district of columbia i also have a knowledge of his credentials and i'm satisfied that he possesses the necessary qualifications i know all these things because these two individuals have been quirks of mine for over a year and i've been working with them every day and i'm convinced that they have the high character and are excellent lawyers have terrific analytical abilities and have protected me from  different term data flow diagram and the board required the claim for include data processing icons and arrows that's not consistent with the specification or the gross response or potations of the specification and that was the only basis for the boards at the bill of the finding regarding claims that were asking the court to reverse that construction and reversed that ability finding but even if the court affirms the board's construction of that lame term to the board because the board did not adopt that instruction until the final written decision and sas had no opportunity to address it in fact that construction was not offered by either the parties it was not a term that had been disputed at the time of the final written decision the construction that the board gave us in the final decision was totally unexpected in fact earlier in the i p r in the institution this is where this is at any one seven three the record the board signal to the parties that the graphical representations in the claims there are several recitations of graphic representation did not require any icon arrows let alone the specific icons and arrows at the board alternately and i would expect your honor that we would point back to the specific places in the prior art already of record perhaps expert testimony to identify where these very specific kind of icons that the board said were required are found in the prior art because there's no dispute that the pirate that we rely on the code reference in particular and that's coat c o a v includes as well as your short request in your briefing there's no real meat to the request for a rematch you suggest in a broad conceptual way that you would like to have a second crack at possibility under this claim construction but you don't really explain what you would do what you would really accomplish from it you just say you deserve a second chance and so it's you know i'm trying to put myself in the board shoes that it feels a little nebulous what you really want well what you would really do it and at the time that we request retiring from the board around or realized that we couldn't put in any new evidence at that time we were very limited  doing i'm just pointing out that so far even though up till today i haven't really seen or heard what i would consider a concrete roadmap of what your expectations are what you would actually do i would expect a parliament of the board and this is i would expect we'd have some abbreviated procedure in the patent office we're in uncharted territory here we have some abbreviated procedure in the patent office where the parties would perhaps submit supplemental briefing there may be some supplemental expert declarations to allow the parties to allow sas to identify where it is in the prior are these very specific icons or show where the icons depicting data processing steps are itions of data flows and in the request for rehearing that would have been your time to say oh well if that's what you understand the claim to require well the code reference has it right there i don't know that we wouldn't that that would have been proper again given the limits on what we were what we were committed to do at the time in front of the board with the board consider that to be new evidence or new arguments we certainly would have made those  arguments you make in your request and the substance of argument substance their argument to the board was that you gave us a new claim construction nobody saw this coming give us a chance let us put in evidence arguments directed to the  show you where the elements of this new claim construction are if you're going to maintain that claim construction what made you think that it would be improper to put that in the request for me hearing to put your honor to put like or wherever it is in the reference lying well again we were operating under the rules of the board which are very strict certainly at the time of the oral hearing that they would not allow any new evidence or new any new arguments by the parties so we thought the proper procedur written decision as to that that ability of any patent claim challenged by the petition and how do we determine how do we determine when any patent claim challenged by the petitioner is we look to other parts of the statute section three twelve of the statute identifies the requirements for the petition and in the petition to requires that the challenger identify each claim challenge it's a two stage process right and we have the petition age and then we have the trial system so yes your prefer referencing us a section about the first stage but the final written decision is in the context of the second stage and then in three eighteen a i believe that the premise of that provision begins with something like if in i instituted then the board shall write a final written decision on every claim challenged and in the context of stage two in the context of that provision why isn't it reasonable to say that it's least one of the challenge claims so at that point if the p t o makes that determination and and exercise discretion to institute the i p r then we have to determine what what were the any what was any patent claim challenged by the petitioner and as to that there's a likelihood they will prevail as to at least one challenge claim and the board institutes the i p r then the requirement of three three eight hundred days clear that they must issue a final written decision the board must  any point claimed challenged by the motion or not be one of just stepping back from a moment you know i know if you want to really zero in on a hyper textual treatment but why why would there be logic in that outcome of this hypothetical like just us the logic of the outcome is that by addressing in the final written decision all the claims challenged by the petitioner we have the certainty of one track that what we end up with here is some claims instituted some claims in the final or the sit and some claims not so in this situation for example will be going back to the district court with some claims having a stop will some claims having no it's doubtful and that what is challenge properly at that point in time and if the board decides that the petitioner didn't meet the threshold in order to institute then it hasn't been properly challenged in for the most part therefore it the exactly what was supposed to be for stone i think that was the hope but this is sort of the result of a petition or fouling a petition that doesn't adequately address all claims and so i think the system works fine if the petitioner is really truly able to challenge all claims and when they're not able to really truly challenge all the claims you do get these results where it's sort of a mixed bag of things and so the appropriate way to handle it would be don't file the i p r petition there's no requirement that somebody excuse of infringement has to file an i p r it's obviously become extremely common but in a case like this where sometimes where there is good arguments and others that there aren't then the the resolution would be let's just deal with all of only some of the claims can be dealt with and others can't well maybe the board will decide that it's a better use of its time and resources which are limited and which faced you know tight deadlines to get these done to say petitioner you've only made out of cases a half of these claims we're just going to deny is not to get it right but wish it stood we're still limited by the language of the statute which says that that the that there is review for any challenge claims and so whether the attacked actually is fulfilled in the language of the like well i think then if we would be left again going back to the board of the first instance to decide whether on these facts it wanted to institute where it could only institute some crimes but not all crimes if you want to do otherwise and of with  so i'm not it's not clear to me based on the argument whether petitioners continuing to argue for a new construction different from the construction in the institution decision which they had argued for in their in their briefs aqui for the reason set forth in our brief would oppose that there is no basis to raise a brand new construction appeal that hadn't been proposed below it is substantively different they're attempting to remove the word executing from the construction so th some minor little tweak or variation that's removed the procedural argument you're raising and let's just assume that they would be very happy with the construction of the board announced in the institution  that the construction the court ultimately reach was the right one it pointed to the language in the specifications for that specific limitation which was the visualizer in that that's what if that's what relied on in reaching out instruction object oriented language is outside the scope of a data manipulation language then there hasn't been a showing for any of the claims that they're invalid and so you need to reverse the other kinds aren't  languages whether there's imbedded sequel or not are outside the scope of the data manipulation languages used these claims so and so as to all those claims that have been invalidated by the board those that should be reversed and those claims should stand and i would be happy to submit a letter to the court afterward i don't think or claims have to get re examined and some basic sciences and send us your view on that because we haven't in three zero four is such about resolving that question ordered addressing and resolving that question so the question was what claims were found to really be connected to a substantial question of patentability and then resolution of that question many many times by the office and has you know come up that at various points in litigation that read that the patent office the board has to find a reasonable likelihood in or if there's a reasonable likelihood some go in and in this case claims to eleven to sixteen the board you know in this court should not address that question but the board had ample reason to close the gate to eleven to sixteen because of things such as not point properly specifically enough to the prior art and construing means limitations to get to structure and complement specification so those claims are were far different then claims one in three to ten that the bird did let into the realm of ip are through the gate and the parties hotly contested those claims which resulted and wisely so in the final decision by the board and that's what these parties are now arguing about an appeal the merits of those claims and no where i'm trying to figure can spend a few years before the office plus an appeal here and whatever other petitions you want but you can't go to the district court and everyone seems to agree that you can go back question is whether you think that congress had intended and expected that the agency would chop i p r petitions and half so that it would only go forward on the merits on half of a patent and then throw back the other half of the patent at the district court so that in effect you would have a cation in two different forms were you think that congress really expected require the patent court to institute i p r's it is that my question is more what the you in the agency you think the agent that congress contemplated this outcome that this was their stop having these proceedings if we need to catch up it's better to not have them so there was wide reaching discretion for the agency about instituting part are some or not instituting  many in order for us to try to complete these it challenging proceedings within a year and congress was very interested that one the petition shows a reasonable likelihood and two that the proceeding could be done in the p tap could handle it of what we were getting hundreds and you know upwards over thousands of these you know the last couple of years so sure but that really is just but the question is is there something you can point to that congress expected that outcome but it's permitted by the statute i think actions because of what's happening in the office are taking a different position and that it isn't quite working out  go ahead that the initiating statute thirty five u s c three fourteen has enough breath to permit the agency to construe it the way it has our construction und chevron has been a permissible construction to promulgated rules which are consistent with cases of this court such as st jude dominion dealer and cuozzo that we have authority and our institution decisions are not party really expected is it your view that e p a due process there are some expectations and requirements for the agency in an instance like that to some out reopen the record perhaps in a very limited way but nevertheless provide both parties a meaningful opportunity to explain their case under this very fresh new claim construction thank you your honor the board's rehearing rule permits any party and then specifically looking at thirty seven c f r section forty two point i'm familiar with this rule that the party in every rejiggering request should shout when the rule is very clear on what should be the meat and the rehearing request that the party and it's miss apprehended which i think goes to that sequence of events were overlooked which make it to some missed evidence at what the rehearing request rule is of a very good like pretty appeal rule that if the board did something that was misapprehended if it misapprehend to something or overlook something a party has a clear regulatory chance and you know people should take advantage of this role if they truly think that something maybe popped up or was overlooked so i think recognize is a new grounds of rejection a new grounds of an patent villany certainly you wouldn't say yes they get to do that and that's the end of the game and the patent owners out of luck right directly are very comfortable agreeing with me that the agency would give the patent owner or the applicant in that in an instance like that an opportunity to go back and try to put on a case for patentability in pattern ability and based on a brand new client construct and so my question to you is in a situation like that should the petitioner be given an opportunity thinks about the scope of a given client and what's the answer to that forty two point seven one the absolutely takes care of that situation because the board my argument to the board would be that you know under the board you must a my claim construction the other parties claim construction any reasonable claim construction here or here is what because i've been advocating and you know maybe there's some stoppel or something and that i've been saying you get to re state your claim to structure it were appeal that what was done alone was just wrong claim construction it was only reasonable so i see two outs as to that and then maybe a third but one would be directly request rehearing and two would be appealed that it was an unreasonable claim construction right but they don't have the third option to also argue even if you disagree with my renewed third possibility that we go in the quiver and that is that the agency head has authority under thirty seven c f r one point one eight one two one eight three to superintend the office or grant petitions in extraordinary circumstances if i were the aggrieved person on the other side whenever i would i would be researching and  hing a petition along that line to maybe reopen it but if it does sound like an extraordinary circumstance where justice requires that something be done as a third possibility i'd get back to i think my top item to pursue would be a request for rehearing my next item would be an appeal to this court and then maybe do all three or four do the petition before appealing or something but a petition to the agency had or to the board it's been delegated to the administrative patent judge and there may be a way to stop i think what's critical is to stop the appeal clock and possibly get some better communication between the parties in the board but i would also say that sex so what about the position that when the argument is that the claim kris traction and and now i want to point to a different part of reference or it may be my secondary reference for example in an obvious th combination how do i do that how do i get the opportunity to do that when the when initially the claim the board said the clay construction is one thing and now it says it's something else and the final decision remake my argument including pointing to evidence already of record i mean i would have no problem of laying all that out and saying that the construction that the board applied here's my answer to it with evidence of record my construction already misapprehended you should retreat and go to my construction but i think it in the sense of it's a new construction not positive by either party then there could be a door opening but that would be the the rehearing request would be a great vehicle for that that the door was opened by the board with this new claim construction i think or do  misapprehended and you overlook other evidence that relates to this claim construction so i could see a reasonable rehearing request being made given those factual predicates but if the decision on the rare he that would be part of the agency's action subject to appeal i would hope that the board i think the board has a fair amount not a lot a long period of time to address it but i would hope that you know between the three eight pj's they would try to dot all the i's and cross all the t's that what is now being requested is fully addressed because maybe it just might lead to rel right and i'm still frustrated by your request rehearing didn't do more say more in response to the alternative construction the board adopted and explained why even under that clique of corruption if that's the playing field and this is why the art of record still renders this claim obvious and i bet i get your honor i think with limited by the rules of the board at that point what we were allowed to say the evidence and arguments would be considered you arguments we thought the better procedure was to ask for permission to ha new construction the playing field at least that's that's the position you have is here and that's the position you have then under you know looking at this claim in a new light is the board that was your time to step forward and say ok  this is what you really think the claim needs now and this is why even that claim is no which is what we would have done had the board granted i read hearing request i didn't want to bake into the rehearing request itself basically grant our own rehearing request by having the board consider everything we put into the single paper without the proper procedure was asked for permission to submit the evidence and the arguments directed instruction and we also in but for get in the real requests of the rest of the board to undo the claim destruction so that the patent office only decides where issues of i don't this isn't as to claim forty four and then i think i heard my my friend from the donor agree that perhaps in that situation the best thing for the board to do is just deny deny institution and if the board makes the assessment at the outset that that that sufficient showing is not made as to all the challenge claims that maybe the decision should just be a threshold no and we're not going to institute the i p r that would be more consistent with the legislative history and the statutory construction and would give us the certainty in district court that we're looking for but also lead to more streamlined petitions less kitchen sink type petition to your point i mean we do think the legislative intent is clear and it's clear in the statute itself when section three eighteen and it says any patent claim challenged by the petitioner we think that very clearly means the claims that the that the petitioner elected to challenge in the petition and that's where that's what the board's final written decision must address particular statutory section they are saying that that our rule that allows partial institution goes to section three twelve that they have discretion to whether to institute there really is no p t o rule the rule of regulation directed to three eighteen itself and even if there were we don't believe it's due any deference because contrary to the to the clear the statutory is to me that your position in some ways is predicated on the idea that if one claim gets granted i granted authority to set up standards and procedures for conducting these i p r proceedings and they've done that and they've done that through a rule by saying we're only going to actually review on the merits of those claims that we have found that it's more likely than not th and regulations for the conduct of the at the ark but they can't then that discretion to the extent they have it does not extend so far as violate the statute we think what they have done here in allowing challenges to fewer th all in allowing institutions or issuing final written decisions that don't address all of the challenge claims that's directly contrary to three eighteen to the discretion does not extend that far argue with mr baker i know i would probably not argue with mr pickwick i mean i can understand my rebuttal time really should be on the cross appeal i do have some comments on their appeal i'd be happy to make it or however you prefer if it really is a new construction why should they be given that chance so first i think they could have addressed this in re hearing there was nothing that stopped them from saying you know you've overlooked these parts in these references it we're not talking about an instance where you know they could find new art or things like that i mean they were limited by what prior art they were looking at with it most be an issue of explaining to the board why what they pointed to for the original construction also applies under the new construction if we look at what they're relying on in their brief now they're attempting to say a message flow is the same as a data flow because message because if you look in the briefs and look at what they're actually relying what they're saying they would really be presenting to the board it doesn't show what they say that it shows and so it really even if they've been a little big but i guess they are saying they'd like to go back to their expert and have their expert explain why perhaps processing steps which i think might be more of an issue but i think they're still limited by what those references actually show and i don't think they've pointed to anything that would make any difference and let's not forget the remedy that they're asking for here really is to propose entirely new construction that is not the construction from the original institution it's a new in different construction but the question i think yes father if we were there firm the board's construction when then they should have an opportunity know present under that construction so there are comment about the kind destruction and what they're trying to argue i don't think that's what they're trying to argue what they're saying is that if we were to affirm the claim destruction the the opportunities and present evidence on that claim construction right so as to as to that issue again they had the opportunity to move for a rehearing and i think it it i'll also point out they argued in the argument leading up to the final decision that it would have been perfectly appropriate for the board to construe claims for the very first time in final decision which presents the same issues as a change construction either way you're left in a situation where the party should have to do their best to the board to issue brand new constructions and a final response if you otherwise end up in a situation where we kind of keep going back and keep going back i mean if they if they wanted to have a process with a mark when hearing followed by a trial that's what would happen in a district court that when you have the limited time period for an i p o to get done it has to be done a little bit differently and to to keep going back anytime there's a modification to an original claim construction and we're not talking about something that's completely out of left field or you know that wasn't found in the speci to me it's fair to say that the war really came up with that on its i think that's true but that i don't think ultimately it's so terribly different that it requires going through the process