may please the court of the first and primary i submit issue in this case is the issue of claim construction the relevant claim term is different types of modulation methods the court construe that they are much english methods which are incompatible as to why first the court was wrong this was a statement fourteen years after filing not that that's controlling but as it was is a was here the prove that it didn't happen here if you can i ask it seems to me that there are a number of different kinds of things that might go under the heading of lexicography which maybe have different standards one is when the claim language does have a independently clear ordinary meaning or specification defined meaning and then you need a particularly clear form of  quality definition to overcome that when you add claim language or change the claim language and that claim language is you know presents a real question of what few means then you might call drawing on the prosecution history  to not just say different methods but different types of methods and that they then explain why they were doing that well the problem with that is it didn't clarify anything under any standard it substituted a word which has no say why i believe the other one is right at the moment but what it did was that it enabled rembrandt to commit and argued to the jury a further meaning as if inserting limitations into the claims that it has to be  which are entirely not overlapping there's nothing like that in the specification and in fact the specification teaches that the methods can be overlapping because it discloses examples that are overlapping they're all but i would submit that that has to be something that's clearly done that would be a disclaimer the court didn't find disclaimer there's some argument back and forth about the in the brief why would that not be a definition of the client again because it's a definition it has to be reasonably clear precise deliberate it doesn't address what the patent talk about at all which repeatedly is in compatibility and compatibility is the purpose of the patent it's described ultimately as one of the objects it's mentioned seven eight nine times  the remarks section in the office actions on what more should the applicant have said that would satisfy you that they were being very clear about their intentions of what it means to be a different type of my fallacious well i submit if they were going to have that be definitional assuming this isn't good and what if i were a bit good yes enough if that were going to be definitional they should have explained what they later argue is that families don't have any overlapping characteristics that is not explained it's inconsistent with claims in the patent claims twenty six and forty three specifically are a situation where the different modulation method both include phase so that it's further inconsistent with the claims as well as examples that are given in the patent it doesn't address the purpose of the invention and the  notion of no overlapping characteristics being used to modulating that came up in the trial under the heading of applying the already adopted claim construction and you didn't at any point th say we need a new claim construction your honor came up first in the context of infringement testimony having nothing to do with whether the prior art satisfy any definition but that clearly ought to have the same meaning for both infringement and validity it should if i can address that the way that it was utilized the infringement expert dr morrow testify that the accused bluetooth product methods which were not overlapping and therefore in different families we have no problem with that we didn't in the new construction it's a not sequitur to include from that as is now briefs that the prior art because it has overlapping methods can't be in different families they still can be in different families and the witness testified dr goodman for cept for samsung that they are in different families we had no reason to ask for a further construction at that point because we didn't know that then at the end of the trial in the briefing the further argument would be made that different families can only have not overlapping characteristics the testimony by dr morrow on infringement has got nothing to do with whether or not the much relation methods in the prior art bore patent which are overlapping still can be in different families and in fact dr goodman testify without contradiction that they are he testified that they're in different families explain why they're in different families he wasn't cross examined about that and no witness got up to testify for rembrandt which is very significant here it sets this case apart from cases like apple versus samps on no witness got up no evidence was put in on behalf of rembrandt on any of the five propositions they raised in their brief they didn't put in evidence to say that bore doesn't work because it doesn't have not overlapping methods about that they didn't put in any evidence they didn't cross examine him about it while he asked them is whether or not it was cited that the patent office which was there's no contrary evidence in the record on the issue of war and revers five about how reversion is disclosed in bore for purposes of the two claims in the five eighty patent and he also relied on the bore patent which of course itself extensively describes that particularly in column you have evidence you're expert says one thing the other side has an expert that's another thing they don't up and or does it a couple different places say some negative things about end the summary this article is discussion of the special considerations in media access protocol strengths and weaknesses should allow you to select the best protocol to match your needs that is not criticism it's not discrediting  things that the other side's expert was pointed out so it's possible to infer that the jury read those references describing the polling by up and or and took that into account when trying to figure out that references in a teacher way context with that kind of language talking about options pluses and minuses that don't call something inferior don't criticize discredit or otherwise the or otherwise discourage investigation try them all consider them all i would say as a matter of law this court's precedents say that can't be a teacher way and therefore it can't be substantial evidence to support the jury's verdict could you get to the marking issue that's not a legal issue that we have to wrestle it is if i could just say one thing first your honor because i know at least two of your honors were involved in the avid case having to do with harmless error and if there is a moment i would like to address later why the evidence that would support the points in their brief and the liability question you at least in this brief a couple of times i think i checked referred to a new trial request as well as substantial as long as the affirmed of non obviousness but even more that all of the evidence on these issues is the air but it's from samsung going the other way there is no evidence to support any of the points raised by rembrandt and therefore under the footnote  claim forty your honor no because this is a situation where the court below on the summary judgment motion found and this is in the decision on summary judgment  that mean that language would have been crystal clear for the current purposes if it had said they don't contest that the shown product is covered by claim forty what is this business about it relates to claiming that the wife high standard as it relates to claim forty i guess submit your honor if it is seen that plane of conceives own sold products as they i don't know what else to say your honor except for the fact that the judge made findings in connection with the summary judgment decision that we have to live with the court found i submit this language says the court found a clean forty's used  didn't at trial then later there was evidence going the other way suggesting that it was not the right is not because no there wasn't your honor because just because of the summary judgment motion we were not allowed to put in any evidence on clean forty i understand but i think your adversary tried to get put in evidence on whether zone practice claim forty i'm not saying that you were required to do so i'm saying i think your adversary put in evidence saying that zone did not practice forty i don't effective well he didn't say it was preserved he understood that we intended to appeal that i submit your honor that the summary judgment motion is what we have to deal with that's what addressed claim forty the motion was decided against us i think we would have gotten settled i don't remember anything like that and frankly your honor i would have considered that inappropriate to do in light of the summary judgment motion that ruling and maybe we didn't like it but we needed to live with it so we told the court we intend to do appeal that ruling we considered to be a ruling on an issue of law which the magistrates decision is it's a ruling of law he decides that it's appropriate to withdraw the claim and that that removes the marking problem and we think that that's what the the issue perhaps a novel issue for this court is whether a disclaimer like that which it's perfectly ok if the patentee disclaims for the purpose of  what's the i mean trying to think about how to interpret the marking statute for this disclaimer situation i keep trying to think of the scenario in which or would not be relevant to explain why when there has later been a disclaimer the public is harmed by the absence of marking at the earlier time that it should have occurred  even though that claims not assertive even though the claim disclaimed in a way that marking statute is designed to get i believe your honor that the marking statute is designed to give the public a right due to the failure of the patent deed to advise the public in the way demanded the public owns that right by virtue of the statute and to enable all who violate the marking statute to eradicate the policy  marking statute by eight days before trial putting in a disclaimer makes a mockery out of the markings that mark and that's ancient even as two products quite quite different from the product that should have been statute i think the statute requires that the public in any forum is entitle to rely on it and like trying to eradicate inequitable conduct six years after not marking any days before trial  the tributed five and a half cents or so per unit figure and just multiplied it by the march fifteenth two thousand and thirteen number of sales and subtracted that out that would cure the marking problem honor there were the what two hundred ninety million sales here and they and the attributed and the five point seven million dollars in damages and you can figure that about five  four cents per unit i think and if if the record said there were forty seven million units sold before march fifteenth twenty thirteen which is i think that the complaint was filed then you multiply those two things subtracted out and the marking issue would be over i believe  as i'm following you your honor i think that's right the idea would be to take the marking sales from the appropriate period apply the determined royalty to that that's the amount of money that's attributable to the mis marking subtract that out this claim but then there's also this should the effect of the failure to mark the devoted to just the claim or a claim by claim basis or should it be and so it's unclear to me too whether that issue would need to go probably did i don't believe the district court having done what he did needed to reach that because the ruling that he made took the whole marking issue out of the case and therefore the extent of the impact and remedy didn't need to be addressed so if you find as we said not to show that there was a marking violation not by this claim or it would need to go back it would also need to be determined what the monetary impact of that is and how you calculate that in relation to that and if i remember right there's at least in one area some precedent maybe maybe you can clarify that distinguishes claims within a patent for marking purposes and what's asserted i'm thinking of hanson and crown package and where  method letter claims ordinarily not don't generate a marking requirement but they do if there are just some claims in the same patent but hansen and crown packaging i think say something  but only the method claims are asserted here so we don't need to worry about marking that's a way of saying maybe you do look inside a single patent sometimes for marking purposes to distinguish claim well certainly i think you have to do that to see what was as i understand it is that in situations like that that's a situation where the marking statute doesn't even apply because all the claims asserted were directed to method no i'm not sure about that because i think the same kinds of cases that your honor is referring to talk about situations when there is a mix of method and apparatus claims and i can't tell you as i stand here what the impact in those cases is of the mix of claims i just don't have that in min distinguished the primary reference for that there were central to the case and just just to be clear we there was a general verdict only on so we don't know which bases the jury adopted so that for example if the claim construction were set aside we couldn't just affirm because the jury might have latched onto that particular basis in deciding what  or or what for did or didn't teach and not the other basis that that's exactly correct your honor we have a what samsung versus what apple versus samsung referred to as a black box verdict we have  general verdict on the issue of obviousness in our favor so under the in the recent in bank ruling we presume all facts in our favor and there was that there were facts substantial evidence to support four different outcomes that would have resulted in nine obviousness of these claims the first one that applied to all the claims was the master slavish the principle reference or did not have a master slave although their expert at one point in time actually suggested that it did in and he lost all credibility quite for quite frankly in the case he took the position at sixteen fifteen sixteen fifty one sixteen fifty three and it's sixty ninety five that bore was actually a master slave system he was then crossed on that very issue and he conceded that it wasn't it sixteen fifty one three sixty sixteen fifty four he acknowledged that it was a c s him a slash c a protocol that was used to control access to the network the reference he relied on for his motivation was the up in the reference up ender teaches a way and it undermines the motivation to combine in a teaches a way in ways that are very clear it persuade me that there is a motivation to combine without really asking a teaching away question that teaching away is about the evident sharee basis for upsetting and otherwise compelled inference of a motivation to combine agree completely or are there two different issues in the jury was instructed on those two different issues in this case it and the teachings of up and or impact both of those what situations and that appears a twenty four twenty nine the first two twenty four thirty three at the third there is a table at twenty four thirty four that actually compares the master slave or polling with the c s i'm a slash  cia which is what born uses it's got an up arrow it's good in every single category the polling is not it has i think two good up arrows but it also has three down arrows which means poor so in addition to the other disparagements that we see in the document itself there's there's additional things that are shown in the table about prioritization about robustness things like that that clearly ph away and in addition to that we have a credibility issue that goes that really a central in this case with respect to dr goodman or his testimony on these very points especially on the master slave but really on everything that concerns or he was not a credible witness that's issue number one issue number two different types there was substantial evidence on that point dr morrow testified that there are three ways to vary the characteristics of a carrier wave for modulation purposes he said you can vary the ampl phase in the bore reference in addition dr morrow offer the testimony of the counsel reference which is that and he did this is part of his infringement test it's a ten eighty three he said that the way i determine fifty six and dr goodman is asked on cross examination and he offered that that was a different modulation type than the p s k but he also conceded that both of them used p s k and with respect to p p m he offered that there was a fourth way to with respect to different types of if we're talking about different types the comparison that dr morrow used was to take a look at the first modulation technique and see whether or not there was there's an overlap and in the example given in the clearly they're in different families right there's no overlap here that's a way as part of my infringement test i can tell you that you know there's no overlap in so and he did that for the f s k and he did that for the p s k that appeared in their devices that's used in their techniques and so to answer your honest question there might be different ways to characterize the families but what you're looking for at the end of the day according to dr morris testimony is whether or not there is an overlap or not and if there is an overlap then it's not in different families according to his testimony if we could talk just briefly about the claim construction the claim construction was based it and there's a very good discussion in the order at one thirty seven i believe through one forty four talking about the claim construction and it was legally correct it was based upon a definitional statement that was made during the prosecution and there's been a lot  of suggestion that there was something sinister about what happen but if you that if you take a step back and look you can see that there was a rejection that occurred at twenty one sixty five with respect to some of the claims in an objection that occurred as to some of the claims not claim one if you look at twenty one seventy one you can see that it's the sui act reference that's actually used that's part of the discussion that is being used in the rejection and in response there's an amendment that occurs to claim one even though it was allowed and it's clear when you when you connect the dots together that the applicant was doing the smart thing they were trying to distance themselves from the civil yak reference which used both frequency modulation and so they put in the different types of language along with that statement to make it very clear and make it crystal clear what they were referring to which is different families and modulation those that prior reference that they were about recursion with respect to reversion samsung just didn't put on a clear and convincing case their testimony was ambiguous it was conclusory it literally was about one question didn't refer to any of the passages that are found in the bore reference for support for that in their appeal briefs they now want to cite to other passages but that was not before the jury and what they want to do is supplement their presentation to the jury by saying you can just look at these other passages i'm bored even if you look at them if you take a hard look it still does not do the reversion that's required in the claims with respect to so we act it's clearly hindsight reconstruction and with respect to claim twenty one of the two to eight there are literally taking limitations and saying where is the spawn of prior art where is this found in the prior art that was their entire invalidity presentation they never explained why it would have been obvious to put together all three it really does it goes to that and it also explains really the context that we're dealing with here if we can just take a step back and their position was that claim forty was much broader than any other claim in the case so broad dropped about five claims at that same point in time and it was a just before trial there was also because the i p r had been granted with respect to that claim in and had been denied with respect to the claims we proceeded on that's how we picked those claims to go to trial the i p r was result he is just adopting and he is just denying their motion there's there's nothing in there to suggest that he was granting summary judgment in our favor both parties proceed to trial both of them think it's a live issue in the case we put on evidence and you know they marking was a live issue in the case they had x they had an expert report that was going to talk about dr goodman was going to talk about marking he didn't offer any evidence trial was he going to say that claims other than claim forty covered was once going to be here in the trial claim forty was never going to be here you said they cannot we cannot rely on the marking of failure to market a product covered by clones claim forty we offered evidence from from our witness that said that we didn't believe that there was a mark you know the gratian with respect to zone and it wasn't specific to claim forty they put on testimony through two witnesses through deposition mr wo hundred thirty he says we did not include the marking provision in the agreement however we didn't believe that they had any products that were covered by our products they put on testimony from another what is the legal there's a big old decision by the court a live issue that went to trial legal determinations can be made in denials of summary judgment and those issues can be appealed so long as it's a legal issue our court is held that it has in the claim construction contest absolutely your honor i don't know if it's gone beyond that really i mean the general rule in the in the midwest peco cases you don't get to apply the nile of a summary judgment that's i mean that's what this court has said that's what the supreme court has i want you to them to get back to your zone was practicing claim forty do you agree with that because i didn't see you in your red brief challenge that when they brought that up in the loop we we did not put on evidence during the summary judgment phase that there was any distinction between claim forty and you know two point eleven g products we we did not offer any evidence at the same judgment we did contend that there was a factual dispute on the claim by claim issue which is what judge the magistrate judge said in footnote four seven of his opinion that if in fact i were to adopt this approach that there is still a fact question that would arise as to whether or not this claim is distinct from the other claims or not and  so that's what happened that at the summary judgment phase we we did not offer affirmative testimony trying to to show that claim forty was not met i don't think they put on the evidence evidence at trial because they didn't want their witness subject to cross examination that there were additional products that samsung sold and or friends i mean i think that's that's what happened just trying to figure out with that if he disagreed with churchill strap on his ruling  disclaimer would is it your view that the question of whether or not zones of products practice claim forty needs to be sent back in and findings made by the judge or do you agree with the other side that you don't dispute that in fact zone's products do practice claim for i think to the extent that there is a live dispute it would be on the claim by claiming i think that would be the right  and the question that i asked assuming that marking is ultimately a problem here is there information in the record i sort of assume there is because you know how many of two hundred ninety million units were sold and multiplied by something you have the dates of those sales and so you can figure out how many of them were cream march fifteenth twenty three yes yes your honor it's a pure accounting function that that the court could do or the district court judge could do but i don't think we can do it because we don't actually have exhibit ten of the wide scene which i think is that document because that's under seal and therefore not available on the pacer i suppose we can get up and i don't think we can do that  i see my time is up unless many other questions thank you very much your honor a few things first of all i'd like to remove this comparison again to what i took to the apple samsung the recent decision where substantial findings are preserve evidence is presumed there was a witness in that case who testified a cobra or copper in was his name on behalf of apple which who was in very substantial part of basis for finding substantial evidence to support to support the proponent there's no witness in this case they did not put on an invalidity case all they claimed to have is what they think of endor shows and what they think they got from goodman who they choose to characterize as not credible up ender does centralized data acquisition system where peer to peer communication and global prioritization are not required there is no statement in here that is a teacher way as to up anger and to find that bender is a teacher way as a fact would be inconsistent with the cases from this court that i referred to earlier  o we're back as far as plain construction is concerned if the claim construction is wrong because it doesn't address the in compatibility issue which should have been addressed then i believe again under this court's abah decision there's an absence of evidence that would otherwise support the jury verdict substantial evidence there's no evidence that would support the jury verdict and the case needs to go back on claim construction at minimum and i think all the evidence is the other way goodman did testify about reversion counsel doesn't refer to many other pages of testimony that we referred to in our brief and the reference itself clearly teaches reversion as far sui act is concerned there was testimony about  disclosing the address limitation by goodman and why it would be desirable to make the combination because of power savings so all of the the other issues that are raised the evidence is soley the evidence pro through goodman and the documents there was no contrary case presented it comes back to the claim construction whether the right construction because of what the patent specification teaches is that different methods means incompatible methods you'll find that repeatedly throughout the patent particularly in column one and column two were talks about the problem to be addressed and solved and that's what the whole point of the patent yes and this whole business that came up and council referred to it again about the need for in compatibility total in compatibility that's not in the construction at all that's something that councils brief made up after a trial based on the testimony given by morrow on infringement not on invalidity he never touched the bor prior art reference so that all of the testimony about incompatible methods that's the money all the argument about incompatible methods is a construct based on irrelevant infringement testimony and then click and then synthesised at the end of the brief into the meaning of the family claim construction when there's nothing in the record that supports incompatible methods and the judge himself didn't go there are you know how to keep a