original theory i don't think it would be a problem for the court to send it back to address same discs new theory or one is that i mean this is this a no this problem and in fact i mean one could argue as your friend does on the other side that you did have appropriate here an opportunity to respond but if that's your right then why don't we go back and do it do over and give you an opportunity to respond and they precluded from doing this at this juncture or is that just that you don't  adequate opportunity to respond they aren't precluded it is a notice problem but the a that's not a very particular regime and how notice must be given it requires a petition that identifies with particularity the claims challenge the grounds for i mean grounds can include whether it's obvious or and hesitation it can pollute combining these three references versus the three other references so there are lots of different things that could get mixed up in terms of what's been in it and  the proper procedures so in a real exam context the statute does allow the board to adopt new grounds unlike unlike the way i care a context is different that's what well i just saw understand i understand how every exam works let's just go to  they're confined in terms of the claims that can be challenge in the grounds of that challenge and that's what sas now judge john wright but i guess we also have a handful of cases including genzyme for example that articulate an understanding recognition that there is going to be some give and take throughout one of these so called trials and and so therefore there's going to be more evidence that gets developed and introduced and and possibly even some to what the original grounds of on patentability were and so therefore the board does have some discretion in permitting petitioners to say things and replies that are different from what was said in the petition and as long as the patent owner has notice and opportunity to respond so what is wrong with that i mean right now we're outside of this case a little bit but i'm just trying to understand why doesn't the order have flexibility if it chooses to to accept a reply that says something different from an institution decision of addition so long as the patent owner does have that opportunity  if it can't diverge at all from anything it's already in the petition then they just go to sleep why do they have a right to put in any more paper a declaration sir argument with respect to th our position isn't as narrow as that they can't do anything they can continue to develop evidence that supports their original theory of and believe so in this case if sandison is petitions had had had identified that it's theory involved modifying the prior art in ways europe doesn't expressly disclose its theory and identify that it was relying on the jet excess of nations to support that modification and it could have continued to develop evidence during the trial and present that to the board in support of its ground but what  can't do is what it did here and what was rejected in both american and in re new mais of as improper new theory not just new evidence but an improper new theory and that improper new theory involved where the petition said we're does something different from the petition say instead the petition said obvious interview of references and b and then the reply says oh well in view of what i just saw on the patent owner response it's really a view of b and reference and then the board says that's ok i'm going to allow that because the patent owner has an opportunity to file this or reply or something like that and then affirms or issues decision in view of references a b and c is there federal circuit decision that said that is improper to do i think that in remove a suit decision comes because of those facts and in fact that change there was even more subtle than what you suggested basis for that particular disputed element then in its reply it for the first time said figure eighteen is relevant and the borderline on that in its final decision and like here the patent owner asked the board to both strike it to strike the petition first their reply was improper and asked in the alternative to submit or survive and then they were denied the opportunity to violence or and they were damaged goods the problem with under the new theory to give us an opportunity that the outcome would be the same and in fact it wouldn't be it wouldn't be at least because we would have an opportunity to present additional argument and evidence but also the points of this argument you did have an when we filed their or our petition response the only thing that we knew is that santas expert in his cross examination had disclaimed his earlier testimony and so we relied on this change in testimony to discredit him which is what you do when it when a witness every claim challenging every ground supporting that claim and what this court said to newman out is that puts an obligation on petitioners to point their affirmative case in the petition and what the court said in ariosto is that the reply has to be limited to a tru may please the court not lists principle argument on appeal rests on a false promise that sandusky reply was an attempt to cure some defect in the would have had a reasonable expectation of success in combining the references to arrive at the claimed invention and the board resolved that factual issue in sandhurst favor how do we pronounce your experts name  chips like switches while i think the board found as a matter of fact that that was in order fully drafted in fact the proposed combination a was doing was providing the actual implementation details and when he was deposed on that heat on ambiguously right off the back clarified i didn't mean that you would take the signal and apply it directly to the fence which i am absolutely saying that you use that signal as the watch it signal that used to nibble effects which you just have to put in an appropriate but what use that testimony and say well you know under in and now what he's saying that would be beyond the capability of persons ordinary skill in the art and in fact that's precisely what what netlist did and then the in the petition that says that a person of ordinary skill in the art of recognized philip decatur's chips like signal in enabling art connelly's but switches and so that is evidence supporting yes but you're still followed by i mean that still has to carry some way has you know that's what the pattern owners peer review i am on part and parcel is not just responding to sion responding to the evidence supporting the petition  those circumstances if the board could be light on it it would be a problem here i don't think so because this entire you know new theory ground which is this in fact not a new theory it's a real it's a response to the  the the the the utility of the chips like switch here and use that and based on that enable connelly's that's which is now the evidence supporting that also so through the logic element it's not just a command signal that's directly unable in a switch it's it's true that a sick logic element that's doing that right yes this notion that the that san disk was not put on notice of the use of of the jet specification in san disks petition and in fact even in the institution decision and if you go to narrative consult the jet act when designing and implementing the concepts taught in decatur and then below that it says jet is a product out a sheet designed to inform a user about the electrical requirements for a d d r s d ram dual in line memory modules including the put that list on notice that that standard was relevant at a minimum as as background art but also as part of the prima facia case so there's no notice issues here with respect to how the defect that the board found round one and in the switch not being actually on the memory then argue no in fact once the patent owners explain what those conditions were they said well person still yet would have known how to modify the conditions to make it work this court called that a new ground and it affirmed the board in refusing to consider that and that's consistent with the way the  issue in the regs and context when it determines whether there's new ground the question what is really whether there was in fact a new theory here whether it was in that position all along given that the petitioner and dr j called out connally and not only which is it but connally's logic element for enabling the switches and so why would it be the most logical reading of all of that they are also using some kind of logic to enable the pits which is in the combination with the qaeda because that's not