and and in the supreme court i guess twice already and in this court numerous times in front of the trial court two or three times and i don't know if we're at the end of the road yet but certainly admire the  what happened to that judgment of liability and those damages had they already been vacated or was her were did her ruling in this latest round effectively vacate that award of the review and was for the purpose  variation of the underlying technology as of one nine hundred eighty one that's correct you put on two witnesses and essential you say we carried a burden of proof and the judge missed found the facts of the judge the judge made  very good statement as to what the la foreseeable but it seems to me that's exactly the wrong success while it certainly sounds like you talk about hindsight mishandle your experts are saying boy at the time that this amendment was made nobody would have thought of los g using them women them sleep or fewer than two seals with two guidelines and therefore we ought to be able to capture this new invention within the scope of to trying to answer my question specifically is that not the purpose of the dr of equivalents to give them obvious variations of what they invented so they get the full scope of the invention even though they didn't write at that point that the word obvious but you things they describe the invention and if they can't capture some other invention other than the one they describe right up right so they have to limit themselves to things that work obviously over what because it is in substantially different from what was originally claimed under the dock requirement without rigor you say without regard to whether that invention was obvious or not obvious at the time the original this court will ultimately decide as to how the law should evolve but i agree with what the way you stated it that is in fact some new  evolution in conducting one series of a process for instance was not known as a new invention and was not foreseeable that the supreme court permitted the capture of that as an equivalent now i don't think that that issue is in this case because one of the points that judge sarah's stressed what was that the for instance the alloy the nih magnetize sleaze and so on were in fact in the prior art so we can say that this was a later development now whether such a sleeve might capture the small amount of magnetic flux which was present i should think is a different issue from the one that judge dyke has has raised a lot of people thought that it is counter intuitive to the supreme court seems to permit capturing as equivalent because of an equivalent function something that might be performed in in an unforeseen way but do you agree that that issue perhaps is not in this case as the facts were claim was amended and without knowing without the public knowing why that amendment was made whether it was an accident or a mistake were based on prior art or anything else it was done that's correct to me that some meaning to foreseeability the question is what meaning do we give to do we give it a broader meaning in terms and look at it in terms of novelty or do we give a narrow meaning and say that for well even something which is not and at that time all the technology techs and everything else not that the material you're arguing is that it's not forseeable because it's novel and new and nobody knew about it at the time which would seem to be directly contrary the situation is that the examiner has not allowed the claims as originally drafted therefore the prosecutor has a choice i can either appeal and hope the board will agree with me and say the examiner was wrong or i better narrow the claims understand the task that the supreme court is given to send fastow in making a narrowing amendment the amend or should be careful because he should know that he's going to give up everything between the original claim and the narrow claim unless there was no way he could protect himself by having a less restrictive  ment so in this case the question is whether the claim amend or could have thought of something other than adding the limitation magnetize the ball which would overcome the rejection but leave a broader scope in the crime and so then the question seems to me to be well if aluminum sleeves were known in this art before then the already being used in this art now i don't understand how you get around that problem it seems to me judge ferrous is correct it's known in the art therefore it was forseeable whatever else forseeable m restrict the claim to a sleeve that's magnetizing book which means it's made out of a kind of metal the that is magnetizing some are some are struggling through all this we want to understand what that means  even though it's not a magnetized a ball similarly to a metal that is magnetized well and i'm questioning that that assumption that you're making it seems to me that since the function isn't spelled out in the claim that  do it's got well i'm not i'm understanding kennedy to say you lose everything between original claim and amended claim unless you couldn't protect yourself because afford seeing that we couldn't afford seen it either and now we have the first the ability test and we have to apply it even though it's the sort of gives you a headache to try to reason your way through this case from beginning to end i agree to hit it seems very convoluted at this late date an on the other hand she's the fact finder season title under her fact finding powers to disregard the testimony and money of somebody even if he's the biggest expert in the world and that's the legal system for better or for worse if she should have  vicious to do that but one of the reasons that she rejected the testimony is that she thought there was an inconsistency here i mean at the time of the original trial you said this is a trivial perrier should have an aluminum slee and now when you come in on the foreseeability point your experts are saying well that was at the time i think right now we're looking at the time that happened was originally filed and this is an enormously different thing so it wasn't foreseeable that it still may be a issue of large gaps versus small gap devices and if she is there a little trouble understanding and you know she recognized that there was a difference in small gap and were there models presented to the court what what lets the underlying evidence here that would help one understand the difference between a large gap the place and a small gap of light as to the difference in where the magnetic lack of a for the date is it the chief she was asking for well as she understood that but for the change the improved power the increased power of magnets this issue would not have arisen that the sicker sleeve would not have been needed or available that the size of the gap would not have been as significant that the whole threshold really was the availability of these very powerful magnets after nine hundred eighty one or after d ny sense was from her complaints about the absence of data measuring their device and the gap in the changes i have a feeling that she was thinking that maybe difference in magnet strength between eighty one and eighty eight seems she seemed very upset that there was that dr wolfe testified that the later magnets were much stronger or far stronger or some such crazy ology but with no quantification the to me it would have been still quantify versus just a verbalisation much stronger well and obviously even you can do i mean expert decision to make what he thinks he needs to do to come up with  not quantified so then the question i have is well was it too difficult or infeasible to quantify this seems to me that at least one magnet strength to be quite easy to quantify at least to some degree well right handed don't you agree with th there in the option of overcoming it by having either e stronger or a thicker to wall well some difficult thing to do because the whole context of the invention in the novelty of what's being done here so that you can capture something by the doctrine of equipment which no one skilled in the car would have thought about at the time is that i mean how can it be it's a matter of foreseen this than the greater the novelty of it the more likely it is that it's not foreseeable and if we want to be able to capture it under the doctrine of equivalence that it seems to me runs exactly counter to what the doct was the classical test of substantially the same function why result not substantially the same structure although good deal of that was conspicuous but directed to function my result and my sense as you try and focus on what the supreme court was doing is that you can have equivalency but if the structure by which it was achieved was not foreseeable if it was achieved in a different way you could still captured under equivalency so that the test now  different ones and that i had to in reading because i adore george seris or was very thorough but i also to got the impression that this concept we all really have trouble understanding the purpose by but we see what it is and i think it's very hard to argue with what the supreme court actually did achieve if you could foresee it even if it's a different structure you should put it in your patent application and if you couldn't foresee it how can we say you should put it in i can see how rigorous the facts of this case the differences are perhaps modest enough so that doesn't mean that they wouldn't have foreseen this variant of the invention of the car he had that's pretty close to what it means yes that means that if you know if you know that you can do  this either magnetizing will sleeve or not magnetised sleeve then you shouldn't restrict your playing because we're not talking about that situation here we're talking about one in which that the use of an aluminum sleeve wasn't known that wasn't something that someone skilled in the or would have understood in other words you agree with tesco that the more you show that this was a novel solution to this the more you were able to show that wasn't foreseeable or be a merely trivial or insubstantial claim it doesn't relate to the foreseeability relates to digital people in the field laid it out this and you can since you consider that part of your invention therefore you should not forseeable something significantly different that they have a pretty good argument here that there are experts are shown that the use of the aluminum sleeve and the single seal here was not something from one field of the orbit of all about th the other it you're referring to is whether there was anything there to shield anything that needed shield correct and in a ninety four trial the thrust of the evidence was there's no problem of leakage and therefore there's no need for healing by the sleeve correct now it seems to me that whether this is a need for it or not might not be the central issue the central issue might be whether matter of personal selection both could work it didn't matter which you chose here injured sarah said following jewish communities rule that if you know who are in you only twenty one you can get protection on directly dealt with whether the sleeve was going to be magnetized ball or not correct now i'm asking you to walk me through the same analysis with respect to two ceiling rings as opposed to only one ceiling yes and also it was done the judge was clearly correct and the original claim language did not connote one ceiling rain versus some other number of ceiling right and therefore when you comes here the original claim with that the narrowing amendment works a total surrender of everything and anything between the original scope and the amended scope unless exact and then we get into unless the sun for c of exact exact and the prior in terms of what you introduced that ship that would support the conclusion that it's really the same field whether the gap of large or small or in between well the inventor with working men is  sleeve of course didn't matter what the gap was you know when you have a gap it's supposedly to protect the flux from getting out and the testament trial was there was no way the flux could possibly get in his