is enough to dispose of this appeal the board had no trouble construing the limitations of claim eleven including that digital processing unit limitation the board had no trouble applying the prior art to claim eleven concluding it was  yet claims one through four and eight which we submitted are for purposes of this appeal identical to claim eleven were held to not be unpalatable on the basis that the court of the board could not ascertain the proper what we can't do the same thing from my mind so you want to get in to the reasons for that i mean if you made the bold claim which is the two can't be differentiated for purposes and validity that's correct you make a pretty old argument in your previous with regard to statutory construction yes i think it is but you make an alternative argument which is more grounded in the claim language correct so let me start with the claim language point the basis of the board's decision to not apply the prior to claims when the foreign aid was based on the digital processing unit limitation that that exact claim moment is in claim eleven as well twelve pages later in the opinion claim eleven to this court is not raises an issue on appeal so we would submit that is an issue that is now decided for purposes of this case and given this court's clear mandate to the same playing term a very different claims of fact is presumed to mean the issue on appeal yes so our position on that is the history of this court's precedent makes pretty clear that and indefiniteness find it is not per se block the court from looking at the claim in human collier collier another case of standard d by this court rule thirty six true and are there any other cases off the top of my head i don't have i don't know of other cases but the point here is the standard seems to be are we speculating about the scope klein there is no speculation needed with respect to an ikea x l indefiniteness finding as to a claim all the court has said there is there's a there's a technical violation with respect to mixing two subject classes or had no trouble finding the prior art citric reference apparatus that constitutes an act of infringement so far as it is a little bit of a form of making the construction impossible you can't because you can't tell what the proper construction is well you know that both possibilities would lead to and that would be then it's ok to go ahead with invalid yes but wouldn't it be true in ordinary indefiniteness if you decided there's a finite number of possible interpretations of a claim you just take off all of the different interpretations and you say ok well ah i can make a an invalid determination as to all of them and then i don't have to worry about indefinite i think that a finite number of possibilities is disastrously what for talking about where the court said look we cannot we're going to accept the view of the claim that it is an aggregate claim and we're going to analyze it that way we can conclude it's obvious in view of that and i do think there are definitely  situate sions where for example it might the claim might be definite at the outer edges but you know what it means in the middle and if you have a reference that meets it in the middle you have a you have perhaps alternative issues you have a want to want to three as well is the chief judges ask doesn't that mean that we've suddenly expanded the scope of potential stoppel rather dramatically well our argument is not that every issue is on the table or argument is in this case the issues which it seems to in connection with its claim construction powers then it should have the power to cancel the claims on those basis if that's true arguing that it's a matter of our or a matter of obligation it's both they have the power they couldn't do it because they couldn't figure out figure out the limits to digit the digital processing unit limitations the sole basis for the reason not to reach once to one through four and eight so that is a claim destruction issue and we would argue it settled by virtue of what happened with  with the boards and now of claims one and four through eight but even if they're inconsistent and they may well be that doesn't necessarily mean the claim eleven analysis was correct and the claim one analysis was wrong well why isn't it the case that one of them may be wrong but it may be claim a lot and you have to win on the question on the substantive question of whether this is really a one thousand one hundred and twenty six claim right and you can't win simply by pointing to claim eleven and saying aha we went to points were actually thirty one but you would agree with that right with my what i just said well not now because there was an appeal is to claim eleven in the battle or hasn't challenged the construction of digital processing unit so i would argue that this matter  settled in this case all right so let's response one finds to we brief this issue we do not think that the board's finding that digital processing unit is the means was function element is supported in the record here no one raised that issue the only evidence the board had was the testimony and the argument by that monir that the digital processing unit can noted structure was known to those of skill in the art means was not used in this  the holdings on one through four and eight cannot stand ok can i just go back to the breath of what we're advocating here because i can understand we could cabin off the kind of one  different way he's so is how does the board approach that there are thirty different ways to get this to claim could arguably construed and we have to add allies to each of those against the prior art that just doesn't seem to me what was be in claim scope you have to advise each one of those so st we are operating now under the nautilus regime which is an even broader regime not not the narrower insoluble ambiguous regime in that regime i much harder to make the argument because i think they're just by saying and saw you believe ambiguous would suggest that there is no meaning conceivable to that claim we're now in a different regime where in fact you may have claimed terms that you know the meaning may be plainly understood in the center and there may be some debate about the outer edges of the claim i think that's an example where there wouldn't be speculation seems to be the standard the the courts and the peter ever applying and i am i being rude hard to speculate here as to the scope of that claim and i think the ip xcel example is a simple one because it doesn't require any speculation especially in this case you're talking about two options and that's it it's an apparatus or a method of using the app so we don't have to reach the other question i don't think you have to reach that here no and that's why i started with if you in this case the finding  submit but you know i do i do understand the court's concern of the of jumping out into you know how many is enough but i mean that that's you know that's that may be something that's left to the development of the law i think it's a fair point consisting of patents and printed publications and quote samsung rather boldly and with i would even say blatantly has me that's a very clear prohibition on what a petitioner can ask  just deciding what the board was correct to say we can't reach that issue because we've got a one hundred and twelve problem that's a little bit different not as nearly a broad swath of us judge to a regime right well your honor what i wanted to start with was just that we observe here that the statute clearly prohibits what are you petitioner i p r can request to cancel is unpalatable regarding the lettuce and when they're ok but let's assume we're talking about one of two among the three here and it's just whether the path includes some something in the numbers or at the end but they've also requested completely separately that these claims be cancelled problem with samson's argument i believe on this point is they want to say that there is a class of indefiniteness called i p x l indefiniteness and that is a special kind of indefiniteness that you can you can apply the arctic there may be other kinds of indefiniteness according to them that you can apply are to but with this particular kind of a definite as you can this is that the gist of their argument on this point and the problem here's here's the problem i picked seoul was the st case i ve excel from where this court addressed the issue of whether mixing apparatus elements and method steps in a single claim renders a claim indefinite in fact if you look at the eye pixel decision on this point it noted when it was started this discussion that it was an issue of st impression work and it said but it's not an issue st impression for the board be indefinite for mixing in one claim apparatus elements and method elements so when this court in ip excel in ca did that claims could be found indefinite on this board addressed the rejection on indefiniteness st and there it announced that claim was indefinite because it makes tapper radisson measured steps and then it turned to the anticipation rejection and i'm going to quote from x party liles treatment of that very short quote with regard to the examiners rejection of appeal claims blah blah blah under thirty five dollars u s c one of two b isn't dissipated by our reference it is our view that since the appealed claims are indefinite and indeterminate in scope for the reason stated supra it is not possible to apply the prior art to these claims in deciding patentability without construe it because these terms in claim on have five different potential meetings and we know which one i get that but i'm looking at blue briefs six through seven which has a chart comparing planes one and claims eleven so this pedestrian question but if i'm just sitting there is the ford trying to do the analysis i did it claim eleven why couldn't i do the same analysis and application of the prior work to claim on just looking at this because of the confusions of infringement why if you're bored examiner p ten judge why couldn't you apply the same analysis with regard to prior art claim eleven to claim one first of all your claim one limitation to an image display device that's not present claim eleven so it came up the board made none of that analysis they weren't differentiating claim one claim eleven based looking at the prior art and saying well these claims are different and so forth they didn't go there right the boy didn't do that well they they did not apply the art to claim one because they held that samsung did not meet its burden of giving them a satisfactory claim construction for cl in that case they reversed their examiners rejection on into submission because they said they couldn't reach it because of the indefiniteness problem so the idea that they're advancing that ip excel is a special type of indefiniteness that you can apply the arc to and do a one or two or three analysis is completely at odds with the very with the st case ever on the subject that created by pixel rule now even if that's you're correct characterization of the comply of case it seems to me one of the problems for us is that that's not the analysis that the board used in this case because the board in this case and i'm looking at twenty said that we disagree with petitioner that we're able to address patentability of claim one and the reason they give is because of the one hundred and twenty six dollars problem that the board perceived at least at this portion of the opinion with the language of the digital processing unit limitation so i can it would seem to me that we would be departing from or adding to the analysis of the board if we were to say and type definition that prohibits the board from reaching the one of two and one of three issues well how can we do that without the boards having already told us that that was the basis for the rule well an apparatus claim whose limitations are merely written in functional language the petition lacks the analysis required by the regulation for example as we stated in the decision on institution the digital processing unit limitation invokes one t your argument on the for example as what they say even if they're saying both they're saying even if it is not directed as i read it to the i p x l issue i don't see where the at the end of the paragraph preceding because that was their wrap up with their conclusion of the ip x l issue and then in particularly a kind of reading of in the alternative that's that's very fair characterization of how i believe it's properly understood and that's out if you read their brief their brief is predicated on saying issue number one board found the claims i pixel indefinite board should be able to cancel under one hundred and twelve what happened that if we conclude that the board was incorrect on me  six means less functional this was not a means of well what happened i think for them to do to when they have to they have to win both arguments they don't win by just winning the d p you argument because they've acknowledged the board's determination that they failed to carry their burden was based upon two grounds one they didn't they didn't show how the board to destroy the claim because of the apparatus method issue that the board raised and the nd being the d p you issued so they have to overcome so they have to they have to and they haven't and this is the key point they haven't it with respect to d p you they've come in here and said all the board  step is using the d p you so i think for that reason they're not identical issues they're not identical issues ok and another another problem i think that they have is when you look at the boards discussion of e p o and on claim eleven you know samsung has a number of shifting positions  meaning but well now they're coming in here saying well the patent owner of the inventor testified at a deposition i believe is what the references to that digital processing unit does have a special meaning to those of a skill in the art and connotes sufficient structure and that's why we didn't think it was me it was function but yet you know so now they want to say in this court the patent owner was right it has a special meaning but when they brief this to the board in pla the context the claim eleven is that it didn't have a special me so you know there hard to follow exactly because the positions shift so frequently here they're not consistent or they could have taken it if was not found to be means force function and claim eleven it shouldn't be found that way and claimed one but yet they argued in connection with claim eleven that the term had no special meaning and now that their argument for the error on claim one is that it has a special meaning and connotes sufficient structure to want to skill in the art and wouldn't be a means plus function subject for control treaty so they argue different things when they see that an advantage  i'd like to i don't think that these issues really you know that you know that the issue of whether or not you know that the board doesn't have the power to cancel under one hundred and twelve so just like in the google  didn't it didn't get into whether it was or was not subject matter eligible under one to one it just said we accordingly can't go there we express no if you want the same this court doesn't need to get into whether or not there is one of the one hundred and twelve issues in this case they're arguing that the board had the power to cancel under one hundred and twelve yes and that they have i think we see this is where we started where they have pressed what i understand to be an alternative argument that even if they can't get a cancellation based on indefiniteness before the board the board should not have not relied on indefiniteness and not reaching the issue  get up again to respond to that issue and their reason for not doing that was well there's this other problem with one thousand one hundred and twenty six because you haven't satisfied us on that we don't need to reach the other the other analysis that we just rendered with respect i p s cells that that's a much  more succinct and and specific statement that the board the board the board the language such as for example me wondering what it was an example of coming from a different class and from a larger class we certainly don't know from that four pages why they couldn't apply the prior to the claims they never said never provided any reasoning or analysis to whether there was some ambiguity even under idea they were just invoking the lyall case except that they don't say that in an administrative law we don't read into opinions things that are not there on the wild case well if we're going to be talking about board decisions in this area in the p tab world we have our big media which is a much more recent pronouncement in the area where they do analyze the issue and it's found no issue with reaching it was not not speculation i would also add in the wild case the board found the claims on patent well under and twelve dollars and here we have this weird situation where the patent he is standing here standing there saying our claims have these defects in them don't construe them in find that the claims are actually patentable which is method claim instead of an apparatus claim so see our analysis for claim one when looking at claim eleven that was never disputed before the institution of the actor in that frank frankly never disputed at any point in time and the board in its final written decision if you look at