your your colleague said that in this case you were only challenging the final written decision and not the decision to institute correct that is correct your honor ok let's let me make sure that i respond to what i what i hear to be the concern animating the question your honor asked a series of questions about the adequacy of relief and whether relief in the second case in this case would mean that there wouldn't be a da review available and my answer is the same one that i heard my colleague mr lowe to be giving which is the following are challenges to the final written decision to the extent the court simply spoke to section three eighteen and section three nineteen then there might well be something left over that would need to be decided in the a p a case if conversed fully and this with the last part of one nostril of was saying the court in interpreting section three eighteen the scope of this court's jurisdiction under three nineteen went on to look at the regulation for instance why would we do that only an issue about the final written decision rather than the issue about the institution well i'll leave this to the other side the reason the court might do that for instance is that that's what they're the other side is that vacated the government has said in order to understand section three eighteen you need to look at our regulations that they have said that to rise and fall is your position that even if the p t o has the discretion not to institute review with respect to all of the claims that the final written decision has to address all of the claims even though there was no institution decision with respect to some of the class you know your argument has  invalid because the two need to go together the fact that they go together doesn't mean any less that we are challenging the final written decision under section three eighteen we think that the final written decision here was defective for all of the reasons that mr low was saying and we think that we have a valid appeal under section three ninety in analogy to show decision by challenging the final decision i mean there is an aspect of that that that goes with it your honor but that are you saying that you can challenge the institution decision by challenging the final decision i'm resisting it only because i think that the framing of the question bill's a big promise and the challenge here is to the final written decision the final written decision doesn't have everything that it needs to in it and that's all we need to establish appellate jurisdiction under section three nineteen now we had said earlier that in the eighty eight case that we written decision so phrased your honor no i don't agree with that the final written decision has to contain certain things section three eighteen says what those are section three nineteen then confers on this someone's trying to double dip their trying to get something that is about the stuff of institution and challenge it in the final written decision on the theory in quotes that it was in or lock you tory or on the theory and  agree with both of those cases the absolutely critical distinction here is that it's the final written decision that's erroneous and the reason the final written decision is the key is for the same reasons mr lo was saying because of the need for a stoffel because of the problem with status for the integrity of the system as a whole for the reason you are saying judge newman precisely because of what congress intended within the overall scheme do i remember correctly in the institution decision the examiner whoever issued didn't say we're not going to review all the clean i thought that that didn't appear until the final decision so that's correct i'm not merits thank you your honor so on the anticipation question we think that there is a simple and straightforward basis to vacate and remained under fundamental principles of administrative law and that's the simple fact that the board failed to address an argument that was made and that was anticipation in light of figures sixteen and eighteen and the accompanying disclosure and i think it is notable that as we come to make that argument to the board yes your honor figures sixteen and eighteen were all over the petition and they were specifically raised to a one eighty one they were further described discussed at a one forty nine to one have an expert who  well so as the case comes to the court the only question is whether the board improperly failed to address an argument that was made to it and that's a sufficient basis under mode of motor vehicle manufacturers association and the long line of supreme court authority to vacate and remove and so i would just like i want to make sure to finish responding to your question about whether we raised it because they do want to make sure the court understands the full extent to which these figures were dealt with so it's not only just in the petition where i indicated it was also raised at the oral hearing at eight twelve and a thirteen a slide was given to the board to the panel that addressed a specific question that's been a seven eighty one in fact the other side was asked a question about this i've noticed that we left that page out of the compiled appendix we submitted to the court but that's a thirty two and the board itself sa all the board made no such finding and of course your honor knows on the review of an agency decision the court can only affirm on the basis found by the agency the agency didn't find that and indeed directly to the contrary the board invalidated or held on patentable claims five eight and nine which strongly indicates that it believed the contrary to be true so that's the first answer second had the board so held under cases like american cow car it would been legally erroneous the particular implementation or application of a rap friends doesn't render it anticipatory or not and the final answer which we think that the court hands in shouldn't even get to is that we actually just disagree with that we think a at collins warning to and then subsequently in column eleven actually does indeed talk about about functional testing but but that's really as they say sort of three or four layers down before the court would even  get now all of that of course is is far into the merits and we think that the threshold question about the board's failure to address figures sixteen and eighteen really is enough to vacate in remand and  warning may have please the court mark miller representing the mentor graphics to answer the court's question about the decision to institute at appendix a forty the court did state that the is denied as to certain points so there was a denial as to claims in the decision whether to institute or not and i would also like to focus in on the merits on the anticipation or before you do that could i just be clear what's left of your cross appeal do you agree that achieve these bars your argument with respect to and real party in interest here are we agree that if the k t s finds this court which it does then our appeal under three fifteen the is decided under that case ok and what about the microsoft and the addresses the idea of the portion of the i don't three standard that requires the patentee to demonstrate patentability over all prior art known to the patent owner that so we do not believe that microsoft is disp out signal satisfies the execution status limitation and claims wanted twenty eight this was supported by dr seraph today's declaration which the board termed persuasive and the board went beyond the express language and found looking beyond the expressed language and found that synopsis did not point to any disclosure in gregory that and malice this information includes executions that is why this is important because it addresses made about the claims five limitation claimed five comparison the important point there is that synopsis had arguments about figures sixteen and eighteen with respect to different claims not with respect to claims one and twenty eight is one sentence in the claim chart at page one eighty one that mr shrum to be referred to regarding executions that that does nothing more than refer to the claim language uses the word executions data and figures sixteen and eighteen i piloted that section does not use the word execution status that portion of the claim gregory and addressing judge wallach's question regarding functional simulation versus physical constraints debugging that we think is the answer to this issue on anticipation because in grigory the only functional simulation that's performed relates to the r t l the claim calls for providing execution status using the nat west in this case gregory fails to disclose any functional simulation using the netlist and the board recognize that decision saying that the analysis information that is in gregory doesn't disclose executions that is at pa seventy three the board said in fact when gregory discusses and malice is generally refers to characteristics of the circuit such as timing and power which are not related to execution status as we have construed that term so you what gregory does talk about in the context of the netlist are physical constraints such as timing and power those are very different in execution status the board found that there was a difference and consider that issue yes that is what the board instituted on a particular basis for invalidity in that case anticipation and that was what was before that not even so much or so you say that this is the correct implementation to yes we do and in fact in in the petition that the petitioner have to set forth each ground which they would ask the board they instituted i p r in this case the only  would be consistent with the interpretation of the of the statute in the regulation that look the board can institute on certain grounds and not on other grounds so it would be consistent to institute only on grounds of anticipation i thought i heard you say that it wasn't a question of the grounds that it was has to be implemented it own but the grounds on which the court decided it's led to decisions that are the on grounds before i'm sorry i was i was wondering if you weren't what about but there's a distinction i was hearing your question to relate to the initial determination as to whether and i p r would be instituted passed hiding but i did not understand your question to relate to the final decision and in that case the final written decision only addresses anticipation and that should be the only issue before this court  to go back to the issue on anticipation the arguments were not set forth in the brief and i'd like to point out that with respect to the distinction between claims five where synopsis did present more argument about food is sixteen and eighteen and claims one in twenty eight those claims are different because claim five does not have the execution status limitation so arguments with respect to claim five were not necessarily relevant to claims one hundred twenty eight which have the execution status limitation synopses relies heavily on the q i pressed case but in that case the court was dealing with what would turn nearly identical claims as i said in this case the distinction between claims one and twenty eight in one hand claim five on the other is that the execution status limitation does not appear so another point that i believe is important with regard to the discussion about gregory in terms of demonstrating execution status is that synopsis does not indicate where in gregory's the conditions that they rely on in their brief are set forth so the circuiting gregory is part of a much larger larger circuits and obvious agrees with that it's the much larger circuit that has to provide inputs to the circuits that they talk about in gregory without those input and the conditions to know what happens within the circuits that are cited there's no way to determine to preserve a particular portion of the circuit during optimization those campout signals would be removed if the circuits in the figure cited by synopsis were subject to functional simulation functional simulation would not operate on those signals they would be removed because they're redundant that temp out signal simply connect back to itself as temp in that signal wouldn't be used as part of functional since that sense because in gregory as i said before functional simulations perform only on the source code and not with respect to the netlist and again it's the necklace that appears in the coin i would offer to the core one another on a contingent motion that we have to amend one other contingency which is that in in the district court the district court has entered a permanent injunction based on claims one hundred twenty eight claims five was not at issue in the district court if this court upholds the validity of claims one hundred twenty eight men or graphics would not push its motion to amend issues with respect to claim five those issues might be relevant in the event that claims one hundred twenty eight are we manage and we need to consider the but the that the petition is granted this claims one through nine eleven twenty eight and twenty nine of the of the patent it is further ordered that the petition is denied as a claim to ten twelve fifteen twenty three twenty seven and thirty four thirty of skipping a paragraph it says it is for their order that the trial is limited to anticipation by gregory and no other grounds are authorized and moving for me sensibly discuss why they are not going to reply to the pending a response says that it is seeking to have the only after the board invalidate claims one through nine eleven twenty eight and twenty nine of the three seventy six patent as anticipated by gregory page eight hundred seventy six so that know what the issues that are being challenged during the the review are at that hearing only how can that be squared with the entire way is this that a new structure was promoted and that is the experts in the office will decide to move it e g and now we have one retrenchment after another one with throw one restriction that no litigation can continue after supposed to have experts of the experts address the issues of the liberty on which the agency institutes and department to make it clear the challenger has to raise any issue that could or should have been raised is it isn't that they can pick and choose and put  well the statute says that if we find a written fish and must address all issues challenged by all grounds challenged by the petitioner in the critical time when around challenge the critical time or claims are challenged by the petitioner in an interpretive review it as of the time of the oral hearing so any claims that the parties have settled on and the board does not choose to go forward with under section three seventeen of the of the statute there's no need for the agency to address claims that have been dropped from as we are told here that there are a few trial on those other kinds that's right and how then and this is really what troubles me is how can we square that with a basic philosophy that politically will be decided no sign a loser stopping by the such a way that it's worse than it once before in which case i suppose the statue of the repealed well i respectfully submit that it is not worse than it was before your honor and i think that the parties  proceedings have shown that they are happy with the way the board is approaching and we have very many many petitions being filed it seems like titian's are happy with the way we are approaching it and i want to make clear that congress not only want saying that the agency can't handle it we're saying the congress gave us the tools to arrange our affairs such that we could limit the number of inter party for abuse we believe that section forty two point one zero eight of the of the regulations is fully permitted by the statute and we think that the agency is allowed to go forward on a subset of issues streamline the proceedings as it sees fit address the issues that it thinks it can handle in one year and resolve those issues and s stay that many district courts are saying proceedings of the district courts are not as they see what he's said and the agency is moving forward with what it thinks it can handle in these proceedings in one year and satisfy congress intent to have a the order that they were raised first on the question about the motion to amend we do agree with the solicitor's office that property con is controlling here there were three alternative bases for the board's decision  and one of them doesn't even require the establishment of the burden the board credited dr hutchings the second relies on the proxy con or relies on the burden as established in proxy time and either of those is ample to  affirm that aspect of the board's decision second on the question about anticipation i heard my friend on the other side to say and this is the same thing they said in their red briefs that with regard to figure sixteen and eighteen we didn't make a sufficient argument i think there are two points to be made about that first of all we did for all of the reasons that i mentioned earlier the point was made over and over and over and not just a one eighty one but moreover as a minute as a matter of administrative law that really is something for the board to address in the first instance if a point is made but the argument is that it was insufficiently made under cases like video versus i t c that's something for the agency to sort out in the first instance judge wallach the question arose again about functional constraints and i've answered that question to your honor already we think that the board didn't make a finding on that certainly didn't didn't couldn't have made a finding on it with regard to figures sixteen and eighteen and in any event is wrong for the reasons i was indicating and finally judge newman my friends on the other side are absolutely correct about what the  the board didn't say quite clearly we are instituting on some things and we are we are not going to go ahead with institution or with a final written decision on others and the problems are exactly the ones that your honor has pointed election of remedies we have the worst of all worlds in which things are going ahead on both tracks with a lengthy and expensive district court litigation at the same time as some of the same patents are being challenged between the same parties in the district court and so the answer on that is the one that we have explained in both of the cases we think that the board has simply misapprehended the congressional scheme and would ask the court to speed to back and one or the other of these appeals and so just if the court has no question to be clear about the relief that we're seeking we believe that the court should vacate and remember on the question of anticipation should hold that