the real problem for you that in the other cases the p t had found that you had at least specifically preserve this argument with regard to a dependent claim not to end it and it claims it gave you the benefit of the dell there but here you didn't do that at all i mean it does seem to me somewhat strange that we're going to have one set of patents to be good and one set of patents not to be good that are covered by the same combinations but these i that a lot of claims that are a lot of different combinations and it doesn't seem to be an abuse of discretion for the p to have to ask you to show your work it's not their job to dig through these references and figure out what combination that you then didn't make in your briefing even though the packet was disputing the presence of this element i think the problem here is the board accepted these claims charts aboard accepted these grounds to go forward with trial and found that there was a reasonable likelihood of prevailing and accepted this evidence accepted evidence of talked about the senate except if you have precisely what do you need it instituted trial it reviewed this an attorney about a claim charge well this is this is a statement in a claim chart that cites to documentary evidence about where the printing is done right ok but so that this is this is this is your petition and you're by are you saying that except it you just meaning you filed it and then they instituted but the institution decision doesn't say we agree that this claim chart discloses these elements the institution does not say that we agree but it does say that we have reviewed the evidence and we at least agree that the evidence that you have in your petition across that threshold of reasonable likelihood of prevailing now we would expect if the board were to change its mind on the back and to say well we've seen reportable evidence we've seen an attack on the teachings you we've seen a discussion of this another town language and we give more weight to that evidence and that's not what happened where in your preview did you argue that another term language for apogee my understanding from the briefing was  g for that ground well that supports position your honor what we said with respect to that feature is that you could implemented in either location on the premise that the board had already reviewed this there's only two possible places then use it at another location you didn't actually state to the even in another town limitation argue that it's expressly disclosed in the at g prior art and that's basically what the board is saying that you did not remind  understood and i want to know if you can contest this i understood that in your later briefing after institution you didn't refer back to this express disclosure and instead you said to the board that the apogee reference doesn't in effect teach away from making this much what we said is that there is no limitation as to where it should be of those two possible points again with the reading you say well the reference apogee says that you could put the printer and other town why do you say that well again because we looked at the record and what the board had done to date and accepting statements in the trial record about another town and specific mapping again to claim three which talks about where the printer is that didn't seem to be in dispute the dispute seemed to be some of the arguments  that the patent owner made about where some of the boxes were and it depended on clean construction constructions that were rejected there were only two possible places for this and we said well as between the two and we had declaration evidence on this point you time you were well aware of what this teaching at apogee at the time that's what i think the expert was referencing when he was discussing it could be in one of two places and there's no limitation on where it would be simply up to the system you're implementing where you want it to be the focus of this briefing was not the location of the printing the focus of this briefing had to do with the priority status of apogee and real time communications this where something is  the patent owner provided attorney argument about about that point and we had evidence in the record in the claim charts explicitly refuting back and so we were resting on a high enough the patentee argued it didn't teach the remote location you say that's a turning argument but you know what evidence you can point to to prove the absence of a teaching and he says that these references don't teach this claim and that you didn't respond to that argument even though you had up to share response you didn't respond to pat his claim it wasn't taught but you think none the less because you had alleged it was taught in the petition earlier that that somehow covers you in the role the trial grounds are based on apogee print drive print drive is mentioned repeatedly not only in the claim charts themselves but in the in the very introductory description of these crowns there's no reason to talk about the printer i'm if we're only relying on apogee for creating of the plate ready file that was all over the record here there was no attack on the print dr there was no attack of pages six through seven of apogee all we got in response from the patent owner was attacking the references individually as opposed to the combination so when we said that the combination teaches you could do it either one way or referencing again back to the trial grounds that were instituted this is what we were arguing not not in the abstract we were this is the ground the board accept and as we we requested rehearing and have this language specifically given the claim charts the board accepted it in one case and didn't accept the second million in the same case in the claim charts in the petition but not in your substantive brief which is what the board is looking at once the petitions been instituted the board doesn't use the petition as the basis for then resolving the case that uses the substantive briefs of the part and you didn't have any claim charts that had this language in it no substantive reasons i hate to tell you this but this seems like large attorney error that is the reason the board came out the way it did and now you want me to say it was abuse of discretion for them not to forgive the s what they were look what their their view is made in the separate case they in the civically called out the fact that you argued that for dependent claim and they i think they somewhat chastise you for not arguing it to the dependent claims i think it's precisely because that in brief i think i just read that i p r decision yesterday it seems to me that you're not correctly remembering what they said own looking at pages eight through nine when they talk about independently in town this is j twenty this is where the board has found that happened she teaches the exact feature that it stated that it was missing from the other cases this was not separately raised in the briefing this was directly referencing the claim charge of the petition the distinction that the board is making here is that they didn't like the fact that the description was in a cell that didn't discuss the remote printing and at the discussion of the print drive needed to actually be reviewed by looking at apogee and you have a singular graphic spanning two pages were citing two pages of an eight page brochure this wasn't a requirement for the board to dig through the record this decision that's that's contrary to the ones on appeal here w record your question is are the same board judges involved in i p r decision at twenty five thirty one as well as yours yes your honor the same judges of all the judge that author all three were hearing decisions of the same  and we have the same specification the same question of the prior art on the same claim term across related cases that were consolidated briefed at the same time and argued at the same time i think i think that the question i guess i have for you is hate the board chastised you in this i p r for not having more running a race so if you that much is clear but then went ahead and granted rehearing and resolved it i really say it's an abuse of discretion for them not to be willing to grant rehearing in a different second instance of the same problem can i say that's an abuse of discretion you know i mean we get we get cases all the time with fact findings that are completely at odds with each other and we have to affirm them because of a very deferential standard or her view substantial evidence or clear error even though the fact findings are the exact opposite on the same set of facts here even if you have which i'm not sure you do that even if you have two identical gough's mistakes errors in not having identified something in your brief the board forgave in one set mean under abuse of discretion citation in both cases the same citation being in a claim chart relative to a remote printer and the board deciding in one that it can accept that evidence and review it and then the other that it doesn't have to because of a hyper technicality this argument was in the same claim chart in the same way technicality the hyper technicality they cite in the second instance is your failure to have raised this in your briefing well that i would disagree with that i think the hyper technicality that they cite is that the cells don't match up with the out of town statement that that's what they're saying because that's why they accepted it in one and didn't accept it and the other in the one that they granted they said ok the out of town is actually specifically that what we call acts are to is specifically mapped to this remote printing teaching and in the other cases it's there but it's in a cell above the actual remote printing language and we don't have to read that to understand that even though you the time these petitions were drafted was not allowed in the claim charts so you have to read those claim charts together with the text that comes before them because we're prohibited from saying modify this this is obvious it just has to be insights so when you read the introduction to the claim charts which references the print driver right after it talks about reading the plate ready fine there's no reason to talk about the print drive unless you're talking about the printing operation and where it goes that was page seven of apogee paint si create the file so it is an abuse of discretion to read that with with one hand over one eye and say well ok we see where the file is being created but the print dr stuff we were don't consider that to secondary reference fact so well that was also a mistake that the board made we rely on the primary reference for the architecture of your three points there's the user there's the central point and there's the printer and what we said is if you modify that architecture the only thing that was missing w the plate ready file so if you take the plate ready file and you plug it into that primary reference it would send it to the remote printer so that was another issue we raised in the rehearing is that the board was wrong on how the the ground was formulated in the first instance we don't even need that teaching of x or to what we need it is the architecture of dorfman which sends the file to the printer we take the format of apogee and we plug it into that system and that's where you see in the rehearing decision twenty five thirty four where they say we agree with you dorfman and apogee don't even need to be modified you just plug in the file format so on top of the fact that they were just inconsistent with board did not abuse its discretion in determining that there was not an argument made in the petition or the reply that would justify the rehearing and second if for whatever reason this court decides that the port did abuse its discretion that it had substantial evidence and finding that the petitioner had not met its burden under a preponderance of the evidence standard in order to satisfy thirty five u s c section one hundred three a in showing th should be combined with jevons or dorfman in a way to teach and here's a distinction that's important claims one through three of the three four nine patent require a combination that shows that the generation of a plate ready file a curse at the central service facility not just remote from the printer that actually appears in flames ten through fourteen and the distinction there is that the petitioner in no way showed a motivation to combine the references to establish that the generation of the plant print ready file occurred at the central services facility in the seven eight eight petition for example that limitation doesn't appear at all and what limitation does  instead is a limitation that the play generation the generation of the play ready file occur at the printing facility and with respect to claims ten through fourteen of the three four nine patent will note in the briefing that the petition be generated at the central services facility and then it didn't cite didn't quote that at all all that it is cite to it the reason why the board's decisions are frances and it is again that the the master of its ip arse and decided to file for i p r and it combined the references in the manner that it decided and it made the arguments that it decided to make and it took the shotgun approach and then it hopes later that one of the arguments that it was lucky enough that the court the board in its discretion reviewed claim twelve again and said wait a minute maybe there is something that we mess under this bootstrapping argument that if claim twelve is invalid under obviousness that in turn playing tennis also obvious it didn't find that argument or corollary made anywhere in the seven i know or the seven nine one because that argument doesn't exist there is no comparative claim twelth and there are distinction type of analysis where each limitation has to be proven to exist in the combination of the references petitioner only used apogee x or two to show that the repeating process was to occur actually the creation of the plate ready file it doesn't make the argument in either petition seven nine zero or seven one one that apogee should be used to show remote printing that argument just simply doesn't exist and with respect to the seventy eight i p r it it does actually make that argument within the claimed chart itself that it included in the brief and it had every opportunity to make that same argument in seven i know in seven and one but it argument that it's making a second in a request for a rehearing it is the petitioners obligation to point out the exact place where it had already made that argument in order for the court to the board to take that up on rehearing and then third is that it's not the board's obligation to comb through every reference if we look through these petitions there are extensive claim charts there are extensive references cited huge  two of them and said it didn't for the other two because they didn't specifically argue that it's important not make that initial mistake had understood that actually was relevant to the remote facility wouldn't they would it have made sense for them to a stay on top of the tourney mistake on the other side and then not looking at a reference that was actually made in at least two of the concurrently argued i p r so why isn't it arbitrary for the board not to look at th context because the board properly applied thirty seven c f r searching forty two point seven one three where it identified that the party making the rehearing request sure i get that but they overlooked something you know  for the other instead of why isn't it error for the border not to have looked at this because they were aware of it just the fact that it happened over a hearing is that the difference here because the problem seems to me and that argument is that the board knowledge that maybe didn't say it made it error but it certainly overlook something or one set of the i p r's and if this court finds that there is an abuse of discretion in not considering that argument on the board fine and the court that the board did not have substantial evidence in looking at the declarations of the petitioner and the respondent which you did look at those declarations of the experts and it came to the conclusion that the expert actually for the petitioner had argued i think what i'm trying to get at is practically speaking if i'm the board judge and i have all these i p r is being argued to me and i'm aware that for once  apogee provides the remote printing thing and even though you may not have specific the other side may not have specifically argued it in its briefing it's in the claim charts and the like assume all this is true why wouldn't it be in a piece of discretion not to apply after all the claims when i was aware it should apply to them the reason why is that in claims one through three of the three four nine lb it requires that the you've specifically mentioned it here i'll take it but even though it's all part of the same kind of case basically consolidate it's i'm not going to play it here because you didn't write it out word for word wouldn't that be an abuse of discretion we  obligation to make these arguments the dish in a sufficient governs the scope of the whole proceeding but it it doesn't get incorporated into their briefs they still have an obligation in the brief right and in this case the patents pressley disputed the element in both specific quote that it found was done to its liking and won and with respect to claim three two seven six which is the more or less same exact showing declined to review that same evidence i know that this is a hyper technical rule that you can call hyper technical but isn't the board entitled to adopt these kind of rules not when you're looking at it in the context of the titian these arguments were made outside of the door to the wall that said all of your these and it's your job to show your work it's not their job to figure it out that's what they're doing here what's an abuse of discretion about that well but it's not our job to question work that was already accepted by the board the trial is about the instituted grounds when you start straying away from those grounds you get in trouble but saying it's not sometimes we get cases where a particular argument is made in the petition but then later on line a different tact is taken by the rule no your honor i'm saying is that the trial grounds of the starting point and to your point about petitioners coming in and trying to change the channel you have to go back in again and look at what the starting point was you can't say reference a and b is obvious and then change it  petitioner reply because the the trial is about a and b and so when that evidence is accepted on the front and the board is saying well you should have reminded us and that is the hyper technicality in that that  opportunity to address all of these issues