we have another matter the entire court and i tell my colleagues and their one gathered here that our legal profession is in good standing because of  principal issues along with the court's questions and rely on the briefs for the remainder first the l x and its customer defendants appealed the trial court's denial of their motion for a new trial on the basis of o two micro versus beyond innovation under the a political standard of review this court should reverse a denial of a motion for a new trial if the district court abused its discretion or if the determination constituted a misapprehension of loss to be clear we are here not because of the claim construction the court made but because of the claim construction that the trial court refused to make and i can i ask you this and that this is what i guess i'm stuck on the zero two and that is basically whether you preserve it you had a motion about the claim construction ahead of trial you said this is unambiguous and you made a motion because the expert in deposition had said some things that you thought were inconsistent with how you understood the claim construction what it meant and the judge said they're not going to be able to testify inconsistent with the claim construction and at that point no more motions for me that is actuarial if the other side had put on testimony or offer argument that was actually inconsistent with the claim construction it seems to me what  to micro says is you have to say oh there is now a ripe and clean construction dispute you didn't make such a motion by way of objecting to the testimony or by way of asking for a further claim construction in the jury and instructions so i don't see that you preserve them you know to micro argument can you tell me why how many ways i just said something incorrect your honor i understand the question and yet when an argument is pressed below such that the district court has an opportunity to rule on it that argument is preserved for appeal here we made the precise argument that we are making here before trial to the trial court including a suggestion that the trial court prevent the expert from providing such testimony the trial court denying that motion we renewed that motion following trial and asked the court for a new trial at that time internet machines made the precise argument that's being made here that it made in its briefs that we had waived that argument the court the trial judge assessed the facts before him and determined that in fact we had not waived the issue and he ruled on the issue again so we stand here today with the trial court that has considered this issue twice and ruled upon it twice including ruling on the waiver should we can i ask you this  don't remember the details and i'm not sure that this is ultimately important to my question about preservation but if if i'm remembering right your pretrial motion objected to a bunch of the experts the other side's experts testimony that went way beyond this point about could figure it configurable or already configured and if i remember right it's only in the conclusion section of your motion that you actually make a point really in the way of a request about can figure is can figure also that i read that motion fundamentally to be about something different your honor i believe on pages four and five and that motion if my memory serves me we laid out precisely this argument that we understood the court's claim construction namely the phrase associated with to require a close switch with ports configured to be two transparent one nontransparent but that we understood for the first time from internet machines expert  that he intended to provide an opinion and had an opinion that merely switches configurable in that manner infringed the asserted claims we asked the trial court specifically for clarification not of the meaning of the phrase associated with but of the proper scope of that claim term and if i go in the well i would get your motion for clarification that it says i'm on the you only have one seventh and that's on the last page sentence and that argument the trial court refused to provide clarification what we were arguing is that before the jury there would be a dispute of the circuit claims sco and in fact that dispute was presented to the jury multiple times through internet machines expert repeated testimony very clear testimony i might add on internet machines view and scope of the claim versus scope of the claim he ultimately opined that under internet machines of you that kill x infringed not because it switches were configured but merely because they were capable of being can fit p l x's expert on the other hand testified that p l x and its customers did not infringe because in fact their switches were not configured and when the jury charge came the trial judge actually charged the jury much of your job in this case will be claimed interpretation it was legal error for the jury to have been left with that determination and its determination of infringement was infected by that error this court in no two micro said when the parties raise a fundamental dispute over the scope of asserted claims that legal question must be determined by the court and not left to the jury  was plainly brought to the court's attention yet he abrogated his duty to provide that letter physics if you know we see so many cases where people want the district court judge to construe the claim to such a degree of precision that it moots any need for fact finding because the claim constructions basically comes down to their product both of them there doesn't and i guess i'm wondering what stage in this particular process in your case is a claim going to struction in which case is a part of the infringement inquiry which would be a question of fact of the jury namely what does it mean to be associated at what point in time has he rendered enough legal  legal words to allow the jury then to figure out whether two different particular configurations would with satisfy your honor under oath to micro the purpose of claim construction is to resolve the dispute it meaning and scope of the patent claims asserted the infringed the court went on to say and when necessary to clarify and explain what the patentee covered by the claims here we had a fundamental dispute there was no dispute over the functionality of the switches at issue the fundamental dispute was over do these claims cover switches that are people of let me explain it means ports associated with a non sprint non trance i'm sorry so is he with a non shared address that was his construction what's wrong with that i don't see anything wrong with that why not leave it to the jury to figure out whether or not this particular switch in its particular configuration does in fact have a port associated with a non shared address domain because in this case the jury was left to make that legal determination of whether those claims actually brought such a product within their scope this wasn't a dispute over the operation functionality capability of the switches it was a dispute dramatically different scopes of the claims that the issue did not arise until after claim construction notwithstanding internet machines arguments at claim construction the dispute over the contr struction nontransparent transparent was whether p l x is construction limited the scope of the claims to one type of actual configuration rom sorry three types of actual configuration internet machines argued that that construction was too narrow because there were other methods of configuration internet machines never argued that configuration was not required not until discovery after claim construction when it became clear that neither p l x nor any of it defendant customers ever actually configure a switch to include trant transparent warts and one nontransparent and as you were reading your honor that's the plain language of the client claim one of the five five two is a luster to a switch wit transparent and nontransparent boortz comprising this court has said that synonymous with including a first transparent court a second transparent or a third nontransparent or they argued for the first time after fact discovery that merely being capable of including sports would suffice that's a claim sco argument we felt associated with could not feel like every single under your interpretation i'm finding it not palatable because every single possible infringement argument is more akin to a claim construction argument by you and there would be no basis for ever sending literal infringement to a jury under your proposed scope of what constitutes claim construction vs infringement your honor i would respectfully disagree and i disagree for this reason if the court had clarified and said the scope of these claims covers switches capable of such configuration then the jury's not infringement or infringement analysis would be are we looking at switches that are capable of such a configuration on the other hand if the court had said these switches must as the claim reads actually include such ports then the jury would be looking at switches and an expert testimony to determine although these switches are capable of multiple configurations does any of those at issue in the case actually include i think you have your argument you are well into your rebuttal time if you'd like to save any of it i think we're going to have to turn to your posting count i would think you're right mr edmunds thank you your honor as as to the o t micro issue that was that was just raised i think that the judges have hit on most of the high points here but why transparent port because all the logic in the structures for non transparency are present at the port by design and manufacture that's that's what he said he didn't say you have to configure it there miss characterizing what our expert said to mischaracterizing  case this this characterization of that our position was just had to be capable of doing something is something that was never never argued at trial it was never presented from expert or expert said it is associated with a non should address domain because of these technical reasons for infringement and it was an infringement issue is not a claim construction issue i think is the main point is that both sides agree it was not ambiguous and and that's what when they when they raised the clip quote clarification issue with the trial court and they said we agree it's not ambiguous were afraid they're going to controvert your construction the trial court did exactly the right thing the trial court's ok it's not ambiguous i don't need to construe it any more nobody confort my construction there was no objection but everybody he argues whenever we have a interpretation case that's not ambiguous you just each argue that it's an ambiguous in the way that you think it should be interpreted not that it's you both agree it's an ambiguous and has the same interpretation that may be the case in some cases but if they're there asking the court under oath to micro to go in and to modify its construction to resolve something then they have to when they i think it's inconsistent with that to say that it's unambiguous and the both sides agree it's  more to your point judge more that if if you hardy's agree it's an ambiguous and we have a dispute and that's what the technical experts get into in terms of whether that claim limitation is met from a technical perspective as construed by the court i didn't have a sense maybe correct me if i'm wrong i thought you may have both said it's unambiguous but you didn't agree on how it ought to be an ambiguously construed i want to unambiguous lee meant no i think i think the parties what the parties agree was an ambiguous the parties disagreed as to whether from a technical perspective the limitation was met as construed by the court that's what the real dispute was they are our expert and this is testimony is quoted in our briefs he said it is associated with the non should address domain because of these technical reasons we had to display technical dispute or i could call it a technical dispute because as the court saw they did not really proffer a technical expert at all their technical expert just said i was told by p o x it wasn't configured therefore it doesn't infringe he had no technical to even back that up with this be a different case if i actually read the record and understood it to mean which i get your argument this is not a record but suppose the record really did turn on you had an expert  put up only capable as his opinion he didn't even hide it he didn't suggest that you know it can fulfill it it was in a technical dispute he said associated with means capable of and their expert came up i know this is not the facts of this case and said it's not good enough to be capable of it actually has to be that way it has to have be a nontransparent port not you can convert it into one you can configure it to be one you can turn it on functionality and make it one it has to actually be that way suppose that were the case in front of us would that be a case that more squarely fell under the o two micron so you might some degree but even so in that case the then then they could come in to argue well they were they've contradicted your claim construction you construct use you said it's associated you've you've you've actually defined further defined associated and now they're coming in and they're using the word capable out there not using the word associated and they just diverged from your claim construct and that would be a reason for them to object to to do what the what the trial court said if anybody if anybody divergence my claim construction would deal with the land that would be a cause for them to possibly object to say we had diverge from their claim construction and the court resolved on that basis but that wasn't what was done and that's because they didn't object because they didn't object because that wasn't that wasn't what our case our our expert said that they are associated with a non zero address domain because of these technical reasons and can will what are those technical reasons because all the structures in logic for non transparency are present in each port the port the port is not it has non transparency it hasn't it's there all the logic in structures are there it's just a configuration is that the nontransparent registers would be visible to enumeration software but they were there at their there they're still there they're at manufacture it's a nontransparent and technically well what actions are required to make that there's a bill i believe that a there's a bit but basically what you're saying is the port is both transparent and nontransparent and it's simply when you hook up to it the thing hooking up in the software is going to drive whether it uses as transparent or nontransparent but the device itself the port is the it has both characteristics it has the structures from can eventually be used as either one it is and it is or not parent or not trans it has both it has it has two functions could you address the issue of damages and in particular the the use of third party license agreements just over yes the the third party license is the mobility license and as you know i think it's very recently this court in just just in april and the apple v motorola case talked about koppel licenses and whether something is radically different and it talked about how this kind of thing goes to the weight of the evidence not its admissibility you're never going to find a license to exactly the same technology because it's pa technology you're never going to find a license with exactly the same terms because all licenses have some differences the expert testified that this this was one factor of fifteen that he considered he testified you agree  to start with some sort of connection between the licenses and the and the pens at issue well yes and there was that the technical expert discussed at length how the split split ridge technology the ability licenses was com technically similar although inferior in some respects to the transparent nontransparent technology of the patents and how there was and the comparability between bridging and switching and doing something between different systems and there was plenty of evidence for the jury to weigh as to whether he's a comparable i don't i don't think their main argument is going to comp i think their main argument is saying that there was some good there are some issues different sco our expert weighed those issues their expert was able to discuss those issues our expert discussed how those issues offset by the fact that the mobility licenses had a fairly restrictive field of use and and that helped offset that and again this is something that goes to the way to seven it's not it's admissibility and the jury was allowed to weigh it there was plenty sufficient evidence that some of the licenses it seemed to be pretty pretty broad and for example the mobility split the bridge technology through the pan software crim secrets design specifications other to use a fiction like that and i switch you to your cross appeal here is i guess my question it seemed to me that the district court on a motion  thought recognized that when the question is where was a sale made a number of facts relevant to the sale might bear on that question and i think that's perfectly clear in our case law and lots of other cases besides but then seem to have concluded that there has to be a single answer to the where is the sale made question thinking that it has to be either or taiwan in this case or the california office rather than quite possibly being both for purposes of two seventy one i how do we know that what happened here was that i think your view is there was an offer to buy excepted in california so that the contract was actually made at the moment of acceptance in california an alternative view is that felix had made and foster to set well which upon submission of the buyers bid constituted an acceptance of the offer so that in that case the contract would have  actually come into existence wherever the buyer presumably at the distributors location in taiwan or or or where i couldn't find an answer to that characterization question it seemed to me the excerpts of the very careful dancing around at the choice of words between acknowledgement and acceptance and i did not see anybody saying the offer to buy i was accepted at the california well i think for example the thirty six designee mr whipple when asked if there's any other way a care a customer would know that their offer that there would have been accepted he said i'm not aware one minute it is the only way that's what that's that's the device that provides the confirm surprise the provides delivery terms there is nothing else you can point to in this chain of events that's the that could constitute the acceptance i think also what the district court failed to appreciate is that many of these products are ultimately destined for the united states and that the they talk about the whole the design win process and p alexa's involvement the design win process there's a very recent case i should least bring your attention it's a district court case carnegie mellon versus marvell in the western just to pennsylvania ninety six f subsecond five forty seven in which the court allowed these worldwide sales into the into the world to base in part because they were going to be destined for products to come the united states so at a minimum this the fact that the design win goes on appeal it's involvement which actually is what starts this entire process get them hooked if you will the people x california except are the ones who accept it and the contract takes place in california and then many of these products are openly destined for united states at a minimum those products should be actionable including because at a minimum they're inducing infringement united states but also we think it's infringement direct infringement and i think i'm just a prior to the august twenty sixth state of this life or prior art it well i mean i think that the the the one or two the the one thirty one affidavit went in and they asked for the prior to august twenty sixth right and it's in our brief i'll try to find it in the brief time that i have because we when we went through in our brief we pointed out not just what they said but they had literally hundreds of pages of document including a date a book and they had particular want to specifically to a pin diagram where they had a nontransparent pin all this was in the one thirty one affidavit were not just not just words they were x there was extensive  single exhibit attached to them the problem is the only one that had a diagram that actually showed the invention arguably was the one that was posted at the conception date it was dated i believe august twenty ninth that was the only thing that had a diagram showed that i'm having trouble figuring out how i can put that before august twenty sixth when that diagram was three days later and when in fact i mean you know i could have conceived of it in drawing that drawn a diagram in ten seconds like there's nothing about the diagram itself that suggests to me it would have taken weeks or months to have generated yeah i think i think it's it's it's not necessary to have a diagram there are there's argot made that you had to have a drawing in the patent there's not much you have diagram  the technical documentation that was submitted in connection one thirty one affidavits including the data book to the product that they were developing was plenty sufficient to show that they had conceived of and nontransparent were to their switch product nontransparent mode selection but interestingly there's actually nothing at all that tells us how that chip or anything about that chip works you literally just have a pin diagram that happens to have that label on one of the pins it's a little difficult for me to conclude that that is necessarily a p c switch with all of the other criteria that the claims otherwise require because there's nothing and exhibit j that gives any detail about anything at all associated with  twenty five two thousand and two there were press releases and a lot of emails going back and forth talking about development of the switch device that had the transparent nontransparent mode before built before designed expectation of what you're hoping twenty will contain it's not a document that actually documents what p b twenty contains is a document that says we are developing a product that will contain these things that's it's a sort of isn't that a wish list that's not a we have developed a product here's how we're going to make it work that's a we intend to develop a switch that has both transparent not transparent but there were sufficient details and those requirements and also back back to the pan diagram they the transparent pin and the declaration was that the pin and indicates transparent nontransparent mode and i think that's sufficient harboring evidence of that  it the legal predicate for internet machines argument is california which i don't understand have act applicability or to be governing in this context with the limited them just see if i can sharp  the way i'm what i'm concerned about it seems to me from our cases trans ocean and the predecessors make really quite clear that there is no necessarily single place of but it's what the cases say is a variety of circumstances that surround a sale transaction can suffice to lead to the conclusion that there was a sale here and so that and it seems to me that that aspect of our law that there is no necessarily single place is precisely what the district court here didn't get that seeming to think that you look at a bunch of things and then you pick one place and if the contract was actually made here by an acceptance in california why is that not sufficient for there to have been a sale in california even if there was also a sale in taiwan  it can it can be not determinative in the sense that other facts can also make the sale somewhere else which is a one one meaning of saying it's not determined but trans ocean the pred like you specifically talk about how something one location is also a place of say so why isn't there a sale in california here even assuming that there was a sale  because under the facts before this cords i don't believe the sale could have taken place in california mr edmunds points to thirty six testimony that same witness was asked is that the place of acceptance and i want to quote his answer again i think you're implying something legal list akure i don't think that's what we're doing we're simply telling them when we expect to be able to ship the product  can can you address directly was there an offer to buy that was accepted and if so where or was there an offer to sell that was accepted and if so where the offers to buy sell took place outside of the u s for some asian regions in taiwan i believe the evidence and testimony said who is so if there was an offer to a buy who accepted the offer to buy the distributor in that region of the country the distributor it is or something that says the distributor the person in california was not at liberty to negotiate terms to cancel an order to reject an order a purchase order with purchase price quantity product being purchase and requested ship date according to the testimony is all negotiated and entered into outside of the u s and it's binding on keo x the moment that the that the distributor takes the order that was my understanding of the testimony your honor and that all to play this very hard for that night and it seemed to me everybody was dancing around that fundamental question of of when the contract was consummated i'm sure the witnesses were not willing to give legal conclusions and that may that may give rise to some of the seeming dancing but the facts of the negotiation of those terms the entering into of the purchase order the placement of it with a distributor that then sends it to p l x and california for the purpose in california not of negotiation or rejection but of simply confirmation that the ship they requested can actually be met i didn't recall or see contrary testimony to that i heard a lot of attorney argued to that effect i've heard a lot of attorney argument to the effect that these products are bound for the u s but the evidence of that all of p l x is imports were disclosed and where it is shoe in the trial there is no evidence no testimony was taken from any third party customer no subpoena was issued to any manufacture or distributor about its importation simply the speculation of internet machines and its demand for not evidence of importation its motion is a demand for sales and financial information total sales revenues on sales that did not touch the united states and mr utley i think we have to move on thank you for your argument mr eddins you have a give you two minutes every bottle time which should keep the time about even between the two of you keep in mind your rebuttal is limited to your cross at the thank you are as far as the question whether it's evidence of imports the evidence was that the testimony from felix witnesses that we cited in our brief was that they have worldwide sales that they have design wins with companies well known u s brands the challenge was because the district court denied discovery into the sales we were denied the ability to go in and actually take discovery to find out which of those products actually come in the united states or not and it's a kind of a catch twenty two say i'm going to deny you discovery and now you have to speculate as to what the extent of imports were that was in part one of the purpose of this coverage was to find out the extent of the import did you their own chips the question is a larger device from someone else h p or whomever how would you know that that is in the h p device that's not going to be indicated on the import on the import paperwork that's going to be ok and h p laptop or server or whatever so you couldn't find it there we needed discovery of these customers so we can find out how much was being imported in the u s we knew that their customers we us customers we knew they got the design wins we need these customers have consumer products that are ubiquitous in the united states and we knew that said we have we have worldwide customer base we have our products worldwide and there's plenty of evidence there and it's just just to be clear that the discovery that was denied was discovery of third parties and discovery of we you know we need know who these parties are you need to know what discovery and of whom were you asking for that was denied discovery of p a lex to find out who these third party customers were so we could go then take discovery from them and find out these kind of simple as you know the kind of companies that would use the switches did you see discovery without permission of h p or or other computer makers that we would we know the kind of companies but they you know if you went out to start subpoena companies saying we think you have these infringing switches we want your sales numbers we're not going to get anywhere with that we need definitive evidence from p l access to who's incorporating these which is the infringing which is in its product so we can go out and take specific discovery there i don't think any court and when we want to see it did you have any data that that infringing articles were being imported regardless of where they came from it we were denied discovery of the data we ness of thing we know that they have customers who are us manufacturers they make the design when to s p x described its process its products go to a distributor which goes to a contract manufacturer which goes to the ultimate manufacturer to manufacture are there are worldwide companies household names and so i mean we do know they're here in the us but we just we need real discovery to find that out and that's what we were denied what what is it that you know that might groups such as group in the us had ultimate authority to reject these sales until that knowledge that went out there was no there was no sale that is the acceptance of the sale back to your question there was some testimony about that they