what we want the court to do here is to revise eliminate the portion of the judgment below that and his judgment as to the count against the reason for this is because o'mara should not be trademark office as being the prior invention of another what happened in this case the count identical to one of the claims the count was i want to want to shaffer's claims and one of them well given that you've admitted that the claim that is identical word to word or your health is untenable subject matter and judgment should be granted against it kind of difficult for me to appreciate why the board committed some sort of fatal error in granting judgment on the count well here's here's the problem your honor in this in the context of written description what the board would be deciding is that there was no basis in the originally filed patent application for the claim to appear there in the first place and in the board's rules rule to a one for example lack of written description is tagged as a threshold issue which goes to whether a party has stand this type of threshold issue is to be decided generally speaking as the court pointed out in the berman of the house a case before any determination on the merits of priority interferences are primarily priority or is that in the in the particular situation we have here yes the account is identical to one of them or is claims granted but the count does not have to be identical to anybody's claims this is so called phantom count practice here's here's the problem iran or the way that the judgement is worded is the same wording as is used in the judgement on priority and if you look at the cases collected in the appendix starting at appendix one thousand you will see where the board has entered judgment finding lack of written description and in some cases is entered judgment as to the count but in another case it says enter judgment not asked account for example the very first case the very first case the issue versus mukerjee at appendix one zero zero one you will see that it is ordered that move produce claims do not comply with the written patent containing these claims this is the it's ordered that this is a you this is a final decision which is appeal there is nothing in here about judgment as to the count you go later in the appendix and to to be fair and this is part of the problem the board in identical circumstances from what we can tell and or to judgment as to the count against people whose claims lacked written description so we're left with a not enter judgment as of account but you can't they entered the clearly under judgement here whether or not these claims corresponded exactly with the cavs we don't know and you never represented to us either way you know and they've entered the reason is as going back to the fundamental point the recent most of the judgement as to the count is a judgment that the cow represents such represents the prior invention of another i know counsel for shaffer will argue that's not so and the board seems to have settled on appendix a zero zero one four that's not so but the problem is here that it is so and if you look at these decisions the board is the problem here is put in a position that you will be foreclosed from something you think you're entitled to do and would be free to do if the language were changed from cow that is correct you are right now what is it that about this case that decides the ultimate stop will affect in your view what is about that decision in this case that forecloses you for making the argument that you're making now starting at line three the board says and this is in response to an argument from on morrow that the board's decision has the effect of finding priority of invention against a more on an invention  you are concerned that it might well i'm afraid that in this particular case we actually have some indication as the court will know we have identified other related cases one of which is an interference presently pending in the patent and trademark office number one of the five seven five three that case stayed pending the decision of the of the court in this case in that case the board proposed to hold that home or it was not entitled to certain other claims in the morris patents because those claims of a moral or unpatentable over the count which is exactly the consequence that happens when a judgment is entered as count on the basis of priority of invention if a moron to not have standing in this in the interference before the court now which is which are more suggestive is clearly the case then judgement as to the count should not of had such in the stop with fact and were would be happy to supplement the record to demonstrate this to court if necessary this is not an academic point your honor we also have a situation where given the nature of the board's practice on entry a bad first judgment the board didn't even get to this point they just said adverse judgment you lose adverse judgments are opaque in the sense that the if the judgment is entered as to the count and the board never actually decided schafer motion one it just said this is a request for adverse judgment me brief very thoroughly while we believe that the board was legally in factually wrong in that case under administrative procedure hearing decision the board says we agree the board has not conceded priority of invention well i understand that your honor because given what happened in the downstream case relating to the very  with the very same judge rendering the decision i i i i read that and i wish i could trust that i'm afraid that will we have here is a situation where judgments are construed for what the judgments say this is not this is this is not being treated as an issue of collateral estoppel by the patent trademark office and if you look at rule one twenty seven and it's and it's recitation of the precludes the fact of the judgment we have a problem here where the judgment is ok a judgment is entered as to the count all we're asking the court to do is to tell the board don't enter judgment as to the count the board has been comfortable in cases like this your hon or in the past where are there was a lack of standing for no written description and a one zero zero three early indication as to why the board does it different ways i mean i know you provide  different rulings but is there any indication as to why the board does one way want to face another way to the other i think the legal answer to that your honor is beats me i really don't know and this is the problem when you have arbitrary and capricious under the administrative side well it might be if we were confident that the two different routes and substantially different consequences downstream now you say there's this this extra record proceeding that gives you some concern that the board may attach that kind of significance to this and that may end up being being used against you by virtue of the difference between the use of the term claim account but but i'm having a hard time seeing that that's clearly what the board invasions well the problem is that as a practical matter entering to administer the count it's exactly that you'll hear the opposite but the problem is is that i'm afraid this derives from considerable experience in the matter of your honor the point is that the form of the judgment is the same judgment rendered in situations where prop were judgment as to priority is rendered the board never said to you long is unintended and not within the scope board's authority in this case i'm kind of running out of time but of course court is the judge of that so if there are any more quotes all i think your honour's miso please the court the issue here your honour's is that that what what more is actually asking for is an extraordinary and from our review of the authorities really unprecedented request here to reform what is you know way arbitrary capricious against a more of the the there's no there's nothing in the record to suggest that for example in the chu and jerry interference that the issue that really is being presented on this appeal was even under consideration so they're simply searching through different interference results for different phrasings of the judgement and then attaching to that some significance in terms of the a stop the scope of the judge what are you saying that there's no significance to the choice of either the word count or claim there isn't a yes i mean here the board was confronted with this very question and very carefully noted that judgments interferences are entered pursuant to rule one twenty seven they said that really is the only event in the going back to the chu in affairs their judgment was entered pursuant to one twenty seven and there they had a apparently written description problem as was the case here and there was judgment as to the as to the claims i think part of the order point to the claim that's correct your honor but as to the judgment itself your honor is correct judgment was entered pursuant to rule one twenty seven now to make sure that i'm clear on this there are actually two issues can play here with regard to judgment i want to be absolutely clear on what they are we're speaking here first and foremost about the issue of judgment under one twenty seven and what the consequences of that are and we submit proposition we submit not i mean it's in the same way for example in an infringement action if a defendant prevails on a solid tax ground of non infringement you get a judgment of not infringement that doesn't mean that the plaintiffs can show up a week later in this case  why why couldn't the board of the understandable why couldn't the board could the board why could the board not have issued a judgment saying there's been a concession of lack of support written description support that means no standing and says we had our judgment pursuant to one twenty seven dismissing the interference there's no interference because there aren't competing claims so the the  nature of the judgment that can be entered under one twenty seven is very clear it's just and one twenty seven x simply provides what you think you could enter that could have a judge i say it's not it's not it's not contemplated by the rule sort of want want want to just to address the standing as you for just a minute because there are some some issue here in the briefing i'd like to address which is this is not an issue of for example constitutional article three stand this is clearly an issue of article one and the the the board's authority to promulgated rules that set out what a party can do in the course of an interference the standing question here that has been cast as a threshold issue is a standing issue that deprives the opponent of proceeding in the interference and challenging our evidence of priority it is not a standing issue in the sense of constitutional ownership issues as to the right to even be in the proceeding and that's it's important and it's there for an important reason the standing issues that the fact that these have been called threshold issues are the party that copy the standing in threshold issues are there so that parties in their posture are not permitted to copy claims and use the interference process as a pretext for a contested opposition proceeding i guess you fear it was the over  it's not speculative this was the very thing that was flagged in the declaration cision as the concern the other sort of just this never ending issue here in this case in this interference they were given the opportunity to present new chronologically they received our motion for lack of written description they at that point their response was we want to file a responsive motion which is their opportunity to bring something else into play and that's a fundamental issue from a stop perspective from a policy perspective the board's rules in this court's decision are clear that if you've got an issue bring it in here we've got the machinery all cranked up here we've got a p j medley familiar with the issues in this  let's get all the issues on the table and that's why the scope of the stoppel extends beyond the reasons for judgment and extinguishes lots of things downstream and that was one of the bases for it that's were so and in this case your honour's they actually had the opportunity to present a new claim the very claim that as i understand their request for relief here the very claim that if this court from its their relief they could then file with the patent office on an ex parte that basis the very same claim all the issues into play we are in this case we schaefer are in this case my client has spent a lot of money to to prepare and respond to the interference that they start it is hardly unfair or unreasonable to say if there are issues let's bring them to the fore now from the perspective of judicial economy as well as fairness to my client all of those policies are reflected in why a scalpel consequences are what they are and here are the board knew poor knew what a moral was intending to do and so it took great pains actually in fashioning this judgment to ensure that that the language of the judgment fully reflects what the stop the provisions are now obviously other three independent bases for a firm it's in this case which is the one twenty seven b three issue where they're there and mission that their claims lacked written description support is the answer to comment one forty i guess when this rule was being promulgated become it was said one comment seeks clarification whether the a stop o in one twenty seven a applies to a party that prevails on priority but is held to have unpalatable claims then the answer is a party that loses on patentability from involved claim will receive an adverse judgment that is lose on patentability that cannot claim and consequently will be a stop not necessarily be extrapolated though you're out of the best my comments are that is i don't see the authority for the board to do that in the rules and i don't see the authority for the board to issue essentially a partial we're limited  office require no further action dispose of the claim why doesn't one twenty seven expressly authorize the board to enter judgment against particular claims and not only just always against the claim it clearly only stipulated as to the claims and so your argument as i understood it was well there's no authority for what they're asking for and i'm saying i don't know one twenty seven i may not know it as well as you do but it seems to clearly indicate the ability to enter judgment on a claim so you can see only issue i'm deciding isn't whether a stopping should attach or not but whether the judgment should be written as a judgment against a count or a judgment against a claim i'm just questioning whether you're correct that one twenty seven only authorizes the board to enter judgment on account that doesn't seem consistent with the language but i want to give you an opportunity to let me know your thoughts on that if you're out of the think that's the issue well leave the issue is they are there clearly looking for sort of proactive narrowing of what the consequences of the judgment would be now you know if your honor i will say as a matter of sort of first honor your honor i believe you're correct that the language says what it says that average judgment it could be against a claim you know here it was not and here there are many many reasons why it was not and again just to focus on that on the concession sheen of the three i think this is a very important component that underpins the board's decision in this case they did they perec leak construed in applied their rules i would note that in the reply briefing in this case or more  count as to the statutory construction issue and worse position and we disagree with this but their position to start out with is that the words rules don't define what the term contested subject matter means now that concession you know itself we submit really should be fatal on this question of whether the board properly applied at one twenty seven b three you know after all the board is given wide latitude as this court noted in the sullivan case unless it's plainly erroneous or inconsistent with the regulation now where they concede in their view that the rules do not define the term contested subject matter we submit that the board was perfectly within its broad range of discretion to conclude that in this case where they had conceded  patentability of claim language identical to the count that the contested subject matter of rule one twenty seven b three is is in fact the concession of the count and c let me as you watch it we finished answering a question yes  honor i would and i would because that the order in this case was entered after consideration and deliberation of the very issue that's before this worked there's nothing that i'm aware of that would say that in the that the issue was even considered let alone any discussion of what the stop consequences would be downstream it says not just of the form of the order to begin leaving aside the downstream stoppel consequences i mean it appears obviously we don't know but at least i don't know about the two case but it says maki g s claims of set or do not comply with the written description requirement of thirty five u s c one twelve first paragraph and then based upon that determination and we have the same situation here and acknowledgement that they don't comply the board and heard the order that it did in ship now why would is if in error for the board to have entered the same language in an order in this case so two answers one is there is an important distinction between this case and the true case which is designed to stay in the two case there was a determination that the party lacked written description here that were actually never reached that issue there was a concession right in the concession actually has a very important consequence on word doesn't dispute that if the concession in fact occurred that the war was her judgment based on that how is that different from what happened in shoe we're assuming there was a determination of lack of respect for what's the difference well for i think there's a difference in the way the rules are applied is sort of the the maybe the dogmatic answer to your honor's question i mean the rules actually there are there is just a separate pathway provided in the rules and you know the board is a creature of the rules i don't mean that many but it's the same but but it's they're the the rules actually provide for different mechanisms in the event of a concession and so that's that's one distinction point to your honor's your next question now the other thing that i think is important here is i'm not aware of any of any sort of motion for reconsideration that actually focused the the board in that shoe interference on the issue that this court was focused on and that's why i submit that had this after all seeing all the back and forth between the parties issued a judgment that would create the appearance of being less than a full judgment under one twenty seven essay because of sort of the intrinsic evidence of the process the deliberative process that led judgment what i would be fearful of is that is that all more a in downstream prosecution would rely on that that's sort of the intrinsic evidence that underlies the phrasing of the judgment to say well that judgment was a partial judgment and that's really sort of the point here that's what they're asking for is a partial judgment in that there's no basis for that law rule so at least with respect to the first part of the our answer your position would be if you'd been inviting here you would have said don't concede lack of written description simply don't oppose the motion and allow a determination of lack of description to be made against you and then you're in the saying you're out of the three and you're into  if you regard to as being a precedent that the board would be inclined i think choosing the issue with being president on this point is that the the very issue that they are focused on there's no there's nothing that i'm aware of that shows that that i three bases and they said they were not going to oppose but instead what they did was they conceded one and then argued opposition of two what they did in this case runners is actually very clear they were afraid that the board would actually reach the merits of our written description saying that as the board seems to have said and schaefer seems to argue that role one twenty seven a requires entry a judge in this county simply untrue i think judge more racist point another  better example of the kind of judgment should have been entered is actually a one zero zero three to one zero zero four and zero six zero seven those are even clearer and the space the shaffer's motion one say first right why should we waste a time lord and schaefer in dealing with this issue if we had simply not opposed what would the board of done the board would have said you didn't oppose this motion that's tantamount to whatever happened in this case so it would it's kind of immaterial and it also encourages waste of the administrat shaper in fact got more than they asked for they asked for judgment on one motion one judgment on motion one would have found that a more lax standing and would have resulted in the same judgment as was issued in the and the a dang case which is the only one zero zero three zero one zero zero or there would have been no judgment us carol lack of standing it just goes to a judgement as the particular claims an issue and nothing else and that's what we respectfully suggest also the notion that this court should tell the board to give a partial judgment as really kind of silly first of all the administrative procedure act gives that reviewing court the right to correct administrative decisions number one and number two all the more as asking for is the judgment that should have been rendered and it's not a partial judge and social judgment of the circumstances of the case thank you thank you we think