consolidated for argument purposes they are sixteen one four one two case versus ford motor sixteen one six four seven is ford motor sixteen one seventy fo pace versus ford motor company reddy let me just say at the outset that we made a determination early on in this proceeding that there was another overlap between the cases the most efficient way to proceed would be to consolidate them for purposes of argument and you may or may not disagree but that's where we are but it would be helpful i think to me and to the rest of the panel if when you start to raise an issue or discuss an issue if you could certainly identify what claims we're talking about what pattern we're talking about and even which appeal we're talking about occur that's right because this method claims the circumstances where the transition does occur and so in method claims there are times when the method is satisfied in times when the method is not the key to your it is that you have to have an active step you have to perform the because the term setpoint is not a value dr severance you could have simply put a value into that claim he could have put a point he could have put a number but he didn't use the terms and that sepoy has to be limited and the meaning like an increase of the considerations that does it but the fact that within that system there is an algorithm that says when you exceed the certain point turn on the compressor they needed for other reasons and so there may or may not be satisfaction that claim when it comes time for infringement but the point is you have to have that structure there to have to have the comparison that it's made and then the actually it's that transition that's a very important for us we know that not only because of the language time but if there is some time for it what if the condition is satisfied and rollover exceeds a set point the transition occurs then in fact that would satisfy the claim doesn't have to be every time we had a debate in one of the district court cases where we of took us to task for that but i think they got it backwards we were advocating must at that point in the district court said no because it doesn't have to wait you may have other commitments that intervene so as long as the condition is satisfied sometimes it's always it may occur as long as you have a system that does that comparison and affects the transition that enough the court bloke dad the claim language in the wearing implies for example claim line and said that that claim language itself tells you what the setpoint isn't defined in terms of turk turk right and then that claim tells you you know the action that could occur is actually sat forth in the language of the wearing clause so that's what i go by why do you have to read in that the transition will occur when the where in cause itself says what action is going to occur that's an excellent point because clearly one is perhaps the most descriptive if you want to put it that way the claims that we're here to talk about when we look at claim twenty three the about seven point we have to have the transition concept in the going to give the court an example why the board's construction socially strips all the meaning of this claim imagine we had a system where we had an electric motor electric motor would be on when the load is below any arbitrary value and the engine and the electric motor would be on when it's above that value and then they would both be on one of the above into you know it strips the claim within a meeting it's no longer a method of goal it's just an arbitrary set of conditions and that's not what the claim says the claims as a method of control with discrete steps that have to be satisfied and so like taking this arbitrary dow you and imposing it on the claim they've taken the concept a set point away and what we have now are just a series of values that don't give the claim any meaning i'm going to ask you to move on now because the clock is running and i think there are questions perhaps by the panel on the separates good reference including on the battery transition point there's no comparison and even so one of the things we can talk about the claim construction is the fact that even if we don't go so far as to just to have the transition requirement in the claim construction nobody disputes that a comparison evidence that this sixty to ninety eight is used for any purpose there's no algorithm there's no comparison there is no without you ation of it it simply says aspirational e this is a good place to put the engine and then what so dr severance and they say which i think is correct that the two are not mutually exclusive so why is what given us in combination with their reliance on dr davis the expert on the other side sufficient to support support of substantial evidence jan regardless of seventeen just all pointed out has to do with charging the battery has nothing to do with switching modes certainly nothing to do starting the engine and in fact if you think about it the engine already has to be online so what that passage talk about is that the engine is one thing and it's driving the car and the system says hey do i have enough energy left over here to charge the battery that's all it says it's not switching modes it's not going from motor to engine or internet motor it is simply asking that fundamental question the board takes that courtesy of doug it's his declaration they said well look there's some recognition that torque could be used well perhaps but it's a recognition that tool could be used to decide whether or not to charge the battery not whether to start the engine not whether to switch modes not all of the other things that were cited in the climb so the intellectual leap that the board asks us to make without what i don't understand as i read your specification and when you do i understand what road it is according to your specification but when you're trying to determine when the pattern talks about terminating what the road load it talks about pedal pedal position for determining road so road them is determined using a variety of factors pedals ition is one of them that the drivers commands are one of them there's no question about that but it's more than that imagine you were going to be wearing the patent i the pattern actually doesn't tell us how to drive robot so road is a well known concept it's we had a lot of debate in from the peta about whether we should go ahead and put in bids that makes up road load and everybody agreed you don't need to do that because those ordinary skill use the view was completely unacceptable and we see that over and over and over again in the product to cordell let me ask you going back to the severance key point again the you were touching on earlier this three four seven patent itself does and i'm thinking here in the this is the three four seven pad a ninety six column twenty five lines eight through thirteen and perhaps similar provisions which i will read at a ninety two column eighteen lines twenty five through thirty and a ninety three column nineteen lines thirty six to forty one that that seems to be a nod to the proposition that twenty five most that the there are what we have is that is the later characterization of the nine seventy using hindsight and unfortunately uses some of the same language it's in the three four seven patent well as the same inventor  then mean something well what he's saying is that it accomplishes some of the goals in accomplish it using the engine and insufficient insufficient reason the question though is not whether an accomplice of the goals of questions how does that doesn't in the way that doesn't suggest that you're using torque actual control input what it does is that suggest that the speed system was pretty good it was pretty good so when you use a speed system it turns out that in normal high speed separation of the prior art of the patent doesn't doesn't change what was put out there to the public so the public didn't have the later characterization of the nine seventy patent before the three four seven was as some kind of an admission because we have the same inventor who said three four seven and the nine seven zero you know i suppose that he could have been sufficiently explicit rise to that level but i don't think that's what we're talking about here he simply recognizing that in the nine seventy in using its speed based system achieve some of the same results and if i could just cough out a couple of quick points here i wanted to address the other what i thought wrote they confused the output of the engine with broke and it's a profoundly wrong thing to do and it's really a damning aspect of the of the board's decision the question here is not what the output of the engine is the question is what do we do to turn the engine on in the first place you can't use the output of the engine to decide when to turn the engine on because it would never come or it's a it's a nonsensical circular argument if you're if you're looking to see when the  whether to turn it on it'll never turn on because it starts out by definition at zero the board made a fundamental fact error and that's admitted by dr davis appendix twenty eight one two can you move on to the battery limitation i know the clock is running i can i don't know how consequence this has in the scheme of things but i'm claiming twenty three the board seems one things that troubles me is that the board seemed to be focused entirely and needs to be charged at least on some occasions it ten to twenty percent that's why you seem to be making an argument beyond that in your briefs which deals with the former portion it's like a two part limitation in the claim right so asking the claim talks about the difference using the difference between factoring point and rode low detergent battery it's how it's charging the battery did you argue that in relying on limitation below i think that said at least one electric motor detergents a battery you're saying that's not disputed i mean i guess it depends on what issue i mean it is certainly part of the point is certainly something we don't think that the board proved and  charging the problem is they don't evaluate the first part of that as a if i can call they don't evaluate turning on the engine in the first instance with relationship to the sepoy so it is true that in the line seventy that we have the passage of cold seventeen that talks about using excess energy from the engine to charged about that i don't think is in dispute what i think isn't dispute is the fact that the board doesn't tell us that you you ever evaluate the road him the other side references of cool provision and nine seventy that i don't think the board looked at but again it could be because you weren't really making this precise argument but they do talk about proportion and column ten and seven precisely about when the vehicle starts down the hill the up your lips his foot from the excel or aid or kinetic energy of the vehicle in the engines excess torque may be used to drive the motor as a generator so as to charge the batteries that seems to ok so it is conventional to use excess torque from one of the engine or energy usually is talked about in terms of power so it's conventional use excess power to charge the battery because it's foreign it's so essentially out there and  you have systems like the assigning prior art where the engine is always one thing at a high cost that's what it does and so what they do is they build you from it if it's not needed if that power is not needed to drive the car and then they contribute power back if it the great brief is it not appropriate for us or it wouldn't be here for us to given the board's conclusion to go back to the citations to the record that you have and that your friend has and to reach that conclusion the conclusion of whether substantial evidence supports the board's conclusion i think it's an obstruction issue i think if there were very close calls if you had a coin that was very similar to three others of the fully analyzed you might be able to do it but generally tells us than than what we have here the claim three talks about a threshold that used as part of this limiting the rate of change of the engine in relationship to the battery charging issue it's a very complex but very specific issue and the five minutes left thank you distinguish any of the pieces of prior art because they all clearly show a transition also and any event the board's construction step one is correct clearly under the broad it's reasonable construction we've heard some dispute and my friend's argument regarding value v point they've never spewed at that part of the construction before the plain meaning of suppling is just a value that's been pre determined that's what the board found in that part of the construction is never been contested said tork value right i talked about yes and that was they originally been disputed and the stuff we can be a reference point it could be an operational point or it can be a transition point and both the claims and the specification of the three four seven pattern are clear on that but the plain meaning of suppling clearly doesn't require a any time in the range of less than step point you employ the motor to satisfy that range the pitch the second element is employing the engine in between the old load and the maximum to work out what it doesn't say employing the engine at the pay yes i am how do you respond to mr curdles point about how this language that you rely on in column twenty nine sixty four through sixty seven or so about the  only in the near percent eighty of its most efficient operational point the sixty to ninety percent sentence how does that show that torque is actually being used to control when the engine is turned on and off why isn't that just a byproduct of using speed for example because it says internal combustion engine is running only in the near vicinity of its most efficient operating point so the internal combustion engine is run only in that most of fish in operating point and then it states the most efficient operating point is the sixty percent to ninety percent of the maximum torque output so it's telling you i don't run my engine until i don't start my engine until i hit that sixty percent of what maximum for that speed and it's amazing when you compare the consistencies between the claims that the nine seventy patent when it defines the range of which i mean operate the engine uses it in terms of maxim maintain that speed up the hill so what the drivers do they push the pedal down more to more to work with the engine to maintain that thirty miles an hour going up the hill and that situation i can't use speed as my speed hasn't changed have but i need more torque for my engine and that may cause me to switch from my motor operation to my engine operations or i have to use torque like did the p tab rely on besides this sixty to ninety percent language lines eleventh fifteen which also shows the starting characteristic because it shows the internal combustion engine is operated only under the most efficient conditions most efficient conditions being sixty to ninety percent of maximum to says when the engine can be used efficiently that's in that range the engine is employ talks about using that same official range to determine when the engine is a ploy it also relied on the emissions from the three four seven nine seventy that he knew what it was talking about it wasn't just any patente talking about a ran a piece of prior art he was talking about his own patent he knew how it worked and he described in the passage that the nine seventy patent operates quote the internal combustion engine only at the relatively high torque output levels exactly what you're saying that sixty to ninety percent of it goes on to say when the vehicle operating conditions require torque of this approximate magnitude the engine is used to propel the vehicle he goes further say when there is less torque required the motor drives a vehicle so it's clearly showing that it's torque based not speed based and it's clearly showing that the to water systems verse about in the clear water source of the site for them that one is three ninety four fed appendix six ninety nine seven o five twenty ten so that's a nonprofit centricity well there's also completely distinguishable in that case you have a situation where there was a prior art apparatus patent and then the patent issue was a based on the apparatus claims not by reading the claims of the patent hierarch they did it by reading the claims of the patent the patents own description of the prior art in finding it in hand and so the court reversed and sent it back because they found that it improper anticipation out analysis because an anticipation analysis you're supposed to compare the claims of issue to the prior art just not to the pads description i'm so i have to two questions one relating to this turning on the motor issue how again and this is for the benefit of the uninitiated namely me how to get the speed translate toward value power vehicles to that's the basic equation i want somebody werner's on the air is talking about a gas pedal they're asking for power torque they're referred to as kind of twin sisters they're very similar but there are some different there are differences between the two and so power equals tor times speed and you can work that equation of the speed related to poke it or my second question is this assume for the moment that one word to accept your argument that the bumpy  ski dealt with the one nine and twenty three i don't know that's right but that's what i have marked so it does yeah yeah so you're saying bun b reads what i have it marked one in twenty three so i up with severance because the battery charge limitations right here severance fee clearly shows the battery charging limitations the court referred want to example which is the coast of the first three examples where first of all we think the timing consideration and that makes sense because any to get your whole idea of these systems is to use the motor to supplement the battery so i use the motor to supplement the battery a low rolled over fireman's and it very high road of requirements and so if my battery isn't charged i can't use the allen asked peter drive at least one electric motor charge when the so isn't that more limiting no because all it say is it's going to you're going to do it when it's desirable to do so you can't take the employing the engine when the road those less opinion page and fifty four but there's also extensive expert testimony i guess and the expert testimony is if you're looking at the fourteen twelve fourteen fifteen appendix that's at age sixteen twenty three through sixteen twenty five a sixteen sixty four through sixty six eighty seven six zero four three seven six eleven seven three eighty through eighty one eighty fifty forty six through fifty one and a fifty seven seventy and i believe that's expressly from lee when you know you're going to charge the battery wrote the lesson so when you know you're going to do it officially it was earlier in the board's opinion they do refer to you're only going to run the engine from sixty to ninety percent of maximum torque you're simply cutting those two statements together or can i move you on to the final point i raise with your friend which is claimed three and these three eight have yes why isn't it a really good the most appropriate course for us to take given the absence of any kind of analysis by the board to be manned even if we were to agree or be inclined to agree with you that if we were to wage this evidence in the first instance you may have the better argument why isn't it really our yet we don't know what facts they relied on to support that conclusion so hopefully process possibly evaluate their analysis to conclude whether or not there was substantial evidence they say nothing that's up to the courts discretion other than substantial evidence which is up there in the record  be a different matter but that's not what we're talking about here we're talking about his later characterization in the context of writing the three four seven patent and he recognizes that some of the concepts of line seven what clearwater says that you aren't supposed to use those that let talk about a transition point and then when our league said well we see the transition point over and over again we see it in the sixty to ninety percent we see it be that there is a lower bound we see it in kerosene because there is a figure there but look at that very carefully there is no one our service in any of these prior art references that say that you look at the torque and that you do something it doesn't so there is no comparison at all what we have are the nine seventy is the sixty to ninety range but it simply tells us that that sixty percent of the total torque output of the engine is a hugely in them if you look at the three four seven patent it talks about much lower threshold to be used to turn on the engine there is no suggestion anywhere that you would run setpoint and one hundred percent of the capacity of the engine so it simply doesn't fit here it was an aspirational statement and seventy there was none of the support that you would need there is no algorithm the himself or his students tell us you can't mix was good that's why they had to go to the sub optimal approach because they couldn't do it but be putting that aside what bumby is doing there is deciding which gears to choose in order to stay within a and then you have power which is the combination of the two but they are profoundly different concepts and we know that because the experts agree that they were profoundly different concepts but what about i think your response was mr moore said that he wasn't relying on saying speed is the same as turkey was saying there was two different troll imports and severance pay well that may be but we have seen no place in severance where that torque input is being used we see speed we see speed explicitly we have his sixty to ninety passage that says that the engine is used in that way but you wonder that is an engine sizing discussion the question is how big an engine could you pick so that our speed based algorithm will put you in that range that's what that discussion is all about it has nothing to do with turning the engine on it has everything to do with picking the sizing up with mike just so you can get the battery charging limitation and spend some time talking about don't just depend on the the notion that you're going to do it efficiently we have to look at what the prior art tells us what the priorities are so if we look at a twenty one the board's opinion that my colleague