mr brady good morning your honor it's the judgment of the district court should be reversed because there is no genuine issue of material fact over whether or not planes sixteen and twenty seventh rams into a new one patent are anticipated sree have specifically admitted that the japanese reference discloses all the structural limitations of independent claim sixteen units february fifteenth two thousand and seven response to a statement of material facts that appears at pages thirty three ninety three and thirty three ninety four of the joint appendix with respect to the method steps of the independent claims six surveillance mechanical engineering expert dr sturges at mit in his declaration of september twenty fourth two thousand and four that the device disclosed in the japanese reference performs the method steps of the claim and was construed according to the literal reading of those words her breath twenty six of his deck with ration which appears a thirty four thirty four of the joint depending how to claim terminus specifically rotating to take up the last motion yet is there any suggestion that the japanese re might be doing something other than rotating and that's not anticipate new there is not and in the order for such a device to shift gears it would have had to remove the last motion paragraph twenty five of this declaration on the previous page thirty four thirty three confirms that if you order to shift gears the japanese reference device merely had to be over shifted or in his words rotated by being on the click shifters constructed using the type of mechanism disclosed in j p six eighty two off and had to be clicked repeatedly or groups need to be on the click in order to move the date reality or at least this distance and to effect a shift th japanese reference anticipates claim sixteen claim twenty seven which depends from independent claim sixteen adds the additional limitation of the performance of a series of indexed downshift again paragraph twenty five of dr sturgiss declaration characterizes the device disclosed in the japanese reference as a shift actuator of a ball and detainee system but now the patent office had the japanese reference before them and on the last found no instance of anticipation that's not quite correct your honor the patent office in its first office action in the third reexamination rejected claims sixteen and claimed twenty seven as properly read that prosecution history to have also read precision index downshifting into the crime that was a question that was raised in the previous appeal your honor in this court declined to do so  too had taken the position in the earlier appeal that looking at the prosecution history as a whole including the third reexamination the claim should be limited to precision index shifting however this  claim to do so i should also end it that did relevant actions of the p t o in the third reexamination occurred after the district court had been defense did have jurisdiction over the case the notice of appeal  filed in april two thousand and seven and only after the new as of the deal was filed did the first office action issue did the interviews between sree in the examiner or and it was just that is correct or on the device disclosed in the japanese reference performs a series of indexed downshifts because the reference itself states that the device is used to shift the drive chain between years melted on the drive because the japanese restaurants clearly and convincingly anticipates both claim sixteen and claim twenty seven unless this court has and it questions i will reserve the balance of my time when twenty seven precision index shifting or precision downshifts and the only and what instance which is cited in my reply brief does the specification refer to an indexed downshift when  referring to shift or of the prior art that had to be over shifted in order to be assured of the dams so you so i take it that an index downshift is nothing more than a downshift with a detent or some shifter but not necessarily one in which all you have to do is go to the detent and not eat it with all our take other measures that if you didn't have to why aren't those references to groups that in fact move as opposed to being fixed on the handlebars for several reasons first the references  distinguishes it from the conventional hand or compares it to the conventional hand grip on the end of a little bar which is in gauge to the handle bar according to the specification at the bottom of column  well ok but the question is yours foster disclosing a device that incorporates the fixed hand grip or at least it only disclosing a device that uses the rotat arguments that have been flowing in this case of various points that foster does in fact disclose a fixed hand grip that in connection with the ship actually that is i think invention does not require the writer to grasp the handlebars in a novel or uncomfortable or awkward fashion but permits freedom to grip the same in any manner that may be desired whether at the outer ends or in the center or an intermediate that they are fixed ok sent back to the district court because of the question was asked to invalidate claim sixteen based upon the foster reference and the japanese preference and this panel sent it back because of the unclear record  before the in the indeterminate stipulations of the parties in the factual nature of the anticipation issue this court concluded it could not declare claim sixteen invalid you sent it back to the district court and what was added on the record in the district court and what was added with respect to eighty choose proposition that the foster reference the j p the japanese reference invalidates it was nothing your honor there was no new testimony there was no new evidence there was nothing edition on the record with respect to each of these references this in to this consists entirely of attorney argument there is not any evidence on the record of anyone skilled in the art the people skilled in the art that have looked at all these references over the years all the people in the p t o the multiple patent examiners that looked at it in the reexamination the expert dr surgeons who looked at  all those people who were skilled in the art the internal people the engine you're the sram that testified concluded that those do not contain the limitations of claim sixteen or claim twenty seven when you sent back  do that apparently by reading precision index now and shifting into the claims that correct that's not correct or that's not correct but we'll deal with it i can do the each of the separately first of all with respect to what  when we made it it didn't shift when we got the declaration of the person who invented it and said it was just a design model they said they never made a working model of it so it didn't shift so that's number one that's the only evidence before the court of this been shifted it's a method claim they didn't put this on a of bicycle with the river system and show that it could shift they didn't do it it's not a japanese patent it's a japanese reference that wasn't made into a patent and they did not produce any evidence that showed that it could do that in fact people that did look at it said that it wouldn't do it we made it we made a model of it wouldn't do it why because it did not have a method a mechanism for taking up human of last motion  sundress case the parties that were before sunrise and sram agreed to a claim construction which he may have lost motion is very different than what the court in in sun raised generally describe the team of last motion is the reason that is when you describe a patent at the beginning of your opinions when there isn't one if you've not before that wasn't a claim construction issue of human of last motion for the court you don't do it in terms of you just making a general statement in trying to do you describe it in a different matter is the same thing for her decision that shifting or or index shifting you described it differently in sun race and you described it differently in eighty two not because in the in the transient not because there was a different issue before you but because you were just describing it generally for what it's not iran or we know that cuba was mostly includes many types of things and if you look at it tonight and want to describe the different methods of it in column nineteen in count twenty one required is the method that makes up the last motion in a bicycle shipping mechanism and then moves the do rail or that mechanism from one rocket to another and i can't imagine what you want to be because the idea of what that is i mean if you look at the senate race decision which talked about the same thing it had a general definition of of of human of last motion which was slightly different with robin with this case it seems to me  that the party for years have been have been trying to inject into this happened more than what those claims said and i think people reading the been the case you do know your honor there's no question that claim sixteen as a part of the method claim says that you have to take up substantially all the can of last motion that's an element of the claim that's not something put into it by a different sixteen describe a method of precise index shifting or whether it could apply to anything else other than index shifting and the court concluded pickup applied here or what i think is the error here is your honor is the idea of of of of council trying to come in and argue that something that would revolutionize the way people shipped it on bicycles is something very simple everybody understands it's a really simple thing before in one thousand nine hundred eighty eight your honor there wasn't any twist shifters that worked on the rail years anyway you can't walk down the streets of washington or any city in this country and not see virtually every bicycle that has it was shipped around it had handlebars that goes across that that was because of this invent in particular including rotating the actuator a sufficient amount to take up the accumulator last motion in the director system and rotating the actuator so further amount to substantially move the chain from the center of the gauging sprocket to the center of this nation's sprocket to perform the gear shifting it should be noted that the prior art fails to address explicitly or implicitly the idea of rotating the shift actuator on the handle of a bicycle for taking up a q move last motion in a director system one may argue that it is in in direct your system to take up lost motion during your shifting however the prior art fails to disclose or provide any means that would enable one of ordinary the only art to assert such a heresy with their use of the patent office was viewing this from the perspective of precision for them to look to claim twenty seven as describing index shifting when it specifically includes that limitation and when the last time we were here council for eighty two argued that sixteen didn't include it because twenty seven didn't it's the exact same thing just look at it if you started this now but i think all of us have spent a lot of time on bicycles we all recognize the only way you can shift is by taking up the last motion you know there's other ways you can shift there are many other ways you can shi internal gear cause you don't have to have internal laws motion doesn't matter because you're just pulling and pushing plant or yours against each other there are systems that had hard rod there's electromagnetic systems that could do in a good cable system believe that you have to specifically take it up in order to effect a shift and in order to effect a and index shit you have to do it but dr coffield expert someone who they claim was skilled in the art said that eighty two  not take up a committee of last motion it doesn't do it because with a pretension cable it is taken out of the system that's why you are what is that evidence what's the evidence that different today than it was three years ago there was no testimony that was added by eighty two of anyone skilled in the art that foster or the japanese reference include all these limitations none of your art there is no all the expert that testified the reference that he gave t necessarily then then they would have had someone who was skilled in the art that would come in and testify and say that they didn't have it they did not have it your honor the reason they didn't do it is because their expert said that their device didn't do it our experts testified that it's not in hair the p t goal concluded that it is not inherently and whether you want to include say well that's because of her size and index shifting the lead claim twenty seven is valid they didn't have it because it's not japanese reference was not enabling yes your honor i absolutely we put it together it's not easy it's not it's not a it's a patent it's a japanese publication but it's we put it together the declaration of the inventor said that it didn't work it was a design so absolutely i'm arguing that it's not because it because we did it now where if there's if this is inherent if everyone does it if there's lots of things out there where is the prior art why didn't he come up with someone who was skilled in the art they brought one of their witnesses their engineer over from taiwan who testified at a hearing between the last time we were here and now he didn't say that it's in those pieces of prior art no one did the a cable driven system that taking up cumulative loss motion you say is not inherent in a shifting system in which the actuator is twisted ultimately to at the point at which my are beginning to twist so then that maybe because of the cables loose it maybe because the cable is expansive broke it may be because there's something at the end of the cable that and then it gets taken out right yes or not that there is that that it is there and that it is it is taken up but there is a method for doing it there is no in all that prior art there is no mechanism your honor doesn't talk about a no evidence of subtle skill in the art that either foster or g p the japanese referent had had those limitations there was nothing added between last time and this time and therefore it would be the idea which it well both of you have been pushing the nose around pretty far and it seems to me that this is not a case of one party having taken inconsistent positions whose you both crawl over the right rear taking positions with respect to increasing demand in that is because of the prosecution history the it is clear that the p t o allowed clean sixteen because it viewed it as limited to the specific mechanism disclosed in the specification and it was only after the sunrays case and after stream to where this court said claim sixteen will be limited to according to its plain language that eighty two has taken the position consistently that the claim is invalid  there is no issue of material fact but that the japanese reference clearly in conventionally anticipates both claim sixteen and claim twenty seven