t on the ultimate question a pretty yes yeah but you say it's best viewed as a legal determination based on the underlying facts tell me why as opposed to of a mixed question well wrong test has been applied here and we submit that it has because the board focused on the issue of control and not on the broader circumstances that we say present pretty at a bare minimum that requires a remain but if you're actually then addressing for yourselves the question of pretty i think that pretty as as we have to understand sure and pretty is alternately take a legal conclusion it's the conclusion that parties are sufficiently closely related so that one should be the at the boundaries i don't know that there's a fundamental distinction between considering any mix question versus being ultimately a legal question that's based on underlying facts because certainly the fact finder will get deference with respect to the underlying facts here of course the board didn't consider whether or not these facts rise i'm going to ask a lot of questions here because i've got a related question which goes to that out of law whether a patent qualifies for covered business method review ok we review those determinations for under the arbitrary and capricious thing ok of course you have to have the right legal standard for what is a covered business move but then after you set that standard then the determination of whether a given patent qualifies for instituting a covered business method patent we review under the arbitrary and capricious standard so now i'm wondering should we likewise be under the a p a that's that ends up being substantial evidence review i think that if you are ultimately answering the question and the legal question what i submit is ultimately a legal question of is there in fact to those facts add up to pretty that i think that you would review that the nov i don't see where the arbitrary capricious standard would actually come in because either you're reviewing fact finding or you're reviewing a legal a legal question and the we're not talking about sort of we're not talking about agency action in the abstract was it arbitrary and capricious for them to kind of build the dam here versus billing the dam the dam there so i'm not sure that that that makes sense to apply that standard there i do think though that the essene point that you that you noted of course is for us the most important point here which is of course what is the standard for pretty and the standard for pretty is as we explain in our brief consistent with this court's precedents consistent with the legislative history and even though the trial practice guide is whether the parties relationship as it relates to the patented technology is close to a close sufficiently close to warrant application of what is in this case a statutory of stoppel and then the next question of course is what does it mean to be sufficiently close and i think the argument from the other side is we have the supreme court tailor case which is the supreme court's last word on non party conclusion and when to bar a non party was to the parties that litigated before is not a good enough standard and so we need to channel our thinking in particular ways to understand and establish whether the nonparty in the part relationship is in fact sufficiently close so why i guess probably this is what judge walker was hinting at why shouldn't we be applying the taylor thinking to figuring out the pretty question in this case short well first and i think it's important to recognize taylor is not deciding the meaning of pretty for all purposes it doesn't prove it doesn't purport to do that in fact footnote eight of taylor is very clear not even using the term pretty because precisely because it has come to have so many different meanings and when you look at the statutory language here congress despite taylor saying we're not going to use the term pretty and pretty has a lot of different meanings congress specifically talks about how pretty has no universal definition and the tests that are were ticketed both in the legislative history and in the trial practice guide are very much a can to the test that we are advocating here the things that  being so inconsistent with with with taylor if you look at seventy seven federal register at forty eight seven fifty nine what the trial practice guide says is that that we're going to evaluate whether parties are pretty as in a manner consistent with flexible and equitable considerations that's a quote for a look at the quote relationship between the forty purported privy and the other relevant party and whether it's sufficiently close and we're going to consider the quote practical situation which is also channeling the pretty they're in pretty for certain purposes the question is are they in pretty for the purposes that are relevant here right when congress went to congress picks a term like privity and as a coming coming on or standing and the supreme court has provided that common law understanding in an opinion shouldn't we be guided by that supreme court opinion what judge should what i'm pushing back against is the idea that the supreme court was saying anything about the term pretty what the supreme court was addressing was whether or not this concept of virtual representation that had grown up in different regional circuits was what was sufficient for purposes of regime that hot whether or not parties could actually be bound by a judgment we're not talking about parties being bound by a judgment here in makes clear at pages six fourteen and seventeen of the slope opinion the fact that something is time lord can be reviewed even if it's only addressing it at institution and there's no doubt if you look at eleven eighty eight to eleven nine and specifically ra second when when we raise the issue of pretty good and use the term pretty specifically in seeking rehearing in front of the board in the first round i p r's if you look at appendix three sixty four the board doesn't say that we had waived the issue the board doesn't say that we had missed the issue it three to thirteen zero zero eight this is where we were seeking rehearing of the denial of discovery post institution in first round i p r's were specifically going to leave to file a motion to get discovery related to yes we are we're seeking to have all of them reversed or vacated and and the issues here that we're talking about both in terms of the legal test and in terms of the discovery that we were denied the opportunity to even file a motion to seek on these facts and these they try to assert to treat these facts as they will this is just ordinary run of the course and they pick out them one by one but when you look at the totality of the facts here that were laid out before the board if these facts are not anough to at least have the opportunity to file a motion for discovery it's really hard to imagine what what the there will ever be an opportunity to even file a motion to get to the will discovery of these types of issues there was discovering here in this words that were responded to there were two rounds of iraq two or so including discovery of the master purchase agreement so i think it's going a little too far to say that you were not even allowed to all still voluntary discovery and the negotiations that they point to that in which they want to say all when you gave up you know this or that or the other that was all before invoking the board and five and asking the board for leave to file a motion or before the before the board see that question up the board never granted a motion to excuse me never granted us leave ever file and ok so then you're saying that there was a first round in iraq authorities and it was just agreed upon by the parties that they would respond and there was a second round in the second tori's and then they the other side agreed to respond to that what's that and then also at some point i hand over the master purchase agreement so judge stan a couple things first when we talk about first and second round there were six actually consolidate the nine i p r's here so yes there were some that are auditoriums in the first round i have yours and there were in iraq it's where he's in the second round i p r's and there were you know limited answers that were given in which they unilaterally redefined make just before i sit down on some of the technical issues here number one on predicting positions this is a classic situation where you have where you have definitional language in the patent itself the patent tells you what is the most important requirement for the control system it tells you how to achieve it and that is because the quote inventive control system uses but havior predictive model based control logic those are the kinds of unmistakable statements the pacing technologies says are limiting and what the board did here is exactly what this court said more recently and in re smith age seventy one and third thirteen eighty three which post dates or briefing that you can't do it read it out it ready broad construction but smith group reminds of the board that the broadest reasonable construction is the one that corresponds with what and how the inventor describes his invention in the specification and estimating is not the same as predicting then with respect to feathering the mood let me say  that this is the classic case classic case of of hindsight classic case of never answering the question of how or why one would think to use intentional feathering which was known  feathering was known in the art to be a problem why would one think it to be a solution what the board does is it read the reasons backwards and says we know that there's a problem and as i understand it the board the other side's expert testimony and the expert testimony said number one you would want to have your streamers in parallel and number two you would ideally like to have them here a degree number three we know that they often times veer off course but you still want them to be parallel and before you would want them to brought be brought back but sometimes it would create too much noise to have all the birds trying to be brought back in mind so therefore you would want them that never last be set at a particular angle so that when you're doing a second pass or a third pass you would know to have the same angle so that's my understanding of the experts testimony that the board or from it would wind on did your expert contest any what they testified was that there were motivations to solve the problem they were motivations to want to keep streamers parallel there were motivations to want to keep them in line behind the boat there were motivations to want to make sure they don't get tangled they were motivations to want to be able to account for viz current where the expert doesn't say as why would you think to do that by feathering when feathering was known to be a problem not a solution and that of course is exactly as peacemakers puts it the recognition of unsolve problem doesn't render the solution obvious and that's what that's all you have here what the court has sort of the question do you have a quick question the p g s litigation is completely settled is that right  has an geographic  with with your your brother in a discussion of the standard of review let me answer that question by saying that i agree with your comment that the question here is a mixed question court has asked us for a briefing on the legal standards for both real party and interest in preventing of course we think privity is out completely out of the first round i p r is because it was abandoned well before the section three nineteen final written decision happy to address that but on the merits you've asked us for standards the standards of those set forth in the trial practice guide the standards are those that the board has been using since its inception under the trial practice guide from this court are consistent with what has happened in the trap or what has been set forth in the trial practice guide with regard to real party in interest party has to be able to control we didn't hear much from my friend about the real party in interest and or that's all they as she says that exceptions can be grouped into six categories and certainly one of those categories and discussed at length assumed control particular types of relationships that aren't really at issue with either a real party in interest or group so for example the first one is a party to greece to be about the second one is of interest the second one of course is fairly broad which is subsists substantive legal relationships and that's have to understand what the term pretty means in this statute what i think that the upshot of taylor and i could go through the other you know the other various standards but i think the point is that with regard to privity in the in the particular circumstances of this statute the standard that my friend proposes in their supplemental brief which is by the way a standard that was never never presented to the board is a mushy all of the circumstances and facts which is effectively a no what when we see  standard that's the whole reason why the court rejected the doctrine of virtual representation as it had come to be so expansively a plus and said that really virtual representation has to be limited to statutory circumstances like a class action where the a representative may step in on behalf of another if the other requirements of rule twenty three are met but we're not going to just say well gee party a was an involved in litigation the first time around and they had sort of the same general motivations of the other party that were seeking to preclude was in court and they knew what was going on so it's totally fair to to hold them liable no that's their are due process limitations and certainly p not expect that it was going to get precluded from anything by the ion litigation which it was not a part and so you could stand a couple quick questions yes there's a lot in the joint appendix that's marked confidential elements of the master honor a fair amount of that has been disclosed by the board in public opinions i'm a late comer as you know the court may know to this case so i don't know all of the ins and outs of the protective order as i stand here but to the extent but we can if there is we promised that if you're ever sued for patent infringement we will suffer any damages liability you have to deal with some that an infringement s likewise we will fund any litigation that you have to endure in defending yourself against that patent infringement suit do you think that kind of indemnity agreement would be that the answer to both of your questions is no the reason the answer to both of your questions is that the indemnity indemnity clause that you just described is a fairly common type of indemnity clause that one would find in lots of different and now on the purchaser of this product don't i feel like it's no skin off my nose if i'm sued and in fact to be liable for pat infringement because i'm not going to pay for anything and i don't even have to that said that the manufacturer will control everything and that's the that's the upshot of the real party and infrastructure which we say is control there doesn't seem to be any dispute coming at least this morning from the other side that means control practice purse the power to lewis well if the power maybe to lose but the power is not necessarily to control and that's what's important in the statute now if you had a different agreement that said we'll take over in under these circumstances we'll take over the litigation and the consequences will you know you will be there in the i'm only then maybe you have a different case but that's not the agreements that we have on this record and it's my right not over here and why not as my as my friend pointed out quite correctly there are different kinds of privity and that's one of the reasons why justice ginsburg and footnote eight says we're not going to use that i think what you need and what you need to say is there's different kinds of indemnity clauses and i guess in  contracts in that circumstance that there is contractual privity then that than all of the consequences in contract law that follow from that but that's not what the due process clause expects and again we're talking about it we're talking about notice an opportunity to be heard as the basics of due process a party under the circumstances of the indemnity clause that you just described would not expect that a subsequent suit against it even if totally indemnified would somehow or another both the second first and second round like here it absolutely does have a right to appeal from the final written decisions but what is but let's keep it that's that's an important distinction judge wallaby appeal under section three twenty i believe it is comes from the section three nineteen final written decision that gets appealed to this court does not contain any holding whatsoever with regard to pretty so you're saying if the board says something extra  reconsideration decision that's blocked from being appealed i don't think that's i don't think that's in the final written decision i don't think that's part of the final written decision and even in the even in the written reconsideration decision the board could not resurrect hearing the appeals from the final written decisions in the first round as in rape cases no one party you could you could hear them is in rape cases and leave before we sit down and you have to decide this without our help but the fact of the matter is that we are a party as a joint party to that one they still are trying to overcome it largely not through the merits but through this push this procedural bar three fifteen b they say that that case should not have been filed in the first place so we're here defending and saying no the board was proper to be able to decide those and and our arguments of course you'll consider or not with regard to the second round i p r is but the point just tend to go back to the chronology is this in the preliminary pad on a response they raised will no question about it they said pretty and real party in interest in the patent on a response after that institution which is appendix twelve forty  twelve forty five they argue only we'll party in interest you will not find her body argued there p g yes then points out in its we're splotch of this that the real part that the privity issue has been wa but they did not preserve it with regard to the first round i p r s and the fact that they tried to smuggle it in the rehearing petition was just goes too far and the waiver issue is one of two reasons by the way why this case would be and then the district court entertains that initial argument and then but then says you still lose and then that goes up on appeal to us we say oh we don't have to worry about what the district court dressed in that recount decision that wasn't part of the original right of summary judgment that's when we that what we would say you could you could say that and of course waiver is discretionary with the court if the court absolutely wants to reach this issue i can't i can't stop it but the fact of the matter is that this case that this issue was not it was not ventilated adequately in front of the board and it wasn't the subject of final written decision you know district court cases you've suggested judge chin i think what you have is you have review only of the reconsideration decision which is generally in district court and district court appeals reviewed only for extraordinary but i i don't think there's a i don't think there's a distinction at that point there because you still have that reconsideration now the good because the question to grant reconsideration or not is i guess what you're saying is it's a granted reconsider it's basically decision has referred to anything other than we dealt with this in the institution decision it doesn't magically put it into the final written decision but so the waiver problems are one reason why this case would be a very bad vehicle to make law for everybody more than a year before and and the board says we don't find the time bar here no real party in interest and then the merits of the i p r just goes on the probability questions are you saying that we can't  feel i obviously don't agree with any of these decisions that allow us to make these collateral tax but i'm bound by them and so if we're allowed to review i don't see how the board can and hiding it in an institution decision and refusing to mention it all and a final decision could insulated from or hear well i guess i guess just choose what perhaps the reason that i'm giving the answer that i am that you're reacting to is that we have here far more than just a bored failure we have western g coast failure western gittoes affirmative abandonment after the after the institution decision you know what i get that that's a different issue but you seem to rely heavily on the fact that it wasn't in the final written decision and to me that seems different than just saying they abandoned let me let me rephrase it because i think i will make the point clearer there's a reason it's not in the final written decision the reason it's not in the final decision is  they gave it up so the port can't be faulted for not having decided in the final written decision because they gave it up they were told by p g yes but they had waived it and they never said no that's wrong let me ask a follow up question and that was an event because it still why would they waste their time reading arguing it and because they have high limitations a lot of these cases have multiple planes they have age limitations they've lost why do they have to really raise that as in order to preserve it for us well i think they i think they had it hadn't been decided definitively at that point because obviously they kept fighting on the real party and interest issue so i think that's if they ever answer on this record and i think that actually brings me to culture to adopt is probably too strong a word to taylor makes very clear that the virtual represent a mushy virtual representation standard that my friend is arguing for in this case based i think i can comfortably say that the court could embrace taylor but again remember that the language in the statute is what you're having to interpret and to apply it's real party in interest again i think we're past that because we're arguing about privity here and then there's that it is fair and it is appropriate to apply collateral estoppel in such a way as they were practical they were actually there at the first trial there might be some different facts of what we have here that might result in  i would say that anything that deals with a relationship between the parties that allows for one party to be collaterally to stop the other any of those factors and to get a track practice god specifically cites and relies on tail and you know judge chin to that point what my friend here is arguing is that not just that they should prevail in this case but that all of the board's work in this area of real party and interest in privy to this point has been correct and that it's been substantial evidence reviewed factual findings you pointed out exactly that the the board in this case relied upon the unrebutted evidence coming from dr evidence in this case who said i find four different ways that a person of ordinary skill would be motivated to modify the prior art to federate and that nobody likes that in well there there's not a anticipation teaching a way quickly you know with regard to the one hundred three issue the fact of the matter is that those four are supported by the patent we didn't have an a teaching point argument we're not faced with a teaching way argument here and quite frankly if you look even at the work with reference to depend ex five zero five columns three column three line fifty eight to call them for line eight the streamer control process or is for deciding when and calculating how much the streets are should be terry thank you just well it on the first on the last point on feather angle what he said is that there was a motivation to modify the additional prior art add feathering on the expert never offers evidence on where you get feather angle mode from the in the first place that's the fundamental flaw and that's why this was wrong as a matter of obviousness and i want to turn back to the issue of waiver because it's gotten so much attention from the other side because they don't want the court actually grapple with the merits of the standard of privity and judge hughes the questions you were asking  nothing like that that happened here and in fact quite the opposite you have us and you can look again at appendix thirteen zero three to thirteen zero eight it is in the first round of i p r specifically raising issues related to the issue of privity when you look at the pattern in a response that your request for reconsidering for no well that is our request for reconsideration of the din of the denial of leave to follow a motion for discovery it is not our request for reconsideration at the end of the case that's appendix three sixty four which also specifically raises the issue of privity and indeed while our panel response i met doesn't use the term pretty if you look at the arguments were making at twelve forty two were making arguments about the relationship to go to people are using r p i as a as a shorthand and you know they were doing the same thing if you look at that the the opening brief the read brief that they filed in this case they said we raised pretty r p i twenty one times they said that the board had correctly decided the issue of  read read briefs six sixty sixty seven now in the supplemental brief they've decided well we've with the issue there's nothing that's waved here at the border that the court has to reach the issue now when you do reach the issue and by the way it it to the extent that the we're talking about real party and interest opportunity to control can be enough you don't actually have to have actual control into some of the questions that i think you were asking the judge sent at the end of the day if if it's your while if that's at stake there's a pretty good argument that you are the real party in interest here the court doesn't have to decide that on these facts because as we've articulated the facts here when you look at the relationship are extensive and show that there is a close tight relationship in all ways in ways related to the panda technology now turning to tailor tailor talks about race to the cotton it's talks about whether or not you can be bound by a judgment it does not talk about pretty at all since footnote eight much less in all circumstances and when you look at the legislative history congress didn't talk about taylor congress talked about california physicians a california case that made the litter a crime that when you run over all that but not as long process and let's just keep in mind what we have here as f a a versus cooper tells you you have to look at what is the most analogous and whatever you think about the doctrine of a sign or a stop all the application of the concept of privy when it is going to  the contact in that context is what is most analogous here and intel versus i t c rejects the very kinds of arguments that you hear the that you hear the mate making and you have to remember what the context is at the end of the day here congress congress could have said if a pad has been subject to litigation at all we're not going to allow it to be subject to an i p o our congress didn't go that far congress but congress didn't limit it to the people that had been asserted against it struck a middle ground that middle ground is consistent