district court should have granted judgement on client this case turns on client struction the entire claim has to be interpreted in context not just certain words in isolation and one of the claims read as a whole requires displaying voltage measurement regardless of whether in pieces also display you have to go through the various parts of our claim turn to arrive at that conclusion you can't just look at one term for example the  measurement of the voltage it takes place in the implant and that once measured the results of the voltage measurements are used to generate stimulator status indicating signals they are then transferred to the ext receiver then the stimulator status indicating signals are processed into processed status indicating signals and then the claim calls were displaying said process status indicating but before you get to that it tells you what those process status indicating signals are first they have to convey information about the status of the implant stimulator and second they have to include the measurements that were made within the implanted so that's right before you get to this point then you have to display those signals and that requires displaying voltage because those signals include the voltage measurements that were made within them planted stimulator the whereby clause confirms that  there was a finding by the district court judge that it didn't provide any additional restrictions because the claim can already require that the signals contained obtained by testing the stimulator have to be have to be  if you go through the sequence then the whereby clause merely confirms that if you conclude as apparently the district judge did the display voltage is not required before that point that the process status indicating signals don't include the voltage and the where  really knows what a processed status indicating signal is but it's you know it at the very least has enough wiggle room inside term that it's not restricted to just a vo measurement and it looked like from claim time african understood to recite measurement of voltage because that's what in fact earlier in the claim he cited so i guess there's a journey in the plane that's right there in a measurement of a voltage all the way down to ultimately after a lot of processing displaying something called the process status and kings that's right  guess i'm left with why isn't this a appropriate construction in light of the specifications contemplation of displaying all sorts of different things and the fact that the coin itself doesn't call for displaying the voltage motion well you know and i disagree that i believe the claim does call for it and it calls for in two places one where it defines what the processed status indicating signals are and in that case they have to include the measurements and those measurements refer back up to the voltage measurements and then those signals have to be displayed and the where by clause confirms that that includes the results of the measurement so it's repeated there in two places but the process status indicating signals have to include those measurements and i agree the specification is broader there are other embodiments but these claims were narrowed they were narrowed during prosecution to recycle voltage made you go through this journey and i will say these claims are probably not the best written but when you get through that journey and through the prosecution history the examiner found he said the where by clause specifically refers to the measurements made with the implanted stim within the implant stimulator and that has to be voltage because those are the measurements there so there is no literal infringement of these devices don't display poor or a prior art that's a reason related to patent ability and that can raise in a stop all even if there are multiple reasons in the prosecution as long as there is one that is related to it it's not tangential and i don't see how you can suggest measuring the electro voltage for external display how can that be tangential and that's the way the exam interpret vacating the damage award as part of the judgment entered and if you look at twelve ninety do not bound by the district court's recitation that we have to apply the law i understand whether there is an actual final judgment and i recognize we have  final when all you have left to do is an accounting and if the issue of damages has been determined before that does not preclude jurisdiction under twelve ninety range which is why we have jurisdiction over the cross appeals about infringement and validity and the  everything else is good here and vacated the damages awards and the parties on their own decided we have no argument whatsoever with the merits and we want to bring to the appeals court but we want to appeal the they get your damages now rather than a upset the principle of the case which was that that you could that if damages were decided ahead of time they would be included within the jurisdiction they talk about an interest diction in the subsequence with cases but this is independent jurisdiction principle it's an interpretation of the statute i think so i'd like to go back for a minute and talk about claim ten if that if the court would permit me and respond to my colleague at the here the key thing if you look at this claim construction it would have been the easiest thing in the world to say that there was going to be a display of damages i'm sorry something of a measured numerical voltage number if that was what was intended there's a whole series of processing steps which are clearly contemplated within the what the court's cases talk about when they say whereby clauses are not ordinarily limiting clauses in addition like my colleague talks about this idea that there is a measured information about the measurement but let's  in mind if you step up to step nine what's important is is that what is what is being explored is conveying information regarding the status of the implanted stimulator information regarding the measurements nothing about that  understand that the current process status indicating signal sounds very broad and doesn't necessarily have to be restricted to a voltage measurement but then maybe just maybe with your whereby limitation that you added you arguably back your way in to a requirement that the process that is indicating signal whatever that is actually provides the results of the voltage measurement also be in the display no your honor it doesn't do that because the result in this context is concept and what is the consequence of doing this process that interprets the claim consistently with figure six as your honor pointed out in one of your earlier questions you also interpret the claim consistently with what  doctor wants to know which is not necessarily in american value but that the number there are but the status that is is the implanted stimulator working in a proper fashion and then let's jump over for a minute and talk about the amendment process  there were two reasons for an amendment one was in was indefiniteness in that nothing was displayed if you were to get the prosecution history of stoffel i think clearly that's a place where the fact that someone indicates there when to display process status indicating signals that's clearly a place where where you would be squarely within the tangential domain but with respect to the examiner's comments what he was doing was distinguishing prior art first examiner comments themselves don't limit the claim don't don't trigger limits under prosecution history of stoppel you've got to look at the amendment if you go back and look at the amendment in the examiners comments in context they clearly show you that the limitations which will be carried out was first a limitation with respect to simultaneous stimulation of the electrodes and second in real time display that real time display is the critical distinctive feature and you can read the examiner's comment perfectly consistently with that it does not suggest there was voltage requirement that was imposed in this circumstance i'd like to jump ahead and talk for a minute about the indefiniteness issues of because obviously if you have a concern about jurisdiction if you if you  law issue that is raised with respect to the indefinite gets one claim that one of the six one six patent the judge made a fundamental mistake here in that he decided that there was an inadequate means plus function court made but there's even a more fundamental problem with what the court did and that is that this case with respect to the necessity of a means or plus function type disclosure in algorithm disclosure falls within the ca exception because you could display a voltage there's undisputed testimony in the case that if you displayed voltage you would need no algorithm and so the determination of indefiniteness with respect to this claim was was clearly romance on the porch part and with respect to the course alternative suggestion that there was some different ways you could calculate ohm's law the record is clear that fundamentally it's a single formulate can have minor variations but some variations in how a formula which both experts agree because once the sound is sent outside of the processor it's clear it has to do an exponential conversion that means both expert agreed that you had to have a lot rhythmic conversion on the friday and that's what the processing step was all about the judge had some concern about whether there was an adequate disclosure of where that occurred but at the claim construction stage the dispute being whether it was in the processor or the immediately preceding even the converter at the claim construction stage the court that it was construed that the aid to the converter number twenty eight did nothing more than the conversion in disk did not do any sort of additional processing and so and so there isn't you have an expert confirms that to be the case here rather because whenever we have a conversion being shown that is more than just a conversion the diagram shows you if you look at sixty four in two and seven steps in the pattern you'll see that and the specification also tells you that all the processing is done within the the processor so if you reinstate those things i think then we do definitely get back to damages and i don't i still think that if you look at the four before you g you want us to make that determination or this new spirit or that the district court to make in the first place well the district court still gets to take step two we never got to that step and here step one was tried to the jury without objection and tried and tried and i that's true at all what i do think is that it is that it keys where willfulness is tried under instructions at subjective level which asked an exam a nation of the totality of the circumstances that survives halo striker and it had jury having made that to infringement or validity that are generated during the reputation are no longer relevant for purposes of defending a willful misallocation and so all that matters is whether at the time of knowing about provoked because the disk recorder didn't have better appreciation of the law at that time because that wasn't of all it's clear that both of the defenses that the disc the defense the district court imposed under the objective probably did not come into existence until five years after the communicating signals plural to derive information about the operation of the stimulus how do we get the homes lawfully there is an algorithm that corresponds to this particular function of processing the status indicating they have come up with ohms law and said well that would be one thing you could do well ok but this is the case the scope of the claim is much more than that it talks about processing o something should have been disclosed there's nothing there's nothing that describes the processing that goes on in this microprocessor that corresponds to processing  know there is something clearly that is going on because you that the client one of the experts described such things as aligning formatting averaging all types of things that could go on to process the sentence but there's a lot of that that's disclosed so just focusing on ohms law and saying well that's enough of an algorithm it really doesn't satisfy the claims sang same with am much argument that simply measuring voltage and passing holders through i guess if we were just  we really have a voltage measurements so it's really just getting passed through and i think the point the other side's trying to make is there's no algorithm in that circumstance that actually needs to be disclosed because you wouldn't be using any algorithm and so you know we there's no structure that needs to be actually disclosed when you've really got the voltage measurements to display the voltage measurement so i guess what i'm trying to figure out is you you're trying to get me to consider be concerned what am i what should i be concerned about well let me address the of the sort of the voltage transmitting to both age issue first but doesn't meet the claim language the claims require processing the sentence that's not processing that's just passing through so have no hour than is required that's fine because it doesn't correspond to the claimed language of processing the status indicating signals i did mention that says signals are poor all so simply doing one of these whether it's juggling a penis is not necessarily enough the scope of that particular limitation is broader than it has to have an algorithm that corresponds to the entire function her and simply coming up with one that's a an able man now whether someone would know how to do this but what's the scope of the client what corresponds to the processor means for processing the singles what is the microprocessor doing is a black box you have some input slider describe some output you describe we're not talking about enablement we're not talking about whether somebody could do this we're talking about the scope of the claim and how do we know what the microprocessor has to do it could do anything and simply going in and saying well here are some of the results that the move that the processor achie therefore we can come up with an algorithm that's backwards we need to know what the processor is doing that's what the law requires and the same for the other of the a six ninety one pattern as well it requires a generating dat indicator of an audio signal that corresponds to the microprocessor so there has to be some programming the problem is there's nothing about inverse logarithmic conversion that's described that's just their expert saying well someone would agreed to that i believe he did agree that that could be done but i don't think it's limited to that and there are many ways to actually do that function but we don't actually know the microprocessor is doing the function it could be in the a converter and if that's the case then where is the structure corresponding to generating data indicator of an audio signal that has to be in the microprocessor for if it's been doing done somewhere else we have the same problem we have just this general function of generating data and nothing in them that corresponds to that and what they have done of they've picked out something and said well somebody would note to do this somewhere it has to be in the microprocessor and they go through all the steps but it indefiniteness we're talking about now whether somebody could figure out a way to do it but what are the skills in these claims and what corresponds to this particular means we don't know just treat it as a black box on the address fictional question here i don't see how a non final order such as a new trial or gets dragged along by twelve might be to see how and finally back to the on our appeal on the display of voltage  counsel said that the amend was made to distinguish the prior are based on real time to swallow well there's nothing about real time in these claims i heard him say that you know it's easy to say he does play  voltage well it'll be easy to say real time display as well and that's not in there it's not obvious from the prosecution history where that's your own willfulness yes was there any evidence presented to the jury that but i think then it focuses too much first of all on calling time because there was a reason that was given in the correspondence as to why there was no infringement how the letter that was sent did not identify any claims that identified products that were not sold in the us and that was in response to three years for them to respond i'm not sure what the court should do in all willfulness cases whether everyone should be sent back but this court is not planning to send everyone back this is a case where you confirm based on what the district courts because the court found there was no subjective willful infringement he focused on the right timeframe and there's a considerable overlap with what hal requires there's really nothing left to do other than to decide whether that's an abuse of discretion otherwise i'll every case is going to be sent back after after  one can readily calculate there is also a reference that line thirty five ten to fifteen the patent claims use of a tester the computed impedance measurement based on the voltage measured by the implant in the peak output current and important its claim construction brief coakley wrote that he does not dispute that the six one six patent describes measuring the voltage and using all means more to calculate an impedance with respect to the argument that there are some sort of differing voltage processing that might go on i don't think that's ever been argued here before in this case so i i really am not in a position to debate about it the point is that if you if you simply pass along the voltage measurement you fall within the cat's exception and you don't have to do any kind of processing which means that the indefinite finding has to be set aside with respect to that claim the claim function requires some kind of processing of the status in between i beg your pardon i'm sorry the claim calls for the pla i didn't make my point very well the record doesn't really develop that particular because it wasn't disputed heretofore is an argument which has been presented at the first at the in preventing is what would one skilled in the ar principle or an equation you look primarily at charts and here you can look at figures you could look at what i've quoted you and you can look at the concession that's been made and i think that ought to be sufficient to establish that in the indefiniteness finding here needs to be set aside turning to the indefiniteness with respect to the six nine one patent with respect to in response to one of judge trans questions my colleague you asked about what their expert said in this case  dr stevenson testified at appendix twenty five ninety two and ninety three that you could determine that there was a lawful reason if equation that had to be had to be done because once you got through the process or you knew there's a wonderful statement in the typhoon case which is you know you don't have to tell expert people how to do things and took into burden disk specifications with unnecessary detail there can be implementation choices that have to be made i think one of the most interesting cases to my way of thinking is if you read judge bryson's opinion in the aristocratic case where he's talking about the earlier docile case and he's pointing out that if if you tell a person skilled in the  art generally how to go about accomplishing something the fact that he has mathematical choice or methods by which to do it is not a reason to find indefiniteness and part of the reason for that is that what you're concerned about with indefiniteness is to avoid generic claiming that's not going to happen here because you know there's other ways you could process this this soundwave linea linear fashion for example so you wouldn't create that problem in the first place so you don't you don't implicate you have a technique a patent which calls for the use of a chair you don't have to have a lot of discussion about how the chair might be put together by an expert in this is squarely in that situation with respect to the with respect to the jurisdiction point i'd like to just return to another point that i neglected to mention which is that we also have here a fifty four b certification from the district court and as we pointed out the ninth circuit the regional circuit law that is applicable in this kind the question has a very broad view of the existence of jurisdiction under under fifty four b when all when you have a residual damage inquiry that has to be conducted in this is before the having multiple planes in  case and then splitting coins into two buckets and then maybe allowing completed litigation on some of the claims to go forward you're correct as a general matter your honor well that's the language of fifty four you're correct that all i'm saying is that if you look at the way the ninth circuit has interpreted that principle in the case we've cited it certainly got a certification from the district court it this is this is the kind of situation which fits within the rule which is th congress clearly intended under twelve they need to see to to eliminate the need for proceedings which would be mooted by an appellate decision and that's where we are if we are correct that the damages flow from any one of these claims as as i think the record establishes and we didn't have a chance struck too much about today but you get the benefit of the briefs so unless the court has any of our questions i see i've run over my