member of the bar and is in good standing with the highest court of california i have knowledge of her credentials and i'm satisfied she possesses the necessary qualifications i know these things because mr john has been one of my clerks for the past year a year ago mr young had a big challenge on her hands because she was replacing a star clerk and i was concerned what that was going to mean for me but  been at her best for a whole year and has been and outstanding service to the court she is she's a strong analytical thinker writing is always clear and well written work product she knows right from wrong she has excellent judgment she knows how to keep closely guarded information secret as apparently so do all of her coke lips and that can be a very positive attribute i think in all i i think she would be a terrific member of our bar and so i respectfully request that this motion be granted thank you your honor it may please the court the new trial order that issued below and its post verdict change to the claim construction of arms portion should be reversed and the jury's verdict of willful infringement should be reinstated apex argued or noted that the quote unique procedural posture close quote of this case does not matter the only issue is whether the claim construction is correct but that is not entirely accurate it is a long standing canon of this court that claim should not be construed in a results oriented fashion including without tailoring the construction to the accused device and there is no question that canon of construction was violated in the new trial order and there is no question that judge the late judge darragh when he had valuated the exact same issue with the exact same arguments with respect to the prosecution history and the construction of arm portion and who did not violate the canon against results oriented constructions found that loggerhead did not clearly and unmistakably surrender the very claim coverage that the new trial order found to be clearly surrendered post verdict are you suggesting that any time a district court judge makes a reference to the accused product in considering the claims  construction right i'm talking about at home are here that i think and so even though she may have made another observation about the peculiarity of the prior quote construction in the context of you accused  product it's not clear to me why there would be an irreversible air with her correct claim construction based on the intrinsic evidence i've i agree with you your on of the different claim construction is correct based on the intrinsic evidence the fact that she violated that canon of construction along the way would probably be beside the point but i began with that because i think it is in it starting from where judge paul meyer started to which was to find that judge dare as claim construction was unworkable because it purportedly resulted in a finding that the max axis locking ranch has an in for engine arm portion and she found that testimony that bad expert opinion to be arbitrary starting from that mistake the mistake that the loggerhead expert identified an arm portion configured to engage the and that identification was arbitrary led to the search for a dictionary or some plain meeting then compounded the errors in resulted in a misreading of the prosecution history and an over a dictionary definition of the word arm when the term for construction is the phrase arm portion and prioritizing that dictionary definition over important intrinsic evidence like the comparison of the asserted claims arm portion and other claims in both patents that shed more light on what the applicants and patents he was claiming with respect to arm portion  not the projects from is attached to an access point or a body to itch or a book or a body portion but there are claims in both patents that go to both of those claimed construction issues that she raised in the five  there is a claim five that is identical in all respects to the asserted independent claim trial except that then adds a limitation that says that the arm portion further includes a pair of arms disposed on opposite sides of the body portions such that such that the gripping element is substantially shaped the claim that was found to be infringed by the jury does not say that the trial that claim defines an extension to a body portion that projects from the body portion to form a nd body portion where then there are two different body portions that can engage different aspects of the workpiece that language projects from is no where in the asserted claim is nowhere in the prosecution history it's used and it's used claim does not even define an arm or an arm portion so you have clearer her claim differentiation issues that show and judge palmyre and starting with a dictionary definition of arm when arm is not a claim term arm portion is all of that led to her error from from thinking that she had to quit more certainty essentially that she she felt that the x for identifying them x axis locking or inches arm portion of the  figured to engage the guide she thought that was arbitrary so she went searching to put more meaning on into the claim and that is what led her to error so i am i agree with you your honor that there are a number of federal circuit cases the say it is not error to know what the accused device is or even sometimes to know what terms should be construed you need to know what the q accused devices and what the arguments are going to be and so it is not that the accused device irrelevant or there needs to be a cloak put over it's during the markham process but but there are a dozen federal circuit cases that cite that canon of construction and lot of head submits that the error in judge change to the claim construction all resulted from her initial instinct that because the max axis locking range was found to have the claimed arm portion the construction must be wrong the construction provided to the jury in the jury instructions was correct because it is based on the language of the claims themselves this is not a construction word judge dare went off on some ledge to create find some definition of no i would not agree with that because that the for the same reason the claim is not functional only the construction used the surrounding language of the claim to define arm portion of the claim itself says the arm portion is configured t engage the at least said one guide and is contiguous with the force transfer element that's what the claim says and that's those are the words the judge terry used to construe arm portion and those are those are terms of structure not only structure must be continued must have a force transfer element that is contiguous to it and it must be structured to fit the guy in which it rides away and when the two elements are clasped together to bring the gripping elements from the outer into the into the middle i guess i have the same question to try and i'm trying to understand how you understand what concord as a matter of  gripping element that is structured to engage the guide so why wouldn't you can meet that limitation you can and doesn't have the claim nd element within actuation portion question so that's that makes me think well the way you want this claim turned to be understood now goes against what you argued against buchanan during the original prosecution and i strongly disagree with that your honor in the original prosecution one buchanan was raised in the two in two thousand and eight the applicant argued that buchanan does not show the elements united in the same way as the claims that buchanan does not teach or disclose the nd element as claimed and and argued the examiner fails to specify where buchanan teaches an arm portion as claimed and then those were the structure is adjacent to the crimping portion twenty five can so that i mean the only logical read of that you're saying that there is no structure that can be attributed to was present which is that the examiner had identified the entire plunger of buchanan twenty four as the body portion and when the applicant said there was no structure adjacent twenty five if i read the examiner her jackson is saying  identified plunger twenty four dollars as the body portion and so when the applicant answered the adjacent twenty five identification in context it is very clear on that same page it says the examiner has only identified a gripping element a body portion and a forced transfer element and no other structure and in the applicant's claim by contrast there is an arm portion of aadi portion that a force transfer element and a grip entire gripping element is the body portion then it is not the claimed gripping element can't be and that is exactly what the that is exactly what lawyer had explained when they said after they said there is no structure adjacent twenty five dollars and query whether i think them the ferrous or even the prosecution history is that the examiner realize he made a mistake when he if you can enter rejection the nd time because the applicant had already argued that you can and doesn't that the examiner hadn't identified the arm portion and that buchanan doesn't have the nd element as claimed and the examiner withdrew the buchanan rejection is that i've considered your arguments persuasive later freen years later he issues another buchanan rejection the applicant's lead argument is hey we've already been down this road and you withdrew this rejection we incorporate our prior arguments by romans thank you apex tool group this appeal turns on the claim construction of a single term the arm portion limitation of the claim gripping element in all of the intrinsic and extras of evidence supports the ultimate construction of the court by judge paul meyer and rejects any consideration of loggerheads and the prior construction by judge darrow loggerhead is advocating here for a construction that is literally inconsistent with every tear of the hierarchy of intrinsic evidence claims specification prosecution history and effectively sought to reach seeks to read out the term arm portion from the claims and that's what happened and that's what led  to the the jury trial result that we had the ultimate construction identifiable structure that projects from the body portion of the gripping element is a very plain meaning construction that gives some meaning some structural meaning to our portion which it has a construction has to give it when we look at again the claim to the specification and the file history let's start with the claims we have a gripping element that is not simply a gripping element with a various functions it's a gripping element with multiple portions body portion are portion force transfer element and then functions associated with each of those portions and so we need to have the function of the arm portion which is configured to engage at least one of the guides associated with this particular portion i will also point out that the language used is not simply a label such as a st portion a nd portion that other parts of the claim actually have st element nd element here we have actual words used like what we're talking about here include a projection from the end of the little st of all personal risk on the art would not the mechanical context look at a monolithic block and see something that they would to as an arm portion there's nothing projecting from there's no separately identifiable structure that we can say ok this is the body and then here is the separately identifiable structure that is the arm how why is it not separately identifiable as this the stuff the head and so there's there's multiple reasons one again i think the natural reading of this you have a body and then you're going to have some suggestion my meeting separately identifiable in that claim construct yes yes identifiable structure mends in the specification that are this monolith you know this block where there are not this group before we get to those parts which which i tend to agree is rather strong for you one of the dictionary definitions that was asserted is that the body portion has to be main one yeah and so i would say for a gripping element the main course in is the portion that does the gripping and in the body is in some way larger than the arc it could be i mean it's the mass that's doing the gripping so you're well but that's a functional point about me and i guess i was curious if you look at the you know like fifty five on your is not even close to the me or she looks like i'm that cracker yeah again i would suggest that a person or a skill in the art looking at main portion body portion in this context we're talking about a gripping element is the it's the it's the mask doing the gripping it's the part doing the gripping so fortune has a functional definition that you think harm or can't and i would suggest that body has some structure to it as well again it's the mainmast that's doing the work of the gripping element but then we have to have something separately identifiable we can't simply have a monolith and then hypothetically draw imaginary lines to find the fung you know to be defined by function and find armed forces in there and again we know that because we look at the specification where all of the embodiments that have this project and projection from the gripping part the book the body part all are described as having our portions we then have one embodiment figures ten through twelve when we look at the embodiments in the specification there is no our portion when we simply have a monolith is as you're describing but i would also point out that just basic federal circuit precedent in terms of looking at claim language and giving meaning to words and claims tells us that are important has to be given some meaning what judge terre and what loggerhead suggesting here is simply a race it from the claim they're there construction simply incorporates other words already in the claim and erases the concept of our own from the arm portion limitation i would refer you to the apple vs motorola case the angle industries case that talks about when you have multiple portions they cannot logically be one in the same or you would understand that even though it's not separately identifiable per say when you just look at the block from five feet away there is a disproportionate proximal portion or i would agree that if there were different labels applied to portions there might be a top portion of the bottom portion and we know that the bottom portion does the gripping and that's described in the specification i agree with you that there would be different circumstances in which if we had multiple portions described in the way you did when a person actually where you have the force transfer element through the block if we can then now look at the file history if there's any doubt that remains from looking at the claim language and specification the file history absolutely puts it to rest as judge john pointed out there were not simply suggestions all came a goal long with the examiners mistake here and you know referred things in a mistaken way there were definitive statements applicant respectfully submit that buchanan is gripping element does not contain an arm portion and arm portion any force transfer element lou cannon was a monolithic block and the the point that was made multiple times by loggerhead was it does not have an arm portion it only has a body portion and again the reason we know that the loggerhead construction can't be right is because their expert acknowledged that under the judge derrick construction you can and would have an arm portion so we're in the situation that this court is no context of what we're talking about here in terms of what the the the the district court found we think that the district court correctly found that what happened the prosecution was simply applying a plain meaning construction of  portion that required that these some separately identifiable projection from the body portion and by by applying that to a block loggerhead was correct during prosecution that it didn't have an r portion and it was correct to adopt a claim construction that reflected that i would say once you then get to the proper construction in terms of requiring some separately identifiable structure that you can point to as an arm portion it then follows that there the summary judgment of not inference that was correct all we have here is a block a monolithic block and it's not surprising that that's the result because as we noted in a briefing to help help me out on the following if i didn't have buchanan and the prosecution history and i just had the words separately i their case law that says for now just for the claim construction right taking the claim constructions words as a given but for purposes of applying them we can and should or must look back there's nothing inconsistent about what's happening in the prosecution history i don't think there's any narrowing of any plain meaning going on here this is simply further confirmation of the plain meaning of what in our portion is we have to have something separately identifiable projecting that's going then do the function that's required in the claim and absolutely i think that your case law suggest that you have to look at that as part of figuring out what this means and we then know that something that's a block like you can and can't possibly meet that  infringement you know a lot of times that's in the context of doctrine of equivalence and certainly you know he's also here sure that's certainly are and you know the conoco case talks about how do you know we can't be used to where you don't have something you know you don't have things with multiple portions you can't possibly i guess i'll go back to the england histories case which said when you described multiple portions you need to find you know you can't the same can't simply be one in the same that that meet the multiple simply confirming the specification the plain language in plain language that what's going on here and judge paul meyer correctly found that what we have here is there's nothing that the prosecution is for confirms that a block does not have an arm portion argues product again designed and you know what happened here was from day one our my client designed the product to add additional features we actually you know create a better product but in order to get around the patents make sure we weren't infringing on mr brown's patents made sure that it was it based the gripping element based on what was expressly explicitly distinguished during prosecution so it's no surprise that then when we finally get a proper claim construction that there is no infringement as a matter of law and the doctrine of a will whence can be encompassed it and if there's any other questions i'm happy to answer them but if not ok thank you patent and for all of the same reasons as described in the oak on the prosecution history argument the about whether something has to be separately identifiable it was identified