is not authorized to issue final written decisions on fewer than all of the patent claims challenged by your party's review petitioners the first is the plain language of the statute it requires the board to issue a final written decision with respect to the patent ability of with respect to certain claims so i have to question please i'm not at all clear what it is you're challenging here are you challenging  the board's right to initiate partial adjudications or are you challenging the fact that they're not addressing all of the claims in their final decision what is that you're actually asking us to reveal well we are challenging the latter a question presented is focused on so what is it exactly that you want the board to do with respect to the claims that it didn't  adjudication we we believe that section three eighteen a requires the board so you want them to say we didn't grant review  patentability of claims so what exactly is it that you're asking them to do well just a sort of mine or what we're asking the board to do is to say you know it's final written decision that we are not finding for example  claim four of the complements off patent as they did in this case we're not finding bad unpatentable that way we can then appeal that decision ah you want to get around close that that's exactly what you want to do that that's when the government that's what the government says we want to do bits well i don't see what else you're trying to do because what will you do you will come up on appeal and say the board was wrong and not said and so assuming i stick with precedent on this issue what other purpose would there be for the board basically to say we made a decision not to institute review well it was first of all just to so many were if you look at what the board actually did in saying that they were not going to institute review the board affectively did make a patentability determination in what it to get around quips well it's neither is absolutely no way that that's anything other than that what's the if you're not challenging their decision not to institute review  why would that make anything well bit of justice breyer's opinion for the court and cuozzo was very clear in saying that the that the determination in that case was checked they challenge under the section three fourteen a institution only we're not challenging the section three fourteen eight institution what we're saying is that whatever institution means whatever institution means when the board says we're only instituting as to these particular claims it  whatever you presented the board with at the beginning did the board have a reasonable basis to conclude that no reasonable basis existed to challenge the claimed no the review would not be over the reasonable basis or not the review would be on the question of patentability so how could we how could the appellate court make that determination if there is no record with respect to that issue parties review is a much more streamlined process than trial court litigation and the complaint is much more the notice in this case that the petition that was filed here was a complete document it laid out all of the grounds and all of  challenges to all sixteen of the compliment soft patent claims it also included a declaration from an expert witness if you look at the first few pages of the joint appendix in this case which has the well that's fine but if the board didn't institute review of those on the basis of an incomplete developed record well we'll either ask we have to decide patentability or at least decide but we made a case of patentability that ought to be decided all right so why don't you get what you really wanted to say is the board shouldn't institute partial reviews it should if it finds i think what you're saying is once at the chairman's she'll have enough evidence to challenge one claim it should hold a hearing on everything because without that you can't really decide patentability in a due process way in a fair way so why have you limited your challenge in the way you have what's the purpose of doing that and what advantage does that give you it seems to me that it's an unfair advantage to the other side that's an unfair advantage to the system so why don't you just argue what you really want to argue which is i should have an opportunity to litigate all of my claims well that's exactly that is exactly our argument we should have the opportunity to litigate them but this statute precludes you from contesting the institution well that the statute prick precludes me from contesting the institution decision but justice ginsburg i think if we could move to the to the regulation that the patent office issued in this case that they were that the government was relying on what you see in the in the federal register that seventy seven federal register four eight seven zero two the government considered the objection that reviews ought to take place with regard to all challenge patent claims and what you won't see in the federal register where the patent office took up this regulation is any reference to section three eighteen it was that by the board at the outset that we apparently have not met a burden of proof what we end up with under the under the scheme that the patent office is following right now is a system whereby we were sued we were sued in a complaint by a compliment soft in a complaint that alleged infringement of and i quote the complaint at least claims one two three four eight and ten we asked for review of all sixteen claims because of that at least language the patent office then only reviewed a certain number of the claims and then in their infringement contentions in this case complement softs that asserted every single claim in the patent against us but claim for and so now what we're left with is a situation whereby we are in the patent office fighting for years in the inner parties review over the patentability of nine of the sixteen claims and then we're going to have the sorry how did you do that for years it's a year and a half isn't it in most well the the petition was filed in two thousand and twelve and then we've gone up to the federal circuit and that were before this court but yes it's a year and a half at most three months it's usually a year how long did it take here it took the they took the maximum amount of time in this case here  year they did not extend the time so mr continues can i ask how you are statutory argument works given your position on cancelled claims and if i understand your position on cancelled claims it's  that the board need not render a decision as to those claims is that right that's right so i guess what's the difference between a cancelled claim and a non instituted claim on other words both were originally in the petition both are no longer in dispute so with respect to the one you say it's perfectly consistent with the statutory language that the board render a decision then why not with respect to the other is well i'll just take in there's a world of difference between the two cancel claim no longer exists we can't be sued in the district court on a cancelled claim if the denial of institution means that we could have to go we litigate that claim under the same section one of two and one three grounds that we would otherwise be able to challenge them in front of the  the the patent trial and so i understand as a practical difference but i was looking for you because you say that you were view is commanded by the statute and particularly i think by this phrase challenged by the petitioner but if you were right about the statutory language that would apply to cancelled claims as well it was challenged by the petitioner in the original petition yes and but it's no longer challenged by the petitioner at the time of the final and this one is also no longer in dispute and it is it is an ex claim it is no longer a claim there's nothing there's nothing to do to kate and that's the that's the end i think what the board would say is that the same thing is true here there's nothing to adjudicate because they've said that it doesn't pass the it is challenged by the petition that actually the word claim would work as well because it's no longer a patent claim it doesn't exist but there is the chapter the inner part is chapter of the american eleven b isn't titled scope and in that that scope provision it refers to what the petitioner in an inner party's review may request you then move on to section three twelve which defines the requirements of a petition what does it require the petition to identify among other things each claim challenged so now we're still at the beginning of the process and then three four five are there why bother requiring you to set forth all y why bother requiring you to set forth all your grounds particularly if you only really have to do it with respect to one you could take your strongest case set forth all the grounds there and on the other say we also want to challenge all the other fifteen because under your theory you don't have to do anything more than that you just have to identify one claim that's weak the board says well institute reviews and then you're entitled to challenge all the other claims that you didn't set forth with  and because it didn't warrant has to give you a hearing on those claims and in the stand but but justice sotomayor keep in mind that the statute invests the board with the discretion at the outset whether or not that binary choice whether or not to institute and that's the end that's an important word in the statute whether it doesn't say whether india is so as to which claims it is a binary choice whether it's considered a board contact the parties and say we will not grant review as to all of the challenges claim but if you reduce it to its claims three and four we will hear good the board to that i think the board could do that and then leave the petitioner with the election at that point to say you know what we think we'd rather go challenge all the claims and district court and it have to pay for one proceeding rather than two and that's really what this is this is about just a sort of my word to go back to your question about what do you really want we want to have our section one or two and one or three objections to the complements off patent heard in a me where anywhere in the statute the board is prohibited directly from initiation initiating partial review well i some kingston have some claims or not and to the extent that we're talking about the sort of partial institution that they're doing right now where those are not decided in the final decision i would start with section three eighteen a it assume there's not i find  per minute it has no direct prohibition of partial institution that the board isn't even to do that then why would we have to read the language was engaging in colloquy with justice ginsburg earlier in justice kagan i was talking about how the name the statute tells a really elegant story and in the way that the inner part is review is supposed to work once  once a petition is filed it is that petition that is before the board and section three fourteen the one with your focused on gives the director of the discretion to institute well it's whether to institute but it is whether to institute that petition it's not whether to institute with regard to any particular one of the stories that the statute as written seems to tell is of great discretion to the board with respect to the institution decision it says you never have to institute it's your choice whether to institute you can't get review of the institution decision which is our cuozzo case you get to write your own rules about the institution decision which is the the the room making delegation so it's a little bit odd to say well here's the one thing you don't have discretion over when it comes to institution you can't say these claims but not those claims in a in a context in which congress said the institution decision is really for the board it's a discretionary decision that lies in its belly where why should we carve out that one thing well excuse the just think i would answer your question by saying that the fact that that discretion is imposed to grant or deny whether to grant suggests very strongly as a textual matter that there is not a further secret grant of selective review at that point but moreover what why should it be our choice why don't why should we be the the entity that picks well obviously the statutory language we think supports  us the ordinary principle that the petitioner or the plaintiff in litigation is the master of the complaint we because so many of these cases follow litigation we know best what claims we're likely to be facing in litigation and finally it serves exactly the two purposes that the majority opinion of the court in close of identified for the inner parties review system which is that screens out that's one of the reasons why you don't have a lot of amakosa briefs on either side in this case is that we are actually in the position of saying yes we would like we would like to be have appellate review and be bound by an adverse decision with regard to claims that the patent office did not think met the standard for institution but that's not that's not unreasonable particularly in this case because as we pointed out in our reply brief on the of the patent office in this case the board decided to institute review with respect to claim for but not claim to a claim for actually is identical to claim except it contains an additional limitation had we been given the opportunity to say to that to either to the board in the process of the litigation leading up to a final decision or to the federal circuit on appellate review we could have said look claim for if it falls claim to have been to fall with it there is no there is no earthly reason why we should confirm this claim or reject that plane but allow the path the other planes go into the patent office disagrees and so so i can't make i think the language does actually help you doubt that but language you point to helps but where i run into trouble is i can't imagine how a statute supposed to work were you objecting say i object to ten claims we look at this and say you're going to get that grant if just one of those ten is because it was one and nine they're never going to review i think there's nothing to it ok and it says that their decision not to review will not be appeal right ok so they find one and all of a sudden they discover they're in court and have to appeal everything or nine claims they thought made no sense but if they find all ten are no good and then they're out of court no way to get them in there ok now that's the part i have trouble grasping why someone would write a statute like that well justice briar i think i'd start  by urging you to read the statute free of the regulation just read the sign i have let on that i actually had written down my law clerk as if your but i grant you have a hard time keeping it all in mind and it's hard to find in in that entire statutory scheme the i think language does favor you but not definitely i mean there is a lot of opening and ambiguity here and that's why i turned to what i was having trouble with is trying to imagine what the purpose would be of writing the statute the way you want though i find it very practical to think of the statute as your opponents one that exposing my only injected by the addition of the regulation that the patent office has is introduced into this because you won't find a hint of partial institution anywhere in the statute and you have some strong textual indicators against it that's why we say that even if we were in chevron world and even if section three eighteen were the subject of a regulation which it's not it would still not be within the zone of reasonableness with regard to the the scope of the ambiguity but why would you write of this way for exactly the two reasons that used you wrote for the court in quite so i p r screens out bad patents while bolstering valid ones look at what the board did in this case in their institution decision which were in twenty two pages it's not it wasn't just a determination like the statute anticipates it was a full written reasoned decision made in very short order after three months the board moved all of the work that they could have done at the end to this institution phase and said you know we're not going to institute with regard the board to reject our arguments ought to then if we lose either before the board in the final written decision or on appeal it should stop us from really to getting those issues in the federal courts that was exactly the point of the inner part is review statues to make district court litigation simpler by allowing the expert agency to do these types of adjudications i say that was trepidation because of the first argument but they argued occasions of a type that agencies made may make and it streamlines the patent litigation that follows there are no further questions i'll reserve the remainder of my time thank you counsel and it intrusted the agency with determining when to use that tool and how those proceedings should work in practice petitioners challenge to the scope of the final written decision here its argument that it should have been included more claims in the final written decision fails because the p t o or the the board here as it under delegated authority validly determined not to institute on those claims they were never part of the instituted proceeding and there's nothing in the statute that requires the board to institute or to include in its final decision claims that were never part of the proceeding in the first place now the crux of this dispute is as i think the prior colloquy illustrated over the partial institution decision the board's partial institution decision here to institute review except to claims to eleven through sixteen is not reviewable under section three fourteen d and this court's decision in cuozzo and in any event it reflects a permissible exercise of the broad discretion conferred on the board by the statute the width of a problem he your friend raised with respect to claim for and claim to now seem to put them in a difficult position so it's actually not clear that claim for is narrower then claim to as we explain in the briefing the court of appeals it's possible to claim four is actually broader in some respects that's a close dispute that the board in its discretion determined claim for presents up a close question claim to does not as presented to us present a close question but that doesn't seem to me i mean i know we don't have review the decision which claims to review it doesn't seem to me like very helpful in terms of what the whole process was supposed to accomplish so we think congress vested the board with discretion of deciding in what circumstance these claims are closely enough related that granting a review on one make implies that it makes sense to grant a claim on a related claim regret would you want to related claim because they're so closely related here the board determined that the request for review one claim two failed because the petition failed at the threshold it didn't identify specific references in the prior art that rendered claim to obvious over the prior art with respect to claim for the petition had made a closer showing and that's a function of the petition why couldn't the board  just say would we decline to granted in my shoe reduce the initial women a this great so we think the board could do that and we think that the board has that authority to say we're denying review across the board but we view i think that he can see that then we can rule against you and there's no real problem we could deny review across the board but if you tailor your petition we could grant review in that circumstance but that we think illustrates the artificiality of the petitioners position that the board could get to the same result court we don't want sure and they couldn't do that in this instance a challenger here who's dissatisfied with the board's decision about the scope of review and say you know what it's not worth our time we can settle with a patent on our our ip our  we can agree not to pursue it and we can proceed in litigation and if as in this case the alleged infringer was sued in in in a district court infringement case and then brings in i p r proceeding there's no stay of the district court proceeding at least mandated by the statute so they can proceed in the district court to litigate as they have already had been doing i thought roughly half of the proceedings were stayed as a matter of the districts discretion i think a little over fifty percent of contested stay motions are granted but of course if it's the alleged infringer who went to the i p o r went to the p t o to ask for an i p r and then says look i'm done with i p r they wouldn't grant review on the claims that i would like they can go back to the district court and say i no longer need a state if one was granted in the first place let's proceed to litigate this here in this infr suit and so we think that the statute is perfectly consistent with interparty its review being conducted on a partial institution basis and at a minimum as i think was discussed earlier no provision of the statute clearly prohibits what the what the p t o is doing here what about thirty three eighteen if we look at that by itself where is there any ambiguity if an interparty swer view was instituted and not dismissed on this chapter of the patent trial on appeal board shall issue a final decision with respect to the patent ability of any patent claim challenge by the petitioner what is ambiguous about that so a couple of things first we'd say as petitioner invited the court to do read through the statute sequentially we set it forth that starting at page eleven a of our brief in the appendix read through and see what i really wasn't my question if we look at that language by itself where is there ambiguity sure if you look at the four words challenge by the petitioner in isolation they don't answer any of the questions about the scope of what we mean by challenged by the think that is a serious interpretation of this challenge they challenged it in a discussion in their office they challenge that in a discussion bar but it means challenge mr proceeding what else could well you know that because of it also means challenge on the ground within i p r challenge timely and challenge by a petitioner who's not a stopped from doing so and the reason that question isn't hard is because of the context of the statute including the opening clause that takes as its starting premise you think it's not hard we think you think that's not a hard question least no we think what's not difficult is the question you posed or the question that i suggested of we know that they mean challenged in an ip are proceeding and in this ip are proceeding that question we don't think is difficult because of the context because of the opening clause referring to if an ip are proceeding is instituted we're referring to that ip are proceeding and it is how you would read it and don't just agree with me because that sounds as if i agree with you i just want to know what you don't get me o think that's essentially right i would say that another way of framing it is challenge by the petitioner implicitly within the instituted proceeding referred to in the opening clause so i think we're getting more of a stretch from the it's a fairly complicated and refined stretch of any claim challenged by the petitioner so we think it's actually consistent with ordinary usage to say at the merits phase of a discretionary review proceeding that when you say challenge by the petitioner you mean within the merits phase that the opening clause presupposes has right i put it i put it my way because the word any is like exhibit number one for a word the scope of which is very often ambiguous if you can eat any fish you can eat any fish think about that when you are right not not my point is we have loads of sajid's where the word any has a scope and the scope is determined by the context of the statute and so what i'm thinking in the back of by mind is this is one of those but as i say don't let me get off on the wrong foot so we do agree that any encompasses anything within the scope of the context of three eighteen a and its broader context of the scheme and compass is so it's any claim within the instituted proceeding but just focusing on that word any i think it's actually helpful to look past the language the position opposed to the the end of three eighteen  it says any patent claim challenge by the petitioner and any new claim added under section three sixteen d d what any is doing here is not saying this is an all encompassing review provision that requires the final written decision to encompass anything in the universe it's doing something much more limited the tail end of this sentence and section three eighteen a is simply clarifying that when you get to the final decision there are two kinds of things the board needs to address it needs to address those claims that were actually challenge within the instituted i  there are any left and it needs to address any substitute claims added by amendment or proposed to be added by amendment under three sixteen d if i were and wanted to say would you think this mean why in the world with a phrase it the way it is phrased in three eighteen why did when they say with respect to the patentability of any claim found by the director to have at least some likelihood of success or any claim on which review was granted why in the world would they say any patent claim challenge by the petition with two points or on it there are several things that can cause a claim not to be in the case by the end the fact that the p t o or the p tab on delegated authority didn't institute  one but also counsel claims and also settled claims parties can settle not just the entire dispute but also their dispute over individual claims any of those things would mean that the claim is no longer a challenge by the petitioner at the time of the final decision it doesn't actually have to mean that i just thought this would not attack here but if you're voting in congress on this you actually don't know what you think of in respect to the answer to this question we are now litigating and since you don't know the best answer from the point of view of the agency you use a word like any and any claim as i say filled with ambiguity so that the agency can decide which way it wants to go is there any indication of the so we do think that congress indeed left these matters to the agency in three sixteen a it's just like the question that was presented in cuozzo no statutory provision in cause or specifically addressed the claim constructions that that's so you're saying if i understand your answer to justice prior that congress deliberately adopted an ambiguous term in the statute so that the agency would determine what it meant it's one thing to say you know the agency should determine which patten claims challenge it will decide in which ones that aren't decided will be considered and it's another thing decide let's rethink a word that's so vague that nobody will be able to figure it out and will leave it to the commission no and let me be clear our point is not that congress enacted on purpose and deliberately ambiguous statute our point is that the statute congress enacted is consistent with partial institution but to the extent there's a question about that congress left those questions to the agency there is one very telling sign that the any claim challenge by the petitioner has a different meaning in that same three fourteen itself which says claims challenge in the position if congress intended claims challenging the petition should be a part of the three eighteen it could have used exactly the same words that's exactly right and i think it's the second answer to justice alito question the reason to think that congress intended this result is that congress used this very phrase that would encompass petitioners position in a different phrase of the statue you think challenged by the petitioner is narrower than  i'm sorry any change any patent claim challenge my petition is narrower than the words that are used in three fourteen so we think it is narrower in this circumstance for the same reason the petitioner does that it includes the possibility the claims will drop out along the way and again challenged by the petitioner standing alone is a capacious lee broad and couldn't compass any number of things it's context that tells you that it's narrower but doesn't exactly work your way around that of course by the end you're only going to resolve the challenges remain pending when you're doing that institution decision of enter part is review you're going to look at the petition could be just that simple and doesn't three fourteen kind of cut against the government some ways to by suggesting that all the o needs to do is decide whether there is one claim that isn't frivolous that's that's the sort of sum total of its job and the plain terms so in that beyond that it need not go further so two points first we agree that three fourteen is focused on the institution phase and therefore the focus is on the petition right whereas in three eighteen it's what what's left right it's what's left of the pats why there's a difference in language there you go right exactly and we think that that underscores that what's left can include the fact but how can we deal with the fact that in three fourteen we have all the old appeal to us to do is to side with one non frivolous claim it's a thumbs up or a thumbs down decision because anticipated there not a claim by claim examination well two points rather first what congress included there is simply a floor it's phrased as a prohibition that the p t o and delegated authority the board may not institute unless it finds that at least one of the claims is has a reasonable likelihood of being found invalid it doesn't say that the board must therefore institute or must do an up or down determination we think that leaves room for the board to say we can't institute if we don't find at least one but you know what we're going to conserve our resources as three sixteen bt us in the adopting regulations and focus them on the don't help me out with three sixteen that that's where you're going to go to where do you where you see the authority for the regulations that the directors prescribe here sure they're in two provisions principally three sixteen a four which was the same and i'm not sure i guess i'm you can help me on how that also includes the authority whether to grant review of this or that claim the weeding out process i can see how it might affect the reasonable likelihood inquiry and how the director is going to go about doing that but i guess it's a little less clear to me how it also would grant some authority for her authority to decide which claims to proceed with should because what it says is the standards for showing up sufficient grounds and those standards for showing sufficient gro to you know and what the board's regulation is doing is preserving the board's ability to assess deficiency on a claim by claim basis we think that's encompassed within a two but but three fourteen ace seems to prescribe that that question made at least with respect to one claim speaks to that very issue well it's a floor just like the outer time limits that congress required in three sixteen a eleven set an outer time limit but don't pretty clued the board from setting a lower time limit on the completion of the final written decision the same we think it through  three sixteen or three fourteen eight said you may not institute unless at least one of these claims you conclude is worthwhile because it clears that reasonable likelihood threshold but especially in the context of the scheme that gives the board complete discretion to deny review entirely we think it's improbable th congress would have tied the board's hands and this one respect moreover not just to say you don't have such an inconsistency with three o four where you're allowed the director gets to decide which question specifically the director wants to take up and there seems to be an express grant to the director there to do exactly what you want to do here and in its absence here suggest we don't think so your honor i think the scheme of x part of the examination is fundamentally different in that it's a party is just suggesting to the board or the board on its own initiative saying we're going to look at a particular substance a substantial new question of patentability that has been raised and we'll look at which particular claims we think are implicated by that and it is claims and through for its questions and so the director can pick and choose which questions in his grant of that express authority and normally we we think that one that's granted one place but not clearly granted the other that that intends a difference so at a minimum that difference doesn't clearly preclude the board here under three fourteen d regulatory authority from saying we're going to treat this as a floor that we are told by congress we can't do it unless we clear this floor but we're going to hold patents petitions to a higher standard and evaluate them claim by claim because that's consistent with the purpose congress told us in three sixteen b to consider in adopting our regulations and those purposes boil down to as the court underscored and closer to making sure we're actually improving patent quality and doing so efficiently now the board's partial institution approach is perfectly consistent with both of those aims it focuses its energies on those patent claims that determines actually have a reasonable likelihood of being invalidated without wasting time on other claims the petitioner's all or nothing approach puts the board  wastes time on claims it's already determined don't have a reasonable likelihood of being invalidated at least based on the arguments presented in the petition or it doesn't use this new tool at all and all of the work of creating parties for review was for nothing and so in either event we're not getting the benefit or achieving either of the goals that congress had in mind and is there anything in the statute that would prevent the board if it is required to render a final decision on all claims initially challenge petitioner from instituting a streamlined procedure for dealing with the claims that were found at the outside to have no likelihood of success why does it need to go through a full proceeding with respect to those claims can't can it not just say in a summary form we found that these have no likelihood of success and then that could be appealed to the federal circuit and the federal circuit could decide  whether that determination was permissible so a couple of points around or first at the institution phase the board is not deciding the merits it is deciding not to decide the merits it is saying you haven't for some reason made a sufficient showing to make us convinced that it is worth our time to investigate the merits of your claim they can also deny however for additional reasons irrespective of the merits they might say just as all agree they can deny the petition entirely apart from the merits they might say this patent claim is going to be very time consuming and is not going to advance the goals of the statute so we're going to deny review on that ground so there's not necessarily a ruling on the merits at all and it's fundamentally different than a district court say folding in a twelve b six or summary judgment ruling because it's based on the agency's discretion not just the merits or couldn't the agency at that point say you know the ground on which you charge this patent is invalid is not a ground we can review at this time right exactly right they could as well say that you challenge this on one twelve under indefiniteness or under section one  one and it's a law of nature challenge and that's not prop really presented to us they could say on those grounds or you are a start and we're not going to consider those those and then it would seem i mean that would be a strange kind of thing to say well you can't challenge on that ground but we're going to issue a decision as to patentability exactly right so you're forced with either the p t piece have either deciding we're not going to review this ground and then that gets baked into the final decision and treated as a merits ruling which can then be appealed to the federal circuit and create cir a quite lengthy decision on addressing issues right it issued a lengthy decision about half as long as the final decision but they're different in kind of i'd like to emphasize a few ways that they differ so importantly when the board denies review it often is denying review for some threshold reason based on the failing in the petition presented to it not deciding patentability at the end so a good example here is a petition appendix page one fifteen ada one sixteen a where the board denies institution of claims eleven through sixteen those claims are what are known as means plus function claims where under section eleven twelve f or one twelve f their meaning is determined by a particular structure set forth in the specific specification not in the claim itself accordingly the board's regulations in this is forty two point one  four require a petition for inter party s review to identify what structure do you think determines the construction of this claim so that we have the board can determine if it's unpatentable the board said at one fifteen the petition didn't identify what structure it was that the petition thought informed the construction or the interpretation of these claims so i for sure i we can't determine patentability based on your submission our off how often does it issue decisions written decisions at the stage of determining whether to institute parties review so i don't have statistics on how frequently it issues decisions of this kind we thing it is the board's ordinary practice and the true reasons that is actually a good practice that the board in its discretion has has adopted it's helpful for the board itself because if the board institute review it then the judges of the panel or whatever panels assigned to it then have a very short window set by statute to determine the merits of this proceeding after the administrative trial is complete and second it's beneficial for the parties to this case and other cases to know what it is the board is looking for in this relatively new statutory scheme when it institutes review and exercises its discretion that discussion at page one fifteen a of the petition appendix is illustrative it shows other parties in the future if you actually don't follow our rule and include the kind of structure that we say you these kinds of opinions to be written that's precisely right that it's useful to the patent it's useful to the patent bar and useful to the community center no patent for it basically told the company were issuing these decisions for educational purposes that's partial institution we think that's beside the point of the question presented to you today whether the board could achieve more efficient partial institution with a thumbs up or thumbs down is not a reason for the board to jettison that system entirely and adopt this much more inefficient approach where it lacks discretion over the one thing that is common to patent law the default rule in patent law is that claims are evaluated independently in litigation each claim is independently presumed valid under section two eighty two it would be highly in congress for congress to say when the expert agency is reviewing patents it is issued it lacks discretion to constrain the scope of its review and lacks discretion to do what is ordinarily the rule in patent law and indeed the rule in discretionary review generally we're not aware of any context in which a tribunal vested with discretionary review authority is put to this choice of reviewing what all the about that are our last argument where a lot of our attention focused on congress's putative intention to want to move things to an expert agency and speed things along make it more efficient could that be a reason here why congress might have wanted the patent office to review any and issue of final decision on any and all claims brought to it so to point we don't think that it would be more efficient in a sense of making things go faster if no i don't know truly not necessarily efficient from the p t o s perspective but efficient from the economies perspective so so then two points on the economy benefit point it's not going to at the economy first if the p t o is put to a choice between not instituting review at all that is no benefit to the economy or spinning its wheels on claims in a patent but it could do it justice kennedy said that would be everybody agrees w choice it could indeed do that and that we think highlights that this is consistent with congress's goals if it couldn't change achieve the same result into more cumbersome step to more cumbersome steps it makes sense that congress did not intend to preclude it from doing so through this natural it would require consent by by the litigant in that case whereas here if a litigant took the view that i really want an education on everything there would it be crazy to suppose congress might have wanted that as a way to achieve maximum efficiency through this administrative process from the economy speech but we don't think that consent issue is fundamentally different because if a petitioner again comes in and says i want i p r on claims one through ten of the board says we'll give you i p r on one through five the petitioner can in effect walk away if they can just simply agree with the patent owner to say look we drop our ip our challenge i'll go back to the infringement suit where you sued me and presumably want to litigate and we'll litigate that there that's permitted under section three seventeen now to be sure the board at that point and proceeded to adjudicate in its own within its own proceeding the underlying claims but that has nothing to do with the right sort of consent of the parties interest say and i think to the underlying question here is isn't this meant as a substitute for litigation and we think the statute itself makes clear that that's not the inner parties review the limited scope so it's limited to one or two and one of three it's limited to particular prior art and it's limited only to particular claims that this petitioner brings to the p t o it can't be viewed as a substitute for litigation such that someone could reasonably look at the scheme and say congress wanted all of these claims decided either in one form or the other it's baked into the scheme that there will be this potential for some claims to be reviewed by the p t o and others in court and partial institution actually enhances the efficiency  harmonious were of these two things because the board can say look you've got a solid challenge on claim number one we will review that the rest of them we don't think have met our standard or we exercise her discretion not to review them we're releasing those to the district court so the district court litigation can proceed and we'll deal with this one and the district court can decide what to do petitioners position by contrast creates i think an incentive at least for parties to seek to tie up district court litigation by seeking i p r in the example we've given i think page thirty nine and forty of our brief is where a an entity sued for infringement and then on a strong patent claim can take that claim to i p r add on some weak and vulnerable claims and ask the p t o to grant review if the board's only choice is to grant all or nothing and it grants all then the district court is very likely we think at least there's a pot possibility that it will stay the district court litigation and the alleged infringer has effectively slowed down the district court litigation over claims that have nothing to do with that suit that possibility we think is inherent in petitioners approach that puts the agency to that kind of petition and controls that the agency would consider yes your honor and i think that that's an important feature of in our party's review that this notion of master of the complaint just doesn't translate here one because section three eleven b doesn't say you may get review of anything you want but you may get review only of these kinds of things but more fundamentally because the point of this scheme is to give the agency an opportunity to reconsider decisions in the form of patent claims it's previously issued it doesn't make any sense to give the board completely question you can still do that through ex parte proceedings review ability and so on any time right ex parte and we're told those still exist they do still exist they have a different standard and congress thought that wasn't sufficient and adopted this additional right like an ism and so congress in giving the agency authority in discretion to deny review entirely and so much discretion the way these proceedings work we think it's simply improbable that congress would have given the agency all the discretion except over the scope of which claims it will institute and particularly given that the background rule of patent law is that it will that will examine claims one by one colloquy with my friend here was about one no one and one twelve that's answered by the scope provision of section three eleven b that limits in her party's reviews to one of two and one of three challenges in the first instance  chief justice you had a colloquy with my friend about the link the decision that was injured in the institution phase here and my friend responded to you that this was a failure to follow the rules of the tribunals this was a merits decision that was made it said that we had failed to show the corresponding structure which is a requirement of the law under section one twelve six and if we had had a challenge to that that we wanted to appeal we should have been able to have that finalized it be a stopping and also appealable for us just you asked the question about what the education purposes of the institution decision our point is that it education can come from an appealable and stopping decision now the broader point is justice prior you in your  friend rewrote the statute for him to get to the place he wanted to go you said the statute should be read as any patent claim that is the subject of inner parties review and that's not what the statute says i just mentioned that there weren't any is ambiguous well it's only ambiguous absent context and as we showed the rosen water case when you have shall end in a in the same way that that minimum wage statute was was worded in need here doesn't mean you may have any vegetable on the menu doesn't that obviously doesn't mean you can you  must have every distend big is in between whether they're referring to a claim in which it has been granted or whether they're referring to any claim in the petition well any of us as to between those two things it seemed that is where justice  partial institution is not right but we're going to tell here's my question is what language says that partial institution is not permissible that the board has already given the discretion whether to institute the discretion whether to institute does not hide inside a secret second level of discretion to decide to institute anything other than the petition i think i'm not understanding could you just point me to the language that you're saying that's that it's it's in section it's in section three fourteen b timing and it says the director shall determine whether to institute an inner party's review and we say that's a binary choice and we say that's consistent with the if then language of section three eighteen to two justice  colloquy with my friend there is no interpretation here no evaluation at all even in the institution regulation of section three eighteen a so i don't know what we're possibly deferring to here with regard to the language as such in three eighteen a the section three fourteen it does didn't address the section three fourteen a regulation didn't address it in the federal register and as you pointed out justice course a two talks about grounds to institute it's not a weeding out function and it's not a final written decision regulation on review ability our yellow brief i think tells the tale this is not the same section and it is it certainly would be in the words of justice alito shenanigans if the board is allowed to fail to follow regulation here i thought you were being overly ambitious when you said you get to four points and we funnel thank you counsel last point was officials say your honor thank you the case is submitted