i thank you your honor and the words decision not to invalidate claims thirteen of the patented issue is not supported by substantial evidence if you look at the board's final decision it refers to each the scan jet utility managed lists of destinations and workflows and it started automatically when windows of started a person of ordinary skill would recognize from this that a list of active processes and programs would be stored in a registry accordingly in paragraph one thirty two he talks about the troubleshooting guide for the scanner manual which shows that the software files were reinstalled if appropriate components were absent i have evidence that shows in all over again and second that the patent office has been looking at subsequent follow on petitions and providing a similar redundancy analysis on those taking the position that a petitioner had had one bite at apple and shouldn't get one bite at the apple again in a similar petition and we provided a list of those examples in our papers and so our concern is that if we aren't that run into a preceden question goes to the fundamental jurisdiction of the agency or if the question is one where the agency has clearly diverted from congress's mandate and we think this is such a situation as it that not following legislative history is so completely departing from the statute that we could stretch such extraordinary early i apologize for not answering your question directly with regard to the statute we weight on the word shall i mean there's lots of precedent all over the place it's a challenge sometimes a command and sometimes gives discretion how do we know here that it but a mere well in if you if you do look at the legislative history there was a bargain basically made between the director and congress at the legislative history senator kyl says that the patent office has expressed a preference for a particular model of examination and believe review now your eyes then we would have to look at whether proper grounds had been presented or patentability argument and if they had your view if they had to grant review so we would have to reverse them that would put us in the instance of every single case where somebody who is dissatisfied with the decision can appeal that decision that i think the same a go for the people who get review you know if it's if it's an automatic leeuwen it's a pattern ability thing in that we can review that without giving any reason it's like a district court they can't say we're going to take up two of your tort claims and that's out like district court this is discretionary review the clearly have the authority to deny review altogether without any reason they only have the authority make that determination on the merits instead of making the determination on the basis of agency convenience and workload and if they had made a decision on the merits and it and against us we would not be back in front of you because of the bar that the court has clearly articulated in its case law instead of the other the other way that the agency has approached this in other cases that has been provided the petitioner a bit  similarly wouldn't have us back here complaining that there had been some kind of abuse of discretion it's only the notion that you go file your petition it's america torrijos you want to review the petition to see if it's meritorious and they  cide not on actually grounds they were challenging here so we don't think that decision here would unduly implicate the court's review of other interference decisions on the island prevent the p g a from refusing to initiate on  redundancy grounds in any case whatsoever because your argument is essentially that that's not a valid reason for using judiciary if they could refuse to initiate review if in fact they looked at the prior art and determined that the grounds were one on the merits and so that was my question though your view is that they don't have the statutory authority to say this is redundant and in terms of it has efficiency we're not going to look at it that that is our view yet where the statute that is even remotely issue is that the way that the agency is proceeding and taking up these issues piecemeal is we don't think consistent with the administrative procedures act because in a situation like this where there's a formal formal education usually what happens is the agency is directed to take up all issues in the petition that are fairly presented to it and issue a decision on it on the merits and here the agency has our elected not to do that we do think that's inconsistent with basic instructions in the statute on how the agency is to progress when it has been assigned an adjudicator function like it has here record on that which is that pages ten and eleven of h p s reply we did respond to their arguments which we didn't respond to all of them and so there was no reason for the board to conclude that it should be out somehow waived the presentation of evidence on claims nine and thirteen so that was at page ten eleven of our reply brief and there we responded to their argument on the enable virtual copy operation means it's not listed by claim number but that's also in claim nine decision he was simply speaking he'd been asked about claim construction another element in the passage right before the board cited he was asking about claim construction on this element answered in terms of what was in the patent and we don't believe made any admit court the appellant has raised challenges with respect to the final written decision and the non final institution decision i'll be addressing the issues pertaining to the final written decision actually respectfully requests that this court of from the board's decision that claim thirteen is not anticipated by the prior art of record this issue is reviewed under the substantial evidence standard there are two pieces of substantial evidence that the board relied upon in concluding that claim thirteen is not it dissipated first the board looked at the prior art and relevant portions of the prior art as it maps to claim thirteen mr ganti on her to say that you looking at the differences between the obviousness challenge in the i p r institution decision versus the anticipation challenge in that petition and based on the p tabs review of the petition they did not see any substantial difference between the anticipation and the obvious challenge particularly with respect to the claim elements that were found that were not found in the prior art so had there been while the board hasn't evaluated the question of obviousness to a final written decision by considering the full record on the obviousness issue because  they deemed it was redundant and they excluded that part they excluded that ground in the final or indecision so the the board never consider the obvious this challenge in light of the full record which should include billy's chance to oppose the i p r petition and the apple ease their right to provide some sort of expert testimony against that obviousness challenge none of that was in the record at the time that the board made its redundancy determination but going back to the anticipation finding in the final written decision the board did consider relevant citations to the prior art the prior art is the most important piece of evidence to consider that equates of the substantial evidence requirement in addition the board also considered expert testimony offered by affably that expert w specifically and what pieces of evidence that it does so that the board considered the scan to our friends in the final written decision in the language it's on a eighty six the board outlined the prior art scans of five wait a minute you're talking in eighty six but eighty six is a valid claim fourteen we're talking about claim thirteen ar but more importantly there's a whole analysis that exists before that one sentence which is an analysis of looking at the patent owner response where a number of arguments were made and the board picked for among a number of argument filtering them down to what they believed was where the most persuasive arguments as to why clee thirteen is not anticipate those arguments reference the scans at five patent page thirty four of that patent it references expert witness testimony offered by the affably in the form of mr hart they focused on claims one to seven those particular four arguments address features that are not in claims one two and seven those are features that are found in claims nine and claims thirteen specifically maintaining a current active module means that something that's found specifically in claims claims eleven and claim thirteen but not in claims of one two and seven but the problem is that all the board doesn't even reference anywhere that you consider the argument that h p provided with respect to claim the law which is i biggest clue is that these particular arguments reference claim elements that are only found in claims nine and thirteen such as the active modules that's on the why is the board saying the petition looks at claims one two and seven for this argument that set of a claim one reason is that the board found that claim nine while it has the same limitations as claimed thirteen some of those limitations are alternative and therefore the board did not give them any patent  weight so from the board's perspective they're there they're considering claim nine is so broad that ok so can we move beyond just what the decision says because you know this it is really sloppy and it's hard to parse but where in the record is substantial evidence supporting this analysis in the record these four arguments were made in the past no in a response which is is just basically they rejected h p s arguments and accepted your argument that these were show yes your honor and in addition to that the arguments that were accepted cite to substantial it's which is expert testimony and the prior art so in by by framing the arguments that were expressed in the record those arguments cite to the substantial evidence so it's a way of the board to short other claims including the one it cites two one two and seven zero anything relevant there the only thing that's relevant there your honor is possibly the second sentence that says scan jet five utility maintains a list of destinations and workflows that might be the only thing that's extra but what i'm saying is if there are if you look packages directing the boards attention to these claims can to be argued that the board was directed to one two and seven for nine that thirteen and nine of the same so they would have gone to one two  i think i believe that's correct your honor it's the it's a matter of looking at this claim elements claim nine has the same claim elements claim thirteen some are optional in claim nine which why that claim was ultimately how they know they were which is the same this thirteen there were total up to one two and seven that's right and then the board cites one two and seven that's correct  court and i had had one earlier this week why does the board follow and i'm sort of picking up i think on what judge moore it was saying earlier why does the board go to anticipation and say we're not going to look at obviousness because it's redundant when it would seem to millie and want to consider them both in case you don't find anticipation as happened here i realize this doesn't relate to the jurisdictional question but it i anticipation i mean it i mean what it just seems logical that if you're sitting there ok it's probably we think it sent to supported by the obvious arguments for and maybe if it's not that i think they looked at there are these two references that about the same problem is they're doing about it in terms of the fish and sea and it's turning out to be completely inefficient because anticipation is sometimes hard to show and they're can reach into new ip are i mean this edition c argument seems ill consider in the long term scheme of the us i'm not sure it is in this circumstance however i mean first of all in the mind shares cases i think well it's certainly going to cause another i p r before us there may be another ip are filed i'm not sure that necessarily would come out differently and the reason i say that here is because both the user's guide and the press release are directed to the st same scan jet five printer are the meet the press release just a six page document the user's guide is one hundred forty paid page detailed document about the same scan are h p has failed to point to any evidence that's in the press release that's not in the user's guide and particularly with respect to the relevant limitation here the only limitation they found not to be anticipated which is this limitation with respect to the list of them will moderate means and so i think in this case i'm not sure that  the board was really that off face and i think it was a very efficient process moreover i just want to follow up on what church lori asked at the onset they had several opportunities that they did not pursue  something additional in the press release that would render  regard to the evidence underlying claim limitation thirteen and the actual petition as opposed to the expert declaration at a one zero nine it does indicate that s j five expert declaration and so the actual petition identifies the basis as being the same as for claim nine does not refer the court to those other provisions the expert chart cites those other provisions just to provide additional support because the other limitations talk about the work flow that he then talks about in more detail with regard to claim nine so we think the record is clear that h p sought review on the evidence on clay nine in the lion share of cases there would be no fix because the deadline would have passed and we're just in this unique situation because m p h jay has elected to press its demands against h p customers instead of h p and there's no litigation in addition if we were to refile we have cited a number of petitions to the court where the board has exercised its discretion and held that because a petitioner or someone in privity with the petitioner had had an opportunity to be heard on similar are to the court deny that petition for efficiency's sake and so there is no assurance that were we to file another petition it would not receive the same quick disposition that the claims of obviousness did in this petition  service and the press release showed that the thing network deployed and so there were specific distinctions between the two that had we been given the opportunity to explain them to the patent office we felt confident they would have not been able to make