thank you your honor and me at least the court the judgment in this case rests first and foremost on a claim construction error the twenty implementation that appears in all of the asserted claims was by everyone's account  proposed but in other ways it wasn't to the extent that's inconsistent with what this court proposed in the i p r appeal are you giving up on those arguments for those portions of your proposed construction while we if if what if your question judge gannett is when you take a step back there were two there are two separate issues presented by the twenty amp limitation as i think this court in the prior appeal recognized there's a question of is does average mean average or does it mean constant and over what duration are you measuring either average or constant right and and and this court resolved both of those questions one in a way that you would like apparently and one in a way that you don't necessarily like one in a way that we were not contesting any longer right and i was like your question i'm sorry yes that's what i was so you're asking for the same construction that this court used in the ip exactly exam and you're not there's no debate over whether broadest reasonable construction and philips are any different and that's what certainly not on our part we think that there is the analysis that this court did invoked it in a way that that suggested that the result would be the same because you said the term average should be given its plain and ordinary meaning especially in light of the b r i scanned her and even putting putting that aside  know let's let's pretend that the court didn't even consider the issue in that case there's no basis in the intrinsic evidence or the extrinsic evidence to to give average any different construction here everything that pointed to that construction in the prior appeal points to the same construction here intrinsic i mean we use that construction then yes so the construction from the repeal how does that really affect the decision making  affects that in a number of ways first of all on the summary judgment rulings the district court i mean we know that it affected because the district court told us that appendix page eighty one he's talking about the end of an equitable conduct he says the main problem most glaring flaws i think of the word he used in snap on's argument was that it rested on snap on its preferred construction of the average rather than walking there were numerous times where he said the resolution of the construction to be a constant current takes him of a long way towards resolving the issue exactly and so that's it that's it summary judgment and then as for the jury trial on obvious jury was instructed on the constant current construction it was told it had to apply the court's construction the milwaukee continually stressed the difference between average and constant asked a distinguishing feature that distinguished the mali prior art the constant current limitation was supposedly the key to the secondary considerations so what really is it drawing the entire proceeding so i think it made an enormous difference  and let me let me maybe just focus for a moment on the summary judgment rulings because i think it's clear that asked to the molly prototype packs and these are the ones that molly supplied  the fifteen amp the yeah the ones with the fifteen amp cells there is evidence in the in the summary judgment record that those packs satisfied twenty amp a twenty amp average current over the entire capacity submitted at the summary judgment stage and he base and that's it he didn't just make that up people he said looking at milwaukee's and malise tests that shows that they would produce it would produce twenty amps on average over its entire rated capacity didn't examine or allow these claims over prior that satisfied that the twenty amp limitation no i don't think that's true and certainly not over the the molly prior art the examiner allowed the claims over over prior art that supposedly and i mean we've got a separate question about how helpful some of the disclosure of that that are was but the the issue there was just it was represented him that you know these these cells amp average current construction and so just on that basis alone summary judgment on derivation and anticipation was inappropriate because there was at least a factual issue as to that  yet and on that point i mean you you actually asked us to straight out reverse on those points but how could we possibly do that i mean if there was a summary judgment analysis and you think it was done on time construction are there material issues of fact that would have to be fleshed out well it's a both factual question that well they are factual questions and certainly at a minimum we think that the summary judgments need to be vacated and remain ended we don't really think there any any contrary evidence as to the molly prototype packs satisfying an average twenty amp over the entire rated capacity but not you know certainly ironic to the extent that there is it that would be a factual issue that would need to be thrashed out but i don't think there's contrary evidence in the summary judgment record on that i don't so like to turn briefly with the court's permission to the question of enablement district court entered summary judgment striking  enablement defense the according to milwaukee and its rip it was at in the lower corner and it's brief on appeal the invent a feature of this invention is that it provided li ion battery packs that could deliver a minimum performance standard of twenty amp current there's not a not only word in these patents about how you do that it's there but the patents are just a listing of conventional battery chemistries known cell types known sizes with the possible exception of one size and record indicates that mollie proposed that size without any indication at all of how you bring these together to make the supposedly revolutionary advance of producing twenty amps of whether average or core constant current it doesn't doesn't shed any light on either one of those specification may has only one reference to twenty tools and and produce twenty amps on average well that's a result doesn't tell you how to get that result so that the pap configuration i mean everybody proceed on the assumption that the packet figuration with it as a critical part of the invention right because obviously that was part of that their basic discussion well well i would take issue with that the way that the pac configuration if you look at the claims the claims basically have two components it's it's completely conventional all it is is a housing that can support the weight of the cells it was stipulated in this is a twenty nine nine eleven and twelve stipulated below that the prior out our nickel champion housings did precisely that so it is what i meant but isn't it in the preamble that they were talking about battery packs oh certainly certainly the invention is a battery pack but it is a battery pack comprising the housing and the cells and the housing is completely conventional but  their testimony that it was milwaukee that was really playing the role of the pack design and that there were problems with overheating or something like that and so therefore because of those problems to make this product operational that's where milwaukee was deeply involved in trying to help make this thing actual actually operable and reduced to practice well let me say a couple of things about that first of all  milwaukee told the p t o no that it had no input into the design of the prototype packs so to the extent we're talking about the original prototype rafters correct we're talking about the ultimate product that they felt was short the later ones whether it was twenty and thirty and forty i'm sure at the end there is there is actually i mean there are certain stepmom walky had some role in that but what the record actually shows is that what molly was doing was putting these twenty five and thirty amp cells into conventional packs prior art packs there was there was no there certainly nothing in the record showing any unique pack design and there's nothing claimed in that the claims don't  put this in context your honor at the time that molly made the assignment which is a couple of years after the actual acclaimed reduction to practice the the clip the patent applications that were pending at that time were word were not nearly this broad they were two of twenty eight volt battery pack which is which molly had nothing to do with twenty eight but was in fact something new at the time so the fact that that molly was willing to give up its rights to claims that it thought were going to be twenty eight volt claims doesn't shed any light on what they may have thought five have they seen these claims these claims it basically say hey you know any any battery pack any housing with lithium ion cells that can get you to twenty amps week we invented it while milwaukee didn't invent it molly but is there is there any evidence of the record that what was being sending in new cells or was it sending ready made in a pack they were sending while they were doing both they were sending in ready made in the pack but i think you can actually in the summary judgment opinion for example the court no it's that that in april of two thousand and two molly supplied it supplied more than twenty packs with with its thirty amps else so there's no question that molly was sending the walkie packs with cells in the a way to do it that somehow that meant the conception was with milwaukee rather than molly when clearly just asking for a product that can do something it's not the same as conceiving how to actually produce that product and i wouldn't disagree with that proposition but there's a lot of facts that seem to show a lot more interaction and work together than just asking for something to do so well there there certainly are assertions about that but i think if you look again i'll refer the the twenty five amp cell from the fifteen amp the improvements were molly's idea a little further down molly made further changes including electrolyte changes which enabled it to create a thirty amp selp people producing better performance and on the next page reimers that's mildly scientists suggested adjusting the song chemistry and electro size etc so there were certainly a lot of improvements and they were improvements in response to milwaukee's request for a better battery but they were m the examiner before allowing these things and then the apt and said those prototype x don't work there then operable they did not come close to delivering their entire reading capacity and then but now we're in a new question which is what is there given what arguably is that accurate conception of what the claim actually calls for which is the average just try to kind of twenty amps over the entire capacity and not a constant even under that construction how do we know that we know that because the tap one of the tests that was run on that prototype back that was submitted to the patent office was what they called a cutting test that had curricle up and down above twenty it sometimes and below twenty amp that is the very first test result in the appendix i sixty nine and that is what they point to the only thing they pointed to when you asked them what show is that under the new construction of an average shows that a prior pack could do the entire capacity and they wanted to do one thing their expert reports seven three to seven and if you look at that site it's one paragraph in their expert report that expert is relying upon the t first test the cutting test that was submitted to the pattern of what if you look at it what does it show it does show an average of twenty six point one nine amps but it doesn't even get half the capacity not even half if you look at the calculation of volume it's not even half so even if you take an average if you look at a current that fluctuates up and down and you look at the only thing that they point to a saying aha here's the part that can do it it doesn't come close to mr meyers characterization of that path not being operable to deliver the entire rated capacity does not change even under the different construction with the word average inserted into it i don't i think i follow everything you just said but i don't think that's something that was determined to have for the summary judgment rulings i would point your honour's to two different appendix sites the first is the summary judgment ruling itself that page forty four where the court quotes and says it talks about snap on's arguments that s one finds that plaintiffs are the proper construction the twenty or so that's not bond's position that's not the district court's position no way it is though and if you look to their brief thems itself which is also in the appendix it's page two thousand and one they said that their anticipation arguments apply regard list of claimed instruction that the heading regardless of claim construction we're talking about snafus position correct that's true but the district court's rulings seem to be dependent on it believing that the twenty at limitation requires constant yeah i think that's true so it i mean i don't think was dependent wondering though i mean that's why i question whether the district court's ruling can be affirm so let me let me back up because one thing that i think that you've seen is that the appellant has misstated the scope of the district court's summary judgment rulings the court's ruling was narrow and limited and it did based only on individual prior art cells and the reason we did that because the claims all require battery packs and looking back it seems almost silly but at the time before we went into trial appellant was arguing that the claims were anticipated based upon individual cells alone we said that can't be true the claims all require a battery pack so the derivation ruling that we saw on summary judgment was based only on individual cells so are you molly alone those were not are it was substantial evidence introduced at trial that those paps did not constitute prior art why is that because milwaukee was involved in developing them and to  walking involved that i know the stand that milwaukee had certain performance requirements which are actually industry standard requires us and they asked molly to hit those performance requirements it would be like if i ask you to make me a car that has gas mileage of one hundred fifty mpg and then you went ahead and figured it out and did it that's just their performance required if that's all that happened  it may be an issue but that is not in all what the record reflects so once molly in milwaukee started working together they form what they called the eighty four project team and there's no longer as examples of the meeting minutes from those project meetings in the record the meetings happened twice a week involving engineers from both companies and in fact the engineer leading up the battery chemistry team was gary meyer from milwaukee electric two and they had meetings talking about what they needed to do how they did to achieve the result testimony where someone from milwaukee acknowledged that the actual battery chemistry was basically a trade secret mollies and milwaukee didn't actually know all the details of the battery chemistry for these lithium ion batteries so it's i think that goes beyond i know what you're referring to it was an e mail from one milwaukee engineer now we have to step back and put this in context so that's the point is is you know here what we're doing is we're debating facts here right so how is this a summary judgment  i mean it seems to me that their invasion is it's it's such a fact based inquiry and there are so many debate over who did what and who knew what and why why isn't this a case that where the derivation issue should have gone to the jury because i think that there's really two things with their vision the only argument that was taken out on summary judgment was individual and an individual self is not a pack so the argument that the individual cells could not be an anticipatory reference for a agri pack claim i think was entirely proper it was limited those specific issues it did not prevent them from making other arguments about any parapets they could prove up as prior art if you look at the court's summary judgment ruling this is appendix eighty eight the actual conclusion says as a result snap on's anticipation and derivation defense is based on the molly cells will be dismissed the ruling says nothing about them not being able to argue about battery packs or making other arguments with limited that alone they say to two portions of the record milwaukee because there's statements in there where the judge seems to be making a finding that all of the officer was getting was just individual cells and that was a finding that i kind of question whether it was appropriate to make on su limitation and that construction having been rejected little additional effort need be expended to dispose of the defense theories that rely upon it you know if we're going to say that that construction at the courts construction was inaccurate why shouldn't we say yeah we think that more effort needs to be expended because i think if you look at the timing of where that comes in the order it comes at the very end after he's already addressed the other issues so he's gone through the derivation defense in detail and gone through the anticipation difference in detail i don't want to say it's a throwaway statement but it comes at the end and there's really nothing to address after that and it doesn't really address anything after that although heavy lifting that goes into analyzing the issues of derivation anticipation occurs before that but let's let's talk about enablement for a minute before you run out of time because i think you know it it's kind of difficult for me to put together the notion that that the trial court said that there was unable meant sufficient enablement as a matter of law and then the jury said that it would have been obvious to do th it if if you need to disclose it in the specification which the trial court said well you didn't need to because everybody would have known how to do it then how is it no and i'm happy to address that so first i think we need to start from the premise that the enablement requirement in realizing enablement you start with the claims and you have those to work with and you need to work backwards from there to see are these claims supported by what's in the specification right so you have the claims basically as a roadmap to try to find the things that you need to enable it right and do you believe that the preamble were referencing pax is limiting or i mean the claim really just does talk about housing as or from any other si it does it it does absolutely requires a battery pack and if you look through the specification and this is explained by our expert dr blomberg and in his declaration of appendix a five seven zero two goes on he identifies the underlying building blocks that are necessary to enable this invention and he takes them off and talks about the cell chemistry is disclosed the cell geometry and size are disclosed but again that we're just talking about the cells and well it was hard that you said it isn't enough well i'm not there yet so the forty to talk about four things cell chemistry that's one of the things you need nearly chemistry to make it enabling the geometry and size the size and shape of the cells was important battery pack management as you noted he management things like that were important and then those are the four things that he identified as being critical to enablement and explains why each of them was disclosed in a specification and remember it summary judgment states about like why isn't what it is in the content of specification really nothing more than what need to consider a couple things what got them there was having a certain cell chemistry a certain cell size and geometry along with the battery pack design it was that combination of things when you put them together that's what gets you the twenty amps and that would have never been done before and i just want to note that it's summary judgment i don't understand you put all those things together again should have just a variety of amp levels but how do you get to the average twenty amp where does it say that putting those together would do that it says in some constructions the battery pack thirty can power various power tools including a drill driver three hundred and a circular saw three o five and then high discharge current rates for example the battery pack thirty can supply an average discharge current is equal to or greater than approximately twenty amps you can have an empowered capacity of proximately three point zero m problems and that is building upon everything that came before it including the pack design the cell chemistry the cell geometry and the cell size and shape and again only so to advance an enablement theory especially on something like this i don't think they can sustain that with without having an expert testimony to come out were charges uncontroverted and you go through exactly what it was i mean that and i looked at the claim it's a very basic right it's a very broad there doesn't get doesn't really provide any details it's just the housing and it's just a set of batteries lithium ion chemistry batteries that get you a certain performance level twenty average current of twenty amps ok so which of those features did invent so that it can be regarded as a co inventor and i would say it invented the entire combination of that so if you go back to the prior art and this came up during the i p r appeal and look for any battery pack that could deliver high current using a lithium  battery chemistry you cannot find it in the primary but let's just assume for the moment that it was molly that put in the work and used its insights to figure out how to create lithium ion batteries that accomplish the twenty amp limitation what's left to do except slam them and housing and there you go you've got your battery back so molly did not do that in fact the prototype pack that they were batteries but that was only after milwaukee started working with them they didn't have time and i'm just saying for the purposes of this questioning just assume it was all molly where milwaukee was doing nothing more than saying oh this isn't good enough can you do better that one is also not good enough can you figure out some how you know use your brilliant minds to go higher powered battery and then they came forward and cracked the code and  left of the invention other than putting it into a conventional housing that i have to think about that that just simply not what happened here and not the record ok then what was it that milwaukee did in terms of constructing molly or contributing to accomplishing building battery battery cells that get you an average current of twenty amps so the first thing they did was even recognizing the issue in the going to be achieved here but read that to the side and assume that's not good enough well let me just say the record shows that when the walkie first met with molly molly thought that the fifteen amp cells would be good enough to power any power tool so they didn't even have an appreciation of what was necessary they had no background power tools or battery packs so that's point one point two is after they initially started working together they made refinements over the years building up to a twenty five  before he went through it at trial he gave them all kinds of testing feedback they made suggestions to changes to cell design and they designed the pack themselves and did you just not a simple of throwing these into a pack as you know one of the founders i what are you are you saying that they they had them all to the chemistry absolutely the chemistry changed multiple times even though it changed multiple times of because of whom because of molly or because milwaukee parachuted in and said no you know alone and that point that i gave you the cites were he explains the changes that they made and then with respect to the battery pack design even the mali engineer said milwaukee was responsible for this battery pack gotta remember back in this time frame the two thousand two thousand and two time frame  ion was very volatile it still is today you all see the warnings when you get on the plane that you can't pack lithium in your in your pack bags because there's problems with it it's potentially volatile it was much more so back at this time so pack design you couldn't just simply take cells and slam  to be so much stronger if you were saying to us look a reasonable juror could have looked at this testimony and concluded that in fact this was joint inventor shit what you're asking us to say is that it was correct for the trial court to take that question away from the j molly that they are not inventors of this invention so they're they've entered into a beneficial contractual agreement with milwaukee and then maybe they said what they said in terms of that contract but what we have to look at right now are the facts and trying to understand what has the story and and who did what and creating this claimed invention and what i'm really trying to understand is what is it that's in this claim that came from milwaukee and it's hard for me to tell right now it's that entire come and snap and told the story to the jury so i know your question was would be one thing if we were saying a jury made a call on this they absolutely did snap on presented this defense throughout trial that that was the only thing that was great in summary judgment and they didn't ask for a charge and irrigation so if they did not put in a derivation defense based on x or something else that was not foreclosed by the summary judgment ruling that was their choice there was never a suggestion that they could put in a derivation defense that we objected to it was taken out and in fact the one of the two athan struction was in there in terms of prior art that could be used for one of th so thank you very precise your time i did want to say that i do believe the original construction is supported by philips here we did have a broad as will construction in the ip r p o we do think that there's intrinsic record evidence including the examiner statements and comments on the your murder question that support  can you address the point about whether or not we could have asked for a jury instruction on derivation and chose not to you know we could not have the judge granted summary judgment on our derivation defense and that this notion that it was based only  cells is just wrong we argued about for example in the judge talked about in his summary judgment ordered the thirty amp packs which the judge said well that i'm not going to consider those as an appendix forty seven because that came after milwaukee's request to molly to produce a more powerful pets so that's that gets into this whole issue of who contributed what and as your honor pointed out i think it is and at a minimum is a factual issue the the minor testimony for example that counsel referred to first of all it's very general so i talked about i'd suggested some electrolytes and things and but more importantly for this purpose they didn't put in any of that evidence at summary judgment and  the evidence that they did put on even a trial was controverted just for example one milwaukee co inventor said that the cell chemistry was proprietary tamale another one said it was unique chemistry other witnesses testified that had zero input into cell design and as i pointed out when i was up before the district court itself in its order identified all the improvements that molly made to the cells that and then including the thirty m cells a came into the pack so this notion that somehow the derivation defense was based only on cells and that we gave up on packs s just wrong the judge said that the molly packs after the initial prototype pack were not prior and it was he he  ruled on that several times and in the jury instruction that listed what was it minute prior are and what was contested prior art the the molly cells were included molly packs the subsequent molly packs were included they weren't even on the list of things that could be considered as prior art so we didn't we certainly didn't give up this defense system fence was taken away from us now on the the the question of enablement counsel referred to the you know the cell chemistry being important but there's nothing in the patent about cell chemistry what the patent talks about it just says it actually let me take a step back the once specific passage counsel pointed to is that passage of column ten that talks about in some constructions it can produce twenty amps well first of all that's that's talking about a result it's not talking about how you get the result but even that passage it's not even talking about lithium ion cells if you if you pars specification it says the battery packs thirty in some constructions can do this produce this result if you go back to column five where a battery pack thirty is introduced it says battery packs thirty  of battery cells forty six you read down a little bit in column five and it says better results forty six can be any rechargeable chemistry nickel cadmium nickel metal hydride various lithium or any other chemistry so we're saying that somehow you know it's some combination of all this the producers that well sure it is some combination of all of this prior art stuff that produced this invention but i mean even putting the obviousness problem with that to one side this patent doesn't say i give a clue about you know what you take from column a and what you take from column b to put together to make this invention it is there's there's not a hint of enablement in here and i also just want to say that like you're hurting you're one of three argument no i'm not and here's why your honor this is this is sort of an interesting kind of one of three case because the prior art we're relying on is the molly one or two f prior art which was which was not known to persons of ordinary skill it was known to mock you because of the disclosures that molly made and under the eyes on products case that kind of prior is is prior art for obviousness purposes even though it as against the inventor to whom the disclosure was made even though it may not be asked of the world at large so if two parties and come together in some kind of joint venture or contractual arrangement to build something together  work done by one of those two parties can serve as prior art against the second it can under under it can under the circumstances here if they have a formal agreement and they disclose it to the patent office  it is it is relevant to the appeal that it's not we don't need that to prevail certainly not going to claim construction is enough on that but i want to finish up on your question judge shun under one hundred three see first of all there has to the agreement has to be in place the assignment or joint development agreement has to be in place before the conception and reduction to practice we don't have that here and it has to have been disclosed to the patent office in the application in order to take this out of the realm of prior art that can be used for obviousness purposes we don't have that either so is it your view that say the thirty amp that he sells or the forty m betters that we used to create a pac have its own idea to come up with a new product until a customer comes in to tell you no it would be really nifty efforts i think your honor had the example if you if you had a card to get one hundred miles to the gallon but that doesn't make the customer the conceiver or inventor it's the supplier that comes up with how to do it and that's this is the situation we have here just one final point very quickly because i've used up my time i see counsel said that we didn't produce provide any countervailing expert testimony on enable