or we begin the arguments this morning we have the pleasure of movie admission of some of our  yes thank you judge like a motion this morning i'd like to move the admission of deep economy on who is a member of the bar and in good standing with the highest court of california preventions and i'm satisfied that you possesses the necessary qualifications i've known this kind of fun for three years now won't when i interviewed her at a cafe in san mateo and i had a hunch that she would make an excellent clerk and she has proven me right all the way through she's been a truly excellent clerk with a very strong analytical mind and testicle writer saved me from a lot mistakes and also has just really excellent judgment for a young person and not to mention a sparkling personality i strongly urge that the court grant my motion good standing with the highest or illinois i have knowledge of her credentials and i'm satisfied that she possesses the necessary qualifications and it's been an enormous pleasure to have the three of you the four of you personality sort of decision by the board one is left wanting with justification for the combination and what is particularly troubling about this decision is the change of direction that board took from what the nephew argued smith the nephew argued three reason to combine gordon with none of those reasons were adopted by the board instead the board went its own way and this court is it is not i understand in the case of magnum a well answer on a dental and reluctant to deviate from the statute that requires that the grounds that support the ground for as obviousness be set forth in the petition and the ex post facto attempt by smith the nephew's counsel to justify the board's decision demonstrates that this ground was not in the original petition the ground that the they now say supports the reason that the board said it was preferred is because of the mere order of the presentation of the ways th could make the suit rancor in question there were they say that there were two ways of doing it and because one was listed st the board called that primary and then smith the nephew then means that must mean preferred none of that was in any of the petition of the petition with the nephew nor was it in the declaration of smith the nephews experts and because of that the board did deviate from what was originally set forth in  tition putting that aside for now the board is the board decision it's also insufficient because it does not explain the reasons why one option would be preferred over another and for that reason alone this case must be reversed there is no explanation of why would one be in that board say that it referenced the two alternatives either used those teachings to demonstrate that the that you could do it this way but the board did not use those findings to say that you would in fact do it this way and i and again that i married option is obvious to try well that's how smith the nephew characterizes that there are limited options and i believe that the supreme court did discuss the option of obvious to try or equate the two finite options with options to obvious to try and guess are but if you were given limited options you still have to show that there's a reason a market the man why would you choose this option over the other when gordon itself teaches the best way it knows how to do which is to make these things separate there must be a reason why you would do that especially in view of the testimony of mr recharge we explained that's not the way he would do it and that concerns me is that the board did not even address that argument he said that it would be not his way to do it because of the issues with flashing weak spots what it's there are problems associated with making this device into one piece which is why gordon west and most of the references are shown shown that the pin is actually separate from the anchor body and inserted later and that is exley exactly what mr recharges just that one should do and for that reason additionally because the board did not even address mr richard who's not our expert who's met the nephews expert that is an admission by their technical expert as to how he would do it he wouldn't do it the way that wes teaches to make it casting into one piece because of the challenges of casting and he details all of those challenges in his deposition testimony which is completely absent from the board's decision and so from my perspective your honor there are two reasons  true be reversed the st is that it deviates from the original ground that's myth and if you offered they didn't say that there are only two ways to do it i think if they had said that we could have said more we could have said things like do i employee out of the same material via a casting process and testimony like your position is because the board didn't say i didn't rely on it it cannot be substantial evidence to support the board's analysis i would also motivation based arguments and the argument that is now being supported by the board is that there are limited options or it was obvious to try and to switch from three reasons to do it three but that motivation based the nd that it was a simple design choice of rd would make it stronger the board did not cite or even discuss any of those reasons to combine and of course when you have to combine references even though they set forth all these different elements there still must be reason to combine as your honor said in black and decker there even if there is a suggestion there must be a reason why and especially when one considers the problems associated with making it one piece as with the nephew expert argues then there must be more than just the option the conclusory statement that it is preferred and at best we're left to guessed well the board made that finding that casting  device would be preferred right the board did make the finding that casting would be in preferred correct and that was could be a motivation to do it right that was well there were three motivations to address that and that's a motivation to do well suing that is because i've heard if it's obvious to try whether it's preferred there are three reasons that are set forth in war in the petition the board it's all sites those three reasons why and it doesn't say which of the three seasons if the board said well we think it would be preferred because it's up it's better for f d a approval we think it would be better because it was a simple design choice we think it would be better because it was stronger not enough to say it's i don't believe still on your honor under d s s minders one thing is they the board read the reference to say that there was a primary environment and there was an alternative bought primary environment was to cast the whole device and then after that sentence the reference that alternatively you could make that and separately from the rest of the device and so the board ready understood the juxtaposition of those two i'm this clos with the word alternatively does just that the lead disclosed in bottom end casting was the preferred environment and that's a fact finding in terms of how the board chose to read that reference isnt it it is a fact finding in how the board chose to read the reference however it did with the nephew nor did any of its experts say the reason why i think we think it preferred is because it's the st listed option and fact when one looks at west one is confronted with the fact that all the drawings show the pin separate from the anchor body and that smith the nephews on expert indicates that that's not the way he would do it in fact he says the opposite he says the st way he would do it would be to create the anchor body and insert the pin separately to avoid the challenges because rejection where gordon teaches every single imitation of a clam except whether the ns are and of roll with the body is that right correct ok but then your honor there's still must be a reason that the st search or opening a nd you're opening a rd theater and it has all those facts but it doesn't have if you look at the evidence that was offered by smith the nephew in the petition if you look at what's meant the nephew's own expert said then there must be least an explanation as to why those should be discounted were taught that you basis teaches that those are can and should be counter arguments there should be reasons why  the path and if we had an opportunity to understand which of the three reasons that's what the nephew offered that the board picked we would be here arguing that they were conclusory because if one looks at those reasons they are in fact conclusory so all that we're le here with is the notion that because you say this is listed st and then it's listed nd that that's definitely the way to do it but you can't discount the testimony who made it very clear that that's not how he would do it and that in itself was not a ground that's what the nephew experts stood up to argue or support they never sent because it's just as far as it should be this way and i think if we had discovered that was going to be the basis for the testimony we would have argued or our experts would have argued unsupported that's not the preferred to do it way to do it because of the challenges faced with casting because just simply because it's mentioned doesn't give you  reason to combine those references and there was testimony from our own experts explaining why this is a sophisticated nuanced technology and that the challenges of making a cross been in one piece with the anchor body is very difficult and i realize that i'm on borrowed time so i'm going to i guess i'll handle the rest in response and thank you mr speed they write west it's a fairly simple technology and they found that that passage where it says that the in accordance with the president and you can cast everything in one piece alternatively you can do it as two step process where you cast him separately you drill a hole in the body and then you insert the board reason up was acting reasonably in its interpretation of that section as disclosing casting as preferred while our thoughts focuses primarily just on the one sentence where the where the board reached its conclusion and said that west because west teaches it as preferred an obvious it ignores the scope and content of the prior art section where the board expressly walks through its interpretation of the reference and says that the west is clearly it in the trial i put the burden on the pack in order to prove that arguments related to it clearly different reference called the else a reference that wasn't even instituted somehow didn't apply to the layer reference omega morals are very different case from this one here we think it's completely clear from the images themselves there's no brake line between the various components of this form of the single piece of the board again we would submit was reasonable its interpretation of the reference on claim ten aren't actually tapped and they're just inserted into a hole that's actually a little bit bigger than they are and then they're expanded to wedge in the holes that they can come out and all three of those references describe their anchors as having hue local threads so those are ac has an environment that is clearly secure waiting here and it would be we we would agree it's improper to exclude from the construction of philip right that environment the question is whether or not we need to be the limit if you like a  right versus a red river based on its structure not on some potential function or applications that ride on the suture opening issue for claim ten and this again is wholly independent and only needs to be reached if the court were to reverse on the hillock affright issue the board took our claim for structural procedural thing and simplified it but they did simplified in a way that materially altered any just offer to construction suture opening it affirmatively agrees with us that the claims are directed to the nd environment and then the final written decision comes out on the board walks through the claim for such an analysis and simplifies the construction but does not take that simplify brief the addresses the want to forfeiture or the board of course they have not raised any of these arguments before the board and ordinarily you would have to raise all arguments including constitutional ones before the board i just want to highlight one of their types of arguments to suggest how that could be raised before the board for example they say that the panel was biased and that is an argument that routinely goes before the adjudicator so if you review those types of arguments are certainly ones that are routinely adjudicated by agencies by lower courts and those at least and other constitutional claims should have presented and presented in this case and they were not what about read the allegedly retroactive that the cation of the new statute is that something that the board can entertain so the board can entertain those arguments and i have sort of three quick responses of course there's been he says when the board has department of treasury made clear two things about that st the question is whether or not the board can provide some type of release and of course the board or the director had serious constitutional issues and with course think interparty review is constitutional but the director had serious constitutional issues with some an act of congress he wouldn't have to instead interparty is her view in the st place that is completely discretionary and something to director and to not the nd part is even if the board can't fully address all aspects of a constitutional issue allergan makes clear that as long as long as you can address the threshold issues preceding a constitutional issue those constitutional issue should be raised for the boy so for example here one of the claims is that this upsets the expectation interests of patent owners and the board certainly can talk about what types of expectation interests apply when a pattern or st applies for their patent the board can talk about the differences between enter parties review an expert a reexamination or enter parties reexamination  the board can also talk about whether there have really been any changes to the substantive conditions of patentability or whether these are really simply procedural changes those are all matters that are traditionally within the board expertise and they can build a record on that they can have something that is suitable for this court's decision to affirm or reverse order vacating the remainder of that there are no further questions on the constitutional issues  i think your honor i would like to address the issue about whether this was in fact a start with regard to claim eleven and i would like to address the fact that this was a ground that was set forth in the petition so that the nephew for the st time now says that the reason why the board determined it was preferred is because the board equated simple with preferred that is it's a simple design choice as opposed to preferred when they saw those st that's what going to manufacture the gore nickered using a casting process that conclusory casting was well known and accepted technique for creating medical devices by september two thousand and five using this well known t technique it would have been a simple design choice so we've moved from perfect primary to being the support for preferred to now simple design choice your honor that's precisely the reason why at a minimum this decision must be remanded for further explanation as to why the board chose the path that it did so this court has an opportunity to review the basis because if one looks at that explanation it is supported by fact an argument and analysis and i would submit that those decisions think that it's simply can a simple design choice those types of descriptions that this that the prior art teaches all of this doesn't give you reason why those are separate elements that exist in the prior art but there still must be a reason why and when i lastly draw this court to mr richards testimony who said why would you make putting the cross been a secondary operation that's their testimony we never heard anything from the board about that testimony because cross pins represent a challenge if you want them to be small you got this larger anchor body then you got this small cross  now it's not impossible but might make your life easier on the design it might make it stronger possible now why would it be why would cross pens be a challenge as i mentioned they're very small typically on an anchor and those are a little bit harder to still not impossible so then you would insert the cross been after you cast the part that's one way to do it yes and is that how you would do it as a design engineer i would st i would select that as my st choice and i