everyone we have five five cases before the panel this morning three of them are argued and two of them are being submitted on the briefs without oral argument i will just indicate for the record the two submitted cases the first one is number zero five dish three three two nine why should first is the department of labor and the second one is number zero six dash three zero eight seven lua versus the united states postal service again those two cases are being submitted on the on the briefs the first case in which will hear oral argument is here today to reinstate the jury verdict as to claim ten regarding infringement and to reverse the jury's not infringement verdict with respect to claim five and the jury's verdict of not guilty miss there are five issues that i would like to touch  the specifications of this patent there's a lot of emphasis that the president mentioned has the effects of a place or composition and the district court said that he's going to read the the claim limitations or that there's a specific claim limitation they call for any fact i think that there's much in the specification that describes the science behind the invention if there is no let's take a look at that column one of the specifications which is  correct that that is the basis for his her infringement test why she did not examine the accused composition is right she did not do a test with the exact formulas that is correct but d accused formulas and he concluded that there was no statistically significant difference between breads made with dr kim's potassium bromide replacer compositions and breads made with potassium romaine and the properly so that every limitation was present in the claims under the proper point construction where p b r simply means people who are substitute did or wait wait under the other wait don't talk over did he testify contained the components of the claim but not infringement was found based upon the construction that you had to have these specific effects is that correct that is correct let me ask you let me ask you reasonably say well it has to have certain results certainly though don't you have to have more than just saying it's a substitute is that i mean that doesn't have to be so i guess i'm saying doesn't have to be some definition to substitute because the spec does say i don't know if it came up well maybe didn't your discussion with george dyke but says has to be defective i think i guess in column two line thirty nine i by the intrinsic evidence judge b if your question is no because the person of ordinary skill reading this specification and reading the claims and indeed reading the prosecution history would recognize and know what cassim brawl may ultimately achieve by wa attributes of the invention but the independent claims do not and that's another flaw with the district court's going construction that if you take claim differentiation which is merely a guy i recognize that but if you use that guide to analyze claims in the context here and you take dr kim's invention and put it into the bread if dr haase any good you will get good results nobody is contesting that nobody is contesting the utility of the pact but i think that's what the state more than the need to read limitations in the claims it is a straightforward claim interpretation i give you that i think it's proper do you have about three minutes and twenty five seconds left so you're just about into your rebuttal time do you want to wait it will preserve the rest here but although i will thank you  that the judge raised its warning certainly it's not disputed here that the preamble of the claim potassium bromide replacer composition is a limitation because there are many many different reasons putting greens rednecks that have nothing to do with replacing the task you're growing and it can't be a matter of subjective tempt the comic or employee who developed the formulas here m district courts claim construction he was articulating his view with both me and judge dyke is that the district court judge read limitations into the claims impermissibly from the specification i mean i think that's that's what his argument is with respect to the district court's claim construction design or standard and without them i mean isn't isn't that a pretty well settled proposition that specification that's that's a better way of saying than what i said but is that it is proper to look to the specification and the prosecution history to determine the meaning of limitations which are not certainly certainly  e the specification does suggest that it's an objective of the of the invention and one of the purported advantages of the invention is that replacer is a rip is is an item that acts as a slow acting oxygen well i don't know of any basis for defining that  dr kim has a theory which is unsubstantiated not proven by any any test and not agreed to by other people in the field that there's two parts one is that the addition of for food axis causes the oxidation reaction to be prolonged over the course of the cause of the baking process of the bread making process in the second it is that prolonging that is beneficial it's respect with respect to the second part of that that we have the greatest problem dr harlan said that he didn't believe that that was true because talker that i'm understanding your basis for saying that the construction proposed by judge shaul is without support because it certainly is supported by the specification in the sense that it this is supposed to function as a slow acting him oxidant the question is where there are these additional requirements should also be viewed as claim limitations so i don't believe your hon kim's theory the this is a particularly advantageous roam a place or because of the prolonged oxidation factor but i don't think the specification be read can be read as saying that is the definition of to say that its function is a slow acting occident is part of the invention well if i may call your honor's attention to calm to line twenty twenty nine starting with however these potassium bromide replaces have disadvantages because they have a fast acting or intermediate reaction break so that is an acknowledgment it seems to me that there are potassium bromide replaces which do not have the advantage of a place or and in fact the stuff of this patent or publication i think captures the sport very nicely on page two at the bottom it says chemistry with endo it's so and it is difficult to explain with certainty why the present pompously composition is so effective and i think that remains a true statement today that's what dr oz me said this is a very complex chemical system people have various layers as to why different effect is beneficial but i think we need to remember that dr kim's own tests did not support her theory in fact there has never been a test there is no test anywhere in the record of this case which  because it's ten fourteen of the joint appendix we have the various stipulations now obviously we can go one of two ways on the plane construction we can affirm the district court's claim construction as you're urging or agree with it or we could as mr pelletier is arguing we could reject the claim construction obviously if we affirm the pla construction you prevail on the on the infringement issue so for now what if we adopt however the other alternative we're speaking hypothetically not to suggest how the panel's cool good going to rule one way or the  you if we adopt a different claim construction other words if we say the district court erred in the claim construction where does that leave the case in terms of the stipulations that we have now the words do you or automatically win if we if we accept the district court's claim construction if we don't accept it and adopt a different one does that mean you lose given the stipulations i don't think the suggesting is when you do have here and correct me if i'm wrong as i read the stipulation at ten fourteen of the joint appendix you agree and please correct me if i'm more that the product the connect the product has the product didn't meet the additional limitations that that the judge said had were necessary in a piece of potassium bromide replacer but what if we said those limitations were wrong where does that leave you in gill stipulation slow acting oxidant that is functional throughout the entire manufacturing process so if we just said it's a slow acting oxygen well where would that leave you in terms of the infringement she would leave us exactly where we are that there is no proof that these acids act as a slow acting oxidant in the particular bread formulas and process so you would say if a different claim construction was arrived at by the by the court then it would not be a reversal in terms of a judgment for kim but rather would have to go back for a factual determination well if the court went so far if the court were to say that all th she does not let in i don't think it's necessary to send the case back to the district court because i think this court can determine that she never put any evidence in the record to show that there was any such effect would you define it in terms of the slow acting oxidant or whether you on to reach these invalidity issues including that we capture i would strongly urge the court to do that because there are three other cases pending involving this very same happened it seems to me that and we do have a declaratory judgment conflict here for invalidity ok that answers my question yes i must say looking at the reply brief twenty two on the significance of this stephanus reference i think that the statement in the part of the anticipation instruction is very clearly only part of the obviousness instruction you may not be familiar with but i'm express concern that i'm give you the opportunity to address respect anticipation your brief suggests that it was the brief that strikes me is the same misleading use of a look sees to suggest that this part of the instruction referring to deception this was part of the anticipation instruction it is seems to me quite clear instructions but i if the instruction was obvious so and if the if the reference anticipated so then obviously the reference clown not the question if you argue that the judge instructed the jury about the stephanus reference in connection with the anticipation instruction i'm suggesting to you that that representation that period page twenty two of the reply brief is doing there was referring to the second instruction as a definition of the prior art i don't think we have different definitions of prior art for obviousness in the interest page that's correct and there's a listing of the prior art under anticipation which does not stuff i just i want to give you the opportunity to address that because i'm concerned about the representation that's made here of the use of the ellipses to suggest that two things work together which work together well  there certainly not continuously instruction but i do think it would lose fair to look to the later instruction for the definition of the term prior art as used in the earlier instruction even though that when dr kim filed her second application which is a continuation part of cake her claims had been rejected based on the two not the pap which include the very same acid combination the not the same proportions that she was claiming in this application she set forth to pass range as a concentration range as a broader range in an hour range within the broader range of the same time that she did that she put forward a limitation calling for that in order to avoid the obvious this rejection welshing she labeled a discussion of portion of her remarks of the effort to distinguish the prior art or that ability over the prior i mean within obviously if we agree with the district court's claim construction you lose on infringement issue i disagree with you disagree or disagree that you say that even if we agree with the district instruction that's correct  stipulated facts dr oz nice testimony and yes i'll get norah fair enough and let me i misunderstood then let me ask you this if however we agree with your position and adopt your complaint construction or one of the claim constructions that was being discussed that you heard discussed with you and mr schroeder where does that leave this mr schroeder says well he he would win anyway we could we could rule in his favor i'm sure you're not going to agree with that but what would you say should happen next in the case if we give you your proposed claim construction or we adopt one of the ones that you've heard discussed separate from the district court yes in other words we reject the district court's claim construction but we're faced with either your claim structure or one of the ones you've heard us talk about an ox in the slow acting oxidant and we have the stipulations where does that leave us that leaves us with a finding of infringement because the phrase as an oxidant is already a limitation the slow acting nature of dr king's invention is set forth expressly and certain to be penned in claims so that those are not at issue here just focusing on the independent claims if you read the limitations slow acting into the independent claim into a limitation in the in independent climb i believe there is still substantial evidence efficient evidence disagree with the district yes claim construction and go your way or one of the ways we've been talking about is the most appropriate course first to send it back to the district court to assess the matter under the revised claim construction that is most commonly what we do not construction that ultimate determination could be made or should be made by the district court i think there is ample evidence in the record to result that even based upon the claim constructions that i ever heard discussed today however it certainly would be a possibility depending upon how you resolve this issue to send it back for disposition or reconsideration of the evidence i said i suppose a it rebreathing a post trial motions perhaps in light of that kind of structure for absolute trial i don't think that's necessary because i think the record is fully developed on most of these points that i've heard discussed where they were the one one vote with the stipulations that we were looking at were they were those stipulations entered into on the basis of the district court's claim construction or w prior to the construction well there with that was after the district court time construction the stipulation for right before trial september twenty ninth to believe two thousand and four that's what what i was citing right yes ok and of course if you and the jury it at that really don't know why the amendments to the continuation part of that is that wayne question and then the additional phosphate limitation why they were put in and it isn't clear that they were directed to the earlier obviousness rejection suppose we were to conclude that a lot of our recapture cases have suggested that this is a like prosecution history stop and prosecution history is top of course under and davis and festival there's a presumption that unexplained amendment is designed to deal with patentability concerns why should we make that same assumption here in th prosecution histories stopped and in prosecution as christoper unexplained amendment is assumed to be related papillon why not make the same assumption in the recaptured context because in this case the defendant has a burden of clear and convincing come back within two years in broad and her invention so long as it was not a deliberate surrender as to the phosphate limitation the evidence is clear that the patent office stated that phosphate is not a path to be distinct limitation and it couldn't have been because disclosed phosphate so like adding phosphate dr kim was not could not be getting around a man just and that arm and what about the brain the range of food acid was simply an oversight a mistake by dr kim when she claimed for food acid range and she originally claimed her lower end i think was was point zero three in the original application then she went to point zero two in her continuation of part then the one twenty nine patent issued and when she finally saw it three weeks later she came right back to the patent office practically immediately and said i didn't claim all i was entitle to and the patent office never gave the food acid rain a second thought originally the patent office said recapture will violation because you're taking the phosphate limitation out but then the patent office was convinced there's no violation of the recapture rule here in the district court was convinced because the objective evidence establishes that there has been no deliberate surrender of any never was not concerned with the expansion of the ranges dr kim expanded the food gas range the ascorbic acid range or make sure i'm accurate on this point she expanded the food acid range she expanded the ascorbic acid range and she's expanded her phosphate range as well in the reissue in the patent office properly recognized that she had never ever relied upon any of those ranges to distinguish prior art it was a mistake that three weeks after she had realized that they explicitly that she had relied on the rangers to distinguish far i don't believe they stated it but the record bears that out because she never made had them she never had to overcome any prior or with any ranges that were impinging upon hers filter you've gone over the additional time but i think actually that adds up to about the same amount of time that mr or mr schroeder had so i think we're about to thank you thank you very much mr schroeder thank you again the case submitted