and forty four patent and therefore the ale j s determination of invalidity should be set aside the eight for four patent claims in a mission control device with quantified i just explore a little bit of this with you i know that the better part of your brief is about a legal proposition and i'm going to accept for current purposes that you're quite right that  what the one hundred and two g two inventors must have is an awareness in substance of each of the now claimed claims elements  honeycombs as the last batch plus some aluminum foil and then the decks start getting created what is it december th to early january  i thought it was clear that in fact i think maybe page eighteen of your brief you say that that set of honeycombs was what went into the decks your honor  clear that the october th one thousand nine hundred and ninety nine letter identifies the honeycombs having of the w c of three point seven grams productive leader the more important point is that the delphi engineers had no appreciation of that or the significance of that fact at the time they built and i'm sorry to keep interrupting i did to some extent i think there's an important ambiguity about the term appreciation appreciation can mean think it important and it could also mean recognize the presence of i'll stipulate that thinking it important is legally irrelevant it is is something that they did not do because they didn't put it in their own patent nevertheless it feels it seems to me it's legally irrelevant that the only question is whether they doing so that while the information may have been available in the letter from west vaiko it was not known to appreciated by important to critical to significant to or otherwise pertinent to the d e c s development because they were taking these products supplied by west go putting them into the device of their creation and of course we know from the record of invention on the subject patent myler patent that they thought their invention was based on the record and of course it is it was not known to the delphi engineers at the time that that property had any significance to me but i guess i just want to push but i just want to push back on that i i don't understand why under any any relevant case law it matters whether they thought it was significant if indeed they were aware of the property because even for conception requires that they had at that time at the time of the claimed conception the entire invention in mind and the invention there is the claim of the a for for patent not very invention not the delphi's invention but the eighty four dollars for invention which describes a quantitative numerical threshold for the subsequent volume and  he delphi engineers the record is under spewed it had no knowledge of that had no appreciation of that and that's why it's significant is because they never had the mental state requisite to make the invention as required it is it is  good it is one of those cases where they created a different invention and went on the climate we know exactly what their invention was because they have a patent on it it is not our invention and so there is no there's no interference between these two claims you the and the arguments being made by the respondents in this appeal are based on sort of hindsight reverse engineering to what might have been known but with absolutely no evidence and remember because this goes to inventor ship that requires c evidence of what was actually known subject of lee known by the inventors and dr labonte in her deposition disavowed any such knowledge and the documentation the record of invention does not reflect any such knowledge so we have here a hindsight re creation of something that didn't actually happen counsel you said dr divine disemboweled any such knowledge where where did that occur is that and she said in that in that timeframe in two thousand no one not it wasn't critical to what we're doing but they didn't necessarily so what she's saying is we didn't perform tests to determine the b c but they had already been told what the b w c was of the samples they were receiving it was three point seven so she didn't think it was critical to perform tests i guess maybe among other things to verify what the b w c was but mattered at all judge moore i think the key the key point in your question is the difference between new and better informed the letter from midwest vaiko says what it says there is no evidence that the d the the record of invention and dr leon's deposition go on and on that what they appreciated as the importance of this product was its shape its longitudinal characteristic with the channels running through it that allowed flow of air purge gas to to reduce the heals and at no point did they focus on the b w c or the i c or any other measure of the absorptive capacity because there was no interest at the time in that they were focused on the difference in shape and that of course is what the record invention reflects so having started telling me that it is your view under the law that if they knew they had a honeycomb structure with the b w c of three point seven  and they ultimately knew that structure was effective at reducing emissions that is your view that the appreciation standard requires them to know that it was in fact the three point was related to reduce emissions and remember claim one has two components it's also in series with a prior volume of a high absorptive capacity they had no knowledge and there's no evidence to record that they had any knowledge of the absorptive capacity of the primary volume  we have to we have a two two element two limitation claim your method claim here mr perry i don't remember you ever making this argument to us that they didn't know of the st or primary that an argument that appeared in your brief to us your honor we have taken the position that the knowledge of the subsequent volume is the critical one because it is the one that the you know but you just said for two reasons and your st reason on up on semantics but i think that has been our our argument the entire time says that having failed to appreciate the absorptive quality of the subsequent volume or for that matter the price is there is there anything you can point me to in your br that would support this what i feel like is honestly something i've never heard before this argument that they didn't appreciate the st i see requirement as opposed to the nd and your honor to be clear we have focused on the  i see requirement precisely because of the hail j's determination of the obviousness determination i would have focused on i said is there anything at all in your brief that you can point me to that should have alerted need to the fact that you point me to something in your brief i don't think that's the same as what your position right now point me to a page in your brief reply brief twenty five dollars and elsewhere we have said that the fact that they were agnostic to or did not know the absorption capacity of the subsequent volume is critical is option capacity of the subsequent volume is critical for two reasons one is because they didn't know it and the other is because the claim itself requires a two step comparison i actually thought that was clear from the claim language i don't have a page in the brief where it says exactly what i just said but it is certainly the the fact remains that they did what information is in the records they did not know there is no evidence that the in the you know that this letter got into the knowledge has they were making the invention and this is a conception question not a can we reverse engineer what might have been for and whatever it stands for it is a little bit or maybe even more than a little bit hard to fit into the otherwise quite large body of law that says to conceive or same thing appreciate an invention you have to in substance have in mind all the elements  a case what case and i'm not asking about the words used because the words used a lot of these cases have a certain generality that could mean a number of different things what other case might involve facts that would say yes you can meet the appreciation of your reduction to practice standard without having in mind in substance all of the elements of the claim now at issue right and in the ordinary one hundred and two case that we get from one or two i mostly want to be from the titanium metals line of cases if something is out there in the public domain or at least the knowledge of it is out there in the public domain it really doesn't matter what anybody recognized at the time but we're talking about something that is vance only under one hundred and two g so there's no public domain issue it's just invention  if it would please the court judge schall there is no prejudice here and i disagree with and japanese characterization of what the delphi inventors knew or appreciate it i think it's important to go to the language of claim one which is the only claim before the court on this appeal that claim is a method for reducing fuel vapor emissions and automotive  using a low capacity carbon and a high capacity carbon that delphi inventors set out it was their goals the documentation contemporaneous at the time from mike tolbert of nineteen  a carbon manufacturer the carbons themselves for that new and that's important this is not an invention to the honeycomb the honeycomb was no the initial eleven or approximately eleven facts one thousand five hundred is a b w c of approximately fifteen and thirty letter in the record that the judges have referred to used as a subsequent absorbent volume in the auxiliary canister that they built so i think it's incorrect on the record that these inventors didn't do and  oil one of those two words does that aluminum thing have any bearing on the b w c capacity no no i think what's key here is the delphi inventors are requesting honeycombs to use in a system they were creating to reduce a vaccine is a mission so they're asking the weslaco team for honeycombs and the nd sentence of the letters says these honeycomb parts have been given the sample number and the rd sentence says they were made with the same carbon formulation and sell this city as the previous part to test it which are on appendix  sixty one where the b w c is referenced and what they did is he said what's the essence of the invention the essence of the invention is the ability of that honeycomb to regenerate during perch and this is something that the delphi inventors recognised language regarding the ability of that honeycomb to regenerate during purge is referenced in their record of invention  referenced in the patent application and we have numerous sites to that effect in our breaks if you look at the record of invention where they talk about properties of the invention using a made with a granular pellet media and requires about th of the carbon so they're recognizing differences between what they were using and other carbon pellets on the market i also  that case involved more claim limitations with quantitative aspects than the claim one at issue here and if i direct the court to claim three and four of the my kitchen six hundred which talk require those quantitative elements to be appreciated by monsanto only that they had created the teaching that expressed highly in plants stories even though your little bell went off or given him extra time you want to share time for sure so again going back to the my kitchen case where i highlighted claims three and four which you can see in the opinion in my expressed highly in plants the whole goal was to make these plants more resistant to insects there was a requirement in their documents that they proved at the time when they developed the chains that it met this at least about thirty percent of the co e or at least about eleven percent of the nucleotides so i disagree that it's simply characterizing an invention in terms of nuclear nucleotides or coda where there was some differences there they're the same but the court found that the evidence there was legally sufficient under one and i submit that the evidence of record and there was an extensive record lots of documents testimony by the delphi inventors testimony by delphi inventors characterize and understood their invention and what they were using was the same and in japanese made up terms of i a c i see it was not a term used by people of skill in the council i understand but i guess my what i'm trying to get at is what do you think the standard is for appreciation in order to satisfy our case law do you believe that intended purpose which here was to reduce evaporative emissions and they also knew that the honeycomb used as a subsequent absorbent volume which reduced  allowed the to regenerate during purge was specifically recognized by them for in jeopardy to suggest that they had to quantify or specifically quantify the b w c or i see which are the same  please thank you judge moore to answer your last question quote the inventor must contemporaneously appreciate that the embodiment worked and that it met all the limitations of the int interference count that's from cooper nor so the same thing in many other cases do you have to not only know your invention works but that it that it meets the limitations of the claim well i guess a council that the question there is if they knew it reduced emissions which they seem to have known and if they knew it had to be a sea of three dollars and then it seems to satisfy that quote because the quote doesn't go further and say they had to know the b w c a three seven was the cause of the reduced emissions judged more they did not know the beat of it she was three to point seven this goes just write this question this we had a trial this was hotly contested there was lots of evidence on both sides the judge made no finding that they knew in fact  bad guys the other side expert testified that dr line didn't know the b w c and that and they and those letters in the record the author of the letters testified that the three point seven did not apply to the honeycombs that were in at the top of seven hundred and sixty five we discussed this earlier dr love and testified that they never tested the b w c because it wasn't critical we talked about the earlier then we know that they did not know about the w c mr sorry just more i was going to get to that point next on the next page of seven hundred and sixty six to collect the evidence on that remember there are two letters the question is whether the honeycomb used in the d e c s had three point seven  c and mr miller testified that the december honeycombs did not have a beat up you see a three dollars so it is not true there is no evidence and it would you mind just since since where in our joint appendix is the miller and to go back to just draw those question to my to my friends or drug why didn't the algae make a finding because there was no evidence that the dolphin engineers knew of the b w c there is a paper trail from which an inference could be drawn that they might have known but not that they did know and conception requires actual knowledge subject of knowledge they had to prove the response had approved by clear and convincing evidence that the delphi engineers actually knew not that they could have known not that it was in a file or a paper or a letter but that they actually knew and then all of that they knew but they appreciated the significance for the invention and that's the disconnect i think here and the reason the l g had that disconnect is that he never know the difference i think one of the critical difference is for your case is what level of appreciation is required and i ask miss kills is it that he has to appreciate suppose that the inventors were aware of the b w c a three point seven supposed that that was the b w c of the honeycombs they were using ok just take that as a hypothetical and then now the question is do they have to appreciate that the b w c is the characteristic of the honeycomb that is actually creating the reduced emissions or is it enough for them to know that they have a honeycomb of three c and that it's reducing emissions you understand the distinction i'm trying to get all i do judge more and i think the correct answer is somewhere in the middle which is they have to appreciate the subject matter of the claim which is that the i think the hardest case for what you're asking for and to be clear i think what you're suggesting is not unfair in light of other cases of ours but in light of the decision in tesla in particular i'm struggling to reconcile how i could adopt the level of appreciation you want with what actually got decided in temp yes your honor and i think the the line of cases that lead to tab is important because of a didn't overrule them but  think it's important to recognize that the claim into was not to the stabilizing compound it was to a stable composition the treated high cholesterol that contained a an a p i and b contain lots of stuff that the comprising claim and so we know that those are the two things that were necessary to produce a stabilized farm composition that's what was claimed but what the what what our court found in the was the stabilizer so that it appreciated it had an amount of profit on and the and the concession made clear that it was a stabilizing effect of amount but the fact that it was the stabilizer was not claimed there is no claim to what is the stabilize heaven here in sharp contrast claim one of the eight for for patent requires the two that subsequent volumes and a numerical limitation on the c below it and i think it is important a chemical composition is different than a mechanical or an invent know if we go back to nor for example which which talk specifically about mechanical inventions where it has a feature recitals a positive limitation conception requires a recognition of that feature and here we have a claimed limitation  probably equally important was and no other stabilize or slightly more words than that but that doesn't i'm not sure that matters but we held in tev that the requirement of  time well i was aware of the a g c p and it was aware of the stability was what i was aware of was the connection and the connection was not claimed and again the linkage destabilizing effect of amount was made up in that case by the concession and th section of your post trial here in brief i read that to say nothing that we think is missing from the relevant appreciation is an awareness of the relevant capacity of let's just call it the nd honeycomb i don't read that as making any reference at all to the causal responsibility either alone or in the subsequent volume that has the low threshold but i understand what that what what the claim says and if if if it had been raised there would be an interesting claim construction argument about whether each of the two steps has to have contradictory contribution to the overall preamble claimed result my only question is where in before the commission in your relevant filing did you make any kind of causation argument of that sort as opposed to simply saying that delphi inventors were not aware of or at least didn't care about absorption capacity appreciated the claim that is that is our argument start start middle and finish really is that they don't know anything about absorption and its relation to lead emissions therefore they could not have made our invention they made a different invention and that's what the hale j failed to appreciate understand and that's what we took to the commission on the commission led his opinion and enough why we're in this court i mean i i'm not sure i'm answering your question but i think that is the the thrust of the entire argument is that the lack of appreciation of adsorption means that these delphi engineers never conceived never made the  before i do i want to say mr perry you slipped and you said something rude and you know i'm going to put my mom had on for a minute and say it would behoove you at a later date not in front of me because you're not satisfying me by doing it but you apologized to opposing counsel for calling them bad guys i know it was a slip i'm sure you wish you could take it back it's not to me or the court you know an apology that's all i'm going to say i'll never know whether you do or not it's on you to figure out what you should have thought how to handle that but i did want to let you know that it didn't go unnoticed it is to you answer them your honor and i'll make it on the record it was a slip and an unforgettable on and thank you for calling me on it and thank you for reminding me of my obligations to my friends and to the court i do apologize to  case is taken under submission