¶1dissenting-in-part.
¶2Because, in my view, under the proper construction of claim 19, Berra cannot support the district court’s finding of invalidity, I respectfully dissent from part B of the opinion. The majority reads claim 19 as having “no reference to switching back and forth between the originally provided programmed mode and the additional programmed mode during vehicle operation.” While lacking a requirement to switch during vehicle operation, the claim does require “selectively controlling” the engine. As the district court properly recognized, “selectively controlling” indicates the ability to switch back and forth between multiple programmed modes.
¶3Giving appropriate meaning to “selectively,” Berra fails to anticipate claim 19. As the majority discusses, Berra may allow two programs to exist simultaneously in the onboard controller, and therefore allows the possibility of returning to the original program in the future. To properly anticipate claim 19, however, Berra must disclose the means by which to return to the original program, not just leave open a possibility. Contrary to the majority, I do not believe Berra discloses the ability to return to that program. Accordingly, I would reverse the district court’s finding of invalidity based on Berra.
¶4Appellees additionally assert anticipation of claim 19 based on the Microburst device. The district court did not address the Microburst device, and the record on appeal provides insufficient basis to support a grant of summary judgment at this time. I would therefore remand to the district court to evaluate anticipation based on the Microburst device.