thank your honor and may please the court judgment of infringement of the two hundred and ninety eight patent should be reversed because it was based on iranis claim construction i'd like to turn to the language of claims twenty four and twenty seven dollars going st to claim twenty four dollars and explain how the plain language is pieced together in a way which results in a simple i suppose as a general starting point can i ask you since claimed twenty firm it's across the board was on either claim twenty four or claim twenty seven dollars then yes that would and the case on the on the tonight a patent across the board meaning not just the market issues but the other j yet exactly with respect to those issues now with respect to claim twenty four dollars there are there are three pieces to the claim that show that you get a single ice for you start by the introductory clause a method of preparing i'm just going to call it a boat today a method of preparing people molecules and so the question is how are those people molecules characterized and required and doesn't say i mean st of all let me just lead by saying this claim is not so clear but the claim as you understand it would be pre determined so i mean one the alternative reading which the judge below adopted was that yes every molecule of the resulting be zero molecules have to have a pre determined number twenty four but claim twenty four does specify identical because of the mark language that said number is selected from the group consisting of one to fourteen right and so i guess why couldn't why doesn't that just of some one thing between one and fourteen but both because of the way the claim language is put together that the molecules have a pre determined number and if it was going to be mixtures of numbers some molecules having one just determined number per molecule that i guess that's what's hanging me up is what one of my work and my supposed to give to the phrase per molecule because the molecules are what's listed as having a pre determined number and so that if it were going to be that some molecules could have one number and some molecules could have another number then what you would have a situation where the claim would have to say selected for the group consisting of  mixtures thereof or selected from a group consisting of one or more of the numbers from one dollar to fourteen dollars as a practical matter that would also mean that the claimed language wouldn't really carry any meaning because people molecules always have a number of south aspects a particular molecule won't have two and four it struck me that there is a contrast between the language used and claim twenty four dollars in the language used in claim thirteen setting aside through fourteen whereas twenty four does not have that single specific number language which if it did this would be a dispute we wouldn't be here on this issue that would be clear and yet the  certainly the language single specific is not a claim twenty four and is in claim thirteen doesn't that give rise to some suspicion at least that something different is intended no because the context of both the claim language and the prosecution history show that this claim was originally directed to mixtures what became claim twenty four dollars and that claim was rejected over the prior art repeatedly and ultimately the word mixtures was taken out that were originally was so i did i didn't see anywhere and in the prosecution his theory that explains that i know that's what you believe and i understand why you believe that but i don't have anything the prosecution history right now that necessarily forces me to think that well the examiner explained in rejecting the claim that the prior art taught pictures and the claimed claim to mixtures and then there was an amendment which deleted t mixtures from the claim and then that then there was also the addition of a reference to application claim sixteen which really seems to drive home the idea that this claim application claim thirty was devoted to the idea of a single and just a single i support but then that reference to application claim sixteen got in the movie by the examiner examiners and then when you read the notice of allow examiner states that the claims are directed to combinations of ice and forms and so that you know left me at a loss i agree you can find different statements amgen the applicant throughout the prosecution history that seemed to make claim thirty sound like it's for just a single eyes of form but then by the time we get to the finish line stop talking like that and then the examiners said what he said in the notice of allowance that these claims are all directed to combinations of ice forms so that made me wonder what exactly can we really take from any of those earlier statements if we arrive at a place that really seems to be talking about combinations of ice that forms and not just a single and only a single i suppose there are two things from the from the prosecution history towards the end is that change was made from claim sixteen to the language that issued in claim twenty four dollars and the examiners commentary the change from the reference to claim sixteen to the language it was allowed was made at the same time that the more crucial the close more crucial language was added to the claim and so therefore the concept of a single number of say out assets was incorporated specifically into the claim by the examiner at the time that the application was  there is a reference in claim twenty seven dollars where you can have mixtures of two or more people i support but they are specifically ice of forms of claim want so when the examiner allowed the application examiner understood that all of the claims went to single ice of forms it's just that you could have a mixture in claim twenty seven  that those are isolated ice forms and that was the other mark an error that the district court made in not permitting the language of claim want to control in in reading out essentially the idea that isolated ice of form still required for claim twenty seven if i could just ask you i know you're moving that you want to move on to claim twenty seven which is fine but i had just one more question which is to follow up on judge chen's question the last correct or right so i'm i if you turn to either five thousand six hundred and fourteen of the appendix or page twenty eight of your brief at the bottom there's that was and this puzzled me when i read it where the the examiner saying the prior art does not suggest isolation of single life forms and it does not suggest the instantly claim to combinations of ice of forms that suggests the examiner states that there was a an advantage that you book compositions with single price of forms in combination varying the number of assets to control activity and isolation of single ice of forms and does not suggest the instantly claimed combinations right and that's the part that is troubling me of single ice forms but the art doesn't suggest isolation of single eyes of forms or combining so for us because the arts clearly taught it was known all along and the argument all throughout was that the art did come up with mixtures of ice for so what is your interpretation of that last clause in the examiners assessment so for example claim twenty seven dollars specifically claims combinations of single ice forms so he instantly claimed combinations references for example claim twenty seven dollars so you think this is a reference to the claims other than just playing twenty four claim thirty that became proven correct ok respect to claim twenty seven dollars their quire mint of isolated ice forms of claim one was read out by the district court in the mark in construction and the nd sentence of that markham an order  was given to the jury essentially specifically said you could prepare mixtures of ice forms without ever having an isolated acts for the jury was never even shown playing one at trial there was no evidence put in at trial that the limitations of claim one were met because the jury was sent on the wrong mission with regard to whether mixtures of vice of fortune occurring mixtures of ice forms without ever having a single life form could be covered by the claims when you say the jury was shown claim one i mean i would assume that you would be arguing twenty major rated claim on the jury with the jury was told that mixtures of ice of forms could be one was met they just simply said i spear preparers mixtures of ice or forms and went through the specific activity limitations that were in the claim without ever pointing that out and the jury was specifically instructed that you could prepare mixture of ice forms and meet claim twenty seven dollars with regard to the safe harbor the district court improperly focused the jury on the reasons for manufacture a magnet you want to address different one of th seven issues you appealed and that is in fact undoubtedly the downside of raising seven separate appealable issues in briefs but your time has definitely expired and almost all your rebuttal time is expired so if you continue it's at the expense of any rebuttal time you aren't and i will discovered that the bow produced in cells is made up of ice of forms of people with different numbers of silent absence per molecule and different charges and therefore different biological activities issue here of course is whether claim twenty four is limited to comparing a single ice of form and it's not nothing in the language of claim twenty four dollars limits the claim to a method of isolating a single ice of form as judged price and dollars in the final claim simply to refer to those ice of forms that are described in the specification and that the applicant was intending to cover by the claim that's just being used as a shorthand to refer to ice of forms but it is limited to one to fourteen and then he just lee sixteen desh twenty three and so to me that just popped out of nowhere and i was trying to understand what is the specification communicating here about the people could have more than fourteen style cast is what i would point your honor to in column six is line beginning at line forty six where it says that in another embodiment the composition is comprised mixtures of ice of should go and i don't know if that's a question of a law that i have to decide but throughout the prosecution you need a number of changes i can't necessarily say i understand the reason for all the changes but the changes you made you deleted the word mixture you deleted used to refer back to sixteen which is now thirteen which is undoubtedly directed to a single specific species or a single number of sale like so it used to be that this is a method of preparing the things that are now identified in claim thirteen and after a phone call with the or the results of which i've course had no idea no one memorialized it that was a limited but i don't know that it was to make it broader necessarily so you took out greater than you took out mixture both of those would suggest to me you're moving away from the example in column six which was a mixture and towards a group of the molecules all of which would have exactly the same number of silent acids attached and then you add to that the fact that this you said in your prosecution history that claim twenty four is a method of making the molecules  claim thirteen now granted you took it out but i have no idea why you took it out so what do i do with all of that a lot of your prosecution history points in the direction of we're moving this claim claim twenty four away from a mixture claim and towards the same single isolated iso form that we have and the other claims are just using slightly different language to claim your honor there's there there were a number of amendments made during prosecution but but engine never said that it was amending the claims to limit it to isolating a single ice of think that that doesn't mean that a skilled artisan wouldn't read it i'm not using the clear and unmistakable standard because i'm not using this for disclaimer purposes i'm using it to try to understand what the claim means which were supposed to do as part o claim construction so a lot of these amendments though move to the claim away from a claim that clearly covered multiple ice of forms if the examiners rejections were based on prior art references that were focused on purifying ebo by separating people molecules from not you but by removing nine ebo contaminants and that is what example was concerned about now some of the amendments are a little bit unclear but that is what illusion was added the step of selectively alluding the ice of forms was distinguished it from the prior art that the examiner actually i understood why that was at it because that was the portion that distinguished different prior art based on the rejection exactly right we can figure out why the word mixture at it and i guess in a scenario like this with all due respect when you have the patentee winnowing his claim down and then leaving it in what feels like a confusing state it seems like let's see how should i construe that claim that in favor of the  made a lot of amendments that took it away from the position he's arguing in national extent to where should i give that all back to him even though we took those things away without any clear reason for me in the prosecution history i would come back to the facts by taking out the excluded i mean i didn't have your last argument but it sounded to me like you were saying well we took mixture out so that somebody would understand that both mixtures and single i suppose i'm sure would be you know i simply don't know why they took out mixtures from from the language of the claim except matter whether they were taking it out to overcome that particular piece of prior art that was the subject of the rejection what matters is what artists and i understand the patent is trying to signal something about the scope of this claim by taking that word out because you know you can make an amendment for any reason you want you can amend your claims even not in response to examiners rejection right and we're not going to say that amendment has no meaning despite the fact that it wasn't made in response to the examiners rejection so i guess what do we what do we do as referring to a preparation of ice of forms plural and also specifically pointed to exhibit five as an example of practicing clean thirty exhibit five is clearly directed to a method of preparing the and sixty three that engine referred to prosecution claim thirty now claim twenty four as as a method of preparing ice of forms plural and specifically referred of these two citations your honor both from the same office action response the afghans have amended claims thirty three cited two step process of applying material containing ebo to an eye on exchange column and selectively diluting the desired ice of forms plural that's where it has the plural reference i actually think the reference or two example five is also compelling because example five is directed to a method of preparing a mixture of ice doesn't provide much significance and interpret in the findings but in terms of this particular distinction so if suppose the court is truly confronted with a scenario where either of two equal possible definitions could apply  because it doesn't have any language like other claims that limits it to isolating appearing a single i notice it as a pre determined number now you want me to read that to apply only to a molecule and then there could be lots of molecules that have their own pre back to the argument that judge bryson questioned you on long ago where you took the word mixture out in order to make it clear that claim twenty four dollars applies to both mixtures and single eyes of arms but again i don't think it's clear why that language was taken out except that i think the implication of it is that you're just not clear and so that's the problem it leaves the world without clarity from the prosecution history because for a particular office actions or particular sections i could in in the absence of the rest of the prosecution absolutely read them to quite frankly favor limiting this to single i support but then you add some complexity to that by pointing out other places where in arguments you added the word ice of forms with the the district court did construe claim one the isolated language and claim one is limiting claim one to preparing one and only one i said for that language doesn't appear in claim twenty four being the specification consistently refers to the invention as one being able to select ice of force not just one i said form of being able to doctor strickland's invention was that he could select a specific ice or forms to include in the composition to give the composition  specific biological activity prior to dr strickland's inventions it wasn't possible to separate molecules of both the separate ice of forms of both based on their charge he made the correlation between evidence that proved in print for the remaining elements of claim one it wasn't a focus of the trial in italy but there was evidence before the jury with respect to the other elements of claim one hospitals point here really is about is about isolated and  describe the types of my supporters that can be included in the mixture prepared according to claim twenty seven dollars because it's a mixture it doesn't mean that the ice of corms need to be separately prepared the district court simply said that the eyes of forms don't need to be method claim and it does not include a method step of separately preparing the ice of forms in play nor does clay want you said i was going to hand you a mixture of salt and pepper when you expect that to be salt and pepper and then i mix them together and gave them to you if yes but your honor it's a method claim so if it were a method of preparing a mixture of salt and pepper it wouldn't necessarily mean that you need to have salt and pepper purified in advance you could prepare the mixture directly there were some method in the mixed they could be if there was some way which there is a preparing a mixture that it only requires the preparation of a mixture with a pre determined if you will specific activity which was enabled by the invention it only requires that that mixture be prepared it doesn't have a method step of separating ice of fortune or is clean one clean one doesn't have any method stuff so that's just brazen well i was just going to ask about it but i think you referred to the bottom of column six but i  didn't get your precise reference but there is a sentence at the bottom of column six lines sixty one outside line sixty three and i wanted to to see if that's consistent with what you're saying now you  say well let me read the sentence in order to produce mixtures every ipo i support this invention also provides methods of isolating selected iso forms simultaneously is that what you're saying is that you can have isolation of more than one at a time that's part of the language is really the entire paragraph that i would point to to taken together so it's that sentence followed by the techniques that are then you describe since the methods include isolation of individual  because what i was focusing on was the use of the term isolating correct simultaneously which suggests that there is doesn't require that the one i saw form be at any point  are separated from other basic forms which enables you to prepared the mixture with a pre determined in view a specific activity you have to prepare the specific mixture to have the pre determined you know specific activity which is what dr strickland discovered and allowed him to prepare questions to be clear but yes he did beat up a lot of time so we're going to give you all your rebuttal time back but i do caution you that rebuttal is to respond to arguments that were addressed by the other side so that all due respect you're not limited to claim twenty four and twenty seven and since you never reach any of the other issues you're peeled those are off the table yes you're on that thank you very much one of my colleagues once really wants to know the answer to one of them in which case i'll defer to them i'd like to start with the prosecution history and pick up where counsel left off which was the amendment from october one thousand nine hundred and three and the elimination of the mixture term and there were some references in that amendment to example five until i saw forms which counsel pointed out but what happened then was the claim was rejected again and so the claim was then even more specifically directed in the next amendment to sink ice of forms and that was by putting in a reference specifically to claim sixteen so what we had at that point was any ambiguity about mixtures was gone once the next the amendment came in and after the next rejection came in and we had a claim and by the way it was it was councils law firm it was prosecuting the application we had a claim that w specifically directed to a single i said for my part of reference to according to claim sixteen and then that reference got moved and then that reference cover moved with the examiners amendment and it was essentially swapped out for the close which has the same effect but that's your interpretation of that so clear that it's kind of one for one swap that you would make it out the we would we would submit that when you look at the claim language itself and keeping in mind the abbott admonitions about closed marcus language and that if you want to say mixtures you have to specify in the claim language there was no reference to putting mixtures in in the closed more crucial language and in fact the references which judge bryson pointed out in the examiner's reasons for allowance and talked specifically about  the single i suppose in the instantly claim to combinations not mixtures combinations combinations is a different concept from mixtures claim twenty seven dollars for example does claim combinations of single isolated i supports and that reference bit but if there was to be a sea change i don't know if there were to be a sea change at that moment away from the claim sixteen language which was seen as everyone agrees directed to a single i supply of claim thirty which over all these years had been narrow rejected over all those years one would have expected to have seen some clear i've changed my mind in fact you are entitled to mixtures and i'm reopening the claim to either use the word mixture or use some other phraseology like one or more of to make clear to the public when they looked at them are crucial language that it was intended to cover more than one of the number  aspects having not done that we're not just left with a record that's muddled into should bear the burden or what we're left with case law that says it is absolutely incumbent on the patent when they want to claim mixtures in a closed more crucial claim to put mixtures into that claim now with respect to claim twenty seven dollars claim twenty seven dollars is directed to ice the forms of claim on support of claim one is a requirement for proving infringement of claim twenty seven dollars now we do not contest on this appeal the independent nature of claim twenty seven  that does not mean the limitations of claims independent claims are optional in terms of proofs and the isolated ice of warms of claim one are what's required for proof on claim twenty seven dollars if they wanted to claim just