after this argument to review the confidentiality designations in the joint appendix try to agree if there are portions as they certainly appear to us to be that do not now if they ever did need to confidentiality designations there appear to be whole filings in the p t o which you set out the proposed amendments and arguments that do not seem to need confidentiality designations and try to agree on what such material might be declassified if i can use that word and let us know in any way that you think is suitable and several legal overs but i'd like to focus my time today on the board's failure to provide the notice and chance to be heard required by the a p a on the reference that really was the centerpiece of their final written decision  and as we understand the claim it's going for solid so it can't be i want to correct but that doesn't speak to why can't be used as a possible basis for combining treatment of them however with respect to the one of three ground that was proposed was a combination of right and tree and in that discussion the board of the institution decision said that's a car as a liquid it is in the political to assault and the reason is pretty straight cannot let me let me just quote it because it seems to form you were entitled to rely on that has a sensually binding toward its position of factual proposition where ever that special high standards of law the case triggers for changing the court's mind in a preliminary injunction contacts in district court all those findings are quite express a structure at the institution stage that the board then switched in the final written decision was a problem because the parties have relied on the clinton struck this is that in that case is different though the parties relied on it but they also more changed that construction and the parties hadn't argued over it they didn't have notice that the board was going to change that instruction whereas here it seems to me that it might be different and that the party does it in this  took the board to the solution as given and to the extent came up in subsequent proceedings which it did we put in basically the same conclusory point of the board that we did not develop the record as we would have and that's the board motion to amend correct that is able to reply declaration on the motion to amend a law that's entirely what it was about and even they are to the extent it addresses this question of whether a reasonable formulator at the had reached the beginning and the reasoning he uses is exactly the same reasoning that the board use and it's institutional decision if you go into any more depth at frankly the motion to amend stay out of the reply he wasn't allowed to do any more depth part of the background for deciding whether there is motivation to combine keep them in this instance your honor and given how sick i was actually used it was not used as background are right when you read the final decision it's a card directly fea the same even if the board had not have that sentence that's actually said in a political wouldn't that be a problem under the recent jensen case argument is stronger because in a book the language was there but we would still have it and still make the argument that they ended up using secada as a primary reference when it wasn't a ground that was instituted i think that's quite different than john's on your honor and genzyme there was no reference at the institution stage to  papers that ended up getting injected into that case then the patent owner in his opposition to introduce those but then said you can't look at them and sort of dealing with them substantively and i think the court rightly said you had notice you brought them into the proceeding you were you could use them that's a very different context here here we have a finding at the beginning and in order to limit our presentation to the references that were instituted and so kind of exclude not once but twice and i want to and i want to  on the reasonable expectation of success question not a motivation of a viable option so it was a completely different issue than the issue on which the board seized on and use it in the final decision so even relying on the petition and i would argue that given the court's finding in the institution decision whatever the petition said about psychiatry has to be viewed in the life of what the board thought of it at the institutional stage but even if you look at the difference because in the reasonable expectation of success analysis not in a motivation to combine the key parts about psychiatry the most important thing is we would have put in an affirmative case if we had known surprised was a live issue the board itself identifies the type of analysis that we would have done if we had not to cause a live issue rather formula and it's solid for there was a quote in the alton reference the institute of reference in which that formulator that they were relying on mr often the doctor often says you can't his words gli right now is the decision by the patent trial on appeal dorton their determination to claim scituate three patent hannibal because they claimed no more than an obvious combination of two solid oral of two ingredients anough of a closing of that issue unless it were affirmatively reopen that no virus could rely on it yes i sure am so that particular passage i'm very familiar with and keep in mind that passage was major in the institution decision and basically the only focus at that time was the three grounds that petitioners had presented you've already discussed them one was one of the two into one of three conditions and if judge translation mentioned if you took that as a factual determination that's completely irrelevant by the time we had the actual trial if we had a robust record even one of the new viruses technical experts have a full opportunity or whatever occur pleadings are to put on their evidence the problem is that they go first after the institution decision and the question is what is it that reasonably means what they are supposed to put on affirmative evidence for because they'd or not at least you titled to another chance and so the stuff that they tried to do with after you came back and said  not that's not quite the opportunity so when they had their first opportunity after the institution decision keep in mind that also after within one month after institution two additional parties joined torrent one of them was at a texas one was milan they both accepted the chiba auton ground for un patentability but they also mentioned surprise well as other background references in their analysis it was months after that after there were depositions after patten owner had to provide their reply and had known it was i'm more than adequate opportunity or notice to know that psychiatry is one of many background references and  we believe that you have artists head plenty of opportunity to discuss why in any way that they wish to carry on even during the oral proceedings at the very beginning of their demonstratives they put in two slide was inappropriate because everybody knows that there are background references that are discussed during depositions as well as and papers and that background references have helped to add to the robustness of the case and if that wasn't the case we wouldn't have a trial at the institution decision would be the decision well let me ask you this you disagreed with whether the people have changed its mind let's just say they did let's say there really was a situation where they say something in the institution decision  they say something exact opposite in their final decision but the parties argue about this finding anyway i mean does law the case really apply because in just record i don't think it would and the reason why is because law the case doesn't applying to others an appeal someone feels the appeal and then you end up going back on remey and so i'm just trying to figure out how one would law the case applying to be to have probably only after perhaps an appeal as you indicated but the fact of the matter is we don't have to arrive at judge taranto pointed out in the institution decision that now somehow they did not have an a full robust opportunity to really build their record as to surprise i maintain that even if there's anything else they decision looks at references it's only in terms of the grounds for compatibility they don't say by the way there's six other background references mentioned in the petition and three of those we don't want to hear any more than the proceeding because the board can't say that they don't know that at that point and we want to get it right but that that's why i guess i keep focusing on that one sentence at appendix seventy two without which i think what you're just saying would but they didn't explicitly say that and when we read it we did not take it to be read as definitively as we never want to hear about this reference again and likewise novartis did not interpret it in that fashion novartis kept using their precious page numbers and psychiatry and if they thought it wasn't part of the record they wouldn't have done so novartis also had a wonderful opportunity in their motion to exclude toward the very end to make it clear what their feelings were or their impressions were answer calley especially with respect to that language that you just provided and they did not do so so they had plenty of self help opportunities throughout the entire trial to clarify the record  bring it to the board's attention to let everybody know how they felt and they did not do so and even through the oral hearing sickout is mentioned throughout the record and they never objected if i was if they really believed it they would anything more that you would like to hear can you talk a little bit about what the board said about unexpected results and in particular with reference to the several dependent claim that speak of certain concentrations of the active ingredient in really and that and the mantle and the board if i recall addressed that one is kind of in general when going through the various not part considerations and then also address that briefly in passing in discussing the motion to amend low dose was first brought to the board's attention during the oral hearing that was not something that was vetted significantly below but even so low concentration was never mentioned before th only before only once they decided to take the appeal to the cheerfully review the exact claims of the two eighty three that and they noticed that some of the dependent claims refer to concentrations and then they decided to use any argument they had as to low dose and try and fit it in the low concentration bucket and that is not something that's possible because even if you had the concentration you wouldn't know what the dose was you need additional information and in particular you need to know the overall amount of material or the weight of the tax break it can i just i mean if you wouldn't mind think think about appendix page forty three which is also page forty three of the board opinion and that's where the board is discussing the proposed amendments a proposed amendment would add claims thirty nine forty and fifty four and the board is there saying the patent owners argue that found frankly not to be reliable by the p t have below and so they did consider it they did look at it but they did not weigh that as a big factor when they were balancing the evidence before them  now they were very inconsistent with how they end all that but both mr oracle's an inventor and mr putin petit another venture both of their testimony was not found to be as reliable as some of the other evidence of record appendix that's what's cited here too low dose it seems to me that you know that notion of low dose maybe as a shorthand or i'm not sure about referring to the because i'm trying to figure out what is the character of the unexpected results argument that they actually presented to the board in the sense that were they really gunning for the cla dosage for man a tall it's stable for the government is i percentage or low percentage and so therefore we want in unexpected results finding fifty across the entire range that's how i look at the argument section of their motion to and as well as the arguments section of their patent owners i think that's correct your honor how i interpret it also what's most independent claims in particular they do the full range they get high doses medium doses low doses it's the entire range what we're trying to figure out is that the discussion in the sac section of these papers in reference to unexpected stability for low dosage when it comes to our mind is that a dog whistle for all of us to recognize we need job run over to the event in claims and look at the way concentration  available for deposition so therefore the p t had did not rely on that extensively into germany just to be clear of the what was the evidence that they offered in support of unexpected results for there evidence about dose or about concentration will be that is using those essentially as a bad shorthand for low concentration i think they use joe says low dose because what really started it all is they had comparisons another room greedy and also with two other things so when they first did their studies way back when they had difficult times formulating it so when they first decided oh we need a low dose fingleton it's not going to be this high dose they went ahead and they took the again i thought that the board stated that they would not rely on certain paragraphs but i did neither motion to exclude paragraphs fourteen through nineteen and the paragraph i was looking at was paragraph eighteen so does that change your  and to me it kind of went to the question of whether all the evidence was just talking about doses or was it talking about proportions or reapers center chairs and so i am just trying to understand i thought that this evidence was presented weighed heavily from what we could determine in the billings to terminations question ok thank you so much  being given the in the supporting declaration and what you had or if it actually meant concentration it it meant concentration and i can tell you why we use the word us i actually am more interested in support for the proposition  and there is that and then very importantly attached to mr omer is declaration worth of charts showing his binary except in testing results which talked about varying the proportion of the dosage is there where is there something in the record reckon feel like i understand that someone else understood that these two terms are basically interchangeable yes rather first off in our pattern of response at number seven five three zero so that was our brief the first briefly for we do talk about how the parallels between the dependent claim we were talking about a story seven in the form letter said ok no problem and they tried to simply just lower the amount reported to the acceptance or the active ingredient for going to proportionately accepting and that's when they discovered all the sudden there's this very strange instability problems that's at that moment and they try to solve this formulators do by adding stuff into the into the mix to try to stabilize it and that didn't work so where are these attachments if we could look at them see if it's there where these tables are discussing something about the relative concentration of the active ingredient and the other stuff or they're just use the term dose to talk about concentration well unless all the pills are of a fixed size and the dose is only the active ingredient and then one translates into the other the reason that that language crept in your honor is because of the source starting point and so the formulators did is they took that amount from god and all they did is just lowered keeping it within the same fix at the end matrix and then that then they discovered oh my goodness it's breaking apart why where is the part of the record that says interest that we had when we had i don't know five milligrams or whatever that the higher amount of the it is in the found when they try to vary the proportion of single them out in the next so the corresponding amended independent claim in your motion to amend they these arguments are directing the board to consider this type of unexpected results with the actual p pending claims that results argument for claim nineteen that you presented to the your patent a response it was making an argument that what was unexpected is that single minded stable across the full dosage range is correct and then the board came back and said ok you're making this argument about claim one thousand which is really kind of a low dosage argument the problem with the low dosage argument for a claim one thousand is that it's not commensurate with the full scope of claim one thousand so we can't really give it a probe of wait but then the next question is well it doesn't appear that you made any kind of corresponding argument with the dependent claim in trying to match your unexpected result evidence to those particular grade our problem here is that we as in the page of the past on a response were just going our we call that this relationship between the ation about the men that claims that are parallel to these places and that the argument that some discussion of this is well but when i look at the motion to amend it it's basically the same sentence in the argument for unexpected results manito unexpectedly independent play but the key problem we have at the board was that it accepted for purposes of a final written decision on the premise that we had made a discovery about low concentrations instability of this odd molecule and then it went on where that's exactly right and our point is that there with respect to these dependent claims there is no commensurate of problem they're perfectly commensurate and when the board clearly didn't argue that the pending claims with the unexpected results that's the issue well i understand that your honor and the quick question is whether we should have or not and we don't have any reason to think that the board wouldn't carry forward reasoning from one claim to the next the board goes on its rider and decision and talks about each plant separately one of the time or in small groups and when it gets to these dependent claims