the court david tell chian from sullivan and cromwell for appellant fifth generation as the court knows we said we submit that the district court here  misconstrued three terms of the otu for pat the issues here really are not complicated there is nothing in the claim or any of the claims that issue of the o two for pat that precludes partition ability or requires a direct connection from the root bus controller to the host computer and indeed it seems to me that i b m has conceded that if the specification in this case understood them to say a binary tree computing system which is what the claim calls for and both of you treat that preamble as a limitation as you should because it provides a nice even basis for the host computer later on i understood them to say a binary tree computer system the whole system has to be of a binary tree nature and that when you have only a binary tree component of a big computer system which could not properly be characterized as a binary tree computer system that's not enough under the claim i'm sure the correct me if i miss stating their position but i don't think that this case boiled down to whether incorporation by reference means the stuff in the spec or not honor starts out right at the outset in column one account to go right to the heart of my fashion which is about the claim language i don't i mean free to use your time how you wish but i understand their primary argument to be that the claim says a binary tree computer system and if all we have is a binary tree sub par way down within a big computer system which could not be characterized as a binary tree computer system that doesn't meet more than that i guess you should if you don't mind show me the relevant part of the five four that you think is the key disclosure i guess it would be would become sick maybe that you're going to refer me to and particularly your honor if you look at lines twelve to fifteen functioning independent of its parent element the data processing element can act not y a root element or a sub binary tree how does that say that that is an entire that you can then treat that sub part as the entire computer system and it doesn't say that one  disputed this that partition ability is part of that invention that one can have a sub tree that is itself a system separate processing systems where column three line fifty six through sixty where again the sub by an area trees of the binary tree so it's we're making it very clear that we're talking about a getting a lot of references which kind of bring in your prior art yes and there certainly is nothing in the claim in the zero two four patent which eliminates the possibility that sub tree would be considered a separate system if there were something in the specification or claim that indicated that the system has to mean the whole and that one tree i think if i understand i b m to accuse device which i probably shouldn't say i do because i don't but so assuming i understand this much about it their entire system is not a classic by an airy tree that there's an awful lot of stuff between the host computer and the sub parts you'd like to reach down to that no one would characterize as binary i don't believe that's i b m s position i don't believe it is at all and i don't think that's consistent with the fact ok i think one way to get a very clear picture of the difference between the parties in this case and where we think judge rakoff went wrong we showed this to page obviously immense this is page twenty six i think i said twenty eight my apologies page twenty six of our opening brief figures one in eight taken directly from the zero to four pat and what we did there was to highlight in yellow a portion of we would say judged more a binary tree a sub tree o figure eight the highlighted portion of figure eight is exactly figure want it is figure one with one exception the bus controller identified on the left is b t two that would be the route bus controller connects to the computer the host computer through another bus controller b c one in other words they don't come directly from the host correct but in ok it's because the bus controller connect directly to the host in every case the indication of that the least in the patent as far as i'm aware but but what p c interface would have a bus controller right because you'll have systems working at different speeds and you have to bring them into the same language and speed before you go on to the host computer right that may well be greater but that's not part of the invention of the o two for pat the zero two four patent built on the former stuff  connected to a host shows that it's connected through a p c interface it does if that p c interface is connected to other systems then you've shown that it's a subsystem within a larger system and i think that's right it's a matter of logic but as i said earlier i don't think the patent all right discusses this one way or the author kate thank you but figures one in eight highlighted portion o danica with this one exception of the root bus controller connecting through another us control the essence of i b m s position on this issue is that the word directly should be read into claims one in seven of the o two for pat if there's something there that requires a direct connection and in fact the only thing i b m points to to a three sixty in the appendix column chand lines fifty three to fifty eight we've dealt with that in a reply there's nothing in that language nothing nowhere does that language require that there must be some direct connection and in fact i'm not really sure what the i p m argument there is but a minor gifting your argument me connection means communication with is that right yes and in fact in the connection merely means connection communication with is sort of the inevitable result always does that but it doesn't have to communicate to be connected with for two electrical components to be connected to each other i generally think of them as having to be capable of passing information of some kind between them but is that not and they are they are in this case but is that your i want to understand your definition of connected is there is no such requirement in the o two for pat the claim talks about connection the claims one in seven talk about connecting the binary tree to the host computer as in talk about communicating the five fo other or is actually passed from one to the other with those two things be connected still no i don't think so i don't think anything in this case turns on that nor is there is some argument here that anything would turn on the difference between connected and communicate but the words used in the specification are connected the five four zero specification incorporated by reference again shows this is it columns three lines eighteen to twenty columns sixteen lines three to five columns sixteen later at twenty four to twenty six and in other places talks about connection even if it's communication it would make it would make no difference for purpose of a of this case your honor so if we are right and i believe we are if there is no requirement of direct connection then judge rake off necessarily got it wrong when he defined root bus controller the way he did if a partition a ball portion of the system is a system and we think that's clear is well and you look at the figures for a partition of all proportion to be a binary tree computing system under the claims you do agree that it has to be i guess you would say connected to the host computer is that right yes and you think it's connected to the host computer even if there and it also has to be controlled by the host computer also right that's correct are there times when let's look at your figure eight when d c one which is arguably the root computer of the whole thing but maybe not the stuff are are there times when  c one is effectively acting as but isn't the host computer and sending simultaneous instructions to b c two in d c three to process in parallel the same information not as far as the  conservative i thought the patent disclosed the utility of simultaneous processing to verify accuracy of results and all of that i thought the patent actually disclosed exactly that well the host computer i mean as as certainly as disclosed in these figures and in the other embodiments is is not b c one ok so if the c two is acting and can't be controlled by the host computer you would agree it's not acting as a binary tree computing system under the claim if he's not do even if you're arguing it's functioning as a root computer if it's not being controlled by the host then you would agree it's not within these claims the root bus m one term and one term only controls the outcome of this appeal ruthless control or it's the only term that this court needs to address the district court if you agree with the district court that generation has agreed there is no infringement and i was on the basis on which judgment was entered now fifteen every since principle argument that the root ne ne of the bus controllers can be the root bus controller ignores the intrinsic evidence of the zero to four pattern and the specific requirement that it's the root controller that is connected to the host in which the host controls you know it's dark and adding said binary tree to said host can pull in future generations argument is that you can designate any one of the bus controllers to do that and that's flies in the face of the intrinsic evidence if we look at what is actually said in the specification and the claims of the two for can we which is our primary by reference all of it's all of the prior art incorporate by reference but and we don't take issue with the fact that those two prior plans were in fact incorporated by reference in this case it says you're writing a specification that's not our issue our issue is you don't incorporate by reference  then the claims of your patent don't don't then have to cover all the embodiments that are in the corporate prior art you have to look at why it was incorporated what the applicant did in this particular case they didn't incorporate those patents into the invention they in the background of the prior art before they ever got to what their invention is they said parallel processing systems and binary trees or old here are two examples and they incorporated those prior art patents in by reference so they don't have to describe what's in them but then they said we're different from those what we did here and then they describe their invention if they had sat in the descriptive part of their invention or in the summer an invention we have a parallel processing system  defined independently and within each system you can have the highest order and apparent and that can be true of that system even if it's connected to a another system above and even another system below each of those systems can be for their own system the highest order and then be connected on to something else in the in the abstract but not in the description  invention let me take you through will but that's what it is even ironic that's what the prior art show says that the systems can be parts of other systems very most of them in the prior art patents the two that were incorporated by reference they did use the language that you were viewed in and i'm not taking issue with that that in those systems they did say that in certain instances sub portions can act as a subsystem they did not say those subsystems are an entire binary tree but there are very important distinctions between what was happening in those prior art pounds in what the zero two four is about for instance those two prior art systems are binary trees of processors when you look at the architecture of the zero two four it's a binary tree of bus controllers it's an entirely different architecture when you look at the prior art systems about how they expanded they grew the tree long lives creating further adaptive processors and when you look at how the binary tree of bus controllers is expanded it's a laterally with cars and their pre formed cars they never go more than three deep it's an entirely different system is it but more importantly more importantly have to get that out let me let me get that out because i think it drives the answer in this case more importantly if you look at how the zero to four describe the route bus controller there's only one conclusion you can have right in the abstract they say it's one of the bus controllers is a route controller that connects the binary tree to the host now let's talk about that from a plain meaning what do you envision when you hear the word root of a tree that's what we're talking about here it's a binary tree and there is a root at the far end of the so my cretin got a lot of room they have a lot of roots but they don't have a lot of branches that are below the roo have parallel processing going on at all different layers and bringing them back together and splitting them out again and bringing them back together let me continue because i think the intrinsic evidence really does drive the result it says right in the abstract one of the bus controllers is the route that connects the binary tree to the host computer in the figures every single figure figure to figure seven figure eight and figure one agree all share the post and have a host above it to canada and they can in other words everything you said can apply to a subsystem within a much larger system not in the patented claim and i'm going to get to that in the minutes into play very clearly from looking at the number one that the place of the understanding of computer systems but it's incorporated by reference directly from our wrench into prior art incorporated by reference is a prior art is a corporation showing what the prior art was in the applicant here taught away from that let me continue to explain why in the detailed description around a column two lines forty one it says node b c one is the root and attaches the tree to the host it says attaches the tree to the host through the driver and the controller between the system you're talking about in the host computer what's that for that stick connected to other systems know that when you close what lee within the patent itself it's showing you that this can be part of  actually the way that light is actually works in this in this system is there is a host computer and then there's a binary tree of bus controllers and the way you connect a host computer to a peripheral component is through a bus of buses and electric it's a it's a wire you can look that up and you know in google on the internet everybody knows where the bus is so the only way to connect the binary tree or bus controllers to the host computer is over a wire or a bus a p c i bus is simply p c i just stands for peripheral  component interconnect it's how you connect a computer to peripheral components which is the binary tree the driver the only thing a device driver does is take the electric signals from the components and put them on the wire so you can't connect a binary tree bus controllers directly to  computer without a bus and a driver that's how it works that is not an additional component it is how you do a direct connection but then if you go on in the specification around or a column to line fifty it says and i think this is the a very important point improvement the addition of bus controllers there's nothing to say it's not in the us controllers preclude partition ability there's nothing and in the claim that as we have we're going to ames partition ability it's not a question of disclaiming it's a question last piece of intrinsic evidence that i think is important for you to hear which is coming to light fifty it says the system of figure one illustrates the basic structure of the binary tree parallel computer system of the invention each node b c is connected upstream to a parent node except for the root node b c one which is connected to the host it says that's the system of the invention it's the only thing described and then when you go to the claim that's exactly what the claim say claim want to claim seven years exactly the same language they say quote one of said bus controllers being a root bus controller for connecting said binary tree connected bus controllers to said host computer for host computer but there's something in between yes it is you as you see where does it say that precludes that as you see from the intrinsic evidence what it's not it's not a connection in the electrical sense it's connection in the sense of it is the bus controller that is connect using there you see anywhere the word direct connection here i don't see that that's what you're arguing you want direct connection but i don't see that and i'm not and i'm not arguing to insert the word directly in the in that context or out of what i'm arguing is if for connection doesn't mean that mean that any broad connection as long as i can go maybe a thousand feet removed here there's a connection it's more connecting if that's the case rather than those words don't mean anything  it doesn't say indirectly or alternatively yet what it says is it there is it says there is one root bus controller for connecting this sub tree system to the host that there will be no point in writing that if any of the bus controllers that's electrically connected or indirectly connected or connected in some manner if there wasn't some communication between that route with the host there'd be no point in writing that limitation a limitation is meaningless you could strike it from the pan and you can do this exercise strike that limitation for the patent and then fifth generations interpretation of this claim would make sense which is any one of those bus controllers that is in any way electrically connected which is you know what their argument is then you'd have a system which makes absolutely no sense when you look at the way that those prior art systems were described they were described as prior art and then they were pushed aside in the inventor said you know our system it's different we have a binary tree of bus controllers and here is how it works and in every single instance they tell you that root which by plain english means the terminations point is the thing that's connected to the host it happens in every single figure and in every single description and they even say they  to use the words this is what it taxes it to go on to say every single bus controller has a parent except this one which is connected to the host it's the only thing that makes sense and i'll point out that in those two prior pounds which are fifth generation they actually describe and claim sub tree systems and this goes back to judge morris point earlier which is in those prior systems they had a whole binary tree and then they said in the in the independent claims they claim a binary tree system and then in the deep end in claims they say will claim a sub tree of that greater binary tree system so the fifth generation knew how to draft claims that covered a binary tree system and they didn't do that here and if you look at the the description of how they did it they used a language that would in fact preclude a sub tree system by saying that you've got to have the four connection to the host which doesn't mean anything if it doesn't mean the one at the top of the tree that is used for the communication with the host and judge more made a very interesting point earlier in the comments with fifth generation which is there has to be for this system make any sense there has to be communication between the host and the root bus controller so that instructions from the host can go to the root and that results from the root can go to the host that's the whole point of having the system set up this way the other two terms which are not critical to this appeal but i think shed light on what actually is going on here as the next term is host computer that fifth generation feels the issue here is simple is the host computer connected to and controlling any binary tree system or is it connected to and controlling a binary tree system of bus controllers and again if you just look at the plain language of the claim it says right and claim was that a root bus controller for connecting said binary tree connected bus controllers to the host it's clear right from the intrinsic evidence what is connected to the host is a binary tree of bus controllers and fifth generation is arguing that the district court was binary tree component of a larger computer system which connects up to the host which is a binary tree computers that almost drown or we would we take issue with whether there's any binary tree at all if you have correctly characterize our system which is we have a lot a lot of things going on a lot of processor going out of nothing to do with a binary tree and what fits generations argument for infringing is going to be is there going to look for a piece down here very remote from the host in our view that the processing going on we would argue that that's not even the parallel processing of the claim system but you're right there is many layers of processors in our system that have nothing to do with binary tree structure between the host and what  aeration will ultimately argue and is a binary for we were to accept the proposed interpretation of reversed the lower court with the result be that every computer system that has even a a minuscule part of one percent of its processing system happens to have a binary tree configuration in it those would all then infringe disclaiming they have also the bus while that's the whole problem with fifth generations argument they obviously didn't invent that when you look at the quote you so the answer is yes when you look at fifty generations interpretation if you find any parallel processing in any system they've invented it which is clearly not what they don't understand there to be an argument at the lower floor and i may not be remembering this right because i don't think it's on a field but that tree days they were arguing that some branches of the tree could just be unitary where it's process or process or process or with no branching but judge rakoff rules for us in that regard not issues not on appeal but yes that was their argument they're trying to get a patented invention work you find any piece of parallel processing anywhere in a larger system you know they want to claim that they invented and that's clearly not what happened here but if you look at what they're trying to do on the last term binary tree computer system again it's exactly the same  point they even concede in their brief that the district court's interpretation of the binary tree computer system might not be wrong which they start on the roof of course it's not wrong that the district work out of exactly right what they want to add to the claim is or partition a portion of a computer says let's talk about figure eight and if you don't mind will focus on their yellowed coloring in part i'm sure you know what i'm talking about really pose the host were just sent to b c won a signal that said ha to process this so p c one was just a pass through and nothing at all went to b c three nothing via the host computers control an order everything went straight down through b c we to be thirty two it just push it right through then would the structure of b c to all the way up to the host be its own binary tree computer system would the shaded areas then be a binary tree computer system if the host was ordering b c one to ignore b c three and everything on that other side it depends whether what we're looking at here is actually a circuit diagram or or just take functional diagram and what i mean by that is if this was a circuit diagram i would probably say no because the claim requires b controller in the system d c one we can all tell b c one be dead like a switch you know that's what i was saying i don't know whether this is a function of diagram or circuit diagram certainly if the host was communicating directly with d c to over wires that merely pass through d c one i think your honor might have a point and i can't tell from this diagram whether this is actually an implementation or just sort of functional diagram but i think if you do the whole directly you need that directly as a judge more help to understand that's a direct connection it depends what you mean by direct and this is why i'm struggling your honor if b b c one is taking the instructions from the host and interpret  and changing them and sending them along that changes the answer to the question based on the way that it's claimed that's why i'm saying it's not a question of the word direct it's a question of what is actually happening in the system and what is actually happening at the c one is b c one doing something to the communication that means that that it is b c one in fact that is communicating with a p c to his p c one thing that i did i think court's opinion no doubt would be that would be an infringement question about how the particular products work what the district court said which is the correct claim construction not aside from how products work is that the patent applicants just grabbed the root bus controller as a debug controller that doesn't have a parent controller that communicates and connects with the host thank you to make about a figure eight much better than i did it is the right point that post controller is connected to the host claims one in seven of the o two for pat eight which is exactly figure one with the one exception of that bus controlled secondly my adversary made the argument i  effort to denigrate the importance of the incorporation by reference of the prior to style of folk patterns that somehow they were incorporated and referred to but then he said they were pushed aside i don't quite understand that column one of the zero two four patent is very clear that the system described in those two patents to a one in five forty is the basic architecture which is being improved upon by the addition of bus controllers so they're not pushed aside it is the same architecture it is the same system with that improvement the improvement of course to act is a kind of bucket brigade to transfer data and instructions up and down so rather than being pushed aside patents are clearly essential and are disclosed in the specification last point and i think this is something the judge  addressed my adversary said that our argument is that any bus controller and every bus controller can be a route bus controller we've taken it that far that's not correct only the highest order bus controller in any given system or sub tree perhaps subsystem so in figure eight you wouldn't say b c four five six years or seven are ever functioning as ever i know and of course the abstract and elsewhere of our patent talk about one bus controller one per system but you agree that route but controller whichever one we are defining it has to exercise control it has to control its component branches that's what every bus controls and to do right yes it is i don't think that eliminates the point that i think the court was making to my adversary earlier that there were direct the direct connection that does not appear in the claims and there is nothing in the specification to indicate that the connection need be directed at all that's all i have unless there are further questions thank you very much