did next case before the court case number one applied one eight six seven motion games versus nintendo of america this is an appeal from the patent trial an appeal bo please the court i represent the appellate no she gets the p t o incorrectly found there was no prosecution history disclaimer regarding the claim limitation creating a database  stores the targets and no information about the object and our our understanding would be the letter your honor and a correlation requires that and so it is that matching which is correlation and which has been disclaimed in the in the final history the it in by way of clarification your honor machine vision systems often include conspicuous parks things like reflectors l e d s whose purpose is to improve the ability of the camera to obtain information about a physical object sometimes the computer must match those detected targets with previously known features of the real world object right and that's where would we get the difference between the on the widget i don't care where it is on the which i'm just looking for a gap in the assembly line where i look for the pattern and it's not there i don't think any correlation whatsoever that that example of yours right i don't think that where you're going to detect whether a sheet of metal has been folded and the way you're going to do it is by comparing with the pattern on the metal before and after it should have been folded you're going to look to see whether that pattern changed the in politics then it describes the scenario plot i can't have any knowledge that correlates that those targets with any real world information about the object i just can't know what they've been in claims so obviously believe in the claims talk about creating a database with respect to that database the court is correct that they debase has to be uncorrelated now some of the deepen three let me look your article further providing a pre determined database you claim three the pre determined database is the uncorrelated database i believe you're off ok just curious d the other happen to be called correlated you're dumping them into a database you're saying please don't put in correlated data why am i supposed to be impressed with that ok the reason the the reason it was extremely process is that the whole world was going in a different direction where the world was going was getting more and more and more data so that robots in computers could do ever more precise tasks so that's what everybody thought we need more data more data or more data if the concern i have is you know the use of all of this data maybe there's something interesting going on there but  character of the data being stored in a particular database and and it being stored in two different databases rather than the same database it just doesn't strike me as particularly impressive will the novelty your honor is that you could build a machine vision system that is based on uncorrelated data no one ever realized or thought that you had to do it and then if you have a claim to that then ok maybe that would be patentable but creating a database and saying it only has one type of this kind of data it doesn't have the other context and then all of a sudden telling all of us that that's a  i understand that's not technically what this case is about this case is the best disclaimer but i'm just trying to understand why a claim to a database claims in such a way is interesting it's interesting your honor because no one has ever thought of it before no one has ever realized that there are in fact useful applications from the un for related database i think actual substance of the database itself with that data in it i think they go to gather your honor if there's no perceived need for a database like that then don't one is likely to think that i can create a database in this man and indeed your honor we would concede that there is probably a relatively smaller number of applications for which an uncorrelated database can be used but the we wish is the accused product here is one of those applications but you're you've got the correlated to and the second database called the pre determined why i don't think the novelty of having them in two different databases the knowledge is creating the first of all the novelty is the combination of all the elements of course but i think what no one else had ever realized  does say that the specification discusses largely discusses correlated data bases and i will say i think that's where dr pryor was going with the initial claims in light of the rejection with respect to bales he changed his plans and directed them at the uncorrelated database he did it because he was required to do so he could no longer pursue the correlat of this invention comprising and then the language there is broad enough to uncover both correlated and i'm fairly that's not the issue i could have a final history where i say we have i think eight the clearest disclaimer there could possibly be which is the suggested database that the examiner proposes would be obvious from the bills paper is one which merely correlates towards to the object while in the president mentioned there is no such correlation although it could be done for additional reasons is noted in certain deepening claims but this would be another different database i d sound several times in the same part of the prosecution history that you are reading from right now you say that the database and the pattern itself the athenians for the attic prefer to a pattern database you say other statements we don't have to have a disclaimer in every single sons maybe will the court just read is an additional disclaimer but actual one of the limitations that you say you claimed in your comprising claim then then that doesn't give you the ability to disclaim some other thing it means that you disclaimed your actual invention ok but i'm not disclaiming creating a database which would claim which finding that the broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification that was a specification disclaimer this is prosecution history disclaimer but i think the result is the honour's motion games is alleging here claims additional are subjected to a disclaimer do so lead to prosecution arguments the disclaimer purportedly limits the scope of those claims and saves them from obviousness over  and ocean going wrong for at least three reasons first motions gave us motion games is asking this court to import into the independent claims through prosecution history disclaimer a negative limitation that effectively eliminate several of the dependent claims specifically claims twelve fourteen twenty and twenty three as an example and those dependent claims expressly require as part of the database the very subject matter yes but they seem about as inconsistent as they could be you're in a district court you said and your proposal was such that there is no correlation of the targets to the object in in construing creating a database of an object and that's exactly the position that that motion games is taking here but your honor the attempted interpretation in the district court not just the database and the judge excuse it was not just those words what we we never argued disclaimer in the district court we tried instead for a long construction of storing the physical arrangement or configuration of three dimensional space of two targets such that there is no correlation of the targets you have to look at the totality of the term that we were proposing you have to also look at the fact that that was rejected that was not adopted by the well in the sense of the court said that you correlated database both refer to correlation but in a very different context as part of a compromise construction remember and as your honor well knows in the district court when you're doing claims construction there's a lot of give and take back and forth and that's what happened here with multiple terms but the end result was that the court did not accept motion games reference to the three dimensional space and the mentioned correlation and in fact that was opposed by motion games as being improper in fact the district court went so far as to say that they wouldn't adopt correlation because that would require still further interpretation and claims construction later on and i'm referring  do they record it and you know nine thirty three to nine thirty five and then the court's ruling at eight twenty five seventy seven to seventy eight so i don't believe your honor that it is inconsistent with the who won and the trial court use the language without reference to our knowledge of the physical object itself in other words that the court specifically concluded that that we're talking about and uncorrelated your honor i would submit those two terms are not the same and this is one of the problems that we have here because motion games has even been consistent as to what the disclaimer is that they're opting for in the p t a what they said was that the disclaimer was without knowledge of or reference to the object that was what they addressed and only addressed in the p t and that's what the p t have addressed and rejected when they got to the district excuse me to this court they introduced the concept of correlated versus uncorrelated if you look at their home  of is broader than correlated or run correlated it just means you can't refer to any part of the object with respect to the database what your interpretation of i'm correlated i will accept their definition of  uncorrelated but without knowledge and reference if you look at the deep end it was like if you forgot what is the definition of uncorrelated that means you don't relate the targets to the particular object ok but not in the may two thousand amendment for the use of the database once it is for not talking about the database itself in fact if you look at the sentence immediately preceding that statement you'll see that they define the database simply as the patter nothing more nothing less when you get to the the arguments they make about the correlation language there i think you have to look at the totality of the amendment and what was happening they had of just gotten through amending the claims well for the independent and the deep end and claims to be abandon the reference to locations and to insert instead the reference to a pattern database of discrete targets object while in the president mentioned there is no such correlation and then they go on rather it's the pattern itself which now stands for the object and which is used regardless of a correlation to the actual object exactly why isn't that a disclaimer because regardless we don't care whether there is correlation or not and in the context of the argument it starts with regard to bales the bales paper does not disclose the use of discrete targets in a pattern as a data base line about the present  the present invention there is no such correlation even if you're right about regardless it's an x no your honor i don't believe it is in the context certainly not in the context of the total prosecution which is what you have to look at to see if there is a clear unmistakable context of the argument number one it says such correlations so what the such correlation doesn't say without any correlation it says such a correlation what does that referring to if you look at the argument that was being presented at the time after saying that bales and i'm quoting does not disclose the use of discrete targets as a pattern as a database they go on to explain what they think bales shows and whether it's right or wrong that's what they argue and that's what we look at to determine whether or not there's a disclaimer but he went on and he explained that bales describes spiral strips on and on cylinder and spots on line then they argue the detective portions of the spiral are spots are not then used as a database so the argument over bale's had nothing to do with correlation or non correlation the argument over bale's head was that it had no pattern in it they didn't care whether it was correlated or not they didn't it also said that bales the correlation or the excuse me the the sense locations that they were talking about in bales wasn't relevant anymore because they no longer had s locations as the description and definition of the pattern of the database they had amended them all to be a pattern database then they go on and they talk about what what what is the examiner think is the database made obvious obviously that's based upon the prior planes the prior claims that talked about sense location and they say that's not the database that's now being claimed and of course it isn't because now they're claiming a pattern database of discrete targets they then go on and they say that that suggested database by the examiner is one that merely correlates targets to the object so it merely correlates it doesn't show or teach a pattern of discrete targets which is what the claims were amended to be so that's the distinction argument over bale's then they say which merely correlates to cover that while the present invention there is no such correlation not abandoning all correlation but such a correlation but the argument in cut and then they go on and they say regardless of correlation bale's is deficient because it doesn't show a pattern database that's the argument that they made and you could not interpret this as a disclaimer because it would vitiate some of the deep end in claims that are still in the case and that were these are there by and by accident these were in there by express amendment the same amendment that incurred in included the pattern database are you saying that if the remarks here in this amendment were changed to say claims going in a different direction it would be inconsistent with the deep end in claims and it would be at a minimum therefore ambiguous uncertain and therefore doesn't qualify as even a delay of a really really  unambiguous language and in the prosecution history by the applicant is first of all it cannot except to me that's a hypothetical with all due respect because it's not that ok we're doing a hypothetical hypothetically if they absolutely said they didn't have a deep end the claim the database they say the database further comprises determining an orientation of said object with respect to sent said sensed a pattern of said first and second targets and further creating said database using the but what motion games claimed in their reply brief in that page eleven in the chart was that claim twenty the dependent claim was talking about a later and a different database and not the database that is originally produced and that's wrong because if you look at that claim the claim is talking about said database in the only antecedent basis for said the database is the database that is being created in the independent mind one and is the database that we're talking about here in attempting to construe so you've got a deep pendant claim claim twenty which is inconsistent with any disclaimer you've got one scrap of sentence out of  overall prosecution history a poem amendment the definition of what the database is that is now being claimed you got one statement i would suggest that that's an ambiguous statement it is not clear and it does not qualify as big disavowal a clear disavowal of claim scope in fact during the course of the prosecution the applicant this is after the minute the applicant was asked in the preceding office action specifically tell me the examiner what is the database and how is that database form how was it created they had a golden opportunity at that point in time if they had really a disclaimer in mind to tell the examiner what the database was it wasn't all databases that were patterns of discrete targets according to their argument now but they were something less your hand has have interesting question they are as correlated excuse me as uncorrelated and as the description in the specification on which motion games relies for the concept of an uncorrelated database that's column ten ten to twelve that's the only description in the context of i believe that figure five all it says is that if you don't know the exact pattern you take a picture of it you monitor the pattern to see what it is but it says absolutely nothing in that section of the specification that there can't be other things that are photographed at the same time that show the relationship of the targets to features of the uncorrelated as is the description on which motion games relies to support the concept of an uncorrelated big data base in their own pattern specific to your saying there something like semi correlated your honor i'm happy  if they want to interpret their specification just say that all you do is take a picture of a pattern and that and uncorrelated database that is done specifically by both ways and by and h uncorrelated it we made that specific argument before the peter peter didn't have to reach that because it concluded there was no disclaimer and we submit they did it properly but peter have looked at the specification the claims they look at the arguments and they concluded disclaimer i suppose that would be absolutely only some claims but in this situation where your independent claims defined the database as a pattern of discrete targets and you're trying to interpret construe that database and you're trying to say it excludes certain something you can't say that is excluded if you've got a deep end and claim if you do here which actually includes it because by definition the deep end and claim has to be narrower than the independent claim and has to include all of those limitations so what depended claim can't suddenly initiate the breath of an independent claim by removing a limitation you can't do that's that's tha completely wrong and i would refer the court to the appendix at page forty eight hundred eighty one this is the explanation of why the applicant for the change the change was in response to a one twelve rejection not the one of the three rejection the applicant makes it very clear there had been a rejection for written description so the applicant changed from such a pattern to sensible cations that's the reason are coming down the assembly line and maybe you're looking to see if the widget is there or not there it was my example before so if you're looking for an equal level triangle or neither is there it's not there and you know we're just there is not there or maybe the equal lateral triangle is at the top of the widget you know three inches from the top and maybe what you're looking for is whether or not the winter the standing upright or whether it's in a different story in tension so this idea of whether or not the sense pattern whether or not you're using a sense pattern determines correlation or unfair relation is incorrect it's the unambiguous unequivocal statement in the final history that says we do not have the correlated database like bales how do you deal with the dependent claim i don't think the deep into claims are difficult your honor we have set forth  and i think our explanations are completely correct that the every example in the db it claims is something that can happen down the line we all know that correlation can happen down the line that in figure five there's a lot going on in figure five which is a relation database i've been a part of you say it's a separate database that that information was the story or you could go back to the original database and you can make changes to be additional to the original database maybe you use the original database to do something and then later you change the original they have a scope of your negative limitation if you added in the prosecution's history is time sensitive like at one time you can never have correlated data but then sometime down the line it's ok we can have correlated data in our created database and their argument no your honor i do you think that the the disclaimer and it's always been about correlation there's there been any issue about what we were arguing was a disclaimer based on correlation is with respect to the creation of the databases that they have bases because it is one that claims require correlation crap i'm sorry are the dependent claims call for correlations several of them do drug which is exactly what the disclaimer says is that completely agree oh i don't know but the dependent claims talk about and adding further data into that database and that further data is correlated to that that's the question yes you have to i think second database now it says which i know i know for i know that the database in the first place which is which is referring to the first database you take a database and you create a second database is how i would read it i will grant your honor i don't think for which that does not work eight we're talking about the public notice function here of the prosecution history when you have a statement that said my database is not a database of bills because it's not correlated we have to respect th degree of your disclaimer and in the may two thousand amendment it didn't appear didn't meet didn't doesn't appear that it needed to go so far as to say our database is for over that there wouldn't be any need to overcome veils to dish and only say and not only is our claim directed towards uncorrelated but we absolutely cannot include any correlated behind what the applicant needed to do we would have chaos if disclaimer only applied in circumstances where after the fact it was concluded by a tribunal that that statement was necessary to get