district court committed two fundamental errors in this case first it a role usually treated three claim elements as governed by section one twelve six and second even if one twelve six applies it all were included structure from the specification that they are equally good you'd be wiser brother went with all due respect they'll give up on the first one all together because even though the suggestion is that that's not a winner for you i'd be interested in hearing simply why you think it's not a one twelve six claim since you have used the term means out and now you know why it's not when this structure that suggested is certainly not a complete structure so is there something i did in this ng perhaps my colleagues may be clear on this but this is something i am totally missing in this i think this case is very much like the baffle means a claim term in berko because the term baffle itself implies structure of the took it out of the statute and in this case their structure that is conceded in the re how many types of sensors are there or there are lots of types of sensors or other i do it out if sensor is going to be viewed as sufficiently structural to would the impact  section one twelve six of the pattern then hell my as a competitor to know whether i'm infringing or not if i use sensor type one and somebody else uses filter type two and the specification talks about sensor type three a mind printing or not everything is under that in the context of claims how you know what you want to start with to just very well sir but to answer further killed by the fact that sensory could include almost anything in fact this invention has two kinds of sensors you've got a motion sensor an all white sensor with which and that you're way off base on this  even if one twelfth six applies there is substantial over inclusion of structure that is necessary to perform the recited function and in addition the th what is over include well specifically the court included a term called post count fifty one in the circuit diagram and that recites a different function altogether then the reciting function in the claim the reciting function in the claim is to detect motion of a person or object and the patent expressly teaches that the purpose of count is to reduce false triggers has nothing whatsoever to do with the actual sensing and detecting of motion will it's doesn't it doesn't mean that it limits false positive if it works as advertised that has some connection to sensing true motion when that's the position of the apple leads in this case your honor but the claim doesn't reside at the claim the words of the claim control the claim or sites that it's for sensing detecting motion of a person or object not true motion of a person or object and if the brick wall radiates absorb heat we don't have motion of a person earth thing but we might have a signal that would trigger the light if you don't have that phase poles process in place but the radiation that's coming off that wall is being carried by air and air is an object and that's bit the motion that's being sensed is that heat carrying air if you will and in addition if you look at all of the functions that are in that circuit diagram the first of them detector block forty three that is to select and filter signals that most closely correspond a human it is reading or object out of the claim if you make that part of the sensor means the next circuit complement it is simply an amplifier and all of these are acting on signals that have been given off by the passive infrared sensor and by the way the passive infrared sensor is mention the such over eleven times in specification and that the signal comes from the passive infrared sensor that's what technique motion of a person or object that's all that the claim requires the next block is the window compared her and all it is doing is taking the filtered signals and converting them to spikes claim is to be interpreted only so far as the structure is assigned that is necessary to perform the resided function and no more and we also have  the applied medical case and the applied medical case says that it is error to import function from the working in body movement into the claim term that is being discussed and j v w how is the prosecution history relevant here over prosecution history is relevant in every case in in this situation there was an allegation we think improper mechanism it is fair to assume that so that's sort of the center of the dispute here in terms of whether there's going to be infringement or not that with the way that that part of the claim term was you're saying well infringement of course to keys on all of the claim elements they all have to be present that is certainly one that we concede we cannot demonstrate is present in the accused device now i think this case is very much like road i'm where the there were three asserted claims three five and eight and another claim eleven and the additional function of thermal compensation  is that the end of that will apply to all the claims that the response to that is that the only claim that the patent examiner cited back to us with respect to apply the nippon reference was claim thirteen and the only reference that we particularly argued in response back to the patent office was with the bent then pending claim sixteen which became twelve which became twelve and you had other means for distinguishing nipp the it's absolutely right there are other terms in these claims that distinguished over the net foreign reference but typically there's a time or aspect that is part of the control circuit means that there is manual override that's not part of any asserted clegg there is zero crossing detector that's not part of the nippon rep a so there were multiple reasons why these claims were allowed over the nippon reference and the claim  participation of the court's expert never seems to appear in the documentation that we had well what did the court's expert contribute here i don't know for sure the  written report on the issues at hand he did not file a written report now do you know whether the cooked expert communicated privately with the district judge my belief is that that would have happened he would have agreed to by the parties or was that just done and yes it was it was if he knows how to be a concern i don't want to think on the process just to understand what happened as i recall there was a about a three day taking of testimony on claim construction and i believe it was right at the conclusion of that that dictating from the bench ad libbed the district judge set forth her claim construction yes she did and that's a little bit unusual to by my recollection particularly in a case that has some technological complexity very often there is an extensive argument by attorneys some post argument briefing and then a very carefully crafted written decision filed some weeks or so later by like this this case particularly lend itself to it because the issues were so well packaged if you look at the claim the master claim chart and it is either you or your opposing counsel adopted the claim interpretations that were expressed as proposed by professor madsen go yes what was his precise area of expertise i know he was an electrical engineer and i believe a professor but but but more specifically  what was his field and how does that compare in proximity with the field of security like design activity he was not a lighting engineer but this patent head was not concerned with that you are experts zone of expertise was brought in general and not particularly pertinent to the specific technology at hand as compared to his ex who i believe was a lighting designer in the implication was that the district judge should've should've been a little cautious about relying so heavily on your expert in perhaps giving a little bit more relative weight to the assertions of the contr there is a great deal of pre hearing discussion over what kind of expert you know but as you're quite you know when he starts talking about selection circuitry i'm looking at the diagram and going blind trying to find selection circuitry there that there's control circuitry with many different parts and function but there isn't any selection circuitry so he seems to have made up a whole new nomenclature that's not in any of the documents in this case and it seems like the district judge accepted that that that looks a little questionable to i don't i think the court did not apply the doctrine of clean differential was a wooden shoe in this case for post control is so specifically limited to one claim why would you read it in every place because the evidence seem to point to the fact that the that sensor means i'm sorry that was part of the sensor means well the post counting really isn't even sensing anything it is that reducing false positives citizens that's i'm having a little trouble with your sort of blowing that off that issue as just oversight by the p t because that would suggest that any time there are we to know when there is a legal oversight and when there isn't one if we stop your theory but i'm not sure it requires adopting a theory the the ru we should we jump off a cliff with you on this one simply because the once the technology was explained by the experts it became obvious to the experts and to sent to put the post control right were needs to be in the control circuitry rather than in sensing motion doesn't sense motion uses false positives he's going to make sure that distinction is clear he puts it over there and claim twelve and maybe the district court missed that well next year was certainly a pretty sick of that seems to be a consistent way of reading the prosecution history and it's reinforced by the fact that you're distinguishing signals emanating out of the center would be part of the control circuit well the the the way that the schematic diagram is laid out it starts on the left hand side with the p i ours and it proceeds through a number of signal processing the area and the p i ours are outside the dotted line that marks all the successes signal processing death but exactly my point it makes it look like first you have sensing by sensors then you have a whole lot of manipulation of the signals emanating out of the sensing devices that do various things well equipped are part of the controlled circuit and at the end of a block of circuits elements at the top of isn't part of controlling rather than part of thinskinned because of what pulse counting actually does pulse counting distinguishes between motion and non motion that that's just sounds like a pretty reasonable way to read it i'm kind of with the chief judge's reasoning on this good why isn't that a distinguishing factor between various kinds of motion sensing why isn't that something more logically in the control category rather than these sensing category itself because it's sensing the difference between motion of the person or object sensing means not only senses motion but it senses no motion and that it's grown arm motion clues brick wall radiates infrared differentially because of heating but that's not the motion and that's what it's exactly correct and so your argument is if you want to understand a means for i mean as we as we did point out in the brief it doesn't make any difference to the outcome of the case because if the the control circuit means claim element is present in every single claim as well but back to what i was puzzled about why restated but it's part of the means post function function i don't think you can have that if it's not expressly reciting it's not a function for which you need to look in the rest of the specification for corresponding structure that carries out th characterized it as a function i apologize if the pulse counting circuit is structure that senses the difference between motion and non motion or that's the set a good will effect argument but what function that is recited under control circuit corresponds with the pulse count detecting the motion of a story switching the light from dim to bright and response that i know of no requirement that a claim has to exclude all forms of motion and in fact what is happening here is that this particular claim is reciting the detection of motion or object rather broadly and to require that the claim term be interpreted in such a way that it distinguishes de motion from mon motion is going too far and what we're really talking about here i think is predominantly the over inclusion argument beginning with the  only detector and sensor in the patent that actually does sense motion and that's the p r and that it's taught it at least five times in the patent that the p r sensors detect motion why why are they called passive infrared sensors i don't know what the opposite would be active in for a sense of perhaps what the it is that the distinguishes the passive interests and because the sensor is in a particular passive location  focuses on what the color field of view and if objects that have a heat signature signature or persons go into that field of view then that p r generates the signal  one that was the bottom line of all of the well what's really at issue yes it is but what's really it is shoe is whether they have succeeded in impressing an improper claim construction on the district court