invention but in order to intimidate the other reference you have to prove two things you have to prove that you invented it i don't care her point in time and that you either tested or used it for its proper purposes right that's the test for reduction really even when you're trying to say that the obviousness reference they brought forward you've you've implied it is because you invented something before word that i don't want to get tied up in to examine think it matters whether a collaborative proof or production here but we what is troubling me here and i get what you're saying i think this is a very close and difficult case but you know you get the benefit of the patent date for constructing those or for creating this invention but in order to you can't just say we had it in our possession you have to show that you invented it prior to that date and give us specific evidence and the board found that evidence to be insufficient  because the issue of conception wasn't appropriately in front of this board isn't that inherently a part of the reduction to practice analysis you have you don't to show that it was used by the pac the prior to the priority date you have to show that you somehow president is the show that you're responsible for countries constructing that in washington in order to get the benefit of the earlier priorities with with their respect your honor is our position that the actual of the production of practice by the testing with conception not being challenged in this case was sufficient to establish mr shaw rights and title meant to the earlier priority date especially in a case like this where the petitioner would have been expected to raise the issue of conception and in three separate incidents twice in the hearing and once in their pleadings said specifically conception is not at issue in this proceeding the board did more than merely step into the shoes of the petitioner put on a new pair of shoes and i thought that arguments that had been rejected by the petitioner and therein lies the fault and furthermore your honor there is a fema error which we believe friends through the and also of the offices briefing which is that there was an actual reduction of practice by the construction of the p c b layout by concept electronic that was not an actual reduction to practice that was a construction of a printed  past your honor with respect that was the board's conclusion but we disagree with believe that there was sufficient corroboration to establish mr shaw writes role with respect to the conception particularly in light of  disputed that the reduction to practice took place the question was whether or not it and you would do this applicant is that right because the difficulty of the chain  references were appropriately applied than the interference rules highly detailed interference rules and while it is true that one thirty one is not one of these specifically incorporated statutory provisions neither are the interference provisions please the court the board correctly recognized here that when the argument of actual reduction to practice is predicated on some third party activity the issue of the norm it comes into play and particularly here  that activity took place nobody seemed to disappear when it took place i gather that might have been some question as to what was done when it's not right if the dispute wasn't so much who did what or even when the question was well a little bit of who did what and more particularly to take it take it broadly actually ducked into practice requires the prototype and actual physical thing that then gets tested there's no dispute that the testing here was not done well they could but that's not the third party issue here this is not an issue like for example in cooper technology that's the question of in your mind is used in orbit is the general concept of somebody else has done something and i need to rely on the benefit of that activity situation where rule one thirty one applies and you have the language over one thirty one this is an inventor can file a declaration saying actually doesn't a practice or conception followed by diligent diligence to reduction to practice so we're definitely not in that world we are more in the world that does recognize that there is a distinction between the two scenarios but the distinctions between the two scenarios largely derives from the ex parte vs adversarial nature of who else invented the law and well what the board explain was appendix pages twenty three to twenty five why it was inquiring into conception it said at the first full paragraph in appendix twenty four quote if a person conceives of an invention and perceives himself or herself herself actually to reduce that invention to practice the actual reduction to practice is sufficient evidence of conception at least as of the date of the actual reduction of practice problem here is we have a crucial step in the theory of actual reduction to practice that was not by sharod everybody agrees it was done by point well part of what he did part of his theory of conception if you look at the patent owner response where they argued about conception pages and his pages to sixty five to sixty six explains where i should say so we commissioned concept electronic to generate the product the p c b layout was they generate the layouts they sent it to us approval the layout is crucial it shows quite a number of important features of the mtu oh h one design concept bodies and why isn't that significant to at least get that november day already potentially it could be what the board found was that there were discrepancies and gaps in the evidence as to what was actually tested and what they got back from concept electronic this is  appendix twenty nine to thirty so in your view this is really just a failure creep case there's not i mean as far as i can tell there is not any real dispute about who invented this this this path of the product that issue just think that they didn't show enough evidence to get an earlier priority it is perhaps a fine line because the board did not and this goes back to the question the value that might be easier result to if all we had was the again the problem here we have is that prototype which is a crucial part of her adoption to practice theory is not there so there needs to be some evidence that what's reflected in that prototype reflects the invention that they conceived of you're talking about the difference between the revision to an revision three that's part of it your continuity well two things your honor they didn't actually rely on the date of the testing they relied on the november ninety eight they didn't actually get into the subsequent date of the date of february  uses question about whether the testing could be relevant evidence of actual reduction to practice that wasn't a theory that they relied upon below and then you have these problems of what they are perhaps that they could have been it's not a theory that was explor well again that there was no there was no argument about diligence in this case so it's not an issue that the board reached or explorers who are doing care when i was in revisions to well the reason we care about revision two is because that's it this for and it was actually revision three exhibit two thousand and thirteen which was the wiring confirmation diagram that n f c team relied upon below to demonstrate that what was tested was what they had actually come up came up with before they asked concept electronic to fabricate and the testing which comes later and revision three and it's two months after the testing of the fabrication so you have all these sort of discrepancies and what are they actually working on is it always the same thing has it been modified and that's important here because again the theory of reduction to practice your was based on the prototype the concept electron eat me so if there was further messing around with it that was a not a theory that they relied upon to be it speaks to whether or not their theory of actual reduction to practice was sufficiently proven and corroborated and there's one other thing that i think it's important to remember here which is the board sort of info found two related but separate problems with the evidence here and appendix pages twenty six to thirty the board found in sufficient private evidence of con prior to ever nine hundred ninety eight which was the data in a c t advance then a pages thirty thirty one they found sort of additionally that there was insufficient evidence that concept of electronic fabricated design provided by the inventor their related because part of the theory of relief here for and s c t was based on what they had concept electronic do without since that is the first one in course it is a question which is a rule of reason analysis and for the reasons we've explained in our board or in our brief the board went through each piece of evidence and said look here's the problem i have with it i've got no books that aren't signed a witness i've got inventer testimony that's not corroborated by anybody inventors no books but you don't have a competitor here need to be dated the rule reason just looks at the whole picture of the evidence to suggest that the inventors testimony is corroborated and it seems like there was sufficient evidence on the record to show here's sufficient enough under the law isn't or for the books is sufficient to show what he was working on that we don't know emails back and forth which are dated are sufficient to the time period i confess i'm not sure i know there are there's the fact page two thousand and twenty nine we don't we don't know what it is that any c t was giving concept electronic or what other than sending back the prototype what concept electronic was communicating back to them so maybe independently one of these problems will be sufficient enough to reach the conclusion that the board reach but you've got four or five of these things and they add on an add on and under the rule of reason the board said i just don't have sufficient corroborated evidence for you to demonstrate your actual  well exactly i mean you're right if this is not interference it's not like the p t o is going to walk out the door with that but you know the reason why we care and i think the reason why perfect surgical recognised a lot when a two g applies is we are in the more adversarial possible conflict that might have involved itself or the interference so here we go back to one thirty one to look for consent she reduction of practice priority issues that were eliminated in the interference context difficult questions which brings me to an even tougher question what in the world is the office doing in this case the petitioner withdrew interpreted in saying anything the office wants to do they can do i doubt very much that when the director was authorized to intervene that that meant and anything that anybody felt like with drawn in the district court no one seems to care except the office why should it matter the office cares because in large part this was a challenge to the procedures of the office and the office has an interest in assuring that its board and the manner in which the board is applying me receives at least a counterpoint consideration and this court in many instances in which cases where the petitioner has dropped out has asked the much three points of my honor first off we think it's important to note that in norman typically focus is on the relationship between the parties and not on what was actually communicated and that is primarily because norman typically involves whether or not the appreciation of the benefits of obtained or whether or not the knowledge that a work first intended purpose is what is going to in europe back to the inventor rarely if ever does involve who made the prototype that was ultimately tested and resulted in actual reduction of practice in this case there was prima fascia evidence of conception that was never contested  critical critical date post dates the documents the events the testing and everything in this case so due diligence we believe is not a relevant consideration we also point realistically expect when one is looking at an invention made in france seventeen years ago from people who are no longer employed by the company we believe that a close analysis of the evidence under the appropriate rule of legal reason shows presented by the petitioner that's particularly true in a case like this where not only the petitioner never raised them but they explicitly disavowed them on multiple occasions