reversed for any one of three independent reasons first the district court exceeded the mandate for the prior appeal second directv way to try to rely on new prior art by not raising it to trial and third there are questions of fact which prec merely states a result of foregoing steps in class the and it's not a limitation it can be ignored this however is contrary to this court's precedent a long history of cases addressing whereby clauses the proper analysis is there whether by clause that merely subscribers can be informed when a specified course of the information database will be received thus that you have to generate decode timestamps before the reference portion is received otherwise it doesn't inform subscribers when the informal subscribers having a person that actually has to receive notice that that distinguishes that situation where this provides that notice and and irrespective of whether the subscriber actually sees the notice the other point to the other  nonetheless let me let me ask you if you think this one is correct which the one thing when i read this whereby cause that made me pause and think maybe maybe it was a limitation it was because it does while it might state intended purpose it does more than that it articulate another step in the method the step beaten at the subscriber must have access it's kind of like suppose the claim was make a peanut butter and jelly sandwich spread peanut butter on one piece  bread on the other you've got a sandwich whereby a person can eat it whereby a person will eat it whereby it will be eaten the eaten part is clearly another step in the method i mean you've got a peanut butter and jelly sandwich sitting there but it doesn't mean someone's going to eat it and i guess my question to you is this you know what you're going to show up you're not going to watch it why do you make a peanut butter jelly sandwich if you're not going to eat it well it seems to me like it's just telling  what you already know right let me let me try this there was a clause says subscribers can be informed when a specified course in the database will be received so another option would be that subscribers can be informed when the show is you interested months something that happened in the past and you can observe anyway i'm not saying the subscriber would necessarily be interested and often more interested in things that happen in the past but the point is that shows that this work by clause is not the thinking my concern or maybe yours where by quite probably there are a million reasons why you might want to decode the kind because maybe the computer were you internally for something else scheduling transmission doing things but not necessarily making it available something not required by the prior elements but something that's added which is why restrict well let me ask you when you before you get to the where by clause all the prior elements once you've completed those steps it is acceptable to the subscriber yes nothing more and there's not another subscriber right there's two things that happen to have to happen you have to give notice when something's going to be received and then you have to send the item that about which notice is being provided it and if we send a notice in advance you could put indication on the menu page that when something is going to be or see it but that is not a timestamp it has been be coded to provide that notification there's no timestamp underneath that menu i us here it had no limiting effects that p t o or the applicant least in response to that rejection could have just cancel the claim language instead the applicant went to the trouble to have men decline language to overcome that indefiniteness rejection and ensure that languages where you can't get fifty one final question on the other claims that you have coverage but i just want to understand this assuming hypothetically that we get by with swear by clause we're left with the end the claims twenty two twenty six twenty four i understand you faithfully under this court's mitigate the judgment should be affirmed we started by responding to my friend's arguments about the mandate and the weight of the court's mandate and prior case said we remain for a new trial on both infringement and told that judge clark under that and under the exxon case that cited in the pardons briefs the district court was free to act in any way that was consistent with that mandate in the way that he  i think i think that what you see thirteen twenty is the language of the procuring of opinion that says it is correct that it will by clause generally states the result of the process and then it goes on to say how well this is what what i believe is properly those steps provide that capability what you've done all of that and the capability is not to actually get it onto a school but where by subscribers can be more maybe informed if you add something else maybe informed if you if you put it through a if it's just dating an intended result is that different than saying is there a way of recognizing that it is part of the claim and it  receives all the importance that any part of the claim should receive even though we're going to give no weight to it if it did states only an intended result sure the limiting way i think would be what you would what you would give to it but it still it prior art i'm sorry i didn't hear the first part when right isn't that even that amount of weight relevant to distinguishing over prior art i figured you'd better have to do is look to the prosecution and see if it was in fact used to distinguish of a product if it wasn't and that's what that's what we're saying in our brief that this is not material to pat ability it wasn't considered so by the examiner does this i'm i'm getting to the point does this really add something  as for display on the screen for an access of time coded pages transmitted at a precise times or simply as an extension of page numbers in which case it loses its significance as an expression of time but it's the first part of that sentence that disclose case it is quite clear that both both the royson and more references do disclose putting the if they had stock of something that's going to be received in the future on the screen if that's the only thing that's missing that is we used to we used  word that some of the people who read our brief didn't understand philip to describe the little bit of additional liberation these claims brought but that would that would be a total philip on top of what gets said already discloses with respect i think that i've answered the questions that are responsive to mr robert's argue i don't want to go into the claims that he didn't talk about so it was the courthouse questions where was the court wants me to go other places and  president reagan not going to the philippines or something why isn't that telling me what will be the receipt because because it has to not only tell you what will be received but it has to provide that capability through the prior claim limitations and that is by the decoding of time stamps that included within inquiries there is no index with the time stamp in it that is decoded it provides that information that's just text on  school underlying that information is just is is just digital information that is generates that assuming that gets you by and to supply and how would you get by obvious well the same problem  when it will be received why wouldn't that be an easy combination for any amount of skill on the on the disconnect is here if there is an index that includes a time stamp then that index with the time sta that time stamp is not decoded to provide the best notice to the subscriber if there is a advance notice provided to the scribe or it's not done with an index producing a timestamp and that problem is found at all of the prior art there is no single reference that show communication of a de coding of an index to provide the advance notice when something is going to be received and of course index here has been given a very specific interpretation by the court that is digital information that getting back to the to that test that should be applied to t v it offers this test that they pull out of the hopper case that test is contrary to cases going back to ninety third is contrary to this court's decision