may please the court with course permission i do have some exhibits that i think will assist the court but i'd walk through some of the language of the letter and my colleague if you don't mind provided two counsel for the defendants at issue in this appeal is the construction of two massive claims in two different but related patents the old one for patent is a continuation of the two machine the claim language specifically at issue is for step nine the validation step in that provides him materially identical language in both patents and validating receipt and language of the validation step itself is agnostic on whether or not the automatic shipping machine must perform the validation step or whether it can be performed by a human attendant and we would submit to the court that it's entirely implausible that the construction offered by the defendants and adopted by the court below that only an automated shipping machine should we completely agree that some of the steps must use an automated shipping machine and in fact we believe that it's clear from the language of some of those steps that the automated shipping sheen is must be using this contemplated the use but the specification makes very clear that the first eight steps part are performed by the automated shipping machine they specify it is highly it is clear just as clear that machine is shall and it has no storage capacity there's no there's no facility for storing a package as the core can see and there is therefore no inner sensors to detect and to therefore validate whether or not a package has been received by the machine for storage council we're looking at claims what there's nothing court below so significant the comment made thirty one ninety seven of the record which says but why would you think the law wouldn't be every step that equal clearly to the contrary your analysts focus on prosecution history if if that that has the court's attention focused and i want you to turn if you will to the to the the handout that that you have before you all behind number six is indicated right there in red what i want the court to apparatus for its practice the inventions are distinct if it can be shown that either one of the processes claimed can be practiced by blah blah blah him and the examiner went on in the last sentence there in red in this case the process for mailing can be performed by him a process in its entirety in fact a judge more under the cited m p p section eight of six point  is limited to in performed by a computer but then you would have been fine maybe that would have to reverse the restriction requirement you would have been good and it wouldn't cause the problem but instead you chose to use the language that says each step is perform applicant has elected with reversed because applicant disagrees with the examiner suggestion that the process i've submitted a process in its entirety claimed an independent methods one and seventy two can be performed by hand and in fact your hon each step has to be before my year and then having amended it to specify that one by machine and every minute of the prefer to say that one step can be performed by hand why doesn't that lead to the conclusion that the other steps are continued to be performed by the machine i see a now see the confusion here just died it wasn't amended to say it can't be before my hand that's what claim seventy two said when the traverse was made it said that from the beginning it said storage had to be performed by hand and and what the amendment was simply to break seventy two out from seven to ninety nine and make it a separate patent application a continuation application but you know i would submit to you that the the language used by the applicants here was entirely consistent with the proposition that it was for versing the proposition that it could be performed entirely by hand that's what they said and the red language beginning with the word applicant was how do i know that the plane at says claims seventy two before line storing insert an attendant so i think that might be why the court we're having a little confusion it looks like the attendant language was added to kind seventy two in th language jim that child i didn't read applicants to miss that if the method were performed by hand as the examiner suggests then it would not use an automated shipping machine as set forth in preamble the limitation was in the preamble it it's get made clear that the message uses the automated shipping machine it did not say that it uses it in every in in the every step of all it's not why isn't it properly construed to say that unless it says otherwise it's performed by the machine automatic in light of the specification that it is a part of and that it gives rise to it and that and that it forms the backdrop for a specification could not be clearer could not be clearer that the attendant will do not only just validation in general but the precise type of validation which is called out of the claim because you're opposing counsel argue that yeah validation is usually the list was that if you look at the forward and excerpt in the first or hand out a system for accepting and storing items for subsequent pick up mike mercial carrier the system includes safeguards which prevent unauthorized access to the storage area and will not provide a receipt to the customer until internal sensors verify deposits of the item and then the red language on it this is in bottom up for that abstract  signaling alternatively no storage area is provided instead the item is given to a human attendant such as a checkout clerk of hardware store of the like with the appropriate mailing label for validation of receipt item by the attendant your embodiment for and i pointed out earlier the figure that shows no storage area no internal sensors to prove to perform any validation  environment for figures twenty that was the drawing through twenty to illustrate a standalone automated shipping machine system shipping system constructed in accordance with a fourth embodiment of the invention goes on it may be that you may be right but the argument is based i think ultimately the argument of your council is based on the notion that there's a difference between just language that used in the embodiment and the language used earlier in the past well it takes care of it in the sense that this environment is read out of these patterns well it is not worth much there you could have this the idea i think underlying this reading of the bottom floor is that yes the attendant receives the package but they're not it still is another function that's doing which is determining that this is the same package that was for which the label was prepared which has to be done automatically even under embodiment for because that's validation that it's the spirit package which is different hypothetically leverage arguably from the receipt me sense of attempt three obviously this system is substantially first simplified from the embodiments described above the first three embodiments since the storage and validation process is performed by an attendant and you say validation process is absolutely all the validating that gets done including the validating referred to in the claim yes no action i do and to show you where the specification makes that clear that's behind tab finds this is an excerpt from the specification describing the third embodying not the fourth but the third  i have highlighted in red particularly important language the language that is important to the defendant's opens this passage at this point a very important validation step is performed in particular the system determines at step five thirty six whether it is receive the correct package this step is critical since it verifies the customer did not perform a package switch or forget to replace the package in the intermediate storage area for shipment or forget to replace the package here's the important thing such validation that validation such validation may be accomplished in several different ways in accordance with this invention for example in a embodiment photocell sensor may simply detect whether any package has been placed on the conveyor belt if so it is presumed that the package on the conveyor belt in the appropriate pack is the correct path with the appropriate imperfect job but the question still remains on the table and i understand your argument but then the question remains on the table as to whether what the clerk is doing in the forth and bottom it is equivalent to or is in addition to something that's done by the machine that fits within the terms of the validation described in the claim and my point is this the specification i submit to you makes clear that difficult to read the language of seven ninety nine the parapet which deals with all the embodiments inner sensors and which the machine itself validates and the language structure of these patents and the fact that claim seventy two was broken out and became two twenty not to not to grasp that the purpose of two twenty and then oh one for was to claim this presumption that when the preamble uses words like that using an automated shipping that every single step has to use it no i don't think there should be a presumption like a presumption but i think in this case you look at the steps it makes clear that there is require  machine unless the step says oh but what it sinks in being not performed using the automation machine and so we're not excluding the customer use of the machine in performance of the steps but we're saying that there step is in this case the specification discloses use of the computer but doesn't say that the exclusive way of doing it so why should i take an example of a specification which has a computer performing that step and say aha this means the computer mu is if the preamble doesn't create a presumption that every limitation has to do this show me where in the specification it says must be done by the computer because if the stuff itself just says validated and there's point being they told the patent office that each dentist performed now then you're even on your going to the prosecution history exactly i mean it does seem to me that the use of the term validation and validates is creates a difficulty for your argument with it's regard to environment for and that language that caught my eye is really not the the language you were quoting but the language earlier on column twenty five the retail clerk who validate to receive the package and provide an appropriate receipt to the customer now that sounds like it could reasonably be interpreted to mean that all of dates receipt of the particular package which was the subject at the whole shipping enterprise don't you think that's a reasonable reading of that language i think it is one reading reading but it well it's a bit isn't it the most reasonable reading really well it means and without the prosecution for mailing a parcels anomalous using an automated shipping machine when you started playing that way it implies that the following steps are going to use the machine not exclusively because it provides for customer interaction with the machine but it's either the machine doing it or a customer using the machine to do things of that country to the other guy who supposedly on the same side as you are saying there is a presumption and there's a couple reasons for that i do believe if you're going to put in a preamble that you  otherwise so here we have exactly that we have actually two things that i'd like to miss more than baking a cake using the fireplace start number one and mixing the ingredients together number two putting the structure of the claim that we have in this case and in this case when you're looking at the introductory language it says a method for man when using the machine and you read the steps and the steps are clearly things the machine is doing and then you have a step that says here attendant or a customer could do it a plane a reading about of the english is the one to come before the machine and where the applicant intended one not to be the machine they told you it to be an attendant or customer so  i'm not saying there should be a presumption in all circumstances it depends on what the language is that we're dealing with but i think there's something else here that's actually really compelling about just if we're looking at the claim language and this really didn't come out on the brief so it's an important point when you look at the companion claims in both of these patents and the two twenty and in the zero one four years of independent method claim and an independent apparatus claimed in the language tracks identically their mayor image claims and if you look at the claim three now on the two twenty which is what i'm looking at and you drop down to the last element so this is on the appendix j one thirty four it says actually a means for validating receipt  companion apparatus plane which is a mirror image of the method claim it should chill you exactly what they were intending to claim they were claiming a validation means later in attendance to re the passage that tracked identically to the met the claim so when counsel for you ship says our interpretation would not cover environment for our interpretation is entirely consistent with the companion apparatus claim and when you look at what happened here it's clear that's what the apple consent was because when the examiner issued the restrict your arm and said the method claiming the apparatus claimed you know needs to be restricted the applicant said no the method claimed this using machine and then the op can then added that would clearly drive you to the conclusion that the method steps are done by the machine except where they tell you not and that's consistent with the plain language and with the companion apparatus kinds then you go to the specification and you pick up on your honor's point where we have to look in the specification for things that are validating the receipt of the packages being the package for which the printed label was made and the only thing that does that express lee in the specification is the machine the attendant  with that the point i thought you were making with respect to claim three is it starts off saying an automated shipping machine comprising machines and the one thing that's clear is that a person isn't part of  i like your point better but then there's a there's another notion that i'd like to attack which which hasn't really been fleshed out yet today which is a huge ships argument that there's a problem that these claims don't cover embody for in this case that makes no sense because firstly you look at these apparatus claims three in the two twenty and twenty two in the old one four and they're both trapped in the way we just discussed which is a validating means and then this the attendant goes t you don't hear you ship saying that their construction of these methods claims cover environments one or two because they don't if you read embodiments one and two number one doesn't print the address on the printing label which is a claim element embodiment one doesn't calculate a delivery date which is a claim element environment one doesn't do any validation then you go to the bottom and two it adds printing the address on the mailing label but it doesn't calculate a delivery date and it doesn't do any validation so embodiments one and two are not covered by these claims either and you ship doesn't argue contrary to that and the third point about whether these claims have to cover all environments is the there are at least six issues patents on the there are dozens and dozens of claims off of the specification and there's even a pending application right now on the specific issue which the government points out in their briefs it would be nonsensical to conclude that every claim off of the s in the original application that don't get down to the validation step at all in the original seventy some odd claim displaying seventy two right in the in the previous seventy i think there are some that don't have validation in them at all and i  that so i guess what i'm looking for is if there is anything that makes clear that the validation which is part of the description of environment for is performable life human i've not seen that but there is a pending application right now at the patent office where i haven't seen the claims because they're not public yet so i think the but the get back to the notion that these claims don't need to cover for and it's clear that the applicant wasn't trying to get on the cover and body went for a no counsel said that environment for was the whole reason for these things but if you just look to claim three in the two twenty and claim to win the award for the clearly stated the relegation means in the attendance voice during which wouldn't be be satisfied without having to have any of those particular functions performed by the machine correct actually no your honor because the parties agreed below that the claim construction  eight so i understand the word you want to make this goes with the question of whether it's correct to say that the special vacation makes clear that the first eight steps are all performed by the machine if that's not true then that it seems to cooper started off early in his argument that it's clear that this clip the first eight steps to specifications makes clear those steps all have to be performed by machine what you're telling me about him bottom line sounds like the specification would allow some of those steps not to be performed by machine i'm not sure i would said that what i said is in embodiment one they don't even discuss that happening it's not that they don't discuss that happening by the machine it's not happening at all they don't calculate delivery doing that function the only the only thing where that happens where your honor's point might make sense as an embodiment to achievement in a bottom one they do say that the customer writes the address on the label what they don't describe at all how to calculate a delivery date and they don't even discuss the concept of validation in an environment to where they print the address on the printing label again they don't discuss and deliver calculate the delivery date at all or validation at all thank you very much and just like for the extra time i want to go straight to my friends point that claims of media gratis claiming to twenty kind of refutes mike argument that the embodiment for was intended to be covered by these by these claims in these patents you would be right if in fact means for validating receipt must be a machine if that is the if that is true as a matter of law embodiment for is orphaned it's orphaned in these pads and it's orphaned and all with the family of patents we haven't been able to find a case that says that either the cases that seemed to kind of edge up to that idea or were all  subsequent to the time this patent was filed or what but what do you think the means for validating receipt would be if it's not part of the automated shipping machine it has to be the human attendant  students in other words i think i think we can agree that when you have a machine comprising a the n c c has to be a need to perform by the machine a means performed by a human right well no your honor i don't agree that that's the case as as council at mit there's no law to that effect example and and your honor here's here's the interval to that validation is storage so every one of those embodiment both validate and stores the interpretation before you is that it is that these claims require machine validation and attendant storage so none of those embodiment are within these clinics with respect to the message with the exception of the message claim in