and number two thousand and nine eleven ninety six tillotson corporation against the international trade commission mission opinion was in looking only at those two words in isolation as opposed to applying proper analysis of looking at the claim scope to determine whether a hypothetical product in this case i glove would have to fall within the scope of the reissued claims but not falling within the scope of the original good do you think that the term pre determined and the term initial mean the which is the starting value of a test used to determine the relaxation property of the claim because well the that the statement that was made to the p t says among other things that the rubber exerts an initial rather than pre determined pressure on the hand which suggests a difference between the two even in the context of the path your honor that the other portion that i believe is also heard in the real issue is the statement by the africans pointing specifically to  column the pattern that talks to two hundred percent modulus test that well let me first have you respond to this statement which sounds like the patent tease saying they're not the same even in the context of the pa of the pressure is different in the one case from the other doesn't it and i respectfully disagree how would you read those words other than the way i'm proposing to read them the way i would propose to read them your honor is in has defined the word pre determined contrary to its ordinary meaning which means known in advance pre determined and i show me where you think that after a i don't believe it's  five there is a discussion of the the globe of the invention being a relatively low resilient elastomeric low and the applicants described the elastic properties of that club as being such that the you want us to interpret pre determined to mean an undefined first pressure whatever that pressure should be the way i would like the court to to interpret it your honor is a first define pressure defined in relation to a second bridge so such but with the word determined suggests that somebody has attached a number to the first i understand your argument though to be that all the two acquired is that without regard to what the number is it's a of the word determined in your formulation in my for the word determined and this is consistent in column six of the patent which describes the test it has reference to the is t m d for twelve step and so in the context relevant are that standard use the word determined to mean measure and in the context of the hundred percent modulus test it's described you have first measurement of stress or first determination of stress you have a second measurement of stress or a second determination you have to temper first determination but this one has the initial pressure of being pre determined a determination is different than something that is pre  attached to the miller reference which was never measured before the op construes to measure it following european prosecutor i thought with respect to the change from initial pre determined to initial the that man a small hands big hands big because then there would not refer to any particular value even even if it was the goal of design exactly for your hand the evidence at trial which is which is not contested here is that this the size and shape  your hand would change and so the absolute value of pressure would change even if it was close specifically designed for you and what what the applicants were intending to capture was not a particular pressure but it was the behavior characteristics of the la evaluation is done through a proxy this destructive test and when you did in the context of the pattern the claim is a pool you have to do a destructive test basically cut strips out of a globe and you have to take a first measurement  said initially exerting and mischel pre determined pressure or a pre determined initial pressure and the change that was made was simply to take out the word pre determined without substituting anything for do you think that  would be a permissible change in the situation you're right i do believe there are different three zero which is why i don't know that i've thought about that exact phraseology i do believe that there's a difference between the substitution of words which occurred here and the complete removal word but your suggestion is that pre determined in this context is the same as initial and therefore all you would have would be initially in effect initially correct now here's my concern which you have here is what looks to be potentially an additional limitation but it's a limitation that we've all had a hard time coming to terms with and i think the commission did too of exactly what does this pre determined import into the claim now is it permissible as a reissue action to get rid of a murky claim term that ne or may not have some greater significance in favor of a term that is clearly at the narrow end of whatever ambiguity there is in the previous language yes here i believe that is permissible and i think that's the this court's for me the issue of a church i case where in that case there was no dispute that language was removed from the claim it was a limitation of the support in being attached was not a hypothetical shoe in that case they would have infringed the rishi claim that would not infringe the original well i guess my question is really if you know suppose that we were to conclude that it is the term pre determined in this setting is so difficult to try to assess its scope we can't say for sure that we would conclude that that term didn't add anything to the term initial if that's our conclusion do we rule in your favor or do we have pulled the commission i think a bad circumstance would ruin our favorite daughter because the burden is on the party challenging what it is about and that burden is by clear and convincing evidence and so if there an acceptable clarifying change as opposed to right and i think that that same issue your honor just to briefly address it the defective declaration i would there's two issues rise or fall together in other words the the real issue there's no dispute that the change from initial for predetermine to initial point after the patent office the only thing that was not explained was that that was a broadening change which is in the commission's phraseology because we don't believe it was extensively now let's see mr park koski you and mr daniels are splitting time is that correct all right i'll try to give you some indication when you're allot i've talked to context being important and asserted that the i c c looked at these words in a vacuum and that's just i'd like to take a look at that context and then i think it demonstrates that's not true here there's two phrases that these or pressure on the hand that in that original claim need to be both initially exerted and pre determined versus in the read in their issued claimant only needed to be initially served you can say initial but initial pressure of the hand and the pressure initially exerted on the hand i discern mean the same thing and looking at that the key determinative issue in this case is whether there's an additional limitation in the original claim that did not make it through into the reissue and just taking when you break the two phrases down you have a pressure that's initially exerted on the hand and pre determined in the original and you have just a pressure that's in that needs to be initially exerted in every issue so in the is redundant it is indeed redundant which i'm not saying that's improper it just it is a redundancy and that's what they're trying to say trying to construe predetermine to be a redundancy as well which i think is  just are not present in the in the reissued claiming that renders this claim brought the reissued claim broader and under this court's test whether it be the and whether the claim has an additional limitation it commission says here is whether the limitation disappeared in the race you claimed that you have to you have to read any claim language in current terms of the context of the patent to appreciate its meaning is so we have to look at pre determined and say what does it mean in the context of this invention and if pre determined could possibly need in the context of this invention a number known in advance because that's technologically unfeasible then i think it would be unlikely we would give it that interpretation absolutely your honor and that's and that's exactly what the commission the limitation and there was an argument made by tillotson that the respondents below we're arguing that it needed to be a specific pressure selected in advance and if you look at page five to six of tillotson to reply brief they they say that this was improper for the commission to require a specific selection but if you look at what the commission said that they looked at that article and they understood how would you do this in practice and the commission concluded it's in the in the idea it's in the commission opinion that you didn't need to select a specific numeric pressure you could use a proxy such as the one hundred percent modulus test to determine in advance of the glove being worn wha pressure it would exert what that would add to the glove physically is not much but it would nothing actually but it would notably your honor it would ensure that the glove manufacturer has made a glove pressure but it's still tight enough to maintain you know to stay on the hand to stay tight on the hand it's not too loose and and also that it's not two types there is a there would be a reason to predetermine the pressure that the globe is going to observe so that you're not constricting surgeons hands and so they're not wearing loose clothes after a few minutes of they're out of their operation but still if you had two blows sitting next to one another one of which had gone through the pre determination stage and the other not you wouldn't have any way of knowing that one fringes of the other doesn't assuming your theory fringe correct not without not without litigation discovery and that and that gets back to  interpretation so yes they would need to conduct discovery to see whether they met this pre determined limitation and notably after the claim was reissued they wouldn't have to because the limitation doesn't exist in the suppose that we should conclude and this would be a different conclusion from the one responded the commission but suppose we were to conclude that the word pre determined was stuck in this patent because it sounds learned and it sounds sort of highfalutin and it really needed nothing more than an initial but that it did cause the head create the potential of being interpreted as imposing an additional limitation so that this is the same question that you're posing counts so that the effect of going from pre determined was to eradicate the possibility that the patent would be read more narrowly then the patent he would like that is to say that pre determined would be given some substance rather then as we believe merely treat dis would that be a sufficient basis for saying that the real issue was in imbalance you understand the question it's a little interesting i think i do your honor but that i think in order for the hypothetical in order for them to have any chance to argue that they would win under that hypothetical you would need to determine make it a kind of subjective determination this inventor didn't mean what he said this claim  define it differently he never said he didn't mean it he didn't say it was an error to include it notably such that like you're talking about now he didn't say how it arose and we're just going to save his patent i suppose they would have a chance but i think it has to mean something under this court's precedent and if it does no matter how are generous lee you read that pre determined to to help them prove their case under the original claim if it means anything it's an and to address your question about judge more about the technical meaning and feasibility of the term predetermine it does have a genuine potential meaning to go into the batch so that they can determine how to time whether the globe will be comfortable when it's applied to the hand and when you read through the patent all the way through that the goal of the  have a glove that's going to be comfortable one that will go along comfortably and relax so that it won't constrict the surgeons hand so a glove maker doesn't go into the laboratory and just make a glove having any pressure at all otherwise he wouldn't be able sell the  close up a second point i want to talk about is the the defective reissue decoration i counsel for tillotson says that you can decide whether this is a broadening reissue and that resolves the whole change as a correction of an air and under death for any air requires compliance with rule one seventy five despres also says fact any difference in the claims requires  compliance with the one seventy five and and i think the earlier discussion of what the meaning of pre determined is really confirms that in this case there should have a term pre determined which has been considered by a number of objective people already in the case now whether you agree with them or not i understand is this your decision  but the staff attorney the l j and the commission all found that pre determined meant decided beforehand so this is a claim expression that really does require some analysis  order to find out whether suitable for the reissue but suppose that the at the analysis consisted of let's say a further senates that simply said we upon looking at the use of the term determined we thought it was sufficiently unclear that the right thing to do was to substitute what was intended all along just the term initial with that in your view setting aside whether that was correct but that's that's the argument as to what really has been a for himself whether there had been compliance with rule once over five also there's the question of the statement in the declaration about narrowing  and i think the fact that the applicant said i'm narrowing this claim by reducing the final pressure from at least eighty percent to at least fifty percent a really big the question i thing we all appreciate that there could be other ways that the scope of the claim could be expanded that is by removing this term pre determined there was this potential for expanding the scope of the claim to include loves having it reduce pressure below fifty percent ah but never having been tested by by the manufacturer if i could return to the question of broadening  the words in isolation as opposed to looking at the claim as a whole and then capsulize this argument by saying once this initial pressure is measured it must dash and it must be determined whether the relaxation element of the claim is satisfied that initial pressure becomes a predictor pressure seems to me that that is confusing the claim limitation which is pre determined require it as it comes out any determination by any one of the pressure just that have an initial pressure whereas before it required to predetermine pressure this that that we would all be familiar with they could have said a first pressure and reduce pressures they could have said first pressure second pressure they could have compared said pressure and reduced pressure but they didn't do any of those things  instead of using those terms that we would all recognize they threw a word in there pre determined in their original claim that for us has some rich meaning you know as it's a term that's been before this court before and do any hypothetical clingman analysis and in fact the commission's three points in its decision did just that at page eighty three eighty four get eighty four and a eight six very well i think i think we have had your argument unless you have something that they should be desperately needs it sounds like you have something you desperately need to go ahead one argument that i hope you will not take into account is the best mode and the reason for that is not because we have a conflict of facts between the two parties but i think judge x six misapplied the law of what it is to have a preferred  side several minutes when we give you three minutes extra if you could this thank you good just a few things to point bring to the court's attention i think both gentlemen argued on the other side talked about linkage and explanation of the term pre determined to the use of the term initial in column six there was extensive argument below your honor consistent with your your argument by mr daniels in his client that there was insufficient testing testing was being consistent with each and john i case there were other limitations added to the claim going to that exact issue the applicants amended the claim to have the requirement that they cough it closely when first put on and there was evidence below  additional limitations were added they go directly to the point about the overall scope i also thought it was interesting mr daniels such we admitted that one could use multiple words to describe the exact same scope of quite hear the words pre determined gave three other examples that his view would have resulted in identical claim scope and presumably would not have led to a broadening re and i'd submit to the court that that's exactly what happened here with the changes were predetermined that it's it's permissible to use two different words to refer to the same thing so long as a claim to get was not changed i also was i nteresting to hear mr daniels essentially acknowledge that if a quote was tested it would meet the predetermine with haitian that was expressly found by the commission and i would submit to the court it's not physically possible to evaluate relaxation unless at some point there is some tests conducted to evaluate the first pressure in order to have something to compare it to to calculate a difference and if all that's required in the commission three framing interveners framing of