as you proceed if there are disputed facts or issues that require evidence if it's convenient mentioning to assume that we will appreciate where the decision of evidence of the patent and came to the conclusion that a skilled artisan would understand the needs and balances of the invention since that time of course the supreme court has issued its decision but there's nothing in that decision that calls  question either part of this court's analysis the last time first of the supreme court did not materially change the test for deafness from what this court actually applied the last two and second the record of course has not changed at all wondering if one should take this is a direction that we can only consider intrinsic evidence no i don't think so it off your honor for the reason that you're mentioned the court went out its way actually describe some of the most telling facts  that were in the record including the experiences of dr kelly as research assistant who was able to build the entire device and test it within two hours but more than that the supreme court also referred back to its decision  mentioned that expert testimony would often be extremely important claims instruction in claimed instruction but i think the purpose of mentioning it here was that the same would be true in a definite as analysis what the court  standard both of those things are exactly what this court did the last time i'll just read a quote from the panel's decision last time the court said that the seven fifty three patents claim language specification and the figures illustrating the space relationship between the live in common electrodes are telling and provide sufficient clarity to skilled artisans add to the bounds of this disputed term in fact this court gave the majority gave two different reasons for coming to the conclusion  that the patent was definite first it simply looked at the claims the diagrams the specification and found that there were intrinsic parameters concerning what the spacing had to be had to be limitations also shed additional light over the course words shed additional light on the meaning of space really your position in this case can be decided by focusing solely on the intrinsic evidence namely the plane and the leaving aside what goes inside those items or one can just decided based on the specification of the clintons yes we do think so and in fact that's what the majority held last time there were clearly two separate steps to the analysis in the first one was that the inherent parameters provided by those intrinsic materials were sufficient but in any event i do i mentioned that the the extrinsic materials the expert reports that were submitted the purpose of though they're being submitted in the purpose of the court looking at them was not to provide additional facts or to for the more say extrinsic materials you're viewing all of that including the material from the reexamination proceedings extrinsic well it's a little bit unclear how the panel treated that last  referred to your new list as extrinsic but again i'm not sure from from our standpoint it matters very much either way the evidence was all one sided it all pointed to the fact that a skilled artisan could understand  certainty i think means that there is room for some gray areas around the edges but if a if a skilled artisan reading the patent has a well founded basis for concluding that he or she understands what's included or excluded that sufficient well founded is that reasonable certainty i don't want to say that that's the that's the legal definition of it i'm just offering that as i think i think reasonable is one of those words that lawyers use in courts use i think it takes into account all of this skills and the background of the person who's who's who's making the determination i guess that isn't very precise substantiated by logical argument i think if i think i would say that it does mean it has to be at least a preponderance i just want to make clear though that you know our opinion is that there's really no doubt here at all because nothing was submitted on the other side to suggest that this was not clear and in fact the court came to the conclusion last time the panel looked at all the materials last time and said that a skilled artisan would gross so i think what you want to say is reason most certainly is a thing that's the it's not unreasonable that so that's what you want to say that sounds fair so health care that's on fire so let me let me ask you about exxon from two thousand and one or the court said it is the meaning i'm going to ask your closing counsel is to something in them is the meaning of the claim is discernible even though the task maybe formidable and the conclusion may be one over which reasonable persons will disagree we have held claims sufficiently clear to avoid is whether the on the indefiniteness ground under the reasonable certainty standard can reasonable persons disagree and a clean claim to be found not indefinite obligation on remand is to add as much precision as language can adds to this relatively vague standard well talking for your  help i guess i would i would disagree with that fight later on or i don't think the supreme court expected or thought it was necessary for this court to define with more precision what results are demeans what this what the supreme court left for this court to do the fact instructed this court to do was to apply that standard to this case not standard the standard of reasonable certainty i also want to point out with the certainty that the main critique that the supreme court had for the entire being to do a standard was not that it was too far over to one side of the range maybe that was that was true but the main cricket they have is that they thought the focus was wrong the focus was on using the term inside the big u s a court a lower court may misconstrue that to mean that what matters is what y during the time that this case is under decision if you will for the supreme court we decided a taste and couper of technologies seven forty four censored seven thirty two and it's seven thirty seven we noted that the supreme court had this case before it and in that case judge toronto press the indefinite issue he says we don't need to weigh in on what the supreme court will or will not say but he said the test is the test he applied in that case was the claim language of the prosecution should be history no reasonable uncertainty about the boundaries of the terms shoot even considering certain aspects of the specification that could considered confusion when read in isolation so this was a decision in march of this year while the supreme court was working on its decision  case right but obviously before revisiting here today and i'm wondering if what you think about that standard yes i don't have that language in front of me but i heard your honor this read it i think i think it's difficult to put greater parameters on the word reasonable reasonable is is a word that we see in many areas of law and it's i think by design it's a little bit vague as to what's included what's not i think the key thing is that there has to be a reason the basis as to why the skilled artisan becomes t camps based on a whim or something else come to conclusion as how he'd read or she would read the patterns that i think what the from our standpoint that's the key idea here again i don't repeat myself but we think that the court does not need to get into deciding what the precise standard is beyond reasonable because here all the evidence goes one way and in fact all that novel is has submitted our attorney arguments in twenty fourteen as to what  thinks what's unclear about space relationship and nothing about what a skilled artisan in fact infected knowledge really falls into exactly the problem with the supreme court said shouldn't be done which is to our offer only arguments that are not tethered to what  decide it for three reasons i'll just run through them very quickly first of all the supreme court's instruction to this court was for the federal circuit to decide the question of whether this patent meets the standard that they are taking lated that's explicit in the end of the first paragraph of the supreme court decision second under the current understanding which is that definite is a matter of law and it's reviewed without deference which is what the court said the last time there's really not much gain in sending it back to  answered all of that was was brief and was presented the last time not with had every incentive last time to present whatever evidence they had and they didn't have any other than attorney argument as to what space relationship means in fact the district court would be in a worse position than this court to say whether or not this path is valid because the district court's going to have to be found by the previous decision by this court to the extent that aspects of it weren't overturned by the supreme court is going to have to figure out what to make of conclusions by this court such as that the functor limitation that sheds additional light on or is highly relevant to the meaning of space relationship the court would have to wade through all that and figure out what's open what's not open it's much more sense for this court to decide in the first instance like trees o'hara may have please the court before turning to the various questions about the standard i'd like to have a only sixty seconds there sir the frame what we see is the in few of the in this claim to create a framework so that this claim recites  prior art circuit combined with a desired result the desired result being that the muscle signals detected on both hands will be equal what is unclear is what ways of achieving that result with this circuit are covered it's possible that this claim viewed from in one thousand nine hundred two by a skilled artisan covered all possible known and future ways of achieving that result of equalizing e m g signals with this prior art circuit that would be true if the term spaced relationship was a broad term that simply meant any spacing because if it meant any space with no functional requirement built into the term then all we have is a claim that recites a prior art circuit coupled with the desired result on the other hand it's possible that this claim covered only one narrow way of achieving this result with this circuit namely what mr laxman describes fifteen years later you adjust the spacing of the electrodes while looking at in a scylla scope until you have the results you want that's a possibility a third possibility is the claim covers four ways of achieving the desired result with the circuit namely you adjust for variables any of four variables only one of which spacing is mentioned in the so that is the ambiguity that we have asserted the scope of the claim is ambiguous because it is unclear if the terms based relationship includes inside the term a functional requirement that spacing cause the equalized the energy in fact the concurring opinion in the prior vacated decision pointed this out and pointed out that the majority presumes that not only did the claim have th functional limitation but that the term space relationship has the functional limitation built in and the concurring opinion found no support for that in the claims so with that framework to turn to your honor's questions about what the supreme is the accuser structure none of which is before us but even if it were a day to go with the drawing in the patent that the claim would nonetheless necessarily be deemed indefinite because it could cover structures other than that which is specifically and exactly pick just it is certainly the claim of indefiniteness is not dependent on which alleged infringer may be before the court so i would i would submit that even the f which is not this case a party had copied the picture in the patent and and it conceded this court to some of the broad language which isn't criticized by the supreme court was in order to cross that hurdle and to get to the real stage of what's at issue and what we would not say that we would say that when the court said reasonable sir what it meant and some of these terms selves could be subject to further scrutiny but looking at the opinion the claim needed to be clear it needs to be unambiguous and it needed to be precise but not more precise than the subject matter permits the supreme court did not use that exact phrase ology the supreme court said there's allowed to be a modicum modicum of uncertainty there is limits on the english language and if that absolute precision is not require we would submit to this court's precedents back from the one nine hundred eighty s and one nine hundred ninety s during that period one of the requirements that this court imposed on claims under one twelve two was that the claim be as precise as the subject matter permits that works both ways sometimes that helped the patent owner survive the claim because the claim in fact was as precise as the subject matter permitted that sometimes that led to in the literally because it was possible to make the claim more clear here if that were applied it is clear that it would have been easy for this happens to have clarified that that is true but that does not answer the question the ambiguity of whether or not the term space relationship itself has a functional limitation or a functional requirement built in they could have defined the term space relationship  here is that one interpretation before the re exam the best interpretation but it was unclear was that space relationship meant any space and if one looks at the specification they refer to things like face or face the part they never suggest that the amount of spacing affects the result and the original examiner as we've noted in our remand brief the original examiner said the spacing doesn't appear to be critical it seems to be a design choice so before the reexamination if one had to guess at the best claim construction the best gas would have been that space relationship means any spacing in this claim covers any possible way of achieving tell us is missing is critical i don't recall any evidence provided to then say well post reexamination the the best the best construction perhaps shifted to the functional limitation which the majority of the cork in the vacated opinion found that space relationship itself had a functional requirement built in and the reexamination statements of mr laxman certainly would artists in knowing all that looks at this claim prior art circuit that supposedly doesn't achieve the result the claim says that ricci is the result what is there in the claim that might suggest how that in the cheap what way that a cheap the only possible term there that might have caused that is space relationship because that's not a term of art it's not defined in the specification and therefore there are clues that would support the view that the majority ultimately reached in its opinion and there certainly are clues  claim construction here the district court came up with and we looked at in in our refute the original opinion that's noted in the supreme court opinion is the question whether accepting this claim construction one is left with indebtedness because one of the skills of new york cannot tell based on that instruction with reasonable certainty the fans of the of the invention absolutely not your honor that is the approach that was taken in exxon and star scientific vote both decisions there and by this panel to construe the claim first and then ask if the claim is so construed gave enough notice to the skilled a supreme court rejected that claim construction first approach with the new i mean you have to you've got to claim there's a claim there a question is when you start you have to look closely but you don't you don't first go and proceed and get the right answer and then step back with that hindsight and ask was the right answer clear that's the post hoc approach that was what really in your view and i'm sorry to interrupt you but time is fleeting  we had well in our situation here we have a point instruction that neither party disputes what would you what would you say is the analytical framework we should pursue i mean  know you want to conclude that the claim is indefinite but how would you consistent what the supreme court said may be consistent with what are a core of decisions how would you approach this case in terms of your decision  we would say that's not relevant we would have to take the approach the interval licensing took you take the perspective of the person of skill in the art you look at the original intrinsic evidence of the primary evidence so you look at the original specification the or that's the person who is either going to go out and invented a better solution or is going to look at the claim see his own of uncertainty and go home and watch television that's the person we care about that person does not have a crystal ball that person does not know how the in the trial court will construe the claim fifteen years later or how this panel will will construe the claim later so you do not if you if there's a claim construction for other reasons that find that that shouldn't bias the the analysis and you did in your opening breathe pj's say the supreme court's decision requires a more demanding analysis and then underneath that you say the supreme court held that section one twel mandates clarity in for seizure and i wrote a vulgar note next to it and went to back to the supreme court decision where they say the definite deafness requirement so understood mandates clarity while recognizing that absolute precision is unattainable now and i think that walks a different route than your heading as you're not taking the position that one twelve mandates clarity precision even though they say absolute precision is unattainable well that the very beginning of the opinion refers to the statutes clarity and precision demand this is it page twenty one twenty four of the opinion the supreme court opinion we read clearly distinguish between particularly pointing out in distinctly claiming not only has to be clear it has to be precise however your honor  yes and within the ambit of the subject matter and they're for if it was undisputed that space tree lation ship was a functional limitation had functional requirement built then then it is certainly possible  case in other cases here that is not this case it is not undisputed it was not known from the get go that space relationship was a functional limitation of itself had a functional requirement as the concurring opinion indicated the majority presumed that there was a functional limitation built in to the term space relationship our position is a person skill in the art would not know it was split fifty two forty eight if space relationships had a functional requirement of it if space relationship did not have a functional requirement built in then the skilled artist who comes up say he has this new material that he thinks will create and reading all of the description of the neutralization in the grounding in and so on would not reasonably with nary a skill someone in a sealed be able to design we have the evidence that apparently young person of minors skill was given the specification routine equipment within a couple of hours balance the electrodes and whenever it is that would normally follow from knowing that you need to have neutralize each other there are we would have done this record there is evidence of port that that is unable meant that said that the skilled artists and if they wanted to take a license and practice under this claim they could figure out procedure there is no ruling by the trial court on that issue there is a trial on that issue with an ailment there are certainly arguments there and while sig is still making that argument which we submit is is a legally not relevant because again the skilled artisan doesn't want to practice within the claim they want to practice just outside the boundary of the claim and they need to know where that boundary is with reasonable certainty or adequate or no not at all your honor the the point is not whether or not one construction is clearly better than the other that's not the issue the issue is is is avoiding post hoc analysis avoiding hindsight of coming up with the right construction looking at it from this point of the artists and without a crystal ball are they faced with a genuine ambiguity the supreme court was clear that claim cannot be ambiguous the supreme court said that one of the ambiguity once they said that there was evidence that there was a economic incentive to inject and think unity in the claims and they said it is it is that it is right for suited on the right language but it is with not know the bands the inventions and that's half of it the other is it has to be an ambiguous but it also has to be as precise as the subject matter permits we submit those are two different criteria they both have to be and to do that actually look at expensive evidence is perfectly fine finally with you read the original prosecution history here is that in your view shed light on this question or not yes the original prosecution history supports the broad view of space relationship the nonfunctional view and if all the artists and looked at was that the prosecution history where the examiner said the spacing is not critical appears not to be critical the placement clean construction here you said in your view that was wrong when you look at what is the right way to look at the language of the claims in the past in your view what one does is a sign case what one does apply the appropriate interpretive tools this is very much like a chevron analysis so we have to consider the language when absolutely the starting point is the language of the claim and the specification and the original prosecution history and one applies the appropriate interpretive tools what one shouldn't do according to scream court what they when they said they rejected a post hoc analysis one shouldn't as an ex on struggle struggle struggle come up with the right best claim construction and then after that claim construction clear that is what the supreme court rejected in on the remember well i know i think i've got an answer from off ask you but for a while there i thought you were saying that we could relieve the district courts of the burden of martin's since they wouldn't have to worry about a claim construction they would just be with the injecting hindsight into indefiniteness and we submit the supreme court rejected that on the remaining and we we have sensually agreed that the supreme court asked this court to reconsider it is a question a lot it not it could raise no fact dispute there is no issue here that the trial judge got it wrong because there was a genuine issue of material fact and we submit that the trial judge opinion was correct because of this core ambiguity as to whether space relationship itself is a functional limitation as the majority found earlier or is does not have a functional requirement built in at the concurring opinion found way that's what i took from your statement that early yes your honor and not the only reason we say that the one reason we say that is as we brief we submit that the extrinsic evidence in this case supports us because their own experts once said face relationship was have in retrospect now with twenty years hindsight could have written something else that would have been clearer the test is not whether there is any possible ambiguity none of those things are the test the supreme court rejected all those decisions the supreme court helped the test was reasonable reasonable many many years after the fact and trying to say that as a result of that without tethering it to any skilled artisans thinking process that the claim must be ambiguous let me make this very specific in their reply brief  in his declaration that the e m p signals are amplitude and phase depends on the size of the electrode and also the spacing how much of the of the hand touches it and also how far apart to the measurement is so we're no supposed to take take the view that because twenty because twenty years ago this is the citric been foretold it somebody might down the road invent some substance which still doesn't exist as far as we know goes against what we know works about physics because that wasn't specify that that wasn't included now the patents and alex that seems to me to be exactly what the report doesn't want to have happen which is lawyers now having every incentive in the world to come up at every phase of the litigation construction of the majority i read the language before and there are other passages were quite clear that the majority looked at the claim language itself and some of the claim language was clear enough the skilled artisan would know the relationship between face relationship and the his description of her conclusions that the language was clear and was was certain enough for a skilled artisan understand she gave the example of what a research assistant had been able to do i don't believe he  would not know whether to be guided by functional consideration or just the structure and i hope i'm not doing a disservice to his position but you heard what what is if i have a right fine if not for quality and then answering my questions you want to put in the sales the majority said last time that it found that both the intrinsic parameters of the side of the hand as well as the functional limitations showed that the claim language was definite the court said multiple times in multiple ways that the functional limitations shed light on what highly relevant to and contributed to the the end so mr bamber had said a few moments ago that this was a situation where all that was all that the hadn't disclosed was simply some desired result without structure  actually not true the structure was given the structure explained the along a member explain how that they were going to be electrodes explain what they were supposed to do which was to receive signals of equal amplitude and phase how they were going to feed into the differen signals the only part that it didn't go into more detail about was something that the understood evidence shows everybody already knew which was the way to move the spacing of the electrodes in order to get equal signals lekman his evidence and others explained that yes there was a there was an important difference which was of the fujisaki invention didn't seem to take into account at all the notion of e m c cancellation which is the very thing that