it the dispute is what were the effects of these mistakes the defendant and the district court intend that the mistakes were harmless and didn't affect the outcome and in some instances were not preserved for for number one essentially asked if yes the jury to decide whether mr joe up and certain other witnesses who testified at trial work could be considered all it's very unclear as to what exactly the court was trying to get at here because the interest is around three plates several different issues in the patent law is it trying to find out what the level of were never school was it asking rather about the hypothetical person having the ordinary skill in the arts or is it questioning what the qualifications are for a witness to provide expert testimony which it seems to be doing since it lists the people who actually provided expert testimony at trial now we don't dispute that the court could have decided that mr joe was not qualified to provide expert testimony that certainly normally the case that you're at least right and i don't necessarily agree drawn and that's why we say that the court could have allowed the testimony the court could have rejected the testimony what the court shouldn't have done is what it did it allowed mr joe to testify as an expert it got cold feet and asked then the jury to come to the rescue and determine whether what it had done you know allowing this to joe was testimony was correct y but that's why i asked the first question that the jury's conclusion that he was not a person of ordinary skill in the art doesn't necessarily answer the question of whether he should be qualified as an expert right agreed you're all right so  other question that there was i looked at the transcript and there was rooted about it some in some detail some what i think ultimately comes down i have to a confusion about what this term person of ordinary skill in the art need to mean this seems because mr joel one of the first questions on cross examination was have you any experience in this field know it well that i was asked for a specific specifically defense counsel s and you  not a person of ordinary skill in the art or you and mr joyce answered his honest opinion was that he was not because he didn't consider himself a banking or internet expert so if you had already testified that he did not consider of ordinary skill in the art what was the point of asking the jury this question we already had testimony on the record so the only effect it could had on the jury is that convinced them that the court was questioning mr joe is competence and credibility expert on some aspect of the case and the question comes up are you a person learn a skill in the art in the plumbing business oh that doesn't mean it's not qualified to be an expert with there's x two aspects of the case it doesn't seem to me there's a connection between the two that necessarily suggests that submission of this question to the jury was there i mean harm you know what we considered harmful your honor because the point would be that there was no reason to ask that question as to jo knowledge that he didn't consider himself one of ordinary skill are actually and and beyond that the issue really should have been decided long part of trial because the way it was presented to the jury it's more a question of is he qualified to give  expert testimony as opposed to just give fact testimony certainly and part of the fact testimony but once you question his credibility on one area of testimony you're essentially questioning his credibility on all of his  jury to decide whether the preamble of the survey claims and specifically the language transaction security apparatus was a limitation now i my understanding is correct me if i'm wrong that you  either submit that question to the jury or was going to rule against the plaintiff and given that option the submission was preferred will to an outright rejection of the the issue ok so if you're if you're wrong legally on the question of the preamble then this issue goes away yes but we don't think we're wrong on the what shines preamble mention two reasons the first is the preamble issue with the side of during martin in fact it was the defendant who asked for definitions for both transaction and security the term security only appears in the preamble and the the title of the invention transaction security apparatus and method indicates as well as the specification that security is a critical feature of the claimed invention so when defendants agreed to definitions during the marking phase that ship itself it was improper for them at trial to then reverse course and try to argue that the preamble was not a limitation when they in fact had insisted on having it didn't a limitation turn markman there's a second problem your honor it's a question of law claim interpretation is very clearly a question of law for the court to decide and there is absolutely no reason nor should that what i think we would see are any result of that issue right in response to my question at the outset of this question is a discussion you say well if the decision on the preamble is right the jury submission goes away well i think one of the you're right to turn back it really is just one question the present right i think so but one other thing that i should bring to your attention is that again briefed by the plaintiff the court decided to go with representations made by defense counsel and specifically counsel stated that the federal circuit has long stated that the preamble of a claim has no legal significance and a few moments later counsel added that the federal circuit has been very clear on this it's very rare i can only think of one case in which the preamble has been considered to have legal significance in the past twenty five years well and what they think might be true in the sense of that counsel could only think of one case even though there has been yes i cannot be the first instance in which a trial lawyer certainly does not seem that he was down to see any dealt with it as you know certainly i would like to have seen it dealt with at the same time the district court does have some responsibility in maintaining a level playing verdict to overcome the problem of not having objected those in the air have to be monumental well i think that is a monster really so i think the language of the case is used as fundamental and i think i think in those there's there's an argument that it was fundamental because not only did the court not object to any ad hominum attacks it actually applaud them because after the jury was dismissed the court made comments on the record to counsel and one of the comments was the gentleman who is bored with it is this is a one one four one one four lines eight through fifteen and i'll just read this mr jones took a gamble and it was a very very successful gamble quite obviously he went hominum attack on mr joe i opened with it closed with it took the risk rather than offend the jury which is the risk you take in that type of attack that would pay off by showing the real weakness of the and selected pages but we don't happen to have that page and just to finish the photo it was so that it would pay off by showing weakness of the case and so his approach to how to sum up and how to try this case are point that we've made in our brief i recognize that's a somewhat of a hard thing for this court to rule that uniform completely takes care of this there's easy ways for the court to affirm the judge court and we think the perhaps the wiser course is to take the easy easy way so what we're left with are huge issues that were not preserved or that were in fact invited and then the issue that was preserved which is the in the judge's original i mean it does seem to me that in our colloquy with mr ward we essentially focused in on what the the crux of his argument on this is the question  congress strongman all the cases that are on the issue of the preamble it laid out for the jury the choices is this a significant critical part of the client is it something that breathes like believe the words are  recites essential structure or steps or is it necessary to give life meaning and vitality to the claim that was one option given to the jury the second was does it merely give a descriptive name to a set of limitations has a purpose or use statement and based on the evidence at the trial it was clearly the latter and that's what the jury found and what the court well what the jury found mr joe was asked on a number of occasions during the course of the trial what's the first element of this client what's the first element of that point not what's did he say it's the preamble in his direct testimony during his case in chief he always start out with it's this element or that element  what mr joe said when he was that he was activist remember he is a patent lawyer in his own right and he testified at great length about the patenting process and when he was asked to talk about the claims and described them he said you know the claim language starts after  matter of law looking up invention as a whole we decide that we have to amend the coleen's by including the preamble it was mr general i asked whether he thought the preamble was limiting not until testimony pre trial that the preamble had any significance he called it an introduction during two or three times when he was asked on his direct examination to tell us about what's what's this transaction security apparatus language and he said oh it's just an introduction and you can find that at pages seven eighty eight eighty nine eleven o two is the question rude jury was right on the question or whether as a matter wall what we think answer is smarter standing your honor that their appeal is it should not have been submitted to the jury they submitted it they asked the court to to to do that so that's to see if there if i'm right on what they're appealing then the question really is should it have gone to the jury if the issue is well was it a correct finding by a trial court based on the jury's advice we would argue that it absolutely was if you read the language and claim to want to wait and claim to sixty seven which were the two independent claims if you read all of that language there isn't the words transaction security apparatus which first of all don't really say much everything that's necessary to support the structural integrity of the claim as  described follows the the introductory preamble language their claim want to wait talks about could communication devices limitations or restrictions on the use of an  account communication back and forth between parts of a computer the structure of coins one away and claim to sixty seven are all in the language of the claim in the transaction security apparatus is just it's just a name it's just a day and again i would refer the court to it's not just mr joe's counsel just gave in on this issue he was specifically asked and that's on page eleven forty three of the appendix do you want the jury to be instructed on the preamble and his answer was yes your honor i think the jury should be instructed and thereafter he tendered the substantive language that was given to the jury and this appears on pages i believe five eighty six yes five eighty five and five eighty six said about being introductory until the rebuttal case the second was never talked about before that we objected to that as being you know really not the law just to say that it's as a matter of law these words were limited we said that's wrong and we filed a brief and they filed a brief on the issue over the weekend really asked almost after the case was over the jerk the judge sat after reading j b tss trial counsel's brief i'm convinced i should submit this issue to the jury he didn't make a conclusion at that point on the preamble as to whether it was or was not limiting he decided that i'm going to ask the jury for its advice on the question and that's all wondering and your no no i don't think either brief mention whether it should go to the jury or not you are and the judge trial judge said having read their brief i'm going to submit it to the jury for the jury's advice that's what was done  said that with respect to mr joe being a person skilled you are he said if i find it i will find that he's not right and then we submitted that that issue too to the jury and again on that issue and we do concede they did preserve that i need to correct we said in our brief they didn't that was a mistake that kind of a hard transcript but we did i did find a place where mr freeh preserved and i regret that error and want to correct the record but that didn't matter it really didn't matter demand if before the jury is discharged yes forty nine eighty three if before the jury is goes back you can waive the jury demand on an issue of fact raised by the evidence unless before the jury retires t advisory and there's no seventh amendment problem because plaintiffs says that the issue of whether someone is a person of skill in the art is a question of law if in fact it's a question of law then there is no seventh amendment right to measure and so therefore it was not an error for the judge to use the jury in an advisory capacity you also have to look at the instructions as a whole if you're going to decide whether or not there was a sort of fundamental error or i'm sorry this would be abuse of discretion seriously erroneous or miscarriage of justice if you read the instructions as a whole there are not that sort of error in them if at all there was no objection to the standard charge and which is quoted at length of page nineteen of mr jones  brief most of the lengthy substitute charge was submitted without any objection most of the substantive charge came right out of the model patent instructions that heavily some connection with this court we're prices questions you know this is what rare case where the inventor really was not a person of ordinary skill in new york this court decided a case called burger about three weeks ago that talked about this rare case where the inventor would not be a person of skill and he or mr joe admitted he wasn't he admitted he'd never worked in a bank he had no knowledge of banking operations he had never done any internet banking he'd never done any online or remote banking and he didn't know anything about any of those mechanical engineer who's never done any plumbing and who wants to testify about what a person of ordinary skill in the art would know believe or understand on issues of invalidity and doctrine of equivalenc infringement and that simply would not would not be a problem and that's what we had here you're on this case was fairly tried mr joe and his counsel did what they thought they needed to  ever it's starting at line nineteen the judge notes that of course in the patent world it's a little different from the other cases we deal with where we often use juries as advisory but in the patent world that's what you're supposed to do you're supposed to turn to the jury what you have any factual disputes that lead to live legal conclusions that must be drawn by the judge so we're doing what we're supposed to be doing one of those or one on one for lines nineteen to twenty five so although that's a little  think it's a clear indication judge realized that this was not an advisory jury and the issue of advisory jury something was hatched after the fact to explain away the fact that improper in iraq tours were submitted to the jury the only other point i want to make is that again i think the court understands that the real issue here is the preamble and the key issue the key word is security it's used throughout the pat security of the features of securities that were provided in this patent for what distinguished it over the prior art and when the jury wrote security out of the claims it changed their scope and skewed the determinations on validity and infringement thank you for everything both guys with the cases submitted