if you may please the court in this case the board committed numerous errors that requires decision to be reversed or at a minimum vacated this one you like to focus on the three most egregious errors the first is that the only evidence the board complication yes this is a combination case whether we there is conceded that all the elements are found in the prior art but the problem is is that there is no reason to combine those that has been proven before the board and the reason that some of that with respect to dr mimi and i understand that your focus is on his cross examination but the board walk through the cross examination and and conclude that your comments are what you were relying on at the transcript of that cross examination the board said the word dismissed that cross examination you said it was taken out of context but that's clearly wrong because if you go back and actually read the transcript in course we did it in each of the cases i specifically take dr beaman to the very paragraph in his declaration where he opines the person skilled in art would make these combinations and i asked him then referring specifically to those paragraphs in his declaration would do and then if he was almost surprised he says oh well i'm not sure that that's what i would do and he changes his opinion right there on the spot he said i wouldn't take the horizontal structure from modification well i agree that that's where this case got all turned around backwards because what the appellate argues is that you would not take the entire structure over with all its technicalities and all of its elements for example s there's the distance channel which is a metal horizontal structure that has a channel in it that supports and affix this to the glass we don't say what what actually the petitioner says is that you would take that entire channel over to ray and that's how they get the horizontal stringer that they need we say just the opposite we say a person of skill in the art in this is what dr dicks are expert testified to you wouldn't take the entire structure over you would take the group that a person that would look at that horizontal stringer in evie eight and see that there's a groove that supports an affixes to the glass well there's already a horizontal structure in right they don't need a horizontal structure what they would have done would modify the existing horizontal structure and re to include a groove and a gasket to support and secure the glass and so that the borgata absolutely backwards the patent owner is arguing that a person still in the art would not take the entire structure over they would take only the groovin they would actually modified as you said a person skill not would do they would actually modify the existing structure in record but the problem is is that they that they disagree with that because that doesn't get them to the structural or the hor because they have to bring the whole physical structure over from evie age or you or mcgregor in order to meet the limitation but that's not what the law requires and that's not what the motivation that mr beeman espouses requires mr beam and dr beaman he said that the motivation to combine these references is that for aviation you would want to secure the glass we don't need to bring over a new metal horizontal member to secure the glass we've already gone through that all you need is to put a groove in the existing structure to secure the glass so that motivation doesn't work with you he says well you would want to bring over the metal structure so that you can use clips and attach tiles we're going to do is  would bring the roof from the fir and that and that's just it that they say that that's what you would do but they're wrong because you already have a structure in raif that can support and affix to the glass all it needs is a and petitioner doesn't even argue that those horizontal structures are sufficient to meet that limitation that's why they turned to the other argument if you mean that you aren't there is another plausible conclusion you know addition to the conclusion from wrong by by the actual right that's what you're saying there's another way of doing this that's possible not not just another way that's plausible but there's a different way and not just a different way and it's that's another conclusion that your conclusion and let's say let's assume that your conclusion is reasonable we have two reasonable possible conclusions here ok so how does that square reasonable because it's like if you have a claim that requires a car with an automatic sliding door and they look at the prior art and they say oh there's part of a here that has a sliding door with a window into it and the door in the claim doesn't have a window in it well we would bring out exciting door over because now we have a window well that doesn't make sense it's not reasonable they wouldn't bring the whole door over they would just bring the window over and that's what they've done here they just need the groove but they want to bring the well once again you are to remember it rate has the vertical frames that already has the exact same groove in the vertical frame in rate for and so afraid self sat it can be combined with other  the other reason is that great says you want to minimize the number of components and so forth and to bring over that other structure you're going to have to bring over additional components which makes it more complex more time consuming to manufacture or do bickel to manufacture more time be combined with beecher's of other systems what your honor i respectfully disagree what the precise language in right says it is compatible with other existing partition systems and so what that means is that if you have an existing partition system you can take with the race system and you can build off of that and it's compatible it does not say that it is that you can take parts of an existing system and use it to modify rate there is and that's not in rate anywhere it just says it's compatible with meaning it can be used next to or in conjunction do with the board's fractional finding that one of ordinary skill on the art would have would have  recognized that you could import these channels from the b h b h for example in order to improve the structure and support and r company well let's let's assume let's assume that it did but even then if you even if you could get to ok there's a motivation to make the combination of that motivation that commission is weak at very best because it was  in the cross examination the motivations to combine are not directly linked there so there's a logical disconnect and then you get to the secondary considerations of non obviousness which the board entirely dismissed making severe errors of law in fact for example assume that you lost everything here a complete loss you still want to have an a serious remit yes your honor we do and how do you get there well your honor the the non instituted claims continued to be claims on appeal here today they rise or fall with claim one the independent claims that were not instituted are not in this case and do not rise or fall with claim one they have additional limitations that aren't addressed in this case the rest of those points are valid which is why they were have to decide some of it and not decide others unless we find that there's no prejudicial error and in doing that and so so that's my problem with your saying you want to go ahead and do these but then go back into the others i mean it seems to me it's an all or nothing dependent claims there are currently on appeal invalidated that would not be prejudicial to the validity of the non institute of claims and this court in two cases in the med tronic case at two thousand eight well to seventy six nine hundred ninety two decided last month and also in the board ocean tax case at two thousand eight hundred w l two nine seven two nine seven nine one two eight also decided last month and if you win there that means if you have a chance on the other machine to the ground know your id if if you look closely in the brief it says regardless of what happens in this appeal we would like a remand now we believe that that the honor because it's not that we're asking for an advisory opinion on the claims that were known instituted but it's a natural consequence that this court's ruling on claim one this in the current appeal well obviously inform this and i i can't speak for the other judges and i'm not even sure what my view of it is but assuming that we thought that it was an all or nothing proposition you either get every man right now and then the current decision is  outside the statutory authority of the that people have with right or wrong can we do that kind of partial decisionmaking i haven't looked at that particular question so but i think that in this case i think that in the supplemental briefing both sides were consistent that we have gone a long way in looking at the validity of claim one and as we've seen in this case we're going to it's not of cases like that before us and and two cases that that your friend on the other side cites both of those cases were situations in which the decision had already been rendered before s a s ever issued so and find those to be be different but in in all the other cases that we've had remaining we then go forward or we don't go forward and you know as contention or i assume that you would still want to attack the other claims on which there was no institution right that is correct so i mean so what you're saying is you want the best of both worlds you want us to affirm this decision and then you wouldn't be a stopped as to all those other claims if this this case has a unique forsee drool component where the patent is she was also in a room in a reissue at the moment where independent claim one and all of the non institute it claims stand rejected not only based on the grounds of the i p r but for independent reasons so we have this parallel proceeding that is that's all the more reason we should be issuing something if it turns out that it's really just an advisory opinion so i thought but i've only been on different  and the parties have come a long way and i understand judge of ali that that is that that is the situation in all cases but here there is only one independent claim if we can receive see a ruling from the federal circuit on where we the agency action finding and conclusions unless there we can conclude that there was no prejudicial error and they're acting outside their stance toward thore and how can we reach that conclusion it would just be on the basis of efficiency and looking at this case though good that for the basis of your argument that the reason we should take that approach is to render some form of advice to all these other proceedings we were we're not in the business  claims here that dirk agrees rise and fall with that independent claim and then when you go back to the p tab they are going to be able to have have a much more efficient for seating knowing the decision from this person of ordinary skill in the arts would have come to find you have three different grounds here you have wraith plus he age where you are creating an improved way of supporting the last these are modules that you move in and out to different position and so you having an improved way to support the glass is the evidence and that was the ruling on that with you you have a system of holding tiles in a snap in arrangement and for supporting furniture where you can have a sliding mounting bracket and that that is something that a person of ordinary skill in the art would want in one of these movable systems and then you have in the macgregor system holding televisions and other high tech components and they have specially designed specially designed horizontal supports so you can this is a case where it's easy to visualize how you could take those particular components and incorporate them in a race but it isn't a requirement examination but why isn't that why he hasn't his declaration and adequate because he didn't actually address the fact that he would have to be modifications and well i don't think there's a requirement that you need to have  blueprint of how you would you know take a piece from one reference and put it into the other and what the modifications would be he was looking at the teaching of the references of the whole and that a person of ordinary skill of the arts would want to have that additional functionality in the race modular system and would be able to do incorporated these are you know it's a very simple technology of taking it horizontal structural components that is going to hold various kinds of components whether you're talking about you or evie age were greater and those references also teach how to use another bold type of connection between the horizontal in the vertical so i don't think there's a requirement that in an expert declaration you need to get to you know here are the exact modifications that we need to be made he was looking at the teaching of the reference as a whole and a person well so for example and in so so rate has a solid animal and it has a glass panel macgregor for example has a horizontal support that is holding televisions audio visual components different items that will be if you know that you can put it in different locations on on the wall so seeing a person of ordinary skill in the are looking at the language and rate of wanting to have you know various types of partition systems you know for example when you thirteen of rafe you can see how they have set up the room in this teaching you can set up the room differently you can move the door you can move the last looking at the grader he would say i want to have a television already of audio visual and it shows how somebody would do that in a modular system and so that is what he has as his motivation to combine of a person of ordinary skill in the are looking at one of these rooms would want to have that audio visual component when you're making the combination really you aren't limited to a cut and paste world or a blueprint world you're looking at the teaching as a whole but it is easy to visualize that you would take at a minimum one of the options you would take what it is in  does no appropriately you would look outside to look for something else just because it happens to exist but brief doesn't have a teaching of how you would you know snap in titles as you have in you or how you would have a sliding furniture mouths as you have in you or how you would mount the audiovisual and other high tech components as you have in the greater or in evie age you know when you have these walls that you're moving in and out rate does have the channels on the vertical s but that's it and the evidence that was provided and what the p t have found is that he b h provided an improved way of holding that glass so you had channels all the way around and as as my friend representing walls and moving them from point to point it's a more secure system so there are there is a clear motivation combined substantial evidence to support port the combinations in the case and i think that a question judge reno that you ask of if what dirk has a is a plausible way of making the combination and we don't disagree that that would be one plausible way what they say could be a possible way there are a lot of ways that a person of order still new york to make the combination the point is that it isn't just limited to what they have at a minimum somebody is going to take the wave of greater you can deviate teach holding those components in place at a minimum they would do that they would they would look at a lot of other using their their their skill and creativity to do that so this is the key to me at least  standard and you have various reasonable alternatives what the board came up with for the three tomba nations is definitely a reasonable alternative supported by substantial evidence in th the hearing it was a lengthy hearing we had on power point slides presented by dirt the testimony they were talking about and on my rebuttal i walked through that una and showed why it is that you know based on the neural questions that they were asking which was talking about a particular way of bodily incorporating where you change nothing in the race and you added something from uva for you added something from you or you added something from a greater than that that was the framing of the of the question if you are changing something everything you're just adding is is is he answers are made complete sense like no you wouldn't in the combination take what is in the grader and put it in the glass panel he was he was looking at additional functionality that you would have in that system i'm not going to have the glass i'm having a television there instead so i'm using you know the supporter how a person of ordinary school in new york would would modify it to have that so that's how you can deal with the section seven of six turning to the merits your honor noted that struck me as defamation why is it not you asked why is it not efficient because as how you would incorporate it well that's good point in this case because the claims require it to be incorporated and to be affixed and on the one hand the petitioner says well it wouldn't require any new parts but then on the other hand you have to incorporate new car parts as counsel just said you need nuts and bolts and brackets and so forth to do the affixing required to meet the claims and so they're trying to have a both ways saying well you wouldn't need new parts but then we have to have new parts to get the benefits and so that they're completely inconsistent council also talked about mcgregor and how you would import the course on a structure from gregor to hang accessories and components but when asked on what's going on cross examination dr beaman said actually i didn't focus on that particular part of great patent looks like you can handle accessories with of seventy seven and support bracket seventy seven and he also said i'd have to go back and look at it quite carefully about the excess report which i overlooked he didn't eat when he entered his pin he didn't even know or understand that rate already allows you to support the accessories and things that they say is a motivation to combine the director of the declaration is completely deficient and that was exposed in the cross examination and about whether to believe the declaration for the cross examination the court of claims held in the co op case quote we have emphasized the inherent superiority of testimony subject to cross examination to that given in  party situation and in that court in that case the court did exactly what we're asking here to find that the that the board erd in believing that that that the declaration which was written in the office of the attorney with review and advise and no cross examination over live testimony where he gave it in his own words where he was subject to the crucible of cross examination where we could really test the veracity of what he said and because they were didn't have the opportunity to observe his his demeanor and so forth during testimony when they were both made it on paper it's it's absolute error for them to credit the declaration over the cross examination testimony i see that of time of course has questions i'd be happy to respond no thank you thank you