your vegetables garden no one would understand that statement to mean that you have to shove your hose into the vegetables roots there's a distinction between that which to my understanding about all of the prosecution history indicates that the passive blank starts with a facsimile machine and ends at the computer interface report computer interfaces the precise language of point twenty seven that was under discussion in this very office section flow and the cable or passive blank and in the words of the patent specification the data transmitted can be received as a picture so this just sort of reinforces that the what we're talking about with the data flow and again and of course in the beginning of a is a facsimile machine so you have a picture that has nothing to do with the physical construct that is the passive link the again the passive link in the embodiments are simple cables and there is no repeated reference there's not a single reference of the passive link goes to the i o bus and just the two different your honor mention in that case the claims did not identify any or provide any assistance in terms of what the meaning of the molecular weight might be if there were multiple a molecular weights we put this in our reply brief but for example the five hundred and seventy four patent claim one has two different elements the st is establishing the communication path namely the pass a blank and the nd is transferring data from the facsimile machine to the of what to make of the september twenty two thousand and two distinction of perkins the re examiner did because rico raised that to the  or evidently did not find that to be a problem if the re examiner had to thought that there was an inconsistency between what was then being argued and what had been said in distinguishing perkins way a good question your honor i do know that the reexamined or may say there was a lack of written description or some other made some other finding that that it was unclear there was insufficient information within the intrinsic record but  first of all the preliminary or the the main prosecution this issue was never raised there was no confusion expressed during by any prosecutor in this twenty two and a half  years and then there was the explicit definition adopted bearing reexamination and on appeal and i would point out how do you how do you think that that explicit definition resolves this question of incidentally the p type concluded did not show a passive link between the facsimile machine and the computer each of those and if you look at those diagrams what you will see is an r j eleven cable or an and twenty two cable that is between a facsimile machine box and a computer box and there that is the extent of the passive link and the  through with that possibly definition in hand and said each of these three is a passive link so taking head on what a passive link is and where it begins and ends and this one is not a passive blank and in answer your question i think in terms of what the the role of the definition is in the convolve vs compact case post graham prosecution history can be highly conventional so the embodiments of perkins the one is what i would call while he calls it a device three in both instances that the st is sitting in the line but that's true and that's not a right and that was what was in the very same prosecution history passage what what the applicant said very clearly was i don't care where the plastic case of the computer is the computer begins at the computer interface so the claim itself said computer interface and what the patentee said during the prosecution history this very same passage is that a card that is plugged into the computer interface is not part of the computer in the patent he said that at and i can read you the precise language hence even though the circuitry of device three is placed on a card within the box containing the computer so clearly the computer is a separate thing in the box it should be regarded as a peripheral device to the computer which processed the the data before it is transmitted to the i o bus  so the very same passage on which they rely and the computer interface language addresses your honor this issue that you're raising and throughout the entire prosecution i don't say that this is just trying times i'm sorry i know your clock is running but i didn't what you just said highlight the problem where rather than the rather than resolves it because that is what figures to be through deed do not seem to show at all well exactly we we do not show in figures to be or through a device so i think the distinction maybe that's missing here is that in the patent what we what they do in the figures to be to see and to do what is discussed is an internal card so that is not something that is plugged in like perkins every embodiment of perkins has analog coming in and digital coming out and a processor and a fax modem that processes the data before it is transmitted to the computer so the figures to be to see and to do do not have that because they explicitly there is an internal device in those figures and in addressing i think the implication of your question is doesn't this play into the bus argument again we have to differentiate the data flow and the permissive ability in the real benefit i think it bears out saying and i appreciate the court's indulgence on time please help me off one whenever you've had enough of my discussion but the real benefit here is that the passive link doesn't require all this processing and what perkins showed was st of all required analog transmission and this was specifically found by the p t that perkins was not a validity problem relative to claim twenty seven dollars even as it existed at that time and it was amended four times subsequently that all of the perkins had analog coming in and digital coming out and that was not what was claimed the the benefit of the claim was that there was digital from the facsimile machine to the interface of the computer and i was clearly i needed i think i'm going to cut you off here because we get little beyond with the line of questioning l ly that america's the simple issue in its simplest terms i should say is whether the positions taken by the applicant during prosecution with regard to the computers and point of the applicant point term why is he precluded from changing his mind well certainly a patentee could change its mind and the patentee could have taken different arguments at different points in time but your honor the issue was when the this point changed its mind it took a completely inconsistent position that changed the endpoint of the passive blank there's nothing wrong with their view that would create a problem of the lit with to overcome the prior art and so that's what perkins during prosecution during the examination when confronted with a totally different issue about whether or not they could anticipate can bocce that endpoint changes so the question for the public is looking at the intrinsic record as a whole how do i know where it ends because there's no disclaiming and there's no explaining there's no harmonizing because there simply is two to reconcile the two and give any deference to them if it's clear that for whatever reason i understand this was an ex parte proceeding but they didn't see a disparity or discrepancy between the two n your view just as kind of a legal matter that you create definite and you need a clear disclaimer or lexicography or is the standard softer than that i don't we don't need a disclaimer  this case i do believe there is a disclaimer which occurred in this case we have a lexicography issue where the passive link wasn't defined the passive link doesn't fall in the specification passive link was introduced perkins showed now if you take that intervening device and you put it on a card internally that's what perkins showed as its internal which the passive link language was introduced to overcome and there is an admission in the perkins and i would go so far as to say that there was no inconsistency and there was no ambiguity at the close of the prosecution the record is very clear that it ends at that i and even if you put the card on the inside it's going to be considered the peripheral of the device and when importantly i think the try to the court should look at the fact that in the amendments when the to the joint appendix is unfortunately rather long i thought that there was in fact some reliance before reexamination on some of the figures and it explains some detail in contrast the app can transfer digital signals between the fax only transceiver and the computer in accordance with african specifications numerous claims and is delineated in figures to  something in the neighborhood of these claims the claims that are at issue and you want to do something that meets all of the other claim limitations in the claims so the digital and everything separation is between the passes length and the computer well the the answer to that is in simple terms is that i'm saying that i've got all these other limitations in there just like you said now i want to know are there additional things that i can that i want to market and as we're sitting around and saying well if we put it outside the box that clearly everybody agrees is going to be not a problem so let's just put it on a card and put it inside and so it looks like on the outside of the computer box it's just the port and this is there so that can't be infringement well that isn't frenchman if you use the guidance of the prosecution history during prosecution but that would not be infringement if that was the question being asked looking at the definition as it turns out from the reexamination so there is a practical significance as to whether or not something can in fact some processing elements some intervening apparatus some intervening device intervening circuitry that intercepts modularly the modulator process the signals or the other way they put an active component between the fax machine and the computer and so in one instance i can just get around it people who are thinking about having to write a computer is the permit the way the case was presented to judge start he found he did he had two terms past a blink and computer and found them independent not kind of independently indefinite each her computer is a familiar term with the ordinary needs so i'm wondering if it's necessary to hold computer indefinite if we hold passive link indefinite and the question is that one could have just as easily talked about the entire phrase which includes both computer path of late and computer and not conversation because my my st concern was when my colleagues raised that they wanted to have the term computer interpreted is that as a general matter this court has been very clear when you say computer it's a generic computer so how are we going to ask this court to say it's computers indefinite and the concern was is that because of the fact that it's the passive link as it's defined as what is ns are have to be relative to something now in hindsight the way you phrased it is would have been easier to interpret is entire phrase the two terms only get linked to each other because of the fact of the definition of where the computer starts and where the computer stops so when the normal sense you know it is a computer and it's described as a general computer and there's nothing special about it but it's that connection to it because most people would normally think that it's like oh i plug it in what does it mean i plug it in and that's where the problem arises and is the question the judge stark asked which was answered in the affirmative was you know is it and so that framed up the issue that those end points are important and so i suppose you could find passively by its help indefinite if it's indefinite with the explanation because it didn't say where it was supposed to end and it's kind of a you know they became strangely inextricably linked but i understand exactly what you're saying and i sympathize with you because i had the exact question we should be framing it to the if the term passive link is found to be indefinite because it's endpoints cannot be discerned as to where they what the end point is on the computer and that would solve the problem and argument that if you look at the language of the september th two thousand and two filing that gave rise to the problem in that it actually does  say that the passive link goes all the way to the input output bus and fact it's being misread because the language is only about the data s it doesn't say that the passive link actually goes all that way and that indeed other language in that same document seems to reiterate that the passive link ends at the interface well inconsistency because what happened was and it was not just talking about the data i mean it has to talk about the data in the context of the data flow through the past but remember what we were this is in response to is that we have a situation where that intervening device was put onto a card and put inside the computer and in response to that the applicant made clear that even if you put it inside it doesn't matter because the at the context in which it had to obviate that internal configuration of perkins and you know when you look at perkins and you look at the language in columbine for example the facsimile device may be provided on a card for location in the computer i mean it's exactly we're talking the same thing and so what does it mean that it's at the end of it it had to be the i o bus and they distinguished it they say it explicitly sure  no it's always in discussion of a physical connection and i don't think that there's any way that that would happen fact checking equally possible is just  having not looked at the turn times in there because this is an issue as presented i would think it would raise additional issues your honor simply because there would need to be a receiving device inside the computer which process the signal before it got it is the computer might be stuck on the outside yeah even if it's like on the outside it's still intervening between the fax machine and the computer it would be a signal processing device that would be the i don't think it could actually work in a wireless fashion i think it actually has to be a direct i think it's very ok otherwise the intervening device thank you just want to point out because there seems to be some discussion or interest in the the notion of the one line disclosure in perkins that it can be in the computer and so i would point that what the applicant understood by this one line disclosure and it's one of those sort of patent lawyer techniques where they say at the end of their patent immediately before the claims by the way we could put it in the computer and so what the applicant was left to guess about that is that it was a card because the perkins card was a unique card it was nothing that anyone had ever put in a computer before it was a device that had special processors and that that was plugged into the computer interface and so that's how the patentee addressed that by saying that plugging it in the box it still is not part of the computer it is a peripheral to the computer was the language adopted by the patentee and this was a distinction that was noted in the specification so for example if you look at the eleven patent columns six lines twenty four through thirty seven they talk about the present invention is mounted upon its own printed wiring board internal to the computer that's my editorial but it's a printed wiring board and arranged with in the p c type computer and electrically connected to the internal facsimile modem and it says alternatively but that is not what is claimed what is claimed is a passive link and the end points were always crystal clear and i appreciate just right so you're asking that very critical question because there is never a single instance  the p tab in the decision on appeal and so there was some discussion by the district court that this would have been nuggets ory and i agree with chief chief judges protests analysis and frankly we would invite that analysis under sections one of twenty one  three it's not an issue and the p tab specifically said we find unavailing the examiners allegations that statements made during the the prosecution to overcome a rejection perkins allegedly conflict with was made in this proceeding and ninety two perkins did not teach or suggest a direct transfer of digital signals in light of its analog only emphasis on the original configuration to overcome a prior our rejection so there is explicit finding by the p tab that the perkins reference did not anticipate contrary to the nugatory dicta from the district court did not anticipate even claim twenty seven