in which the adverse parties have access to spin as under section twenty four no court has ever held with the right to subpoena may be abolished entirely in adversarial administrative proceeding indeed because appeals in enterprise for examinations because they don't administer section twenty four that's one reason your honor correct and in fact assuming reason well the problem with that it seems to me is you look back at the history of this the twenty three and twenty four came into the statute at the same time they seem to be related to the circuit decisions before the creation of this court particularly if it's circuit decision and brown seem to suggest that the purpose of twenty four is to allow for s extension drawn in the cases between subpoenas issued for purposes of discovery and those issued for purposes of entry of evidence into the proceedings and i believe the cases recognize that even the ones defined as you mention interplay between section twenty three and twenty four there definitely is interplay but it's not the case that section twenty four provides for subpoenas only were provided by section twenty three  twenty four provides in very clear terms that a party such as corpus has the opportunity to go to the district court and seek that information here that section twenty three is permissive so there certainly is an interplay between the two but twenty four is not dependent on twenty three if as here have an office has an exercise its authority to promulgate rules now we're looking at the term contested case right and what you're seeing is a contested cases something decided before examiners not judges it's something where there's no discovery no cross examination there's no filing of motions it's and th circumstances and i think of case i tend to think of something more in a judicial setting in my misconstruing that term case well over their judicial settings can of course be contested cases but it's not  believe it's a case and it's a contested one in the sense of there are adversaries who have the opportunity throughout the proceeding and to the same extent to introduce both argument and evidence here for example abbott had the opportunity to come in the surely with its arguments for why the patent should be found obvious and they came in with argument and evidence or just came in with this argument and evidence and i haven't had the opportunity to reload to is a case i did use the term proceeding i think a supplies a put equally i think the key word here are those contested and what we have in an inner parties or examination in contrast to an ex parte the rig's animation is a contested case where you have an adversary having the opportunity to present argument as evidence and as i mentioned there has never been a case holding that the right to subpoena in an adverse and mistreated proceeding can be abolished entirely and that's what's being sought i'm sorry your honor and the the the p t o has adopted rules which limit the discovery could you under twenty four under the new stance you go in district court and say we're entitled to more in the way our situation that the parties need to seek approval of the p t o for proceeding under section twenty four and if the people you couldn't go into district court under twenty four unless the p t o it authorized that's correct unless there is a challenge  twenty four nor any rule requires us to do anything in the way of seeking p t o i believe what the rules seem to bore subpoenas under the circumstances because the rules defined this is not the contest well that's the key issue whether they the rules are silent on this point the rules say that this is not a contest a case and therefore the p t o s rules do not apply it's an open question through the side by this court as to whether section twenty four where the p t o has an exercise its authority under section twenty three to promulgated rules nonetheless consistent with congressional intent and abel's a party to seek subpoenas and introduce evidence into the record i'm confused because it seems to me that the  agency has promulgated rules that say you can't get a subpoena under these circumstances because they've said this is not a contested case well you're on it to be clear  you're out of there in in that respect they promulgated a rule that's inconsistent with the statute they in finding that this is not a contest a case it gets to the deference issue the question is whether or not the this view that this is not a contest the case is entitled to deference whether they were correct on that point that's a sense one of the central issues to this appeal and on that point they are wrong they they ha all the historical indicators of what constitutes a contest the case in section twenty four in its predecessor were enacted indicate that parties to administrative procedure that has an adversarial aspect like this one are entitled to subpoenas for entry of evidence into the record there's a distinction drawn and they're not entitled to discovery that is seeking information merely to seek more information that may be introduced into the record there's a distinction drawn on that point but it is a case that in the so you're on i believe it's pursuant to gartside i believe the standard for review for cases that have a complete record and again this is the issue we're seeking is the have a complete record if there's ever a further appeal of this matter where there does not permit discovery second re examinations are not contested cases under thirty five u s c twenty four and the separate reasons for a permit stem from one basic factor on the name reexamination would suggest in her party's reexamination our examination will rather than adjudicated proceedings which are conducted in front of staff examiners rather than in front of l j as which are closely modeled after initial examination procedures turning first to the section three fourteen a argument congress specifically modeled reexamination closely after initial examination there providing the statute that except as otherwise provided in the section three examination shall be conducted according to the procedures established for initial examination under the procedures and actually one of the referring to the procedures followed it doesn't seem to be addressing the questions that were oh it's not directly addressing in that portion of the enterprise review nomination statute your honor section twenty four what it is doing is setting up the process that congress mandated when it set up the reexamination process which is the procedures except as we other prizes provided by statute shall mirror the procedures for initial examination that is why it's a reexamination and if there are any questions in the plame leak is a contested proceeding you have responses whatever is served on the office has to be served on the other party you have appeal rights arguments made back and forth and it's well first of all i would disagree strongly that it's a contested case as that term is used in section twenty four that the term of art which is the supreme court is caution can't just be derived down to it's plain an ordinary generalist type while there is an element if you were to ask someone without any knowledge of the legislative history of the statute is there some type of a contest going on maybe you would get the answer being yes to that if you removed it from the terms of the statute but the same answer would apply why is this different oh it's very different terms of all it's an examination all proceeding and there's never been a case that is found that discovery is required under due process for example an age for example an administrative proceeding specifically to this issue in section three fourteen a just like they did in the ex parte resembling action statute they chose to model the profits after initial examination which does not allow for that type of discovery cross examination lu was that this is a contestant case he said because when i tracked it there was a situation where as an adversary he said abbott was submitting evidence and argument in support of their arguments and that could respond to their evidence that happens in ex parte reads emanation i can initiate an x party reexamination i'm certainly in some vague way contesting the validity of the claims of the patent if they put in a patent owner statement under the statute i have the right to submit evidence and argument to respond to that but that's not how the process was set up if there were any question which i did not if there were any question about what congressional intent were it was answered here judge dyke referred to the new a i a interparty as review process and as we started our briefing as the record reflects when congress an act of the ai two thousand and eleven they specifically changed the process and the legislative history reflects this and they said they were quote converting it from an examination proceeding to an adjudicated proceeding and part of doing that was sending it to judges rather than examiners and most importantly part of doing that specifically that vic congress had this was that one of the changes that they were making to inner parties reaped emanation was that they were adding discovery limited discovery mind you but that they were adding discovery that was a change that was deemed an improvement if it were there all along if it were there by statute all along that would be a change that would be a nonstarter but they specifically recognised it as a difference and when they did that they felt like they had to send it instead of to examiners to l j in that circumstance and by the way this notion that there is a difference some kind of distinction between what they're looking for that is just subpoenas and discovery that first of all  absence of any support for that in that case was the best they have as a passing rep and so that interviewer ok that makes some vague distinction and doesn't turn on that and it's certainly belied by what congress said in two thousand and eleven when congress added the ability to cross examine the experts in the ag what's that under it's under the caption of discovery in other words congress says that the ability for example to cross examine the deck where it is discovering again that something that they said specifically was a change over  did come before so we think that based on all legislative history based on the p t o s consistent interpretation of this based on that going to congress in two thousand and four and saying congress people aren't using interparty through the emanation because there's not not dispositive what's dispositive is that when congress did so they specifically called it in the house report an improvement in the difference and they specifically said it was a transformation from being an examination of proceeding to being adjudicated proceeding so the fact that they included it certainly telling given that it wasn't included in three fourteen a and given that three fourteen a was modeled after initial examination but what ends up being dispositive there beyond the plain language of the statute is congress saying hey here is a difference between what was available before that doesn't leave much room for debate to my knowledge that hasn't really been the nanny or place to patent and trademark case that's correct or on that's absolutely correct your honor and as judged i pointed out section twenty four traces its roots back  exists that makes it a contested case not in and of itself i wouldn't say i would say the courts formulated the tap fairly properly in its initial briefings before the lower court which was doesn't bear the hallmarks of traditional litigation one pretty good hallmark of traditional litigation is are you in front of a staff examiner who has no legal training or in front of a job for example in the trademark context those cases are specifically set up to be in front of judges have the motions practice have a cross examination have those trappings of litigation this is a situation where we don't have to divine congress and congress it's that whole bit like an initial examination except for as we specifically provide here in the section and that leaves really no question about what it is and again turning to in the types of cases that have been treated as contested cases over the year and we see that this is not a contested case when you look for example to the floor statements when the end of parties read damnation statute was passed in the first place where congress was saying they did not intend to turn this process into one resembling litigation the opposite of the test that's been a scout that we agree with reporters as represented rohrabacher said ought to do an inner part is really the emanation is give or reexamine request or the option to further explain said instead of saying these are not contested cases it said these are contested case in a lab discovery would that be a permissible interpretation of the and you and i would believe it would not be impermissible interpretation of the statute because we think that it's very well established that a contested case is something that there is a hallmark of litigation but the it wouldn't matter for two reasons reason number one would be that as we point out our reason is not any contest over this that in the event that there is a more specific and a more general statute the more specific statute must control here we have a statute specifically addressing the procedures are in apartments were examined agent that's three forty night if there were a conflict it went out of or section twenty four again we think there is no such conflict and the second reason is as your honor pointed out and we agree with based on she hands based on the legislative history of twenty three and twenty four being together if the p t o has not been brown if the p t o is not authorized to discovery it's a nonstarter in the first place i think the place to start is perhaps with the arguments that portis has advanced the smore knowing they get matters backwards here and to the oral argument this morning is highlighted that a number of respects the case if they were to have done it though this is how it might have happened right section twenty three gives them broad authority to make rules about taking of testimony when you've got two parties in front of  o certainly if we had an initial examination rules that somehow facilitated the taking of depositions from third parties not involved in the initial examination then consistent with the interparty is reexamination statute i'm referring to three fourteen a you can certainly imagine a world in which obviously here too we would have this providing for that kind of discovery but we don't for very good reason p t o doesn't make walls about taking depositions or obtaining testimony without looking at what scheme congress has put in place and looking at the interparty is rigged emanations scheme p t o is always understood that it wasn't meant to include discovery that congress was creating a reexamination scheme an examination of scheme in the model of initial examinations looking just like ex parte re examinations and that discovery has never been part of that so the way in which i think we're just at matters backwards is a quarter comes before this court today and suggests that because p t o has never authorized discovery in any kind of examination of proceeding initial or reexamination that they therefore ought to be able to obtain it automatically well there's a good reason that we have not only not made such rules available but actually here expressively declined to do so and said that it's not in a district court i'm trying to figure out why we're spending so much time on the rules of the p t o well as to say connected section twenty four when it was introduced more than a hundred fifty years ago was part of section one of the patent activating sixty one it was part of a single provision that began by giving the patent office products r t to make rules about the taking of depositions affidavits etc and then went on to provide ancillary jurisdiction in the district court to give people what was why do you feel so compelled to be here what do you have at stake well we certainly don't want to see discovery be authorized but we're not  motion to quash in the district court what am i listening to the p t o well there's two things at issue here right the reason that there should be no subpoenas granted by the district court number one hasn't authorized contrary to she and contrary to brown if you could if you could do what criticism suggested today which is disregard the fact that p t o has not provided for discovery in cases like this short circuit that and go to the district court and get the relief you want that would be problematic for p t o because then in a fact you would be forcing p t o to provide in its proceedings a space for that discovery b your rule making authority and we might have a record on that if this were an a p a proceeding challenging your rules we don't have a record on that so you're talking kind of beyond our record you're just going to figure out why you think you need to be here so on the particular reason of bringing up our war making authority there i was only looking to respond to just ran a special but you responded by going beyond the record in this case right we don't have a record p a rule making challenges or any record of what the v a is a state i will absolutely honor the reason i was going beyond what's at issue and in this in this case because the question went beyond the question was should well i think there's two reasons that we have something worth saying before this court today so what is a concern about it properly decided i think you know this case be decided without our presence our concern is that the result that cortices looking for would certainly implicate our interests and so the the case is not about whether or not there was here certainly to say look regardless of what could have been done under broader authority the p t o as of the other things to be extra grants that if everything you're saying to me is correct why do we have jurisdiction why don't you just wait for the a p a case which has been placed on hold while awaiting for this motion to quash to come out of the way you're addressing the other case aren't you and if the other case were before  why do you know apart from resolving this particular case what significance will we have over a thousand cases that are still pending under the old interparty as reexamination proceedings and when congress pa only made the intraparty his review which is very significant here for all of the reasons that my colleague counsel for abbott talked about only made it a political pro sect of late now at the time that they did it it's also interesting to no system all things my colleagues discussed they also actually made two amendments to the old interparty is reexamination system statute they changed the standard for the initial determination rights which you know as to whether to undertake reexamination so they were certainly involved in the old interpreters reexamination provisions and so their understanding of what those provisions provide for what's involved into parties reexamination is obviously stream lee relevant they and they clearly knew that p t o did not authorize discovery and did not think discovery was appropriate they could have made changes had they thought so they did not but under that old scheme the old scheme remains in effect or the handle were to say that parties to read examination proceedings can go into district court despite the fact that p t o has said in the decision at issue in the eastern district of virginia that they ought that is the definition they've offered they've come up for the court their brief says look it's whenever you have a party contesting the position that another party is taken that's what you find in ex parte reexamination just as much as in intraparty is reexamination and by congress to provide for to allow discovery and that that discovery can be obtained in districts where it's not with that standing the fact the p t o has always exercised its authority and it just so expression and its interpretation opponents referred to the term discovery as much as they did and tried to paint all the parade of horribles that would be supposedly would come into being if discovery were in place we are not seeking discovery as i mentioned there's a long line of cases drawing a distinction in the mystery of context between subpoenas sought for purposes of discovery and those seeking the truth duction of evidence and for the record we are not seeking discovery and what is subpoena isn't that discovery as opposed to subpoenas for the entry of evidence into the record that's a well established distinction in this case looking back as your honor judge dyke mentioned legislative history is important looking back at eighteen sixty one and the procedures that were in place in terms of litigation and in turn in the p t o at that time it's instructive the things which abbott points to as being sort of the trappings  hundred sixty one conduct of litigation looked a lot like what we're talking about now in terms of the p t o proceeding an adversary who has the opportunity throughout the course of the proceeding with a case to examinations that's simply not the case in terms of this feature of having a participant throughout the proceeding presenting the opposing view counsel for abbott mention the possibility of the third party request or in the next party rigs emanation having second opportunity to put in some comments as counsel undoubtedly knows however that's only if the patent owner puts in a statement it's also a case that in the exceedingly small number of percentage of cases there's a pat do that in the midst of vast majority of cases the patent for strategic reasons doesn't put in that statement and freezes out third party requests are such that an ex parte rigs emanation is not contested through the participation of an adversary in the was careful about semantics if you take a look at the statute for ex parte regs emanation the participants in the next part they resemble a sion are not referred to as parties in section three zero three b for example there's a reference to th person requesting green examination that stands in contrast with section three fourteen b one which refers to documents being filed by either party in the pattern of the third party being served on the other party the semantic difference is important the parties to an adversarial proceeding in which each of them has the opportunity throughout not just an exceedingly small number of instances as in the next part they are examination but throughout to present a contrary view of the case along with additional evidence