pretty clear that the foundation for the invalidity ruling was the claim construction that claimed one in eighteen recite an apparatus a mobile station that achieves a hand over by performing six method steps and then the court gave some examples of the method steps and goes on to say the claim described the apparatus is actually performing the method steps that was the  destruction that led to the district court in our view misapplying the i p x now we talked in our brief about the claim language in the specification but i also want to point out and sort of start in reverse the examiner rejected the claims in light of the ms inskeep reference how did the examiner read these preamble limitations that were fighting over well the examiner read the preamble limitations describing things that were happening in the network and base station elements and the m s c for example the examiner cites story link data and what he does there is he parrots the claim language any tenth holding he cites the m s c mobile switching center so the examiner when he looked at this language plainly understood the claim language on its  described actions that were going to be occurring in the network in order to achieve the handover not things that the mobile station would be doing which is where we think the district court in the claim construction and i think the language supports us on that i mean it it says a mobile station for use with a network it says the networks got to first base station and second base station that achieves a handover from first base station to second base station ah and then it lists and number of actions now those actions storing link data for a link in a first base station nothing in there talks about the mobile station so we look at the plain language look at the prosecution what is the specifications well the specification confirms this hauen fada flying fifty six through sixty four talks about how the base stations get some messages so yes one stops transmitting just that preamble language today it's absolutely your honor i mean i'm that the analysis on the i p x l is basically on pages forty six and forty forty five and forty six of court analysis on claim construction is on page forty six and that's where the district court finds that the claims one in eighteen recite an apparatus a mobile station that performs all these and actually the district court doesn't really discuss the claim language doesn't really explain the conclusion other then citing a different section of the file history for the proposition that one point during prosecution applicant characterized the elements in the preamble as process them a tape that's the sole analysis of the conclusion that it's the mobile station that does everything in the preamble and i'll address that but again if you look at the specification column seven lines forty six to forty eight the base station holds the resource of the most station in reserve how and seven was nine to eleven however in this case b s one starts a timer these statements in the over the district court didn't discuss any of that the district court appeared to simply assume that it's the mobile station that's doing these things and one of the reasons i say i assume that is because even h t c in their steps they take they characterize the preamble elements talking about what happens during handover a step we say they are functionalities but they argue those six steps resided in absurd claims one in eight for achieving a handover do not further limit the recited structure the arrangement for reactive amy's plus function element instead the steps recite actions that the first base station under takes the issue as to what was doing the functionality listed in the preamble was not even in dispute before the district court both ip com and h t c agreed that what's happening is the base station in the network the courts you're in just prices decision and it is instructive on this point so in bud you instructed district courts in considering sufficient structure for section one full paragraph six cases you said a challenge to a claim contained a means plus unction limitation is lacking structural support requires a finding by clear and convincing evidence that the specification lacks disclosure of structure sufficient to be understood by one skilled in the as being adequate to perform the reciting function that was the test that you instructed district courts to apply in this case the district court applied that asked and it a forty two she agreed that a skilled person reading the specification she says one skilled in the art would immediately deduce that a processor with a transceiver was the structure indicated by the specification so that the actual climbing gets reviewed for clear air both under budget and the technology licensing corporation is now i have not seen h t c i mean obviously it's the court's decision as to whether h d c shows clear air i don't think they can do so we cited to both the district court and this court dr rosa's their experts testimony on this which appears in the record a seven thirty one and seven thirty two question let's break it down would you agree that in one thousand nine hundred ninety six people would understand the phrase mobile station minimal station had to have a transceiver answer it has to be able to talk to the network so you've got to have a transceiver same question about  seven through seven o five the testimony of dr madison that he put together a declaration explaining that a skilled person would read the disclosure and immediately understand enable one of ordinary skilling are to make and use the invention they do not recites a particular structure that performs the function and to which the means plus function claim is necessarily limited and your honor this is where i would disagree with you if you look at your bud decision so in that case it was about a selector and the specification disclose a commercially available selector and the court held on based on the record that that was sufficient for one of ordinary skill  or anything else and that would be fine because everybody knows what that structure is and one of ordinary ceiling the art would immediately perceive what the structure is this is a little different is it not i don't think so your honor because dr maserati and dr rose looked at the specification said look this is talking and clearly there is disclosure of the mobil station and they said what is when you when you hear that the skilled law does not require you to identify a particular microprocessor or a particular transceiver what the case law requires to find is that a skilled person reading the written description would immediately fin a clear conveyance of the structure that was the record evidence in this case just like in just like in intel with the core logic where there was no computer  applies to all the claims even twelve that was not directly addressed by the district court so that the arrangement for transmitting link data claim is also covered by that same algorithm i believe leave that's the case but quite frankly th e reason we stipulate on claim twelve had to do with the argued about the lack of disclosure i mean our position is the argument about there is no algorithm was waived i mean we the parties agreed on that in the briefing leading up to the claim destruction and the court said she only wanted to focus on the issues in dispute and the only dispute was whether there was a structure to implement the algorithm but ok i understand that and will address the waiver issue but that's still up to us whether or not there is weight or so assuming that there's no wa address that this court's decision harris i believe in harris there was a j m o motion made after trial and the court found that the damage will motion was sufficient to preserve the issue and this is a different procedural posture where the court has not there has not been a full trial on the merits there has not been a record developed on this the district court did not consider this in the first instance so i think if you find there is no waiver of the argument that there is no algorithm at all here you're going to have to remand of the district court and let the district court addressed that in the first instance rather than doing it yourselves because the parties quite frankly in fairness we didn't have a chance to address that it was not disputed so it ought to be remanded in allow of the parties in the district court to address it just briefly on the on the i can excel issue  the feister of decision just confer just june second to confirm that there is nothing lot wrong with preamble setting forth environmental elements and proving infringement of my reference to the environment and what the claim invention requires that's the structure here the claim elements that the preamble within the preamble structure here is very close to the microprocessor and has been case and i understand the court distinguished microprocessor enhancement in the cat's case but there the claim element in cats was strikingly similar to what was it issued i p x l here the structure of this claim is almost the same as in microprocessor enhance the only distinction is microprocessor has been focused on the method line but there was also a claimed seven in that case with respect to which the corpse it claims have been is clearly limited to a pipeline process or possessing the record structure incapable of performing the recited function and as thus not indefinitely under i p x out here some of the language in claim seven that was said to be simply describing capability a pipeline stage performing a algebraic evaluation said and they were right when true enable him with false disable the pipeline stage when specified how the conditional execution specify are determining the enable right i think the issue here is one of whether there was sufficient description in the preamble of the environment that was done there is no ip actual issue here we do not have an actor that the claim specifically requires to performs on the second set of that we're just talking about grammar here when you're trying to see who's performing the actions in that preamble  care just some grammatical principles that you can apply to is aside whether or not that the steps are tied to the mobile station versus tied to the network i'm not familiar with exactly what the quarter's ask you know i do believe that just reading the structure of a claim you can see that the reference to that achieves handovers talking about the network rather than the mobil station and that's certainly supported by the specification whatever the chromatic instructions see a m my name is michael line here on behalf of each t c your honors there's two distinct issues on appeal but the two distinct issues really fall down into one issue and that is that how can you claim an app or how can you provide apparatus claim when there is no disclosure of any structure for that apparatus anywhere in the specification and that is important for both issues on the appeal both the hybrid claiming issue and also of course the means was functioning to you because what happened here was that the patent attorney you who that this patent application was faced with a conundrum he wanted to try to claim the apparatus to avoid the divided infringement problem that would be associated with the method and that's all that was disclosed in this patent application was a method of just announcing back and forth between three distinct entities there's no disclosure of what those entities are just that they exist here's a mobile station here's a first base station here's a second base station and so you couldn't take any of them to actually go into the component level for any of them and so he did this kind of hybrid format i'll start with the method that was described in figures two through six of th and then i'll put in this arrangement and when you look at this claim it claims one hundred eighteen in particular it's striking there's something that just goes awry typically it's common to see something like a mobilization for use with something mobile sation were performing something but here it's not about this kind of functional language it's an action it says the mobile station that achieves now there's an issue as to whether what is doing the achieving is at the mobile station is that the network well let me go to the buy last point with your opponent and that is from a church or medical standpoint i mean it's a basic rule of grammar that that a modifier modifies the nearest antecedent there's no commas in here why should we assume that this sentence is a mobile station that achieves rather than than a network that achieves well first of all that the nearest thing that it could be modifying would be the second base station and that couldn't be right because a second base station couldn't possibly and order to answer that question you have to go into the specification and see what the real purpose of the invention was and throughout the specification it says over and over again that the mobile station achieves the hand continues on and on and we go through the list on page twenty two of the read brief the issue here is that the the most asian is the quarterback that's the invention here that the mobile station is able instead of having a typical system the way that a typical cellphone network works is that the network makes all the determinations the network tells the most stations on the network what to do but here it's the mobile station who decides you know what i don't have as good a signal of a station one is i'd like to i'm going to tell him that i'm leaving and i'm going to try to go somewhere else and see if i can attach there and i can't and i'm going to find my way back now the issue is that mobil station is either depending on what claims you're looking at reactivating the link or transmitting the link da  and that's what the purpose of the mobile station is correct the mobile station is either reactivating the link or transmitting link data in addition to that it's set in the entire process in motion so in other words what it says in the  technique for forward handover and in a forward handover which is not described that anyone else was able to do this before but in a forward handover the mobile station tells the first base station i'm leaving you and i'm going to look somewhere else and i tell you is so that in response you will you will stop sending me data and you'll hold my resources for me and so the issue is the who performs the steps the really boils down to who's controlling this and it's the mobile station that's controlling this but the problem that we have here is that the mobile station is both required to perform actions and it's also the structure and that presents the inherent confusion it's worded differently then in the cat's case in the ip excel case this is the preamble those are in the body of the claim but the import is the same because what's happening here is how can we tell what is h u c is a c c infringing this patent when it makes we're sells  the product well it depends on some of the steps that are being performed in this claim and the last step this perform is particularly instructive here because that one is about deleting the link data and it's disclosed reciting two different ways worked you don't need hopeless and doesn't need to be held anymore and for a c c is respectable neither of those has anything to do with what a c c is going to be doing those are steps that have to be performed and we're not talking about mere functionality so h this claim to the issue here is there's two issues they fall down into one central problem but one of them would have been fixable and the other one would not the method part could have been fixable they could have added structure to capable of adapted for those of the kind of words that you typically see in ordinary patent parlance to talk about capability in functionality but here they use the active tense they said and that's why grammar is important they said the mobile station for use with a network hav that can be interpreted to mean a capability it's it just it's a it's a network that achieves certain things by doing certain things when it cheats it on what conditions at what time in response to what stimulus is a separate separate issue well there's a c in a dozen council sites to the any c case and that one it was about in a pipeline processor and it was a method claim and in a method claim it's appropriate to resign in the preamble and environment in which the method is to operate it's very simple the method provides a list of steps and we want to know when and where the steps are going to  ur so we provide the environment in an apparatus claim doesn't work quite that well it works fine if the environment is a structure and you see that all the time and in every single example the by kind case the g e case every case and  their brief the environment is structural it's something that or it's just intended use but here what we're seeing is it's not just intended use it says that achieves and there steps those those buying doing this doing that do we met those are steps and when you look at the appendix and you look at the file history in this case when they when the application was first filed they went for the met in fact if i can direct your attention  to page a forty three of the appendix shows on the date that was filed what these claims look like and claim one says a method for handing over a link and then it lists four or five steps and those steps  exact same steps that appear in claim five now written in the same way and then we go through the file history and we see how those steps are treated and we don't just have to look at what the the district  steps we have both the examiner and the patent attorney the examiner throughout the prosecution referred to them as steps any any try to distinguish it by our acts are he objected he rejected the claims based rejection he points to structure in that they station of the of the prior art reference to ms in ski reference to show these are things that can perform steps but then in the next page it says however  continues on discloses this method if i turn your attention to a one thirty eight and but unless there's nothing wrong in here at me what with beginning with the prosecution history that contemplates both method and apparatus claims and and and backing out and deciding not to proceed with them at that point is there no no absolutely not what happened was they started with claim one as a method claim and claim five is this kind of hybrid format and then they abandoned claim one and just went with claim five which is up in one so claim five during prosecution is now claim one in the issued patents and so in the in the prosecution history when the examiner is referring to the fact i'll just quote page eight thirty eight jiah pollen describe a method in which the loss of data in this and this happens i'm sorry that's not the examiner that's the applicant this is one thirty one thirty eight correct your honor and a one thirty eight is the exist is the applicant who  method and then on a one thirty nine he says in contrast the applicants invention does this instead and so he is distinguishing the prior art based upon the method disclosed in the prior art so that that's how we get there i see them i'm losing some time and i want to turn to the other issue i think is fundamentally important because again this first issue about the hybrid claiming could have been fixed if they would have used language about adapted for configured e for the second issue is much more severe because it gets to that quid pro quo the bargain that you're supposed to strike in order to have a means plus function element for the blood case that goes in council refer shelf parts correct and it was a sensor and it wasn't that big a deal now let's turn to this issue about what the experts agreed to everyone in this room and i think everyone over nine years old knows that a cell phone has a processor in it and it's got an antenna and so when professor christopher rose admitted well course you've got to have a processor to crunch the data and you've got to have a transceiver to send things in and out he wasn't admitting that  tied to the function in the means post function limitation but that's that's the operative issue that has to be addressed he just saying of course phones have a processor and phones have a transceiver now here the claim is the docile case for example this claim is not directed to one single element and well you know sure it says that it comes in and says it there's number crunching a system gets it out it just didn't say the word computer but we all argue that at that even if the hardware structure was known to one of the algorithm doesn't sufficiently disclose any any structure of how you get there when you not only didn't raise it during claim construction but you didn't even raise it during your summary judgment we did raise it in the summary judgment motion it was raised by saying that the two have to be tied together the issue is not just whether there is an  brief we stated that at best all the showed it was a system wide capabilities and a system wide type algorithm not the algorithm that would actually be occurring on the phone and the issue here and this is the i know i leave a few seconds left in the point that i want to conclude with we'll give you a little bit of extra time we gave the other side some extra time so thank you thank your honor the issue is here if you just set a computer and if they do it or if you didn't say computer but everyone knew it's just a computer like in the aristocats case or something like that we're ok at least we know it's just supposed to be a computer an hour trying to figure out whether the algorithms mission this is far worse because here we've got multiple things now the other side says oh it's a it's a coming this is this is my adversaries expert report and what he's doing is he's providing figures from various patents that were around at around that time to say look everybody knew that at the time there was a processor and there was a transceiver in a phone we don't disagree with that but look at what else you see here you see controllers you see in on page six ninety seven and you're one of the top there's a separate transceiver and a separate alternate trans look at the bottom figure three you see it store time slot code or frequency synthesizer what why is it that they're different if everyone knows that it's going to work this way and it's going to have this functionality why would there be differences and it matters here because in the patent it says in the summer the invention in contrast with the known phones the known base stations and the known networks here we provide something new and we asked that same question of the inventor in his deposition and said what do you mean by that and he said the no one phones are going to work you're going to need a device something new that the district court made a factual finding that one of skill in the art at the time would understand what this hardware structure w the district court was applying the wrong legal standard the issue that the district court was addressing was that they know and miss it and misinterpreting what professor christopher rosen said christopher rose never said that one of ordinary skill in the art would understand that a processor in a transceiver would be the necessary structure to perform the recited functionality in the means must function client what he said was everybody knows that a phone is going to have a processor a transceiver but we don't know what function that what what structure is going to perform the recited limitations is what you're saying that transceiver and computer a six ninety eight we see one transmitter and one receiver so they're there separating the transmitter and the receiver from each other they're not they're not grouped together they're separate i don't know whether and one who are still in the art who would read this wouldn't know what the right functionality is for performing this we know that phones have processors we know that phones have transceivers whether you're going to need a separate transmitter in a separate receiver to accomplish this we don't know whether you're going to need a separate digital then you have to look at it then the problem is there's there's nothing disclosed at all so how can one conclude that by merely identifying that there is a mobil station that connotes any structural components at all i  i just said assume that we do that then then if you assume that you do then the next step is to figure out do we know necessarily which aspects of those structure perform the aspects of the recited functionality and you can't get there multiple components and so even if one would conclude that we know what those components are without any disclosure of those components and without any disclosure as to how those components perform the functionality you're left with the same problem very well thank eighty eight sixty four they have a section saying our proposed construction section d of their grief for the arrangement for limitations they don't incorporate critical steps and in that they identify in the middle paragraph on a sixty eight sixty four the what they continue to be the hour of now the by the time we got to the here we had pointed out to the district court your honor we agree this is the average and the court had ordered the council to restrict the permit as reflected in the record to only those in dispute the only thing that was in dispute by the time we get to the hearing was the hardware issue with respect to which council has conceded that mobil station is known to the people of skill in the art to include the transceiver in the processor and the argument they made below which i which they didn't really make in their brief but now i see reprising here is that it's not specific enough as the transceiver with a microprocessor the intel case specifically addresses that and cite a number of other cases that address that as does the case finally with respect to the i p x ilish i think that the cheese ah i is no different a signal indicating capability than adapted are structured to adaptive for a capable up it's the same signal indicating this is capability that you typically see just like the that refers back to the network now that is broken up by the network including base station want to base station two but that were first to the network that precedes the including clause which indicates why the court misconstrued that element