obviousness of the form of the three patent when it used the reputation as a primary reference because of that failure the board was forced to employ an alternate theory of obviousness in order to fill in some of the missing claim elements which were never proposed by the primary reference along with a couple of christians and references as a rib as a result of that failure in proving obviously the board was forced to use an alternate theory of obviousness a theory that was never proposed by the petitioner in any of  to appeal the initiation we're actually saying that they did carry the prima facia case you know if that was shown then they can initiate obviously what we're appealing is the final decision the final to see based on the fact that going from that point on that there there is no shifting a burden there is no question about whether they have the burden to establish obviousness my question to you is whether you are saying that if they rely on a particular ground and their petition making is that with the board actually relied on is something that was never actually in evidence and then within then going from there that he would step beyond that what they actually are latins factually incorrect the lear reference itself teaches away from the very proposed combination that the board relied on in making their final decision let's let's drill down a little bit there were a lot of known ways are downhole plugs to attach  setting tool to the plug and and hearable the threads was one way to do it and that was known and i guess layered teaches that notion and so the point of the board analysis of for the one of three is because there are multiple known ways and the downhaul plug are to attach a starting tool to a plug it would be obvious to use one over another and one of the known methods as shown by the player is using shearing threads which is what you've claimed so where's the defect in that if you let me take a step back lear actually teaches using a deformable this and discusses using shared rates however with the board proposed is basically taking the deformable disk of the leader which is if you can imagine a convict this and that is deformed as a plunger is pulled through the down hold to to create this release where the board is suggesting is you take this with the literary francis to just do something that is fairly flat in nature and put threads on the inside of the leader reference itself in paragraphs ten eleven thirteen and forty four actually teach reasons why you don't want to take clear and either attach it with something that will fall down down the hole which will be disadvantageous creating debris in the wellbore and discusses that it's undesirable to drill into the down was not the petitioners proposed argument the way this actually got into their final decision the board a reference back to one of the references to the grounds when even initiated the out for us and in the final decision the outer reference was not one of the which had anything to do with out ok and when the war got to final decision the three references there were discussed in this final decision were the leader referenced the copper reference and the christians were even in its final decision the board in the particular i'm sorry even throughout the petition the petitioner is making the argument saying everything based on lear would have everything based on alpha would have been possible with lear so listen cooperate those arguments and by reference but nowhere in its arguments that the petitioner actually show these missing elements or how one of skill in new york would have made this proposed combination they tended to employ somewhat of a mental shortcut and say take alpha which the board didn't initiate on and let's plug in leader and let's say everything with leader and alpha is the same the problem with that is not that's not the tools alpha and leader are so dissimilar in that only their set the setting tools their sharing mechanism that you can that take a simple substitution of the review was granted it was one of those originally proposed but it was not one of the six grounds under which they were passionate takes us back to the question of whether in fact after the initiation that ends the premises  even if it's not initiated soley on alpha grounds that doesn't mean alpha is irrelevant in terms of the art that exists and that the board is supposed to consider and even taking so if that is the case you're right we take that as the premise or from that point on once review has been initiated did we take the leader reference and show how that same argument actually does apply for alpha two here and that's the problem so you're saying that that this is  situation in which the petitioner did not present any evidence did not address the question did not have testimony regarding out right the only the only arguments they have are conclusory statements by gary will only say that these are the same and it would have been done in that same way when addressed with why one skill of the ark would take the later reference where it has at least four times saying we would not do this and this way we would not have retention pins bec the alpha reference is is and is not part of the projection it's not officially part of the rejection but in terms of the reasoning for combining the elements the board said look over here at this reasoning for possibly combining alpha but these second are references and that kind of reasoning applies equally to using blair as the primary reference so now let's go to back question where the board seemed to be the the plunger in lear is assert it up up cold before it actually goes down into the home to if we put it in a device such as what alpha is suggesting the entire operation of it would be different the other thing that makes a difference is the outlook tool i believe is running want a wire line setting tool as opposed to what's taught in the padded arc and lear are actually run on separate mechanical said i'm sorry forget about alpha for this  e well lear would actually require a complete redesign in order to make a place to put the shearing braided cylinder with in the actual mantle the way lir is designed the retention device is actually extra cd by putting internal threads on it and external threats on it and so therefore you would now have something that matches your claim limitation right and it would be a complete redesign and if we define go left far and say we're taking lee or we're heading girth to it to allow it to retain their heads and they were also moving it from being external to what is now only or too big internal to what is the pad in vision invention it would be a complete redesign and one of skill in the art at the time of this invention wouldn't that have made that conclusion and we provide a technical explanation by kevin trade and twenty years of experience that actually cited that same thing that is designed these tools for thirty years case and a favorable settlement and once that went away they stepped aside this event of this so where is the controversy what happens to penny on who winces peel this anything change other than the fact that my client would for the district court and the prevailing party decides not to defend the appeal we have never had a case where the district judge has said never mind i'm going to appeal and argue might support my decision  appeal that i would assume there are a patent owner would not so up to the score at that point that there could be a possibility that we would that p t o would come and defend the board's decision that yes the patent owner should is rightfully entitled to  where whether it's appropriate is an interesting question because it seems to contradict the constitution and every obligation of the federal courts to have you you talk about intervention and the right to intervene clearly that exists by statute but the question becomes it but you understand that the p t o couldn't appeal on its own act so if you have a situation in which there is no opposing party does the does the p t o s right intervention allow them to step into the shoes of the opposing party or is the right intervention solely to shoes but honestly your honor the p t s position i can't speak to that would be i'm happy to go back to the p t o and get get the director's official question we care very interesting i think judges always care about the result being sustained on appeal but where this would be very interesting if from now on any judge who wants to sometimes can i just ask as slightly different process question and this is the one that i was curious about from the beginning when i saw that there was no opposing party assuming that we disagree with your position and that we says that it will continue the i p r is when it's very close to a decision or it's already begun rendering its decision but if it's essentially right after initiation it wouldn't continue in this circumstance to be starting over so would the p t o continue or could it continue right now there are no rules as to what happens when a case comes back from the federal circuit the reason for that is the board wants to maintain maximum discretion and address each case on its own in the future and there may be rules depending on how the practice plays out but if i can't speak to what would happen in this case when it goes back if the petitioner has dropped out the board may view it's role again as protecting the public against the patent that should have never issued or it may if it may decide that the petitioner has dropped out and there's no reason to continue as it as it does before the final written decision has been issued and i can't speak for the board in this particular case so because there are no rules forcing the board to do one thing or the other ok ok please proceed with the merits may it please the court prima facia case of obviousness all the elements are clearly found in the record in this where in the three references do any of them teach and insert all threaded or you know screwed into the body of a plug that also has sure of all threads disposed around its inner surface cock the insert is release member one thirty six thirty of lear to be the claimed insert well actually our three prior art references teach inserts well i'm trying to get to the bottom of what was the board's reason and i guess your telling me the this is at page two eight two ninety one the board if we look at the institution decision the board made two comments about the motivation to combine lear with kharkiv christianson and then turning the page to a four zero five the board says magnum does not explain why the simple substitution of shareable threads as taught by to exchange one release mechanism for another so to use an insert that past threads is substitutable with an insert that has a deformable release device and pitfalls retaining pins though the formal release device to the body and so this whole mechanism keeps everything in place because the whole point of the setting tool is to keep the plug on the setting tool like goes down the hole and then once the plug is set the setting tools function is is over the you have to get rid of it and so this is just lear just teaches one and so one release mechanism for delivering that where in the record is their expert testimony to that effect ok so because at that institution decision i mean to rely on the institution decision where all you had was generalized statements with no evidentiary support and then you put the burden you shift the burden to the patent holder to disprove just these generalized statements that's clearly not consistent with what the board's analysis is supposed to be in and in an obvious there he says i was aware of the bottom set plugs and knew that many different really in essence could be used i was aware of both the formal elements and sheer threads and i used them as interchangeable with each other w practical differences but not functional differences so when the board said this release mechanism of lir is easily interchangeable with the release mechanism of  that's when the board was saying tell me why i have it we have the evidence here in the record tell me why that why this doesn't give you a predictable result but wait a minute you got one statement with no you then you put the burden on the patent holder to disprove that that generalized statement that has no evidentiary support your honor that statement does have evidence or a support if you go to two fifty three and paragraph thirty four some sort of arrangement we don't know what so that is no longer affected by the decision here we're on or i there's been no evidence in this record that it is superior they haven't relied secondary considerations but putting that aside dr woolley testified without challenge that it was that a skilled artists and would have been motivated to replace to to use  depose mr dr christianson they had the opportunity the pan owner had the opportunity to cement statements about the deposition to the board but the  doing a thorough job of showing us lots of different things in the record but but ultimately we're supposed to review the board's decision and try to understand what was the board's rationale and that's the problem i have right now i can't i don't have a picture in my mind of what the board is actually thinking when it proposed to the combination of the various references to come up with the claim vention it to me it looks like it rested the substitution theory on substituting retaining pins for the shearing threads of cockrell and if that's the board's rash now i still don't see how that matches up the claim limitation i understand your honor do you agree with me that that is the pivot point the key to the board's decision on modifying the that i agree with you it's based on the three times you know i agree with you it's not as precise as it could have been if you look at the senate if the sentence that you're referring to is it a twenty three secure the formidable released of ice as taught by layer would not yield a pretty predictable result it would have been more clear if they said for retaining pins and a formal ball release device but if you take it together and you look at the entire record the record is replete that changing one using threads or using shared cans or using any other mechanism these are all well known in the the board used you can't ask us to substitute our own review of the art and use the grounds that are not articulated by the four right i mean even if you don't agree with the board which i sense that you do think it i think that the sentence that the court seems to have trouble with could have been written clearer but if you look at the whole record the board's path is discernible but it seems like the whole path was based on a mis application of the burden now the words i think i get someone who says you can combine this with this and you didn't disprove that that doesn't seem to skilled in the art would have understand he references several patents in the part in he actually references a patent that shows that using in using in service shareable threads to remove the setting tool has been used for fifty years and act that was certainly sufficient evidence to meet the prima facia case as far as the prima facia case of reasonable likelihood that the patent that th that has to do with addition a should be and should get into the merits determination there is no such thing as saying all we need to show is a reasonable likelihood there's not a prima facia case analysis anymore now i understand that and that that was our point in our intervention if that one should get to trial then the whole the whole trial opens up and at that point we are trying to get to what are the merits of the case and at that point it's not helpful to talk about whether they said this in their petition or whether they said that it's helpful to at this point we want to know has the petitioner carried their burden of has not sufficiently that it doesn't the board have an obligation to spell it out i mean you're saying the fullness of the record you can locate all of the pieces of evidence and favorable testimony defining these claims unpardonable but isn't there an obligation for the board to somehow package it together so that we can see their rationale right now it looks like as you said they took the short tide in this substitution theory of returning pins for sharing threads and then secondly they took perhaps a shortcut and saying there is you one would know to substitute but they didn't say one would subs one would know to substitute because there is no because i see in the board's decision i have to disagree that they took a short cut my point standing here today is that maybe they weren't as articulate as they could have been but threads on the x syria right spelled to hold the release mechanism into place if you're not using pens you need here right but that still leaves the gap of why would anybody put threads on the interior of the lair deformable device because threads are well known in the art to be used to release one element from another as cockrell teaches but right ok we need very just and we're in agreement that with your last few statements that it seems like the board took a shortcut a lot of the argument that we just heard we feel like was not known in new york with sheer plans which doing so is actually taught against in the same very primary reference the record is the void of any showing of how skilled artisan would have ever been motivated to do that they were good is devoid of should have been enough book looking at the woolly decoration it was our position that the only declaration this is full of conclusory statements without making that connection adipose doctor will probably four times in the district court litigation and we get to this  into the air well that could have been something that was otherwise possible we don't feel like it was properly argued by the board or by the original petitioner in itself and at this point we feel like the board is attempting to fill in these missing claim elements using the patent claims as an ally and hindsight and at this point addressing the question that judge newman raced early on we feel like that the the structure now of the i p r has put us in a congress intended and then on top of that now we have the intervenor stepping in and a case acting as both where the board made the decision as to they made the final decision were specked and littering and now we have to intervene or attending step in and add