t prior to its parts critical day in this case then the the record is very clear that the application at issue incorporated by reference the material that was necessary mr cordell seems to incorporation of this is that appendix eleven this application discloses a discloses number of improvements over and enhancements to the hybrid vehicles disclosed in the vendors and i'm reading from the wrong place my apologies the application this application discloses a number improvements over and hansen's to the hybrid vehicle disclosed in the inventors us patent five three four three nine seventy from the nine seventy patent which is incorporated here in  incorporation so the jurisprudence of this court has been very clear on that that when that applicant incorporates five reference he or she is given the benefit of that incorporation and we haven't nibbled at the edges we haven't we haven't detracted from it and the decision that we think is is foursquare with where we are today is the harare versus lee decision because in that decision there was the same level of incorporation by reference and then there was a later statement that said there are there are specific aspects of the prior of the prior disclosure that will be incorporated if you read and this court decided that while that second incorporation was arguably inconsistent with the broad incorporation that happened initially that we're not going to go there we're not going to start to nibble at the edges of what has been a very bright line and useful test so that when an applicant says i'm including the line seventy i get to include the nine seventy the legal requirements are very clear you have to specifically identify what it is to incorporating in here that was done by patent number it could not be clearer and then the second requirement is that the disclosure be available to those of ordinary school in new york again a path that is readily available so it meets that requirement and if we're going to credit the second sentence as somehow disabling that we're going to force the issue we're we're we're second guessing we're creating a trap for the unwary where every characterization of the reference could now be arguably a disabling characterization so in this particular case i counted forty nine references back to the nine seventy patent including specific descriptions of how the electrical aspects of the nine seventy patent or used in the what  clearer in order to defeat the clear incorporation by reference that is made so we can't simply say well there is there's a characterization of the prior disclosure there is a there is a discussion of it and somehow that would that would defeat it that simply can't be  different disclosures and they might be somewhat inconsistent with one another doesn't answer the fundamental question because we were turned to first principles what are we asking we're asking whether the inventor was in possession of the subject matter at a particular da and he shows that by incorporating by reference he shows that by pointing to the nine seventy patent and saying i am in possession of this material and it turns out this material has become an issue because ford says that it wasn't disclosed originally and added in there for claim of written description from perhaps it will or is it used for other purposes it could be lots of different reasons could you know just see if clear about the following and whether you agree with the first sentence  used the language of incorporation by reference so it might not in fact be talking about the relationship between the two documents it is now talking about something else something about features applicable i think you said in your grief a couple of times that's just the preferred about it that seems a little bit too narrow it might be all of the embodiments but even if you got a you know the combined document would in fact support the written description necessary to defeat the four fifty five application but having said that i now insubordinate do that analysis and would it be reasonable for this court to send exactly sure what i prefer therefore allow you to sort out the embodiments but that's not the question we're answering were not the question that the answer to the question we're not we're answering is not ultimately what is the best approach the question more answering is what did the inventor possess as of the dat that filing and as our as a result he's entitled to the entirety of what even cooperated by reference even if he denigrates a player even if he says it's not useful even if he says it's bad or you shouldn't use it in all cases but that's that's an argument that's going too far i think that what incentive would they have had to argue that point instead of simply saying we don't even get there well that was certainly their position is that is that the nine seventy one was not incorporated by referenc record they were given the record they were given didn't include that analysis but again would it be reasonable to use on the back of course use question correctly there is a separate analysis where we believe the board simply failed to reach some of the critical limitations of quite so for example in claim to ninety it talks about operating the engine at  levels less than the set point under abnormal intransient conditions and we believe the board just missed its they simply didn't do any analysis of things for example climb to nine the normal in transit condition and just to just tie it off to ninety three dependents from i believe to ninety two which also has the voltage limitation you and if i could stay with with the incorporation by reference it also bears mentioning that this is ford's burden so the way the case law breaks down on this incorporation by reference issue is that it is our burden to come forward with a with production we need to point to and so you you have the power and the duty to review it in the first instance and so forth burden remains they have a clear and convincing burden that the incorporate to negate the incorporation by reference and i think that i do think that's an important part of it  the entirety of the disclosure or if we're going to go to that second sentence we need to we need to go through the entirety of the disclosure and the disclosure over and over again talks about the fact that the sixty four patent incorporates the electrical aspects of the nine seven if i could just highlight one of them so it was the sixty four lines in column eleven and fourteen through twenty five which is appendix six twenty seven which is also in the eight seventeen application which is at appendix one one one seven five it reads the hybrid drive train shown in the nine seventy pattern has many advantages with respect to the prior art which are retained by the president invention for example the electric drive motor is selected to be of relatively high power specifically equal to or greater than that of the internal combustion engine and to have high torque help what characteristics of low speeds this allows the conventional the speed vehicle transmission to be eliminated as lies in tension with the already lead decision and we disagree with that the home and decision really turned on whether or not there was a proper identification of the material to be incorporated there was an ambiguity because of the way the applications were filed before patent application numbers were assigned to them and so in the later applications they referred to the application filed on the same date of this particular filing and that was no longer true and so that ambiguity is what the case turned on had nothing to do with whether the corporation by reference was was sufficient or not it had to do with the ambiguity in the filing of the application so i just want to put it warm water on that if you're from here from my coll with respect to the other issues remaining in the thirteen eighty seven if he'll i mentioned before a little bit about the abnormal intransient conditions issue that inclined to ninety for example it reads the method of claim to sixty seven address these in the way that they really should have been one of the meat channels the first thing they did is they included the idea that you can start the engine as and that normal or transit condition but remember your honour's the whole idea behind the comparison the set point is to start the engine so if you say that starting the engine is at that normal in transit condition you've consumed the condition under which the decisions being made you can't say that starting the engine below setpoint is ok when you're in an abnormal in transit condition and say the starting the engine is that condition it's a circular analysis that it really gets it's nowhere  and we there's a there's a piece of the prosecution history where the pieces attorney explained that when you starting engine there is a trans you get period after you start it but that doesn't that doesn't satisfy the claim the claim requires there to be an abnormal condition that allows you to start the engine below setpoint so that's the fundamental decision that you're making at that moment in claim to ninety but more to the point the the idea is that the piece had should have context and and part of it has to do with what the technology is that they're talking about and it has to do with our ability to look at their from the year and every the entirety of this record right that's true but again what we're talking about here is so for example there are also claims say for example in and claim to seventy nine that talks about actually says this is when you start and stop the engine that that is the that is the sum total of what needs to be ninety one ninety two one twenty five one twenty six to fifty two to fifty three to seventy eight to seventy to eighty two generally says that peter had simply can't make a decision they have to actually give us something to examine it cuts live for two reasons number one the abnormal in transit conditions the limitation remains the same that there is a distinction in that the driveability and safety considerations that we saw in the drivability and safety considerations that became very odd when you read that the p tabs opinion because they are that key on the idea that battery life is an abnormal intransient condition and that was that was something that surprised us when we read it in the opinion that they say that battery life somehow deals with safety or drive ability because the prior art talked about making changes to the system in order to enhance battery life  that in particular we don't think that there is any basis to extend the construction of our normal transit conditions to battery life and even if it is it's an example of the board not doing the work they needed to do to explain why that would be included because those two concepts simply don't have much to do in this context what would you think i'm normal and the conditions have to be so you could you could for example have a situation where the the engine suffers a fault and for the electric motor suffer some far out is probably a better examples of the main motor the main traction motor in that in the system suffers a fault and therefore you have to start the engine below set point because the vehicle won't move without it so that would be an abnormal in transit condition that large but you're not arguing that that severinsen have to disclose starting or stopping the engine in order to disclose  its abnormal entrancing conditions limitation that's true we believe that starting and stopping the engine is not an abnormal transit condition and that's to me perhaps clear in the last appeal because we have claims that specifically talk about starting stopping if you're out of memphis the court i'd like to start with something my friends that i neither side with which i agree he said the patentee has to show possession of the invention when he says something that i disagree with he said in this case he showed it by pointing to the incorporation by reference caused to severin scheme but by way of a little bit of background when the inventor first put this material in the specification was in two thousand and one that's in columns fifty and fifty one of what ultimately became the sixty four  no dispute about that that's when those columns first appeared and then when the inventor put the electrical claims into the patent later as an amendment in two thousand and six it's telling what the patent he pointed to to show support pointed not to a vague incorporation by reference cause and i agree it's very ambiguous you pointed not to the eight seven eight one seven disclosure alone but to the patent see point to the patent he pointed to those to those very two columns columns fifty and fifty  and that the fact that there might be some other phrases later in the in the disclosure and then that implies that maybe there's something you're not relying on for example particular piece it doesn't change the little bit different in harare itself talks about reading all of this in context as you always read a special occasion in context and in this context there are not two incorporation clauses there's one and it talks about incorporating as you say person of ordinary skill would look at that that incorporation as you say it talks about the patent and also talks not fence about improvements in the very next sentence it says where there are differences or where differences where there are differences between the two make the board correctly read that as saying differences are not incorporated and the fact that it doesn't use the word incorporation in the next sentence doesn't mean that it doesn't speak to the scope of the incorporation in a great case to look for for that proposition is the callee case and my friend cited in their brief in a footnote in callaway there was one sentence that talked about employing certain features of the prior art it didn't mention incorporation at all and this court said that read on the scope of the incorporation that determine the scope of the incorporation so merely not having the word incorporation is not dispositive it's again the whole context which harari talked about read everything in context another great case to look at i think is the husky case in that eight three eight f third at twelve forty nine where there were two separate clauses that talked about a certain prior art reference one of them said process references to the prior art are hereby incorporated the other reference said the prior art certain features are brought in or something to that effect and this court did not simply jump and say well there is a there's a holistic incorporation here so we don't need to look at the other one it looked at both in context and said that at least what we know is that certain things are incorporated that again supports the notion of this has to be a holistic inquiry which we submit the board properly did ford's expert came to the same  that a person of ordinary skill would read these two in concert and so the question then becomes once you read those two together is it sufficiently detail detail particularities and i disagree that there's some sort of additional burden here again it's looking at the context as a whole reviewing the board's decision to novo but it is certainly a luster that the three board members and for checks for all five person of ordinary skill would read these together again not the incorporation language in the three four seven it's the same as the incorporation language issue here right and the three for some patent yes yes and then we found that that that language was supposed to incorporate severance  in its entirety right we didn't draw any of these qualifications that you're trying to do i don't believe any arguments were raised and i don't recall the exact context of that but certainly in the context of this case the board looked at both together because it was paced that was trying to in this case bring in the incorporation to answer day what i think was clearly intended to be the support for those claims in two thousand and one so i would submit again i don't recall the exact context for what those statements were but i think certainly in this case that reading into is that he wasn't killed when there for that reason wasn't jervy exactly exactly and so what we have here are differences so we know that there's not incorporation in fall but even if we thought there were some amount of incorporation of severance he certainly the electrical components themselves those are different between the eight one argument that we could reach a determination on written description on the face of the material without having to read and i would disagree around i think this is quintessentially what cherry talks about that  the type of situation where the board is in coward to make that judgement in the first sentence is a fact question intensely factual question after this court is called a written description and we certainly didn't conceded at page fifty of our brief we pointed out that the correct procedure at that point would be to remain and for the board to address in the first instance but in any event we do think that we have a strong case that incorporating severin skeet wouldn't solve their problem for much of the same reasons we've talked about because there are so many differences and so the ranges you end up with are not sufficient support for the ranges that are alternately claimed and that's our position and i can go into that further if you like but our position is that should be for the board first sentence if you disagree with the incorporation by reference and so i wanted to make one other point my friend spoke at one point about if there is not incorporation by reference at a minimum the eight one seven eight one seven application alone would support certain claims and so just to clarify what claims those are they only make that argument as to the amperage claims so as to the voltage and the ratio claims they don't make any argument that the the two ninety three three claim incorporates by reference to tonight it's a dependent claim to two ninety two and two ninety two has the voltage limitation so if that's not supported and we're assuming by now that there's incorporation there's no incorporation by reference and they're just relying on the one seven or so and for that the only made the argument as to the emperor it claims so we would have a limitation that would not be supported would he need they only made the argument as the average goes in the blue brief at the pages that i cited expressly make the argument that the eight seventeen application even without incorporation of nine seventy seven ski supports two ninety three and you never speak that and so just to clarify the seventy five claim that they're talking about is an amperage claim yes i'm including that in the set of things that they are making the argument about the seventy five amp limit and fifty one fifty amp limit and so they cite pages from our brief below and admittedly did not address seventy five and so i'm just explaining now why it doesn't matter once we've once we've determined that they only have eight one seven to rely on the words or no o corporation reference and you only have eight one seven there is also in that very claim a voltage limitation that with therefore not be supported and they're not making the argument that the eight one seven alone supports the voltage therefore the dependent claim even let's assume that seventy five limitation would be supporting the claim as a whole wouldn't because if it incorporates the two ninety two voltage limitation how do you say that's enough well my response your honor is to look at how and what the other side raised as to these claims the only argument for patentability over the prior art that they made as to these claims of what i call the on off claims was the same argument they made as to the underlying claims i e severance he doesn't teach a torque based control system it teaches speed text and so in a footnote at a twenty four three sixty three no two that's that severance he does teach a tort basis and as this court previously held and so the other side wisely narrowed the appeal in the reply and jettison that issue as to the underlying claims and therefore it immediately follows that they have no basis to contest on the on off claims because that's the only basis they raised and the board rejected that expressly explained in page eighty ninety eight no three and said pace is only arguing the same argument they made as to all the other claims about speed versus four and therefore the argument fails asked of these claims as well and that's certainly sufficient explanation as this court held invasive and in other cases where the explanation of or only needs to be commensurate with the arguments raise and this was a kind of throwaway argument anyway all the arguments we've heard now about causation and on offer were not the reasons they gave below and s though even if you accepted that it was somehow raised via blow beyond the speed force vs torque comparison there's certainly substantial evidence to confirm that a torque based system whereby the engine turns on off when it needs to will turn on and off i mean it's hard to imagine something more obvious than that so all of that in total the board there cannot be faulted for for not saying more than the base itself  and finally as to the abnormal entrancing conditions claims the patentee itself expressly in the filed history said that turning the engine on and off is precisely the type of abnormal entrancing condition that was contemplated that's at a one two four eight nine i don't believe my my friend referred to that but that makes a very clear statement and it makes sense because when you turn the engine on and off for example in city traffic while charger to charge the battery there's going to have to be a ramp up time whereby the engine starts at nothing and moves through its inefficient range and perhaps gets to its efficient range or perhaps not severance he actually teaches a situation where and what severance he says is on occasion it would make sense for the engine to be used inefficiently for example if you're in city traffic and charging the battery that wasn't it in me to limit it to that but that's certainly one example and so that the abnormal transit condition claims and those are the only four claims that are involved in the other appeal as well the fourteen zero sex appeal and so finally i would just conclude unless the court has other questions a return to where i started that if you want to take the patentee at its word it didn't court point to a vague incorporation by reference clause it didn't point to other aspects of the eight one seven application to support its new electoral flames what it said was it was supported by columns fifty and fifty one and the board recognize this as a nineteen and a eighty nine seventy seven where the patentee said that we do that for claims is disabling somehow deals with its impact on the nine seventy patent rather than on its incorporation by reference the seminal statement is clearly the ninth seven is incorporated by reference all of its warts all of its benefits whatever it is how the ranges do a line if this were a chemical case we'd be talking about whether were we sufficiently just disclose the genus in order to claim species and we have a lot of overlap there's there is discussion one that i read earlier where they specifically referenced the nine seventy taps it but it does remain their burden they need to convince you that in fact there was no cooperation by reference if i can use my last few moments to talk about the the abnormal and  transit conditions and the engine on off issue my colleague said that well you know pace took the position from the board that it was the speed distinction and that's what we were point two that the claims required a torque threshold and the prior art only showed speed and therefore there was no showing of turning the engine on and off for the normal intransient conditions it is true that we argued that in fact the prior art was deficient because it didn't show the use of torque in order to accomplish those things but that doesn't absolve the board from pointing to something so if they just agreed with us so they just agree that the prior art was only speed based and therefore limited and couldn't validate that doesn't absolve them  responsibility undercuts forth and generally to tell us why and what it is that they found turn the engine on and off and they've got to do that they can't simply throw up their hands and say that it must be in there someplace