thank you i'm may have pleased the court paul hughes for appellate l g electronics and i'd like to begin with the a p a issue r p a p a argument has three principal prongs first the court requires the board to state legally sufficient basis to invalidate any patent claim second the board gave no reasoning whatsoever to support its decision to invalidate the majority of claims here and third this court has repeatedly reversed the board in identical circumstance those two references are analogous that the board did not resolve but i think that the first and last name field of human power are what they're in the same field but that they deal with very different problems and have different solutions to those different the board does not provide the kind of analysis required and i think this court's decision securus is directly on point and compels reversal here and i'd like to walk the court through why i think that is so compelling in secure as the court i  fighter addressed a basket of clams had been invalidated by the p tab including dependent claims three and eight there were several others will just refer to it as claims three and eight and there the the board did exactly what the board did here and the board said in its decision securus quo petitioner contends brown teaches or suggest limitations of each claim that cites the petition pages eight hundred twenty five twenty eight to thirty two and then it the board goes on to say that we have considered all of pad owners arguments but for reasons set forth below we agree with petitioners positions but it didn't say anything about claims figure eight was at all all it said was we agree with the petitioners positions that was the exact language the court use that's no different than this case where all the board said for everything other than claim one is we find the petitioners arguments persuasive there's no daylight between labeling arguments persuasive and the board saying it agrees with them can i say i want to listen because and i understand your position one thing that could be differen then the partner response is finality and it similarly focuses on plain line and treats the other claims i'm a cursory manner and then there's nobody here here in class so my question is given that background kind of difficult more difficult in this circumstance to sign an heir to the boy wearing the patent owner itself was treating the claims following the board's lead in the institution decision focusing on claim one and that is not it not a distinction i think secures addresses that question directly because looking at the board's opinion securest when it deals with the pending claims three and eight for example it says very specifically that after institution the patent owner specifically contests petitioners insecurities well i know that the patent owner did not make any individual separate arguments representing it so the what happened at the board was identical and i think that's the starting place is what is the board's decision and the board's decision did not address claims three or claims a in any way uniquely and this court said it didn't it's not relevant that the patent owner had not addressed unique arguments as to claims three and eight that the board still had an obligation expound upon its reasoning in great detail in all cases and we make no comment specific level of detail required to sufficiently address the merits of these claims in particular it must provide some reason basis for finding the claims obvious and words from a meaningful review by this court  presidential it is your honor and i think it's non presidential precisely because the court found itself bound by icon health and you base of which held which which required the exact same circumstance i think was not presidential precisely because by the time the do the first is it must state a sufficient affirmative case to invalidate each claim that's that's before the court has said that repeatedly as i said i can health and new face of so for example i can't help quoting invasive said the board quote cannot satisfactorily make a factual finding and explain itself by merely summarizing and rejecting arguments without explaining why except the prevailing argument that's the first thing it must do is it must state an affirmative case that sufficient for each individual claim the second thing once it's done we had arguments from the patent and then the board said we picked the petitioner's arguments period and we didn't explain away the patent counterarguments and that was the problem there and compared to claim one year that's in fact what the board did with claim one it identified the arguments made by the petitioner agreed with those but then when it came to the partners counterarguments the board actually engaged  explaining why you didn't find the pattern was counter arguments persuasive so that's a distinction both for claim one and for the non claim one claims in this particular instance compared to secure make any unique claims as to the three or eight that's in the board's decision at the start of page nine and then before this court global telling who is the apple e in that case this was their principal argument as to that bucket of claims beginning at page thirty four of their brief premise of the board's decision and that was the basis on which the up police asked for a firm and in this court was the exact same basis that there was no independent argument made by the patent owner as to a whole series of claims including claims three and eight setting even filed a response or shows up into the i p r if a pet owner chooses not to even respond to an ip are the board still must state a sufficient legal basis to invalidate each claim that's within the regulations in that state by aqua products that is essential for the agency to do it job as the court said in personal web technologies like on health move a step the board doesn't do its job unless it states a sufficient affirmative basis now they don't have to go down every rabbit hole and respond to every hypothetical counterargument but they have to go claim by claim and show two the board by just saying we find this persuasive doesn't tell this court and doesn't tell the public which of these arguments if you easily look at it in two thousand pages twenty nine through forty and see that the explanation for where all the limitations are in those other claims as described in the petition is pretty basic it's pretty straightforward it's pretty close to being a follow on to all of their arguments about clean water and so they're for it is plainly a reason we're discernable when then would you agree that would be fine for the board in a situation like to say we've read petitions to pages twenty nine through forty we think this is pretty basic technology we think the petition pretty as is precisely right where the ford still goes through a claim by claim it's brief but it says claim you know nineteen here's the here's the limitation and here's the piece of prior art it's simple but it shows that the board is actually doing its work it shows its work and that there is no ambiguity in this decision about why i claim one or for that matter claims nine through twenty are impassable where there was a dispute about a particular issue the board articulated both sides explaining why it was accepting one argument and why it was rejecting the other that for example was limited to the motivation to combine on clay one there was also a secondary argument which they're not pursuing on appeal that the board did the same procedure for but for the remainder of claim one there's nothing left to just take some kind of opinion writing class or something like that i'm not aware that they take an opinion writing class i do know that i ask because you do see some variety in the way opinions from the board get drafted and this one seemed a little more unusual to me in the sense that it said we agree with the petitioner on claim one petitioner argues  agree with the petitioner and then actually engages in and allison what it finds persuasive about the petition and then goes back on the bottle and explains everything and why it doesn't no counter argument persuasive but that's not the kind of opinion that was written here well at some level it wasn't some of it was not part of the reason the board uses the approach that it used here where for example on the scope and concept of the prior art as it pertains to claims one for example and so on and all that the board recites essentially regurgitates the presentation of the petitioner and the evidence that the petition precisely understood in the board during the opinions like the reason why i don't speak for the board why this particular a p j wrote it this way but i think the reason why you see this sort of approach is that at the end of the day the burden of proof is on the and so the board is going out of its way to point out what arguments the petitioner has given us what evidence the petitioner has marshalled in support of the unpadded ability for example claim on instance where like this where they present that in a complete recitation of what petitioner has marshall in his petition they then align themselves particularly on an undisputed issue by saying look that makes sense we agree with that is a persuasive presentation on that particular aspect of claim one of the obviousness it is supported by credible evidence we find it to be persuasive obviousness the board then went on to the extent that there was a dispute about part of that obviousness showing to again present the counter arguments and then make the kinds of findings and conclusions that your honor is looking for particularly on motivation to combine i mean motivation to the vine is a particularly important one because to take it back to these notice cases when we look at cases like icon and you base it typically the issue about which there is a lack of reasoning from the board is a motivation to combine which in the obviousness context makes sense because when we think about the particular elements of a one of three showing that's where the reasoning really comes in as your honor pointed out in questioning my friend whether all the teacher is a core or a process or whether he teaches measuring usage is kind of a balls and strikes thing you can look at that and say yeah i see it you pointed to  bit in here they have they could do it the way that judge chen is looking for they don't have to do it that way the way they've done it here is the way that it was done in out dry and it was done in secure they re unchallenged portion of the obviousness and said we agree with that it is supported by credible evidence it is persuasive for the purposes again what's driving the notice requirement and the notice cases do we know why this claim is on top of all we know why this out as this trial proceeds it's incumbent upon the parties to make sure their flagging the issues that really need to get the nitty gritty analysis claim one was really the only one that anyone in gauged claimed nine  an even more so close institution your honor i mean in terms of what issues the patent owner was flagging as a debate as a dispute there was not about claims nine to thirteen fifteen one thousand and twenty everything was about claim one or more generically the motivation to combine and in song which covers all those claims so to the extent that there was a dispute raised the board articulated both sides gave you an analysis as to why it was accepting the prevailing argument from gesture of why it's rejecting the counterargument from the pattern or but i don't claim nine there's two things going on in an obviousness showing we have the sort of mapping of the claim limitations to the art and then there's that sort of narrative part of the obviousness case why would one of ordinary skill in the art have combined these things well that narrative as it pertains to claim nine is the same as the narrative as it pertains to claim one and the board has expressly articulated that frankly twice in this decision pages appendix ten and then again at thirteen or fourteen so we're not in the dark about why when one at the petition for claim nine the presentation of the obviousness reclaim nine starting on appendix page seventy seven which is a petition page twenty nine the first thing that petitioner says is quote claim nine continually see a reference to section beef or seventy four that is the claim one argument for zong and all men and if you look at claim nine and claim on their virtually identical there is a very slim narrow gap between ninety and one the reasons why claim nine is obvious and important or essentially the same reasons as claim well we are not in the dark here about why claim nine is on that level it's the same reason it's been since we started it's in the petition there's no dispute about it and so to take it back to these notice cases where cases like securus and out dry stand for and at some level cases like icahn and invasive where the board was sent back to the board is where there is a dispute you have to make sure that as a board you explain why you're credit ing in accepting one argument and rejecting the other to the extent we had a dispute here the board did that were for a claim nine there was no dispute the board's explained with pinpoint accuracy incorporating by reference the portion of the petition where the explanation and the reasoning for claim the court explained as respect to reclaim sex for example the board recount of the party's arguments identify the specific portion of the petition informing the board's decision and explain why it found securus argument unpersuasive here we don't even have the need to know that it's permissible for the board to incorporate arguments and evidence by reference so instead of regurgitating the uncontested argument here for example on clay knight and his petition it has simply given you a pinpoint citation to where that argument is and this idea that claim nine is replete with alternatives whether that's true or not that is not unto itself there are zong and all made can both teach a claim limitation when you read the presentation for claim nine it's readily understandable you can go and look at and thank you donna this case addresses whether or not the board can use simple boilerplate language in every case here we know they use boilerplate because for ground to the board cited the wrong is even though they cited the wrong page range we can assume that all they meant to do was incorporate the petition whole self by reference but cases like outcry and secure as in all the other cases say it's not enough simply to point to the petition and full the patent be we drop the petition it is through fifty i think in cases like outdrive and others the court has said no it's not enough simply to incorporate by reference without saying what it is that the courts incorporating certainly can incorporate but you have to say we agree that it's this reference and we find that persuasive for this reason that's what's required certainly you can use incorporation if it has those specifics but one cannot do is cite the entirety of a petition or the entire page  block range of the petition especially when there are multiple arguments in the alternative as there are here where it's impossible to tell what it is that the board actually found persuasive as as opposed to what they're not that's essential is this course repeatedly said for the board to actually do its