thank you your honor and may it please the court the principal issue presented to the court is whether the phrase pre specified parameters is indefinite under nautilus the inventions in the five to one p are directed to distributed computer networking and making data transfer in a distributed network more rapid reliable and the data more available does this in part by measuring certain pre specified parameters appropriate claim constructions sleeves and litigation and other proceedings where different client construction standard applies and in fact they said th like to respond to your st point our principle argument is not based on their actions before the p t hope to get into momentarily every aspect of the intrinsic record including the claims the specification and the prosecution history support a very simple plain ordinary meaning construction now our position is that when they went to the p tab as this court decided  a more strict test for definite is called the packard standard in which claims have to be clear as part of their gatekeeping function they say that they apply a more strict standard than the nautilus standard which is applied by this court which is they have to be reasonably clear and so when the police approached the p tab with their petition and with a duty of candor said that these claims are definite and are subject i p the rules that the the regimen or the regime is set up for one of those we want to go to what those rules are i mean you referred to the samsung opinion and what actually happened in the fans on opinion is that and we said no there are circumstances where you can as a patent void in these i p r proceedings go forward and do your one to one of three analysis in spite follow if it cannot ascertain the scope of the claim with reasonable certainty for purposes of assessing patentability is to decline to institute the i p r and so it's my understanding that that so this is the part that i'm recalling from and i'm asking you to respond to because you seem to be taking a position this morning that there is no way no how ok i mean i mean if if you just want to take the position that only i p x l and type indefiniteness problems are the only kinds of problems that can ever be considered  our argument under nautilus so under the claim language the claims claim one in thirty happily is arguing that based on the specification you can't determine when this determination is to be made could you address that absolutely or on a will st of all the passage that they're referring to talks about the detection of prespecified parameter so st of all it doesn't even address or it's not directed to the limitation in question it is directed to the detection of the pre specified parameters and so the p t a be determined and that what is meant by a priest data and in each of these cases there are two things that are occurring there is the specification of the parameter and there is the measurement or detection of the parameter and of course in order to detect to measure the parameter one would expect that you would want to know what the parameters that you were measuring or detecting and so these passages actually refer to a preferred of body months which is claiming in which case the pre specified parameter is detected prior to the transmission of the data of course so my understanding of the other side's argument is as you point out these certain passages that column three column four in common five seem to be directed to preferred environment and that these preferred embodiments talk about parameters that are specified prior to the transmission of the data and and because their preferred environment that suggests strongly that perhaps the claims aren't limited to just the preferred environment and therefore maybe your claim is not limited to specifying the parameters prior to the transmission of data and so that my very well so again this column judge dike refers to it is preferred that the determination of the pre specified parameters occur prior to the transmission of the data and so here there has to be a specification which in order to accomplish the objectives of the claim has to be specified in advance of of transmission and the determination of that parameter the measurement of that parameter also must be and of course this court said has said repeatedly including an atom's respiratory therapeutics that a claim construction that excludes the preferred embodiment is rarely if ever correct not that's not the concern th concern is that perhaps the claim is not only does it include your preferred embodiment but it also includes something else non preferred environment in which you parameters are specified perhaps during the data transmission or maybe even after the data transmission and that their argument and so therefore this claim becomes the scope of it becomes very very unclear very very quickly because that kind of scope of the claim is not explained in the past and how that even possible determination occur prior to the transmission of the data so the fundamental premise that this passage even describes a preferred embodiment about the pre specifications is incorrect it describes and know that the district court agreed with you as to what the corresponding structure is for both the initial mean for detecting pre specified parameters of the data transmission between the data storage means  unit and then the nd means for detecting and what i'm trying to understand is what is the actual structure that the st means for detecting pre specified parameters so i would say with respect to this there are two different structures affirmatively disclosed and then there's log or rhythmic structure provided let's start with the hardware structure st a hardware structure for the  means for detecting there is a there are two structures that are provided a timer and a counter ok but they're measuring the same parameter which is duration a counter could be used as to forty two the counter is used it says it's used to determine transmission duration and optionally a timer is implemented ok but not answering my question i understand that it refers to column three lines thirty nine to forty seven the pre specified parameters include the duration of transmission the fault rate and so there's a number of instances where and there's also the five  weston about where does the specification talk about the use of the counter to determine anything other than duration ok column eleven line six through thirteen the counter counts the number of hops along the message path and so it generates what it calls a ticket number and there is a continuous counter generated in the cell associated with the ticket number twelve where does it say that the counter is doing something that acts as a parameter that is different from figuring out the duration of transmission so what it does component so the duration component would be the denominator but the faults would be the numerator and ok but here it's the counters determining the time of the sending of the message right well it's combined by the sending time of the message and the sensors identification is on the other player just before we can say is there any other place in the pattern where you can and the counter is being used to measure any describe using the counter to determine anything except duration or timing well there's also reference to an average duration so an average duration of transmission would require in this case would require the addition of the times divided by a number of counts of course that's how averages are are calculated so the counter is used in addition anything else  well there is of course the pseudo code associated with the pseudo reliable messages on columns eleven and twelve which provide very we were still talking about the counter while the towner is used in conjunction with the pseudo reliable messages  let me get back to my question about the means for detecting designer stood what you argued below and what the district court adopted the means for detecting pre specified pat parameters  computers that perform a four step algorithm is that right well in addition to the that that is correct that is of course under this  general purpose computer or network of computers one looks to algorithmic teaching that's right but i'm just trying to figure out what in the network of computers is the actual hardware is that i mean it's not the monitors which part of the computer we're referring to there it's it's the processor so well and and a clock so it could be a credential also true for your nd means for detecting pre specified parameters for data transmission between data storage means well i think the notion of a timer or counter incorporates aspects of both hardware and software well what i'm trying to understand is below i believe you advocate in the district court adopted that exact same stuff hardware software algorithms that are associated with the st means for detecting is identical to the nd means for detecting is that right that is what the court ruled and it's because that's what you argued for that's correct and now what i'm trying to figure out is in this claim one the nd means before you say before it says nd means it actually the data storage means comprising a nd means for detecting pre specified parameter yes so to me that suggests that requires that  the nd means whatever it is it's located in the data storage me so this is a distributed network that's disclosed to the client is a computer and under column a five to six the client is a provider a personal computer or network computer the storage means also have associated computer systems and a column ten lines four to ten and my concern i mean you can't possibly refer to the entire network of computers and being the hardware for performing the nd means for detecting when the claim itself is referring to the data storage means that's completely understand judge time what you're saying my point is that these are nodes on a distributed network each of which is a computer and so column ten lines four dollars to ten dollars points out that the storage means of other computer systems which are distributed over the computer system so the network has knows and those made a roll of client computer or data storage means again having associated clocks and processors that would perform the algorithm and i would finally point out i  time but this court in intellectual property development in and cases cited least one case cited there in say there's nothing wrong with having the same structure perform multiple functions one can easily imagine a  patent claim directed to a chair where of the legs are attached to the seat well are you telling me that it's the data storage means that also performing the st means for detecting well no that's that's inconsistent with the claim in the past specification but in each case we're not identifying any particular processor but it has to be a processor associated with that which is claimed as the computer question thank you mr kelly may please the court good morning your honor i'd like to begin just real quickly with the clock counter issue there really can be no debate about this v of ottis told the district court and now i'm going to read from appendix page three hundred and forty quote the patent discloses a counter an optional timer for the purposes of calculating transmission duration that's what the clock encounter for they're not for anything else and beyond lines thirty three dollars plus mentions the clock in the counter but the next paragraph begins by saying the evaluation of the data transmission performance with respect to the data transmission duration however is to be understood as an example only so the patent also makes crystal clear that the counter and the clock are used for one and only one purpose and that data transmission now i'd like to circle back quickly to the language prior to the transmission of the data which is relevant to the pre specified language in the claim so if you have a lot of focuses on this throughout their brief and they put this down as the marker the marker that determines whether the pre specified limitation has been met and of course dispute that at some point there has to be a measure sure that's what pre specified means that one thing happens before another thing that's the issue the district court had was that we don't know what the other thing is vote is now telling this court is that the other thing that is the point in time about which we have to decide if a parameter was in fact pre specified is the transmission of the data it says are you that prior the on line twenty eight but that seems to me the testable to interpretation one is that it be preferred that it be done before the transmission or prefer that it be done using this kind of determination prior to the your honor i'd i'd like to point something else out about the language prior to the transmission of the data which i think will clarify not relevant at all to this discussion and we describe this in our briefs at page twenty seven dollars that language that your honor has pointed to prior to the transmission of the data that doesn't modify the pre specified language that modifies the language quote the duration of data processing operations of the individual data storage means prior to the transmission of the data in other words this patent is talking about various parameters and when it lists those parameters one is the duration of the transmission another example is the fault rate and another example is the duration of data processing operations of the individual data storage means prior to the transmission of the data well that is probably subjected to different reading i mean one reading i agree is your reading but another reading would be that all of the type the parameters are specified prior to the transmission of the data and then when you step back and think about the entire goal of this patent and the purpose of the invention it  necessarily that all of these parameters have to be specified before you actually do your data transmission because the goal here is optimize the speed and reliability of data transmission to a given client by redundantly storing the data in a lot of different locations and then you use these rules these parameters to assess which of those data storage locations will most rapidly deliver the desired data to a given client so you've got to have those parameters on hand at the time you are doing your decision making as to which storage location you're going to be accessing to develop for the data so when you read this entire path and think about the context of what's going on here of course all of these primaries have to be specified before you do the actual data transmission in order to use the parameters to make the choice and decision of which data storage location to access so why wouldn't we understand the term pre specified to be parameters that are specified in advance of the data transmission so your honor i understand where you're going with that and i understand the point of the invention and the answer is that the connection between the transmission of the data in the language that we're talking about is not the transmission of the data that is detected for the purposes of the duration in other words in order to more efficiently download data right from a storage means to a computer you want to know the transmission of the data the time it's going to take to do that and obviously if the claim is written in terms of detecting that time it has to not only be pre specified but it has to be detected before that transmission in other words the transmission that they're talking about the transmission via of august is talking about has nothing to do with the transmission whe duration is detected because of course it would be irrelevant to detect the duration of the actual transmission when it's happening because at that point it's it's it doesn't make any sense so the key off this pre specified word on the transmission of the data that we're all focused on makes no sense whatsoever because the transmission of the data that we're all focused on is sort of not related to the duration and now assist that is being used by the system and what i point the court to i'm sorry i i'm not sure what you're getting at other because let me just tell you what in my mind what's in my mind is that these parameters are based on prior messages having been sent and and figuring out what is the duration of those messages those transmission and then now you know what that variable is and then that's stored in the data storage cell and and so now we know ok it takes four milliseconds for this cell to transmit data to client x and so we know that already and so now we're going to look that up and figure out whether that amount of time is too slow or the fastest specification with the actual data transfer that we're talking about because i think the court referred to earlier data transfers and that may be a fair way to read this but of course once you referred earlier data transfers you're no longer talking about the transmission of data  used in the specification more importantly your honor we still have the problem ok ok thanks just more importantly we still have the problem of knowing when that tree specification has to occur and let me try and give the court an example the claim is written in terms of means for detecting pre specified parameters we don't know who or where that pre specification occurs for example is if the computer program or the coder who designed the means is the person at that point pre specified the parameters so that the means is able to detect them or is the means program to detect many parameters and the means has some sort of functionality within it that while it's detecting pre specified which ones it's going to be used and there's even a rd possibility the rd possibility is if the means actually detects all the parameters i think all of them mr kelly what i'm what i don't understand is why do we need to know any of that to figure out what the meaning of the parameter pre specified parameters is i mean if we know what the pre specified parameter is which is a are how it was calculated you know maybe those are other issues whether it's a naval men or written description or something else but just for one hundred and twelve b purposes or one hundred and twelve nd purposes we already know what the parameter is or what the definition of it is and i mean i'm not aware of any case law that says you need to know all this other stuff about how it came to be or where it came from or what person  or device actually ultimately generates the parameter that i mean there's that's not resided in the claim so i don't know why it's required here you didn't cite a case that suggests we  right your honor and in that case we have it's a simple if then situation a command is issued if something happens before it so we know what the timing is the command follows what happened before to go back to your honor's question about why we have to figure out the timing in this case precisely it's because the word pre specified is in the claim but i'm asking about how how we get made or what device or person makes it i don't see why that needs to that's now of requirement for definiteness your honor it's a it's not a requirement for death but what it would be in this case is it would be a clue to tell us when this is determined if it's pre specified in order to create the means then the person coding the means have to know what it is your honor i think it would because again the transmission of the data has nothing to do with when the parameters are pre specified because the transmission of the data is something that happens at the very end of of the entire process so of course the claim has to do something before the very end of its process the question is how early does it have to do it they don't just have to be pre specified at the point of the data transmission because if they're not specified your until the instantaneous moment before the data transmission then the claim doesn't work anymore because remember they have to be pre specified before they can be determined and as judge chen described how the court perceived the claim operating they get determ before the data transmission of the claim there are some predated transmissions that happened earlier in time so keying the priest specification off the data transmission in claim one makes no sense because sas data transmission is not the data transmission where the parameters are measured and the best example of that i can give you is at appendix thirty one where the district court outlined v of offices description of this function and the district court numeral three in the left side of the column said where instead determining or checking occurs periodical based on time intervals for subsequent specified actions in other words this determining is not something that is keyed off the data transmission it's something that's keyed off of something else mr kelly i want to move on to traditional stoppel as well as mean function issue on  even though you may have reserved in your i p r petition that just for purposes of b are you you proposed the specific claim construction for the means for detecting a limitation or the meaning of prespecified parameters but nevertheless in order to trigger and i p r you had to take the position that the claim term was amenable to construction and now you're saying it's not amenable to construction and and so why is it that you're allowed to do that i understand that there are two different claim construction rubrics that are applied in the i p r context and then in district court but if anything and then at the patent board and at the p t o as you know the agency uses a standard for definiteness which makes it easier to him to find indefinite and less ambiguity is required to find something individual and so under the circumstances if it's good enough for the board and and good enough for you to trigger and i p r challenge why aren't you constrained to that position honor the st is that we never said it was definite we just laid out a construction that was agnostic to timing so we're not taking a position now that's inconsistent but to go to the higher sort of policy level aspect of of the your honour's question it's not that there's two standards of is not that the claim needs to be clear enough in both tribunals at once for the same purposes but that's a purposes are different and this is what the samsung case refers to that your honor was asking the of of his counsel about the question at the board is whether or not the claim can be construed for the purposes of applying the prior art and the district court felt it could we are while i why can it be construed enough for purposes of doing and i p r when you're telling us now we have no idea when these parameters are getting specified and we don't know where they're coming from or who and how they're being developed i mean if you need to know all that information then you likewise need all that information for purposes of applying prior art your honor the difference is that when you're trying to figure out if a claim is anticipated or rendered obvious it doesn't matter if the boundary of the claim is fuzzy as long as you know that the prior art lands squarely within it and that's exactly what happened in this case because the prior art that was applied by us in our petition reference that reference had the will call the pre specified parameters hard wired into it it was an article written by a scientist who said here's some parameters that should be looked at and the article wrote out how it all worked so when it when they were pre specified was frankly irrelevant to that prior question that doesn't mean it's not relevant or i should say that doesn't mean it's not relevant to an infringement action where we do have to know the outer boundaries of claim particularly when the claim is not being assessed against a academic article but is being assessed against a functioning system at that point somebody alleging that system of infringement has to do a lot more lifting to determine exactly what the outer boundary of that claim is and it frankly wasn't necessary at the pita and i'm well over my time so unless the court has more questions i'm sorry this is my fault but let's assume for the moment we have to get to the means put function question could you just speak to that really briefly just focusing on the nd means for detecting and why  why in your view there's no corresponding structure in the specification sure so two reasons the st of course is that it doesn't have even if it is the same structure that's for the st means that structure doesn't perform the function because it only looks for one parameter that's the counter timer argument counter clock argument but the bigger argument also your honor is that it can't be the same structure it can't be the same structure because there's nothing in the specification that links the structure  very talking about with parameters between storage means which is what they have to have and i think what your honor trying to point out is another reason which is the structure of this claim it puts the means for detecting the pre specified parameters  the st means as sort of the outer level as one of the main components of the system but the nd means is a sub component of the storage means itself because it says the data storage means comprising a nd means so we have a means nested within a structure which is within a system that alternatively includes another means if the argument is that one means doing both things they need to do a lot more to explain that and they've done nothing close to explain that here and your honor i would also point the court out a point to the court that when the district court reached its decision on this it changed the function of the means the only way the district court was able to read the same means on both function was by explicitly altering the function without explanation and i would point the court to appendix page thirty one out of time thank you thank you your hon determination occurs because the dude is sent on a recurring basis the system by it's nature is an iterative system a distributed network you're going to be measuring these parameters on an ongoing basis as counsel for apple has read for subsequent data transmissions you will be applying these pre specified parameters for that transmission because necessarily the dynamics of a distributed network change on a regular basis and i would like to talk briefly about the i g i g t case which judge chen raised that case in that case there was actually some confusion caused by an argument made during prosecution that predefined event was different than pre determined events were running out of time and i'm particularly concerned about the means put function limitation of the functions for the nd means is detecting pre specified parameters for data transmissions between said data stored to me and as i understand it the parameters here are related to doing a data transmission from one data storage means to another data storage means is that thirty to see if it's i assume because it's not expressed in means but functional language it would be somewhat different but i don't have an answer readily a ready answer to the differences between that and claim one