me begin by being the admission of angela oliver who is a member of the bar and is in good standing with the highest courts of texas have knowledge of her credentials and satisfied more than satisfied that she possesses the women's basketball team and secondly just let me say that you know i've said this before what mixed blessings we have been circuit court judges because we hire the best and the brightest  least clerks like angela far exceed our wildest expectations and then when they prove themselves to be the kind of person we'd love to be with us permanently they leave so it's bittersweet the sweet sweeter for me is that angela after much lobbying and her husband have decided at least for the time being to remain in washington so we're really happy about that angela has been just a super clerk she came to me from judge hill strap and a texas and before that she had been a student of one of my former clerks state retailer at s m u so we've got a lot of history and common ground and it's just been a delight to not the board the chief judge of the board did what she did she was either one following what she felt she was compelled to do under their regulations or was she sitting board for another decision the agency was not think it's the latter i would have thought you would said the latter like all she was doing she's not compelled to do anything but she was trying to ascertain what our  asserted by you against other defendants and other venues these two patents in these rigs emanations have not been asserted by us against anyone i and they enjoy a covenant not to sue we believe that their continued you think that might have some collateral that on your assertion other patents either against your friend here or against other people we believe these two patents have value because we can assert them against other parties not against p p g but against other parties but we we strongly believe that even if these two patents are canceled in the reexamination there would not be an issue precludes of effect against the the five other  you still might have a legal battle on that is that correct and i think so yes i just want to know is that one of your concerns just to allay any of those potential issues with respect to other related ha that for which there are decades of precedent as to what it means exactly or even looking backward respectively or was a non presidential opinion of the perhaps it was incomplete and not saying therefore the underlying decision of the board is also taken but that has all so simple issue and it comes down to two sentences really and at appendix page twelve that is the board's reasoning that because the board's decision is vacated the status of the claims in this interparty is reexamination proceeding is the status of the have what we are seeking is a reversal of the board's denial of our rule forty one point three petitions are rule forty one point three petitions sought from the chief judge to  newborn figures out with the proper procedure would be or do we go further you're asking for more than that you're asking for us to tell the board to tell the p t a you know what to do to the board as part of  we look at the d c circuit cases that apply the same point elation of the mandate of this court we don't see any further agency proceeding judging from the agency has to do something even if they were to do what you think they should have done something hanging out there where there is of an agency action i don't know enough about the rules here that if the examiner is or isn't work as a call them he never that if it's never review no whatever it's automatically ended what the most normal one it is the publication of a reexamination certificate on the merits but they clearly say that you can vacate the reexamination proceeding or terminate the reexamination proceeding and in these circumstance because it's not going to happen and i'm p r for example where there is no examiner action left hand the hanging act there's only the board's decision right i could see of a control of the final written decision being interpreted incorrectly as as the agency did here to say oh well they didn't also vague the supreme the federal circuit did not also vacate the institution decision so the institution decision stands and we can go forward and that's a radiophone and the other d c circuit cases we are not seeking a modification of the mandates by inserting the reinstatement of the right of appeal notice as the agency of p p d have done but perhaps to more that for the trial court or agency to do there was no remit and therefore it follows that there was nothing more that this court but you're saying it with by necessity there was something more you do with the agency because somebody had to do something with th vacate all or part of a judgment border agency decision when it is being eliminated but not replaced with a contrary judgment order of this court so to bring back the right of appeal notice rejections would be replacing th we argued that this court retain jurisdiction and we urge the court to go ahead and decide that appeal and we did that and we quoted to the court numerous instances in which balance part in this parallel litigation that involves continuations of the same patents that are up here was arguing to the district court that the board's decision supports the balut of the which reviewing the circumstances that had before it because our concern is that as we have argued in the earlier case the supreme court in the cardinal chemical case recognized that even vacated point is you didn't want this bad boy decision coming on to another case is fair enough but why are we here fighting over whether or not the reexamine should an issue well we  think that we obviously felt that the board's decision was wrong it's been vacated we think we're entitled to the patent offices decision to keep saying that these claims are cancelled to prevent any future do you want to be able to rely on it with respect to other parents we've heard we want to be able to use it to rebut any argument that we hear from the other side that somehow this vacated board decision still has some persuasive value can stop you know i'd like to get into that your honor because i think this is really the key to the whole the whole case and if i may see what we see in the briefing as the  case the supreme court case and that line of cases including the alvarez vs smith case and the meckling barge case which applied it to agency actions in each of those cases the supreme court after finding that the case had become moot vacated the underlying decision and remanded to the lord tribunals with instructions to dismiss and that was the established practice that was announced first in the month saying where case and when in which there was only one and one lower case decision so all the court had to do in that case once it found there was a lack of jurisdiction was to dismiss that underline decision what's necessary is to decide in the particular case where you have an administrative agency that makes a decision and then you have an administrative board that reviews that the situation and then a federal court that reviews administrative board and meanwhile you have all sorts of interactions and covenants not to sue and i thought we were else which affect the relationship between the parties cancelling closings this thing goes beyond the relationship between the parties there are all sorts of the on resolve conflicts that we are getting into in trying to discern the cannot unilaterally take action to deprive a court of jurisdiction and in doing so he race a judgment that was adverse to it what they're doing is they're trying to erase the decision that was the final rejection of the patent office which became the only decision of the patent office once the board's decision what do you think is the ready for the position i think oracle also goes further to say and they also get punished they're also going to you not believe the court has the power at this point to alter that mandate by including it in what the informant effect would be a really new remand to the board with that the court continue to keep the case and decided even after this covenant and in recent court of that we pointed out numerous occasions where valspar was using the board's decision as a weapon in the parallel district court litigation so that was our primary requests we ended that by saying at our are the relief least favorable to us is that the org that this court has the the court the court didn't do it they didn't ask for it and now here we are a year after if they had a problem with the court's mandate they should have filed a request for rehearing they should have ask reap formant they didn't do that they come in a year later now and want you to change your mandate i don't see how anyone can say the patent office did not follow the mandate this court issued and when i read the court's opinion in the choir of kill it relies on banco and ben corp said you cannot buy unilateral action he raced the effect of an adverse no remand no instructions to dismiss the ritz emanations no where was not where do we find that in the court's opinion we find out in the same paragraph that begins with the court's observation that the one responsible for removing this court's jurisdiction and that comes right out of bank court so when i read the court's decision and i think that's when the patent office read the court's decision it says this is exactly that i think we cannot oversimplify the influences on this result well i understand i understand your point your honor but we're guided by supreme court precedent here that's pretty clear and everybody knew what it was the court knew what it was about scar knew what it was if they wanted to remain with instructions to dismiss it should have asked for it if that's what the court intended that's what the court should have ordered the bancorp case has a very the president you've been drawing our attention there was no longer a controversy and this court because this is an article article three court that requires a case or controversy the patent office the in the patent office was not noted and that the the the d c circuit case that mr pollution cites the radiophone case held that explicitly the and this court and consumer on whether the board was right or wrong they chose a different path they should suffer the consequences of that choice and the bancorp case when you choose that path you can't even race an adverse decision sure as i say your honor we we certainly acknowledge that the court had that authority and i think it's sad even more explicitly and i didn't think forty one which was our request our motion for file a reply letter when they submitted the cover that for some reason didn't make it into the joint appendix but as part of this court's appeal after we said it very explicitly that that you know munching issue we work our main point was we really wanted the case decided and they pulled the rug out from under us with the problem we acknowledged the last sentence of documentary you should at least do that that was our least favorable relief we were asking for we put squarely in front of the court exactly the procedure that is required under the munson where line of cases the court did not do that the court they didn't ask the court to do it and the court didn't do it what's a patent office supposed to do read a record read every querent into the board's mandate that the court administrative cases and in that case you have the national labor relations board sitting atop an a l j the a l j issued a decision dismissing this sand's unfair labor practices case six says that they were doing this procedure to further the traditional doctrine purpose of the doctrine quote clearing the path for future related geisha of the issues so it would be it's impossible to square that rationale of the d c circuit with the with the idea that just making vacating the board and all rb decision does not affected then the a l j decision there is there is other cases that we cite like beethoven dot com versus the librarian of congress d c circuit case that only vacates the librarians decision the librarian sits atop of the cart the copyright arbitration royalty panel we ought to reaffirm examiners then we would have to listen we say that in our opinion yes i think that would be a reversal because you were replacing the the vacated board decision that was favorable to patentability with a contrary judgment of this