[00:00:06] Speaker 04:
Okay, the next case is number 14, 1569, Syntest Technologies Incorporated against Cisco Systems Incorporated.

[00:00:16] Speaker 04:
Mr. Schafer.

[00:00:16] Speaker 01:
Thank you.

[00:00:17] Speaker 01:
May it please the court, John Schafer on behalf of Syntest.

[00:00:20] Speaker 01:
This matter before the court raises three matters of claim construction, the first being an ordered sequence, the second being each shift clock pulse comprising a clock pulse in normal mode, and the third being capture clock.

[00:00:33] Speaker 01:
In each of these instances, Cisco is seeking this court's decision to narrow the ordinary meaning of those terms.

[00:00:42] Speaker 01:
And for that to occur, this court must find somewhere in the record a clear intent, clear objective intent by the applicant for such narrowing.

[00:00:53] Speaker 04:
Would I find that in the specification?

[00:00:56] Speaker 01:
You can find that in the specification.

[00:00:57] Speaker 01:
It's not in the specification here.

[00:00:59] Speaker 01:
So where did the lower court judge get it wrong?

[00:01:02] Speaker 01:
Well, I think what the lower court first focused on, and it comes to the three reasons for this.

[00:01:06] Speaker 01:
The first reason was there is a reference when we're talking about the ordered sequence.

[00:01:11] Speaker 01:
We're talking about the first element now.

[00:01:13] Speaker 01:
The ordered sequence, there are various methods to do it.

[00:01:16] Speaker 01:
The specifications discuss one particular method or two particular methods, which we categorize together as a causal method.

[00:01:24] Speaker 01:
And in the specifications, it refers to that as the present invention.

[00:01:30] Speaker 01:
And there is case level that this court has issued where the president invention can serve as a narrowing.

[00:01:36] Speaker 01:
But I would refer this court to the recent decision that I believe Judge Laurie was on, the pacing technologies versus Garmin case.

[00:01:44] Speaker 01:
Because in this case, and what's important about this case, is that there is no dispute among the parties that the use of present invention is not consistent.

[00:01:54] Speaker 01:
In fact, it's used about 58 times throughout the specifications to refer to a number of elements.

[00:01:59] Speaker 01:
And the best way to find out that... Does that suggest more limiting?

[00:02:04] Speaker 01:
More limiting in a lot of respects.

[00:02:07] Speaker 01:
That's exactly what incorporated the spec by reference right into the claim.

[00:02:14] Speaker 01:
That's exactly what pacing technology dealt with.

[00:02:17] Speaker 01:
In pacing technology, there were 19 elements that were decided.

[00:02:20] Speaker 01:
And in that opinion, the court specifically says, look, there's 19 various elements that have been identified as objects or features of the present invention.

[00:02:29] Speaker 01:
And in that case, as in here, when some of those items or features appear in the claims and then also appear in the dependent claims, you would never consider that the applicant is using the term present invention is limited.

[00:02:43] Speaker 01:
In pacing, this court found it limiting because as to one of those particular features or objects, they specifically said, all of these features and objects that we've previously identified, all of these 19 are found in this one embodiment.

[00:02:59] Speaker 01:
And they said, so we'll depart from the rule where it's used inconsistently as to apply to this one because all 19 were adopted into the one.

[00:03:08] Speaker 00:
Well, what kind of construction do you think was too limiting?

[00:03:13] Speaker 01:
In this instance, when we're talking about ordered sequence, the claims don't identify any particular method for ordering the sequence.

[00:03:25] Speaker 01:
So any method should be permissible.

[00:03:28] Speaker 01:
And going just to my example.

[00:03:30] Speaker 01:
Including the prior art versions of ordered sequence?

[00:03:33] Speaker 01:
Absolutely including the prior art.

[00:03:34] Speaker 01:
Let me get to that issue right now.

[00:03:36] Speaker 01:
There was a discussion by Cisco that the absence of us, the absence in the file history during prosecution of us saying we included all other methods should be sufficient to limit us to the causal methods.

[00:03:52] Speaker 01:
But what's important in that case, in the file history, is the examiner rejected our claims as obvious in light of two patents by Noridovsky.

[00:04:02] Speaker 01:
Noridovsky uses the programming technique.

[00:04:08] Speaker 01:
If Cisco's construction was correct, the most obvious response for us would have been, they use programming, we use causal.

[00:04:16] Speaker 01:
We didn't do that.

[00:04:17] Speaker 01:
We didn't narrow our claims.

[00:04:20] Speaker 01:
based on a particular method.

[00:04:24] Speaker 01:
We distinguish Notodowsky on the grounds that Notodowsky teaches a launch on shift method of delay fall testing.

[00:04:34] Speaker 01:
And Notodowsky requires a particular form of alignment that we don't require because we're completely separate.

[00:04:43] Speaker 01:
So you're absolutely right, in our patent we do talk about this causal technique and why do we talk about the causal technique?

[00:04:51] Speaker 01:
Because the causal technique could not be used by the prior art methods.

[00:04:56] Speaker 01:
We can use the prior art methods of programming but we can also use this causal technique.

[00:05:01] Speaker 03:
When I read your patent I saw that the core idea was this triggering mechanism

[00:05:08] Speaker 03:
in terms of this tight relationship between the capture clock pulses from one clock domain causing triggering the capture clock pulses from a different clock domain and that was the foundation of the patent and then that's reinforced given that every example in the spec uses the daisy chain triggering mechanism.

[00:05:35] Speaker 01:
The specification

[00:05:37] Speaker 01:
defines, to an extent, ordered sequence as skewed clocks.

[00:05:44] Speaker 01:
I can find the reference in a second, but it says an ordered sequence is skewed clocks.

[00:05:48] Speaker 01:
What distinguished our method from the prior our methods was that all the prior methods had multiple capture functions going on in some level of simultaneity.

[00:06:01] Speaker 01:
In our system, we completely separate the operations of those.

[00:06:06] Speaker 01:
And the only evidence then that would support this idea that our invention was this causal triggering method was the use of present invention.

[00:06:18] Speaker 01:
And we use present invention inconsistently.

[00:06:21] Speaker 01:
The best example of this, I would think, is the penultimate paragraph in the summary of the invention, where the specifications say, to summarize, the present invention centers

[00:06:35] Speaker 01:
on using a global scan-enabled signal for driving all scan-enabled signals at a reduced clock speed and applying an order sequence of capture clocks for capturing the output response in self-test and scan-test.

[00:06:51] Speaker 01:
What's important about it are two things.

[00:06:53] Speaker 01:
A, we don't reiterate any method for the ordering.

[00:06:56] Speaker 01:
But B, more importantly,

[00:06:59] Speaker 03:
But everything in the lead up to this is all about the token ring clock enabling technique and the daisy chain clock triggering technique.

[00:07:07] Speaker 01:
It's no different than identifying it as a preferred embodiment.

[00:07:11] Speaker 01:
We use that in the... You didn't quite say it like that.

[00:07:14] Speaker 01:
It says present invention.

[00:07:15] Speaker 01:
So the issue is can you use present invention here as a limiting construction?

[00:07:20] Speaker 01:
And when you go to this penultimate reference,

[00:07:22] Speaker 01:
to the present invention as central.

[00:07:25] Speaker 03:
The Cascades present invention isn't the only way to use something that is a translation and a specification into understanding certain words in a claim, right?

[00:07:38] Speaker 01:
Absolutely, but you need other indicia of a clear intent.

[00:07:44] Speaker 01:
And the only other indicia you would have, I mean what separates present invention from preferred embodiment

[00:07:50] Speaker 03:
is that the court has determined that if you use present invention, there are instances where you can find... Where is the indicia in this patent that this claim for an ordered sequence of captured clocks encompasses an embodiment that has a programmable capture window?

[00:08:08] Speaker 01:
That was what was known in the prior art at the time.

[00:08:13] Speaker 03:
You couldn't possibly be arguing that your claim covers the prior art.

[00:08:17] Speaker 03:
Please don't say that.

[00:08:18] Speaker 01:
We're not arguing it covers the prior art.

[00:08:20] Speaker 01:
It covers that prior art method.

[00:08:23] Speaker 01:
What distinguishes our invention from the prior art is not the method of achieving an order of sequence.

[00:08:31] Speaker 01:
That is unique to our patent, but just because something is unique to our patent doesn't have to be what is claimed.

[00:08:38] Speaker 03:
And I would go back to the... But what in the spec tells a reader that the inventor is contemplating that his claimed invention covers a programmable capture window embodiment?

[00:08:50] Speaker 01:
It indicates that any method can be used.

[00:08:53] Speaker 01:
While it defines that as the preferred embodiment, when you look at the claim language, the claim language simply says an ordered sequence.

[00:09:01] Speaker 01:
So you're now reading a limitation from the claim language into the body of the claim.

[00:09:08] Speaker 01:
And that would make sense if in the prosecution history,

[00:09:12] Speaker 01:
the examiner or the inventor had made some effort to say this causal triggering method is what distinguished us from the prior art.

[00:09:22] Speaker 01:
We didn't.

[00:09:23] Speaker 04:
We found other things to distinguish.

[00:09:24] Speaker 04:
You did exclude the programmable sequence, did you not, in the prosecution history?

[00:09:30] Speaker 04:
No.

[00:09:30] Speaker 04:
As a distinction?

[00:09:32] Speaker 04:
No.

[00:09:33] Speaker 01:
Absolutely not.

[00:09:35] Speaker 01:
No, there don't.

[00:09:35] Speaker 04:
Then why all the emphasis on the orderly sequence?

[00:09:39] Speaker 01:
The emphasis on the order of sequence is because it is a technique that cannot be used by the technique taught by Notodosky or the technique taught by Hetherington.

[00:09:50] Speaker 01:
We can use all systems plus we can use a system that those forms of achieving a sequence cannot use because we completely skew the testing mechanisms where they don't.

[00:10:04] Speaker 01:
They have them moving simultaneously so they could never have a causal triggering method.

[00:10:09] Speaker 01:
to have that.

[00:10:11] Speaker 01:
And then let's get to the other reasons why.

[00:10:14] Speaker 01:
It cannot be causal triggering.

[00:10:18] Speaker 01:
The patent is clear that it incorporates a scan cell that uses, in addition to a multiplexing scan cell, it uses a level sensitive scan latch.

[00:10:30] Speaker 01:
A level-sensitive scan latch does not switch between shift and capture using a scan-enable signal.

[00:10:38] Speaker 01:
There's no requirement for a scan-enable signal with that method.

[00:10:42] Speaker 03:
Do we have an expert testifying to that fact, or do we have something in the record that makes that... Absolutely.

[00:10:49] Speaker 01:
I made that point to Judge Greywall at the hearing, and we had it in our reply brief.

[00:10:54] Speaker 03:
But besides you telling us that, I mean, I don't know anything about level...

[00:11:00] Speaker 03:
I can't even remember the word.

[00:11:01] Speaker 01:
Level sensitive scan latches.

[00:11:03] Speaker 03:
Level sensitive scan latches and level sensitive scan designs and whether or not they require or don't require the use of the scan enabled signal.

[00:11:11] Speaker 01:
Well I don't believe there's any dispute before this panel that they don't require it.

[00:11:15] Speaker 01:
The reason, and I think I explained this in the opening brief, with a multiplexing system you basically have one path going into the scan cell.

[00:11:24] Speaker 01:
So you need something to switch between scan and back down to capture.

[00:11:29] Speaker 01:
With a level-sensitive scan cell, you have two paths going.

[00:11:33] Speaker 01:
A path for scan and a path for capture.

[00:11:38] Speaker 03:
Before we get into this complex story, as I understand, the reason why you're making this argument is to be able to say that the usage of the term present invention uses a scan-enabled signal

[00:11:52] Speaker 03:
can't possibly mean that a scan-enabled signal is a necessary component of every single claim because one of the claims uses this level-sensitive scan latch, right?

[00:12:08] Speaker 03:
But I guess a counter to that is do we even need to

[00:12:15] Speaker 03:
go down this rabbit hole about LSFDs if it's unnecessary to deem the usage of the term present invention in this patent every single time it's used as being some kind of definitional moment.

[00:12:31] Speaker 01:
That's absolutely correct.

[00:12:32] Speaker 01:
And you don't need to get into the analysis of the level census scanlatch either because a global scan-enabled signal, which has been identified in the penultimate paragraph as a present invention, is dependent claim form.

[00:12:45] Speaker 01:
And under the doctrine of claim differentiation, that in and of itself indicates it's not part of the independent claim.

[00:12:53] Speaker 01:
Dependent claim three is the use of the scan-enable signal.

[00:12:57] Speaker 01:
So that tells you that it's not required in claim one.

[00:13:02] Speaker 01:
And so if what they're saying here is the present invention is founded as a dependent claim, which is what the pacing technology case held, then present invention, if you deem it the present invention, you're violating the presumption of claim differentiation, and you're rendering claim 27 meaningless.

[00:13:26] Speaker 01:
because it includes that system that doesn't require it.

[00:13:30] Speaker 04:
Let's hear from the other side and we'll save you a rebuttal time.

[00:13:38] Speaker 02:
Thank you Judge Newman.

[00:13:39] Speaker 02:
May it please the court, if the court affirms on the issue of the ordered sequence of capture clocks, the court does not need to reach any of the other issues that are presented in the appeal.

[00:13:49] Speaker 02:
That is, the spots of the

[00:13:51] Speaker 02:
As Syntest conceived at page 9 of its reply brief, of course, if there are questions on the other issues, I'm happy to answer them.

[00:13:57] Speaker 02:
Syntest told the public in no uncertain terms what its invention did and did not require in providing the claimed ordered sequence of capture clocks.

[00:14:07] Speaker 02:
They clearly said that the present invention uses a daisy chain triggering or clock, excuse me, or token ring clock enabling technique to generate and order the capture clocks one after the other.

[00:14:18] Speaker 02:
Indeed, every figure, every embodiment, every discussion in the summary of the invention on how to order capture clocks involves one of these triggering techniques, making this case very much like the vernetics decision.

[00:14:32] Speaker 02:
There's no inconsistency in how the patentee used the term the present invention.

[00:14:35] Speaker 02:
What I mean by that is there's no contradiction.

[00:14:38] Speaker 02:
It's not like they say in one circumstance the present invention uses daisy chain and in another circumstance the present invention uses programmable capture windows.

[00:14:48] Speaker 02:
Quite the opposite, syntax distinguished its invention from the prior art.

[00:14:52] Speaker 02:
It specifically said that programmable capture windows require clock suppression or programming complex timing waveforms.

[00:15:00] Speaker 02:
How do you understand clock suppression?

[00:15:04] Speaker 02:
How would you translate that?

[00:15:06] Speaker 02:
What does that mean?

[00:15:07] Speaker 02:
Well, I think what that's referring to is when you control it so the signal's not actually sent.

[00:15:13] Speaker 02:
That is, instead of the signals all running continuously, you tell... It's basically like time slicing.

[00:15:23] Speaker 02:
This one will go at this time, this one will go at this time, and so I think the difference between the claimed invention with triggering and with clock suppression is the difference between having a set of dominoes where you knock down the first and that causes the next one.

[00:15:35] Speaker 03:
Could triggering also be a form of clock suppression, at least as I understand the word clock suppression, if what we're talking about is just organizing clock pulses in a way where you're not running them all simultaneously at the same time, they're being sequenced.

[00:15:49] Speaker 02:
I don't think they're judging for two reasons.

[00:15:51] Speaker 02:
First, I think what Clark's oppression is talking about is to use the domino analogy.

[00:15:56] Speaker 02:
Instead of a situation where one domino causes the next one to fall, it's a situation where you have spaced out dominoes and at a pre-ordered time, someone walks up and knocks down a domino, whether or not the one before it falls, whether or not the one after it later falls.

[00:16:10] Speaker 02:
And second, you have a situation where they specifically say that the invention, quote, does not require applying clock suppression.

[00:16:19] Speaker 02:
So this is at A140, column three, where the patentee not only says what the present invention is, but it says what the present invention is not and what it does not require.

[00:16:32] Speaker 03:
When it says it's not using clock suppression, it's also bundling up that attribute with a bunch of other attributes that are all related to Heatherington.

[00:16:40] Speaker 03:
So if it's disclaiming something, it's disclaiming Hetherington with all of those attributes combined.

[00:16:46] Speaker 03:
It's not just singling out clock suppressions as a standalone and saying, we don't do clock suppressions.

[00:16:53] Speaker 02:
Well, I think, Judge Chin, what it's doing is it's saying that it doesn't require any of these techniques.

[00:16:57] Speaker 02:
And it says it does not require using shift clock pulses in the capture window.

[00:17:01] Speaker 02:
It doesn't require applying clock suppression.

[00:17:05] Speaker 02:
It doesn't require complex timing waveforms.

[00:17:08] Speaker 02:
And if they are distinguishing, that was all required.

[00:17:12] Speaker 02:
And this is just like frenetics in the sense that you have the patentee identify a problem.

[00:17:18] Speaker 02:
It identifies a problem with a prior technique.

[00:17:20] Speaker 02:
And the problem is that you can't do at speed testing of asynchronous clocks.

[00:17:26] Speaker 02:
And it says that we've solved that problem.

[00:17:28] Speaker 02:
And it says that the way that we solve that problem is by using daisy chain or token ring triggering in which, quote, the test results are repeatable no matter what clock speed will be used for each capture clock.

[00:17:41] Speaker 02:
In other words, even when the clocks are asynchronous.

[00:17:44] Speaker 02:
And that actually distinguished the priority.

[00:17:46] Speaker 03:
What do you think about column one, lines 55 to 56?

[00:17:49] Speaker 03:
This is what your opposing council referenced without actually giving us the site where it says,

[00:17:59] Speaker 03:
where it's talking about the prior R, and it says, none of them can provide multiple skewed capture clocks, parentheses, or an ordered sequence of captured clocks, closed parentheses, in each capture cycle during self-test or scan tests.

[00:18:12] Speaker 03:
So right there, there's perhaps a suggestion there that the parentheses that, when it's talking about an ordered sequence of capture clocks, it's talking about multiple skewed capture clocks.

[00:18:24] Speaker 02:
Well, Judge Chen, when you look at column one, it identifies one of the problems with the priority being clock skews.

[00:18:32] Speaker 02:
So this is A139 at line 39, and specifically identifies that because of clock skewing, you end up with a fault propagation problem.

[00:18:42] Speaker 02:
That is, you can't know

[00:18:44] Speaker 02:
that things won't necessarily be triggered at the same time because even when you have synchronous clocks they may be off and certainly when you have asynchronous clocks it is difficult if not impossible to make sure that they're not going to trigger at the same time and that's why the invention

[00:18:59] Speaker 02:
Excuse me, that's why the patent then goes on and explains in column 4 and in column 5 how they solve that problem.

[00:19:06] Speaker 02:
And the way they solve that problem is through generating and ordering capture clocks one after the other by triggering.

[00:19:14] Speaker 02:
And in fact, if you look at

[00:19:16] Speaker 02:
the prosecution history and the point that my colleague was referring to, it actually gets to the same point because they say, and this is at A323, most importantly, most importantly the present invention can allow the testing of asynchronous clock domains

[00:19:37] Speaker 02:
And it gives an example of those, unlike the prior art.

[00:19:40] Speaker 02:
And the way that it does that, and I think this is explained well by the district court at 820 footnote 36.

[00:19:49] Speaker 02:
The district court explains, to avoid the problem, it identifies the problem, the difficulty of at-speed testing of asynchronous clocks.

[00:19:56] Speaker 02:
The asserted patents explain the invention uses a daisy chain clock triggering or token ring clock enabling technique to generate and order the capture clocks.

[00:20:04] Speaker 02:
This technique provides a major benefit enabling the use of asynchronous clock domains.

[00:20:14] Speaker 02:
As in Honeywell, they've told the world what the present invention requires.

[00:20:20] Speaker 02:
There's no reference in here in which they say the present invention uses programmable capture windows or uses clock suppression, which is the only other technique that could potentially

[00:20:37] Speaker 02:
be used in that regard.

[00:20:40] Speaker 02:
There's no inconsistency in that.

[00:20:43] Speaker 02:
You have a disparagement of the prior art.

[00:20:46] Speaker 02:
You have an explanation for how the invention solved that problem.

[00:20:51] Speaker 02:
And I think that makes this case like the decision in vernetics, like the decision frankly in pacing technologies versus Garmin, which we embraced, which reiterated that the present invention language is the language of disavowal or disclaimer.

[00:21:06] Speaker 02:
Unless you have a situation where there's an expressed contradiction and there's nothing of that sort here.

[00:21:10] Speaker 03:
Can I ask you about the second claim construction dispute?

[00:21:13] Speaker 03:
Sure, yeah.

[00:21:14] Speaker 03:
Which the lower court relied on as an alternative ground for non-imprisonment.

[00:21:19] Speaker 02:
Yes, sir.

[00:21:20] Speaker 03:
Two of the three patents.

[00:21:24] Speaker 03:
That claim limitations in the preamble of claim one of the 213.

[00:21:29] Speaker 03:
And in a different part of the marketing order below,

[00:21:34] Speaker 03:
the judge deemed that the preamble is non-limiting.

[00:21:39] Speaker 03:
So can you explain to me how this is a legitimate basis for non-infringement if in a different part of the order the judge concluded that the preamble is non-limiting?

[00:21:53] Speaker 02:
Sure, a couple of points Judge Chinn.

[00:21:55] Speaker 02:
First, the preamble of the 126 patent is limiting.

[00:22:01] Speaker 02:
There's no dispute about that.

[00:22:03] Speaker 02:
The only dispute is whether the preamble of the 213 patent is limiting.

[00:22:08] Speaker 02:
And if you look at A46 in the record, the parties agreed that the, quote, said shift clock pulses that appear in the body of the claims of the 213 patent, that those refer, quote, to the shift clock pulses introduced in the preamble.

[00:22:29] Speaker 03:
So the parties agreed that... Is there any other reference to shift clock pulses in the body of claim one of the 213?

[00:22:36] Speaker 02:
Yes, Your Honor.

[00:22:37] Speaker 02:
The body of claim one of the 213 refers to, quote, said shift clock pulses.

[00:22:44] Speaker 02:
And of course, said is the language that requires an antecedent.

[00:22:48] Speaker 02:
So the necessary antecedent for the said shift clock pulses are the shift clock pulses that are in the preamble.

[00:22:54] Speaker 02:
But if there was any dispute or doubt about that, the parties stipulated at A46

[00:23:00] Speaker 02:
that the quote said shift clock pulses refer to the shift clock pulses introduced in the preamble.

[00:23:06] Speaker 02:
So it's necessarily the language of the preamble.

[00:23:09] Speaker 02:
Of course they then stipulate it to non-infringement based on the district court's construction of the term

[00:23:14] Speaker 02:
each shift clock pulse comprising a clock pulse applied in scan mode, which language comes from the preamble and it follows from the definition of the capture clock.

[00:23:24] Speaker 02:
That is the capture clock is specifically defined as being comprised of the shift clock pulses and the capture clock pulses and then the next statement is each shift clock pulse comprising a clock pulse applied in scan mode.

[00:23:39] Speaker 02:
The disputed term itself comes from the preamble.

[00:23:42] Speaker 02:
It necessarily comes from the preamble because that is the antecedent basis.

[00:23:48] Speaker 02:
And then the party stipulated that it comes from the preamble.

[00:23:53] Speaker 02:
If the court has further questions on any of the issues, I'm happy to answer them.

[00:23:56] Speaker 02:
Otherwise, we will rest on our brief on the remaining points.

[00:24:00] Speaker 04:
Any questions?

[00:24:01] Speaker 04:
Any more questions?

[00:24:02] Speaker 01:
Thank you, Mr. Cronin.

[00:24:07] Speaker 01:
If I could respond to the second point first and then get a chance to talk about the second construction.

[00:24:12] Speaker 01:
I was curious about the second construction, which is each shift clock pulse comprising a clock pulse applied in normal mode.

[00:24:19] Speaker 01:
That language was added in the file during the prosecution of the patent.

[00:24:24] Speaker 01:
Why was it added?

[00:24:25] Speaker 01:
It was added because the examiner said, you can't have

[00:24:31] Speaker 01:
shift clock pulses in the capture clock.

[00:24:34] Speaker 01:
That makes no sense.

[00:24:36] Speaker 01:
You can define a clock by its function.

[00:24:38] Speaker 01:
The function of these clocks can be to capture or they can be to shift.

[00:24:44] Speaker 01:
So if you have a capture clock, a capture clock cannot have shift clock pulses in it.

[00:24:49] Speaker 03:
Why is it reasonable to read the prosecution history as you defining the capture clock in a way that it provides shift clock pulses during the shift mode and it provides capture clock pulses

[00:25:02] Speaker 03:
during the capture window.

[00:25:04] Speaker 01:
That's one way to read the prosecution history.

[00:25:07] Speaker 01:
The prosecution history in that instance said we had defined capture clock to be the test clock, which the examiner rejected, saying no one in the ARC would understand it to mean that.

[00:25:18] Speaker 01:
So we added this language to clearly stand for the proposition that shift clock pulses

[00:25:24] Speaker 01:
are not if shift clock pulses are only found in the shift clock.

[00:25:29] Speaker 01:
That is the shift clock pulse comprising of pulse applied in normal mode.

[00:25:35] Speaker 01:
And capture clock pulses only occur in capture clock pulses.

[00:25:39] Speaker 01:
So again you have an instance where the lower court added a limitation to this language.

[00:25:45] Speaker 01:
He inserted this notion of capture clock.

[00:25:47] Speaker 03:
You understand though it does great grammatical violence to read it the way you want to read it.

[00:25:54] Speaker 03:
Just to read the words to claim, each captured clock comprising a selected number of shift clock pulses and a selected number of captured clock pulses.

[00:26:05] Speaker 01:
And the examiner indicated that that doesn't make any sense.

[00:26:09] Speaker 01:
And we have an instance where Judge Greywall has determined that the preamble is not limited.

[00:26:15] Speaker 01:
That doesn't mean you can't consider the preamble, but it's not limiting in and of itself.

[00:26:19] Speaker 01:
So you would need to apply some of the other rules of construction to it.

[00:26:23] Speaker 01:
And what the construction that has been proposed by Cisco is absolutely inconsistent with the file history as to why the language was added and what the language was meant.

[00:26:34] Speaker 01:
It specifically says this was to clarify, this language was added, this was to clarify the examiner's concern

[00:26:42] Speaker 01:
that a capture clock should contain only capture clock pulses and a shift clock should only contain shift clock pulses.

[00:26:49] Speaker 01:
That's an A320.

[00:26:51] Speaker 01:
And for us to, for then the port to impose a shift clock pulse from the capture clock is completely inconsistent of what was happening in the file history.

[00:27:01] Speaker 01:
Let me quickly go back because I have a good moment so let's back to the first element here.

[00:27:05] Speaker 01:
Heatherington, to a Heatherington and the issues with the distinction of Heatherington.

[00:27:11] Speaker 01:
is distinguishing the launch on shift technique versus the launch on capture technique being used here.

[00:27:19] Speaker 01:
The launch on all methods require clock suppression.

[00:27:23] Speaker 01:
As you know from reading these patents, you're going to have your capture clock going, and you're only going to release a certain amount of pulses during that period.

[00:27:32] Speaker 01:
All the other pulses need to be suppressed.

[00:27:34] Speaker 01:
So somehow to say that this causal triggering doesn't require suppression is just wrong.

[00:27:39] Speaker 01:
Hetherington's issue was the alignment issues, and we don't require alignment.

[00:27:44] Speaker 01:
We don't require alignment because we completely skew.

[00:27:46] Speaker 01:
And the other element is we have two very different notions of skew.

[00:27:52] Speaker 01:
There is the skew you don't want, which is where you expect alignment and alignment doesn't occur.

[00:27:57] Speaker 01:
And the skew we're talking about here, which is the ordered sequence of capture clocks, which is the completely complete ordering of the testing that occurs in different domains.

[00:28:09] Speaker 01:
That is our invention.

[00:28:10] Speaker 01:
We separate the testing domain one from the testing domain two.

[00:28:15] Speaker 01:
And all the prior arc required some level of simultaneity with respect to those testings.

[00:28:21] Speaker 01:
Thank you.

[00:28:22] Speaker 04:
Thank you, Mr. Schechter.

[00:28:24] Speaker 04:
Mr. O'Quinn, the case is taken under submission.