they are both patent cases  of the first cases case number fourteen dash ten forty two and it's my understanding mr wang that you want to reserve five minutes from a bottle is that correct ok you may be to avoid a patent that what they needed to avoid how could they possibly read that objective lee as anything other than an explanation of what the claim was limited to for the purpose of distinguishing for all it's parallel to the the three x y and z axis so your the you're actually telling the examiner that that your claim includes the selectively rotation rotated concepts and be from the examiner's denial and you then say again by contrast a window that has been and this time you put it in quote selectively rotated and then again you referred to that being as claimed how are we supposed to assume that selective rotation is not an important feature of the claimed invention or is an important feature actually is a tenet of the invention i think most  or not this preamble is limiting whether either in light of the written description of the whole or in light of your statements in the prosecution history and before the p tab is that the end of the  was the intent here in this is all one line if you keep making this argument that well it's a big prosecution history and we're only talking about one sentence but if the one sentence is very clear are you saying that that you have to say it more than on if we agree with you on the claim construction as a relate to the selective rotation because you don't disagree that that that they accuse products don't or wouldn't engage in selective rotation correct just an example it doesn't show the algorithm itself to get to the algorithm you have to think about this and certainly a skilled artisan might be able to determine here better case or at least for means of function tests you actually a court i would like to address the preamble and the indefinite issues and first i would like to point out one issue lurking in the briefs to make sure that it's clear what claims i would like to make clear that at the relevant passage which is column three lines forty two fifty nine the patent is actually describing one embodiment that's the embodiment of the rotation button on the screen which you can exercise with a mouse in several mode owlets or functional ways you can click and drag in order to go to any angle you can click in release in order to go to pre selected angle or you can click twice to go back to home that's one and there are other potential embodiments referred to such as menu selections a cursor that would also give you the choices of how to exercise the embodiment but there is one embodiment that allows you to go like this studebaker radio across a range of angles or stations or to selected angles or stations depending upon how you use the functionality and that's consistent with the claims number to counsel you're not arguing and  understand it that despite the claim that you are you're not arguing that that is why selective rotation you would take out the option of a pre selection no not at all and recreating to a pre selected angle quite the opposite i think the ability the capability to rotate to any angle includes the ability to go to selected angles is if that's the function a method that you both dalla the of going to any possible angle that you'd like to exercise and that's what appears in th claims claims then claim mine rather which is the independent claim like claim fourteen actually covers as judge still strapped construed the ability to go to any angle so that you can call out in claim ten either what a calls free rotation to any angle or in claims eleven and twelve the pre selected possibility the mansion as it is the is your case with respect to whether the preamble is limiting dependent upon that single sentence in the prosecution history or do you believe that your argument could stand even without that single sentence in the prosecution i will give you two responses to that the first response  is the prosecution history is is substantial it's repeated twice as your honor called out including in quotation marks but the cases also make make clear that where the preamble language refers to a fundamental characteristic and that's that's in catalina for example a fundamental characteristic of the invention but that further supports the preamble being limiting that's what happened in this specification you find in the beginning of column reference the selective rotation is referred to in the statement of the problem in column two line eighteen it's referred to as the solution to the problem at column two lines thirty two it's referred to in the description of the drawings and it's referred to at the end of the specification and something something of the invention the fundamental characteristic of this invention is selective rotation so it's not just the fact that it was further defined in the prosecution history but like in the courts poly america case that had to do with blown film being a fundamental characteristic of the invention selective rotation here is a fundamental characteristic to response to the argument that it's not that in the prosecution history that it's not a distinction number one i would say i would submit to the court it is a clear disavow but beyond that it doesn't have to be a clear disavowal the court's cases such as meister vs tracts deal with definitions use utilizing statements in the prosecution of history in a way that defines what the invention is and that's what the applicant did here yes the applicant was making arguments about why the references horvitz and should not be combined but the applicant made  clear statement about what the invention was in contradistinction to the references that they were arguing about and the need the references repeated in the prosecution history are unambiguous that the invention as claimed includes rotation to angles other than ninety degrees increment so called perhaps orthogonal angles that is a statement repeated in the prosecution history that the invention includes going to any angle that's consistent with column three line twenty nine it's consistent with the claim structure so this is a case where the specification the claims and that state in the prosecution history all work together to confirm that the invention includes the ability to go to any angle whether you choose to click and hold and thereby go to the angle you choose three hundred ten degrees for example which is not a ninety degree increment shown in figure two or click in release which can go to pre selected increments it's consistent between the specific specification the claims and those statements in the prosecution history that can i ask you about the relation between the couple of issues or is it right that if we agreed with the district court about prejudice your honor i believe the answer to that question first of all is yes if you find that the preamble is a limitation and agree with judge gill straps of that limitation it leads to not infringement and in fact that's been stipulated to in the stipulated judgment of dismissal so if you are firm on that single grounds alone appellants have already agreed in the judgment that that these benign infringement in the case is over the same is true if you agree on the second ground which is rotating the window about the rotation point at the discretion of the user that alone because of the judgement and the stipulation would be a ground for a ferment either way you don't need to read to reach the indefinite is the only thing i will say about that issue for the moment is that i submit and may have been going there but i submit that this is a case which we would apply your function media decision to which is a case that says it doesn't work to say that a person of ordinary skill in the arts would be able to develop the algorithm that's pretty much what the chart the flow chart at circuit the flow chart in there f the flow chart were in the in the in the specification which is not it may come close to being enough i think it is a flow chart that recites the steps that appellant would like to see t lacking in the specification is anything beyond the functionalities of the manufactured flow chart it tells you what you'd like to see be done it doesn't tell you how to do it and if you look at what's  path the flow chart would be enough if in charge but it's not enough and well maybe i spoke too quickly maybe my answer ought to be i doubt that it is enough i'm thinking what i saw in the flow chart in terms of turning it into steps yes it turns it into steps but no those steps are to fill stated info in general terms they still don't tell anybody what to do so what to make what would need to be in the written description it's not indefinite some kind of a teaching of how to select another point not just the fact that there are nine possible points shown on the window and the statement that there could be many other points off the window but a statement of how to select one particularly if you're going to select one that's not on the window how do you do that there's no suggestion in a specification of how to do that so to sta suggests how there is a relationship between them out some kind of a structural relationship between the mouse and clicking the mouse and picking a point three inches off the computer display window to be the rotation point how do you do that how do you go from an undefined point three inches off a display window to establishing in the context of a column for that that's going to be the rotation point it's just the statement says do it it doesn't tell you anything about how to do it so i would that can be selected the user selects them and then every new removes the non selected one i mean it doesn't take click the mouse but i don't think i don't see why it has to be that specific that it helps person click a mouse why isn't this flowchart good enough display rotation point your honor the first box on the right display rotation points that can be selected by the user that's supposed to include an unlimited number of possible display points that are outside the computer display window how do you choose them how do you display them which ones do you display is this going to be like one of these nice these video games now where you have thousands and thousands of players that are displayed on the screen how are you going to display them how do you choose them which computer screen it is larger than the particular display window but they're still in a an enormous number of possible points outside the window which could be chosen i don't think this tells you anything about how to choose  them which ones to choose which ones to display and then in terms of the further step of removing nonselective rotation points from the display that may be intuitive it may be the kind of thing that a person of ordinary skill in the art w conclude he has to do but there's nothing in here about how to do that other than just saying push a button and make it happen so i think on that issue of indefiniteness i don't think the manufactured flow chart gets you there when when the spec at line for example thirty one says one of ordinary skill in the art will realize that any number of points are potential points such skill persons will realize that any number of points outside the windows may be selected that is is  directing the person of ordinary skill in the art to go and do what's not provided for in column four and i would submit that under function media that's not sufficient for the indefiniteness issue but again i don't think you need to get there if you agree with judge feel strapped that the combination of what's taught in the specification as the actual and disclosure of an embodiment with its various capabilities matches up with what's in the planes and the claims enable you in the broad independent claimed to cover what is in the deep end in planes and then you further narrow down that by the rotation comprising what what a pilot calls for a rotation in claim ten or selective rotation in claims eleven and twelve  t the basic claims nine and fourteen have and indeed must have the capability that's described in column three starting at line thirty nine to go to any desired angle in order for the preset but claim not independent claim does not it claims well of the capability you need the dial as well we need it because you have to have the ability to go to any angle so whether it's a studebaker or a lexus where you just push single arrows or double arrows in order to be able to tune gradually or tune to preset a set but it has to have both but better radio that came with i don't just go for the number five buttons or something i forget how many there there used to be but just just five or maybe twelve that would not didn't allow any changing of those preset ones that would not be covered that would that without you have to have the capability to go to any station in order to be within the scope of cl nine and claim fourteen as i submit judge feels trapped included in his claim interpreter of the would i am i remembering correctly or incorrectly that to cover that for purposes of non infringement you don't need to go we need something that  any just more than what you have two options in the even if even if you you looked at the language of the prosecution at history as saying you have to do more than ninety degree angles in airports there has to be only one there still has to be one angle other than ninety degrees and in the accused instrumentalities there is no angle other than ninety degrees increment so even the one angle more than the ninety degree increment still requires affirmative the judgement is talking only about how the machine does it it's not telling the user how to do it as long as it says to the machine use the default or accept the one that somebody tells you to do after ok thank you