thank you judge me a please the court john o'quinn on behalf of brunswick and tend to focus much of my argument this morning on the district court's claim construction and the improper damages award let me start first with venue after t c heartland there should be no reasonable dispute th separate corporate subsidiary with respect to the entity that owns the that owns the warehouse within the district my understanding is that it's a separate corporate entity that's not simply just as the records show  i'm not sure off the top of my head just like whether whether it does i certainly can see if i can try to ascertain that today it was stored in the warehouse i don't know what is stored in the records  from it could be it could it could be any type of equipment my understanding is that there's that the warehouse is not related to the issues in dispute in this case and that it is a separate separately potentially grounds for for every man obviously if the if the i think that if the record demonstrates that what you're dealing with is a separate corporate entity and i believe that it does and i'll see if i can confirm that for you today then the mere fact that a parent precluded by a governing statute so i think that's that that's governed by some reforms to go with you know the way to write i'm not aware of cases where you're dealing with improper venue in the sense of not a matter of convenience but actually as a matter of being improper where the proceedings were allowed to stand because after all as as i think judge newman noted in her dissent when this issue was before the court in the context of the mandamus petition that the trial is certainly a very important aspect of of venue that is to say that that having trial in the right venue is a large portion of what venue is all about and i think that's certainly true here where you have the patent specific  think it would be appropriate for the court to address the other issues for starters venue is not a issue like subject matter jurisdiction that goes to the power of the court indeed there are courts that give you an example that that have said that venue is not a mandatory threshold issue so handley versus powell goldstein from the second circuit two thousand and eight it's toonami federal and dix for thirty five foot no two is a case where the court went on to reach the merits and reverse and i think you could do that here for example and be entirely appropriate to decide the claimed instruction in the infringement issue and that actually would then move to the venue issue now if you don't do that then you would have to decide the venue issue and i think that in so doing it would certainly be appropriate for this court to give guidance whether it is to the lower court in this case or the lower court that would ultimately be my story and while i don't know that it would be advisory just well in the sense that again since venue is not jurisdictional these issues are all present and live before the decide claim construction and tell whatever court would ultimately have this case this is this is the or a appropriate claim construction in some way i think that what happened here visa v damages is a violation of every single one of the cases this court has decided in the last decade addressing apportionment the entire market value rule the smallest saleable unit principle and i think that this court would be would would it would certainly benefit whatever court receive this case and district courts writ large to understand that from this court one should rest of the time structure thank you judge that so turning to the issue of playing construction the question is whether capable of being rotated one hundred eighty degrees means one hundred eighty degrees or something less than that and i think it's important to know the claims here don't say about one hundred eighty and they don't use the kind of groveling language that this court has blessed for indicating an approximation and as this court has said in generic generic with a j quote without broadening words that were merely receive some leeway the precise weight ranges do not avoid a strict numerical boundary to the specified parameter and i think that similarly in us phillips this court recognized that the use of ordinary numbers it's not discussed in the specifications of psych and the reason for that is because this was added as an amendment to overcome prior art and i think that even further demonstrates why it should be read strictly to mean what it says one hundred eighty degrees they specifically argued in order to overcome a prior art that quote the prior doesn't teach a step capable of being rotated one hundred eighty degrees in that one piece of car up taught away from a step being capable of being rotated one hundred  eighty degrees and that's at appendix nine hundred ninety one and i think that in light of that prosecution history the it is especially appropriate to apply the principle articulated in generic and us philips and hold them to the number because otherwise if you don't you will literally have vitiated the hundred eighty degree limitation their argument is this is just an expression of flipping we'll look at the claim language and just ignore the one eighty and it's still an expression of flipping it says it would say capable of being rotated prosecution in the in the prosecution history to overcome prior art some of which rotated less than one hundred eighty degrees and of course as this court said in in nori and there's no principle of patent law that the scope of surrender during prosecution is limited to what is absolutely necessary to avoid a prior reference that was the basis for rejection so i think you'd be appropriate and indeed required by this court's precedents to hold them to exactly what they said during prosecution of the patent and not give them something less than that there's also of course the fact that the district court here did not even engage in a proper claim construction just applying it plain and ordinary meaning analysis but i think  the for that's right i mean rotating less than one hundred eighty degrees doesn't meet the claim lamie limitation is something is capable of rotating one hundred eighty degrees than if you go more just like if you're driving a car and it's capable of going meaning of the hundred eighty degree well it's a drain i think that what ended up happening is exactly what this court has said in two micro and this in and in other cases where the expert ended up arguing effectively about claim scope in front of the jury as to what it would mean and so yes you did have arguments in front of the jury about what this in what what this ultimately would mean in the end the district court said very  explicitly that he was leaving it for the jury at appendix six seventy six he said quote the experts differ on what he's referring one hundred eighty degrees means and i think the jury could differ on it so i think that's an issue that's going to have to be resolved by the finder of fact and similarly  thirty forty nine quote i think one hundred eighty degrees can arguably mean exactly that we're not exactly that each time side can take their positions on it and that's again exactly what this court in two micro and in well there was a jury instruction as to plain ordinary meaning and that is the jury was instructed that it was a plain an ordinary meaning and with respect to the purported waiver argument that they make which is not a waiver at all it's just like what happened in paps licensing shortly before the issue went to the jury there were questions about clarifying the the context of plain and ordinary meaning and yes we said that plain or any ordinary meaning the jury should be instructed that that means plain and ordinary meaning to a person of ordinary skill in the are with respect to all of the terms that he had construed to mean plain and ordinary meaning and so certainly the claim construction is is not waved in the fact that he told the jury plain ordinary meaning is not enough for the violates principles are ticking late in cases like laser dynamics for medics erikson and of course most recently power integrations because the expert did exactly what this court has said you cannot do in a jury trial and they say this in their brief a page fifty fo that is used the quote profit margin of the boats sold with swim steps rather than the swim step alone and the methodology that they use does not attempt to determine the incremental value of the pending features compared to the countless non patent features and said it starts literally with the entire market value of boats and then says well we're going to use one hundred percent of the value of boats for twenty nine percent of boat sales and by its own terms those twenty nine percent are merely sales that were influenced by this one step not even that this one step alone resulted in those steps and you can see that appendix twenty three fifty six to fifty seven and they've used this number this twenty percent of the entire value of the boat to come up with a high end free range that they put in for this jury of fifty four hundred and precisely to skew the damages horizon and you can see them laying out the range using twenty nine percent of entire boat value at twenty eight appendix twenty six seventy one and that is exactly what this court has said that you cannot do in laser dynamics in ericsson and of course most recently in power integrations where the court said quote where multiple component products are accused of infringement the royalty basic should not be larger than the smallest saleable unit embodying the patented invention and this is the situation exactly that was contemplated in the commonwealth scientific case or the cyro case where you have a damages model that quote portions from a royalty base and if you're reporting from royalty base quote the model should use the smallest saleable patent practicing unit as the base and they didn't precisely in order to be able to try to claim a piece of the boat and to put in front of the jury a theory that was you know was ten times their own profits when it came to swim steps didn't even try to apportion down to the specific patented feature of their particular swim step now i see i'm well into my rebuttal but i'm happy to answer further questions supports venue under the patent statute fourteen hundred two address judge strikes question about the separate entity in the warehouse issue if you look in the record it appendix one fifty two of mr anderson's declaration paragraph fifteen does call it a separate entity the record is silent on whether it's a subsidiary but if you look at paragraph sixteen whenever he wants to call it a subsidiary when he's talking about a separate brunswick interview see ray he does say a wholly own subsidiary the distinction that brunswick is trying to make in their briefing with the warehouse that's in the district that's wholly owned by the defendant under craig factor three is that the boat group which is the group that's responsible for designing the infringing boats in this case or swim steps doesn't do business in the district but that puts another requirement into the venue statute when you're trying to figure out what a regular an established place of of a defendant you're adding an additional requirement which would then be a regular and established place of the defendant by which the business unit within that defendant has conducted the infringing activity and that's just not the room where you're drawing a distinction between fifteen paragraphs fifteen and sixteen but one of them said and it seems to be we were trying to as a whole whole ownership but but once as a separate entity owned by brunswick and once as a wholly own subsidiary of brunswick how does that distinction more it shows that whenever they want to determine whether it's a subsidiary versus just merely a division or another entity which the record is silent on when you're talking about the the record in this case one is silent on what that warehouse is there's no doubt that under craig factor three that it's owned by brunswick it's a place of the defendant in that they're doing business in a separate subsidiary that is insufficient prevent right issue about the first part of fourteen hundred b we're talking about regular an established place of business and specifically create factor three and the reason that the canon authority that they cite isn't applicable here of one of the supreme court case from court has said that if there's an improper menu after a trial that's a ground for setting aside time to write yes but in this instance fourteen hundred has to be read in connection with fourteen no six which is what statutory right says that nothing in this chapter shall impair the jurisdiction of a district court of any matter involving a party who does not interpose timely and sufficient objections to venue and that's exactly what this court considered and why how help how were district court said no no it's not retroactive and then when we came down and said yes it is retroactive they notify the court again and at that point the courts have waived her because honor i don't dispute that they've moved quickly and i think you have to look at the circumstances of this case a case that is on the eve of trial one of the first cases of what we see heartland so what the supreme court comes down and then we come down back to the court didn't remand for consideration only under fourteen hundred they didn't remand in order the court judge grants ever so you agree that micron does not hold it just because it's on the eve of trial and you can find a way for if they were otherwise prompt right i don't know if my congo's thus far i think micron leaves open the question of considerations that the court can under fourteen or six factual considerations to determine whether a transfer some way some undue delay like judge walsh i'm having difficulties and where the undue delay was there and i think that it goes to the timely and sufficient aspect of the statute under fourteen zero six is perhaps on the facts of this case something that the court in its discretion decided that it couldn't not transfer the case when you talk about your damages issue yes wrong because i think you have real problems with that on page fifty five of a read brief you say mr walsh not while mr walsh is estimate that the swim step generated twenty five to thirty three percent of both sales was based on substantial evidence including information mr clearly here invoke the georgia pacific factors and apportioned the rate just like this court said you could do in x mark to reach his conclusion he systematically walked through each of the georgia pacific factors  notes that that's why having the entire law and more as the s s p p u is a reason for it being appropriate but here the claim also the patent is not usable unless it's on a boat the claim says a retractable step for use with a vote in water the claim limitations talk about taking the step and rotating it above the surface of the water to below the surface of the water  an ordinary there right your honor and i don't disagree that once you raise something in a market in hearing you don't have to keep raising it again to preserve your right to vote it's not waiver no yes or no there isn't but there is a waiver and there's invited h and here's how we get there ok here's how we get there at the jury instruction conference sensing that there might be a dispute on this issue cobalts council specifically raised and cited to micro to the court and said your honor we may be heading down a path that we shouldn't head down there's an issue here regarding this one hundred eighty degree limitation term appendix thirty two hundred thirty two or one to don't take my word for it don't take brunswick's word for it please take a look at it cites the case by name goes on a little further and then says but i don't know if brunswick thinks we have a no two issue runs weeks council gets up and  distinguishes the current situation here from situation and then engages in a dialogue back and forth with the clerk to amend the construction and then says after the amendment is adopted by the court brunswic proposal says so i think we can resolve this dispute by saying that's it the appendix at thirty two o two gives a proposal in the court agrees and brunswick agrees that that result of the dispute will dispute about the two reasons one as you correctly noted earlier the specification is silent as to one hundred eighty degree limitations when you look at the intrinsic record here the claim a minute was added during prosecution  connection with a topside and underside limitation this is not like a chemical case generic and generic where you've got claimed ranges in concentrations in a specification and you're trying to talk about the most effective honor it could go from a horizontal upward facing position so below the surface of the water where the top side remains the same but here the step has a top side that becomes an underside and vice versa as the step is moved from the to be exactly one hundred eighty degrees and nobody around from the position at which it was then standing i think that that ignores the evidence in the record in the intrinsic record and reads too much into the amendment of the one hundred  eighty degrees which is distinguishing from art that has a step that goes from horizontal to vertical i mean i'm concerned with the actual real world issue there if it was that one seventy five would be a slight flaw and if it was it  the evidence in the case as one of ordinary skill in the art would understand the term whenever the step is on a boat and the platform is there the platform sits down and a little bit of an angle in the water in the rotation depending on how the step is mounted on the boat with the platform  is not going to be a perfect one hundred eighty degrees because when you put these things in the water they sagal a little bit and that's what one of ordinary skill in the art mr dyer testified about it's what mr berman testified about  that language it's an argument that one of ordinary skill in the art in the context of this invention and the intrinsic record this case would understand the one hundred eighty degrees to mean to flip it over or about one hundred eighty degrees what's your view on that if you send it back to the venue send it back to the district court for the venue you could decide some of these other issues i think the court certainly could but if you send it back to a venue i guess it just depends on how the court since it back since it back with considerations under fourteen  question your honor i'm sure this the court certainly could i don't have any good authority for you right now to determine whether you should do that or not ok thank you your honor thank you thank you just like janet with respect to your last question again this is not a steel coast situation where it's a question of the course jurisdiction you can decide the claim construction and the infringement issue and if you do that would moot the venue issue in addition to the second circuit assumed personal jurisdiction much in the same way viz of even you versus us air force one forty seven f third eleven forty eight foot no one turning to the dispute at the charge conference that my colleague was referring to  as your honor noted judge dike the dispute was over the plain and ordinary meaning construction they were at was suggesting glamming some things on to that we didn't agree with the things they wanted to glom on we offered a different suggestion of things to glom on but that we never waived or gave up the argument that we made that about one eighty what one eighty should me and of course the district court knew that at the district court said that appendix ten that there was no waiver here and the district court if you look at the charge conference and context starts out at appendix thirty one eighty seven saying i'm not going to define one hundred eighty as i said before that's a matter on which the experts disagree and both sides can argue their case but i'm not going to amend my definition so that was the context in which that discussion was taking place  with respect to the limitation here just like they are trying to turn the one eighty in to about one eighty they didn't claim about one eighty and indeed this court has said in cases like quantum court versus roe to me sixty five f third fifteen seventy seven this court has invalidated patents that came out of a real exam where parties have added terms like approximately or a ballot in front of a numerical limitation precisely because it was broadening and that's what they're trying to do here during construction having surrendered that territory during prosecution of the patent one final point with respect to the venue issue and that's this the argument of course the organ about waiver is inconsistent with this court's on bond decision