for boston scientific versus  you your honor it's the several of the issues that that i would touch on in our appeal are our of the same as the issues that we've already mentioned so i won't a court's findings with respect to the combination of didn't address any of that didn't address the fact that you have devices that are being used for different applications what the board focused on the point nearly with respect to these limitations is the fact that  has an opening bias that the way the clip is designed it's naturally open and when it's loaded into the apply or that's what causes the legs to come together but if it's not being  legs are being compressed by the wire it naturally opens the purported replacement or modification that would be made to that device is to replace that opening bias which requires no additional structure that's just the way the clip is designed with these with a spring from the sack your claim and the board the stance of the reason to do that that was was given by cooke is well a person of ordinary skill would want to open the clip wider but there is no there is no corroboration no documentary support for that there was no articulated identification of even a need to open the clip wider  and you're saying well they didn't have other record evidence but this is not in l inventor testimony they say it is sworn testimony under oath from an expert that the board credited why isn't that enough to be s two problems or one that the explanation is internally inconsistent if the spring from sac ear and the opening bias of the clip were truly interchangeable they would open to the same extent and if you look at both the institution decision and the final written decision the boards said was looking at that argument that when we need to open the clip wider as well we boston scientific the pet owner actually has a point that  because opening bias is sufficient to open the clip and they did go the board's decision does go back and forth a little bit of this they say well it is sufficient then they talk about interchangeability and then they come back and say that and talk about this idea that maybe you would do it because we open the clip wider but it's inconsistent if the opening bias and the spring were truly interchangeable they would open the clip to the same extent and they're and they're not interchangeable or the opening bias doesn't include any additional of structure you just have that you just have the clip adding a spring now adds a structure so you have you have much more complication another part that's going to break and go wrong for what purpose if if there is no reason why a person of skill would add that extra component and none was given to open the clip to the same extent which is what you would have to have for interchangeability and there is no discussion of that in the board's determination the board from with respect to claim eight that that that sacked or didn't disclose that limitation the proximal tensile force limitation but with respect to claim twenty the board held that were found determined that the really didn't i'm not quite sure that's what the board said it seemed like the board in with respect to clean twenty and this particular grounding combination just forgot that that included the proximal tensile force limitation because they didn't address it well maybe you should address the issue st i mean is there really anything that is in debate in terms of what miss craven would be here to to talk about we don't believe so your honor we think this is much to do ado about nothing cook a board some help erred by not considering other grounds for its same rooming right the board should have considered those grounds but it did not and so those would need to be reminded but it's not there or if they do they find one conclusion a finding interchangeability is a recognized reason to combine under this court's law and precedent there is no requirement as boston contends that there be a performance deficiency in the prior art for there to be a reason to combine and here there are there is substantial evidence to support the board's finding a reason to combine including that testimony from dr nick well if they're if they're interchangeable but one works a lot better than the other one for the purpose intended  wouldn't you wouldn't you still need to show why someone would would make the product less functional they're interchangeable from the perspective that the person or skill would have no problem in putting them together and for functional purposes their two are interchangeable and that you could use one of the other to open the clip arms cut the you could use a mercedes to drive or you can use a kit to drive that doesn't mean that it would jump from a mercedes to a kid and that would be up right but they're still interchangeable and they're both cars in getting here and there and so it depends on what you're trying to do use it for i suppose if you're driving a in a race perhaps the the luxury car would be better than the k he he explained that it would work and it would actually work better to use the spring number and zakir than them the one engine suka and the board was entitled to rely on his testimony it's reasonable my reasonable evidence to support the conclusion that the board reached on obviousness the nd argument the boston raises in its appeal concerns claim eight and claim twenty cook agrees that there is a conflict in the board's decision with respect to claims eight and claim twenty but we contend correct your honor that would be appropriate action if you put it whichever way you decide claim eight also decide and twenty vice versa i agree with that we talked about the missions and we talked about the c r a d argument with respect to o t seven and i want to is a ball and socket connection it describes how those openings are a little bit smaller for the in the day i'm in the diameter of the opening between the flanges are little bit smaller than the ball that is that enables you have a tight fit that's not going to detach unintentionally and that those landers will open laterally when pull on them and it's consistent with the figures to the figures show arrows that point in an axial direction consistent with a ball and socket that connects in this manner as opposed to from side to side we may come across appeal is that the words finding granting in the motion to amend should have been held over two claims five thousand eight hundred and seventeen and nineteen which were claims that survived the challenge i well i think the same principles that apply in any proceeding should apply and the board's proceeding and so in the context of when the court receives receives a decision on appeal where there's inconsistent jury verdict on independent dependent claims that is sent back a resolution claims it essentially claims fifty eight million one hundred and seventy one thousand or unpalatable but in the context of the motion to amend and those are invalid claims should be removed if the court doesn't take action we're going to have a situation where boston is going to assert those claims even though they've in congress lee effectively been held invalid as obvious by the board and the contest the motion to amend and then point to the a stop a provision of the patent act governing in our party's review and saying that we can't challenge it even though there's a an undecided issue i think at this point in time there hasn't been a decision dealing with this exact situation but yes certainly we will argue that there won't be a self image it's an unresolved we also don't think there would be an issue procedurally with the court deciding this issue because this is not a matter of a change in the institution decision this was an issue that boston brought obviates motion to amend and that and cook rightfully raise new grounds in response to the motion to amend and the board is entitled to i but the last point there to we didn't intervene on that issue and i'm not sure i quite understand i think it sounds like it's arguments they made for the amended claims that are narrower than the original claims but those grounds were not in the petition so i think a stoppel what apply to them but of course that's for the district court to decide when they get back there maybe there is another collateral estoppel or another type of a stop that would apply since the neuro claims were found on pan about by the board and it was argued in litigated and won but it's really hard to say without knowing the exact facts and i haven't looked at them both here not so sure if we're not taking a position thought through because our argument in opposition was that it would be improper under serota for the board to have to have found on packed claims didn't address in our we didn't address in our papers and i haven't prepared to as i would if i were going to address it here today on a on a stoplight those are i think issues that are being debated both in this court and in in the district courts as well as when to stop with lies and when it doesn't because it could turn on the or asserted or could have been asserting the concept that that's right and i but i thought your position on this point was that they are not a lot of what the warrant can do once the i p r is instituted with respect to the grounds and claims that are in the petition it was at a factual matter this combination that they're talking about was not in the petition and it was proper for the board since it was in the petition not to find claims that were challenged unpatentable that's that would be the impropriety very briefly with respect to the interchangeability point i would i would point to the torah case which we cited for the proposition that interchangeability requires components to be so similar in functional an expert said that adding a spring to show sukkot would complicate the device and that the opening bias of shin as you go was sufficient so certainly adding to adding a structural component that's not present in the original isn't that's that's more structure that's not interchangeability you're not replacing they're not so much replacing the opening bias they're talking about adding something to it let me of how the clamp and the clamp apply or engage with one another and the language is configured to open laterally open is not being used as a verb there it's modifying configured and it's telling you exactly what can explain that i think the last point that i was going to make was with respect to the the issue we just discussed which i believe that is clearly covered by state the sarong the dental case honor you're here to get across that's correct the i'll start in the same order that boston went and which is starting with the issue of whether or not the board's grant or the motion to amend the finding and had ability there should apply to the original claims that correspond and boston points to the surround her decision and that's not on point in that case the board modified  filed and the petitioner opposed it the board of modified those grounds the petitioner had raised in opposing it and then denied the motion to amend the petitioner later on appeal argued that some of the holdings some of the findings that the board had made and the denial of a motion to amend should be applied to the original claims that's not the situation we have here this was a motion to amend raised by boston the grounds for race by cook the board and modify those grounds and there's a finding of unpaid ability with respect to the same claims essentially that we deal with the fact that you could have asserted those in the petition and you didn't that's just it's it's the procedure of the board that they allow for the motion to amend claims in that it hasn't we have we're not asking for the the court to change the grounds in the petition but in fact when you're asked to add grounds i don't think we have to add grounds which the judgment of unpatched ability as to the claims would have to carry over or not th understood your honor i won't move on to the sack your reference boston points to the column ten provision one thing that boston has never addressed not before the i p r not here in the showing that this is the most natural reading but even if you don't have the admissions there's not substantial evidence to support cost in theory given what's accurate self