we will proceed first do discuss the issue of claim construction by each side giving broker on behalf of appellant in t p turning to the first issue to the court asked us to address claim construction your honor in the case there are really two terms primarily the issue process all of these appeals where we believe that the board applied an improper claim construction and those are the terms electronic mail and then electronic mail systems and they're obviously related but those are the two terms we are familiar with this court's precedent  and their interpretation isn't the most reasonable in light of this patent specification specifically in this case next and they're not trained to your honor maybe they are all rolled up all in one but there is two components to the br interpretation it does have to be reasonable and then it has to be in light of the specification which tells us we need to look first after we look at the plain language is such a singleton that's right your honor and i don't think the director look at the head specification in this case at the very early part of the specification there's a definition of electronic mail that's provided and it says electronic mail systems have several common elements that must be enter and then it goes forward to identify the four elements that we are just that this court adopt is its interpretation of destination address and identification of the originating process or a subject of the message and then finally the message or message text or something really or something to be mailed mr perot or each of those things doesn't have to be entered the fields just have to be there right isn't it the case that i could send you contention that they're in the formatted document that it's going to be called an e mail has to have those four formatted elements in it can be some of the elements could be empty but the e mail message itself has to have those four would transmit the electronic mail one for a and originator one for a destination one for a subject and one for the message text and if it has those four formatted elements of the senator you can turn to the notification of the sen or it might not have a subject in it might not provide the originator information example the page back in the day would be sent to a pager and usually would just have a message and it does to nation what do we need to know the phone number to which of the  sent but pages back then often did not include who sent the page so it wouldn't have a originator information either it likely would only have destination information and then a message sent to a number o again in art in the specification we're dealing with here there's a definition provided that defines it to include the four elements in that particular example it wouldn't have the four elements because it wouldn't have a subject field and i guess you're using the example where transmitted for it to be an electronic mail message it would still have to have each of the four components but to two for it to be sent obviously the system needs at least the destination information here's one of the things that i'm struggling with  to requirements for fields as this example indicates then i feel like you're on better footing so i'm just trying to understand according to your argument which one it is if you're saying sure lexicographer but you're stuck with this whole  explain to me how i should think about is what your argument is not that we are arguing pure lexicographer your honor but the specification goes on to explain that the individual user doesn't have to feel then it will type in each of the fields it can be filled in by the computer for example oftentimes in email systems today i don't have to type in the originator information my email system knows who i am and just fills that into the email message before it gets sent so  response must be entered was that computer could do the entering like for example with the senders information and so it must be entered me it's got to be filled in that's why i'm having a little trouble with what to do about th this case your own again if it goes back to its broadest reasonable interpretation in light of the specification when there is a definition in the specification i do believe it is unreasonable for the director to take an interpretation that is beyond that which is defined in the specification destination address the only was that it's just not a reasonable interpretation and sure as heck is brought in but it would read on painting and messaging and everybody agrees that that's not what these claims pertain to the point came to email they can't have it both is it too broad and not consistent with the specification and the second point you raise or whatever interpretation they pick they have to apply consistently for all purposes when they're applying it to the prior art and when they're analyzing our square behind it but we don't definitely make  court is inclined to adopt the director's interpretation of electronic mail system then it's hard for us to understand how our square behind evidence doesn't meet that definition so i guess yeah i think we w  cleaner this court previously had a chance to visit this term in the research in motion case and it came out with an interpretation and we've we've consistently tried to urge the patent trademark office in this re exam to apply that interpretation decision was it supposed to be interpreted for all purposes and in this case the p t o is refusing to apply that interpretation in a re exam i don't believe this court has visited that exact issue as to whether or not there is a binding effect and so i do think that that is an language of the claim in that specification there has to be an originator in the center there has to be at least two processors in our view for there to be an electronic mail system that can communicate with one another and all of the claims actually call for to address on just plain construction so thirty and no further questions on that issue  one of the key disputed claim construction issues is the construction of the term email or electronic mail message and our view i guess the government's view of this is that if you go throughout the prosecution history and look at what happened before the examiner what happened before the board indeed n t p was arguing just as empty as a judge moore was pointing out that the language must be entered that's in specification that they were being there only once or cagr for that was a disavowal and that these executor but i think the board if you look at the board decisions and all the appeals where they addressed this issue i think what they said is look we know that it's quite common the ordinary person would know and it's quite common to send an e mail without a subject without a text you can send an attachment a blank email with an attachment for example you could potentially send an e mail that was anonymous but she would have to have it at a minimum that the destination address be entered so it would get to where it was going to go and i think they  think i think the point actually definition and i think the only reason that the board went through that you know exercise was simply to point out that n t p had not been a lexicographer with this language in the spec and they had not limited email they talk about email protocols they talk about known email and although they don't explicitly say when you send email you have to happen is for components to the extent that the ordinary person understood email at the time the prior art that was cited four elements are not mandatorily required this is it's true that many e mails may have the four elements but the board didn't review didn't view the term email in the claim as necessarily always requiring all four elements being  of all the board decisions they have a claim construction section and let me just give you for example in the twelve sixty three i've got it from if i go to page eight twenty four i think it's where they talk about nothing about testing nation address specifically for that and i would think the board would agree exactly with you your honor on that because if you read what the board said years to the extent that the claim talks about the written some of the claims you see the language originated information being transmitted through the email system in some of the claims you actually see the word email but i don't even think n t p disputes this that the originated information is the electronic message that we're trying that we're disk that we're talking about if you look at a twenty five what does the article now write and so then we get to e mail and if you look at the rest of that page if you disagree right and we say only only one right and the board says we don't think you have to have all four elements and now you've  but you would necessarily have to fill it as judge moore pointed out we can send blank emails but when we send the blank e mails from our particular user system that we have it's possible to send it with none of the none of the fields filled in and i thin attached final feature would think what they do talk about in the patent your honor which i'd like to point out as they talk about in there at the disclosure they say it's very user friendly in fact it's so to your friendly that text but it's an attachment we send it so when it would be something right so when when it arrives you'll get this email nothing's typed in but there's an attachment so it came from the sender it came to you the receiver and there is something there for you to i think it's fair to say to have the ability to have four fields yes that's there's nothing wrong with that it's a fair characterization but i think it's also fair to recognize that at the time when when this specifications was drafted back in the late eighty's early ninety's at that time common e mail systems existed and even in these inventors knew that there were many different types of e mail systems that that existed and in the background section of the description there changed there are common systems out but i'm just trying to say is that the time when this invention was first being drafted and talked about they'd everybody knew about e mail e mail existed that's not the invention here they're not alleging they never have alleged that they invented e mail or that they disagree i think if you read the spec i think it's a fair reading a reasonable reading of us back to say hey email existed at the time there were common systems for example like the t n t system there were many other email systems that existed as well they were all identical at the time and so they could all because a lot of times they couldn't talk to each other for example the port could have an email system here the p t o could have a separate email system and in order for those to you know systems to talk to communicate there had to be a common protocol and this specification actually might i see their argument but what the reason why i don't think it's complacent is because the board as well as this court by the way when we you know opposing counsel mentioned this court's related and t p and rim decision in that the research in motion litigation and in that case several claims terms were construed not this claim term but several clean terms and every time the court construed a claim term and look to the back and determine whether or not there was a disavowal or a disclaimer every time this court said there's been no disavowal there's been no disclaimer right through the night i'm angry at anyone and we're not saying that it is your honor we're not saying it does but opposing counsel n t p has repeatedly argued that we're somehow bound by the we have to somehow first of all the term e mail as you said electronic message was never construed specifically in this court's decision support or more when you look at what this court didn't that this is in for the terms that they did construe the ones that they did which is not will give your net and i think it's a fair characterization that an e mail can be said and you're right these items don't have to be entered but there has to be some minimum amount of some type of field to transmit the e mail in a certain form i agree and  you that there has been one dollar for you you've asked me a question your honor and you've said what about these four fields do at least at a minimum all four fields have to exist my point is the board said that they could have vision e mail systems where maybe at least one of those fields did not is without even specifically defining it whatever that is the prior art that's been cited in this case which talks about an e mail which talks about you know that it meets the require only to read it or that's like saying email is something that's a floating integration document which talks about the pager messaging system that they add people would walk around this was prior to the days of cell phones that we had today they had little pagers where they pick up they get a beat and they get like stuck with information or they get a message and all it would say is oh call this number so then you go back you make a phone call that's what pager messaging was at the time wireless messages that even under the board's construction and even in our conversation today would not be an e mail we don't believe that would be an e mail that would not be something that would be paging system and integrating it with existing e mail systems they viewed those things as different as distinct from each other they view these things as not the same the whole purpose of their invention at the time was to say hey we've got this existing pager wireless system that just this minimal amount of paging information and we want to somehow connect that to existing e mail systems that exist out there and so that's what was going on so clearly the inventors at the time and the ordinary of the time the in these two things is different now here we spoil forward and we're fighting over construing this claim term even though what is it really mean in the boards is oh all you have to have a destination address but in spite of all of that an email is still distinct from mere paging or mere text message if you will only be available in the war and the one common denominator that i can refer to today as we stand here is that in order for them to talk to each other because they were different in order for them to communicate they all had to conform with common protocols  saying yes to judge but i'm sure that we should take you shall know it by taking the following steps go out and observe on our own prior art references that we determine to be prior art then identify what is common in them with effect and i think if you look at this record that you have run of the you there are many examples of e mail in here now they don't specifically recites the components but they do talk about e mail as the term was known at the time they don't authorized do you i think you need to do it that's another question which judge moore is asking me and i think what you've got here in the record shows e mail was known there's plenty of examples of known e mails and all the prior and cited references and to the frustrated i'm trying to do the best i can to articulate what the board said and unfortunately they didn't precisely answer a lot of these questions however absolutely absent the e mail and your judgment if you really don't agree entirely with the board court get to the answer we understand it's difficult when you're saying it's not a crystal clear answer however just keep in mind that e mails not the invention here e mail was old that's not what they invented what they invented was taking existing e mail which what we do but the but we do believe the government believes that there is a distinction at the time between simply just paging and e mail that they're not the same and it really goes back to the perspective of the inventor because we're talking about a one thirty one that operate on different minimums but they all have to have compliance with the e mail protocols to talk to each other that's where the minimum is is can this e mail system work with other disparate systems scattered around to different systems can i get on that pipeline and talk to but even there specification talks about the disparity in e mail systems and using common protocol so very e mail the common e mail that they were talking about and they even took the next one hundred right exactly reference exactly exactly so even their disclosure says the kind of e mail that we're talking about that n t p was talking about at the time were the types of e mail that would communicate over common protocols like x one hundred answer and i understand it now to be whatever you define e mail assets exactly what is this filling in under the correct definition here if i just accept that even though they said something really wrong in their application all the facts are there exactly your honor i don't think you have to reveal a teacher or versed i think it if you think there's an e but it's not the type of error that causes a reversal it's a harmless error in other words well this is an example which read more just let's say you disagree with the statement by the board board said oh all you need is a destination address and nothing else and you say we don't think that's judge moore pointed out the they made findings beyond that not they didn't just say oh this reference just teaches a destination address they said this references reference teaches email for example used in the used in the x four hundred system or one hundred which was a common email protocol at the time which may have all these components even though the board said something in the construction that you may not agree with you because my concern here is i guess what i think i want to feel and see for example in two main we're back here again i think the exact the references that you do have in the record now may not mention the exact four components however when they do say our system works with the x four hundred mail system right there when the board says they point that out in the reference afghanistan my personal sure sure we're i don't think we're asking you to do that i think we do believe and i think we tried to point this out in our briefs and we do believe that throughout many of right now if not all of them there is disclosure and there are fact findings that link link it up to email at the time without discussion of the four items they do talk about like you said s m t p x four hundred common email i don't think you necessarily have to agree with the boards i guess incomplete explanation of its construction that is just a destination address what about these fields which is the real question i think even if you disagree with that you still can affirm because there's plenty of back findings and plenty of evidence in this record that shows all these references top e mail as it was known at the time and it was no and the same thing that they knew about that n t p knew about it so that all these other prior arsons in all these other references sixty three and it's approximately and it's mr ryan's dr ryan it in my opinion and it goes forth and he says as originally input to an e mail system by the sender the electronic mail message the following characteristics a destination address the define the person cetera indication of the center of this which may be added automatically by the electronic mail programming a subject field which may be blank and the input is message text so there's there and then i want to address several the comments made about the prior art this was sort of not claim construction but it is not our position think we believe x stuff four hundred is not electronic mail just to be clear in our there's a citation to our pad specification they say they  x dot four hundred does email if you read that passage they're saying they were disparate email systems out there they couldn't communicate one to the other extra four hundred was an attempt to allow bridging between those systems ext up four hundred w actually attached to the specification with specific software that allowed them to download email messages and that's actually an issue that comes up in this way behind this but they had to be reprogrammed to be able to receive electronic mail messages instead of just harrison references going to we're going to show here today is that the board's conclusions lack substantial evidence and that in fact the record is inundated with evidence that n t p properly swore behind the critical data october twenty ninth one nine right we would gladly take that at mr broker mention because from the square behind standpoint we think that would you know give us the case but we're prepared to argue in a boat and in fact under the email instruction set forth in the specifications or under the terms rather if you look in fact memo read entirely and read consistently and this is important one of the that to us the overriding theme of the board's decision was this notion that somehow n t piece of evidence was inconsistent with the contemporaneous evidence and i want to have one point your honor they didn't consider the full extent of what this memo says ok but setting that aside for a minute you got from this memo in reasonably interpreted reasonably understood we're talking about developing a system for transmitting e mail wirelessly we wasn't bill wasn't conceived six weeks ago i wouldn't concede that point your honor i think that record evidence is clear that they had developed much earlier and in fact what they were talking about doing the answering that he answered with your answer that doesn't that ok if i can get that the second thing your honor i think this may help we're talking about october tenth approximate give or take right the last one this page the first page sent says during the month of october and we have your honor in the record and it's evidence that i want to get to really quick because i think it makes our point the telephone you know integration document right the fundamental the board made for dismissing n t p as evidence is that it was inconsistent with the software and we have written software york much tobar five thousand nine hundred ninety that was written for the express purpose of extracting emails i want to add one other point and this is just of the you can see that there is no substantive difference because that it if you that's that's what we're here today the term messaging was used in software written in april one thousand nine hundred one and i'm referring specifically your honor to a fourteen twenty six thirteen a fourteen twenty playing on that your honor specifically as if the evidence shows that that issue that conservative limitation if you will was resolved and by the time early october came a long time eighteenth he wanted a specific implementation for their laptop they had resolved that finish yes although there are two separate inquiries as to what the term e mail means in the context of anti peace patterns in what the term email meant to these inventors in october of  context of these patents the other is a subject of inquiry regarding what the inventors thought the inventors didn't think they conceived of email until they conceived of peace construction of the that was their personal view of what they had conceived big they transmit a message but it's unclear whether that was your that the message was related at all in any way to e mail it was perhaps a five hundred character message but that could have been a long stock or a long text message sent from a corporate a different way of looking at it is saying that it what with what i do you or i do i do and i think the concern arises from this court in the parties trying to focus on how many fields have to be necessary for something to be email when the boards inquiry was more focused on it it may have identical fields to messages may have identical fields but one message would be recognized by a user's computer as an e mail would be sent to out of the another would be sent to a different only do maybe don't you think with what's at stake here and that's probably the most skilled people to look at all that her emails go up and then come up with a definition is the people i think that the p t o is an expert agency is is obligated to set forth in this area however i think that as mr market pointed out the board's decision indicates that something that has for example that works with a known email protocol would be recognized by one just a second because that's what you're here telling us you're going to argue about and i guess what i want to say is suppose the writing on the wall what we're going to say now ask to have these four parts what does that mean is where they proper in light of the construction they're asking for that we if we decide to give it to them that we should hold them to it you get your shot at your evidence i guess what i'm getting at is did they start only funneling evidence in under the board's construction such out something specifically tells him it informs him that those were in connection with the email project and again were within the context of conception there we believe that the record evidence you know definitely demonstrates that  need to be determined in the context of the record and we think that the record is very clear that the conception is there the issue is that we do believe under the terms of the timeline that we think we can glean from that nov twenty first memo that it's clear that the inventors had the point being is they had obviously conceived to be mayor and we believe that on the strength of the record in its entirety there's no substantial evidence to support their  a thank you your honor so i'm going to talk now about the telenor issue this is a legal issue question of law as to whether something qualifies as a print publication we believe that the board erred in finding these this one of a kind of loose kind of collection of documents it's not he identify a specific thing which teaches people that his expert opinions are not really says the entire document can't beat the seem to be authentic because the differences in the pages make it so you don't know which ones were in the original if any and which ones have been substitute or if all of them have been substituted and are in the there are some pages which are different other pages we don't know whether it's the smaller number of different pages that  specifically that was an example which the document in question was when was it posted on west lore lexus or the other resources here we don't know when this collection of documents that somebody first gathered in two thousand and five when that collection of pages ever existed as one depend this is a one of a kind kind of a document that's why into that into the laws of evidence one of a kind types of documents have special treatment because they're not they're subject to alteration and there's nothing to compare them with unlike a right if there is other evidence to say that those pages are what was deposited on a certain date if there was a librarian who had first hand knowledge from that telling or from the trondheim library in norway that said i am the librarian who worked here i can say these are the pages that were deposited on this day because whenever i collected them i put a mark on the size of the documents and it didn't happen or your facts are who testified there are i mean is that true only when you have facts like this with which are burden to meet its prime official case and it can't do it for one of a kind i can it's just based on a date stamp on the front cover they had the burden to establish it and they could have contacted the the authors and and gotten information as well and all we have all they're relying on is this th letter from the mr dirtiness which is clearly hearsay it's double hearsay he's offering it and out of court statement and he admits he wasn't even at the library at the time so they're relying on that too if you're you're  but i believe that's incorrect one of the kind documents just using judge moore's example with chism it's a collection of pages that have been compiled at different times whatever maybe dates stamped on the copy of the chism and in this discourse library i can guarantee you that the some of the pages on the wall street journal later provided a tip that's the only evidence as to how they look at the document not that they went to him did a reasonable search they spent millions of devout dollars to finning this lawsuit and they didn't find it during the lawsuit they find it found five years later so in this particular case they there's two competing declarations about what one awarded skill in new york would use and they treat the declaration from a third party who uses terms that aren't even in our patent specification over our specification define a set of terms that a person would look at and then you go out and see whether or not this reference would've been located this mr saul's started backwards looked at the title document then it's his opinion coincidentally that that's what a person of ordinary skill and they are pass right if it doesn't include exact words if i suspect it's automatically offline but it's just too broad you're our we're not again this isn't they admitted in the prior that the paging networks which are mobile data networks were not the invention here the invention was combining documents and i think that's a question of law and i think it's all tied up in that the question of whether this is a print publications which is a question of law whether or not it was excessive the close the closest is lister which says that this is a pretty publication issues a question of law and in the way that seemed to me the way this court analyzed it was a question of law not afternoon me please the court i will start with the question back question in re this year made it clear i don't read from it whether reference is publicly accessible is determined on a case by case basis based on quote the facts and circumstances surrounding the references disclosure to members of the public we greet the ultimate ref well they're not correct because the board weighed the evidence in the board's view the evidence sided with the authentic determination in other words  when they documented yes that's right the library's director provided letter we agreed that the letter was not sworn to but there is no reason to doubt the veracity of the letter and in the letter the director identified all of the factors and i'm not going to dispute that there could be a type of evidence a level of the never denture is showing where you know an expert went through and said you know what this doesn't look like a twenty year old piece of paper or you know what this print on this page is produced by different kind of and i mean we can imagine a lot of types of showings they could actually raise the type of doubt with the board and say you know what the evidence weighs strongly in favor that this reference should not be considered  yet and i my answer would be that i think that that is an open question of law i think the way the board looked at this was a weight of evidence under the preponderance of the evidence standard that they took the evidence that they had and they looked at what the evidence was that on right and the way it was presented to the board is basically two competing individuals one side the requester says here's the reference and here's letter showing its authenticity the other side and he comes in with their expert and then she says you know what i think some of these pieces of paper came from a different package and then the board says ok well let me see let me look at this letter and let me get the documents because i want to see the documents the board looks at all the documents in great detail considers every single thing d brown says and says you know what that's just not enough there are too many questions about the evidence that you've shown us and we accept the evidence we accept that maybe they came from different batches but here that's not enough to seriously call into doubt the authenticity of this reference but that doesn't mean it never will be it doesn't mean that if they contacted the authors and the authors say geez i don't think that's what was on that page or the evidence if you know what that piece of paper is not twenty years old there are definitely could be evidence that would work but if you look at what their evidence is it's pretty scant different batches of paper that tells us nothing terrible to the staples your honor we're not in the references of five there were a set of references that the multi volume set that was put in a library in one thousand nine hundred eighty nine there was an earlier reference that was i think two years earlier and that was bound with staples downside i think this court's probably familiar with some parties and staple their brief because i was thinking to myself i was looking at this ok there are lots of examples where the header is the same not as lots of other stuff in the document header couldn't change because there's this big table of contents at the beginning so the head you couldn't modify the words of the health raising really a red flag that something entirely different in the headers the same but almost every other word on that page is entirely different that we're just a work processing thing what i don't understand me going that's a lot of doubt in my mind you know that's a lot easier re typing the whole page and sticking in the page in as opposed to retype in the entire body getting it just right cutting and pasting photocopy it on the air that interests you just doesn't seem logical that counts it casts a lot of  things standing alone isn't enough to take it all together when it seems like a lot there's nothing on the other side of the scale except the p t o saying well that doesn't necessarily prove well let's look at what is on each side of the scale on one side of the scale are there examination of all the bindings she's the plastic with him to go through and then the board looked at it and said you know what we actually like to see the actual documents and then the actual documents were submitted the board took photographs the documents and the documents are bound just like the briefs that this agency presumption that something has to dig down from there for every page within it is from that same day well and i think what you need to do is get into the evidence and there was only two pieces of evidence one piece was that certain papers were from different batches and then the other piece that's the point i think that the rule that you just suggested your honor was that they would have to have the complete burden from start to finish that is we would never have to make any sort of percentage and they would have to create the entire case in your duties to come in and say look we want to use this determine there's really nothing to be gained here so they give us the best evidence they have at the end of the day the case is going to look the same to us and i think the way that you resolve the question that the court is supposed is by making it an issue of fact the fact finder the board here the agency looks at the like this and i could not find one we found one case where a reference had been faked in an interface in an infringement action and that the level of proof to show that had been faked vanished in that case the case was about what happened with the verdict  everything i've lived in trying to i know so i think i guess the best i can say is i don't share your concern with the header because here's one and i think you alluded to a judge more of it at the time these were made we don't really know how they were made we don't know if the bear their laser printer or whatever they were using couldn't actually put the head or way up at the top so the way they did it was first they print some paper with a header and then they ran that paper through your laser and every time they want to print it we just don't know and if somebody wanted to fake these pieces of paper i assume they would have had the wherewithal to make the header match the text the fact that the header doesn't match the t produced by some individual somewhere that was able to produce both your little me your thing i have to accept the fact that there are two different bonds and then also accept the fact that the person who made that document had the capacity to produce those two different who know the answer could also be two different people put those two dots together and it was a multiple higher well but at some point even if there are two different entities the ability to make the fonts existed and i don't know that someone had pages substituted without anybody being able to tell the other point is the copy that was used during examination the source of that was first provided to us by the reexamined question because they found this in the library and presumably photocopied it the copy that we have has we don't know what it looked like before they had access to it so the rich so called original is what existed in late two thousand and five and we were able to retrieve it from the library in norway so that's what the board looked at and i think on the other points that there's there's enough doubt here looking at all of that to tell the of the factors that even if we did have the power to rebut the dates on the cover we believe we met our burden now again it's my position that they have to take all the factors in the end of view first before they make an assessment about whether there's print publication but even if there is a shifting just of but just on the basis of the date stamp on the front throw ok i just want to make sure we clarify that your honor it happy to answer questions about other cases the one issue that we had and wanted to address specifically which we mentioned in the motions to consolidate was the this rejections based the five rejections the five one two patent cliff based on the lazarus patent you are there for independent reason why that rejection should be the rejection should be reversed first and foremost references not priority it was filed seven years after the five one twos affective filing date five nine two patent is a continuation patent and as a result should be given its effective filing date for purposes of determining what qualifies  you don't presume that they made the decision with regard to any individual claim that it is or is not entitle to be affected i will see appeaser a very different animal because the applicant has admitted by calling it a c a p that we've got new matter here continuation application specification is adenike or in this case virtually identical they're moved around where certain things are cited but there's no real dispute here that the specifications that issue are the same substantively that's  correct and in the in p p does direct in section two a one i think to a one point one one that says the if there is a claim the examiner has to go through and make sure that there is proper one twelve support and if it's not properly supported when they are then they would then they were it should then they notify the applicant that the claim of continuity is improper and that of course never happened in this case so we start with the presumption i think when issued continuation application is supposed to the specification first of all you have to start the beginning of the statute reexamination is limited first to prior art and second they qualify that there's only certain kinds of prior art and then third substantially questionability will not examine claims on the basis that one twelve unless they are a newly added claim not rejected didn't use the word rejected just so we won't examine them if there is if it is in the patent claim that's exactly what they did clearest evidence your honor is the interview summary that said eight twelve fifty seven to twelve sixty of the five nine two which is the seventy seven appeal that appendix and that was what was discussed during the interview was they applicant came to the interview with the proposed new claims showed them the new claims and then said here in the specification of where the claims are supported that this is the examiner usually resolve during the initial examination final resolution sounds as though there had been a challenge to them then was over can use the word overcome that that's in which they said because we know it's been overcome we know it's been considered as i don't believe the proposition that you must have demonstrate that it was something that was rejected and overcome but if it's you know you're determined that the  is virtually identical i don't know that it's it's not even contended that you could come to a different conclusion if you compared it to one and came up with one answer there is no contention by the board or anyone that you would come to a different conclusion if you compared it to the other so this is the interview summary document the front page the second page you're looking at at twelve fifty eight is the form and then the last page twelve sixty was what the examiner typed up because there wasn't enough room on the form and he says on twelve fifty eight see continuation cheap and if you turn over there it says that the second sentence says applicants showed proposed claims which are to be added in a preliminary amendment which deal with the wireless origination slash destination processor as well as a mobile processor with executes electronic mail programming applicant further pointed out support within the specification for the newly proposed features and then so on and apple finally up against representative will further discuss this in the considered an agreement i think i disagree because they said he agreement was reached and he's not agreeing that the applicant said that they would have checked the buck this agreement reached as used in patent prosecution indicate whether the agreement agrees with what the inside of the subordinate no he didn't and in fact there's a you know to the extent the board distinguishes they say there's a difference between reasons for allowance in an interview yet they don't say what those are get much clearer if this is insufficient there will have to be a lot more prosecution done in every case to forestall this kind of a situation because in every reexamination involving continuation the parties who want to challenge a patent on one twelve grounds will find an claims and all of those grounds and every case and so the presumption is that if they haven't rejected these claims for a new matter and haven't raised the one twelve projection for these claims that they found that they satisfied those requirements that  end to it but it's not a one in twelve reaction and again that's not an argument the argument is they can't do a one twelve examination not a not not a rejection not an analysis not their own rules as they will not examine a guess opening up the floodgates to be nice and because congress already made that determination when when the reexamination statute was considered in the late seventy's early eighty's there were lots of proposals and they said we want to limit portola and they said no right so if congress wants to allow there to be one twelve examination of patented claims they can amend the statute to permit but this this ruling effectively will allow that for all continuation cases and this  continuation according to the one twelve one twenty was supposedly a codification one nine hundred fifty two supreme court practice which says that a continuation is the same as an application that has been pending and you add it claims so if  five nine two patent it issued from application filed in one nine hundred ninety one that had never been abandoned and those claims were added in one nine hundred ninety nine we wouldn't be here because there would be no mechanism for them to challenge the claims in a one twelve should be a difference just because it it's a know your honor unfortunately again that was the sub subject of this court's decision and there was the continuation rules and so forth there still is still widely used in fact that one statistic indicates that fifty percent of all patents that are litigated  cases is to independent inspection it doesn't mean in any way on email for example and i guess my question to you is going to be a somewhat awful one it's going to be that one seems like something we absolutely have to address no matter what we decide the definition of email is because if that rejection stands it's true regardless of what the definition of the reality is and if that rejection is gone i would certainly like it and appreciate pressed to say it's wrong because going back nothing in the definit it the definition of email impacts the rejections based on perkins tone or and cole and the definition of electronic mail system impacts the rejections based on virgin ski because our main argument there is that the interface as to connect the r f network to an e mail system and what they find is a single computer and then the other rejections you can get the admitted prior view of paris and i think you're right we don't our argument is not based on the interpretation of email because they're taking our own prior art which defines or it has that all four elements in it at that section of the specification then the other rejections i guess that were any rejections at the admitted prior ar know the argument on that point your honour's is pretty simple that that board takes the position that you would take an r f network and stick it in place of a landline network in a specific place in our figure our argument is why would one of our new skill in new york do that when you've already got an r f network somewhere else there's no suggestion why you would just randomly choose that specific location to put an additional or a network in the board doesn't really do court to address because it may eliminate some appeals entirely if you find that tone or doesn't sufficiently enable in our information network then almost all the claims require that it could be an independent basis for reversal without even having to remain to consider whether because their invention has really nothing to do with an innovation related to e mail and if they take a reference like for and say we don't challenge ford on the e mail construction that's what we have a little bit of a hard time understanding because all ford was was a prior reference that said hey are invention is we're going to email and we're going to send him over the amateur radio network kind of like their disclosure in other words if we didn't really give him a chance to elaborate on  get to make sure that we're all on the same page is a list of the issues that have been fully briefed and fully argued that you think we should resolve anyway that basically they can even remey ending with the nuclear destruction of email doesn't end all definition of the e mail is so you would if we agreed with that seems to me that you would win those claims are rejected and that those claims would not have to go back as part of the marine colony you know what i'm looking for from you is what  i assume that we should reach that issue regardless of how we define email because whether they're in a single package or not has no relationship to the e mail question right and whether or not these things are all in the packet and there's been a lot of discussion today about whether or not you have to have an empty field moving back and forth or a field that was present you might have a packet with a label that says here's your subject and an old variable so the e mail moving through the system has to be blank subject line in the packet or you have simply no indication of subject whatsoever so the subject indicator is only on the user's computers but the actual email going through the system has no indication of all and there you come to packets would be empty so i can't  now i come back i of course would want that your honor but what i cannot do is speak for n t p and whether or not they would argue that the plurality of posts have to be home soon an e mail system which has to be a system that includes the four items they've use yes so unless there's any more questions about the specific references all moved back to the priority one twenty issue and we talked about the power to decide and whether it's actually decided on the actually decided question that is a question of fact in this court has said that pretty clearly and although in their grave brief they say that the examiner expressly and repeatedly decided they'd made here today that there was no express decision and it wasn't repeated it was just one statement in an interview summary and just as a matter of logic this examiner sitting in an interview and tepees counsel comes in and pushes across the desk i don't know how many hundreds of cla and says hey there is support in there there's no way that that examiner read all those claims and confirmed it right there live in the interview they said a lot of things we don't know what the agreement was you know we don't even know what the claims were that were shown to be examined nor do we know see as a matter of fact in the record is a decision a determination by the examiner and my point that the examiner couldn't have done it at the interview summary what is to them i don't know if they use those exact twelve seventy seven appeal a twelve sixty and the way the interview summaries are come out from the patent office is in the first page which is twelve fifty eight it's the summary the second page is the back sheet of the summary which is not relevant and the third page is with the examiner actually typed in and relevant to this about one two three four lines down in the middle it says applicant further pointed out support within the specification for the newly proposed features now we don't know what features those are and i i don't imagine  that is our and that the agreement was reached box provides almost no information to us about what the actual determination the examiner made here was now he pointed to rule five fifty two several times rule five fifty two doesn't say you can't look at one twelve that wouldn't even make sense right claim there could be one twelve six paragraph claims if it was true that we were not a little gesture and examine the claim the exact language of five fifty  the way five fifty two is written is that we have just like the statute we don't have a prohibition we have something that we're allowed to do so part a says claims in the next party rigzin nation will be examined on the basis of patents and pretty publications and then parts he says issues other than those examination in terms of a bar like the reeves am in a patent fair enough but whatever you do don't make a one twelve rejection and so we do something that he can extrapolate out to the equivalent of one twelve south you're violating that probation instead what congress said is you need a ticket to get in the door and what you need is you need a new rejection substantially question based on a patent or printed publication under one of two one of three we have that we've got in the door  there's a ticket we made it in that's what you need to conduct a recount emanation and you can't tell us oh but wait a let me show you logically how what you're doing suggest another problem which is not the way to get in the door and because you've done that you're out we use we give an example in our brief we say suppose we examined a claim in d c during the examination c g i what now that you know is this reference this claim is pretty unclear but here's how we're going to construe it for the purposes of this resume you might say aha you've just demonstrated that we violate one twelve second paragraph in this claim and therefore you've got to kick us out of reexamination because you can't touch one toy or if he has a one twelve six claim and we have to look to the spec for the corresponding structures they wait we can't touch one twelve and that's what you're doing here and in other words because it's not any entry level it's not a rejection under one twelve in this case if somebody litigated this case in the district court and they said you know this issue you know they've just collateral stoffel or there's some indication of what the exit patent office has done we're going to use it over here they can't we didn't want twelve rejection it's a different issue now maybe they could say because of this anomaly where they're continuations are always the same and incidentally they're not always the same not theirs but other people can file what they call a straight continuation but it can have differences just because the they have a fact situation where they can make this argument doesn't mean it should be a blanket rule one on the basis they even acknowledged that in the case of the c i p we can do this and acknowledging that proves that the statute doesn't compel the contrary when it's not a c ip because there's nothing in one twenty there's nothing in one twelve there's nothing in any of the reexamination statutes that distinguishes the ip from a continu but not necessarily for the claims it's understood that there's new matter in this case that's right and if any claims are reliant on that new matter right but to make that distinction and say open the statute and compels the contrary in a non si ip the statute doesn't even speak speak to the distinctions between the difference between a c ip and a continuation is just what they call it when they walk in the door but not until we verify it you're on not until we look at it not until there's an intervening reference that causes the decision to come before the exam or if they call the continuation we call continue if they call the shiite b that's what we priority claims even in a straight continuation when there is an intervening reference in this case there is no evidence that there was an intervening reference during the original prosecution so whether it was see ip are not a c r t there would have been no call in the examiner to confirm or not  not what you say we should not be read supposed the way they say it should be read it is the way i think it's unequivocally right to suppose that meaning supposing examiners that i consider one twelve i written description support for the for each of be permitted to do what they did here if that level of clarity just did now granted it was making a wonderful binding he wasn't making a finding of entitlement to priority is that alone enough of the distinction certainly if there had for example been a one told rejection that they had overcome such that there was a clear indication of the record that a particular disclosure did how everything in the claims in it and then they demonstrated that the disclosure of the great grandparent was it seems much closer to that i'm not going to give you a definitive answer because we don't have a case before us and we have not come up right out of your view of the case before us because we haven't decided what that agreement the salmon are checked off means so i need an answer from you because if i decided that agreement means what they're telling me it means that it will in order to decide that you would have to determine that there was no substantial evidence that it means to the contrary but they're arguing there wasn't so i think it's fair for me to ask you if i started them on this what should i do next well absolute positive confirmation of a determination by the examiner my answer to the court would be we don't even know what that scope is we don't even know what was in front of that exam and we don't even know if the details that were lacking in th now and i agree with that and i agree that when the patent office issues a pattern there is a presumption and that presumption is embodied in the presumption of validity but when it comes to reexamination what swanson at least made clear and i think what congress made clear is that in determining whether or not something's a substantial new question it's not enough simply to look to what we think the examiner may have done we've got to look to what is on the record and what the examiner actually did do because putting hundreds of references in front of an examiner and saying our claims are all patentable is just like putting hundreds of claims on an exam and saying their support for all  i disagree with the core the examiner summary sheet the agreement reached box which is on the front page we don't know what he checked agreement was reached about certainly the result of the interview summary it was not the allowance was agreed to we don't know that the agreement wasn't about the preambles we don't know that throughout this whole interview applicants counsel kept saying these preambles aren't limiting and sam are saying yes they are yes they are if they are and finally they said ok the pre that i'm going to write preamble eliminate and i'm going to check the exam agreements reached they can't come back and tell me otherwise we just don't know we simply don't know and that's why this interview summary doesn't bore substantially the question i think there's a way to look more fearful of an opening of the floodgates in the agency we are already very deep in the water but first of all i don't necessarily agree with you like in a way that i did i did ri for for the grandparents or great grand ole man in order to trigger examination under this scenario you need you just don't need a string of continuations if you're going to allege a lack of priority you need to demonstrate i think all i can say your honor is that whatever will be agreed with we do know what if there are if there are patents that we should have issued because there's a substantial new question because there's an intervening reference and there's a lack of priority i think the law is clear that those are the table or not and we still see a little uncertainty with the concessions n t p made and i don't know if those concessions are going to be playing a role in how they're going to respond that maybe if there are issues that have come off the table because of their concessions they can identify th evidence in the record to exactly what was presented during this interview it's the second preliminary amendment which is it a twelve sixteen one proof thirteen ten on page eight thirteen zero six the applicant says and  the independent claims one twenty five etc correspond to the in an independent claims presented at the interview on which the examiner indicated in the interview summary the agreement had been reached if you look at the interview summary again talks about which claims were discuss at is in the file history a nine five seven there's a place on the file jack of all patents where the examiner is required to verify the continuity status in this examiner verified that this application was probably continuation