him versus philip sambrook appeal two thousand and seven twelve forty one mr sam good morning to you please proceed court my name is jerry seems on behalf of the public to systems we're here to contest to find his by judge gilmore with respect to summary judgment motions and claim constructions for purposes of argument today with the court's permission i'd like to focus free from he is in the prison in the phone business and there was a spate of lawsuits years ago and reports of prisoners having been injured from hand yourselves on board on the forms they would use to call their families call attorneys you should assume that we're all familiar with the fact that he agreed to that you don't need to use your valuable time to give us the background or the facts of the case i do appreciate it john thank you specifically the pen specifically want sixty nine discusses the handset as shown in figure three on page eighty four of the appendix and there we talk about moving the handset and putting it on the inside with the interior let me ask about that you're a hand so we've got a handle so if i understand your d o b argument correctly you're asking us to say that what it is that the corresponding structure the equivalent structure to a handle which is one of the three structures in the coin construction is no him right that's correct isn't that just based on our principles reading not a particular claim limitation i mean there's no as to show how it's practiced if you look at of the exhibit figure three hundred eighty four you'll see that the sole purpose of it is that we use two brackets two functions to keep it in place what they do in your honor and i think it is but the problem i'm having is this gets into your means plus function argument which is well skillful scattered in this is that the mean the structure for the means for mounting the has had that handsome excuse me seems to me to be the bracket assembly nothink you know i think they're used to conjunction with one another if you don't have the brackets the handle is in of itself enough to keep it there so the bracket must be housing but that's correct they both achieve the same purpose and substantially the same way and that is to keep the ear piece in mouthpiece an equal distance apart a set for its vertically mounted for i think that this is similar to the tour our case and i can't tell you specifically that there is a structure other than that there is a bracket but instead could mention in the two or off the region of bracket in the accused that's correct no mirror we do see that because if you would look fleas at seven hundred sixty six in the  in the other side there is a screw there's a small plate that runs at the base of the receivers that mapped and screwed it and act as the bracket next step and explain to us how that doesn't then invalidate your second patent how that doesn't invalidate our second patents because if in fact that is an equivalent thing doesn't it follow th so your view is your position is that the equivalent of the patented device has a handset handle an earpiece than a mouthpiece and there are there's also a bracket assembly in the path of the different so you're saying those there are those four pieces in the patented device and you're saying the equivalent to that are three of those four the earpiece the mouthpiece and the b trying to mention and so i guess my question is back to my very first question which is the one of the x specific limitations in the patent includes a handle what is the equivalent to the handle and your as de in the act that's incentive and i think that's exactly what we have here specifically the gentleman who actually was the engineer that copied our phone and then built it on page fourteen sixty one  essentially answer your question i hope or i think he is and made it that way they did it was the same history and your case for if there were three elements in a claim and the equivalent only has two o and insignificant function of a single claim limitation and still be only in substantially different than the claimed invention and that's what we have here claimed invention is to remove the whole and set where they can look away from the prisoner o more i'm not asking this court to ignore whatsoever i'm asking this court to decide by generalized notion of equivalently your function if it is only in substantially different and that's what i'm for the purpose of the handle is to use the bracken shown in figure three there is no other purpose of the handle other than to set a distance apart between the earphone or the mouthpiece and earpiece as a consequence you have a situation where they are doing the same thing and with your legal authority pursuing why we should ignore the prosecution history of the second half are you speaking with respect to the extend through portion ignore that prosecution history because you're now arguing if it is not something that was fought essentially it was in an action letter recommendation and rejected and we just chose not to time to cure to their satisfaction i don't think we are stopped by that and you're going to cite me some authority i cannot as a stand your ground case and then on the factual question of whether or not first time you to page thirty six this is in the record this is the folks that be our phone this is their information sheet that they put out to those in the industry eight thirty  those in the industry that would know what it means describe it as a handset enter calling to the phone and that's what they do when there are other information sheets on fire under one five sixty five and five hundred five there are numerous references pieces but i'm still not following why you think that the wall of the housing to which these brackets are fixed doesn't perform the same the same way if it's a inelastic surface a piece of sheet metal to which two objects are attached in such a way that the distance between them is to slide just to fall out of a fall kid i ask you one quick question before your time runs out and that's that going back to your earlier point i mean you're here arguing and defending the no equivalent determination to strike and it strikes me that you most of your argument here  with with the prosecution history of the eight eight to can i just i'm a little what you made even if you're right i mean even if we accept everything we agree with you entirely on the eight to eight  consequences of that prosecution history does not exclusively lead us to perhaps invalidating the eight to eight down the road but i'm not so i get that but i'm not clear on why that prosecution history ought exterior of the housing this proved to be ergonomic leon sound opposed to safety hazard and the use was required to position its face against gelatin cradle posing safety hat you get the point we publicly tested it experimented and then came up with it which is totally proper and appropriate with respect to the argument one of the saeco phone council clearly said that it is a speakerphone we did not patent speakerphone there is no language in also act asked a regular phone they cannot act as one so that if you were in jail you had to call your attorney for that you you can stand posture there be no privacy one of the big aspects as we mentioned are at numerous by the examiner on the other thing i want to reiterate that the court has already said there are questions but obviously we do maintain that the combination of the bracket and the housing would constitute