please this core out of x asks you to look at three issues in connection with today's appeal first did the district court err in refusing to consider unresolved the issues of untapped ability arse just as this court did in there were three point three the third point is the reason alphabets went for review via thirty five u s c one forty six rather than directly to this court welcome back to ask the district court to allow it to present a live testimony opportunity to have reviewed in fact the board didn't look at the written deplore ations of those inventors the court in its opinion that we seek relief from today said that information would have been helpful that testimony would have been of value this court in agilent b f a metric said when the board tells you this kind of evidence would have been useful that's what you present in a one forty six act summary judgment but even in the jurisdiction of the of the district court of massachusetts the law is and was cited that where oral testimony live testimony is available is a different in one forty six action your honor to the extent that the one forty six action is going via statute which specifically provides for a right doesn't define the scope of that right but  i like is to think through this whether the ordinary rules of the civil actions apply or whether this should be some special kind of civil action because it has already been to  understood your honor and where you have a straightforward review without the opportunity to broaden the evidentiary base which is a ordinary civil action the court can find that the decision was reasonable though that on the facts there are no issues of material there are no material issues of fact and enter this and enter summary judgment but where the statute specifically provides that because of the nature of the agency action and the agency the patent office is limited in some respects an appellant shall have the right to submit additional and all those we were happy with this court's decision and i it obviously because it embraced the opportunity to present a dish to weapons the one forty six statute itself encodes the opportunity to provide additional evidence where you have an agency finding that have we been told what this means it would have been invaluable and the statute says you can supply additional evidence on the issues at least the issues raised in this ports president says that's what you do in a one forty six action summary judgment is not appropriate under the ordinary standard and that's the history of the district court for the district to massachusetts your honor the case that the court shrug will to align our situation with the individual case the judge specifically found that if they had been per proving the facts of the presentation to the board with oral testimony summary judgment would not be a problem for you're not saying we shouldn't and we would apply the regional center of our perspective to what is it appropriate standard for summary judgment in those circumstances it's hard to see an issue arising that is not fully complected by the laws giving rise to the patents and it's but if such a situation record yes of corroborating evidence that's the one document that the district court looked at and contrary to the board your honor one document the board the court looked at and said well that is corroborating of conception but it doesn't prove anything with regard to actual reduction to practice which of course it did it wasn't intended to so i'm not going to look further the district court like the board below declined to look at the corroborating documents and this court has held repeatedly the documents just like the testimony of a non inventor can be relied on to corroborate invention priority of invention that's what we asked the board to do that's what we asked the district court to do and we ask this court now to direct the district court to do exactly that and i see question about me the other issues and that is that your argument that the district court should have decided the issues that the board left and decided is your argument that the board was come home to decide those issues or is it your argument that the board issues of an patentability foley unfairly raised in the course of an interference should be decided in that interference did we say that that it would be better for them or to decide you know if we say that the board with the court has only once used a must for the court told the district this court told the district court in cardiac science that it must decide this issue and it must decide according to the court's guidance and that was the written description issued his i recall those cases there was an interference was found interference in fact here the word found there was no claims well i think there's an error and in the foundation of your question your honor there is no finding and that's expressly stated in our bruce there is no finding and no argument anywhere that there was no interference in fact that's a very special finding which requires a finding by the order of the district court but there is no two way obviousness between the claims of party a and the claims of party b they should have this court's jurisprudence says that the legislative intent was to resolve all issues properly raised issues of priority issues of the patentability properly  that question your honor if priority is found to be lacking if you cannot prevail one priority can you nonetheless argue that the senior party his claims aren't countable for other reasons and this decided your honor cardiac science has an awful lot of parallels to this court this case and in cardiac science the district court both applied the wrong standard for a written description and applying to please the court if i could just cycle back to this question about live testimony and whether the court should have taken live testimony i would respectfully submit to you that indeed what the appellant is asking for is that one forty six case be treated differently that a normal piece of civil litigation in normal civil litigation a party is not entitle and well that in effect they ruled on that question but let me take the first part of your question first yes summary judgment can be you can move or summary judgment at any time in civil litigation you may not you may that get past that hurdle the other side may be able to put up enough evidence very early in the case but i could file a motion for summary judgment the day after a complaint comes in the door and it happens sometimes the in the bank this is the rare circumstance it's a say that was i don't disagree with that but still it's the burden of the party defending against this every judge or motion to put up enough evidence at that point to just to get past the s that it will review the decision of the board on the existing record using the substantial evidence test it did not apply the summary judgment standard and then repeatedly said that it was its conclusion was that the board's decisions were reasonable it never once said that no reasonable jury or no reasonable fact finder could conclude otherwise judge young given to say that out loud his opinion i would submit to you but that's exactly what he that is to say what judge young did in his opinion was to say i'm going to assume and credit everything that that pound to said in their declaration that all of that's true that doesn't get us corroboration which doing is whether you're asking whether the board's decision is supported by substantial evidence based on the undisputed facts and that's precisely what what happened here and i would submit to you this that in the back decision hire the this court resolve the question of whether one forty six action should be treated any differently than a normal that a normal case only resulted i in this case the only evidence that was proffered was live testimony from the declare it's and in a normal in a normal federal  summary judgment which is we decided on the papers don't apply in one forty six actions and i submit to you that that that's not consistent with the ruling of higher sort of thing the same thing the opposite when you go practicing the normal standard for summ and in this case because we were free reviewing it administrative ruling it's it it's applying the substantial evidence standard to the fact finding of the of the pack so i think what  substantial evidence standard effect i think is required to apply the substantial evidence standard under the traditional brought up of summary judgment that is to say there have to be no dispute says to material the material facts and the following he said i'm not going to be i'm not going to allow the live testimony the proffer the live testimony and i would submit to you that the rationale that he used for that isn't inconsistent with now with the bank rolling  but his whole get my thinking since they were winner which was on the books for a lot but he did well his holding though his holding is this his god i think you have to ask whether we're asking about whether the abuse is discretion that's what we're doing a grant the summary judgment is refused to do no but the question of whether he should have held an evidentiary hearing is reviewed for abuse of discretion standard just like in in time and it doesn't matter whether he stage and he refused to consider them that proffer was not made and i would submit to you that if in fact there had been a proffer of new declarations and he refused to to consider them at the summary judgment stage we'd be in a different circumstance but the only new evidence that was proffered was live testimony and i would submit to you respectfully that a party is not entitled  agree that that goes issues were sufficiently raised in front of the board to have allowed the district court to decide them in the district court chose to do so yes or ok so your argument is simply that the district court had the correct and with respect there are six cases that this issue over the last twenty plus years that this issue has been addressed in and then the very important case of berm housing the court went through and took a look very carefully at what the holdings had been from the perkins case forward and in all of those cases says the court in berman the house the court had the district court's jurisdiction is of for when the when the the party is dissatisfied with a ruling or the decision of the board that there was no decision of the that really this is kind of urban it's a difficult difficult issues i think actually look our view below was once to get once the board had concluded that there was no interference at all as dr newman was saying  affect walk jurisdiction entirely to hear this now judge young disagreed with that he said that the court went forward in faith and found it ruled on priority that is to say i exercised jurisdiction over the over the priority question but i think i think similarly that the just a court does not have jurisdiction to rule in the first instance where the agency so that's the that's the really the short version of that and let me just react respond very quickly to the issue of whether this court ought to be ruling it granting summary judgment in the first instance  responses to send it back down to them if you were actually to can entertain this issue in the first instance page sixty five of our re we we recite really one but the six zero two patent that's the piece of prior art doesn't teach a method of producing those particles which results in a preparation that's r c d free does it and the answer that their expert  is in my opinion it does not being r c the free replication competent virus free is a necessary limitation of the claims that are at issue and what this question in answer says is that their expert is of the opinion that the prior art does not enable that and at the very least we've got a set of disputes of material facts so while i don't think that you ought to be reaching these issues in the first instance you're ours if you do  judgment you need to put up to see your evidence to see whether you can get past summary judgment or creative disputed material facts and with respect to the patentability should the board and or the district court have decided patentability  an from the house he says if you haven't met the threshold requirement for interference then the board is not obligated to decide other questions like pages of corroborating evidence alphabets tried to present this to the fore that page six of the board's decision the board said we're not going to read it not just the corroborating evidence but the declaration at page five of the district court's decision the district court comes to the same conclusion in response to the summary judgment filed by no virus motion at district court presented the standard list of facts but tiriel facts that are in dispute rely on the very declarations that counsel now suggests had they been brought forward sho been titled out of x to live testimony we agree your honour's at some point those declarations should have been considered we thought they would have been considered a district court and we wanted to help the judge