in granting summary judgment based upon incorrect application of the b m c immunity auction principles this court's decision from last month in uniloc against microsoft makes it very clear what the mistake was made what the mistake was it just made the you know a lot case you know with regard to the issue that's in front of this court now that the fact that other parties are necessary to create or complete be environment in which you claimed element or process functions that's not necessarily divide infringement in that case in other words the court held that there can be environmental limitations in claims so you're saying this is not a p m c that's  said an environmental imitation is an environment or a context or something in which the claim operates you know are in the in the uniloc case the claim was a remote station registration station and one of the limitations said including a local unique identifier i'd be generating means microsoft's position the defendant was that they did not supply or use the end user computers and therefore they didn't perform all the steps of the point the court said no that was just an environmental limitation of the thing and didn't bring the environment within which the rest was but i didn't remember that they coined the term environmental limitation i thought that was not i think you're right i think you're correct your honor i think they said the environment in which the options i find environmental limitation to be is that of merrick notion and it doesn't seem to me to be very healthy well  if we turn to our our claim in some things either limitation or it's not and environmental limitations suggest something that's a well you know in our case there is not a dispute that preamble the preamble is where we're saying that there is an environmental limitation the preamble describes a particular check that can be validated according to the process of a claim there's no dispute that this preamble includes a limitation the dispute that's here is whether is what is the limitation obligation defines the nature of the check on which the validators operates what you're saying rather than requiring that the validator do the steps to accomplish that that's exactly correct the question is does it define a check or does it add additional steps to the claim and it does not add additional steps to the claim the stuff you could it would still not warrant if you affirm the claim construction but the and then they encryption in combination with your talent and that is well yes we want to correct what with the district court made a mistake about the construction even though it doesn't have any relationship to the judgment that was absent well it's a day i took it as a final to part of the final decision by the district no no but it was not the the environment in which the process has to fight has to occur or the system has to exist there was an analogy that the court specifically included that i think is is very apt here the court said for of course some other party has to send the email and but to perform to get within the claim why it was received are cases very similar to that in that of course another party has to prepare create print the check it's presented for validation and it has to be done in a particular way so that it can be validated according to the process but that is not part of the claim language environment in which the claim is doesn't kind of he was the terminology an environmental limitation versus another kind of well i guess if i would say then that what this does is define the environment in which this process occurs the environment is this that a check that's been done in a particular way is presented for validation and that check has to be done in a certain way to to make it possible to be validated according to this process  similarly there's a system claim claim nine is a system claim which says a system for validating the authenticity of selected information found on the check again follow up on judge cross question supposing that someone were to use the validation method that's recited in the claim but they were to use it with something other than a negotiable financial instrument with that infringe your claim well i would think not because even though the the everything south of the comprising was done exactly as you prescribe it's financial instrument and not just any negotiable financial instrument but one that has been printed in a certain way it was dated encrypted and that printed on the check as described but the method i mean is the novelty in the method i mean what if that is the novelty in the preamble just say that means if the method for method claim that part of the novelty of the claim is outside the claimed method claim it supplies meaning to the claim and the difference is the issue here is not whether it's a limitation it is a limitation the question is was the preamble isn't it is a limitation the question is how does it limit does it add additional steps that the infringer has to perform it does not all it does is create an environment describes the environment in which the process well it's a question of which what words you want to describe another way of saying it is not fair to say that it describes an environment in which other people have to do other things which is what you want to avoid obviously because that's just start correct and and that's why i think that you know you know a lot of cases very useful here because in the same way that the defendant there argue that we don't infringe the claim because we do not supply the end users computers the claim was directed to a remote registration station as what it was called in the defender operated that in there was interaction between that it's a computer a computer algorithm but there is interaction between that and the computer that the end user used but what does this court held that it was not necessary to provide that computer as well as part of the system that was claimed the system that the system was a remote registration station and a defendant used that are supplied that you're simply asking us in the preamble point want to read the word is is has been i think that it's what the effect of it is the the the claim starts off very clearly as a process for validating a big ocean bill financial instrument the net of the remaining words in the preamble until you get down to the words process comprising are the description of the vironment and it's an read as a whole it's really clear that that's what it is that was the word that court used in the uniloc case the environment so it's the check that available for for validation or it's a check that's presented for validation to the system according a claim not and it's important to keep in mind this is the third of three patents that came from the same application and the earlier two patents both had claims that had distinct steps that were directed to both drafted in order to create an environment in which the invention operates and there's no doubt about that that's actually that's indisputable the question in this case is are these claims drafted in that form got a bit of a problem well actually no you're out of the process of validating includes all of the pieces there is there is someone called a validator who at the back end does the action of ballot dating at that st but that's really just comparing a process for validating actually as you read and read to the specifications later but clearly includes four steps includes encryption includes about other check and validation techniques and it's clear to read in context that the check validation techniques that the the pap is talking about is really the whole process how do you how it what you have to build onto the check to be compared later down the road and so right at the beginning of claim one where talks about the process of that would a it's really talking about the whole path and the question becomes does this claim or does or where real and modify this is or this is critical it seems to me that that while you may be right that the term validate could have the broader meaning that you're ascribing to it or could have a narrower meaning is a way of it seems to me defining what the patent he means by validating and so even if you say the validating could mean everything from the beginning of the printing of the check on in the first steps  comprising one way of saying what a process includes is a use we're comprised of another way to say what a process includes is to say where in and that's what they use they use the terms in which and where in and the question arises what do those terms in which those propositional phrases in which or where in and modified do they modify process a process of validating where do they modify financial instrument if you look at it the  validation doesn't seem to encompass creating the check in the first place well your honor i would just suggest that there is no way to read the entire specification as a whole except to conclude that the invention has all four pieces and well is there any other place in the specification where validation is referred to as include as including these three and a check in the first place i gave you the one example that i done and i and i think i can say there isn't but i can't say quite frankly i can't say there is but of course we really need to look at the claims first and maybe last but look at the client and return to my point the court has to determine what do the words what does in which modify what does where in modified if we're going or in which modifies financial instruments then you go one thing but we follow the where you're going from there i would seem to me that the question is is whether your premises correct correct and if so how do i know the in which even if in which modifies process the question is is does in which tell us that allegation is or only tell us the setting in which validation occurs i need to pick a more homely example perhaps you could say what is the process of shifting the gears of a car now you could say the patentee could write that in a couple of different ways including one step on the clutch to move the gear ship three release the clutch and say or it seems to me that he could choose to say well this is shifting the process of shifting the gears of a car are in a setting in which the clutch has been depressed moving the gearshift down a and b releasing the clutch and then it seems to me it's defined the process not to include the depression of the clutch don't you think in the process in which the setting is such and such yeah if they had written it that way it perhaps would have been clear has been depressed and that setting is almost synonymous with environment on it so i have no i won't quarrel with you that they could have drafted this in a way that would have establish it as environment but they didn't and why and what other evidence is a well first of all if you look at the dependent claims they're all set up exactly the same way a process in which a set a a a system where  process and our limitations on the process if it if it modified fight negotiable financial instrument that is of a just describe the type of financial instrument on which the the code had to be found judged like when you ask your question about the about the financial instrument you said the financial instrument on which the this this information is found and that's exactly what the what they were doing here but more importantly incremental evidence of what a person reading this patent would understand keep in mind that and the plaintiffs can see this the specification is drafted to encompass an invention that that performs all of these shortly but when it refers to validation it's talking about the even corruption step in the earlier step of creating yes you can't you can reach the invalidity issue you have jurisdiction to region but we have to say that what the district court made a mistake in dismissing the inability claims without prejudice as i read the you're feeling is the dismissal without prejudice i mean we're we're we're appealing the the final judgement which is judgement in favor of defendants and help but what that this is the only thing the district court did right correct so we would have to say that in dismissing them without prejudice the urban riot and would that mean that every time a district court that happens frequently that's the right and i used the chief analogy would that mean that every time the district court dismissed invalid he claimed that prejudice you could appeal from that but i think as i read and i as i read the courts and i will confess that it's not transparent on this point what kiran and must be peeled in a situation like this with as i read the court's precedents we not only could appeal it we have to so you think that if you had not appeal judge perry's ultimate judgment in favor of your opposing party that you would have been foreclosed from going back and reass we really need to point to the plain language it doesn't affect you know your honor it doesn't but the but the if your honor is well it is representing that you're not going to touch that judgment i will combination with mean and the court held that the terms in combination or a combination had to have some meaning and therefore it had to define a step separate from the encryption and if if  will look at the claims and if it deletes the terms a combination or in combination as from the claims it would read exactly like the plaintiffs would suggest a claim the difference though between let's say taking the words thomas mcgough and and adding the key the end of that which let's say is nine ninety nine and then  versus taking the word thomas mcgough and encrypt thing by or taking that and raising it to the nine ninety ninth power and then encrypt thing that which would be more not encrypted a combination but encrypted in combination with that would be a new onsite acknowledge your honor but it was stipulated away in the district court for the parties agreed that the court should construe the terms in combination with and a combination of identical and for the six twenty four the one ten  the check there's an cripps in going on in connection with the check but those patents are all directed to verifying the identity of the person who is presenting jack there is no i don't think that's true if you look at it carefully you can see that and i think you're referring probably to shabbes and way and white references each one of those is directed to identify verifying the book the identity  person there which is why they see information in one specifically it says the key information is the check number it's key information on the check and that's directly the opposite of what the invention here is about invention is about verifying the accuracy of the data that's presented on the check to to be able to catch altered checks or counterfeit checks to species of check fraud there are other cheap types of check fraud  such as speed and pretending to be somebody else that's what those other patterns are directed to i mean there is a lot if you look you'll find a lot of patents out there there's a lot of art directed to different little nuances of check this is a particular one those are different to the issue about whether you can reach the invalidity issue i you know i don't think so but you you don't prejudice and i think they have my understanding of the of the appeal that they cross appeal was directed to the denial of summary judgment actually that's premature but if we were to conclude that it was invalid that would because the judge dismissed or denied both summary judgment motions for because they were fact issues i don't think it's right this court to look at that that's what i'm going to kind of name i think i'm over my