the admission of session dated that person who is a member of the far is good standing with the highest court of california i have knowledge of her credentials and am satisfied that she possesses the necessary qualifications i have had the pleasure to have definitely serviced my locker room for the last year and a half that he is not only very talented and diligent and hard working but she's also a great joy to work  thank you your honor good morning and may have please the court the board committed three errors that warrant reversal st the board violated the a p a is requirements of notice and opportunity to respond when it found claim forty nine unpatentable on an argument that it is never raised and the parties never let it get and instead it based that find on an argument that the board itself raised addressed and decided for the very st time in its decision on remand claim forty nine requires among other things a omitting stitches to form apertures was a well known technique in the art and in the i p r proceeding below adidas did not argue that omitting stitches to form apertures was a and by the way the board rejected that argument that was litigated by didas and its final written decision on remand the board found that does not disclose apertures formed by omitting stitches as claimed and forty nine but the board didn't stop there like it should have instead the board went on and we submit this is where the board erred the board went on and found the claim forty nine dollars was none the less obvious mean by the it well so our interpretation is that this court said we don't know why the board found claim forty nine unpatentable because the board didn't articulate its reason and so we're going to send this back to the board so that it can articulate its reasoning we don't we and you speculated that maybe the reason was that it thought omitting stitches to form apertures was a well known technique in the yard but is it no it's not in there's no record evidence that it's a well known point is that the that issue was not raised by adidas and it was not litigated and we had no opportunity and when we went back on remand the board did not reopen the record for additional evidence an argument do you think that the board could rely on references beyond when to petition or science but then your concern is the lack of notice yeah absolutely of the the board can rely on on references that are part of the record provided that there is notice an opportunity to be tim to be heard so i understand your argument that you had no idea that the final written decision  respond but i think that that scenario would also conflict with what the supreme court tells us and s a s where the supreme court said that it's the petitioners contentions were not the words discretion but here we're dealing with a motion to amend right you were dealing with proposed substitute claims that at a minimum look different than the issues patent claims and so the petitioner for those issues patent claims of course have created something new and so now we're going off track and why couldn't the board identify something like this with them the petitioner of course coming forward with the burden of persuasion on the petitioner to do that and in fact that's what it is did here and adidas argue that if she did disclose davila i think you're drifting away from my question my question is just a structural one is it your view th or if it sees something in the record that teaches the limitation that you have added in to a proposal that you claim does the board have to sit silent about that and do nothing and can address that question well if you have a context of a motion to amend and if the answer is no why is the answer well if the board identifies an issue notifies the party of the issue and the context in which it's going to be litigated i think are you changing your view on this no no absolutely not i think that the board can consider references that are part of the record as long as the parties are given the pet owners given notice an legal error that we believe the board committed by not giving us notice an opportunity to respond we believe led to the board nd error which is there is no evidence let alone substantial evidence that supports opinion is instructive and in that case the court cautioned that the general knowledge of a skilled artisan can't be used as a whole even if it's not well known it's a reference it's part of the prior art talks about open work structuring an empty needle it yes your honor but it does not talk about omitting stitches or skipping stitches and there was no record made that nike has not responded to is that this is a different context this is a proposed substitute claim this is not a typical i p r where there is claims beforehand and a petitioner is shooting at issue claims and as the supreme court says in sas the petition guides the subsequent litigation and products this court said orde has to evaluate propose substitute claims in light of the entire evidentiary record and we think that context is very important the notice cases that nike generally revised are all in the context of a set of issued claims and we also see that the burden and nobody could ever conclude that your arguments are persuasive are you saying in that context it's ok for the or on its own to go fishing around for the entire record and then to find the claims unpatentable so i'm going to break this into two parts st the what the board can do and nd the notice issue and with respect to the board with the board can do we do believe that the board has the obligation under awkward products where both the majority opinion and the discern agreed that it was up to the board to look at the entire record when examining proposed substitute claims because separate apart from the burden that adidas for the board in the patent office is an institution has the obligation to write a written decision about the patentability of the proposed substitute claims which would never have been examined and as the court grappled with an opera products there are situations where petitioners don't care that much about the substitute claim or the petitioner is no longer in the case and the board as an institution has an obligation to review the patentability of the there's actually two things going on yes maybe the petitioner has a burden of proof but at the same time the board has its own obligation or opportunity to you know a lot of them do something freeform outside and beyond arguments well i think i think that's a fair statement and i would also with respect to the petitioner in this case candidly or on our disagree with the premise of your conclusion we did not do nothing we had provided initiate a reference we  its is through what the board did which was supplement your incomplete arguments with finding and reference that was in the record and fishing something out of if you step back and look at the issues here with respect to claim forty nine dollars we had met our burden on every single element being in the prior art except for the omission of stitches is that part of the skill in the art and opera products instruct the board to go look at the evidence of record that the petitioner a symbol been presented and the board patched that together and on that record products i guess that the board can look at the entirety of the record somehow maybe you think it makes sense provides notice but what about this scenario which we asked your post in council about where the fundamentally what you're raising is what is the character and quality of notice required in a proposed substitute claim situation when you've got this interplay between the boards obligation and the petitioner of obligation i mean what what kind of notice is required in that situation and generally we agree that in the context of an issue claim an institution it is the parties were sponsibility to provide the prior art and citations to portions of the prior art to provide notice that's that's what sas says that's what the case all says that nike says it i think the character and quality of notice in the proposed such to claim situation is different because these are new claims that have never been examined and as long as the board generally i agree that there should be sufficient notice for a party to respond the question in the case is as its very fact about is what is sufficient notice for example at some level what nike is arguing is what we weren't  aware that the board was going to end up on these three or four pages of spencer which is a very long reference well you're genzyme decision talks about how the board can rely upon the same body of prior art that's in the rejection and there is no need for the board something different it is different in genzyme just so we're both clear those particular passages that were relied upon alternately in the final decision were discussed and debated throughout the i p r proceeding everybody knew that those pages were in play in this particular instance i think it's fair to say nike had no idea that these two pages from spencer were going to be fished out of this four hundred dollars page text book and then they were going to be surprised with that in the final written decision and so that's why there's it troubles me that that can be allowed that there's no warning i mean  to your opposition and not only do they have to reply to your opposition you are putting the patten owner in a position where they have to invent any and every possible theory of uncountability that could exist on that record it might have ten references it might have a one hundred references in the formal record and they have to now on their own try to imagine what are all the different iterations the possibilities that the board m final written decision that hasn't been presented discussed debated or given any notice throughout any part of the proceedings and that seems just a peculiar way to go and seems to  does talk about the notion that there at least in the institution final decision context there shouldn't be a requirement word for parity which is kind of the issue here how specific do you have to be an assume a similar not kind of similarity and if if if this court concludes under your scenario yet there's a problem here on an administrative agency level the appropriate course is to remand because this is this is sort of the situation that opera products was contemplating was going to be a problem the conflict between the boards obligation to the public in looking at these new proposed claims and what it has to do as an agency versus the allocations of the burdens of proof in this case would be a good vehicle for the board to actually say ok here's the procedure where we see a gap between that which the petitioner is arguing and and that which is where we see something in the record on that gap here's how we're going to notify the pattern or on that and give them an opportunity to respond this is the vehicle for doing that we think notice should be sufficient in the context of this case the remand order than the fact  reference was well known there was a debate about that both experts were out on that this was a treatise it's a long test but because it's relied upon by both experts in the heart and to ask it's pretty easy question to we have a different  ninety's point that well this was a long reference hat and judge chin's point how would we know which specific pages that the board might end up relying upon right and i think that's just a something that take is taken and to the point of what the board's obligation was and what i d s his obligation was as the board observed neither party neither us nor nike asked for a briefing on this issue nike did not say well we wish to address the remand issue that this court had had identified in its in its remand order if there's no further questions on that issue i just want to briefly comment on the issue with respect to the other claims in a long felt need and one point that night he does not deal with in their briefing is that the order found that there was a weak evidence of the law and then it said that weak evidence does not overcome the strong  we think there's more than substantial evidence to support the weak and there were no legal errors when the board made that finding particularly the board said that schuessler actually met the need identified that is the need to eliminate cutting waste which is something that this court actually observed in discussing the motivation to combine with schuessler in its remand order so that board's finding is consistent with this court's remand order the other the other point we make is position of scouring the record and trying to anticipate everything that the board could potentially site to for an argument that the petitioner never raised in addition to putting the patent owner in that position it's it's going to result in appeals like this one where the record is undeveloped when it gets to this court the record regarding spencer and what it discloses and what it would mean to a person of ordinary skill in the are that was not litigated below to quickly hit on my co counsel her opposing counsel's comments about the board's findings of weak evidence of secondary consideration get there could you comment on option perhaps for a minute that they can do that and why i want to remain and be appropriate in response to lack of notice what right because our position is they've already had an opportunity to do it and they failed to twice because the idea that potential argument in fact that's why the board picked up on it and we went back on remand adidas didn't ask to reopen the record to make that argument they could have and they've done so so for that reason we request that the