decision on behalf of the vacated correct reading to see whether we should take up the amended claims which the board never address actually my understanding of the dispute is whether or not this court should remain and to the board for any further proceedings with regard to claim seventeen dollars to nineteen dollars our position is no old there's no point in every man and the board doesn't have jurisdiction over those claims because they weren't part of the petition and even if they did this court's decision in the expert to reexamine would fully resolve any legal or factual issues that could be raised before the board and so there is no point to a moment remained on those claims because there is nothing further for the their interest in the expertise reach him was the same as fairchild's initially but you're right there they weren't actually involved in the reexamined but they were at that point this is the entity that had filed  right but i think i guess maybe i misunderstood i thought you were suggesting that it would be no point in sending this matter back to the board this i p r put aside whether jurisdiction but because i think you said in the appeal of the x party re exam that's in front of us now is that right no no the issue is that that the issues the legal and factual issues that were decided by this court in the context of the ex parte region were specifically the interpretation of the claims and whether or not a particular piece of prior art to have other reference disclosed believe the properly construed claims those are the exact same issues in the in the i p r the same prior art was raised and the same issue of claim construction was right but what i'm saying is i don't believe the word having that guidance from this court as to the proper construction of the claim and what the prior art actually discloses could reach a different decision at this point on those on those issues because the this court's decision is  legally blind certainly as a matter of law and there's no no different factual dispute differences in the procedural posture of this appeal versus the one we just heard about which is that in this appeal the patent office did not intervene and in this appeal on did raise the waiver issue that it raised  the in the prior peel that was discussed but i'm happy to answer any questions you might have i don't think the issues are any different from what you just heard a i guess i have a maybe a due process quest know there's an argument as to whether on here has its own independent interests and in protecting itself against this patent from from fair trial you know we hear that on has its own products and they're concerned about this patent so they want to vindicate interest in protecting their product and that they don't merely have a derivative interest from fair trial and so the question is given that independent and distinct interest is there some due process problem and precluding on going forward in this proceeding given that they never had an opportunity to participate in district court for child litigation and now by virtue of some at some point during the course of the i p r proceeding and going to a merger here with fairchild ok so i will address that the issue here is that there no evidence in the record there wasn't any evidence in the record before that i'm just saying assume i'm sorry assume for the moment that upon are a part of the icon and are these circumstances in fact does have its own independent and distinct interest  the case said that it doesn't actually matter whether the party who became the privy or was in pretty with the precluded party has their own independent interests that doesn't trump the fact that they're in pretty with a party that should should be precluded so i think the case answers that because we were looking here at whether it's fair for a party to come in and  party who had its day in court and had a full and fair opportunity to litigate there was a final judgment rendered against them and basically just can undo that simply by virtue of buying that company when that interest goes on i think that the more interesting question and one we were not facing is what what would happen if they bought fairchild and then divest it the business of fairchild that was at issue in the st case and then they they no longer had the derivative interest a fair trial but only at that point had their own independent interest that might be a very more interesting question but i think because they didn't and the interest in our view was primarily not addressing this court's prior decision on those objective conditions in fact ignored the prior litigation entirely in determining that the object of interest didn't apply and also the board of applied impermissible hindsight in finding the motivation to combine two references that were on their face incompatible i want to talk about the objective and issue that question is the nexus right well yes and no the board spent all of its time talking about nexus for commercial success and the rd point dentity between the claimed invention say what claim fourteen resides and what the commercial product is yes there is there's there's no distributor also identity between the commercial product and what's recited in claim one yes there is so claim one and claim fourteen are identical no claim one in fourteen are embodied by the same product or both embodied by the same product i don't know what you mean by embodied because i understand what i mean when i say identical i don't know now what you mean when you say embodied ok so so if you think of the scope of the two claims they each have their own scope the scopes overlap and within that then diagram overlap is the commercial product so the commercial product practises a circuit which embodies what is covered one that same circuit is covered by the more detailed limitations were cited in claims fourteen through sixteen so the commercial product itself and there's evidence actually before the board with the board did actually address that not only was the product successful because of the broader invention if a claim encompasses a one million different embodiments can you say that there is a nexus to a commercial product which represents only one environment that's encompassed by the claimed one million embodiments yes i think the law says that if the commercial product embodies the claimed invention there's a presumption of nexus and the burden shifts to the party challenging it to show that there were some reasons other than the the use of the patented invention that was responsible for the commercial success in this case there was no such evidence there was no evidence why by on it there was no evidence the board cited of some reason that the tiny switch in particular was commercially successful other than the fact that they practice the inventions of claim one and claim fourteen through sixteen and in fact there are specific evidence on the narrow limitations of claims fourteen dollars to sixteen dollars including the size of the current sources in the binary weight sit down i want to focused this court on there was evidence in the record of other objective in disha of non obviousness substantial evidence of copying and praised by competitors of long felt need  any of that all the talked about was commercial success about tiny's which we think for that reason alone the board's decision on obviousness is legally erroneous how can the board ignore evidence in the record of objective in disha when the law says they can't you have to if the evidence is there you have to consider it but to that was evidence that this court found critical in the question of obviousness in the prior litigation so i think for that reason alone the board's decision obviousness needs to be there which is where after the final written to sit after the appeal you have a resemble nation certificate that changes the underlying claims but changes them in exactly the same way that the patent owner amended  case and the record especially the expert testimony is very different all we are asking this court to do is under these circumstances follow the usual practice of this court which is where an issue that has never come up before the change in the claims during the appeal of the i p r kurz let the board take the st shot at determining what ought to happen in that sort of circumstance and i would point the court to a recent notice in the federal register by the trademark office where they address similar issues i mean this just happened two weeks ago and it was published with docket number p t o dashed he dashed two thousand looking at this very issue in other words what happens when you are men at the same time then i p r is going on and i would just point to court that on page ten of that notice the officer points out that one of the key factors is whether didn't allow the board to take into account these factors the board may well decide that it's going to dismiss but given the attention the patent office is paying to this subject we would ask the court remand and let the board consider it in the st instance of course be long after the merger and that's from the three for one of the basic things i need think needs to be brought out on the three hundred and fifteen b is that a company that is looking at a situation where a transaction is going to basically parrot a bar and that company has its own products and its own interests the positions being taken here is that that company just loses they never have a chance to have their own day in court and i agree that we should not be  statute in a way that creates such a due process problem and i would also point out that where our counsel here for p i said oh that's not in the record that's not in the record we cited to in our brief from pointed out the accusations of  trenchant by power integrations against on semi well before the merger agreement and we pointed out and cited to that in the appendix and there was no challenge that was inappropriate by power integration so it's certainly in the record on appeal that we had an independent interest our own products being accused and what they want just to say were you never going to chance to defend that than i p r even though congress clearly put together the i p r system so that a party in on shoes someone who had their own products that had been wayside well these policy arguments tell you that a party doing their due diligence which is what all parties do when they're in a merger right we look at what's the situation and discovers this has the opportunity to file and because on that petition date they are not  stir versus sturgell factors outside the board did here they have the opportunity to file and have their case heard so i do think it makes a big difference but if the merger had gone through before the petition fi you can see your barred from having it right if we court or any day of the board if we if we had failed in our due diligence and identified the issue yesterday i think that's true but that's true for any legal issue you know any time you're merging there might be a problem with the company something that's always a potential problem here they're trying to say doesn't matter that you found the problem it doesn't matter because you can't petition because as long as the murder happened sometime during the i p r you're going to be retroactive barred and we think that's it doesn't make sense with congress wanting a party with its own products who've been accused of infringement have a chance to challenge the patent the sometime during the i p r perhaps was asserted but that's the primary position it's the moment of it's institution but of course institution was left to the patent offices discretion congress didn't say you'll make the decision of institution six months after or you'll make it five months after the patent office actually  complete and unfettered discretion to choose when to institute and that's another oddity with power integrations position because you could have a board who says well we could rule on institution today but if we wait until next week it'll be barred because by next week this merger will completely that seems a very odd circumstance for congress to set up to say that the arbitrary date of institution will be determinative on the substantive issue of whether there's a bar it also of course i those factors also just heading into that particular institution decision doesn't make any sense as a can drag rational choice because all of a sudden you have this arbitrary choice of when institution decision occurs driving the substantive question of whether there's a bar whether the petitions time so for those additional reasons i paint reading it that way and ignoring the condition and your honor you point out that the language says yes you may institute but of the condition is about the petition and that is the question when it comes to a three hundred and fifteen bar the question is that if we all know that that you talk about it in the institution decision sure but the question is is it a bar and the condition the question the language the sat statute uses to decide whether it's a bar talks about the petition not about institution i do want to address some of the issues that were raised on the s fourteen to sixteen claims fourteen and sixteen st of all we heard a lot about the previous appeals the previous appeals did not include or consider the claims addition from this court today claims fourteen to sixteen were not asserted in that case there's no testimony about fourteen to sixteen in that case and the record is completely different secondly i would point out that counsel for power integrations made the assertion that the board ignored the litigation and i would point the court that evidence to say that they ignored it is i mean is just contrary the language in the final decision so what did they do they looked at it and they looked at the arguments made by sci and i would point you to the next stage of the final decision page fifteen the board pointed out that in we argued sci that any presumption of nexus is overcome by the fact that the patent owner previously attributed the same evidence of secondary considerations to features of claim one were not present in claims fourteen or seventeen so again they say all the board didn't even talk about the presumption the board did talk about this option the board said we recognize that the arguments made that yeah there's a presumption but it's overcome because all these secondary considerations are being tied to specific requirements a claim one not found in claim fourteen so then the board analyzed that argument and on the next page says the board makes the finding the very features patent owner relies on to demand demonstrate non obviousness of the invention recited in claim one are not features of the claims that are the subject of the challenges in this proceeding this board looked at the presumption but it is not in your above a presumption and said you can overcome that presumption if you can show that the secondary considerations evidence is tied to specific features that aren't in this claim what about the other side's argument that the claim embodies the commercial product just by claiming more and also might body the commercial product and under our case law you get to have a nexus there while you're on it so i actually agree with all that until you get to the end of it i actually don't have a problem with the venn diagram the overlap in the middle that's where the product is but once you get to the presumption that's not the end of the story under this court's law you can rebut that presumption of nexus and one of the ways you can do it is by the page of the transcript is not in fifty seven lines one to three the testimony of their own vice president of marketing mr matthews that's a day for sixty nine again the testimony is from is on pages twenty five dollars twenty six cents and they both said if the specific digital jitter characteristics that caused the commercial success and all that the wonderful praise and solutions of problems claim one has those elements those did a digital jitter elements claim fourteen does so the point here is that nexus is a factual issue and is not but do i remember right is that the burden processor framework work to say they might get a presumption when you put on evidence to that might point the other way who has the ultimate burden of curse wager on the nexus because the way that how we agree that the evidence is insufficient to show things right and that's because they had a presumption and in the neck the evidence itself we pointed out how the evidence itself showed that there wasn't commensurately isco the forbidden affirmative finding in our favor and then based on that said there's not enough evidence here and the secondary considerations are of course brought by the patentee they're not brought by us so all we needed to do and we had the burden to do this was just show that the nexus was rebut it and there is language in the final written decision confirming that we showed that and that's the language saying that these secondary considerations are tied to playing one feature is that our founding claim fourteen that's a question of fact and sufficient finally i just wanted one more problem and i know that i am at the end of the my time they made you call me about all that well there was all these others if you look at their briefing and specifically i would point the court to coach three  dollars which was their pattern or response they never argued claim fifteen by itself individually they now make that argument in their reply brief that's the st time in however many years that they've said open fifteen you should look at secondary consideration are on the nexus question the word tongues had on this digital like the quality of digital and in the discussion we had previously there's no finding that claim one thousand four hundred and fifteen or sixteen preclude a digital implementation in fact the part that no one disputes practice is those claims which digital so we have a situation here where the board is saying well the claim doesn't explicitly require a digital but it encompasses a digital solution so how is it that the success of a digital solution somehow undercuts nexus for the claims that are at issue here it and there's no case law that says you know if if a product practices two claims in the same patent that evidence of nexus to to one claim somehow precludes that same evidence applying to a different claim that's just not the law and it seems like a really inconsistent result no one claimed talks about digital curator of claim one claim fourteen doesn't think anything about to do and i wrong actually that's not the case that the there are specific elements in claim one that the witnesses said yeah those are digital elements for example a back and a counter those elements are not reciting the claim fourteen but the claim talks about using current sources varia and switching current sources never made a finding where they said these claims exclude digital technology they just said the claims don't require it because we don't believe that that is sufficient basis legally to throw out the presumption of nexus so certainly after the complaint pretty can arise in the district court litigation we think that would be consistent with our interpretation of the statute here that at least as of the time of