please the court pressed on behalf of and send out this case highlights an important purpose of the written description requirement in policing priority claims it's well settled that when a person files a continuation of part of not covered by the previous thing matter and in this case are all that sort of assumes inclusion here right we've got to now find out whether julie's knew about it were direct really means we've got to figure out what is in the grandparent application correct and in the grandparent application we have several embodiments one is an embodiment that only discloses the one we transmit or another in body image is where you still have that one way transmitter and you have a remote device that might be a cell phone but it's not with  user can't make cell phone calls on a remote device the new invention which was an aha moment that mr mnason and told us he came up with with the other inventors after the grandparent a few seconds was that they could combine the sensor with the cell phone so the user could actually communicate on a cell phone as well as sensors body movements nowhere in that earlier grandparent application is there a device that enables that type of to functionality and here we have actually inventor mr mass and i mentioned he actually put a decoration and explaining that he was added as an inventor in the c i p because after the original application was filed he came up with the other self contained unit with a sensor processor and an indicating it's indicating means forty one and if you mean forty one according to this fact we can take many forms groups and then this particular president body meant that indicating means forty one is an r f transmitter so there's some breathing room right there in that disclosure that it's not what we're being told by the application and that that embodiments not restricted necessarily narrowly down to end our of transmitter it's telling us that device that's powerful to communicate this data to some monitor  some remote monitor can take many forms and then later on in this back we can see other disclosure of devices that are operable to communicate that include a number of different things computers cell phones cetera and so is i understand what the board did is it looked at the overall written description and concluded this these particular inventors provided support for a range of devices that perform this communication action and and so for that reason when we go back and try to figure out what does it mean for an indicating means because when you look at that statement of pics many forms they never describe any other form with respect the device that has a sensor in it and says cord explaining power away says simply saying that it take many may take many forms does not help unless you describe other forms now and that if you came up exactly in peril races that just saying can take many forms is not sufficient now where we get this more detail disclosure of the cell phone technology and other things it's not in connection with the device that the user would have with him which is a fundamental difference it is these other ones it's a distributed environment where you have a one way transmitter on the user and you have a cell phone potentially a cell phone is described as a variety of things that would be mounted on a wall remote so the user cannot use that cell phone to any to any type of ways communication the only thing those earlier embody ment's can do is have a transmission of an automatic signal from the sensor through the processor that the user can t use to do voice communication to send data messages this is the breakthrough of the new patent as described by the inventors now we are going to take because the earlier patent talked about it's advantageous to distribute the device so that the sophisticated communication capabilities are far away and actually very similar to power oasis on the remote vs local issue but the new embodiment said let's bring that communication device local with the user so that you have this new thing where a user for the first time can talk on his phone at the same time monitor his body movements there's no earlier environment and the patent office did not find any earlier i mean that enabled this new functionality which is why mr masking was a grandparent application and in your view if so she is affecting prior art that's exactly right your honor this is the reason we believe that witness scription should apply here is because there's an attempt here to get back to an earl prior day party date and claim that they invented something that they did not invent use you see isn't that on one of the to be reference the patent office has already found that in that the only argument they raised on you sushi and related i p r s was already rejected by the patent office so if the property is not provided there is wanted to be reference and this court does not need to re man it simply is an invalid claims so there really was  solution was a same argument each one in the three three one related i fit the i mean the claims are all probably closely related but they're not the exact same claim i agree with your but this court's law tells us that it doesn't the claim is the same all that matters for collateral stoppel is that the issue is the same and the issue is identical if the case happen to be remained at the patent office will face the identical issue that they're already addressed without any new issue to even consider and and in addition note new arguments to be raised because one of the patent office rules they can't come up on appeal and go back and raise brand new issues so the combination of collateral estoppel and waiver make a actually an intended view would be inappropriate to remain because there be nothing to consider it because of waiver in collateral estoppel but we do it's very important obviously the fundamental issue is here is whether there's new matter if you look at figure nine scuse me what the patent office did was they didn't consider whether the new matter was covered what they felt was if we can find an environment in the old specification that's covered that's good enough and that's exactly the mistake the power oasys made and this court made clear was the improper legal analysis it was a legal error by the patent office not to consider whether the new matter discovered rather than looking back to see whether the old matter is that the titles change the backgrounds change every aspect of this change to reflect that this idea of putting the system that the earlier described within a communication device is a brand new thing it quickly addressed the redemption of actual reduction of practices yes question yes our view is that the actual reduction of practice was also an error of the patent office because it was based on an improper claim transmitter is the invention of the grandparent application there is a new embodiment here that requires the communication device to have the sensor in it and the communication device being much more than just sending our transmission signals on the sensor they never reduce to practice anything but the four i want to have a patient original grandparents with the reduction of practice is exactly the figure one and two in the grandparent application then there's also something about using an auto dialer which suggests some kind of phone was was also being implemented at the time of the working prototype yes you're out of the audit others part of the distributed environment daughter of other is disclosed in that original four eight one application as being something that the the piece that you wear on your body that receives the r of transmissions could be an auto dialer which instead of cellular technology would cause like a land things first considering the claims and all address claim construction and second and i think judge toronto already picked up on this comparing the original grandfather nine want to application to the claims as they were construed nintendo's priority analysis suffers from two fundamental flaws first nintendo tries to impose limitations into the construction of communications devi and we heard it during opening arguments that it has to have two way communication that it has to it can't be remote from the person that's wearing it that it can't be  limitations that nintendo wants to impose into the definition of communication device that are improper well let's assume for the moment you're following the understanding of what a communication device is in light of the specification that i'm trying to figure out to what degree you need to rely on your disclose distributed in body image in order to find written descriptions support as well as actual reduction of practice because the claims all call for the system to be within the communications device and in your distributed inviting that that's disclosed the sensor is not within the communications device the sensor is convince me of that before you can get to the next well i think that's going construction issue right the patent specifically says that you can have one advantageous embodiment is when the process and or sensor are not co located and that is an appropriate arranged device use of the word device singular the other thing that i think's important i think that's perhaps that goes to the motion detection device and that of processing and understanding what you know of the motion detector as detected but then there is the communication aspect which is not necessarily part of that motion detection processing device so what we have in from is written description in terms of the communication require that the system transmit there's no requirement that be able to receive communications from somebody else or have any of the other dual functionality that nintendo want to attribute it to so the claims themselves only require a transmission so we clearly have written description of system eleven which is an entire communication device in and of itself that has all the elements of the client but we also have is a distributed communique devise and the board specifically made that factual finding and honor i believe that is the final written decision twenty two i believe i'm sorry it's on page twenty one and your honor in the middle of the page  communication device as were cited in the challenge claims and so the board has not only in claim construction but here in the priority analysis made the specific factual finding that that is a communication device those two items together and by the way i also think it's important which is never acknowledged by nintendo in the briefing you have to look at the dependent claims that actually discuss cellphones so for example if you look at dependent claim which is that appendix fifty one and this is true for points two three eleven and twelve the system as claimed in claim one where instead communications device comprises one of and then lists a cell phone and other devices and i think it's critical that the use of the term comprises in the context of what the communication devices requires that it can include more than just the cell phone so of course we know comprises means including but not limited to but the way the claims were written the communications device can include but not be limited to a cell phone or computer or the other devices that are let listed on planes two three eleven and twelve as well as for example the body warm sensor and these claims were in intended and drafted to specifically cover the distributed device environment we talked about earlier with system eleven and remote mobil station hundred three and the pattern of course specifically says that mobile station one of three can be a cell phone so not only is there support in the claims we have supporting the specification and we also have a specific factual finding by the board which is entitled the deference that that distributed device is a communications device within the meaning of the climbs and it's a communications device why why why is that why does the sensor that you're wearing get to be called part of a communications device is it because that sensor has some kind of r f transmitter and so therefore that sensor is in a sense communicating with the wall unit with the remote you know exactly discussion that is the description you have a remote you have the sensor eleven and then the wall unit has its own i guess communication device it's it does that communicating to the monitor it receives communications obviously from system eleven and it's described as it could be an auto dialer it's described as having one option having embedded cellular technology it's described as being a cell phone so that distributed device the communications device in that description is both components and one of the important decisions that was made by the board in the claim construction is two things and nintendos claim construction refuses to address either one one is transmission sufficient and i think based on the claim language itself that only requires transmission and the other things that were cited by the board transmission is sufficient to be a communications device but the other thing that was addressed by the board is what i've wanted to in the final written decision on page twenty one and it's it's well briefed in our class construction section in our red grief and that is in communications device can be made up of multiple components that's specifically called out in the specification and in  a couple of different places both columns ten and eleven discuss this distributed device and the board make that factual determination that that is a communications device and that it met the written description requirement and there is substantial evidence to support that board finding and it should not be disturbed one thing i want to address with respect to nintendo's argument is this backwards analysis of priority is fundamental and to their analysis of the written description issue intended as position is that if the claims if the peak lames encompass any new matter then you're not entitled already and that's directly contrary to the longstanding federal circuit law that you can have description support in both the original application and this the ip and when you have common matter like that the original application is entitled the priority we've cited the centaurus case judge newman that says that that concept that works well supported both by the original application and also appears in the can you explain why the purported new co inventor in his declaration is that if you know we're adding all this you know that or are claiming a new invention a new invention is installing the system itself well i think that's the way nintendo characterizes the testimony but it's not accurate what what mr masterman said and i think mr masters testimony is is a red herring on this written description issue what he said was that first of all he was very very clear he was not involved in the original invention that by the time he came to the company they already had a working device like is described in the four eighty one so he was not involved in the original invention that includes system eleven includes the distributed device with the autodialer he's very clear in paragraph six of his declaration that eight to twenty twenty four that he was not involved in that he did not say as nintendo characterize it that he was involved in a new invention what he says is he had discussions with the inventors about new embodiments and that new material was added to the c i p to discuss that they did beef up the description in terms of communication device p you don't know what's going to be required by the examiner in terms of written description support for a particular claim but as it turns out the way that the claims issued none of those claims require that any of that new material as i've already mentioned even the dependent claims that mention a distributed system that has a cell phone is already supported by the original nine on one application there isn't it is that there are other claims that did require the added material none of the disputed claims require that i haven't analyzed the ones that issued that aren't in dispute or weren't were challenged but at least at first blush it does not appear that any of the claims require the new material for example none of the claims state that everything would have to be contain a cell phone now the claims require that the only claims that even mention a cell phone are claims to an eleven and as i already mentioned earlier all you have a communications device that comprises a cell phone should this added inventor have been added as a code that you well i think at the time of the application they had these discussions they beefed up the specification and again you don't know how a claim is going to be construed you don't know what the examiner is going to require in terms of one twelve and so i certainly understand if he was involved in those discussions why he would have been added as an inventor and you also don't know what claims are going to get but in retrospect as to these claims all of these claims are fully supported by the grandparent application which is the factual determination that was made by the board and based on the board's claim construction and based on the board's priority analysis he's not an inventor as to these disputed cl to briefly address reduction of preface most of what and so one of the one of the questions will it in your view how did the as i understand it the communications device limitation was added to overcome a possible so i will patenting rejection or abjection or something how in your view did it do that and well very simply the four eighty one the original grandparent application on forty one patent didn't have a communications device requirement so the right one plan for a very broad didn't require transmission for example claim one of the four eighty one just requires you have a system you have a processor you have a sensor and that it processes the acceleration in a certain manner it doesn't require transmission and doesn't require communications so adding a communication device element and also adding the transmission element which all the claims at least in the seven nine six pattern required transmission as well none of that was required by the original forty one path and so it is patently distinct and it does add a new limitation with respect to briefly reduction of practice and i think the board's decision with respect to reduction impact practice for most of the claims is very clear when you properly construe the claims as the board did it and has most of the pla w on that with respect to the extent to which you have to swear behind a particular reference and if you give me one moment what the it's by the way it's discussed in the robbery fifty five to sixty four and this law has never been disputed or contested in a reply brief they didn't address it at all but what the law says based on the simple case is that all the applicant is required to show is a priority with respect to so much of the claim convention as the reference happens to show so you look at the extent of the disclosure in a sushi and so long as you know you're saying the actual reduction of practice doesn't need to support the breadth and scope or specificity of your claims with respect to elements that are not disclosed in the reference such as not based on what the claim languages you do have to reduce to practice the claims and the board specifically found by the way i made a factual determination that the that we did show reduction of practice of all disputed claims so let's get that clear that the board has made that factual determination very detailed analysis that reduction of practice was shown as to all claims but when it comes to these dependent claims to three eleven and twelve yes if you look at the m p e p seven fifteen point zero two discusses the rules it discusses all the many of those cases are also discussed in the red brief what it says specifically is yes if you show in your reduction of practice evidence all of that the referent shows then you don't have to show more you remove it as a reference it's no longer  to a art and it's remove all purposes and it makes sense in the context of one or two a want to do a says is that you're entitled to a patent unless a printed publication shows the invention prior to your date of invention if you sushi doesn't show those additional elements it's not want to a art and so i think it's this issue discussed extensively in fifty five to sixty four the red brief and also in p p seven fifteen point zero two and so even setting aside the board's decision about reduction of practice of all claims which i think entitled the deference and is correct and supported by substantial evidence this argument about the what you have to show to swear behind a reference with respect to claims that include elements that are not discussed in the prior art reference here you sushi i think also requires that even if you were to consider the reduction of practice evidence and adequate for two three eleven and twelve you have to at least reduce the practice was disclosed on the part device the issues you reference teaches that the sensor is in what they call a personal handy phone system it's within the same device that's why as you see is a is a dead on one of the two a reference to that to the forth in the background of the specification in column two lines night scene turn around thirty three when mr master noticed that people were tearing around very commonly now cell phones cell phones were starting to become common people were not tearing around distributed devices the problem is the patent office ignored the context of the term communication devices being used in their c ip application the communication device is not a dedicated one are of transmitter that's dedicated sending body signals and it's to let the user do voice and data communication that's what figure nine shows us let me just tell you what's on my mind right now i'm thinking of an example of something to do with like wireless here buds and then like a cell phone that's maybe working with a streaming website to get music and then the music goes to the machines of the phone and then the music goes from the phone to story that mix of elements together is a communications that i think there are many devices that could be potentially distribute that could be a communication device well but the communication devices that we're talking about in the c i p are devices that enable the user to communicate not just automatic sensing of sense sensor signals that's the old invention so your but having a distributed device on you that enables you to communicate to different devices that are on the user maybe that could be a and then decide ok they said yes that this particular environment this so called distributed inviting us is collectively a communications device i understand you're on that comes back exactly to the l her fourth in power elisa's and there was an earlier environment that is different there's no question that that distributed body image is different in fact it's fundamentally different in fact the claim language we think excludes that a monument as your honor said that is not within it's not a figure nine and loud voice communication the distributed environment does not allow the user to do anything it doesn't add any user communication functionality whatsoever all it does is offload some of the processing capability to a device that's on the wall this gets down even to the distributive mind it was covered by this is exactly the power oasis situation where you had in a user interface on a vending machine that did not provide support for user interface remotely on a user's laptop we have that exact same situation here in reverse they told you in the original case to put things in remote locations now in the c ip they're telling you oh we've got a great new idea let's put it all in one that's exactly what the situation in power