third motion relates to my locker david yeah and i move the admission of p d in who's a member of the bar and is in good standing with the highest court of new york i have knowledge of his credentials i'm it's not easy only because we always hate to see our clerks leave us but we're always grateful to see them go on to the wonderful careers that we wish for them in the future and information it also has what's called a spare area so that if when the user tries to write something in the user area and there's dust or a scratch or stain something like that i think you can assume that we know the facts and hopefully we welcome more spare area than in mode two that's made clear in the figure six it's made clear in figure four b it's made clear in every place in the specification that talks about the two you were talking about an electro chemical sensor can be read or must be what we believe must be read even under the broadest reasonable interpretation yes your honor and here and here is why  going back to the purpose of this technology let's assume two two individuals one has a job an album of wedding photographs and that person does not want to run any risk that the the photos any of the photos will be lost that person may want on a desk to have more spare area to take care of the possibility of the effects and less user area because their capacity is not so important and the other hand if you have a movie or watching because the frames come so quickly you don't really care if there are lots of defects so you want to have to have more space for the movie this is all in the prior art it's in it's in it's in figure three and the prior talks about  mode two and why one can pick one or the other mode depending upon what one's purpose is given a given the content mode one and mode two is described as having a meaning in the prior art and that term is then used in the pattern clamps and again every single body talks about mode one having more spare area than boat two now the two mistakes i would submit that the p t made one was they looked at figure five which is a flow chart and said in the flow chart here doesn't say anything about the relative size of the boat one and most two but that's not one would expect from a flow chart in a flow chart you get a flow of the process flow of the steps number two the p t found what it called a clear disclaimer clear disclaimer language in column four lines five and six of the patent this is that the joint appendix page thirteen and there the patent was talking about specifications say that there's a relative size limitation every single body meant reflects a difference in size but it doesn't say that there has to be a difference it's not what it does not what what it does say it's every time mode one or mode two is proportional relative relative that is that one is larger than the other it doesn't it doesn't talk about necessarily the specific ratio but that one is larger than the other and the language to express disclaimer language why it was not convinced by the fact that every embodiment had more spirit and mode one than mojo was because of the what it called clear disclaimer language this was in column for lines five and six which i would submit when you when you look at that language it relates only to the size of the desk that is that the claim is not related to what disability or other they have to find clear disclaimer language to give the deals with those three interests not improper really that way you don't have to view it that way you can read it differently if you find that the overall written description call for a different result or that the claims don't have a sufficient limiting factor in them only if you do it correctly your honor this is an issue of war and we believe that the p t was incorrect in its legal analysis of this crime which if i might would like to switch to claim two for a moment because i think it presents a completely different issue ok this is a substantial evidence issue unclaimed to the p t have combined to references reference cold cold one of the reference cold or hot and i'd like to focus on what the evidence was before the p t up on this issue in the joint appendix at twenty eight sixty to regarding why one should combine these two references and as you'll see this is a twenty eight sixty two one paragraph thirty two dr hassling says provides the motivation at the bottom of paragraph thirty two for combining these two reference he says if the one switches between modes in the two primary spare areas are of equal size and claim to has the additional element and claim to over claim one is  that is the one twenty six patent at the top of column four and also in column two talks about the compatibility problems when you have primary spare areas that are of different sizes what hesselink does here and this is the only evidence is he takes the solution which is identified in the one twenty six patent and says you know this is why you would combine the two references but this court has p diddly held that you cannot use the solution  stolen and by the way the entire section and has following one claim to runs from paragraphs twenty nine to paragraphs thirty three the only substantive ones thirty two and thirty three and has a link in paragraph thirty three essentially what a link says is there's motivation to combine because it would have been obvious to combine there is no reasoning here there is no rationale there is no scientific discussion and what do you have on the other side references and the other side with a detailed declaration which explained why you wouldn't combine these references to p t have had no substantial evidence that would support its conclusion there would be obvious to come by these two reference i believe i've run past like ten minutes your honor i do want to save the rest of your time i do ok thank you michel thank you maybe two months ago or you just claiming the briefs in the case though your honor not at all i just wanted to make that clear claim one of the one to six pack requires a  that's what the claim says l g s main argument is a claim construction argument and elegies argument in that respect is that the first mode spirit area has to be larger than the second  conflicts with the claim language it also conflicts with the specification contrary to what she argues all the embodiments do not describe that larger feature that they are arguing final read decision pages twelve through seven seem there's at least five reasons why elegies claim construction argument is wrong first is that we're dealing with the broadest reasonable construction the p r i standard here that we're not under philips three reasons demonstrate why elegies argument is not consistent with the specification as the piece have pointed out the second most can also have a supplemental spare area claim one mentions a primary spare area for the second the specification of the pattern of column four lines thirty five through thirty seven explains that the second mode can also have a supplemental spare area why is this important it's important because the pattern never tells us what the size of that supplemental spare area is in the second mode if we don't know the size of the supplemental s wrong if you don't know the size of the supplemental spare even the second mode that cannot be the case l g tries to explain this the way it's brief by saying that that the supplemental spare area in the second mode is implemented during formatting the board thought so much of that q and a to will g s council that they put it in the final written decision that's the first reason why their arguments inconsistent with the spec the second reason as the board pointed out figure five of the one to six patent the spec says that figure five shows the invention there's no sizing figure five as the board explained that's also consistent with not reading a size limitation in the claimed one the last point that the board made that i'm going to mention is that the specifications states quote the present invention is not limited to this example the specification says that just before there's a long iteration of statements that l g is trying reliable so the board is certainly reasonable in saying that all of these limitations should not be read into the claim when the spec tells you they should be read in the client no where does the specifications say that the spare area of the first mode has to be larger than the spare second to the contrary when you don't know the size of the spare area of the second  as explained it's impossible to know which one is larger specification says that we have to read it in the class that's wrong for the reasons we've discussed it's also noteworthy that l g in its opening brief never even offered a construction of first or second that's curiously missing from g s opening brief they never said what their construction would say they just said hey the board erred by not reading a size it the reason they did that in my view is that the proposed instructions before the board were long convoluted and not supported by specifications in the reply brief there's a suggestion on what they think the construction be should be for first m isn't the argument here it's not so much whether a specific size requirement grid into a claim put a relative size requirement yes your honor the argument is that first mode size has to be larger than second that size construe the client and that you cannot read a relative size and when he would be inconsistent with specification especially where you can't even tell what the size of the second mode is when you read the spec because you don't know the size of the supplementary spare area  g also argues that t s s t's construction or the board's construction of first mode conflicts with the first mode discussed in the background well that's easily distinguishable first of all the first mode of the invention in the one two six pattern is clearly not referring to the first note in the background the first mode and claim want express the requires the first mode in the background only has one so clearly the first mode to claim was and the invention is not referring to the first mode that only has one sphere area and the background that cannot be more clear elsie's construction also would conflict with the first mode in the background because elsie's construction if we look at their reply brief where they presented it on page three l g s construction also says the first s to spare areas well that would also conflicts with the first note in the background so everything that l g is saying about the p taps construction conflicting with the first mode in the background also applies to their own construction just for background information council i understand there is a district court suit that triggered all of this what is the status of that suit if the present time you know yes your honor the district court suit is for going to be paid it was not stayed some pants have been stayed the one to six pack and woods is at issue in this knowledge no your honor in validity contentions were submitted i believe about a month ago there has not been a mark in thank us and also from a from a status point of view about the district court case  the t s s t k who is the appellee here is the defendant in that district court case there was a bankruptcy filing in korea about a month ago so there is a motion to stay that is pending awaiting the results of the bankruptcy filing by your opponent yes you're in korea just to save time i'm going to ask you the same asset of the client so i would expect that case to go forward even if there is an institution of bankruptcy and you know with which specter claims to your honor i would just say that the key tab spent nine pages explain the obviousness rejection of claims to its very detail it's well thought out and the portion of the declaration that was cited is not the only evidence that was relied upon the references of cells or evidence prior are evidence it's all evidence it says what it says that's all ok thank you  was denied by the district court in part because certain claims have not been held invalid by the peta for example claim a level which survives the the final written decision it's being asserted in that underlying litigation was provided with the pet owners with the reply to the patent owner's response in the proceeding below so after the evidence was then in the in their reply they submitted an attorney created annotated chart it's not the subject of any expert testimony dr hassling does not say anything about it he does not talk about the substance of it he does not even talk about it in concept and what the  evidence the chart is like a demonstrative exhibit in convenient form what is elsewhere in the record that's what it's supposed to do but it does not because there is nothing elsewhere in the record th would support the clore no or hot a combination so if you look at the hassling declaration paragraphs thirty two and thirty three indeed any discussion of the hassle and declaration of quanto there is no explanation as to why you would combine those two other than the two paragraphs that i cited to this court the first paragraph takes the rationale right out of the one twenty six patent which are not permitted to do under n t p that's classic hindsight analysis and paragraph thirty three simply says it's obvious to combine because it would be obvious to come but it says nothing more than that that's the only evidence what you then have is the p tep saying what  is this annotated chart the n t the chart is not really demonstrative this was sort of a substitute for expert testimony be the lawyers can't do that it's the experts that have to provide the testimony and there was zero nothing from hesselink to support the combining of those two references if there's nothing that's less than substantial evidence i would therefore ask the court to reverse  i don't know if the court has questions on the claim to issue but again that the the entirety of the record on claim to and why you would combine those two references is in those two paragraphs in the hassling declaration that's it now on the issue of claim construction the argument was made about adding a supplemental spare area motu if necessary when they were courting